In two 2017 rulings, precedential (Skky as to § II.B.2 only), patent owners disclaimed challenged claims before the Board decided whether to institute. The Board treated those claims as if they had never existed: no review of them, and no ruling on whether the petitioner was right.
Before you read
Before the institution decision, the owner disclaims every challenged claim but says it still disagrees with the petition. What happens?
No review is instituted. Under 37 C.F.R. § 42.107(e), no inter partes review will be instituted based on disclaimed claims, and in GE every challenged claim had been disclaimed.
Part 1 of 6
GE challenged all 17 claims of a patent owned by United Technologies and MTU Aero Engines. The owners said they “strongly disagree[d]” with GE’s unpatentability arguments, then disclaimed all 17 claims anyway.
17 challenged claims · 17 disclaimed · 0 left to review
The Board checked the two disclaimer filings against Office records and found the disclaimer of claims 1 to 17 recorded as of April 12, 2017. Because “all claims challenged by GE have been disclaimed,” it ordered “that no inter partes review is instituted for any claim challenged by GE.” The decision never reaches the prior art.
Part 2 of 6
A statutory disclaimer is a filing in which the patent owner permanently gives up one or more claims. Once recorded, it is “considered as part of the original patent.” The PTAB’s rules let an owner file one before institution, and state the effect: “[n]o inter partes review will be instituted based on disclaimed claims.”
0 of 4 reviewed
Part 3 of 6
Skky used a disclaimer differently. Facebook petitioned for covered-business-method review of claims 1 to 11 of a Skky patent. That program was available only for patents that qualified as covered business method patents. The day before its preliminary response, Skky disclaimed claims 6 and 8 to 11, and argued the rest didn’t qualify.
11 challenged claims · 5 disclaimed · 6 left
The panel agreed and denied institution. Facebook sought rehearing, and the panel was expanded. It held that eligibility “is determined based on the claims of the challenged patent as they exist at the time of the decision whether to institute, and statutorily disclaimed claims must be treated as if they never existed.” It rejected fixing eligibility at the date the petition was filed, and denied rehearing on September 28, 2017.
The covered-business-method program expired on September 16, 2020. The principle carries over: what counts at institution is the patent as it stands then, not as it stood when the petition was filed.
Part 4 of 6
A docket entry that says “not instituted” leaves out the event that matters commercially: the owner gave up the claims.
For every purpose, including litigation and licensing. A disclaimer surrenders complete claims; it doesn’t narrow them.
The cost and risk of defending claims it may no longer need, with no ruling that they were unpatentable.
For a petitioner trying to remove exposure under specific claims, the surrender may achieve the goal without a trial. For an owner, it may be a sensible way to stop spending on rights no longer worth defending. Neither conclusion follows from the status entry alone.
Part 5 of 6
Choose your side.
Part 6 of 6
Both are 2017 Board decisions, precedential (Skky as to § II.B.2 only) but not court rulings, and Skky concerns a program that no longer exists. A disclaimer also ends review only of the claims it covers. An owner that disclaims some claims still faces review of the rest.
Answered
Not answered
Whether a disclaimer before institution has other consequences for the owner, such as under the adverse-judgment rule, is not addressed in these decisions and has not been researched for this story.
The takeaway
Describe the result to the client as rights surrendered, not just a proceeding avoided. That is the decision they are making.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.