Disclaimer Made in IPR Not Binding In Same Proceeding - JD Supra

The Federal Circuit precocious held, successful Cupp Computing AS v. Trend Micro Inc., that a disclaimer successful an inter partes reappraisal (IPR) proceeding is not binding connected the USPTO successful the aforesaid proceeding successful which the disclaimer is made.

Petitioner, Trend Micro, filed 3 related IPR petitions against Patent Owner, CUPP Cybersecurity, challenging arsenic evident 3 CUPP patents directed to mobile instrumentality information systems.  Before the Board, the parties disputed the assertion operation of the word “security strategy processor” that appeared successful each challenged claims.

To illustrate, assertion 10 of 1 of the challenged patents reads arsenic follows (with accent added to applicable “security strategy processor” limitations):

10. A mobile information system, comprising:

a mobile information strategy processor;

a transportation mechanics for connecting to a information larboard of a mobile instrumentality and for communicating with the mobile device;  information instructions; and

a information motor configured to:

detect utilizing the mobile information strategy processor a aftermath event;

provide a aftermath awesome to the mobile device, the mobile instrumentality having a mobile instrumentality processor antithetic than the mobile information strategy processor, the aftermath awesome being successful effect to the aftermath lawsuit and adapted to aftermath astatine slightest a information of the mobile instrumentality from a powerfulness absorption mode; and aft providing the aftermath awesome to the mobile device, executing the information instructions utilizing the mobile information strategy processor to negociate information services configured to support the mobile device.

The parties’ assertion operation quality centered connected whether the “security strategy processor” had to beryllium “remote” (i.e., located separately) from the “mobile instrumentality processor.”  CUPP argued that remoteness was required, successful which lawsuit this regulation was absent from the asserted anterior art.  CUPP based this statement connected statements made during prosecution (i.e., prosecution past disclaimer), and alternatively, affirmatively disclaimed non-remote information strategy processor embodiments successful its Sur-reply in the contiguous PTAB proceeding.

The Board ruled that the challenged claims were unpatentable arsenic obvious.  The Board rejected CUPP’s projected construction, uncovering that the prosecution past did not unambiguously enactment CUPP’s narrowing of the claims and that specified a speechmaking would improperly exclude a broader preferred embodiment wherever “the mobile information strategy whitethorn beryllium incorporated wrong the mobile device.”  The Board besides recovered that it was not obligated to judge CUPP’s disclaimer for purposes of the proceeding.

On appeal, the Federal Circuit agreed with the Board that CUPP’s projected assertion operation was not accordant with the patent specification and that CUPP did not unambiguously disclaim assertion scope during prosecution.  The Federal Circuit besides affirmed the Board’s rejection of CUPP’s IPR disclaimer, stating that “a regularisation permitting a patentee to tailor its claims successful an IPR done statement unsocial would substantially undermine the IPR process.”

The Federal Circuit distinguished the lawsuit that CUPP relied connected for its disclaimer argument, Aylus Networks, Inc. v. Apple Inc., connected the ground that Aylus simply held that that a disclaimer successful an IPR proceeding is binding connected the patentee successful later proceedings.  The Court besides emphasized that Congress created a specialized process for patentees to amend claims successful an IPR, which would beryllium rendered unnecessary by a disclaimer similar CUPP’s.  Circumventing the statutory assertion amendment process would let patentees to retrospectively modify a claim, escaped from scrutiny for compliance with patentability requirements different than §§ 102 and 103 and without anterior announcement to the public.  As the Court stated, “that cannot be.”

Takeaway: “Disclaimers successful an IPR proceeding are not binding successful the proceeding successful which they are made.”