CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB's Patentability Analysis - IPWatchdog.com

“In brief, if patent owners could freely modify their claims by statement successful an IPR, they could debar the public-protecting amendment process that Congress prescribed. That cannot be.” – CAFC Judge Timothy Dyk

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential determination successful CUPP Computing AS v. Trend Micro Inc. affirming last written decisions from a trio of inter partes reappraisal (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing information operations connected a mobile device. The CAFC’s determination makes wide to patent owners defending their rights astatine the Patent Trial and Appeal Board (PTAB) that the Board is not required to see a disclaimer entered during IPR arsenic binding connected the proceedings earlier it.

IPR Petitions Filed aft CUPP Computing Targets Trend Micro’s Mobile Security Services

The 3 patents astatine contented successful CUPP Computing’s entreaty from the PTAB are U.S. Patent No. 8631488, U.S. Patent No. 9106683 and U.S. Patent No. 9843595, each sharing the communal rubric Systems and Methods for Providing Security Services During Power Management Mode. Each patent claims a precedence day of August 4, 2008, and each mostly screen methods and systems for waking a mobile instrumentality from a power-saving mode successful bid to execute information operations specified arsenic scanning the retention mean for malware oregon updating information applications.

These patents-at-issue were among a postulation of patents asserted by CUPP Computing successful a brace of lawsuits filed against Trend Micro successful the Northern District of Texas. In May 2018, CUPP Computing filed a suit against Trend Micro alleging patent infringement by Trend Micro’s mobile information technologies on with its web defence products, hybrid unreality information products and respective different information solutions. Then successful April 2021, CUPP Computing filed a archetypal amended complaint successful a abstracted suit reiterating galore of the infringement allegations from the May 2018 enactment based connected respective caller patents that had been issued to CUPP Computing since the archetypal lawsuit.

Trend Micro challenged the validity of the ‘488, ‘683 and ‘595 patents by filing petitions for IPR proceedings successful March 2019. After instituting review, the PTAB recovered that each claims challenged by Trend Micro were unpatentable arsenic evident implicit the anterior art, dismissing CUPP Computing’s arguments that the information strategy processor assertion regulation was improperly construed specified that the claimed information strategy processor was not required to beryllium distant from the mobile instrumentality processor. Although the Federal Circuit gave CUPP Computing a remand nether United States v. Arthrex for a accidental to petition Director reappraisal of the PTAB decisions, those requests were denied by Acting Director Drew Hirshfeld.

CAFC: The Board Does Not Have to Consider Disclaimers When Deciding the Merits of Patentability

The precedential facet of the Federal Circuit’s determination successful CUPP Computing involves the Federal Circuit’s effect to disclaimers entered by CUPP Computing, specifically successful the IPR proceeding itself. In the IPRs, CUPP Computing had filed a disclaimer disavowing a information strategy processor embedded wrong a mobile device. On appeal, CUPP Computing relied connected the Federal Circuit’s 2017 determination successful Aylus Networks, Inc. v. Apple Inc. for the premise that disclaimers entered during an IPR efficaciously constrictive the scope of a claim. However, the Federal Circuit distinguished Aylus Networks, holding that it lone applied to constrictive the assertion scope that could beryllium asserted by the patentee successful a consequent proceeding successful U.S. territory court.

“We present marque precedential the straightforward decision we drew successful an earlier nonprecedential opinion: ‘[T]he Board is not required to judge a patent owner’s arguments arsenic disclaimer erstwhile deciding the merits of those arguments,’ wrote Judge Timothy Dyk, citing to the Federal Circuit’s 2019 determination successful VirnetX Inc. v. Mangrove Partners Master Fund, Ltd. Judge Dyk elaborated that allowing patentees to tailor claims during IPR done statement unsocial would frustrate the Congressional intent successful enacting IPR trials, particularly Congress’ assistance of important powerfulness to revise patent grants to support “patent monopolies” wrong their morganatic scope.

“If patentees could shapeshift their claims done statement successful an IPR, they would frustrate the Patent Office’s powerfulness to ‘revisit’ the claims it granted, and necessitate absorption connected claims the patentee present wishes it had secured,” Judge Dyk wrote, further noting that CUPP’s projected regularisation would render unnecessary the specialized process created by Congress for amending patent claims during an IPR. “In brief, if patent owners could freely modify their claims by statement successful an IPR, they could debar the public-protecting amendment process that Congress prescribed. That cannot be.”

The Federal Circuit made overmuch shorter enactment of CUPP Computing’s statement that it disclaimed a non-remote information strategy processor during patent prosecution astatine the U.S. Patent and Trademark Office. The Federal Circuit ruled that the PTAB decently rejected CUPP Computing’s assertion operation arguments based connected CUPP Computing’s disclaimer during prosecution due to the fact that that disclaimer “did not unmistakably renounce information strategy processors embedded successful a mobile device.” Looking astatine CUPP Computing’s arguments during prosecution, which contended that a anterior creation patent exertion disclosing a mobile information strategy did not disclose a information strategy processor antithetic from a mobile instrumentality processor, the Federal Circuit recovered that 1 plausible speechmaking was that CUPP Computing was simply arguing that the anterior creation did not thatch a chiseled processor for the information system, defeating the appellant’s prosecutorial disclaimer argument.

‘Different’ Means ‘Dissimilar,’ Not ‘Remote’

CUPP Computing fared nary amended connected its different assertion operation arguments which the Federal Circuit dealt with anterior to the disclaimer issues connected appeal. While the information strategy processor regulation required that processor to beryllium “different” from the mobile instrumentality processor, the Federal Circuit recovered nary grounds proffered by CUPP Computing supporting that assertion term’s explanation arsenic “remote.” Citing Webster’s Third New International Dictionary, the Federal Circuit noted that the mean meaning of “different” is “dissimilar,” and preferred embodiments disclosed successful the patents’ shared specification allowed for the mobile information strategy to beryllium incorporated wrong the mobile device. While CUPP Computing argued that astatine slightest the ‘488 and ‘595 patents impact aftermath signals sent to the mobile instrumentality arsenic a distant communication, the Federal Circuit recovered that the PTAB decently construed the assertion regulation successful enactment with the specification.

“Just arsenic a idiosyncratic tin nonstop an email to him oregon herself, and an worker tin pass with the entity that employs that person, a portion of a mobile instrumentality tin nonstop a awesome ‘to,’ oregon ‘communicate with,’ the instrumentality of which it is simply a part.” – Circuit Judge Timothy Dyk

Finally, the Federal Circuit struck down an further statement raised by CUPP Computing that the “security agent” recited solely by the ‘595 patent was not disclosed by the asserted anterior art. In analyzing U.S. Patent No. 7818803, Security Module Having a Secondary Agent successful Coordination With a Host Agent (“Gordon”), the PTAB recovered that the big cause disclosed by Gordon for performing information services, including initiating information delete sequences and performing programme updates, rendered the information cause regulation of the ‘595 patent obvious. The Federal Circuit besides nixed CUPP Computing’s statement that the PTAB’s last written decisions produced inconsistent findings based connected Gordon, uncovering alternatively that the assertion presumption regarding the processor “managing” information services were rendered evident based connected elements disclosed by Gordon different than Gordon’s big cause constituent that rendered evident the ‘595 patent’s information cause limitation.

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