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

Case: 21-1759 Document: 29 Page: 1 Filed: 05/13/2022

United States Court of Appeals

for the Federal Circuit

______________________

ATLANTA GAS LIGHT COMPANY,

Appellant

v.

BENNETT REGULATOR GUARDS, INC.,

Appellee

______________________

2021-1759

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2015-

00826.

______________________

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.

Opinion for the court filed by Circuit Judge STOLL.

Case: 21-1759 Document: 29 Page: 2 Filed: 05/13/2022

2 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

Dissenting opinion filed by Circuit Judge NEWMAN.

STOLL, Circuit Judge.

This case from the United States Patent Trial and Ap-

peal Board returns to us for a third time. In its final writ-

ten decision, the Board, in the underlying inter partes

review proceeding, rejected patent owner Bennett Regula-

tor 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 disa-

greed 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, 140 S. Ct. 1367 (2020), and vacated our decision over-

ruling the Board’s time-bar determination. On remand

from the Supreme Court, we affirmed the Board’s un-

patentability determination on the merits (while saying

nothing about the time bar) and again remanded for the

Board to reconsider and finalize its order regarding sanc-

tions.

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.

Case: 21-1759 Document: 29 Page: 3 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 3

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 dis-

missed 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 hear-

ing, 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 At-

lanta 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 inter-

twined” with Atlanta Gas that it should have been listed as

an RPI, but it was not, the Board terminated the proceed-

ing without reaching a final written decision on the merits.

J.A. 2654. Atlanta Gas requested rehearing of that deci-

sion but was denied. J.A. 2666–83; J.A. 2684–93. That de-

cision 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 unpatentabil-

ity 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

Case: 21-1759 Document: 29 Page: 4 Filed: 05/13/2022

4 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

and, “out of an abundance of caution,” Atlanta Gas identi-

fied 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, Ben-

nett argued that the petition was time barred under

35 U.S.C. § 315(b), but the Board ultimately disagreed. Be-

cause the district court dismissed the action without prej-

udice, 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 com-

pany, 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 ex-

penses 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 sanc-

tions—costs and fees incurred between the final written de-

cision and the sanctions decision. J.A. 17–19. Thereafter,

Case: 21-1759 Document: 29 Page: 5 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 5

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. Ben-

nett I, 905 F.3d at 1315. Accordingly, we vacated the

Board’s decision and remanded to terminate the proceed-

ing 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 “fur-

ther 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 re-

view 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-ap-

peal 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.

Case: 21-1759 Document: 29 Page: 6 Filed: 05/13/2022

6 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

Because we could no longer review the Board’s time-

bar determination, on remand from the Supreme Court, we

considered the merits of the Board’s unpatentability deter-

mination. Bennett Regul. Guards, Inc. v. Atlanta Gas Light

Co., 825 F. App’x 773 (Fed. Cir. 2020) (Bennett II). We af-

firmed 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 determina-

tion—the final written decision which issued before the ap-

peal 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 pro-

ceeding 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 mone-

tary sanction is warranted because vacatur of the Institu-

tion Decision and Final Written Decision, and termination

of the proceeding, most effectively resolve the issues on re-

mand by operating as a sufficient sanction while also con-

forming 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 ap-

peal for lack of jurisdiction.

DISCUSSION

Atlanta Gas argues that the Board abused its discre-

tion in terminating the proceeding on remand as a sanction

and that the Board’s decision violates our mandate in Ben-

nett II. Bennett responds that we do not have jurisdiction

Case: 21-1759 Document: 29 Page: 7 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 7

to review the Board’s termination decision due to the “No

Appeal” bar of 35 U.S.C. § 314(d). As explained below, we

agree with Bennett that we lack jurisdiction and that the

Board’s determination was not inconsistent with our man-

date. We address each argument in turn.

I

Atlanta Gas contends that we have jurisdiction to re-

view the Board’s decision because it is a final sanctions de-

cision reviewable under 28 U.S.C. § 1295(a)(4)(A). 1

Bennett counters that we lack jurisdiction, citing 35 U.S.C.

§ 314(d) and the Supreme Court’s decision in Thryv. Be-

cause we conclude that the Board’s termination decision

was based in part on its evaluation of the time bar and was

not purely a sanctions decision, we conclude that we lack

jurisdiction to hear Atlanta Gas’s appeal.

The Board’s “termination” decision was multifaceted,

considering Bennett’s requested monetary sanctions based

on Atlanta Gas’s failures to disclose RPIs and also consid-

ering “time-bar issues.” Termination Decision, 2021 WL

202800, at *1. As the cover page to the decision suggests,

the Board was revisiting its institution decision under

§ 314, considering the time bar under § 315(a)(1) and (b),

and evaluating Bennett’s motion for costs and fees under

37 C.F.R. § 42.12. Id. As the Board itself noted, its deci-

sion “terminating [the] proceeding, including vacating [its]

Institution Decision and Final Written decision, result[ed]

from a holistic evaluation of multiple considerations,”

1 Atlanta Gas also argues that any discussion in the

Board’s decision on remand not regarding sanctions vio-

lates our mandate in Bennett II. See, e.g., Appellant’s Re-

ply Br. 26 (arguing if the Board vacated outside of the

context of a sanction “it would plainly have exceeded this

Court’s mandate”). For the reasons explained in the fol-

lowing section, we disagree.

Case: 21-1759 Document: 29 Page: 8 Filed: 05/13/2022

8 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

including “time-bar issues” and “the development of both

the law and Office policy on those issues over the course of

the proceeding.” Termination Decision, 2021 WL 202800,

at *3.

Furthermore, the Board’s substantive discussion of

time-bar considerations was central to its decision. The

Board described the “lengthy and complex history of [the]

proceeding” including the facts relevant to the time bar and

the changes in legal precedent and the Patent and Trade-

mark Office’s policy. Id. at *1. The Office’s new policy

adopts the view of the time bar that we applied in Ben-

nett I, which was based on our prior precedent, Click-To-

Call (vacated by Thryv). Termination Decision, 2021 WL

202800, at *3–4 (citing Microsoft Corp. v. Parallel Net-

works Licensing, LLC, No. IPR2015-00483, 2020 WL

5803053, at *2–3 (P.T.A.B. Sept. 29, 2020) (describing this

history in more detail)). Specifically, the new policy 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 dis-

missed without prejudice. Id.

Even Atlanta Gas acknowledges that time-bar issues

were at the core of the Board’s decision. For instance, it

argues “the Board’s real reason for choosing termination”

was to “align this case with ‘Office-policy developments’ on

a time-bar issue.” Appellant’s Br. 5 (quoting Termination

Decision, 2021 WL 202800, at *3); see also Appellant’s Re-

ply Br. 23 (“[T]he only thing that can explain the Board’s

termination order is that the Board saw this Court’s sanc-

tions remand as an opportunity to align this case with the

Board’s new time-bar policy.”). Thus, we cannot conclude

that the Board’s decision was purely a sanctions decision

over which we ordinarily would have jurisdiction.

The fact that the Board’s termination decision occurred

on remand from our court does not change our conclusion

that we lack jurisdiction. The Board retains the inherent

Case: 21-1759 Document: 29 Page: 9 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 9

authority to reconsider its decisions. See GTNX, Inc.

v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015) (cit-

ing Tokyo Kikai Seisakusho, Ltd. v. United States, 529 F.3d

1352, 1360 (Fed. Cir. 2008)). And when the Board chooses

to vacate its institution decision, even on remand,

§ 314(d)’s no-appeal bar makes clear that it is outside of our

jurisdiction to review. This was illustrated in BioDelivery

Sciences International, Inc. v. Aquestive Therapeutics, Inc.,

935 F.3d 1362, 1366–67 (Fed. Cir. 2019).

BioDelivery involved three IPR proceedings in which

the Board had instituted review on only some of the

grounds presented by the petitioner (one ground per peti-

tion). Id. at 1363–64. The Board issued final written deci-

sions in each IPR, rejecting the sole instituted ground of

unpatentability and not addressing the non-instituted

grounds. Id. The petitioner appealed. Id. While that ap-

peal was pending, the Supreme Court overruled the

Board’s practice of partially instituting IPR proceedings.

SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Per SAS,

the Board had only a binary choice to institute or not. Id.

at 1355. The petitioner in BioDelivery moved in this court

for a remand to the Board under SAS, which we granted

before deciding the merits of its appeal. BioDelivery,

935 F.3d at 1364.

On remand, the Board modified its institution deci-

sions to instead deny the petitions and terminate the pro-

ceedings. Id. The Board emphasized certain

considerations it must take into account when deciding

whether to institute a proceeding, including its discretion

to deny institution even if the threshold for institution2 is

2 Section 314 governs institutions of IPRs and states

at its “threshold” that the Director may not institute unless

“there is a reasonable likelihood that the petitioner would

prevail with respect to at least 1 of the claims challenged

in the petition.”

Case: 21-1759 Document: 29 Page: 10 Filed: 05/13/2022

10 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

met and its requirement to consider the effect on the “effi-

cient administration of the Office.” Id. Taking these con-

siderations into account—and looking anew at the

petitioner’s other grounds, which were not previously insti-

tuted—it concluded that denial of institution was appropri-

ate because “the overwhelming majority of unpatentability

grounds presented by Petitioner fail[ed] to meet the stand-

ard for institution.” Id. at 1364–65 (quoting the Board’s

decision).

The petitioner again appealed. We dismissed the ap-

peal for lack of jurisdiction. Id. at 1365–67. Like the

Board’s decision, we noted the Board’s “discretion to not in-

stitute even when the threshold showing is met,” citing rea-

sons such as “administrative efficiency.” Id. at 1365–66

(quoting Saint Regis Mohawk Tribe v. Mylan Pharms. Inc.,

896 F.3d 1322, 1327 (Fed. Cir. 2018)). We then noted that

§ 314(d) “plainly states that the Patent Office’s decision

whether to institute IPR is not appealable” and that this

includes the Board’s vacatur of prior institution decisions.

Id. at 1366. Accordingly, we concluded that we lacked ju-

risdiction to review the Board’s reconsideration of its insti-

tution decision and its discretionary denial of institution,

and we dismissed the appeal. Id. at 1367.

The facts here are similar. As in BioDelivery, this ap-

peal involved a remand from our court for the Board to re-

consider certain issues. On remand, the Board analyzed

considerations that are uniquely within its discretion to

consider—time-bar policy here, and “efficient administra-

tion of the Office” in BioDelivery, id. at 1364–65. As in Bi-

oDelivery, “we would be strained to describe these decisions

to modify the Board’s previous institution decisions and

deny institution on remand as anything but a ‘determina-

tion whether to institute’ proceedings—statutory language

that is not limited to an initial determination to the exclu-

sion of a determination on reconsideration.” Id. at 1366

(quoting 35 U.S.C. § 314(d)) (cleaned up). Accordingly, the

result is as it was in BioDelivery: the Board’s termination

Case: 21-1759 Document: 29 Page: 11 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 11

decision on remand, which depends on its analysis of

§ 315(b)’s time bar and changed Patent and Trademark Of-

fice policy related thereto, is final and nonappealable.

Our conclusion that we lack jurisdiction to review the

Board’s termination decision does not end our inquiry,

however, as Atlanta Gas also argues that the termination

decision violates our mandate in Bennett II.

II

Atlanta Gas argues that any portions of the Board’s

termination decision that were not focused on the “narrow

purpose” of “quantify[ing] its sanctions award” violates our

mandate in Bennett II. Appellant’s Br. 43–44 (quoting Ben-

nett II, 825 F. App’x. at 775, 783). We disagree.

Our interpretation of our own mandate is a question of

law reviewed de novo. Laitram Corp. v. NEC Corp.,

115 F.3d 947, 950 (Fed. Cir. 1997). Under the mandate

rule, “[o]nly the issues actually decided—those within the

scope of the judgment appealed from, minus those explic-

itly reserved or remanded by the court—are foreclosed from

further consideration.” Engel Indus., Inc. v. Lockformer

Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999).

Atlanta Gas argues that the Board’s termination has

the effect of “revers[ing]” our determination in Bennett II—

which affirmed the unpatentability of the claims of the

’029 patent—rendering our opinion merely advisory. Ap-

pellant’s Reply Br. 19; see also Appellant’s Br. 42–44. Alt-

hough the unpatentability issues were locked in on remand

by the mandate rule, as Atlanta Gas argues, 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 unpatenta-

bility issues decided in Bennett II. “Reversing” this court’s

determination—as Atlanta Gas would have us believe oc-

curred—would have involved the Board disagreeing with

our unpatentability decision and changing course on

Case: 21-1759 Document: 29 Page: 12 Filed: 05/13/2022

12 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

remand. There is no indication that the Board had a

change of heart regarding the merits. Indeed, it would

make little sense for the Board to disagree with our deci-

sion affirming the Board’s unpatentability determination.

Instead, the Board based its decision to terminate, in part,

on time-bar considerations, which we are precluded from

reviewing.

Furthermore, our mandate in Bennett II did not fore-

close the Board from reconsidering its stance on the time

bar. In Bennett I, we expressly reached the time-bar issue,

reversing the Board. If that had been the end of the story,

the Board would have been precluded from reconsidering

the time bar by the mandate rule because we actually de-

cided the issue. But the Supreme Court vacated our deter-

mination following Thryv, making clear that such time-bar

determinations are outside of our jurisdiction to review. In

accordance with the Supreme Court’s direction, our deci-

sion in Bennett II did not touch the time-bar issue and ad-

dressed the unpatentability arguments on the merits. We

said nothing about the time bar because we could not say

anything. Moreover, the Board retains “inherent author-

ity” to reconsider its decisions regarding institution,

GTNX, 789 F.3d at 1313, including after a remand from our

court, BioDelivery, 935 F.3d at 1366. Thus, the Board per-

missibly took its first opportunity to reconsider its applica-

tion of the time bar on remand after Bennett II.

Although we disagree with Atlanta Gas that the Board

violated our mandate in Bennett II, we recognize that the

result here is unusual and would be inappropriate in most

cases. Typically, cases are not terminated on remand after

the merits have been affirmed. But this result is not prob-

lematic in this specific case. Here, contrary to Atlanta

Gas’s arguments, see, e.g., Appellant’s Reply Br. 26, there

is no concern about “shenanigans.” As discussed above, we

agreed with the Board’s merits determination and affirmed

its decision on that front, so it would be hard to understand

why the Board would seek to nullify our opinion other than

Case: 21-1759 Document: 29 Page: 13 Filed: 05/13/2022

ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC. 13

for appropriate reasons. And we see nothing that indicates

the Board was seeking to subvert the mandate by using the

time-bar determination as a pretext. We note that, de-

pending on the evidence presented, such a case could be

considered “shenanigans,” which would be reviewable un-

der the Administrative Procedure Act or on mandamus re-

view. See Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261,

275 (2016) (suggesting “shenanigans” would be reviewable

under 35 U.S.C. § 319 and under the APA); see also Sling

TV, L.L.C. v. Realtime Adaptive Streaming LLC,

840 F. App’x 598, 599 (Fed. Cir. 2021) (indicating we would

have jurisdiction to consider, in extraordinary circum-

stances, a mandamus petition challenging a decision to de-

institute) (citing Mylan Lab’ys Ltd. v. Janssen

Pharmaceutica, N.V., 989 F.3d 1375, 1379–80 (Fed. Cir.

2021)). 3

Accordingly, we conclude that the Board’s termination

decision did not violate our mandate in Bennett II. Alt-

hough the outcome here is that the merits determination

became moot in light of the Board’s time-bar reconsidera-

tion, Atlanta Gas has not persuaded us that the Board did

so for reasons that would allow our review.

3 On the penultimate page of Atlanta Gas’s reply

brief, it requests that we treat its appeal as a petition for a

writ of mandamus. This request is too late, being brought

for the first time in reply, and too little, being asked in a

footnote. Norman v. United States, 429 F.3d 1081, 1091 n.5

(Fed. Cir. 2005) (“Arguments raised for the first time in a

reply brief are not properly before this court.”); SmithKline

Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320

(Fed. Cir. 2006) (“[A]rguments raised in footnotes are not

preserved.”).

Case: 21-1759 Document: 29 Page: 14 Filed: 05/13/2022

14 ATLANTA GAS LIGHT CO. v. BENNETT REGUL. GUARDS, INC.

CONCLUSION

We conclude that we lack jurisdiction to review the

Board’s termination decision vacating its institution deci-

sion based, in part, on its consideration that the proceeding

should have been time barred from the outset. We have

considered Atlanta Gas’s other arguments and find them

without merit.

DISMISSED

Case: 21-1759 Document: 29 Page: 15 Filed: 05/13/2022

United States Court of Appeals

for the Federal Circuit

______________________

ATLANTA GAS LIGHT COMPANY,

Appellant

v.

BENNETT REGULATOR GUARDS, INC.,

Appellee

______________________

2021-1759

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. IPR2015-

00826.

______________________

NEWMAN, Circuit Judge, dissenting.

The PTAB’s sanctions order is not excluded from the

appellate jurisdiction of the Federal Circuit, as the panel

majority holds. Our appellate jurisdiction of PTAB deci-

sions is set by statute; no exception excludes the appeal of

a sanctions order. I respectfully dissent from the majority’s

ruling that we do not have jurisdiction of this appeal.

DISCUSSION

The subject patent is U.S. Patent No. 5,810,029 (“the

’029 patent”), assigned to Bennett Regulator Guards, Inc.

This appeal is from the Patent Trial and Appeal Board’s

(PTAB) issuance of a Sanctions Order against the inter

partes review (IPR) petitioner Atlanta Gas Light Company,

Case: 21-1759 Document: 29 Page: 16 Filed: 05/13/2022

2 ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC.

for failure to initially list its corporate parent and all other

possible privies as a “real party in interest,” as required by

35 U.S.C. § 312(a)(2). In the Sanctions Order on appeal,

the PTAB replaced its prior sanction of attorney fees and

costs with the sanction of vacatur of the PTAB’s final IPR

decision and termination of all IPR proceedings. 1

On appeal, Atlanta Gas states that the sanction of va-

catur of the PTAB’s final IPR decision holding all the ’029

patent claims invalid, and terminating all IPR proceedings,

is heavily disproportionate to the asserted offense, and

thus is arbitrary and contrary to law and precedent. At-

lanta Gas also states that its initial designation of real

party in interest conformed with precedent, and that in all

events it provided an amended listing to meet the PTAB’s

objections.

The Sanctions Order is the only issue on appeal. The

panel majority holds that we do not have jurisdiction to re-

ceive this appeal. Atlanta Gas argues that the award of

sanctions is routinely appealable and conforms to the juris-

dictional authority of the Federal Circuit for PTAB ap-

peals. Patent owner Bennett responds that the PTAB

acted in accordance with law. The panel majority con-

cludes that “we lack jurisdiction to review the Board’s ter-

mination decision vacating its institution decision based,

in part, on its consideration that the proceeding should

have been time barred from the outset.” Maj. Op. at 14.

I cannot agree that this action is not subject to judicial

review. Appellate jurisdiction is fundamental to the pro-

cesses of law. See, e.g., Touby v. United States, 500 U.S.

160, 170 (1991) (Marshall, J., concurring) (“judicial review

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

Inc., IPR2015–00826, 2021 WL 202800, at *4 (P.T.A.B.

Jan. 20, 2021) (“Sanctions Order”).

Case: 21-1759 Document: 29 Page: 17 Filed: 05/13/2022

ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. 3

perfects a delegated-lawmaking scheme by assuring that

the exercise of such power remains within statutory

bounds.”); Zadvydas v. Davis, 533 U.S. 678, 692 (2001) (the

Supreme “Court has suggested, however, that the Consti-

tution may well preclude granting ‘an administrative body

the unreviewable authority to make determinations impli-

cating fundamental rights.’”) (quoting Superintendent,

Mass. Corr. Inst. at Walpole v. Hill, 472 U.S. 445, 450

(1985)).

Here the agency imposed the sanction of cancellation

of extensive administrative proceedings and their final de-

cisions of patent invalidity, which final decisions had been

appealed to the Federal Circuit and affirmed with issuance

of the mandate on patent invalidity. We surely have juris-

diction to receive appeal of the agency action vacating all

these proceedings and decisions, and purportedly including

vacatur of decisions of the Federal Circuit. Our appellate

jurisdiction is surely within our statutory assignment of ju-

dicial review of decisions of the PTAB.

The imposed sanction arises from Atlanta Gas’ no-

tice listing of real parties in interest

The only issue on appeal is the Sanctions Order, and

all agree that the basis for the sanction is Atlanta Gas’ ac-

tions relating to the mandatory listing of the real parties in

interest. Atlanta Gas summarizes the focus of the debate

as to real parties in interest, as follows:

Just before the Board’s Final Written Decision in

2016, AGLC’s parent company AGL Resources was

involved in a merger and was renamed. Bennett

challenged AGLC’s mandatory notices before the

Board, arguing that (1) AGL Resources’ new parent

company, The Southern Company, was an RPI, and

(2) AGL Resources itself—already listed as an

RPI—was a new RPI due to its name change.

Case: 21-1759 Document: 29 Page: 18 Filed: 05/13/2022

4 ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC.

AGLC pressed numerous meritorious factual argu-

ments that The Southern Company was not an RPI

and AGL Resources’ name change did not create a

new RPI.

Atlanta Gas Br. 1–2 (emphasis in original). After the

PTAB disagreed, Atlanta Gas states that “in an effort to

avoid an unnecessary procedural skirmish, AGLC prof-

fered—and the Board accepted—an updated notice ‘that

out of an abundance of caution and to avoid any dispute

over the proper scope of Petitioner’s real party-in-interest

designation’ included The Southern Company along with

AGL Resources’ name change.” Id. at 2 (quoting Updated

Mandatory Notice of Atlanta Gas Light Co., IPR2015–

00826, 4 (P.T.A.B. Sept. 23, 2016) (Appx712).

The PTAB accepted the updated notice, and denied

Bennett’s request to terminate the IPR. The PTAB con-

ducted the proceeding and decided the merits of the IPR,

holding claims 1–8 of the ’029 patent invalid for anticipa-

tion or obviousness. The PTAB announced the imposition

of a sanction on Atlanta Gas, based on the cost to Bennett

to prosecute the real-party-in-interest issue. The decision

did not quantify the sanction. Atlanta Gas Light Company

v. Bennett Regulatory Guards, Inc., IPR 2015-00826

(P.T.A.B. Dec. 6, 2016) (Decision on Patent Owner’s Re-

quest for Rehearing and Patent Owner’s Motion for Sanc-

tions) (Appx 12–33).

Both sides appealed; Bennett argued that the IPR was

time-barred, and also appealed the merits of the invalidity

decision. Atlanta Gas appealed the still-unquantified sanc-

tion.

The Federal Circuit vacated the PTAB’s decision on

time-bar grounds, stating that “[b]ecause the Board ex-

ceeded its authority and contravened § 315(b)’s time bar

when it instituted Atlanta Gas’ petition, we vacate its final

written decision.” Bennett Regulator Guards, Inc. v.

Case: 21-1759 Document: 29 Page: 19 Filed: 05/13/2022

ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. 5

Atlanta Gas Light Co., 905 F.3d 1311, 1313 (Fed. Cir. 2018)

(“Bennett I”). As for the sanction, the court remanded to

the PTAB for quantification of the monetary amount of

Bennett’s costs and attorney fees. Id. at 1316.

Meanwhile the Supreme Court had granted certiorari

in a case that concerned a PTAB time-bar issue. In 2020

the Court decided Thryv, Inc. v. Click-to-Call Technologies,

LP, 140 S. Ct. 1367 (2020), holding that 35 U.S.C. § 314(d)

precludes judicial review of the PTAB’s time-bar decision

in the institution phase. The Court stated:

The question before us: Does § 314(d)’s bar on judi-

cial review of the agency’s decision to institute in-

ter partes review preclude Click-to-Call’s appeal?

Our answer is yes. The agency’s application of

§ 315(b)’s time limit, we hold, is closely related to

its decision whether to institute inter partes review

and is therefore rendered nonappealable

by § 314(d).

Id. at 1370. The Court required dismissal by the Federal

Circuit for lack of appellate jurisdiction.

Based on its decision in Thryv, the Supreme Court

granted certiorari for the appeal of Bennett I, and vacated

and remanded our decision. Atlanta Gas Light Co. v. Ben-

nett Regulator Guards, Inc., 140 S. Ct. 2711 (2020) (GVR).

The case was remanded to “the Federal Circuit for further

consideration in light of Thryv, Inc. v. Click-to-Call Tech-

nologies, LP . . . .”

The Supreme Court’s decision in Thryv and the ensu-

ing GVR require attention. In Thryv the Court did not hold

that all time-bar determinations under 35 U.S.C. § 315(b)

are unappealable; the Court held that “institution” deci-

sions containing time-bar issues are unappealable because

they relate to institution. Thryv, 140 S. Ct. at 1370. How-

ever, a sanctions decision does not “expressly govern[] in-

stitution and nothing more.” Id. at 1373.

Case: 21-1759 Document: 29 Page: 20 Filed: 05/13/2022

6 ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC.

On remand, the Federal Circuit held that since we

could not review whether the IPR was time-barred, the

merits of the PTAB’s invalidity decision remained before

us. We then affirmed the PTAB’s decision that claims 1–8

of the ’029 patent are invalid. Bennett Regulator Guards,

Inc. v. Atlanta Gas Light Co., 825 Fed. App’x 773 (Fed. Cir.

2020) (“Bennett II”). Our mandate affirmed invalidity and

remanded to the PTAB to “quantify any sanctions.” Id. at

783.

On receiving the remand, the PTAB “modified” its

award of monetary sanctions of attorney fees and costs,

stating that Bennett’s quantification of $96,338.30 “signif-

icantly exceeds the range that we contemplated.” Sanc-

tions Order at *3. The PTAB then imposed the sanction of

vacating all IPR decisions and terminating all IPR proceed-

ings. The PTAB stated that vacatur and termination “most

effectively resolve the issues on remand by operating as a

sufficient sanction while also conforming this Decision to

current Office policy.” Id. at *4.

Atlanta Gas appeals, arguing that the sanction is dis-

proportionate to the asserted infraction, raising the ques-

tion of the authority of the PTAB to vacate Federal Circuit

final decisions, and stating that this action leaves the ’029

patent in “an uncertain state of suspended animation.” At-

lanta Gas Br. 1. Atlanta Gas requests appellate review and

clarification. However, the panel majority holds that we do

not have jurisdiction to receive this appeal. I cannot agree.

Statute and precedent support Federal Circuit juris-

diction over appeal of the Sanctions Order

The Federal Circuit plainly has routine appellate juris-

diction over the PTAB’s award of sanctions.

The criteria for the award of sanctions are well-estab-

lished. In Gerritsen v. Shirai, 979 F.2d 1524 (Fed. Cir.

1992), this court applied these criteria to the PTAB’s award

Case: 21-1759 Document: 29 Page: 21 Filed: 05/13/2022

ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. 7

of sanctions in an interference action. We stated that “[w]e

have jurisdiction pursuant to 35 U.S.C. § 141 and 28 U.S.C.

§ 1295(a)(4)(A),” and summarized the criteria for review of

the PTAB’s sanction award:

[W]e review both a 37 C.F.R. § 1.616 decision to

sanction an interference party and the choice of

sanction for abuse of discretion. An abuse of dis-

cretion occurs if the Board’s decision (1) is clearly

unreasonable, arbitrary, or fanciful; (2) is based on

an erroneous conclusion of law; (3) rests on clearly

erroneous fact findings; or (4) follows from a record

that contains no evidence on which the Board could

rationally base its decision.

Id. at 1529 (citing Heat & Control, Inc. v. Hester Indus.,

Inc., 785 F.2d 1017, 1022 (Fed. Cir. 1986)). The Gerritsen

court affirmed the Board’s determination that sanctionable

conduct had occurred, but the court also reviewed the sub-

stance of the award, and concluded that the sanction of dis-

missal of the interference proceeding was an abuse of

discretion. Id. at 1531–32.

However, the panel majority here holds that we have

no jurisdiction to review the PTAB’s sanction. This holding

does not comport with precedent, and conflicts with the

court’s assigned jurisdiction over final decisions of the

PTAB. See 35 U.S.C. § 141(c):

(c) A party to an inter partes review . . . who is dis-

satisfied with the final written decision of the Pa-

tent Trial and Appeal Board . . . may appeal the

Board’s decision only to the United States Court of

Appeals for the Federal Circuit.

No statute, no precedent, removes sanctions issues from

appealability. I take note that the panel majority, while

holding that it does not have jurisdiction of appeal of the

termination sanction, also “conclude[s] that the Board’s

termination decision did not violate our mandate in

Case: 21-1759 Document: 29 Page: 22 Filed: 05/13/2022

8 ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC.

Bennett II.” Maj. Op. at 14. The majority also observes

that “the outcome here is that the merits determination be-

came moot,” id., although this result is contrary to our

mandate in Bennett II holding the ’029 patent invalid. The

majority adds to the contradictions, even while denying ju-

risdiction.

With this denial of appellate review, the PTAB’s sanc-

tions action stands as final, authorizing the PTAB to vacate

PTAB final decisions at any time, here restoring the ’029

patent to validity despite the Federal Circuit’s affirmance

of invalidity. Yet the panel majority holds that “we lack

jurisdiction to review the Board’s termination decision.”

Id.

In addition to 35 U.S.C. § 314(c), shown ante, Federal

Circuit jurisdiction is assigned in 28 U.S.C. § 1295(a)(4)(A):

(a) The United States Court of Appeals for the Fed-

eral Circuit shall have exclusive jurisdiction . . .

(4) of an appeal from a decision of—(A) the Patent

Trial and Appeal Board of the United States Patent

and Trademark Office . . . .

The right of judicial review of decisions of administra-

tive agencies has long been recognized. See, e.g., St. Joseph

Stock Yards Co. v. United States, 298 U.S. 38, 84 (1936)

(Brandeis, J., concurring) (“The supremacy of law demands

that there shall be opportunity to have some court decide

whether an erroneous rule of law was applied and whether

the proceeding in which facts were adjudicated was con-

ducted regularly. To that extent, the person asserting a

right, whatever its source, should be entitled to the inde-

pendent judgment of a court on the ultimate question of

constitutionality.”).

Today there is rich precedent treating access to judicial

review of agency action, amid the complexities and conges-

tion of the administrative state. Here, however, statutory

Case: 21-1759 Document: 29 Page: 23 Filed: 05/13/2022

ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. 9

assignment of jurisdiction resolved the public and private

interests intended to be served. This context applies to the

theory on which the panel majority appears to base its de-

cision, that is, that here there was a time-bar issue. The

majority states that “the outcome here is that the merits

determination became moot in light of the Board’s time-bar

reconsideration.” Maj. Op. at 14. On that basis, the major-

ity accepts that the Federal Circuit’s decision affirming in-

validity of the ’029 patent is “nullif[ied].” Maj. Op. at 13

(“[I]t would be hard to understand why the Board would

seek to nullify our opinion other than for appropriate rea-

sons.”). Yet throughout its opinion the majority refers to

the “unpatentability” of the ’029 patent. Maj. Op. at 2, 4,

6, 11, 12. These aspects warrant resolution, reinforcing,

rather than negating, the jurisdictional obligation of the

Federal Circuit.

Here, after extensive administrative and Federal Cir-

cuit review, the efficiency intended by the America Invents

Act is obscured. The aspects remaining on appeal cry for

resolution, not denial of jurisdiction.

CONCLUSION

The appropriate path is to accept our jurisdiction of

this appeal and to decide the merits of the question on ap-

peal, viz., whether the PTAB acted reasonably and in ac-

cordance with law, in its choice of sanction for Atlanta Gas’

handling of the real-party-in-interest issue. The PTAB’s

ruling is flawed, and warrants appellate attention. From

my colleagues’ holding that we have no jurisdiction to re-

ceive this appeal, I respectfully dissent.