‘Informative’ Director Review Decision Expands on Approach to Petitioner’s Inconsistent Claim Constructions

Continuing his pro-patent owner tack so far, U.S. Patent and Trademark Office (USPTO) Director John Squires  on Wednesday designated as “informative” a Director Review decision in which he relied on the recently-designated precedential decision in Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc. to vacate and deny institution of an inter partes review filed by Tesla, Inc.

In Revvo, which was just issued and designated precedential yesterday, Director Review was initiated sua sponte in order to address inconsistent claim constructions proposed by Revvo. 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 and also did not explain why it was taking a different position in the PTAB proceeding. Squires ultimately held 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 and 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.”

In Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (Squires Nov. 5, 2025) (informative), patent owner Intellectual Ventures similarly pointed out that Tesla proposed a specific claim construction in the district court litigation, but in the PTAB proceeding said  the challenged claims should be given their plain and ordinary meaning. In explanation, Tesla merely argued that it is statutorily prohibited from raising indefiniteness challenges in an IPR and therefore the different claim constructions were warranted. Squires rejected that explanation, holding:

“Here, Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation. Indeed, the statement amounts to an assertion that a petitioner should be permitted to raise inconsistent invalidity challenges in the two forums.”

He then offered advice as to how Tesla’s explanation could have been made sufficient:

“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).”

Turning back to Revvo, Squires then explained that “allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in district court fails to further, but instead detracts from, the Office’s goal of ‘providing greater predictability and certainty in the patent system.’”

The PTAB’s decision on institution was thus vacated and the petition denied.

According to the USPTO’s website, an informative decision “provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.” Precedential decisions, on the other hand, establish “binding authority concerning major policy or procedural issues, or other issues of exceptional importance.”