Navigating IPR Discretionary Denial White Waters with Examiner Error: A Practitioner's Guide

In an era of heightened discretionary denial of inter partes review (IPR) petitions, petitioners have latched onto the second prong of the Advanced Bionics[1] framework to navigate the U.S. Patent and Trademark Office’s (USPTO’s) evolving discretionary denial threshold.[2] Decided five years before the surge of discretionary denial decisions in 2025, the second prong of Advanced Bionics requires the Director to determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims” when the same or substantially the same art or arguments previously were presented to the Office.

One important lesson from the 2025-2026 discretionary denial decisions is that persuasive evidence of material error by the Office can be a significant factor in the Director’s holistic discretionary denial analysis, and may outweigh other factors that otherwise favor denial, including Fintiv factors 1-5 and settled expectations.[3] This insight is succinctly summarized by USPTO Director John Squires in Magnolia Medical Technologies, Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026), where the Director reinforced the paramount importance of correcting examination error in the institution analysis.

This lesson aligns with prior USPTO guidance recognizing that “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.”[4] In Magnolia, the Director also emphasized that America Invents Act (AIA) review must serve the public interest and operate as an alternative to, not a continuation of, a district court litigation.[5] The Director explained that “the central purpose of IPRs is to determine whether the patent at issue may have been improvidently granted and whether and to what extent that right should continue to be recognized at all.” The Director further stated that the Office institutes review “to reconsider its own decision and correct a possible error in the original patent grant.”

Over the past year, petitioners have developed creative ways to show that the Office erred in a manner material to the patentability of the challenged claims. Their arguments have been guided by the nonexclusive Becton, Dickinson factors,[6] MPEP § 904, Advanced Bionics, and more recent Director decisions, including Ecto World.[7] Categories of material error that have persuaded the Director not to exercise discretion to deny institution include overlooked references, inadequate prior art searches, allowance timing, and misapprehension of a reference’s teachings.

A. Examiner Errors Presented by Petitioners

At the beginning of the current era of heightened discretionary denial of IPR petitions, the Director typically provided a written opinion for each discretionary denial decision. That changed in October 2025, when the Director began issuing summary decisions that simply listed the cases that will be reviewed for the merits and non-discretionary considerations in a Notice of Decisions on Institutions. Because the Director typically no longer provides a detailed rationale for each decision, the following discussion summarizes a variety of Examiner error arguments that have been presented by petitioners. Some of these arguments have been expressly credited by the Director in various written decisions, while others remain developing theories that petitioners have advanced but that the Director may not yet have expressed a view on.

1. Overlooking References

A primary category of material error involves showing that the Examiner overlooked relevant prior art; whether the art appeared on an Information Disclosure Statement (IDS); was cited during prosecution of a related U.S., PCT, or foreign application; was addressed in related Patent Trial and Appeal Board (PTAB) proceedings; or has never appeared in the record. In opposing discretionary denial, petitioners have developed several pathways for showing overlooked prior art, including attacking the quality of the Examiner’s prior art search, showing that another Examiner identified or applied the reference or the same Examiner applied the reference in a later prosecution on related claims, demonstrating that the reasons for allowance conflict with prior PTAB or Federal Circuit determinations, pointing to insufficient consideration of a voluminous IDS, or highlighting unusually abbreviated prosecution (allowance timing).

• Quality of Prior Art Searches. The Examiner’s prior art search is frequently scrutinized for material error arguments. Petitioners have identified a wide range of specific deficiencies, including inadequate search time; flawed text and classification searches that excluded relevant classification codes; omitted or misspelled critical claim terms; overly narrow proximity constraints; focus on irrelevant classification codes; unduly narrow search parameters limited to certain technological classes; failure to search alternative configurations or the full breadth of the claims; failure to perform keyword searches on allegedly novel features; failure to search the U.S. publication database; and disregard of search strategies and results from counterpart applications.[8] Some petitioners have relied on expert testimony submitted with the IPR petition to further demonstrate the nature of the material error according to PTO search procedures.[9]
• Reference Identified by Another Examiner. Another powerful argument involves showing that during the prosecution of a different application in the same patent family either in the U.S. or abroad, another Examiner or the same Examiner identified and applied the overlooked prior art.[10]
• Voluminous IDS Submissions. Petitioners have also argued that relevant references were effectively buried in a voluminous IDS, with no indication of substantive consideration beyond the Examiner’s initials.[11] In one case, the overlooked references appeared among more than 1,000 IDS items, which is more than 40 times the size of a typical submission, and the applicant did not identify relevant references when asked. In another case, the IDS contained more than 400 references. Petitioners have also relied on a failure to initial an IDS or a failure to disclose related PTAB proceedings to further support a material-error theory.[12]
• PTAB Proceedings. Some petitioners established that the Examiner’s stated reason for allowance is contradicted by the teachings of the prior art or conflicts with prior PTAB or Federal Circuit determinations involving related patents directed to similar subject matter.[13]
• Timing of the Notice of Allowance. Petitioners have relied on early allowance as circumstantial evidence of insufficient examination scrutiny.[14] In particular, a first-office-action allowance, a short prosecution timeline, improper reliance on examination of a parent application, or the absence of any rejection during prosecution were used to support an inference that the Examiner did not fully evaluate the challenged claims against the most relevant art.
• Priority Issues. Petitioners have relied on the Examiner’s failure to properly determine the priority date of challenged claims to support arguments that relevant prior art references were overlooked during prosecution. For example, one petitioner asserted that the Examiner erred by failing to identify new references relied upon by petitioner because the Examiner had not recognized that a feature added during prosecution lacked support in the priority documents.[15] In another case, a petitioner argued that the Examiner erred by improperly disqualifying two proper references based on an incorrect priority date determination.[16] In a third case, a petitioner noted that the Examiner erroneously relied on references that did not qualify as prior art based on the correct priority date of the challenged claims.[17]

2. Misapprehending the Teachings of a Reference

When a reference was squarely before the Examiner, petitioners have established material error by demonstrating that the Office failed to appreciate or misunderstood the reference’s teachings.[18] The strongest arguments identify the exact teachings the Examiner missed and explain, limitation by limitation, how those teachings map onto the challenged claims.

B. Examiner Errors Expressly Credited by the Director

Among the theories petitioners have advanced in opposing discretionary denial, the Director has most clearly credited the following as bases for referring petitions to the Board for further consideration. The most persuasive reason credited by the Director is that the Examiner overlooked or misapprehended specific teachings of a prior art reference.

• Overlooking the Teachings of a Reference. When a reference was squarely before the Examiner, the Director declined to exercise discretion to deny institution where the Examiner overlooked or misunderstood specific teachings of that reference.[19] This was the most persuasive category of Examiner error credited by the Director. In one case, the Director found discretionary denial appropriate for four (4) of five (5) petitions based on settled expectations, but not for the fifth, even though that “challenged patent had [also] been in force for fifteen years” because the petitioner provided “persuasive reasoning, supported by evidence,” that the Examiner overlooked teachings in a reference of record that appeared to disclose the features the Examiner believed were missing from the prior art.[20] In another case, the Director declined to deny institution even though the challenged patents had been in force for nine (9) years because the Examiner overlooked the teachings of a prior art reference cited in an IDS during prosecution that expressly teaches the features that the Examiner asserted were not taught by the prior art.[21]
• Terms of Art. The Director has also credited evidence suggesting that the Examiner misunderstood the claimed technology. For example, the Director credited evidence that an Examiner misunderstood a term of art or relied on the wrong reference to allow claims.[22] In one example, the Director declined to deny institution where the Examiner had maintained the same prior art from an ancestor application through the prosecution of six (6) child applications, even though those child applications were directed to different technologies.[23]
• Insufficient Prosecution History. Some decisions from the Director have suggested that abbreviated prosecution histories may be beneficial to the petitioner as well, perhaps suggesting an inadequate review by the Examiner. Some indicators of such an abbreviated prosecution history include first-office-action allowances; notices of allowance issued without substantive prior art rejections; and failure to address a reference during prosecution. For example, in two related cases, the Director declined to deny institution even when the challenged patents had been in force for seventeen (17) and eighteen (18) years. In those cases, the Director summarily concluded that the “[p]etitioner persuasively explains that the patent [E]xaminer erred by overlooking the teachings” of the prior art reference.[24] Interestingly, despite the limited explanation for this finding, the Director noted that the Examiner had issued a first action allowance, suggesting this was a factor in the Director’s decision.[25] The Director also declined to deny institution of another challenged patent that had been in force for fifteen (15) years because “the patent [E]xaminer [had] overlooked certain teachings in [the prior art reference] that appear to disclose the claimed features that the patent [E]xaminer indicated were not taught by the prior art of record.”[26]
• Voluminous IDS. The Director also credited arguments that a voluminous IDS prevented substantive consideration of relevant references. Specifically, an IDS containing “over 1,000 references, which is over 40 times the size of a typical IDS,” combined with an applicant’s failure to identify the most relevant references “may demonstrate that discretionary denial under § 325(d) is not warranted.”[27] On remand in one such case, the Board agreed that “other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered the references.”[28]
• PTAB Proceedings. The Director has credited arguments based on the Examiner’s failure to “apply any art or reference during prosecution despite the existence of PTAB proceedings of related patents that could impact the challenged claims,” as well as cases where the Examiner’s reasoning contradicted prior Board or Court determinations.[29] For example, the Examiner found that the challenged claims of child applications were entitled to the priority date of the priority document even if the Board had previously determined that granted claims of the parent application were not entitled to that priority date; and that decision was affirmed by the Federal Circuit.[30] In another case, the Examiner allowed challenged claims without applying any prior art rejection “despite the existence of PTAB proceedings of related patents.”[31] In that case, the relevant prior art references were applied in previous PTAB proceedings.
• Reference Identified in Another Application Within the Same Family. Another persuasive showing credited by the Director is that another Examiner, or the same Examiner, identified and applied the overlooked art during prosecution of another application in the same family but failed to similarly apply it in the challenged patent. In one case, the Examiner allowed the challenged claims based on an alleged new feature but subsequently rejected claims of a pending child application of the challenged patent for being unpatentable because the prior art taught the previously allowable feature.[32] In another case, the Examiner applied a reference during the prosecution of a parent application but failed to apply that reference during the prosecution of the challenged patent, which included similar claim limitations.[33]

C. Key Takeaways for Practitioners

The following ten (10) principles distill the current state of the Director’s material error jurisprudence into actionable guidance.

1. Identify material error that can overcome other denial factors, including Fintiv. Correction of examination errors has been deemed of paramount importance even for patents that have been in force for 15-18 years.
2. Mine the prosecution history. Review the Examiner’s search queries, methodology, time spent, classification codes, and keyword terms to identify deficiencies that led to prior art being overlooked. Compare the Examiner’s search queries and methodology with counterpart PCT or EPO search results to identify gaps. Any deficiency that can be tied to the Examiner’s failure to locate the prior art strengthens the material error argument.
3. Check related applications. Prosecution histories of child applications, parent applications, and PCT counterparts are fertile ground for finding that another Examiner identified art the original Examiner missed.
4. Compare U.S. prosecution with foreign prosecution. If the EPO or another foreign office applied more rigorous examination to counterpart applications, highlight the contrast to underscore the insufficiency of the USPTO’s review.
5. Scrutinize voluminous IDSs. Mere initialing by the Examiner does not constitute substantive consideration. It is unlikely that an Examiner had substantively reviewed over 200 references. According to the USPTO, 87% of applications have 50 or fewer references.[34]
6. Show specific teachings. Do not merely assert that the Examiner overlooked the art. Demonstrate precisely what the reference teaches and how it maps onto the claim limitations. This is perhaps the most fact-intensive category of material error, but it is also among the most compelling.
7. Leverage the notice of allowance. Conclusory reasons for allowance, or reasons that contradict prior PTAB or Federal Circuit findings, are strong indicators of material error.
8. First-office-action allowances and early allowances are red flags. Document the timeline from filing to allowance. An unusually short prosecution, particularly where no prior art was applied, supports an inference that the Examiner did not conduct a thorough review. These circumstances significantly ease the petitioner’s burden of showing material error.
9. Use expert declarations to bridge evidentiary gaps. When the prosecution history alone does not clearly reveal the error, expert testimony can establish what the art teaches and how the Examiner’s evaluation was deficient.
10. Track developing case law. Many petitions that survived the discretionary denial threshold on material error grounds were not instituted on the merits, and those that were ultimately instituted are expected to reach final written decisions in late 2026 or early 2027. Their outcomes may further shape this rapidly developing area of PTAB practice. We will continue to monitor these developments.

For companies navigating parallel litigation, portfolio enforcement, or PTAB strategy, these decisions underscore the importance of developing a record that addresses both discretionary-denial considerations and the merits from the outset.

For more information on how these developments may affect your patent portfolio or litigation strategy, please contact the authors or your Foley & Lardner attorney.

[1] Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)

[2] Interim Processes for PTAB Workload Management, at 1 (Mar. 26, 2025) (bifurcating the decision to institute an IPR or a post-grant review (PGR) into two processes “(i) discretionary considerations and (ii) merits and other non-discretionary statutory considerations.”)

[3] iRhythm Tech. v. Welch Allyn, Inc., IPR2025-00363, Paper 10, at 3 (June 6, 2025) and Paper 7, at 29–1 (granting Patent Owner’s request for discretionary denial and denying Institution of inter partes review because the Petitioner’s decades-long delay to seek review of the challenged patents created an implicit expectation and an acquiescence of the validity of the challenged claims.)

[4] Commscope Tech. LLC v. Dali Wireless, Inc. IPR2022-01242 Paper 23 at 4 (PTAB Feb 27, 2023) (precedential) (citing USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”) at 5 (June 21, 2022)).

[5] Denying institution of inter partes review because the Director viewed the petition as falling outside the purpose of AIA reviews. Specifically, the petitioner had filed an IPR to relitigate the same issues raised in district court after a jury found the patent not invalid. Id. at 9–10.

[6] Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).

[7] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 7n3 (PTAB May 19, 2025) (Granting director review, vacating the decision denying institution, and remanding to the Board for further proceedings; and clarifying that a petitioner cannot simply rely on the unpatentability contentions articulated in the IPR petition. Rather, petitioners must explain how the Examiner erred “even when the asserted prior art is on an IDS, but the Examiner did not apply the reference.”)

[8] Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-01082, Paper 7, 2–11, and 3n1 & Paper 10 (PTAB Dec. 18, 2025); Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01043, Paper 9, 20–27; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-00934, Paper 9 at 3 and 17–32 (PTAB Oct. 10, 2025); Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01044, paper 9, at 21–29; IPR2025-01069, Paper 9 at 20–25; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01110, Paper 10, at 8–9; Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01111, Paper 9, at 7–8; Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 12 (PTAB, Jul. 16, 2025); ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 9 (Oct. 7, 2025) and Paper 13 (PTAB Nov. 20, 2025) (the following proceedings will be reviewed for merits and non-discretionary considerations); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 13–17 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 13–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 10–14 ; (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9 and 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 12–16 (April 27, 2026); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 11, 21–24 (Sept. 02, 2025); and Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-00200, Paper 8, at 2–8; Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 15, at 6–9 (failure to cite examples of well-known unified communication systems and software).

[9] IPR2025-01082, Paper 7, at 3n1.

[10] Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-00934, Paper 9 at 3 and 17–32 (PTAB Oct. 10, 2025); ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 8–14 (Oct. 7, 2025) and Paper 13 (Squires Nov. 20, 2025; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 10 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1 and 15–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 15 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 15–16 (April 27, 2026); Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1, IPR2025-00701, Paper 8, at 2 (July 16, 2025); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 14, at 29–35 (Aug. 29, 2025).

[11] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 15 at 5–7 (June 2, 2025); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13–16, and 23–26 (July 07, 2025).

[12] ASUSTeK Computer Inc. v. Nokia Techs. Oy, IPR2025-01153, Paper 11, at 11 (Oct. 7, 2025); Paper 13 (Squires Nov. 20, 2025); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 15 and 23–26 (July 07, 2025).

[13] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 15 and 26 (July 07, 2025); Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 10, 16–19 (June 16, 2025).

[14] Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 9, at 16 (PTAB, Jul. 16, 2025) (asserting that the Examiner allowed the claims without issuing a prior art rejection. “[T]he Examiner erred materially by failing to evaluate the prior art thoroughly. Had the Examiner evaluated the prior art thoroughly, he would not have allowed the challenged claims to issue without a single prior art rejection.”); Samsung Elecs. Co. Ltd. v. Wilus Institute of Standards and Tech Inc., IPR2025-01069, Paper 9 at 18–20 (application allowed with no prior art rejections); USAA Federal Savings Bank v. PACid Technologies, LLC, IPR2025-00697, Paper 8, at 3 and 24 (PTAB Aug. 14, 2025) (claims were allowed four months after filing with little to no scrutiny, and without any prior patentability challenge and without a single prior art rejection). See also, IPR2025-00751, paper 8, at 3, and 24–25; IPR2025-00752, paper 8, at 3 and 24; IPR2025-00753, paper 8, at 3 and 24–25; IPR2025-00754, page 8 at 3 and 24; and IPR2025-00755, page 8 at 3 and 24; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, Paper 9, at 10–12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1, 10 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 10 and 14 (April 27, 2026); Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13–16, and 23–26 (July 07, 2025); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 8, at 11–12 (allowance after a single Office action).

[15] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01110, Paper 10, at 7–8 (challenging the priority date of the challenged patent based on intervening prior art references); IPR2025-01111, Paper 9, at 6–7 (also citing IPR2025-00933, Paper 2, at 2; IPR2025-01043, Paper 2, at 2–4; IPR2025-00935, Paper 2,at 2–3; IPR2025-00936, Paper 2, at 2–3; and IPR2025-01110, Paper 2, at 5–12).

[16] Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 10, at 16–19 (June 16, 2025) and Paper 12, at 2–3 (Director, July 16, 2025) (Informative) (finding that the petition raises “the same priority issue” that was previously adjudicated in IPR2019-00451 and affirmed by the Court of Appeals for the Federal Circuit).

[17] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 7, at 13n3 (July 07, 2025).

[18] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-01043, Paper 9, 18–20; IPR2025-00933, Paper 11 at 3–4 (PTAB Oct. 10, 2025) and paper 9, at 3 and 18–31; IPR2025-00934, Paper 11 at 4 (PTAB Oct. 10, 2025); IPR2025-00988, paper 9, at 19–26; Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 14 (PTAB June 15, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00205, Paper 9, at 10–12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00219, Paper 9, at 10–12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00222, Paper 9, at 1, 12–16 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00227, Paper 11, at 12 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00228, Paper 11, at 9–11 (April 27, 2026); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00229, Paper 11, at 11–12 (April 27, 2026); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 14, at 29–38 (Aug. 29, 2025); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 11, 17–21 (Sept. 02, 2025); Taiwan Semiconductor Manufacturing Co. Ltd. v. Marlin Semiconductor Ltd., IPR2025-00847, Paper 11, 3–4 (Director Sept. 3, 2025)(Paper 10, Petitioner’s Opposition to Patent Owner’s Request for Discretionary Denial of Institution is not publicly available); Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 8, at 14–17, and Paper 12, at 2–3 (PTAB July 17, 2025); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 8, at 11–12 and Paper, 12 at 2–3 (PTAB June 12, 2025); Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 15, at 6–9.

[19] Samsung Elecs Co., Ltd. v. Wilus Institute of Standards and Tech., Inc., IPR2025-00933, Paper 11 at 3–4 (PTAB Oct. 10, 2025); IPR2025-00934, Paper 11 at 4 (PTAB Oct. 10, 2025)( referring IPR2025-00988, IPR2025-01043, IPR2025-01044, IPR2025-01069, IPR2025-01110, and IPR2025-01111 to the Board); Tesla, Inc. v. Bulletproof Property management, LLC., IPR2026-00204, 00205, 00219, 00222, 00227, 00228, and 00229, Paper 14 (PTAB June 15, 2026) and Paper 11 (May 19, 2026); Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 20, at 2–3 (Sept. 19, 2025); Samsung Electronics Co., Ltd. v. Wilus Institute of Standards, IPR2025-00935, Paper 12, 2–3 (Sept. 26, 2025); IPR2025-00847, Paper 11, 3–4 (PTAB Sept. 3, 2025 (finding discretionary denial of institution inappropriate in one out of five cases); Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 12, at 2–3(PTAB July 17, 2025) (referring the Petitions to the Board even if the challenged patent had been in force for nine years because petitioner presented persuasive evidence that a prior art cited in the IDS during prosecution teaches the allowable limitation); Microsoft Corp. v. Partec Cluster Competence Cent. GmbH, IPR2025-00318, Paper 9, at 2–3 (June 12, 2025); Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 18, at 2–3 (PTAB June 25, 2025).

[20] IPR2025-00847, Paper 11, 3–4 (IPR2025-00847, Paper 10, Petitioner’s Opposition to Patent Owner’s Request for Discretionary Denial of Institution is not publicly available and IPR2025-00847, Paper 1, Petition for Inter Partes Review, does not refer to Chien et al. (US Pat. 6,815,770, Nov. 9, 2004 (Ex. 1037); reference was only disclosed in IPR2025-00847, Paper 8, filed August 15, 2025).

[21] Xencor, Inc. v. Merus N.V., IPR2025-00604, Paper 12, at 2–3 (PTAB July 17, 2025).

[22] Yealink Network Technology Co., Ltd. v. Barco N.V., IPR2025-00491, Paper 18, at 2–3 (PTAB June 25, 2025); USAA Federal Savings Bank v. PACid Technologies, LLC, IPR2025-00697, Paper 9, at 3 (PTAB Aug. 14, 2025) (allowed claims of a child application directed to one technology based on the prior references cited in the parent application, which was directed on a different technology)

[23] IPR2025-00697, Paper 9, at 3 (PTAB Aug. 14, 2025)

[24] Anthony, Inc. v. ControlTec, LLC, IPR2025-00559, Paper 12, at 2 (PTAB, Jul. 16, 2025)

[25] Id.

[26] IPR2025-00847, Paper 11, 3–4 (Director Sept. 3, 2025).

[27] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 7 (PTAB May 19, 2025); and Paper 16, at 11–15 (PTAB June 25, 2025, on remand) (denying institution of inter partes review on remand under 35 U.S.C. § 314(a))

[28] Id. Paper 16, at 13.

[29] Alliance Laundry Systems, LLC v. Payrange LLC, IPR2025-00573, Paper 9, at 2 (PTAB July 17, 2025); Padagis US LLC v. Neurelis, Inc., IPR2025-00464, Paper 12, 3 (Director July 16, 2025) (Informative).

[30] IPR2025-00464, Paper 12, 3 (Director July 16, 2025) (Informative).

[31] IPR2025-00573, Paper 9, at 2 (PTAB July 17, 2025).

[32] Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1, IPR2025-00701, Paper 9, at 2 (PTAB Aug. 14, 2025)

[33] Harbor Freight Tools USA Inc. v. Champion Power Equipment, Inc., IPR2025-00805, Paper 20, at 2–3 (Sept. 19, 2025).

[34] Ecto World LLC v. Rai Strategic Holdings Inc., IPR2024-01280, Paper 13 at 5–6 (PTAB May 19, 2025)