Precedential Opinion Panel Reverses Decision on 315(b)

Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The exception explained that the trigger for 315(b) — service of the complaint — was ineffective if the true patent owner was not responsible for the filing.

At the time, I questioned whether this exception made sense given that exclusive licensees commonly assert patents. And, the statutory language and legislative history did not seem to support such a narrow interpretation. The Precedential Opinion Panel (POP) decided the issue last week in GoPro, Inc. v. 360Heros, Inc., (IPR2018-01754).

The POP agreed.

The POP concluded that the service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b), regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient. (here)

The decision emphasized that the Federal Circuit found no ambiguity in the text of 315(b) (when earlier reviewed in the Click-to-Call dispute). And, that statute headings could not be used to rewrite unambiguous text. As to the theoretical danger of bad faith complaints to insulate against PTAB challenges (as unlikely as that may be), the POP noted that such behaviors could be addressed with an equitable tolling of the statute.

While Patent Owners may find the decision encouraging, in reality, this is a rare scenario.