Shifting Arguments Waived Question of Whether Imperfect Service Triggers the 35 U.S.C. § 315(b) IPR Time Bar

In Game and Technology Co., LTD. v. Wargaming Group Ltd., No. 2019-1171 (Fed. Cir. Nov. 19, 2019), the Federal Circuit found that while the PTAB must consider independently what counts as proper service to trigger 35 U.S.C. § 315(b)’s one-year time bar on IPR petitions, here GAT had waived its time-bar arguments.

More than a year before the IPR petition at issue was filed, GAT twice attempted to serve a complaint on Wargaming alleging patent infringement.  Wargaming challenged the adequacy of both attempts, but ultimately agreed to waive service.  GAT argued Wargaming should have been time barred from petitioning for IPR because of the attempts at service. The PTAB, allowing the IPR petition to proceed while it decided the issue, ultimately found the defects Wargaming objected to in both previous services meant they did not trigger § 315(b)’s time bar. The PTAB also however emphasized that it had “no authority to overlook defects in service” where “no district court ha[d] deemed service to have occurred”—which the district court had not considered due to the waiver of service.

On appeal, the Federal Circuit disagreed with the Board in part, finding that “[t]he Board cannot strictly rely on a district court’s determination of proper service because district courts rarely make such determinations.” However, the Federal Circuit found no error in the Board’s conclusion on the triggering of the time bar, in particular because GAT waived its arguments on whether the attempts at service or waiver of service triggered the time bar. The Court noted that “GAT’s opening brief devotes only one paragraph” to its argument regarding whether its service attempts were effective, and that it raised a second argument regarding Wargaming’s waiver of service triggering the time bar for the first time in oral argument. Given the “skeletal” and “shifting” nature of GAT’s arguments, the Court found those arguments were waived.

The Federal Circuit also affirmed the Board’s finding that the claims at issue were invalid as obvious over the prior art. Although the claims at issue were directed to an online video game controlled by a processor, a Dungeons & Dragons Handbook, combined with a reference that taught computer-implemented claim elements, properly invalidated the claims.