In GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38), the Precedential Opinion Panel (“POP”) of the PTAB held that a deficiently pleaded counterclaim where standing was lacking still triggered the one-year IPR filing period under 35 U.S.C. § 315(b). That provision bars institution of an IPR if the petition if filed “more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.”
The POP stated that they “consider only the date on which a complaint was served in accordance with the law, without the added condition of whether that complaint was a proper complaint—e.g., filed by a party with standing and not otherwise containing a defect.” Here, there was no dispute that the petitioner, GoPro, was served with a counterclaim, albeit a defective one, in its earlier declaratory judgment action more than one year before it filed its IPR Petition.
If you are sued for patent infringement, under current PTAB precedent, you should look to the service date of any claim or counterclaim of patent infringement and plan on filing an IPR within one year of that date even if the claim or counterclaim is ultimately determined to be defective.