Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Game and Technology Co. v. Wargaming Group Limited, No. 2019-1171 (Nov. 19, 2019), affirming the final written decision of the Patent Trial and Appeal Board that institution of inter partes review was not time-barred and that substantial evidence supported the Board’s holding the claims at issue were invalid as obvious.
Game and Technology (“GAT”) sued Wargaming Group for infringement of U.S. Patent No. 7,682,243, which discloses a method and system for providing an online game. GAT did not attempt to serve Wargaming until December 2015. When it did, the service was technically defective. By later email, Wargaming’s counsel agreed to waive the deficiencies, in exchange for GAT’s agreement to extend its response time to April 1, 2016. No one filed a notice of waiver with the court.
Wargaming petitioned for IPR on March 13, 2017, asserting its petition was timely because service was defective. GAT argued the petition was time-barred under 35 U.S.C. § 315(b), which states, “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The Board agreed with Wargaming, finding it had “no authority to overlook defects in service” where a district court had not found service to have occurred.
On appeal, the Federal Circuit admonished the Board to determine for itself “whether service of a complaint alleging infringement was properly effectuated,” and noted that ordinarily this determination should be made before institution. Even so, the panel found no error in the Board’s process because “GAT would only have been harmed by the Board’s decision to institute if the IPR was in fact time-barred.” On the substance of the challenge, because GAT failed to offer any sufficient or specific arguments for why service was proper, it failed to adequately preserve the issue on appeal, and the Court could not conclude the Board erred in determining the petition was not time barred.
On the merits, the Court held substantial evidence supported the Board’s determination the claims would have been obvious in view of prior art aimed at a gamer’s control in “massively multi-player online games” and the paper and dice role-playing game Dungeons & Dragons.