Some of you may remember those on the Federal Circuit decision by some (actually 5!) years ago arguing that patent owner statements made in an IPR proceeding can “support a disclaimer finding during the construction of the claim”. That decision left an important question unresolved: whether disclaimers apply to the same IPR proceeding in which they were made. Can a patent holder deny coverage of a part of his claims in an IPR in order to achieve a narrow claim structure and avoid prior art? In the case of this week’s week, the Federal Circuit answers that question with a clear “no.”
Case of the week: CUPP Computing AS vs. Trend Micro Inc.#20-2262
Panel: Judges Dyk, Taranto and Stark, with Judge Dyk writing the opinion
You should read this case if: you have an issue regarding the disclaimer during a peer review
This week’s case features an IPR challenge to three patents that claim a better way to protect mobile devices from malware. The claims read a mobile device with two processors: a “mobile device processor” which must be “different from [a] mobile security system processor. The patentee argued that “different” means that the claims require a “separate and remote” security system processor, meaning that the security system processor cannot be part of the mobile device.
This has been a difficult discussion using standard complaint building tools. For one, the patents included a preferred embodiment with a mobile security system “embedded within the mobile device.” The prosecution story didn’t help the patent holder either. The patentee claimed that he rejected the security processors that were part of the mobile device when he distinguished his claims from the prior art during the original court proceeding. But the panel concluded that the alleged disclaimer was ambiguous and therefore insufficient to pass the high standard required for a disclaimer.
This left the patentee’s argument that the disclaimers made in the current IPR should have required the Board to accept the patentee’s claim construction. During the IPR, the patent holder expressly denied that his claims related to a security system processor embedded in a mobile device. But the Federal Circuit held that the Board “could disregard this disclaimer in interpreting the claims.” The Court explained that “the Council is not required to accept the arguments of a patentee as a disclaimer when deciding on the merits of such arguments.” After all, the purpose of an intellectual property right is for the Patent Office to “review” the claims it has granted. Allowing patent owners to “reshape their claims through arguments in an IPR” to cover anything other than the original scope would defeat that purpose. In addition, Congress has already provided patent owners with a different tool to limit their claims during an IPR, by amending them under 35 USC § 316. Allow disclaimer within an IPR “it would make that process unnecessary.” And it would bypass important guardrails that only apply to modified requests. For example, the Council may examine modified claims, but not unmodified ones, for other patentability requirements such as § 101 ineligibility.
Conclusion: Patent owner comments in an IPR can change the scope of the claim only in subsequent proceedings. In the intellectual property right itself, patent holders will have to use other tools of claim construction, or amendment, to secure the scope of their preferred claim.
MORE WEEKLY STATISTICS
Previous opinions: 4
Unprecedented Opinions: 9
Rule 36: 1
Longest pending case from the topic: American National v. Sleep Number Corporation#21-1321 (158 days)
Shortest pending case (not rule 36) from topic: Blazers vs. Best Bee Brothers LLCNo. 22-1033 (14 days)