The patent statute 35 U.S.C. § 325(d) allows the USPTO Director to deny institution of an IPR when “the same or substantially the same prior art or arguments previously were presented to the Office.” In IPR practice, relying on prior art that already had been before the PTO is perfectly acceptable. Under the 2020 decision in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, however, a petitioner must justify the reliance by demonstrating that the PTO made a mistake that is material to the patentability of claims being challenged.

The recent case of Ecto World, LLC and SV3, LLC v RAI Strategic Holdings, Inc. presented a situation in which there were questions of whether a PTO Examiner had considered the prior art on which the petitioner was relying in its IPR petition, and whether the Examiner had made a material mistake. The USPTO Director’s May 19, 2025 decision, reconciling different decisions from different PTAB Boards, sheds interesting light on both questions.