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Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.

Involuntarily Dismissed Complaint Also Triggers IPR Time Bar

Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.905 F.3d 1311 (Fed. Cir. Sept. 28, 2018) (Lourie, Clevenger, STOLL) (PTAB) (2 of 5 stars)

Fed Cir vacates IPR decision canceling Bennett’s patent claims. 35 U.S.C. § 315(b) barred the IPR as time-barred. Because Bennett filed and served an infringement complaint against Atlanta Gas in 2012, Atlanta Gas’s IPR petition in 2015 was time-barred, as per Click-to-Call, 899 F.3d 1321 (Fed. Cir. 2018). That the 2012 complaint was dismissed over Bennett’s objection (on a motion by Atlanta Gas) does not alter the Click-to-Call analysis. Because § 315 is jurisdictional, the Fed Cir has authority to vacate the institution decision, per Wi-Fi One, 878 F.3d 1364 (Fed. Cir. 2018) (en banc).

The opinion declines to take up either party’s arguments concerning a monetary sanctions order entered by the PTAB against Atlanta Gas for failing to timely update its real-party-in-interest information. The opinion notes that such a sanction might stand notwithstanding dismissal of the IPR, citing Willy, 503 U.S. 131 (1992), but determines that because the PTAB had not yet quantified the amount of the monetary sanction to be awarded, the award remained nonfinal and unappealable, per Special Devices, 269 F.3d 1340 (Fed. Cir. 2001), and View Engineering, 115 F.3d 962 (Fed. Cir. 1997). The Court declines to exercise pendent jurisdiction to take up the sanctions order because the issues surrounding it are significantly different from this appeal’s primary issues, citing Orenshteyn, 691 F.3d 1356 (Fed. Cir. 2012).

KEYWORDS: INTER PARTES REVIEW; TIME BAR; DISMISSED COMPLAINT; APPELLATE JURISDICTION; PENDENT JURISDICTION