No Shapeshifting Claims Through Argument in an IPR
| December 15, 2022
CUPP Computing AS v. Trend Micro Inc.
Decided: November 16, 2022
Circuit Judges Dyk, Taranto and Stark. Opinion by Dyk.
Summary:
CUPP appeals three inter partes review (“IPR”) decisions of the Patent Trial and Appeal Board (“Board”), largely due to an issue of claim construction. The three patents at issue are U.S. Patents Nos. 8,631,488 (“’488 patent”), 9,106,683 (“’683 patent”), and 9,843,595 (“’595 patent”). The contested claim construction involves the limitation concerning a “security system processor,” which appears in every independent claim in each of the three patents.
The limitation in question reads in part “the mobile device having a mobile device processor different than the mobile security system processor”.
Trend Micro petitioned the Board for inter partes review of several claims in the ’488, ’683, and ’595 patents, arguing that the claims were unpatentable as obvious over two individual prior art references. CUPP responded that the security system processor limitation required that the security system processor be “remote” from the mobile device processor, and that neither of the cited references disclosed this limitation because both taught a security processor bundled within a mobile device.
The Board instituted review and, in three final written decisions, found all the challenged claims obvious over the prior art. Specifically, the Board held that the challenged claims did not require that the security system processor be remote from the mobile device processor, but merely that the mobile device has a mobile device processor different than the mobile security system processor.
That is, the fact that the security system processor is “different” than the mobile device processor does not suggest that the two processors are remote from one another. Rather, citing Webster’s Third New International Dictionary, the Board and the CAFC noted that the ordinary meaning of “different” is simply “dissimilar.” The CAFC further noted that CUPP had given no reason to apply a more specialized meaning to the word.
Furthermore, the CAFC drew support from the specification of each of the three Patents. Briefly, that in one “preferred embodiment” each of the patents described that the mobile security system may be incorporated within the mobile device. Thus, the CAFC concluded that “highly persuasive” evidence would be required to read claims as excluding a preferred embodiment of the invention. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583–84 (Fed. Cir. 1996). Indeed, “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” Accent Pack-aging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (citation omitted).
CUPP responds that, because at least one independent claim in each of the patents requires the security system to send a signal “to” the mobile device, and “communicate with” the mobile device, the system must be remote from the mobile device processor.
The CAFC were not persuaded holding that the Board properly construed the security system processor limitation in line with the specification. The CAFC analogized that “just as a person can send an email to him- or herself, a unit of a mobile device can send a signal “to,” or “communicate with,” the device of which it is a part.”
Next, CUPP argued that, because it disclaimed a non-remote security system processor during the initial examination of one of the patents at issue, the Board’s construction is erroneous. The CAFC held that the Board properly rejected that argument, because CUPP’s disclaimer did not unmistakably renounce security system processors embedded in a mobile device. Rather, the CAFC upheld the Board’s reading of CUPP’s remarks during prosecution as a “reasonable interpretation[]” that defeats CUPP’s assertion of prosecutorial disclaimer. Avid Tech., Inc., 812 F.3d at 1045 (citation omitted); see also J.A. 20–22.
Briefly, during prosecution of the ’683 patent, the Patent Office examiner found all claims in the application obvious in light of the prior art. CUPP’s responded that if the TPM “were implemented as a stand-alone chip attached to a PC mother-board,” it would be “part of the motherboard of the mobile devices” rather than being a separate processor. J.A. 3578. The TPM would therefore not constitute “a mobile security system processor different from a mobile system processor.”
The Board found, and the CAFC upheld, that under one plausible reading, CUPP’s point was that the prior art failed to teach different processors because the TPM lacks a distinct processor. Thus, under this interpretation, if the TPM were “a stand-alone chip attached to a . . . motherboard,” it would rely on the motherboard’s processor, and not have its own different processor. For this reason, the CAFC concluded that CUPP’s comment to the examiner is consistent with it retaining claims to security system processors embedded in a mobile device with a separate processor.
Lastly, CUPP contended that the Board erred by rejecting CUPP’s disclaimer in the IPRs themselves, disavowing a security system processor embedded in a mobile device.
Here, the CAFC unambiguously stated that it was making “precedential the straightforward conclusion [they] drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). That a rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” 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. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018).
Thus, to conclude, a disclaimer in an IPR proceeding is only binding in later proceedings, whether before the PTO or in court. The CAFC emphasized that congress created a specialized process for patentees to amend their claims in an IPR, and CUPP’s proposed rule would render that process unnecessary because the same outcome could be achieved by disclaimer. See 35 U.S.C. § 316(d).
Take-away:
- A disclaimer in an IPR proceeding is only binding in later proceedings, whether before the PTO or in court.
- A claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.
- Disclaimers made during prosecution must be clear and unmistakable to be relied upon later. Specifically: “The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016) (ellipsis, alterations, and citation omitted). However, a patentee will only be bound to a “disavowal [that was] both clear and unmistakable.” Id. (citation omitted). Thus, where “the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, we have declined to find prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016).
- Claim terms are given their ordinary meaning unless persuasive reason is provided to apply a more specialized meaning to the word.
