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The Current State of Precedential Opinions and Denials of Institution at the USPTO Patent Trial and Appeal Board: Part 1
Wednesday, May 5, 2021
This article is the first of three that will discuss the USPTO Patent Trial and Appeal Board (“Board”)’s use of Precedential Opinions as guidance when exercising discretion whether to institute petitions for post-grant proceedings,
inter partes reviews (IPRs) and post-grant reviews (PGRs). In particular, this article addresses the precedential decision,
Apple Inc. v. Fintiv, Inc.,
[1] which outlines six factors for the Board to consider when denying a petition under 35 U.S.C. § 314(a) based on a parallel proceeding. The second article will discuss how the Board can exercise discretion to deny institution under § 325(d) if the petition relies on the same or similar prior art/arguments presented during examination, using the test outlined in