“The Board’s continued reliance on the reasoning that claims that existed at any time in the patent or application may be considered for post-grant review eligibility has important implications for applicants who utilized the transition application strategy.”
March 16, 2013 marked a watershed date in the practice of patent law as the effective date of the Leahy-Smith America Invents Act (AIA). Per Section 3 of the AIA, patent applications having an effective filing date prior to the effective date of the AIA are subject to first-to-invent/ pre-AIA law, whereas applications claiming an effective filing date after the effective date of the AIA are subject to the first inventor-to-file provisions of the AIA, including post grant administrative challenges introduced as part of the AIA. Not surprisingly, there were a number of patent applications filed that bridged the March 16, 2013 AIA effective date. These so-called “transition applications” were filed after March 16, 2013 but claimed priority to an application filed before March 16, 2013. These applications would not be subject to the provisions of the AIA unless the application contained a claim that did not properly find support in the pre-AIA priority document(s). The Patent Trial and Appeal Board (PTAB) is taking aim at these transitional applications, and patents issuing therefrom, by casting a wide net with respect to eligibility under the AIA and closing apparent loopholes such that patent owners cannot reverse a finding that a patent is subject to AIA law, even if all of the claims of said patent are entitled to a pre-March 16, 2013 priority date.
MicroSurgical v. The Regents of the University of Colorado
The Regents of the University of Colorado (the University) filed a transitional application, titled “Intraocular device for dual incisions,” which issued on September 29, 2020 as U.S. Patent No. 10,786,391. The application that ultimately matured as the ’391 patent was filed on November 8, 2019 but claims priority to a provisional application filed on April 24, 2012.
In MicroSurgical Technology, Inc. v. The Regents of the University of Colorado, PGR2021-00026, MicroSurgical submitted a petition requesting post-grant review of claims 1-20 of the ’391 patent, asserting that all of the claims were invalid for lack of written description and indefiniteness under Section 112 and anticipation and obviousness under Sections 102 and 103, respectively. MicroSurgical alleged that none of the claims of the ‘391 patent was entitled to a priority date prior to November 8, 2019 and as such, the patent was eligible for post-grant review. The University argued that the proper priority date of the ‘391 patent was April 24, 2012, and accordingly, the patent was not eligible for post-grant review. However, the University also filed a statutory disclaimer, disclaiming certain of the challenged claims, specifically claims 3, 10, 15, and 18, further arguing that these disclaimed claims should not be relied upon for determining eligibility for post-grant review under the AIA.
The PTAB disagreed with the University on this point and determined that the patent was eligible for post-grant review on the basis of the disclaimed claims, but denied institution of post-grant review of the ‘391 patent as the petitioner did not satisfy their burden to show that it was more likely than not that one of the non-disclaimed challenged claims was unpatentable. The Board noted that, despite the patent owner’s statutory disclaimer of certain claims, which removed them from analysis with respect to patentability, these disclaimed claims remained relevant to the question of whether the patent was eligible for post-grant review.
Strategic Use of Statutory Disclaimers
As the Board noted in Axon Enterprise, Inc. v. Digital Ally, Inc., PGR2018-00052, a statutory disclaimer filed under 25 U.S.C. § 253 effectively cancels the identified claims and renders them as if they had never existed in the patent. Statutory disclaimers can be a useful tactic in post-grant review and inter-partes review proceedings if the claims are not essential to the patent owner’s enforcement strategy and removing the claims from consideration weakens or obviates the petitioner’s arguments. Claims that are statutorily disclaimed cannot form the basis for a decision to institute, as the claims should be treated as if they have never existed in the challenged patent. Thus, by disclaiming one or more peripheral and/or more easily challenged claims, an argument against institution and/or for patentability of the remaining claims may be strengthened.
However, the Board drew a sharp distinction between the fact that the disclaimed claims cannot form the basis for instituting a post-grant review and the use of the disclaimed claims to justify the eligibility of the patent for post-grant review. The Regents of the University of Colorado argued that, as a statutory disclaimer has the effect of rendering the claims as though they never existed in the patent, the disclaimed claims should not be used as a basis for determining whether the patent is eligible for post-grant review. In particular, the University pointed to both basis in 37 C.F.R. § 42.207(e) and Board decisions, including a 2017 decision in Facebook, Inc. v. Skky, LLC (CBM2016-00091), which make clear that disclaimed claims cannot form the basis for a decision to institute and, arguably, that patent review eligibility should turn on the claims in the patent at the time the Board considers institution of the review.
The Board was not convinced. Affirming the reasoning in an earlier Board decision, RetailMeNot v. Honey Science Corp. (PGR2019-00060), the Board took the position that determining eligibility for participation in the post-grant review process under the AIA requires looking to claims contained at any time in the patent or application therefor. In this particular case, the ’391 patent issued from a transition application, filed after the AIA’s effective date of March 16, 2013, but claiming priority to an application filed prior to March 16, 2013. The Board found that at least one of the disclaimed claims did not find adequate support in the pre-March 16, 2013 priority application and accordingly, those claims rendered the patent eligible for post-grant review under the AIA. Going further, the Board determined that the non-disclaimed claims were sufficiently supported in the provisional application and were accorded the April 24, 2012 priority date.
The petitioner challenged all of claims 1-20 on the basis of lack of written description, indefiniteness, and anticipation and obviousness over a single patent reference with an earliest effective date in 2017. As the petitioner’s art-based challenges to the claims relied on a reference published after the priority date accorded to the non-disclaimed claims, the court found that this art was not relevant to the remaining claims and that said claims were also adequately supported and definite. Accordingly, the Board found that the petitioner was not able to satisfy their burden to show that it was more likely than not that at least one of the challenged non-disclaimed claims was unpatentable and they did not institute the review.
The Board does not address the proverbial elephant in the room – that a statutory disclaimer under 25 U.S.C. § 253 is meant to render the claims as if they had never existed in the patent and yet, according to the Board’s analysis, they exist for the purposes of rendering the patent eligible under the provisions of the AIA. Despite this seemingly incongruous outcome, in this case it may have been a distinction without a difference. The disclaimed claims were used as the basis for eligibility but were not available for the patentability analysis and decision to institute. The Board expressly noted that the non-disclaimed claims were fully supported in the pre-AIA priority application and, in part due to the early priority date of these claims, the petitioner’s arguments were insufficient to meet their burden.
The MicroSurgical decision is indicative of a pattern suggesting that the PTAB is casting a wide net with respect to patents eligible for review via the administrative processes made available under the AIA. While not discussed in MicroSurgical, in RetailMeNot, the PTAB expressly stated that allowing a patent owner to use a statutory disclaimer to rid the patent and file history of any claim that arguably would not be supported by a pre-AIA application, and therefore render the patent ineligible for post-grant review, would run against the intent of the Act. (PGR2019-00060) The RetailMeNot Board noted that the Act was drafted such that applicants can “flip their applications forward into the first-to-file system, but [are prohibited] from flipping backward into the first-to-invent universe once they are already subject to first-to-file rules.”
The Board’s continued reliance on the reasoning that claims that existed at any time in the patent or application may be considered for post-grant review (and presumably inter-partes review) eligibility has important implications for applicants who utilized the transition application strategy. Using the Board’s logic, any claim in an application or issued patent— whether that claim exists in the issued patent or not—that a court or administrative body finds not supported by a priority document filed prior to March 16, 2013, can render the patent subject to the provisions of the AIA, regardless of whether the patent owner intended this to be so. It is clear that the Board is standing firm in the intent of the Act, such that transitional applications under pre-AIA law are disfavored, and closing apparent loopholes to ensure that once an application is found to be subject to AIA law, that finding is incurable.