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Facebook, Inc. and Instagram, LLC v. Skky, LLC

Paper 12, Sept. 28, 2017

CBM2016-00091 (Patent 9,037,502 B2)


Petitioner Facebook was denied inter partes review of claims of U.S.P.N. 9,037,502 B2.  Petitioner requested rehearing of the Institution Decision which included a request that Petitioner’s arguments be heard by an expanded PTAB panel. See Paper 12, p. 2.  Supplemental briefing was allowed in view of Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370 (Fed. Cir. 2017).  Petitioner had to show there was an abuse of discretion in the previous Institution Decision to get the Request for Rehearing granted.  The Request was denied.


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 (the Institution Decision), and statutorily disclaimed claims must be treated as if they never existed.  See Paper 12, p. 11.


The governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel.  See Paper 12, p. 2.  However, the standard operating procedure provides the Chief Judge with discretion to expand a panel to more than 3 judges.  See Paper 12, p. 2 (citing PTAB SOP 1, 1-3 (§§ II, III) (Rev. 14)).  Reasons for an expanded panel include when the proceeding “involves an issue of exceptional importance” or when “[c]onsideration by an expanded panel is necessary to secure and maintain uniformity of the Board’s decisions.”  See Paper 12, p. 3.  Here, the panel was expanded to 5 judges (Chief Judge Ruschke; S. Boalick; J. Arbes; G. Perry; K. Cherry)

Petitioner originally challenged claims 1-1 of the ‘502 Patent.  Three months later, Patent Owner filed a statutory disclaimer of claims 6 and 8-11 (under 37 C.F.R. § 1.321(a), and argued that the disclaimer rendered those claims “irrelevant” to the CBM patent review eligibility determination.  See Paper No. 12, p. 3.  Petitioner sought leave to file a supplemental response to address the impact of the disclaimer, which was denied.  The PTAB denied institution on the sole ground that the ‘502 patent is not eligible for CMB patent review.  See Paper No. 12, p. 4.

Petitioner argued that the PTAB should adopt a “time-of-filing” rule because when the CBM Petition was filed, the now disclaimed claims qualified for CBM patent review. However, the PTAB refused to adopt such a rule, and instead explained that the AIA statute permits institution only for a patent that is a covered business method patent, and requires a patent that claims a particular type of method or apparatus.  See Paper 12, pp. 5-6 (citations  omitted).  Thus, determination of whether a patent is a covered business method patent is made at the time of the Institution Decision.   See Paper 12, p. 6 (citing AIA §§ 18(a)(1)(E), 18(d)(1); 35 U.S.C. § 324(a); 37 C.F.R. § 42.207(e)).  Thus, the “time-of-filing” rule is inconsistent with these principles.

Further, once the Patent Owner disclaimed those claims, the PTAB will treat the ‘502 Patent as though those claims never existed.  See Paper 12, p. 7.


Thus, Petitioner has not shown an abuse of discretion in the Institution Decision not to institute CBM patent review, and the Request for Rehearing was denied.


A copy of the PTAB order can be found here.