PTAB Institutes IPR Despite Potential Time Bar to Petition

Oct 16, 2017

Reading Time : 1 min

In its preliminary response, patent owner Game and Technology Co., LTD. argued that a real party-in-interest to the petitioner was served with a complaint alleging infringement of the challenged patent over a year before the filing of the petition for inter partes review, thereby time-barring Wargaming Group Limited’s petition. In support of this assertion, the patent owner submitted a declaration detailing the manner in which Wargaming’s real party-in-interest was served.

On August 11, 2017, the parties and the Board held a conference call to discuss the issue of whether the petition was time barred. During the call, counsel for petitioner denied service was made when the patent owner alleged. In fact, petitioner submitted a declaration from the individual upon whom Game and Technology alleged service was made. Ex. 1017. Petitioner’s declarant testified that he could not “recollect…receiving any documents” and that he “most likely [] wasn’t in the office” when the documents were allegedly delivered. Decision, Paper 14 at p. 7; Ex. 1017 ¶¶3-5. Petitioner, however, “did not dispute that, if service of the complaint occurred pursuant to the Hague Convention more than one year before the filing of the Petition, as asserted by Patent Owner, the Petition would be time barred.” Decision, Paper 14 at p. 6.

With petitioner and patent owner urging the Board to accept the testimony of their respective declarants as fact, the Board determined that the record needed to be developed further before a decision on the potential time-bar could be made. While this record is being developed, the Board instituted review of claims 1-7 of the challenged patent as unpatentable under 35 U.S.C. § 103(a) over the combined teachings of a U.S. Patent publication and a Dungeons and Dragons Player’s handbook. The parties must now proceed with trial to determine whether claims 1-7 are obvious over the cited references without knowing whether the petition was statutorily barred.

Wargaming Group Limited v. Game and Technology Co., LTD., IPR2017-01082, Paper No. 14 (PTAB Oct. 6, 2017).

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.