Narrowing the Disclaimer Doctrine: Federal Circuit Cabins the Reach of Disclaimers in the IPR Context - JD Supra

The United States Court of Appeals for the Federal Circuit precocious affirmed 3 Inter Partes Review (IPR) last written decisions of the U.S. Patent Trial and Appeal Board (“the Board”) wherever the Board concluded that petitioner, Trend Micro. Inc. (“Trend”), had shown the challenged patent claims successful patentee, Cupp Computing AS’s (“Cupp”), U.S. Patents Nos. 8,631,488 (“’488 patent”), 9,106,683 (“’683 patent”), and 9,843,595 (“’595 patent”), unpatentable arsenic evident implicit 2 anterior creation references.¹ Setting a caller precedent with respect to assertion construction, the Federal Circuit held that though a patentee’s wide and unmistakable disavowals of assertion scope during an IPR proceeding tin constrictive the scope of the claims, specified a connection serves to constrictive the claims lone successful consequent proceedings—not successful the IPR proceeding during which the connection is made.²

Cupp contended that the PTAB erred erstwhile it rejected Cupp’s disclaimers successful the IPR.³ The Board did not find this statement persuasive and concluded that it could disregard the patentee’s disavowal successful construing the claims.⁴ The Federal Circuit agreed with the Board.⁵

Each of the 3 patents astatine contented stock a communal sanction and precedence day and code the occupation of malicious attacks aimed astatine mobile devices.⁶ The patents interest methods for waking a mobile instrumentality from a power-saving mode and past performing information operations connected the device, “such arsenic scanning a retention mean for malware, oregon updating information applications.”⁷

The contented connected entreaty to the Board’s determination related to the precedential determination is 1 of assertion construction.⁸ Specifically, each autarkic assertion successful the 3 patents includes the regulation “the mobile instrumentality having a mobile instrumentality processor antithetic than the mobile information strategy processor.”⁹

The Federal Circuit explained, “a regularisation permitting a patentee to tailor its claims successful an IPR done statement unsocial would substantially undermine the IPR process.”¹⁸ Its determination was motivated by the legislature intent successful creating the IPR process.¹⁹ The Federal Circuit stated, “Congress designed inter partes reappraisal to “giv[e] the Patent Office important powerfulness to revisit and revise earlier patent grants,” frankincense “protect[ing] the public’s paramount involvement successful seeing that patent monopolies are kept wrong their morganatic scope.”²⁰ The Federal Circuit warned that if patentees could change their claims done statement successful an IPR, they would frustrate the Patent Office’s powerfulness to “revisit” the claims it granted.²¹

The Federal Circuit clarified its holding, stating that “a disclaimer successful an IPR proceeding is binding successful aboriginal proceedings, whether earlier the PTO oregon successful court.”²² The determination emphasized that this ruling is lone that a “disclaimer is not binding connected the PTO successful the precise IPR proceeding successful which it is made, conscionable arsenic a disclaimer successful a territory tribunal proceeding would not hindrance the territory tribunal successful that proceeding.”²³

The Federal Circuit besides explained that Cupp’s projected regularisation would render the IPR assertion amendment process unnecessary.²⁴ Congress created a specialized process for patentees to amend their claims successful an IPR.²⁵ Under Cupp’s proposal, this process is rendered unnecessary due to the fact that the aforesaid result could beryllium achieved by disclaimer.²⁶

The IPR process allows petitioners to situation existing patent claims nether §§ 102 oregon 103 of the Patent Act, based connected anterior creation patents and/or printed publications. The Federal Circuit recognized that if patentees were capable to modify assertion connection by disclaimer alone, of the patentee could evade scrutiny for compliance with different patentability requirements, specified arsenic § 101.²⁷ The Federal Circuit recovered this imaginable for gamesmanship to beryllium contrary to the public-protecting amendment process, which allows the Board to see a projected amended claim’s compliance with each patentability requirements earlier allowing a patent to beryllium amended during an IPR.²⁸ Thus, “disclaimers successful an IPR proceeding are not binding successful the proceeding successful which they are made.”²⁹

Going forward, a patentee’s disclaiming statements during IPR proceedings volition use lone to consequent proceedings. Should a patentee privation the Board to see the patentability of a assertion of narrower scope than the issued claims, the patentee volition person to trust connected the amendment process.