We previously reported on the risks that an inter partes review (IPR) petitioner undertakes when advancing a broad claim construction, e.g., one that the patent owner is advancing but that the petitioner is resisting in a parallel district court case. See PTAB Panels Deny Petitions Based on Deficient Claim Construction Analysis. Recent decisions of Director Squires further highlight that risk. In Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (Nov. 3, 2025) (precedential), Director Squires vacated the Patent Trial and Appeal Board (PTAB)’s decision to institute IPR and remanded the case for further proceedings. The Director held that a petitioner cannot merely adopt the patent owner’s district court claim constructions in an IPR without explaining why those constructions differ from its own positions in litigation.
Background
Revvo Technologies, the petitioner, challenged a patent owned by Cerebrum Sensor Technologies. In its petition, Revvo did not offer its own claim constructions but instead “accepted” the constructions that Cerebrum had advanced in their concurrent district court litigation. Revvo argued that this approach satisfied the requirement of 37 C.F.R. § 42.104(b)(3), which obligates a petitioner to identify how each challenged claim is to be construed. Revvo relied on prior PTAB decisions, such as Western Digital Corp. v. Spex Techs., Inc., which found that identifying proposed constructions is sufficient for compliance with the rule.
Cerebrum Sensor countered that Revvo’s differing positions between the Board and the district court amounted to “gamesmanship.” The patent owner cited prior PTAB cases (10X Genomics, Inc. v. President & Fellows of Harvard College and Orthopediatrics Corp. v. K2M, Inc.), in which the Board denied institution where a petitioner failed to adequately justify inconsistent claim construction positions between the two forums. Cerebrum argued that Revvo’s petition should be denied on similar grounds for noncompliance with Rule 42.104(b)(3).
The PTAB ultimately sided with Revvo, holding that the petition met the formal requirements of the rule by identifying how the claims were to be construed. The Board minimized the patent owner’s gamesmanship argument, reasoning that inconsistency concerns were limited to means-plus-function claim terms under 35 U.S.C. § 112(f), which were not at issue in this case. As there was no dispute regarding the constructions adopted from the district court, the PTAB proceeded to institute review.
Director’s Decision
The USPTO Director vacated the PTAB’s decision to institute review, finding that the Board erred in limiting the requirement to justify differing claim construction positions only to cases involving means-plus-function claims. The Director clarified that a petitioner must always provide a reasoned explanation when taking inconsistent positions across forums, even when §112(f) is not implicated.
The Director emphasized that the PTAB’s claim construction rules are designed to promote uniformity and predictability by aligning the Board’s standard with that used in district courts, as established in the 2018 rule change (83 Fed. Reg. 51,340). Allowing petitioners to argue for broader constructions before the PTAB and narrower ones in district court undermines that goal.
While acknowledging that differing positions are not categorically prohibited, the Director reiterated that such differences must be justified. For example, a party might appropriately take a broader construction at the PTAB if a district court had earlier explicitly rejected its narrower proposal. However, merely “accepting” the opposing party’s prior constructions, as Revvo did, does not constitute a sufficient explanation.
Because Revvo provided no justification for adopting Cerebrum’s district court constructions despite previously advocating different ones, the Director found that the PTAB erred in concluding that the petition complied with Rule 42.104(b)(3). Instead of outright denying institution, however, the Director remanded the case for further proceedings and permitted the Board to request additional briefing on whether Revvo could provide a valid justification.
Application of Revvo: Tesla v. Intellectual Ventures
The Tesla, Inc. v. Intellectual Ventures II LLC decision (IPR2025-00340, Paper 18, Nov. 5, 2025 (informative)), issued just two days after Revvo, marks the first application of that precedent and provides another example of when inconsistent claim construction positions have been found to be unjustified. In Tesla, the petitioner argued in district court that a key claim limitation (“generating said target feature information from said data statistics”) was indefinite, yet before the PTAB urged that the same claim term be given its plain and ordinary meaning. Tesla contended that its differing positions were warranted because indefiniteness challenges cannot be raised in inter partes review proceedings. The Director rejected that rationale as insufficient, explaining that procedural limitations do not excuse inconsistency. Instead, petitioners must demonstrate how an ordinarily skilled artisan would interpret the disputed term consistently across forums.
The Director provided an example of when it may be appropriate to argue indefiniteness in district court and have a different construction at the PTAB:
Petitioner’s explanation may have risen to a sufficient level, for example, if Petitioner had shown that, notwithstanding the alleged indefiniteness of the claim term, an ordinarily skilled artisan would understand that the asserted art satisfies the claim limitation (such as if the limitation prescribed a range and only the outer bounds of the range were unclear).
Here, however, the director found that Tesla merely pointed to the statutory bar on indefiniteness, which is inadequate because Tesla did not reconcile the substantive difference between its indefiniteness argument and its plain-meaning assertion. The Director therefore vacated the institution decision and denied the petition entirely, emphasizing that Revvo requires a meaningful, case-specific justification for differing claim constructions.
Conclusion
This line of decisions reinforces the USPTO’s expectation that petitioners maintain consistency—or provide clear, substantive reasoning for any divergence—between their district court and PTAB claim construction positions. Together, Revvo and Tesla demonstrate that procedural or strategic explanations will not suffice. Instead, petitioners must connect their reasoning to how a skilled artisan would interpret the claims in light of the patent’s disclosure.