905 F.3d 1311
Fed. Cir.2018Background
- Bennett Regulator Guards sued Atlanta Gas for infringing U.S. Patent No. 5,810,029 and served Atlanta Gas with a complaint on July 18, 2012; the district court later dismissed that complaint without prejudice.
- Atlanta Gas filed an inter partes review (IPR) petition on February 27, 2015 challenging the ’029 patent; Bennett argued the petition was time-barred under 35 U.S.C. § 315(b).
- The Patent Trial and Appeal Board (PTAB) found § 315(b) did not bar institution (reasoning the district-court dismissal nullified service), instituted review, and ultimately held all challenged claims unpatentable in a final written decision.
- After the final decision, Atlanta Gas’s parent merged and changed its name; Atlanta Gas failed to update its real-party-in-interest disclosure, prompting Bennett to seek sanctions.
- A reconstituted PTAB panel imposed monetary sanctions (authorizing Bennett to seek costs and fees for a post-decision period) but did not terminate the IPR; the Board has not yet quantified the sanction amount.
- Bennett appealed the time-bar and merits rulings and sought greater sanctions; Atlanta Gas cross-appealed the imposition of any sanctions.
Issues
| Issue | Plaintiff's Argument (Bennett) | Defendant's Argument (Atlanta Gas) | Held |
|---|---|---|---|
| Whether § 315(b) time-bar prevented institution of IPR | Service of the 2012 complaint started § 315(b)’s 1-year clock; later dismissal doesn’t reset clock | Dismissal without prejudice nullified service, so § 315(b) did not bar the 2015 petition | PTAB lacked authority; § 315(b) barred the IPR; final written decision vacated and IPR remanded for dismissal |
| Whether PTAB’s claim-construction and invalidity findings were correct | Claims were properly construed and should survive prior art challenges | Prior art anticipated/rendered claims obvious | Court did not reach merits because § 315(b) dispositive; merits arguments not decided |
| Whether PTAB properly sanctioned Atlanta Gas for failing to update real-party-in-interest info | Sanctions (including termination) were appropriate given nondisclosure | No sanctions warranted | Court declined to review sanctions now because the award is unquantified and nonfinal; remanded to PTAB to quantify or reconsider |
| Whether appellate court may review PTAB institution decision despite § 314(d) | § 315(b) is reviewable and bars institution here | § 314(d) bars review of institution decisions | Court reviews § 315(b) compliance and finds § 315(b) governs and prohibits this IPR |
Key Cases Cited
- Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (service of an infringement complaint starts § 315(b)’s one-year bar; dismissal does not negate service)
- Wi‑Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (§ 315 is reviewable despite § 314(d) institution bar)
- Willy v. Coastal Corp., 503 U.S. 131 (1992) (courts can impose sanctions even when later determined to lack subject-matter jurisdiction)
- Swint v. Chambers Cty. Comm’n, 514 U.S. 35 (1995) (standards for exercising pendent jurisdiction)
- Orenshteyn v. Citrix Sys., Inc., 691 F.3d 1356 (Fed. Cir. 2012) (unquantified fee awards ordinarily not reviewable via pendent jurisdiction)
- In re Arunachalam, 824 F.3d 987 (Fed. Cir. 2016) (appeals to the Federal Circuit from PTAB are limited to final decisions)