Consistency Is Key – USPTO Issues Three New Informative Decisions

On May 13, 2026, the United States Patent and Trademark Office designated as informative three Patent Trial and Appeal Board decisions where the Director denied institution because petitioners advanced indefiniteness or different claim construction arguments in district court without sufficient justification.¹In contrast to precedential decisions, informative decisions are not binding, but they do provide the Board guidance on new or reoccurring issues. See Patent Trial and Appeal Board Standard Operating Procedure 2 (Rev. 11) at 3. Terumo BCT, Inc. v. Haemonetics Corp., IPR2025-01374, IPR2025-01391, Paper 20 (Director May 12, 2026), summarized below, is representative of the three new informative decisions.

Terumo BCT, Inc. v. Haemonetics Corp., IPR2025-01374, IPR2025-01391, Paper 20 (Director May 12, 2026) (informative)

In Terumo v. Haemonetics, Director Squires granted Director Review, vacated the Board’s earlier decision granting institution, and denied the petitions, finding petitioner advanced inconsistent claim construction arguments in district court after institution without sufficient justification.

In its petition, petitioner argued that no construction was necessary for the challenged claims and advanced a plain and ordinary meaning for all claim terms. After the Board granted institution, petitioner asserted in district court that certain claims reciting a “controller” are indefinite under 35 U.S.C. § 112(b). Patent owner subsequently filed a request for Director Review, arguing petitioner’s positions are inconsistent between forums and insufficiently explained as required by the other precedential and informative decisions.²

Petitioner provided two justifications in response: (1) the claim term “controller” is not in controversy in the inter partes reviews, and its construction is immaterial to the prior art analysis before the Board; and (2) 37 C.F.R. § 42.104(b)(3), requiring “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function,” is not implicated because that rule only applies to terms that are in controversy.

The Director found both justifications insufficient to support petitioner’s different claim construction positions of the term “controller” in the district court and at the Board. The Director explained that simply failing to keep consistent constructions across forums detract from the Office’s goal of providing greater predictability and certainty in the patent system. He also rejected petitioner’s mean-plus-function argument because asserting such a construction in district court “undercuts its position that Rule 42.104(b)(3) does not apply here.” The Director concluded that denial was appropriate here because petitioner’s conduct does not provide a litigation alternative, as Congress intended.

Going forward, petitioners should generally avoid presenting different §112 or claim construction positions between district court and AIA proceedings. If petitioners do advance different positions, they should be prepared to justify their decisions to do so. Patent owners should consider whether petitioners take different positions and, when appropriate, inform the Board about these positions.

Endnotes

¹Ford Motor Company v. AutoConnect Holdings LLC, IPR2025-01342, -01383, -01524, Paper 27 (Director May 12, 2026); Terumo BCT, Inc. v. Haemonetics Corp., IPR2025-01374, Paper 20 (Director May 12, 2026); TikTok, Inc. v. Shopsee, Inc., IPR2025-01485, Paper 13 (Director Jan. 16, 2026).

² Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential); Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (Director Nov. 5, 2025) (informative).