CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

“In short, if patent owners could freely amend their claims through arguments in an intellectual property right, they could avoid the public protection amendment process mandated by Congress. It can’t be.” — CAFC Judge Timothy Dyk

CAFCThe US Court of Appeals for the Federal Circuit (CAFC) issued a precedent ruling today CUPP Computing AS vs Trend Micro Inc. Confirmation of final written decisions by a trio of between the parties Review (IPR) procedure that invalidates CUPP Computing’s patent claims for methods of performing security operations on a mobile device. The CAFC decision makes it clear to patent owners defending their rights before the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding in the proceedings before it .

IPR Petitions Filed After CUPP Computing Targets Trend Micro’s Mobile Security Services

The three patents at issue in CUPP Computing’s appeal to the PTAB are US Patent No. 8631488, US Patent No. 9106683 and US Patent No. 9843595, each sharing common title Systems and methods for providing security services during power management mode. Each patent claims August 4, 2008 as a priority date, and each generally covers methods and systems for waking a mobile device from a sleep mode to perform security operations such as scanning the storage media for malware or updating security applications.

These patents in dispute were among a suite of patents asserted by CUPP Computing in two lawsuits filed against Trend Micro in the Northern District of Texas. In May 2018, CUPP Computing filed a lawsuit against Trend Micro alleging patent infringement by Trend Micro’s mobile security technologies along with its network defense products, hybrid cloud security products, and several other security solutions. Then, in April 2021, CUPP Computing filed a first amended complaint in a separate lawsuit that repeated many of the infringement allegations from the May 2018 lawsuit based on several new patents that had been granted to CUPP Computing since the first lawsuit.

Trend Micro challenged the validity of the ‘488, ‘683 and ‘595 patents by filing IPR filing applications in March 2019. After initiating the review, the PTAB found that all of Trend Micro’s contested claims were not patentable because they were obvious over the prior art, and rejected CUPP Computing’s arguments that limiting the claim to the security system processor was misconstrued so that the claimed security system processor did not need to be remote from the mobile device processor. Although the Federal Circuit issued CUPP Computing a pre-trial detention United States vs. Arthrex to request a director’s review of the PTAB decisions, these requests were denied by acting director Drew Hirshfeld.

CAFC: The board does not have to consider disclaimers when deciding on the merits of patentability

The precedent aspect of the Federal Circuit’s decision in CUPP computing concerns the Federal Circuit’s response to disclaimers filed by CUPP Computing, specifically in the IPR process itself. In intellectual property rights, CUPP Computing had filed a disclaimer rejecting a security system processor embedded in a mobile device. On appeal, CUPP Computing relied on the Federal Circuit’s 2017 decision Aylus Networks, Inc. v Apple Inc. for the premise that disclaimers entered during an IPR effectively limit the scope of a claim. However, the Federal Constitutional Court differed Aylus Networksstating that it served only to limit the scope of claims that might be asserted by the patentee in a later proceeding before a US District Court.

“We now bring to the fore the simple conclusion that we reached in a previous non-precedential opinion: ‘[T]The board is not required to accept a patentee’s arguments as a waiver when deciding the merits of those arguments,” wrote Judge Timothy Dyk, citing the federal court’s 2019 decision in VirnetX Inc. v Mangrove Partners Master Fund, Ltd. Judge Dyk held that allowing patentees to tailor claims during IPR through arguments alone would defeat the purpose of Congress in conducting IPR processes, specifically granting Congress significant powers to reverse patent grants to protect “patent monopolies” in their legitimate to hold area.

“If patentees could alter their claims by arguments in an intellectual property right, they would defeat the Patent Office’s power to ‘reconsider’ the claims it has granted and require it to focus on claims that patentees have now secured would like to,” Judge Dyk wrote, further noting that the rule proposed by CUPP would eliminate the specialized procedure created by Congress for amending patent claims during an IPR. “In short, if patent owners could freely amend their claims through arguments in an intellectual property right, they could avoid the public protection amendment process mandated by Congress. That can not be.”

The Federal Circuit did much shorter work arguing from CUPP Computing that it rejected an unremoved security system processor during patent prosecution at the US Patent and Trademark Office. The Federal Circuit ruled that the PTAB duly dismissed CUPP Computing’s claims based on CUPP Computing’s disclaimer during prosecution because that disclaimer “did not unequivocally waive security system processors embedded in a mobile device.” Considering CUPP Computing’s arguments during the indictment, which alleged that a prior art patent application disclosing a mobile security system disclosed no security system processor other than a mobile device processor, the Federal Circuit found that a plausible reading was that CUPP Computing simply argued that the prior art did not teach a separate processor for the security system, refuting the complainant’s prosecutor’s disclaimer argument.

“Different” means “dissimilar”, not “distant”

CUPP Computing fared no better on its other claim construction arguments addressed by the Federal Circuit prior to the disclaimer questions on appeal. While the processor limitation of the security system required that processor to be “different” than the processor of the mobile device, the Federal Circuit found no evidence presented by CUPP Computing to support the definition of this claim term as “remote.” Quote Webster’s Third New International Dictionary, the Federal Circuit determined that the usual meaning of “different” is “dissimilar,” and preferred embodiments disclosed in the patents’ common specification enabled the mobile security system to be integrated into the mobile device. While CUPP Computing argued that at least the ‘488 and ‘595 patents involve wake-up signals sent to the mobile device as a long-distance communication, the Federal Circuit found that the PTAB correctly interpreted the claim limitation under the specification.

“Just as a person can send an email to themselves and an employee can communicate with the entity that employs that person, a unit of a mobile device can send a signal to the device or communicate with what it is a part. — District Judge Timothy Dyk

Finally, the Federal Circuit rejected an additional argument by CUPP Computing that the “security agent” cited solely by the ‘595 patent was not disclosed by the prior art claimed. In analyzing US Patent No. 7818803, Security module with a secondary agent in coordination with a host agent (“Gordon”), the PTAB determined that the host agent disclosed by Gordon to perform security services, including initiating data wipe sequences and performing program updates, made the security agent limitation of the ‘595 patent apparent. The Federal Circuit also dismissed CUPP Computing’s argument that the PTAB’s final written decisions produced inconsistent findings based on Gordon, instead noting that the claim terms relating to the processor that “manages” security services were obvious based on elements disclosed by Gordon other than Gordon’s host agent element that made the security agent limitation of the ‘595 patent apparent.

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