GoPro panel says lack of standing ‘doesn’t overrule’ PTAB time bar
The division of the US Patent Trial and Appeal Board that issues precedential rulings has said that infringement claims that lack standing are not an exception to the so-called one-year‘ time bar’ on inter partes review (IPR) proceedings.
The PTAB’s Precedential Opinion Panel (POP) ruled last Friday, August 23 that GoPro’s institution of IPR proceedings against 360Heros was invalid under title 35 of the US Code § 315(b), relating to patent law.
GoPro, which manufactures action cameras, petitioned for IPR of a patent owned by 360Heroes (US number 9,152,019) in September 2018. The patent, covering a 360-degree camera mount, was published in 2015.
The IPR petition came against the backdrop of extensive litigation between the two parties.
GoPro sued 360Heros in April 2016 at the US District Court for the Northern District of California, alleging trademark infringement, unfair competition, and copyright infringement.
GoPro also sought a declaration that it had not infringed the ‘019 patent. In August 2016, 360Heros responded with a counterclaim alleging that GoPro had infringed its patent.
According to US law, IPR proceedings can not be instituted if the petition is filed more than a year after the petitioner has been served with a complaint alleging infringement of the patent.
GoPro argued that this so-called ‘time bar’ did not apply to its petition, filed just over two years after 360’s counterclaim, as 360Heros lacked standing to bring a claim of patent infringement.
According to GoPro, 360Heros did not own the ‘019 patent at the time of serving the countercomplaint, and therefore lacked standing to sue.
The Northern California district court agreed, granting GoPro’s request for summary judgment for lack of standing in November 2017.
The PTAB initially sided with GoPro, granting its request for IPR proceedings of the patent, which began in April 2019.
360Heros, however, requested that the POP review this decision. 360Heros argued that the statute did not contain any exemption for lack of standing to the ‘time bar’ on IPR proceedings.
Last Friday, the POP agreed, finding no exemption in the statute for infringement claims filed without standing.
“In our view, tying IPR proceedings to standing outcomes would hinder the [US Patent and Trademark Office’s] ability to come to a just, speedy, and inexpensive resolution as to the patentability of any claim,” the POP said.
According to the POP, just because a complaint lacked standing did not nullify it entirely.
“We follow the Federal Circuit’s reasoning that a party ‘served with a complaint’ ‘remains served with the complaint,’ regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient,” the ruling said.
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