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:
