Ford Motor Company v. AutoConnect Holdings LLC

When a petitioner obtains institution on plain-and-ordinary-meaning unpatentability theories but then, in parallel district court litigation, advances broader indefiniteness positions affecting the challenged claims without having presented and reconciled those different claim-construction positions before institution, the Board may vacate institution and deny the petition. This applies the Revvo/Tesla/Terumo line on inconsistent claim-construction and indefiniteness positions; as an informative decision, it is persuasive authority only, not precedentially binding. This applies and reinforces Revvo, Tesla, and Terumo by clarifying that a petitioner cannot cure post-institution inconsistent district-court indefiniteness positions with a conditional stipulation offered only after the patent owner raises the issue. For petitioners, institution is less likely if the petition says plain and ordinary meaning while district-court invalidity contentions assert indefiniteness, so petitions should disclose, explain, and reconcile any § 112(b) positions before institution or avoid inconsistent positions altogether. For patent owners, this enables a discretionary-denial or Director Review argument based on later-served district-court indefiniteness contentions, especially where the indefiniteness theories are broader than terms the petitioner says the prior art satisfies under any construction. The Director relied on PTAB decisions only—Revvo, Tesla, and Terumo—and did not rely on any circuit-level or Supreme Court authority. LEGAL TEST OR STANDARD: The decision did not apply a numbered factor test. The operative standard stated by the Director is: "it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.”" The decision also referenced the Tesla framework as petitioner’s argument that "the prior art discloses the claimed features regardless of how those limitations are construed." TRIGGERING FACTS: Petitioner argued plain and ordinary meaning in the IPR petitions, obtained institution, and then served district-court invalidity contentions on February 6, 2026 asserting indefiniteness for seven terms or phrases impacting all challenged claims; petitioner’s attempted Tesla defense covered only the terms "and/or" and "one or more," while its indefiniteness contentions were broader, and its offer to withdraw indefiniteness arguments was conditional and made only after patent owner raised the inconsistency on Director Review. KEY QUOTE: "As I recently explained, it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.”" (Paper 27, p. 3). PRIOR PRECEDENT AFFECTED: Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632; Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340; and Terumo BCT Inc. v. Haemonetics Corp., IPR2025-01374 are applied and reinforced, not superseded. PRACTICE TIP: Petitioners should disclose and reconcile any district-court indefiniteness or alternative claim-construction positions in the petition or pre-institution briefing; patent owners should promptly submit district-court invalidity contentions showing broader or later-served indefiniteness positions and argue that a post hoc conditional withdrawal stipulation is insufficient.