Unusual Finding Vacates IPR After Federal Circuit Affirmance

“Typically, cases are not terminated on remand after the merits have been affirmed.”

The Federal Circuit ruled that it could not review a decision of the U.S. Patent and Trademark Office (USPTO)'s Patent Trial and Appeal Board (PTAB) determining not to institute an inter partes review (IPR). While that is not unusual following the Supreme Court’s decision in Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the circumstances in Atlanta Gas Light's ("Atlanta Gas") challenge to Bennett Regulator Guards, Inc.'s ("Bennett") patent made the ruling “unusual” and “inappropriate in most cases.”

Atlanta Gas won at the PTAB, obtaining a decision invalidating the challenged claims of Bennett’s patent. The Federal Circuit's review of the decision, however, held that Atlanta Gas should have never been allowed to file its IPR because Atlanta Gas was time-barred from filing an IPR. Subsequently, the Supreme Court held that the Federal Circuit should not have decided whether Atlanta Gas was time-barred from filing its IPR. The Federal Circuit then reviewed the merits of the PTAB’s invalidity decision and affirmed the PTAB. But that did not end the case. The PTAB had also issued an order sanctioning Atlanta Gas for conduct during the IPR. Each appeal found that issue remained live as the PTAB did not quantify the sanctions award, making the award non-final and unappealable. So, rather than ending with an invalidation of Bennett's patent, the Federal Circuit remanded to the PTAB to quantify the sanction.

During remand, the PTAB decided to vacate the institution decision and terminate the IPR as being time-barred. A majority of the Federal Circuit panel found the PTAB to have revisited its institution decision, stating that the “Board’s ‘termination’ decision was multifaceted, considering Bennett’s requested monetary sanctions based on Atlanta Gas’s failures … and also considering ‘time-bar issues.’” The majority was not troubled that the PTAB did not focus solely on quantifying sanctions and had also revisited an issue not subject of the remand, stating that the “fact that the Board’s termination decision occurred on remand from our court does not change our conclusion that we lack jurisdiction” because the PTAB “retains the inherent authority to reconsider its decisions.” And because the termination was found to be an institution decision, the decision itself could not be reviewed on appeal.

Judge Newman dissented, believing the order to be a terminating sanction, which could be reviewed on appeal, rather than a permissible revisiting of the initial institution decision.