The Federal Circuit has now held, in a precedential opinion, that “[d]isclaimers in an [inter partes review] IPR proceeding are not binding in the proceeding in which they are made.” In doing so, the Federal Circuit emphasized a rule in Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) that “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court” to “ensure that claims are not argued” by the patentee “one way in order to maintain [the claims’] patentability and in a different way against accused infringers.”

But the Federal Circuit’s new rule seems to eviscerate the reasoning in Aylus, as there could be no argument that a Patent Owner could make to maintain a claim’s patentability in an IPR if the argument cannot operate as a disclaimer during the IPR, as the rationale in Aylus would seem to require at least some reliance on the disclaiming argument to confirm the patentability of the claim.

Here, CUPP Computing’s patent claim was directed to a “mobile security system” with a “mobile security system processor” with “a connection mechanism for connecting to a data port of a mobile device and for communicating with the mobile device,” and where the mobile device has “a mobile device processor different than the mobile security system processor.”

Trend Micro challenged CUPP’s patent in an IPR, pointing to mobile phones described in prior art references with a main processor for the mobile phone and a separate processor in the mobile phone for security. Based on the claim language and statements made during prosecution of CUPP’s patent, CUPP argued that “different” in the context of the claim meant that the “mobile security system processor” had to be remote from the mobile device.

The Federal Circuit rejected CUPP’s position. It reasoned that the “different” in the claim simply meant different, explained that the claim could speak of communications “with” the device over a “port” to include internal communications and internal communication ports, and found the statements in the prosecution history ambiguous. And, as noted above, it held that CUPP could not, to the extent that there was ambiguity in the record, disclaim separate processors in the mobile phone from the claim with argument during the IPR.