Motorola Mobility v. Arnouse (IPR2013-00010, Paper 20): Service of a Complaint Means Formal Service

A defendant sued for patent infringement has one year from service of the complaint to petition for inter partes review. Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 (entered January 30, 2013), was one of the Board’s first decisions on what “served with a complaint” in 35 U.S.C. § 315(b) means.

Background

Michael Arnouse filed an infringement complaint against Motorola in the District of Vermont on June 16, 2011, and sent Motorola a copy without a summons. Formal service came later. Arnouse argued that “served” means delivered, so that Motorola’s receipt of the complaint started the one-year clock and its petition was late. Motorola argued that a defendant is served only when the plaintiff complies with Federal Rule of Civil Procedure 4.

What the Board decided

The Board agreed with Motorola and held the petition timely.

1. Statutory text. Congress used “served,” not words such as “receipt” or “delivery.” The removal statute, 28 U.S.C. § 1446(b), by contrast, refers to receipt of the complaint. A dictionary definition of “serve” refers to legal delivery of notice or process as required by law, so the word does not mean delivery.
2. Legislative history. Because the word could bear more than one meaning, the Board looked to the legislative history, which showed that the one-year period was meant to give defendants a reasonable opportunity to understand the patent claims asserted against them, without leaving the window open indefinitely.
3. Formal process. Citing Murphy Bros. v. Michetti Pipe Stringing (1999), the Board noted that a named defendant need not engage in litigation until brought under the court’s authority by formal process. It concluded that Congress did not intend the period to start before the petitioner is officially a defendant.
4. Practical effects. Patent owners often send courtesy copies to encourage settlement and defer formal service. Counting from receipt would let a patent owner shorten the period Congress set; here, it would have cost Motorola more than three months.
5. Waiver. The Board rejected the concern that this reading leaves the period open-ended when a defendant waives service. Under Rule 4(d)(4), the rules apply as if the summons and complaint had been served when the waiver is filed, so the period begins on that date.

Why it matters

The date that starts the one-year clock can decide whether a petition is heard at all, and petitions are often filed close to the deadline. Motorola establishes that the trigger is formal service (or a filed waiver), not informal receipt. The Board applied the same reasoning in TRW v. Magna, holding that a proposed amended complaint served with a motion for leave did not start the period. The bar also reaches the petitioner’s real parties in interest and privies, so service on a related company can matter; see who is the real party in interest in an IPR or PGR and discovery and the one-year time period.

By statute, the time bar does not apply to a request for joinder under § 315(c).

Later developments

In Click-to-Call Technologies, LP v. Ingenio, Inc. (Fed. Cir. 2018) (en banc in relevant part), the Federal Circuit held that service of a complaint triggers § 315(b) even if the action is later voluntarily dismissed without prejudice. In Thryv, Inc. v. Click-to-Call Technologies, LP (2020), the Supreme Court held that the Board’s § 315(b) decisions at institution cannot be appealed. Readers should check current Board guidance for how time-bar disputes are handled.

Key takeaways

• Receipt of a complaint without a summons did not start the § 315(b) period.
• The period begins on formal service under the Federal Rules, or on the filing of a waiver of service.
• The Board relied on the statutory text, legislative history and Murphy Bros.
• After Thryv, the Board’s time-bar rulings at institution are not appealable.