Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`TRISTAR PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`CHOON’S DESIGN, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00838 (Patent 8,485,565 B2)
`Case IPR2015-00840 (Patent 8,622,441 B1)1
`_______________
`
`
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 This Decision addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Decision that has been
`entered in each case. The parties may use this style caption when filing a
`single paper in multiple proceedings, provided that such caption includes a
`footnote attesting that “the word-for-word identical paper is filed in each
`proceeding identified in the caption.”
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`TRISTAR PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`CHOON’S DESIGN, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00838 (Patent 8,485,565 B2)
`Case IPR2015-00840 (Patent 8,622,441 B1)1
`_______________
`
`
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 This Decision addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Decision that has been
`entered in each case. The parties may use this style caption when filing a
`single paper in multiple proceedings, provided that such caption includes a
`footnote attesting that “the word-for-word identical paper is filed in each
`proceeding identified in the caption.”
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`I.
`
`INTRODUCTION
`A. Background
`Tristar Products, Inc. (“Petitioner”) filed Petitions to institute inter
`partes reviews of certain claims of U.S. Patent Nos. 8,485,565 (“the ’565
`patent”) and 8,622,441 (“the ’441 patent”) on March 3, 2015. IPR2015-
`00838, Paper 1 (“838 Pet.”); IPR2015-00840, Paper 1 (“840 Pet.”). Choon’s
`Design, LLC (“Patent Owner”) filed a Preliminary Response in each of
`IPR2015-00838 and IPR2015-00840. IPR2015-00838, Paper 5 (“838
`Prelim. Resp.”); IPR2015-00840, Paper 5 (“840 Prelim. Resp.”). Upon
`authorization from the panel (IPR2015-00838, Paper 6; IPR2015-00840,
`Paper 6), Petitioner filed supplemental briefing on 35 U.S.C. § 315(b)
`relative to the instant proceedings (IPR2015-00838, Paper 7 (“315(b) Br.”);
`IPR2015-00840, Paper 7).2
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Under 35 U.S.C. § 315(b), however, we
`are precluded from instituting inter partes review “if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” For the reasons given below,
`we do not institute an inter partes review in this proceeding.
`
`
`2 Petitioner’s supplemental briefing is identical in each case. For simplicity,
`our decision refers to “315(b) Br.,” rather than citing to the briefing in each
`case individually.
`
` 2
`
`
`
`
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`
`B. Related Proceedings
`Petitioner and Patent Owner indicate that the ’565 patent and the ’441
`patent are the subject of the following federal district court case: Choon’s
`Design, Inc. v. Tristar Products, Inc., No. 2:14-cv-10848 (E.D. Mich.). 838
`Pet. 1; 840 Pet. 1; IPR2015-00838, Paper 4, 2; IPR2015-00840, Paper 4, 2.3
`
`II. ANALYSIS
`As noted above, 35 U.S.C. § 315(b) 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, real party in interest,
`or privy of the petitioner is served with a complaint alleging infringement of
`the patent.” Patent Owner contends that institution of trial in each of
`IPR2015-00838 and IPR2015-00840 is barred under 35 U.S.C. § 315(b)
`because “Tristar filed its Petition on March 3, 2015, more than one year after
`it was first served with the complaint in [Choon’s Design, Inc. v. Tristar
`Products, Inc., No. 2:14-cv-10848 (E.D. Mich.)].” 838 Prelim. Resp. 2; 840
`Prelim. Resp. 2.
`Patent Owner contends that “Tristar’s registered agent was actually
`first served with the complaint on February 28, 2014.” 838 Prelim. Resp. 1;
`840 Prelim. Resp. 1. In each of IPR2015-00838 and IPR2015-00840, Patent
`Owner provides “Exhibit B [a]s the Proof of Service for February 28,
`
`
`3 Patent Owner and Petitioner identify numerous additional federal district
`court cases as related to the ’565 and ’441 patents. 838 Pet. 1–2; 840 Pet. 1–
`2; IPR2015-00838, Paper 4, 1–2; IPR2015-00840, Paper 4, 1–2.
`
` 3
`
`
`
`
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`2014.”4 838 Prelim. Resp. 1; 840 Prelim. Resp. 1. In the discussion of
`related litigation, the 838 Petition and 840 Petition each indicate that “[t]he
`earliest that Petitioner was served was March 4, 2014.” 838 Pet. 2; 840 Pet.
`1. In its 315(b) Brief, Petitioner argues that “the deadline to file a petition
`for inter partes review under 35 U.S.C. § 315(b) should be calculated from
`the date indicated in the proof of service filed by the patent owner in the
`corresponding district court Litigation.” 315(b) Br. 2–3. The issue before us
`is whether the February 28, 2014 service on Petitioner is the service used to
`calculate the one-year deadline for filing a petition for inter partes review.
`Petitioner’s 315(b) Brief notes that “Petitioner has not located a prior
`decision addressing this set of circumstances” (315(b) Br. 2), and proceeds
`to argue that it would be unfair to use the February 28, 2014 service date for
`purposes of 35 U.S.C. § 315(b). For example, Petitioner notes that
`“Petitioner has not had an opportunity to challenge the alleged February
`2[8], 2014 service which remains unsubstantiated,” and “allow[ing] a patent
`owner to utilize an unsubstantiated service date to preclude an inter partes
`review under 35 U.S.C. § 315(b) . . . 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.” 315(b) Br. 5. Here, the
`February 28, 2014 service date is not unsubstantiated, as Patent Owner
`presents a signed declaration from the process server attesting to the
`February 28, 2014 service date. IPR2015-00838, Ex. 2; IPR2015-00840,
`Ex. 2002. Petitioner had the opportunity to identify any procedural defects
`
`
`4 Patent Owner refers to Exhibit 2002 in IPR2015-00840 as proof of service.
`Exhibit B (or Exhibit 2) and Exhibit 2002 appear to be the same document in
`each case.
`
` 4
`
`
`
`
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`in the February 28, 2014 service in its supplemental briefing (the 315(b)
`Brief). Noticeably missing from Petitioner’s arguments, however, is any
`argument regarding a reason why the February 28, 2014 service was
`defective. In fact, Petitioner does not allege that the service was defective,
`but rather, argues that proof of the service was not filed with the court. See,
`e.g., 315(b) Br. 8 (arguing that “Patent Owner has not provided any reason
`why it did not file the earlier proof of service with the district court,” but not
`alleging that the service was defective); see Fed. R. Civ. P. 4(l)(3) (“Failure
`to prove service does not affect the validity of service.”).
`The plain language of 35 U.S.C. § 315(b) requires “the petitioner, real
`party in interest, or privy of the petitioner [to be] served with a complaint
`alleging infringement of the patent” to start the one year period for filing a
`petition for inter partes review. The statute does not include any
`requirement regarding filing proof of that service with a court. Based on the
`information before us, there is no reason to conclude that the February 28,
`2014 service on Petitioner was defective, or otherwise ineffective to trigger
`the one-year bar of § 315(b). For example, although Petitioner argues that
`service might have been ineffective, if the entity served was no longer the
`registered agent for service of process, it has not come forward with any
`allegation suggesting this to be the case. See 315(b) Br. 5–6. Nor has
`Petitioner come forward with any argument that a procedural defect renders
`the February 28, 2014 service ineffective to trigger the bar. Petitioner’s
`arguments regarding “not ha[ving] an opportunity to challenge the alleged
`February 2[8], 2014 service” and “allowing a patent owner to improperly
`serve a party at an early date, and then effect proper service at a later date”
`(315(b) Br. 5) are unpersuasive. Based on the particular facts before us,
`
` 5
`
`
`
`
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`Petitioner had the opportunity to argue that the February 28, 2014 service
`was defective in the supplemental briefing authorized by the panel (the
`315(b) Brief), but as noted above, did not allege any procedural defect in
`that service.
`Accordingly, we determine that institution of the petitions in
`IPR2015-00838 and IPR2015-00840 is precluded by 35 U.S.C. § 315(b), as
`those petitions were filed “more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner [wa]s served with a
`complaint alleging infringement of the patent.”
`
`
`III. ORDER
`For the reasons given, it is
`ORDERED that the IPR2015-00838 Petition is denied and no inter
`partes review is instituted; and
`FURTHER ORDERED that the IPR2015-00840 Petition is denied and
`no inter partes review is instituted.
`
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`IPR2015-00838 (Patent 8,485,565 B2)
`IPR2015-00840 (Patent 8,622,441 B1)
`
`PETITIONER:
`
`Noam J. Kritzer
`Ryan S. McPhee
`BAKOS & KRITZER
`nkritzer@bakoskritzer.com
`rmcphee@bakoskritzer.com
`
`PATENT OWNER:
`
`John Siragusa
`Anthony Cho
`CARLSON, GASKEY & OLDS, P.C.
`jsiragusa@cgolaw.com
`acho@cgolaw.com
`
`
`
` 7
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