Motorola Mobility LLC v. Patent of Michael Arnouse

Informative decision only: persuasive authority, not binding precedent. When a patent owner has filed an infringement complaint but has not served the accused infringer with a summons, the one-year period of 35 U.S.C. § 315(b) (a petition may not be filed "more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent") does not begin to run; the petitioner must be served with a summons and complaint. Where the petitioner waives service, the one-year period begins on the date the waiver is filed. No prior precedent directly addressed this issue; the Board decided it from the statutory text, legislative history and Murphy Bros. A petitioner may not be time-barred by mere receipt of a courtesy copy of a complaint, so the clock runs from formal service of a summons and complaint (or the filing of a waiver). A patent owner cannot start the bar by sending the complaint informally and delaying service, and it will have to show formal service or a filed waiver to invoke the bar. The Board relied on Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344 (1999), on the formal-process requirement for a named defendant, and on Crandon, Duncan, Deluxe Corp. and similar authority for its interpretive method. LEGAL TEST OR STANDARD: The Board began with the statutory language of 35 U.S.C. § 315(b) and found that the word "served" has more than one interpretation. It then turned to legislative history to find Congress's intent, citing Deluxe Corp. v. United States, 885 F.2d 848, 850 (Fed. Cir. 1989). The interpretation must be consistent with the legislative intent to give defendants sufficient time to analyze the patent claims and decide whether to petition for inter partes review. The Board concluded that service of a summons is required to trigger the one-year period. TRIGGERING FACTS: Arnouse filed an infringement complaint in the District of Vermont on June 16, 2011, but did not provide Motorola with a summons when it sent the complaint. Arnouse argued that receipt of a copy and actual notice was enough. To come inside the bar, a patent owner must show service of a summons with the complaint, or that the petitioner filed a waiver of service under Rule 4(d)(4), which starts the period on the filing date of the waiver. Mere receipt of a complaint, such as a courtesy copy, does not start the period. KEY QUOTE: "Accordingly, we conclude that Motorola must be served with a summons before the one-year time period for filing an inter partes review petition is triggered." (Paper 20, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Murphy Bros. v. Michetti Pipe Stringing, 526 U.S. 344, 347-48 (1999), by analogy to 28 U.S.C. § 1446, and distinguished the "receipt" language of 28 U.S.C. § 1446(b). PRACTICE TIP: Petitioners should document the date and manner of service (or waiver) in the district court docket and show in the petition and any briefing whether a summons was served. Patent owners who want to invoke § 315(b) should be prepared to prove formal service of a summons and complaint, or a filed waiver, more than one year before the petition.