In a case involving online gaming, the Federal Circuit affirmed the PTAB's decision that 35 U.S.C. § 315(b) did not bar instituting an IPR where the patent owner failed to preserve its arguments that service was perfected. Game and Technology Co., Ltd. v. Wargaming Group Limited, ___ F.3d __, 2019 WL 6121449 (Fed. Cir. Nov. 19, 2019). However, the Court disagreed with the PTAB's view that it "does not 'have the authority...to deem service to have occurred and overlook errors in service'" where no district court has deemed service to have occurred. Because the Board's authority to institute an IPR is dependent on service, the Board "must necessarily determine whether service of a complaint alleging infringement was properly effectuated." Id. at *6.
The IPR petition was filed on March 13, 2016. The patent owner, Game and Technology (GAT), filed a complaint on July 9, 2015, alleging Wargaming Group Limited and its affiliate, Wargaming.net, infringed. Id. at *2. A process server served Wargaming.net in the United Kingdom with a copy of the complaint and a summons on December 10, 2015, but the summons included neither the court clerk's signature nor the court's seal. A copy of the complaint and summons were also served by mail to Wargaming's office in Cyprus in December 2015. On February 11, 2016, Wargaming's counsel agreed by email to waive service, while noting its objection to the sufficiency of the December service attempts. No formal waiver of service was ever filed with the district court.
Because the Board's authority to institute an IPR is dependent on service, the Board "must necessarily determine whether service of a complaint alleging infringement was properly effectuated." Id. at *6.
In the IPR, GAT waived the argument that the waiver of service created estoppel, stating "the date you should be looking at should be the date of attempted service" because the waiver simply "indicates that there was no intent by the parties to dispute service." Id. at *3. On this record, the Board concluded that neither the UK service nor the Cyprus service was sufficient to trigger §315(b)'s time bar. The Board reiterated its concern that it had no authority to determine sufficiency of service without a district court deeming service to have occurred.
The Federal Circuit explained that district courts rarely make a determination regarding the sufficiency of service where parties do not challenge it. The Court disagreed with the Board's analysis of its own authority, finding that the Board must necessarily determine whether service was proper to decide if estoppel applies. However, with respect to the sufficiency of service, GAT's opening brief on appeal merely stated that it "provided proof [of the UK service] and provided proof that Wargaming's counsel in writing on February 11, 2016 waived any defenses as to improper service." Id. at *6. This assertion, without legal argument or explanation, was insufficient to preserve GAT's argument for appeal. Further, GAT failed to argue that the Board should have considered the waiver of service date. Id. at *7. Because GAT failed to develop its arguments in its opening brief, the Court could not conclude that the Board erred in determining that estoppel did not bar the petition.
Because the Court did not dive into the details of the service challenge, the main takeaway from this decision is the Court's guidance that the Board does have the authority to make determinations about the sufficiency of service to decide if estoppel applies.
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