TikTok, Inc. v. Shopsee, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner advances different claim construction positions before the Board and in district court (here, no express constructions in the petition but indefiniteness asserted in court) and does not explain why the different positions are warranted, the Director may discretionarily deny institution under 35 U.S.C. § 314(a). A post-hoc stipulation not to pursue the inconsistent position in district court if the IPR is instituted does not cure the problem, because it does not reduce duplication or minimize the potential for inconsistent outcomes. The decision follows and applies the requirement stated in Tesla Inc., v. Intellectual Ventures II, LLC (informative), citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc. (precedential), and clarifies that a claim construction stipulation offered after the fact does not satisfy it. For petitioners, filing an IPR petition that takes no construction positions while asserting indefiniteness in parallel litigation risks denial, and offering to drop the court position upon institution will not rescue the petition. Patent owners gain a basis to seek discretionary denial by pointing to inconsistent district court positions and by arguing that such a stipulation merely swaps one argument for another. The decision cites no Federal Circuit, CCPA or Supreme Court authority; the analysis rests on 35 U.S.C. § 314(a) and Director precedent. LEGAL TEST OR STANDARD: Quoting Tesla, the Director stated that "[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted." A stipulation is then assessed by whether it increases efficiency by reducing duplication between the district court and the Board and minimizes the potential for inconsistent outcomes in the two proceedings. Failing this, the petition is denied under 35 U.S.C. § 314(a). TRIGGERING FACTS: The petition stated that no express constructions were required to find the challenged claims invalid (Pet. 9), while Petitioner asserted certain claim terms were indefinite in district court. Petitioner gave no explanation for the different positions and only stipulated that it would not pursue the indefiniteness arguments if the proceeding were instituted. Petitioner also separately stipulated not to pursue in the parallel litigation the grounds it raised or could have reasonably raised in the petition, or any ground relying on Ohliger or the Veepio system; the Director found that stipulation different in kind. KEY QUOTE: "At best, it replaces one argument in district court for another argument at the Board." (Paper 13, p. 3) PRIOR PRECEDENT AFFECTED: Follows Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative), which cites Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3-5 (Director Nov. 3, 2025) (precedential). The Director declined to modify that precedent to permit a stipulation-based approach. PRACTICE TIP: Before filing, align the petition's claim construction positions with those taken in parallel litigation, or explain in the petition why any difference is warranted; do not rely on a later stipulation to abandon the inconsistent court position, and keep it distinct from a stipulation not to pursue the petition grounds in court.