- within Privacy topic(s)
- with readers working within the Technology industries
This program provided a comprehensive update on the rapidly changing PTAB environment and the practical implications for post-grant strategy. The presenters examined recent filing and institution trends, highlighting declining institution rates and the growing impact of discretionary denials driven by new USPTO workload initiatives, Director-led institution decisions, and the expanding role of "settled expectations."
The session explored the bifurcated institution process and summary institution notices, along with emerging discretionary considerations, including inconsistent claim construction, reliance on expert testimony, parallel litigation under the revived Fintiv framework, multiple and serial petitions, and real party in interest developments. Attendees reviewed recent precedential and informative decisions illustrating how these factors are being applied in practice and how they influence institution outcomes.
The program also addressed appellate trends, noting the Federal Circuit's continued reluctance to review institution decisions, and evaluated ex parte reexamination as a strategic alternative to inter partes review, including its advantages, risks, and interaction with discretionary denial analysis. Finally, the presenters discussed new USPTO initiatives and proposed rulemaking aimed at limiting repeated challenges and encouraging voluntary search disclosures.
Attendees gained actionable guidance on when PTAB review remains viable, how to structure petitions and defenses in light of heightened scrutiny, and how to adapt post-grant strategies in an increasingly discretionary and policy-driven environment.
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