On October 13, 2014, The Brinkman Corporation filed a petition for Inter Partes Review of U.S. Patent 8,381,712 directed to a barbecue grill that allows simultaneous gas grilling and charcoal-fueled grilling. A&J Manufacturing, the owner of the '712 patent, challenged Petitioner's standing to file the IPR based on the fact that the Petition was filed more than one year after the Petitioner received a copy of the complaint filed in a district court alleging infringement of the '712 patent or, alternatively, that the Petition was filed more than one year after the service of an ITC Complaint alleging infringement of the '712 patent. The Board rejected the Petitioner's arguments and held that the relevant start of the one year time bar under 35 U.S.C. § 315(b) is the date when the waiver of service of the complaint executed by the Petitioner was filed with the district court. Based on this date, the Petition was filed within the allotted time.

Pursuant to 35 U.S.C. § 315(b), "[a]n 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."

On August 21, 2013, the Patent Owner sued Petitioner for infringement of the '712 patent in the Southern District of Georgia ("the '114 Action"). The Patent Owner simultaneously sued several other defendants for infringement of the '712 patent in a series of cases filed in the same court on the same day. On October 7, 2013, the Patent Owner sent the Petitioner a copy of the complaint in the'114 Action and a request for waiver of service. The Petitioner executed the waiver on October 14, 2013. On October 21, the Patent Owner filed Petitioner's waiver of service with the District Court in the '114 Action.

Also on August 21, 2013, the Patent Owner filed a complaint with the U.S. International Trade Commission ("ITC") naming 21 respondents including Petitioner, Char-Broil, LLC, Academy, Ltd., and Outdoor Leisure Products, Inc. The ITC instituted an investigation and served Petitioner with Patent Owner's ITC complaint, on September 23, 2013.

Turning to the Patent Owner's argument that the October 7, 2013 date when the Patent Owner sent a copy of the complaint in the '114 Action to Petitioner started the one year time period under Section 315(b), the Board rejected that argument and held that the relevant date is the date when the waiver of service, executed by the Petitioner in the '114 Action, was filed with the District Court:

Petitioner waived service of the complaint, and Patent Owner filed Petitioner's waiver of service with the district court on Oct. 21, 2013. This is the date that Petitioner is deemed to have been served. See FED. R. CIV. P. 4(d)(4) ("these rules apply as if a summons and complaint had been served at the time of filing the waiver"); accord Macauto U.S.A. v. Bos GmbH & KG, IPR2012-00004, Paper 18, 16 (PTAB Jan. 24, 2013); Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20, 6 (PTAB Jan. 30, 2013); The Scotts Co. LLC v. Encap, LLC, IPR2013-00110, Paper 12, 3 (PTAB July 3, 2013).

Similarly, the Board rejected that the service of the ITC complaint started the one year time period under Section 315(b):

The phrase "served with a complaint alleging infringement of the patent" means a complaint in a civil action for patent infringement, not in an arbitral or administrative proceeding.Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, slip op. at 6-18 (PTAB, Jan. 31, 2014) (Paper 98). As explained in Amkor, we construe the § 315(b) bar as triggered only by civil actions, because the term "action" in the caption to § 315(b), as well as the phrase "served with a complaint," connote a civil action, and because Congress used different language to identify or encompass proceedings before the ITC. Amkor, Paper 98 at 7, 9-11.

Thus, because the Petition, filed on October 13, 2014, was filed within one year of the filing of the October 21, 2013 service of the waiver in the District Court on, the Petition complied with the Section 315(b).

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The Board's interpretation of Section 315(b) makes clear that the start of the one year time bar is the date when a waiver of service is filed in the district court. In this case, the fact that the Petitioner had received a copy of the complaint before the waiver of the service was filed did not trigger the time bar under 315(b). This decision also highlights the importance for the patent owner of filing the waiver of service in an infringement action as soon as possible to start the time bar under Section 315(b).

The Brinkman Corporation v. A&J Manufacturing, LLC, Case IPR2015-00056 (PTAB Mar. 23, 2015) (Paper 10) (A.P.J. Kamholz)