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The Federal Circuit rejected a patent owner’s time-bar
challenge to an inter partes review (IPR) proceeding,
holding that the patent owner failed to provide sufficient details
to establish proper service of a complaint for infringement. The
court further held that the patent owner was precluded from relying
on the petitioner’s waiver of service because it did not
raise that argument to the Patent Trial and Appeal Board.
On July 9, 2015, Game and Tech, Co. (GAT) filed a complaint for
infringement against Wargaming Group Ltd., and its affiliate,
Wargaming.net (collectively, “Wargaming”). On December
10, 2015, a process server served Wargaming.net with a summons and
attached documents. However, the summons was not signed by the
clerk of the court and did not bear the court’s seal. The
same month, GAT mailed a copy of the complaint and summons to
Wargaming Group’s office in Cyprus. In February 2016, counsel
for Wargaming contacted GAT’s counsel about the lawsuit, and
stated that while it believed service was not proper, Wargaming
would waive service and related defenses in exchange for an April 1
deadline to respond to the complaint. No formal waiver of service
was filed with the district court. However, the parties appeared at
a scheduling conference on March 15, 2016, and on April 1,
Wargaming filed a motion to dismiss for improper venue or, in the
alternative, for failure to state a claim.
Nearly a year later, on March 13, 2017, Wargaming filed an IPR
petition, which included a statement that the IPR was not
time-barred because Wargaming had not been served with a complaint.
Because the parties offered competing arguments and evidence on
whether service was proper, the Board opted to institute the IPR
and to allow the parties to develop the record regarding service.
In its final written decision, the Board determined that neither
service in the U.K. nor in Cyprus met the requirements of Rule 4 of
the Federal Rules of Civil Procedure. The Board added that it had
“no authority to overlook defects in service . . . and deem
service to have occurred,” emphasizing that “no
district court has deemed service to have occurred.” The
Board also found that the challenged claims were unpatentable as
obvious over the prior art.
On appeal, the Federal Circuit criticized the Board’s
refusal to make a determination on service absent a confirmation
from the district court. According to the court, the Board
“must necessarily determine whether service of a complaint
alleging infringement was properly effectuated” in order to
institute an IPR. Furthermore, the court found that the Board
cannot merely expect to rely on a district court finding,
especially because district courts rarely make such explicit
findings.
Next, construing the language of Section 315(b), the court held
that Rule 4 provides the proper starting point to evaluate whether
service of a complaint is properly effectuated and such a decision
should normally be made prior to institution. Nevertheless, the
court found no additional error in the Board’s analysis. In
particular, the court held that GAT failed to show any specific
defects in the Board’s findings as to service. The court
added that GAT was precluded from arguing Wargaming waived service
or that service was effective under the Hague convention because
those arguments were not made to the Board.
Practice Tip: A patent owner must be prepared to present
evidence showing how service was either properly effected or waived
in the event an IPR is filed. In addition, a patent owner would be
well advised to raise, prior to the Board’s decision on
institution, any and all arguments challenging the timeliness of an
IPR petition.
Game & Tech. Co. v. Wargaming Grp. Ltd., No.
2019-1171 (Fed. Cir. Nov. 19, 2019) (Dyk, Plager, and Stoll;
opinion by Stoll)
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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