Facebook, Inc. v. Skky, LLC

When a patent owner files a statutory disclaimer under 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) after the petition is filed but before the institution decision, the Board cannot apply a "time-of-filing" rule to CBM patent review eligibility under AIA § 18. Eligibility is determined from the claims as they exist at the time of the institution decision, and statutorily disclaimed claims must be treated as if they never existed, so they cannot support eligibility. No prior precedent directly addressed this issue. The text says the effect of a pre-institution statutory disclaimer on CBM review had been at issue in multiple Board cases, and the expanded panel gave guidance. A petitioner cannot rely on a disclaimed claim reciting a financial activity element (here, "charging a fee, to the user") to show CBM eligibility, and it cannot invoke a time-of-filing rule to preserve eligibility. A patent owner can file a disclaimer before its preliminary response, here the day before, and defeat CBM eligibility if the remaining claims lack a financial activity element. The Board relied on Federal Circuit authority that disclaimed claims are treated as though they never existed (Vectra Fitness, Guinn v. Kopf), and on Secure Axcess, Unwired Planet and Blue Calypso for the claim-focused CBM definition. It declined to extend Rembrandt. LEGAL TEST OR STANDARD: Rehearing is reviewed for abuse of discretion under 37 C.F.R. § 42.71(c). The statute permits institution "only for a patent that is a covered business method patent," meaning a patent that "claims" a covered method or apparatus (AIA § 18(a)(1)(E), § 18(d)(1)). That is judged from the claims at the time of the institution decision, and disclaimed claims are treated as though they never existed. TRIGGERING FACTS: The petition was filed June 15, 2016. Three months later, the day before the preliminary response, the patent owner filed a statutory disclaimer of claims 6 and 8-11. The petitioner relied on those disclaimed claims for CBM eligibility, and institution was denied on the sole ground that the patent was not eligible for CBM review. The rule applies when a disclaimer is filed after the petition but before the institution decision. KEY QUOTE: "As explained above, CBM patent review eligibility is determined based on the claims of the challenged patent as they exist at the time of the decision whether to institute, and statutorily disclaimed claims must be treated as if they never existed." (Paper 12, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board treated Eizo Corp. v. Barco N.V., Case IPR2014-00358 (PTAB July 23, 2014) (Paper 11), and GEA Process Eng'g, Inc. v. Steuben Foods, Inc., Case IPR2014-00051 (PTAB Mar. 10, 2014) (Paper 14), as consistent with its approach. Those cases base the institution decision on claims as amended by a reexamination certificate issued after the petition. PRACTICE TIP: Before filing a CBM petition, do not rest eligibility on a single claim with a financial activity element. Show eligibility through claims the patent owner is unlikely to disclaim, and watch for a disclaimer before institution, because the Board will not apply a time-of-filing rule.