General Electric Co. v. United Techs. Corp.

When a patent owner files a statutory disclaimer under 35 U.S.C. § 253(a) of all challenged claims that meets 37 C.F.R. § 1.321(a) and is recorded in the Office before institution, the Board cannot institute inter partes review, because under 37 C.F.R. § 42.107(e) "[n]o inter partes review will be instituted based on disclaimed claims." The disclaimer is treated as recorded, and effective, on the date the Office receives a disclaimer satisfying § 1.321(a), with no further Office action required. No prior precedent directly addressed this issue; the decision applies the text of 37 C.F.R. § 42.107(e) to a disclaimer of every challenged claim. For the petitioner, a disclaimer of all challenged claims filed and recorded before institution ends the trial, and the Board will deny institution of the disclaimed claims. For the patent owner, a compliant disclaimer filed with or after the preliminary response is a way to avoid institution, even while the owner "strongly disagree[s]" with the unpatentability contentions. The Board relied on Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998), for the point that a § 253 disclaimer is immediately recorded on the date the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a). LEGAL TEST OR STANDARD: Under 37 C.F.R. § 42.107(e), a patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with § 1.321(a), and no inter partes review will be instituted based on disclaimed claims. To be recorded under § 1.321(a), the document must (1) be signed by the patentee, or an attorney or agent of record; (2) identify the patent and complete claim or claims, or term being disclaimed; (3) state the present extent of patentee's ownership interest in the patent; and (4) be accompanied by the fee set forth in § 1.20(d). TRIGGERING FACTS: The patent owners (United Technologies Corporation and MTU Aero Engines AG) each filed a statutory disclaimer of claims 1-17, the only claims challenged in the petition. The Board reviewed Exhibits 2001 and 2002 and Office public records and found the disclaimer recorded as of April 12, 2017, before the institution decision of July 6, 2017. The patent was not involved in litigation. KEY QUOTE: "Because all claims challenged by GE have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), no inter partes review is instituted in this proceeding." (Paper 9, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: As petitioner, check the Office records for a recorded § 253(a) disclaimer of the challenged claims before and after the preliminary response, since a compliant disclaimer of all challenged claims forecloses institution. As patent owner, make sure the disclaimer meets every § 1.321(a) requirement (signature, complete claims, ownership statement, fee) so it is recorded, and cite it and the exhibits in the preliminary response.