Delayed Disclaimer: Patent Owner Arguments Made during IPR Not a Claim Limiting Disclaimer in That Proceeding
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Repeating a conclusion from an earlier non-precedential opinion in VirnetX, the US Court of Appeals for the Federal Circuit held that the Patent Trial & Appeal Board (Board) need not accept a patent owner's arguments as a disclaimer in the very same inter partes review (IPR) proceeding in which those arguments are made. CUPP Computing AS v. Trend Micro Inc., Case Nos. 2020-2262, 2020-2263, 2020-2264, at *11 (Fed. Cir. Nov. 16, 2022) (Dyk, Taranto, Stark, JJ.)
CUPP Computing is the owner of three related patents each entitled "systems and methods for providing security services during power management mode." After CUPP sued Trend Micro for patent infringement, Trend Micro filed petitions for IPR against all three patents, asserting that several claims of CUPP's patents were obvious over two prior art references. The Board instituted all three IPR and found all challenged claims unpatentable as obvious. CUPP appealed.
The Federal Circuit affirmed the Board's conclusions. The principal issue concerned CUPP's argument that the Board erred in claim construction. In CUPP's view, all of the evidence required the claimed "security system processor" be remote from a "mobile device processor." The Court rejected CUPP's arguments. Starting with the claims, the Court found that they simply required that the two processors be different. Although some claims required the security system to send a wake signal to or communicate with the mobile device, that language did not support CUPP's remoteness construction. As the Court explained, just as an individual can send a note to oneself via email, a unit of the mobile device can send signals to and communicate with the same device. Indeed, some of the claims teach communication via an internal port of the mobile device, which was consistent with a preferred embodiment disclosed in the specification in which the two processors could be within the same mobile device.
The Federal Circuit then addressed CUPP's disclaimer arguments. The Court agreed with the Board that CUPP's statements made during the original prosecution were far from clear and unmistakable, being susceptible to several reasonable interpretations that are contrary to CUPP's construction. The Court also agreed with the Board that CUPP's arguments during the Trend Micro IPRs do not qualify as a disclaimer for purposes of claim construction. While a disclaimer made during an IPR proceeding is binding in subsequent proceedings, the "Board is not required to accept a patent owner's arguments as disclaimer when deciding the merits of those arguments."
As the Federal Circuit explained, expanding the application of disclaimers to the proceedings in which they are made—as CUPP proposed—is rife with problems. IPR proceedings are more similar to district court litigation than they are to initial examination, and it is well established that disclaimers in litigation are not binding in the proceeding in which they are made. Further, CUPP's proposal would effectively render IPR claim amendments unnecessary, as patent owners would be free to change the scope of their claims retrospectively without regard to the protections provided by the IPR claim amendment process, such as ensuring that amended claims comply with the requirements of patentability and have only prospective effect by giving accused infringers "intervening rights" when a patent owner substantively amends its claims. As the Court concluded, patent owner scope disclaimers cannot be used to replace the IPR claim amendment process.
Finally, the Federal Circuit rejected CUPP's argument that the Board lacked substantial evidence to support its conclusion of obviousness. CUPP contended that the "security agent" limitation, as recited in the claims in one of the challenged patents, was not disclosed by either reference. However, like the "security agent" in CUPP's patent that performs security services upon a wake-up call from another entity, a host agent in the prior art performed security services after being woken up by a security module. Because the Board's findings were supported by substantial evidence, the Court affirmed the Board's conclusion that the challenged claims were unpatentable as obvious.
Practice Note: Even though narrowing arguments made during IPRs remain a powerful tool for patent owners, they cannot be used as a back door to introduce substantive claim limitations by disclaimer. Patent owners are well advised to consider other options during an IPR proceeding, including contingent motions to amend claims consistent with a patent owner's narrowing arguments.
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