In an era of heightened discretionary denial of inter partes review (IPR) petitions, petitioners have latched onto the second prong of the Advanced Bionics1 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
