Paper No.: ____
`Filed: July 31, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`TRISTAR PRODUCTS, INC.
`Petitioner
`
`v.
`
`CHOON’S DESIGN INC.
`Patent Owner
`_________________________
`
`Case IPR2015-00840
`Patent No. 8,622,441 B1
`_________________________
`
`PETITIONER’S BRIEF IN RESPONSE TO PATENT OWNER’S
`CONTENTIONS RELATIVE TO 35 U.S.C. § 315(b)
`
`
`Filed on behalf of: Tristar Products, Inc.
`By:
`Noam J. Kritzer
`Email: nkritzer@bakoskritzer.com
`Ryan S. McPhee
`Email: rmcphee@bakoskritzer.com
`BAKOS & KRITZER
`
`
`
`
`Filed: July 31, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`TRISTAR PRODUCTS, INC.
`Petitioner
`
`v.
`
`CHOON’S DESIGN INC.
`Patent Owner
`_________________________
`
`Case IPR2015-00840
`Patent No. 8,622,441 B1
`_________________________
`
`PETITIONER’S BRIEF IN RESPONSE TO PATENT OWNER’S
`CONTENTIONS RELATIVE TO 35 U.S.C. § 315(b)
`
`
`Filed on behalf of: Tristar Products, Inc.
`By:
`Noam J. Kritzer
`Email: nkritzer@bakoskritzer.com
`Ryan S. McPhee
`Email: rmcphee@bakoskritzer.com
`BAKOS & KRITZER
`
`
`
`
`
`In its Order dated July 24, 2015 (Paper No. 6), the Board authorized Petitioner
`
`Tristar Products, Inc. (“Petitioner”) to submit a brief responding to contentions by
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`Patent Owner Choon’s Design Inc. (“Patent Owner”) relative to 35 U.S.C. § 315(b).
`
`In short, Patent Owner has alleged that even though it filed proof of service with the
`
`District Court for the Eastern District of Michigan listing the date of service as
`
`March 4, 2015, service was also made at an earlier time. Patent Owner contends
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`that the earlier service triggers the one year bar to inter partes review codified in 35
`
`U.S.C. § 315(b), even though it was not substantiated pursuant to Federal Rule of
`
`Civil Procedure 4(l). Pursuant to the authorization granted by Paper No. 6, Petitioner
`
`hereby responds to Patent Owner’s contentions.
`
`I.
`
`Factual Background
`
`Patent No. 8,622,441 (the “‘441 Patent”) was asserted against Petitioner by
`
`the Patent Owner in Choon’s Design Inc. v. Tristar Products, Inc., Case No. 2:14-
`
`cv-10848 (E.D. Mich.) (complaint filed February 24, 2014) (“the Litigation”).
`
`Pursuant to Federal Rule of Civil Procedure 4(l), on March 10, 2014, Patent Owner
`
`filed a proof of service with the district court confirming that service of the complaint
`
`was completed on March 4, 2014 at 3:10pm by personal service on Ms. Jan Teleski.
`
`Ex. 1004. Attached thereto was a copy of the summons, which states “[w]ithin 21
`
`days after service of this summons on you (not counting the day you received
`
`it)…you must serve on the plaintiff an answer to attached complaint or a motion
`
`
`
`1
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`
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`under Rule 12 of the Federal Rules of Civil Procedure.” Ex. 1004 at 2. Mr. Steven
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`Susser, an attorney of record for Patent Owner in the Litigation, filed the proof of
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`service with the following docket entry: “CERTIFICATE of Service/Summons
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`Returned Executed. Tristar Products, Inc. served on 3/4/2014, answer due
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`3/25/2014. (Susser, Steven) (Entered: 3/10/2014).” Ex. 3000. Petitioner did not
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`challenge the sufficiency of service and filed its response in a timely manner
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`consistent with the Proof of Service. Ex. 3000.
`
`As detailed in Patent Owner’s Preliminary Response (Paper No. 5), Patent
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`Owner contends that it served the complaint twice – first on February 28, 2014 and
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`again on March 4, 2014. (Paper No. 5 at 1-3). Patent Owner did not file an affidavit
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`demonstrating proof of service with the Eastern District of Michigan pursuant to
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`Fed. R. Civ. P. 4(l)(1) with respect to its claimed February 28, 2014 service.
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`35 U.S.C. § 315(b) states in part: “An inter partes review may not be instituted
`
`if the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” The relevant question is whether
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`service prior to the date in a patent owner’s proof of service, which a petitioner has
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`not had the opportunity to challenge, can prevent the filing of an otherwise-timely
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`petition for inter partes review. Petitioner has not located a prior decision addressing
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`this set of circumstances. For the following reasons, the deadline to file a petition
`
`
`
`2
`
`
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`for inter partes review under 35 U.S.C. § 315(b) should be calculated from the date
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`indicated in the proof of service filed by the patent owner in the corresponding
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`district court Litigation.
`
`II. The Date of the Patent Owner’s Proof of Service of the Complaint for the
`Purposes of Calculating the Time Limitation Under 35 U.S.C. § 315(b)
`
`Fed. R. Civ. P. 4(l) requires a plaintiff to prove service:
`
`“(l) Proving Service.
`(1) Affidavit Required. Unless service is waived, proof of service must
`be made to the court. Except for service by a United States marshal or
`deputy marshal, proof must be by the server's affidavit.
`…
`(3) Validity of Service; Amending Proof. Failure to prove service does
`not affect the validity of service. The court may permit proof of service
`to be amended.”
`
`“Service of process, under longstanding tradition in our system of justice, is
`
`fundamental to any procedural imposition on a named defendant.” Murphy Bros.,
`
`Inc. v. Michetti Pipe Stringing, Inc., 526 U.S. 344, 350 (1999). Under the federal
`
`rules enacted by Congress, federal courts lack the power to assert personal
`
`jurisdiction over a defendant “unless the procedural requirements of effective service
`
`of process are satisfied.” Gorman v. Ameritrade Holding Corp., 293 F.3d 506, 514
`
`(D.C. Cir. 2002); see Omni Capital Int'l, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S.
`
`97, 104 (1987); Miss. Publ'g Corp. v. Murphree, 326 U.S. 438, 444-45 (1946).
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`Service is therefore not only a means of “notifying a defendant of the
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`commencement of an action against him,” but “a ritual that marks the court's
`
`
`
`3
`
`
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`assertion of jurisdiction over the lawsuit.” Okla. Radio Assocs. v. FDIC, 969 F.2d
`
`940, 943 (10th Cir. 1992). Consequently, courts have “uniformly held ... a judgment
`
`is void where the requirements for effective service have not been satisfied.” Combs
`
`v. Nick Garin Trucking, 825 F.2d 437, 442 & n. 42 (D.C. Cir. 1987) (collecting
`
`cases); cf. Cambridge Holdings Grp., Inc. v. Federal Ins. Co., 489 F.3d 1356, 1360
`
`(D.C. Cir. 2007).
`
`Fed. R. Civ. P. 4(l)(3) provides: “Failure to prove service does not affect the
`
`validity of service. The court may permit proof of service to be amended.” That is,
`
`a plaintiff may amend its proof of service “even if the plaintiff fails timely to prove
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`service by filing a server’s affidavit or files defective proof of service.” Mann v.
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`Castiel, 681 F.3d 368, 373 (D.C. Cir. 2012) (citing O’Brien v. R.J. O’Brien &
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`Assocs., Inc., 998 F.2d 1394, 1402 (7th Cir. 1993). In the corresponding Litigation,
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`Petitioner has not challenged the March 4, 2014 service date as defective, and Patent
`
`Owner has not amended its proof of service.
`
`A. Absent Proof of Service, Patent Owner’s Purported Service on
`February 28, 2014 is Unsubstantiated
`
`
`
`
`As described above, absent waiver of service of process, a plaintiff is required
`
`to file an affidavit to prove service. Fed. R. Civ. P. 4(l). Indeed, a “[p]laintiff bears
`
`the burden of exercising due diligence in perfecting service of process and showing
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`that proper service has been made.” Jacobs v. Univ. of Cincinnati, 189 F.R.D. 510,
`
`
`
`4
`
`
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`511 (S.D. Ohio 1999) (citing Habib v. General Motors Corp., 15 F.3d 72, 74 (6th
`
`Cir. 1994)). Therefore, it was Patent Owner’s responsibility to prove service, and
`
`Patent Owner filed an affidavit proving service substantiating the March 4, 2014
`
`service date. (Ex. 3000). Patent Owner did not file an affidavit proving the alleged
`
`February 28, 2014 service date, so Petitioner has not had an opportunity to challenge
`
`the alleged February 24, 2014 service which remains unsubstantiated. See Holmes
`
`v. Barthwell, Case No. 2:12-cv-15508 (E.D. Mich.) (Report and Recommendations
`
`to Dismiss Defendant Smith for Failure to Serve, filed Aug. 19, 2013) at 2-3 (“There
`
`is no affidavit on the docket from a process server or anyone else qualified to serve
`
`Defendant []; Plaintiff’s claim that [Defendant] has been properly served is therefore
`
`unsubstantiated.”).1 Id. at 2-3.
`
`
`
`The Board should not allow a patent owner to utilize an unsubstantiated
`
`service date to preclude an inter partes review under 35 U.S.C. §315(b), particularly
`
`when the Patent Owner provided an affidavit verifying proof of service on a later
`
`date to the district court. Such a ruling would unnecessarily create an improper
`
`loophole by allowing a patent owner to improperly serve a party at an early date, and
`
`then effect proper service at a later date. As here, the Petitioner would have no
`
`
`1 The relevant claims were subsequently dismissed by the Court. Holmes v.
`Barthwell, Case No. 2:12-cv-15508 (E.D. Mich.) (Order Adopting Magistrate
`Judge’s Report and Recommendations and Dismissing Claims Against Defendant
`A. Smith Only, filed Sept. 9, 2013).
`
`
`
`5
`
`
`
`chance to challenge the ineffective service, and would be improperly barred from
`
`bringing an inter partes review to challenge the validity of the patents. This would
`
`frustrate the purpose of the requirement to file an affidavit to prove service,2 as well
`
`as the clear purpose of establishing a concrete date under 35 U.S.C. § 315(b).
`
`A. The PTAB Has Confirmed That “Service” According to 35 U.S.C.
`§ 315(b) is the Date a Person or Entity is Officially a Defendant in
`a Lawsuit
`
`As discussed above, a plaintiff in United States district court is required to file
`
`a proof of service of the complaint. Specifically, Fed. R. Civ. P. 4(l)(1) states:
`
`“Affidavit Required. Unless service is waived, proof of service must be made to the
`
`court. Except for service by a United States marshal or deputy marshal, proof must
`
`be by the server's affidavit.” The requirement serves at least two purposes. In
`
`addition to substantiating service and confirming a court’s jurisdiction over the
`
`defendant, as discussed supra,3 the proof of service serves to confirm the defendant’s
`
`participation in the litigation and allows the court to set future deadlines. “A
`
`
`2 For example, if the Corporation Trust Company is no longer Petitioner’s registered
`agent for service of process or if the service was incomplete, the February 28, 2014
`service was improper. Petitioner would have been able to successfully challenge the
`service date and the case may have been dismissed. In this scenario, there would
`have also been no notice to Petitioner of the infringement claims until March 4, 2014.
`3 Holmes v. Barthwell, Case No. 2:12-cv-15508 (E.D. Mich.) (Report and
`Recommendations to Dismiss Defendant Smith for Failure to Serve, filed Aug. 19,
`2013) at 2-3 (“There is no affidavit on the docket from a process server or anyone
`else qualified to serve Defendant []; Plaintiff’s claim that [Defendant] has been
`properly served is therefore unsubstantiated”) (emphasis added).
`
`
`
`6
`
`
`
`petitioner would not be required to appear as a defendant in a patent infringement
`
`action, until the petitioner is served with a summons.” Motorola Mobility v.
`
`Arnouse, IPR2013-00010, Paper 20 at 5 (citing 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”)). The Board has confirmed that the legislative intent of 35 U.S.C. 315(b)
`
`was that the one year period would begin to run when the petitioner becomes 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.” Id.
`
`Just as 35 U.S.C. §315(b) utilizes the service date to calculate future deadlines,
`
`district courts utilize the service date to calculate future deadlines. For example, the
`
`service date is utilized to calculate the date by which a defendant must file a
`
`responsive pleading under Fed. R. Civ. P. 12. In the Litigation, the docket indicates
`
`that Petitioner/Defendant’s answer to the complaint was due March 25, 2014,
`
`exactly 21 days after service of the complaint according to the proof of service filed
`
`with the court. (Ex. 3000). That is, Petitioner/Defendant was not officially a
`
`defendant in the lawsuit until March 4, 2014.
`
`It is evident that the Federal Rules of Civil Procedure require the filing of the
`
`proof of service to establish defendant’s participation in the lawsuit. It follows that
`
`the calculation of the deadline to file a petition for inter partes review should be
`
`
`
`7
`
`
`
`calculated from the same date relied on by the district court, as enumerated by the
`
`Board in Motorola v. Arnouse. To ignore the significance of the requirement to
`
`prove service under Fed. R. Civ. P. 4(l) would allow future plaintiffs/patent owners
`
`to create uncertainty in contrast to the legislative intent of the provision. Indeed, the
`
`legislative history indicates that 35 U.S.C. § 315(b) was intended to set a “deadline
`
`for allowing an accused infringer to seek inter partes review after he has been sued
`
`for infringement.” 157 CONG. REC. S5429 (daily ed. Sept. 8, 2011) (statement of
`
`Sen. Kyl) (emphasis added). Again, until the official service date, which is verified
`
`by the affidavit required by Fed. R. Civ. P. 4(l), a defendant is not officially part of
`
`a lawsuit and cannot be an “accused infringer.”
`
`Thus, the deadline to file the petition in this action was March 4, 2015 – one
`
`year after service of the complaint which officially made Petitioner part of the
`
`lawsuit as reflected by Patent Owner’s proof of service on the district court docket.
`
`Petitioner timely filed its petition and met this deadline.
`
`III. Patent Owner Cannot Now Rely On a Prior Service
`
`A.
`
`Patent Owner Should Not Benefit From Its Deceptive Tactics
`
`Patent Owner elected to file the proof of service evidencing service on
`
`Petitioner on March 4, 2015. Patent Owner has not provided any reason why it did
`
`not file the earlier proof of service with the district court.
`
`
`
`8
`
`
`
`In Loral Space & Commc’ns., Inc. v. ViaSat, Inc., IPR2014-00236, the Board
`
`reviewed the legislative history of 35 U.S.C. § 315(b):
`
`The legislative history indicates that Congress intended inter partes
`reviews to “provid[e] quick and cost effective alternatives to litigation.”
`H.R. REP. NO. 112-98, at 48 (2011), reprinted in 2011 U.S.C.C.A.N.
`67, 78. The legislative history indicates also that 35 U.S.C. § 315(b)
`was intended to set a “deadline for allowing an accused infringer to seek
`inter partes review after he has been sued for infringement.” 157
`CONG. REC. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl).
`The deadline helps to ensure that inter partes review is not used as a
`“tool[] for harassment” by “repeated litigation and administrative
`attacks.” H.R. Rep. No. 112-98 at 48, reprinted in 2011 U.S.C.C.A.N.
`at 78. Allowing such attacks “would frustrate the purpose of the section
`as providing quick and cost effective alternatives to litigation.” Id.
`
`IPR2014-00236, Paper 7, at 8 (P.T.A.B. Apr. 21, 2014). Congress provided the one-
`
`year deadline to avoid gamesmanship that would frustrate the purpose of inter partes
`
`review to provide a quick and cost effective alternative to litigation. Petitioner has
`
`not engaged in any such gamesmanship. Petitioner filed a petition for inter partes
`
`review within one year of the date of service evidenced by Patent Owner’s own proof
`
`of service.
`
`
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`On the other hand, Patent Owner urges this Board to adopt a ruling which
`
`would encourage gamesmanship by litigation plaintiffs. Specifically, if the earlier
`
`service is considered the reference date for 35 U.S.C. § 315(b), a plaintiff would be
`
`incentivized to make duplicative services of a complaint through various means of
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`service, and record later service dates with the respective federal court with the intent
`
`to deceive and hope that petitioners rely on such deception. For this reason, this
`
`
`
`9
`
`
`
`Board should reject Patent Owner’s position and find that the proper deadline for
`
`filing of the petition was March 4, 2015.
`
`B. Patent Owner Waived the Effect of the Earlier Service
`
`Patent Owner presumably had copies of both proofs of service, yet elected to
`
`file the proof of service demonstrating a later date of service. Ex. 1003, Ex. 3000.
`
`If Patent Owner intended to rely on the earlier service, it should have filed the proof
`
`of service with the district court. Petitioner then could have challenged the
`
`sufficiency of that service in the Litigation. Whether such challenge would have
`
`been successful in this instance is immaterial – Patent Owner preemptively obviated
`
`the need to challenge the sufficiency of service by filing the later proof of service,
`
`triggering the deadline to file a responsive pleading under Fed. R. Civ. P. 12. Thus,
`
`Patent Owner effectively waived its ability to rely on the earlier service. Patent
`
`Owner should be held to its decision to rely on the later date of service.
`
`IV. Conclusion
`
`For the above reasons, Petitioner respectfully submits that 35 U.S.C. § 315(b)
`
`does not bar its petition for institution of inter partes review of the ‘441 Patent.
`
`Dated: July 31, 2015
`
`Respectfully submitted,
`
`
`
`
` /Noam J. Kritzer/
`Noam J. Kritzer, Lead Counsel
` Registration No. 60,369
`Ryan S. McPhee, Backup Counsel
` Registration No. 59,752
`BAKOS & KRITZER
`
`
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on this 31st day of July, 2015, a copy of the foregoing
`
`PETITIONER’S BRIEF IN RESPONSE TO PATENT OWNER’S
`
`CONTENTIONS RELATIVE TO 35 U.S.C. § 315(b) was served by Federal
`
`Express upon counsel of record for Patent Owner Choon’s Design Inc.:
`
`
`
`
`
`Respectfully submitted,
`
`
`
` /Ryan S. McPhee/
`Ryan S. McPhee
`BAKOS & KRITZER
`
`John M. Siragusa, Esq.
`Carlson, Gaskey & Olds, P.C.
`400 West Maple, Suite 350
`Birmingham, Michigan 48009
`
`Dated: July 31, 2015
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