When sued for patent infringement, a defendant can still petition for inter partes review ("IPR") of the asserted patent at the United States Patent and Trademark Office ("USPTO") if the petition is filed within one year of service of the complaint. But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline. Specifically, "[s[ection 315(b) states that '[a]n inter partes review may not be instituted 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.'" 35 U.S.C. § 315(b).
Game & Technology involved a patent, U.S. Patent No. 7,682,243 (the "'243 Patent") for a method and system for an online game where a pilot (the gamer) controls a virtual object, such as a robot character. As the pilot's abilities change, so do the abilities of the virtual object that the pilot controls.
On July 9, 2015, Game and Technology Co., Ltd. ("GAT") sued Wargaming Group Limited and Wargaming.net for infringement of the '243 Patent in the Eastern District of Texas. On December 10, 2015, the process server delivered the complaint and summons to Wargaming.net's registered agent in the United Kingdom (the "UK Service"). However, the summons "was not signed by the clerk of the court and did not bear the court's seal." In December 2015, GAT's attorney also mailed a copy of the complaint and summons to Wargaming's Cyprus office (the "Cyprus Service"). However, the mailed copy was not sent by the clerk and did not contain a signed receipt. Then on February 11, 2016, counsel for Wargaming and GAT discussed the lawsuit. Wargaming followed up with an email indicating that service of the complaint was not proper, but Wargaming would waive service ("Service Waiver") in exchange for an extension of time to respond to the complaint. But "no formal waiver was filed with the district court."
Even though it was more than one year after the UK Service, the Cyprus Service, and the Service Waiver, on March 13, 2017, Wargaming petitioned for inter partes review of the '243 Patent arguing the petition was not time barred because it had not been served in the Game & Technology litigation. The Patent Trial and Appeal Board ("PTAB") found the UK Service deficient because of the lack of signature and seal and found the Cyprus Service deficient because "counsel for GAT had sent the summons and did not include a signed receipt." Further, when the Board "asked if GAT was relying on waiver of service as an independent ground for service," GAT did not respond in the affirmative but rather responded that "the waiver simply 'indicates there was no intent by the parties to dispute service.'" As a result, the PTAB found the petition was not time barred, and the relevant claims were invalid. GAT appealed to the Court of Appeals for the Federal Circuit.
First, the Federal Circuit found that because the PTAB's "authority to institute an IPR is dependent on whether the 'petitioner ... is served with a complaint,'" the PTAB necessarily has the authority to determine the propriety of service of the complaint. Despite the PTAB's general statement regarding its lack of such authority, the Federal Circuit found no error in the PTAB's analysis that used Fed. R. Civ. P. 4 as its starting point.
Next, the Federal Circuit addressed whether the IPR was time barred in this case due to lack of service. The Federal Circuit pointed out that GAT "devote[d] only one paragraph to its substantive argument that the UK service occurred more a year before Wargaming filed the petition." GAT merely stated that it had provided proof of the UK Service and proof that Wargaming's counsel waived any defenses as to improper service on February 11, 2016. Mere assertions, such as these, did nothing to point out any error in the PTAB's findings, so the Federal Circuit stated that "[t]his level of detail is insufficient to properly preserve GAT's arguments on appeal." Therefore, these arguments were waived.
Further, GAT "failed to preserve its argument that Wargaming's counsel waived service, thus triggering § 315(b)'s time bar at the time of the waiver." Instead, GAT first argued that the Service Waiver triggered the time bar at the Federal Circuit without having first presented this waiver theory to the PTAB. Therefore, the Federal Circuit found this argument was also waived and thus declined to consider it on appeal.
Having found that GAT did not preserve its arguments as to why service was proper or that service had been waived, the Federal Circuit upheld the PTAB's finding that the IPR was not time barred. In addition, the Federal Circuit upheld the PTAB's invalidity findings.
In sum, the first reminder from Game & Technology is a plaintiff must properly serve the complaint to trigger the IPR filing deadline. The second reminder is mere assertions are not sufficient to preserve arguments on appeal. Remember, your primary argument may not be the obvious winner you think it is, so be sure to explain your argument with sufficient detail rather than mere conclusory statements. Further, remember to include sufficient detail to be able to rely on your backup arguments because you never know when one of them will save the day.
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