Arthrex, Inc. v. Smith & Nephew, Inc.

The Petitioners’ request for inter partes review was not “instituted” because the patentee, Arthrex Inc., disclaimed all of the challenged claims before the PTAB decided whether to- institute the requested review. Thus inter partes review could not be instituted, for no challenged claims remained in the patent. See 37 C.F.R. § 42.107(e):

No inter partes review will be instituted based on disclaimed claims.

Nonetheless, the PTAB issued an adverse judgment on the disclaimed claims. The parties agree—a position apparently shared by the panel majority—that this adverse judgment subjects Arthrex to…