GoPro, Inc. v. 360Heros, Inc.

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Trials@uspto.gov 	Paper No. 38
Tel: 571-272-7822 	Entered: August 23, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
GOPRO, INC.,
Petitioner,
v.
360HEROS, INC.,
Patent Owner.
Case IPR2018-01754
Patent 9,152,019 B2
Before ANDREI IANCU, Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office,
ANDREW HIRSHFELD, Commissioner for Patents, and SCOTT R. BOALICK,
Chief Administrative Patent Judge.
BOALICK, Chief Administrative Patent Judge.
DECISION
Granting Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)
Denying Institution of Inter Partes Review
35 U.S.C. § 315(b)

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I. INTRODUCTION
GoPro, Inc. (“Petitioner” or “GoPro”) filed a Petition, requesting
institution of an inter partes review of claims 1–6, 15, 16, 19, 22–25, 30, 34,
and 37 of U.S. Patent No. 9,152,019 B2 (Ex. 1001, “the ’019 patent”).
Paper 1 (“Pet.”). 360Heros, Inc. (“Patent Owner” or “360Heros”) filed a
Preliminary Response. Paper 9 (“Prelim. Resp.”). The Board instituted trial
on April 3, 2019. Paper 15 (“Institution Decision” or “Inst. Dec.”). In so
doing, the Board rejected Patent Owner’s argument that Petitioner was time-
barred from filing its Petition under 35 U.S.C. § 315(b). Id. at 6–11.
Patent Owner requested rehearing and Precedential Opinion Panel
(“POP”) review of the Board’s decision. Paper 19; Ex. 3002. The POP
ordered a review on rehearing to address the following issue (“the POP
issue”):
Whether the service of a pleading asserting a claim alleging
infringement, where the serving party lacks standing to sue or the
pleading is otherwise deficient, triggers the 1 year time period
for a petitioner to file a petition under 35 U.S.C. § 315(b).
Paper 23, 2 (citing Standard Operating Procedure 2 (“SOP 2”1), 2–3).
Petitioner and Patent Owner each filed a brief addressing the POP
issue. Paper 26 (“PO Br.”); Paper 27 (“Pet. Br.”). Each party also filed a
response. Paper 33 (“PO Resp.”); Paper 34 (“Pet. Resp.”). Several amici
curiae—MindGeek USA Inc., SpencePC, Joshua J. Malone, and The Naples
Roundtable—filed briefs addressing the POP issue. Paper 28 (“MindGeek
Br.”); Paper 29 (“SpencePC Br.”); Paper 30 (“Malone Br.”); Paper 31
1 Available at https://go.usa.gov/xPMqx.
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(“Naples Br.”). An oral hearing was held on June 25, 2019. A transcript of
the hearing is included in the record. Paper 37 (“Tr.”).
II. BACKGROUND
A. 	Relevant Facts
The facts relevant to the issue at hand are undisputed. See generally
PO Br.; Pet. Br. On April 13, 2016, GoPro filed a complaint against
360Heros in the Northern District of California, designated Case No. 3:16-
cv-1944 (“the California case”). Inst. Dec. 7. The complaint alleged
trademark infringement, unfair competition and copyright infringement, and
it requested a declaratory judgment of non-infringement of the ’019 patent.
On August 22, 2016, 360Heros filed an answer and a counterclaim alleging
infringement of the ’019 patent. Id. The counterclaim was served on GoPro
on the same day. Id. at 8. GoPro filed an answer to the counterclaim on
September 15, 2016. Id. at 7.
On September 13, 2017, while the California case was pending,
360Heros filed a complaint against GoPro alleging infringement of the ’019
patent in the District of Delaware, designated Case No. 1:17-cv-1302 (“the
Delaware case”). Id. The complaint in the Delaware case was served on
GoPro on September 18, 2017. Id.
Turning back to the California case, on September 15, 2017, GoPro
filed a motion for summary judgment alleging, among other things, that
360Heros lacked standing to sue on its counterclaim of infringement. Id.
Specifically, GoPro alleged that Mike Kintner, the CEO of 360Heros and
listed inventor of the ’019 patent, did not formally assign the ’019 patent to
360Heros until October 21, 2016, after 360Heros had filed its counterclaim.
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Id.; see also Ex. 1031, 2 (describing Mr. Kintner as the “sole shareholder
and officer” of 360Heros), 4 (describing assignment from Mr. Kintner to
360Heros). Thus, GoPro alleged, 360Heros did not own the ’019 patent at
the time of filing the counterclaim and, therefore, lacked standing to sue.
On November 14, 2017, the District Court in the California case
granted GoPro’s motion for summary judgment for lack of standing. See
Ex. 1031, 13 (Order Granting Plaintiff’s Summary Judgment Motion on
Standing). GoPro filed its Petition requesting an inter partes review of the
’019 patent on September 17, 2018, which was less than one year after
GoPro was served with 360Heros’s complaint in the Delaware case, but
more than one year after GoPro was served with 360Heros’s counterclaim in
the California case.
B. 	The Board’s Decision Instituting Review
In its Preliminary Response, 360Heros argued that the Petition was
untimely under § 315(b) because GoPro was served in the California case
with a counterclaim alleging infringement of the ’019 patent on August 22,
2016, more than one year before the filing date of the Petition. Prelim.
Resp. 18–25. In particular, 360Heros argued that the Federal Circuit’s
decision in Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1330,
1336 (Fed. Cir. 2018) (en banc in part), controlled the outcome of this case.
Prelim. Resp. 18–19. Although Click-To-Call “specifically addressed a
complaint later voluntarily dismissed without prejudice,” 360Heros argued,
“its holding that the plain and unambiguous language of Section 315(b)
provides no exceptions for events occurring after the service of the
complaint applies here, regardless of any other effect a dismissal might
have.” Id. at 19.
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In its Institution Decision, the Board held that the filing of the
counterclaim in the California case did not trigger the § 315(b) time bar.
Inst. Dec. 6–11. First, the Board held that the Federal Circuit’s decision in
Click-To-Call did not apply in this case, because the relevant issue—“i.e.,
whether a complaint (or counterclaim) filed without standing triggers
§ 315(b)’s time bar—was ‘not present, or considered, in Click-to-Call.’” Id.
at 8–9 (quoting Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d
1328, 1337 (Fed. Cir. 2018)). Second, the Board found that 360Heros
conceded that “there was no formal assignment agreement signed” at the
time that it filed its counterclaim against GoPro in the California case. Id. at
9–10. And, noting that “[s]tanding . . . must exist at the time of the filing of
a complaint and cannot be cured retroactively,” the Board “acknowledge[d]
the California Court’s determination that 360Heros did not have standing to
file a counterclaim for patent infringement against GoPro in August 2016.”
Id. Third, the Board found that 360Heros “largely ignore[d] a line of PTAB
cases in which ownership of the patent at issue at the time of the filing of a
complaint (or counterclaim) for patent infringement was determined to be
necessary to start the § 315(b) time bar clock running.” Id. at 10–11 (citing,
e.g., SlingTV, L.L.C. v. Realtime Adaptive Streaming LLC, Case IPR2018-
01331, slip op. at 5–7 (PTAB Jan. 31, 2019) (Paper 9)).
For these reasons, the Board held “that the counterclaim in the
California [c]ase was not filed by patentee,” and concluded that “the
§ 315(b) time bar was not triggered by the filing of the counterclaim in the
California [c]ase.” Id. at 11.
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III. ANALYSIS
For the reasons discussed below, we conclude 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 where the pleading is otherwise
deficient.2 Because the Petition in this case was filed more than one year
after Petitioner was served with a pleading3 alleging infringement in the
California case, the Petition is time-barred under § 315(b). Accordingly,
Patent Owner’s Request for Rehearing is granted, and the Petition requesting
an inter partes review of the ’019 patent is denied.
A. 	The Petition in This Case Is Time-Barred Under 35 U.S.C.
§ 315(b)
Section 315(b) provides:
(b) Patent Owner’s Action.–An inter partes review may not be
instituted if the petition requesting the proceeding is filed more
2 Petitioner suggests that we should not consider “the question of the impact
of additional deficiencies” as presented in the POP issue because that
question is “not ripe.” Pet. Br. 1 n.1. The ripeness doctrine, however, does
not apply to agency actions. See, e.g., AVX Corp. v. Presidio Components,
Inc., 923 F.3d 1357, 1361 (Fed. Cir. 2019) (noting that “Article III
requirements do not apply to administrative agencies”); Nat’l Park Hosp.
Ass’n v. Dep’t of Interior, 538 U.S. 803, 807 (2003) (stating that ripeness is
a justiciability doctrine designed to prevent courts from exercising
jurisdiction).
3 As noted, 360Heros’s pleading alleging infringement of the patent was in
the form of a counterclaim. At the oral hearing, Petitioner conceded that a
“counterclaim” is a “complaint” under § 315(b). See Tr. 23:20–24:4 (“We
believe that the statute—the word ‘complaint’ needs to be interpreted to
include counterclaim.”). We use the terms “counterclaim” and “complaint”
interchangeably throughout this Decision in reference to a pleading asserting
a claim alleging infringement.
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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. The time limitation set forth
in the preceding sentence shall not apply to a request for joinder
under subsection (c).
35 U.S.C. § 315(b) (bolding omitted).
GoPro argues that the operative language at issue here—i.e., “served
with a complaint alleging infringement”—is ambiguous as to whether the
complaint must be a “proper federal pleading.” Pet. Br. 11–14; see also
MindGeek Br. 6–10 (agreeing with GoPro’s arguments regarding § 315(b)).
Thus, GoPro argues, we may look to § 315(b)’s title, “Patent Owner’s
Action,” and to its legislative history, both of which confirm that the
§ 315(b) time bar only applies when a party with standing files the
complaint. Pet. Br. 11–14. Relying on Hamilton Beach, GoPro also argues
that Click-To-Call did not address standing, and thus, has no effect on the
outcome of this case. Pet. Br. 3–4. GoPro argues that, because standing is a
fundamental requirement that must be satisfied at the time of filing, a
complaint filed by a party without standing is a “nullity” that cannot trigger
the time bar of § 315(b). Pet. Br. 4–11. Finally, GoPro argues that
360Heros’s reading of § 315(b) could result in “potential misuse of the time
bar by third parties” “without any rights to enforce the patent.” Id. at 14–15;
see also MindGeek Br. 10 (arguing that an expansive reading of § 315(b)
“would permit a patent owner to shield itself from IPR review if another
entity files and serves a complaint alleging infringement, even if meritless”).
360Heros and several amici argue that the Federal Circuit’s reasoning
in Click-To-Call controls the outcome in this case. PO Br. 1–6; see also
Naples Br. 2–4; Malone Br. 4; SpencePC Br. 6–7. Specifically, 360Heros
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argues that, in Click-To-Call, the court held that the language of § 315(b) is
plain and unambiguous, and therefore, it is improper to look to the title and
legislative history as interpretation tools. PO Br. 5–6, 8–12; see also Naples
Br. 4–5 (agreeing with 360Heros); SpencePC Br. 6–7 (same). 360Heros
also argues that dismissal for lack of standing is a type of “subsequent act or
ruling” that the Click-To-Call court called “irrelevant” to the application of
§ 315(b)’s time bar. PO Br. 2. 360Heros argues that any concerns about
gamesmanship are policy matters for Congress to decide. Id. at 4. One
amicus adds that enforcing the time bar regardless of standing is good
policy, because a bright-line rule provides clarity and predictability as to
when the one-year time clock will begin based on formal service. Naples
Br. 5–6, 9–10. Another amicus adds that standing disputes involve complex
factual and legal issues that are best left to the courts. Malone Br. 1–5.
1. “Served with a complaint alleging infringement” in
§ 315(b) is plain and unambiguous
At the outset, we disagree with the argument that “served with a
complaint alleging infringement” is ambiguous. See Pet. Br. 11–14 (arguing
that § 315(b) is open to competing interpretations); see also MindGeek
Br. 6–9 (arguing that § 315(b) is not “unambiguous” for all issues). In
Click-To-Call, the Federal Circuit addressed the question of “whether the
Board erred in interpreting the phrase ‘served with a complaint alleging
infringement of [a] patent’ recited in § 315(b).” 899 F.3d at 1328 (quoting
§ 315(b)). After employing traditional tools of statutory construction, the
court held that the language of § 315(b) is “plain and unambiguous.” Id. at
1329–32. Although the Federal Circuit in Click-to-Call did not specifically
address the narrow statutory interpretation question presented in this case—
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namely, whether “complaint” in § 315(b) includes a complaint filed by a
party otherwise lacking standing—we conclude that the statutory
construction analysis and holding in Click-to-Call regarding § 315(b) are
persuasive and applicable here.
The court started with the words of the statute itself. Id. at 1330. The
court observed that the 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.” Id. Next, the court looked to the ordinary and common meanings of
“served” and “complaint,” and found that those meanings “confirm that the
plain meaning of the phrase ‘served with a complaint’ is ‘presented with a
complaint’ or ‘delivered a complaint’ in a manner prescribed by law.” Id. at
1330.
The court then turned to the legislative history of § 315(b) and found
that it “further supports the understanding that its time bar concerns only the
date on which the complaint was formally served.” Id. at 1331–32. In
particular, the court reasoned that “Congress chose the date of service, as
opposed to some other event, as the trigger for § 315(b)’s time bar because
service of a complaint is the seminal notice-conferring event in a district
court action.” Id. at 1332. The court concluded that “the text of § 315(b)
clearly and unmistakably considers only the date on which the petitioner, its
privy, or a real party in interest was properly served with a complaint.” Id.
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. at 1330. And, given this
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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, 1355 (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.
Given that the statute is plain and unambiguous, we may not look to
the title or legislative history of § 315(b) to change the plain meaning of that
statute, contrary to Petitioner’s arguments. See Brotherhood of R.R.
Trainmen v. Baltimore & Ohio R. Co., 331 U.S. 519, 528–29 (1947) (“[T]he
title of a statute and the heading of a section cannot limit the plain meaning
of the text. For interpretative purposes, they are of use only when they shed
light on some ambiguous word or phrase[,] . . . [b]ut they cannot undo or
limit that which the text makes plain.” (citations omitted)); see also Food
Mktg. Inst. v. Argus Leader Media, 139 S. Ct. 2356, 2364 (2019) (“Even
those of us who sometimes consult legislative history will never allow it to
be used to muddy the meaning of clear statutory language.” (quotation
omitted)).
For example, Petitioner argues that § 315(b)’s title—“Patent Owner’s
Action”—“suggest[s] that only service of a patent owner’s complaint
triggers the one-year bar.” Pet. Br. 12 (quotation omitted). But “statutory
titles and section headings are tools available for the resolution of a doubt
about the meaning of a statute.” Fla. Dep’t of Revenue v. Piccadilly
Cafeterias, Inc., 554 U.S. 33, 47 (2008) (quotation omitted) (emphasis
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added). And here, as discussed above, the Federal Circuit found no doubt in
the meaning of “served with a complaint.” See Click-To-Call, 899 F.3d at
1332. Moreover, the subchapter heading standing alone “cannot substitute
for the operative text of the statute” itself. Fla. Dep’t of Revenue, 544 U.S.
at 47; see also Pa. Dep’t of Corrs. v. Yeskey, 524 U.S. 206, 212 (1998)
(“[T]he title of a statute . . . cannot limit the plain meaning of the text.”);
Trainmen, 331 U.S. at 528–29.
Petitioner also argues that § 315(b)’s legislative history shows that
Congress only intended for the one-year clock to begin after service by
“those with lawful rights to enforce patents.” Pet. Br. 13 (citing 157 Cong.
Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl)). But it is well
settled that we “do not resort to legislative history to cloud a statutory text
that is clear.” Ratzlaf v. United States, 510 U.S. 135, 147–48 (1994); see
also Food Mktg. Inst., 139 S. Ct. at 2364; BedRoc Ltd., LLC v. United
States, 541 U.S. 176, 183 (2004) (explaining that “there is no occasion to
resort to legislative history” where the statutory text is clear); United States
v. Fisher, 6 U.S. (2 Cranch) 358, 399 (1805) (“Where a law is plain and
unambiguous, whether it be expressed in general or limited terms, the
legislature should be intended to mean what they have plainly expressed,
and consequently no room is left for construction.”). Thus, this argument is
also unpersuasive.
Amicus MindGeek argues that the legislative history is fair game
because “Click-To-Call analyzed both the text and legislative history to
support its narrow holding.” MindGeek Br. 10 (citing Click-To-Call, 899
F.3d at 1330–1332). We disagree. Click-To-Call unequivocally held that
the text of section 315(b) was “plain and unambiguous.” 899 F.3d at 1330
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(“Plain and unambiguous language”); id. at 1332 (ending Chevron inquiry at
step one based on lack of any ambiguity). Click-To-Call’s discussion of the
legislative history merely demonstrated that the legislative history was
consistent with the plain and unambiguous text of the statute. Id.
at 1331-32.
Because we agree with the Federal Circuit’s determination that the
statute itself is plain and unambiguous, we do not look to the legislative
history for guidance on interpreting § 315(b). Even if we agreed with
MindGeek that we should consider the legislative history, that history cannot
alter the plain meaning of § 315(b), as we explain above.
2. Petitioner’s construction would require grafting terms into
the plain language of § 315(b)
We also reject Petitioner’s argument that only a “proper” complaint—
for example, a complaint filed by a party with standing—counts for
§ 315(b)’s time bar. See, e.g., Pet. Br. 13 (arguing that the “one-year time
bar concerns a proper complaint by the patent owner” (emphasis added)). In
our view, limiting the application of § 315(b)’s time bar in this manner
would require us to impose additional conditions onto the statute—
something the Federal Circuit has already cautioned us against in
Click-To-Call.
In Click-To-Call, the Federal Circuit stated that “adopting the Board’s
preferred construction of the phrase ‘served with a complaint’ in § 315(b)
would impose additional conditions not present in the statute’s text.” 899
F.3d at 1331 (quotation omitted). Specifically, the court found that the
Board’s construction in that case would have read into the statute “unless the
action in which the complaint was served was later dismissed without
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prejudice.” Id. As the court explained, “Congress could have chosen to
include a variation of the phrase” in § 315(b), “but it did not do so.” Id.
Similarly here, Petitioner’s construction of § 315(b) would require us
to graft such language as “by the patent owner” or “proper” (or variations
thereof) into the text of § 315(b). See, e.g., Pet. Br. 4 (arguing that “there
was no proper ‘complaint’” in this case because “360Heros held no
enforceable rights in the ’019 [p]atent at the time of the 2016
counterclaim”); Pet. Resp. 5 (arguing that “a non-patent owner’s pleading
without standing at the time of filing is not a ‘complaint’ under [§] 315(b)”).
As to a requirement that the complaint be served “by the patent
owner,” the words “Patent Owner” appear in the title of § 315(b), but not in
its text. Because Congress chose not to include “Patent Owner” (or similar
language) in the text, we will not read it into the statute. See, e.g., Bilski v.
Kappos, 561 U.S. 593, 602 (2010) (“This Court has more than once
cautioned that courts should not read into the patent laws limitations and
conditions which the legislature has not expressed.” (quotation omitted)).
As to whether the complaint must be “proper,” we find the Federal
Circuit’s statements about the scope of § 315(b) instructive. Specifically, in
Click-To-Call, the court explained that § 315(b) “does not contain any
exceptions or exemptions for complaints served in civil actions that are
subsequently dismissed, with or without prejudice.” 899 F.3d at 1330. And,
in Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311,
1315 (Fed. Cir. 2018), the court explained that § 315(b) “includes no
exception for an involuntarily dismissed complaint.” We see no reason to
distinguish a complaint dismissed for lack of standing, as the one at issue
here, from the complaint in Bennett, which was dismissed for lack of
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personal jurisdiction. See Bennett Regulator Guards, Inc. v. MRC Glob.
Inc., 2013 WL 3365193, at *1 (N.D. Ohio July 3, 2013).
Indeed, a dismissal does not negate the fact that service was made or
that the service conferred notice of the district court action. For example,
the Board has determined that a complaint dismissed without prejudice for
lack of personal jurisdiction triggered § 315(b)’s time bar. Infiltrator Water
Techs., LLC v. Presby Patent Trust, Case IPR2018-00224, slip op. at 7
(PTAB Oct. 1, 2018) (Paper 18). On the other hand, as the Board has
recognized, a complaint improperly served does not trigger the § 315(b) time
bar. See IpDatatel, LLC v. ICN Acquisition, LLC, Case IPR2018-01823, slip
op. at 10–18 (PTAB Apr. 17, 2019) (Paper 17) (interpreting “served” in
§ 315(b) to require compliance with Rule 4 of the Federal Rules of Civil
Procedure (“FRCP”)). Nor does delivery of a proposed amended complaint
amount to “service with a complaint” that triggers the time bar. See Amneal
Pharms., LLC v. Endo Pharms. Inc., Case IPR2014-00360, slip op. at 4–10
(PTAB June 27, 2014) (Paper 15) (informative); Aristocrat Techs., Inc. v.
High 5 Games, LLC, Case IPR2018-00529, slip op. at 6–11 (PTAB July 29,
2019) (Paper 26).
At bottom, Click-To-Call is unequivocal that “the text of § 315(b)
clearly and unmistakably considers only the date on which the petitioner, its
privy, or a real party in interest was properly served with a complaint.” 899
F.3d at 1332 (emphases added). Click-To-Call is also unequivocal that,
where a statute is unambiguous, it is improper to “impose additional
conditions not present in the statute’s text.” Id. at 1331 (quotation omitted).
“Where a statute’s language carries a plain meaning, the duty of an
administrative agency is to follow its commands as written . . . .” SAS Inst.,
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138 S. Ct. at 1355. Thus, we 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. And here, there is no dispute
that Petitioner was served with a counterclaim in the California case more
than one year before it filed its Petition. Moreover, as Click-To-Call
explains, “§ 315(b)’s time bar is implicated once a party receives notice” of
the civil action. 899 F.3d at 1330. For purposes of conferring notice, it does
not matter whether the complaint was proper.
3. Petitioner’s reliance on Hamilton Beach is not persuasive
Relying on Hamilton Beach, Petitioner argues that the court’s holding
in Click-To-Call is inapposite because Click-To-Call does not address a
complaint served by a party without standing. See Pet. Br. 3–4; see also
MindGeek Br. 2–3, 7–8 (same). And amicus MindGeek, for example, points
to the Federal Circuit’s decision in Hamilton Beach as evidence that Click-
To-Call “did not decide all issues involving § 315(b), including the present
issue before the POP.” MindGeek Br. 7.
The Federal Circuit’s decision in Hamilton Beach arose from an
appeal from a final decision in an inter partes review upholding the
patentability of a challenged claim. 908 F.3d at 1330. In that case, the
patent owner had filed suit against the petitioner for patent infringement
more than a year before petitioner brought its petition. But that suit was
voluntarily dismissed after the patent owner discovered that it lacked
standing when the complaint was filed. Id. at 1336–37. The Board rejected
the patent owner’s argument that the petition was time barred under § 315(b)
for essentially the same reasons that Petitioner advances here: that the patent
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owner lacked standing to sue because the complaint “was not a proper
federal pleading,” and, thus, did not trigger the one-year time bar under
§ 315(b). Id. at 1337.
On appeal to the Federal Circuit, the patent owner in Hamilton Beach
argued that, in light of Click-To-Call, the Board erred in instituting trial
because the § 315(b) time bar applied. Id. at 1337. While acknowledging
that voluntary dismissal alone was not enough to avoid application of
§ 315(b), the court noted that the fact that patent owner lacked standing to
file its complaint “involves a circumstance not present, or considered, in
Click-To-Call.” Id. Nevertheless, the court declined to resolve the § 315(b)
dispute, because the patent owner had failed to cross-appeal that issue. Id.
We agree with Petitioner that Click-To-Call does not address the
precise question at issue here: whether a complaint filed by a party lacking
standing triggers the one-year time bar of § 315(b). We further acknowledge
that Hamilton Beach at least suggests that the question remains an open one.
But our decision in this proceeding is a straightforward application of Click-
To-Call and Bennett, and Hamilton Beach is inapposite.
B. 	That Article III Standing is Determined as of the Moment of
Filing Does Not Lead to a Different Conclusion
Petitioner argues that, because Article III standing is a fundamental,
jurisdictional requirement that must be satisfied at the moment a complaint
is filed, a complaint filed by a party without standing is a legal “nullity” that
cannot trigger § 315(b)’s time bar. Pet. Br. 4–11. In particular, Petitioner
argues that “long standing federal law” treats such pleadings as if they had
never been filed. Pet. Resp. 1. Petitioner argues that “[t]he same should
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apply here,” because, “[i]n the eyes of the law, nothing happened in 2016”
that could have triggered § 315(b)’s time bar. Id.
1. Article III standing
“Standing is a constitutional requirement pursuant to Article III and it
is a threshold jurisdictional issue.” Abraxis Bioscience, Inc. v. Navinta LLC,
625 F.3d 1359, 1363 (Fed. Cir. 2010) (citing Lujan v. Defenders of Wildlife,
504 U.S. 555, 560-61 (1992)). Article III standing, as Petitioner correctly
argues, must exist as of the time a complaint is filed. See Friends of the
Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167, 189 (2000)
(describing standing as “[t]he requisite personal interest that must exist at the
commencement of the litigation”). “Thus, ‘if the original plaintiff lacked
Article III initial standing, the suit must be dismissed, and the jurisdictional
defect cannot be cured’ after the inception of the lawsuit.” Abraxis, 625
F.3d at 1364 (quoting Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402
F.3d 1198, 1203 (Fed. Cir. 2005)). Moreover, Article III standing “must be
extant at all stages of review, not merely at the time the complaint is filed.”
Arizonans for Official English v. Arizona, 520 U.S. 43, 67 (1997) (quotation
omitted).
2. Petitioner fails to show persuasively that a complaint filed
by a party without Article III standing is a legal “nullity”
for the purpose of § 315(b)’s time bar
To begin, we observe that accepting Petitioner’s argument—that a
complaint served by a party without standing at the time of filing is a legal
nullity—would require us to read some ambiguity into the term “complaint”
such that the absence of a proper complaint creates a nullity that would be
treated as if the complaint never existed. Pet. Br. 4–11; Pet. Resp. 1. For
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the reasons discussed above, this we decline to do. In any event, Petitioner
does not persuade us that “long standing federal law” treats these types of
complaints as if they never existed. Id.; Pet. Resp. 1. The Federal Circuit
explained in Click-To-Call that a “background legal principle”—such as that
alleged by Petitioner here—“must both be firmly established and
unequivocal before it can justify ignoring the plain text of the statute.” 899
F.3d at 1335. Petitioner fails in showing both.
Petitioner cites to Steel Co. v. Citizens for a Better Environment, 523
U.S. 83 (1998), for the proposition that “[w]hen a plaintiff fails to establish
standing in a complaint, the lawsuit never should have existed, and ‘the
complaint [must] be dismissed.’” Pet. Br. 5 (quoting Steel Co., 523 U.S. at
94). But Steel Co. speaks to the requirement of the courts to ensure their
own jurisdiction under Article III “[o]n every writ of error or appeal” as “the
first and fundamental question.” 523 U.S. at 94 (quotation omitted). Steel
Co. does not, as Petitioner implies, suggest that once jurisdiction ceases to
exist, the complaint itself never existed. Instead, Steel Co. rejects the
practice of “hypothetical jurisdiction,” under which a court assumes it has
jurisdiction over a claim and then proceeds to adjudicate the claim on the
merits. Id. at 94–95. Even if Petitioner is correct that a court cannot decide
the merits of a case once the court determines that it lacks jurisdiction (see,
e.g., Pet. Resp. 6), we are not persuaded that the holding in Steel Co.
requires us to treat the complaint as if it never existed for the purpose of
§ 315(b).
Petitioner also directs us to Cortlandt St. Recovery Corp. v. Hellas
Telecommunications, S.a.r.l, 790 F.3d 411 (2d Cir. 2015), which states that
“in the ‘absence of a plaintiff with standing, this lawsuit was a nullity.’” Pet.
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Br. 9 (quoting Cortlandt, 790 F.3d at 423). In Cortlandt, the Second Circuit
addressed the issue of whether a district court abused its discretion by
refusing to let the plaintiff “cure” its lack of Article III standing by joining
another party under FRCP Rule 17(a)(3).4 The district court had determined
that the plaintiff lacked Article III standing because the plaintiff held less
than the entire interest on subordinated notes, and, after refusing the
plaintiff’s request to join the owner of the notes as a real party in interest
under Rule 17(a)(3), dismissed the case without prejudice. Cortlandt, 790
F.3d at 420–21. The Second Circuit affirmed, holding that, because plaintiff
lacked Article III standing, “there was no valid lawsuit pending before the
district court in which to permit an amended complaint.” Id. at 422.
As it did with Steel Co., Petitioner relies on Cortlandt for the
proposition that a lawsuit filed without standing is a “nullity” for all
purposes. Pet. Br. 9. But Petitioner’s brief does not provide the entire
statement from the court: “In other words, in the absence of a plaintiff with
standing, this lawsuit was a nullity, and there was therefore no lawsuit
pending for the real party in interest to ‘ratify, join, or be substituted into’
under Rule 17(a)(3) or otherwise.” Compare Pet. Br. 9 (placing a period
mark after “nullity”), with Cortlandt, 790 F.3d at 423 (showing the full
sentence above (emphasis added to omitted language)).
After considering the court’s entire statement in context, the Second
Circuit’s decision cabins the “nullity” effect to a plaintiff’s later ability to
4 Rule 17(a) requires that a plaintiff is a real party in interest, but Rule
17(a)(3) prohibits a court from dismissing an action “until, after an
objection, a reasonable time has been allowed for the real party in interests
to ratify, join, or be substituted into the action.” Fed. R. Civ. P. 17(a)(3).
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add a party under Rule 17(a)(3) to remedy the standing deficiency.
Cortlandt, 790 F.3d at 423. Thus, Cortlandt does not stand for a general
legal principle that a lawsuit filed without Article III standing is necessarily
a “nullity” for all purposes.
The Federal Circuit explained in Click-To-Call that reliance on
authorities “concern[ing] fundamentally different contexts”—as Petitioner
has done here—are generally unhelpful for determining the application of an
administrative time bar under § 315(b). 899 F.3d at 1333. Indeed, we see
little distinction between Petitioner’s argument that service of a complaint
by a party without standing renders the complaint a legal nullity, and the
argument—rejected in Click-To-Call—that service of a complaint can be
nullified by a subsequent dismissal without prejudice. Id. at 1336.5
And, as the Federal Circuit further explained in Click-To-Call, a
general legal principle that lawsuits may be a “nullity” under federal law for
all purposes “is anything but unequivocal.” Id. at 1335 (stating that “for
many other purposes, the dismissed action continues to have legal effect”).
For example, dismissed lawsuits may still give rise to Rule 11 sanctions, as
5 Petitioner also cites to Harmon v. Sadjadi, 273 Va. 184, 195 (Va. 2007),
for its statement that “when a party without standing brings a legal action,
the action so instituted is, in effect, a legal nullity.” Pet. Br. 9. Harmon,
however, is a decision from the Virginia Supreme Court relating to the
application of a statute of limitations for redress of a personal injury under
Virginia code. 273 Va. at 186–87. Because this case involves a
“fundamentally different context[]”—as the Federal Circuit used that phrase
in Click-To-Call—it can “shed no light on whether service of a complaint
can be nullified” in the context of this case. 899 F.3d at 1333. Thus, we are
not persuaded by Petitioner’s argument that Harmon stands for “a well-
settled premise of federal law.”
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Petitioner admits. See Pet. Resp. 3 (citing Clark v. The Walt Disney Co.,
748 F. Supp. 2d 792, 802 (S.D. Ohio 2010) (sanctioning plaintiff for failing
to join all necessary parties)); see also Click-To-Call, 899 F.3d at 1335
(citing Wright & Miller, Federal Prac. & Proc. Civ. §§ 1336, 2367). As
another example, “the filing of a patent infringement complaint, even if later
voluntarily dismissed, can play a role in proving the defendant’s knowledge
of the patent if charged with willful infringement.” Click-To-Call, 899 F.3d
at 1335 (citing TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295,
1300 (Fed. Cir. 2016)).
For these reasons, we reject Petitioner’s argument that a complaint
filed by a party without standing is treated as a nullity for all purposes,
including for the purpose of applying § 315(b)’s time bar. 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. See Click-To-Call,
899 F.3d at 1336 (internal quotation marks omitted). And, “[t]his remains
true even if that action becomes a ‘nullity’ for other purposes and even if
such service becomes legally irrelevant in a subsequent court action.” Id.
3. Petitioner’s notice concerns are not persuasive
Petitioner argues that the notice function of § 315(b) is not fulfilled if
the party filing the complaint lacks standing. See Pet. Br. 15. Petitioner’s
argument is unpersuasive. GoPro misidentified the patent owner in its initial
declaratory judgment complaint.6 There is no dispute that, in response to
6 The fact that GoPro filed a claim in its initial complaint seeking a
declaratory judgment that it did not infringe the ’019 patent casts doubt on
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GoPro’s declaratory judgment claim of non-infringement, 360Heros
understood that it was obligated to file, and did file, its compulsory
counterclaim of patent infringement. See, e.g., Polymer Indus. Prod. Co. v.
Bridgestone/Firestone, Inc., 347 F.3d 935, 938 (Fed. Cir. 2003) (stating that
FRCP 13(a) “makes an infringement counterclaim to a declaratory judgment
action for non[-]infringement compulsory”). And, once served, GoPro
understood that it was obligated to answer, and did answer, that
counterclaim under FRCP 12(a)(1)(B).
As the Federal Circuit explained in Click-To-Call, Black’s Law
Dictionary defines “complaint” as “[t]he initial pleading that starts a civil
action and states the basis for the plaintiff’s claim, and the demand for
relief.” 899 F.3d at 1330 (quoting BLACK ’ S LAW DICTIONARY 1491 (9th ed.
2009)). The Board has further stated that, for the purpose of § 315(b), “a
counterclaim alleging infringement of a patent is ‘a complaint alleging
infringement of the patent’ within the meaning of” that statute. St. Jude
Med., Cardiology Div., Inc. v. Volcano Corp., Case IPR2013-00258, slip op.
at 7 (PTAB Oct. 16, 2013) (Paper 29) (quoting § 315(b)).
Under these circumstances, therefore, Petitioner clearly “receive[d]
notice through official delivery of a complaint in a civil action,”
notwithstanding that GoPro had sued the wrong party and 360Heros lacked
Article III standing to serve the counterclaim. See Click-To-Call, 899 F.3d
at 1330. Thus, we have no reason—particularly in this case—to undermine
any argument that it lacked notice about potential disputes involving that
patent.
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the plain and unambiguous meaning of “served with a complaint” in §
315(b) in response to Petitioner’s notice concerns.7
C. 	Relying on the Date of Service Promotes the Efficient
Administration of Inter Partes Reviews
Finally, we note that our reading of § 315(b) promotes the efficient
and cost-effective administration of inter partes reviews. Click-To-Call
makes clear that § 315(b)’s “time bar concerns only the date on which the
complaint was formally served.” 899 F.3d at 1331. That date of service is a
“real world fact” that—as amicus Naples points out and we agree—is easily
obtainable from “publicly available information (i.e., a summons, a waiver
of service of summons, or a counterclaim).” Naples Br. 5–6. Moreover, we
note that standing challenges often arise well into the course of the average
patent-infringement litigation, such as after the closing of fact discovery. Id.
at 7–8. In our view, tying inter partes review proceedings to standing
outcomes would hinder the Office’s ability to come to a just, speedy, and
inexpensive resolution as to the patentability of any claim. To be clear, we
do not rely on efficiency concerns to construe § 315(b), but in our judgment
this reading results in an administrable, clear rule.
7 We have not encountered a circumstance in which a party serves a
complaint in bad faith, e.g., with knowledge that it lacks standing to pursue
its claims of patent infringement or the intent to frustrate a petitioner’s
ability to file an IPR. If we were to encounter such a bad-faith filing in the
future, then we may revisit the question of the availability of an equitable
tolling of the application of the time bar. That is not the case here, and we
have no occasion to address the issue at this time.
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IV. CONCLUSION
The service of a pleading asserting a claim alleging infringement,
including where the serving party lacks standing to sue or the pleading is
otherwise deficient, triggers the one-year time period for a petitioner to file a
petition under 35 U.S.C. § 315(b). Therefore, because the Petition in this
case was filed more than one year after Petitioner was properly served with a
complaint, the Petition is time barred under § 315(b).
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing is granted to
address the POP issue; and
FURTHER ORDERED that the Petition is denied, and no trial is
instituted.
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For PETITIONER:
James Isbester
jisbester@kilpatricktownsend.com
Scott E. Kolassa
skolassa@kilpatricktownsend.com
For PATENT OWNER:
Robert P. Greenspoon
rpg@fg-law.com
Clifford H. Kraft
clifflaw@att.net
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