Akin Gump Strauss Hauer & Feld LLP

06/26/2020 | Press release | Archived content

Thomson Reuters Westlaw Publishes Akin Gump Article on Potential “Loophole” in IPR Statute

Thomson Reuters Westlaw has published the article 'Can 'loophole' in IPR statute lead to resurgence of DJ actions?' written by Akin Gump intellectual property partner Rubén Muñoz, senior counsel Michael Reeder, and counsel Jason Weil and Matthew Hartman.

The article notes that declaratory judgment (DJ) actions 'have fallen out of favor in patent cases in recent years.' One reason, it says, may be the inter partes review (IPR) statute, which took effect in 2012 and 'forecloses an IPR if the petitioning party (or real party-in-interest) has already filed a civil action challenging the validity of the patent.' If, on the other hand, the party is sued for patent infringement, the authors write, it has 'one year in which to file an IPR petition, regardless of whether it counterclaims for a DJ of invalidity.'

The article then looks at a scenario in which a would-be accused infringer could file a civil action, seek declaratory relief of invalidity in district court and still preserve its ability to file an IPR. Some parties, the authors say, have done exactly that, leveraging what has been described in a recent district court decision as an 'apparent loophole' in the IPR statute.

To read the article in its entirety, please click here.