'Informative' Director Review Decision Expands on Approach to Petitioner's Inconsistent Claim Constructions

"Here, Petitioner's statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation. Indeed, the statement amounts to an assertion that a petitioner should be permitted to raise inconsistent invalidity challenges in the two forums."

"Although the Board's trial rules 'do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a district court,' when a petitioner takes alternative positions before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted."

"In Revvo, which was just issued and designated precedential yesterday, Director Review was initiated sua sponte in order to address inconsistent claim constructions proposed by Revvo. Revvo in its petition accepted Cerebrum's proposed claim constructions from the parallel district court litigation, even though Revvo had proposed different constructions for the relevant claim terms in the district court and also did not explain why it was taking a different position in the PTAB proceeding. Squires ultimately held that the Board erred in suggesting that consideration of a petitioner's inconsistent claim constructions is limited to cases that involve means-plus-function interpretation and explained:"

USPTO Director John Squires designated a Director Review decision as informative and relied on the precedential Revvo decision to vacate and deny institution of an IPR filed by Tesla. Revvo involved a petitioner accepting opposing claim constructions from a parallel district court without explaining the differing positions. Squires held that the Board erred by limiting scrutiny of inconsistent claim construction positions to means-plus-function cases. Squires instructed that petitioners taking alternative positions before the PTAB and a district court must, at minimum, explain why alternative positions are warranted. A blanket statement about indefiniteness in IPR is insufficient.

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