Patent Lawyer Blog
In a noteworthy decision that sheds light on the interplay between patent disclaimers and post-grant reviews, the Patent Trial and Appeal Board (PTAB) recently denied institution of a challenge to an Intex Marketing patent while declining to enter adverse judgment against the patent owner.
On June 15, 2024, Bestway (USA), Inc. petitioned for post-grant review of all 24 claims in U.S. Patent No. 11,959,512 B2. In what proved to be a strategic maneuver, Intex Marketing responded by filing a statutory disclaimer of all challenged claims, effectively surrendering their rights to the patent. This move raised an important question for the Board: should they simply deny institution, or take the additional step of entering adverse judgment against Intex? In its October 28, 2024 decision, the Board opted to take the former approach.
The distinction between these two outcomes carries significant implications for patent owners. An adverse judgment would trigger estoppel provisions preventing Intex from obtaining or enforcing patents with substantially similar claims. This became particularly relevant because the ‘512 patent belongs to a family that includes three other granted patents and pending continuation applications.
In deciding against adverse judgment, the Board emphasized several crucial factors. First, Intex had never asserted or threatened to assert the ‘512 patent against Bestway. While Bestway argued it had incurred “significant expense” preparing its petition in response to what it characterized as “harassing” cease-and-desist letters regarding related patents, the Board found this insufficient justification for adverse judgment.
More broadly, the decision reflects the PTAB’s commitment to promoting efficient patent administration. The Board reasoned that routinely entering adverse judgment in similar situations might discourage patent owners from filing early disclaimers, potentially leading to unnecessary litigation through final written decisions. This could burden the patent system with prolonged disputes that might otherwise be resolved quickly through disclaimers.
The ruling preserves important rights for both parties. The Petitioner remains free to challenge Patent Owner’s related patents through inter partes review if it chooses. Meanwhile, the Patent Owner retains the ability to pursue patent protection through continuation applications, though it must now do so without the specific claims it disclaimed.
This post-grant review was decided by Administrative Patent Judges Barrett, Cherry, and Peslak, with Judge Peslak authoring the opinion. Bestway (USA), Inc. v. Intex Marketing, Ltd., Case No. PGR2024-00036, Paper 9 (PTAB Oct. 28, 2024).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.