Using Disclaimer To Avoid Institution Of CBM Review

CBM reviews, if instituted, almost always result in invalidated claims.  In the PTAB's latest statistics, only 4% of final written decisions in CBM reviews found no instituted claims unpatentable.  Those same statistics, however, show that close to 50% of CBM petitions have not resulted in institution.  These statistics underscore the importance of patent owners doing what they can to avoid CBM review institution.

The PTAB's institution decision in (CBM2015-00171) confirms that statutory disclaimers can be strategically used to avoid institution in some cases.  In that case, the petitioner challenged claims 1-20.  With its preliminary response, however, IV filed a statutory disclaimer of claims 1-10 under 37 C.F.R. § 1.321(a).  Because a patent needs only one claim directed to a covered business method to be eligible for review, the question before the PTAB was whether IV's disclaimer of those claims could allow it to avoid review.