APJs Grant Inter Partes Review in BOS Case, Part I

Scott Daniels | January 28, 2013

At the end of last month, we reported that the Patent Owner BOS GmbH had filed a Preliminary Response in Macauto USA v. BOS GmbH, IPR2012-00004, asking that the Patent Office decline to institute the requested inter partes review of U.S. Patent No. 6,422,291 (claiming a mechanism for car window shades).

BOS asserted that inter partes review should be denied under 35 U.S.C. § 315(b) because it had sued Macauto Taiwan, parent of Petitioner Macauto USA, more than one year before Macauto’s Petition was filed.  Section 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, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

(Emphasis added).  BOS contended that “Macauto Taiwan is a real party in interest or a privy of the petitioner, Macauto USA, because Macauto Taiwan wholly owns and controls the petitioner.”  BOS also argued that Macauto Taiwan will be affected, positively or negatively, by the results in this proceeding, pointing out that Macauto Taiwan had earlier pursued an unsuccessful ex parte reexamination of the BOS ‘291 patent.

In a ruling this past Thursday, the APJs determined that they did not need to resolve the “real party in interest” issue because of there was no “service” of the complaint for each two separate legal reasons.  First, the APJs noted that the Patent Owner BOS had voluntarily dismissed the infringement action.  “[S]uch dismissals [leave] the parties as though the action had never been brought.”  Thus, “the dismissal of the earlier action against Macauto Taiwan nullifies the effect of the alleged service of the complaint on Petitioner.”  Second, the APJs cited case law to the effect that “to establish a service date the waiver or proof of service must be filed” with the court.  Here, the Patent Owner BOS never filed such a paper with the court and therefore no “service date” was created.

The APJs then proceeded to analyze Macauto’s Petition on its merits.  We will describe that analysis in later posts.

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