USPTO Director: Board Abused Discretion By Instituting Two IPRs On Same Patent Based On Competing Claim Constructions

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

The two petitions primarily presented two different constructions of a certain claim term—one broader and one narrower. Each petition advanced obviousness grounds according to the respective construction. In total, the two petitions presented eight grounds of unpatentability with significant overlap between them. Patent owner did not take a position on the proper construction of the term in its preliminary response, arguing instead that the claims were not