Squires Issues Precedential Decision Holding Parallel Petitions on Same Patent Claims Should Be Rare

The U.S. Patent and Trademark Office (USPTO) designated another Director Review decision precedential on Monday, January 12, following Friday’s designation of four precedential decisions. Today’s decision dealt with parallel petitions on the same patents challenging the same claims under different priority dates and held that such petitions “should be rare”.

The patent owner, Birchtech Corp., filed a request for Director Review of the decisions granting institution in four separate inter partes review (IPR) proceedings challenging two patents. The petitioner, PacifiCorp and MidAmerican Energy Company, argued the four IPRs were properly instituted because “for each challenged patent Petitioners 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 patent owner argued the institutions were an inefficient use of Board resources.

USPTO Director John Squires agreed with the patent owner and said the Board abused its discretion. “The Board’s Trial Practice Guide 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,’” said Squires’ decision. While multiple petitions may be necessary “in rare cases” such as “priority disputes requiring multiple arguments under multiple references,” here, where the petitioners were primarily making unpatentability arguments under two different potential priority dates, “Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent,” so  “this was not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.”

Squires further held that in cases where there are disputes over priority, the Board should either resolve the priority dispute 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,” said the Director Review decision.

Squires ultimately granted Director Review, vacated the institution decisions, and  remanded back to the Board to decide which petition challenging each patent to institute.

Informative Decision on ‘Significant Change in Law’

Squires also designated another decision informative on Monday, following nine informative designations on Friday. The latest Director Discretionary Denial decision denied the patent owner’s request for discretionary denial of institution because the patent at issue was examined and granted under obvious standards prior to the en banc U.S. Court of Appeals for the Federal Circuit decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280, 1293 (Fed. Cir. 2024), which overruled the so-called Rosen-Durling test for determining design patent obviousness. This significant change in design patent law means “it is an appropriate use of Office resources to consider the merits of Petitioner’s challenge despite any settled expectations Patent Owner may have,” said the decision.