Ford Motor Co. v. AutoConnect Holdings — Director Vacates IPR Institution Over Inconsistent Claim Constructions

Background

AutoConnect Holdings LLC, a nonpracticing entity, sued Ford Motor Company for infringement of three vehicle connectivity and infotainment patents (U.S. Patent Nos. 9,020,697; 9,290,153; and 9,123,186) in the District of Delaware. Ford responded by filing petitions for inter partes review (IPR) at the Patent Trial and Appeal Board — a strategy commonly employed to challenge the validity of asserted patents in a parallel administrative proceeding.

PTAB initially granted institution of all three IPRs. But after institution, Ford served invalidity contentions in the parallel district court litigation in which it argued that seven claim terms — including the constructions used in the IPR petitions — were actually indefinite, invoking 35 U.S.C. § 112(b). Ford had treated those same terms as having their plain-and-ordinary meaning when seeking IPR institution. Patent Owner AutoConnect flagged the inconsistency. Ford then offered to drop its indefiniteness arguments from district court if PTAB would keep the IPRs going — but Director Squires rejected that offer as too little, too late.

The Court’s Holding

Director Squires exercised his Director Review authority to vacate institution and deny Ford’s petitions in all three IPRs. The core rationale: a petitioner that argues plain-and-ordinary meaning for a claim term in its IPR petition, then turns around and argues the same term is indefinite in parallel district court litigation, has taken an inconsistent position that undermines the integrity of the IPR process.

The Director applied the standard from the precedential decision in Revvo Inc. v. Cerebrum Sensor Technologies, which condemned using PTAB and district court simultaneously with contradictory claim constructions to gain an advantage in both forums. Here, Ford had presented arguments designed to maximize its PTAB win while simultaneously weakening the patent at the district court level through indefiniteness attacks on the same terms — a form of forum-shopping the Director called using IPR as “less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.”

Critically, Ford’s post-flagging offer to stipulate away the district court indefiniteness contentions was rejected. Ford had already benefited from the inconsistent positions — filing and getting institution granted — before the patent owner spotted the problem. The voluntary abandonment of one position after being caught was insufficient to cure the harm.

Key Takeaways

• Claim construction consistency is now a hard requirement: Petitioners cannot argue plain meaning at PTAB and indefiniteness for the same terms in district court. The Director will use Director Review to vacate institution when this inconsistency is material to the grant.
• Disclose inconsistencies before institution: The Director’s order explicitly notes that had Ford disclosed its conflicting constructions in the petition itself, institution would not have been granted. Transparency at the outset is the only safe harbor.
• Late stipulations are not enough: Offering to drop the inconsistent arguments after the patent owner flags them (and after institution is already granted) does not undo the prejudice or restore integrity to the proceeding.
• Designated informative (not precedential): This decision is designated “informative” — it is persuasive guidance but not binding precedent. The controlling standard comes from the precedential Revvo decision. This Ford order illustrates how the Revvo framework applies in practice.

Why It Matters

IPR petitions are a powerful and commonly used tool for defendants facing patent infringement claims. The standard playbook involves filing at PTAB while simultaneously advancing invalidity defenses in district court. But this case — following Revvo — shows that the same claim terms cannot be treated differently in the two forums. If a petitioner believes a term is indefinite, it must either reflect that in its PTAB petition or forego the indefiniteness argument at the district court level.

For IPR practitioners, the message is clear: audit your district court invalidity contentions before filing a PTAB petition, and disclose any divergence in claim construction positions upfront. Silent inconsistencies, if discovered after institution, now risk losing the IPR entirely.