Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
PacifiCorp, et al. v. Birchtech Corp.
Nos. IPR2025-00687, -00688, -00717, -00718 (PTAB Jan. 12, 2026) (designated precedential on Jan. 12, 2026). Opinion by Squires.
After the Patent Trial and Appeal Board granted institution of four IPR proceedings—two proceedings against each of two challenged patents—the Patent Owner sought Director Review on the ground that institution was an inefficient use of Board resources. The Director of the USPTO agreed, ruling that “the Board abused its discretion in granting institution of two petitions that each challenge the same claims” of the two patents.
The Director noted that 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.’” The Trial Practice Guide further explains that multiple petitions may be necessary in “rare” cases, such as a “priority dispute requiring arguments under multiple prior art references.”
Petitioners argued that having two petitions per patent was appropriate because they presented unpatentability arguments under two different potential priority dates. The Director noted, however, that Petitioners had presented ten total grounds of unpatentability for one of the patents and thirteen total grounds for the other, demonstrating that “Petitioners had ample room in each petition to present multiple grounds,” making this situation “not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.”
The Director held that “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.” The Director thus remanded for the Board to determine which of the two petitions challenging each patent to institute.
Top Glory Trading Group Inc., et al. v. Cole Haan LLC
No. IPR2025-01395 (PTAB Jan. 12, 2026) (designated informative on Jan. 12, 2026). Opinion by Squires.
Patent Owner requested discretionary denial of an IPR petition challenging a design patent. The Director of the USPTO determined that discretionary denial was not appropriate under the circumstances.
In response to Patent Owner’s request for discretionary denial, the Petitioner argued that “a significant change in law” had occurred for design patents after the patent issued. The Director found the argument persuasive, ruling that “the challenged patent was examined and issued under an obviousness standard for design patents that the Federal Circuit has since abrogated, and it is an appropriate use of Office resources to consider the merits of Petitioner’s challenge despite any settled expectations Patent Owner may have.”
Yangtze Memory Technologies Co., Ltd., v. Micron Technology, Inc.
Nos. IPR2025-00098, -00099 (PTAB Jan. 15, 2026) (designated informative on Jan. 16, 2026). Opinion by Squires.
After the Patent Trial and Appeal Board granted institution of two IPR proceedings, the Patent Owner sought Director Review, arguing that (1) the Petitioner is controlled by a foreign government that is ineligible to file an IPR under the Supreme Court’s decision in Return Mail, and (2) the Board erred by failing to determine whether the petitions identified all real parties in interest (RPI).
The Director vacated the Board’s decisions granting institution, denied institution, and terminated the proceedings. First, the Director noted that Return Mail “held that a U.S. ‘federal agency is not a ‘person’ who may petition for post-issuance review under the AIA” but “did not address … whether this statutory prohibition extends to a foreign government.” That is an issue of first impression, which the Director opted not to decide because “Petitioner’s failure to provide clarity as to its actual identity is fatal to its petitions.”
The Director stated that the “central factual question” was whether the Petitioner sufficiently rebutted Patent Owner’s RPI challenges “by showing it had identified all RPIs.” The Director found that, even after receiving briefing from the parties, “we still do not have a sufficient answer to whether all RPIs have been identified.” The Director continued: “Where, as here, a petitioner does not sufficiently fulfill its statutory duty to identify all RPIs, the USPTO’s mandate to protect the public interest is especially compelling.” The Petitioner “spent its briefing arguing what it is not,” leaving the Director unable to conclude that the petitions identify all RPIs. Thus, the petitions were “not in condition for consideration,” and the Petitioner “cannot correct its identification of RPIs to include the foreign government because it would be time-barred.”