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5 Times NOT to File an AIA Petition

November 17, 2015

While America Invents Act reviews have shown themselves to be an effective way of attacking patents, they may not be the best way for defendants to go in cases in which the Patent Trial and Appeal Board (PTAB) is not the superior forum, such as when cases involve U.S. International Trade Commission (ITC) infringement investigations, Fenwick & West patent litigation lawyer Bryan Kohm told Law360.

Those investigations can take about a year and a half, according to Kohm, and getting a stay is not likely.

“If it is a fight-to-the-death situation, filing an [inter partes review] could be a good move because it gives a defendant a second bite of the apple to win on invalidity,” Kohm said. “But if the defendant knows it’s going to settle, an IPR may not have the same value because it’s very difficult to get an IPR completed before the ITC investigation is concluded.”

Other times when an AIA petition may not make sense include:

  • When the cost of an AIA review is prohibitive
  • When high case risks indicate District Court might be a better forum
  • When a case requires significant discovery
  • When amendments may result from prior art

For information on PTAB post-grant decisions, visit the firm’s interactive PTAB Database, designed to help users analyze the ever-evolving post-grant space.

The full Law360 article is available through the Law360 website​ (subscription required).​​