USPTO Precedential Opinion Panel Delivers Key Ruling for Inventors

By Gene Quinn
August 23, 2019

“The Precedential Opinion Panel explained that GoPro’s arguments would require terms not present in the statute to be read into the statute.”

https://depositphotos.com/86267474/stock-photo-precedent-concept.htmlEarlier 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.

Relevant Facts

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 Statute

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 Argument

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.

POP Ruling

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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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments. Join the discussion.

  1. Nobody of consequence August 23, 2019 1:40 pm

    Independent inventors should jointly create a list of every patent they think is or may in the future be infringed by Apple, Google, Facebook, etc. Create a shell company in the Virgin Islands – no need to assign the patents to the shell. Have the shell company file and serve a complaint alleging infringement of 10,000+ patents and dismiss the case the next day. Wait a year before filing suit on any of the listed patents.

    Might be the best way to defang PTAB for independent inventors.

  2. Pro Say August 23, 2019 3:12 pm

    ” … which will now be mandatory for all PTAB panels to follow when making institution decisions.”

    While it would be great for American innovation should it come to pass (thank you Director Iancu and Office colleagues), given PTAB panels who are still refusing to follow their own agency’s (also mandatory) 2019 Revised Patent Subject Matter Eligibility Guidance, I suppose we’ll all just have to wait and see …

  3. Pro Say August 23, 2019 5:14 pm

    Creative idea there Nobody @1.

    Yet, does the footnote on p.23 make this risky?

    7 “We have not encountered a circumstance in which a party serves a complaint in bad faith, e.g., with knowledge that it lacks standing to pursue its claims of patent infringement or the intent to frustrate a petitioner’s ability to file an IPR. If 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. That is not the case here, and we have no occasion to address the issue at this time.”

  4. Night Writer August 24, 2019 9:38 am

    @1 Nobody

    As a practical matter the attorney probably couldn’t do that without facing sanctions.

  5. Night Writer August 24, 2019 5:12 pm

    It seems weird there is the POP that acts as an appellant court. Just seems more hokey than ever.

  6. Night Writer August 25, 2019 11:28 am

    Just to follow up on this more thought needs to be given to this POP. The problem with this structure is that it takes even more away from the patent judge than a properly structured appellant court. The patent judge is not going to want an appeal to the POP with a reversal as the judges job performance is rated by this same group of people. Etc.

    It does not sound like a real judicial structure to me but rather a way to keep employees inline. A judge is going to err on the side of not provoking the POP, as an example.

    Anyway, I am not going to go through all the problems, but I think any decent lawyer can see that this structure just adds to the notion that the PTAB is administrative and not judicial.

  7. TFCFM August 26, 2019 9:46 am

    One more very relevant fact that I think is necessary to understand the impact of the decision:

    GoPro filed its petition for IPR on September 17, 2018 — MORE than one year after 360Heros’ patent-infringement-counterclaims that were held to lack standing, but LESS than one year after a ‘proper’ infringement allegation was lodged.

    The POP held, as GQ relates, that the fact that the counterclaims lacked standing did not ‘matter’ in relation to timing of the IPR petition.

    More broadly stated, the holding appears to be that any complaint that is filed (proper or improper) places a potential IPR challenger “on notice” of the patent and triggers the one-year countdown during which an IPR must be filed — that is, that it is the “notice” that matters, not the details or fate of the papers providing such notice (so long as those details amount to “served with a complaint alleging infringement”).

  8. Nobody of consequence August 26, 2019 7:50 pm

    I’m being a bit tongue in cheek here, but there’s no reason an attorney would need to file the case. Recruit a homeless guy in San Francisco and pay him $500 to file it pro se, and another $500 to dismiss the complaint the next day after it gets served.

    Congress created the loophole and it’s up to Congress to close it.

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