USPTO Highlights Three Key Informative Decisions on Claim Construction and Institution Vacatur

The United States Patent and Trademark Office (USPTO) has officially designated three decisions as informative, providing guidance on the application of the Office’s claim construction precedent established in Revvo and Tesla cases. These decisions, issued by the Director, address procedural and substantive issues in inter partes review (IPR) proceedings, particularly concerning institution decisions and petitioner conduct.

In Ford Motor Co. v. AutoConnect Holdings, LLC, IPR2025-01342, the Director vacated the institution of review. The petitioner had advanced indefiniteness arguments in district court after the IPR institution without sufficient justification. The petitioner only agreed to withdraw those district court arguments after the patent owner alerted the USPTO to the inconsistency. This decision, issued on May 12, 2026, underscores the importance of consistent litigation positions and the need for petitioners to justify any post-institution changes in argumentation.

Similarly, in Terumo BCT, Inc. v. Haemonetics Corp., IPR2025-01374, also decided on May 12, 2026, the Director vacated institution where the petitioner again raised indefiniteness arguments in district court after institution without adequate justification. The Director emphasized that the petitioner’s conduct post-institution demonstrated a misuse of the IPR process, treating it not as an alternative to district court litigation but as a parallel forum. This approach runs counter to the intent of Congress in the America Invents Act, which envisions IPR as a streamlined alternative to district court proceedings.

The third informative decision, TikTok, Inc. v. Shopsee, Inc., IPR2025-01485, decided on January 16, 2026, involved the Director’s exercise of discretion to deny institution under 35 U.S.C. § 314(a). The petitioner had advanced differing claim construction positions before the district court and the Board. Subsequently, the petitioner stipulated not to pursue the differing claim construction in district court if the USPTO instituted review. The Director found that the petitioner failed to sufficiently explain the rationale for the differing claim constructions. Moreover, the stipulation was deemed insufficient to reduce duplication or minimize the risk of inconsistent outcomes between the district court and the Board.

These three decisions collectively reinforce the USPTO’s commitment to procedural consistency and the proper use of IPR proceedings. They highlight the Office’s scrutiny of petitioners’ litigation strategies, particularly regarding claim construction and the timing and justification of arguments across forums.

The USPTO encourages stakeholders to review these informative decisions to better understand the Office’s expectations and the standards applied when considering institution and claim construction issues in IPRs.

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The decisions are publicly accessible and provide valuable precedent for patent practitioners navigating the complexities of IPR proceedings.