Petitioners often seek to challenge claims applying the same claim scope under which the Patent Owner is prosecuting a parallel infringement action. However, two recent decisions from the PTAB highlight the risk that a Petitioner takes when it proffers—but fails to adequately support—such constructions.
Vicor v. Delta
In Vicor Corp. v. Delta Elecs., Inc., IPR2024-00704, Paper 11 (PTAB Oct. 2, 2024), the PTAB rejected a challenge that it found was based on an unsupported claim construction. The Petitioner’s Ground 1 was based on what it alleged were the Patent Owner’s “apparent” or “assumed” constructions in a co-pending litigation. Id. at 7-8. However, in an omission that the PTAB termed “fatal,” the Petitioner failed to establish that such interpretations were correct. Id. at 8. Indeed, by presenting alternative unpatentability arguments in Ground 2 under what the Petitioner stated was the “proper” construction, the PTAB found that the Petitioner effectively conceded that its Ground 1 arguments were based on incorrect claim constructions. Id. at 8-9. The PTAB thus found that the Petitioner had not supported the claim constructions on which Ground 1 was based and rejected that challenge. Id. at 9. The PTAB rejected Ground 2 for other reasons, and thus the PTAB declined institution. Id. at 9-10.
Microchip v. Aptiv
A different PTAB panel reached a similar result in Microchip Tech. Inc. v. Aptiv Techs. AG, IPR2024-00494, Paper 12 (PTAB Oct. 7, 2024). There, the Petitioner challenged a patent claim that it had argued was indefinite in a parallel district court proceeding. Id. at 10. The allegedly indefinite element was “a USB Hub having a plurality of USB ports.” Id. at 9. In its petition, after acknowledging its indefiniteness argument, the Petitioner stated, “But if the district court adopts [Patent Owner]’s proposed interpretation of claim 1 . . ., the PTAB should analyze patentability under the district court’s claim construction.” IPR2024-00494, Paper 2 at 27. The PTAB denied the petition on three related bases.
First, the PTAB found that the petition was “contingent” and that the contingency was not met. Specifically, according to the PTAB, the Petitioner’s argument that the district court’s construction should apply if the district court adopted the Patent Owner’s construction rendered the construction contingent on that event. IPR2024-00494, Paper 12 at 8-9. However, the district court did not adopt a construction proposed by the patent owner. Indeed, in the district court, the parties disputed only indefiniteness and neither party proposed a construction. Id. at 9 n.2. Thus, according to the PTAB, “The contingency upon which the claim construction in the Petition is based has not been met and, according to its own terms, the Petition should be denied.” Id. at 9-10.
Second, the PTAB found that the Petitioner’s apparent construction of the element “a USB Hub having a plurality of USB ports” was not adequately supported. The Petitioner equated “having” with “interconnected to” or “possessing.” The PTAB found that the petition did not include any explanation or reasoning to support that apparent construction. Id. at 10. On the other hand, the Patent Owner contended that the disputed phrase did not require construction. Id. at 12. The PTAB thus refused to adopt a claim construction that was not adequately supported by either party. Id.
Third, the PTAB found that the petition failed to properly show that the prior art satisfied the “a USB Hub having a plurality of USB ports” element. As discussed immediately above, the petition’s substitution of “having” with “interconnected to” or “possessing” was not properly supported. Further, the PTAB noted that the district court determined that “having” was not equivalent to “interconnected to” or “possessing.” Id. at 13-14. Thus, the petition was directed at challenging the claims under a construction that was not correct, and the petition was denied. Id. at 13.
Other PTAB Decisions
The panel decisions in Vicor and Microchip are only the most recent that have addressed whether to apply a construction that the Patent Owner has sought or obtained in a parallel proceeding in an IPR. The decisions to date have not been uniform. Specifically, unlike Vicor and Microchip, the PTAB has in some circumstances adopted a Patent Owner’s apparent claim construction in a parallel action or a construction rendered in a parallel action. For example, in 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00088, Paper 8 (PTAB Apr. 27, 2020), the PTAB adopted, for purposes of institution, one of Petitioner’s alternative constructions, which was based on what the Petitioner “expected” Patent Owner to propose in a parallel litigation. Id. at 13. In 3Shpae A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (PTAB May 26, 2020), the PTAB adopted, for purposes of institution, the constructions rendered in a parallel ITC investigation. Id. at 15. In response to Patent Owner’s complaint that the Petitioner had merely presented the ITC constructions without any explanation as to why those constructions were correct, the PTAB stated, “Our rules do not require a petitioner to provide a claim construction analysis.” Id. at 14.
Conclusion
Absent further clarity from the PTO or Federal Circuit, panels may continue to reach differing conclusions on the extent to which to adopt a claim construction that was advanced by the Patent Owner in a parallel proceeding. Thus, a Petitioner that merely presents the Patent Owner’s stated or apparent view of its claims from another action risks having its petition denied.