In a significant shift for the patent world, USPTO Acting Director Stewart's recent decision in Ecto World v. RAI Strategic Holdings has turned heads. The ruling reshapes how the PTAB handles Inter Partes Reviews by giving what many would consider appropriate weight to Information Disclosure Statements - but with a smart twist. While IDS submissions can now block IPR challenges, this protection won't extend to those massive "kitchen sink" IDS filings where applicants dump countless references without flagging the key ones.

The practical impact is pretty straightforward. When a reference appears in an IDS during prosecution, it now satisfies the first prong of the Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB 2020 (1) whether the same or substantially the same prior art was previously presented to the Office, and (2) whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims) regardless of whether the examiner actually cited it in a rejection. Petitioners now face an uphill battle proving the examiner dropped the ball, even if they gave those references just a quick glance. 

But there's a sensible exception. If you try to play the system by filing a massive IDS with thousands of references and ignore the examiner's request to point out what really matters, you might find yourself without this new protection. It's a clever way to encourage more thoughtful IDS submissions.

For practical purposes, this likely means far fewer institutions when the prior art is cited in an IPR.

Ecto World, LLC v. RAI Strategic Holdings, Inc, IPR2024-01280_paper_13_20250519.