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PTAB Recalibrates Review: New Discretionary Denial Framework and Pre-Institution Reform

In less than a month, the United States Patent and Trademark Office (“USPTO”) has dramatically reformed its policies and procedures for exercising its discretion to deny institution of AIA post-grant proceedings. First, on...more

Published but not Public? Federal Circuit Confirms Published Patent Applications Count as Prior Art from Filing Date in IPRs.

On January 14, 2025, the United States Court of Appeals for the Federal Circuit issued a precedential decision in Lynk Labs, Inc. v. Samsung Electronics Co., No. 23-2346 (Fed. Cir. Jan. 14, 2025), addressing whether a...more

Common Patent Litigation Defenses Insufficient To Justify Award Of Attorneys’ Fees

In Realtime Adaptive Streaming LLC v. Sling TV, LLC, et al., 2024 U.S. App. LEXIS 21348 (Fed. Cir. Aug. 23, 2024), the Federal Circuit, in an opinion authored by Judge Alan D. Albright sitting by designation, vacated and...more

Fifth Circuit Denies Patent Owners’ Attempt To Formalize PTAB’s Discretionary Denials

In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas.  The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking...more

Serial IPR Petitions No Longer Doomed By A Double Dose Of Discretionary Denial

Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), designated precedential in 2017, sets forth seven factors to be considered before discretionarily denying subsequent IPR...more

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