By Tom Engellenner
The “Precedential Opinion Panel” of the Patent Trial and Appeal Board (PTAB) ruled earlier this month that even a faulty complaint asserting patent infringement can start the clock running on a petitioner’s one-year time period for administratively challenging the validity of the patent under the America Invents Act (AIA).  See, GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754 POP decision.  According to the precedential panel:

“The service of a pleading asserting a claim alleging infringement, including where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time period for a petitioner to file a petition.”

This decision should not be a surprise since it comes on the heels of an appellate decision by the Court of Appeals for the Federal Circuit last year that held a complaint asserting patent infringement – even if later voluntarily dismissed – triggers the one-year window for filing an AIA petition at the U.S. Patent Office.  The Federal Circuit case (Click-To-Call  Technologies, LP v. Ingenio Inc.(Fed. Cir. 15-1242, August 25, 2019) was a 10-2 en banc decision.

The GoPro case arose out of a declaratory judgment action brought in the Northern District of California by GoPro in 2016, seeking a declaration of invalidity of U.S. Patent 9,152,019.  The defendant, 360Heroes, responded with a counterclaim for patent infringement on August 22, 2016.  However, at the time the counterclaim was asserted, the inventor (and CEO of 360Heros) had not yet assigned the patent to 360Heros.  The counterclaim in California suit was eventually dismissed for lack of standing on the part of 360Heros since it did not own the patent at the time that the counterclaim was asserted. 360Heros corrected the assignment issue and the served a proper complaint for patent infringement against GoPro in the District for Delaware on September 18, 2017.

GoPro filed a petition at the U.S. Patent and Trademark Office (USPTO) for inter partesreview (IPR) of the ‘019 patent on September 17, 2018 –  less than one year after GoPro was served with 360Heros’s complaint in the Delaware case, but more than one year after GoPro was served with 360Heros’s counterclaim in the California case.

Section 315(b) of the America Invents Act (35 U.S.C. § 315(b)) precludes petitioners from challenging a patent unless the petition is filed within one year of the service of a complaint upon the petitioner alleging infringement of the patent. An initial PTAB panel assigned the case ruled that GoPro’s petition was not time-barred under section 315 (b) and instituted a trial because the original complaint (360Heros’s counterclaim in this instance) was fatally defective.

However, the patent owner, 360Heros, then filed a request for rehearing anda request for review by the newly created “Precedential Opinion Panel” (POP).  Both requests were granted and the POP reversed the trial institution decision of the original panel, finding the language of the statute was unambiguous:

“[T]he plain language of ‘served with a complaint’ ‘does not contain any exceptions or exemptions,’ ‘[n]or does it contain any indication that the application of § 315(b) is subject to any subsequent act or ruling.’”

Precedential Opinion Panels were introduced in 2018 by newly appointed USPTO Director Iancu.   They replace the much-criticized “panel packing” approach of his predecessor – where the Chief Judge of the PTAB could arbitrarily add additional judges to panels in the midst of hearing cases.

Under this new procedure (2018-09-21_Rule-Creating-Precedential-Opinion-Panels_(SOP-2)), a party may request POP review following a decision that it believes is contrary to law.  According to the USPTO, POPs will serve two primary functions: 1) they may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and 2) they may assist the Director in determining whether a decision previously issued by the PTAB should be designated as precedential or informative.  This is the second POP decision rendered so far.  The first decision, rendered in March, 2019, dealt with joinder issues in AIA trials.