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Irwin IP Case Of The Week

In the Right Place at the Wrong Time

PTAB stands firm on § 315(b) one-year bar even when pleading is deficient

GoPro, Inc. v. 360Heros, Inc, IPR2018-01754, Paper No. 38, 2019 WL 3992792 (P.T.A.B. Aug. 23, 2019).

Barry Irwin & Margaret "Peggy" Herrmann

Recently, the Precedential Opinion Panel (“POP”) of the Patent Trial and Appeal Board (“PTAB”) overturned a previous PTAB panel’s decision to institute inter partes review (“IPR”) and held that “service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition [for IPR] under 35 U.S.C. § 315(b), even where the serving party lacks standing to sue or where the pleading is otherwise deficient.”[1]

Practitioners should pay close attention to decisions issued by the POP, a panel which considers issues “of exceptional importance involving policy or procedure” and sets forth binding agency authority.[2] Understanding the policy and procedural requirements is crucial to success at the PTAB before even addressing the substantive issues, as demonstrated by the instant case.

As seen in the timeline below, Petitioner, GoPro, Inc. (“GoPro”), filed a declaratory judgment (“DJ”) action for non-infringement in California on U.S. Patent No. 9,152,019 (the “ʻ019 patent).[3]  In response, 360Heros, Inc. (“360Heros”), filed a compulsory counterclaim for infringement in California but also filed an infringement complaint in Delaware.  The Northern District of California ultimately found that 360Heros did not have standing because it did not own the ʻ019 patent at the time of filing its counterclaim.

GoPro files complaint in N.D. Cal requesting declaratory judgment of non-infringement of ʻ019 patent. 360Heros files and serves compulsory counterclaim alleging infringement of ʻ019 patent. Inventor assigns ʻ019 patent to 360Heros. 360Heros files infringement complaint in D. Del. 360Heros serves D. Del. complaint on GoPro. GoPro’s motion for summary judgment for lack of standing is granted in N.D Cal. case. GoPro files Petition for IPR on ʻ019 patent.

GoPro filed its Petition for IPR on the ʻ019 patent within one year of service of the Delaware complaint but not within one year of the service of the California counterclaim.  The POP found that GoPro’s failure to timely file the IPR petition, as required by § 315(b), was fatal and denied institution of IPR.  Specifically, the Board, citing the Federal Circuit’s Click-To-Call Techs., LP v. Ingenio, Inc.,[4] held that the language of § 315(b) is plain and unambiguous, so the Board rejected GoPro’s arguments to: 1) look to other language in the statute and to legislative history, or 2) impose additional conditions not present in the statute. The Board further emphasized that § 315(b)’s bright-line rule of a one-year time bar from date of service of the pleading promotes efficiency for the administration of IPRs, but the Board also noted the possibility that equitable tolling of the time bar may be revisited if a party serves a complaint in bad faith.

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Contact the Authors

Name: Barry Irwin Phone: (312) 667-6081 Email: birwin@irwinip.com
Name: Margaret "Peggy" Herrmann Phone: (312) 667-6283 Email: mherrmann@irwinip.com

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[1] GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper No. 38, at *6 (P.T.A.B Aug. 23, 2019) (emphasis added). [2] PTAB Standard Operating Procedure 2 (Revision 10), at *1, available at https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf. [3] It is worth noting that GoPro’s DJ action asserted only non-infringement, not invalidity. Had GoPro included a DJ count of invalidity, GoPro would have been barred from seeking an IPR under § 315(a). [4] 899 F.3d 1321 (Fed. Cir. 2018) (en banc in part).