190/016,466
- What happened
- The latest § 325(d) denial in the window. The order cites In re Vivint.
Section 325(d) lets the Office refuse art and arguments it has already seen. In Padagis, an examiner’s error about that history was reason enough to hear an inter partes review despite an earlier trial date. In ex parte reexamination, the same section accounted for 18 of 63 readable denials between May 15 and October 14, 2026, every one against a challenger reusing its own inter partes review art.
Before you read
A challenger’s IPR is denied, and it files an ex parte reexam request using some of the same art. In recent denials, how often did the Office cite § 325(d)?
In 18 of 63 readable denials mailed May 15 to October 14, 2026. The other 45 found no substantial new question.
Part 1 of 6
The Board had already decided the question. In an earlier IPR, IPR2019-00451, affirmed on appeal, it held that a family of Neurelis claims wasn’t entitled to an earlier provisional application’s priority date. Later, an examiner granted that same priority to related patents in the family.
When Padagis petitioned again, the Director found the conflict decisive: “the patent examiner’s conclusion directly contradicts the Board’s determination and raises concerns of material error.” The petitions were referred to the Board.
Part 2 of 6
Section 325(d) lets the Office deny review where “the same or substantially the same prior art or arguments previously were presented to the Office.” Advanced Bionics, precedential since 2020, sets a two-part test.
Part 3 of 6
The trial-date factor pointed toward denial. The district court trial was set for February 9, 2026, about seven months before the projected final decision on September 17, 2026. The Director acknowledged that “[o]rdinarily, a scheduled district court trial date that precedes the date projected for a Board final written decision weighs in favor of exercising discretion to deny.”
A court trial set about seven months before the projected final decision.
The examiner’s priority ruling contradicted the Board’s affirmed decision. A stay was likely. Two of the patents issued in 2022 and 2023, so expectations were not strongly settled.
Material error outweighed it: “Here, however, the Petitioner appears to show a material error by the Office, and it is an appropriate use of Office resources to review the potential error.” What made the error persuasive was a side-by-side comparison showing “significant overlap in claimed subject matter” between the new claims and those the Board had already ruled on.
The referral didn’t end the dispute. The USPTO’s Open Data Portal shows trial instituted on September 16, 2025, and the case settled on September 8, 2026.
Part 4 of 6
Ex parte reexamination is an Office re-review of a patent, started by a request that must raise a substantial new question of patentability. Section 325(d) applies there too. We reviewed the order text in every reexam denial mailed between May 15 and October 14, 2026 that the USPTO’s Open Data Portal returned.
63 readable denials mailed May 15 to Oct 14, 2026
Tap a segment to read what it covers.
Excludes 8 denials with no readable order. The Open Data Portal query may not return every record, so these counts are floors. Through October 9 the count was 17 of 62; the October 14 denial of 90/016,466 makes 18 of 63.
Source
Through October 9, the § 325(d) denials came in batches by requester: Cisco 5, Red Hat 3 and Fortinet 2, with one each for seven others. In 9 of those 17, whether the earlier IPR was denied on discretionary grounds or on the merits has not been recorded.
Part 5 of 6
Choose your side.
Part 6 of 6
Padagis is informative, and it also had a likely stay and two young patents, so material error didn’t work alone. Same-party status didn’t guarantee a § 325(d) denial either: at least two requests filed after discretionary IPR denials were decided on the substantial-new-question test instead.
They show
They don’t show
A share of denials says nothing about grants. For context only, and for a different population and period: of all 559 reexamination records in our data, 470 were ordered. Don’t combine the two figures.
The takeaway
Section 325(d) cuts both ways. Show the Office’s error, or bring something genuinely new.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.