Through October 2015, more than 4,000 petitions for inter partes review, covered business method review, and post grant review (collectively, "AIA reviews") were filed with the Patent Trial and Appeal Board. Given their success rates, relative low cost, and willingness of district courts to stay claims of infringement, AIA reviews have become a favored defense mechanism for accused patent infringers. But AIA reviews do not fit every situation. Under a handful of circumstances, an accused infringer should give serious thought before seeking an AIA review.

Only Publications and Patent-Related Prior Art

Each form of AIA review includes estoppel provisions. For both IPRs and PGRs, estoppel applies to grounds for invalidity that were or reasonably could have been raised during the review. Estoppel in CBMs, however, attaches only to grounds actually raised. Unless the contemplated AIA review is a certain victory and assuming an invalidity defense is desired at trial, an accused infringer must ensure that the estoppel impact of an unsuccessful AIA review will not gut its invalidity defense in district court.

Because preclusion in CBMs is limited only to grounds actually raised, a petitioner can readily limit the impact a CBM will have on a later district court trial. But the broader estoppel provisions of IPRs and PGRs mean that a petitioner will be precluded from relying on any publications, patents or patent applications raised during the review, actually known to petitioner, or reasonably should have been found prior to filing the petition. A petitioner, therefore, generally should assume that it may rely only on product or system art, or unpublished research, in a later district court action. It is thus imperative to conduct a search for such types of art prior to filing an IPR or PGR petition. If the search results are unsatisfactory, an IPR or PGR may effectively result in conceding validity at trial, and thus may dictate against filing a petition.

Key Trial Story Tied to Would-Be Reviewed Patent or Prior Art

Accused infringers also should pause before filing an AIA review if doing so could result in abandoning a key trial story or theme. The issue may arise in a couple of situations. One such situation is a multi-patent case where less than all patents are strong candidates for AIA review. If a favorable trial story is tied only to a patent susceptible to AIA review, the benefit of preserving that story for trial may outweigh the advantage of avoiding a patent through an AIA review. For example, if a damaging inequitable conduct story applies to less than all disputed patents, presenting that story to a jury could increase the likelihood of succeeding on the unrelated patents. Although decreasing the number of patents for trial is advantageous for an accused infringer, the inequitable conduct story may have even more value.

Another situation involves an accused infringer that practices the prior art. In accordance with the typical defense, no infringement exists, but to the extent that the accused device is alleged to practice the patent, it runs afoul of the prior art. A successful AIA review obviously resolves the parties' dispute. But the PTAB may rightfully view the asserted patent as distinct from the prior art and thus elect to not invalidate the patent. Because the accused infringer is estopped from raising that same art at a later trial, the patentee will not be restrained in taking a broad view of the patent in asserting infringement. The accused infringer thus loses the strong defense arising from playing the patentee's infringement theory against the prior art.

ITC Investigations.

The value of AIA reviews to respondents in ITC investigations remains an open question. Unlike district court actions, the ITC will not stay an investigation pending an AIA review. Given the approximate 18-month lifespan of an investigation, an AIA review filed after the institution of an ITC investigation is unlikely to be completed prior to its resolution. But certain advantages may nevertheless be gained from AIA reviews - for example, the PTAB may invalidate a patent at approximately the same time an appeal is taken from the ITC, offering a more favorable legal standard and posture on appeal for an accused infringer. A promising AIA review may also be used when addressing the public interest factors to argue that the imposition of an exclusion order should be delayed pending the outcome of a nearly complete AIA review.

But the value of an AIA review may not be realized in all cases. Because the ITC will not stay an investigation in deference to an AIA review, filing an AIA review requires the petition to simultaneously shoulder the cost of both the ITC investigation and AIA review. If facing a fight-to-the-death patent dispute, the cost is surely worth it. But if a licensing arrangement is inevitable, the added cost of the AIA review may be better spent toward reaching a settlement with the patentee.

AIA reviews have proven to be very effective tools in combating claims of patent infringement. But like any tool, indiscriminate use can sometimes cause more harm than good.

Originally published in the Daily Journal on December 24, 2015.