Petitioner Beware: Inconsistent Claim Construction Positions Can Doom a Petition

While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces when it advances claim construction positions before the Board that are inconsistent with its positions in related district court proceedings.

In OrthoPediatrics Corp. v. K2M , Inc., IPR2018-01456 (P.T.A.B. Feb. 14, 2019), the petitioner took the position that the Board need not construe any term in the challenged claims. In related district court proceedings, however, the petitioner had persuaded the district court to narrowly construe certain terms in the challenged claims as means-plus-function terms. The petitioner identified its inconsistent claim construction positions in its petition, but argued that it was not bound to its prior position given the different claim construction standards utilized in the two fora at the time of the petition’s filing—broadest reasonable interpretation (BRI) at the Board, Phillips interpretation at the district court.

The petitioner also noted that (1) none of the relevant terms included the word “means,” thus there was no presumption that section 112, paragraph 6 applied, and (2) the patent owner had argued before the district court that section 112, paragraph 6 did not apply. “In essence,” the petitioner explained, “this petition is based on the claim constructions urged by Patent Owner in the related district court litigation.”

In its preliminary response, the patent owner urged the Board to construe the challenged claims consistently with the district court’s construction, including construing certain terms as means-plus-function terms. The patent owner argued that the petitioner had failed to identify any reason why the claim construction it sought in the district court should not apply before the Board. The patent owner also explained why the terms should be construed as means-plus-function under either the BRI or Phillips standards.

After advancing these claim construction arguments, the patent owner then argued that the petition should be denied under 37 C.F.R. §42.104(b)(3). That regulation provides that a petitioner “must identify…[h]ow the challenged claim is to be construed” and specifically calls out the need to construe claims that contain a means-plus-function limitation. According to the patent owner, the petitioner, having failed to advance any proper construction for the relevant terms, failed to comply with the regulation.

The Board agreed with the patent owner and denied institution. The Board agreed that the petitioner was not obligated to advance the same exact constructions it had advanced before the district court, but faulted the petitioner for not clearly explaining why the plain and ordinary meaning of the terms should apply before the Board, but a narrower means-plus-function meaning should apply before the district court. The Board noted that in prior IPR proceedings involving related patents with similar claim terms, it declined to formally construe the terms because they were not in controversy, but those proceedings were irrelevant—in this proceeding, the terms were in controversy, as the patent owner argued that the prior art failed to disclose the relevant limitations under its proposed construction.


The unique facts of the OrthoPediatrics decision are unlikely to occur in future proceedings now that the Board has formally adopted the Phillips construction for petitions filed after November 13, 2018. Indeed, the need to avoid taking inconsistent positions on claim construction is even more significant now that the two fora use the same construction. The harmonization of the two claim construction standards forces petitioners to carefully balance their desire to file an IPR petition quickly in hopes of staying a district court litigation against their need to fully understand their non-infringement defenses and how different claim constructions might impact those defenses.

For those pending IPR proceedings in which the broadest reasonable interpretation remains the governing rule, the OrthoPediatrics decision again cautions petitioners to tread carefully when taking claim construction positions that are inconsistent to some degree with their district court positions. OrthoPediatrics does not forbid such inconsistencies, but encourages petitioners to more fully explain how they can be reconciled.