UNITED STATES PATENT AND TRADEMARK OFFICE
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`Case CBM2016-00091
`Patent No. 9,037,502
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Facebook, Inc., Instagram LLC
`Petitioners
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`v.
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`Skky, LLC
`Patent Owner
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`Case No. CBM2016-00091
`U.S. Patent No. 9,037,502
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`PETITIONERS FACEBOOK, INC. AND INSTAGRAM LLC’S
`SUPPLEMENTAL BRIEF REGARDING REQUEST FOR REHEARING
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`Case CBM2016-00091
`Patent No. 9,037,502
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Facebook, Inc., Instagram LLC
`Petitioners
`
`v.
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`Skky, LLC
`Patent Owner
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`
`
`Case No. CBM2016-00091
`U.S. Patent No. 9,037,502
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`PETITIONERS FACEBOOK, INC. AND INSTAGRAM LLC’S
`SUPPLEMENTAL BRIEF REGARDING REQUEST FOR REHEARING
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`Case CBM2016-00091
`Patent No. 9,037,502
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`Petitioners Facebook, Inc. and Instagram, LLC (“Petitioners”) respectfully
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`submit this Supplemental Brief in support of their pending Request for Rehearing
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`(Paper 8) in order to address the Federal Circuit’s recent clarification of the impact
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`of statutory disclaimers of patent claims under 35 U.S.C. § 253. The Board
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`authorized this Supplemental Brief via teleconference on April 24, 2017.
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`The Board’s Decision denying institution in this matter and Patent Owner’s
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`Preliminary Response rely on the proposition that, for purposes of CBM eligibility,
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`disclaimed claims should be treated “as if they never existed.” (Paper 7, at 7-9;
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`Paper 6, at 6.) The Federal Circuit recently issued a precedential decision
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`clarifying the meaning of this language, reversing a district court’s decision that
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`“relied on the proposition that a disclaimed patent claim is treated as if it had never
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`existed in the patent.” Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No.
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`2016-1729, __ F.3d __, 2017 U.S. App. LEXIS 6502, at *24-27 (Fed. Cir. Apr. 17,
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`2017) (internal quotations omitted).
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`Rembrandt clarifies that disclaimers under 35 U.S.C. § 253 extinguish only a
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`patent owner’s legal rights—not the rights of others—with regard to the disclaimed
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`claims: “But while we have held that a disclaimer relinquishes the rights of the
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`patent owner, we have never held that the patent owner’s disclaimer relinquishes
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`the rights of the public. Indeed, our precedent and that of other courts have not
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`readily extended the effects of disclaimer to situations where others besides the
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`Patent No. 9,037,502
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`patentee have an interest that relates to the relinquished claims.” Id. at *26
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`(emphasis added). The court cited decisions across a wide range of litigation and
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`administrative contexts rejecting patent owners’ attempts to use disclaimers to
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`deprive accused infringers of their rights, and concluded that the same principle
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`should apply to the § 287 patent marking context. Id. at *26-27 (citing cases).
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`Accordingly, post hoc statutory disclaimers do not, under Rembrandt, extinguish
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`rights held by “others besides the patentee.” Id.
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`This principle squarely applies to the rights Congress and the PTO granted
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`to accused infringers under the Covered Business Method patent review program.
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`AIA § 18(a) (providing that the Director will establish CBM review for parties that
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`have been sued or charged with infringement); 37 C.F.R. §§ 42.302-303 (providing
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`that a party accused of infringement may file a petition for CBM review “any
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`time” except during the time period for post-grant review under 35 U.S.C. §
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`321(c)). Once a patent owner has sued parties for alleged infringement, the
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`accused infringers—including Petitioners here—acquire the right to petition for
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`CBM review of the asserted patent under the conditions set forth in the statute and
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`regulations. AIA § 18(a)-(d); 37 C.F.R. §§ 42.301-304. Rembrandt makes clear
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`that this right cannot be extinguished by a patent owner’s selective and unilateral
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`disclaimer after the CBM petition is filed. Under Rembrandt, a post hoc disclaimer
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`does not extinguish the accused infringer’s right to challenge the asserted patent in
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`Patent No. 9,037,502
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`CBM review so long as the patent was subject to CBM review at the time the
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`petition was filed (which it was here). (See also Paper 8, passim.)
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`The Federal Circuit’s decision in Rembrandt also provides context for the
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`PTO’s regulations regarding disclaimer. The PTO’s regulations state that “[t]he
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`patent owner may file a statutory disclaimer under 35 U.S.C. 253(a)” and “[n]o
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`post-grant review will be instituted based on disclaimed claims” (37 C.F.R. §
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`42.207(e)), but the PTO’s stated intent for that rule was merely to specify that the
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`disclaimed claims themselves will not needlessly undergo CBM review. (See
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`Paper 8, at 5-6, quoting 77 Fed. Reg. 48,680, 48,692 (Aug. 14, 2012).)
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`The Board should therefore consider whether the patent “is a covered
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`business method patent” under AIA § 18(a)(1)(E) at the time the accused infringer
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`files its petition without regard to any subsequent statutory disclaimer. Under
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`Rembrandt, a post-filing disclaimer of only some claims in the patent cannot
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`“retroactively excuse” a patent owner’s failure to disclaim the claims that confer
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`CBM eligibility before the accused infringer’s right to challenge the patent has
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`vested. See Rembrandt, at *26-27.
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`Rembrandt makes clear that any limited exceptions to the general rule
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`protecting the rights of others from post hoc statutory disclaimers should not be
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`“readily extended” to other contexts. Rembrandt, at *26. The same reasoning
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`fully applies to accused infringers’ right to challenge patents in CBM review, and
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`the Board and Patent Owner have not cited any controlling authority to the
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`contrary. For example, the Board cited Genetics Inst., LLC v. Novartis Vaccines &
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`Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011) in determining that “[t]his
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`panel treats the disclaimed claims as if they never existed.” (Paper 7, at 9-10.) But
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`the Board did not have the benefit of Rembrandt, which makes clear that Genetics
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`should be limited to a particular interference context. In fact, Genetics expressly
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`rejected a request to extend the prior holding of the Albert case “beyond the effect
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`of a patent disclaimer in a § 291 action.” Genetics, at 1298-1300, citing Albert v.
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`Kevex Corp., 729 F.2d 757 (Fed. Cir. 1984).
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`The Albert decision, in turn, underscores the reasoning of Rembrandt.
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`Albert, 729 F.2d at 761. There, the Federal Circuit reasoned that allowing a post-
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`filing disclaimer to nullify jurisdiction in a § 291 interference action was not as
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`harmful to the rights of others because § 291 is not “comparable to the declaratory
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`judgment statute” where a patent owner had already acted to charge others with
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`infringement. Id. at 761. By contrast, CBM patent review explicitly requires an
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`actual infringement suit or declaratory judgment standing. AIA § 18(a)(1)(B); 37
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`C.F.R. § 42.302(a). Once a patent owner chooses to allege infringement of a
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`CBM-eligible patent, it cannot “retroactively” extinguish the accused infringer’s
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`right to challenge the patent in CBM review. See Rembrandt, at *26-27.
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`Patent No. 9,037,502
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`Rembrandt also confirms that its reasoning applies to PTO administrative
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`proceedings as well as district court litigation, citing Guinn v. Kopf for the point
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`that “disclaimer of an allegedly interfering claim did not divest the Board of
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`jurisdiction over interference proceeding.” Rembrandt, at *26-27, citing Guinn v.
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`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996). Rembrandt thus makes clear that the
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`Board’s reliance on Guinn in denying institution in the present case is also
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`untenable. (Cf. Paper 7, at 9.) As Rembrandt confirms, Guinn’s “never existed in
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`the patent” language speaks only to the patent owner’s rights, as a statutory
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`disclaimer does not “divest[] the Board of jurisdiction” in a § 135 interference.
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`Guinn, 96 F.3d at 1422 (terminating only under rule of convenience, 37 CFR §
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`1.662(c), because “all claims” in the count were disclaimed). Guinn actually
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`supports CBM review of the challenged patent when, as here, not all claims have
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`been disclaimed and the patent was CBM-eligible when the accused infringers
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`(Petitioners) exercised their rights and filed their petition.
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`For these reasons, Petitioners respectfully submit that their pending Request
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`for Rehearing is consistent with and strengthened by the holding of Rembrandt.
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`As confirmed by Rembrandt, Patent Owner’s post hoc statutory disclaimer does
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`not deprive Petitioners of their vested legal rights to challenge the asserted patent
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`in CBM review.
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`Case CBM2016-00091
`Patent No. 9,037,502
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`Respectfully submitted,
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`/Heidi L. Keefe/
`Heidi L. Keefe
`Registration No. 40,673
`Counsel for Petitioners
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`DATED: May 1, 2017
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`Cooley LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`6
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`Case CBM2016-00091
`Patent No. 9,037,502
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`the attached PETITIONERS FACEBOOK, INC. AND INSTAGRAM LLC’S
`SUPPLEMENTAL BRIEF REGARDING REQUEST FOR REHEARING, is
`being served via electronic mail on the 1st day of May, 2017, on counsel of record
`for the Patent Owner as follows:
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`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`Ryan M. Schultz
`rschultz@robinskaplan.com
`Andrew J. Kabat
`akabat@robinskaplan.com
`ROBINS KAPLAN LLP
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`DATED: May 1, 2017
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`7
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