Sun Pharm. Indus., Inc. v. Nivagen Pharm., Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner advances a narrower claim construction in parallel district court litigation than the broader (plain and ordinary meaning) construction it urges in its IPR petition, and the petition does not sufficiently explain why the different positions are warranted, that inconsistency weighs in favor of discretionary denial under 35 U.S.C. § 314(a). Here it outweighed the considerations against denial, such as a final written decision likely preceding trial and a recently issued patent. The decision applies the Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00966, Paper 12 (PTAB Dec. 13, 2024) (informative) principle that a party should explain why different positions are warranted, and treats an unexplained inconsistency as a weighty discretionary factor. For petitioners, the petition itself must reconcile any difference between its district court and IPR claim construction positions, or risk denial even when timing and settled-expectations factors favor institution. For patent owners, a petitioner's inconsistent claim construction positions, shown by district court filings, become a strong ground for a discretionary denial request. The decision cites no Federal Circuit or Supreme Court authority; it relies on 35 U.S.C. § 314(a) and a Federal Register notice (83 Fed. Reg. 51342) on adopting the district court claim construction standard. LEGAL TEST OR STANDARD: Discretionary denial under 35 U.S.C. § 314(a) is decided on a holistic assessment of all evidence and arguments, weighing considerations for and against denial. Although a party is not necessarily precluded from arguing different claim construction positions before a district court and the Board, a party should explain why different positions are warranted. TRIGGERING FACTS: Petitioner argued in the IPR that the term "composition" has its plain and ordinary meaning, but in the parallel district court case asserted that the term was narrower than its plain and ordinary meaning. The Petition did not sufficiently explain why it advanced a narrow construction in district court and a broader one in the Petition. Factors against denial were present: projected final written decision in November 2026, no district court trial date with trial not expected before 2029, a patent issued in 2024, and early challenge. KEY QUOTE: "Here, however, Petitioner does not sufficiently explain why it advanced a narrow construction in district court and advances a broader construction in its Petition." (Paper 18, p. 3) PRIOR PRECEDENT AFFECTED: Follows Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00966, Paper 12 at 8 (PTAB Dec. 13, 2024) (informative), for the point that a party should explain why different positions are warranted. No other prior decision is modified. PRACTICE TIP: Before filing a petition, compare the claim construction positions taken in the parallel district court case with those in the petition, and if they differ, expressly explain in the petition why the difference is warranted. For example, the decision says a district court's rejection of a narrow construction would justify urging the court-adopted broader one.