PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review ("IPR") petition before an institution decision, in Pfizer, Inc. v. UniQure Biopharma B.V., IPR2020-00388, Paper 52 (Mar. 25, 2021), the PTAB declined to enter adverse judgment against challenged claims that the patent owner had disclaimed before the PTAB instituted review.

Specifically, in Pfizer, Petitioner Pfizer, Inc. ("Pfizer") filed a petition for IPR of claims 6 and 9-15 of U.S. Patent No. 9,249,405 ("the '405 patent"). Pfizer, Paper 52 at 1. In conjunction with its preliminary response to that petition, Patent Owner UniQure Biopharma B.V. ("UniQure") filed a statutory disclaimer that disclaimed all interest in claims 6 and 9-13 of the '405 Patent. Id. The PTAB instituted review of the remaining challenged claims, claims 14 and 15. Id. UniQure later disclaimed claims 14 and 15 and filed a