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. 

The PTAB decided that because of the statutory disclaimer, it must “treat claims 1-10 as never having existed.”  The PTAB acknowledged that other panels have found that statutorily disclaimed dependent claims may not avoid CBM review because the still-pending independent claim may encompass finance-related subject matter.  It further observed that such logic could be extended to impute independent claims from which finance related dependent claims do not depend—but found that not the case here.  The PTAB went on to find that petitioner failed to show sufficiently that claims 11-20 are finance-related and, accordingly, denied trial institution.

This decision confirms that statutory disclaimers are one of the tools patent owners should consider when trying to avoid CBM review.  Here IV risked having all claims invalidated on § 101 grounds in a CBM review, but by giving up half of the claims it avoided having review instituted for the other half.  This decision also exemplifies the benefits during prosecution to claim differentiation in independent claim sets—having at least one non-financial claim set may provide an avenue for avoiding CBM review.