The last year has been marked by a multitude of changes in regulations, procedures and case law relevant to patent disputes. At the U.S. Patent and Trademark Office (USPTO), new guidance to the examiners restricts their ability to reject claims for being directed to unpatentable subject matter under Section 101, which will inevitably result in more questionable patent claims being issued. At the same time, the Patent Trial and Appeal Board (PTAB) has dramatically modified its procedures and approaches to handling post-grant petitions both at the institution stage and in instituted proceedings, resulting in more petitions being denied and more claims surviving PTAB trials. The PTAB’s tightening standards has resulted in more challenges proving to be unsuccessful, while many practitioners seem to believe that the very same challenges would have been more successful a year ago.

District court proceedings themselves have changed, as well, with 101 challenges becoming more difficult and unpredictable; coordination between defendants less feasible with cases being spread across multiple forums post-TC Heartland; and the Phillips standard in both the PTAB and district court forcing defendants to analyze their products accused functionalities and potential noninfringement claim constructions months—and even years—earlier than previously. Pushing this decision to within the first few months of litigation is highly advantageous to plaintiffs, allowing them to maximize the pressure of legal spend (even for entirely meritless infringement allegations) on defendants and forcing many to settle out early rather than rack up considerable legal bills within months of a case being filed.

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