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Acting USPTO Director Issues Precedential Decision Regarding Prior Art Cited in an IDS

May 21, 2025
Client Alert

Washington, DC, May 21, 2025

In a significant development for PTAB practice, on May 19, 2025, Acting USPTO Director Coke Morgan Stewart issued precedential decision Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280, Paper 13 (PTAB May 19, 2025). Petitioner in that case had petitioned the Director to review the Board’s discretionary denial of the petition under 35 U.S.C. 325(d).

The petition relied solely on art that was cited during prosecution in an IDS that contained over 1,000 references. The examiner had noted the large number of references in the IDS, requesting that the applicant identify any “particular reference or portion of a reference” that should be paid particular attention. There was no evidence in the prosecution record that applicant provided that information.

This decision provides further guidance on the PTAB’s prevision decision in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential), which set forth a two-part framework to determine whether institution should be denied under 35 U.S.C. 325(d):

  1. whether the same or substantially the same prior art or argument previously was presented to the Office; and
  2. if the first part is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.

In the Ecto World decision, the Acting Director determined that using art cited in an IDS is sufficient to meet the first part of the Advanced Bionics framework. The Acting Director further determined, however, that the Board may consider other factors under Becton Dickenson factor (f), such as the size of the IDS, as well as the fact that the examiner asked applicant to identify particularly relevant references, which applicant failed to do. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). The Acting Director remanded to the Board to allow further briefing addressing both the Advanced Bionic and Fintiv factors as to whether the petition should be discretionarily denied.

This decision also illustrates the importance of filing a well-thought-out IDS during prosecution. It also highlights the potential consequences of failing to respond to a request from the examiner to identify particular references or portions of references that are most relevant.