Some of you may remember the Federal Circuit’s decision from a few (actually 5!) years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” That decision left unresolved an important question—whether disclaimer statements apply in the same IPR proceeding in which they’re made. Can a patent owner disclaim coverage of some portion of its claims in an IPR to obtain a narrowed claim construction and avoid the prior art? In this week’s case of the week, the Federal Circuit answers that question with a clear “no.”
Case of the week: CUPP Computing AS v. Trend Micro Inc., No. 20-2262
Panel: Judges Dyk, Taranto, and Stark, with Judge Dyk writing the opinion
You should read this case if: you have a matter involving disclaimer during an inter partes review
This week’s case features an IPR challenge to three patents claiming a better way to protect mobile devices from malware. The claims recite a mobile device with two processors: a “mobile device processor” that must be “different than [a] mobile security system processor.” The patent owner argued that “different” means the claims require a “separate and remote” security system processor, that is, that the security system processor cannot be part of the mobile device.
That was a tough argument using standard claim construction tools. For one, the patents included a preferred embodiment with a mobile security system “incorporated within the mobile device.” The prosecution history also gave the patent owner no help. The patent owner argued it had disclaimed security processors that were part of the mobile device when distinguishing its claims from the prior art during the original prosecution. But the panel concluded that the alleged disclaimer was ambiguous and so insufficient to clear the high bar needed for a disclaimer.
That left the patent owner’s argument that disclaimer statements made in the current IPR should have required the Board to accept the patent owner’s claim construction. During the IPR, the patent owner had expressly disavowed that its claims cover a security system processor embedded in a mobile device. But the Federal Circuit held the Board “could ignore this disavowal in construing the claims.” The Court explained that “the Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” After all, the point of an IPR is for the Patent Office to “revisit” the claims it granted. Allowing patent owners to “shapeshift their claims through argument in an IPR” to cover something different from the original scope would defeat that purpose. Plus, Congress already gave patent owners a different tool to narrow their claims during an IPR—amend them under 35 U.S.C. § 316. Allowing within-an-IPR disclaimer “would render that process unnecessary.” And it would bypass important guardrails that apply for only amended claims. For example, the Board may review amended claims—but not non-amended ones—for other patentability requirements like § 101 ineligibility.
The takeaway: patent owner comments in an IPR may alter claim scope only in later proceedings. In the IPR itself, patent owners will have to use other claim construction tools, or amendment, to secure their preferred claim scope.
OTHER WEEKLY STATS
Precedential opinions: 4
Non-precedential opinions: 9
Rule 36: 1
Longest pending case from argument: American National v. Sleep Number Corporation, No. 21-1321 (158 days)
Shortest (non-Rule 36) pending case from argument: Blazer v. Best Bee Brothers LLC, No. 22-1033 (14 days)