Today, the PTAB’s Precedential Opinion Panel issued a precedential decision holding that even a deficient pleading triggers the one-year IPR filing period.  GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38). 

In underlying district court litigation between the parties, GoPro filed a complaint for patent infringement against 360Heros on April 13, 2016.  Paper 38 at 3.  360Heros responded on August 22, 2016, with a counterclaim against GoPro for infringement of U.S. Patent No. 9,152,019.  Id.  As it turned out, however, 360Heros did not have standing to assert the ‘019 patent at that time.  Id.  After the standing issue was remedied, 360Heros filed an action for patent infringement against GoPro on September 13, 2017, asserting the same patent. Id.

GoPro filed its IPR petition on September 17, 2018 (IPR2018-01754).  Id. at 4.  This was less than one year after being served with the complaint in the later case, but more than one year after being served with the initial (defective) counterclaim for infringement.  360Heros opposed institution, arguing that the petition was time-barred under 35 U.S.C. § 315(b) in light of the earlier-filed counterclaim, based on the Federal Circuit’s decision in Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330, 1336 (Fed. Cir. 2018).  Id.  The Board granted institution, however, after concluding that the deficient counterclaim did not trigger the § 315(b) time bar.  Id. at 5.  360Heros then petitioned for rehearing, and the POP has now given relief, granting the request for rehearing and denying the petition.  Id. at 6.

The POP’s precedential opinion answers this question in the affirmative: “Whether 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 reasoned that the statutory language “served with a complaint alleging infringement” in § 315(b) is plain and unambiguous, applying to the counterclaim here without any gloss provided by the title of the statute or its legislative history.  Paper 38 at 8-12.  The POP declined to incorporate a requirement that filing of the complaint must be “proper” (e.g., by one with standing to assert the patent), based on the plain language of the statute, and Click-To-Call‘s statement that one must not “impose additional conditions not present in the statute’s text.”  Paper 38 at 14 (quoting Click-To-Call, 899 F.3d at 1331).

The POP rejected the additional arguments that lack of standing rendered the counterclaim a nullity and failed to give proper notice of the infringement action, Paper 38 at 16-23, and asserted that the POP’s plain-language reading of the statute “promote[d] the efficient and cost-effective administration of inter partes reviews.”  Id. at 23.