Claim Disclaimer Derails Instituted IPR In Freightcar America

In Freightcar America, Inc. v. National Steel Car Limited, IPR2025-01047, Director Squires de-instituted an already-instituted IPR after a patent owner filed its patent owner response. The decision rested on the patent owner’s post-institution disclaimer of the claims that formed the basis for institution.

The Board’s institution decision found a reasonable likelihood of unpatentability for claim 24, but not for the remaining challenged claims. Following institution, patent owner disclaimed claim 24 and its dependents and requested Director Review of the decision granting institution of the IPR, arguing that it had disclaimed the claims for which the Board found a reasonable likelihood of unpatentability. Petitioner argued that Director Review is improper when it relies on new evidence—such as a post-institution disclaimer—rather than identifying any error in the Board’s institution decision.