PacifiCorp v. Birchtech Corp.

Director_PTABDecision_Review@uspto.gov 	Paper 40
571.272.7822 	Date: January 12, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
PACIFICORP and
MIDAMERICAN ENERGY COMPANY,
Petitioner,
v.
BIRCHTECH CORP.,
Patent Owner.
IPR2025-00687 (Patent 10,933,370 B2)
IPR2025-00688 (Patent 10,933,370 B2)
IPR2025-00717 (Patent 10,926,218 B2)
IPR2025-00718 (Patent 10,926,218 B2)1
Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office.
ORDER
Granting Director Review, Vacating the Decisions Granting Institution, and
Remanding to the Board for Further Proceedings
1 This order applies to each of the above-listed proceedings.

IPR2025-00687 (Patent 10,933,370 B2)
IPR2025-00688 (Patent 10,933,370 B2)
IPR2025-00717 (Patent 10,926,218 B2)
IPR2025-00718 (Patent 10,926,218 B2)
Birchtech Corp. (“Patent Owner”) filed a request for Director Review
of the Decisions granting institution (“Decisions,” see Paper 292) in each of
the above-captioned cases. See Paper 34 (“DR Request”). PacifiCorp and
MidAmerican Energy Company (“MidAmerican”)3 (collectively,
“Petitioners”) filed authorized responses to the requests. See Paper 37.
Patent Owner argues that institution was an inefficient use of Board
resources where the Board instituted two proceedings against each of
challenged U.S. Patent No. 10,933,370 B2 (“the ’370 patent”) and U.S.
Patent No. 10,926,218 B2 (“the ’218 patent”). DR Request 5. Petitioners
respond that the Board properly instituted two proceedings challenging the
’370 patent and two proceedings challenging the ’218 patent because for
each challenged patent Petitioners filed “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.” Paper 37, 6.
The Board abused its discretion in granting institution of two petitions
that each challenge the same claims of the ’370 patent and ’218 patent. See
Decisions 3. 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.” See Patent Trial and Appeal Board Trial Practice Guide (“TPG”)
2 Citations are to the record in IPR2025-00687 unless otherwise noted. The
parties filed similar papers in IPR2025-00688, IPR2025-00717, and
IPR2025-00718.
3 MidAmerican is only named as a petitioner in IPR2025-00687 and
IPR2025-00688.
2

IPR2025-00687 (Patent 10,933,370 B2)
IPR2025-00688 (Patent 10,933,370 B2)
IPR2025-00717 (Patent 10,926,218 B2)
IPR2025-00718 (Patent 10,926,218 B2)
§ II.D.2 (Dec. 12, 2025).4 The TPG further explains that multiple petitions
may be necessary in “rare” cases, such as a “priority dispute requiring
arguments under multiple prior art references.” TPG § II.D.2.
Here, Petitioners filed two petitions challenging the claims of the ’370
patent and two petitions challenging the claims of the ’218 patent, primarily
to present unpatentability arguments under two different potential priority
dates. See IPR2025-00687, Paper 2, 4; IPR2025-00717, Paper 2, 4.
However, Petitioners present ten total grounds challenging the claims of the
’370 patent and thirteen total grounds challenging the claims of the ’218
patent. See Paper 1, 10; IPR2025-00688, Paper 1, 10; IPR2025-00717,
Paper 1, 10–11; IPR2025-00718, Paper 1, 10–11. Given that Petitioners had
ample room in each petition to present multiple grounds challenging the
claims of each patent, this was not a “rare” circumstance that justified the
filing of multiple petitions against each patent.
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. Instituting more
than one petition to challenge the same claims under two different priority
dates effectively expands the permitted word count, places “a substantial and
unnecessary burden on the Board and the patent owner[,] and could raise
fairness, timing, and efficiency concerns.” See TPG § II.D.2 (citing
35 U.S.C. § 316(b)).
4 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide.
3

IPR2025-00687 (Patent 10,933,370 B2)
IPR2025-00688 (Patent 10,933,370 B2)
IPR2025-00717 (Patent 10,926,218 B2)
IPR2025-00718 (Patent 10,926,218 B2)
Here, the Board should have decided the priority date issue or
instituted only the first-ranked petition challenging each of the ’370 and ’218
patents. Cf. CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068, Paper 25
at 3–4 (Director June 25, 2025) (informative) (explaining that the Board
should institute review of, at most, one petition challenging a patent). As the
parties have already briefed the priority date issue, and the Board has made
preliminary findings on priority, see Paper 29, 25–26; IPR2025-00718,
Paper 34 at 23, the proper course is to remand for the Board to determine
which petition challenging each patent to institute.
Accordingly, Director Review is granted, and the cases are remanded
to the Board panel to determine which of the two petitions challenging each
of the ’370 and ’218 patents to institute. Absent good cause, the Board
panel shall issue its decisions on remand within 30 days.
Having considered the requests and responses, it is:
ORDERED that the requests for Director Review are granted;
FURTHER ORDERED that the Board’s Decisions granting institution
of inter partes review (Paper 29; IPR2025-00688, Paper 29; IPR2025-
00717, Paper 35; IPR2025-00718, Paper 34) are vacated; and
FURTHER ORDERED that the cases are remanded to the Board for
further proceedings consistent with this decision.
4

IPR2025-00687 (Patent 10,933,370 B2)
IPR2025-00688 (Patent 10,933,370 B2)
IPR2025-00717 (Patent 10,926,218 B2)
IPR2025-00718 (Patent 10,926,218 B2)
FOR PETITIONER:
David J. Tobin
Brian W. Oaks
Syed K. Fareed
Christian Tatum
McDERMOTT WILL & EMERY LLP
dtobin@mwe.com
boaks@mwe.com
sfareed@mwe.com
ctatum@mwe.com
R. Scott Johnson
Thomas M. Patton
FREDRIKSON & BYRON, P.A.
rsjohnson@fredlaw.com
tpatton@fredlaw.com
Michelle M. Kemp
PERKINS COIE LLP
kemp-ptab@perkinscoie.com
Michael T. Piery
Lauren C. Bolcar
QUARLES & BRADY LLP
michael.piery@quarles.com
lauren.bolcar@quarles.com
FOR PATENT OWNER:
Hamad M. Hamad
CALDWELL, CASSADY & CURRY P.C.
hhamad@caldwellcc.com
5