PacifiCorp v. Birchtech Corp.

Absent exceptional circumstances, when a petitioner files multiple petitions challenging the same claims of a patent in a case where there is a dispute over priority date (for example, one petition under the earlier priority date and one using intervening prior art), 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 is an abuse of discretion because it 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." The Director's order does not overrule a named precedent. It applies the Trial Practice Guide (TPG) § II.D.2 (Dec. 12, 2025), which says one petition should be sufficient in most situations and that multiple petitions may be needed only in "rare" cases such as a "priority dispute requiring arguments under multiple prior art references." It treats CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, Paper 25 (Director June 25, 2025) (informative), as a comparison (the order cites it with "Cf."). For petitioners, a priority dispute no longer justifies a pair of petitions on its own: a petitioner who files one petition on pre-priority art and another on intervening art risks having only the first-ranked petition instituted. Here, the petitioners had ample room, with ten and thirteen grounds across their petitions. For patent owners, the order gives a strong basis to oppose parallel petitions, and to seek Director Review of institution of more than one, where the petitions differ mainly in the priority date they assume. The order cites 35 U.S.C. § 316(b) through the TPG. It cites no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: The order sets no multi-factor test. The Board abuses its discretion by instituting two petitions that each challenge the same claims. Per TPG § II.D.2, one petition should be sufficient in most situations, and multiple petitions may be necessary only in "rare" cases, such as a "priority dispute requiring arguments under multiple prior art references." Even where priority is disputed, absent exceptional circumstances the Board should either resolve the priority date issue or institute, at most, the first-ranked petition. TRIGGERING FACTS: For each of two patents, the petitioners filed two petitions challenging the same claims. They did so primarily to present unpatentability arguments under two potential priority dates: one petition used prior art dated before the patent owner's earliest asserted priority date, and the other used intervening prior art to challenge that date. The petitions presented ten total grounds against the '370 patent and thirteen against the '218 patent, so there was ample room in each petition for multiple grounds. The Board instituted all four petitions, and the parties had already briefed priority and the Board had made preliminary priority findings. KEY QUOTE: "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." (Paper 40, p. 3) PRIOR PRECEDENT AFFECTED: The order follows the Patent Trial and Appeal Board Trial Practice Guide § II.D.2 (Dec. 12, 2025). It cites with "Cf." CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, Paper 25 at 3-4 (Director June 25, 2025) (informative), which explains that the Board should institute review of, at most, one petition challenging a patent. No prior decision is overruled. PRACTICE TIP: Petitioners should present all grounds, including alternative priority-date arguments, in a single petition per patent. They should not file a second petition on a different priority date unless they can show exceptional circumstances. Patent owners should cite this order in preliminary responses and in Director Review requests when parallel petitions are instituted.