ACC Publishes Muñoz and Underwood Article on Legacy and Impact of America Invents Act

The Association of Corporate Counsel’s Greater Philadelphia chapter has published the article “Accused Patent Infringers Have Been Having Their Cake and Eating It Too . . . Until Now,” written by Akin Gump intellectual property partner Rubén Muñoz and counsel Jonathan Underwood. The article, appearing in the ACC’s FOCUS publication, examines the legacy and impact of the America Invents Act, which “brought to life a speedier and cheaper mechanism to challenge patents: inter partes review (IPR) proceedings at the Patent Office.”

Muñoz and Underwood write that, as a result of the 2012 law, “patent litigants must be wary of how competing approaches by district courts may impact the availability of invalidity defenses.” They note that while several district courts “have ruled that the IPR estoppel provision is narrow and exclusively applies to patents and printed publications,” other courts “have raised concerns about the potential for an accused infringer to game the system.”

Until the Federal Circuit steps in to resolve any lingering questions, the authors advise that litigants “pay close attention to prior rulings by their forum district.” If a patent owner is able to sue in several districts, then it may be worth considering “whether one district might be more amenable to applying estoppel to a product.” On the other hand, an accused infringer, they add, “should consider the likelihood that estoppel will apply to a product in the event of a failed IPR challenge that reached final written decision, and focus on how to pursue and present invalidity defenses in court.”