Disclaimer Before Institution May Not Thwart PGRs, PTAB Litigation Blog
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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.
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