Squires Tells PTAB That Petitioner’s Inconsistent Claim Constructions Must Be Explained In All Cases

U.S. Patent and Trademark Office (USPTO) Director John Squires issued a Director Review decision on Monday, which he designated as precedential, vacating a decision granting institution of an inter partes review (IPR) because the Board erred in accepting the petitioner’s inconsistent claim constructions without explanation.

In Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (Squires November 3, 2025) (precedential), the PTAB instituted the IPR on September 15, 2025, and Director Review was initiated sua sponte in order to address the claim construction issues. 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. Revvo also did not explain why it was taking a different position in the PTAB proceeding.

Cerebrum argued that the petition should be denied because of the inconsistent positions, which it said amounted to gamesmanship. While the Board acknowledged the argument, it said it “was not persuaded that any gamesmanship occurred because Patent Owner did not dispute any of the claim constructions provided in the Petition.” Under Rule 42.104(b)(3), all that a petitioner must do is identify how the claim language is to be construed,” which Revvo did, said the PTAB.

Cerebrum had cited 10X Genomics, Inc. v. President & Fellows of Harvard College (PTAB Mar. 7, 2024) and Orthopediatrics Corp. v. K2M, Inc. (PTAB Feb, 14, 2019) as evidence that Revvo had not complied with the rule, but the Board noted that those cases “were limited to a petitioner’s alleged inconsistent arguments about whether a claim term is subject to interpretation as a means-plus-function element under 35 U.S.C. § 112(f), which this case did not implicate.”

Squires stepped in to hold 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. Squires’ decision explained:

“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.”

The Board’s rules on claim construction are meant to “discourage petitioners from seeking broader constructions at the Board to support a patentability challenge while seeking narrower constructions in litigation to avoid infringement liability,” added the decision.

When former USPTO Director Andrei Iancu changed the claim construction standard for the PTAB to align with the district courts in 2018—shifting it from the broadest reasonable interpretation (BRI) standard to the Phillips standard—the goal was to give petitioners “less flexibility to advance inconsistent arguments about claim scope, and…to choose a single claim construction that best captures the true meaning of the patent claim,” said Squires. But that is not what happened in this case, since the petitioners are proposing two different claim constructions in two different forums. Such practices are counter to the Office’s goal of “providing greater predictability and certainty in the patent system” and, although a petitioner is not precluded from presenting differing claim constructions, the petitioner must still “explain sufficiently why the different positions are warranted.”

Ultimately, the Board erred in both finding that Revvo complied with Rule 42.104(b)(3) and concluding that a petitioner is only required to explain its different positions when Section 112(f) is implicated. The case was thus vacated and remanded back to the Board for further proceedings.

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Author: Skovoroda