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IPR Time Bar Dispute over Timing of Service of Complaint Torpedoed on Appeal

| Andrew Morrell, Ph.D.Nicole R. Townes

GAME AND TECH. CO., LTD. v. WARGAMING GROUP LTD.

Before Dyk, Plager, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: The Board, applying Fed. R. Civ. P. 4, must independently determine whether service of a complaint was properly effectuated for purposes of the IPR time bar set forth in § 315(b) and should normally do so before institution.

Wargaming petitioned for inter partes review of a patent relating to making changes to an online game as a player’s ability improves over time.  Game and Technology (“GAT”) argued that the petition was barred under § 315(b) because it was filed more than one year after Wargaming and its United Kingdom affiliate, Wargaming.net, were served with a complaint alleging infringement.  GAT filed its complaint for infringement on July 9, 2015.  On December 10, 2015, GAT served Wargaming.net through its registered agent in the United Kingdom.  GAT’s attorney also mailed a copy of the complaint and summons to Wargaming at its office in Cyprus in December 2015.  However, the summons lacked the clerk of court’s signature and did not bear the court’s seal in accordance with Fed. R. Civ. P. Rule. 4.  In February 2016, Wargaming’s counsel informed GAT of the defect and indicated that Wargaming would waive service.  However, no formal waiver was ever filed with the district court.  On March 13, 2017, Wargaming filed its petition.  On March 15, 2016, counsel for Wargaming made an appearance in the district court litigation. 

In view of competing evidence submitted during the pre-trial phase concerning when service of the complaint was effectuated, the Board instituted IPR and requested additional briefing on the issue.  GAT acknowledged the defect in service, but argued that it did not render service ineffective.  The Board, however, concluded that it had no authority to deem service to have occurred and overlook errors in service.  With respect to the petition’s merits, the Board held that the challenged claims were unpatentable as obvious over a multi-player computer game and the Dungeons & Dragons Handbook. 

The Federal Circuit affirmed.  However, the Federal Circuit disagreed with the Board’s conclusion that it lacked authority to evaluate service.  The Court stated that the Board, applying Fed. R. Civ. P. 4 and the case law interpreting Rule 4, must independently determine whether service of a complaint was properly effectuated for purposes of the IPR time bar set forth in § 315(b) and should normally do so before institution.  Moreover, the court was displeased with GAT’s treatment of the issue on appeal, noting that GAT attempted a re-boot to contend that service occurring in the UK on December 10, 2015 was proper but set forth the argument in conclusory fashion and in a single paragraph.  The Court further noted that GAT failed to present the Board with its additional argument that the date of Wargaming’s stated waiver of service should have controlled the issue.  Accordingly, the Court held all arguments on the issue waived.  With respect to the merits of the case, the Court held that substantial evidence supported the Board’s determination on obviousness.

Editor: Paul Stewart