Tesla, Inc. v. Intellectual Ventures II LLC

Informative decision only: persuasive authority, not binding precedent. When a petitioner argues in district court that a claim limitation is indefinite but, in its IPR petition, adopts the plain and ordinary meaning, the petitioner's statement that it cannot raise indefiniteness in an inter partes review is not a sufficient explanation of why its different positions in the two forums are warranted, and institution is appropriately denied. The Director applied the requirement that a petitioner who advances different claim construction positions before the Board and a district court must explain why those positions are warranted. The decision applies the rule from Cambridge Mobile (IPR2024-00952, Paper 12, informative) and Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential). It clarifies that the statutory bar on indefiniteness challenges in an IPR does not by itself justify taking different positions in the two forums. A petitioner that argued indefiniteness in district court and then adopted a plain and ordinary meaning at the Board must give a substantive explanation, or it risks denial of institution, even after the Board has instituted. A patent owner can use this in a Director Review request to vacate institution and may cite the petitioner's inconsistent district court positions. The decision relies on the Rule 104(b)(3) requirement that a petition identify how the challenged claim is to be construed. It cites no Federal Circuit or Supreme Court authority as binding on the analysis. LEGAL TEST OR STANDARD: Although the Board's rules do not necessarily prohibit inconsistent claim construction positions before the Board and a district court, a petitioner that advances different positions in the two forums is required to explain why those different positions are warranted (citing Cambridge Mobile and Revvo). A statement that the petitioner cannot raise indefiniteness in an IPR is not a sufficient explanation. Allowing an inconsistent position that detracts from the Office's goal of providing greater predictability and certainty in the patent system supports denial of institution. TRIGGERING FACTS: In district court, Petitioner opposed the plain and ordinary meaning construction and argued that the generating limitation of claim 1 is indefinite. In its Petition, Petitioner said no claim term requires express construction and asked for plain and ordinary meaning. Petitioner's only explanation was that it is statutorily prohibited from raising indefiniteness in an IPR. The Board had instituted, and Patent Owner sought Director Review. The Director said a sufficient explanation might be a showing that, despite the alleged indefiniteness, a skilled artisan would understand that the asserted art satisfies the limitation, such as where a range limitation is unclear only at its outer bounds. KEY QUOTE: "Here, Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation." (Paper 18, p. 3) PRIOR PRECEDENT AFFECTED: Follows and applies Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential), and Cambridge Mobile (cited in the decision as IPR2024-00952, Paper 12 at 8, and as IPR2024-00942, Paper 12 at 8-9) (informative). It does not overrule either decision. PRACTICE TIP: If you argue indefiniteness of a term in district court, do not simply adopt plain and ordinary meaning for that term in the petition and cite the IPR bar on indefiniteness. Either keep the positions consistent or explain why the art meets the limitation even under the alleged indefiniteness. Patent owners should compare the petition with the district court claim construction briefs and invalidity contentions and raise any inconsistency in the preliminary response.