An 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, real party in interest, or privy is served with a complaint alleging infringement of the challenged patent. See 35 U.S.C. § 315(b). The Federal Circuit recently provided guidance on what constitutes service in the context of § 315(b).
It is helpful to first consider the findings by the PTAB below. In Wargaming Grp. Ltd. v. Game & Tech. Co., Ltd., IPR2017-01082, Paper 65 (PTAB Sept. 7, 2018), the Board considered whether service was properly effectuated under several different circumstances. The Patent Owner filed a complaint accusing Petitioner and its affiliate, Wargaming.net LLP, of infringing the '243 Patent on July 9, 2015. The Patent Owner hired a process server to serve the complaint and summons on Wargaming.net LLP—a real party-in-interest—at its registered agent in the United Kingdom. The process server served Wargaming.net in December of 2015. The Patent owner cited a "Witness Statement of Service" stating that a complaint for infringement of the '243 Patent was served on Wargaming.net LLP. Id. at 8, 11. The Petitioner denied that it was served in the manner described by the Patent Owner and submitted a declaration by the individual upon whom the Patent Owner had alleged service of the complaint was made. Id. at 9, 11. The Patent Owner's declarant disputed that he had met the process server, received any documents from the process server, and did not forward any such documents to the Patent Owner. Id. Based on the Board's review of the evidence, it credited the Patent Owner as having delivered some documentation to Petitioner's real party-in-interest in December 2015. Id. at 12.
The Board then turned to Federal Rule of Civil Procedure 4(c)(1) which provides that "[a] summons must be served with a copy of the complaint" and 4(a)(1) which provides that "[a] summons must ... (F) be signed by the clerk; and (G) bear the court's seal." Id. While the Patent Owner submitted a summons exhibit to the Board that was signed by the clerk for the United States District Court for the Eastern District of Texas and bearing that Court's seal, this signed and sealed summons was not part of the documentation given to Wargaming.net LLC. Id. The Board held that it had "no authority to overlook defects in service of a complaint in district court litigation and deem service to have occurred." Id. at 13. Further, the Board stated that "the parties confirmed during oral argument that no district court has deemed service to have occurred." Id. at 13-14. As such, the Board determined that no service was effected on Wargaming.net LLC in the United Kingdom. Id. at 14.
The Patent Owner also alleged service on Wargaming Group Limited in Cyprus by mail. Id. The Board indicated that Federal Rule of Civil Procedure 4(c) "does not authorize service by mail," whereas 4(f)(2)(C)(ii) permits service of a defendant by mail in a foreign country "using any form of mail that the clerk addresses and send to the individual and that requires a signed receipt." Id. at 15. However, the service in Cyprus did not satisfy the requirement that the clerk address and send the summons and complaint. Id. Further, "there also is no evidence that [Patent Owner's attorney] used a form of mail that requires a signed receipt." Id. As such, the Board determined that no service was effected on Wargaming.net LLC in Cyprus. Id.
Finally, the Patent Owner submitted a "Notice of Service" that was filed in the United States District Court for the Central District of California on November 10, 2017, describing a call made by counsel for Wargaming to counsel for Game and Technology on February 11, 2016 wherein Wargaming's counsel "confirmed service [of] their client in the UK and in Cypr[us] (although the Cypr[us] service was informal) and stated that Wargaming would not be challenging service." Id. However, the "Notice of Service" document conflicted with "a contemporaneous email dated February 11, 2016, from counsel for Wargaming to counsel for Game and Technology stating, 'we still do not believe that service was properly effected on either Wargaming entity.'" Id. at 15-16. Further, while the "Notice of Service" also says that a status conference was held on March 15, 2016—wherein "Wargaming's counsel made an appearance on behalf of Defendant [but] did not raise any issue of improper service"—the Board determined that this March 15, 2016 activity "would not bar institution of the proceeding." Id. at 16. Likewise, the Motion to Dismiss for Improper Venue filed on April 1, 2016 by Wargaming was also determined by the Board to "not bar institution of the proceeding." Id. The Board concluded that "[b]ecause neither Wargaming nor Wargaming.net LLP was served with a complaint alleging infringement of the '243 patent more than one year before Wargaming filed the Petition, 35 U.S.C. § 315(b) does not bar institution of this inter partes review." Id.
On appeal, the Patent Owner asserted that "the Board erred by instituting the IPR when the petition was time-barred under § 315(b)." Game & Tech. Co. v. Wargaming Grp. Ltd., 2019 U.S. App. LEXIS 34329, *12 (Fed. Cir. 2019). Upon review, the Federal Circuit held that "the Board must necessarily determine whether service of a complaint alleging infringement was properly effectuated [and that the] Board cannot strictly rely on a district court's determination of proper service because district courts rarely make such determinations." Id. at *14. As such, the Federal Circuit "agree[d] with [Game & Tech. Co.] that the Board's conclusion that it lacked authority to consider the propriety of service under Rule 4 and common law interpreting Rule 4 was incorrect." Id. at *15. However, the Federal Circuit "[saw] no error in the Board's analysis" of the evidence presented. Id. As such, the Federal Circuit "[could] not conclude that the Board erred in its determination that Wargaming's petition was not barred by § 315(b)." Id. at *18.
The above case demonstrates that it is the Board's responsibility to determine whether service of a complaint was properly effectuated. This is true even in situations where it is not entirely clear from the district court record whether service was proper. Determining whether service is proper under § 315(b) may be a highly fact-dependent analysis. This case provides parties with guidance on how the Board and the Federal Circuit may approach the issue.
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