CAFC expressly states that the patent holder’s disclaimers during intellectual property rights are not binding for the PTAB patentability review

“In short, if patent owners were able to freely modify their claims through arguments in an IPR, they could avoid the public protection amendment process that Congress prescribed. That can’t be.” – CAFC Judge Timothy Dyk

CAFCToday, the US Court of Appeals for the Federal Circuit (CAFC) issued a precedent decision in CUPP Computing AS v. Trend Micro Inc. affirm the final written decisions of a trio of between parties review procedures (IPR) that invalidate CUPP Computing’s patent claims that cover methods for performing security operations on a mobile device. The CAFC’s decision makes it clear to patent holders defending their rights before the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during intellectual property rights as binding on the proceedings before her.

Intellectual Property Rights Petitions Filed After CUPP Computing Targets Trend Micro Mobile Security Services

The three patents at issue in the PTAB’s CUPP Computing appeal are US Patent No. 8631488, US Patent No. 9106683 Y US Patent No. 9843595each sharing the common title Systems and methods for providing security services during power management mode. Each patent claims a priority date of August 4, 2008, and each generally covers methods and systems for waking a mobile device from a power-saving mode to perform security operations such as scanning the storage media for malware or update security apps.

These patents in question were among a collection of patents asserted by CUPP Computing in a pair of lawsuits filed against Trend Micro in the Northern District of Texas. In May 2018, CUPP Computing filed a lawsuit against Trend Micro alleging patent infringement by Trend Micro’s mobile security technologies along with its network defense products, hybrid cloud security products, and various other security solutions. Then, in April 2021, CUPP Computing introduced a first amended complaint in a separate lawsuit that reiterates many of the infringement allegations from the May 2018 action based on several new patents that have been issued to CUPP Computing since the first lawsuit.

Trend Micro challenged the validity of the ‘488, ‘683, and ‘595 patents by filing requests for intellectual property rights proceedings in March 2019. After instituting a review, the PTAB concluded that all claims challenged by Trend Micro were not patentable as is obvious from the prior art, dismissing CUPP Computing’s arguments that the limitation of the security system processor claim was misinterpreted so that the claimed security system processor was not required to be remote of the mobile device processor. Although the Federal Circuit gave CUPP Computing pretrial detention under United States vs. Arthrex for the opportunity to request the Director’s review of PTAB decisions, those requests were denied by Acting Director Drew Hirshfeld.

CAFC: Board does not have to consider disclaimers when deciding the merits of patentability

The foregoing aspect of the Federal Circuit’s decision in CUPP Computing involves the Federal Circuit’s response to the disclaimers entered by CUPP Computing, specifically in the IPR proceeding itself. In intellectual property rights, CUPP Computing had filed a disclaimer rejecting a security system processor embedded in a mobile device. On appeal, CUPP Computing relied on the 2017 Federal Circuit decision in Aylus Networks, Inc. v. Apple Inc. on the premise that disclaimers entered during an IPR effectively reduce the scope of a claim. However, the Federal Circuit distinguished Aylus Networksholding that it was applied only to narrow the scope of the claim that the patentee could assert in a subsequent proceeding in a US district court.

“We now make precedent the direct conclusion we drew in an earlier non-preceding opinion: ‘[T]The Board is not required to accept a patent owner’s arguments as a release of liability in deciding the merits of those arguments,’ wrote Judge Timothy Dyk, citing the 2019 Federal Circuit decision in VirnetX Inc. v. Mangrove Partners Master Fund, Ltd. Judge Dyk explained that allowing patentees to accommodate claims during IPRs by argument alone would defeat the purpose of Congress in enacting IPR judgments, especially granting Congress significant power to review patent grants to maintain “patent monopolies” within their legitimate scope.

“If patentees were able to modify their claims through IPR arguments, they would frustrate the Patent Office’s power to ‘review’ the claims it granted, and would require focusing on the claims the patentee now wishes to have secured,” wrote Judge Dyk, further noting that CUPP’s proposed rule would make unnecessary the specialized process created by Congress to amend patent claims during an IPR. “In short, if patent owners were able to freely modify their claims through arguments in an IPR, they could avoid the public protection amendment process that Congress prescribed. That can not be.”

The Federal Circuit greatly shortened the work of CUPP Computing’s argument that it rejected a non-remote security system processor during patent pending with the US Patent and Trademark Office. The Federal Circuit ruled that the PTAB correctly rejected CUPP Computing’s claim building arguments based on CUPP Computing’s disclaimer during prosecution because that disclaimer “did not unequivocally waive the security system processors built into a mobile device.” As to CUPP Computing’s arguments during the indictment, which held that a prior art patent application disclosing a mobile security system did not disclose a security system processor different from a mobile device processor, the Federal Circuit found that a plausible reading was that CUPP Computing was simply arguing that the prior art did not teach a separate processor for the security system, defeating appellant’s prosecution’s disclaimer argument.

‘Different’ means ‘different’, not ‘remote’

CUPP Computing fared no better on its other claim construction arguments that the Federal Circuit addressed prior to the disclaimer issues on appeal. Although the security system’s processor limitation required that the processor be “different” from the mobile device’s processor, the Federal Circuit found no evidence submitted by CUPP Computing to support the definition of the claim term as “remote.” quoting Webster’s Third New International Dictionary, the Federal Circuit noted that the ordinary meaning of “different” is “different”, and the preferred embodiments disclosed in the shared specification of the patents allowed the mobile security system to be incorporated within the mobile device. Although CUPP Computing argued that at least the ‘488 and ‘595 patents involve activation signals sent to the mobile device as a remote communication, the Federal Circuit found that the PTAB correctly interpreted the limitation of the claim in accordance with the specification.

“Just as a person can send an email to himself, and an employee can communicate with the entity that employs that person, a unit of a mobile device can send a signal ‘to’ or ‘communicate with’ the device. of which it is a part.” – Circuit Judge Timothy Dyk

Finally, the Federal Circuit reversed an additional argument raised by CUPP Computing that the “security agent” cited solely by the ‘595 patent was not disclosed by the asserted prior art. in analyze US Patent No. 7818803, Security Module with Secondary Agent in Coordination with Host Agent (“Gordon”), the PTAB found that the host agent disclosed by Gordon to perform security services, including initiating data wipe sequences and performing program updates, made obvious the limitation of the patent security agent. ‘595. The Federal Circuit also rejected CUPP Computing’s argument that the PTAB’s final written decisions produced inconsistent findings based on Gordon, finding instead that the terms of the claim regarding the processor “managing” the security services were made obvious based on items revealed by Gordon other than Gordon’s host agent item. that made the limitation of the security agent of the ‘595 patent obvious.

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Author: Good Ideas

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