Pruning The Branches: Director Limits Parallel PTAB Petitions In PacifiCorp v. Birchtech

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