Takeaway: If a patent owner disclaims the challenged claims prior to institution of trial, such action will not be considered a request for adverse judgment, and it is likely that the Board will deny institution of the petition on the basis of the disclaimers.

In its Decision, the Board denied institution of all challenged claims (38-42, 44, and 45) of the ’492 Patent.

In its Petition, Petitioner provided notice of a co-pending Reissue Application No. 14/260,250 relating to the ’492 Patent. In its Preliminary Response, Patent Owner provided notice that claim 38 of the ’492 Patent had be disclaimed. About a month later, Patent Owner sent an email to the Board providing notice that the remainder of the challenged claims had been disclaimed. The next day, the Board authorized Patent Owner to file a motion for adverse judgment based on the statutory disclaimer. Patent Owner declined to file said motion, stating that it assumed the Petition will be denied for lack of jurisdiction.

The Board found that it had jurisdiction to consider the Petition pursuant to 35 U.S.C. § 314, but declined to institute review based on the disclaimer of the challenged claims. The Board further determined that Patent Owner’s statutory disclaimers, which were filed prior to institution, should not be construed as a request for adverse judgment. The Board construed 37 C.F.R. § 42.73(b), which discusses requests for adverse judgments, as stating that such request is made if claims are cancelled or disclaimed after trial is instituted.

FCA US LLC v. Jacobs Vehicle Systems, Inc., IPR2015-01234
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: October 23, 2015
Patent 6,883,492 B2
Before: Meredith C. Petravick, Benhamin D. M. Wood, and Richard E. Rice
Written by: Rice