The Patent Trial and Appeal Board held that service of a bare complaint without exhibits did not trigger the one-year time bar under 35 U.S.C. § 315(b), which requires the filing of a petition for inter partes review within one year after being served with a district court complaint alleging patent infringement. Although the petitioner's request for an inter partes review was more than one year after the date of service, the Board found it was not untimely.
Plotagraph Inc. ("Plotagraph") is the assignee of U.S. Patent No. 10,346,017. Plotagraph, along with the inventors of the '017 patent, sued Lightricks Ltd. ("Lightricks") for infringement of, among others, the '017 patent. They served Lightricks with the complaint at Lightricks's various Israeli offices on December 23, 2021, and January 4, 2022. On January 17, 2023—one year and 13 days after the latest service—Lightricks filed a petition for inter partes review of claims 1‒18 of the '017 patent.
Plotagraph contends that the petition is untimely under 35 U.S.C. § 315(b), which states that "[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." Plotagraph asserts that since Lightricks filed its petition more than one year after it was served with the complaint, regardless of which date of service is used, the petition is time barred. Lightricks responds that because Plotagraph's service attempts provided a copy of only the complaint but not the exhibits, it failed to comply with Rule 4 of the Federal Rules of Civil Procedure, and therefore the defective service did not trigger the time bar under Section 315(b). Lightricks instead contends that the service date should be January 21, 2022, which is when Lightricks filed a waiver of service with the district court and is the date that the parties relied on for scheduling of future proceedings.
The Board agreed with Lightricks and held that defective service of a district court complaint does not trigger the time bar under Section 315(b). It cited Rule 10 of the Federal Rules of Civil Procedure, which states that "an exhibit to a pleading is a part of the pleading for all purposes." The Board was unpersuaded by Plotagraph's argument that the prior service attempts had provided Lightricks notice of the lawsuit and that those attempts were sufficient to trigger the time bar under Section 315(b).
The Board distinguished its decision from an earlier precedential decision, GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019). The Board explained that in GoPro, the pleading was deficient because a party lacked standing and it held that the pleading was nevertheless sufficient to trigger the time bar under Section 315(b). According to the Board, GoPro differs from the facts here, where service was undisputedly deficient.
Practice Tip: Since defective service does not trigger the time bar under Section 315(b), it is critical for patent owners to ensure that service is proper, including by appending all necessary exhibits. This prevents would-be petitioners from having additional time to file their petition. If service is deficient, patent owners should remedy that error as quickly as possible, or be aware that the one-year clock under Section 315(b) may start later, such as the date when a defendant waives service of process. Petitioners should keep in mind that although pleading deficiencies may trigger the time bar, service deficiencies do not. Even where service is deficient, it is advisable to file the petition before the one-year anniversary of the earliest service, but if that is not possible, petitioners should file their petition for inter partes review no later than one year after the earliest proper service of process or waiver of service of process, whichever is earlier.
Lightricks, Ltd. v. Plotagraph, Inc. et al., IPR2023-00153, Paper 9 (PTAB Sept. 5, 2023).
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