CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

In short, if patent owners could freely amend their claims with arguments in an IPR, they could avoid the public protection amendment process that Congress has prescribed. That cannot be.” – CAFC judge Timothy Dyk

CAFCEarlier today, the US Court of Appeals for the Federal Circuit (CAFC) issued a precedent-setting decision CUPP Computing AS v. Trend Micro Inc. confirm final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods of performing security operations on a mobile device. CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a waiver filed during IPR as binding on the proceedings before it .

IPR Petitions Filed After CUPP Computing Targets Trend Micro’s Mobile Security Services

The three patents at issue in the PTAB’s CUPP Computing appeal are US Patent No. 8631488, US Patent No. 9106683 and US Patent No. 9843595, which all share the same title Systems and methods for providing security services during power management mode. Each patent claims a priority date of August 4, 2008, and all generally cover methods and systems for waking a mobile device from a power-saving mode to perform security operations such as scanning the storage medium for malware or updating security applications.

These patents-at-issue were among a collection of patents asserted by CUPP Computing in several lawsuits 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 filed a first amended complaint in a separate lawsuit that repeated many of the infringement allegations from the May 2018 action based on several new patents issued to CUPP Computing since the first lawsuit.

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Trend Micro challenged the validity of the ‘488, ‘683 and ‘595 patents by filing petitions for IPR proceedings in March 2019. CUPP Computing’s argument that the security system processor requested the limitation is misconceived so that the claimed security system processor was not required to be away from the mobile device processor. Although the Federal Circuit has CUPP Computing under a detention USA v. Arthrex to request a chance director review of the PTAB’s decisions, those requests were denied by Acting Director Drew Hirshfeld.

CAFC: Board need not consider waiver when deciding merits of patentability

The precedential aspect of the Federal Circuit’s decision in CUPP computing time Involves the Federal Circuit’s response to waivers filed by CUPP Computing, specifically in the IPR proceeding itself. In the IPRs, CUPP Computing filed a waiver that included a security system processor embedded in a mobile device. On appeal, CUPP Computing relied on the Federal Circuit’s 2017 decision Aylus Networks, Inc. v. Apple Inc. for the premise that waivers come in during an IPR effectively narrows the scope of a claim. However, the Federal Circuit differs Aylus networksheld that it was applied only to narrow the claim space that could be asserted by the patentee in a subsequent proceeding in US District Court.

“We now render precedential the simple conclusion we drew in an earlier non-precedential opinion:”[T]The Board is not required to accept a patent owner’s arguments as waivers when deciding the merits of those arguments,” wrote Judge Timothy Dyk, citing the Federal Circuit’s 2019 decision in VirnetX Inc. v. Mangrove Partners Master Fund, Ltd. Judge Dyk reasoned that allowing patentees to personalize claims during IPR by argument alone would frustrate Congress’s purpose in enacting IPR litigation, particularly infringing on Congress’ significant power to revise patents to keep “patent monopolies” within their legitimate scope. .

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“If patentees could shape their claims through arguments in an IPR, they would frustrate the patent office’s power to ‘revise’ the claims they have conceded, and require the focus to be on claims the patentee now wishes it had secured. ,” Judge Dyk wrote, further noting that CUPP’s proposed rule would make unnecessary the specialized process created by Congress for amending patent claims during an IPR. In short, if patent owners could freely amend their claims with arguments in an IPR, they could avoid the public protection amendment process that Congress has prescribed. That can’t be.”

The Federal Circuit made much short work of CUPP Computing’s argument that it dismissed a non-security system processor during patent prosecution at the US Patent and Trademark Office. The Federal Circuit ruled that the PTAB properly rejected CUPP Computing’s claim construction arguments based on CUPP Computing’s disclaimer during the indictment because that disclaimer “does not unambiguously disclaim security system processors embedded in a mobile device.” Looking at CUPP Computing’s arguments during the lawsuit alleging that a prior art patent application disclosing a mobile security system did not disclose a security system processor other than a mobile device processor, the Federal Circuit found that a plausible reading was that CUPP Computing was simply arguing. that the priority did not learn a different processor for the security system, defeating the argument of the prosecutor’s waiver.

‘Difference’ Means ‘Difference,’ Not ‘Far’

CUPP Computing fared no better on its other claim construction arguments that the Federal Circuit addressed before the waiver issues on appeal. While the security system processor limitation requires that the processor be “different” from the mobile device processor, the Federal Circuit found no evidence offered by CUPP Computing to support the definition of that claim term as “remote.” to quote Webster’s Third New International Dictionary, the Federal Circuit noted that the ordinary meaning of “different” is “unequal,” and preferred embodiments disclosed in the joint specification of the patents allow the mobile security system to be integrated into the mobile device. While CUPP Computing argued that at least the ‘488 and ‘595 patents involve wake signals sent to the mobile device as a remote communication, the Federal Circuit found that the PTAB correctly set out the claim limitation in the specification.

“Just as a person can send an e-mail to himself or herself, 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 is a part.” – Circuit Judge Timothy Dyk

Finally, the Federal Circuit dismissed an additional argument raised by CUPP Computing that the “security agent” recited by the ‘595 patent alone was not disclosed by the claimed prior art. In analyzing US Patent No. 7818803, Security module With a secondary agent in coordination with a host agent (“Gordon”), the PTAB found that the host agent disclosed by Gordon to perform security services, including initiating data erasure sequences and performing program updates, disclosed the security agent limitation of the ‘595 patent. The Federal Circuit also rejected CUPP Computing’s argument that the PTAB’s most recent written decisions produced inconsistent findings based on Gordon, instead finding that the claim terms relating to the processor’s “managed” security services were made obvious based on elements provided by Gordon were revealed to be different from Gordon’s host agent element. that made the limitation of the security agent of the ‘595 patent obvious.

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