Terumo BCT, Inc. v. Haemonetics Corp

When a petitioner states in an IPR petition that challenged claims need no construction or should receive their plain and ordinary meaning, but advances a materially different district-court claim-construction/indefiniteness position—especially that a term is governed by § 112(f)—without adequate explanation, the Director may vacate institution and deny review. Rule 42.104(b)(3) requires the petition to “identify how each challenged claim is to be construed” and, for a means-plus-function limitation, to “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” As an informative decision, this is persuasive authority only, not binding precedent. This clarifies and reinforces Revvo and Tesla by applying their anti-inconsistent-construction rule to post-institution district-court indefiniteness contentions and rejects the argument that a term is exempt from Rule 42.104(b)(3) merely because petitioner says it is not material to the IPR grounds. Petitioners face a higher risk of discretionary denial or vacatur if they reserve or later assert inconsistent district-court constructions; petitions should either use the same construction advanced in court or explain any difference, and must address § 112(f) structure if the petitioner is taking that position elsewhere. Patent owners should monitor parallel-litigation claim charts and invalidity contentions, including those served after institution, and use Director Review or preliminary-response arguments to show unexplained inconsistency, shared counsel, and Rule 42.104(b)(3) noncompliance. The Director did not rely on any binding circuit-level or Supreme Court authority; Realtime Data, LLC v. Iancu was cited by petitioner but found inapposite because it concerns when the Board must construe a term, not when a party must follow Board rules. LEGAL TEST OR STANDARD: The decision did not apply a numbered multi-factor test. The controlling standard applied was that “a petitioner should present a single construction and apply that construction consistently before the Board and the district court,” and that where a petitioner takes a § 112(f) position, Rule 42.104(b)(3) requires identification of the corresponding structure, material, or acts in the specification. TRIGGERING FACTS: The petitions stated the claims “need no construction” and advanced plain-and-ordinary meaning for all claim terms; one week after institution, the same petitioner, represented by the same counsel in district court and at the PTAB, served district-court invalidity/claim-construction contentions asserting that claims reciting “controller” terms were indefinite because those “controller [is/further] configured to” terms were governed by § 112(f) and lacked sufficient structure. KEY QUOTE: 'Petitioner’s assertion that the term “controller” is not in controversy in these IPRs and so it was not required to construe the term in the Petitions is an inadequate justification for the different positions.' (Paper 20, p. 3). PRIOR PRECEDENT AFFECTED: Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential), and Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (Director Nov. 5, 2025) (informative), are clarified and reinforced; Infineon Techs. Am. Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 (Director Mar. 17, 2026), is also cited for the single-construction principle. PRACTICE TIP: Petitioners must audit all district-court claim-construction, indefiniteness, and § 112(f) positions before filing and before institution, and either align the petition with those positions or expressly explain any difference; patent owners should cite any later-served inconsistent court contentions as evidence supporting Director Review, vacatur, or discretionary denial.