GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38
The AIA provides: “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b).
In this precedential decision, the PTAB clarified that the AIA § 315(b) one-year time bar is triggered after the service of a complaint, “regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.”
GoPro, Inc. filed a complaint against 360Heroes on April 13, 2016 in the Northern District of California alleging trademark infringement, unfair competition, and declaratory judgment of non-infringement. 360Heroes counterclaimed on August 22, 2016. On September 13, 2017, 360Heroes filed an infringement complaint against GoPro in the District of Delaware which was served later that week. On November 14, 2017, NDCA granted summary judgment to GoPro for lack of standing because the CEO of 360Heroes did not formally assign the patent-in-suit to 360Heroes until after the counterclaim had been filed. GoPro then filed its IPR petition on September 17, 2018 – more than one year after GoPro was served with 360Heroes counterclaim but less than one year after GoPro was served with 360Heroes complaint.
The Precedential Opinion Panel considered 360Heroes counterclaim to be a “complaint” under § 315(b) and held that GoPro’s petition was time-barred because the counterclaim triggered the one-year time period to file. The panel based its findings on a plain text reading of the statute, reasoning that “[f]or purposes of conferring notice, it does not matter whether the complaint was proper.” This decision overruled an earlier PTAB ruling that an infringement complaint did not start the clock where the petitioner did not own the patent when it filed the complaint. The panel explained that its decision promotes efficiency and cost-effectiveness of IPRs as well as resulting in “an administrable, clear rule.” But it proposed a possible exception in a footnote: “[i]f we were to encounter such a bad-faith filing in the future, then we may revisit the question of the availability of an equitable tolling of the application of the time bar.”
AIA § 315(b) one-year time bar triggered after the service of a complaint, “regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.” All that matters is the date of service of the complaint with a potential exception for bad faith.