Takeaway: A Patent Owner’s disclaiming the only challenged claim may be construed as a request for adverse judgment resulting in an entry of judgment rather than a final written decision.

In its Order, the Board denied Petitioner’s Motion Requesting a Final Written Decision in view of Patent Owner’s disclaimer of claim 23 of the ’229 Patent, which is the only claim challenged in the proceeding. Petitioner argued that because Patent Owner filed the disclaimer after receiving the Board’s Institution Decision, any order entering judgment should be designated a final written decision and entering judgment as a final written decision enhances the estoppel effect of the order in the event Patent Owner seeks a claim that is not patentably distinct from claim 23 in another patent application pending before the Office. Upon inquiry from the Board, counsel for Petitioner noted that Petitioner does not oppose mere entry of judgment in this proceeding based on the disclaimer. Citing 37 C.F.R. § 42.73(b)(2), the Board found that Patent Owner’s disclaimer is construed as a request for adverse judgment and because Petitioner does not oppose entry of judgment, the Board entered judgment in a separate order (Paper 14).

Smith & Nephew, Inc. v. Bonutti Skeletal Innovations LLC, IPR 2013-00605
Paper 13: Order on Conduct of the Proceeding and Paper 14: Judgment Disclaimer of a Claim
Dated: March 21, 2014
Patent 7,749,229 B1
Before: William v. Saindon, Michael R. Zecher, and Richard E. Rice
Written by: Rice