Bennett Regulator Guards, Inc. v. Atlanta Gas Light Company (Fed. Cir. 2020)
This case has been as much as the Supreme Court and is now again down.
Bennet owns U.S. Patent No. 5,810,029 (Anti-icing of fuel stress regulators, now expired). Back in 2012, Bennett sued Atlanta Gas for patent infringement. That case had been filed in N.D. Ohio and the courtroom there dismissed for lack of private jurisdiction over the Georgia-based defendant. Three years later (2015), Atlanta Gas filed for inter partes overview (IPR). The PTO Granted overview and the PTAB finally discovered the challenged claims unpatentable. In a 2018 appeal, the Federal Circuit vacated — holding that the statutory time-bar precludes the PTO from instituting a petition on this case. 35 U.S.C. § 315(b) (“An [IPR] may not be instituted if the petition requesting 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.”). Atlanta Gas then petitioned for Supreme Court overview and in April 2020, the Supreme Court issued the next choice:
Petition GRANTED. Judgment VACATED and case REMANDED for additional consideration in mild of Thryv, Inc. v. Click-to-Call Technologies, LP, 590 U. S. ___ (2020).
In Thryv, the Supreme Court held notably that the § 315(b) time-bar is a part of the establishment choice that isn’t topic to appeal. Thus, on remand, the Federal Circuit has now altered its holding — writing: “Thryv precludes our review of the Board’s ‘application of § 315(b)’s time limit,’”
Its authentic choice didn’t reach the deserves of the appeal as a result of it dismissed on the time-bar floor. Now, the courtroom has affirmed the PTAB choice that the claims are each anticipated and apparent.
The claims listed below are directed to the skirt meeting 40 designed to cut back ice formation on the outlet tube.
In its argument to keep away from the prior artwork, Bennett argued that its declare phrases needs to be narrowly construed as a way to protect their validity — for the reason that patent is expired and thus can’t be amended. On appeal, the Federal Circuit seems to agree with the overall notion that this canon of declare building ought to apply to IPR proceedings, however concluded that it doesn’t apply on this case. In specific, the courtroom defined that the narrow-to-preserve-validity canon solely applies if claims are “still ambiguous” after being construed utilizing the usual instruments of declare building. Quoting LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004). Here, the actual phrases – “diaphragm-type gas pressure regulator” and “outside gas pressure regulator” weren’t ambiguous.
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In its appeal, Bennett additionally detailed a “litany of APA violations by the Board.” The APA requires the board to determine an evidentiary foundation for its factually findings; to really make these factual findings; after which to elucidate the connection between the findings and the result of the case. For probably the most half, these arguments came-down to the PTAB not expressly contemplating Bennett’s proof offered on every level. On appeal, the Federal Circuit discovered that the PTAB had executed sufficient:
The Board didn’t particularly focus on th[e] specific testimonial proof supporting Bennett’s argument, however the Board did talk about that it discovered Bennett’s argument unpersuasive when it credited Atlanta Gas’s proof. That is sufficient. The Board needn’t expressly focus on each single little bit of proof proffered by the events, as long as we will moderately discern its path.
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One oddity of the PTAB choice intertwined a sanctions award towards Atlanta Gas. During the IPR continuing, Atlanta Gas merged with Southern Co. However, Atlanta Gas didn’t notify the PTAB till after the Final Written Decision had issued. At that time, one of many PTAB judges needed to recuse himself and a brand new panel-member was added (who signed on to the opinion as written). The PTAB awarded sanctions (however didn’t state the quantity but) however refused to terminate the IPR.
On appeal, the Federal Circuit stayed its hand — explaining that “we lack jurisdiction” on this case as a result of the sanction quantity is “unquantified” and is due to this fact not but ultimate. “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.”