United States Court of Appeals 

for the Federal Circuit ______________________ 

BENNETT REGULATOR GUARDS, INC.,

Appellant

v.

ATLANTA GAS LIGHT CO.,

Cross-Appellant

______________________ 

2017-1555, 2017-1626

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in 

No. IPR2015-00826.

______________________ 

Decided: September 28, 2018

______________________ 

 WAYNE D. PORTER, JR., Law Offices of Wayne D. 

Porter, Jr., Independence, OH, argued for appellant.

DARYL L. JOSEFFER, King & Spalding, LLP, Washington, DC, argued for cross-appellant. Represented by 

RUSSELL E. BLYTHE, HOLMES J. HAWKINS, III, Atlanta, GA. 

______________________ 

Before LOURIE, CLEVENGER, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 
2 BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 

Years after Bennett Regulator Guards, Inc. first sued 

Atlanta Gas Light Co. for infringing its U.S. Patent 

No. 5,810,029, the Patent Trial and Appeal Board instituted Atlanta Gas’s inter partes review (IPR), held all 

challenged claims of Bennett’s ’029 patent unpatentable,

and then sanctioned Atlanta Gas. Bennett appeals, 

arguing that 35 U.S.C. § 315(b) barred institution, that its 

claims should have survived, and that the Board should 

have imposed greater sanctions. Atlanta Gas crossappeals, seeking to overturn the sanctions. 

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, 

2013 WL 3365193, at *5 (N.D. Ohio July 3, 2013). 

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 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,” 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, 2015 WL 
BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 3

5159438, at *5, *7–8 (P.T.A.B. Sept. 1, 2015). Having 

found that § 315(b) permitted it to proceed, the Board 

instituted review of all claims. Id. at *15–16. Bennett

defended the ’029 patent, but in its final written decision 

the Board confirmed that § 315(b) did not bar the petition

and held every claim of the ’029 patent unpatentable. 

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

IPR2015-00826, 2016 WL 8969209, at *1, *6 (P.T.A.B. 

Aug. 19, 2016) (“Final Written Decision”); see J.A. 85–86

(denying subsequent motion for reconsideration). 

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 35 U.S.C. § 312(a)(2), and 

Board regulations require petitioners to update that 

information within 21 days of any change, see 37 C.F.R. 

§ 42.8(a)(3). Late in the IPR, but before the Board’s final 

written decision, Atlanta Gas’s parent company, AGL

Resources Inc., merged with another company and then 

changed its name. See J.A. 86–88. Though Atlanta Gas 

had listed AGL Resources as a real party in interest in its 

petition, Atlanta Gas did not notify the Board of the 

merger or the name change, and the Board did not know 

of the changes when it issued its final decision. See 

J.A. 88–94. Shortly after receiving the final written 

decision, Bennett notified the Board of Atlanta Gas’s 

changed corporate parentage and sought sanctions for 

Atlanta Gas’s nondisclosure. See J.A. 81–83, 88–94. 

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 
4 BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 

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 35 U.S.C. § 319; see 

also 28 U.S.C. § 1295(a)(4)(A). Though statute immunizes 

the Board’s preliminary decision to institute IPR from 

review, see 35 U.S.C. § 314(d), we review the Board’s 

jurisdiction, and we have authority to review its compliance with § 315(b). See Wi-Fi One, LLC v. Broadcom 

Corp., 878 F.3d 1364, 1374 (Fed. Cir. 2018) (en banc)

(“[Section] 315 . . . is not subject to § 314(d)’s bar on 

judicial review.”). 

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, 

815 F.3d 734, 739 (Fed. Cir. 2016). We review the Board’s 

award of sanctions for abuse of discretion. Cf. Midwestern 

Pet Foods, Inc. v. Societe des Produits Nestle S.A., 

685 F.3d 1046, 1051 (Fed. Cir. 2012) (applying abuse of 

discretion standard to Trademark Trial and Appeal 

Board’s sanctions); Woods v. Tsuchiya, 754 F.2d 1571, 

1582 (Fed. Cir. 1985) (noting that award of sanctions falls 

within Board of Interference’s discretion).
BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 5

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 35 U.S.C. § 315(b) barred the Board’s review in 

this case, we vacate the Board’s final written decision and 

remand with instructions to dismiss this IPR without 

reaching Bennett’s additional arguments. 

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). 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., 899 F.3d 

1321, 1329–32 (Fed. Cir. 2018). The statute endorses no 

exceptions for dismissed complaints, and we therefore 

held that the Board exceeded its authority when it instituted IPR over a year after service of a complaint later 

voluntarily dismissed without prejudice. Id. at 1328 n.3 

(en banc). 

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-toCall on that basis.1 The statutory language clearly ex-

 

1 Indeed, the Board relied on its now-overturned 

decision in Click-to-Call to decide Bennett’s time-bar 

challenge. See Final Written Decision, 2016 WL 8969209, 

at *5. 
6 BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 

presses that service of a complaint starts § 315(b)’s clock. 

See id. at 1330–31, 1336. Just as the statute includes no 

exception for a voluntarily dismissed complaint, it includes no exception for an involuntarily dismissed complaint. 

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., 

503 U.S. 131, 132 (1992) (holding federal district courts 

may impose Rule 11 sanctions even “in a case in which 

the district court is later determined to be without subject-matter jurisdiction”). We do not resolve that question, however, because we lack jurisdiction to review the 

Board’s unquantified, and thus non-final, order.

We have exclusive jurisdiction to review the Board’s 

final decisions. See 28 U.S.C. § 1295(a)(4)(A). But our 

jurisdiction extends only to final decisions. See In re 

Arunachalam, 824 F.3d 987, 988 (Fed. Cir. 2016) (reading 

§ 1295(a)(4) “to incorporate a finality requirement” (quoting Loughlin v. Ling, 684 F.3d 1289, 1292 (Fed. Cir. 
BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 7

2012))). Because the Board has not yet quantified its 

sanctions award, the award remains nonfinal and unappealable. See Special Devices, Inc. v. OEA, Inc., 269 F.3d 

1340, 1343 (Fed. Cir. 2001) (holding unquantified award 

of attorney fees is not a final decision); View Eng’g, Inc. v. 

Robotic Vision Sys., Inc., 115 F.3d 962, 964 (Fed. Cir. 

1997) (“[A] district court decision imposing Rule 11 sanctions is not final, and hence not appealable, until the 

amount of the sanction has been decided . . . .”). 

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 Swint v. Chambers 

Cty. Comm’n, 514 U.S. 35, 51 (1995) (providing standard 

for exercise of pendent jurisdiction). “[T]he circuits, 

including this one, are in general agreement that an 

unquantified award . . . does not usually warrant the 

exercise of pendent jurisdiction,” and we hold the exercise 

of pendent jurisdiction is not warranted here. Orenshteyn 

v. Citrix Sys., Inc., 691 F.3d 1356, 1360 (Fed. Cir. 2012). 

The parties’ time-bar and merits disputes ask whether 

§ 315(b) prohibits this IPR and whether the art identified 

by Atlanta Gas anticipates or renders obvious Bennett’s 

properly construed claims. In contrast, the parties’ challenges to the Board’s sanctions order implicate the 

Board’s power to issue sanctions and to accept late filings, 

37 C.F.R. §§ 42.5, 42.12, and ask us to examine whether 

the Board erred by identifying Atlanta Gas’s parent

company as a real party in interest under 35 U.S.C. 

§ 312(a)(2) and 37 C.F.R. § 42.8(b)(1). As in Orenshteyn, 

“the finding of invalidity and the sanctions in the present 

case have different legal bases requiring different legal 

analyses.” 691 F.3d at 1360. 

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 
8 BENNETT REGULATOR GUARDS, INC. v. ATLANTA GAS LIGHT CO. 

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.