The USPTO Director has now issued a consistent and growing body of decisions making clear that inter partes review petitioners who advance different claim construction positions before the PTAB and in co-pending district court litigation do so at their peril. Over the past several months, a series of Director-level rulings, anchored by one precedential decision and several informative ones, have established and reinforced a rule with significant practical consequences for any company simultaneously defending a patent case in district court while challenging the same patent at the Board.
Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632 — Paper 20 (Nov. 3, 2025) & Paper 36 (Jan. 26, 2026) (Precedential)
In the first Revvo decision, the Director initiated sua sponte review after the Board granted institution despite Revvo having adopted the patent owner’s district court construction in the petition, without explaining why its own preferred district court construction was being abandoned. The Board had reasoned that taking inconsistent positions mattered only when means-plus-function terms under 35 U.S.C. § 112(f) were implicated. The Director squarely rejected that narrow reading: the obligation to explain divergent claim construction positions applies across the board, regardless of whether § 112(f) is at issue. The decision vacated institution and remanded for further briefing. In its decision, the Director noted that an example of where a party could make inconsistent claim constructions before the Board and in district court would be “if a party advances a narrow construction in the district court and the court declines to adopt the narrow construction, the party would have sufficient reason for advancing the broader, court-adopted construction in the proceeding before the Board.”
On remand, the Board again granted institution — this time crediting Revvo’s argument that it could not wait for the district court’s still-pending claim construction ruling before filing a timely petition and that the court could reject the narrower construction. The Director again disagreed and again vacated institution. The Director’s January 2026 follow-up order clarified that the “exemplary logic” for permitting divergent constructions is limited to situations where the district court has already rejected a petitioner’s preferred construction — not where a petitioner is merely speculating that the district court might do so in the future. Allowing a petitioner to adopt a “wait and see” posture, the Director wrote, is not permitted.
Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 — Paper 18 (Nov. 5, 2025) (Informative)
In Tesla, the petitioner argued indefiniteness in the district court — contending that a skilled artisan could not determine the meaning of a claim limitation with reasonable certainty — while simultaneously asking the Board to apply “plain and ordinary meaning” to the same limitation. When Patent Owner raised this inconsistency in a Director Review request, the Director vacated institution. Tesla’s defense — that it was statutorily prohibited from raising indefiniteness in an IPR — was rejected as insufficient. The Director explained that the statutory bar on indefiniteness challenges in IPRs does not justify adopting a plain-and-ordinary-meaning position before the Board when the petitioner has argued the term cannot be understood in district court. The decision noted that a sufficient explanation might exist if the petitioner had shown that, notwithstanding alleged indefiniteness, a skilled artisan would understand the prior art satisfies the limitation regardless of where the boundaries lie. Tesla made no such showing. The Director noted that indefiniteness could be argued in district court and not in the petition if “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).”
Terumo BCT Inc. v. Haemonetics Corp., IPR2025-01374 — Paper 20 (May 12, 2026) (Informative)
Terumo sharpened the rule by adding a timing dimension. Terumo’s petitions asserted that claims “need no construction,” but one week after institution was granted, Terumo filed invalidity contentions in district court arguing that claims reciting “controller” were indefinite under § 112(f). The Director found this pattern, advancing inconsistent positions at the first opportunity after institution, paradigmatic of the conduct the rule was designed to prevent. Importantly, the Director framed the inquiry broadly: the question is whether a petitioner’s conduct reveals that the IPR is being used not as a “litigation alternative” as Congress intended, but as a vehicle for maintaining inconsistent positions to gain a strategic upper hand in the overall litigation. Institution was vacated.
TikTok, Inc. v. ShopSee, Inc., IPR2025-01485 — Paper 13 (Jan. 16, 2026) (Informative, designated May 13, 2026)
TikTok addressed whether a petitioner can cure the inconsistency problem through post-hoc stipulation. After patent owner raised the indefiniteness vs. plain-meaning discrepancy, TikTok offered to withdraw its indefiniteness arguments from district court if the IPR was allowed to proceed. The Director rejected this as a cure. The decision drew a sharp distinction between two types of stipulations: a stipulation not to pursue in district court the same invalidity grounds raised or reasonably raisable in the IPR, which promotes efficiency and reduces duplication, versus a stipulation merely to stop arguing inconsistently, which only swaps one forum’s argument for another’s. The latter provides no systemic benefit, and the Director declined to use it as a basis for maintaining institution.
Ford Motor Company v. AutoConnect Holdings LLC, IPR2025-01342, -01383, -01524 — Paper 27 (May 12, 2026) (Informative)
Ford applied the Terumo framework to a multi-IPR context involving three related patents. After institution was granted, Ford served district court invalidity contentions asserting that seven claim terms across all challenged patents were indefinite — terms it had not construed (or had construed as having plain and ordinary meaning) in the petitions. Ford argued that its indefiniteness positions for two specific terms (“and/or” and “one or more”) fit within the Tesla safe harbor because the prior art would anticipate or render obvious the claims regardless of how those terms were construed. The Director acknowledged that argument but found it unavailing because Ford’s indefiniteness contentions reached far beyond those two terms. Ford’s offer to stipulate to withdraw all indefiniteness arguments offered only after the violations were brought to the Office’s attention was also rejected under the same rationale applied in TikTok.
Practical Takeaways
Taken together, these decisions establish a clear pattern. A petitioner is not categorically forbidden from advancing different claim construction positions before the PTAB and in district court, but it must explain, in the petition itself, why those different positions are warranted. The explanation must be substantive. Pointing to the statutory bar on indefiniteness challenges in IPRs, asserting that a claim term is “not in controversy,” or noting that district court claim construction is still pending will not suffice.
The two recognized bases for diverging constructions are: (1) where the district court has already rejected the petitioner’s preferred narrower construction, prompting a broader position before the Board, and (2) in the indefiniteness context, where a limitation prescribed a range and only the outer bounds of the range were unclear.
The decisions also signal that the timing and sequencing of how inconsistent positions come to light matters. Petitioners who adopt a plain-and-ordinary-meaning posture in a petition and then assert indefiniteness in district court contentions served after institution, even one week after, will find that the Director views such conduct as evidence that the IPR is being used strategically rather than as a genuine alternative to litigation. Moreover, a post-hoc offer to withdraw the inconsistent position, offered only once caught, will not restore institution.
For legal departments and outside counsel managing parallel IPR and district court proceedings, the practical implication is straightforward: claim construction strategy must be unified and considered before the petition is filed, not after. If there is a legitimate reason to advance different constructions in the two forums, that reason must be articulated in the petition. Finally, if indefiniteness will be a meaningful argument in district court, counsel should carefully assess whether and how to proceed with an IPR petition on the same claims.