“The Precedential Opinion Panel explained that GoPro’s arguments would require terms not present in the statute to be read into the statute.”
Earlier today, the Precedential Opinion Panel (POP) of the United States Patent and Trademark Office (USPTO) overruled the institution decision of the Patent Trial and Appeal Board (PTAB) in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, which related to U.S. Patent No. 9,152,019.
GoPro, the petitioner, challenged certain patent claims from the ‘019 patent. 360Heros sought to prevent the institution of the inter partes review (IPR) proceeding because GoPro had waited more than one year after the filing and service of a counterclaim for patent infringement filed by 360Heros against GoPro. Despite the fact that GoPro had waited more than one year to file its IPR challenge after having been sued for patent infringement, the PTAB instituted. 360Heros filed a petition for consideration by the POP.
On April 13, 2016, GoPro filed a complaint against 360Heros in the Northern District of California alleging trademark infringement, unfair competition and copyright infringement, and further requested a declaratory judgment of non-infringement of the ‘019 patent. On August 22, 2016, 360Heros filed an answer and counterclaim alleging infringement of the ‘019 patent. Unfortunately, 360Heros CEO and named inventor – Mike Kintner – did not formally assign the ‘019 patent to 360Heros until October 21, 2016, which was two months after 360Heros had filed its counterclaim. Thus, on November 14, 2017, GoPro prevailed on a motion for summary judgment based on the fact that 360Heros lacked standing to sue for patent infringement.
The relevant statute is 35 U.S.C. 315(b), which states: “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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”
GoPro argued that the critical term in Section 315(b) was “served with a complaint alleging infringement”, which they claimed was ambiguous. GoPro argued it was unclear whether that meant a “proper federal pleading” or any federal pleading, which required a review of the legislative history. GoPro, not surprisingly, believed the legislative history was on their side.
360Heros and several of the amici argued 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 Section 315(b) was not ambiguous, and therefore it was improper to look to the legislative history.
The POP began by disagreeing with GoPro that Section 315(b) is ambiguous, and finding Click-To-Call controlling. The POP explained that “the text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.” GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, at 9, citing Click-To-Call at 1332.
Substantively, with respect to the determination that any federal pleading filed will trigger the running of the time-bar clock of Section 315(b), the POP explained that GoPro’s arguments would require terms not present in the statute to be read into the statute (i.e., “complaint” to be read as “proper complaint”). Further, the POP explained that GoPro failed to demonstrate that a complaint filed without proper Article III standing is considered a legal nullity for the purpose of Section 315(b)’s time bar.
Stay tuned for more analysis and commentary on this important precedential decision from the POP, which will now be mandatory for all PTAB panels to follow when making institution decisions.
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