by Dennis Crouch
The Federal Circuit’s new decision in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. (Fed. Cir. 2022) denies appellate jurisdiction over a case where the PTAB decision involves a wholistic judgment involving non-appealable issues (time-bar vacatur of institution) and appealable issues (sanctions award). Judge Newman dissented. In my mind, the could could have logically separated its decision to focus on the sanctions issue and decide whether sanctions decision to decide whether the dismissal was appropriate and sufficient.
This case has been up and down several times. The docket includes a final written decision cancelling Bennett’s claims while also awarding monetary sanctions against Atlanta Gas for failed to update its filing regarding Real Parties of Interest (RPI). But, those decisions were later vacated by the Board itself and the proceeding terminated based upon a new interpretation of the time-bar under 35 U.S.C. § 315(b). The Board eventually concluded that termination would “most effectively resolve the issues on remand by operating as a sufficient sanction while also conforming this Decision to current Office policy.”
The problem here is that time-bar issues are not appealable institution decisions. Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020). On the other hand, award or denial of sanctions are properly appealable.
On appeal, the Federal Circuit recognized that sanctions were relevant to the “multifaceted” termination decision, but ultimately concluded that the time-bar issues were “central” and “the core of the Board’s decision.” As such the court found that it lacked jurisdiction over the appeal. The majority distinguishes this case from a potential appeal over “purely a sanctions decision over which we ordinarily would have jurisdiction.” Dismissed for lack of appellate jurisdiction.
The majority opinion was written by Judge Stoll and joined by Judge Lourie.
Judge Newman wrote in dissent and explained that the appellate filings here had been careful to focus on the sanctions aspect of the order. “The Sanctions Order is the only issue on appeal.”
Here the agency imposed the sanction of cancellation of extensive administrative proceedings and their final decisions of patent invalidity, which final decisions had been appealed to the Federal Circuit and affirmed with issuance of the mandate on patent invalidity. We surely have jurisdiction to receive appeal of the agency action vacating all these proceedings and decisions, and purportedly including vacatur of decisions of the Federal Circuit. Our appellate jurisdiction is surely within our statutory assignment of judicial review of decisions of the PTAB.
Newman in dissent.