Scott Daniels | July 8, 2013
The AIA provides that a party may not file a petition for inter partes review if that party had been served with an infringement complaint more than one year previously. 35 U.S.C. § 315(b). Fine, but how does this provision apply to cases where the accused infringer waives service, i.e., where service never occurs?
In The Scotts Company v. Encap, IPR2013-00110, the patent owner Encap argued that the challenger Scotts Company had failed to file its petition before the one-year deadline because Encap had sued Scotts Company for infringement of the ’259 patent more than one year before Scotts Company filed its IPR petition.
The APJs disagreed with Encap, determining that Scotts Company’s petition was timely filed. They explained that the “mere notification of a complaint does not trigger the one-year statutory bar.” They cited Federal Rule 4(d)(4) for the nuance 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.)
The APJs therefore held that where a petitioner waives service of a summons, the one-year time period begins on the date on which waiver is filed. Since Scotts Company waived service of a summons in the parallel infringement action no earlier than January 12, 2012, and had filed its petition on January, 10, 2013, Scotts’ petition was timely filed.