53 F.4th 1376
Fed. Cir.2022Background:
- CUPP owns three related patents (’488, ’683, ’595) covering systems that wake mobile devices from low-power mode to perform security operations.
- Trend Micro petitioned inter partes review (IPR) challenging claims as obvious over Gordon (U.S. Patent No. 7,818,803) and Joseph (US 2010/0218012 A1); the PTAB found the challenged claims obvious and adopted ordinary-meaning claim construction.
- Central claim limitation at issue: a "security system processor" that must be "different than the mobile device processor"; the ’595 patent also claims a device-resident "security agent" that "perform[s] security services."
- CUPP argued the "different" processor term requires the security processor be remote/external and that prior art did not disclose a device-resident security agent; it relied on prosecution statements and IPR arguments as disclaimers.
- The Board rejected CUPP’s proposed remote-only construction, found Gordon (and Joseph) rendered claims obvious (including the ’595 security agent via Gordon’s host agent), and CUPP sought rehearing before the PTO Director after Arthrex; rehearing was denied.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction: Does "different" require the security system processor be remote from the mobile device processor? | CUPP: "different" means separate/remote; specification and prosecution statements support exclusion of embedded processors. | Trend Micro: "different" means merely dissimilar; spec discloses embodiments with the security system incorporated in the device. | Court: Affirmed PTAB. "Different" does not require remoteness; specification shows embedded preferred embodiments; extrinsic evidence insufficient to override. |
| Effect of prosecution/IPR disclaimers: Do CUPP’s prosecution/IRP statements limit claim scope to exclude embedded processors? | CUPP: Prosecution statements and IPR disclaimers renounced non-remote processors. | Trend Micro: Prosecution remarks were ambiguous; IPR arguments are not binding on the Board in that IPR. | Court: Prosecution disclaimer must be clear and unmistakable—CUPP’s statements were reasonably ambiguous so no disclaimer. Disclaimers made during an IPR are not binding on the PTO in that same IPR proceeding. |
| Substantial evidence: Did Gordon (or Joseph) render obvious the ’595 patent’s "security agent" limitation? | CUPP: Neither Gordon nor Joseph discloses a device-resident security agent that performs security services. | Trend Micro: Gordon discloses a host agent on the device that performs security tasks after being woken by a firmware/security module. | Court: Affirmed PTAB. Substantial evidence supports that Gordon’s host agent corresponds to the claimed security agent and performs security services. |
Key Cases Cited
- United States v. Arthrex, 141 S. Ct. 1970 (2021) (remand/administrative-officer appointment issues affecting PTO rehearing procedures)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction by reference to ordinary meaning and intrinsic record)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (presumption against claim constructions that exclude preferred embodiments)
- Mass. Inst. of Tech. v. Shire Pharms., 839 F.3d 1111 (Fed. Cir. 2016) (prosecution disclaimer requires clear and unmistakable disavowal)
- Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) (disclaimer made in IPR can bind patentee in later proceedings)
- Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261 (2016) (purpose of IPR is public recalibration of patent scope)
- Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018) (patent grants viewed as public franchises; IPR is a reconsideration mechanism)