Under 37 C.F.R. § 42.73(b), a party may request adverse judgment against itself at any time during a proceeding. A patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) to disclaim one or more claims of the patent. 37 C.F.R. § 42.107(e) (IPR proceedings) and 37 C.F.R. § 42.207(e) (CBM and PGR proceedings) provide that no IPR, CBM or PGR proceedings will be instituted for disclaimed claims. Disclaimer of one or more claims has become an effective tool to avoid institution for other challenged claims.
Hospira, Inc. v. Janssen Pharmaceuticals, Inc., IPR2013-00365, Paper 9 (PTAB Oct. 24, 2013). Prior to filing its preliminary response, patent owner disclaimed all claims challenged in the petition. While noting that 37 C.F.R. § 42.107(e) provides that no inter partes review will be instituted for disclaimed claims, the Board nevertheless construed patent owner’s disclaimer of all challenged claims as a request for adverse judgment pursuant to 37 C.F.R. § 42.73(b), and entered adverse judgment against patent owner.
Google Inc. v. SimpleAir, Inc., CBM2015-00019, Paper 11 (PTAB May 19, 2015). Prior to filing the preliminary response, patent owner disclaimed several claims challenged in the petition. Petitioner cited two claims to support its assertion that the patent is CBM-eligible under AIA § 18(d)(1). Patent owner disclaimed one of those claims. The Board determined that petitioner did not demonstrate that the claim which was not disclaimed meets the requirements of AIA § 18(d)(1). The Board treated the disclaimed claim which allegedly met the requirements of AIA § 18(d)(1) as never having existed. Since petitioner did not demonstrate that the patent includes at least one claim that makes it a CBM-eligible patent, the Board denied institution.
American Express Co. v. Maxim Integrated Prods., Inc., CBM2015-00098, Paper 17 (PTAB Sept. 22, 2015). In its petition for CBM review, petitioner identified claim 2 as being directed to a financial product or service. Prior to institution, patent owner disclaimed claim 2 in an attempt to deny standing for CBM review. The Board disagreed with patent owner that the patent was no longer eligible for CBM review. The Board noted that petitioner argued that “the claims” of the patent demonstrate that the patent satisfies the financial product or service requirement. The Board interpreted the petition as using claim 2 as an example, and determined that petitioner’s arguments regarding the financial product or service requirement applied more broadly to the subject matter of all claims of the patent. The Board determined that claim 1, from which claim 2 depends, satisfied the financial product or service requirement and accordingly instituted CBM review.
FCA US LLC v. Jacobs Vehicle Sys., Inc., IPR2015-01234 (PTAB Oct. 23, 2015). Prior to institution, patent owner disclaimed all challenged claims, and then filed a preliminary response arguing that the Board should deny institution rather than enter adverse judgment against patent owner. Petitioner argued that the Board should enter adverse judgment. The Board denied institution since all challenged claims were disclaimed prior to institution. The Board determined that patent owner’s disclaimers should not be construed as a request for adverse judgment. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself during trial. The term “trial” in 37 C.F.R. § 42.73(b)(2) means “a contested case instituted by the Board based upon a petition.”
Great West Casualty Co v. Intellectual Ventures II LLC, CBM2015-00171, Paper 10 (PTAB Feb. 9, 2016). After a CBM petition was filed and prior to the Board’s institution decision, patent owner disclaimed half of the challenged claims. The Board denied institution of CBM review because petitioner did not show that the remaining claims of the patent make the patent eligible for CBM review under AIA § 18(d)(1). For the purposes of determining whether to institute CBM review, the Board treated the disclaimed claims as never having existed.
J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (PTAB Jan. 12, 2016). The Board held that patent owner cannot remove standing for CBM review after institution by disclaiming claims of the patent which make the patent CBM-eligible under AIA § 18(d)(1). Standing for CBM review is determined at the time of institution. If petitioner satisfies the standing requirements of 35 U.S.C. § 321(a) and AIA § 18(a)(1)(B) at the time the petition is filed, and the patent has at least one claim directed to CBM review at the time of institution, petitioner maintains standing in the CBM proceeding regardless of whether patent owner subsequently disclaims claims that are directed to a financial service or product. AIA § 18(a)(1)(E) only requires that the patent be CBM eligible at the time of institution.
CoreLogic, Inc. v. Boundary Sols., Inc., CBM2016-00016, Paper 9 (PTAB May 24, 2016). The Board denied institution of CBM review after patent owner disclaimed claims that petitioner identified as making the patent eligible for CBM review. Petitioner alleged that claims 1, 13 and 16-18 recite data processing operations that are financial in nature. Patent owner disclaimed claims 13 and 16-18 when filing its preliminary response. The Board treated claims 13 and 16-18 as having never existed. The Board disagreed with petitioner that claim 1 recites data processing used in a financial activity, indicating that petitioner’s reliance on the specification was unavailing because petitioner did not sufficiently identify how the cited portions of the specification relate to the language of claim 1.