`571-272-7822
`
` Paper No. 9
`Entered: April 10, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and INSTAGRAM, LLC,
`Petitioner,
`
`v.
`
`SKKY LLC,
`Patent Owner.
`____________
`
`Case CBM2017-00007
`Patent 9,203,956 B2
`____________
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`CBM2017-00007
`Patent 9,203,956 B2
`
`I.
`
`INTRODUCTION
`
`Facebook, Inc. and Instagram, LLC (collectively, “Petitioner”) filed a
`Petition (Paper 1, “Pet.”), requesting institution of a covered business
`method patent review of claims 1–7 of U.S. Patent No. 9,203,956 B2
`(Ex. 1001, “the ’956 patent”). Skky LLC. (“Patent Owner”) timely filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”). With its Preliminary
`Response, Patent Owner provided evidence that it filed with the Office a
`statutory disclaimer of claims 1–7 of the ’956 patent pursuant to 37 C.F.R.
`§ 1.321(a). Ex. 2001.
`We have statutory authority under AIA § 18(a)(1) and 35 U.S.C.
`§ 324(a). In view of Patent Owner’s disclaimer of all the challenged claims,
`we deny institution of a covered business method patent review of the ’956
`patent.
`II. DISCUSSION
`
`In its Preliminary Response, Patent Owner contends that “[b]ecause
`each claim petitioned for review is now disclaimed, the Petition is now
`moot.” Prelim. Resp. 3.
`A patentee may “make disclaimer of any complete claim . . . . Such
`disclaimer shall be in writing, and recorded in the Patent and Trademark
`Office; and it shall thereafter be considered as part of the original patent.”
`35 U.S.C. § 253(a). When a patent owner files a statutory disclaimer with
`its preliminary response, “no post-grant review will be instituted based on
`disclaimed claims.” 37 C.F.R. § 42.207(e). As prior panels have held, and
`we agree, “the decision whether to institute a covered business method
`patent review is based on the ‘claims of the patent as they exist at the time of
`the decision,’ not as they may have existed at some previous time.” Google
`
`
`
`2
`
`
`
`CBM2017-00007
`Patent 9,203,956 B2
`
`Inc. v. SimpleAir, Inc., Case CBM2015-00019, slip op. at 5 (PTAB Aug. 19,
`2015); see also Great West Cas. Co. v. Intellectual Ventures II LLC, Case
`CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016) (“[F]or the purposes of
`whether or not to institute a covered business method patent review, we treat
`[disclaimed] claims . . . as never having existed.”).
`We have confirmed that Patent Owner has complied with the
`requirements for a statutory disclaimer of claims 1–7 of the ’956 patent.
`Accordingly, we decline to institute a covered business method review based
`on the Petition.
`III. ORDER
`
`In consideration of the foregoing, it is hereby
`ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business
`method patent review is not instituted as to any claim of the ’956 patent.
`
`
`
`
`
`3
`
`
`
`CBM2017-00007
`Patent 9,203,956 B2
`
`PETITIONER:
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`PATENT OWNER:
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`lb
`
`
`
`
`4
`
`
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