PTAB Precedent: Infringement Claim Filed before Patentee Owned the Patent Still Triggers 315(b) Timeline

by Dennis Crouch

Gopro v. 360heros, IPR2018-01754, 2019 WL 3992792 (PTAB Aug. 23, 2019) (U.S. patent 9,152,019)

In a new precedential decision, the PTAB Percedential Opinion Panel (POP) has reversed a prior institution decision in this case — holding “that service of a pleading asserting a claim alleging infringement triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b), even where the serving party lacks standing to sue or whether the pleading is otherwise deficient.”

The POP here consisted of Director Andrei Iancu; Commissioner Andrew Hirshfeld, and Chief Judge Scott Boalick. Robert Greenspoon represented the patent owner 360Heroes.

The basic facts: 360Heroes infringement claim was filed and served more than 1-year before GoPro’s IPR. However, the claim had a major defect — 360Heroes did not actually own the patent at the time. The district court eventually dismissed the case for lack of standing.

Holding: Following the Federal Circuit’s lead in Click-to-Call, the POP found Section 315(b) “plain and unambiguous,” finding that GoPro’s petition was time-barred and denying institution.

[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.” Quoting Click-to-Call. . . .

We agree with, and follow, the Federal Circuit’s decision that “served with a complaint alleging infringement” in § 315(b) is plain and unambiguous, and means “presented with a complaint or delivered a complaint in a manner prescribed by law.” Id. And, given this clear articulation of “served with a complaint,” we see no gap in the statute’s language to fill or ambiguity to resolve. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). Thus, we determine that, if service of a pleading asserting infringement occurred “in a manner prescribed by law,” then the one-year time period for a petitioner to file a petition under § 315(b) is triggered on the date of service. The one-year time period is triggered regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.

Petition Denied.

After fixing the formalities of its assignment, 360Heroes refiled its infringement lawsuit. D.Del Case No. 1:17-cv-1302.  That case was stayed pending outcome of this IPR.


  1. The perhaps most important note here is that the Supreme Court will decide the Click-to-Call case next term on the question of whether the time-bar applies to complaints dismissed without prejudice. That decision will likely impact this case as well.
  2. Although the assignment to 360Heroes had not been formalized, that gap truly was a formality. Mike Kintner is listed inventor and thus original owner. Kintner is also CEO, founder, and sole-shareholder of 360Heroes.
  3. Language of the statute: “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
  4. I simplified this for the brief above, but GoPro was the one that actually started the litigation with a TM/Copyright claim against 360Heroes as well as a declaratory judgment action of non-infringement of the ‘019 patent. 360Heroes then responded with the patent infringement counterclaim.  The PTAB did not directly address wither the declaratory judgment action should also trigger the time-bar under 315(b).

25 thoughts on “PTAB Precedent: Infringement Claim Filed before Patentee Owned the Patent Still Triggers 315(b) Timeline

  1. 6

    It doesn’t seem that the Click-to-Call decision gave the panel any leeway here, but as others have noted, the potential implications are crazy. At the time the patent claim was filed, 360Hero was legally a COMPLETE STRANGER to the patent, having no more title to it than a random homeless guy on a street in San Francisco. The lack of an assignment cannot be fixed after the Complaint is filed, either; the case is a nullity and needs to be dismissed and refiled after the assignment is executed.

    It seems that the panel could have distinguished Click-to-Call as a case in which a complaint was served in an action in which the machinery of the court was properly invoked. But in this case, it was akin to dropping off the complaint with a Sbarro at the “Food Court” of your local mall, since they had about the same about of jurisdiction as the federal courts (i.e. zero). And if you apply the statute literally as just saying the service of any “complaint” triggers the one year bar, why couldn’t I just draft up a document on a dirty McDonalds napkin that I call a “Complaint for Patent Infringement,” that I never file with any court, hire a process server to serve this napkin on the other side, and cause the statute of limitations to run?

    1. 6.2

      How would the defendant know that they were accused of infringing a patent if the complaint was dropped off at Sbarro?


          I get it. It would amount to giving actual notice to the infringer. So if it is apparent they are infringing an issued patent they would be able to stop. Or else they could file an IPR within one year.

          It would be better to limit it to one year from issuance. Publication and issuance of the patent would be notice.

          Under the GoPro case the inventor still has to fight off serial infringers including shell companies for the entire term of the patent.

  2. 5

    So, with no standing needed, then anyone–literally anyone–you or me or that woman behind the tree–can sue party X for infringement of Patent No. 123. And that will start the time period for Party X to file an IPR on Patent No. 123. Is that correct? If so, that option seems to raise a lot of untoward possibilities … . I can see an industry of trolls building up right now.

    1. 5.1

      No, the one year time bar of § 315(b) only applies to IPR petitioners or their real party in interest who have been personally sued for infringement of that patent.

    2. 5.2

      New revenue stream for the San Francisco homeless: File pro se complaints alleging infringement, serve, and then dismiss.

      1. 5.2.1

        Humorous, but woe to those found to be colluding to put that in effect (including paying that revenue stream).

    3. 5.3

      Woa! Now hold on just one fine minute there . . . why; wouldn’t that be akin to disparate infringers signing up with entities formed for the sole purpose of the entities filing IPRs against the owners of the patents the infringers are illegally using?

      Meh; like that would ever happen . . .

      1. 5.3.1

        goose, meet gander…

        (But there’s an even more obvious comparison: the fact that to start the IPR process, there is ZERO Article III standing required. None at all. Yes, that self-same “house-challenged” person in San Francisco has the same standing status as is being complained about.

        [that “hmmm” emoticon would be great here]

  3. 4

    Speaking of IPR’s, do we have a case yet asserting ‘administrative estoppel’ at the PTAB over an issue adjudicated by an Art III court? You know, like Tax Court (and every other admin court) does in tax cases?

    1. 4.1

      We argued it. My first patent survived preliminary injunction and Fed Circuit appeal. It went twice through the PTAB. The broader child patents had been through jury trial and final judgment.

      The second time through PTAB we only argued estoppel.

      The panel was astounded that we refused to argue the merits. They thought we should just keep proving patentability ad infinitum to their personal satisfaction.

      After almost 4 years of “review” the infringer surrendered and the PTAB dismissed the case without ruling. They could not stand to follow the law and relinquish their power over me.

      There really is no practical estoppel. Your patents will be challenged as long as it is profitable.

      The gold plated patents are the ones that cost more to IPR than they are worth.

      If the inventor can outspend the infringer and his friends, then you can call that estoppel.

      1. 4.1.2

        Were these different alleged infringers each time? If so, it does not seen reasonable that the second, third, or forth alleged infringer should be bound by the first infringer’s arguments.


          Same infringer. Not alleged. Proven.

          That said, I disagree with the idea that every infringer should get to petition the agency to correct it’s alleged mistake. There is no right to challenge a patent at the PTAB. There is a right to prove invalidity in a court of law. That should be good enough for each and every infringer.

  4. 3

    Well didn’t the serial infringers create that DC front group “Internet Freedom Foundation” to initiate IPR contests (and make dumb first Amendment arguments to SCOTUS) when you know – one of it’s charitable contributors – has a statutory bar?

  5. 2

    Dennis one clarifying point about SCOTUS review in Click-to-Call. That petition presented two questions.

    1. Whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that § 315(b)’s time bar did not apply.
    2. Whether 35 U.S.C. § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice.

    The merits holding of Click-to-Call will not be reviewed, per the Court’s docket only accepting question 1:

    Jun 24 2019 Petition GRANTED limited to Question 1 presented by the petition.

    1. 2.1

      Thanks for clarifying that the Sup. Ct. accepted issue in Click-to-Call will not control here.
      Also, was the intended reason for the § 315(b) one year from service of complaint time bar for filing an IPR petition to: (1) start the clock running from when a petitioner was first put on notice of being threatened with infringement suit on that patent, and/or relatedly (2) limit IPR filings to well before normal D.C. trial dates to avoid unnecessary litigation [in combination with the IPR statutory one year completion]?
      If so, why should defects in original complaints that do not impact either (1) or (2) prevent them from triggering the § 315(b) bar?

      1. 2.1.1

        Also, being“served with a complaint alleging infringement” in § 315(b) would seem to exclude being served with a complaint alleging NON infringement, as in the prior DJ complaint here.


          The language of statute doesn’t cover a DJ action for non-infringement, but one could argue that under principles of equity, by seeking DJ, the DJ plaintiff has started the clock on itself to request an IPR at the PTAB.


            A little bit of devil’s advocate, but is not the point of a plaintiff (potential infringer) seeking a DJ is that a statement is being made that the plaintiff believes that any (merely purported) reach of any patent does not reach that person, so there would expressly be no “equitable” stake in trying to show that patent to be improvidently granted.

            “It doesn’t reach me” is simply a too far cry away from “I have to spend money and time showing an item that does not reach me to have been not properly granted in the first place.”


            One could also argue for interpretation that since a counterclaim infringement suit is an almost universal response to a DJ suit for non-infringement it amounts to almost the same thing.

            However the fact that § 315(b) does specifically discuss prior DJs for invalidity, but not for non-infringement, can be strongly argued as showing the latter was not intended to affect § 315(b).

  6. 1

    The Director/Board can deny institution for pretty much any reason whatsoever as institution is merely discretionary. For example, they could turn down a case because the petition was filed on a Wednesday. In any event, the decision to institute is not reviewable. So this precedential decision is merely a way for the board to wrap it’s own hands and disallow institution under certain circumstances. Institution is still only optional.

    1. 1.1

      You raise a great point. Even if the PTAB refused to institute for the “wrong” reason, it could still refuse to institute for some other reason that is not arbitrary or capricious.

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