The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR) proceedings: inconsistent claim construction arguments between district court litigation and PTAB petitions.
Claim Construction Inconsistency
The PTAB’s holding centered on Petitioner’s proposed construction of the term “component.” The term “component” appeared repeatedly within the independent claims related to vehicle crash detection. For example, “a first detecting component operable [to] detect a first parameter and to generate a first detector signal based on the first detected parameter.”
In the corresponding district court litigation, Petitioner’s position was that “’component’ terms in the challenged claims should be means-plus-function terms governed by §112(f) and that such terms are indefinite for failure to identify corresponding structure to perform the recited functions.”[2] Petitioner also emphasized that whether means-plus-function applies to the term “component” “will be most significant to the resolution of the case and/or will be case or claim dispositive or substantially conducive to promoting settlement.”[3]
Petitioner’s IPR petition took a very different approach. Instead of arguing that the “component” terms were governed by §112(f), Petitioner instead argued that these terms should be given their plain and ordinary meanings. Moreover, Petitioner’s IPR petition only mentioned their district court means-plus-function argument in a footnote. Failing to address its means-plus-function argument was fatal for Petitioner’s IPR petition.
The Board held 37 C.F.R. § 42.104(b)(3) mandated that 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.”[4] In denying the petition, the Board highlighted Petitioner’s deterministic language from its district court filing (e.g., “will be most significant” and “will be case . . . dispositive”) as an important factor in its decision.[5]
Key Takeaways for Practitioners
The PTAB’s designation of this case as informative serves as a cautionary example for practitioners whose cases are being litigated simultaneously in district courts and IPR proceedings. To the extent practitioners take differing claim construction approaches in the two proceedings, they should offer a clear and justified explanation for why they are doing so.
[1] Found at Precedential and informative decisions | USPTO
[2] Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (majority opinion), IPR2024-00952, Paper 12 (December 13, 2024), at p. 6.
[3] Id. at 7.
[4] Id. at 8.
[5] The deterministic language was from the Joint Claim Construction and Prehearing Statement. Specifically, the Board highlighted the following passage, “construction of the listed “component” terms—specifically, whether those terms are means-plus-function limitations governed by 35 U.S.C. § 112(f), and if so, whether the specification properly discloses corresponding structure for the recited function in those limitations—will be most significant to the resolution of the case and/or will be case or claim dispositive or substantially conducive to promoting settlement.” Id. at 7.
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