Limiting the Disclaimer Doctrine: The Federal Circuit Limits the Scope of Disclaimers in the Context of Intellectual Property Rights | JD Supra

The United States Court of Appeals for the Federal Circuit recently upheld three final written inter partes review (IPR) decisions of the U.S. Patent Trial and Appeal Board (“the Board”) in which the Board found that the claimant, Trend Micro. Inc. (“Trend”), had shown the contested patent claims of patentee Cupp Computing AS’s (“Cupp”), U.S. Patent Nos. 8,631,488 (“‘488 patent”), 9,106,683 (” ‘683 patent”) and 9,843,595 (“‘595 patent”), unpatentable as evident from two prior art references.¹ Setting a new precedent for the interpretation of claims, the Federal Circuit held that although a patentee’s clear and unequivocal disavowals of the scope of the claim during IPR proceedings narrow the scope of the claims, such a statement only serves to narrow the claims in subsequent proceedings—not in the IPR proceeding in which the statement is made.²

Cupp argued that the PTAB erred in rejecting Cupp’s disclaimers in the IPR.³ The Board did not find this argument persuasive and concluded that it could ignore the patentee’s disallowance in the construction of the claims.⁴ The Federal Circuit agreed with the board.⁵

Each of the three patents at issue share a common name and priority date and address the issue of malicious attacks targeting mobile devices.⁶ The patents relate to methods for waking a mobile device from a power-saving mode and then performing security operations on the device, “such as scanning a storage medium at scanning for malware or updating security apps”.^seven

The issue on appeal from the Board’s decision on the precedent decision is one of claim construction.⁸ Specifically, each independent claim in the three patents includes the limitation “the mobile device having a different mobile device processor than the mobile security system processor”.⁹

In March 2019, Trend applied to the Board for an IPR for multiple claims in each of the ‘488, ‘683, and ‘595 patents, arguing that the claims were not patentable because they were obvious.^ten Trend presented two pieces of prior art asserting that either could be relied upon individually to show that the disputed claims would have been obvious, including the limitation of the security processor of the claims.¹¹ In response, Cupp asserted that “the security system’s processor limitation required that the system’s processor be ‘remote’ from the mobile device’s processor”, and none of the prior art references disclosed this limitation.¹² Cupp attempted to dismiss other interpretations, limiting the scope of the claim to circumvent the prior art and dictate the Board’s interpretation in the IPR. The Board rejected Cupp’s argument for a narrow interpretation based on Cupp’s alleged denial statements and, under the Board’s interpretation, concluded that the claims were obvious from the state of the technical.¹³

The Federal Circuit confirmed.¹⁴ Cupp argued that the Board erred in rejecting CUPP’s disclaimer in the IPRs themselves, disavowing a security system processor embedded in a mobile device.¹⁵ The Board concluded that it could ignore this disallowance in the construction of the claims.¹⁶ Concurring with the Board, the Federal Circuit said, “We are now making the case for the simple conclusion we reached in an unprecedented prior opinion: [T]The Board is not bound to accept a patentee’s arguments as a disclaimer when ruling on the merits of those arguments. »¹⁷

The Federal Circuit explained that “a rule allowing a patentee to adapt its claims in an IPR by argument alone would significantly undermine the IPR process.”¹⁸ His decision was motivated by the intention of Congress to create the DPI process.¹⁹ The Federal Circuit said, “Congress has devised an inter partes review to ‘give[e] gives the Patent Office significant powers to review and revise earlier patent grants”, as well as “to protect[ing] overriding public interest in ensuring that patent monopolies are maintained within their legitimate scope”.²⁰ The Federal Circuit has warned that if patentees can amend their claims through arguments in an IPR, they would fetter the Patent Office’s power to “review” the claims it has granted.²¹

The Federal Circuit clarified its decision by stating that “a disclaimer in an IPR proceeding is binding in subsequent proceedings, whether at the PTO or in court.”²² The decision emphasized that this decision is only that a “Waiver is not binding on the PTO in the very DPI proceeding in which it is made, just as a Waiver in a District Court proceeding would not bind the district court in this proceeding”.²³

The Federal Circuit also explained that Cupp’s proposed rule would make the IPR application amendment process unnecessary.²⁴ Congress has created a specialized process for patent holders to amend their claims in an IPR.²⁵ Under Cupp’s proposal, this process is rendered unnecessary because the same result could be achieved by the disclaimer.²⁶

The IPR process allows applicants to challenge existing patent claims under §§ 102 or 103 of the Patent Act, based on prior art patents and/or printed publications. The Federal Circuit has recognized that if patentees can alter the wording of the claim by the disclaimer alone, the patentee could escape review for compliance with other patentability requirements, such as the section 101.²⁷ The Federal Circuit ruled that this gambling potential violated the public protection amendment process, which allows the Board to review a proposed amended claim for compliance with all patentability requirements before allowing the amendment to be granted. a patent during an IPR.²⁸ Thus, “disclaimers in an IPR procedure are not binding in the procedure in which they are formulated”.²⁹

In the future, disclaimers by a patentee during IPR proceedings will only apply to subsequent proceedings. If a patentee wishes the Board to consider the patentability of a claim that is narrower in scope than the issued claims, the patentee will have to rely on the amendment process.