Not a Lexis Advance subscriber? Try it out for free.

2019 Pat. App. LEXIS 4776

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

August 23, 2019, Decided

Case IPR2018-01754, Paper No. 38; Patent 9,152,019 B2

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

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)

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,  [*2]  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 [*3]  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 Patent 9,152,019 B2 ("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

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

2019 Pat. App. LEXIS 4776 *

GOPRO, INC.,; Petitioner,; v.; 360HEROS, INC.,; Patent Owner.

Notice: [*1] 

PRECEDENTIAL OPINION. Pursuant to the Board of Patent Appeals and Interferences Standard Operating Procedure 2, the opinion below has been designated a precedential opinion.

CORE TERMS

patent, counterclaim, infringement, trigger, nullity, legislative history, lack standing, unambiguous, lawsuit, inter partes, quotation, beach, patent infringement, notice, pop, real party in interest, steel, district court, time of filing, plain meaning, slip opinion, one year, ambiguity, declaratory, unequivocal, join