Trials@uspto.gov
`
`571-272-7822
`
`
`
` Paper 20
`
`
`
`
`
`Entered: January 30, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner,
`
`v.
`
`Patent of MICHAEL ARNOUSE
`Patent Owner.
`____________
`
`Case IPR2013-00010 (MT)
`Patent 7,516,484
`____________
`
`
`
`
`
`Before MICHAEL P. TIERNEY, and JONI Y. CHANG, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Service Under 35 U.S.C. § 315(b)
`
`
`
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`
`BACKGROUND
`
`The parties dispute whether Motorola Mobility LLC (“Motorola”) timely
`
`filed its petition for an inter partes review. Specifically, under 35 U.S.C. § 315(b),
`
`a party may not file a petition for inter partes review if the party had been served
`
`with a complaint alleging infringement more than one year previously.
`
`
`
`On June 16, 2011, Michael Arnouse (“Arnouse”) filed a complaint with the
`
`United States District Court for the District of Vermont alleging that Motorola
`
`infringed the ’484 patent. (Ex. 2003.) Arnouse, however, did not provide
`
`Motorola with a summons when it sent the complaint. (PR 4.)
`
`The issue before us is whether Motorola must be served with a summons and
`
`complaint before the time for filing an inter partes review petition begins to run.1
`
`We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and 314(a).
`
`ANALYSIS
`
`
`
`The relevant portion of 35 U.S.C. § 315(b) provides:
`
`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.)
`
`Arnouse asserts that the word “served” as set forth in 35 U.S.C. § 315(b)
`
`should be interpreted as “to deliver” or “to present a person with notice.”
`
`(PR 7-10.) In Arnouse’s view, the language of the statute does not require service
`
`of a summons, or service of process, in order to trigger the one-year time period.
`
`(PR 1 & 6.) Arnouse argues that according to the plain meaning of the statutory
`
`language, “served with a complaint” means to be provided a copy and receive
`
`
`
`1 Other issues related to claim construction and prior art will be addressed in a
`separate, forthcoming, decision.
`
`
`
`2
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`actual notice of a filed complaint for patent infringement. (AReply 1.2)
`
`Motorola counters that, under federal law, a defendant is not “served with a
`
`complaint” unless the plaintiff complies with the service requirement of Rule 4 of
`
`the Federal Rules of Civil Procedure. (MBr. 1-33.) Additionally, Motorola points
`
`out that although 28 U.S.C. § 1446 likewise does not include the words
`
`“summons” or “process,” the Supreme Court held that a named defendant’s time to
`
`remove is triggered by simultaneous service of the summons and complaint, and
`
`not by mere receipt of the complaint (Murphy Bros. v. Michetti Pipe Stringing, 526
`
`U.S. 344, 347-48 (1999)). (MBr. 2-4.)
`
`We do not adopt Arnouse’s statutory construction that a mere receipt of a
`
`complaint initiates the one-year time period. The Congress could have used
`
`language such as “to receive,” “to deliver,” or “to present” in the statute (see e.g.,
`
`28 U.S.C. § 1446(b) (“after the receipt by the defendant…of a copy of the
`
`[complaint]”)), but Congress did not. Therefore, we are not convinced that the
`
`plain meaning of the statutory language in 35 U.S.C. § 315(b) is simply “to
`
`deliver” or “to present a person with notice.”
`
`In interpreting statutes, we give effect to the intent of Congress by looking
`
`not only to the particular statutory language, but to the design of the statute as a
`
`whole and to its object and policy. Crandon v. United States, 494 U.S. 152, 158
`
`(1990); Loughlin v Ling, 684 F.3d 1289, 1291 (Fed. Cir. 2012); In re Swanson, 540
`
`F.3d 1368, 1374-75 (Fed. Cir. 2008). Specifically, we begin with the language of
`
`the statute. Duncan v. Walker, 533 U.S. 167, 172 (2001). We then turn to the
`
`legislative history to determine Congress’s intent. Timex V.I., Inc. v. United States,
`
`157 F.3d 879, 882 (Fed. Cir. 1998); see also Garcia v. United States, 469 U.S. 70,
`
`
`
`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.
`
`
`
`3
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`76 (1984) (“In surveying legislative history, we have repeatedly stated that the
`
`authoritative source for finding the Legislature’s intent lies in the Committee
`
`Reports on the bill, which [represent] the considered and collective understanding
`
`of those Congressmen involved in drafting and studying proposed legislation.”)
`
`(citation omitted).
`
`The word “served” has a definition that includes “to make legal delivery of
`
`(a notice or process)” or “to present (a person) with a notice or process as required
`
`by law.” (Black’s Law Dictionary, 1491, Ninth Edition (2009), emphasis added;
`
`Ex. 2008.) Contrary to Arnouse’s assertion that “served” simply means “to
`
`deliver” (PR 6), we cannot ignore the words “or process” and “as required by law”
`
`set forth in the definition.
`
`Because the word “served” has more than one interpretation, we must look
`
`to the legislative history to ascertain the intent of Congress. Deluxe Corp. v.
`
`United States, 885 F.2d 848, 850 (Fed. Cir. 1989) (In a matter of statutory
`
`interpretation, “where the text itself does not clearly exclude alternate
`
`interpretations, we look first to the legislative history for illumination of the intent
`
`of Congress.”).
`
`The Leahy-Smith America Invents Act (“AIA”) was enacted into law (Pub.
`
`L. 112-29, 125 Stat. 284 (2011)) on September 16, 2011. The purpose of the AIA
`
`is to establish a more efficient and streamlined patent system that will improve
`
`patent quality and limit unnecessary and counterproductive litigation costs. The
`
`AIA created new administrative trial proceedings to be conducted by the Board,
`
`including inter partes review as a cost-effective alternative to litigation.
`
`The legislative history of 35 U.S.C. § 315(b) shows that the primary concern
`
`related to the one-year time period was to provide defendants sufficient time to
`
`fully analyze the patent claims, but not to create an open-ended process. See 157
`
`
`
`4
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Senator Kyl) (“it is
`
`important that the section 315(b) deadline afford defendants a reasonable
`
`opportunity to identify and understand the patent claims that are relevant to the
`
`litigation”) (Ex. 2011); see also Meeting of H. Comm. on the Judiciary, Transcript
`
`of Markup of H.R. 1249, p. 72 (April 14, 2011) (statement of Judiciary Committee
`
`Chairman Lamar Smith) (“The inter partes proceeding in H.R. 1249 has been
`
`carefully written to balance the need to encourage its use while at the same time
`
`preventing the serial harassment of patent holders”) (Ex. 2012). Therefore, the
`
`interpretation of 35 U.S.C. § 315(b) must be consistent with the legislative intent to
`
`provide defendants sufficient time to analyze the patent claims so that they can
`
`decide whether to challenge the patentability of the claims in an inter partes
`
`review.
`
`We do not agree that Arnouse’s construction is supported by the legislative
`
`history (PR 14). Rather, Arnouse’s construction would frustrate the legislative
`
`intent. A petitioner would not be required to appear as a defendant in a patent
`
`infringement action, until the petitioner is served with a summons. Murphy Bros.,
`
`526 U.S. at 347 (an “individual or entity named as a defendant is not obliged to
`
`engage in litigation unless notified of the action, and brought under a court’s
`
`authority, by formal process”). Under Arnouse’s construction, the one-year time
`
`period would begin to run even when the petitioner is not yet a defendant in the
`
`litigation. We do not believe that the Congress intended to have the time period
`
`start before a petitioner is officially a defendant in a law suit.
`
`Arnouse argues that one year from the receipt of a complaint would still
`
`provide Motorola reasonable opportunity to analyze the patent claims. (PR 13.)
`
`We are not persuaded by that argument. It is a common practice that a patent
`
`owner sends a “courtesy copy” of the complaint to a named defendant, and defers
`
`
`
`5
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`service of process or service of a summons, to facilitate settlement discussions.
`
`Therefore, under Arnouse’s construction, a patent owner’s delay in service would
`
`effectively shorten the one-year time period that the Congress had carefully
`
`negotiated during the legislative process. Notably, Arnouse’s own delay in service
`
`would have shortened Motorola’s time by more than three months. (PR4;
`
`Ex. 1020; Ex. 1021.) Moreover, in the situation where a patent owner fails to serve
`
`a summons and then files a second complaint, the one-year time period could
`
`expire before a petitioner is officially a defendant in the infringement litigation.
`
`Such a result clearly would not be consistent with the legislative intent.
`
`As to Arnouse’s argument that interpreting 35 U.S.C. § 315(b) as requiring
`
`service of process would create an open-ended process when the defendant waives
`
`service of process (PR 14-15), we are not convinced. A patent owner who files a
`
`lawsuit in a Federal court and a petitioner who chooses to waive service of a
`
`summons are required to comply with the Federal Rules of Civil Procedure in the
`
`infringement action. Rule 4(d)(4) of the Federal Rules of Civil Procedural
`
`provides that “[w]hen the plaintiff files a waiver, proof of service is not required
`
`and these rules apply as if a summons and complaint had been served at the time of
`
`filing the waiver” (emphasis added). Therefore, in the situation where the
`
`petitioner waives service of a summons, the one-year time period begins on the
`
`date on which such a waiver is filed.
`
`Accordingly, we conclude that Motorola must be served with a summons
`
`before the one-year time period for filing an inter partes review petition is
`
`triggered.
`
`CONCLUSION
`
`
`
`For the foregoing reasons, we determine that Motorola’s petition was timely
`
`filed in accordance with 35 U.S.C. § 315(b).
`
`
`
`6
`
`

`

`Case IPR2013-00010
`Patent 7,516,484
`
`
`
`
`
`
`
`
`
`
`PETITIONER:
`
`Ko-Fang Chang,
`Steven D. Moore,
`KILPATRICK TOWNSEND & STOCKTON LLP
`kchang@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Lawrence H. Meier,
`Thomas D. Kohler,
`Downs Rachlin Martin PLLC
`lmeier@drm.com
`tkohler@drm.com
`
`
`
`7
`
`