"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.'"
"'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.'"
USPTO Director John Squires designated a Director Review decision precedential addressing parallel IPR petitions challenging the same claims under different priority dates. Birchtech Corp. sought review of four institution decisions involving two patents. Petitioners PacifiCorp and MidAmerican Energy Company filed paired petitions using earlier prior art and intervening prior art to contest priority dates. The Director held the Board abused its discretion by allowing multiple petitions, citing the Trial Practice Guide that one petition should generally suffice and multiple petitions are unnecessary in the vast majority of cases. Multiple petitions may be warranted only in rare, complex priority disputes.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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