# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ATLANTA GAS LIGHT COMPANY, Appellant

v.

BENNETT REGULATOR GUARDS, INC., Appellee

______________________

2021

- 1759

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015

- 00826.

______________________
Decided: May 13, 2022

______________________
J OSHUA N ATHANIEL M ITCHELL , King & Spalding LLP, Washington, DC, argued for appellant. Also represented by J EFFREY S. B UCHOLTZ ; R USSELL B LYTHE , H OLMES J. H AWKINS , III
, Atlanta, GA

.

W AYNE D. P ORTER , J R ., Law Offices of Wayne D. P orter, Jr., Brec ksvill e, OH, argued for appellee.

______________________
Before N EWMAN , L OURIE , and S TOLL , Circuit Judges

.

Opinion for the court filed by Circuit Judge S TOLL

. Case: 21-1759 Document: 29 Page: 1 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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Dissenting opinion filed by Circuit Judge N EWMAN

. S TOLL , Circuit Judge

.This case from the United States Patent Trial and Appeal Board returns to us for a third time. In its final written decision, t he Board

, in the underlying inter partes review proceeding

, rejected patent owner Bennett Regulator Guards, Inc.’s argume nt that petitioner Atlanta Gas Light Company was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b) . It then determined that the challenged claims were unpatentable over the prior art. Bennett appealed. In th at first appeal , we disagreed with the Board’s time

- bar determination , holding that Atlanta Gas should have been barred; vacated the Board’s unpatentability determination ; and remanded with directions to dismiss the IPR and to further consider

a sanctions or der that the Board had not yet finalized. Before the Board acted on our mandate, however, the Supreme Court held that time

- bar determinations were unreviewable in Thryv, Inc v. Click

- To

- Call Tech nologie s, LP , 140 S. Ct. 1367 (2020)

, and vacated our decis ion overruling the Board’s time

- bar determination. On remand from the Supreme Court, w e affirmed the Board’s unpatentability determination on the merits (while saying nothing about the time bar ) and again remand ed for theBoard to reconsider and finalize its order regarding sanctions

. On remand from this court , the Board terminated the proceedi ng due in part to its reconsider ation of its decision on the time bar . Atlanta Gas appeals. W e conclude that we lack jurisdiction to review the Board’s decision to vacate its institution decision , a decision it made based in part on its evaluation of the time bar and changed Patent and Trademark Office policy. Accordingly, we dismiss Atlanta Gas’ s appeal for lack of jurisdiction. Case: 21-1759 Document: 29 Page: 2 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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B ACKGROUND Bennett is the assignee of the patent

- at

- issue

— U.S. Patent No. 5,810,029. The ’029 patent is directed to an anti

- icing device for a gas pressure regulator. Bennett sued Atlanta Gas, a distributor of natural g as in Georgia, for infringement of the ’029 patent. J.A. 62 8– 30

. Atlanta Gas was served with the complaint on July 18, 2012. Id. ; see also J.A. 2645. Ultimately, that litigation was dismissed without prejudice for lack of personal jurisdiction. J.A. 295. On July 18, 2013, e xactly o ne year after Bennett served Atlanta Gas with the complaint

, Atlanta Gas filed an IPR petition requesting review of the ’029 patent

. J.A. 2645. That IPR was instituted and litigated through oral hearing, awaiting only the final written decision from the Board. See Atlanta Gas Light Co. v. Bennett Regul

. Guards, Inc. , No. IPR2013

- 00453 (P.T.A.B

. ). Before a final written decision was issued , however, the Board vacated its institution decision and terminated th e IPR because Atlanta Gas fail ed to list all real parties

- in

- interest (RPIs) in its petition

, as required by 35 U.S.C. § 312(a)(2)

. J.A. 2644

– 60. Specifically, the Board found that Atlanta Gas failed to list its parent company, AGL Resources (AGLR). Because the Board found AGLR to be “so intertwined” with Atlanta Gas that it should have been listed as an RPI , but it was no t, the Board terminated the proceeding without reaching a final written decision on the merits

. J.A. 2654. Atlanta Gas requested rehearing of that decision but was denied. J.A. 2666

– 83; J.A. 2684 –93

. That decision was not appealed.

After the termination of its first IPR

, Atlanta Gas filed another IPR petition on February 27, 2015, challenging the ’029 patent claims on substantially the same unpatentability grounds. See Atlanta Gas Light Co. v. Bennett Regul

. Guards, Inc. , No. IPR201 5- 00 826 (P.T.A.B .). This time, the petition described AGLR as “in privity” with Atlanta Gas Case: 21-1759 Document: 29 Page: 3 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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and

, “out of an abundance of caution ,” Atlanta Gas identified AG L R as an RP I. J.A. 63. This second IPR proceeding is the basis of the current appeal

. The Board instituted the IPR and issued a f inal w ritten decision in August 2016

. Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc. , No. IPR2015

- 00826, 2016 WL 8969209 (P.T.A.B. Aug. 19, 2016)

. Throughout the proceeding, Bennett argued that the petition was time barred under 35 U.S.C. § 315(b), but the Board ultimately disagreed

. Because the district cour t dismissed the action without prejudice, the Board treated the district court complaint as if it had never been filed

. Id. at *5– 6. This was consistent with the Patent and Trademark Office’s understanding of § 315(b) ’s time bar at that time. On the merits, the Board concluded that the claims at issue were unpatentable. Id. at *13– 18

. After the f inal w ritten d ecision issued, Bennett learned of a corporate merger involving Atlanta Gas ’s parent company, AGLR , that had not been d isclosed to the Board. The merger occurred after the oral hearing but before the Board’s f inal w ritten d ecision. J.A. 14

– 15. Bennett raised this issue to the Board on a conference call, after which one of the administrative patent judges on the panel re cused himself . J.A. 15. The panel ordered Atlanta Gas to file an updated mandatory notice listing all RPIs. Atlanta Gas complied and, as it had done with AGLR in its IPR petition, listed the new entities as being “in privity” with Atlanta Gas and identified them as RPIs “out of an abundance of caution.” J.A. 712.

Bennett then moved for sanctions, asking the Board to terminate the proceeding and award “compensatory expenses and attorney fees.” J.A. 723. The Board agreed that sanctions were warranted fo r Atlanta Gas ’s failure to timely update its RPIs, but it granted only monetary sanctions

— costs and fees incurred between the f inal w ritten decision and the sanctions decision. J.A. 17

– 19. Thereafter, Case: 21-1759 Document: 29 Page: 4 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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Bennett filed a motion detailing its costs and fees for that specified period

, and Atlanta Gas filed an opposition. A round the same time, both parties appealed to our court. The Board did not finalize its sanctions decision before the appeal.

In the first appeal before this court, we disagreed with
t he Board’s interpretation of § 315(b)

, which assumed that the one

- year limitation to file an IPR petition reset when a complaint was dismissed without prejudice. Bennett Regul

. Guards, Inc. v. Atlanta Gas Light Co. , 905 F.3d 1311 , 1314

– 15 (Fed. Cir. 2018) ( Bennett I ). Following our then

- binding precedent in Click

- To

- Call Tech nologie s, LP

v. Ingenio, Inc. , 899 F.3d 1321 (Fed. Cir. 2018) , we held that Atlanta Gas’s petition was time barred because it was filed more than one year after Atlanta Gas was served with a complaint alleging patent infringement, even though the complaint was later dismissed without prejudice. Bennett I , 905 F.3d at 1315. Accordingly , we vacated theBoard’s decision and remanded to terminate the proceeding without reachin g the unpatentability merits. W e noted that the Board’s sanction order might still stand even though we directed the Board to terminate the underlying proceeding . B ut because the Board had not yet finalized its sanctions decision (i.e., it had not yet se t the amount of monetary sanctions) , w e remanded for the Board to “further consider its order given the outcome of th[e] appeal” and “quantify any sanctions.” Id. at 1316.

Before the Board acted on our mandate , the Supreme Court in Thryv held that we do not have jurisdiction to review determinations relating to § 315(b) ’s time bar because those determinations are intimately related to institution decisions, which are insulated from appeal by the no

- appeal bar (35 U.S.C. § 314(d)). 140 S. Ct. at 1373. In other words, the Supreme Court made clear that we lack t he
power that we thought we had in Bennett I to review (and overrul e ) the Board’s determination that the IPR was not time barred. Case: 21-1759 Document: 29 Page: 5 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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Because we could no longer review the Board’s time

bar determination, on remand from the Supreme Court, we considered the merits of the Board’s unpatentability determination

. Bennett Regul

. Guards, Inc. v. Atlanta Gas Light Co. , 825 F. App ’ x 773 (Fed. Cir. 2020 ) ( Bennett II ) . We affirmed the Board’s determin ations of unpatentability of all claims of the ’029 patent , but we maintained the section regarding sanctions

— remanding to “further consider” the order and “quantify any sanctions.” Id. at 783.

On remand from Bennett II , the Board reconsidered its order g ranting monetary sanctions, but it also considered the Patent and Trademark Office’s new policy on the time bar , which had changed since the Board’s last determination— the final written decision which issued before the appeal in Bennett I

. Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc. , No. IPR2015

- 00826, 2021 WL 202800 (P.T.A.B. Jan. 20, 2021) ( Termination Decision )

. The Board vacated its institution decision

, terminated the proceeding due to the Patent and Trademark Office’s policy change on time bar

, and declined to award the requested monetary sanctions. The Board explained that “no monetary sanction is warranted because vacatur of the Institution Decision and Final Written Decision, and terminationof the proceeding, most effectively resolve the issues on remand by operating as a sufficient sanction while also conforming this Decision to current Office policy” on the time bar. Id. at *3. Atlanta Gas appeals, arguing that we have jurisdiction to hear the appeal under 28 U.S.C. § 1 295(a)(4). For thereasons explained below, we disagree and dismiss the appeal for lack of jurisdiction.

D ISCUSSION
Atlanta Gas argues that the Board abused its discretion in terminating the proceeding on remand as a sanction and that the Board’s decision violates our mandate in Bennett II

. Bennett responds that we do not have jurisdiction Case: 21-1759 Document: 29 Page: 6 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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to review the Board’s termination decision due to the “No Appeal” bar of 35 U.S.C. § 31 4 (d)

. As explained below, we agree with Bennett that we lack jurisdiction and that the Board’s determination was no t inconsistent with our mandate. We address each argument in turn.

I

Atlanta Gas conte nds that we have jurisdiction to review the Board’s decision because it is a final sanctions decision reviewable under 28 U.S.C. § 1295(a)(4)(A). 1 Bennett counters that we lack jurisdiction, citing 35 U.S.C. § 314(d) and the Supreme Court’s decision in T hryv . Because we conclude that the Board’s termination decision was based in part on its evaluation of the time bar and was not purely a sanctions decision, we conclude that we lack jurisdiction to hear Atlanta Gas’s appeal

. The Board’s “ t ermination” deci sion was multifaceted, considering Bennett’s requested monetary sanctions based on Atlanta Gas’s failures to disclose RPI s and also considering “time

- bar issues.” Termination Decision , 2021 WL 202800, at *1

. As the cover page to the decision suggests, the Board was revisiting its institution decision under § 314
, considering the time bar under § 315(a)(1) and (b)

, and evaluating Bennett’s motion for costs and fees under 37 C.F.R. § 42.12. Id. A s the Board itself noted, its d ecision “terminating [the] proceeding, including vacating [its] Institution D ecision and Final Written decision, result [ed] from a holistic evaluation of multiple considerations,”

1 Atlanta Gas also argues that any discussion in theBoard’s decision on remand not regarding sanctions violate s our mandate in Bennett II

. See, e.g.

, Appellant’s Reply Br. 26 (arguing if the Board vacated outside of the context of a sanction “it would plainly have exceeded thisCourt’s mandate”). For the reasons explained in the following section, we disagree. Case: 21-1759 Document: 29 Page: 7 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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including “time

- bar issues” and “the development of both the law and Office policy on those issues over the course of the proceeding.” Termination Decision , 2021 WL 202800, at *3.
Furthermore, the Board’s substantive discussion of time

- bar considerations was central to its decision . The Board described the “lengthy and complex history of [the] proceeding” including the facts relevant to the time bar and the changes in legal precedent and the Patent and Trademark Office ’s policy. Id. at *1

. T he Office’s new policy adopts the view of the time bar that we applied in Bennett I
, which was based on our prior precedent, Click -ToCall (vacated by Thryv ). Termination Decision , 2021 WL 202800, at *3 –4 (citing Microsoft Corp. v. Parallel Networks Licensing , LLC , No. IPR2015

- 00483, 2020 WL 5803053 , at *2 –3 (P.T.A.B. Sept. 29, 2020) (describing this history in more detail))

. Specifically, the new policy treats the service of a complaint on a petitioner (or its RPIs or privies) as start ing the time

- bar clock, regardless of whether th e district court action was subsequently dismissed without prejudice. Id.

E ven Atlanta Gas acknowledges that time

- bar issues were at the core of the Board’s decision. For instance, it argues “the Board’s real reason for choosing termination” was to “align this case with ‘Office

- policy developments’ on a time

- bar issue.” Appellant’s Br. 5 (quoting Termination Decision , 2021 WL 202800, at *3); see also Appellant’s Reply Br. 23 (“ [T] he only thing that can explain the Board’s termin ation order is that the Board saw this Court’s sanctions remand as an opportunity to align this case with the Board’s new time

- bar policy

. ”). Thus, we cannot conclude that the Board’s decision was purely a sanctions decision over which we ordinarily would have jurisdiction.

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 Case: 21-1759 Document: 29 Page: 8 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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authority to reconsider its decisions

. See GTNX, Inc.

v. INTTRA, Inc. , 789 F.3d 1309, 1313 (Fed. Cir. 2015) (citing Tokyo Kikai Seisakusho, Ltd. v. United States , 529 F.3d 1352, 1360 (Fed. Cir. 2008) ). A nd when the Board chooses to vacate its institution decision, even on remand, § 314(d)’s no

- appeal bar makes clear that it is outside of our jurisdiction to review . This wa s illustrated in BioDelivery Science s Int ernationa l, Inc. v. Aquestive Therapeutics, Inc.

, 935 F.3d 1362 , 1366

– 67 (Fed. Cir. 2019)

. BioDelivery in volved three IPR proceedings in which the Board had instituted review on only some of the grounds presented by the petitioner (one ground per petition)

. Id. at 136 3–6 4. The Board issued final written decisions in each IPR

, rejecting the sole instituted ground of unpatentability and not addressing the non

- instituted grounds. Id. The p etitioner appealed. Id. While that appeal was pending , the Supreme Court overruled the Board’s practice of partially instituting IPR proceedings

. SAS Inst., Inc. v. Iancu , 138 S. Ct. 1348 (2018) . Per SAS

, the Board had only a binary choice to institute or not. Id. at 1355. The petitioner in Bio D elivery moved in this court for a rema nd to the Board under SAS , which we granted before deciding the merits of its appeal. Bio D elivery

, 935 F.3d at 1364.On remand, the Board modified its institution decisions to instead deny the petitions and terminat e the proceeding s

. Id. The Board emp hasized certain considerations it must take into account when deciding whether to institute a proceeding, including its discretion to deny institution even if the threshold for institution 2 is

2 Section 314 governs institutions of IPRs and states
at its “ threshold ” that the Director may not institute unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Case: 21-1759 Document: 29 Page: 9 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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met and its requirement to consider the effect on the “efficient administration of the Office.” Id. Taking these considerations into account

— and looking anew at the petitioner’s other grounds, which were not previously instituted

— it concluded that denial of institution was appropriate because “the overwhelm ing majority of unpatentability grounds presented by Petitioner fail [ed] to meet the standard for institution.” Id. at 1364

– 65 (quoting the Board’s decision). The p etitioner again appealed. We dismissed the appeal for lack of jurisdiction. Id. at 1365

– 67. Like the Board ’s decision , w e not ed the Board’s “discretion to not institute even when the threshold showing is met,” citing reasons such as “administrative efficiency.” Id. at 1365

– 66 (quoting Saint Regis Mohawk Tribe v. Mylan Pharm s . Inc.
, 896 F.3d 1322, 1327 (Fed. Cir. 2018)). We then noted that § 314(d) “ plainly states that the Patent Office’s decision whether to institute IPR is not appealable” and that this includes the Board’s vacatur of prior institution decisions. Id. at 1366. Accordingly, we concluded that we lacked jurisdiction to review the Board’s reconsideration of its institution decision and its discretionary denial of institution, and we dismissed the appeal. Id. at 1367

. The facts here are similar. As in Bio D elivery , this appeal involved a remand from our court for the Board to reconsider certain issues. On remand, the Board analyzed considerations that are uniquely within its discretion to consider

— time

- bar policy here, and “efficient administration of the O ffice” in Bio D elivery

, id. at 1364

– 65. As in BioD elivery , “we would be strained to describe these decisions to modify the Board’s previous institution decisions and deny institution on remand as anything but a ‘ determination whether to institute ’ proceedings

— sta tutory language that is not limited to an initial determination to the exclusion of a determination on reconsideration. ” Id. at 1366 (quoting 35 U.S.C. § 314(d) ) (cleaned up)

. Accordingly

, the result is as it was in Bio D elivery : the Board’s termination Case: 21-1759 Document: 29 Page: 10 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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decision on remand , which depends on its analysis of § 315(b) ’s time bar and chang ed Patent and Trademark Office policy related thereto

, is final and nonappealable. Our conclusion that we lack jurisdiction to review the Board’s termination deci sion does not end our inquiry

, however, as Atlanta Gas also argues that the termination decision violates our mandate in Bennett II

. II Atlanta Gas argues that any portions of t he Board’s termination decision that w ere not focused on the “narrow purpose” of “quantify[ing] its sanctions award” violate s our mandate in Bennett II

. Appellant’s Br. 43

– 44 (quoting Bennett II , 825 F. App ’ x. a t 7 75, 7 83 ). We disagree

. Our interpretation of our own mandate is a question of law reviewed de novo. Laitram Corp. v. NEC Corp.

, 115 F.3d 947, 950 (Fed. Cir. 1997) . Under the mandate rule, “[o] nly the issues actually decided

— those within thescope of the judgment appealed from, minus those explicitly reserved or remanded by the court

— are foreclose d from further consideration. ” Engel Indus., Inc. v. Lockformer Co. , 166 F.3d 1379, 1383 (Fed. Cir. 1999)

. Atlanta Gas argues that the Board’s termination has the effect of “revers[ing]” our determination in Bennett II

— which affirm ed the unpatentability o f the claims of the ’029 patent

— rendering our opinion merely advisory. Appellant’s Reply Br. 19 ; see also Appellant’s Br. 42 –44

. Although the unpatentability issues were locked in on remand by the mandate rule , as Atlanta Gas argues , this does not mean the Board violated the mandate rule by terminating the proceeding for time

- bar reasons . The Board ’s remand decision did not analyze , criticize, or alter the unpatentability issues decided in Bennett II . “Reversing” this court’s determination— as Atla nta Gas would have us believe occurred

— would have involve d the Board disagreeing with our unpatentability decision and changing course on Case: 21-1759 Document: 29 Page: 11 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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remand . Th ere is no indication that the Board had a change of heart regarding the merits. Indeed, it would make litt le sense for the Board to disagree with our decision affirming the Board’s unpatentability determination. Instead, the Board based its decision to terminate, in part,

on time

- bar considerations, which we are precluded from reviewing.
Furthermore, our mand ate in Bennett II did not foreclose the Board from reconsidering its stance on the time bar. In Bennett I , we expressly reached the time

- bar issue, reversing the Board. If that had been the end of the story, the Board would have been precluded from reconsidering the time bar by the mandate rule because we actually decided the issue. But the Supreme Court vacated our determination following Thryv

, making clear that such time

- bar determinations a re outside of our jurisdiction to review. In

acco rdance with the Supreme Court’s direction , our decision in Bennett II did not touch the time

- bar issue and addressed the unpatentability arguments on the merits. We said nothing about the time bar because we could not say anything. Moreover , the Board re tains “inherent authority” to reconsider its decisions regarding institution, GTNX , 789 F.3d at 1313, including after a remand from our court, BioDelivery , 935 F.3d at 1366. Thus, the Board permissibly took its first opportunity to reconsider its applicat ion of the time bar on remand after Bennett II

. Although we disagree with Atlanta Gas that the Board violated our mandate in Bennett II
, we recognize that the result here is unusual and would be inappropriate in most

cases. Typically, cases are not term inated on remand after the merits have been affirmed

. B ut this result is not problematic in this specific case

. Here, contrary to Atlanta Gas’s arguments

, see , e.g. , Appellant’s Reply Br. 26, there is no concern about “ shenanigans .” A s discussed above, we agreed with the Board’s merits determination and affirmed its decision on that front, so it would be hard to understand why the Board would seek to nullify our opinion other than Case: 21-1759 Document: 29 Page: 12 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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for appropriate reasons. And we see nothing that indic ates the Board was seeking to subvert the mandate by using the time

- bar determination as a pretext. We note that , depending on the evidence presented, s uch a case could be considered “shenanigans

, ” which would be reviewable under the A dministrative P rocedure A ct or on mandamus review. See Cuozzo Speed Techs., LLC v. Lee , 579 U.S. 261, 275 (2016) (suggesting “shenanigans” would be reviewable under 35 U.S.C. § 319 and under the APA ) ; see also Sling TV, L.L.C. v. Realtime Adaptive Streaming LLC

, 840 F. App ’ x 598 , 59 9 (Fed. Cir. 2021) (indicating we would have jurisdiction to consider , in extraordinary circumstances, a mandamus petition challenging a decision to deinstitute ) (citing Mylan Lab ’ ys Ltd. v. Janssen Pharmaceutica, N.V. , 989 F.3d 1375, 1379

– 80 (Fed. Cir. 2021) ). 3 Accordingly, we conclude that the Board’s termination decision did not violate our mandate in Bennett II. Although the outcome here is that the merits determination became moot in light of the Board’s time

- bar reconsideration, Atlanta Gas has not persuaded us that the Board did so for reasons that would allow our review

.

3 On the penultimate page of Atlanta Gas’s reply brief, it requests that we treat its appeal as a petition for a writ of mandamus. This request is too late, being brought for the first time in reply, and too little, being asked in a footnote. Norman v. Uni ted States , 429 F.3d 1081, 1091 n.5 (Fed. Cir. 2005) (“A rguments raised for the first time in a reply brief are not properly before this court. ”); SmithKline Beecham Corp. v. Apotex Corp. , 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[A] rguments raised in footno tes are not preserved. ”). Case: 21-1759 Document: 29 Page: 13 Filed: 05/13/2022ATLANTA GAS LIGHT CO

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C ONCLUSION We conclude that we lack jurisdiction to review theBoard’s termination decision vacating its institution decision based

, in part

, on its consideration that the proceeding should have been time barred from the outset. We have considered Atlanta Gas ’s other arguments and find them without merit.

DISMISSED Case: 21-1759 Document: 29 Page: 14 Filed: 05/13/2022

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ ATLANTA GAS LIGHT COMPANY, Appellant

v.

BENNETT REGULATOR GUARDS, INC., Appellee

______________________

2021

- 1759

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2015

- 00826.

______________________ N EWMAN , Circuit Judge , dissenting.

T he PTAB’s sanctions o rder is not excluded from the appellate jur isdiction of the Federal Circuit , as the panel majority hold s

. Our appellate jurisdiction of PTAB decisions is set by statute ; n o exception excludes the appeal of a sanctions order. I respectfully dissent from the majority’s ruling that we do not have jurisdiction of this appeal.

D ISCUSSION The subject patent is U.S. Patent No. 5,810,029 (“the ’029 patent”)

, assigned to Bennett Regulator Guards, Inc. Th is appeal is from the Patent Tr ial and Appeal Board’s (PTAB) issuance of a Sanctions Order against the inter partes review ( IPR ) petitioner Atlanta Gas Light Company

, Case: 21-1759 Document: 29 Page: 15 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

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for failure to initially list its corporate parent and all other possible privies as a “real party in interest,” as required by 35 U.S.C. § 312(a)(2) . In the Sanctions Order on appeal, the PTAB replaced its prior sanction of attorney fees and
costs with the sanction of vacat ur of the PTAB’s final IPR decision and termination o f all IPR proceedings. 1 On appeal

, Atlanta Gas states that the sanction of vacatur of the PTAB’s final IPR decision holding all the ’ 029 patent claims invalid, and terminating all IPR proceedings

, is heavily disproportionate to the asserted offense

, and
t hus is arbitrary and contrary to law and precedent. Atlanta Gas also states that its initial designation of real party in interest conformed with precedent, and that i n all
events it provided an amended listing to meet the PTAB’s objections.

The S anctions Order is the only issue on appeal. Thepanel majority holds that we do not have jurisdiction to receive this appeal

. Atlanta Gas argues that the award of sanctions is routinely appealable and conforms to the jurisdictional authority of the Federal Circuit for PTAB appeals. Patent o wner Bennett responds that the PTAB acted in accordance with law . The panel majority concludes that “we lack jurisdiction to review the Board’s termination dec ision vacating its institution decision based, in part, on its consideration that the proceeding should have been time barred from the outset.” Maj. Op. at 14.
I cannot agree that this action is not subject to judicial review. A ppellate jurisdiction is fundamental to the processes of law. See, e.g.

, Touby v. United States , 500 U.S. 160, 170 (1991) (Marshall, J., concurring) (“judicial review

1 Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. , IPR2015

– 00826, 2021 WL 202800, at *4 (P.T.A.B. Jan. 20, 2021) (“Sanction s Order”). Case: 21-1759 Document: 29 Page: 16 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

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perfects a delegated

- lawmaking scheme by assuring that the exercise of such power remains within statutory bound s.”) ; Zad v ydas v. Davis , 533 U.S. 678, 692 (2001) ( the Supreme “Court has suggested, however, that the Constitution may well preclude granting ‘an administrative bodythe unreviewable authority to make determinations implicating fundamental rights.’” ) (quo ting Superintendent, Mass. Corr

. Inst

. at Walpole v. Hill , 472 U.S. 445, 450 (1985))

. Here the agency imposed the sanction of cancellation of e xtensive administrative proceedings and their final decisions of patent invalidity, which final decisions had been appealed to the Federal Circuit and affirmed with issuance of the mandate on patent invalidity . We surely have jurisdiction to receive appeal of th e agency action vacating all these proceedings and decisions, and purportedly including vacatur of decisions of the Federal Circuit. Our appellate jurisdiction is surely within our statutory assignment of judicial review of decisions of the P TAB

.

The imposed sanction arises from Atlanta Gas’ notice listing o f real parties in interest

The only issue on appeal is the S anction s O rder , and all agree that the basis for the sanction is Atlanta Gas’ actions relating to the mandatory listing of the real part ies in interest

. Atlanta Gas s ummarizes th e focus of the debate as to real parties in interest, as follows:

Just before the Board’s Final Written Decision in 2016, AGLC’s parent company AGL Resources was involved in a merger and was renamed. Bennett challenged AGLC’s mandatory notices before the Board, arguing that (1) AGL Resources ’ new parent company, The Southern Company, was an RP I , and (2) AGL Resources itself

— already listed a s an RPI

— was a new RPI due to its name change. Case: 21-1759 Document: 29 Page: 17 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

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AGLC pressed numerous meritorious factual arguments that The Southern Company was not an RPI and AGL Resources’ name change did not cr e ate a new RPI.

Atlanta Gas Br. 1 –2 (emphasis in original)

. After the PTAB disagreed , A tlanta Gas st ates that “in an effort to avoid an unnecessary procedural skirmish, AGLC proffered— and the Board accepted

— an updated notice ‘ that out of an abundance of caution and to avoid any dispute over the proper scope of Petitioner’s real party

- in -interest designation’ included The Southern Company along with AGL Resources’ name change. ” Id. at 2 (quotin g Updated Mandatory Notice of Atlanta Gas Light Co. , IPR2015

– 00826 , 4 (P.T.A.B. Sept. 23, 2016) ( Appx712 ).

The PTAB accepted the updated n otice

, and denied Bennett’s request to terminate the IPR . The PTAB co nducted the proceeding and decided the merits of the IPR
, holding claims 1– 8 of the ’ 029 patent invalid for anticipation or obviousness. The P TAB announced the imposition of a sa nction on Atlanta Gas , based on the c ost to Bennett to prosecute the real

- party

- in

- interest issue. The decision di d not quantify the sanction. Atlanta Gas Light C ompany v. Bennett Regulatory Guards, Inc., IPR 2015

- 00826 ( P.T.A.B. Dec. 6, 2016 ) ( Decision on Patent Owner’s Request for Rehearing and Patent Owner’s Motion for Sanctions ) (Appx 12

– 33)

. Both sides appealed ; Bennett argued that the IPR w a s time

- barred, and also appealed the merits of the invalidity decision. Atlanta Gas appealed the still

- unquantified sanction.

The Federal Circuit vacated the PTAB’s decision on time

- bar grounds, stating that “[b] eca use the Board exceeded its authority and contravened § 315(b) ’s time bar when it instituted Atlanta Gas’ p etition, we vacate its final written decision.” Bennett Regulator Guards, Inc. v. Case: 21-1759 Document: 29 Page: 18 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

. 5

Atlanta Gas Light Co

., 905 F. 3d 1311 , 1313 (Fed. Cir. 20 18 ) (“ Bennett I ”). As for the sanction, the court remanded to the PTAB for quantification of the monetary amount of Bennett’s costs and attorney fees

. Id . at 1 3 16

. Meanwhile t he Supreme Court had gr anted certiorari in a case that concerned a PTAB time

- bar i ssue . In 2020 the Court decided Thryv, Inc. v. Click -to- Call Technologies

, LP , 140 S. Ct. 13 67 (2020), holding that 35 U.S.C. § 314(d) precludes judicial review of the PTAB ’s time

- bar decision in the institution phase

. The Court stated: The question before us: Does § 314(d) ’ s bar on j udicial review of the agency ’ s decision to institute inter partes review preclude Click

- to

- Call ’ s appeal? Our answer is yes. The agency ’ s application of § 315(b) ’ s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by § 314(d)

. Id. at 13 70 . The Court r equired d ismissal by the Federal Circuit for lack of appellate jurisdiction.

Based on its decision in Thryv , the Supreme Court granted certiorari for the appeal of Bennett I
, and vacated and remanded our decision

. Atlanta Gas Light Co. v. Bennett Regulator Guards

, Inc.
, 140 S. Ct. 2711 (2020) (GVR). The case was remand ed to “ the Federal Circuit for further consideration in light of Thryv, Inc. v. Click

- to

- Call Technologies, LP

. . . .”
The Supreme Court’s decision in Thry v and the ensuing GVR require attention . In Thryv the Court did not hold that all time

- bar determinations under 35 U.S.C. § 315(b) are unappealable ; t he Court held that “institution” decisions containing time

- bar issues are unappealable be cause the y relate to institution. Thryv

, 140 S. Ct. at 1370 . However, a sanctions decision does not “expressly govern[] institution and nothing more.” Id. at 1373. Case: 21-1759 Document: 29 Page: 19 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

. 6

On remand

, t he Federal Circuit held that since we could not review whether the IPR was time

- barred, the merits of the PTAB’s invalidity decision remained before us. We then affirmed the PTAB’s decision that claims 1– 8 of the ’ 029 patent are invalid. Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co ., 825 F ed . App’x 773 (Fed. Cir. 2020 ) (“ Bennett II ”). Our mandate affirmed invalidity and remand ed to the PTAB to “ quantify any sanction s.” Id. at 783.

On receiving the remand , the PTAB “modified” its award of monetary sanctions of attorney fees and costs, stating that Bennett ’s quantifi ca tion of $96,338.30 “significantly exceed s the range that we contemplated.” Sanctions Order at *3. The PTAB then imposed the sanction of vacating all IPR decisions and terminating all IPR proceedings. The PTAB stated that vacatur and termination “most effectively resolve the issues on remand by operating as a sufficient sanction while also conforming this Decision to current Office policy.” Id. at *4.

Atlanta Gas appeals, arguing that the sanction is disproportionate to the asserted i nfraction, raising the question of the authority of the PTAB to vacate Federal Circuit final decisions, and stating that this act i on leaves the ’029 patent in “an uncertain state of suspended animation

. ” Atlanta Gas Br. 1

. Atlanta Gas requests appellate review and clarification

. However, the pane l majority holds that we do not have jurisdiction to receive this appeal. I cannot agree. Statute and precedent support Federal Circuit jurisdiction over appeal of the Sanction s Order

The Federal Circuit plainly has routine appellate jurisdiction over the PTAB’s award of sanctions.

The criteria for the award of sanctions are well

- established. In Gerritsen v. Shirai , 979 F.2d 1524 (Fed. Cir. 1992), th is court applied these criteria to the PTAB’s award Case: 21-1759 Document: 29 Page: 20 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

. 7

of sanctions in an interference action. We stated that “[w]e have jurisdiction pursuant to 35 U.S.C. § 141 and 28 U.S.C. § 1295(a)(4)(A) ,” and summarized the criteria for review of the PTAB’s sanction award : [W] e review both a 37 C.F.R. § 1. 616 decision to sanction an interference party and the choice of sanction for abuse of discretion. An abuse of discretion occurs if the Board ’ s decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; ( 3) rests on clearly erroneous fact findings; or (4) follows from a record that contains no evidence on which the Board could rationally base its decision.

Id. at 1529 (citing Heat & Control, Inc. v. Hester Indus., Inc.
, 785 F.2d 1017 , 1022 (Fed. Cir. 1986) )

. The Gerritsen
court affirmed the Board’s determination that sanctionable conduct had occurred, but the court also reviewed the substance of the award, and concluded that t he sanction of dismissal of the interference proceeding was an abuse of disc retion. Id. at 153 1–3 2.

However
, the pane l majority here hold s that we have no jurisdiction to review the PTAB’s sanction. This holding does not com p ort with precedent, and conflicts with the
court ’s assigned jurisdiction over final decision s of the PTAB

. S ee 35 U.S.C. § 141(c): (c) A party to an inter partes review

. . . who is dissatisfied with the final written decision of the Patent Trial and Appeal Board

. . . may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
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 in Case: 21-1759 Document: 29 Page: 21 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

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Bennett II

. ” Maj. Op. at 1 4

. The majority also observes that “the outcome here is that the merits determination became moot
, ” id.

, although this result is contrary to our mandate in Bennett II holding t he ’ 029 patent invalid

. Themajority adds to the contradictions, even while denying jurisdiction.

With this denial of appellate review, the PTAB’s sanctions action stands as final

, authorizing the PTAB to vacat e PTAB final decisions at any time, here restoring the ’ 029 patent to validity despite the Federal Circuit’s affirmance of invalidity. Yet the panel majority holds that “we lack jurisdiction to review the Board’s termination decision.” Id.

In addition to 35 U.S.C. § 314 (c), shown ante , Federal Circuit jurisdiction is assigned in 28 U.S.C. § 1295(a)(4)(A) : (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction

. . . (4) of an appeal from a decision of

— (A) the Pa tent Trial and Appeal Board of the United States Patent and Trademark Office

. . . . The right of j u dicial review of decisions of administrative agencies ha s lo ng been recognized. See, e.g.

, St. Joseph S tock Yards Co. v. United States

, 298 U.S. 38, 84 (1936) (Brandeis, J., concurring) (“The supremacy of law demands that there shall be opportunity to have some court decide whether an erroneous rule of law was applied and whetherthe proceeding in which facts were adjudicated was conducted regularl y. To that extent, the person asserting aright, whatever its source, should be entitled to the independent judgment of a court on the ultimate question of constitutionality.”).
Today there is rich precedent treating access to judicial review of agency action, amid the complexities and congestion of the administrative state. Here, however, statutory Case: 21-1759 Document: 29 Page: 22 Filed: 05/13/2022ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS , INC

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assignment of jurisdiction resolved the public and private interest s intended to be served. This context applies to the theory on which the pane l majority appears to base its decision, that is, that here there was a time

- bar issue . The majority states that “the outcome here is that the merits determination became moot in light of the Board’s time

- bar reconsideration

. ” Maj. Op. at 14 . On that basis, the m ajority accept s that the Federal Circuit’s decision affirming invalidity of the ’ 029 patent is “nullif [ied] .” Maj. Op. at 13 (“[I] t would be hard to understand why the Board wouldseek to nullify our opinion other than for appropriate reasons. ”)

. Yet t hroughout its opinion the majority refers to the “ unpatentability ” of the ’029 patent

. Maj. Op. at 2, 4, 6, 11, 12 . T he se aspects warrant resolution

, reinforc ing, rather than negat ing, the jurisdictional o bligation of the Federal Circuit.
Here, after extensive administrative and Federal Circuit review, the efficiency intended by the America Invents Act is obscured. The aspects remaining on appeal cry for resolution, not denial of jurisdiction.

C ONCLUSION
The appropriate path is to accept o ur jurisdi ction of this appeal and to decide the merits of the question on appeal, viz.
, whether the PTAB acted reasonably and in accordance with law, in its choice of sanction for Atlanta Gas’ handling of the real

- party

- in

- interest issue. The PTAB’s ruling is flawed, and warrants appellate attention. From my colleagues ’ holding that we have no jurisdiction to receive this appeal, I respectfully dissent. Case: 21-1759 Document: 29 Page: 23 Filed: 05/13/2022