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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.


BOALICK, Chief Administrative Patent Judge.


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)


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.").


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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.


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