TAKEAWAY: During an IPR, a disavowal in claim scope may be ignored by the Board during claim construction, but may nevertheless be binding in subsequent actions.

In CUPP v. Trend Micro Inc. (Fed. Cir., November 16, 2022), the Federal Circuit made explicitly precedential a determination on claim interpretation that it had previously stated in earlier nonprecedential opinions: when construing claims in an inter partes review (IPR), “the Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” However, the Federal Circuit confirmed that a patentee’s disclaimer during an IPR can bind the patentee to a narrower claim interpretation in a subsequent proceeding, such as a district court infringement proceeding.

In the IPR, Trend Micro had challenged three patents held by CUPP, each directed to using a mobile security system processor to perform security operations on a mobile device after waking it from a power-saving mode. Each patent included at least one claim reciting a “mobile device having a mobile device processor different than the mobile security system processor.”

CUPP had argued that “different” should be construed to mean a remote processor because it had disavowed a mobile security system processor embedded in the mobile device both during examination and in the IPRs themselves. The Board did not find these arguments compelling, instead applying the Phillips “ordinary usage” claim construction standard governing federal courts to construe the claims. In doing so, the Board determined that “different” in its ordinary usage means “dissimilar” and not “remote” as argued by CUPP.

On appeal, the Federal Circuit agreed with the Board, finding that CUPP’s arguments during examination were not sufficiently “clear and unmistakable” to exclude non-remote processors. The Court also reaffirmed that “a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made,” but that “a disclaimer in an IPR proceeding is binding in later proceedings.”

Patent practitioners should carefully consider when it may be appropriate to disclaim a particular claim interpretation, and when doing so, make the arguments clear and unmistakable. Attempts to disavow scope later during a post grant proceeding has limited value and can be used against the patentee in subsequent proceedings.