Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper No. 38
`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)
`
`

`

`IPR2018-01754
`Patent 9,152,019 B2
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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.
`
`2
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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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`IPR2018-01754
`Patent 9,152,019 B2
`
`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,