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

“In brief, if patent owners could freely modify their claims by argument in an IPR, they could avoid the public-protecting amendment process that Congress prescribed. That cannot be.” – CAFC Judge Timothy Dyk

CAFCEarlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The 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 disclaimer entered 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 CUPP Computing’s appeal from the PTAB are U.S. Patent No. 8631488, U.S. Patent No. 9106683 and U.S. Patent No. 9843595, each 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 cover methods and systems for waking a mobile device from a power-saving mode in order 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 a pair of lawsuits filed against Trend Micro in the Northern District of Texas. In May 2018, CUPP Computing filed a suit against Trend Micro alleging patent infringement by Trend Micro’s mobile security technologies along with its network defense products, hybrid cloud security products and several other security solutions. Then in April 2021, CUPP Computing filed a first amended complaint in a separate suit reiterating many of the infringement allegations from the May 2018 action based on several new patents that had been issued to CUPP Computing since the first lawsuit.

Trend Micro challenged the validity of the ‘488, ‘683 and ‘595 patents by filing petitions for IPR…