October 15, 2019
35 U.S.C. § 315(b) states that “[a]n 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 … is served with a complaint alleging infringement of the patent.” In a recent precedential decision, GoPro, Inc. v. 360Heros, Inc., No. IPR2018-01754 (P.T.A.B. Aug. 23, 2019), the Patent Trial and Appeal Board (“PTAB”) held that § 315(b)’s one-year time bar is triggered by the service of process of a claim for infringement even if the party alleging infringement had no standing to bring such a claim.
The facts were relatively straightforward. GoPro, Inc. (“GoPro”) filed a complaint for declaratory judgment of non-infringement of a patent. 360Heros, Inc. (“360Heros”) responded with a counterclaim for infringement of the patent. The district court eventually granted GoPro’s motion for summary judgment for lack of standing as to 360Heros’ counterclaim for infringement. The court held that, at the time 360Heros filed its counterclaim alleging infringement, the 360Heros inventor had not yet assigned his patent to 360Heros.
After the grant of summary judgment in GoPro’s favor on standing, and while an additional case between 360Heros and GoPro was pending, GoPro brought an Inter Partes Review (“IPR”) challenging the patent. GoPro filed its petition over two years after 360Heros had served its counterclaim for infringement. GoPro argued that its petition was timely because – given 360Hero’s lack of standing at the time of filing – the 360Heros counterclaim should not have triggered the one-year time bar. According to GoPro, “because standing is a fundamental requirement that must be satisfied at the time of filing, a complaint filed by a party without standing is a ‘nullity’ that cannot trigger the time bar of § 315(b).”
The PTAB’s Precedential Opinion Panel, which included Director Iancu, disagreed. It held that GoPro’s petition was too late. The Panel reasoned that the language of the statute, i.e., “served with a complaint alleging infringement,” is “plain and unambiguous” and includes complaints filed and served by parties that did not have standing. According to the Panel, “[t]he one-year time period is triggered regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.” The PTAB relied primarily on the Federal Circuit’s decision in Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330, 1336 (Fed. Cir. 2018) (en banc in part).
GoPro v. 360Heros is a good reminder that a party contemplating an IPR challenge should carefully assess the deadline by which it must file its petition.
Author: Serge Krimnus