Don’t You Forget About Me: Petitioner’s Failure to Specifically Demonstrate Material Error Leads to Denial Under § 325(d)

Under the new bifurcated discretionary denial review process, 35 U.S.C. § 325(d) has most often been cited in support of referral due to the need to correct material error by the Office, rather than as a reason for discretionary denial. However, in TankLogix, LLC v. SitePro, Inc., IPR2025-00761, Paper 10 (PTAB Sept. 3, 2025), USPTO Acting Director Coke Morgan Stewart denied institution under § 325(d).

Before addressing § 325(d), the Director concluded the status of the parallel proceeding “neither favor[ed] nor counsel[ed] against discretionary denial” because of the uncertainty whether a final written decision in the IPR would be issued after the district court trial. IPR2025-00761, Paper 10 at 2. The uncertainty arose because the anticipated date for the final written decision, November 19, 2026, fell between the scheduled trial date of October 26, 2026, and statistical projections indicating that the trial could commence in September 2027.

Moving to § 325(d), the Director determined that the four references asserted in the petition were the same as previously presented to the Office during prosecution—three cited by the examiner, and one cited by the applicant. Critically, Petitioner “merely assert[ed] that the Petition ‘details how the references disclose every element of every claim’”—but “[t]his assertion alone [was] insufficient to demonstrate material error by the Office.” IPR2025-00761, Paper 10 at 2-3.

Takeaway

This denial illustrates that, despite the shift in how § 325(d) is being applied, petitioners must still specifically argue how the USPTO erred in evaluating any relied-on references to overcome denial under § 325(d).