The US Court of Appeals for the Federal Circuit addressed the Patent Trial and Appeal Board's (PTAB's) role in determining proper service under 35 U.S.C. §315(b), and found that the PTAB correctly determined that the petitioner had not been properly served with a complaint for patent infringement more than one year before filing its inter partes review (IPR) petition. Game and Tech. Co. v. Wargaming Grp Ltd., Case No. 19-1171 (Fed. Cir. Nov. 19, 2019) (Stoll, J).
Game and Technology (GAT) filed a patent infringement complaint against Wargaming on July 9, 2015. GAT hired a process server to serve an affiliate of Wargaming in the United Kingdom in December 2015. Although referencing "the Summons in a Civil Action issued herein, together with" attached documents, the summons served on Wargaming was not signed by the clerk of court and did not bear the court's seal. GAT's lawyer also mailed a copy of the complaint and summons to Wargaming's Cyprus office in December 2015.
In February 2016, Wargaming's counsel emailed GAT counsel stating, "we still do not believe that service was properly effected on either Wargaming entity. Nevertheless, we will waive service and our defenses to improper service in exchange for your agreement that we have until April 1 to answer or otherwise respond to the complaint." Counsel for Wargaming appeared at a March 2016 scheduling conference and the next month filed a motion to dismiss for improper venue or alternatively for failure to state a claim. No formal waiver of service was ever filed with the district court.
On March 13, 2017, Wargaming filed an IPR petition, including a declaration by its general counsel stating that "Petitioner and real-parties-in-interest are not barred or estopped from requesting inter partes review . . . because they have not been served." GAT's preliminary response argued that Wargaming's IPR petition was time-barred under § 315(b), and relied on its UK process server's "witness statement of service" that a complaint for infringement was served in the United Kingdom in December 2015.
After reviewing the parties' briefs and evidence, the PTAB acknowledged that the "record presents competing evidence as to whether Wargaming was served more than one year before the filing of the Petition," and determined that development of the record would be required to resolve the factual issues underlying the time bar. In the meantime, the PTAB instituted the IPR. GAT subsequently submitted a supplementary brief, relying on both UK and Cyprus service, arguing that a "mere procedural printing error that caused the seal and signature to be missing from the copy of the summons properly served by [the process server in the United Kingdom] does not render the service ineffective."
The PTAB issued a final written decision concluding that neither the UK nor Cyprus service triggered a § 315(b) time bar. Specifically, the PTAB found that the lack of signature and seal rendered the UK service non-compliant with Rule 4(a) of the Federal Rules of Civil Procedure. The PTAB stated that it has "no authority to overlook defects in service of a complaint in district court litigation and deem service to have occurred," and that "no district court has deemed service to have occurred." Similarly, the PTAB determined that the Cyprus service failed to satisfy Rule 4 because counsel for GAT had sent the summons but did not include a signed receipt as required by Rule 4. GAT appealed.
Under § 315(b), "[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." Under Click-to-Call v. Ingenio ( IP Update, Vol. 21, No. 9), the "plain meaning of . . . 'served with a complaint' is 'presented with a complaint' or 'delivered a complaint' in a manner prescribed by law." The Federal Circuit found that the PTAB erred as to statements about the PTAB's authority or lack thereof to determine service. Because the PTAB's authority to institute an IPR is dependent on whether the "petitioner . . . is served with a complaint," the Court found that the PTAB "must necessarily determine whether service of a complaint alleging infringement was properly effectuated" and "cannot strictly rely on a district court's determination of proper service."
The Federal Circuit found GAT's failure to raise certain arguments on appeal troubling, noting that its main argument was procedural—i.e., that "[c]ompliance with the time-bar requirement is a condition precedent to institution of an IPR, and thus a decision should have been rendered before institution of the IPR." However, given that any harm to GAT would only have occurred if the IPR was time-barred, the Court declined to find error in the PTAB's choice to decide the time-bar issue after institution of the IPR. The Court also noted that GAT's brief included only a single paragraph regarding its substantive argument. Despite the PTAB's rejection of GAT's service arguments based on the plain language of Rule 4, GAT failed to address or show any specific errors in the PTAB's findings. The Court explained that without more, GAT's simple statement that it "provided proof [of the UK service] and provided proof that Wargaming's counsel in writing on February 11, 2016 waived any defenses as to improper service" was an insufficient level of detail to properly preserve GAT's arguments on appeal.
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