Board IPR claim construction and obviousness conclusions affirmed, disclaimer made during IPR not binding “in the very IPR proceeding in which it is made”

CUPP Computer AS v. Trend Micro Inc. (USPTO as Intervenor)

Docket No. 2020-2262-4 (IPR2-19-00764, -00765, -00767 (https://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf)

DYK, TARANTO, STARK

November 16, 2022

Brief Summary:   Board claim construction and obviousness findings affirmed.  FC panel explains that “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court” but not “in the very IPR proceeding in which it is made”.

Summary:  CUPP appealed three IPR decision finding Trend Micro (TM) had shown the challenged claims of CUPP’s US 8,631,488; 9,106,683; and 9,843,595 (all pre-AIA) relating to methods for waking a mobile device from a power-saving mode and then performing security operations on the device unpatentable as obvious in view of a US patent (“Gordon”) and a US patent publication (“Joseph”).  CUPP appealed the Board’s claim construction of the claim term “security system processor” relating to all three patents and its finding that either Gordon or Joseph renders the ‘595 patent obvious.  CUPP did request rehearing by the USPTO but was denied (Arthrex, US 2021).  The FC panel explained that in IPR proceedings the Board applies the Phillips “ordinary meaning” claim construction standard (37 CFR section 42.100(b); Phillips, FC 2005; Polaris, FC 2022).  Relying “on the language of the claims, the specification, and disclaimers made during the original examination and IPR proceedings”, CUPP argued “that the claims require that the security system processor be separate and remote from the mobile device.”  The Board concluded “that the security system processor is ‘different’ than the mobile device processor” but that this “does not suggest that the two processors are remote from one another” since “[i]n ordinary usage, ‘different’ simply means “dissimilar’” (“quoting general-purpose dictionaries”).  The FC panel explained that CUPP did not provide any “reason to apply a more specialized meaning to the word here” and a “preferred embodiment” showed that “the mobile security system…may be incorporated within the mobile device” (Vitronics, FC 1996 (“‘highly persuasive’ evidence” required to exclude a preferred embodiment); Accent Pkg., FC 2013; Columbia Univ., FC 2016 (“in the context of the patent”)); thus, the FC panel agreed with the Board that “two processors may be different from one another and yet both be embedded in a single device” (“The Board properly construed the security system processor limitation in line with the specification.”)  CUPP also argued that the Board’s construction is erroneous “because it disclaimed a non-remote security system processor during the initial examination of one of the patents at issue”, an argument the Board rejected.  The FC panel explained that a prosecution disclaimer must be a “disavowal [that was] both clear and unmistakable” (Mass. Inst. Tech., FC 2016; Avid Tech., FC 2016 (not if “disavowal is ambiguous, or even amenable to multiple reasonable interpretations”)).  And it did not find CUPP’s “purported disclaimer” to “unmistakably renounce security system processors embedded in a mobile device”.  CUPP also argued “the Board erred by rejecting CUPP’s disclaimer in the IPRs themselves”, citing Aylus Networks (FC 2017).  The FC panel found the Aylus decision to be “of no help to CUPP” as the decision “says only that a patentee’s disclaimer during an IPR can bind the patentee to a narrower claim interpretation in a subsequent proceeding” to “‘ensure that claims are not argued’ by the patentee ‘one way in order to maintain [the claims’] patentability and in a different way against accused infringers’” and “nothing about whether a patentee’s disavowal is binding in the very proceeding in which it is made” (VirnetX, FC 2019; Oil States, US 2018).  The FC panel explained that “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court” but not “in the very IPR proceeding in which it is made”, and “Congress created a specialized process for patentees to amend their claims in an IPR” (35 USC section 316(d)).  The FC panel also found the Board’s ‘595 patent obviousness conclusions to be supported by substantial evidence.  The Board decision was therefore affirmed.