PTAB denies institution of IPR of a patent wherein the patent holder disclaimed the challenged claims

On November 15, 2017, the Board denied institution of inter partes review of a patent because all the challenged claims were disclaimed by a statutory disclaimer filed by the patent owner. The patent in question, Patent 8, 821, 517, is owned by Incisive Surgical, Inc., and is directed to a mechanical method and apparatus for bilateral tissue fastening. The Board held that disclaiming the claims of a patent under 35 U.S.C. § 253(a) is not a disclaimer of the patent itself, thereby rendering §42.73(b)(1) inapplicable. The Board ultimately established that per their own rules, “no inter partes review will be instituted based on disclaimed claims.” The petition for inter partes review was filed with the Patent Trial and Appeal Board as IPR2017-01438.

By: Laya Varanasi