Is the IPR Time-Bar of 35 U.S.C. § 315(b) Triggered When Service of the Summons and Complaint in a Related Infringement Action is Defective?

October 18, 2023

The institution decision in Lightricks Ltd. v. Plotagraph, Inc., IPR2023-00153, Paper 9 (Sept. 5, 2023), addressed this question.  Plotagraph contended in its preliminary response that Lightricks’ petition, filed on January 17, 2023, was time barred because Lightricks, a foreign corporation, was served with the district court complaint on December 23, 2021, and again on January 4, 2022. Id. at 9.  Lightricks argued in response that the alleged service attempts failed to comply with Rule 4 of the Federal Rules of Civil Procedure (Fed. R. Civ. P.) because they were defective and that service occurred on January 21, 2022, when Plotagraph filed Lightricks’ waiver of service with the district court. Id. at 9-10.  Specifically, Lightricks argued that it received nothing from the alleged first service attempt and that the alleged second service attempt omitted the exhibits that were filed with the complaint. Id.


The PTAB agreed that § 315(b)’s time-bar is not triggered when service of a district court summons and complaint is defective. Id. at 10-12.  It observed that Fed. R. Civ. P. Rule 10 states that “an exhibit to a pleading is a part of the pleading for all purposes.” Id. (quoting Rule 10(c) and collecting cases).  It further observed that its own decisions require consideration of the date “on which a complaint was served in accordance with the law” when determining whether a petition is time-barred under § 315(b). Id. (explaining that its decisions have held that the term “served” in § 315(b) requires compliance with Rule 4, that mere notice is not legally effective service, and that the bar is not triggered when a complaint is improperly served).  The PTAB also noted that Plotagraph did not dispute that service was defective in the manner alleged by Lightricks and found unpersuasive Plotagraph’s reliance on PTAB decisions addressing the time bar in the context of a deficient pleading—which is unlike the alleged defective service situation at issue. Id. (noting that Plotagraph “[did] not cite any authority holding that § 315(b) can be triggered by delivery of a complaint that does not constitute service under Rule 4”). Id


The PTAB also found that the record did not contradict Lightricks’ assertion that Plotagraph agreed that filing the waiver of service would govern the deadline for filing a response to the complaint. Id. at 11-12.  It noted that the PTAB has previously explained that “in the situation where the petitioner waives service of a summons, the one-year time period begins on the date on which such waiver is filed.” Id. (citing Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 20 at 6 (PTAB Jan. 30, 2013) (informative)).  It then concluded that Lightricks was not “served with a complaint alleging infringement of the patent” for purposes of § 315(b) until January 21, 2022, and thus the petition was timely filed on January 17, 2023. Id.