Atlanta Gas Light Company v. Bennett Regulator Guards Inc., Appeal Nos. 2021-1759 (Fed. Cir. May 13, 2022)
In this week’s Case of the Week, the Federal Circuit Court addressed the third appeal from an underlying inter partes review proceeding in the wake of a recent Supreme Court decision holding time-bar determinations as unreviewable. The Court dismissed for lack of jurisdiction.
The patent at issue (’029 Patent) related to an “anti-icing device for a gas pressure regulator.” Bennett initially sued Atlanta Gas for infringement in 2012. After the 2012 lawsuit was dismissed for lack of personal jurisdiction, Atlanta Gas filed an IPR petition requesting review of the ’029 Patent, which was subsequently terminated due to Atlanta Gas’s failure to list its parent company. In 2015, Atlanta Gas filed a second IPR petition, again requesting review of the ’029 Patent on grounds of unpatentability. That IPR decision is the basis for the current appeal. In its final written decision, the Board rejected Bennett’s argument that Atlanta Gas “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.
In the first appeal, the Federal Circuit reversed the Board’s time-bar determination; held “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.” We covered that appeal here.
Before the Board acted pursuant to such mandate, “the Supreme Court held that time-bar determinations were unreviewable in Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), and vacated [the Federal Circuit’s] decision overruling the Board’s time-bar determination.” The Federal Circuit, on remand from the Supreme Court, “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.” The Board then “terminated the proceeding due in part to its reconsideration of its decision on the time bar.” Atlanta Gas appealed.
On appeal, the Federal Circuit dismissed for lack of subject matter jurisdiction. Atlanta Gas argued that the Federal Circuit had “jurisdiction to review the Board’s decision because it [was] a final sanctions decision reviewable under 28 U.S.C. §1295(a)(4)(A).” In support of this argument, Atlanta Gas focused on the multi-faceted aspect of the Board’s decision to terminate, namely, the inclusion of termination as a form of sanctions and not just in response to time-bar considerations. In response, Bennett argued that the Federal Circuit lacked jurisdiction, “citing 35 U.S.C. § 314(d) and the Supreme Court’s decision in Thryv.” The Federal Circuit agreed with Bennett, finding that the “Board’s substantive discussion of the time-bar considerations was central to its decision.” Thus, the Federal Circuit concluded that the Board’s decision was not purely a sanctions decision over which the Court would ordinarily have jurisdiction. Further, the Federal Circuit explained, “The fact that the Board’s termination decision occurred on remand from [the Federal Circuit] does not change [the Court’s] conclusion that [it] lack[s] jurisdiction.” Thus the Court held that it lacked jurisdiction to hear Atlanta Gas’s appeal because “the Board’s termination decision was based in part on its evaluation of the time bar and was not purely a sanctions decision[.]”
Atlanta Gas further argued that the Board’s termination decision violated the Federal Circuit’s mandate in Bennett II, thereby rendering the Court’s opinion merely advisory. The Court disagreed: “Although the unpatentability issues were locked in on remand by the mandate rule . . . this does not mean the Board violated the mandate rule by terminating the proceeding for time-bar reasons. The Board’s remand decision did not analyze, criticize, or alter the unpatentability issues decided in Bennett II.” Rather, the Court found “the Board based its decision to terminate, in part, on time-bar considerations, which [the Court is] precluded from reviewing [in the wake of Thryv].” Thus, the Board’s termination decision did not violate the Court’s mandate in Bennett II.
Circuit Judge Newman dissented from the majority’s opinion finding the Court had no jurisdiction. Judge Newman argued that the Federal Circuit had appellate jurisdiction over the Board’s decision, explaining that “no exception excludes the appeal of a sanctions order.”
The opinion can be found here.
By Annie White
ALSO THIS WEEK
Sound View Innovations, LLC v. Hulu, LLC, Appeal No. 2021-1998 (Fed. Cir. May 11, 2022)
The Court of Appeals for the Federal Circuit dealt with claim construction issues in a case concerning assertions of inconclusive claim and specification language. To determine the scope of the patent, the Federal Circuit turned to arguments Sound View made during prosecution. The Federal Circuit ultimately vacated and remanded the case due to the District Court’s failure to adequately construct “buffer” in the claim limitation language. The Court also affirmed the District Court’s exclusion of Sound View’s expert testimony regarding reasonable royalties. Sound View tried twice to introduce expert testimony regarding how valuable the patented invention was, and what a reasonable royalty should therefore be. Sound View’s first damages opinion failed for relevance reasons; the expert failed to account for the “substantial differences between the circumstances” of a study evaluating the benefits of “adaptive streaming” to wireless devices in high-speed vehicles, and the expert’s claims regarding the benefits of adaptive streaming to “stationary viewers, on desktop computers or televisions, via WiFi or wired connections[.]” The expert’s second damages opinion failed for reliability reasons; the opinion was based on a press release describing a report authored by a third party, where the expert did not see the report, and the press release did not adequately characterize the underlying study.
The opinion can be found here.
By Tyler Hall
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