Federal Circuit IP

Cupp Computing AS v. Trend Micro Inc. (Fed. Cir. November 16, 2022)

By Francisco Almeida Published March 3, 2023

Cupp Computing AS v. Trend Micro Inc. CAFC Opinion No. 20-2262, Decided November 16, 2022 (Dyk, Taranto, Stark)(Precedential)

Overview:  The Board is not required to accept a patent owner’s arguments during IPR as disclaimer, but those arguments will be binding in later proceedings.

Facts/Procedural Posture:

  • CUPP sued Trend Micro for infringing patents directed toward addressing the problem of malicious attacks aimed at mobile devices.
  • All claims require a security system processor that is “different than” a mobile device processor.
  • Trend Micro petitioned the Board for IPR arguing claims were unpatentable as obvious relying on a new reference teaching a different security system bundled within a mobile device.
  • CUPP disavowed a security system bundled within the mobile device during the IPR proceeding.
  • The Board ignored CUPP’S disclaimer in the IPR, finding all claims unpatentable as obvious, and CUPP appealed.

 Issue on Appeal: Did the Board err in rejecting CUPP’s disclaimer during IPR?

 Holding: No, because in an IPR, the Board is not required to accept a patent owner’s disclaimer arguments made in that same proceeding when deciding the merits of those arguments. However, disclaimer arguments made in the IPR will be binding in subsequent proceedings.


  • “To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court.”
  • But “[i]f 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.”
  • “[U]nder CUPP’S proposal a patentee could modify [via disclaimer] a claim free of scrutiny for compliance with other patentability requirements, such as § 101. The amendment process carries no such risk.”