The CAFC expressly declares that the disclaimers of the patentee during the IPR are not binding on the patentability analysis of the PTAB

The CAFC expressly declares that the disclaimers of the patentee during the IPR are not binding on the patentability analysis of the PTAB

“In short, if patentees could freely modify their claims through arguments in an IPR, they could avoid the public protection amendment process mandated by Congress. It can’t be.” – CAFC Judge Timothy Dyk

CAFCEarlier today, the United States Court of Appeals for the Federal Circuit (CAFC) issued a landmark decision in CUPP Computing AS vs. Trend Micro Inc. confirming the final written decisions of a trio of between parties Review Proceeding (IPR) invalidating CUPP Computing’s patent claims covering methods of performing security operations on a mobile device. The CAFC’s decision makes it clear to patentees defending their rights before the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during the IPR as binding for the procedure before it.

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

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

These patents at issue were part of a set 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 as well as its network defense products, hybrid cloud security products, and several other security solutions. Then, in April 2021, CUPP Computing filed an Amended First Complaint in a separate action reiterating many of the infringement allegations from the May 2018 action based on several new patents that had issued to CUPP Computing since the first lawsuit. .

Trend Micro challenged the validity of the ‘488, ‘683, and ‘595 patents by filing motions for IPR proceedings in March 2019. After instituting review, the PTAB concluded that all claims challenged by Trend Micro were not not patentable as being obvious from the state of the art, rejecting CUPP Computing’s arguments that the limitation of the security system processor claim has been misconstrued so that the claimed security system processor was not required to be away from the processor of the mobile device. Although the Federal Circuit granted CUPP Computing a remand under United States vs. Arthrex for the ability to seek Director’s review of PTAB decisions, these requests were denied by Acting Director Drew Hirshfeld.

CAFC: Board need not take into account disclaimers when ruling on merits of patentability

The precedent aspect of the Federal Circuit’s decision in Computer science CUPP involves the Federal Circuit’s response to disclaimers seized by CUPP Computing, particularly in the IPR proceeding itself. In IPRs, CUPP Computing filed a disclaimer disavowing a security system processor embedded in a mobile device. On appeal, CUPP Computing relied on the 2017 Federal Circuit decision in Aylus Networks, Inc. v. Apple Inc. for the premise that disclaimers entered during an IPR effectively reduce the scope of a claim. However, the Federal Circuit singled out Aylus Networksholding that it applied only to restrict the scope of the claim that could be asserted by the patentee in subsequent proceedings in a United States district court.

“We now make a precedent the simple conclusion we reached in an earlier unprecedented opinion:”[T]The Board is not bound to accept a patentee’s arguments as a disclaimer when determining the merits of those arguments,” Judge Timothy Dyk wrote, citing the decision of the 2019 Federal Circuit in VirnetX Inc. v. Mangrove Partners Master Fund, Ltd. Judge Dyk explained that allowing patentees to adapt claims during IPRs by argument alone would defeat the purpose of Congress in enacting IPR lawsuits, in particular the granting by the Congress with significant power to revise patent grants to keep “patent monopolies” within their legitimate scope.

“If patentees could amend their claims through arguments in an IPR, they would frustrate the power of the Patent Office to ‘review’ the claims it has granted, and demand to focus on claims that the patentee now wishes to have obtained,” Judge Dyk wrote, further noting that the CUPP’s proposed rule would obviate the specialized process created by Congress to amend patent claims during an IPR. “In short, if patentees could freely modify their claims through arguments in an IPR, they could avoid the public protection amendment process mandated by Congress. It cannot be.”

The Federal Circuit did much shorter work on CUPP Computing’s argument that it waived a non-remote security system processor during patent litigation at the US Patent and Trademark Office. The Federal Circuit ruled that the PTAB properly rejected CUPP Computing’s claim-building arguments based on CUPP Computing’s disclaimer during the lawsuits, because that disclaimer “did not unequivocally waive security system processors embedded in a mobile device”. In reviewing CUPP Computing’s arguments during the lawsuit, which argued that a prior art patent application disclosing a mobile security system did not disclose a security system processor different from a mobile device, the Federal Circuit concluded that a plausible reading was that CUPP Computing was simply arguing that the prior art did not teach a separate processor for the security system, defeating the waiver argument. appellant in the prosecution.

“Different” means “different” not “distant”

CUPP Computing did not fare better on its other claim-building arguments that the Federal Circuit dealt with before the appeals disclaimers. While the security system’s processor limitation required that this processor be “different” from the mobile device’s processor, the Federal Circuit found no evidence presented by CUPP Computing to support the definition of this term of claim as “remote”. Citing Webster’s Third New International Dictionary, the Federal Circuit noted that the ordinary meaning of “different” is “different”, and the preferred embodiments disclosed in the Common Patent Specification allowed the mobile security system to be incorporated into the mobile device. While CUPP Computing argued that at least the ‘488 and ‘595 patents involved wake-up signals sent to the mobile device as remote communication, the Federal Circuit found that the PTAB correctly interpreted the limitation of the claim in accordance with the specification.

“Just as a person can email themselves and an employee can communicate with the entity that employs that person, a unit of a mobile device can signal ‘to’ or ‘communicate with’ the apparatus of which he is a part.- Circuit Judge Timothy Dyk

Finally, the Federal Circuit invalidated an additional argument raised by CUPP Computing that the “security officer” cited only by the ‘595 patent was not disclosed by the claimed prior art. By analyzing US Patent No. 7818803, Security module having a secondary agent in coordination with a host agent (“Gordon”), the PTAB found that Gordon’s disclosed host agent to perform security services, including initiating data wipe sequences and performing program updates, made the limitation evident. of the ‘595 Patent Security Officer. The Federal Circuit also rejected CUPP Computing’s argument that the PTAB’s final written rulings produced inconsistent findings based on Gordon, finding instead that the terms of the claim regarding the processor “managing” security services were rendered. obvious based on elements disclosed by Gordon other than Gordon’s host agent element. this made the limitation of the security agent of the ‘595 patent obvious.

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