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June 8, 2015Published Article

How AIA trials have shifted the landscape for patent litigation

Chicago Daily Law Bulletin

The America Invents Act created new administrative proceedings to challenge patents before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. These are inter partes review (IPR), covered business method review (CBM) and post-grant review (PGR) (collectively, AIA trials). AIA trials went into effect in September 2012.

IPR petitions can be filed at anytime, subject to statutory bars, and target any patent even if it has not been asserted in litigation. CBM petitions can be filed only after a person has been sued for or charged with patent infringement. PGR petitions can be filed only against patents that issue under the first-inventor-to-file system established by the AIA.

IPR and CBM petitions are usually filed after a person is sued for patent infringement. The petitioner moves the U.S. District Court to stay the litigation pending the outcome of the AIA trial. Often these stays are granted.

Courts give significant weight to two factors that favor granting a stay: first, that a decision by the board canceling all of the claims at issue in the litigation will dispose of all of the patent infringement claims and invalidity defenses in the case; second, that an accused infringer will be estopped from asserting the same grounds of invalidity that it raised or reasonably could have raised during the AIA trial.

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