In Cupp Computing AS v. Trend Micro Inc., the Federal Circuit has determined that an inter-parties review (IPR) proceeding disclaimer is not enforceable against the USPTO in the same proceeding in which it is made.
Trend Micro, the petitioner, filed three inter-parties reviews (IPR) against CUPP Cybersecurity, the patent owner, challenging three of CUPP’s patents covering mobile device security solutions as obvious. The parties argued against the claim construction of the word “security system processor,” which occurred in all contested claims, before the Board.
One of the challenged patents’ claim 10 is an example, and it reads as follows (with emphasis on the pertinent “security system processor” limitations):
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, which has a separate processor from the mobile security system processor and can wake at least a portion of the device from a power management mode in response to the wake event; and after providing the wake signal to the mobile device, execute the security instructions using the mobile security system processor to manage security services designed to protect
If the “security system processor” needed to be “remote,” or apart from the “mobile device processor,” that was the crux of the parties’ disagreement over how to formulate the claim. According to CUPP, remoteness was necessary, in which case the claimed prior art did not contain this restriction. In their Sur-reply in the current PTAB matter, CUPP alternatives explicitly disclaimed non-remote security system processor embodiments based on comments made during prosecution (i.e., prosecution history disclaimer).
The Board decided that the disputed claims were not patentable because they were obvious. The Board rejected CUPP’s proposed construction because it believed that the prosecution history did not clearly support CUPP’s limiting of the claims and that such a reading would improperly exclude a more expansive preferred embodiment in which “the mobile security system may be incorporated within the mobile device.” The Board concluded that, for the case, it was not required to accept CUPP’s disclaimer.
On appeal, the Federal Circuit concurred with the Board that CUPP had failed to disclaim the claim’s scope during prosecution unambiguously and that the proposed claim construction was not in accordance with the patent specification. Asserting that “a rule permitting a patentee to adjust its claims in an IPR through argument alone would severely undercut the IPR process,” the Federal Circuit also upheld the Board’s decision to reject CUPP’s IPR disclaimer.
The Federal Circuit separated the Aylus Networks, Inc. v. Apple Inc. case from the one that CUPP used to support its disclaimer argument because Aylus only said that a disclaimer in an IPR procedure is binding on the patentee in subsequent cases. The Court also stressed that a disclaimer like CUPP’s would make unnecessary a unique procedure Congress established for patentees to modify claims in an IPR. Patentees could retroactively change a claim without being subject to review for compliance with other patentability standards than 102 and 103 and without giving the public prior notice if they managed to get around the statutory claim amendment process. That cannot be, the Court ruled.