GTNX, Inc.v.INTTRA, INC.

Patent Trials and Appeals Board

Dec 10, 2014

09973082 - (D) (P.T.A.B. Dec. 10, 2014)

Trials@uspto.gov Paper 20 (CBM2014-00072)
571-272-7822 Paper 20( CBM 2014-00073)
Paper 21(CBM 2014-00074)
Paper 20 (CBM 2014-00075)
Entered: December 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GTNX, INC.,
Petitioner,

v.

INTTRA, INC.,
Patent Owner.
____________

Cases
CBM2014-00072 (Patent 7,756,794 C2)
CBM2014-00073 (Patent 7,761,387 C1)
CBM2014-00074 (Patent 7,752,142 B2)
CBM2014-00075 (Patent 7,827,119 C1)1

Before LORA M. GREEN, WILLIAM A. CAPP, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

GREEN, Administrative Patent Judge.
TERMINATION
35 U.S.C. § 325(a)(1) and 37 C.F.R. § 42.72

1 This order addresses issues that are the same in the identified cases. We
exercise our discretion to issue one order to be filed in each case. The
parties are authorized to use this style heading when filing a single paper in
all four proceedings, provided that such heading includes a footnote attesting
that “the word-for-word identical paper is filed in each proceeding identified
in the heading.”
CBM2014-00072 (Patent 7,756,794 C2)
CBM2014-00073 (Patent 7,761,387 C1)
CBM2014-00074 (Patent 7,752,142 B2)
CBM2014-00075 (Patent 7,827,119 C1)

2
I. INTRODUCTION
Patent Owner, INTTRA, Inc. (“INTTRA”), filed a motion in each of
the proceedings seeking dismissal of the proceeding as barred by 35 U.S.C.
§ 325(a)(1). Paper2 13. Petitioner, GTNX, Inc. (“GTNX”) filed an
Opposition (Paper 16), and Patent Owner filed a Reply to the Opposition
(Paper 18). Based on the present record, and for the reasons stated below,
we grant INTTRA’s motions. Thus, we vacate our Decisions on Institution
in these proceedings, and terminate the covered business method reviews.

II. ANALYSIS
GTNX filed Petitions seeking covered business method (“CBM”)
review of the patents at issue in these cases on February 18 and 19, 2014
(Paper 3), and Patent Owner filed Preliminary Responses on May 27, 2014
(Paper 7). We instituted trial based on the Petitions filed by GTNX on
August 12, 2014. Paper 8. During a conference call held on Thursday,
October 16, 2014, INTTRA requested authorization to file a motion to
dismiss the proceedings based on SecureBuy, LLC v. CardinalCommerce
Corp., Case CBM2014-00035 (PTAB Apr. 25, 2014) (Paper 12)
(Precedential)3. Paper 15. At that time, INTTRA was authorized to file a
ten page motion, and GTNX was authorized to file a ten page opposition.
After GTNX filed its opposition, INTTRA was authorized to file a five page
reply.

2 The paper numbers referred to are the paper numbers in CBM2014-00072.
3 SecureBuy was designated as precedential by the PTAB on July 31, 2014.
CBM2014-00072 (Patent 7,756,794 C2)
CBM2014-00073 (Patent 7,761,387 C1)
CBM2014-00074 (Patent 7,752,142 B2)
CBM2014-00075 (Patent 7,827,119 C1)

3
In SecureBuy, the Board noted that § 18 of the Leahy-Smith America
Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329–31 (2011) (“AIA”)
“provides that covered business method patent review proceedings shall
employ all the statutory standards and procedures of a post-grant review
(i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded (i.e., 35
U.S.C. §§ 321(c); 325(b), (e)(2), (f)).” SecureBuy, Paper 12 at 2. 35 U.S.C.
§ 325(a)(1), which is not expressly excluded by § 18 of the AIA, states:
(1) POST-GRANT REVIEW BARRED BY CIVIL
ACTION.—A post-grant review may not be instituted under
this chapter if, before the date on which the petition for such a
review is filed, the petitioner or real party in interest filed a civil
action challenging the validity of a claim of the patent.
The Board declined to institute covered business review because the
Petitioner in that case had filed two separate civil actions seeking declaratory
judgment that at least one of the claims of the patent at issue is invalid. Id.
at 3.
INTTRA, in its Motion to Dismiss, notes that Petitioner, GTNX,
“filed a declaratory judgment action challenging the validity of all four
patents in 2011.” Paper 13, 2. GTNX, in its opposition, does not dispute
that it filed a declaratory judgment action challenging the validity of the
patents at issue before filing of the instant Petitions, but instead argues that
Patent Owner, INTTRA, waived that argument by failing to raise it in its
Preliminary Response, or in a request for rehearing of the Decisions on
Institution. Paper 16, 1. GTNX argues further that SecureBuy is not
controlling. Id.
CBM2014-00072 (Patent 7,756,794 C2)
CBM2014-00073 (Patent 7,761,387 C1)
CBM2014-00074 (Patent 7,752,142 B2)
CBM2014-00075 (Patent 7,827,119 C1)

4
GTNX’s arguments, however, do not persuade us that these covered
business reviews should not be terminated. 35 U.S.C. § 325(a)(1) is a
statutory requirement and, thus, a Congressional limitation on the Board’s
jurisdiction. GTNX provides no persuasive authority that such a statutory
requirement may be waived. In fact, the statute itself does not authorize the
Board or parties to waive the requirement by stating that (emphasis added),
“review may not be instituted” if a petitioner files a civil action challenging
the validity of a claim of the patent being challenged. Indeed, “[a]n agency
may not confer power upon itself. To permit an agency to expand its power
in the face of a congressional limitation on its jurisdiction would be to grant
to the agency power to override Congress.” La. Pub. Serv. Comm’n v. FCC,
476 U.S. 355, 374–75 (1986). Thus, institution of trial for covered business
method review of a patent challenged by petitioner in a civil action that was
filed before filing a petition for covered business method review is not
within the discretion of the Board. Additionally, the requirement that a
petitioner not have filed a civil action challenging the validity of a claim of
the patent before filing the petition cannot be waived by a patent owner.
GTNX argues further that SecureBuy is not controlling as it “presents
an incomplete analysis of § 18 and, consequently, an incorrect conclusion
regarding standing in [a] CBM.” Paper 16, 3. As a precedential opinion,
under agency authority (SOP 24), SecureBuy controls the outcome of this
matter based on the facts presented.

4 SOP2 may be found at
http://www.uspto.gov/patents/process/appeal/sop2_revision_9_dated_9_22_
2014.pdf
CBM2014-00072 (Patent 7,756,794 C2)
CBM2014-00073 (Patent 7,761,387 C1)
CBM2014-00074 (Patent 7,752,142 B2)
CBM2014-00075 (Patent 7,827,119 C1)

5
Thus, as GTNX filed a declaratory judgment action challenging the
validity of all four patents in 2011, we terminate the covered business
method reviews of these four patents and vacate our institution of review in
these proceedings.

III. CONCLUSION
In consideration of the foregoing, it is:
ORDERED that the trials in CBM2014-00072, CBM2014-00073,
CBM2014-00074, and CBM2014-00075 are hereby terminated; and
FURTHER ORDERED that the Decisions on Institution in
CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-
00075 are hereby vacated.

PETITIONER:

Michael T. Rosato
Susuk Lim
WILSON SONSINI GOODRICH & ROSATI
mrosato@wsgr.com
slim@wsgr.com

PATENT OWNER:

Michael Lyons
Ahrem Hsu-Hoffman
MORGAN, LEWIS & BOCKIUS LLP
mlyons@morganlewis.com
ahsu-hoffman@morganlewis.com