United States: PTAB: Informal Delivery Of Complaint Does Not Start One-Year Clock For Filing IPR

A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b).

On January 23, 2018, Aristocrat Technologies, Inc. (“Petitioner”) filed an inter partes review (IPR) challenging claims of U.S. Patent No. 9,022,852 (the “’852 Patent”), which is directed to a method of operating a slot machine. The owner of the ’852 Patent, High 5 Games, LLC (“Patent Owner”), had previously asserted the ’852 Patent against several defendants in district court, including Petitioner. Patent Owner first included claims alleging infringement of the ’852 Patent in its second amended complaint. Notably, before Patent Owner sought leave to file its second amended complaint, the Magistrate Judge recommended that Patent Owner send a redline version of its proposed amendments to the defendants, including Petitioner, to see if they would consent to the amendments. Pursuant to that recommendation, on December 1, 2016, Patent Owner circulated, via email, a redline version of its second amended complaint to the defendants. The defendants did not consent to the amendments and on December 23, 2016, Patent Owner sought leave from the court to file the second amended complaint. The district court granted leave and Patent Owner formally filed and served the second amended complaint on January 30, 2017.

Patent Owner argued in the IPR that the petition was time-barred under § 315(b) because Petitioner was served with a complaint on December 1, 2016, which is more than one year before the January 23, 2018, filing date of the petition. Relying on the Board’s precedential analysis in LG Electronics, Inc. v. Mondis Technology Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015), Patent Owner contended that the express language of § 315(b) requires only that the petitioner be served with “a” complaint, as happened here when Patent Owner emailed the proposed second amended complaint to Petitioner. The Board disagreed and distinguished LG Electronics by explaining that the factual situations and questions presented there were different. Specifically, the Board noted that in LG Electronics there was no dispute that there was valid service of the complaint. Moreover, rather than considering the present issue—namely, whether email delivery constituted “service of a complaint” at all—the Board in LG Electronics addressed whether a prior valid service can be obviated by a subsequent complaint or partial dismissal of a complaint. Because of these fundamental differences, the Board concluded that Patent Owner’s reliance on LG Electronics was misplaced.

The Board next considered the language of § 315(b) and determined that emailing a document styled as a proposed amended complaint, without authorization from the district court, was not “service” under the plain meaning of that term. In reaching its conclusion, the Board noted that the Federal Circuit has held that the plain meaning of the phrase “served with a complaint” in § 315(b) is “‘presented with a complaint’ or ‘delivered a complaint’ in a manner prescribed by law.Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (emphasis added). The Board also referenced the Supreme Court’s “bedrock principle” that “a defendant is not obligated to engage in litigation unless . . . brought under a court’s authority by formal process.” Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347 (1999). Here, Petitioner did not receive formal process and was not officially a defendant in relation to the ’852 Patent by virtue of receiving Patent Owner’s email containing its proposed amended complaint. As such, Petitioner was not obligated to engage in litigation related to the ’852 Patent. Thus, Petitioner was not “served with a complaint” in a manner prescribed by law and its petition was not time-barred.

Practice Tip: When calculating the statutory one-year deadline to file an IPR under 35 U.S.C. § 315(b), parties should carefully scrutinize the specific circumstances surrounding service of a complaint. Presenting a complaint to a defendant in a lesser manner than that “prescribed by law” may not constitute service under the statute.

Case: Aristocrat Techs., Inc. v. High 5 Games, LLC, IPR2018-00529, Paper 26 (PTAB July 29, 2019)

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