GoPro, Inc. v. 360Heros, Inc.

When a party is served, in a manner prescribed by law, with a pleading (complaint or counterclaim) asserting a claim alleging infringement of the patent, the one-year period in 35 U.S.C. § 315(b) begins on the date of service, and the Board cannot institute inter partes review on a petition filed more than 1 year later. This is so even where the serving party lacked standing to sue or the pleading was otherwise deficient, because "served with a complaint alleging infringement" is plain and unambiguous. The decision follows the Federal Circuit's Click-To-Call and Bennett reasoning and departs from the Board's institution reasoning in this case, which relied on a line of PTAB cases (e.g., SlingTV v. Realtime Adaptive Streaming) requiring that the serving party own the patent for the § 315(b) clock to start. For petitioners, a counterclaim or complaint served by a party that lacked standing, such as one that had not yet taken an assignment, still starts the one-year clock, and a later standing dismissal does not stop it. Petitioners cannot rely on the statute's title, legislative history, or a "nullity" theory to avoid the bar. For patent owners, a timely-served but defective pleading can bar a later petition, and a petition filed within one year of a different, later-served complaint does not cure the bar. The Board relied on Click-To-Call (Fed. Cir. 2018, en banc in part), Bennett Regulator Guards v. Atlanta Gas Light, and SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), and distinguished Hamilton Beach. LEGAL TEST OR STANDARD: The Board treated the statute as plain and unambiguous and applied no multi-factor test. Under 35 U.S.C. § 315(b), review may not be instituted if the petition is filed more than 1 year after the date on which the petitioner, real party in interest, or privy is served with a complaint alleging infringement of the patent. If service of a pleading asserting infringement occurred "in a manner prescribed by law," the one-year period is triggered on the date of service, regardless of the serving party's standing or other pleading deficiencies. The Board will not read in conditions such as "by the patent owner" or "proper." TRIGGERING FACTS: GoPro sued 360Heros in N.D. Cal. for trademark and related claims and sought a declaratory judgment of non-infringement of the '019 patent. 360Heros served an infringement counterclaim on August 22, 2016, before it had received a formal assignment of the patent (October 21, 2016). The district court later granted summary judgment of no standing. GoPro filed its petition on September 17, 2018, within one year of service of a separate Delaware complaint but more than one year after the counterclaim was served. The counterclaim counted as a "complaint," GoPro conceded this, and service was undisputed. Improper service (IpDatatel) or a mere proposed amended complaint (Amneal, Aristocrat) would not trigger the bar. KEY QUOTE: "The one-year time period is triggered regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient." (Paper 38, p. 10) PRIOR PRECEDENT AFFECTED: Follows Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in part), and Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir. 2018). Finds Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328 (Fed. Cir. 2018), inapposite. Rejects the line of PTAB cases such as SlingTV, L.L.C. v. Realtime Adaptive Streaming LLC, Case IPR2018-01331 (PTAB Jan. 31, 2019) (Paper 9), and the Board's own Institution Decision (Paper 15). Cites Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15) (informative), for the point that a proposed amended complaint does not trigger the bar. PRACTICE TIP: Before filing a petition, calculate the one-year period from the earliest date any complaint or infringement counterclaim was properly served on the petitioner, real party in interest, or privy, even if the serving party lacked standing. Do not assume a later standing dismissal or a later complaint resets the clock. Patent owners should check service dates in every related action and raise any earlier service in the preliminary response.