EXECUTIVE SUMMARY: When the America Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by non-practicing entities, to challenge the validity of patents being asserted against them. While the cost of the proceedings may not have proven to be as economical as originally intended, the process has both proven extremely helpful to those accused of infringing questionable patents, and raised concerns about the ability of infringers to deploy yet another obstacle to just remedies.

In the past few months Allergan has attempted to foil the IPR process by assigning its patents to the Saint Regis Mohawk Tribe and then licensing the patents back so Allergan can make use the sovereign immunity defense that tribes enjoy. In response to this, Senator McCaskill has introduced legislation to render this sovereign immunity defense unavailable to tribes. Oil States Energy has taken a more direct approach in response to the IPR invalidation of its patents by attacking the constitutionality of the entire IPR program. That case is presently being considered by the Supreme Court.

With so much going on, we thought would be interesting to evaluate each approach so that we can all better prepare for the changes that will be considered and decided upon by Congress and the courts in the next six months.

Written by Peter E. Heuser, Schwabe, Williamson & Wyatt, P.C.

This article was originally published on Schwabe, Williamson & Wyatt's Ideas Fuel Industries Section.