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 However, that prior decision was non-precedential.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.
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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.”