New PTAB Ruling Highlights Critical IPR Petition Requirements: Consistency Between PTAB and District Court Proceedings

The United States Patent and Trademark Office (USPTO) recently designated a significant Patent Trial and Appeal Board (PTAB) decision as "informative," providing crucial guidance for patent practitioners navigating inter partes review (IPR) proceedings. The decision in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00952, Paper 12) emphasizes the importance of consistent claim construction positions across different forums and proper treatment of means-plus-function limitations under 35 U.S.C. §112(f).

Understanding the Decision's Significance

This newly designated informative decision represents a pivotal development in PTAB practice, particularly for parties involved in parallel litigation in district courts. By denying institution of the IPR petition, the Board has signaled a heightened scrutiny of procedural requirements and sent a clear message about the consequences of taking contradictory positions across different forums.

The decision's informative status means that patent practitioners should view it as guidance on recurring issues and Board norms—specifically, the proper handling of means-plus-function claim terms and the importance of consistency between IPR petitions and parallel district court litigation. While not binding precedent, informative decisions provide valuable insights into the Board's thinking and approach to common issues.

The Case Background

The dispute centered around Sfara's U.S. Patent No. 8,989,952, which claims a method for using a communication device to determine whether a vehicle has crashed. The technology specifically relies on multiple parameters to reduce false positives—a critical feature in crash detection systems where reliability is paramount.

The challenged claims included terms such as "mode-determining component," "first detecting component," and "second detecting component." These terms, while not using the word "means" explicitly, potentially fall within the scope of means-plus-function construction under 35 U.S.C. §112(f), as they include functional language (detecting, mode-determining) coupled with a non-structural term (component).

Cambridge Mobile Telematics, after being sued for patent infringement, petitioned the USPTO for inter partes review, seeking to invalidate Sfara's patent claims. However, the company's approach to claim construction in its petition would ultimately lead to the petition's denial.

The Fatal Flaw: Contradictory Claim Construction Positions

The PTAB's decision highlights a glaring inconsistency in Cambridge Mobile's legal strategy. In the parallel district court litigation, Cambridge had emphatically argued that the "component" terms in the challenged claims should be interpreted as means-plus-function terms under §112(f). In fact, Cambridge had gone so far as to state that this classification was "most significant to the resolution of the case and/or will be case or claim dispositive," essentially arguing that the terms were indefinite due to a lack of corresponding structure in the specification.

Yet in its IPR petition before the PTAB, Cambridge Mobile took a dramatically different position. The company merely stated that "the Board need not expressly construe any term" and that it "applies the plain and ordinary meaning to the claim terms." This approach effectively adopted its opponent's district court position without providing any explanation for the contradiction.

The PTAB found this approach insufficient under 37 C.F.R. §42.104(b)(3), which requires that petitions set forth "[h]ow the challenged claim is to be construed" and, for means-plus-function limitations, “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”

The Board concluded that, at minimum, the petition “should have explained why the plain and ordinary meaning of the 'component' terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction.”

Divided Panel, Unified Result

While the PTAB panel was unanimous in denying institution of the IPR, the judges were not unified in their reasoning. Judge John Horvath wrote a concurring opinion that would have denied the petition on different grounds.

Judge Horvath argued that failure to construe claims or explain why they are not means-plus-function terms does not necessarily mandate denial under 37 C.F.R. §42.104(b)(3). He pointed to the Consolidated Trial Practice Guide (CTPG), which states that a petitioner who doesn't address §112(f) construction "risks failing" to satisfy the rule—language that suggests the possibility of failure rather than guaranteeing it.

Nevertheless, Judge Horvath would still have denied the petition, but for different reasons. After conducting his own claim construction analysis, he determined that the relevant "component" terms were indeed means-plus-function limitations and that the specification failed to disclose corresponding structure for performing the claimed functions. This analysis would render the claims invalid as indefinite.

However, indefiniteness cannot be raised as a ground for cancellation in IPR proceedings under the statutory framework established by the America Invents Act. Following prior PTAB precedent, Judge Horvath concluded that the indefiniteness of a claim makes it impossible to determine the merits of the petition's prior art challenges, thus warranting denial of institution.

The Process of Designation as "Informative"

The USPTO's decision to designate this case as "informative" follows the established Standard Operating Procedures (SOP 2, Revision 11). This designation indicates that the decision offers Board norms on recurring issues, guidance on matters of first impression, clarification on Board rules and practices, or insights on issues that emerge through analysis of recurring patterns across multiple cases.

The process for achieving informative status is rigorous. It requires approval from a USPTO internal advisory committee, followed by a review from PTAB Executive Management, which typically solicits feedback from the Board before formulating a recommendation to the director. The director must then approve the status upgrade.

Given that USPTO institution denials are not appealable to the courts, this informative decision represents the final word on the matter and carries significant weight for future proceedings.

The Broader Context: Shifting PTAB Institution Standards

This informative designation comes at a time of evolving PTAB practices. In March 2025, the USPTO director returned the Board to the more liberal Fintiv standards for denying IPR institution. The new informative status of the Cambridge Mobile decision adds to that trend, providing another management-approved basis for institution denial.

The Fintiv factors, established in Apple Inc. v. Fintiv, Inc., guide the Board's discretion to deny institution based on the status of parallel district court proceedings. The return to these standards, coupled with the emphasis on consistency in claim construction positions highlighted in Cambridge Mobile, suggests a more rigorous approach to evaluating IPR petitions.

However, it's important to note that these changes are incremental rather than revolutionary. All discretionary denial approaches still require substantial reasoning based on sufficient factual support, and the PTAB continues to institute the majority of petitions that meet the statutory threshold.

Lessons for Patent Practitioners

The Cambridge Mobile decision offers several important takeaways for patent practitioners engaged in IPR proceedings:

1. Maintain Consistency Across Forums

While "rules do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a district court," the decision makes clear that petitioners who do so will need to justify those inconsistencies. As seasoned patent attorneys have long advised, technically inconsistent positions, while sometimes permitted, are generally a bad idea.

The Board's decision reinforces this principle. Petitioners cannot simply ignore their district court positions when crafting IPR petitions. When taking different positions across forums, practitioners must provide clear explanations for the discrepancy or risk having their petitions denied.

2. Address Means-Plus-Function Considerations

The decision underscores the importance of properly addressing terms that might plausibly be construed under §112(f). When faced with such terms, petitioners must either:

• Explain why the terms should not be interpreted as means-plus-function limitations, or
• Provide the required corresponding structure analysis, identifying specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 

Failure to do either can be fatal to an IPR petition, as demonstrated in Cambridge Mobile.

3. Recognize Space Constraints and Plan Accordingly

IPR petitioners often avoid claim construction arguments in their petitions due to strict word limits imposed by the USPTO. For means-plus-function claims, this space issue becomes even more acute because of the layered analysis required to construe such claims.

However, the Cambridge Mobile decision makes clear that space constraints do not excuse compliance with the regulations. Practitioners must carefully allocate space in their petitions to address necessary claim construction issues, particularly for potentially problematic terms like those at issue in this case.

4. Consider the Interplay Between IPR and District Court Litigation

The decision highlights the increasingly complex interplay between IPR proceedings and district court litigation. Statements made in IPR proceedings will likely find their way back to district court litigation, and vice versa.

This interdependence has become more significant since the USPTO moved away from the broadest-reasonable-interpretation (BRI) standard for claim construction in favor of the same claim construction methodology used by district courts. As a result, practitioners must consider both forums when developing their claim construction strategies.

Continuation of an Emerging Trend

While newly designated as informative, the Cambridge Mobile decision is not an isolated occurrence. Several other PTAB panels have denied institution for failure to comply with 37 C.F.R. §42.104(b)(3) in recent years. Notable examples include:

10x Genomics, Inc. v. President and Fellows of Harvard College (IPR2023-01299, Paper 15) (P.T.A.B. Mar. 14, 2024)

Orthopediatrics Corp. v. K2M, Inc. (IPR2018-01546, Paper 10) (P.T.A.B. Feb. 14, 2019)

The informative designation of Cambridge Mobile reinforces this emerging trend, providing clear guidance to practitioners about the Board's expectations.

The Intersection of Claim Construction and Indefiniteness

The concurring opinion in Cambridge Mobile highlights an important nuance in IPR practice: while indefiniteness cannot be raised as a ground for cancellation in IPR proceedings, issues of indefiniteness can nonetheless impact the Board's ability to assess prior art challenges.

When a claim is indefinite due to a lack of corresponding structure for a means-plus-function limitation, the Board may find itself unable to compare the claim to the prior art in a meaningful way. This intersection of claim construction, indefiniteness, and prior art analysis presents a challenging landscape for practitioners to navigate.

The Role of 37 C.F.R. §42.104(b)(3) in IPR Practice

At the heart of the Cambridge Mobile decision lies 37 C.F.R. §42.104(b)(3), which requires petitioners to explain how challenged claims should be construed. This regulation serves several important purposes in IPR practice:

It ensures that the Board has a clear understanding of the scope of the challenged claims, which is essential for assessing prior art challenges.

It promotes efficiency by focusing the analysis on relevant prior art and avoiding unnecessary disputes about claim scope.

It enhances transparency by requiring petitioners to disclose their claim construction positions upfront.

It facilitates a fair process by allowing patent owners to respond to the petitioner's claim construction positions.

The Cambridge Mobile decision reinforces the importance of this regulation and clarifies the consequences of non-compliance. Petitioners who fail to satisfy the requirements of §42.104(b)(3) risk having their petitions denied at the institution stage, without reaching the merits of their prior art challenges.

The Evolving Landscape of IPR Practice

The Cambridge Mobile decision comes at a time of significant evolution in IPR practice. Since the creation of the PTAB by the America Invents Act in 2012, the Board's practices and procedures have continuously developed through rule-making, precedential and informative decisions, and guidance documents.

The return to the Fintiv framework for assessing parallel district court proceedings, coupled with the emphasis on consistency in claim construction highlighted in Cambridge Mobile, suggests a more nuanced approach to the institution decision. While the statutory threshold for institution remains the "reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition," the Board increasingly considers procedural factors and the overall context of the dispute.

This evolution reflects the maturation of IPR as a patent challenge mechanism and the USPTO's efforts to balance efficiency, fairness, and policy considerations. For practitioners, this changing landscape requires careful attention to procedural requirements and strategic considerations that extend beyond the substantive prior art analysis.

The Dual Nature of IPR: Administrative Proceeding and Litigation Alternative

Inter partes review exists in a unique space between administrative agency action and litigation alternative. This dual nature is evident in decisions like Cambridge Mobile, which emphasize the importance of consistency with parallel district court proceedings.

On one hand, IPR is an administrative proceeding conducted by a government agency to reassess the patentability of issued claims. On the other hand, it serves as an alternative forum for resolving patent validity disputes that would otherwise be litigated in district court.

This dual identity creates unique challenges for practitioners, who must navigate both administrative law principles and litigation strategies. The Cambridge Mobile decision highlights this tension, emphasizing the need for coherent positions across different forums while acknowledging the procedural differences between them.

Strategic Considerations for Patent Owners

While the Cambridge Mobile decision directly addresses the obligations of IPR petitioners, it also offers valuable insights for patent owners. When defending against an IPR petition, patent owners should carefully scrutinize the petitioner's claim construction positions and compare them to positions taken in related litigation.

If the petitioner has taken inconsistent positions without adequate explanation, the patent owner should highlight this inconsistency in its preliminary response. Even if the inconsistency does not rise to the level seen in Cambridge Mobile, it may undermine the petitioner's credibility and influence the Board's assessment of the petition.

Additionally, patent owners should consider how their own claim construction positions might be affected by the Cambridge Mobile decision. While the decision primarily addresses petitioner obligations, the emphasis on consistency may also impact patent owners who take different positions across forums.

Strategic Considerations for Petitioners

For potential IPR petitioners, the Cambridge Mobile decision underscores the importance of careful planning before initiating an IPR. Petitioners should thoroughly assess their claim construction positions in related litigation and consider how those positions might impact an IPR petition.

If different positions are necessary due to the unique contexts of different forums, petitioners should develop clear explanations for the discrepancies. While the Board may accept justified inconsistencies, unexplained contradictions are likely to be viewed skeptically, as demonstrated in Cambridge Mobile.

Petitioners should also carefully analyze potentially problematic claim terms, particularly those that might be construed under §112(f). For such terms, petitioners must weigh the strategic advantages and disadvantages of different claim construction approaches and ensure compliance with §42.104(b)(3) regardless of the approach chosen.

The Future of IPR Practice After Cambridge Mobile

Looking ahead, the Cambridge Mobile decision is likely to impact IPR practice in several ways:

Increased scrutiny of claim construction positions in IPR petitions, particularly for terms that might be construed under §112(f).

Greater emphasis on consistency between IPR and district court positions, with more detailed explanations when positions differ.

More detailed claim construction sections in IPR petitions, despite the word count limitations.

Potentially more institution denials based on procedural deficiencies related to claim construction.

These changes may initially present challenges for practitioners accustomed to more lenient enforcement of §42.104(b)(3). However, over time, they should lead to more rigorous and well-reasoned IPR petitions, benefiting the patent system as a whole.

Additional Practical Recommendations for Practitioners

In light of the Cambridge Mobile decision, practitioners should consider the following additional recommendations to navigate the evolving IPR landscape successfully:

1. Develop a Comprehensive Claim Construction Strategy Early

Before initiating district court litigation or filing an IPR petition, develop a comprehensive claim construction strategy that considers the implications across all potential forums. This proactive approach can help avoid contradictions later in the process. The USPTO's Patent Trial Practice Guide provides valuable context for understanding claim construction standards in PTAB proceedings.

2. Utilize Expert Declarations Strategically

When dealing with potentially means-plus-function terms, consider submitting expert declarations to support your claim construction positions. Expert testimony can be persuasive for technical claim terms and can help overcome institution hurdles. These declarations can explain why certain terms should or should not be interpreted under §112(f) and identify corresponding structure when necessary.

3. Conduct a Thorough Prior Art Search Before Finalizing Claim Construction

The interplay between claim construction and prior art analysis can be complex. A thorough prior art search before finalizing claim construction positions can help ensure that your construction strategy aligns with your invalidity arguments. The USPTO's search resources can serve as a starting point for this analysis.

4. Consider Partial Institutions When Drafting Petitions

Since the Supreme Court's decision in SAS Institute Inc. v. Iancu, 138 S. Ct. in 2018, the PTAB must institute review on all challenged claims or none. This all-or-nothing approach makes it crucial to ensure that every aspect of your petition, including claim construction, is bulletproof. The USPTO's statistics on institution rates can provide insights into current trends.

5. Leverage the PTAB's Legal Resources

The PTAB offers numerous resources to help practitioners navigate the IPR process, including precedential and informative decisions, trial practice guides, and other publications. Regularly consulting the PTAB's resources page can help stay current with evolving practices and expectations.

6. Consider Ex Parte Reexamination as an Alternative

In cases where means-plus-function issues might complicate an IPR petition, consider ex parte reexamination as an alternative patent challenge mechanism. Unlike IPR, ex parte reexamination can include indefiniteness challenges. The USPTO's guide on ex parte reexamination provides important procedural information.

7. Monitor Parallel Litigation Closely

Establish robust communication channels between litigation and PTAB teams to ensure consistency across forums. Implementing a claims chart that tracks constructions across different proceedings can help identify potential contradictions before they become problems.

8. Consider a Claim Construction Tutorial for the Board

For complex technologies or potentially ambiguous claim terms, consider including a technology tutorial in your petition or patent owner response. While this requires additional word count, it can help the Board understand your construction positions more clearly.

Conclusion: A New Era of Rigor in IPR Practice

The designation of Cambridge Mobile as an informative decision signals the USPTO's commitment to a more rigorous approach to IPR practice, particularly regarding claim construction and consistency across forums. While not representing a radical departure from existing principles, the decision clarifies the Board's expectations and the consequences of non-compliance.

For patent practitioners, the key takeaway is the need for strategic coherence across different forums. While technical differences in claim construction may sometimes be justified by the unique contexts of different proceedings, unexplained contradictions are likely to be viewed skeptically and may lead to adverse outcomes.

By emphasizing the importance of §42.104(b)(3) and the proper treatment of means-plus-function limitations, the Cambridge Mobile decision contributes to the ongoing evolution of IPR as a fair, efficient, and predictable mechanism for challenging patent validity. As practitioners adapt to these expectations, the quality of IPR petitions should improve, leading to more focused and productive proceedings that advance the ultimate goal of a strong and reliable patent system.

In an era of increasingly complex patent disputes spanning multiple forums, the Cambridge Mobile decision serves as a reminder of the importance of careful planning, strategic consistency, and thorough analysis. By heeding these lessons, practitioners can navigate the evolving landscape of IPR practice more effectively and achieve better outcomes for their clients.