Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc.

Director_PTABDecision_Review@uspto.gov 	Paper 20
571.272.7822 	Date: November 3, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
REVVO TECHNOLOGIES, INC.,
Petitioner,
v.
CEREBRUM SENSOR TECHNOLOGIES, INC.,
Patent Owner.
IPR2025-00632
Patent 11,835,421 B2
Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office.
ORDER
Vacating the Decision Granting Institution, and
Remanding to the Board for Further Proceedings
after Sua Sponte Director Review

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Patent 11,835,421 B2
2
On September 15, 2025, the Board issued a Decision granting
institution of inter partes review in the above-referenced proceeding.
Paper 13 (“Decision”). On October 20, 2025, sua sponte Director Review of
the Board’s Decision granting institution was initiated to address the claim
construction issues implicated in this case. Paper 19. For the reasons
provided below, the Decision granting institution is vacated, and the case is
remanded for further proceedings consistent with this decision.
In this case, Revvo Technologies, Inc. (“Petitioner”) did not propose
its own constructions for claim terms in the Petition, but instead accepted
Cerebrum Sensor Technologies, Inc.’s (“Patent Owner”) proposed
constructions from the parties’ district court litigation. Paper 1 (“Pet.”) at 9–
10 (citing Ex. 1017, Exhibit A at 5–7, 10, Exhibit B at 10–15). Although
Petitioner proposed different constructions for the claim terms in the district
court litigation, Petitioner did not explain why it was taking a different
position here. Id. Petitioner did argue, however, that the Petition complied
with 37 C.F.R. § 42.104(b)(3)1 because Petitioner had adopted Patent
Owner’s proposed constructions from the district court litigation. See Paper
10 at 17, n.5 (citing, e.g., Western Digital Corp. v. Spex Techs., Inc.,
IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018) (determining that a
petition complies with Rule 104(b)(3) by identifying the claim constructions
it proposes as the basis for requesting an inter partes review)).
Patent Owner argued that the Board should deny the Petition because
Petitioner’s different positions before the Board and the district court
amounted to gamesmanship and the Petition, therefore, failed to comply
1 Section 104(b)(3) requires a petition to identify “[h]ow the challenged
claim is to be construed.”

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Patent 11,835,421 B2
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with Rule 42.104(b)(3). Paper 9 (“Prelim. Resp.”) at 14–15 (citing 10X
Genomics, Inc. v. President & Fellows of Harvard College, IPR2023-01299,
Paper 15 at 13 (PTAB Mar. 7, 2024); Orthopediatrics Corp. v. K2M, Inc.,
IPR2018-01546, Paper 10 at 11 (PTAB Feb, 14, 2019) (both denying
institution for failing to comply with Rule 42.104(b)(3) where a petitioner,
without adequate explanation, proposed different claim constructions before
the Board and in district court).
The Board acknowledged Patent Owner’s gamesmanship accusation
but was not persuaded that any gamesmanship occurred because Patent
Owner did not dispute any of the claim constructions provided in the
Petition. Decision 6. The Board determined that Petitioner complied with
Rule 42.104(b)(3) because the Petition identified “how the claim language is
to be construed,” which is all the rule requires. Id. at 7. The Board
explained that Patent Owner’s cited cases—10X Genomics and
Orthopediatrics—were limited to a petitioner’s alleged inconsistent
arguments about whether a claim term is subject to interpretation as a
means-plus-function element under 35 U.S.C. § 112(f), which this case did
not implicate. Id. at 7–8 & n.7. Finding no dispute as to Petitioner’s
proposed constructions, the Board proceeded to apply them in deciding
whether to institute trial. Id. at 8.
The Board erred by limiting its consideration of a petitioner’s
differing claim construction positions to instances that implicate means-plus-
function interpretation under Section 112(f). Although the Board’s trial
rules “do not necessarily prohibit petitioners from taking inconsistent claim
construction positions before the Board and a district court,” when a
petitioner takes alternative positions before the Board and a district court,

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that petitioner should, at a minimum, explain why alternative positions are
warranted. Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-
00952, Paper 12 at 8–9 (PTAB Dec. 13, 2024) (informative); accord Sun
Pharm. Indus. Inc. v. Nivagen Pharm., Inc., IPR2025-00893, Paper 18 at 3
(Director Sept. 19, 2025) (“Although a party is not necessarily precluded
from arguing different claim construction positions before a district court
and the Board, a party should explain why different positions are
warranted.”).
The Board’s claim construction rules are designed to ensure that the
Board correctly construes claim terms and to minimize inconsistency in
claim construction between forums. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340, 51,349 (Oct. 11, 2018). To that
end, the rules discourage petitioners from seeking broader constructions at
the Board to support a patentability challenge while seeking narrower
constructions in litigation to avoid infringement liability. See id. at 51,350.
As the Office explained when it changed the claim construction standard
used in inter partes reviews and post-grant reviews to match the standard
used in litigation, “[petitioners] will have less flexibility to advance
inconsistent arguments about claim scope, and will instead be required to
choose a single claim construction that best captures the true meaning of the
patent claim.” Id. That is not the case here, however, as petitioners continue
to propose different claim constructions in the two forums.
Allowing petitioners to continue this practice does not further the
Office’s goal of “providing greater predictability and certainty in the patent
system.” 83 Fed. Reg. at 51,342–43. This is true even where, as here, the

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claim terms do not implicate Section 112(f). Thus, although a petitioner is
not necessarily precluded from arguing different claim construction
positions before a district court and the Board, the petitioner should explain
sufficiently why the different positions are warranted, even in instances that
do not implicate Section 112(f). See Sun Pharm., IPR2025-00893, Paper 18
at 3. “For example, if a party advances a narrow construction in the district
court and the district court declines to adopt the narrow construction, the
party would have sufficient reason for advancing the broader, court-adopted
construction in a proceeding before the Board.” Id. Simply noting that the
petitioner is adopting a patent owner’s claim construction proposals from
district court, however, is not a sufficient reason for advancing different
positions in the two forums.
Here, Petitioner’s statement that it “accepts Patent Owner’s proposed
constructions” from the district court litigation, Pet. 9, does not explain
sufficiently why the different positions were warranted, and the Board erred
when it determined that Petitioner complied with Rule 42.104(b)(3) by
proposing Patent Owner’s district court constructions. The Board also erred
when it found that a petitioner is only required to explain its different
positions when Section 112(f) is implicated. Ordinarily, that would mean a
denial of institution. Because this decision clarifies how a petitioner should
approach different claim construction positions and how the Office will
assess those positions, the appropriate course of action is to vacate the
Board’s decision and remand the case to the Board. The Board may
authorize additional briefing, as necessary, to determine whether Petitioner
has provided a sufficient reason why different claim construction positions
are warranted.

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Absent good cause, the Board shall issue a decision on remand within
30 days of this decision, or within 30 days of receiving additional briefing if
ordered.
Accordingly, based on the foregoing, it is
ORDERED that the Board’s Decision granting institution (Paper 13)
is vacated; and
FURTHER ORDERED that the case is remanded to the Board for
further proceedings consistent with this decision.

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Patent 11,835,421 B2
7
FOR PETITIONER:
Orion Armon
Dustin M. Knight
Jennifer Volk-Fortier
COOLEY LLP
oarmon@cooley.com
dknight@cooley.com
jvolkfortier@cooley.com
FOR PATENT OWNER:
Christopher D. Bright
Andrew S. Flior
Christopher M. Franich
Lauren C. Tittle
SNELL & WILLMER LLP
cbright@swlaw.com
aflior@swlaw.com
cfranich@swlaw.com
ltittle@swlaw.com