Background
CUPP Computing AS holds three related patents — U.S. Patent Nos. 8,631,488; 9,106,683; and 9,843,595 — covering systems and methods that allow mobile devices to wake from power-saving modes to perform security operations such as malware scanning or security updates. All three patents claim a priority date of August 4, 2008 and are directed to mobile device security architectures in which a security system processor handles security tasks separately from the main mobile device processor.
CUPP sued Trend Micro in the Northern District of Texas in May 2018 for patent infringement. Trend Micro responded by filing inter partes review (IPR) petitions in March 2019, challenging all three patents as obvious over prior art. The Patent Trial and Appeal Board (PTAB) instituted review and ultimately found all challenged claims unpatentable.
A central dispute arose over the claim term describing a “mobile device processor different than the mobile security system processor.” During the IPR proceedings, CUPP made arguments disclaiming a configuration in which the security system processor is embedded within the mobile device itself — an attempt to distinguish prior art by narrowing claim scope through argument rather than formal amendment. The PTAB declined to treat these statements as binding disclaimer and found the claims obvious. CUPP appealed.
The Court’s Holding
The Federal Circuit affirmed the PTAB’s decision. Writing for the panel, Judge Dyk held that a disclaimer made for the first time during an IPR proceeding is not binding on the PTAB in that same proceeding. The court reasoned that allowing patentees to informally narrow their claims through argument in an IPR — without going through the formal amendment process — would “shapeshift” claim scope and undermine the IPR system Congress designed.
The America Invents Act established a specific procedure for amending claims in IPR: patent owners may file a motion to amend, subject to examination by the USPTO and adversarial testing by the petitioner. If argument-based disclaimers could accomplish the same result without that process, the amendment mechanism would become superfluous, and the public would lose the benefit of a rigorous review of any narrowed claims. The court drew a clear line: disclaimers made during an ongoing IPR bind future PTO proceedings and district courts, but they do not constrain the PTAB in the proceeding where the disclaimer was first made.
On the merits, the court also agreed with the PTAB’s claim construction, holding that “different” in the processor limitation means “dissimilar” rather than “remote,” and that the prior art rendered the claims obvious.
Key Takeaways
- A patent owner’s disclaimer made for the first time during an IPR proceeding does not bind the PTAB in that same IPR — the PTAB is free to construe the claims as written when assessing patentability.
- Such disclaimers do carry forward and are binding in subsequent PTO proceedings (e.g., prosecution of related applications) and in district court litigation, so patent owners must think carefully before making narrowing arguments in IPR.
- The decision reinforces that formal claim amendment under § 316(d) — not strategic argument — is the proper mechanism for narrowing claims during IPR to avoid prior art.
- Patent owners facing IPR proceedings should evaluate the long-term claim-construction consequences of any narrowing statements made before the PTAB, even if those statements do not help in the immediate proceeding.
Why It Matters
This decision closes a potential loophole that patent owners might have tried to exploit: making sweeping disclaimers during IPR to avoid invalidity, then arguing in later litigation that the narrowed interpretation also distinguishes accused products. By holding that the PTAB need not accept in-proceeding disclaimers, the court preserves the integrity of the IPR amendment process and ensures that claim narrowing receives proper scrutiny.
For practitioners, the ruling means that arguments made before the PTAB carry real and lasting consequences. A statement disclaiming a feature to try to distinguish prior art will follow the patent into every future forum — even if it did not help at the PTAB. Patent owners must weigh the tactical risks carefully, and petitioners should take note of any narrowing statements for use in parallel or subsequent district court proceedings.