INFORMATIVE: Conflicting Claim Construction Positions Result in Denial

by | Mar 26, 2026 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Laura Vining and Matt Johnson –

USPTO Director John Squires issued a decision on November 5, 2025, vacating a prior institution decision and denying institution in Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18.  Director Squires denied the Petitioner’s request for institution because the Petitioner did not provide a sufficient explanation—as required by Cambridge Mobile  and Revvo Techs.—for why it was advancing indefiniteness in district court but plain and ordinary meaning before the PTAB.  Director Squires found Petitioner’s explanation that it was barred from raising an indefiniteness challenge in an IPR, without more, to be insufficient.  The decision has since been designated as informative.

On September 5, 2025, Patent Owner Intellectual Ventures II LLC filed a request for Director Review of the PTAB’s Institution Decision.  Tesla, IPR2025-00340, Paper 15.  Patent Owner argued that the PTAB’s Institution Decision should be vacated and institution denied because Petitioner Tesla failed to sufficiently explain why the claim limitation “generating said target feature information from said data statistics” (the “generating limitation”) recited in independent claim 1 should have two inconsistent claim construction positions.  Tesla, IPR2025-00340, Paper 15 at 13-14.  In district court, Petitioner argued that the generating limitation should be indefinite.  Tesla, IPR2025-00340, Paper 15 at 2.  Yet, before the PTAB, the Petitioner argued that the generating limitation should be given its plain and ordinary meaning.  Id. 

In response to the request for Director Review, Petitioner argued that its positions were not inconsistent because “Petitioner cannot raise indefiniteness challenges in an IPR.”  Tesla, IPR2025-00340, Paper 16 at 4.  Director Squires, however, found that because Petitioner failed to explain at all how the generating limitation could be both understood by a skilled artisan and indefinite that Petitioner had not provided sufficient reasoning for advancing inconsistent claim construction positions in two forums.  Tesla, IPR2025-00340, Paper 18 at 3-4.

Takeaway: Petitioners must explain any inconsistencies in claim construction positions advanced in PTAB proceedings and district court litigation, and why those differences are warranted.  If a Petitioner plans to advance an indefinite position in district court and construe the term before PTAB, Petitioner should explain in detail in its Petition how a skilled artisan would understand the scope of the claim term being construed.

 

 

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.