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The PTAB has provided guidance on the circumstances that give rise to the time bar under 35 U.S.C. § 315(b) in AIA trial proceedings. In GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38 (PTAB Aug. 23, 2019) (precedential), the Board determined that the service of a complaint triggers the time bar under § 315(b), regardless of whether the patent owner lacked standing to sue or the pleading was otherwise deficient.

In April of 2016, GoPro filed a declaratory judgment action of non-infringement of the ’019 patent against 360Heros in the Northern District of California. In August of 2016, 360Heros filed a counterclaim of patent infringement. GoPro moved for summary judgment, alleging that 360Heros did not own the patent at the time the counterclaim was filed and, therefore, lacked standing to sue. The District Court granted GoPro’s motion.

GoPro subsequently filed an IPR petition challenging the ’019 patent in September of 2018, i.e., more than one year after GoPro was served with 360Heros’s counterclaim. 360Heros argued that GoPro’s petition was time-barred because the petition was filed more than one year after service of the counterclaim.

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