PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`WARGAMING GROUP LIMITED
`Petitioner
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`v.
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`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
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`Case IPR2017-01082
`Patent 7,682,243
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`_____________
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
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`UNDER 35 U.S.C. §315(b)
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`Case IPR2017-01082
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`WARGAMING GROUP LIMITED
`Petitioner
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`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
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`Case IPR2017-01082
`Patent 7,682,243
`
`_____________
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
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`UNDER 35 U.S.C. §315(b)
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`I.
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`INTRODUCTION
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`Game and Technology Co., Ltd. (“Patent Owner”) respectfully submits that
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`the Petition (Paper 1) should be dismissed as time-barred under 35 U.S.C. §
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`315(b). First, Wargaming.net LLP was served with a complaint more than one
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`year before the filing date of the Petition in both the United Kingdom and Cyprus,
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`each of which constitutes effective service. And second, even though
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`Wargaming.net LLP was dismissed as a party (Ex. 1013 at 2, ¶ 1), the substitution
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`of parent company Wargaming Group Limited as a defendant (Ex. 1013 at 2, ¶ 2)
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`necessitates continuation of the same infringement action. Thereby, the order
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`granting dismissal (Ex. 1026) does not, in effect, reset the service requirement of
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`35 U.S.C. § 315(b).
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`II.
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`SERVICE ON WARGAMING
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`Wargaming.net LLP was twice served with a complaint more than one year
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`before the filing date of the Petition in both the United Kingdom and Cyprus, each
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`of which constitutes effective service.
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`A. Effective Service by John Talbot
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`John Talbot is an experienced process server, the owner of a process service
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`business for twenty-seven years that specializes in providing service under Article
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`5 of the Hague Convention. Ex. 2018 at 2-3.
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`Mr. Talbot’s original statement that “[o]n Thursday the 10th day of
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`1
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`December 2015 at 1305 hours I served Wargaming.Net LLP, one of the
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`Defendants herein, with the Summons in a Civil Action issued herein, together
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`with the Complaint for Patent infringement, the Civil Cover Sheet, the Summons
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`in a Civil Action, the Report on the Filing or Determination of an Action
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`Regarding a Patent or Trademark and the U.S. Patent No. US 7,682,243 B2,
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`together with the Hague Convention Summary of the Document to be Served and
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`Notice, by delivering them to, and leaving them with, Costas A Joannou, who
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`confirmed that he was authorised to accept service on behalf of Wargaming.Net
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`LLP” was made only three days after service, and almost two years before the
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`issue of whether service was proper, was raised. See Ex. 2002 at 1; Ex. 2002
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`(Supplemental) at 1; Ex. 2019 at 3.
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`Mr. Talbot sent his witness statement to Mr. Graham Bridgman, a solicitor,
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`who certified the statement and applied to the Central Authority for a Hague
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`Certificate of Service. Ex. 2018 at 1; Ex. 2001 (Supplemental) at 1; Ex. 2002
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`(Supplemental) at 1; Ex. 2019 at 3. The Hague Certificate of Service issued on
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`January 6, 2016. Ex. 2002 (Supplemental) at 1; Ex. 2019 at 2.
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`Mr. Talbot also stated that when the “registered office turns out to be
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`accountants,” he asks whether “there is anyone in particular I could leave [the
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`documents] with.” Ex. 2018 at 9. Consistent with his practice, Mr. Talbot recalls
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`personally serving Mr. Joannou, Wargaming’s authorized agent. See e.g., Ex. 1025
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`2
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`at 63: 3-5. The contents of Mr. Talbot’s file from that day, including a scrap of
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`paper and Mr. Joannou’s business card, aided Mr. Talbot’s recollection. GAT Ex.
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`2018 at 11. The scrap of paper within Mr. Talbot’s file has “kos” and “1.05”
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`scribbled on it. Ex. 2013. This paper reminded Mr. Talbot of the time of service,
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`and that “kos” was “the beginning of my attempt to write down the name of the
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`person whom I personally served, Costas A Joannou…. While I was writing down
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`his name, Mr. Joannou gave me his business card, at which point I didn’t need to
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`finish writing his name.” Ex. 2018 at ¶ 11. Based on these facts, Mr. Talbot’s
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`statements are highly credible.
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`Almost two years later and after dispute over the issue of whether service
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`was proper, Mr. Joannou has stated that that he has no recollection of receiving the
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`documents. Ex. 1017 at ¶ 4. Mr. Joannou also states that he does not believe that he
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`was in the office at the time of service by Mr. Talbot because Mr. Joannou had to
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`leave his office for a meeting at 3 PM in Central London and had another meeting
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`that was “brought forward.” Ex. 1017 at ¶ 5. Mr. Talbot has testified that Mr.
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`Joannou’s travel time to his meeting would be “approximately one hour by train.”
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`Ex. 1023 at 69:24-70:9. Even if true, none of Mr. Joannou’s circumstantial
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`statements affirmatively establishes that service was not effected. Mr. Joannou
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`does not establish that he was, for example, in a different location at the date and
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`time of alleged service, and thus all of Mr. Joannou’s statements should be
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`summarily dismissed because such statements do not, in fact, evidence a lack of
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`service. Either Mr. Joannou does not remember the encounter from almost two
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`years ago or Mr. Joannou’s statements are in effort to mitigate damage to his
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`personal business interest having billed almost 350,000 pounds in service fees to
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`Wargamming.net. Ex. 1017 at Exhibit B.
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`B. Exhibit A to John Talbot’s Witness Statement
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`Mr. Talbot has testified that he had served all documents including the
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`Hague Notice and Summary. Ex. 1025 at 31:14-21; 73:3-23. While Ex. 2002
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`(Supplemental) did not include a true copy of Exhibit A with the Notice and
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`Summary, all served documents included in the correct Exhibit A are of record in a
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`combination of the documents shown in Ex. 2001 (Supplemental) (Notice and
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`Summary), and Ex. 2002 (Supplemental) (Summons, Compliant, Cover Sheet, and
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`Patent). The Declaration of Joseph Zito (Ex. 2021) and documents received from
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`Legal Language Services (Ex. 2019) corroborate that the Notice and Summary
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`were included in Exhibit A to Mr. Talbot’s witness statement. These documents
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`were sent by Legal Language Services sent to Mr. Zito. Ex. 2021. Patent Owner
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`merely relies on the declaration of Joseph Zito to authenticate the documents that
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`were received by him from Legal Language Services.1
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`1 The parties agreed that “if either party relies on documents, the party may rely
`on an affidavit to authenticate any such documents.” See Order, Paper 16 at 3
`(October 24, 2017).
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`4
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`C. Signed and Sealed Summons
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`Petitioner allegation that “the summons was not issued by the district court”
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`is incorrect. Petitioner’s Brief on Service (Paper 24) at 7. On the contrary, Patent
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`Owner obtained a signed and sealed pdf electronic copy of the summons, which is
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`publically available on PACER and incudes the seal and signature on graphics
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`layers that overly the document fields. Ex. 2022.
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`In Ayers v. Jacobs & Crumplar, P.A., F3d 565, 567 (3rd Cir. 1996), upon
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`which the Petitioner relies, the plaintiff “did not request the Clerk of the Court to
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`issue a signed summons with a seal of the court affixed thereto.” By contrast, in
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`the present matter, the court did properly issue a summons, providing personal
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`jurisdiction over the defendant.
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`Moreover, regarding the summons requirement of the Federal Rules of Civil
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`Procedure, “Rule 4 is a flexible rule which principally requires sufficient notice to
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`the party of claims brought against it, and dismissal is not appropriate unless the
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`party has been prejudiced.” Gottfried v. Frankel, 818 F.2d 485, 493 (6th Cir.
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`1987). In Gottfried, a petition under Rule 10(j) of the National Labor Relations
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`Act was served without summons. Id at 492. The Court found “strict adherence to
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`Rule 4 summons specifications is not a requirement for jurisdiction over the party.”
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`Id. at 492-93.
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`Similarly, relying on former Rule 4(h), Sanderford v. Prudential Ins. Co. of
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`Am., 902 F.2d 897, 900 (11th Cir. 1990) held “[w]hen a defect in process is found,
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`Rule 4(h) does not require that the party be served anew as if the first service of
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`process did not exist. Rather, the court may allow amendment of the process to
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`perfect the original process. The date the action was commenced, however, relates
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`back to the date the first process was served.” (emphasis added). Former Rule 4(h)
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`states: “At any time in its discretion and upon such terms as it deems just, the court
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`may allow any process or proof of service thereof to be amended, unless it clearly
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`appears that material prejudice would result to the substantial rights of the party
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`against whom the process issued.” Rule 4(h) was amended into Rule 4(a)(2) in the
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`1993 amendments to the Federal Rules of Civil Procedure. See Rule 4 Advisory
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`Committee Notes regarding subdivision (a). See also 4B Wright & Miller, Federal
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`Practice and Procedure § 1131 (4th ed.) regarding Rule 4: “The most common
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`occasion for amendment is when the plaintiff has made a simple mistake or a
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`technical error that results in a failure to identify the defendant properly, such as
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`when a corporation is not denominated by its registered name or the defendant’s
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`name is misspelled. When the error goes to form rather than substance, as these
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`illustrative defects obviously do, and the proper defendant receives the original
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`process, realizes it is directed at him, and thus is put on notice of the
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`commencement of the action, there is no reason why a United States district court
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`should refuse to permit the amendment of either the process or the return of
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`service.” Accordingly, mere procedural printing error that caused the seal and
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`signature to be missing from the copy of the summons properly served by Mr.
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`Talbot does not render the service ineffective.
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`Last, Petitioner alleges that, because Patent Owner’s litigation counsel did
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`not promptly move for entry of default judgment, Patent Owner’s litigation
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`counsel’s actions are inconsistent with service being made. Patent Owner’s
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`counsel’s choice to work with opposing counsel in a less adversarial manner,
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`however, is not evidence of a lack of service.
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`Thus, the service of Wargamming.net by Mr. Talbot was proper.
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`D. Effective Service on Roman Zanin
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`Patent Owner obtained a signed and sealed pdf electronic copy of a
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`summons for Wargaming Public Company Limited, which became Wargaming
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`Group Limited. This document is also publically available on PACER. See Ex.
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`2026. Therefore, the court also has personal jurisdiction over Wargaming Public
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`Company Limited/ Group Limited. General Counsel for Wargaming Group
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`Limited, Roman Zanin, has admitted that “on or around December 24, 2015,
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`Wargaming Group Limited received by post, in Cyprus, a summons and complaint
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`addressed to Wargaming.net LLP.” Ex. 1011 at 3. Joseph Zito also declares that
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`summons addressed to both Wargaming Public Company Limited and
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`Wargaming.net LLP and the complaint were mailed to Wargaming in Cyprus. Ex.
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`2027. The Supreme Court in Water Splash, Inc. v. Menon, 137 S.Ct. 1504, 1513
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`(2017) held that “in cases governed by the Hague Service Convention, service by
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`mail is permissible if two conditions are met: first, the receiving state has not
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`objected to service by mail; and second, service by mail is authorized under
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`otherwise-applicable law.” Hague Convention Art. 10(a) states: “Provided the
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`State of destination does not object, the present Convention shall not interfere with
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`a) the freedom to send judicial documents, by postal channels, directly to persons
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`abroad.” According to the HCCH’s (Hague Conference on Private International
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`Law’s) website, Cyprus has “no opposition” to Art. 10(a). See Ex. 2025.
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`Therefore, the mailing of a summons and complaint to Wargaming Public
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`Company Limited is effective service on newly named Wargaming Group Limited.
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`Moreover, although Mr. Zanin is General Counsel for Wargaming Group Limited,
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`due to the close relationship between Wargaming Group Limited and
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`Wargaming.net LLP, service received on the parent company should be considered
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`service of the subsidiary. According to public records obtained from i-Cyprus -
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`Cyprus Companies Search, Wargaming.net LLP is a wholly owned subsidiary of
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`Wargaming Group Limited with at least one common director, Victor Kislyi, and
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`Wargaming Group Limited and Wargaming.net LLP and Wargaming Group
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`Limited share the same address in Cyprus. See Ex. 2023 and 2024. It is therefore
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`very clear that these companies are alter-egos of one another and mailing to one
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`company is effectively mailing to the other company, as provided by California
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`and the Ninth Circuit to which the underlying litigation has been transferred. See
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`Automotriz Del Golfo De California S. A. De C. V. v. Resnick, 47 Cal.2d 792, 797
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`(Cal. 1957) regarding the test for whether one company is an alter ego of another
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`company that “(1) that there be such unity of interest and ownership that the
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`separate personalities of the corporation and the individual no longer exist and (2)
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`that, if the acts are treated as those of the corporation alone, an inequitable result
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`will follow” (emphasis added). The mailing of the summons and complaint
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`addressed to Wargaming.net LLP is also effective service on Wargaming.net LLP.
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`Wargaming Group Limited and Wargaming.net LLP are alter egos of one
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`another and service by mail of a complaint addressed to Wargaming.net LLP that
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`is received by Wargaming Group Limited should be considered proper service.
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`III. VOLUNTARY DISMISSAL
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`Petitioner alleges that dismissal of the underlying infringement action
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`against Wargaming.net LLP nullifies the effect of the service of the complaint.
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`Petitioner’s Brief on Service (Paper 24) at 2. However, Patent Owner maintained
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`the lawsuit against parent company Wargaming Group Limited instead of its
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`subsidiary, Wargaming.net LLP. See Ex. 1013, 1026. The threshold issue as to the
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`nullifying effect is whether the dismissal leaves “the parties as though the action
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`had never been brought.” See e.g., Atlanta Gas Light Co. v. Bennett Regulator
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`Guards, Inc., IPR2015-00826, Paper 12 at 13 (PTAB Sept. 1, 2015) (Decision on
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`Institution of Inter Partes Review) and LG Electronics, Inc. v. Mondis Technology
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`Ltd, IPR2015-00937, Paper 8 at 5-6 (PTAB Sept. 17, 2015) (Decision Denying
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`Institution of Inter Partes Review) (Precedential). Because of the substitution of
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`Wargaming Group Limited , the order granting dismissal (Ex. 1026) cannot be
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`considered as having the same effect as a dismissal of a lawsuit without prejudice,
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`which is the circumstance in Petitioner’s cited Oracle Corp. v. Click-to-Call Techs.
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`LP, IPR2013-00312, Paper 52 at 12–13 (PTAB Oct. 28, 2014) (Final Written
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`Decision) (“We have determined that, because this patent infringement suit was
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`dismissed without prejudice, Federal Circuit precedent interprets such a dismissal
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`as leaving the parties in the same legal position as if the underlying complaint had
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`never been served.”). As a result, the dismissal of one party (Wargaming.net LLP)
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`in favor of a related party (Wargaming Group Limited) cannot be considered to
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`preclude the bar under 35 U.S.C. § 315(b).
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`For at least these reasons, the Board should terminate the inter partes review
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`of the ‘243 Patent.
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`Sughrue Mion, PLLC
`CUSTOMER NUMBER: 23373
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`Date: December 1, 2017
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`Respectfully submitted,
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`/John M. Bird/ # 46,027, John M. Bird for
`____________________
`William H. Mandir
`Registration No. 32,156
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the attached PATENT OWNER’S
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`RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED UNDER
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`35 U.S.C. §315(b) was sent via e-mail on December 1, 2017, to the following:
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`Harper Batts (Reg. No. 56,160)
`harper.batts@bakerbotts.com
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`Jeffrey Liang (Reg. No. 69,043)
`jeffrey.liang@bakerbotts.com
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`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: December 1, 2017
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`Respectfully submitted,
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`/John M. Bird/ # 46,027, John M. Bird
`for
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`_____________
`William H. Mandir
`Registration No. 32,156
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`PATENT OWNER’S RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED
`Case IPR2017-01082
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`CERTIFICATE OF COMPLIANCE
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`The undersigned certifies that a copy of the attached PATENT OWNER’S
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`RESPONSE BRIEF ON ISSUE OF WHETHER PETITION IS BARRED UNDER
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`35 U.S.C. §315(b) contains no more than 10 pages and therefore complies with the
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`Board’s page limitation.
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`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: December 1, 2017
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`Respectfully submitted,
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`/John M. Bird/ # 46,027, John M. Bird
`for
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`_____________
`William H. Mandir
`Registration No. 32,156
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