What You Need to Know
- Key takeaway #1
A new precedential PTAB decision clarifies that an IPR/PGR petitioner must provide an analysis explaining how an Examiner erred when prior art was of record during prosecution, even when asserted prior art was on an IDS but the Examiner did not apply the reference during prosecution. Otherwise, the Board may use its discretion to deny the petition.
- Key takeaway #2
A petitioner may be able to demonstrate that discretionary denial is inappropriate in situations where an IDS includes an excessive number of references.
Acting USPTO Director Coke Morgan Stewart recently issued a Director Review decision on May 19, 2025, in Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280, Paper 13 (PTAB May 19, 2025), that was subsequently designated as precedential by the Patent Trial and Appeal Board (PTAB). The decision seeks to eliminate inconsistencies amongst PTAB panels in using its discretion to deny institution under 35 U.S.C. § 325(d).
The Director Review decision related to the showing that must be made by a petitioner if prior art was previously presented during prosecution on an information disclosure statement ("IDS") but not relied upon by the Examiner. In particular, certain PTAB panels previously allowed a petitioner to solely rely on the strength of its unpatentability contentions to conclude that the Examiner erred. This decision clarifies that a petitioner must do more. A petitioner must now provide an analysis and explain precisely how the Examiner erred in overlooking the prior art. Otherwise, the PTAB may use its discretion to deny the petition.
The decision stated that a petitioner may satisfy its burden by arguing that the asserted prior art was not a basis for rejection during examination, is not substantially the same as prior art the Examiner applied, and includes specific teachings that "impact patentability of the challenged claims." Likewise, the decision states that a petitioner may point to the fact that even though the asserted prior art is listed on an IDS, the Examiner did not issue any prior art rejections during examination, so the Examiner materially erred by overlooking certain teachings in the prior art on the IDS.
The decision cautions, however, that if the Examiner applied substantially the same prior art during examination, then a petitioner must demonstrate that, for example, the previously presented art teaches the limitations of the challenged claims, and that no reasonable Examiner could have found otherwise. Along those lines, the decision noted that "[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability."
The decision seemingly carves out an exception, however, for unreasonably large IDS statements.1 The decision stated that even if a petitioner fails to make a persuasive argument that the Examiner erred by overlooking particular teachings in the prior art provided on an IDS, a petitioner may be able to demonstrate that discretionary denial is inappropriate based on the volume of references submitted to the USPTO during examination and any applicant information or assistance regarding the relevance of the references. It remains to be seen where the PTAB will draw the line between a reasonable number of references in an IDS versus an unreasonable number.
Footnote
1. The Director noted that most IDSs contain fewer than 25 references. This particular case, where the exception may apply, included an IDS with over 1,000 references.
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