Strategic Use of Disclaimers in PTAB Proceedings

A patentee has several options for responding to a Petition for Inter Partes Review (“IPR”) or Covered Business Method (“CBM”) petition. The patent owner can optionally file a Preliminary Response arguing against institution on substantive grounds, or the patent owner can attack the petition procedurally, such as by arguing the petitioner is a real-party in interest to a litigation or is otherwise related to a party served more than a year prior to the petition and the petition is therefore time barred. A third, less frequently used approach, is to file a disclaimer that disclaims the claims that provide a basis for the institution of the IPR or CBM.

37 CFR § 42.107 states “The 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. No inter partes review will be instituted based on disclaimed claims.” The patent owner can therefore eliminate claims that present the basis of the PTAB institution, for example, those claims that are of a financial nature and that therefore provide the basis for institution of a CBM petition. The patent owner may also file a disclaimer to eliminate claims that are most likely not novel in light of the prior art and, instead of fighting those claims in the petition, can emerge from the PTAB proceeding with stronger claims intact and without spending resources and time fighting for all of the claims in the IPR petition.

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