Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. CBM2014-00072, CBM2014-00073, CBM2014-00074, CBM2014-00075.
BORIS FELDMAN, Wilson, Sonsini, Goodrich & Rosati, PC, Palo Alto, CA, for appellant. Also represented by STEFANI E. SHANBERG, ROBIN L. BREWER, San Francisco, CA; MICHAEL T. ROSATO, Seattle, WA; RICHARD TORCZON, Washington, DC; GIDEON A. SCHOR, New York, NY.
MICHAEL JOHN LYONS, Morgan, Lewis & Bockius LLP, Palo Alto, CA, for appellee. Also represented by WALTER SCOTT TESTER, AHREN CHRISTIAN HSU-HOFFMAN, DAVID VINCENT SANKER; THOMAS M. PETERSON, San Francisco, CA.
Before DYK, TARANTO, and CHEN, Circuit Judges.
Taranto, Circuit Judge.
At the request of GTNX, Inc., the Patent Trial and Appeal Board instituted " covered business method patent" review proceedings for four patents owned by INTTRA, Inc. A few months later, the Board reconsidered its institution decisions, determined that institution of proceedings in these matters violated a statutory proscription, vacated the institution decisions, and terminated the proceedings. GTNX, Inc. v. INTTRA, Inc., CBM2014-00073 et al., 2014 WL 7723800 (PTAB Dec. 5, 2014). GTNX appeals, and INTTRA moves to dismiss the appeal. We grant the motion. In addition, treating the appeal in the alternative as a mandamus petition, we deny mandamus relief.
In the Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18, 125 Stat. 284, 329-31 (2011), Congress required the Patent and Trademark Office to establish a " transitional post-grant review proceeding for review of the validity of covered business method patents." § 18(a)(1). Section 18(a)(1) states a general rule, subject to exceptions not material here, that the PTO must " employ," for such review, the " standards and procedures of[ ] a post-grant review under chapter 32 of title 35," i.e., 35 U.S.C. § § 321-329.
Section 324 authorizes the Director of the PTO to institute post-grant review, but by regulation, the Director has delegated to the Board the responsibility to make the institution determination. 37 C.F.R. § § 42.4, 42.208. Of relevance to this case, 35 U.S.C. § 325(a)(1) declares that " review may not be instituted . . . 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." And § 324(e) declares that " [t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable."
Once review has been instituted, the Board conducts the post-grant review. § 326(c). " If a post-grant review is instituted and not dismissed under this chapter," the Board " shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d)." § 328(a). Section 329 authorizes a party dissatisfied with the Board's final written decision with respect to ...