# The same statute opened one door and closed eighteen. 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 IPR 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 IPR art. Sources checked October 16, 2026 **18 of 63** readable reexamination denials (May 15 to Oct 14, 2026) rested on § 325(d). Seventeen followed an earlier inter partes review of the same patent. ## Before you read An inter partes review of a patent is denied, and a later ex parte reexamination request on that patent uses some of the same art. In recent denials, how often did the Office cite § 325(d)? - Never: reexamination only asks about a substantial new question - In 18 of 63 readable denials - In every denial In 18 of 63 readable denials mailed May 15 to October 14, 2026. The other 45 found no substantial new question. ## The examiner contradicted the Board 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. Padagis 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. Padagis ## The framework 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.” 35 U.S.C. § 325(d) Advanced Bionics, precedential since 2020, sets a two-part test. Advanced Bionics ## Material error over the trial date 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.” Padagis 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. Padagis 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. ODP status ## The reexam side 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. MPEP § 2242 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. ODP records 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. ## What to do Choose your side. ## Cuts the other way 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. ODP records 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. ## Related stories - [Same art, second try: 18 of 63 denials cite § 325(d).](https://postgrantproceeding.com/insights/t09-same-art-second-try) - [Past the Director is not past the Board.](https://postgrantproceeding.com/insights/d02-past-the-director-is-not-past-the-board) - [Anonymous reexam after an IPR decision now needs a statement.](https://postgrantproceeding.com/insights/t04-anonymous-reexam-after-an-ipr-decision-now-needs-a-statement) ## Sources - S56. Padagis US LLC v. Neurelis, Inc., No. IPR2025-00464, Paper 12 (USPTO Director July 16, 2025), also covering IPR2025-00465 and -00466 (informative, designated Jan. 9, 2026). https://www.uspto.gov/patents/ptab/precedential-informative-decisions - S86. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) (precedential, designated Mar. 24, 2020). https://www.uspto.gov/patents/ptab/precedential-informative-decisions - S13. Federal patent statutes, 35 U.S.C. §§ 253(a), 303(a), 311–315, 317 and 321–325. Reproduced in MPEP Appendix L (currency date stated by the appendix: Jan. 31, 2024). https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html - S37. In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 2021). https://www.cafc.uscourts.gov/opinions-orders/20-1992.opinion.9-29-2021_1841724.pdf - S38. USPTO, Manual of Patent Examining Procedure § 2242, Criteria for Deciding Request Filed Under 35 U.S.C. § 302. https://www.uspto.gov/web/offices/pac/mpep/s2242.html - S53. USPTO Open Data Portal: patent file-wrapper records for ex parte reexamination (90/ control numbers) and PTAB trial status, as pulled by PostGrantProceeding on Oct. 14 and 15, 2026. https://data.uspto.gov ## Not yet confirmed - In 9 of those 17, whether the earlier IPR was denied on discretionary grounds or on the merits has not been recorded. 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. General information about published decisions, not legal advice. Reading it does not create an attorney-client relationship.