Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc.

When a petitioner proposes claim constructions in an IPR petition that differ from the positions it took in parallel district court litigation, the petitioner should, at a minimum, sufficiently explain why the different positions are warranted, whether or not the claim terms implicate 35 U.S.C. § 112(f). Merely stating that the petitioner is adopting or accepting the patent owner's district court constructions is not a sufficient reason, and a Board decision finding compliance with 37 C.F.R. § 42.104(b)(3) on that basis is error. The Director clarified that the Board erred by confining scrutiny of inconsistent claim construction positions to means-plus-function (§ 112(f)) situations, which is how the Board had read 10X Genomics and Orthopediatrics; the order follows Cambridge Mobile Telematics (informative) and Sun Pharm. (Director) on the explanation requirement, and the Board decision relied on a Western Digital ruling that identifying proposed constructions satisfies Rule 104(b)(3). For petitioners, a petition that simply accepts the patent owner's district court constructions, having argued otherwise in court, risks denial of institution; the Director said that would ordinarily follow, and the petition must explain the divergence. For patent owners, the order supports a preliminary response objecting to unexplained inconsistent positions, even where no § 112(f) issue exists. The order cites no Federal Circuit, CCPA or Supreme Court authority; it relies on the Office's 2018 claim construction rulemaking at 83 Fed. Reg. 51,340. LEGAL TEST OR STANDARD: A petitioner is not necessarily precluded from arguing different claim construction positions before a district court and the Board, but it should, at a minimum, explain sufficiently why the different positions are warranted, even where § 112(f) is not implicated. The explanation is assessed under 37 C.F.R. § 42.104(b)(3), which requires a petition to identify how the challenged claim is to be construed. Simply noting adoption of the patent owner's district court proposals is not a sufficient reason. TRIGGERING FACTS: The petitioner proposed no constructions of its own and instead accepted the patent owner's district court constructions, Pet. 9-10. In district court it had proposed different constructions, and the petition gave no explanation for the change. The Board nevertheless found compliance with Rule 42.104(b)(3) because no one disputed the constructions and § 112(f) was not implicated. An example of sufficient reason: a party advances a narrow construction in district court, the court declines to adopt it, and the party then advances the court-adopted broader construction at the Board. KEY QUOTE: "Simply noting that the petitioner is adopting a patent owner's claim construction proposals from district court, however, is not a sufficient reason for advancing different positions in the two forums." (Paper 20, p. 5) PRIOR PRECEDENT AFFECTED: Follows Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8-9 (PTAB Dec. 13, 2024) (informative), and Sun Pharm. Indus. Inc. v. Nivagen Pharm., Inc., IPR2025-00893, Paper 18 at 3 (Director Sept. 19, 2025). Rejects the Board's reading of 10X Genomics, Inc. v. President & Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024), and Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 (PTAB Feb. 14, 2019), as limited to § 112(f). Western Digital Corp. v. Spex Techs., Inc., IPR2018-00084, Paper 14 (PTAB Apr. 25, 2018), was cited by petitioner for the contrary view, and the Director found error in the resulting compliance finding. PRACTICE TIP: If your district court claim construction positions differ from those in the IPR petition, explain in the petition why the different positions are warranted, and do not rely on merely adopting the patent owner's district court constructions. Patent owners should raise unexplained inconsistency in the preliminary response.