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Latest Update: Aug. 17, 2020
Summary: Case: 17-1555 Document: 82 Page: 1 Filed: 08/17/2020 NOTE: This disposition is nonprecedential. 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: August 17, 2020 _ WAYNE D. PORTER, JR., Law Offices of Wayne D. Porter, Jr., Independence, OH, for appellant. HOLM
Summary: Case: 17-1555 Document: 82 Page: 1 Filed: 08/17/2020 NOTE: This disposition is nonprecedential. 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: August 17, 2020 _ WAYNE D. PORTER, JR., Law Offices of Wayne D. Porter, Jr., Independence, OH, for appellant. HOLME..
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Case: 17-1555 Document: 82 Page: 1 Filed: 08/17/2020
NOTE: This disposition is nonprecedential.
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: August 17, 2020
______________________
WAYNE D. PORTER, JR., Law Offices of Wayne D. Porter,
Jr., Independence, OH, for appellant.
HOLMES J. HAWKINS, III, King & Spalding, LLP, At-
lanta, GA, for cross-appellant. Also represented by
RUSSELL E. BLYTHE.
______________________
Case: 17-1555 Document: 82 Page: 2 Filed: 08/17/2020
2 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
Before LOURIE, CLEVENGER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Bennett Regulator Guards, Inc. appeals the Patent
Trial and Appeal Board’s final written decision holding all
claims of U.S. Patent No. 5,810,029 unpatentable on antic-
ipation and obviousness grounds, along with the Board’s
subsequent order sanctioning petitioner Atlanta Gas Light
Company. Bennett specifically challenges the Board’s
claim constructions, its compliance with the Administra-
tive Procedure Act, and the adequacy of its sanctions
award. Atlanta Gas cross-appeals, seeking to overturn the
sanctions award.
This case returns to us following the Supreme Court’s
decision in Thryv, Inc. v. Click-To-Call Technologies, LP,
140 S. Ct. 1367 (2020). Our original decision in this case
vacated the Board’s final written decision without reaching
the merits of the Board’s unpatentability determinations
because we concluded that “the Board exceeded its author-
ity and contravened § 315(b)’s time bar when it instituted
Atlanta Gas’s petition.” Bennett Reg. Guards, Inc. v. At-
lanta Gas Light Co.,
905 F.3d 1311, 1313 (Fed. Cir. 2018).
The Supreme Court vacated our original decision and re-
manded for further consideration in light of Thryv. Atlanta
Gas Light Co. v. Bennett Reg. Guards, Inc., No. 18-999,
2020 WL 1978924 (U.S. Apr. 27, 2020).
Because Thryv precludes our review of the Board’s “ap-
plication of § 315(b)’s time limit,” 140 S. Ct. at 1370, we
now reach Bennett’s challenge to the merits of the Board’s
final written decision. For the reasons that follow, we af-
firm the Board’s determination that claims 1–8 of the
’029 patent are unpatentable for anticipation and obvious-
ness. And, as in our original decision, we decline to review
the Board’s nonfinal sanctions order and instead remand
to the Board to quantify its sanctions award.
Case: 17-1555 Document: 82 Page: 3 Filed: 08/17/2020
BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 3
BACKGROUND
I
The ’029 patent relates to natural gas distribution, spe-
cifically the pressure regulator valves that reduce the pres-
sure of natural gas “from the relatively high level used in a
distribution system to the relatively low pressure level
used in a customer’s building.” ’029 patent col. 1 ll. 5–9.
The invention of the ’029 patent seeks to prevent these
valves from failing due to ice formation. Id. at col. 1
ll. 10–12. The disclosed “ice preventing device” includes a
skirt that connects to and surrounds the vent tube of a
pressure regulator valve.
Id. at Abstract. The skirt in-
cludes a baffle that prevents rain or freezing rain from
splashing upwardly into the passage of the vent tube of the
pressure regulator valve.
Id.
The ’029 patent, now expired, includes eight claims.
Claim 1 is illustrative:
1. A skirt assembly for reducing ice formation at
an outlet vent tube from the atmospheric pressure
chamber of a diaphragm-type gas pressure regula-
tor, comprising:
a skirt receiver adapted to be operatively connected
to said vent tube;
a skirt member defining an interior space and hav-
ing an upper end opening connecting said vent tube
to said interior space and an outwardly flared lower
end with an area substantially greater than the
area of said upper end opening, said skirt member
being operatively connected to said skirt receiver
means; and
baffle means located in said interior space to under-
lie said upper end opening and being spaced from
the interior walls of said skirt to permit gas flow
therearound;
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4 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
whereby ice formation tending to block said vent
tube is inhibited.
Id. at col. 4 ll. 42–57 (emphases added to disputed claim
terms). Independent claim 5 similarly recites a “skirt
member” and “baffle means,” but further recites a “valve
means” and a “skirt receiver means.”
Id. at col. 4
l. 64 – col. 6 l. 8. The dependent claims further specify that
the skirt member is formed of “a molded plastic material”
(claims 2 and 6) that may be “electrically conductive plas-
tic” (claims 3 and 7), and that the lower end opening of the
device may be covered by “a screen element” (claims 4
and 8).
Id. at col. 4 ll. 58–63, col. 6 ll. 9–14.
II
Atlanta Gas petitioned for inter partes review of all
claims of the ’029 patent. Atlanta Gas asserted that claims
1 and 5 are anticipated by Peterson ’087, 1 and that all of
the claims of the ’029 patent would have been obvious over
various combinations of Peterson ’087 and Peterson ’573, 2
Ferguson, 3 Ohmae, 4 and the prior art described in the
’029 patent. The Board agreed, holding the challenged
claims unpatentable on all grounds. See generally Atlanta
Gas Light Co. v. Bennett Reg. Guards, Inc.,
No. IPR2015-00826, 2016 WL 8969209 (P.T.A.B. Aug. 19,
2016) (Decision).
On July 1, 2016—after the oral hearing but before the
Board’s final written decision issued—the parent entity of
Atlanta Gas, AGL Resources, Inc., merged with a wholly
owned subsidiary of Southern Company, the owner of sev-
eral electric and gas utilities located across multiple states.
On July 11, 2016, the surviving AGL Resources entity was
1 U.S. Patent No. 2,620,087.
2 U.S. Patent No. 3,012,573.
3 U.S. Patent No. 3,985,157.
4 U.S. Patent No. 4,957,660.
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BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 5
renamed Southern Company Gas. Atlanta Gas did not no-
tify the Board of these events.
After the Board’s final written decision issued, Bennett
sought to terminate the IPR based on the failure of Atlanta
Gas to timely update its mandatory notices to identify
Southern Co. and Southern Co. Gas as real parties in in-
terest. Following a conference call with the parties, the
Board rejected Bennett’s requested termination, but or-
dered Atlanta Gas to update its notices and allowed Ben-
nett to file a motion for sanctions. Shortly thereafter,
Atlanta Gas filed a notice identifying Southern Co. Gas as
“not a new entity but rather a name change.” J.A. 306–07.
Atlanta Gas also identified Southern Co. “out of an abun-
dance of caution.” J.A. 307. Bennett then moved for sanc-
tions, which Atlanta Gas opposed.
Addressing the sanctions motion, the Board found that
Southern Co. Gas was a real party in interest, at least be-
cause its predecessor (AGL Resources) was. The Board fur-
ther found that Southern Co. was also a real party in
interest based on Atlanta Gas’s identification of Southern
Co. as a real party in interest in its updated notices. After
finding that Bennett was harmed by Atlanta Gas’s nondis-
closure, 5 the Board awarded Bennett its costs and fees in-
curred between the final written decision and the sanctions
decision, but again declined to terminate the IPR and ex-
punge the final written decision as Bennett had further
5 Notably, one member of the three-judge panel was
obliged to recuse himself after Atlanta Gas identified
Southern Co. as a real party in interest, and a new judge
was added to the panel. The Board found that there was
no risk of injustice to the parties, however, because the fi-
nal written decision issued before the Board was made
aware of the merger. Nevertheless, the reconstituted panel
“considered the Final Written Decision anew and expressly
adopt[ed] its findings and conclusions.” J.A. 94.
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6 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
requested. The Board did not quantify the amount of the
awarded costs and fees; it instead authorized Bennett to
file a motion identifying and explaining the specific
amounts requested.
Bennett appeals the Board’s final written decision and
sanctions order. Atlanta Gas cross-appeals the sanctions
order. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
On appeal, Bennett challenges the final written deci-
sion based on the Board’s claim constructions and the
Board’s compliance with the Administrative Procedure Act.
Both parties challenge the sanctions award. We address
each issue in turn.
I
We begin with Bennett’s claim construction challenge.
We review de novo the Board’s ultimate claim construc-
tions and any supporting determinations based on intrinsic
evidence. Personalized Media Commc’ns, LLC v. Apple
Inc., 952 F.3d 1336, 1339 (Fed. Cir. 2020) (citing Knowles
Elecs. LLC v. Cirrus Logic, Inc.,
883 F.3d 1358, 1361–62
(Fed. Cir. 2018)). We review any subsidiary factual find-
ings based on extrinsic evidence for substantial evidence.
Id. (citing Knowles, 883 F.3d at 1362). Because the ’029 pa-
tent is expired, the Phillips standard applies to the Board’s
constructions. Apple Inc. v. Andrea Elecs. Corp.,
949 F.3d
697, 707 (Fed. Cir. 2020) (citing In re CSB-Sys. Int’l, Inc.,
832 F.3d 1335, 1342 (Fed. Cir. 2016)).
On appeal, Bennett challenges the constructions of no
fewer than ten claim terms. The essential issue, however,
is whether the challenged claims are properly limited to a
high-pressure, internally relieved regulator. For the fol-
lowing reasons, we agree with the Board that the ’029 pa-
tent does not limit the scope of the invention, and by
extension the claim terms at issue, to that particular type
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BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 7
of regulator. We also conclude that the Board reasonably
declined to credit Bennett’s proffered testimony, which at
most establishes that the ’029 patent uses a particular kind
of regulator as an example.
Bennett contends that the Board was obligated to con-
strue the claim terms narrowly in order to preserve the va-
lidity of the challenged claims because the ’029 patent is
expired, and the challenged claims may no longer be
amended. We disagree. Claims are construed to preserve
validity only if, “after applying all the available tools of
claim construction . . . the claim is still ambiguous.” Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir.
2004); see also Phillips v. AWH Corp.,
415 F.3d 1303, 1327
(Fed. Cir. 2005) (en banc) (“While we have acknowledged
the maxim that claims should be construed to preserve
their validity, we have not applied that principle broadly,
and we have certainly not endorsed a regime in which va-
lidity analysis is a regular component of claim construc-
tion.” (citation omitted)). Bennett also relies on Athletic
Alternatives, Inc. v. Prince Manufacturing, Inc.,
73 F.3d
1573, 1581 (Fed. Cir. 1996), for the proposition that, given
“an equal choice between a broader and a narrower mean-
ing . . . the notice function of the claim [is] best served by
adopting the narrower meaning.” That case, however, does
not disturb the general rule that “[c]laim terms should be
given their plain and ordinary meaning to one of skill in
the art at the relevant time and cannot be rewritten by the
courts to save their validity.” Hill-Rom Servs., Inc.
v. Stryker Corp.,
755 F.3d 1367, 1374 (Fed. Cir. 2014).
With these principles in mind, we turn to the specific con-
structions at issue.
A
To start, Bennett identifies no ambiguity in the claim
terms “diaphragm-type gas pressure regulator,” “outside
gas pressure regulator,” and “valve means” that would sup-
port adopting its narrower constructions. With regard to
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8 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
the means-plus-function term “valve means,” Bennett as-
serts that the Board erred by identifying the corresponding
structure as “a conventional diaphragm-type gas pressure
regulator,” which encompasses both internally relieved
and non-relieved regulators. Appellant’s Br. 37–38 (quot-
ing Decision, 2016 WL 8969209, at *10). But as the Board
correctly found, the ’029 patent does not limit “valve
means” to a particular type of regulator. See, e.g., ’029 pa-
tent Abstract (describing invention as “for use with an out-
side gas pressure regulator”)
, id. at col. 2 ll. 52–62
(describing Figs. 1–4 as illustrating “a typical gas pressure
regulator valve . . . with which the device of the present in-
vention may be used”). So too with “diaphragm-type gas
pressure regulator” and “outside gas pressure regulator,”
which Bennett does not argue separately.
Bennett insists that “substantial intrinsic and extrin-
sic evidence” shows that the ’029 patent “disclosed and
claimed only a Fisher S254 high pressure, internally re-
lieved regulator located outdoors.” Appellant’s Br. 40–41.
According to Bennett, “valve means” must therefore be con-
strued to include the restrictions “high pressure,” “inter-
nally relieved,” and “located outdoors.” Id. at 40. We agree
with the Board that the intrinsic record does not support
Bennett’s proposed constructions. As an initial matter, the
fact that some of these limitations, like “high pressure” and
“outside,” are found in other sections of claim 5 does not
suggest that “valve means” should also be so limited. The
’029 patent, furthermore, does not even reference a Fisher
regulator, much less the specific, internally relieved Fisher
S254 regulator that Bennett asks us to incorporate into the
claims. Indeed, Bennett admits as much on reply. See Ap-
pellant’s Reply Br. 34 (“The [’]029 patent does not refer to
the disclosed regulator by name, nor does it incorporate all
information from Fisher product literature.”).
Undeterred by the intrinsic record, Bennett points to
its proffered testimony that an ordinarily skilled artisan
would have understood the ’029 patent to describe a Fisher
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BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 9
regulator—testimony that Bennett claims the Board cred-
ited. But the Board did not credit this testimony. Instead,
the Board explained that, even if it credited Bennett’s prof-
fered testimony, it “[a]t best” suggests that the ’029 patent
uses the Fisher regulator as a nonlimiting example. Deci-
sion, 2016 WL 8969209, at *12. Bennett’s suggestion that
“trustworthy extrinsic evidence” may be preferred over in-
trinsic evidence for claim construction purposes, further-
more, is incorrect as a matter of law. Appellant’s Reply
Br. 31–32 (citing pre-Phillips cases); see also
Phillips,
415 F.3d at 1317, 1324 (explaining that extrinsic evidence
is “less significant than the intrinsic record” and that ex-
trinsic evidence cannot “contradict claim meaning that is
unambiguous in light of the intrinsic evidence” (citations
omitted)). In any event, the Board was not required to ac-
cept conclusory and unsupported assertions that an ordi-
narily skilled artisan would have understood the disclosed
regulator to be a specific Fisher model. See, e.g., J.A. 540
¶ 46 (named inventor declaring without support that “[o]ne
skilled in the art would recognize that the gas regulator
illustrated and described in the [’]029 patent . . . is an in-
ternally relieved Fisher S254 regulator”); see also
Phillips,
415 F.3d at 1318 (“[C]onclusory, unsupported assertions by
experts as to the definition of a claim term are not useful
to a court.”); TQ Delta, LLC v. Cisco Sys., Inc.,
942 F.3d
1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony
does not qualify as substantial evidence.” (citations omit-
ted)). Accordingly, we hold that the Board correctly de-
clined to adopt Bennett’s proposed narrowing constructions
of “diaphragm-type gas pressure regulator,” “outside gas
pressure regulator,” and “valve means.”
B
Bennett also seeks a narrowing construction of “baffle
means.” In particular, Bennett contends that the Board
erred by not requiring “substantial space” between the baf-
fle and the skirt to “permit high pressure gas to flow.” Ap-
pellant’s Br. 42–44. Bennett bases this assertion on the
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10 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
specification’s description of the baffle-skirt space as “sub-
stantial.” Id. at 43 (citing ’029 patent col. 4 ll. 5–8). Ben-
nett also relies on its proffered testimony that the
’029 patent describes a high-pressure, internally relieved
regulator, in that such a regulator would require “substan-
tial space . . . to permit high pressure gas to flow . . . out of
the skirt.”
Id.
As with Bennett’s earlier claim construction argu-
ments, however, the intrinsic record does not support im-
porting the narrowing limitations that Bennett seeks.
Though the ’029 patent does state that the baffle-skirt
space is “substantial,” ’029 patent col. 4 ll. 5–8, the claims
only require that the baffle be “spaced from the interior
walls of said skirt to permit gas flow therearound,”
id.
at col. 4 ll. 53–55 (claim 1), col. 6 ll. 4–6 (claim 5). Neither
the specification nor the claims require a baffle-skirt gap of
any particular size. Bennett’s further contention that the
reexamination history of the ’029 patent shows that the Pa-
tent Office understood “small baffle-skirt space[s]” to be ex-
cluded from the scope of the claims is unavailing.
Appellant’s Br. 44. The reexamination record includes no
substantive discussion of the “small baffle-skirt space” ex-
cept for Bennett’s own assertion that the “baffle” of the
prior art extends “into the side wall”—i.e., the prior art has
no space. J.A. 641–42. No inference about the size of the
spacing in Bennett’s device logically follows. Accordingly,
we discern no error in the Board’s construction of the “baf-
fle means” term.
C
As to the claim terms “outlet vent tube,” “vent tube,”
“outlet vent means,” and “vent means,” Bennett argues
that the Board erred by failing to require a vent tube with
a sufficiently large diameter and a downwardly facing end
portion. Once again, the intrinsic record does not support
incorporating Bennett’s narrowing limitations. The plain
claim language does not define the size of the tube or
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BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 11
specify a particular orientation. The specification discloses
that the vent opening is “small.” ’029 patent col. 1
ll. 40–44. And though the patent shows a downward facing
tube, it does not limit the orientation of the tube. See, e.g.,
id. at col. 1 ll. 55–56 (“the vent in the diaphragm housing
is usually protected by a section of tubing (vent tube) that
faces downwardly” (emphasis added)). The Board also
credited evidence presented by Atlanta Gas showing that
tubes with other orientations were known in the art, a find-
ing that is supported by substantial evidence. We find no
reversible error in the Board’s construction of these claim
terms.
D
Finally, Bennett argues that the Board erred by failing
to construe the “high pressure gas source” and “low pres-
sure gas line” terms to require the specific pressures that
Bennett proposed—e.g., from about 2–3 psi to about 125 psi
for a high-pressure gas source. Instead, the Board con-
strued the pair as relative terms, “such that the ‘high pres-
sure gas source’ delivers gas at a pressure higher than a
pressure at the ‘low pressure gas line.’” Decision, 2016 WL
8969209, at *12. We agree with the Board’s construction.
The ’029 patent does not disclose Bennett’s proposed val-
ues, and in any event, the specification does not suggest
that any of the disclosed pressures are limiting. See
’029 patent col. 1 ll. 15–16 (noting high pressure “around
80 psi” and low pressure “around 0.4 psi”); see also
id.
at col. 3 ll. 1–8 (again noting high pressure “around
80 psi”). Bennett’s extrinsic evidence, which includes the
operating pressure ranges for the Fisher S254 regulator,
does not compel a different result for the same reasons dis-
cussed above.
In sum, Bennett has failed to establish any intrinsic
evidence for its narrowing constructions, and the Board
reasonably declined to credit Bennett’s extrinsic evidence
for the same. Based on the intrinsic evidence of record, we
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12 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
agree with the Board’s interpretation of these terms. We
therefore affirm the Board’s constructions of the disputed
claim terms.
II
Next, Bennett alleges a litany of APA violations by the
Board. We review the Board’s decisions for compliance
with the APA, which requires the Board to “make the nec-
essary findings and have an adequate ‘evidentiary basis for
its findings,’” and further requires that the Board “examine
the relevant data and articulate a satisfactory explanation
for its action including a rational connection between the
facts found and the choice made.” In re NuVasive, Inc.,
842 F.3d 1376, 1382 (Fed. Cir. 2016) (first quoting In re
Lee,
277 F.3d 1338, 1344 (Fed. Cir. 2002); then quoting Mo-
tor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co.,
463 U.S. 29, 43 (1983)). “[W]e do not require perfect expla-
nations,” however, and “we will uphold a decision of less
than ideal clarity if the agency’s path may reasonably be
discerned.”
Id. at 1382–83 (quoting Bowman Transp., Inc.
v. Ark.-Best Freight Sys., Inc.,
419 U.S. 281, 286 (1974)).
Bennett specifically contends that the Board failed to
fulfill the requirements of the APA because it: (1) held that
Peterson ’087 disclosed a vent that relieved both gas and
air “without discussing Bennett’s evidence”; (2) “did not an-
alyze Bennett’s evidence” that an outlet vent tube must
have a large diameter “in order to accommodate the dis-
charge of high pressure gas”; (3) “did not . . . discuss the ev-
idence or arguments” regarding the necessary size of the
baffle-skirt gap in the claimed invention; and (4) “did not
discuss,” particularly with regard to dependent claims 3
and 7, why one skilled in the art would use electrically con-
ductive plastic (as disclosed by Ohmae) “to solve the fire
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BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 13
and explosion problem . . . instead of using some other tech-
nique.” Appellant’s Br. 48–51. 6
We are not persuaded by Bennett’s APA arguments.
For the reasons that follow, we conclude that the Board ad-
equately explained and supported its findings in view of
the APA and our case law.
Bennett asserts that “a critical issue was whether Pe-
terson [’087] disclosed an air vent for a non-relieved regu-
lator.” Appellant’s Br. 49. The Board discussed that issue
and credited Atlanta Gas’s evidence that Peterson ’087’s
vent 20 may be a “relief vent,” and that a person of ordinary
skill in the art would have understood a “relief vent” to vent
gas. Decision, 2016 WL 8969209, at *13. In doing so, the
Board expressly acknowledged Bennett’s argument that
Peterson ’087 does not mention discharging gas through
vent 20, and the Board explained that it was not persuaded
by that argument.
Id. (quoting J.A. 276). Bennett based
its argument solely on the declaration of Gregory A. Ben-
nett, a named inventor on the ’029 patent, who testified
without support that Peterson ’087 uses “breather” and “re-
lief vent” synonymously. See J.A. 276; J.A. 543 ¶ 61. The
Board did not specifically discuss that particular testimo-
nial evidence supporting Bennett’s argument, but the
Board did explain that it found Bennett’s argument unper-
suasive when it credited Atlanta Gas’s evidence. That is
6 On reply, Bennett adds that the Board also failed
to adequately consider its evidence and argument regard-
ing secondary considerations. See Appellant’s Reply
Br. 42. Bennett did not present this argument in its open-
ing brief, and it is therefore waived. SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006)
(“Our law is well established that arguments not raised in
the opening brief are waived.” (citing Cross Med. Prods.,
Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293,
1320–21 n.3 (Fed. Cir. 2005))).
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14 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
enough. The Board need not expressly discuss every single
bit of evidence proffered by the parties, so long as we can
reasonably discern its path. See
NuVasive, 842 F.3d
at 1382–83; see also Paice LLC v. Ford Motor Co.,
881 F.3d
894, 905 (Fed. Cir. 2018) (affirming where the Board’s ob-
viousness determinations “flow[ed] directly from its rejec-
tion of [patent owner’s] arguments” and where its analysis
was “commensurate with [patent owner’s] arguments”).
We can do so here.
Bennett also alleges that the Board failed to analyze its
evidence that an outlet vent tube must have a large diam-
eter. Here too, the Board noted Bennett’s argument, but
deemed it “unpersuasive” as both not in accordance with
the proper construction of “outlet vent tube” and “outlet
vent means,” and in conflict with the ’029 patent itself. De-
cision, 2016 WL 8969209, at *13. Because the Board cor-
rectly found that the claims do not require an internally
relieved regulator, its statement that Bennett’s arguments
are unpersuasive because they “rely on features that we do
not find are required by the claims in accordance with the
claim construction” is sufficient.
Id. Furthermore, we
agree with the Board that Bennett’s position conflicts with
the ’029 patent itself, which describes “a small vent open-
ing 30.” ’029 patent col. 3 ll. 28–31 (emphasis added). On
appeal, Bennett now contends that vent 30 and vent 31 are
different and serve different purposes, but the ’029 patent
specifically explains that vent tube 31 extends from open-
ing 30.
Id. at col. 3 ll. 31–34. We discern no APA violation
here.
Bennett similarly argues that the Board failed to dis-
cuss its evidence that the baffle-skirt gap of Peterson ’087
“proves that Peterson’s device was intended to vent only
air.” Appellant’s Br. 49. But as the Board explained, the
claims—which, as discussed above, are not limited to an
internally relieved regulator—do not require “‘substantial’
space” to vent “‘high pressure’ gas.” Decision, 2016 WL
8969209, at *13. Once again, the Board acknowledged
Case: 17-1555 Document: 82 Page: 15 Filed: 08/17/2020
BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 15
Bennett’s contrary argument, but did not agree. We find
the Board’s explanation sufficient.
Bennett also argues that the Board failed to address its
evidence and argument that an ordinarily skilled artisan
would not have been motivated to increase the size of the
Peterson ’087 baffle-skirt gap, and therefore would not
have combined Peterson ’087 with the internally relieved
regulator of the admitted prior art. Bennett cites no sup-
porting evidence for this argument, however. Indeed, Ben-
nett admitted in its patent owner response that the prior
art described in the ’029 patent is not limited to an inter-
nally relieved regulator. J.A. 296 (“[O]ne skilled in the art
at the time of the invention relying only on [the admitted
prior art] . . . would not have known whether the disclosed
regulator was internally relieved or non-relieved.”).
Lastly, Bennett contends that the Board failed to ex-
plain a motivation to use Ohmae’s anti-static, conductive
plastic in the proposed combination. We disagree. The
Board credited Atlanta Gas’s reasoning that Ohmae relates
to an electrically conductive plastic molding, and that an
ordinarily skilled artisan would have had a reason to com-
bine Ohmae’s teaching with the teachings of Peterson ’087
and Ferguson. As the Board explained, such a person
would have understood “the benefits of an antistatic mate-
rial as the molded plastic for the skirt assembly, including
reducing the likelihood of fire and explosions.” Decision,
2016 WL 8969209, at *16 (quoting J.A. 162). The Board
also relied on Mr. Bennett’s testimony that “at the time of
invention, ‘static electricity was a big issue,’ but that con-
cern has since ‘faded away,’” as confirmation that there was
industry motivation to use antistatic material.
Id. at *17
(quoting J.A. 1138). Bennett argues that the Board erred
by considering Mr. Bennett’s testimony because “whether
the industry no longer has a concern . . . has nothing to do
with how [Mr.] Bennett solved it in the first instance and
whether such solution would have been obvious.” Appel-
lant’s Br. 50–51. But Bennett misreads the Board’s
Case: 17-1555 Document: 82 Page: 16 Filed: 08/17/2020
16 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
decision. The Board considered Mr. Bennett’s testimony
only for the point that static electricity had been a concern,
which suggests that a person of ordinary skill in the art
would have been motivated to make the combination. Ben-
nett also alleges that none of the references discuss pre-
venting fires and explosions, but as Atlanta Gas correctly
responds, a motivation to combine need not be stated in the
references themselves. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419–20 (2007).
For these reasons, we conclude that the Board’s ra-
tionale is reasonably ascertainable and is supported by
substantial evidence. Accordingly, we affirm.
III
Finally, we address the parties’ challenges to the
Board’s sanctions order. We review the Board’s award of
sanctions for an 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
award); Woods v. Tsuchiya,
754 F.2d 1571, 1582 (Fed. Cir.
1985) (noting that award of sanctions falls within the
Board of Interference’s discretion).
Bennett asserts that the Board properly awarded mon-
etary 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-Appel-
lant’s Br. 70–86. We do not resolve the sanctions 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 fi-
nal decisions. See 28 U.S.C. § 1295(a)(4)(A). But our juris-
diction 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” (quot-
ing Loughlin v. Ling,
684 F.3d 1289, 1292 (Fed. Cir.
Case: 17-1555 Document: 82 Page: 17 Filed: 08/17/2020
BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO. 17
2012))). Because the Board has not yet quantified its sanc-
tions award, the award remains non-final and unappeala-
ble. See Special Devices, Inc. v. OEA, Inc.,
269 F.3d 1340,
1343 (Fed. Cir. 2001) (holding unquantified award of attor-
ney 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 fi-
nal, 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 pen-
dent jurisdiction only reluctantly, and only to issues “inex-
tricably intertwined” with or necessary to resolution of
issues already before the court. See Swint v. Chambers
Cnty. Comm’n, 514 U.S. 35, 51 (1995) (providing standard
for exercise of pendent jurisdiction). “[T]he circuits, includ-
ing 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 jurisdic-
tion is not warranted here. Orenshteyn v. Citrix Sys., Inc.,
691 F.3d 1356, 1360 (Fed. Cir. 2012). The parties’ merits
disputes ask whether the art identified by Atlanta Gas an-
ticipates 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 sanc-
tions 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 dif-
ferent legal
analyses.” 691 F.3d at 1360.
Atlanta Gas suggested at oral argument that the
Board’s denial of Bennett’s requested remedy—termina-
tion—was a final decision subject to appeal, and that we
should exercise pendent jurisdiction over the Board’s re-
lated decision to award a monetary sanction, even though
Case: 17-1555 Document: 82 Page: 18 Filed: 08/17/2020
18 BENNETT REG. GUARDS, INC. v. ATLANTA GAS LIGHT CO.
the amount of that sanction remains undetermined. See
Oral Arg. at 15:20–16:55, http://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=2017-1555.mp3.
We disagree. Atlanta Gas’s formulation requires us to ar-
bitrarily divide the Board’s sanctions order into two deci-
sions—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 sanc-
tions, 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, fur-
ther 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
We have considered the parties’ other arguments, and
we do not find them persuasive. For the foregoing reasons,
we affirm the Board’s unpatentability determinations and
remand for the Board to quantify any sanctions.
AFFIRMED-IN-PART AND REMANDED
COSTS
No costs.
