Law360 Quotes Rubén Muñoz in Examination of PTAB’s Handling of Time-Bars

Law360 has quoted Akin Gump intellectual property partner Rubén Muñoz in the article “What The PTAB Has Said About Time-Bars After Click-To-Call,” which looks back at a ruling by the U.S. Court of Appeals for the Federal Circuit last year that the clock for accused patent infringers to seek inter partes (IPR) review does not reset if the suit is voluntarily dismissed. The article reports that the Patent Trial and Appeal Board, since that time, has considered the court’s reasoning when examining other questions related to America Invents Act (AIA) time-bars.

According to the article, the one-year rule is not the AIA’s only time-bar. The declaratory judgment rule prevents the PTAB from instituting IPR if the petitioner has previously filed a case in district court challenging the validity of the same patent.

Muñoz stated that as long as the board sticks to its current interpretation of the rule, it appears the onus will be on the companies that head to district court to challenge a patent’s validity to make sure their challenge is correct. He said this will have “pretty severe consequences in terms of having the ability to file an IPR later on if they made a mistake.”

The article notes that companies also need to be aware of actions taken by others with which they have a relationship, to which Muñoz added, “You have to make sure that you understand who the real parties-in-interest are and what actions they have taken in the past.”