The standard of review is frequently cited but often overlooked as being outcome-determinative in patent cases. A recent trio of decisions by the Federal Circuit illustrates the differences in outcome that result from the standard of review for issued patents, challenged for validity in the Federal Courts, versus that for patent applications examined for patentability by the U.S. Patent and Trademark Office. A renewed consideration of these differences may motivate a patent challenger to proceed proactively under one of the postgrant reexamination procedures within the U.S. Patent Office (i.e., post-grant review (PGR) and inter partes review (IPR)) rather than reactively in the context of an invalidity defense or declaratory judgment action.

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