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`571-272-7822
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` Paper 20
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`Entered: January 30, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MOTOROLA MOBILITY LLC
`Petitioner,
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`v.
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`Patent of MICHAEL ARNOUSE
`Patent Owner.
`____________
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`Case IPR2013-00010 (MT)
`Patent 7,516,484
`____________
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`Before MICHAEL P. TIERNEY, and JONI Y. CHANG, and JENNIFER S. BISK,
`Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`DECISION
`Service Under 35 U.S.C. § 315(b)
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`Case IPR2013-00010
`Patent 7,516,484
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`BACKGROUND
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`The parties dispute whether Motorola Mobility LLC (“Motorola”) timely
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`filed its petition for an inter partes review. Specifically, under 35 U.S.C. § 315(b),
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`a party may not file a petition for inter partes review if the party had been served
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`with a complaint alleging infringement more than one year previously.
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`On June 16, 2011, Michael Arnouse (“Arnouse”) filed a complaint with the
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`United States District Court for the District of Vermont alleging that Motorola
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`infringed the ’484 patent. (Ex. 2003.) Arnouse, however, did not provide
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`Motorola with a summons when it sent the complaint. (PR 4.)
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`The issue before us is whether Motorola must be served with a summons and
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`complaint before the time for filing an inter partes review petition begins to run.1
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`We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and 314(a).
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`ANALYSIS
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`The relevant portion of 35 U.S.C. § 315(b) provides:
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`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. (Emphasis added.)
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`Arnouse asserts that the word “served” as set forth in 35 U.S.C. § 315(b)
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`should be interpreted as “to deliver” or “to present a person with notice.”
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`(PR 7-10.) In Arnouse’s view, the language of the statute does not require service
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`of a summons, or service of process, in order to trigger the one-year time period.
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`(PR 1 & 6.) Arnouse argues that according to the plain meaning of the statutory
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`language, “served with a complaint” means to be provided a copy and receive
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`1 Other issues related to claim construction and prior art will be addressed in a
`separate, forthcoming, decision.
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`2
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`Case IPR2013-00010
`Patent 7,516,484
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`actual notice of a filed complaint for patent infringement. (AReply 1.2)
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`Motorola counters that, under federal law, a defendant is not “served with a
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`complaint” unless the plaintiff complies with the service requirement of Rule 4 of
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`the Federal Rules of Civil Procedure. (MBr. 1-33.) Additionally, Motorola points
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`out that although 28 U.S.C. § 1446 likewise does not include the words
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`“summons” or “process,” the Supreme Court held that a named defendant’s time to
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`remove is triggered by simultaneous service of the summons and complaint, and
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`not by mere receipt of the complaint (Murphy Bros. v. Michetti Pipe Stringing, 526
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`U.S. 344, 347-48 (1999)). (MBr. 2-4.)
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`We do not adopt Arnouse’s statutory construction that a mere receipt of a
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`complaint initiates the one-year time period. The Congress could have used
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`language such as “to receive,” “to deliver,” or “to present” in the statute (see e.g.,
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`28 U.S.C. § 1446(b) (“after the receipt by the defendant…of a copy of the
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`[complaint]”)), but Congress did not. Therefore, we are not convinced that the
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`plain meaning of the statutory language in 35 U.S.C. § 315(b) is simply “to
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`deliver” or “to present a person with notice.”
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`In interpreting statutes, we give effect to the intent of Congress by looking
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`not only to the particular statutory language, but to the design of the statute as a
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`whole and to its object and policy. Crandon v. United States, 494 U.S. 152, 158
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`(1990); Loughlin v Ling, 684 F.3d 1289, 1291 (Fed. Cir. 2012); In re Swanson, 540
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`F.3d 1368, 1374-75 (Fed. Cir. 2008). Specifically, we begin with the language of
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`the statute. Duncan v. Walker, 533 U.S. 167, 172 (2001). We then turn to the
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`legislative history to determine Congress’s intent. Timex V.I., Inc. v. United States,
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`157 F.3d 879, 882 (Fed. Cir. 1998); see also Garcia v. United States, 469 U.S. 70,
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`2 Arnouse’s reply, paper 19, (“AReply.”) was authorized by the Board. Paper16.
`3 Motorola’s brief, paper 18, (“MBr.”) was authorized by the Board. Paper 16.
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`3
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`Case IPR2013-00010
`Patent 7,516,484
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`76 (1984) (“In surveying legislative history, we have repeatedly stated that the
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`authoritative source for finding the Legislature’s intent lies in the Committee
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`Reports on the bill, which [represent] the considered and collective understanding
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`of those Congressmen involved in drafting and studying proposed legislation.”)
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`(citation omitted).
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`The word “served” has a definition that includes “to make legal delivery of
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`(a notice or process)” or “to present (a person) with a notice or process as required
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`by law.” (Black’s Law Dictionary, 1491, Ninth Edition (2009), emphasis added;
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`Ex. 2008.) Contrary to Arnouse’s assertion that “served” simply means “to
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`deliver” (PR 6), we cannot ignore the words “or process” and “as required by law”
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`set forth in the definition.
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`Because the word “served” has more than one interpretation, we must look
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`to the legislative history to ascertain the intent of Congress. Deluxe Corp. v.
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`United States, 885 F.2d 848, 850 (Fed. Cir. 1989) (In a matter of statutory
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`interpretation, “where the text itself does not clearly exclude alternate
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`interpretations, we look first to the legislative history for illumination of the intent
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`of Congress.”).
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`The Leahy-Smith America Invents Act (“AIA”) was enacted into law (Pub.
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`L. 112-29, 125 Stat. 284 (2011)) on September 16, 2011. The purpose of the AIA
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`is to establish a more efficient and streamlined patent system that will improve
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`patent quality and limit unnecessary and counterproductive litigation costs. The
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`AIA created new administrative trial proceedings to be conducted by the Board,
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`including inter partes review as a cost-effective alternative to litigation.
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`The legislative history of 35 U.S.C. § 315(b) shows that the primary concern
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`related to the one-year time period was to provide defendants sufficient time to
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`fully analyze the patent claims, but not to create an open-ended process. See 157
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`4
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`Case IPR2013-00010
`Patent 7,516,484
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`Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Senator Kyl) (“it is
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`important that the section 315(b) deadline afford defendants a reasonable
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`opportunity to identify and understand the patent claims that are relevant to the
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`litigation”) (Ex. 2011); see also Meeting of H. Comm. on the Judiciary, Transcript
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`of Markup of H.R. 1249, p. 72 (April 14, 2011) (statement of Judiciary Committee
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`Chairman Lamar Smith) (“The inter partes proceeding in H.R. 1249 has been
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`carefully written to balance the need to encourage its use while at the same time
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`preventing the serial harassment of patent holders”) (Ex. 2012). Therefore, the
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`interpretation of 35 U.S.C. § 315(b) must be consistent with the legislative intent to
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`provide defendants sufficient time to analyze the patent claims so that they can
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`decide whether to challenge the patentability of the claims in an inter partes
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`review.
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`We do not agree that Arnouse’s construction is supported by the legislative
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`history (PR 14). Rather, Arnouse’s construction would frustrate the legislative
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`intent. A petitioner would not be required to appear as a defendant in a patent
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`infringement action, until the petitioner is served with a summons. Murphy Bros.,
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`526 U.S. at 347 (an “individual or entity named as a defendant is not obliged to
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`engage in litigation unless notified of the action, and brought under a court’s
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`authority, by formal process”). Under Arnouse’s construction, the one-year time
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`period would begin to run even when the petitioner is not yet a defendant in the
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`litigation. We do not believe that the Congress intended to have the time period
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`start before a petitioner is officially a defendant in a law suit.
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`Arnouse argues that one year from the receipt of a complaint would still
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`provide Motorola reasonable opportunity to analyze the patent claims. (PR 13.)
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`We are not persuaded by that argument. It is a common practice that a patent
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`owner sends a “courtesy copy” of the complaint to a named defendant, and defers
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`5
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`Case IPR2013-00010
`Patent 7,516,484
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`service of process or service of a summons, to facilitate settlement discussions.
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`Therefore, under Arnouse’s construction, a patent owner’s delay in service would
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`effectively shorten the one-year time period that the Congress had carefully
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`negotiated during the legislative process. Notably, Arnouse’s own delay in service
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`would have shortened Motorola’s time by more than three months. (PR4;
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`Ex. 1020; Ex. 1021.) Moreover, in the situation where a patent owner fails to serve
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`a summons and then files a second complaint, the one-year time period could
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`expire before a petitioner is officially a defendant in the infringement litigation.
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`Such a result clearly would not be consistent with the legislative intent.
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`As to Arnouse’s argument that interpreting 35 U.S.C. § 315(b) as requiring
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`service of process would create an open-ended process when the defendant waives
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`service of process (PR 14-15), we are not convinced. A patent owner who files a
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`lawsuit in a Federal court and a petitioner who chooses to waive service of a
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`summons are required to comply with the Federal Rules of Civil Procedure in the
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`infringement action. Rule 4(d)(4) of the Federal Rules of Civil Procedural
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`provides that “[w]hen the plaintiff files a waiver, proof of service is not required
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`and these rules apply as if a summons and complaint had been served at the time of
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`filing the waiver” (emphasis added). Therefore, in the situation where the
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`petitioner waives service of a summons, the one-year time period begins on the
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`date on which such a waiver is filed.
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`Accordingly, we conclude that Motorola must be served with a summons
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`before the one-year time period for filing an inter partes review petition is
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`triggered.
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`CONCLUSION
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`For the foregoing reasons, we determine that Motorola’s petition was timely
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`filed in accordance with 35 U.S.C. § 315(b).
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`6
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`Case IPR2013-00010
`Patent 7,516,484
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`PETITIONER:
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`Ko-Fang Chang,
`Steven D. Moore,
`KILPATRICK TOWNSEND & STOCKTON LLP
`kchang@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
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`PATENT OWNER:
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`Lawrence H. Meier,
`Thomas D. Kohler,
`Downs Rachlin Martin PLLC
`lmeier@drm.com
`tkohler@drm.com
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`7
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