CLIENT ALERT

In PacifiCorp and MidAmerican Energy Company v. Birchtech Corp., the USPTO Director vacated four institution decisions and remanded the proceedings to the Patent Trial and Appeal Board. The petitioners had filed two inter partes review petitions against each of two Birchtech patents, advancing different prior art theories tied to competing priority date positions. The Board initially instituted all four proceedings. On Director Review, those institution decisions were vacated with instructions that, absent exceptional circumstances, only one petition per patent should proceed.

This decision is less about timing and more about trajectory. It reflects where PTAB practice is heading and how the Office expects IPRs to be structured going forward.

The petitioners challenged U.S. Patent Nos. 10,933,370 and 10,926,218 with parallel petitions. One petition for each patent relied on prior art predating the patent owner’s asserted priority date. The second petition challenged that priority date and relied on intervening references. In total, the filings asserted ten grounds against one patent and thirteen against the other.

The Director concluded that this was not the type of rare circumstance that justifies multiple petitions. The Trial Practice Guide explains that one petition should be sufficient in most cases and that multiple petitions are generally unnecessary. Although priority disputes can justify separate filings in limited situations, the Director emphasized that the arguments here could have been consolidated. The petitioners had sufficient word count and structural flexibility to present alternative theories within a single petition per patent.

The concern was practical and systemic. Parallel petitions challenging the same claims can effectively expand the permitted word count and impose unnecessary burdens on both the Board and the patent owner. The statute directs the Office to ensure efficient administration of IPR proceedings. Allowing duplicative institutions risks undermining that mandate.

For patent owners, the ruling reinforces an important procedural protection. Defending the same claims across multiple instituted petitions increases cost, complexity, and strategic pressure. The Director’s intervention confirms that such duplication is not the default and must be justified by truly exceptional circumstances.

For petitioners, the message is strategic. Filing multiple petitions as a hedge against alternative priority outcomes carries risk. If the Board or the Director determines that consolidation was feasible, the result may be vacatur, remand, and loss of control over which petition proceeds. That can materially affect how the case is framed and litigated.

For companies managing high value technology assets, this development is not academic. The number of instituted petitions influences exposure, budget, leverage, and overall dispute posture. Whether defending a core patent or considering an offensive IPR, stakeholders must evaluate not only the strength of the prior art but also how petition architecture aligns with current PTAB expectations.

The broader signal is that post grant practice continues to mature toward disciplined case management. Efficiency and fairness are not abstract concepts. They are being operationalized through institution decisions and Director oversight. Volume for its own sake is increasingly disfavored.

For clients, the takeaway is clear. Procedural design is part of substantive advocacy. Priority analysis, ground selection, and petition structure should be aligned from the outset with an understanding of how the Board is likely to exercise discretion.

At Wood IP, we view PTAB strategy through that forward looking lens. Effective representation requires technical depth, but also precision in how a case is constructed. As Director oversight continues to shape practice, thoughtful structuring at the front end can determine whether and how review proceeds at all.