- Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 20, 2026 · IPR2025-00423 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution of IPR challenging claims 1–4 and 6–29 because it instituted the ranked IPR2025-00422 under the Director’s instruction to maintain at most one IPR.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Paper 34. Birchtech Corp. (“Patent Owner”) filed a Request for Director Review in each case. See Paper 40; IPR2025-00422, Paper 39. The Director denied the request without prejudice in each case and remanded the cases to the Board to “allow discovery, narrowly tailored to resolve the RPI and privity issues.” Paper 49, 4. The Director later issued an Order Supplementing Director Review Decision in each case, instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging” the ’430 patent. Paper 72, 3.” slip op. at 2
Discretionary denialPatents in suitUS 10,668,430 - Freewheel Media, Inc. v. Intent Iq, LLCInstitution deniedPTAB · Oct 3, 2024 · IPR2024-00424 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution of review of the challenged claims under § 314(a), finding the lower-ranked petition did not justify a second set of petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“large number of claims alone is not sufficient to justify the filing of the second set of petitions when the first set already covers all 152 claims of the ʼ260 patent. We therefore turn to Petitioner’s reasons for why it filed the second set of petitions. In this regard, Petitioner identifies three primary “[m]aterial differences between the petition pairs.” Paper 3, 2–5. The first is that the second set of petitions relies on a different set of references, based on Madhavan, rather than Baig. Id. at 2. The second material difference relates to possible priority date issues, and the third relates to possible claim construction issues. Id. We determine that none of these “material differences” are sufficient to justify filing the second set of petitions, including this petition. See November 2019 Consolidated Trial Practice Guide (“CTPG”) 59, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“[O]ne petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. . . . The Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.”).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“IPR2024-00421 and IPR2024-00422, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review in this proceeding. IV. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of the challenged claims of the ’260 patent is not instituted.” slip op. at 11
Discretionary denialPatents in suitUS 7,861,260 - Freewheel Media, Inc. v. Intent Iq, LLCInstitution deniedPTAB · Oct 3, 2024 · IPR2024-00423 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution of inter partes review because Petitioner did not justify its lower-ranked second set of petitions challenging claims already covered by higher-ranked petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“We determine that none of these “material differences” are sufficient to justify filing the second set of petitions, including this Petition. See November 2019 Consolidated Trial Practice Guide (“CTPG”) 59, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“[O]ne petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast” slip op. at 8
Discretionary denialPatents in suitUS 7,861,260 - Lifescan, Inc. v. Facet Technologies, LLCInstitution deniedPTAB · Sep 1, 2023 · IPR2023-00713 · APJ James A Tartal · IPR · Institution
The Board denied institution of review of claims 11–15 under § 314(a), finding petitioner did not justify a second petition challenging the same patent.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“compelled, to institute an IPR proceeding.”). More specifically, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 states that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “multiple petitions by a petitioner are not necessary in the vast majority of cases.” CTPG 59. According to the CTPG, “[t]wo or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b)). The CTPG also sets forth the following guidance: To aid the Board in determining whether more than one petition is necessary, if a petitioner files two or more petitions challenging the same patent, then the petitioner should, in its petitions or in a separate paper filed with the petitions, identify: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” slip op. at 14
Discretionary denialPatents in suitUS 8,840,635 - Lumenis Be Ltd. v. BTL Healthcare Technologies A.S.Institution deniedPTAB · Feb 8, 2022 · IPR2021-01275 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution, finding the petition deficient on most challenged claims and declining review because it could at best succeed on two of fourteen claims and two of three grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“On the current record, we find Petitioner’s contentions that the skilled artisan would have had “two or more” years of experience to be too vague as it encompasses skill levels beyond the proposal level without a defined limit. We, therefore, adopt Petitioner’s proposal except we do not adopt the “or more” terminology above. We determine that with our changes Petitioner’s proposal is consistent with the level of skill reflected in the ’321 patent Specification and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“C. Claim Construction We construe the challenged claims by applying the standard used in federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Neither party seeks claim construction other than the plain and ordinary meaning of claim terms. See Pet. 9; see generally Prelim. Resp.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to deny a petition “even when the petition includes at least one claim subject to a challenge that otherwise meets the criteria for institution.” Consolidated Trial Practice Guide11 at 64; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). The Petition consists of challenges to fourteen claims, each challenged under at least two different grounds of unpatentability, and a total of three grounds of unpatentability. See Pet. 6. For the reasons discussed above, Petitioner has not established a reasonable likelihood of prevailing in demonstrating (1) obviousness of claims 1–7 and 10–14 over Simon alone; (2) obviousness of claims 1–7 and 10–14 over the combination of Burnett ’870 and Magstim; and (3) obviousness of claims 10–14 over the combination of Simon and Burnett ’870. See supra §§ III.D–III.E. Assuming without deciding that Petitioner has demonstrated that there is a reasonable likelihood that claims 8 and 9 would have been obvious over Simon alone or Simon and Burnett ’870, Petitioner at best could succeed in two of fourteen challenged claims and in two of three grounds. Under the circumstances presented—where 11 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated. grounds even though Petitioner could at best succeed in two of fourteen challenged claims and in two of three grounds—we determine it would not be an efficient use of the Board’s time and resources to institute review. See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10– 11 (PTAB Nov. 7, 2018) (informative); see also Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative). Accordingly, we exercise discretion under 35 U.S.C. § 314(a) to decline to institute inter partes review.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Upon consideration of Burnett ’870, including Burnett ’870’s description of “activating two coils ‘differentially’” and the disclosures of Magstim relied on by Petitioner, we are not persuaded that they support using two capacitors or energy storage devices. Instead, the disclosures of Burnett ’870, Burnett ’185, and Magstim are consistent with Patent Owner’s assertions that the Petition demonstrates a teaching of only a single capacitor.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,632,321
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.