Imagine That IP Law Blog

In an Inter Partes Review (IPR), Petitioners have long been told to avoid relying on prior art the examiner already “considered,” for fear of triggering a discretionary denial under 35 U.S.C. § 325(d). Early PTAB decisions like Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (precedential as to § III.C.5, first paragraph), and Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) (precedential), reinforced that message.

Similarly, PUMA North America, Inc. v. NIKE, Inc., IPR2019-01042, Paper 10 (P.T.A.B. Oct. 31, 2019) (informative) confirmed the danger.  In PUMA, the petitioner relied on a combination the examiner had used during prosecution, failed to show any real error, and the Board denied institution under § 325(d).  The message to Petitioners was clear: if you file a petition using the same art and arguments the Examiner used during prosecution of the patent, § 325 will close the door.

The Director’s more recent actions, however, may change the strategic landscape for Petitioners. The two-part test in Advanced Bionics turns centrally on whether the Office “erred in a manner material to the patentability of challenged claims,” and the Director’s 2025 order in ECTO World, LLC v. RAI Strategic Holdings, Inc., IPR2024-01280, Paper 13 (P.T.A.B. May 19, 2025) (Director review) (precedential) both clarifies and tightens that requirement. At the same time, the Director has reclaimed institution authority through the March 26, 2025 and October 17, 2025 memoranda and the “Bringing the USPTO Back to the Future” open letter.

Against this backdrop, petitioners have good reason to deliberately select prior art that was before the examiner, not to dodge § 325(d), but to use it as a framework for demonstrating material examiner error and avoiding discretionary denial.

I.   The Two-Prong Gate: What § 325(d) Actually Asks

Becton, Dickinson introduced the now familiar six factors that guide § 325(d) analysis, including the similarity of the art, whether the art is cumulative, the extent of the Office’s prior evaluation, the overlap of arguments, whether the petitioner has pointed out error, and any other circumstances that warrant reconsideration.  Advanced Bionics distilled those into a two-step framework.

Initially, a decision maker asks whether “the same or substantially the same prior art or arguments previously were presented to the Office.” If not, § 325(d) does not apply. If so, the inquiry proceeds to the second part: whether the petitioner has “demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics adds an important gloss: if reasonable minds could disagree about whether the Office erred, then the error is not “material” for § 325(d) purposes and the Director will generally exercise discretion to deny institution.

In PUMA, the Board applied this framework to deny institution. The examiner had twice rejected the claims over two references in essentially the same way the petitioner proposed, and then allowed the claims after the applicant argued that the particular pattern and spacing of the midfoot bars produced different reinforcement. The Board concluded that the petition did not show that the examiner misapprehended or overlooked anything; it simply re-argued the same combination and invoked “design choice” without engaging the prosecution history.

Viewed in isolation, Becton, Dickinson, Advanced Bionics, and PUMA appear as warnings against using prosecution art in an IPR petition. However, they also define the path for using that art successfully: the key is not to avoid Prong One, but to win Prong Two with a concrete, record-based showing of material error.

II. ECTO World And The Shift From “Seen Art” To “Seen Error”

Acting Director Coke Morgan Stewart’s order in ECTO World is the clearest indication that examiner-considered art can be an asset for petitioners. There, petitioners ECTO World, LLC and SV3, LLC challenged a patent exclusively with references that had been listed on an IDS during prosecution. The examiner had initialed the IDS, which contained more than one thousand references, and had asked the applicant to identify any particularly relevant ones. The applicant never responded.

A Board panel denied institution under § 325(d) because the IDS art had been “previously presented” and the petition had not identified any material error. The Director granted review, vacated the denial, and remanded. In doing so, she made several points that are critical for petitioners.

Acting Director Stewart’s decision confirmed that references listed on an IDS and initialed by the examiner count as “previously presented” for Advanced Bionics Prong One, explicitly citing Advanced Bionics for the proposition that previously presented art includes art provided in an IDS. Specifically, the decision resolved a split among Board panels and held that a petitioner must affirmatively address Prong Two. Accordingly, it is not enough to rely on the overall strength of the obviousness case and imply error; the petitioner must explain how the Office erred, with specific reference to Becton, Dickinson factors (c), (e), and (f).

The decision also emphasized that additional “facts and circumstances” can themselves weigh against discretionary denial under factor (f). For example, in ECTO World, there was a thousand-reference IDS, far larger than a typical IDS, and the applicant’s failure to respond to the examiner’s request for help as facts that “may demonstrate that discretionary denial under § 325(d) is not warranted.”

In short, ECTO World used a case based entirely on prosecution art to articulate a roadmap for petitioners: embrace Prong One, and then use the prosecution record and surrounding circumstances to show why § 325(d) should not be applied to deny institution.

III. The Institutional Context: Director-Centered Institution And Quality Control

This doctrinal shift sits inside a broader institutional change. In the March 26, 2025 “Interim Processes for PTAB Workload Management” memorandum, Acting Director Stewart announced that institution decisions would be bifurcated. Going forward, she, in consultation with at least three PTAB judges, will decide whether an IPR should be instituted or denied under § 325(d).

On October 17, 2025, the Director John A. Squires went further. In the open letter “Bringing the USPTO Back to the Future: Return of Institution Authority under 35 U.S.C. §§ 314 and 324 to the Director,” Director Squires explained that Congress expressly vested institution authority in the Director and described structural and perceptual problems with the delegated, panel-driven model, including concerns that the Board might be “filling its own docket.”  The same day, the “Director Institution of AIA Trial Proceedings” memorandum made the change operational. Effective October 20, 2025, the Director, again in consultation with at least three judges, will determine whether to institute every IPR and PGR, issuing summary notices of institution or denial.

In this regime, § 325(d) is no longer just an internal Board management tool. It is part of a Director-level quality-control function. The Director is explicitly using § 325(d), Advanced Bionics, and ECTO World to define when the Office should defer to earlier examination and when it should correct it. That is exactly why petitioners may now want to live in the world of “previously presented” art.

IV.  Why Deliberately Choosing Examiner-Considered Art Can Help Avoid Discretionary Denial

The traditional impulse has been to avoid examiner-considered art to sidestep Prong One. After ECTO World and the new institution regime, that impulse may be misaligned with how § 325(d) will actually be applied.

First, in any serious case, overlap between the best prior art and the prosecution record is nearly inevitable. High-value patents routinely carry dense IDS submissions and multiple foreign counterparts. Advanced Bionics and ECTO World together make clear that such overlap is enough to satisfy Prong One: previously presented art includes art provided to the Office by an applicant on an IDS. Trying to deny that reality can make a petitioner look evasive. By contrast, acknowledging that the art was previously presented and turning immediately to Prong Two builds credibility.

Second, using examiner-considered art allows the petitioner to transform § 325(d) into a structured error-correction argument. Because the art is already in the record, the petition can lay the examiner’s reasoning alongside the reference and the claims and show misreadings, omissions, or unjustified acceptance of attorney argument. That is exactly what Becton, Dickinson factor (e) invites: whether the petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art. With new art, there is no prior evaluation to critique. With old art, the prosecution file becomes evidence for the petitioner.

Third, examiner-considered art lets the petitioner leverage the very volume and complexity of modern IDS practice. In ECTO World, the Director underscored that a thousand-reference IDS and the applicant’s refusal to identify key references may themselves show that discretionary denial is inappropriate. When a petitioner selects references out of that mass and shows that they were never the basis of a rejection or were only superficially noted, the petition becomes a story about structural limits on examination, not just a second guess of an otherwise robust analysis.

Fourth, using prosecution art aligns the petition with the Director’s stated policy goals. The open letter frames the return of institution authority as a way to administer the AIA as the statute provides and as Congress intended, and it expresses concern about skewed results and public perceptions of unfairness. A petition that says, in effect, that the Office had this art but, for identifiable reasons, did not fully or correctly apply it, and that asks the Director to fix that, is thematically consistent with that message. It allows the Director to grant institution not as a repudiation of examination, but as fulfillment of the statutory mandate under 35 U.S.C. §§ 314 and 324.

Finally, deliberately choosing examiner-considered art provides a clean doctrinal route around § 325(d) discretionary denial. Advanced Bionics teaches that when the same art and arguments have been presented and the Office did not materially err, the Director generally should exercise discretion to deny institution. The converse follows: when the same art was presented but the Office did materially err, § 325(d) should not be used to deny institution. A petition built around examiner-considered references and a carefully developed error showing gives the Director exactly the basis Advanced Bionics demands for declining to deny under § 325(d).

V. Drafting Around Examiner-Considered Art: From Prong One To Prong Two

If a petitioner chooses to rely on art the examiner considered, that choice should be explicit in the petition. The § 325(d) section should not be an afterthought; it should be a core part of the institution theory.

One effective approach is to structure the discussion expressly under Advanced Bionics. The petition can candidly state that the primary references were listed on an IDS or cited during prosecution, and thus Prong One is satisfied. The petition then pivots to Prong Two, organizing the analysis around Becton, Dickinson factors (c), (e), and (f): the extent of prior evaluation, how the Office erred, and any additional facts that warrant reconsideration.

For factor (c), the petition can show that the reference was only initialed on an IDS, or was cited for a different limitation or a different claim set, with no discussion of the specific teachings now at issue. For factor (e), the petition can identify concrete misreadings or gaps, for example, where the examiner accepted the applicant’s characterization of a teaching without reconciling it with the text, or confined a key reference to a narrow embodiment that its claims and disclosure do not support. For factor (f), the petition can build on ECTO World by emphasizing the size of the IDS, the examiner’s explicit statement that the volume of references made review difficult, and the applicant’s failure to provide the requested guidance.

Throughout, the petition should distinguish PUMA. In PUMA, the Board concluded that the examiner had already applied a combination of references in essentially the same way the petitioner proposed, and that the petitioner’s new expert testimony did not meaningfully undermine the examiner’s reasoning about the claimed spacing features. A petition grounded in examiner-considered art but demonstrating that the key references were never actually used to reject the now-challenged claims, or that the examiner’s conclusions cannot be squared with the reference, presents a very different posture. Properly framed, PUMA becomes the cautionary example of what happens when a petitioner uses old art without an error showing, not an indictment of using old art at all.

Crucially, a petition relying on examiner-considered art should speak in terms the Director has already endorsed. ECTO World explains that a petitioner must “explain, with reference to Becton Dickinson factors (c), (e), and (f), how the Examiner erred in overlooking the prior art,” and even offers examples, such as where the asserted prior art was not a basis for rejection, is not substantially the same as the art the examiner did apply, or includes teachings that impact patentability of the challenged claims. Echoing that language anchors the petition in current, Director-level guidance.

VI.  Interplay With Other Discretionary Doctrines

Although the focus here is § 325(d), examiner-considered art also interacts with other discretionary doctrines, particularly the Fintiv factors articulated in Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020)  (precedential) . In ECTO World, the Director remanded not only for further § 325(d) analysis, but also for consideration of Fintiv in light of a pending ITC investigation, noting that any Fintiv evaluation should occur only if the Board decides not to deny under § 325(d).

A petition that relies on examiner-considered art and demonstrates material error under Advanced Bionics correspondingly strengthens the compelling merits concerns under Fintiv factor six (see CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (February 27, 2023) (precedential)). Specifically, if the Director is persuaded that the Office misapplied art it already had, it is easier to justify institution even where there is parallel litigation, because the PTAB proceeding is framed as a necessary correction of the Office’s own decision rather than as a purely collateral attack initiated by a private litigant.

Similarly, because the March 2025 memorandum explicitly groups Advanced Bionics with Fintiv and General Plastic as part of an integrated discretionary framework, a strong § 325(d) error showing can color the Director’s view of seriality, timing, and public-interest factors as well.

VII.   Conclusion: Using “Old Art” To Survive Director-Level Discretion

Before ECTO World and the Director’s 2025 memoranda, it was understandable for petitioners to treat examiner-considered art as toxic. Becton, Dickinson and Advanced Bionics seemed to load § 325(d) against petitioners, and PUMA illustrated the risk of returning to the same well without a new story.

Today, the picture is more nuanced. The Director has re-centered institution authority in the Director’s office, clarified that IDS-listed references are previously presented, insisted that petitioners using such art must affirmatively show material error with reference to specific Becton, Dickinson factors, and recognized that examination defects revealed by massive IDS practice and thin analysis can themselves weigh against § 325(d) denial.

In that environment, petitioners should not reflexively avoid art the examiner considered. In many cases, deliberately choosing that art and then building a rigorous, prosecution-based Advanced Bionics showing will give the Director the doctrinal and policy footing needed to decline discretionary denial under § 325(d), while still respecting the Office’s prior work.

Put differently, in the Director-centered regime, the art petitioners once feared may be the art that saves them, if they can show, clearly and concretely, that the Office got it wrong the first time.