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Disclaimer of All Challenged Claims Results in Denial of IPR Institution

The Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) where the patent owner filed a statutory disclaimer of all claims challenged in the petition. Xilinx, Inc. v. Godo Kaisha IP Bridge 1, Case No. IPR2017-00843 (PTAB, Aug. 24, 2017) (McShane, APJ).

Xilinx filed an IPR petition challenging certain claims of Godo Kaisha’s patent. After the petition was filed, Godo Kaisha filed a statutory disclaimer of all the challenged claims pursuant to 37 CFR § 1.321(a). Godo Kaisha then filed its preliminary response in the IPR proceeding and requested that the IPR petition be denied. Relying on 37 CFR § 42.107(e), which states that no IPR will be instituted based on disclaimed claims, the PTAB denied institution since there were no asserted grounds remaining in the proceeding.

The PTAB did not address whether Godo Kaisha’s statutory disclaimer operated as a request for an adverse judgment. Different PTAB panels have come to different conclusions in similar situations. For instance, in FCA US LLC v. Jacobs Vehicle Systems, the panel determined that challenged claims disclaimed prior to institution are not to be construed as a request for adverse judgment (IP Update, Vol. 18, No. 11). However, under similar facts in Hospira v. Janssen Pharmaceuticals, a different panel found that a patent owner’s disclaimer prior to an institution decision required the panel to enter an adverse judgment. 

© 2022 McDermott Will & EmeryNational Law Review, Volume VII, Number 280
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About this Author

Jacqueline Mahoney, McDermott Will Emery Law Firm, Patent Attorney
Associate

Jacqueline Mahoney is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Silicon Valley office.  She focuses her practice on patent preparation and prosecution.

Jacqueline has experience prosecuting patents in a broad range of fields, including pharmaceuticals, drug delivery and medical devices.  She has prosecuted both foreign and U.S. patents.  Jacqueline has also worked on infringement analyses and due diligence investigations.

650-815-7644
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