disclaimer : CAFC Alert

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.


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).   


  • 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.

Prosecution history disclaimer dooms infringement case for patentee

| November 22, 2021

Traxcell Technologies, LLC v. Nokia Solutions and Networks

Decided on October 12, 2021

Prost, O’Malley, and Stoll (opinion by Prost)


Patentee’s arguments during prosecution distinguishing the claimed invention over prior art were found to be clear and unmistakable disclaimer of certain meanings of the disputed claim terms. The prosecution history disclaimer resulted in claim constructions that favored the accused infringer and compelled a determination of non-infringement.


Traxcell Technologies LLC specializes in navigation technologies. The company was founded by Mark Reed, who is also the sole inventor behind U.S. Patent Nos. 8,977,284, 9,510,320, and 9,642,024 that Traxcell accused Nokia of infringing.

The 284, 320, and 024 patents are directly related to each other as grandparent, parent, and child, respectively. The three patents are concerned with self-optimizing wireless network technology. Specifically, the patents claim systems and methods for measuring the performance and location of a wireless device (for example, a phone), in order to make “corrective actions” to or tune a wireless network to improve communications between the wireless device and the network.

The asserted claims from the three patents require a “first computer” (or in some of the asserted claims, simply “computer”) that is configured to perform several functions related to the “location” of a mobile wireless device.

Central to the parties’ dispute was the proper constructions of “first computer” and “location”.

Nokia’s accused geolocation system was undisputedly a self-optimizing network product. Nokia’s system performed similar functions as those claimed in the asserted computers, but across multiple computers. Nokia’s system also collected performance information for mobile wireless devices located within 50-meter-by-50-meter grids.

To avoid infringement, Nokia argued that the claimed “first computer” required a single computer performing the claimed functions, and that the claimed “location” required more than the use of a grid.

On the other hand, wanting to capture Nokia’s products, Traxcell argued that the claimed “first computer” encompassed embodiments in which the claimed functions were spread among multiple computers, and that the claimed “location” plainly included a grid-based location.

Unfortunately for Traxcell, their arguments did not stand a chance against the prosecution histories of the asserted patents.

The doctrine of prosecution history disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution”. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “Prosecution disclaimer can arise from both claim amendments and arguments”. SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379 (Fed. Cir. 2021). “An applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well”. Id. at 1380. For there to be disclaimer, the patentee must have “clearly and unmistakably” disavowed a certain meaning of the claim.

Of the three asserted patents, the 284 patent had the most protracted prosecution, with six rounds of rejections. And it was the prosecution history of the 284 patent that provided the fodder for the district court’s claim constructions. Incidentally, the 284 patent was also the only one of the three asserted patents prosecuted by the inventor, Mark Reed, himself.

During claim construction, the district court construed the terms “first computer” and “computer” to mean a single computer that could performed the various claimed functions.

The district court first looked to the plain language of the claims. The claim language recites “a first computer” or “a computer” that performs a function, and then recites that “the first computer” or “the computer” performs several additional functions. The district court determined that the claims plainly tied the claimed functions to a single computer, and that “it would defy the concept of antecedent basis” for the claims to refer back to “the first computer” or “the computer”, if the corresponding tasks were actually performed by a different computer.

The intrinsic evidence that convinced the district court of its claim construction was, however, the prosecution history of the 284 patent.

During prosecution, in a 67-page response, Mr. Reed argued explicitly and at length, in a section titled “Single computer needed in Reed et al. [i.e., the pending application] v. additional software needed in Andersson et al. [i.e., the prior art]”, that the claimed invention requiring just one computer distinguished over the prior art system using multiple computers. The district court quoted extensively from this response as intrinsic evidence supporting its claim construction.

The Federal Circuit agreed with the district court’s claim construction, quoting still more passages from the same response as evidence that the patentee “clearly and unmistakably disclaimed the use of multiple computers”.

Next, the district court addressed the term “location”. The district court construed the term to mean a “location that is not merely a position in a grid pattern”.

Here, the district court’s claim construction relied almost exclusively on arguments that Reed made during prosecution of the 284 patent. Referring again to the same 67-page response, the district court noted that Mr. Reed explicitly argued, in a section titled “Grid pattern not required in Reed et al. v. grid pattern required in Steer et al.”, that the claimed invention distinguished over the prior art because the claimed invention operated without the limitation of a grid pattern, and that the absence of a grid pattern permitted finer tuning of the network system.

And again, the Federal Circuit agreed with the district court’s claim construction, finding that “the disclaimer here was clear and unmistakable”.

The claim constructions favored Nokia’s non-infringement arguments that its system lacked the single-computer, non-grid-pattern-based-location limitations of the asserted claims. Accordingly, the district court found, and the Federal Circuit affirmed, that Nokia’s system did not infringe the 284, 320, and 024 patents.

Traxcell made an interesting argument on appeal—specifically, the disclaimer found by the district court was too broad and a narrower disclaimer would have been enough to overcome the prior art. Traxcell seemed to be borrowing from the doctrine of prosecution history estoppel. Under that doctrine, arguments or amendments made during prosecution to obtain allowance of a patent creates prosecution history estoppel that limits the range of equivalents available under the doctrine of equivalents.

However, the Federal Circuit was unsympathetic to Traxcell’s argument, explaining that Traxcell was held “to the actual arguments made, not the arguments that could have been made”. The Federal Circuit also noted that “it frequently happens that patentees surrender more…than may have been absolutely necessary to avoid particular prior art”.

Mr. Reed’s somewhat unsophisticated prosecution of the 284 patent was in sharp contrast to the prosecution of the related 320 and 024 patents, which were handled by a patent attorney. The prosecution histories of the 320 and 024 patents said very little about the cited prior art, even less about the claimed invention. In addition, whereas Mr. Reed editorialized on various claimed features during prosecution of the 284 patent, the prosecution histories of the 320 and 024 patents rarely even paraphrased the claims.


  • Avoid gratuitous remarks that define or characterize the claimed invention or the prior art during prosecution. Quote the claim language directly and avoid paraphrasing the claim language, as the paraphrases risk being construed later as a narrowing characterization of the claimed invention.
  • Avoid claim amendments that are not necessary to distinguish over the prior art.
  • The prosecution history of a patent can affect the construction of claims in other patents in the same family, even when the claim language is not identical. Be mindful about how arguments and/or amendments made in one application may be used against other related applications.

Limitations describing how an apparatus is made can structurally limit the apparatus

| June 12, 2013

Regents of University of Minnesota v. AGA Medical Corp.

June 3, 2013

Panel:  Rader, Wallach, Dyk.  Opinion by Dyk.


Regents of University of Minnesota (“University”) sued AGA Medical for infringement of U.S. Patents 6,077,281 and 6,077,291 directed to medical devices called septal occluders.  A claim at issue recites two disks having central membranes, the two disks being “affixed” to each other at the central membranes “to define a conjoint disk.”  The accused product was a molded one-piece device.  In the district court, the claim was construed as to require that the disks, before being affixed, exist separately as individual disks that are then attached to each other.  Since the accused device was a single molded device and was not constructed from two separate disks, the district court entered summary judgment of non-infringement.  The CAFC affirmed this construction and the summary judgment of non-infringement.

Another claim at issue was found to be anticipated.  The University attempted to use prosecution disclaimer to narrow the claim and avoid anticipation.  However, the court rejected the prosecution disclaimer because the prosecution disclaimer was from a parent application and applied to “materially” different claim language.

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Clear and Unmistakeable Evidence of a Disclaimer Found in Response to Enablement Rejection

| April 24, 2013

Biogen Idec, Inc., et al. v. GlaxoSmithKline LLC, et al.

April 16, 2013

Panel: Dyk, Plager, Reyna.  Opinion by Reyna.  Dissent by Plager.


During prosecution of the patent, applicants responded to the examiner’s enablement rejection, wherein they failed to challenge the examiner’s understanding of the crucial terms, and limited their invention to what the examiner believed their specification enabled.  The CAFC affirmed the district court’s narrow claim interpretation of the term “anti-CD20 antibody” based on prosecution history disclaimer.

実施可能要件を満たしていないとして発せられた拒絶通知に対して、出願人は、審査官の理解に対して反論することなく、明細書により実施可能であると審査官が判断したものに発明を限定するような主張を行った。よって、「anti-CD20 antibody」という用語について、狭いクレーム解釈を容認した地裁の判断は誤りでなかったとCAFCは判示した。

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