Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., No. 17-1555 (Fed. Cir. 2018)Annotate this Case
The district court dismissed Bennett’s infringement complaint, served on Atlanta Gas in July 2012, without prejudice. In February 2015, Atlanta Gas sought Inter Partes Review (IPR). Bennett cited 35 U.S.C. 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.” The Patent Board held that the without-prejudice dismissal nullified service, instituted review, and held every claim of the patent unpatentable. Petitioners must identify all real parties in interest in their petitions, 35 U.S.C. 312(a)(2); Board regulations require petitioners to update that information within 21 days of any change, Late in the IPR, Atlanta Gas’s parent company, AGL merged with another company and changed its name. Atlanta Gas had listed AGL as a real party in interest but did not notify the Board of the merger or the name change before the final decision. Shortly after receiving the final decision, Bennett notified the Board and sought sanctions for nondisclosure. The merger created new Board conflicts; one member of the three-judge panel recused himself. A reconstituted panel declined to terminate the IPR but authorized Bennett to seek “costs and fees.” The Federal Circuit vacated. The Board exceeded its authority and contravened section 315(b)’s time bar when it instituted Atlanta Gas’s petition.