Director Review Spotlight: Consistency Matters Across Litigation Forums

Co-authored by: Nelson Ho, Summer Associate 

In three May 2026 Director Review decisions, U.S. Patent and Trademark Office Director John Squires emphasized how a petitioner’s failure to maintain consistent positions between the Patent Trial and Appeal Board (PTAB) and co-pending litigation can result in loss of institution for petitions initially deemed meritorious. In each decision, Director Squires vacated institution based on perceived inconsistencies with positions taken by the petitioners in co-pending litigation. In the first two decisions, Director Squires vacated institution after the petitioner advanced inconsistent claim construction positions before the PTAB and district court without adequate justification. In the third decision, Director Squires vacated institution after stating that the petitioner had violated a Sotera-style stipulation used to secure institution.  

Terumo BCT Inc., v. Haemonetics Corps., IPR2025-01374 and IPR2025-01391, Paper 20 (PTAB May 12, 2026) 

In this Director Review, Haemonetics (“patent owner”) requested Director Review based on allegations of inconsistent claim constructions advanced shortly after institution by Terumo (“petitioner”). Before the PTAB, the petitioner had advanced a “plain and ordinary meaning” construction for all claim terms. One week after institution, however, the petitioner argued in district court that certain claims reciting “controller” were indefinite.  

The patent owner argued that the petitioner advanced inconsistent positions before the PTAB and district court and that those inconsistencies ran afoul of the principles set forth in the PTAB’s Revvo (precedential) and Tesla (informative) decisions. Those decisions require an adequate explanation for inconsistent claim construction positions taken before the Board and a district court. The petitioner responded that the construction of “controller” was immaterial to the prior art analysis before the PTAB and, therefore, it was not required to provide a construction or explanation.  

The Director agreed with the patent owner, finding that “Petitioner’s assertion that the term ‘controller’ is not in controversy in these IPRs and so it was not required to construe the term in the Petitions [was] an inadequate justification for the different positions.” Paper 20 at p. 3. The Director instead characterized the petitioner’s actions as “strategic litigation-style behavior” that contravened Congress’s intent for inter partes review (IPR) to act as a “litigation alternative.” Id. at 4-5. The Director reiterated that “a petitioner should present a single construction and apply that construction consistently before the Board and the district court.” Id. at 3.

Ford Motor Company v. AutoConnect Holdings LLC, IPR2025-01342, IPR2025-01383, and IPR2025-01524, Paper 27 (PTAB May 12, 2026)

Like the Terumo v. Haemonetics case, AutoConnect (“patent owner”) requested Director Review based on inconsistent claim constructions advanced shortly after institution by Ford (“petitioner”). Notably, Ford initially overcame discretionary denial after the Director found that “Petitioner’s settled expectations outweigh[ed] Patent Owner’s settled expectations,” justifying the use of PTAB resources. See Ford Motor Company v. AutoConnect Holdings LLC, IPR2025-01342 and IPR2025-01383, Paper 10 at p. 3 (PTAB December 4, 2025).

But that success was short-lived. In contrast to the “plain and ordinary meaning” construction advanced in the petitions, the petitioner served invalidity contentions in district court that argued all challenged claims were indefinite. The petitioner argued that its litigation positions were not inconsistent because the indefiniteness arguments were related to uncertain boundaries, and despite that uncertainty, a person of skill in the art would have understood that the asserted prior art satisfies the challenged limitations. The petitioner also stipulated that it would withdraw its indefiniteness arguments in district court if the Director maintained institution.

Even so, the Director agreed with the patent owner that the petitioner’s claim constructions were inconsistent and vacated institution. The Director highlighted that the petitioner advanced indefiniteness contentions in co-pending litigation at “its first opportunity” post-institution. Paper 27 at p. 3. The Director also found the petitioner’s conduct “less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation,” noting that the petitioner’s indefiniteness arguments were broader than the terms petitioner alleged to have uncertain boundaries in its briefing. Id. It remains unclear whether the Director would have been persuaded to maintain institution had the petitioner’s indefiniteness arguments been limited to only terms alleged to have uncertain boundaries. Finally, the Director found that the petitioner’s “stipulation, which Petitioner offered only after Petitioner’s actions ran afoul of Revvo and Tesla and only after Patent Owner brought those actions to the Office’s attention, [was] insufficient.” Id.

Advanced Micro Devices, Inc. and Pensando Systems Inc., v. Xtreamedge, Inc., IPR2025-00223, IPR2025-00478, and IPR2025-00486, Paper 29 (PTAB May 12, 2026) 

Advanced Micro Devices (“petitioner”) obtained institution after filing a Sotera-style stipulation in co-pending district court litigation. In arguing against discretionary denial, the petitioner represented that if the PTAB granted institution, the petitioner would not pursue in district court the same invalidity grounds asserted in the IPRs or any grounds that reasonably could have been raised. A few months after institution, the petitioner re-served invalidity contentions in district court without removing the grounds.  

The Director initiated sua sponte Director Review. The petitioner responded with two main arguments. First, the district court, not the U.S. Patent and Trademark Office, should decide whether the stipulation had been breached. Second, disclosing the IPR grounds in invalidity contentions was not the same as “pursuing” them before the district court because the IPR grounds were not raised in “an expert report, motion for summary judgment, or at trial in the Parallel Litigation.” Paper 29 at p. 4.  

The Director rejected both arguments and terminated the IPRs. The Director held that stipulations are made to the Office and, thus, the Office should consider whether representations made to it have been violated. The Director also explained that stipulations used to secure institution would be “meaningless” if petitioners could ignore them after institution. Id. at 3. As to the petitioner’s argument that the IPR grounds had not been pursued in the district court, the Director rejected it. The Director found that “Petitioner’s view of how a stipulation is triggered and operates would effectively allow petitioners to maintain duplicative grounds in district court until the eve of trial.” Id. at 4. The Director explained that allowing duplicative grounds to be pursued that far could force patent owners to expend significant resources in district court and undermines the role of IPRs as a “true alternative” to co-pending litigation. Id. at 5. 

Takeaways 

• Petitioners should closely coordinate their litigation positions before the PTAB and co-pending litigation, particularly as it relates to claim construction and stipulation compliance. Petitions that initially overcome discretionary denial are not immune from losing institution if petitioners later advance litigation positions that the Director deems to be inconsistent. Offering to withdraw the inconsistent position after institution is unlikely to preserve institution, so petitioners should be vigilant in coordinating defenses in concurrent proceedings at the PTAB and other forums.
• Patent owners should actively monitor a petitioner’s litigation conduct for inconsistencies between the positions advanced before the PTAB and co-pending litigation. Even if a petition is initially accepted, the patent owner should continue to closely monitor for petitioner inconsistencies, since the Director may vacate institution even after institution was initially granted.