Post Thrive: PTAB Decision Affirmed rather than Vacated

Bennett Regulator Guards, Inc. v. Atlanta Gas Light Company (Fed. Cir. 2020)

This case has been up to the Supreme Court and is now back down.

Bennet owns U.S. Patent No. 5,810,029 (Anti-icing of gas pressure regulators, now expired).  Back in 2012, Bennett sued Atlanta Gas for patent infringement.  That case had been filed in N.D. Ohio and the court there dismissed for lack of personal jurisdiction over the Georgia-based defendant.  Three years later (2015), Atlanta Gas filed for inter partes review (IPR). The PTO Granted review and the PTAB eventually found the challenged claims unpatentable. In a 2018 appeal, the Federal Circuit vacated — holding that the statutory time-bar precludes the PTO from instituting a petition in this case. 35 U.S.C. § 315(b) (“An [IPR] may not be instituted 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.”).  Atlanta Gas then petitioned for Supreme Court review and in April 2020, the Supreme Court issued the following decision:

Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light of Thryv, Inc. v. Click-to-Call Technologies, LP, 590 U. S. ___ (2020).

In Thryv, the Supreme Court held particularly that the § 315(b) time-bar is part of the institution decision that is not subject to appeal. Thus, on remand, the Federal Circuit has now altered its holding — writing: “Thryv precludes our review of the Board’s ‘application of § 315(b)’s time limit,'”

Its original decision did not reach the merits of the appeal because it dismissed on the time-bar ground.  Now, the court has affirmed the PTAB decision that the claims are both anticipated and obvious.

The claims here are directed to the skirt assembly 40 designed to reduce ice formation at the outlet tube.

In its argument to avoid the prior art, Bennett argued that its claim terms should be narrowly construed in order to preserve their validity — since the patent is expired and thus cannot be amended.    On appeal, the Federal Circuit appears to agree with the general notion that this canon of claim construction should apply to IPR proceedings, but concluded that it does not apply in this case. In particular, the court explained that the narrow-to-preserve-validity canon only applies if claims are “still ambiguous” after being construed using the standard tools of claim construction. Quoting LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004).  Here, the particular terms – “diaphragm-type gas pressure regulator” and “outside gas pressure regulator” were not ambiguous.

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In its appeal, Bennett also detailed a “litany of APA violations by the Board.”  The APA requires the board to establish an evidentiary basis for its factually findings; to actually make those factual findings; and then to explain the connection between the findings and the outcome of the case. For the most part, these arguments came-down to the PTAB not expressly considering Bennett’s evidence presented on each point.  On appeal, the Federal Circuit found that the PTAB had done enough:

The Board did not specifically discuss th[e] particular testimonial evidence supporting Bennett’s argument, but the Board did explain that it found Bennett’s argument unpersuasive when it credited Atlanta Gas’s evidence. That is enough. The Board need not expressly discuss every single bit of evidence proffered by the parties, so long as we can reasonably discern its path.

Slip Op.

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One oddity of the PTAB decision involved a sanctions award against Atlanta Gas.  During the IPR proceeding, Atlanta Gas merged with Southern Co.  However, Atlanta Gas did not notify the PTAB until after the Final Written Decision had issued.  At that point, one of the PTAB judges had to recuse himself and a new panel-member was added (who signed on to the opinion as written). The PTAB awarded sanctions (but did not state the amount yet) but refused to terminate the IPR.

On appeal, the Federal Circuit stayed its hand — explaining that “we lack jurisdiction” in this case because the sanction amount is “unquantified” and is therefore not yet final. “On remand, the Board may, at its discretion, further consider its order given the outcome of this appeal. But until the Board quantifies any sanctions, we will not review its decision granting them.”

7 thoughts on “Post Thrive: PTAB Decision Affirmed rather than Vacated

  1. 4

    So in our post Oil States world, SCOTUS abdicates even more power – even when the Agency is without question violating it’s own statute. A holding even further removed from Chevron review.

  2. 2

    Sanctions in IPRs are authorized, but quite rare, so of interest here even though the Fed. Cir. refused appeal on that before an amount was defined. This decision indicates that the PTAB IPR sanction awarded here for not promptly noting the changed or change name of the real party in interest was that the Board awarded Bennett its costs and fees incurred between the final written decision and the sanctions decision.

    1. 2.1

      For us “Fed Cir following” geeks, the discussion of lack of jurisdiction of the sanction order, and the refusal to apply appellate pendent jurisdiction, is a re-quote of exactly what the court said in the original 2018 opinion, see Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311, 1315-16 (Fed. Cir. 2018), vacated and remanded on other grounds (in view of Thryvu), 2020 WL 1978924 (U.S. Apr. 27, 2020).

    2. 2.2

      BTW, this Fed. Cir. opinion does dig into some of the IPR evidence and its weaknesses, i.e., not just rubber stamping the IPR merits decision.

  3. 1

    This is about IPRs, and the Supremes seem likely to take cert on the Arthrex Fed. Cir. decision on APJ appointment unconstitutionality and its cure. So the Arthrex “Reply for Petitioner” just filed is interesting. It argues that respondent Smith & Nephew is prematurely raising merit arguments, but responds to them. E.g., arguing that:
    “By contrast, this case involves administrative judges charged solely with impartial adjudication. Congress has long considered tenure protections essential to secure the independence and impartiality of administrative judges. Pet. 16-19. Those protections play a particularly important role under the America Invents Act, which Congress enacted to create a new adjudicative
    mechanism for reviewing patents. Id. at 19-20. Whether or not due process requires tenure protections for administrative
    judges, there is no doubt that Congress has long considered those protections essential for administrative judges—a tradition Smith & Nephew ignores. There was no similar showing of Congress’s intent in Seila Law or Free Enterprise Fund. But that longstanding tradition is dispositive here. Eliminating APJs’ tenure protections would be a radical departure from that historical practice.”

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