Director Review Emphasizes Single-Construction

by | Mar 1, 2026 | Claim Construction, Trial Institution

By Hannah Mehrle and Matt Johnson –

In two related cases involving Generac Power Systems, Inc. as Petitioner and Champion Power Equipment, Inc. as Patent Owner, Director Squires initiated sua sponte Director Review of the Board’s Decisions to grant institution of inter partes review.  This review addressed claim construction issues implicated by the Director’s two precedential decisions, Revvo and Tesla.

In his reasoning for the supa sponte review, Director Squires observed that the Board’s institution decisions did not address whether denial was warranted under his previous Revvo and Tesla decisions in light of Petitioner’s allegedly different claim construction positions in district court and before the Board.  In Revvo, the Director clarified that limitations on advancing different claim construction positions are not restricted to means-plus function language.  Rather, the Board’s rules encourage petitioners to advance a single construction and, if proposing different constructions, to sufficiently explain why differences are warranted.  Tesla extended Revvo’s reasoning to scenarios where a petitioner argues in parallel district court litigation that a claim term is indefinite but contends before the Board that the claim term is clear and amenable to construction.  The Director emphasized that allowing a petitioner to advance inconsistent arguments at the Board and district court detracts from the USPTO’s goal of providing greater predictability and certainty in the patent system.

The Director further noted that the Board’s reliance on Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 (PTAB Dec. 13, 2024) (informative) (“Cambridge”) was incorrect.  The Board had discussed and distinguished Cambridge on the ground that the inconsistencies there involved means-plus function terms, which it viewed as inapplicable, but the Director explained that this distinction was misplaced, pointing to the recent Revvo decision.

Here, Patent Owner argued that the petitions should be denied under Revvo and Tesla because Petitioner asserted certain claim terms were indefinite in the district court, but then argued for their plain and ordinary meaning before the Board.  Petitioner attempted to justify these discrepancies two ways.  First, that the different claim construction positions were taken by a third party who settled out of the litigation.  Second, Petitioner argued, that at least for one patent, it did not take inconsistent claim constructions positions because that patent was not asserted at the district court.

The Director agreed with Patent Owner, not Petitioner.  He noted that even though one of the patents was not asserted in the district court litigation, the relevant limitations overlapped with limitations from other asserted patents that Petitioner had argued were indefinite in district court that were also challenged in the related IPR proceedings.  Director Squires did not address the argument that another party advanced the claim construction positions in district court.  The Director concluded that Petitioner did not adequately explain its inconsistent claim construction positions across forums.  Thus, the Director overturned the Board and declined to institute the proceedings.

The following two tabs change content below.
My LinkedIn profile

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.