Bennett Regulator Guards, Inc. v. Atlanta Gas Light Company
Opinion
*1313
Years after Bennett Regulator Guards, Inc. first sued Atlanta Gas Light Co. for infringing its
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 and instead remand to the Board.
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,
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 re-questing 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,
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
The merger created new Board conflicts, and one member of the three-judge panel recused himself after learning of it. See J.A. 85 n.1, 93. A reconstituted panel then considered Bennett's sanctions motion. Though it declined to terminate the IPR as Bennett requested, the Board authorized Bennett to move for the "costs and fees" it had incurred between the date of the final written decision and the Board's grant of sanctions. See J.A. 88-93. The Board has not ruled on Bennett's motion for costs and fees, and the parties continue to dispute the exact amount Atlanta Gas owes.
Bennett appeals. It contends that § 315(b) barred this IPR, and that even if the Board possessed the power to consider Atlanta Gas's petition, the Board substantively erred in its claim construction and unpatentability findings. Bennett also argues that the Board abused its discretion by awarding only monetary sanctions for Atlanta Gas's failure to update its real-party-in-interest information. In its cross-appeal, Atlanta Gas counters that the Board erred by awarding any sanction at all.
DISCUSSION
A party dissatisfied with the Board's final written decision may appeal to this court.
See
We review the Board's legal conclusions de novo and its fact findings for substantial evidence.
See, e.g.
,
PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC
,
I
Bennett launches a multi-front attack on the Board's final written decision. It challenges the Board's jurisdiction to institute review, at least ten of the Board's claim constructions, the Board's findings regarding the teachings of the prior art and Atlanta Gas's anticipation ground, and the Board's consideration of the
Graham
factors in its obviousness determination. Because we agree that
Section 315(b) prohibits the Board from instituting an IPR based on a petition "filed more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement." § 315(b).
*1315
We recently held that serving a complaint alleging infringement-an act unchanged by the complaint's subsequent success or failure-unambiguously implicates § 315(b) 's time bar.
See
Click-to-Call Techs., LP v. Ingenio, Inc.
,
This case differs from
Click-to-Call
only in that Bennett's complaint was
involuntarily
dismissed without prejudice. We identify no reason to distinguish
Click-to-Call
on that basis.
1
The statutory language clearly ex-presses that
service
of a complaint starts § 315(b) 's clock.
See
Bennett undisputedly served Atlanta Gas with a complaint asserting the '029 patent on July 18, 2012. See Appellant's Br. 57-58; Cross-Appellant's Br. 9. Section 315 permits a petitioner to seek IPR for a year after such service, but Atlanta Gas filed its IPR petition on February 27, 2015, J.A. 118, more than eighteen months after the statutory time limit. The Board lacked authority to institute review. Accordingly, we vacate the Board's final written decision, and we remand for the Board to dismiss the IPR.
II
We next address the parties' challenges to the Board's sanctions order. Bennett asserts that the Board properly awarded monetary sanctions but erred by failing to terminate the IPR,
see
Appellant's Br. 27-35, while Atlanta Gas urges that the Board erred by awarding sanctions at all,
see
Cross-Appellant's Br. 70-86. Although the Board lacked authority to institute the IPR, its sanction award might nevertheless stand.
Cf.
Willy v. Coastal Corp
.,
We have exclusive jurisdiction to review the Board's final decisions.
See
In rare cases, we exercise pendent jurisdiction to decide an issue not otherwise subject to review. We extend pendent jurisdiction only reluctantly, and only to issues "inextricably intertwined" with or necessary to resolution of issues already before the court.
See
*1316
Swint v. Chambers Cty. Comm'n
,
Atlanta Gas suggested at oral argument that the Board's denial of Bennett's requested remedy-termination-was a final decision subject to appeal, and that we should exercise pendent jurisdiction over the Board's related decision to award a monetary sanction, even though the amount of that sanction remains undetermined. See Oral Arg. at 15:20-16:55, http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20 17-1555.mp3. We disagree. Atlanta Gas's formulation requires us to arbitrarily divide the Board's sanctions order into two decisions-one relating to termination and one relating to a monetary award. We instead treat the Board's order as a single decision addressing Bennett's entire motion for sanctions, which requested both termination and compensatory sanctions. See J.A. 318. This comports with the Board's discussion, see J.A. 92-93, and preserves judicial resources by confining all sanctions issues to a single appeal.
Accordingly, we decline to exercise pendent jurisdiction over the Board's sanctions order, and we remand to the Board. 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.
CONCLUSION
For the foregoing reasons, we vacate the Board's final written decision, and we remand for the Board to quantify any sanctions and dismiss this IPR.
VACATED AND REMANDED
COSTS
No costs.
Indeed, the Board relied on its now-overturned decision in
Click-to-Call
to decide Bennett's time-bar challenge.
See
Final Written Decision
,
Reference
- Full Case Name
- BENNETT REGULATOR GUARDS, INC., Appellant v. ATLANTA GAS LIGHT CO., Cross-Appellant
- Cited By
- 4 cases
- Status
- Published