USPTO Rejecting Reexams Based on Discretionary Denial of Parallel IPRs

The USPTO has significantly limited the availability of America Invents Act (AIA) reviews since early 2025, implementing a series of substantive and procedural changes that have greatly expanded the use of discretionary denials at the Patent Trial and Appeal Board (PTAB). This has increasingly pushed defendants toward ex parte reexaminations, which are not subject to such denials to the same extent. However, recent decisions indicate that this could change, as the USPTO has begun to reject requests for reexam under 35 U.S.C. § 325(d)—which allows discretionary denials of AIA reviews and reexams when the “same or substantially the same prior art or arguments previously were presented to the Office”—based on the prior discretionary denial of overlapping, parallel IPRs.