PTAB Authorizes Sanctions Against Party For Failing To Update Mandatory Notices
Under 37 C.F.R. § 42.12(a), the PTAB may impose sanctions against a party for “misconduct,” including “[f]ailure to comply with an applicable rule or order in the proceeding,” among other things. On December 6, 2016, the PTAB issued a decision in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2015-00826, authorizing sanctions against Petitioner Atlanta Gas Light (“AGL”) for failing to comply with rules governing mandatory notices in IPR proceedings.
Under 37 C.F.R. § 42.8(b), parties are required to file notices with the PTAB identifying: (1) the real parties-in-interest; (2) related judicial or administrative matters that would affect, or be affected by, a decision in the proceeding; (3) lead and back up counsel; and (4) service information. In addition, § 42.8(a)(3) requires parties to notify the Board “within 21 days of a change of the information . . . stated in an earlier [notice].”
The PTAB found that AGL violated these rules by failing to notify the Board after AGL’s parent company underwent a merger and name change, thereby changing the real parties-in-interest. The Board found that AGL’s failure to update its prior notice was “conduct that warrants a sanction.” However the Board stopped short of adopting the Patent Owner’s proposal to dismiss the Petition with prejudice and expunge the Final Written Decision. Instead, the Board determined that an appropriate sanction was to award Patent Owner certain costs and fees associated with the proceeding.
The PTAB’s decision is a reminder that parties in post-grant proceedings have an ongoing obligation to update their § 42.8 mandatory notices. Parties should promptly notify the Board of changes in the real parties-in-interest, as well as new related judicial or administrative matters, or changes in counsel or service information.
Additional information about post-grant proceedings can be found on our Post-Grant Patent practice group page.