In IPR2015-00838 and IPR2015-00840, Petitioner Tristar Products, Inc. ("Petitioner") filed petitions to instituted IPRs of certain claims of U.S. Patent Nos. 8,485,565 and 8,622,441 owned by Choon's Design, LLC ("Patent Owner"). Previously, the Patent Owner had sued the Petitioner on the '565 and '441 patents. The issue was whether was whether the petitioner can rely upon date of service of the complaint set forth in the proof of service filed by the patent owner in satisfying the time limitations set forth in 35 U.S.C. § 315(b), which precludes institution of an IPR "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." The unexpected answer was no and, as a result, the PTAB did not institute IPR proceedings involving the '565 and '411 patents.

The Patent Owner contends that institution of trial in each of IPR2015-00838 and IPR2015-00840 is barred under 35 U.S.C. § 315(b) because "Tristar filed its Petition on March 3, 2015, more than one year after it was first served with the complaint in Choon's Design, Inc. v. Tristar Products, Inc., No. 2:14-cv-10848 (E.D. Mich.)." Specifically, the Patent Owner contends, and provided a signed declaration from a process server, that "Tristar's registered agent was actually first served with the complaint on February 28, 2014." In its petitions, the Petitioner contended that, based on the proof of service filed by the Patent Owner, "[t]he earliest that Petitioner was served was March 4, 2014." Thus, the issue before the PTAB was whether the February 28, 2014 service on Petitioner should be the service used to calculate the one-year deadline for filing a petition for inter partes review. If so, then the petitions were filed three days too late.

In support of its position, the Petitioner stated that it "has not located a prior decision addressing this set of circumstances" and that it would be unfair to use the February 28, 2014 service date for purposes of 35 U.S.C. § 315(b). The Petitioner further stated that it "has not had an opportunity to challenge the alleged February 28, 2014 service which remains unsubstantiated," and "allow[ing] a patent owner to utilize an unsubstantiated service date to preclude an inter partes review under 35 U.S.C. § 315(b) . . . would unnecessarily create an improper loophole by allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date."

The Board rejected the notion that the February 28, 2014 service date was unsubstantiated and pointed out that the Patent Owner provided a signed declaration from the process server attesting to that date. The Board noted that the Petitioner also failed raise any procedural defects regarding the February 28, 2014 service, but argued only that the February 28 service was not filed with the court.

The plain language of 35 U.S.C. § 315(b) requires "the petitioner, real party in interest, or privy of the petitioner [to be] served with a complaint alleging infringement of the patent" to start the one year period for filing a petition for inter partes review. The statute does not include any requirement regarding filing proof of that service with a court. Based on the information before us, there is no reason to conclude that the February 28, 2014 service on Petitioner was defective, or otherwise ineffective to trigger the one-year bar of § 315(b). For example, although Petitioner argues that service might have been ineffective, if the entity served was no longer the registered agent for service of process, it has not come forward with any allegation suggesting this to be the case. Nor has Petitioner come forward with any argument that a procedural defect renders the February 28, 2014 service ineffective to trigger the bar. Petitioner's arguments regarding "not having an opportunity to challenge the alleged February 28, 2014 service" and "allowing a patent owner to improperly serve a party at an early date, and then effect proper service at a later date" are unpersuasive. Based on the particular facts before us, Petitioner had the opportunity to argue that the February 28, 2014 service was defective in the supplemental briefing authorized by the panel, but as noted above, did not allege any procedural defect in that service.Paper 8 at 5-6 (internal citations omitted).

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While it does appear to reach unfair result and reward the plaintiff/patent owner for filing a proof of service identifying a date for service of the complaint later than the earliest service, this decision serves as a cautionary tale about relying on the proof of service without further confirming the earliest date of service with the plaintiff or the petitioner/defendant. It also highlights the danger of waiting until the last few days before filing the petition. Tristar Products, Inc. v. Choon's Design, LLC., IPR2015-00838, Paper 8 (PTAB Aug. 26, 2015) (Plenzler, A.P.J.)