The PTAB recently instituted post-grant review in Core Survival, Inc. v. S & S Precision, LLC (PGR2015-00022, paper 8). While the patent owner did not argue that that the patent was eligible for post-grant review, the facts raise the question of whether disclaimer could be used by patent owners to avoid PGR institution.
Only patents subject to the first-inventor-to-file provisions of the AIA are eligible for post-grant review. See AIA § 6(f)(2)(A). The first-inventor-to-file provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013. See AIA § 3(n)(1). In this case, the patent at issue was filed after March 16, 2013, but was a continuation-in-part of an application filed before that date. The application was originally filed with a claim 22 that petitioner asserted related to new matter added in the continuation-in-part. Petitioner further asserted that claim 22 was canceled to maintain priority. Patent owner did not dispute that the patent is eligible for PGR and conceded that original claim 22 was based on new matter added to the application. Accordingly, the PTAB found that the patent is subject to the first-inventor-to-file provisions and available for post-grant review.
It is interesting to consider whether PGR could have been avoided had claim 22 issued and been disclaimed by the patentee instead of being canceled during prosecution. While the end result for patent coverage is the same—the patent has no claim 22—the consequences for PGR availability could mean other claims are saved. The PTAB has repeatedly found in the context of CBM institution decisions that it must treat statutorily disclaimed claims as if they had never existed. See CBM2015-00171, paper 10 (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Thus, while canceling the claim during prosecution to maintain a priority claim to before March 16, 2013 did not allow the patent owner to avoid post-grant review, if claim 22 issued the patent owner may have been able to avoid post-grant review by disclaiming it.
This decision underscores the importance of strategic prosecution and portfolio development. Had the patent owner filed a continuation to pursue claims that did not relate to the new mater and a separate continuation-in-part application to pursue the new matter, then the claims deserving priority to any pre-AIA application would be ineligible for PGR.