Disclaimer: Now and Later

by Dennis Crouch

The Federal Circuit’s decision in CUPP Computing v. Trend Micro includes a big discussion on treatment of disclaimers.  The patentee (CUPP) filed the appeal after the PTAB issued its final written IPR decisions finding the claims of three mobile device cybersecurity patents to be unpatentably obvious. IPR2019-00764, -00765, -00767.

In the IPR, CUPP was seeking a narrow construction of its claims in order help it skirt the prior art.  The claims all require a “security system processor” that is “different than” from the mobile device processor.  During prosecution, CUPP distinguished prior art that included both processors using the same motherboard as not “different.”  Later during the IPR, CUPP argued that this distinction meant that the two processors must be “separate and remote” from one another.  During the IPR, CUPP also expressly disavowed claim coverage where the security system processor is embedded in the mobile device.  Despite these arguments, the PTAB gave the claims a broad construction that allowed for both processors to be embedded next to one another.  This interpretation meant that the prior art killed the claims.

On appeal, the Federal Circuit has affirmed on this point.  First, as to the original prosecution.  The court concluded that the statements were not a clear disavowal of scope.  The court noted that the statements could be reasonably interpreted in more than one way and thus failed to meet the high burden of prosecution disclaimer.

The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. However, a patentee will only be bound to a disavowal that was both clear and unmistakable.

Slip Op. (quotation marks, alterations, and citations omitted).

As to disavowal during the IPR, the Federal Circuit has previously held the PTAB is not required to accept a disavowal of scope during an IPR.  However, that prior decision was non-precedential. VirnetX Inc. v. Mangrove Partners Master Fund,
Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019).  Here, the court makes the ruling binding:

The Board concluded that it could ignore this disavowal in construing the claims. We agree. . . . The Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments. A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. . . .

If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured.

Slip Op. (citations removed).

The court goes on to make a some what powerful extension of issue preclusion doctrine:

To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court. We hold only that a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.

Id. Truthfully, it is difficulty to this aspect of the court’s decision as it relates to preclusion law in general.  But, perhaps the court is simply saying that if the disclaimer had been successful during the IPR, then it would be binding before a subsequent tribunal.

= = =

Also note that all this law of prosecution disclaimer is made-up law by the judges based upon their preferred policy arguments.  The statute does discuss disclaimer under Section 253, but this is disclaimer of a claim as a whole. “[A] patentee … may disclaim any complete claim . . . Such disclaimer shall be in writing and recorded.”

21 thoughts on “Disclaimer: Now and Later

  1. 4

    Not sure why you see this as expansion of issue preclusion, or really anything to do with issue preclusion at all.

    Rather, it seems like a fairly straightforward application of judicial estoppel, which itself is a form of equitable estoppel. If you make a material representation (eg, a disclaimer of claim scope) that is intended do and does induce reliance (eg, by the PTAB) to your benefit, you are estopped from reneging that representation.

  2. 3

    Disclaimer is not “made-up law” anymore than using the words in the claim or the specification is “made-up law.” There’s no statutes telling a court or PTAB how to construe claims. They have to do the best that they can; and the disclaimer doctrine makes total sense. NOT interpreting claims with reference to the prosecution is what would truly not make sense.

  3. 2

    The PTAB routinely rejects attempts to narrow claims through argument-based disclaimer, because they see it as an attempted end-run around filing a motion to amend. It would arguably be reversible error for the PTAB to confirm a claim in IPR based on an argument-based disclaimer, where that construction could not be sustained by the pre-IPR intrinsic record.

    Argument-based disclaimers can present all kinds of problems in IPR by circumventing established procedures for filing a motion to amend. For example, if a patentee files a motion to amend, an IPR petitioner has the right to present new and additional prior art to attempt to cover the new claim limitations that didn’t exist when the IPR petition was filed. But if the patent owner does not file a motion to amend and just tries to narrow through argument-based disclaimer, the IPR petitioner has no such right and is stuck with the prior art in its IPR petition. If that prior art does not cover the new limitation introduced by the argument-based disclaimer, and the disclaimer were accepted, the IPR would obviously fail. This is particularly unfair if the narrowing disclaimer was not foreseeable at the time the petitioner filed the IPR petition.

    Patentees may also attempt argument-based disclaimers in IPR to circumvent intervening rights that would attach to amended claims, as a motion to amend would not be available for claims that have expired or are close to expiring.

    1. 2.1


      See post one below. Even with a proper motion to amend, there is no true examination of the scope of the amended claim (and the fact that the petitioner can supply new art/argument does NOT salvage this critical legal deficiency).

      1. 2.1.1

        True in one special case – if none of the claims left in an IPR after an accepted claim substitution are even assertable as infringed by any Petitioner product, then the Petitioner may not have an incentive to do an additional prior art search to address the added claim limitation[s].


          True is multiple cases — even if the petitioner ‘has cause.’

          The petitioner is not a member of the USPTO, under which the Director causes an examination to be made and for which, a valid patent is granted.


            If the patent owner obtains issued substitute claims in an IPR, and tries to assert them, the defendants will have intervening rights defenses, and can also file IPRs or reexaminations of their own against those claims. Hence, substitute claims are rarely sought or obtained in IPRs.


              Intervening rights is a pile of dust being kicked up for the point that I have provided Paul.

              The AIA scr ewe d up in the way that they set up the post grant review with no actual examination (by the USPTO) of any amendments made.

              Falling back to the intervening rights ‘protocol’ of a reissue is just not enough, as even the reissue process places the application back in front of an actual examiner, with that examiner performing exactly the same rigor to provide a valid grant of a patent.

      2. 2.1.2

        If by “true examination” one is referring to normal PTO examiner application examinations, the time, resources and scope available for that is miniscule in comparison to what a company facing millions of dollars in litigation costs settlements or damages will spend in prior art searches, whether or not used in IPRs, settlement negotiations, or trials.


          If by “true examination” one is referring to normal PTO examiner application examinations…

          Why do “true” examinations even matter? There was a time when no claims were examined, and the world did not spin off its axis.

          Congress has provided various mechanisms by which claims can come into force. One requires examination. Another (IPR amendments) does not. I do not see that it makes a great deal of difference as a practical matter. Do we have any evidence to suggest that the claims that emerge out of IPR amendments are more likely to have defects than those that emerge out of pre-grant examination?


            ^^^ perhaps Greg will share a tweet reinforcing his cavalier attitude to the Rule of Law and what it means for the Patent Office (as opposed to any other entity, public or private) to be doing the work of determining that claims deserve to be granted, under the law….

      3. 2.1.3

        > Even with a proper motion to amend, there is no true examination
        > of the scope of the amended claim (and the fact that the petitioner
        > can supply new art/argument does NOT salvage this
        > critical legal deficiency).

        This is a conceptual difference between IPR and reexamination, the latter provides an actual claim examination process whereas IPR does not. One big place you see this reflected is 37 CFR 42.121(d)(3), which flat out says that the Board in an IPR can only deny a motion to amend “for reasons supported by readily identifiable and persuasive evidence of record” (or other related proceedings). This would appear to handcuff the Board to the specific prior art identified by the IPR petitioners in opposition to the motion to amend. In a reexamination, on the other hand, the examiner is free to search for and identify new prior art in response to a claim amendment.

        But I am not sure why you are so fascinated with this distinction, as I do not see how it makes a practical difference in most cases. Other than largely theoretical edge cases (e.g., the IPR petitioner does not file any opposition to the motion amend), the adjudicatory nature of IPR and the powerful incentives the IPR petitioner has to defeat the motion will likely result in a fairly well-developed record on which the PTAB can assess the proposed amended claims. As Paul has mentioned, that will often provide a far more developed and thorough record than you’d get through an ordinary examination process.

      4. 2.1.4

        IPRs were, in theory, modeled after European Oppositions and basically adopted the procedures used in interferences. Both allow/allowed claim amendments. Is your position that the APJs cannot make a determination of scope? I will trade you claim amendments for a clear and convincing evidence standard for invalidity.


          It is NOT the role of APJ’s to do so, as they are set up to be the neutral arbiter — not an examiner.

          (And any modeling is MOST poorly done).


            The APJs did so during interferences. And, the statute clearly contemplates considerations regarding scope.

            “…(3) SCOPE OF CLAIMS.—An amendment under this
            subsection may not enlarge the scope of the claims of the patent
            or introduce new matter.”

            35 USC 316(d)(3). Indeed, Section 316(a)(9) states the following:

            “(9) setting forth standards and procedures for allowing
            the patent owner to move to amend the patent under subsection
            (d) to cancel a challenged claim or propose a reasonable number
            of substitute claims, and ensuring that any information submitted
            by the patent owner in support of any amendment entered under
            subsection (d) is made available to the public as part of the
            prosecution history of the patent;”

            Perhaps I am misunderstanding your point.


              My point is plain and direct as stated above: the AIA screwed up royally in its attempt to set up the post grant review system that they did.

              The point is very clear and very straight forward: the AIA did NOT set up the PTAB to have examiner power.

              Your statement of, “ The APJs did so during interferences.” is a non-sequitur.

              As to, “And, the statute clearly contemplates considerations regarding scope.” does NOT change the fact that the AIA was BOTH p00rly written AND does not set up the PTAB to have examiner power.

              I have explained this flaw in SCOPE OF CLAIMS previously in the analogy to a fenced area.

              The fact of the matter that a new fenced area is being sought and that new fenced area may be less extensive than the fenced area found to be improper does NOT mean that the new fenced area itself IS proper.

              There is a logical flaw in thinking so. That logical flaw is in thinking that everything up to and including the original fenced area was both properly examined and properly allowed, and that ONLY that ‘exacting’ point of the allowed patent grant is NOW being found to be improper in the post grant review.

              But that is NOT what happens in the process.

              For example, at the Institution Decision Point – prior to any decision on the merits – ALL presumption of validity – and thus ALL area within the fenced zone originally granted – is taken away as to what was earned by the original examination.

              So just because Congress (p00rly) wrote that certain amendments could be entertained, there is NO actual examination (or reexamination as was provided in ‘similar’ paths prior to the AIA) of these ‘inner fenced areas,’ and thus what emerges (by way of ANY amendment) is simply improper, as such is not a truly vetted grant of patent.

              Merely “making available to the public” does NOT salvage this F A T A L flaw.

  4. 1

    An interesting point related to “This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.

    … as noted previously…

    In a post grant setting, there is no examiner function, thereby making ANY amendment problematic.

    As a reminder, and in a fence analogy, the scope of a claim allowed (outer fence) is what was determined by an examiner, thereby more narrow scoped claims may or may not be proper on their own. That is to say, dependent claims oft rely on that outer fence.

    But in the IPR situation, the propriety of that outer fence no longer exists, and to be proper, the scope of any amended claim emerging from a post grant proceeding should (likely) be subject to an actual examination on the merits — by an examiner.

    There is simply no party present in the IPR scheme that legally suffices to BE that examiner.

    The old fence has been taken down. A new fence — lacking actual (and unquestioned) examination has been erected.

    1. 1.1

      Yes, there is no provision for a new prior art search by either the petitioner or an examiner in an ongoing IPR to meet a new alleged claim scope by disclaimer. But even more significant re an attempted disclaimer in the IPR itself* is the patent owner option in an IPR of claim substitution to put a disclaimer of claim scope in the claim itself [if there is 112 support in the spec.]. Of course this does not preclude just arguing claim scope in a declaration.
      This significance was previously noted in reexamination decisions where the patent term [but not the period of back damages recovery] was already expired so that such claim amendments could not be made in the reexamination.
      *rejected in this CUPP Computing v. Trend Micro

    2. 1.2

      “But in the IPR situation, the propriety of that outer fence no longer exists, and to be proper, the scope of any amended claim emerging from a post grant proceeding should (likely) be subject to an actual examination on the merits — by an examiner.”

      Yeah there are so few it really shouldn’t be that big of a deal to just throw it to the old examiner or one that is closely related thereto in the same art, and make it special. Maybe with a fee and some extra time for the case for the examiner. Not rocket science.

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