No Post-Grant Review Where Challenged Claims Are Disclaimed

Addressing whether disclaimer of all challenged claims prior to institution of post-grant review constitutes a request for adverse judgment, the Patent Trial and Appeal Board (PTAB) found that it did not and denied the petition. Corvus v. United States, Case No. PGR2016-00042 (PTAB, Mar. 31, 2017) (Green, APJ).

Corvus sought post-grant review of certain claims of a patent owned by the US government. The government responded by disclaiming all challenged claims. Corvus then argued that the government's statutory disclaimer constituted a request for adverse judgment under 37 CFR § 47.73(b)(2), which provides that "[a] party may request judgment against itself at any time during a proceeding" and lists disclaimer among the actions "construed to be a request for adverse judgment." The government responded that because no trial had been instituted, 37 CFR § 42.73(b)(2) did not apply. Rather, the government argued that the PTAB was compelled to deny the petition under 37