The US Patent and Trademark Office (USPTO) granted Director Review, vacating decisions granting institution of inter partes review (IPR) of the patents at issue, remanded the matter to the Patent and Trademark Appeal Board (PTAB or Board), and designated the decision precedential.
As the USPTO explains,
A precedential decision establishes binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board (see Standard Operating Procedure 2 and Addendum).
An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases (see Standard Operating Procedure 2 and Addendum).
The patent owner, Birchtech Corp., filed a request for Director Review of the Board decisions granting institution of four IPRs challenging two patents.
The patents at issue were US Patents 10,933,370 B2 and 10,926,218 B2. Both patents deal with carbon sorbent particles for removal of mercury from gas streams.
The patent owner argued it was an inefficient use of Board resources to institute two IPRs against each of challenged patents.
The petitioners, PacifiCorp and MidAmerican Energy Company, responded that the Board properly instituted two proceedings for each patent because they filed “one petition using prior art dated before [Patent Owner’s] earliest asserted priority date and one petition challenging the priority date by using intervening prior art.”
The PTAB Trial Practice Guide (TPG) explains 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.”
The TPG further explains that multiple petitions may be necessary in “rare” cases, such as a “priority dispute requiring arguments under multiple prior art references.”
John A. Squires, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, found that the Board had abused its discretion.
Here, noted the Director,
Petitioners filed two petitions challenging the claims of the ’370 patent and two petitions challenging the claims of the ’218 patent, primarily to present unpatentability arguments under two different potential priority dates.
The petitioners presented ten total grounds challenging the claims of the ’370 patent and thirteen total grounds challenging the claims of the ’218 patent.
Said the Director,
Given that Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent, this was not a “rare” circumstance that justified the filing of multiple petitions against each patent.
The Director added:
In any event, absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition. Instituting more than one petition to challenge the same claims under two different priority dates effectively expands the permitted word count, places “a substantial and unnecessary burden on the Board and the patent owner[,] and could raise fairness, timing, and efficiency concerns.”
Instead, said the Director, “the Board should have decided the priority date issue or instituted only the first-ranked petition challenging each of the ’370 and ’218 patents.”
In March of 2025, then-acting-USPTO-Director Coke Morgan Stewart sent a memorandum to all Administrative Patent Judges (APJs) of the PTAB with details on a new interim process for workload management under which she would personally decide on requests for discretionary denials of IPR petitions.
Stewart said that Trump Administration had inherited a backlog of over 800,000 unexamined patent applications.
Rather than IPRs to challenge patent validity, the USPTO now favors Post-Grant Review (PGR) petitions.
A PGR is new inter partes procedure that allows third parties to challenge the validity of issued patents during the nine months following grant of a patent or issuance of a reissue patent.
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