The PTAB recently instituted post-grant review in Core
Survival, Inc. v. S & S Precision, LLC (PGR2015-00022, paper 8). While the patent
owner did not argue that that the patent was eligible for
post-grant review, the facts raise the question of whether
disclaimer could be used by patent owners to avoid PGR
institution.
Only patents subject to the first-inventor-to-file provisions of
the AIA are eligible for post-grant review. See AIA §
6(f)(2)(A). The first-inventor-to-file provisions apply to any
application for patent, and to any patent issuing thereon, that
contains or contained at any time a claim to a claimed invention
that has an effective filing date on or after March 16, 2013.
See AIA § 3(n)(1). In this case, the patent at issue
was filed after March 16, 2013, but was a continuation-in-part of
an application filed before that date. The application was
originally filed with a claim 22 that petitioner asserted related
to new matter added in the
