PTAB Tracker

December 18, 2020

Facebook, Inc. v. Skky, LLC, Case CBM2016-00091, Paper 12

In this case, petitioner filed a petition requesting CBM review of claims 1-11, arguing that claims 1, 6, and 8-11 are financial in nature and thus claims 1-11 are subject to CBM review. See Paper 1. Patent owner filed a statutory disclaimer of claims 6 and 8-11 and argued in its preliminary response that the disclaimer rendered those claims “irrelevant” to the CBM review eligibility determination. See Paper 6 at 4-5. In the Institution Decision, the Board stated that “[t]his panel treats the disclaimed claims as if they never existed,” and thus did not consider petitioner’s arguments regarding claims 6 and 8-11. Paper 7 at 9-10. Analyzing petitioner’s and patent owner’s arguments regarding claim 1, the Board concluded that claim 1 does not provide a sufficient basis to invoke CBM eligibility and denied institution of CBM review. Id. at 14.

Petitioner requested a rehearing of the institution decision (Paper 8), which the Board denied (Paper 12). Petitioner argued that the Board should adopt a “time-of-filing” rule in assessing the impact of post-filing statutory disclaimers on CBM patent review eligibility. Paper 8 at 3. The Board declined to adopt a “time-of-filing” rule, reasoning that AIA § 18 permits institution only for a patent that “is” a covered business method patent, which is based on what the patent “claims” at the time of the institution decision, not as the claims may have existed at some previous time. Paper 12 at 5-6 (citing AIA §§ 18(a)(1)(E) (using the present tense “is”), 18(d)(1) (using the present tense “claims”); 35 U.S.C. § 324(a); 37 C.F.R. § 42.207(e) (when a patent owner files a statutory disclaimer, “[n]o post-grant review will be instituted based on disclaimed claims”)).


The Board noted that petitioner’s request raised the further issue of whether CBM patent review eligibility can be based on disclaimed claims. Id. at 7. Citing Federal Circuit case law, the Board concluded that claims disclaimed under 35 U.S.C. § 253(a) should be treated as though they never existed. Id. at 7-8 (citing Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”); Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) (holding that the Board’s interference jurisdiction under 35 U.S.C. § 291 required “the existence of an interference, and a claim that ‘never existed’ [due to a statutory disclaimer] cannot form the basis for an interference”)). The Board thus concluded that there is no basis for adopting a “time-of-filing” rule that could result in the Board conducting a CBM patent review of a patent that is no longer a “covered business method” patent as defined in AIA § 18. Id. at 8.


  • By designating Section II.B.2 of this opinion as precedential, the PTAB has made clear that CBM patent review eligibility cannot be based on claims disclaimed under 35 U.S.C. § 253(a).
  • Petitioner, when considering whether to petition for CBM patent review, should evaluate whether one or more independent claims provide sufficient independent basis for CBM patent review.
  • If every challenged independent claim does not provide sufficient basis for CBM patent review, Patent owner may want to disclaim dependent claims directed to a covered business method to avoid CBM review of a patent.


Kim Leung | Associate | San Diego, CA

Kim Leung is an associate in the Southern California office of Fish & Richardson P.C. Her practice focuses on patents with a primary focus on post-grant proceedings, which led to her being named one of the “Top 50 Women in PTAB Trials” by the PTAB Bar... Read More