True to its ongoing effort to increase the number of precedential decisions, the Patent Trial and Appeal Board (“P.T.A.B.”) designated, on December 21, 2017, a portion of its Decision on Petitioner’s Request for Rehearing in CBM2016-00091 as precedential. See Facebook, Inc. v Skky, LLC, CBM2016-00091, Paper 12 (P.T.A.B. Sept. 28, 2017); see also P.T.A.B. Standard Operating Procedure 2 (“SOP 2”). The portion designated as precedential, Section II.B.2, addresses the impact of pre-institution statutory disclaimers on decisions to institute, and the remainder of the decision provides P.T.A.B. litigants additional guidance on panel expansion and Covered Business Method (“CBM”) Review eligibility.
The Underlying Dispute
On June 15, 2016, Facebook, Inc. and Instagram LLC filed a Petition for CBM Review of U.S. Patent No. 9,037,502. See Facebook, Inc. v Skky, LLC, CBM2016-00091, Paper 1 (P.T.A.B. June 15, 2016). Petitioners alleged three grounds of unpatentability: (1) that Claims 1-11 of the ’502 Patent were invalid under 35 U.S.C. § 101; (2) that Claims 1-11 of the ’502 Patent were invalid for failure to comply with the “regards” clause of 35 U.S.C. § 112; and (3) that Claims 1-11 of the ’502 Patent were invalid for failure to comply with the written description requirement of 35 U.S.C. § 112. Id. at 27, 32-65. In terms of eligibility for CBM review, the Petition specifically addressed Claim 1, the sole independent claim, as well as Claims 6 and 8-11. Id. at 4-8.