Rubén Muñoz Quoted by Law360 on Filing “America Invents Act” Petitions

Akin Gump intellectual property counsel Rubén Muñoz was quoted by Law360 for its article “5 Times NOT To File An AIA Petition” on when and when not to file an America Invents Act review to attack patents.

Law360 notes that AIA petitions, including inter partes reviews, can be a good strategy but may not be the best solution for every case.

Muñoz said, “Before filing a petition, accused infringers should consider their chances of success and their ability to develop evidentiary proof within the confines of what the proceeding will allow.”

Regarding the Patent Trial and Appeal Board (PTAB) as a venue for review, he noted that, because it has only a year after instituting a review to ascertain a patent’s validity, parties are limited in how much discovery they can obtain. This means that a petitioner with a large discovery workload may not want to seek redress before the PTAB.

Muñoz added, “When you’re trying to use a prior art reference that is nonpatent literature, you may need declarations from a witness that the prior art reference was publicly accessible … but coming in, you can’t assume you’re going to get further discovery to prove public accessibility. In contrast, in district court litigation, you will get a lot of latitude to make the evidentiary showing.”

In areas such as biopharmaceuticals, he said, petitioners encounter more difficulties in proving obviousness and will often need extensive expert discovery: “When combining prior art references in the unpredictable arts, it’s not always clear that the result would have been expected by a person of ordinary skill in the art. You want to be measured in how much you give the patent office because you can easily overwhelm the board, but at the same time you need to put up front your entire case as a petitioner. You’re not going to have many additional chances to develop it further.”

Regarding modifications introduced by the PTAB that will make it easier for patent owners to amend patents in an AIA review, he said that, although amendments have only been granted in a few cases to date, accused infringers should steer clear of filing petitions that cite prior art references that might provide patent owners with a clear path to amend their claims.

Muñoz noted, “These proceedings, in theory, allow for the patent owner to modify the claims. If it is successful, it can come out with a patent that is stronger than when the patent went in. It might be able to narrow its claims and make the patent less susceptible to invalidity attacks.”