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

United States Court of Appeals for the Federal Circuit

September 28, 2018, Decided

2017-1555, 2017-1626


 [***1184]  [*1313]   Stoll, Circuit Judge.

Years after Bennett Regulator Guards, Inc. first sued Atlanta Gas Light Co. for infringing its U.S. Patent No. 5,810,029, the Patent Trial and Appeal Board instituted Atlanta Gas's inter partes review (IPR), held all challenged claims of Bennett's '029 patent unpatentable, and then sanctioned Atlanta Gas. Bennett appeals, arguing that 35 U.S.C. § 315(b) barred institution, that its claims should have survived, and that the Board should have imposed greater sanctions. Atlanta Gas cross-appeals, seeking to overturn the sanctions.

Because the Board exceeded its authority and contravened § 315(b)'s time bar when it instituted Atlanta Gas's petition, we vacate its final written decision. And because the Board has not yet quantified its sanction, we decline to consider the nonfinal sanctions order [**2]  and instead remand to the Board.

 [***1185]  Background

Bennett, the assignee of the '029 patent, served Atlanta Gas with a complaint alleging infringement on July 18, 2012. Atlanta Gas moved to dismiss. Ultimately, the district court granted that motion and dismissed Bennett's complaint without prejudice. See Bennett Regulator Guards, Inc. v. MRC Glob. Inc., No. 4:12-cv-1040, 2013 U.S. Dist. LEXIS 93553, 2013 WL 3365193, at *5 (N.D. Ohio July 3, 2013).

On February 27, 2015, Atlanta Gas filed the IPR that underlies this appeal. Bennett protested, arguing that § 315(b), which prohibits institution "if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent," barred the Board from instituting review. The Board disagreed. It acknowledged that Bennett had served a complaint alleging infringement on Atlanta Gas, but it held that the district court's without-prejudice dismissal of that complaint nullified service. Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2015-00826, 2015 WL 5159438, at *5, *7-8 (P.T.A.B. Sept. 1, 2015). Having found that § 315(b) permitted it to proceed, the Board instituted review of all claims. Id. at *15-16. Bennett defended the '029 patent, but in its final written decision the Board confirmed that § 315(b) did not bar the petition [**3]  and held every claim of the '029 patent unpatentable. Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2015-00826, 2016 Pat. App. LEXIS 13322, 2016 WL 8969209, at *1, *6 (P.T.A.B. Aug. 19, 2016) ("Final Written Decision"); see J.A. 85-86 (denying subsequent motion for reconsideration).

In an unusual turn of events, an additional issue emerged after the Board issued its decision. The America Invents Act requires petitioners to identify all real parties in interest in their petitions, see 35 U.S.C. § 312(a)(2), and Board regulations require petitioners to update that information within 21 days of any change, see 37 C.F.R. § 42.8(a)(3). Late in the IPR, but before the Board's final written decision,  [*1314]  Atlanta Gas's parent company, AGL Resources Inc., merged with another company and then changed its name. See J.A. 86-88. Though Atlanta Gas had listed AGL Resources as a real party in interest in its petition, Atlanta Gas did not notify the Board of the merger or the name change, and the Board did not know of the changes when it issued its final decision. See J.A. 88-94. Shortly after receiving the final written decision, Bennett notified the Board of Atlanta Gas's changed corporate parentage and sought sanctions for Atlanta Gas's nondisclosure. See J.A. 81-83, 88-94.

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905 F.3d 1311 *; 2018 U.S. App. LEXIS 27666 **; 128 U.S.P.Q.2D (BNA) 1183 ***


Subsequent History: Petition for certiorari filed at, 01/28/2019

Prior History:  [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015-00826.

Bennett Regulator Guards, Inc. v. MRC Global, Inc., 2013 U.S. Dist. LEXIS 93553 (N.D. Ohio, July 3, 2013)



sanctions, written decision, patent, pendent jurisdiction, infringement, instituted, final decision, sanction order, Regulator, vacate

Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Patent Law, Appeals, Jurisdiction & Review, Standards of Review, Abuse of Discretion, De Novo Review, Substantial Evidence, Civil Procedure, Sanctions, Subject Matter Jurisdiction