Trending at the PTAB: The Influence of Litigation Arguments

Petitioners at the Patent Trial and Appeal Board often assert that the patent owner's infringement contentions from parallel district court proceedings should factor into the board's decision whether to institute inter partes review or to render any challenged claims unpatentable in a final written decision.

Typically, petitioners refer to the infringement contentions to explain the scope of a claim term, or to draw parallels between the challenged claims and the asserted prior art.

However, the weight that the board gives to these arguments, if any, varies. This article explores recent trends at the PTAB and the extent to which the board considers patent owners' district court arguments, particularly with respect to the meaning of claim terms.

The board's recent treatment of patent owners' infringement contentions varies.

The consideration of and weight afforded to patent owners' litigation contentions varies, including treatment at institution and in final written decisions.

For example, in Dell Inc. v. Universal Connectivity Technologies Inc. in April, the board denied institution in part based on the petitioner's infringement contention-related arguments.[1]

The petitioner applied a reading of the claims in which two claim elements were purportedly satisfied by one feature in the prior art and asserted that its position was "necessitated by the patent owner's infringement position in district court."[2]

The board found this interpretation to be a strained reading of the claim.[3] Although the board considered the petitioner's arguments, it found that they "do not appear to support Petitioner's understanding" of the claim and denied institution.[4]

In Omega Liner Company Inc. v. Buergofol GmbH in March, the board determined that all claims were unpatentable in a final written decision and considered the patent owner's infringement contentions with respect to claim construction. [5]

The petitioner argued that the claim construction at the PTAB should be based on the infringement contentions that the patent owner served in district court.[6]

In response, the patent owner argued that the petitioner proposed an incorrect construction of the disputed claim term based on the claims and specification.[7]

While the board considered the patent owner's contentions, it ultimately held that it need not resolve the parties' competing claim construction arguments for the purposes of rendering a decision as to unpatentability.[8]

While Dell and Omega illustrate recent examples of the board's treatment of patent owner infringement contentions, there is little guidance to unify the board's approach to analyzing statements in litigation.

From a practical standpoint, the patent owner's interpretation of claims for infringement should matter, at least for consistency in the treatment of arguments between the inter partes review proceedings and parallel district court proceedings, and in determining the scope of disputed claims.

Patent owner infringement contentions are relevant to claim construction.

Infringement contentions are arguably within the scope of extrinsic evidence discussed in the U.S. Court of Appeals for the Federal Circuit's 2005 decision in Phillips v. AWH Corp.

Phillips clarified the hierarchy of evidentiary sources usable for claim construction, with intrinsic evidence, such as the prosecution history and the patent specification, being given more weight than extrinsic evidence such as expert testimony, and arguably a patent owner's infringement contentions.[10]

The same Phillips standard applies in both district court and inter partes review proceedings.[11]

Even if the PTAB does not consider a patent owner's infringement contentions to be extrinsic evidence under Phillips, they arguably serve as an admission by the patent owner about the scope of the claims. Declining to consider the patent owner's own statements about claim scope in parallel proceedings and whenever appropriate can result in conflicting outcomes in litigation and at the PTAB.

Varying treatment of infringement contentions is not new.

Board decisions vary on this issue.

For example, in Illumina Inc. v. Ravgen Inc. in 2023, where the board determined that no challenged claims were unpatentable, the petitioner noted that the patent owner "allegedly charged others with infringement based solely on the addition of an 'agent.'"[12]

However, the board declined to consider the patent owner's infringement arguments because "applying the claims too broadly here or in other proceedings relative to infringement … is not decisive on this issue because the intrinsic evidence and plain meaning of the claims controls."[13]

This decision seemingly interprets Phillips as not requiring the board to consider statements or arguments a patent owner has made in a parallel district court proceeding.

At least one other panel has adopted the same outlook. In Unified Patents LLC v. Dynapass IP Holdings LLC last year, the board determined some challenged claims were unpatentable.[14]

To better understand each party's claim construction arguments, however, the board ordered additional briefing to address, in part, "if the infringement contentions are … entered, what if any, weight should we give to a position taken by Patent Owner in a different, albeit related, proceeding."[15] The board ultimately did not consider the patent owner's infringement contentions.[16]

In reaching the Dynapass decision, the board first noted that petitioner raised its infringement contention-related arguments for the first time at the oral hearing.[17]

The board therefore agreed with the patent owner in that its infringement contentions had been publicly available more than four months before the oral hearing, so petitioner had "ample opportunity to raise its arguments about the infringement contentions well before the oral hearing."[18]

Second, turning to the merits of the petitioner's request, the board determined that the patent owner's infringement contentions were not inconsistent with the arguments it presented at the PTAB. The board therefore "declined to exercise [its] authority to consider the infringement contentions."[19]

The Unified Patents decision illustrates that the board has authority to consider infringement contentions, but that it also has discretion whether or not to do so and what weight to given them in its analysis. Additionally, Unified Patents indicates that a request that the board consider infringement contentions should be timely and not raised for the first time during oral argument.

Other panels have held differently.

In TCL Industries Holding Co. v. ParkerVision Inc. in 2022, the board granted the petitioner's motion for additional discovery, ordering the production of the patent owner's final infringement contentions.[20]

In granting the petitioner's motion, the board determined that "Patent Owner's Final Infringement Contentions in the related litigations provide an indication of Patent Owner's understanding and application of the claims."[21]

In its final written decision determining all challenged claims to be unpatentable, the board considered the patent owner's infringement positions while evaluating the prior art.[22]

The board has also addressed litigation contentions at institution. In Cellco Partnership v. Headwater Partners I LLC last year, the patent owner contended that its district court infringement contentions were consistent with the understanding of a certain claim term.[23]

The board declined to address the patent owner's infringement contentions and gave the term its plain and ordinary meaning.[24]

However, the board invited the parties to "consider further addressing Patent Owner's proposed [claim] interpretation during trial," indicating that the petitioner should address the patent owner's infringement contentions later in the proceeding.[25]

In Vicor Corporation v. Delta Electronics Inc. last year, the board determined that the petitioner impermissibly premised one of its grounds on the patent owner's infringement contentions.[26]

In denying institution, the board reasoned that the petitioner's grounds ran afoul of Phillips because they focused on patent owner's infringement contentions instead of the intrinsic evidence of record.[27]

The petitioner requested directed review and argued that "sound policy dictates that Petitioners be permitted to pursue inter partes review based on Patent Owner's position as to the scope of its claims."[28]

While the request was denied, Vicor illustrates that patent owner infringement contentions may not be binding on patent owners and the board has discretion whether to consider litigation statements but will adhere to Phillips.[29]

Conclusion

The cases discussed in this article are but a sampling of the board's various treatments of patent owner infringement contentions in inter partes review proceedings.

While litigation statements arguably fall within the scope of extrinsic evidence discussed in Phillips, there is little precedent to govern the board's treatment of litigation contentions in all cases.

Thus, while petitioners may alert the board of patent owner litigation arguments, petitioners should be aware that the board has discretion to not consider those statements and Phillips will control the analysis.

Petitioners should therefore avoid premising arguments in a petition that rely solely on patent owner's infringement positions to avoid these pitfalls. In situations where a patent owner's infringement contentions support a claim construction favorable for invalidity challenges, petitioners may have greater success using the infringement contentions as evidence in formal claim construction arguments.

Endnotes

[1] IPR2024-01478, Paper 12 at 13-14 (P.T.A.B. Apr. 7, 2025).

[2] Id.

[3] Id.

[4] Id. at 17.

[5] IPR2023-01372, Paper 85 at 11, 54 (P.T.A.B. Mar. 14, 2025).

[6] See id. at 11-12.

[7] Id. at 12.

[8] Id. at 16 n.16.

[9] 415 F.3d 1303 (Fed Cir. 2005). 

[10] Id. at 1317.

[11] See, e.g., Immunex Corp. v. Sanofi-Aventis U.S. LLC , 977 F.3d 1212, 1216 (Fed. Cir. 2020) (noting that "in all newly filed IPRs, the Board applies the Phillips district-court claim construction standard.").

[12] IPR2021-01271, Paper 45 at 35 (P.T.A.B. Jan. 25, 2023).

[13] Id.

[14] IPR2023-00425, Paper 33 at 45 (P.T.A.B. July 12, 2024).

[15] Id. at 3; see also id., Paper 27 at 3 (P.T.A.B. Apr. 17, 2024).

[16] Id., Paper 33 at 10.

[17] Id., Paper 27 at 2; Paper 33 at 10.

[18] Id.

[19] Id. at 11.

[20] IPR2021-00990, Paper 18 at 8 (P.T.A.B. May 3, 2022).

[21] Id. at 4.

[22] IPR2021-00990, Paper 39 at 32, 60 (P.T.A.B. Nov. 21, 2022).

[23] IPR2024-00809, Paper 11 at 16 (P.T.A.B. Oct. 23, 2024).

[24] Id. (noting that the Board based its construction on the patent owner's "cited support from the Specification and declarant testimony").

[25] See id.

[26] IPR2024-00704, Paper 11 at 8 (P.T.A.B. Oct. 2, 2024).

[27] Id.

[28] Id., Paper 12 at 1.

[29] Id. Paper 13 at 2.