By Ian Adams, Matt Modderman, Matt Johnson –
USPTO Director John Squires issued a decision on October 3, 2025, denying a request to discretionarily deny institution in Caption Health, Inc. v. The University of British Columbia, IPR2025-01422, Paper 15 at 3 (Dec. 18, 2025). Director Squires denied the Patent Owner’s request because the Petitioner stipulated to use the same claim construction in the Patent Trial and Appeal Board (“PTAB”) proceeding as in the parallel district court litigation.
Petitioner Caption Health filed its petition on August 15, 2025, challenging U.S. Patent 10,751,029, which claims a method of analyzing ultrasound images. The Patent Owner requested discretionary denial of the petition, arguing that the Petitioner had submitted inconsistent claim construction theories regarding the term “quality assessment value” in its IPR petition and the co-pending district court case. Caption Health, IPR2025-01422, Paper 9 at 5. In response, the Petitioner argued that it sought to use the same construction in both proceedings and simply provided more detail in the district court case. For the avoidance of doubt, the Petitioner stipulated to use the same construction in both proceedings. Caption Health, IPR2025-01422, Paper 11 at 7–8.
To assess the Patent Owner’s request for discretionary denial here, Director Squires followed his prior precedential decision in Revvo Tech., Inc. v. Cerebrum Sensor Tech., Inc., IPR2025-00632, Paper 20 (Nov. 3, 2025). In Revvo, the Petitioner advanced different claim construction theories before the PTAB and the district court before accepting the Patent Owner’s proposed construction from the district court proceeding. Id. at 2. The Petitioner provided no explanation detailing why it advanced different claim construction theories. Director Squires reasoned that “when a petitioner takes alternative positions before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted.” Id. at 3–4. The Petitioner’s decision to accept the Patent Holder’s claim construction was insufficient to warrant institution without also providing an explanation for the different theories. Taken together, Director Squires concluded that, “although a petitioner is not necessarily precluded from arguing different claim construction positions before a district court and the Board, the petitioner should explain sufficiently why the different positions are warranted.” Id. at 5. This reasoning applies even if the petitioner accepts the patent holder’s claim construction theory, as long as the adopted theory is inconsistent with the position taken in a different forum. Accordingly, in Revvo, Director Squires vacated the PTAB’s decision and remanded for further proceedings.
Applying that same analysis here, Director Squires concluded that the Petitioner’s stipulation to use the same construction in both the IPR and the district court case resolved any potential claim construction discrepancy and therefore required no further explanation under Revvo. Caption Health, IPR2025-01422, Paper 15 at 3. Director Squires noted that it was unclear if the Petitioner actually advanced an inconsistent claim construction position at all, but the stipulation eliminated this ambiguity. Id. Director Squires then denied the Patent Owner’s request to discretionarily deny institution.
This decision underscores the policy objectives described in Revvo, namely the goal of minimizing inconsistencies in claim construction between fora. Further, this ruling serves to “discourage petitioners from seeking broader construction at the Board to support a patentability challenge while seeking narrower constructions in litigation to avoid infringement liability.” Revvo, IPR2025-00632, Paper 20 at 4.
Takeaway: Petitioners must explain any inconsistencies in claim construction positions advanced in PTAB proceedings and district court litigation, and why those differences are warranted. However, stipulating to use the same construction in both sets of proceedings can cut against discretionary denial on this basis. Given the frequency with which Director Squires discretionarily denies petitions, petitioners should critically consider whether to advance alternative claim construction positions in PTAB proceedings before filing.
Matthew Johnson
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