Termination of IPR outside of FC jurisdiction, including regarding sanctions

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.

Docket No. 2021-1759 (IPR2015-00826) (https://cafc.uscourts.gov/opinions-orders/21-1759.OPINION.5-13-2022_1951471.pdf)


May 13, 2022

Brief Summary:   Appeal dismissed as FC lacked jurisdiction over IPR termination. Summary:  Atlanta Gas appealed USPTO IPR decision termination of its IPR proceeding regarding US 5,810,029 directed to an anti-icing device for a gas pressure regulator.  This is the third time this case has been in front of the FC.  The USPTO Board (“Board”) issued a final written decision (FWD) rejecting patent owner Bennett’s argument that Atlanta Gas was time-barred under 35 U.S.C. § 315(b) for failing to list all real parties-in-interest (RPIs) and determined that the challenged claims were unpatentable over the prior art.  That decision was appealed to the FC which found Atlanta should have been time-barred, vacated the unpatentability determination, and remanded the decision to the Board.  Before the Board’s reconsideration SCOTUS vacated the FC panel time-bar decision (Thryv, US 2020), and the FC subsequently affirmed the Board’s unpatentability decision without addressing the time-bar and again remanded the decision.  The Board then terminated the proceeding based on its prior decision that Atlanta Gas was time barred, and Atlanta Gas filed this appeal.  This opinion explains that Atlanta Gas filed IPR petition IPR2013-00453 on July 18, 2013, “exactly one year after Bennet served” it with its infringement complaint, but this IPR was dismissed on the Board’s finding that Atlanta Gas did not list all the real parties-in-interest (RPIs) (“failed to list its parent company”), and Atlanta’s petition for rehearing was denied but not appealed.  Atlanta then filed IPR2015-00826 (the subject of this appeal) on Feb. 27, 2015 with the same unpatentability challenge as the first IPR, and naming its parent company as an RPI.  The Board found that challenge not to be time-barred because the DC dismissed the infringement action without prejudice, and therefore “treated the [DC] complaint as if it had never been filed…consistent with the [USPTO’s] understanding of § 315(b)’s time bar at that time”.  The Board concluded in a FWD the challenged claims were unpatentable.  Bennett then learned that a corporate merger involving Atlanta’s parent company had not been disclosed during the proceeding and the Board granted monetary sanctions for Bennett’s “costs and fees incurred between the final written decision and the sanctions decision.”  Atlanta appealed and the FC remanded that decision (Bennet I), but the SCOTUS Thryv decision issued before the Board acted.  The FC then affirmed the Board’s upatentability decision in Bennett II but disagreed with the sanctions.  On remand, the Board reconsidered the sanctions but also vacated its institution decision, terminated the proceedings and declined the sanctions.  In this appeal, Atlanta argued the Board abused its discretion but the FC panel disagreed, concluding it lacked jurisdiction (GTNX, FC 2015; BioDelivery, FC 2019; SAS, US 2018 (no partial institutions, “Board had only a binary choice to institute or not.”)).  Judge Newman dissented, arguing “no exception” in the statute “excludes the appeal of a sanctions order”.

This entry was posted in Appeal, Inter Parties Review (IPR), IPR. Bookmark the permalink.

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