Statutory Disclaimer After Petition Bars Institution

In IPR2023-01058, the PTAB declined to institute IPR, finding that Patent Owner had disclaimed all challenged claims under 35 U.S.C. § 243(a), in compliance with 37 C.F.R. § 1.321(a), such that there was no basis on which to have a trial.

Petitioner filed a Petition requesting inter partes review of certain claims of the asserted patent.  Post-filing of the Petition, Patent Owner filed a statutory disclaimer of the challenged claims.  In its Preliminary Response, Patent Owner argued that the PTAB’s precedent required it to preclude institution because Patent Owner had disclaimed each of the Challenged Claims under 35 U.S.C. § 253 in compliance with 37 C.F.R. § 1321.(a).  Patent Owner also argued that the statutory disclaimer was not an admission or acquiescence by Patent Owner, and therefore the PTAB should not construe the disclaimer as a request for adverse judgement.

Petitioner requested permission to file a motion requesting that the PTAB construe Patent Owner’s disclaimer of all challenged claims as a request for adverse judgement.  Patent Owner opposed and a conference call was held.  During the call, Petitioner argued that it intended to rely on Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018) to argue that Patent Owner’s disclaimer should be construed to be a request for adverse judgment.  The PTAB denied Petitioner’s request for authorization to file the motion, reasoning that Arthrex permits the PTAB to grant adverse judgment when a patent owner cancels all claims at issue prior to institution, but Petitioner failed to identify any persuasive reason why the PTAB should do so in present circumstances.  In contrast, Patent Owner cited the PTAB’s precedential General Electric decision as governing in the present circumstances.  General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential); 37 C.F.R. § 42.107(e).  The PTAB agreed, and stated that under the precedential General Electric decision, a “‘patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent’ and ‘[n]o inter partes review will be instituted based on disclaimed claims.’”

The PTAB found that Patent Owner’s disclaimer was recorded on September 18, 2023 under 37 C.F.R. § 1.321(a) and thus, was considered part of the original patent under 35 U.S.C. §253(a) as of that date. Because a disclaimer of the challenged claims of the asserted patent was recorded prior to institution, the PTAB declined to hold a trial.

Source: jdsupra.com - Matthew Johnson and Hannah Mehrle

Editor: IPR Daily-Horace