CAFC Clarifies Role of PTAB Disclaimer
Over the years, whether patent reexamination, patent reissue or AIA trial, patent owners have attempted to amend their claims through argument alone. Typically a Patent Owner would argue that its claims means something specific, and that by affirmatively saying so in the post-grant prosecution history, the claims should be interpreted as such by virtue of disavowal/disclaimer. The reasoning is that since such a disclaimer/disavowal would have been recognized for such in the original prosecution, why should it be any different in a post-grant setting?
Today, the CAFC has finally shut down that argument as being inconsistent with patent statutes and the AIA amendment policies.
In Cupp Computing AS v. Trend Micro Inc. (precedential) (here), the Appellant attempted to leverage Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017), for the proposition that patentee disclaimers during IPRs effectively narrow claim scope. While Aylus may support the general proposition, the Court explained that “Aylus says only that a patentee’s disclaimer during an IPR can bind the patentee to a narrower claim interpretation in a subsequent proceeding, in that case a district court infringement proceeding.”
In explaining the distinction, the Court went on to explain:
[Aylus] says nothing about whether a patentee’s disavowal is binding in the very proceeding in which it is made.
We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: The Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments. A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to give the Patent Office significant power to revisit and revise earlier patent grants, thus “protecting the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope. If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. . .
To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court. We hold only that a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. . . .
Moreover, Congress created a specialized process for patentees to amend their claims in an IPR. CUPP’s proposed rule would render that process unnecessary because the same outcome could be achieved by disclaimer. See 35 U.S.C. § 316(d).
Nullifying Congress’s amendment process would be particularly perverse because Congress protected the public in ways that CUPP’s disclaimer rule would not. Congress gave accused infringers “intervening rights” protection for substantively amended claims, ensuring that such claims have only prospective effect. See id. §§ 318(c), CUPP nowhere suggests that such intervening rights protections apply to claims effectively modified by disclaimer. Allowing patentees to modify their claims by disclaimer would thus effectively allow retrospective amendment in the IPR process. And because IPR petitioners can challenge existing claims only for non-compliance with §§ 102 or 103 of the Patent Act, see 35 U.S.C. § 311(b), under CUPP’s proposal a patentee could modify a claim free of scrutiny for compliance with other patentability requirements, such as § 101. The amendment process carries no such risk.(internal quotes and citations omitted)
While this may seem a negative for Patent Owners, I am not aware of a single proceeding in which this argument was ever successful. This brings me to my next topic (posted later this week). Why do Patent Owners continue to make the same mistakes at the PTAB?