Seeking Adverse Judgment After Disclaimer? Ask For It Quickly

Seeking Adverse Judgment After Disclaimer? Ask For It Quickly, PTAB Litigation Blog

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A few weeks ago, we posted an article discussing the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). (see Disclaimer Before Institution May Not Avoid Adverse Judgment Estoppel). In Arthrex, the Federal Circuit affirmed the PTAB’s decision to enter an adverse judgment against a patentee, even though the patentee had properly disclaimed all of the challenged claims prior to institution, and had specifically requested that the Board not enter an adverse judgment. In reaching that decision, the court relied primarily on the plain language of 37 C.F.R. § 42.73(b), which states that the "disclaimer of a claim such that the party has no remaining claim in the trial" may be construed to be a request for adverse judgment.

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