Disclaimer Before Institution May Not Thwart PGRs

Co-authored by Jianle Wang*

In Microsurgical Tech., Inc. v. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. June 16, 2021), the Patent Trial and Appeal Board ("PTAB") held that disclaimed claims should be considered for post-grant review ("PGR") eligibility. The PTAB had previously held that disclaiming claims is a legitimate tool for Patent Owners to avoid institution of a covered business method ("CBM") review. The PTAB explained in Microsurgical that the difference between these two decisions is due to different applicable statutory provisions.

In Microsurgical, Microsurgical Technology., Inc. filed a PGR petition challenging claims 1-20 of the Regents of the University of Colorado's U.S. Patent No. 10,786,391 ("the '391 patent"). In response to the PGR petition and prior to an institution decision, the Patent Owner filed a statutory disclaimer cancelling claims 3, 10, 15, and 18 of the '391 patent. The Patent Owner argued that the