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The USPTO's Acting Deputy Director, Coke Morgan Stewart, issued a decision on October 3, 2025, declining to exercise discretion to deny institution in Carbyne, Inc. v. Tritech Software Systems, IPR2025-00959, Paper 11 (Oct. 3 2025). Carbyne ("Petitioner") filed its petition on May 9, 2025, challenging U.S. Patent RE50,016 E, entitled "SMS communication during emergencies." Tritech Software Systems ("Patent Owner") sought discretionary denial under 35 U.S.C. §§ 314(a) and 325(d), invoking the Fintiv factors and arguing that the petition repackaged prior art previously considered or cumulative of the prosecution record.
325(d): Prior Office Consideration and Material Error
Patent Owner sought denial under § 325(d), asserting that the petition merely reprises art already considered during reissue, or, at most, relies on cumulative variants, and that Petitioner failed to establish the material examination error required by Advanced Bionics. Under Advanced Bionics, the PTAB asks: (1) whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, (2) whether the Office erred in a manner material to patentability.
The Acting Deputy Director concluded that discretionary denial under § 325(d) was not warranted because Petitioner made a persuasive showing of material examination error. During reissue prosecution, the examiner allowed the claims based on a perceived absence in the prior art of: an outgoing text message containing a URL link to web resources; web resources configured to query wireless mobile devices for location; and sharing received location information with an emergency dispatcher. Petitioner demonstrated that the Marr reference (US 2012/0190384 A1), cited on an IDS but not substantively discussed in the allowance rationale, appears to disclose identical limitations: an SMS containing a URL that directs the caller's device to a web server which requests GPS data and relays the location back to the dispatcher. On that record, the Acting Deputy Director concluded that the Office's allowance was materially impacted by error, and § 325(d) did not support denial.
314(a)/Fintiv: Parallel Litigation and Timing
Patent Owner also sought denial under § 314(a), contending that the Fintiv factors favored discretion. The district court set trial for December 14, 2026, the same week as the projected IPR final written decision (December 15, 2026), but median time-to-trial statistics for the Western District of Texas indicated trial may occur as late as September 2027. Patent Owner argued that claim construction and other pretrial work would be substantially underway before institution, that issues overlapped, that Petitioner had offered no stipulation, and that settled expectations stemming from the 2016 predecessor patent weighed against institution. Petitioner responded that meaningful district court investment remained limited, that it intended to seek a stay, that any overlap would be minimized by § 315(e) estoppel, and that the patent's 2024 reissue undercut any settled expectations. The Acting Deputy Director concluded that, on balance, the uncertainty surrounding trial timing and the patent's recent reissue did not favor discretionary denial under Fintiv.
Deputy Director Determination
The Acting Deputy Director found that discretionary denial was not appropriate "in view of all relevant considerations" after a holistic assessment of the evidence and arguments. She emphasized persuasive evidence of material examination error as to Marr under § 325(d) and noted that the Fintiv considerations under § 314(a) did not favor denial given trial‑timing uncertainty and the patent's recent reissue. The petition was referred to the Board to proceed in the normal course, including a merits-based institution decision.
Takeaway: Showing material examination error grounded in the prosecution record can defeat § 325(d) discretionary denial.
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