Overview
USPTO Director Squires has doubled-down on his stance that consistency of proposed claim construction between the PTAB and the courts matters.
In November, Director Squires issued two decisions which sent a clear signal: parties cannot freely advance different claim construction positions between parallel district court litigation and PTAB proceedings without consequence. In Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Nov. 3, 2025) (precedential), Director Squires vacated the PTAB’s decision of instituting an IPR due to Revvo embracing Cerebrum’s proposed constructions at the PTAB while pushing narrower ones in district court. Likewise, in Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (Nov. 5, 2025) (informative), Director Squires considered and rejected the Petitioner’s arguments for advancing inconsistent claim construction positions because indefiniteness challenges cannot be raised in IPR reviews.
The takeaway from both cases was clear – if “a petitioner advances different positions between the Board and a district court, that petitioner is required to explain why those different positions are warranted.” IPR2025-00340, Paper 18 at 3. The open question, however, is what does the Director consider to be “different positions”?
Last week, Director Squires revisited Revvo and provided some needed clarity on when an explanation for inconsistent claim construction proposals is sufficient. IPR2025-00632, Paper 36 (Jan. 26, 2026). After his November decision, the Board re-instituted the IPR, reasoning the Petitioner had offered a sufficient explanation for its inconsistencies because a district court “might in the future decline to adopt constructions that a petitioner proposes in a related court of litigation.” IPR2025-00632, Paper 30 (Jan. 14, 2026). However, Director Squires disagreed and found the Board’s decision “mischaracterize[d] both [his] decision and its import.” Instead, declaring that “simply put, you can’t have it both ways and certainly not without a sufficient explanation,” he found that “Petitioner’s explanation here amounts to nothing more than an assertion that a petitioner should be permitted to raise different claim constructions in the two forums when there is a chance that the district court will reject that petitioner’s preferred construction.” Director Squires then clarified his “exemplary logic” and explained that a party may “proffer a different, broader construction before the Board when the district court already has rejected petitioner’s narrower construction.” In denying institution, Director Squires explicitly noted that his November 2025 precedential decision “does not provide for conditional future outcomes, and while petitioner would no doubt like to ‘wait and see,’ we cannot and will not.” Instead, petitioners should pick a lane and stay in it.
Practical Takeaways for Petitioners. Petitioners should assume their district court claim construction positions will be analyzed side-by-side with their PTAB arguments and likely will impact institution decisions. This means claim construction strategies should be coordinated early and consistently across forums and should specifically include early considerations of § 112 positions that even arguably relate to claim construction. Additionally, if a petitioner picks the lane that the claims are indefinite, they should be prepared to explain their position of why it is not inconsistent with their prior art arguments. No longer should petitioners expect to be able to advance inconsistent claim construction positions capitalizing on the different forums.
Practical Takeaways for Patent Owners. Differing claim construction positions have been cast into the spotlight giving patent owners newfound leverage at the PTAB. Highlighting inconsistencies between a petitioner’s district court and PTAB positions can be an effective tool at the institution stage. However, patent owners should be mindful of the importance of maintaining their own consistency, as contradictory constructions could be equally damaging as courts consider credibility, estoppel, and PTAB reasoning in parallel litigation. A tailored construction of terms should be carefully adopted to survive invalidity challenges, but not to constrain infringement proceedings.
