Reexams Are an Alternative, Not a Fallback: Presentation, Without Consideration, Still Counts Under 35 U.S.C. § 325(d)

The Next Landscape Shift, and Why It Matters

As we have previously addressed (here and here), the PTAB landscape has changed dramatically over the past year, particularly with respect to inter partes review (“IPR”) institution practices.  Understandably, patent challengers have pulled back from IPRs and looked for another vehicle outside of the Patent Trial and Appeal Board (“PTAB”) to carry their invalidity arguments. Ex parte reexamination (“Reexam”) proceedings—which have not, to date, been subject to PTAB’s discretionary denial/settled expectations framework that has helped flip the ratio of granted versus denied IPR institution decisions since 2025—appeared to be a good fit under the circumstances.

But a recent Reexam denial involving Geotab challenging a Fractus-owned patent (Reexam Control No. 90/015,984; referred to as “Geotab Reexam” below) suggests that the impacts of discretionary denial do not stop at the PTAB’s door. 

The USPTO has now signaled that a failed IPR may preclude a challenger from later pursuing a Reexam using the same art to cover the same claims—even where the prior art arguments were never addressed on the merits. In short:

• Failed IPRs may foreclose later Reexam challenges based on the same prior art, even when the PTAB never reaches the merits.
• Section 325(d) may be applied broadly, suggesting that merely presenting prior art to the Office may be enough to trigger denial.
• Challengers may need to make an early strategic choice between IPR and Reexam rather than viewing Reexam as a backup option.
• Patent owners may gain additional value from discretionary institution denials, using prior proceedings to defeat later validity challenges.
• Procedural decisions increasingly have substantive consequences across USPTO forums.

Now, those who want to challenge a patent’s validity may need to pick a single vehicle: IPR or Reexam, not both.

Reexam Filings Surge as IPR Institution Becomes Less Predictable

The numbers confirm that Reexam proceedings have become increasingly popular as IPR institutions have become less predictable, starting with Acting Director Coke Morgan Stewart and continuing under Director Squires. Since 2021, quarterly Reexam filings generally fluctuated around 70 to 100 filings per quarter through 2021-2024, then surged in late 2025 and early 2026, reaching roughly 275 filings in 2026 Q1 and remaining elevated at around 250-plus filings in 2026 Q2.

Understanding the Reexam-IPR Divide

Reexams have been available for decades, but they have historically been disfavored by those facing patent infringement claims because patent challengers have less involvement after filing the Reexam request, timelines are less certain, and patent owners have a de facto opportunity to amend claims as compared with IPR proceedings. 

Reexams also differ from IPRs because they are not subject to the PTAB’s current discretionary-denial framework, including the settled-expectations analysis that has become central to many recent IPR institution denials. The ordinary threshold question for Reexams is whether the prior art presented in the request raises a substantial new question of patentability affecting any claim of the challenged patent.  Section 325(d), however, gives the USPTO Examiner a basis to deny a Reexam request where the “same or substantially the same prior art or arguments previously were presented to the Office.”

The Geotab Reexam: When Prior Presentation Is Enough

But in Geotab’s case, the USPTO did not reach the substantial-new-question analysis. Instead, the Office compared the Reexam request to Geotab’s prior IPR petition, concluded that the same requester (Geotab) previously presented the same prior art asserted in the failed IPR for 18 of the 19 challenged claims, and denied the request under 35 U.S.C. § 325(d).

Geotab’s Reexam request challenged the same 18 of the 19 claims as its failed IPR, but it also included an additional challenged claim not addressed in the IPR petition, and, for certain overlapping claims, included additional references beyond those used in the IPR. The Office nonetheless denied the request under § 325(d) without separately analyzing whether the additional claim or additional references created a substantial new question of patentability, highlighting the “all or nothing” nature of Reexam requests.

A Broad Reading of “Previously Presented”

The USPTO’s denial of Geotab’s Reexam request suggests the Office is taking Section 325(d)’s previously “presented” literally. If an IPR is denied on discretionary grounds without any consideration of the prior art's merits—as in the case of an IPR denied in light of the patent owner’s settled expectations—the patent challenger may not actually have its invalidity arguments heard. But for § 325(d) purposes, the USPTO is nevertheless willing to consider those arguments as having been “presented” to the Office.

The Open Question: How Different Is Different Enough?

Now the question remains: how different must a Reexam request be to keep it from being denied as a recycled IPR under Section 325(d)?

The Geotab decision leaves unanswered where the line will be drawn. Is a new claim sufficient? Are additional references enough? Must the requester advance materially different invalidity theories? For now, the Office has provided little guidance regarding the degree of distinction necessary to avoid § 325(d) scrutiny.

Practical Recommendations for Patent Challengers

Reexams may still be a useful tool, but, after an unsuccessful IPR, they should not be treated as an automatic backup plan. A challenger who is worried that an IPR petition may be discretionarily denied should consider not only whether different references or combinations are available, but also whether the IPR and Reexam should be aimed at meaningfully different claim sets, references, or invalidity theories.

The unresolved practical issue is how much meaningful distinction is needed to avoid § 325(d) treatment as a repackaged IPR.

Practical Recommendations for Patent Owners

For patent owners, there is also a lesson to be learned. A discretionary IPR denial may have value beyond the IPR itself. Even where the Board has not sustained the patent on the merits, the patent owner may be able to use the prior IPR record to argue that the art or arguments were already “presented” to the Office. 

Where the requester recycles prior art, claim charts, obviousness combinations, or expert-driven theories from an earlier Office proceeding, § 325(d) should be evaluated immediately. 

Looking Ahead: A Unified USPTO Approach to Serial Validity Challenges

The Geotab Reexam request also underscores a broader theme from the PTAB institution developments of 2025 and 2026: procedural choices can now carry more consequences down the line.  

The earlier “PTAB pendulum” discussion focused on IPR institution.  The Geotab Reexam request suggests the next phase is about how the USPTO as a whole manages validity challenges from the same challenger across procedural channels—and how § 325(d) may connect proceedings that challengers previously treated as separate strategic options.

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