Statutory Disclaimer Is Not Always Treated As An Adverse Judgment IPR2015-00736


Takeaway: The Board may elect not to treat a patent owner’s statutory disclaimer as an adverse judgment based on 37 C.F.R. § 42.73(b)(1)-(4).

In its Decision, the Board denied Petitioner’s Request for Rehearing. The Board had denied institution of inter partes review of the ’591 patent because Patent Owner filed a statutory disclaimer under 35 U.S.C. § 253. Petitioner argued that the Board should have considered this disclaimer as a request for adverse judgment. The Board did not designate the Decision Denying Institution as an adverse judgment for two reasons.

First, the Board did not agree that the factual circumstances surrounding Patent Owner’s disclaimer fall within any of the actions that are to be construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Patent Owner disclaimed claims, not the patent; thus, § 42.73(b)(1) is inapplicable. Section 42.73(b)(2) refers to a “disclaimer of a claim such that the party has no remaining claim in the trial.” The Board interpreted this subsection to apply only after trial has been instituted. In this case, a trial had not yet been instituted. Thus, the Board did not need to construe Patent Owner’s disclaimer as a request for adverse judgment. Petitioner did not argue the subsections (b)(3) or (b)(4) apply.

Second, the Board has precedence for its Decision denying institution. The Board identified four other cases in which a pre-institution disclaimer was filed by a patent owner disclaiming each claim challenged in the respective petition. Thus, the Board denied Petitioner’s Request for Rehearing.

Paper 11: Decision Denying Rehearing
Dated: October 13, 2015
Patent 7,707,591
Before: Rama G. Elluru, Bart A. Gerstenblith, and Charles J. Boudreau
Written by: Gerstenblith