In Arthrex v. Smith & Nephew, a split panel affirmed a PTAB decision entering an adverse judgment when a patent owner disclaimed all claims challenged in a IPR petition prior to institution. By disclaiming all claims at issue, the patent owner was attempting to avoid the estoppel effects of 37 C.F.R. § 42.73(d) that apply with issuance of an adverse judgment.
The Federal Circuit also confirmed that a patent owner can appeal a pre-institution adverse judgment ruling under 35 U.S.C. § 1295, because an adverse judgment is a final decision disposing of an IPR proceeding.