The Software IP Report

Statutory Disclaimer Moots Covered Business Method Review

When a patent owner disclaims patent claims for which another party petitions for Covered Business Method Review, the petition is moot.  The rule is pretty clear on this point: “[t]he patent owner may file a statutory disclaimer under 35 U.S.C. 253(a),” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42-207(e).  So when the Patent Trial and Appeal Board (PTAB) received a disclaimer with the patent owner’s preliminary response in Facebook, Inc. v. Skky LLC, Case CBM2017-00007, Patent 9,203,956 (PTAB April 10, 2017), the PTAB declined to institute a Covered Business Method Review proceeding.

This rule be so clear and be so well-understood as to seem not be worth writing about – but sometimes it’s nice to have reminder that the system includes mechanisms to permit acknowledgement of practical reality and the exercise of common sense.  The PTAB’s reasoning in full was as follows:

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 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.