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ARTICLE · 23 OCTOBER 2017

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

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An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
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An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner's Institution Decision Rehearing Request in Facebook, Inc. v. Skky, LLC, Chief Judge Ruschke exercised his discretion to expand the panel to provide guidance regarding the effect of disclaimers filed between Petition filing and institution on CBM review eligibility. The expanded panel found that eligibility is decided at the time of the Institution Decision, not Petition filing, confirming the decision not to institute trial.

Skky's U.S. Patent No. 9,037,502 is directed to a method of delivering digital content to a wireless device based on a user's selection having an ability to track user selections. Independent claim 1 of the patent broadly recites "tracking the selection of the requested compressed digital audio and/or visual files." Dependent claims 6 and 8-11 expand on the purposes of such

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