The PTAB Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations,” cautioning that multiple petitions can impose “a substantial and unnecessary burden.” While “there may be circumstances in which more than one petition may be necessary,” the Board emphasizes this should be rare, such as “when there is a dispute about priority date requiring arguments under multiple prior art references.” A recent Director Review decision applied these principles in a strict manner—reversing institution grants for parallel petitions even though a priority date dispute was at issue.
In PacifiCorp v. Birchtech, the Director vacated and remanded the Board's institution decisions, finding that the Board abused its discretion by instituting two IPRs for each of the two challenged patents. For each patent, the Petitioner filed a first IPR that presented prior art predating the alleged priority date and a second IPR disputing the priority date and citing art from after that date. Patent Owner requested Director Review following the Board's institution of all four IPRs. The Petitioner maintained that, considering its challenge to the priority date, the Board acted appropriately by instituting parallel petitions. Patent Owner, however, argued that instituting multiple parallel petitions was an inefficient and unnecessary use of the Board's resources.
The Director agreed with Patent Owner, citing the PTAB Trial Practice Guide's explanation that “one petition should be sufficient to challenge the claims of a patent in most situations” and “multiple petitions by a petitioner are not necessary in the vast majority of cases.” He further commented that instituting parallel petitions to challenge “the same claims under two different priority dates effectively expands the permitted word count” and “places ‘a substantial and unnecessary burden on the Board and the patent owner[,] and could raise fairness, timing, and efficiency concerns.'” (citing the PTAB Trial Practice Guide). In the Director's view, the Board should have either resolved the priority date issue or instituted, at most, the first-ranked petition.
The Director acknowledged that the Practice Guide notes that a “priority dispute requiring arguments under multiple prior art references” is an example of a “rare” situation where multiple petitions may be necessary. However, the Director found the circumstances at issue did not warrant permitting the Petitioner two IPR petitions per challenged patent. Specifically, the two petitions presented “ten total grounds challenging the [first] patent and thirteen total grounds challenging the claims of the [second] patent”—leading the Director to conclude that Petitioner “had ample room in each petition to present multiple grounds” and multiple petitions were not justified.
On remand, the Director requested the Board to resolve the priority dispute and institute the appropriate IPR.
Takeaway: This decision highlights that the Board expects parties to be thoughtful about when multiple petitions are warranted and to clearly justify any parallel filings. While the Practice Guide allows multiple petitions in limited circumstances, the Director's analysis shows that the Board will look closely at whether the issues require separate petitions. Both petitioners and patent owners should assess petition economy, clarity of issues, and the specific facts of each case when presenting or challenging multiple filings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
[View Source]
