In GTNX, INC. v. INTTRA, INC., the PTAB allowed the Patent Owner to file a motion to dismiss several instituted covered business method (CBM) reviews, despite the fact that the ground for dismissal was not raised in the Patent Owner’s Preliminary Response. CBM2014-00072, CBM2014-00073, CBM2014-00074 & CBM2014-00075, Paper 15 (Oct. 27, 2014).
Following institution of four CBM reviews, the Patent Owner sought authorization to file a motion to dismiss based on lack of standing under 35 U.S.C. § 325(a)(1), asserting that the Petitioner had filed a declaratory judgment action challenging the validity of the patents years before filing the CBM petitions. Notably, the Patent Owner did not raise the standing issue in its Preliminary Response.
The Board granted the Patent Owner authorization to file a 10-page motion to dismiss, and the Petitioner was granted authorization for a 10-page opposition to the motion.
While it remains to be seen how the Board will rule on the Patent Owner’s motion to dismiss (including whether it will rule that the standing issue was waived), this decision shows that the Board is willing to at least consider issues for dismissal raised after a case has been instituted.