PTAB Strategies and Insights Newsletter - December 2022: Disclaimers Cannot Be Used Intra Proceeding for Claim Construction, Only in Subsequent Proceedings

The Federal Circuit recently held that a Patent Owner could not use disclaimers argued in an IPR proceeding for claim construction within the same IPR proceeding.

In CUPP Computing AS v. Trend Micro Inc., Case 20-2262, Judge Dyk, writing for Taranto and Stark, the Federal Circuit affirmed the PTAB’s construction of “systems and methods for waking a mobile device from a power-saving mode and then performing security operations on the device” leading to invalidity because (1) Patent Owner’s “disclaimer” was not clear enough and (2) was not binding within the proceeding it was made.

Patent Owner CUPP argued the PTAB made a reversible error in its construction of the term “security system processor.” The Court disagreed, finding that the claim itself and the specification supported the Board’s construction.[i]

With respect to CUPP’s alleged “disclaimer,” it failed for at least two reasons. First, it “did not unmistakably renounce” non-remote processors. CUPP Computing AS at 10. Second, and more importantly, because “disclaimer is not binding. . .in the very IPR proceeding in which it is made.” Id. at 11. Considering Congress’s intent of “[creating] a specialized process for patentees to amend their claims in an IPR” by Motion to Amend, the Court went on to discuss that allowing a Patent Owner to make disclaimers and not amendments during a proceeding undermines the IPR process and renders Motion to Amend process superfluous.[ii]

In the end, the Court held that a “disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court,[iii]” but not in the proceeding they are made. Id. at 11.