- within Intellectual Property topic(s)
In Revvo Technologies, Inc. v Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (PTAB Nov. 3, 2025), Director Squires vacated and remanded the Board's earlier decision granting institution, emphasizing that, absent sufficient reasons explaining why different claim construction positions are warranted, claim construction should be consistent between the PTAB and parallel proceedings.
Before the PTAB, the Petitioner accepted Patent Owner's proposed claim constructions from the corresponding district court proceeding, rather than presenting the constructions Petitioner proposed before the district court. Petitioner stated that its Petition complied with 37 C.F.R. § 42.104(b)(3) (requiring a petition to identify how the claims should be construed), but did not further explain why they presented a different claim construction position before the PTAB. Patent Owner argued that Petitioner's different claim construction positions were improper and amounted to gamesmanship, citing two cases where institutions were denied because petitioners proposed different claim constructions before the Board and in district court without adequate explanation.1 The Board nevertheless granted institution, reasoning that the rulings in these cases only applied to claim constructions implicating the interpretation of means-plus-function elements.
Director Squires sua sponte reviewed and vacated the decision granting institution, holding that "the Board erred by limiting its consideration of a petitioner's differing claim construction positions to instances that implicate means-plus-function interpretation under Section 112(f)." Referencing the 2018 changes to claim construction standards for cases before the PTAB, Director Squires explained that the current PTAB standards ensure that consistency is achieved in claim construction across different forums.2 The Director emphasized that while petitioners are "not necessarily precluded from arguing different claim construction positions before a district court and the Board," they must "explain sufficiently why the different positions are warranted," regardless of whether Section 112(f) is involved. According to Director Squires, such sufficient reasons, for example, may include situations where "a party advances a narrow construction in the district court and the district court declines to adopt the narrow construction." Here, Petitioner's statement that it "accepts Patent Owner's proposed constructions," without further explanation, did not suffice. The case was remanded to the Board for additional briefing regarding why different claim construction positions may be warranted.
Going forward, Petitioners taking different claim constructions in district court and PTAB should be careful to consider the basis for taking different claim construction positions in all instances, and provide adequate explanations for those differences in their petitions even if adopting the Patent Owner's constructions.
Footnotes
1. See 10X Genomics, Inc. v. President & Fellows of Harvard College, IPR2023-01299, Paper 15 at 13 (PTAB Mar. 7, 2024); Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 at 11 (PTAB Feb. 14, 2019).
2. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeals Board, 83 Fed. Reg. 51,340, 51,349 (Oct. 11, 2018).
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