Patent litigation has always had a little theater in it. One week a party says a claim is so fuzzy it is basically alphabet soup; the next week, in a different forum, that same party says the language is perfectly workable and should be read in a nice, broad, ordinary way. For years, litigants often treated that kind of flexibility as part strategy, part survival. But the Patent Trial and Appeal Board’s recent line of decisions sends a louder message: flexibility is not the same thing as inconsistency, and inconsistency without a good explanation can sink an inter partes review before it really gets going.
That is the core lesson from the USPTO Director’s decision to vacate institution of an IPR after the petitioner advanced inconsistent claim construction positions in district court and at the PTAB. The headline case most practitioners point to is Tesla, Inc. v. Intellectual Ventures II LLC, where the Director concluded that saying “we cannot raise indefiniteness in IPR” was not enough to justify taking a different position before the Board. The point was not that every difference is forbidden. The point was that parties do not get a free pass to argue one thing in court and another at the PTAB with nothing more than a shrug and a footnote.
For companies that use IPR as a core defense tool, this is more than a procedural hiccup. It changes petition drafting, forces tighter coordination between district court and PTAB teams, and hands patent owners a sharper discretionary-denial argument. In plain English: if you want to challenge a patent at the PTAB while also fighting it in court, you need a coherent theory of claim scope. The “pick a lane” era has arrived, and it is wearing a suit.
Why This Decision Matters More Than It First Appears
At first glance, a denial based on inconsistent claim construction may sound narrow, even niche. But in PTAB practice, niche procedural points tend to grow fangs. Claim construction is the lens through which invalidity arguments are viewed. If the lens changes depending on the room a party is standing in, the entire validity analysis starts to wobble.
The USPTO’s modern approach is rooted in its 2018 rule change adopting the same claim construction standard used in district court rather than the older broadest reasonable interpretation standard for many PTAB proceedings. That reform was designed to reduce forum-to-forum divergence and improve predictability. In other words, the agency did not align standards just to watch parties immediately start doing interpretive gymnastics.
That policy goal explains why the Director has become increasingly skeptical of petitioners who argue for a narrow construction in court to avoid infringement but embrace a broader or plain-meaning approach at the PTAB to make prior art fit better. The concern is not merely optics. It is institutional credibility. If the same words mean different things only when it is strategically convenient, the system starts to look less like adjudication and more like costume changes.
For patent owners, that skepticism is useful. For petitioners, it is now dangerous to assume the Board will overlook claim construction differences so long as the petition is otherwise strong on the merits. The Director’s recent decisions show that even a petition with substantive invalidity arguments can be derailed if its claim construction posture looks opportunistic and underexplained.
The Tesla Case: When “We Couldn’t Raise Indefiniteness Here” Was Not Enough
The most talked-about example is Tesla, Inc. v. Intellectual Ventures II LLC. In the parallel district court case, Tesla argued that a claim limitation was indefinite. That position effectively said the term was too unclear for a person of ordinary skill in the art to determine its scope with reasonable certainty. Before the PTAB, however, Tesla took a different tack, stating that no claim term required express construction and that the claims should receive their plain and ordinary meaning.
Tesla’s explanation was simple: indefiniteness is not a ground that can be raised in IPR. That is legally true, but the Director held it was not enough. The problem was not that Tesla mentioned the statutory limitation. The problem was that Tesla used the limitation as if it automatically excused an inconsistent position. The Director rejected that logic and treated it as an inadequate explanation for why different positions were warranted.
That distinction matters. The Director did not announce a blanket rule that any divergence is fatal. Instead, the decision framed the issue as one of justification. If a petitioner says a term is indefinite in one forum and workable in another, it must explain why those positions can coexist in a principled way. Absent that explanation, the difference looks less like careful lawyering and more like result-oriented advocacy.
Even more important, the decision gave practitioners a clue about what a better explanation might have looked like. The Director suggested that a petitioner might have done more by showing that, even if some aspect of the term was allegedly indefinite, a skilled artisan would still understand enough about the limitation for the prior art analysis in IPR. That kind of reasoning would at least attempt to bridge the two positions rather than pretending the bridge is optional.
The Road to Tesla: Cambridge Mobile, Sun Pharma, and Revvo
The Tesla ruling did not come out of nowhere. It sits on top of an increasingly visible PTAB framework. In Cambridge Mobile Telematics v. Sfara, an informative decision, the Board addressed a petitioner that took one construction approach in district court and another in its IPR petition. The message there was already clear: a petitioner should, at minimum, explain why the different positions are warranted, or present both constructions in a way that meaningfully addresses the discrepancy.
Then came Sun Pharmaceuticals v. Nivagen, another important step in the agency’s thinking. That decision reinforced the idea that parties are not automatically barred from advancing different positions before the Board and a district court, but they must explain why the divergence makes sense. The theme was becoming impossible to miss: inconsistency was not per se forbidden, but unexplained inconsistency was becoming institution poison.
Next came Revvo Technologies v. Cerebrum Sensor Technologies, a precedential decision that significantly sharpened the rule. There, the Director rejected the notion that claim construction inconsistency issues were limited to means-plus-function situations. That was a big deal. It expanded the principle beyond a narrow doctrinal corner and made it a broader feature of PTAB institution practice. If the positions differ, the petitioner must explain why. No magic words. No loophole label. Just a real explanation.
Once Tesla arrived, the writing was fully on the wall. The agency was no longer merely nudging parties toward consistency. It was telling them that the post-2018 alignment between PTAB and district court standards means they need to act like that alignment matters. This was not a suggestion. It was an operational rule dressed in discretionary-denial clothing.
What Counts as an Inconsistent Claim Construction Position?
This is where things get practical. An inconsistent position is not limited to saying “indefinite” in one forum and “plain meaning” in another, though that is the cleanest example. It can also arise when a petitioner proposes a narrower construction in court but adopts the patent owner’s broader construction at the PTAB without explaining the switch. It can arise when a party argues a limitation invokes Section 112(f) in one forum and denies that same interpretive framework in another. It can even emerge when a petitioner tries to preserve multiple constructions for future contingencies while asking the Board to proceed as though only one is currently relevant.
The Director’s recent decisions suggest that the agency is looking less at labels and more at whether the petitioner is trying to have the claim do different work in different forums. If a construction narrows the claim enough to avoid infringement in court but broadens it enough to read on the prior art before the PTAB, alarm bells ring. Loudly.
Practitioners should also note what does not seem to work as an explanation. A generic statement that district court proceedings are at a different stage is weak. A broad reference to different procedural postures is weak. A “wait and see” approach, where the petitioner effectively says it may change positions depending on how the district court rules later, has been treated with particular suspicion. The agency’s view is straightforward: petitioners are expected to present a coherent construction theory at filing, not a choose-your-own-adventure booklet.
That does not mean every difference is forbidden. Where a district court has already rejected a party’s narrower construction, later use of the broader, court-adopted construction at the PTAB may be explainable. The key is that the explanation must be concrete, contemporaneous, and rooted in the actual record. The Board and the Director appear increasingly unwilling to invent that explanation for the petitioner after the fact.
Why the Director’s Approach Changes PTAB Strategy
For Petitioners
Petitioners now need to treat claim construction consistency as a front-end filing issue, not a cleanup issue for later briefing. Before an IPR petition is filed, counsel should compare the petition’s proposed constructions with district court invalidity contentions, Markman briefs, expert reports, and even informal litigation positions that may later be characterized as claim construction arguments. If there is a difference, the petition should address it directly. Hope is not a drafting strategy.
This also means in-house teams need better coordination. The district court team and PTAB team can no longer operate like cousins who only meet at holidays. Their theories must be aligned early, and business clients should understand that tactical flexibility in one forum may reduce available options in the other. That is not always fun news to deliver, but it is cheaper than losing institution after paying for a full petition.
For Patent Owners
Patent owners should be reading every petition with a red pen and a memory for old briefing. The strongest discretionary-denial arguments may now come from side-by-side comparisons of the petitioner’s positions across forums. A well-supported chart showing what was argued in district court versus what appears in the petition can be devastating, especially when the petition offers little or no explanation for the difference.
Patent owners also benefit from timing. Because institution decisions come early, an inconsistency-based challenge can create leverage before the case ever reaches full trial. That can reshape settlement discussions, narrow issues, or at least force the petitioner into a defensive explanation mode that weakens its broader invalidity narrative.
For the PTAB System Itself
From the agency’s perspective, these decisions fit a broader project: making AIA proceedings look more predictable, more disciplined, and less like alternate-universe patent litigation. The Director appears committed to reducing unexplained divergence not only in claim construction but also in how the PTAB responds to parallel adjudications more generally. The message is institutional consistency, with fewer strategic costume changes and more accountability for what parties say on paper.
Practical Lessons for Anyone Drafting or Opposing an IPR Petition
First, perform a claim-construction audit before filing. Not after filing. Not after the preliminary response. Before filing. Compare every asserted term, every district court construction, every indefiniteness position, and every argument that could affect scope.
Second, explain differences in plain English. Do not bury the explanation in a single sentence that sounds like it was written in an elevator between floors. If the positions differ because the district court already rejected one view, say that clearly. If the positions differ because a claim term has a partially knowable meaning that still permits a prior art analysis, explain the logic step by step.
Third, assume patent owners will bring receipts. The days of quietly shifting positions between forums are fading. Today’s patent owners arrive with exhibits, quotations, timelines, and enough highlighting to make the record glow in the dark.
Fourth, remember that institution under Section 314 is discretionary at the threshold stage, and institution decisions are generally final and nonappealable. That makes these early claim construction choices even more consequential. A sloppy explanation can close the PTAB door before the merits ever have a fair chance to argue back.
Experiences From the IPR Front Line: What This Issue Looks Like in Real Practice
Anyone who has worked on parallel district court litigation and PTAB proceedings knows how easy it is for inconsistent claim construction positions to develop without anyone waking up one morning and deciding to be inconsistent on purpose. The district court team may be focused on noninfringement and trying to narrow claim scope. The PTAB team may be focused on invalidity and trying to read the claims broadly enough to fit the prior art. Each group thinks it is being strategic. Then someone lays the briefs side by side, and suddenly the strategy looks like it was assembled by two different screenwriters who never met.
That is one reason these Director Review decisions are resonating so strongly with practitioners. They reflect a very real practice problem. A lot of inconsistency is born from workflow, timing, and pressure. Markman deadlines hit. Petition deadlines hit. Experts draft declarations on tight turnarounds. Business teams want every possible defense preserved. Outside counsel may honestly believe they are keeping options open, when in reality they are creating a paper trail that makes the client look opportunistic.
The new PTAB posture forces a healthier discipline. Teams now have to ask uncomfortable but necessary questions early. What is our best construction? Are we really arguing indefiniteness, or are we using it as leverage? If we say a skilled artisan cannot understand this term in district court, how exactly are we going to tell the Board that the same artisan can map prior art onto it? These are not academic questions anymore. They are filing-risk questions.
There is also a practical human lesson here: explanations need to be written for skeptical readers, not friendly co-counsel. Inside a strategy call, a position shift can sound perfectly logical. Outside that room, on a cold record, it may look like the petitioner is trying to dodge whichever forum is least convenient that week. The Director’s recent decisions show very little patience for explanations that rely on implication, assumptions, or “the Board will understand what we meant.” No, the Board would like you to tell it.
For patent owners, the experience has been the mirror image. This line of cases rewards careful comparison work. Lawyers who track every invalidity contention, every Markman chart, every expert statement, and every petition footnote now have a stronger procedural hook for turning inconsistency into leverage. A good discretionary-denial argument is no longer just about Fintiv-style timing concerns or serial petitions. It can be about credibility. And credibility, once damaged, is hard to patch with a reply brief and a brave face.
In a broader sense, these cases remind everyone that PTAB practice is maturing. The forum is no longer treated as a place where parties can casually recalibrate claim scope without consequences. The Director is demanding record discipline. That is probably good for the system, even if it is inconvenient for parties that prefer flexibility with a side of selective memory. The better practice now is simple, even if it takes work: decide what the claim means, explain why, and stick with that position unless the record gives you a real reason to change. Patent disputes are complicated enough already. They do not need interpretive acrobatics added as a warm-up act.
Conclusion
The recent denial of IPR institution over inconsistent claim construction positions is not just another PTAB procedural curiosity. It is a warning shot aimed at petitioners who want to keep one claim construction for district court, another for the PTAB, and maybe a third tucked away for a rainy day. The USPTO Director has made clear that this approach can undermine the agency’s goal of predictability and certainty in the patent system. More importantly, the Director has shown a willingness to act on that view by vacating institution decisions and denying petitions outright.
The takeaway is blunt but useful: if you are filing an IPR in parallel with district court litigation, claim construction consistency is now a core institution issue. Petitioners should build a single coherent theory where possible and explain any deviation with precision. Patent owners should investigate every shift in position and press the record hard when the petitioner tries to have it both ways. In modern PTAB practice, a party can still change lanes. It just needs a signal, a reason, and a record strong enough to survive the ride.
