IP Law Daily, PATENT—P.T.A.B.: USPTO designates as precedential decision limiting PTAB petition multiplicity; post-LKQ design patent ruling deemed informative, (Jan 13, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

Two Director-level rulings clarify institution standards under the AIA, addressing duplicative filings and design patent challenges after the Federal Circuit’s shift in obviousness doctrine.

On January 12, 2026, the U.S. Patent and Trademark Office (USPTO) designated two Director-level decisions concerning PTAB institution practices—one as precedential, the other as informative. In PacifiCorp & MidAmerican Energy Company v. Birchtech Corp., IPR2025-00687, Paper 40, USPTO Director Squires vacated the institution of multiple IPR petitions challenging the same patent claims, finding that the PTAB overstepped by allowing duplicative filings. In Top Glory Trading Group v. Cole Haan LLC, IPR2025-01395, Paper 18, the Director declined to deny institution despite the patent owner's request, citing a significant intervening change in design patent law. Together, the rulings clarify the Office’s approach to managing procedural efficiency and the treatment of design patents following the Federal Circuit’s watershed decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280, 1293 (Fed. Cir. 2024).

Multi-petition practice curtailed. The Director’s precedential order in PacifiCorp addressed four IPR petitions filed across two patents owned by Birchtech Corp. Petitioners submitted two petitions per patent—one based on pre-priority art and the other on intervening references—to account for alternative priority positions. The PTAB instituted all four, prompting Birchtech to seek Director Review under 37 C.F.R. § 42.71(d). The Director concluded that the Board abused its discretion. Emphasizing guidance from the PTAB’s own Trial Practice Guide, the decision reaffirmed that one petition should ordinarily suffice and that multiple petitions require rare and compelling justification.

Here, the petitions presented 10 and 13 grounds across the two patents—grounds that could have been consolidated, according to the Director. The existence of a priority dispute did not, standing alone, warrant multiple filings. The Board had already made preliminary findings on priority and had the means to resolve it without expanding the proceeding. The Director further cited the CrowdStrike v. GoSecure informative decision to support a narrower approach, warning that multiple petitions risk expanding page limits, creating undue burden, and raising fairness concerns under 35 U.S.C. § 316(b).

Accordingly, the Director granted review, vacated the institution decisions, and remanded the cases with instructions to institute no more than one petition per patent. The Board was directed to issue its revised decisions within 30 days, absent good cause.

Discretionary denial rejected post-LKQ. In a separate case involving footwear company Cole Haan LLC, the Director designated as informative his decision to allow the institution to proceed despite a request for discretionary denial. Cole Haan’s design patent, U.S. Patent D768,959 S, was challenged by Top Glory Trading Group and DP Dream Pairs Inc. The patent owner argued that discretionary denial was warranted based on expectations tied to the patent’s issuance.

Petitioners countered that recent jurisprudential developments—particularly the Federal Circuit’s decision in LKQ Corp. v. GM Global Tech. Operations LLC, 102 F.4th 1280 (Fed. Cir. 2024)—had fundamentally altered the obviousness standard for design patents. They argued it was necessary to revisit prior grants in light of the new legal framework.

The Director agreed. In his analysis, Director Squires found that the patent had been examined under a now-defunct obviousness standard and that LKQ justified review on the merits. Discretionary denial would be inappropriate where a substantial shift in legal doctrine had occurred. While the written opinion highlighted only select arguments, the Director noted that the determination was based on a holistic review of the full record. The parties were directed not to seek rehearing or further Director Review until the PTAB issued a formal institution notice.

Though not binding, the informative designation reflects the Director’s intention to guide PTAB panels in exercising discretion under § 314(a), especially where intervening case law alters the legal landscape.

Conclusion. The January 12 decisions represent a meaningful calibration of PTAB practice. The precedential ruling in PacifiCorp reinforces constraints on multi-petition filings, while the informative ruling in Cole Haan signals openness to institution when legal standards evolve. As the PTAB adapts to post-LKQ realities, these designations offer important procedural and substantive guidance for parties navigating contested patent proceedings.

News: Patent USPTO