On 20 March 2025, the Patent Trial and Appeal Board (PTAB) designated as "Informative" the majority opinion in the Decision Denying Institution in IPR2024-00952, a decision originally entered on December 13, 2024.
The primary reason for denial centered on the interplay between district court claim construction and claim construction in the Petition.
In a co-pending district court litigation involving the same patent, the Petitioner argued that certain claim terms "should be means-plus-function terms governed by §112(f) and that such terms are indefinite for failure to identify corresponding structure to perform the recited functions." In the Petition, however, the Petitioner argued for plain and ordinary meaning because that was the Patent Owner's litigation position.
Patent Owner opposed institution by arguing, among other things, that the Petition should be denied due to the Petitioner's failure to adequately address the claim construction, particularly the means-plus-function issue, as required by 37 C.F.R. § 42.104(b)(3).
The Board determined that the Petition was deficient under 37 C.F.R. § 42.104(b)(3) because it failed to identify the specific portions of the specification that describe the structure corresponding to the claimed functions. The Board emphasized that the Petitioner had previously highlighted the importance of resolving whether these terms were means-plus-function limitations district court litigation yet failed to address this in the Petition. The Board highlighted that the Petition should have at least explained why inconsistent positions are warranted.
This now Informative decision highlights the complexities associated with claim construction and the importance of addressing all procedural requirements in IPR petitions. The decision underscores the PTAB's discretion in denying petitions that do not adequately address claim construction issues, particularly when means-plus-function terms are involved, or claim construction positions in district court are inconsistent with the claim construction being advanced in an IPR. To the extent differences are necessary or appropriate, effort should be undertaken to explain why such inconsistencies exist and why any impact of those inconsistencies are minimal at best.
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