Ecto World, LLC v. RAI Strategic Holdings, Inc.

When the only prior art a petition asserts was submitted on the applicant's IDS, the first part of the Advanced Bionics framework is satisfied, and the petitioner must still provide its own part-two analysis explaining, with reference to Becton, Dickinson factors (c), (e), and (f), how the Examiner erred in overlooking the art in a manner material to patentability. The Board need not scour the petition to assemble that argument. A petitioner that fails to show Examiner error may still show that discretionary denial under § 325(d) is unwarranted under factor (f), for example through a voluminous IDS and the applicant's failure to respond to the Examiner's request to identify relevant references. The decision resolves a split among Board panels, illustrated by the Chemtronics majority and dissent, over whether a petitioner must analyze part two of Advanced Bionics when the asserted art is on an IDS but the Examiner did not apply it. It clarifies how Advanced Bionics and Becton, Dickinson apply to IDS art. Petitioners cannot rely on the strength of their unpatentability contentions to imply Examiner error. They must make an express material-error argument tied to factors (c), (e), and (f), and they may use the size of the IDS and the applicant's silence as factor (f) facts. Patent owners can insist on an express part-two showing, but they must expect arguments about a voluminous IDS and any failure to respond to an Examiner request for guidance. The Director relied on 35 U.S.C. § 314(a) and Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021) for the Director's broad discretion over institution: the Director is permitted, but never compelled, to institute. LEGAL TEST OR STANDARD: Advanced Bionics two-part framework: (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. Becton, Dickinson factors guide the inquiry. The petitioner's part-two explanation must address factors (c) the extent to which the asserted art was evaluated during examination, including whether it 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. If the Examiner applied the same or substantially the same art, the petitioner must show that the art teaches the claim limitations and that no reasonable examiner could have found otherwise. TRIGGERING FACTS: The Petition relied exclusively on references submitted in an IDS during prosecution. The IDS had over 1,000 references and the Examiner initialed it as considered. The Examiner noted the extremely large number of references and asked the applicant to identify any particular reference or portion to which the Examiner should pay particular attention. The record showed no applicant response. No prior art rejections are described as being based on these references. The Petition gave only generalized statements about the strength of its contentions, with no express material-error argument. KEY QUOTE: "This decision resolves that dispute and clarifies that a petitioner must provide an analysis even when the asserted prior art is on an IDS, but the Examiner did not apply the reference." (Paper 13, p. 5) PRIOR PRECEDENT AFFECTED: Clarifies and applies Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential), and Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). It follows Google LLC v. Valtrus Innovations Ltd., IPR2022-01197, Paper 18, 15 (PTAB June 13, 2023) on prong one, and resolves the panel disagreement shown in Chemtronics USA, Inc. v. Flatfrog Labs., AB, IPR2024-00015, Paper 11 (PTAB Apr. 22, 2024). Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) is addressed only through the remand instruction. PRACTICE TIP: When your asserted art is on an IDS, include an express part-two section in the petition that explains, under Becton, Dickinson factors (c), (e), and (f), how the Examiner erred and why that error is material. Do not count on the claim mapping or merits sections to imply error. Add factor (f) facts such as IDS volume and any applicant non-response to an Examiner request.