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Improper Service and "Shapeshifting" Arguments Doom Time-Bar Challenge

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Sterne, Kessler, Goldstein & Fox P.L.L.C

In Game and Tech Co. (“GAT”) v. Wargaming Grp. Ltd, the Federal Circuit shed some light on what qualifies as “service” for purposes of triggering the time-bar of 35 U.S.C. § 315(b). The Court also clarified the role that the PTAB plays in making that determination. In brief, the standard for whether “service” has been properly effectuated follows Fed. R. Civ. P. 4 and the PTAB must make that assessment, regardless of whether the district court has weighed-in.

Wargaming sought inter partes review of GAT’s patent related to gaming technology. In response, GAT argued that the petition was time-barred based on service via a registered agent of Wargaming in the United Kingdom and based on mailing a copy of the complaint and summons to Wargaming at its office in Cyprus. GAT did not dispute that both attempts at service had been imperfect. The UK summons lacked the clerk of court’s signature as well as the court’s seal. And the Cyprus service did not include a signed receipt. Thus, both attempts failed to comply with the requirements of Rule 4. Nonetheless, GAT argued that this was sufficient to trigger the time-bar in light of discussions it had with Wargaming about potentially waiving service in exchange for an extension to file an answer to the complaint. No formal waiver was filed in the district court.

The PTAB did not resolve the time-bar issue in its institution decision, explaining that development of the record would be needed to resolve factual questions. In its final decision, the PTAB concluded that it had no authority to overlook defects in service of a complaint and that it could not find service if “no district court has deemed service to have occurred.” Because both attempts failed to effectuate proper service under Rule 4, the time-bar had not been triggered.

GAT appealed, disputing the PTAB’s ruling on procedural grounds. On appeal, the Federal Circuit agreed with GAT that the PTAB has an independent obligation to evaluate the sufficiency of service, regardless of whether the district court has expressly endorsed it as proper (because district courts rarely do). The Court also suggested that, in a typical case, the PTAB should rule on the time-bar prior to institution. In this case, however, because the service was found to have been ineffectual, no prejudice resulted from the PTAB’s refusal to decide it at the institution phase. Furthermore, because GAT failed to present its substantive arguments in a clear and consistent manner (analogizing GAT’s evolving positions to “certain shapeshifting characters in Dungeons & Dragons”), GAT waived those arguments for purposes of appeal.

The Federal Circuit’s decision in GAT v. Wargaming provides helpful guidance on the standard for triggering “service” under § 315(b); namely, as subject to interpretation under Rule 4 and common law principles. Yet the decision leaves many questions unanswered because the Court declined to reach the substance of GAT’s argument that imperfect service was not fatal to its time-bar defense. Assuming the time-bar issue remains reviewable after the Supreme Court decides Dex Media v. Click-to-Call, future appeals will likely clarify the meets and bounds of “service” under a Rule 4 analysis. We will continue to report on this topic as it evolves.


This article appeared in the November 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.