Appellate Jurisdiction over Mixed IPR Questions

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.

Post Thrive: PTAB Decision Affirmed rather than Vacated


8 thoughts on “Appellate Jurisdiction over Mixed IPR Questions

  1. 3

    I am not surprised that the Fed. Cir. here did not want to take an appeal on the appropriateness of PTAB sanctions in an IPR. Even though AIA 35 USC 316(a)(6) provides the Board with that authority for IPRs, it was my impression that sanctions by that administrative tribunal have long been a touchy or delicate subject, and perhaps also the Fed. Cir? Does anyone have more information?

  2. 1

    >This case has been up and down several times.

    LOL, given the primary justification for creating a separate Article 1 court was to reduce litigation costs.

      1. 1.2.1

        ?? -Aren’t you the one that jumps on the cause/correlation logical fallacy, Greg?

        Maybe think “in spite of”

      2. 1.2.2

        Thanks for these two reports on average patent litigation costs dropping, both based on the annual AIPLA survey of its large patent attorney membership. The reports note as reasons IPR petitions [improved but more expensive] and the many software-related patents suits now ended [early and cheaply] on Alice-type 101-exception unpatentable subject matter motions.
        Greg, IPRs were always intended to provide contestable, disputed evidence, inter parte, trials. More like interferences, not like cheaper ex parte reexaminations or mere prior art submissions. At present-day rates of attorneys with that expertise they are not cheap. But still, as shown, roughly an order of magnitude cheaper that District Court discovery and litigation, where appropriate and not prevented by Fintiv decisions.

Comments are closed.