U.S. Patent and Trademark Office Director John Squires vacated institution of inter partes review proceeding IPR2025-01047 on Tuesday, finding that efficiency considerations prevailed after patent owner National Steel Car Limited disclaimed one independent claim, that formed the basis of the Patent Trial and Appeal Board (PTAB) institution decision, as well as the claims depending from the disclaimed independent claim. Five independent claims and their dependent claims remain in the patent and are being asserted in a corresponding infringement action in the District of Delaware.

The Legal Basis: Disclaimed Claims Are Treated as If They Never Existed

The order noted that under Federal Circuit precedent, once claims are disclaimed, “the patent is viewed as though the disclaimed claims had never existed in the patent.” “Under these circumstances,” Squires wrote, “maintaining this IPR is an inefficient use of Office resources.” The order therefore vacated the institution decision and denied institution.

Why This Decision Matters: Post-Institution Disclaimer as a De-Institution Tool

Prior to Tuesday’s decision, post-institution disclaimer had not been viewed as an effective tool for obtaining de-institution of an IPR. The Director’s order shows that under his leadership, post-institution disclaimer will be considered as part of discretionary considerations and opens up a new avenue for patent owners.

Background: PTAB Institution & the Delaware Infringement Action

In December 2025, the PTAB found a reasonable likelihood that petitioner FreightCar America, Inc. would prevail regarding independent claim 24 in U.S. Patent No. 8,132,515. However, the PTAB “questioned whether” or stated that FreightCar America “does not appear to show” unpatentability for the other challenged independent claims (claims 1, 7, 18, 20, and 32) and related dependent claims.

After institution, FreightCar America requested a stay of proceedings in the corresponding Delaware infringement action. That stay was denied in March, citing the institution decision and characterizing the PTAB’s comments as a “strong hint” and finding that there was “a rare situation where in granting review . . . the PTAB seemed to go out of its way to communicate that aside from one asserted claim . . .the PTAB did not think there was a reasonable likelihood that the remainder of the patent’s claims would ultimately be found invalid.”

National Steel Car Counsel Comments on Decision

Robert Keeler, Ice Miller counsel for National Steel Car in the IPR and corresponding district court litigation, commented “this is a very positive development for patent owners. National Steel Car believed in the patentability of all its claims and so the decision to disclaim any claims was not made lightly. Ultimately, however, that decision was made to help ensure the infringement case moved forward. Not only was the disclaimer critical to the de-institution of the IPR, it also factored into the District Court decision not to stay the infringement action.”

Patents & Cases at Issue

The patent at issue in district court and at the PTAB are:

• U.S. Patent No. 8,132,515, which is the subject of IPR2025-01047 at the PTAB;
• U.S. Patent No. 8,166,892, which is the subject of IPR2025-01046 at the PTAB.

Counsel of Record

National Steel Car is represented at the PTAB and in the district court case by Robert Keeler, Safet Metjahic, Ken Sheehan, and Kevin Adams of Ice Miller LLP. National Steel Car is also represented by Andrew Russell, Emily DiBenedetto, and Lindsey Gellar of Shaw Keller LLP in the district court case.

FreightCar America is represented at the PTAB by Philip Nelson, Ted Cannon, and Justin Gillett of Knobbe Martens Olson & Bear. FreightCar America is represented in the district court by Brian Horne, Sean Murray, and Justin Gillett of Knobbe Martens Olson & Bear, and by John C. Phillips, Jr. and David Bilson of Phillips, McLaughlin & Hall, P.A.

The cases are FreightCar America, Inc. v. National Steel Car Limited, case number IPR2025-01047, at the Patent Trial and Appeal Board, and National Steel Car Limited v. FreightCar America, Inc. et al., case number 1:24-cv-00594, in the U.S. District Court for the District of Delaware.

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