Stewart Revives E-Cig Patent Row, Clarifying PTAB Denials

Sterne Kessler’s Ryan Richardson spoke to Law360 to discuss acting USPTO Director Coke Morgan Stewart’s precedential decision in Ecto World LLC et al. v. RAI Strategic Holdings Inc. (IPR2024-01280, before the Patent Trial and Appeal Board (PTAB)). The decision vacated the decision to deny institution of Ecto World LLC’s challenge to the validity of the patent owned by RAI Strategic Holdings Inc., which is the subject of parallel proceedings at the U.S. International Trade Commission.

“We think that the grant of the director review request was a welcome decision in that it is going to, and has, provided some clarity on issues dealing with 325(d) that have traditionally been split amongst the boards over the past number of years, and that’s something that Director Stewart noted in the grant decision as well,” Richardson said.

“It’s going to provide some clarity on how practitioners before the board should deal with 325(d), and particularly how they should deal with the issue of material error,” he added.

The decision also “offers some additional clarity on how the board will treat discretionary denial under Fintiv with respect to parallel ITC proceedings,” Richardson added, referring to the PTAB’s 2020 precedential ruling outlining factors the board will consider when deciding whether to deny inter partes review petitions due to other ongoing litigation.

Ecto World is represented by Ryan C. Richardson, Daniel E. Yonan, Kyle Conklin, and Christopher R. O’Brien of Sterne Kessler Goldstein & Fox PLLC.