Discretion All the Way Down: USPTO Uses a Discretionary IPR Denial to Justify a    
§ 325(d) EPR Denial

On May 22, 2026, the USPTO (“Office”) issued an Order denying ex parte reexamination of U.S. Patent No. 8,810,458 in EPR Control No. 90/015984 (“Request”) under 35 U.S.C. § 325(d) because the Request included “at least some of the same or substantially the same prior art or arguments previously presented” in a discretionarily denied petition for inter partes review, Geotab Inc. v. Fractus, S.A., IPR2025-00929, Paper 11 (Sept. 12, 2025) (“Geotab IPR”).

In its Order denying reexamination, the Office identified the Geotab IPR grounds as well as the proposed reexamination grounds that it considered “material” to its 35 U.S.C. § 325(d) “analysis.” The material grounds challenged the same claims using the same prior art or combinations of prior art. The Order also indicated that the Geotab IPR “petition was denied,” but did not particularly address whether the Office evaluated the grounds in that denial. The Order did not evaluate whether the grounds presented a substantial new question of patentability.

The Geotab IPR was discretionarily denied on September 12, 2025. In that decision, the Acting Director explained that certain considerations weighed in favor of discretionary denial—particularly that “the challenged patents have been in force for more than eleven years, creating strong settled expectations for Patent Owner” and “Petitioner appears to have had notice of the challenged patents for a significant period of time” including “until shortly before Patent Owner asserted the challenged patent.”

The Acting Director did not provide an analysis of the IPR grounds or otherwise characterize the strength of the merits of the Geotab petition.

Although the Order denying reexamination indicates that the Office reached its decision based on “all relevant considerations” its express analysis suggests that discretionary denial under § 325(d) is permissible even if the Office had not previously evaluated the merits of the asserted prior art and arguments. Requesters should exercise caution in replicating previously presented IPR grounds, including those that were never evaluated on the merits.