Cyrus Morton and Prateek Viswanathan wrote an article for IAM examining the PTAB’s evolving case law on discretionary denial and its implications for patent owners and challengers.
The article explains how recent precedential and informative decisions are formalizing the Board’s approach, refining the “settled expectations” doctrine—often shielding patents more than six years old, and in some cases even younger patents supported by licensing or substantial investment—while outlining circumstances in which challengers can overcome that protection.
It also addresses the PTAB’s skepticism toward serial, copycat, and joinder-based petitions, its emerging “PGR exceptionalism,” and its increasing scrutiny of litigation strategy, including cross-forum claim construction positions and the assertion of large, multi-family patent portfolios.
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