Facebook, Inc. v. Skky, LLC, Case CBM2016-00091 (Sept. 28, 2017) (Paper No. 12)
Takeaway (1) (Precedential):
The Board treats disclaimed claims as if they never existed. In deciding whether to institute review, the Board will not consider claims that the patent owner previously disclaimed (before the decision whether to institute review).
Where a patent includes some claims that would be eligible for CBM review and others that would not, a patent owner might avoid CBM review by disclaiming those claims eligible for CBM review before the Board decides whether to institute.
Facebook, Inc. and Instagram, LLC (“Petitioner”) filed a petition for covered business method (“CBM”) review of claims 1-11 of U.S. Patent No. 9,037,502 (the ‘502 patent). Patent Owner Skky, LLC, statutorily disclaimed claims 6 and 8-11 of the ’502 patent one day before filing its Preliminary Response to the Petition.
Petitioner argued that the Board should apply a “time-of-filing” rule to determine what claims are at issue in deciding whether to institute CBM review, such that the Board would decide whether to institute CBM review based on the claims as they existed at the time the petition was filed. For support, Petitioner pointed out that federal courts use a “time-of-filing” rule for determining federal court jurisdiction. Petitioner also argued that applying a “time-of-filing” rule would prevent a “postfiling salvage operation” by patent owners attempting to divest the Board of its CBM jurisdiction.
The Board disagreed, noting that “[t]he Federal Circuit has consistently held that claims disclaimed under § 253 should be treated as though they never existed.” The Board saw no basis for adopting an exception to the Federal Circuit’s holdings.