Time’s Up: The Federal Circuit Holds It Lacks Jurisdiction to Review Board’s Time-Bar Determination

In Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc., No. 2021-1759 (Fed. Cir. May 13, 2022), the Federal Circuit concluded that it lacked jurisdiction to review the Patent Trial and Appeal Board’s (PTAB) time-bar determination and dismissed Atlanta Gas’s appeal.

This case was before the Federal Circuit for the third time.  In Bennett I, the Court held that Atlanta Gas should have been time barred and remanded with instructions to dismiss the IPR.  Before the Board acted on the Court’s mandate, the Supreme Court issued its decision in Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020), which held that parties cannot appeal time-bar determinations.  In Bennett II, the Court affirmed the Board’s unpatentability decision, did not address the time-bar issue, and remanded to the Board to consider and finalize its sanctions order.  On remand, the Board issued a sanctions order, vacating the unpatentability determination, and terminating the proceeding.

On appeal, Atlanta Gas argued that the Federal Circuit has jurisdiction to review the Board’s decision to terminate the IPR because it was purely a sanctions decision reviewable under 28 U.S.C. § 1295(a)(4)(A).  The Court rejected this argument, explaining that the Board’s decision was not purely a sanctions decision; instead, the decision was “multi-faceted,” considering not only Bennett’s request for sanctions, but also re-considering the time-bar issue in light of the developments in USPTO policy.  Specifically, in its initial decision, the Board determined that the time-bar under 35 U.S.C. § 315(b) had not been triggered by the service of the complaint in a district court action that was later dismissed without prejudice.  Subsequent developments in the case law and corresponding USPTO policy made clear that the time-bar clock is triggered by the service of a complaint even if the action is later dismissed.  Because the Board’s decision was based on a re-evaluation of its time-bar determination and not a pure sanctions decision, the Court held that it lacked jurisdiction. The Court also rejected Atlanta Gas’s argument that the Board’s decision violated the Court’s mandate because the Court did not address the time-bar issue in Bennett II and the Board retains the authority to reconsider its decisions regarding institution.

Judge Newman dissented, arguing that the vacatur of the final written decision and termination of the IPR was a sanction, which the Court has jurisdiction to review.