In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even if a party serving a district court complaint alleging infringement lacks standing to sue. GoPro, Inc. v. 360Heros, Inc., Case No. IPR2018-01754, Paper No. 38 (PTAB Aug. 23, 2019) (Boalick, CAPJ).
On April 13, 2016, GoPro filed a complaint against 360Heros in the Northern District of California alleging trademark infringement, unfair competition and copyright infringement, and also requested declaratory judgment of non-infringement of a patent owned by 360Heros. On August 22, 2016, 360Heros filed an answer and counterclaim alleging infringement of the same patent. On September 13, 2017, 360Heros filed a complaint against GoPro in the District of Delaware alleging infringement of the same patent at issue in the California case. On September 15, 2017, GoPro filed a motion for summary judgment in the California case alleging that 360Heros did not have standing to sue on its counterclaim of infringement because the listed inventor of the asserted patent did not formally assign the patent until after 360Heros filed its counterclaim. On November 14, 2017, the California court granted GoPro’s motion for summary judgment.
GoPro filed a petition requesting IPR on September 17, 2018, which was less than one year after GoPro was served with 360Heros’s Delaware complaint, but more than one year after GoPro was served with 360Hero’s counterclaim in the California case. In its preliminary response, 360Heros argued the IPR petition was untimely because GoPro was served in the California case more than one year before the filing of the petition. The PTAB rejected 360Heros’s argument, finding that 360Hero did not have standing to file the counterclaim for patent infringement in August 2016, and ownership of a patent at the time of filing a complaint or counterclaim is necessary to start § 315(b)’s time-bar clock. The PTAB thus instituted the IPR proceeding. 360Heros requested rehearing and precedential opinion panel (POP) review of the PTAB’s institution decision.
The specific issue before the POP was “[w]hether the service of a pleading asserting a claim alleging infringement, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the 1 year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” The POP found that service of a pleading asserting a claim of infringement triggers the one-year time period for a petitioner to file a petition, even where the serving party lacks standing to sue or where the pleading is otherwise deficient. Relying on the US Court of Appeals for the Federal Circuit’s 2018 decision in Click-to-Call v. Ingenio (IP Update, Vol. 21, No. 9), the POP found that the words “served with a complaint alleging infringement” in § 315(b) are plain and unambiguous. The POP found that limiting § 315(b) to only complaints filed by a party with standing to sue impermissibly imposes additional conditions not in the text of the statute. The POP rejected GoPro’s reliance on dismissal of the California action, finding that dismissal does not negate the fact that service was made as required under § 315(b).
The POP also rejected GoPro’s argument that because Article III standing is a fundamental jurisdictional requirement that must be satisfied at the time a complaint is filed, a complaint filed by a party without standing is a legal nullity that cannot trigger § 315(b)’s time bar. Relying again on Click-to-Call, the POP found that a party “served with a complaint” remains served with the complaint regardless of whether the serving party lacked standing to sue under Article III or the pleading was otherwise deficient.
Finally, the POP noted that relying on the date of service promotes efficient administration of IPR proceedings. The POP noted that standing challenges often arise well into district court proceedings, and tying IPR proceedings to standing outcomes would hinder the US Patent and Trademark Office’s ability to come to a just, speedy and inexpensive resolution as to the patentability of any claim. The POP thus found that GoPro’s IPR petition was untimely under § 315(b).
Practice Note: The POP noted that it has not encountered a circumstance in which a party serves a complaint in bad faith (e.g., with knowledge that it lacks standing to sue) in an effort to frustrate a petitioner’s ability to file an IPR. The POP noted that if it were to encounter such a bad-faith filing in the future, it may revisit the question of the availability of an equitable tolling of the application of the time bar.