Disclaimer Not Binding in IPR Proceeding Where Made | Manatt, Phelps & Phillips, LLP
In CUPP Computing AS v. Trend Micro Inc.,1 the Federal Circuit held that a disclaimer made in an inter partes review (IPR) proceeding was not binding in that proceeding, i.e., the disclaimer is not binding in the proceeding in which it is made. However, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the patent office or in court. The court explained that the prosecution disclaimer doctrine precludes a patent owner from recapturing through claim interpretation specific meanings disclaimed during prosecution; the disclaimer must be clear and unmistakable.
CUPP Computing AS (CUPP) owned U.S. Patent Nos. 8,631,488 (’488 Patent), 9,106,683 (’683 Patent) and 9,843,595 (’595 Patent) (collectively, CUPP patents), directed to malicious attacks targeting mobile devices, particularly awakening a mobile device from a power-saving mode and then executing security processes on the device. Trend Micro Inc. filed a petition for inter partes review (IPR) of the CUPP patents as obvious over the combination of two pieces of prior art U.S. Patent No. 7,818,803 and U.S. Patent App. Pub. No. 2010/0218012 A1. CUPP and Trend Micro disputed the claim interpretation of the language “mobile device processor different than the mobile security system processor,” which occurred in every independent claim in the CUPP patents. For example, claim 10 of the ’488 Patent recited the following:
10. A mobile security system, comprising:
a mobile security system processor;
- a connection mechanism for connecting to a data port of a mobile device and for communicating with the mobile device;
- security instructions; and
- a security engine configured to:
- detect using the mobile security system processor a wake event;
- provide a wake signal to the mobile device, the mobile device having a mobile device processor different than the mobile security system processor, the wake signal being in response to the wake event and adapted to wake at least a portion of the mobile device from a power management mode; and
- after providing the wake signal to the mobile device, executing the security instructions using the mobile security system processor to manage security services configured to protect the mobile device.2
In the IPR, Trend Micro petitioned the Patent Trial and Appeal Board (Board) for review of several claims in the CUPP patents, arguing that the claims would have been obvious and, therefore, unpatentable. CUPP replied that the security system processor claim language should be interpreted such that the security system processor was remote from the mobile device processor, and the prior art did not disclose this feature but only described a security processor within a mobile device.
The Board instituted review and interpreted the claims within the ordinary and customary meaning as understood by one of ordinary skill in the art. On this basis, the Board held that the claim language “mobile device processor different than the mobile security system processor” was not limited to the security system processor being remote from the mobile device processor.
CUPP appealed, and the Federal Circuit affirmed. On appeal, CUPP contended that the security system processor had to be distinct and remote from the mobile device. CUPP cited the language of the claims, the specification and disclaimers provided by the patentee throughout the IPR proceedings. The court disagreed and explained that even though the security system processor was “different” from the mobile device processor, that did not require that the two processors be remote from each other. According to the court: “In ordinary usage, ‘different’ simply means dissimilar,’ … . So two processors may be different from one another and yet both be embedded in a single device.”3
The court noted that the specification implied that “different” did not mean “remote,” and the claim did not require that the two processors be remote. CUPP asserted, however, that since the independent claims in the ’488 Patent and the ’595 Patent recited that the security system transmitted a wake signal to and communicated with the mobile device, the two processors had to be remote from each other. The court was not persuaded and reasoned:
The Board properly construed the security system processor limitation in line with the specification. Just as a person can send an email to him- or herself, and an employee can communicate with the entity that employs that person, a unit of a mobile device can send a signal “to,” or “communicate with,” the device of which it is a part. … The claims’ reference to the security system’s communication with the mobile device thus does not exclude communication via an internal port.4
CUPP also contended that it disclaimed a non-remote security system processor when prosecuting one of the patents, and, therefore, the Board’s interpretation was erroneous. The Federal Circuit disagreed and held that the Board correctly rejected this argument. The court explained that during prosecution of the ’683 Patent, all claims were rejected as obvious based on the prior art (U.S. Patent App. Pub. No. 2010/0195833 Al (Priestley)), which was cited to show that a mobile security system, termed a Trusted Platform Module (TPM), was distinct from a mobile device processor. CUPP responded that the TPM prior art did not disclose “a mobile security system processor different from a mobile system processor” as recited in the claims, and the examiner allowed the application.
The court again was not persuaded that this use of prosecution disclaimer to interpret the claim language was proper. The court described the general contours of prosecution disclaimer:
The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. … However, a patentee will only be bound to a disavowal that was both clear and unmistakable. … Thus, where the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, we have declined to find prosecution disclaimer.5
The Federal Circuit reasoned that CUPP’s alleged disclaimer did not unambiguously relinquish security system processors embedded in a mobile device. Specifically, CUPP contended that, since the TPM could be part of the mobile device’s motherboard, the Priestley prior art did not show a security system processor distinct from a mobile device processor. The Board understood this to mean that Priestley failed to teach different processors as the TPM was missing a distinct processor. The court therefore agreed with the Board that this reading was not an unmistakable disclaimer that the two processors had to be remote from each other.
CUPP also asserted that the Board incorrectly rejected its disclaimer in the IPRs, which disavowed a security system processor embedded in a mobile device. According to the court:
We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” … A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. …
To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the [patent office] or in court. … We hold only that a disclaimer is not binding on the [patent office] in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.6
The court reasoned that permitting patent owners to obtain a specific interpretation of the claims by disclaimer would permit retroactive claim amendment in an IPR:
In brief, if patent owners could freely modify their claims by argument in an IPR, they could avoid the public-protecting amendment process that Congress prescribed. That cannot be. Disclaimers in an IPR proceeding are not binding in the proceeding in which they are made.7
Accordingly, the Federal Circuit held that the Board correctly interpreted the claims and CUPP could not use prosecution disclaimer to modify the interpretation.
Lessons and Practice Tips
The CUPP Computing AS v. Trend Micro Inc. decision is a warning to patent owners and their representatives that statements (and claim amendments) made during the examination process will be scrutinized later during litigation, with possibly unintended consequences. Thus, any statements made during prosecution need to be intentionally erected based on a well-informed understanding of the prior art and claim language.
When prosecuting/negotiating patent applications to obtain allowance at the patent office, statements/arguments made may be critical for interpreting the scope of the claims. Patent applicants should carefully review the prior art and only amend claims or make arguments that are necessary to appropriately distinguish their invention over the prior art.
In this case, the patent owner attempted to use prosecution arguments in an IPR to limit the claims to overcome prior art on appeal in the same IPR when the claims could not be further amended. The Federal Circuit rejected this use of prosecution disclaimer and essentially sent the message that CUPP should have amended the claims to include this feature to be able to distinguish the claims from the prior art.
This decision further demonstrates that every attempt should be made to draft patent application specifications and claims correctly in the first instance. Proper attention should also be given to the appropriate scope of patent claims before the application is filed, to ensure that there is sufficient technical description to support the patent claims.
The prior art should be carefully analyzed when reviewing rejections in a patent office action. Unnecessary arguments and/or claim amendments should be avoided at all costs. In addition, the appropriate variety of patent claims, from broad to narrow in scope, should generally be included to maximize the patent value for the invention.
1CUPP Computing AS v. Trend Micro Inc., 53 F.4th 1376, 2022 USPQ2d 1093, 2022 WL 16954357 (Fed. Cir. 2022).
2 Id., 53 F.4th at 1379.
3 Id., 53 F.4th at 1380.
4 Id., 53 F.4th at 1380.
5 Id., 53 F.4th at 1382 (quotation marks and citations omitted).
6 Id., 53 F.4th at 1383 (quoting VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019)).
7 Id., 53 F.4th at 1384.
