Board Has Final Say on Time Bar Decisions


Before Newman, Lourie, and Stoll

Summary: Termination decision made by the Board in part based on the time-bar was “intimately related” to the institution decision, and therefore not reviewable by the Federal Circuit under 35 U.S.C. §314(d).

Bennett sued Atlanta Gas for infringement of its patent related to an anti-icing device for a gas pressure regulator. Atlanta Gas was served with the complaint on July 18, 2012, but the litigation was dismissed by the district court without prejudice for lack of personal jurisdiction. Atlanta Gas filed an IPR petition requesting review of Bennett’s Patent exactly one year after the complaint was served. The IPR was instituted, but before a final written decision was issued, the Board vacated its institution decision and terminated the IPR because Atlanta Gas failed to list all real parties-in-interest in its petition.

In February 2015, Atlanta Gas filed another IPR petition on substantially the same grounds. Bennett argued that this petition was time barred because more than one year had passed since its July 2013 complaint was served. The Board disagreed and reasoned that the one-year clock to file an IPR reset when the district court dismissed the original action without prejudice. After the written decision invalidating Bennett’s Patent was issued, Bennett learned that a corporate merger involving Atlanta Gas’s parent company had occurred, but had not been disclosed to the Board. Bennett moved for sanctions and termination of the proceedings since the merger had occurred before the final written opinion had been issued. The Board agreed that monetary sanctions were appropriate but denied Bennett’s request for termination. Both parties appealed to the Federal Circuit.

The Federal Circuit vacated the Board’s decision and held that Atlanta Gas’s petition was time barred because it was filed more than one year after it was served with a complaint alleging patent infringement. The Court remanded the case for the Board to finalize the outstanding sanctions issues and terminate the proceedings. However, before the Board was able to carry out these orders, the Supreme Court held in Thryve that the Federal Circuit did not have jurisdiction to review time bar determinations since those decisions are intimately related to institution decisions, which are protected from appeal. Accordingly, this case went back to the Federal Circuit to consider the merits of the Board’s invalidity determination. The Court affirmed the invalidity determination, and once again remanded back to the Board to finalize the outstanding sanctions issues.

On remand, the Board vacated both its institution and written decision, and terminated the proceedings due to a change in PTO policy regarding the time bar. In its termination decision, the Board explained that no monetary sanctions would be awarded, because the vacatur and termination “most effectively resolve the issues…by operating as a sufficient sanction…while still conforming to [USPTO policy].”

Atlanta Gas appealed the Board’s vacatur and termination decisions, arguing that the Federal Circuit had jurisdiction because the Board characterized its termination decision as a sanction. The Federal Circuit dismissed the case and found that it lacked jurisdiction because the Board’s termination decision was based in part on the time bar issue. It noted that the Board has sole authority over its institution decisions and inherent authority to reconsider and vacate those decisions, including after remand from the Federal Circuit. Judge Newman provided a dissenting opinion.

Editor: Paul Stewart