A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute

By: Emily Tait

A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.”  See VIZIO, Inc. v. ATI Techs. ULC, Case IPR2018-00560 (August 24, 2018) (Paper 7).

The PTAB found that Petitioner VIZIO’s petition was time-barred under 35 U.S.C. § 315(b) because the petition was filed more than one year after VIZIO was served with a complaint alleging infringement of the patent.  VIZIO filed its petition on February 1, 2018, exactly one year after it received ATI’s triggering complaint for patent infringement.  VIZIO contended that its receipt date of February 1, 2017 was the service date.  But ATI disputed this, arguing that it served the complaint by mail on January 30, 2017.

The PTAB engaged in a short and straightforward analysis of federal and state service rules to arrive at its conclusion that VIZIO’s petition was time-barred.  Rule 4(h)(1)(A) of the Federal Rules of Civil Procedure provides that a corporation must be served “in a judicial district of the United States[] . . . in the manner prescribed by Rule 4(e)(1) for serving an individual.”  Paper 7, at 3.  Rule 4(e)(1) provides that service on an individual may be done by “following state law for serving a summons in an action brought in courts of general jurisdiction in the state where the district court is located” or where service is made.  Id.  Delaware law allows for service by mail with a signed receipt, and further provides that “[s]ervice by mail is complete upon mailing.”  Id. at 4 (quoting 10 Del. C. § 3104(d)(3) and Del. R. Civ. P. 5(b) (emphasis added)).  ATI also pointed out that Delaware law requires an answer to be served within twenty days of service of the complaint and, where a complaint has been served by mail, the deadline to answer is keyed off of the mailing date.  Id. (citing Del. R. Civ. P. 12(a) and 10 Del. C. § 3104(g)).  The PTAB agreed that, in order for these provisions to reconcile, “service of process must be considered complete upon a mailing that is compliant with § 3104(d)(3).”  Id. at 4-5.

Practitioners are routinely cautioned to avoid going “down to the wire” on important case activities.  As this case illustrates, it is essential to heed this advice where there is a hard deadline in place and a significant adverse consequence if the deadline is not met.