IP Law Daily, PATENT—P.T.A.B.: USPTO Director designates as informative decision vacating IPR institution for inconsistent claim constructions, (Nov 7, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

Petitioner’s unexplained inconsistencies in claim construction between district court and Board proceedings warranted denial of institution to preserve fairness and predictability in AIA trials.

USPTO Director John A. Squires, on November 5, 2025, designated as informative a Director Review decision vacating the PTAB’s institution of inter partes review in Tesla, Inc. v. Intellectual Ventures II LLC, holding that a petitioner’s failure to justify inconsistent claim-construction positions between district court litigation and PTAB proceedings warranted denial of institution under 35 U.S.C. § 314(a). The decision, now informative, clarifies that petitioners must affirmatively explain divergences in claim interpretation across forums, and that reliance on the statutory limits of IPR proceedings, such as the inability to raise indefiniteness, does not excuse inconsistency (Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 (P.T.A.B. Nov. 5, 2025) (informative)).

Background. On August 25, 2025, a PTAB panel instituted inter partes review on U.S. Patent No. 6,894,639 B1 (the ’639 patent), owned by Intellectual Ventures II LLC (“IV”). The patent, directed to methods for distinguishing targets from background clutter using statistical feature analysis, was challenged by Tesla, Inc. as unpatentable under 35 U.S.C. § 103 in light of several prior-art references, including Barnard (1991), Knecht (1989), and Lawrence (1990).

In its Institution Decision, the Board adopted Tesla’s proposed plain-meaning construction of the claim phrase “target specific feature information to distinguish specific targets from background clutter.” Rejecting IV’s narrower interpretation, requiring discrimination among multiple target classes, the Board found that the plain meaning covered distinguishing any target from clutter. The panel invoked claim differentiation, noting that dependent claim 7 expressly referred to multiple target classes, confirming that independent claim 1 encompassed only a single target-versus-background distinction. Applying that construction, the Board determined that Barnard disclosed the required feature extraction and classification, finding Tesla had shown a reasonable likelihood of success on all challenged claims.

Request for Director Review. IV sought Director Review, arguing that Tesla’s positions before the PTAB were irreconcilably inconsistent with those advanced in parallel district-court litigation. In the Western District of Texas, Tesla had argued that the limitation “generating said target feature information from said data statistics” was indefinite under § 112(b), contending that its scope could not be determined with reasonable certainty. Yet, before the PTAB, Tesla argued that no terms required construction and that the claims should be given their plain and ordinary meaning—adopting, effectively, IV’s own interpretation from the court proceedings.

Citing the PTAB’s earlier informative decision in Cambridge Mobile Telematics v. Sfara, Inc., IPR2024-00952 (P.T.A.B. Dec. 13, 2024), and the precedential Director Review decision in Revvo Technologies, Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632 (Director Nov. 3, 2025), IV maintained that Tesla’s only justification—that indefiniteness challenges cannot be raised in IPRs—was insufficient under the standard those cases established.

Tesla countered that its differing positions were a natural consequence of statutory limitations under § 311(b), which restricts IPRs to challenges under §§ 102 and 103. The company argued that it had complied with 37 C.F.R. § 42.104(b)(3) by identifying the claim’s plain meaning and that no further reconciliation was required.

Director’s analysis. Director John A. Squires, exercising review authority under 35 U.S.C. § 6(c), granted review, vacated the institution decision, and denied institution of the IPR. In his decision, the Director reaffirmed the framework articulated in Cambridge Mobile and Revvo Technologies, stating that petitioners are not categorically barred from taking divergent claim-construction positions in parallel proceedings, but any such divergence must be clearly explained and justified.

The Director found Tesla’s explanation—that it was “statutorily prohibited” from asserting indefiniteness in IPR—insufficient. The ruling emphasized that while the statutory bar prevents raising indefiniteness as a ground of unpatentability, it does not absolve petitioners of their duty to maintain coherent claim interpretations. The decision observed that Tesla could have reconciled its arguments by clarifying that, even if a claim term might be indefinite, a skilled artisan could still understand it sufficiently to apply the prior art. Instead, Tesla’s positions were “irreconcilably contradictory,” asserting indefiniteness in court and plain meaning before the Board.

Director Squires concluded that permitting such inconsistency would undermine the USPTO’s goal of “providing greater predictability and certainty in the patent system,” as articulated in the agency’s Federal Register commentary (83 Fed. Reg. 51,342–43 (Oct. 11, 2018)). The Director therefore vacated the PTAB’s institution and denied review under § 314(a), emphasizing that procedural fairness and candor are prerequisites to institution.

Significance. The USPTO designated the Director’s decision as informative, indicating that it provides normative guidance on recurring procedural issues rather than establishing binding precedent. The ruling complements the precedential Revvo Technologies decision (Nov. 3, 2025), together forming a consistent policy message: petitioners must maintain clarity and coherence in claim interpretation across tribunals, and the inability to raise certain arguments in IPRs does not justify inconsistent claim positions.

The Case is IPR2025-00340.

Judge: Squires, J.

Attorneys: Jonathan Bowser (Haynes and Boone, LLP) for Tesla, Inc. Brandon Theiss (Volpe and Koenig, PC) for Intellectual Ventures II LLC.

Companies: Tesla, Inc.; Intellectual Ventures II LLC

Cases: Patent USPTO