Fed Circ split over mandate in time-barred PTAB case
The US Court of Appeals for the Federal Circuit says that it has no place reviewing a Patent Trial and Appeal Board (PTAB) decision to terminate an inter partes review (IPR) of a gas pressure regulator patent.
The appellate court handed down a split decision on Friday, May 13, claiming that it lacked jurisdiction to consider the appeal from Atlanta Gas Light as it focused on a time-bar dispute, which Supreme Court precedent claims are a “non-appealable”.
This is the third time the long-running dispute has appeared before the Federal Circuit, Judge Kara Stoll noted.
Atlanta Gas Light initially launched an IPR of rival manufacturer Bennett Regulator Guards US patent 5,810,029—anti-icing device for a gas pressure regulator—in July 2013.
The PTAB’s final verdict denied Bennett’s argument that Atlanta Gas Light was time-barred from challenging the patent claims and ruled that the ‘029 patent was invalid over the prior art.
On the first appeal, the Federal Circuit disagreed with the time-bar determination and said that Atlanta Gas should have been barred and vacated the board’s unpatentability ruling and remanded with directions to dismiss the IPR.
While it ordered the PTAB to dismiss the IPR, it noted that the board’s initial sanction order “might still stand” but as monetary sanctions had not been decided, it remanded the sanctions issue back for further consideration.
However, before the board could act, the Supreme Court handed down a decision in Thryv, Inc, v Click-To-Call (2020), which held that time-bar determinations were unreviewable.
This prompted the Federal Circuit’s decision to be remanded. Upon remand, the circuit judges affirmed the board’s unpatentability determination while not addressing time-bar issues and sent the case back to the PTAB once again.
The PTAB then decided to dismiss the case after reconsidering the time-bar argument, which led Atlanta Gas to appeal once again to the Federal Circuit.
Atlanta Gas argues that the board abused its discretion when it terminated the proceedings, arguing that the termination “has the effect of reversing” the Federal Circuit’s decision to remand the case to consider both time-bar and sanctions issues. Whereas Bennett claimed that the Federal Circuit has no jurisdiction to review the board’s termination.
The majority of the circuit agreed with Bennett that it lacked jurisdiction to review the termination, and held that the PTAB’s decision to terminate was “not inconsistent” with its remand orders.
Stoll said: “The fact that the board’s termination decision occurred on remand from our court does not change our conclusion that we lack jurisdiction. The board retains the inherent authority to reconsider its decisions.”
Newman’s dissent
Judge Pauline Newman dissented from the majority opinion, claiming that the PTAB’s sanctions order is not excluded from the appellate jurisdiction of the Federal Circuit.
She wrote “The sanctions order is the only issue on appeal. The panel majority holds that we do not have jurisdiction to receive this appeal… I cannot agree that this action is not subject to judicial review.”
The Supreme Court’s decision in Thryv did not hold that “all time-bar determinations” are unappealable, rather that “institution” decisions containing time-bar issues were inappealable because they relate to the institution, Newman claimed.
“No statute, no precedent, removes sanctions issues from appealability. I take note that the panel majority, while holding that it does not have jurisdiction of appeal of the termination sanction, also “conclude[s] that the board’s termination decision did not violate our mandate,” Newman concluded.
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