PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

by | May 7, 2021 | Final Written Decisions

By Andrea Beathard and Matt Johnson –

Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in Pfizer, Inc. v. UniQure Biopharma B.V., IPR2020-00388, Paper 52 (Mar. 25, 2021), the PTAB declined to enter adverse judgment against challenged claims that the patent owner had disclaimed before the PTAB instituted review.

Specifically, in Pfizer, Petitioner Pfizer, Inc. (“Pfizer”) filed a petition for IPR of claims 6 and 9–15 of U.S. Patent No. 9,249,405 (“the ‘405 patent”).  Pfizer, Paper 52 at 1.  In conjunction with its preliminary response to that petition, Patent Owner UniQure Biopharma B.V. (“UniQure”) filed a statutory disclaimer that disclaimed all interest in claims 6 and 9–13 of the ‘405 Patent.  Id.  The PTAB instituted review of the remaining challenged claims, claims 14 and 15.  Id.  UniQure later disclaimed claims 14 and 15 and filed a motion to terminate the proceeding.  Pfizer, Paper 48 at 1.  Because the PTAB construes a disclaimer of all claims involved in a trial as a request for adverse judgment, the PTAB issued adverse judgment as to claims 14 and 15.  Pfizer, Paper 52 at 3 (citing 37 C.F.R. § 42.73(b)(2)).

Pfizer had asserted that the PTAB should extend that adverse judgment to claims 6 and 9–13, Pfizer, Paper 50 at 1, 3, but the PTAB rejected that assertion.  The PTAB held that challenged claims that are disclaimed before the PTAB institutes IPR are not part of the IPR and cannot be subject to an adverse judgment.  Pfizer, Paper 52 at 3 (citing 37 C.F.R. § 42.107(e); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01248, Paper 7 at 2 n.1, 9–10 (PTAB Feb. 7, 2019)).

In support of its contention that the adverse judgment should extend to claims 6 and 9–13, Pfizer had cited Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018), a case in which the Federal Circuit held that the PTAB can enter adverse judgment “when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.”  Id. at 1350.  While the PTAB agreed that “the court in Arthrex held that the [PTAB] may enter adverse judgment against disclaimed claims,” the PTAB chose to follow “prior precedent [that] hold[s] that disclaimed claims are treated as if they never existed.”  Pfizer, Paper 52 at 4 (citing Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998)).  According to the PTAB, “[i]f the claims never existed, [the PTAB] cannot have exercised jurisdiction over the disclaimed claims and therefore cannot enter adverse judgment against them.”  Id.

The PTAB thus found that it could not enter adverse judgment against claims 6 and 9–13 because UniQure had disclaimed those claims before the PTAB exercised jurisdiction over the claims.  Those claims were “in contrast to claims 14 and 15 which were not disclaimed until after [the PTAB] instituted trial and exercised jurisdiction over those claims.”  Id.

Takeaway: Patent owners may be able to avoid adverse judgment if they disclaim challenged claims after an IPR petition is filed, but before the PTAB issues an institution decision.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.