Part V: Deja Vu at the CRU: Did the Office Pull Back on § 325(d) in Ex Parte Reexamination?

Starting in mid-May 2026, six ex parte reexamination denials may have suggested that the Central Reexamination Unit (CRU) was giving new force to 35 U.S.C. § 325(d). Those matters involved requests filed before the May-through-June cohort examined here and decided on the issue of § 325(d) in the mid-May to end of June time frame. We reviewed other substantive determinations involving reexamination requests filed from May 1 through June 16, 2026 (and decided from June 16 through July 22), to determine whether the pattern continued.

It did not.

Of the 70 verified substantive determinations in that filing cohort, 57 expressly addressed § 325(d), and none denied reexamination on that basis. The remaining 13 did not expressly address § 325(d).

The Earlier Denials Did Not Require Literal Identity (Or Even Final Merit Decisions)

The six earlier § 325(d) denials that occurred from mid-May to the end of June provide important context, although they fall outside the cohort reviewed here. See Reexam Control Nos. 90/015,967, 90/015,984, 90/016,174, 90/016,072, 90/016,095, and 90/016,105.

Some of those six involved direct repetitions. In Control Nos. 90/015,984 and 90/016,174, the later requests relied on grounds exactly as previously presented in earlier IPR proceedings. Other denials reflected a consideration of substantive overlap in grounds previously presented to the Office, sometimes in more than one prior proceeding. Control No. 90/015,967 followed an earlier IPR and reexamination, again relying on the same grounds as earlier presented, and Control No. 90/016,105 relied on different groupings of the same references.

Control Nos. 90/016,072 and 90/016,095 indicated that adding new material did not automatically avoid § 325(d). Control No. 90/016,072 involved the same requester and primary reference, overlapping secondary references, and theories previously presented in an IPR. In Control No. 90/016,095, only one secondary reference overlapped, but the Office still treated the request’s art and arguments as the same or substantially the same.

These decisions indicated that literal identity was not required for § 325(d) to apply. A requester could change references or revise a combination and still face denial if the request presented materially the same patentability challenge.

The Later Filing Cohort Shows a Different Pattern

The later cohort presents a notably different picture. Fifty-seven determinations expressly addressed § 325(d), but the Office declined to apply it as a basis for a reexamination request denial. Those decisions were not all grants. Some requests were denied because the Office found no substantial new question of patentability (SNQ), but those denials rested on the SNQ analysis rather than § 325(d).

The orders also show that § 325(d) is receiving regular attention. MPEP § 2242 directs examiners to bring issues involving § 325(d) to the appropriate supervisory personnel or the Director of the CRU. Although the MPEP does not require every public order to include an express written discussion, references to § 325(d) appeared in more than 80% of the determinations in the reviewed cohort.

As indicated in the recent decisions, changing references and arguments from those raised previously before the Office appear to matter. Control No. 90/016,035, for example, followed two IPR proceedings and an earlier reexamination. But none of the references in the current reexamination request had been presented in those earlier proceedings or the underlying prosecution. The Office concluded that the request included new teachings and declined to deny under § 325(d).

Control No. 90/016,285 involved an earlier IPR in which institution was denied. Although the reexamination request repurposed or recombined aspects of the earlier challenge, the Office did not apply § 325(d) and partially granted the request.

The petition decisions on § 325(d) in Control Nos. 90/015,377, 90/015,403, and 90/015,432, which also fall outside the reviewed cohort, reinforce that point. Each involved a prior discretionarily denied IPR and some overlap with the later reexamination request. The Office nevertheless declined to apply § 325(d), relying on additional references, grounds, or arguments, and distinguished discretionary denial considerations under 35 U.S.C. § 314(a) and General Plastic (relating to serial AIA petition filings) applicable in IPRs from the standards governing ex parte reexamination.

The better dividing line as it relates to § 325(d) therefore appears to be material sameness. A different reference list may not be enough if the request still presents substantially the same patentability question. But overlap with an earlier proceeding is not necessarily fatal where the current request introduces a different teaching, mapping, combination, or rationale. That approach is consistent with MPEP § 2242, which recognizes that previously considered art may support an SNQ when presented in a new light or through a material new argument or interpretation.

The Pre-Order Papers Provide Additional Context

These developments are occurring alongside the new patent owner pre-order paper procedure. The procedure permits a patent owner to explain why the teachings asserted in a request do not raise an SNQ. It expressly prohibits using the paper to seek discretionary denial under § 325(d), which the Office considers separately.

Examiners are expressly addressing pre-order papers in their decisions on whether to grant a reexamination. Several orders state that the patent owner’s arguments were considered but did not defeat the asserted SNQs. See, e.g., Reexam Control Nos. 90/016,244, 90/016,257, 90/016,264, 90/016,266, 90/016,275, 90/016,282, 90/016,292, 90/016,297, 90/016,301, 90/016,305, and 90/016,316.

Other decisions identify arguments by patent owners that were successful. In Control No. 90/016,237, the examiner found the patent owner’s arguments regarding a proposed SNQ persuasive. In Control Nos. 90/016,256 and 90/016,287, the patent owners successfully challenged whether particular references qualified as prior art.

The Office is also enforcing the procedure’s limits. In Control Nos. 90/016,259 and 90/016,302, the examiners declined to consider patent owner arguments attacking the sufficiency or form of the request but considered separate arguments that the cited art did not teach limitations that had supported patentability during the original prosecution.

A review of the cases so far indicates that a pre-order paper is therefore most likely to receive meaningful treatment when it addresses whether an alleged teaching is new, whether a reference supplies a claim limitation, whether the reference qualifies as prior art, or whether the request relies on an unsupported claim interpretation.

Practical Takeaway

The CRU regularly considers § 325(d) but does not treat an earlier AIA proceeding or reexamination as a categorical bar. Requests that materially repeat earlier challenges remain at risk. Requests presenting meaningfully different references, combinations, mappings, or rationales continue to proceed.