Patent law has traditionally been considered to be fraught with traps for the unwary, which in practice just means that it is unwise to assume anything (see Carl S. Koening, "Clarifying Patent Terminology and Patent Concepts - An Introduction to Some Basic Concepts and Doctrine," 15 Cath. U. L. Rev. 1 (1966)). Petitioner for an inter partes review proceeding, Vizio, Inc., v. ATI Technologies ULC suffered the consequences of one of those traps, when its petition for review of U.S. Patent No. 7,633,506 was deemed untimely under 35 U.S.C. § 315(b) because the petition was not filed within one year of Patent Owner filing suit against Petitioner Vizio. While a seemingly simple docketing matter, in this case the error arose over when (i.e., what date) the complaint was filed.
As set forth in the Board's Decision denying institution, the facts are these. Vizio filed its IPR petition on February 1, 2017, one year after receiving the complaint. Patent Owner filed an affidavit of service, establishing that Patent Owner had mailed the complaint to Vizio on January 30, 2017. The question before the Board was whether the one-year time period under § 315(b) for filing an IPR petition ran from the date of mailing by Patent Owner or the date of receipt of the complaint by Petitioner Vizio.
To answer this question, the Board looked to Federal Rule of Civil Procedure 4(h)(1)(A), which states that a corporation is served "in the manner prescribed by Rule 4(e)(1) for serving an individual." Fed. R. Civ. P. 4(e)(1) states that service on an individual under the Rules is done "following state law for serving a summons in an action brought in courts of general jurisdiction in the state where the district court is located" (or where service is made). Thus, the Board reasoned, the time and manner where service was accomplished was a matter of Delaware law (where the Patent Owner was incorporated).
Turning to Delaware law, service can be made "by any form of mail addressed to the person to be served and requiring a signed receipt," citing 10 Del. C. § 3104(d)(3). The Delaware civil procedure rules provide, in particular, that "[s]ervice by mail is complete upon mailing." Del. R. Civ. P. 5(b), which is consistent with the statutory predicate that "the time in which defendant shall serve an answer shall be computed from the date of the mailing which is the subject of the return receipt or other official proof of delivery." 10 Del. C. § 3104(g).
Thus, the Board determined that:
Applying the Delaware statutes and rules regarding service to the facts of this case, Patent Owner served Petitioner with a copy of the summons and complaint, in compliance with § 3104, with a date of mailing of January 30, 2017. Petitioner filed the instant petition for inter partes review on February 1, 2018, which is more than one year after Petitioner was served with a complaint alleging infringement of the '506 Patent. Accordingly, Petitioner's petition is time-barred under § 315(b) and inter partes review may not be instituted.
In practice, the lesson is clear: when calculating the bar date under § 315(b) for filing an IPR the service rules in the state where the district court resides must be consulted because the service date recognized in that state for civil actions will be dispositive for the date where the one-year term begins (and ends in the bar date). As service rules vary from state-to-state, there is clearly no "one size fits all" answer to the bar date determination, creating yet another trap for practitioners (which should be alleviated by this decision).
In this case, all may not be lost. According to the Decision, three other IPR petitions have been filed by "entities unrelated to Vizio," and Vizio has filed a petition for IPR on a related patent (U.S. Patent No. 7,796,133). Both District Court and International Trade Commission proceedings are also on-going between the parties.
Vizio, Inc., v. ATI Technologies ULC (PTAB 2018)
Panel: Administrative Patent Judges Hoff, Change, and McNamara
Decision by Administrative Patent Judge McNamara
