Although the recently enacted America Invents Act (AIA) significantly alters the ground rules for obtaining patents, it has a smaller—but still noticeable— impact on patent litigation. The adjustments are modest, but patent owners and potential defendants should be aware of what the AIA does and does not change about the enforcement process. In particular, four litigation-related aspects of the AIA are worth considering when deciding how to enforce patent rights or defend against patent claims.
1. The Anti-Joinder rule
Third, even if a jury finds willfulness, a well-reasoned opinion of counsel can still persuade the judge not to impose sanctions. Judges have discretion to increase damages awards up to three times and require the willful infringer to pay plaintiff’s legal fees, but they often don’t, particularly if the defendant shows it relied on competent legal advice. Nothing in the AIA changes the judge’s discretion on this issue.
Fourth, recent case law makes opinions an important shield against claims of inducing infringement—a common theory for plaintiffs asserting patents that cover methods rather than products.
In September 2012, the AIA will replace inter partes re-examination with something called inter partes review, which is designed to remedy this and other limitations. However, inter partes review will not be an option for defendants seeking to challenge patents that had been asserted against them before the AIA became law on Sept. 16.
In the meantime, inter partes re-exam remains an important defense tool. If brought promptly after (or better yet, before) a suit is filed, a re-exam request can sometimes result in a stay of the litigation, allowing a defendant to challenge the patent first in the PTO before going back, if necessary, to court.