Takeaway: When service of a complaint in a civil action is waived, the one-year period during which a petition may be filed begins to run when the Waiver of Service is filed with the district court, not when the complaint was first sent to the defendant.

In its Decision, the Board instituted inter partes review of claims 1-20 of U.S. Patent No. 8,381,712 B1. In general, the ’712 patent relates to a barbecue grill that allows for simultaneous gas grilling and charcoal-fueled grilling.

On October 13, 2014, Petitioner submitted a Petition for Inter Partes Review challenging the claims as unpatentable under § 103 over various combinations of eight references. It also relied on expert testimony.

As usual, the Board began with claim construction. In this proceeding, however, the Board determined that “no claim terms require express construction for purposes of this decision.”

The Board then addressed Patent Owner’s challenge to Petitioner’s standing to present the Petition. Patent Owner first argued that Petitioner was served with the complaint in a civil action more than one year before the Petition was filed because Petitioner was sent a copy of the complaint on October 7, 2013. The Board, however, was not persuaded by Patent Owner’s argument. Petitioner waived service of the complaint, and the waiver of service was filed with the district court on October 21, 2013. Under the Federal Rules of Civil Procedure, that is the date on which Petitioner is deemed to have been served. Patent Owner also argued that IPR is barred because Petitioner was served with the complaint in the ITC investigation more than one year before the Petition was filed. The Board was not persuaded by this argument either. As explained by the Board, “the phrase ‘served with a complaint alleging infringement of the patent’ means a complaint in a civil action for patent infringement, not in an arbitral or administrative proceeding.” Finally, Patent Owner also argued that the defendants named in co-pending actions as well as Petitioner’s co-respondents in the ITC proceeding are real-parties-in-interest in this proceeding “because they entered into a joint defense agreement, because many of the unpatentability challenges in the Petition are similar to the invalidity contentions in the ITC proceeding, and because Petitioner’s expert witness in this proceeding. . . was also the respondents’ expert in the ITC proceeding and was hired jointly by the respondents.” The Board, however, concluded that Patent Owner’s “argument is not persuasive, because it is not supported by credible evidence that any of the other defendants or respondents played an actual role in preparing or filing the Petition or has a continuing interest in this proceeding beyond the common interest in any effect of this review on other disputes concerning the ’712 patent.” Accordingly, the Board concluded that, on the present record, institution of IPR is not barred.

The Board then analyzed Petitioner’s arguments concerning the obviousness of the challenged claims. In response to Petitioner’s arguments concerning the obviousness of Claims 1, 4-10, and 13-16 over Koziol and Holland, Patent Owner argued that the cited references “do not invalidate the claims of the ’712 patent for the reasons given in the Final Initial Determination issued in the ITC proceeding.” The Board was not persuaded because Patent Owner did not identify what those reasons are in the body of the Preliminary Response and because the issue before the Board—unpatentability—is different from the issued that was before the ITC—invalidity of claims in the face or a presumption of validity. After considering the arguments and evidence presented by the parties, the Board concluded that there is a reasonable likelihood that these claims are unpatentable. The Board then considered Petitioner’s and Patent Owner’s arguments with respect to the remaining claims. Ultimately, the Board instituted IPR on all challenged claims, but not on all suggested grounds.

The Brinkmann Corporation v. A&J Manufacturing, LLC, IPR2015-00056
Paper 10: Decision on Institution of Inter Partes Review
Dated: March 23, 2015
Patent: 8,381,712 B1
Before: Richard E. Rice, Scott E. Kamholz, and Carl M. DeFranco
Written by: Kamholz
Related Proceedings: A&J Manufacturing v. The Brinkmann Corp., No. 2:13-cv-00114 (S.D. Ga); In the Matter of Certain Multiple Mode Outdoor Grills, No. 337-TA-895 (ITC); Char-Broil, LLC v. A&J Mfg., LLC, No. 2:13-cv-00140 (S.D. Ga); Academy, Ltd. v. A&J Mfg., LLC, No. 4:14-cv-02043 (S.D. Tex.)