Motorola Mobility LLC v. Michael Arnouse

Paper 20, January 30, 2013

IPR2013-00010 (MT) (Patent 7,516,484)

[One year period to petition for an IPR starts with the service of summons on the alleged infringer]

FACTS

Patent Owner, Arnouse, filed an infringement suit in a District Court against petitioner, Motorola, but did not serve Motorola with summons. More than a year later, Motorola filed its petition of inter partes review.

HOLDING

Motorola’s petition for an IPR is timely filed. 35 U.S.C. § 315(b) provides that a party may not file a petition for an IPR if the party had been served with a complaint alleging infringement more than one year previously. Construing the word “served” in accordance with legislative history and Congressional intent, the Board held that the one year period does not start to run until the alleged infringer is served with summons or files a waiver of service pursuant to FRCP 4. Mere notice of the complaint provided to the alleged infringer does not trigger the one year time period.

TAKEAWAY

One year period to petition for an IPR starts with the service of summons on (or a waiver of service by) the alleged infringer in the patent infringement suit.

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