Serving, Waiving Service, and the IPR Time Bar

by Dennis Crouch

Game and Tech. Co. v. Wargaming Group Ltd. and Activision Blizzard Inc. (Fed. Cir. 2019)

The PTAB found problems with Game & Tech’s U.S. Patent 7,682,243 — cancelling claims 1-7 obvious. On appeal, the Federal Circuit has affirmed — holding (1) that IPR was not barred under 35 U.S.C. § 315(b) and (2) that the obviousness decision was supported by substantial evidence.

Service of a Complaint: Section 315(b) creates a time-bar for Inter Partes Review challenges — a challenger only has one-year to file an IPR after being sued for infringement.  Note here though that the statute is quite specific and requires being “served with a complaint.”:

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 … is served with a complaint alleging infringement of the patent.

Being “Served” has a somewhat technical definition in US Civil Procedure under R.4 identifies the requirements for officially notifying the defendant that they have been sued.  And, the Federal Circuit generally relies upon that rule in determining whether (and when) service has occurred. One trick here is that the rules encourage waiver of service — placing on defendants a “a duty to avoid unnecessary expenses of serving the summons.”  There are also many lawsuits where cases where the defendant neither formally receives served nor formally waives service.  In those cases the defendant can challenge service under R. 12(b)(5) — however that defense is deemed waived if not brought by pre-answer motion or at least in the answer itself.  That said, the courts have not stated directly that waiver of a 12(b)(5) motion counts as service under 315(b).

In this case, Wargaming filed its IPR petition on March 13, 2017. So, the 1-year time-bar sets the critical date at March 13, 2016.  GAT sued Wargaming for patent infringement back in 2015 and hired a professional process server to deliver the summons & complaint to Wargaming’s registered agent in the UK and also mailed a copy to Wargaming.net’s office in Cyprus.

Although the complaint was in order, apparently the summons was lacking because it was not signed by the court clerk nor sealed by the court.

(a)(1) Contents. A summons must: … (F) be signed by the clerk; and (G) bear the court’s seal.

Fed. R. Civ. Pro. R. 4(a). Further, mailing a summons to a foreign defendant can be sufficient, but the mailing must come from the court clerk and require a signed receipt. R. 4(f)(2)(C)(ii).

Although the summons might not have been properly served, it was actually received.  In an email, Wargaming’s attorney complained about improper service, but stated that they would not challenge service if they were given until April 1, 2016 to respond to the complaint.  The parties then apparently held a status conference on March 15, 2016 and Wargaming filed a Motion to Dismiss for Improper Venue on April 1, 2016.

No Court Determination of Proper Service or Waiver: In its written decision, the PTAB sided with the patent challenger — finding no service of the complaint prior to the March 13, 2016 critical date.  In reaching that conclusion, the Board impliedly concluded that it cannot find proper service if “no district court has deemed service to have occurred.”   On appeal, the Federal Circuit rejected that conclusion — holding instead that the statute empowers and requires the Board (and PTO Director) to “determine whether service of a complaint alleging infringement was properly effectuated.”

The Board cannot strictly rely on a district court’s determination of proper service because district courts rarely make such determinations. Indeed, where the parties do not challenge service, a district court might never determine whether service was proper or whether the defendant waived its defense of improper service.

Slip. Op.

In considering whether the complaint was actually “served,” the appellate panel found “no error in the Board’s analysis” — noting that the opening brief devoted “only one paragraph to its substantive argument that the UK service occurred more than a year before Wargaming filed the petition. . . . Mere assertions that the UK service was proper without explanation or legal argument are usually insufficient.”  The appellate panel also found that 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.”  The court writes:

Like certain shapeshifting characters in Dungeons & Dragons, GAT’s evolving arguments are difficult to track. Indeed, at oral argument, counsel for GAT appeared to retract its reliance on Rule 4(d), explaining that GAT was merely contending that the UK service and Cyprus service complied with the Hague convention. As noted above, however, GAT did not develop these arguments in its opening brief. Because GAT did not preserve its specific arguments for why service was proper, we cannot conclude that the Board erred in its determination that Wargaming’s petition was not barred by § 315(b).

The bottom line rule here appears to be that “served with a complaint” means “served with a summons and complaint as required by R.4.”  The court left open the impact of technical failures of service (do those still count?) and informal waivers of service because of GAT’s failure to properly appeal those issues.

= = = =

The patent at issue in this case involves an online game that has both  player character (a “Pilot”) and a “unit” such as a robot character associated with the player.  The invention is to have the Unit increase in skill according to some formula tied to the skill level of the pilot (such as a 0.8 ratio).

The claims were found obvious when compared with a prior patent application publication (Levine U.S. Publication No. 2003/0177187) and the D&D Player Handbook (2003). The court explains:

The D&D Handbook is a rulebook for playing the tabletop fantasy roleplaying game Dungeons & Dragons. The D&D Handbook explains that a character may have a “familiar,” or a magical beast companion that enhances the abilities of its master. J.A. 1054. Both the character and its familiar have a certain number of “hit points,” or health. A character’s hit points, which represent the amount of damage that the character can withstand without dying or falling unconscious, increase with its level. At any given time, the familiar has “one-half the master’s total hit points,” rounded down.

The D&D Handbook provided the particulars, while the published application explained how it would all work in the online gaming environment.

= = = = =

Claim 1. An online game providing method for providing a pilot and a unit associated with the pilot at an online game, the method comprising the steps of:

controlling an online game such that a player can manipulate a pilot and a unit associated with said pilot, said pilot being a game character operated by a player, said pilot representing the player, said unit being a virtual object controlled by the player;

maintaining a unit information database, the unit information database recording unit information on said unit, in which the unit information includes ability of said unit and sync point information;

maintaining a pilot information database, the pilot information database recording pilot information on said pilot, in which the pilot information includes a unit identifier indicating said unit associated with said pilot, ability of said pilot and the ability of said unit associated with said pilot;

receiving a request for update on first pilot ability information of a first pilot;

searching for unit identifier information associated with the first pilot by referring to the pilot information database;

searching for sync point information associated with the searched unit identifier information by referring to the unit information database; and

updating and recording the first pilot ability information and unit ability information associated therewith in accordance with the searched sync point information such that said ability of unit is changed proportionally to changes in ability of the pilot by referring to said sync point,

wherein said sync point information is a ratio of which changes in said ability of pilot are applied to said ability of unit, and said steps of searching for unit identifier information and of searching for sync point information are performed by a processor.

26 thoughts on “Serving, Waiving Service, and the IPR Time Bar

  1. 8

    Which of Wargamings games were alleged to infringe?

  2. 7

    You may be right.

    But suppose a defendant waives service — either by signing a waiver of service, or simply accepting the complaint, and filing an answer (or Rule 12(b) motion) without challenging service, which then results in a waiver of any challenge to service under Rule 12(h)(1).

    So when does the one year clock of Section 315(b) start? Never?

    So a defendant can do one of the things I said, litigate for five years, and then file an IPR?

    That sounds bizarre. Maybe Congress was just sloppy in drafting this part of the AIA. Waivers of service have been formally in the federal rules since 1993, while the AIA was only passed in 2011. Seems like quite the oversight.

    1. 7.1

      Maybe Congress was just sloppy in drafting this part of the AIA.

      Certainly not the only section of (really detrimental) sloppiness in the AIA.

  3. 6

    So what counts as “service” under Section 315(b) when the complaint is sent (but not served) on the defendant, and then the defendant signs a waiver of service — which the rules encourage, and are done in many cases?

    See Rule 4(d), which sets out a whole system for waiver. The U.S. Courts website has a set of standard forms for this. link to uscourts.gov

    1. 6.1

      The persnickety answer…:

      Waiver of service (encouraged by the courts) does not suffice to eliminate the requirement of service (in other words, just because in one set of circumstances events may continue does NOT mean that the requirement in the patent arena goes away).

      Is this a trap for the unwary?

      Certainly.

      1. 6.1.1

        Whoops, my post at 7 was meant to reply to 6.1

        1. 6.1.1.1

          no prob – comment supplied in the above chain.

  4. 5

    If only the inventors of this incredible technology had Josh Malone’s wealth, power and influence, these claims would still be licensed by deep thinking investors across our great land.

    Fraud Iancu, won’t you do step in and do something??? Pwezident R@-cistpr-ick chose you for a reason!

    1. 5.1

      If Josh earned his money honestly, even if it is a huge amount, and his children are many unless you are a practicing Jew and then it would be his business what is your problem?, Why would either of these subjects matter to you MM? if a person is wealthy you seem to think they are corrupt.

      1. 5.1.1

        Pc,

        You must be new here. To Malcolm (aka MM), not only having money but even wanting to make money is:
        E
        V
        I
        L

        It has been noted that there must be a tremendous amount of cognitive dissonance for Malcolm to feel so strongly about this – and yet by his own admission, to be a part of this
        E
        V
        I
        L
        by being someone that obtains patent rights for others.

    2. 5.2

      MM –

      Just FYI, Wargaming has a coupla bucks too. Maybe even more than the patent owner in this case. When both sides have money, how do you decide who the evil doer is?

      1. 5.2.1

        That’s easy Les – the one having or asserting a patent.

  5. 4

    Like a Rorschach test, it is a bit telling how people express their emotions when presented with an “ink blot.”

  6. 3

    “Gaming databases are very special. The data just isn’t like other data. It’s very different. Nobody could have predicted that you could use a computer to access a database of gaming data and then perform logical operations of that data. People would laugh at you!”

    The patent maximalist are truly among the worst attorneys on earth. Like Rudy Giuliani levels of dishonesty.

    1. 3.1

      This comment is solid gold, by the way. By the way, that “enemies” post below is almost as good as the one where public ally humiliated attorney and tr-o-ll J Nicholas Gross accused me of being “jealous” of him. LOL

  7. 2

    Great subject matter for that patent claim contest! Give those little grasshoppers some abstract cr-@p gaming system to claim “on a computer” and then give the prize to the young “genius” who can load the claim up with b.s. jargon to make it look “technical”.

    If only there was a “varying device” comprising a “permuting device”. Then we know we’d be in s00per techno land.

  8. 1

    The defendant received the complaint. It not only acknowledged receipt, it even contacted the plaintiff in response. But it’s really, really important that we put form over substance and say the service didn’t comply with FRCP so it never happened.

    And then lawyers wonder why normal people hate lawyers.

    1. 1.1

      “And then lawyers wonder why normal people hate lawyers.”

      For another reason just review the claim.

      1. 1.1.1

        I’m waiting for MM to regard the claims. That’s some cra p right there.

        1. 1.1.1.1

          Beyond the scraped bottom.

      2. 1.1.2

        It is telling that Ben (an examiner) reacts in a “blame the patentee” mode while it is the responsibility of examiners (such as Ben) to properly examine an application.

        Blame here — Ben — of any notion of “blame the patentee” directly reflects back onto the examiner and a lack of examination quality.

        A classic case of Ben pointing one finger with three fingers pointing back at him (in the Royal You sense).

        1. 1.1.2.1

          Step 1. Underfund examination.
          Step 2. Profit from poor examination.
          Step 3. Deride poor examination while preventing additional funding.
          Step 4. Return to Step 2.

          1. 1.1.2.1.1

            Who the H is going about these steps of yours?

            More so, this sounds like you are just being an unaccountable examiner not willing to take responsibility for your work product (while blaming applicants and patentees).

    2. 1.2

      Yes, some legal decisions [not this one] do seem to swing on unappreciated technicalities or unexpected interpretations of statutes. But not all sympathy is fully deserved. There have been ample decisions and blog warnings of several unnecessary self-inflicted dangers and legal costs of delaying filing IPRs for almost the entire one year available before the statutory bar date.

    3. 1.3

      This is not a close call. Congress knows the difference between receiving a complaint and being served with a complaint. So does every litigator on the planet. If it weren’t thus, then why are there no disputes about whether sending someone a copy of a complaint without proper process starts the Tule 12 answer clock? Service means service. As here, there can be disputes regarding whether and when service was effected, but there’s no dispute that “service” has a special meaning.

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