Federal Circuit Finds Estoppel May Apply After Pre-Institution Disclaimer

In Arthrex v. Smith & Nephew, a split panel affirmed a PTAB decision entering an adverse judgment when a patent owner disclaimed all claims challenged in a IPR petition prior to institution.  By disclaiming all claims at issue, the patent owner was attempting to avoid the estoppel effects of 37 C.F.R. § 42.73(d) that apply with issuance of an adverse judgment.

The Federal Circuit also confirmed that a patent owner can appeal a pre-institution adverse judgment ruling under 35 U.S.C. § 1295, because an adverse judgment is a final decision disposing of an IPR proceeding.

For more details on this decision, check out this article by Pier DeRoo.  The Federal Circuit also recently held en banc that appellate review was available for any time bar determinations by the PTAB under 35 U.S.C. § 315(b), overruling precedent.  A detailed writeup of that decision, prepared by David Weingarten, is available here.  Stay tuned to the AIA blog for updates as these events occur.