Disclaimer Don’t Stick in an IPR

CUPP Computing AS (“CUPP”) appeals three inter partes review (“IPR”) decisions of the Patent Trial and Appeal Board (“Board”) concluding that petitioner Trend Micro Inc. had shown challenged claims in CUPP’s U.S. Patents Nos. 8,631,488 (“’488 patent”), 9,106,683 (“’683 patent”), and 9,843,595 (“’595 patent”) unpatentable as obvious over two prior art references: U.S. Patent No. 7,818,803 (“Gordon”) and U.S. Patent App. Pub. No. 2010/0218012 A1 (“Joseph”).

The three patents at issue address the problem of malicious attacks aimed at mobile devices. They generally concern systems and methods for waking a mobile device from a power-saving mode and then performing security operations on the device. The key issue is a claim construction that applies to each of the three patents. In March 2019, Trend Micro petitioned the Board for inter partes review of several claims in the ’488, ’683, and ’595 patents. Trend Micro argued that the claims were unpatentable as obvious, relying on Gordon and Joseph individually to show that all challenged claims would have been obvious.

CUPP responded that the security system processor limitation required that the security system processor be “remote” from the mobile device processor. The Board instituted review and, in three final written decisions, found all the challenged claims obvious over the prior art. “Construing the claim[s] in accordance with their ordinary and customary meaning . . . as understood by one of ordinary skill in the art,” the Board held that the challenged claims did not require that the security system processor be remote from the mobile device processor.”

In reviewing the Board’s determination on the question of obviousness, the Court reviews the Board’s legal conclusions de novo and its factual findings for substantial evidence. “A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art . . . .” 35 U.S.C. § 103(a).

CUPP argues that the security system processor limitation requires that the mobile device have a mobile device processor different than the mobile security system processor. The Board properly concluded that the fact that the security system processor is “different” than the mobile device processor does not suggest that the two processors are remote from one another. CUPP responded that, because at least independent claims in the ’488 and ’595 patents require the security system to send a wake signal “to” the mobile device, and “communicate with” the mobile device, the system (and its processor) must be remote from the mobile device processor. That conclusion is reinforced, CUPP argued, because in some claims the security system communicates with the mobile device via a “data port.”

The Federal Circuit was not persuaded by CUPP’s arguments. It noted, just as a person can send an email to himself 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. Nor does the fact that some claims mention a “data port” suggest otherwise. The dependent claims in the ’595 patent teach that the security system’s “communication interface” can communicate with the mobile device via an external port” or “an internal port.” Furthermore, the Court noted that the extrinsic evidence does not overcome the intrinsic evidence. To the contrary, the record includes extrinsic evidence further supporting the conclusion that a person of skill in the art around the time of the patents’ effective filing date would read “port” to include internal ports. The claims’ reference to the security system’s communication with the mobile device thus does not exclude communication via an internal port.

CUPP argued that the Board’s construction of a patent claim was erroneous because CUPP had disclaimed during prosecution that the security system processor limitation was not disclosed in prior art. The Board rejected CUPP’s argument, finding that during prosecution of the ‘683 patent, the Patent Office examiner found all claims in the application obvious in light of Priestley, which taught a mobile security system called a Trusted Platform Module (TPM). According to the examiner, TPMs are usually stand-alone chips attached to PC motherboards and can be implemented in hardware or software. As such, using separate security processors would be an obvious interchangeable variation.

“The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (ellipsis, alterations, and citation omitted). However, a patentee will only be bound to a “disavowal [that was] both clear and unmistakable.” Id. (citation omitted). Thus, where “the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, we have declined to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (internal quotation marks and citation omitted).

CUPP argues that the Board erred in rejecting CUPP’s disclaimer in the IPRs themselves, which disavowed a security system processor embedded in a mobile device. To this end, CUPP cites Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) for the proposition that patentee disclaimers during IPRs effectively narrow claim scope. The Board concluded that it could ignore this disavowal in construing the claims and we agree with the Board’s decision. To this end, the Court held that the Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.
Congress designed inter partes review (IPR) to give the Patent Office power to revisit and revise earlier patent grants, in order to protect the public’s interest in keeping patent monopolies within their legitimate scope. If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to revisit granted claims, and require focus on claims the patentee now wishes it had secured. A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process.

To be clear, the Court held that the disclaimer is not binding on the PTO in an IPR proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination. CUPP’s proposed rule would make the process for amending patent claims in an IPR unnecessary because the same outcome could be achieved by disclaimer. Nullifying Congress’s amendment process would be particularly perverse because Congress gave accused infringers “intervening rights” protection for substantively amended claims, ensuring that such claims have only prospective effect. Allowing patentees to modify their claims by disclaimer would thus effectively allow retrospective amendment in the IPR process.