By Ash Hashmi,* Cameron Hart, Ashvi Patel, and Matt Johnson –
The USPTO designated as informative three recent Director decisions denying institution of IPR in response to inconsistent claim construction by petitioners in parallel litigation before the PTAB and district courts. These decisions, all relying on Tesla Inc. v. Intellectual Ventures II, LLC (IPR2025-00340), highlight increased scrutiny from the USPTO towards petitioners seen as trying to “game the system” by advancing contradictory claims before different tribunals. The most instructive of these decisions is Terumo BCT Inc. v. Haemonetics Corp. (IPR2025-01374 and related proceedings), which illustrates the full scope of consequences a petitioner may face for inconsistent constructions—even when the inconsistency involves claims not directly at issue in the IPR.
Terumo BCT Inc. v. Haemonetics Corp.
In Terumo, the Director vacated a prior institution of IPR after Haemonetics Corp. (“Patent Owner”) filed a request for Director Review. Terumo had advanced a “plain and ordinary meaning” construction before the PTAB when petitioning for and receiving institution of IPR; one week later, it asserted in district court that certain claims in each challenged patent were indefinite. Citing Tesla, the Director agreed with Patent Owner and vacated institution of IPR on the basis that Terumo’s behavior indicated a desire to abuse the IPR system as a backup for litigation rather than the quicker and more cost-effective litigation alternative intended by Congress. The Director was not receptive to Terumo’s argument that none of the claims asserted as indefinite in district court were in controversy in the IPR, and held that a petitioner must pick a single construction for each claim and stick to it before the PTAB and the district court, in line with the PTAB’s goal of predictability and consistency.
Supporting Decisions
Two companion decisions reinforce the principles articulated in Terumo. In IPR2025-01485, in district court, the petitioner advanced indefiniteness construction while asserting before the PTAB that no express claim constructions were necessary to establish invalidity. The Director denied institution for failing to explain why different constructions were used before the two tribunals, and rejected the petitioner’s offered stipulation to withdraw the inconsistent construction in district court—finding that such a stipulation merely allowed the petitioner to select the legal argument most likely to get the patent overturned rather than reducing redundant litigation. In IPR2025-01342 and related proceedings, the petitioner similarly advanced a “plain and ordinary meaning” construction before the PTAB while arguing indefiniteness in district court. The petitioner contended that regardless of its choice of construction, a person of ordinary skill in the art would have understood the prior art satisfied the challenged limitations. The Director still vacated institution, finding the conduct evidenced abuse of the IPR system. A withdrawal stipulation offered only after the patent owner raised the inconsistency was likewise deemed insufficient.
Taken together, these decisions demonstrate a new unwillingness from the Director to tolerate petitioners who attempt to strategically present different constructions before the PTAB and the district court in parallel patent litigation. Patent owners should thus be on the watch for inconsistent arguments from opposing counsel before the PTAB and the courts, as bringing them to the Director’s attention can vacate an IPR already instituted. Attempting to hedge one’s bets may result in a petitioner who is denied relief in both venues.
Takeaway: Inconsistent constructions, including indefiniteness in court and plain meaning at the Board, can support discretionary denial or vacatur of institution under Tesla.
* Ash was a summer associate in Jones Day’s Dallas Office.
Matthew Johnson
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