Skip to main content
CAFC Updates


By May 13, 2022No Comments

Bennett owns U.S. Patent No. 5,810,029 directed to an anti-icing device for a gas pressure regulator. Bennett sued Atlanta Gas but ultimately, that litigation was dismissed without prejudice for lack of personal jurisdiction. Exactly one year after Bennett served Atlanta Gas with the complaint, Atlanta Gas filed an IPR petition requesting review of the ’029 patent. Before a final written decision was issued, the Board vacated its institution decision and terminated the IPR because Atlanta Gas failed to list its parent company (a real party-in-interest (RPI)) in its petition. Atlanta Gas then filed a second IPR petition. Throughout the proceeding, Bennett argued that the petition was time barred under 35 U.S.C. § 315(b), but because the district court dismissed the action without prejudice, the Board treated the district court complaint as if it had never been filed. After a final written decision issued holding that the claims at issue were unpatentable, the panel ordered Atlanta Gas to file an updated mandatory notice listing all RPIs. Atlanta Gas complied and, Bennett moved for sanctions, asking the Board to terminate the proceeding and award fees. The Board agreed that sanctions were warranted for Atlanta Gas’s failure to timely update its RPIs, but it granted only monetary sanctions. In a first appeal, the CAFC disagreed with the Board’s interpretation of § 315(b) and remanded. Before the Board acted on remand, the Supreme Court in Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020) held that the CAFC does 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)). On remand, the Board terminated the proceeding due in part to its reconsideration of its decision on the time bar. Atlanta Gas appeals arguing that the Board abused its discretion in terminating the proceeding as a sanction and that the Board’s decision violates the CAFC’s remand mandate. The CAFC concludes that they lack jurisdiction to review the Board’s decision to vacate its institution decision, which was made based on a changed Patent Office policy that treats the service of a complaint on a petitioner (or its RPIs or privies) as starting the time-bar clock, regardless of whether the district court action was subsequently dismissed without prejudice. Accordingly, the CAFC dismisses Atlanta Gas’s appeal for lack of jurisdiction. Judge Newman dissents, because in her view the Board’s ruling in its choice of sanction for Atlanta Gas’ handling of the RPI issue is flawed, and warrants appellate attention. 

View Decision