Disclaimer made in DPI not binding in the same procedure | Jones Day

The Federal Circuit recently held, at Cupp Computing AS vs. Trend Micro Inc.., that a disclaimer in an inter partes review (IPR) proceeding is not binding on the USPTO in the same proceeding in which the disclaimer is made.

The petitioner, Trend Micro, filed three intellectual property rights claims against the patent owner, CUPP Cybersecurity, arguably challenging three CUPP patents relating to mobile device security systems. Before the Board, the parties disputed the interpretation of the term “security system processor” which appeared in all of the contested claims.

By way of illustration, claim 10 of one of the contested patents reads as follows (emphasizing the relevant limitations of the “security system processor”):

10. A mobile security system, including:

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; safety instructions ; and

a security engine configured to:

detecting using the processor of the mobile security system a wake-up event;

providing a wake-up signal to the mobile device, the mobile device having a mobile device processor different from the processor of the mobile security system, the wake-up signal being in response to the wake-up event and adapted to wake up at least a part of the device mobile from power management mode; and after providing the wake-up signal to the mobile device, executing the security instructions using the mobile security system processor to manage the security services configured to protect the mobile device.

The dispute over the interpretation of the parties’ claims centered on whether the “security system processor” should be “remote” (i.e. located separately) from the “mobile device processor” . The CUPP argued that the remoteness was necessary, in which case this limitation was absent from the claimed prior art. The CUPP based this argument on statements made during the lawsuit (i.e., the lawsuit history disclaimer) and, in the alternative, flatly rejected the modes realization of the non-remote security system processor in its counter-response. in this PTAB procedure.

The Board ruled that the contested claims were not patentable because they were obvious. The Board rejected CUPP’s proposed construction, finding that the prosecution history did not unambiguously support CUPP’s claim limitation and that such a reading would improperly exclude a broader preferred embodiment in which “the mobile security system can be integrated into the mobile device”. The Board also found that it was not obligated to accept CUPP’s waiver for the purposes of the proceeding.

On appeal, the Federal Circuit agreed with the Commission that the construction of the claim proposed by the CUPP did not conform to the patent specification and that the CUPP did not clearly reject the scope of the claim during the prosecution. The Federal Circuit also upheld the Board’s rejection of the CUPP’s IPR disclaimer, stating that “a rule permitting a patentee to tailor his claims in an IPR by argument alone would significantly compromise the DPI process”.

The Federal Circuit singled out the case that the CUPP relied on for its disclaimer argument, Aylus Networks, Inc. v. Apple Inc..on the basis that Aylus simply held that a disclaimer in an IPR proceeding binds the patented in later procedure. The Court also pointed out that Congress created a specialized process for patentees to amend claims in an IPR, which would be rendered unnecessary by a disclaimer like the CUPP’s. Bypassing the legal claim amendment process would allow patentees to retroactively amend a claim, shielded from scrutiny for compliance with patentability requirements other than §§ 102 and 103 and without notice to the public. As the Court stated, “it cannot be”.

Remember: “Disclaimers in an IPR proceeding are not binding in the proceeding in which they are made.”

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