In Atlanta Gas Light Company v, Bennett Regulator Guards, Inc, [2021-1759] (May 13, 2022) the Federal Circuit dismissed Atlanta Gas’ appeal for lack of jurisdiction.

This was the third time this case made it to the Federal Circuit from the PTAB, In its final written decision, the Board, in the underlying inter partes review proceeding, rejected patent owner Bennett Regulator Guards, Inc.’s argument 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,and in the first appeal, the Federal Circuit 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 order that the Board had not yet finalized.)

Before the Board acted on this mandate, however, the Supreme Court held that time-bar determinations were unreviewable in Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), and vacated the Federal Circuit’s decision overruling the Board’s time-bar determination.

On remand from the Supreme Court, the Federal Circuit affirmed the Board’s unpatentability
determination on the merits (while saying nothing about the time bar) and again remanded for the Board to reconsider and finalize its order regarding sanctions. On remand from the Federal Circuit, the Board terminated the proceeding due in part to its reconsideration of its decision on the time bar.

Atlanta Gas appealed, but the Federal Circuit concluded that it lacked 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, the Federal Circuit dismissed Atlanta Gas’s appeal for lack of jurisdiction.