McDonnell Boehnen Hulbert & Berghoff LLP
www.mbhb.com
Citation by IDS: So What if I Didn’t?
Introduction
Though neither desirable nor recommended, a patent may issue from an application that in its
specification mentions a reference that was not, during prosecution, separately cited in an
Information Disclosure Statement (IDS).1 Upon realizing that this has happened, what is the
patentee2 to think? To do? Should they do anything?3 Should they immediately seek reissue?
How comfortable should they feel doing nothing?
In our view, the crucial question around which these scattered worries are dancing is this: what,
if anything, does a patentee “get” for that mention of the reference 4 in the specification, with
respect to (1) any statutory (i.e., § 2825) presumption of validity over that reference and (2) any
increased or decreased likelihood of becoming the next victim of the “plague”6 of inequitable
conduct?
For at least the reason that we do not believe that a complete, definitive answer to this question
currently exists, we do not write today to offer one. Instead, and hopefully still usefully, we seek
to provide an analytical structure to patentees finding themselves in this situation, to help them
determine their level of comfort with the option of leaving well enough alone, and in the event
that it becomes necessary, to arm them with the best arguments and authority we have been
able to craft and identify to aid in their attempt to establish that the mention of the reference in
the specification does in fact get them something.
With that, we turn in substance to our analysis, which we have found to be most usefully
separated into three scenarios, treated below in descending order of the level of comfort we
would expect an average patentee to have with each.
Scenario 1: Reference Cited by the Examiner
Our first—and for the patentee the most comfortable—scenario is that, although the
specification does mention a reference that was not separately cited in an IDS, the Examiner
cited that very reference during prosecution. As stated, this is the best case for the patentee,
and of course the best case within the best case is that the Examiner applied the reference to
the claims under § 1027 and/or § 1038, though a citation by the Examiner of the reference as
pertinent but less relevant than the art that was applied to the claims would seem nearly—if not
exactly—as beneficial to the patentee, as to both validity and inequitable conduct.
First, we think it quite clear that in this scenario the patent would enjoy the strongest
presumption of validity that § 282 has to offer, over the entirety of the reference, just as if the
reference had been cited in an IDS.9 In particular, making no distinction between applicant-
submitted and Examiner-located prior art, the Federal Circuit stated in Al-Site Corp. v. VSI
