The PTAB has provided guidance on the circumstances that give rise to the time bar under 35 U.S.C. § 315(b) in AIA trial proceedings. In GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential), the Board determined that the service of a complaint triggers the time bar under § 315(b), regardless of whether the patent owner lacked standing to sue or the pleading was otherwise deficient.
In April of 2016, GoPro filed a declaratory judgment action of non-infringement of the ’019 patent against 360Heros in the Northern District of California. In August of 2016, 360Heros filed a counterclaim of patent infringement. GoPro moved for summary judgment, alleging that 360Heros did not own the patent at the time the counterclaim was filed and, therefore, lacked standing to sue. The District Court granted GoPro’s motion.
GoPro subsequently filed an IPR petition challenging the ’019 patent in September of 2018, i.e., more than one year after GoPro was served with 360Heros’s counterclaim. 360Heros argued that GoPro’s petition was time-barred because the petition was filed more than one year after service of the counterclaim.
In its opinion, the PTAB’s Precedential Opinion Panel held that the counterclaim was effective for purposes of triggering the time bar under § 315(b) despite 360Heros’s lack of standing to file the counterclaim:
[S]ervice 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), even where the serving party lacks standing to sue or where the pleading is otherwise deficient.
The Board pointed out that in Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330, 1336 (Fed. Cir. 2018) (en banc in part), the Federal Circuit determined that the language at issue in § 315(b) is clear and unambiguous:
Although the Federal Circuit in Click-to-Call did not specifically address the narrow statutory interpretation question presented in this case—namely, whether “complaint” in § 315(b) includes a complaint filed by a party otherwise lacking standing—we conclude that the statutory construction analysis and holding in Click-to-Call regarding § 315(b) are persuasive and applicable here.
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We agree with, and follow, the Federal Circuit’s decision that “served with a complaint alleging infringement” in § 315(b) is plain and unambiguous, and means “presented with a complaint or delivered a complaint in a manner prescribed by law.” [Citation omitted.] And, given this clear articulation of “served with a complaint,” we see no gap in the statute’s language to fill or ambiguity to resolve. [Citation omitted.] Thus, we determine that, if service of a pleading asserting infringement occurred “in a manner prescribed by law,” then the one-year time period for a petitioner to file a petition under § 315(b) is triggered on the date of service. The one-year time period is triggered regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.
In the Board’s view, limiting the application of § 315(b)’s time bar to require a “proper” complaint “would require us to impose additional conditions onto the statute—something the Federal Circuit has already cautioned us against in Click-To-Call.” The Board did not limit application of the time bar in such a manner, and therefore denied the petition. The Board also noted that standing challenges often arise well into the course of the average patent-infringement litigation, such as after the closing of fact discovery, and tying IPR proceedings to standing outcomes “would hinder the Office’s ability to come to a just, speedy, and inexpensive resolution as to the patentability of any claim.”
Parties contemplating parallel litigation at the PTAB and district court may wish to consider the potential impact of GoPro on the stance of their proceedings.