Disclaimer Not Binding In IPR Proceeding Where Made

In CUPP Computing AS v. Trend Micro Inc.,¹ the Federal Circuit held that a disclaimer made in an inter partes review (IPR) proceeding was not binding in that proceeding, i.e., the disclaimer is not binding in the proceeding in which it is made. However, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the patent office or in court. The court explained that the prosecution disclaimer doctrine precludes a patent owner from recapturing through claim interpretation specific meanings disclaimed during prosecution; the disclaimer must be clear and unmistakable.

CUPP Computing AS (CUPP) owned U.S. Patent Nos. 8,631,488 ('488 Patent), 9,106,683 ('683 Patent) and 9,843,595 ('595 Patent) (collectively, CUPP patents), directed to malicious attacks targeting mobile devices, particularly awakening a mobile device from a power-saving mode and then executing security processes on the device. Trend Micro Inc. filed a petition for inter partes review