Scott Daniels | January 14, 2013
Patentee Michael Arnouse filed a Preliminary Response last week arguing, inter alia, that Google’s Motorola Mobility was late in filing its inter partes review Petition against his patent. Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010. The relevant statutory provision is 35 U.S.C. § 315(b) that states:
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.
(Emphasis added). Arnouse’ argument turns on what is meant by the phrase “served with a complaint.”
Arnouse’ first contact with Motorola regarding infringement of his patent was in early 2011. No agreement between the parties was reached and on June 11, 2011, Arnouse filed a complaint for patent infringement in the Disrtict Court of Vermont. On the same day, Arnouse sent a copy of the complaint to Motorola, but did not include the summons issued by the Court. Motorola acknowledged such receipt.
This tactic of “filing-but-not-serving-the-complaint” is a common method of turning up the heat on a putative infringer without actually starting litigation – the deadline for the defendant to answer the Complaint does not begin until it is served with the Complaint and the Court summons. One purpose of this approach is to secure a favorable location for any future litigation, but the primary aim is to resolve the infringement dispute without litigation.
Still, no agreement was reached between the parties, and on October 5, 2011, Arnouse filed an Amended Compliant. Court records show that the Amended Complaint with the Court summons was served on Motorola on October 4, 2011. Motorola’s instant IPR Petition was filed at the Patent Office on October 2, 2012.
Arnouse now argues that Motorola’s Petition should be denied as untimely because the deadline for Motorola to file was June 11, 2012, one year from the date of Arnouse’ original Complaint, not October 5, 2012, the one-year anniversary of the filing of the Amended Complaint. Arnouse first cites dictionary definitions of “serve,” which indicate the meaning of presenting a copy of the document to a person. Also, the specific wording of § 315(b) refers to serving the “complaint,” without mention of the summons from the Court. Finally, Arnouse relies on passages of the legislative history which suggest that the purpose of the one-year deadline is to allow the putative infringer a reasonable period of time in which to determine whether IPR is appropriate.
Arnouse raises two other reasons for denying Motorola’s Petition, both relying on 35 U.S.C. § 312(a)(3 & (4). First, he contends that Motorola fails to comply with the requirement for construing the claims, and then that Motorola does not adequately explain its proposed obviousness rejections.
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