Motorola Mobility LLC v. Patent of Michael Arnouse, Case IPR2013-00010 (January 30, 2013) (Paper 20)

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The one year time period for filing an inter partes review does not begin running until the accused infringer is served with a copy of the complaint and a summons under Rule 4 of the Federal Rules of Civil Procedure.

Summary (Informative) :

On June 16, 2011, Michael Arnouse filed a complaint with the United States District Court for the District of Vermont alleging that Motorola Mobility LLC (“Motorola”) infringed U.S. Patent No. 7,516,484 (“the ’484 Patent”). Arnouse sent a copy of the complaint to Motorola, but did not provide a summons.

More than a year later, Motorola filed an IPR petition challenging certain claims of the ’484 Patent.

Arnouse argued that Motorola’s petition was time barred under 35 U.S.C. § 315(b) because more than a year had passed since Arnouse sent a copy of the complaint to Motorola.  Motorola argued that it was not time barred, because it was not served with a summons.

The Board analyzed § 315(b) and its legislative history and held that “served” under § 315(b) means compliance with the service requirements of Rule 4 under the Federal Rules of Civil Procedure, which includes service of a summons.  The Board concluded that the interpretation of § 315(b) must be consistent with the legislative intent to provide defendants sufficient time to analyze the patent claims so that they can decide whether to challenge the patentability of the claims in an IPR.  Thus, the Board concluded that the one-year time bar is not triggered until the accused infringer actually becomes a defendant in a litigation, which occurs only after service of a summons.

Derrick Carman

Derrick Carman

As an associate in Dorsey’s Patent Group, Derrick works with clients of all sizes to prepare and prosecute patents in the United States and foreign jurisdictions. He draws on his physics research background and time as an in-house attorney at a multinational technology company to provide clients with strategic advice to help them achieve their goals. Derrick regularly evaluates patent rights and technical disclosures and renders opinions with respect to validity, non-infringement, and freedom-to-operate issues. Derrick also has experience with patent disputes in both US District Court and the United States Patent and Trademark Office.

Clint Conner

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).

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