Petitioners Have One Year to Challenge Patent Validity—But When Does the Countdown Start?

Oct 7, 2019 | Blog

The Precedential Opinion Panel (POP), a committee created to oversee exceptional cases brought before the Patent Trial and Appeal Board (PTAB), has clarified a time-related issue regarding the filing of administrative challenges to patent validity.

360Heros Inc., a small consumer electronics and video production company, sued GoPro Inc. in 2016 for patent infringement of a specialized, 360-degree camera mount. However, GoPro saw the action dismissed when it was determined that the CEO of 360Heros had not formally assigned the patent to the company. Over a year later, 360Heros proceeded to bring another infringement complaint against GoPro. It was at this point that GoPro petitioned for an inter partes review of the validity of 360Hero’s patent.

According to the Leahy-Smith America Invests Act Section 315(b), these types of challenges to patent validity must be made within one year of the patent holder’s initial infringement claim:

“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] is served with a complaint alleging infringement of the patent.”

Essentially, this means that if a patent holder files an infringement complaint against another party, that party has one year within which to challenge the validity of the patent. Challenging patent validity consists of a petition to the Patent Trial and Appeal Board to reexamine whether the patent in question should ever have been issued in the first place.

Until last year, the PTAB had routinely made an exception in cases where infringement complaints were voluntarily dismissed without prejudice. In these instances, the complaint was treated as if it were never filed and the one-year countdown clock was not initiated. However, in 2018 the Federal Circuit determined that a service of a complaint, regardless of whether the complaint is subsequently dismissed, marks the beginning of the 1-year time window.

While this ruling effectively cleared up cases where initial infringement suits were dismissed voluntarily, it did not address complaints that were dismissed because they lacked constitutional standing to begin with. In the GoPro v. 360Heros case, GoPro argued that, since the camera mount patent had never been formally assigned to 360Heros, the company lacked the constitutional standing to claim infringement in the first place. The company further argued that lack of standing should effectively nullify the service of the complaint and therefore not trigger the one-year time bar.

However, the POP ruled on Friday, Aug 23, 2019, that any service of an infringement complaint—irrespective of the complaint’s standing or lack thereof—triggers the one-year countdown clock for challenging the patent. Opting for a plain language interpretation of the statute, the POP determined that the law did not make exceptions for a complaint later found to be improper.

If you have any further questions regarding patent law or IP infringement, please contact Maurice Ross.