PTAB Holds Service of Deficient Infringement Claim May Start One-Year IPR Filing Period

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 is filed “more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.”

In summary, in April 2016, GoPro filed suit in California against 360Heros, which included a declaratory judgment of noninfringement of 360Heros’ ‘019 patent. 360Heros served a patent infringement counterclaim on the ‘019 patent in August 2016 in the California suit. In November 2017, the California court granted summary judgment in GoPro’s favor on the ‘019 patent due to lack of standing based on an inventor’s late assignment of the patent in October 2016, after 360Heros filed its counterclaim.

In the meantime, 360Heros had also filed a complaint against GoPro in Delaware asserting the ‘019 patent, which it served on GoPro on September 18, 2017. GoPro filed an IPR petition within one year of service of the Delaware complaint on September 17, 2018, and the PTAB instituted.

On rehearing, the POP ruled that service of the California counterclaim in August 2016 started the one-year statutory clock to file an IPR, even though the party who asserted the counterclaim lacked standing and the pleading was defective. GoPro’s IPR, filed on September 17, 2018, was therefore held to be untimely.

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 GoPro was served with a counterclaim in the California case, albeit a defective one, more than one year before it filed its 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 pleading is ultimately determined to be defective.

The decision is available at