In a previous post, we reported a situation in which a Patent Owner filed a terminal disclaimer to disclaim the remaining term of its patent shortly before the scheduled date for its oral hearing in an attempt to effectively derail its Inter Partes Review proceeding. Specifically, the Patent Owner argued that because it filed its terminal disclaimer, the PTAB must apply a district court-like claim construction analysis to its claims rather than broadest reasonable interpretation (“BRI”). Since the PTAB’s institution of the IPR and all evidence in the proceeding was based on a BRI of the claims, the Patent Owner argued that the proceeding should now either be terminated, or at least delayed.

In a recent decision, the PTAB exercised its authority pursuant to 37 C.F.R. §§ 42.3(a) and 42.7(a) to hold the terminal disclaimer in abeyance until the conclusion of the inter partes proceeding given the “late stage and particular facts of [the] proceeding.” IPR2013-00242, No. 129 at 6, 12 (P.T.A.B. May 22, 2014). Thus, the PTAB ordered that the proceeding will continue to be given their broadest reasonable interpretation. Id. at 12.

The PTAB based its decision on a number of factors: (1) the late stage of the case, (2) the numerous opportunities the Patent Owner had to challenge the PTAB’s application of the BRI standard but chose not to do so, and (3) the potential for abuse if “we were to permit Patent Owner’s actions in this proceeding.” Id. at 11. Regarding the third point, the PTAB stated:

Changing claim interpretation standards based on a terminal disclaimer filed late in a proceeding would ‘creat[e] a tool to alter claim construction at late stages in post-grant proceedings, to render prior discovery meaningless, and to disrupt trial dates and statutory deadlines.’ A patent owner could participate fully in a proceeding, wait and see what arguments are made by the petition and how the proceedings develops, and then, at the very last minute, disclaim the remaining term of the patent and disrupt the entire proceeding.

Id. at 12-13 (citation omitted).

This PTAB decision does not address the situation in which a terminal disclaimer is filed early in a proceeding. One can imagine a situation in which a petitioner files an IPR petition shortly before its one-year bar date. What if the patent owner waits until the bar date passes, and then files its terminal disclaimer very early in the proceeding? The petition presumably would not have addressed BRI, and it seems it would be too late for the petitioner to address it. The PTAB typically does not give a petitioner the opportunity to file an additional paper until long after trial has been instituted (or the petition has been denied).