• Facebook, Inc. / Instagram, LLC v. Skky LLCInstitution denied
  PTAB · Jul 13, 2017 · IPR2017-00641 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution because the patent owner disclaimed all challenged claims.

  RulingsInstitution decision

  • Adverse judgmentInstitution denied discretionary otherInstitution denied

    “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, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e).” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,203,956
• Facebook, Inc. / Instagram, LLC v. Skky, LLCInstitution denied
  PTAB · Apr 12, 2017 · CBM2017-00002 · APJ William V Saindon · CBM · Institution

  The Board denied institution because claims 8 and 10–14 did not make the patent eligible for CBM review; claims 1–7 and 9 had been disclaimed.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “patent review “shall be regarded as, and shall employ the standards and procedures of, a post-grant review” with certain exceptions not relevant here. Under 35 U.S.C. § 324(a), a post-grant review cannot be “instituted unless the Director determines that the information presented in the petition. . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2

  • Adverse judgmentAdverse judgmentOther

    “Resp. 5 (citing Ex. 2001); Pet. Prelim. Reply (addressing the disclaimer); PO Sur-Reply (replying to Pet. Prelim. Reply). Patent Owner argues that for the purpose of determining whether or not to institute a CBM proceeding, the Board must treat disclaimed claims “as never having existed.” Prelim. Resp. 5–6 (citing Great West Cas. Co. v. Intellectual Ventures II LLC, Case CBM2015-00171, slip op. at 7 (PTAB Feb. 9, 2016) (Paper 10)).” slip op. at 8

  Discretionary denial
  Patents in suitUS 9,203,870

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.