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

33 F.4th 1348

ATLANTA GAS LIGHT COMPANY, Appellant

v.BENNETT REGULATOR GUARDS, INC., Appellee

2021-1759

United States Court of Appeals, Federal Circuit.

Decided: May 13, 2022

Joshua Nathaniel Mitchell, King & Spalding LLP, Washington, DC, argued for appellant. Also represented by Jeffrey S. Bucholtz ; Russell Blythe, Holmes J. Hawkins, III, Atlanta, GA.

Wayne D. Porter, Jr., Law Offices of Wayne D. Porter, Jr., Brecksville, OH, argued for appellee.

Before Newman, Lourie, and Stoll, Circuit Judges.

Dissenting opinion filed by Circuit Judge Newman.

Stoll, Circuit Judge.

This case from the United States Patent Trial and Appeal Board returns to us for a third time. In its final written decision, the Board, in the underlying inter partes review proceeding, rejected patent owner Bennett Regulator Guards, Inc.'s argument that petitioner Atlanta Gas Light Company was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b). It then determined that the challenged claims were unpatentable over the prior art. Bennett appealed. In that first appeal, we disagreed with the Board's time-bar determination, holding that Atlanta Gas should have been barred; vacated the Board's unpatentability determination; and remanded with directions to dismiss the IPR and to further consider a sanctions order that the Board had not yet finalized.

Before the Board acted on our mandate, however, the Supreme Court held that time-bar determinations were unreviewable in Thryv, Inc v. Click-To-Call Technologies, LP , ––– U.S. ––––, 140 S. Ct. 1367, 206 L.Ed.2d 554 (2020), and vacated our decision overruling the Board's time-bar determination. On remand from the Supreme Court, we affirmed the Board's unpatentability determination on the merits (while saying nothing about the time bar) and again remanded for the Board to reconsider and finalize its order regarding sanctions.

On remand from this court, the Board terminated the proceeding due in part to its reconsideration of its decision on the time bar. Atlanta Gas appeals. We conclude that we lack jurisdiction to review the Board's decision to vacate its institution decision, a decision it made based in part on its evaluation of the time bar and changed Patent and Trademark Office policy. Accordingly, we dismiss Atlanta Gas's appeal for lack of jurisdiction.

BACKGROUND

Bennett is the assignee of the patent-at-issue— U.S. Patent No. 5,810,029. The '029 patent is directed to an anti-icing device for a gas pressure regulator. Bennett sued Atlanta Gas, a distributor of natural gas in Georgia, for infringement of the '029 patent. J.A. 628–30. Atlanta Gas was served with the complaint on July 18, 2012. Id. ; see also J.A. 2645. Ultimately, that litigation was dismissed without prejudice for lack of personal jurisdiction. J.A. 295.

On July 18, 2013, exactly one year after Bennett served Atlanta Gas with the complaint, Atlanta Gas filed an IPR petition requesting review of the '029 patent. J.A. 2645. That IPR was instituted and litigated through oral hearing, awaiting only the final written decision from the Board. See Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc. , No. IPR2013-00453 (P.T.A.B.). Before a final written decision was issued, however, the Board vacated its institution decision and terminated the IPR because Atlanta Gas failed to list all real parties-in-interest (RPIs) in its petition, as required by 35 U.S.C. § 312(a)(2). J.A. 2644–60. Specifically, the Board found that Atlanta Gas failed to list its parent company, AGL Resources (AGLR). Because the Board found AGLR to be "so intertwined" with Atlanta Gas that it should have been listed as an RPI, but it was not, the Board terminated the proceeding without reaching a final written decision on the merits. J.A. 2654. Atlanta Gas requested rehearing of that decision but was denied. J.A. 2666–83; J.A. 2684–93. That decision was not appealed.

After the termination of its first IPR, Atlanta Gas filed another IPR petition on February 27, 2015, challenging the '029 patent claims on substantially the same unpatentability grounds. See Atlanta Gas Light Co. v. Bennett Regul.

Guards, Inc. , No. IPR2015-00826 (P.T.A.B.). This time, the petition described AGLR as "in privity" with Atlanta Gas and, "out of an abundance of caution," Atlanta Gas identified AGLR as an RPI. J.A. 63. This second IPR proceeding is the basis of the current appeal.

The Board instituted the IPR and issued a final written decision in August 2016. Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc. , No. IPR2015-00826, 2016 WL 8969209 (P.T.A.B. Aug. 19, 2016). Throughout the proceeding, Bennett argued that the petition was time barred under 35 U.S.C. § 315(b), but the Board ultimately disagreed. Because the district court dismissed the action without prejudice, the Board treated the district court complaint as if it had never been filed. Id. at *5–6. This was consistent with the Patent and Trademark Office's understanding of § 315(b)'s time bar at that time. On the merits, the Board concluded that the claims at issue were unpatentable. Id. at *13–18.

After the final written decision issued, Bennett learned of a corporate merger involving Atlanta Gas's parent company, AGLR, that had not been disclosed to the Board. The merger occurred after the oral hearing but before the Board's final written decision. J.A. 14–15. Bennett raised this issue to the Board on a conference call, after which one of the administrative patent judges on the panel recused himself. J.A. 15. The panel ordered Atlanta Gas to file an updated mandatory notice listing all RPIs. Atlanta Gas complied and, as it had done with AGLR in its IPR petition, listed the new entities as being "in privity" with Atlanta Gas and identified them as RPIs "out of an abundance of caution." J.A. 712.

Bennett then moved for sanctions, asking the Board to terminate the proceeding and award "compensatory expenses and attorney fees." J.A. 723. The Board agreed that sanctions were warranted for Atlanta Gas's failure to timely update its RPIs, but it granted only monetary sanctions—costs and fees incurred between the final written decision and the sanctions decision. J.A. 17–19. Thereafter, Bennett filed a motion detailing its costs and fees for that specified period, and Atlanta Gas filed an opposition. Around the same time, both parties appealed to our court. The Board did not finalize its sanctions decision before the appeal.

In the first appeal before this court, we disagreed with the Board's interpretation of § 315(b), which assumed that the one-year limitation to file an IPR petition reset when a complaint was dismissed without prejudice. Bennett Regul. Guards, Inc. v. Atlanta Gas Light Co. , 905 F.3d 1311, 1314–15 (Fed. Cir. 2018) ( Bennett I ). Following our then-binding precedent in Click-To-Call Technologies, LP v. Ingenio, Inc. , 899 F.3d 1321 (Fed. Cir. 2018), we held that Atlanta Gas's petition was time barred because it was filed more than one year after Atlanta Gas was served with a complaint alleging patent infringement, even though the complaint was later dismissed without prejudice. Bennett I , 905 F.3d at 1315. Accordingly, we vacated the Board's decision and remanded to terminate the proceeding without reaching the unpatentability merits. We noted that the Board's sanction order might still stand even though we directed the Board to terminate the underlying proceeding. But because the Board had not yet finalized its sanctions decision (i.e., it had not yet set the amount of monetary sanctions), we remanded for the Board to "further consider its order given the outcome of th[e] appeal" and "quantify any sanctions." Id. at 1316.

Before the Board acted on our mandate, the Supreme Court in Thryv held that we do not have jurisdiction to review determinations relating to § 315(b)'s time bar because those determinations are intimately related to institution decisions, which are insulated from appeal by the no-appeal bar ( 35 U.S.C. § 314(d) ). 140 S. Ct. at 1373. In other words, the Supreme Court made clear that we lack the power that we thought we had in Bennett I to review (and overrule) the Board's determination that the IPR was not time barred.

Because we could no longer review the Board's timebar determination, on remand from the Supreme Court, we considered the merits of the Board's unpatentability determination. Bennett Regul. Guards, Inc. v. Atlanta Gas Light Co. , 825 F. App'x 773 (Fed. Cir. 2020) ( Bennett II ). We affirmed the Board's determinations of unpatentability of all claims of the '029 patent, but we maintained the section regarding sanctions—remanding to "further consider" the order and "quantify any sanctions." Id. at 783.

On remand from Bennett II , the Board reconsidered its order granting monetary sanctions, but it also considered the Patent and Trademark Office's new policy on the time bar, which had changed since the Board's last determination—the final written decision which issued before the appeal in Bennett I . Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc. , No. IPR2015-00826, 2021 WL 202800 (P.T.A.B. Jan. 20, 2021) ( Termination Decision ). The Board vacated its institution decision, terminated the proceeding due to the Patent and Trademark Office's policy change on time bar, and declined to award the requested monetary sanctions. The Board explained that "no monetary sanction is warranted because vacatur of the Institution Decision and Final Written Decision, and termination of the proceeding, most effectively resolve the issues on remand by operating as a sufficient sanction while also conforming this Decision to current Office policy" on the time bar. Id. at *3.

Atlanta Gas appeals, arguing that we have jurisdiction to hear the appeal under 28 U.S.C. § 1295(a)(4). For the reasons explained below, we disagree and dismiss the appeal for lack of jurisdiction.

DISCUSSION

Atlanta Gas argues that the Board abused its discretion in terminating the proceeding on remand as a...