On March 19, 2025, the Acting Director issued and designated as precedential a new decision regarding discretionary denials in IPRs, Ecto World, LLC v. RAI Strategic Holdings, Inc. (§ A), IPR2024-01280, Paper 13 (May 19, 2025) (designated: May 19, 2025).
The executive summary:
- For Advanced Bionics Factor 1, IDS citations are enough on their own to show the art was presented to the office, even where the IDS was voluminous.
- For Advanced Bionics Factor 2, Petitioners need to specifically address all of Becton factors (c), (e), and (f) (i.e., they cannot rely on merits of the petition).
This was a director review of a panel decision from March 6, 2025 (before the new March Memos) discretionarily denying based on Advanced Bionics / 325(d), which as a reminder provides a two-part framework for evaluating whether denial under section 325(d) is warranted:
- (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.
Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020).
The panel found Factor 1 met because all the references cited in the petition were listed in an IDS, and found Factor 2 not met because the petitioner didn't specifically address how the office materially erred. However, the IDS in question was over 1,000 references long. Indeed, during prosecution the Examiner specifically noted the IDS contained "an extremely large number of references for consideration" and requested that the applicant identify any particular reference or portion of a reference to which the Examiner should pay particular attention, which the patent owner did not do. So, the petitioner sought review.
The Acting Director vacated and remanded. On Factor 1, she confirmed that merely citing a reference on an IDS, no matter the length, is enough on its own to show the reference was presented to the Office.
On Factor 2, the Acting Director confirmed that Petitioners have to specifically argue how the USPTO erred. That is, they cannot just point to the petition merits and say those show the USPTO erred, they have to specifically address the three Becton factors associated with Advanced Bionics Factor 2:
- (c) ("the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;"),
- (e) ("whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art;"), and
- (f) ("the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments.").
This resolves a panel split, where some panels allowed petitioners to rely on the merits to show error, while others required specific argument in the Advanced Bionics framework.
For this specific fact pattern, the Acting Director called out Factor (f), noting that "the Board should consider a petitioner's argument based on the volume of the references submitted to the Office during examination and any applicant information or assistance regarding the relevance of references." Taken in context, it seems the Acting Director may expect the Board panel will not deny under 325(d) on remand, because of the voluminous IDS.
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