A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019)

By John Isacson

Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a complaint alleging patent infringement.

In GoPro v. 360Heros, the Precedential Opinion Panel (POP) considered a situation where GoPro petitioned for an IPR more than one year after 360Heros filed a counterclaim alleging patent infringement.  Before the district court, GoPro successfully challenged 360Heros’ standing to sue on the basis that 360Heros had not been formally assigned title to the asserted patent by the inventor at the time of filing its counterclaim.  Subsequently, 360Heros did receive an assignment.

GoPro filed its petition more than one year after 360Heros’ counterclaim was served.  360Heros sought to have the IPR barred for failure to comply with 35 USC 315(b), which states:

Patent owner’s action. –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).

The original Board panel instituted GoPro’s IPR and reasoned that the Section 315(b) bar was not triggered because 360Hero’s counterclaim was not filed by the patent owner (the inventor at the time).  360Hero petitioned for a rehearing before the POP.

The POP considered  the “served with a complaint” language of Section 315(b), and determined that GoPro had been served with a complaint by 360Heros notwithstanding their lack of ownership and standing at the time of service.  The service of the complaint was sufficient to start the one year clock, and 360Heros’ lack of a formal assignment was irrelevant to the service of the complaint.  Accordingly, the POP determined that GoPro’s petition was time barred under 315(b) since more than a year passed between the complaint service and the subsequent IPR petition.