Disclaimer Don't Stick In An IPR

• Jurisdiction: United States,Federal
• Law Firm: NovoTech Patent Firm
• Subject Matter: Intellectual Property, Patent
• Author: NovoTech Patent Firm
• Published date: 17 March 2023

CUPP Computing AS ("CUPP") appeals three inter partes review ("IPR") decisions of the Patent Trial and Appeal Board ("Board") concluding that petitioner Trend Micro Inc. had shown challenged claims in CUPP's U.S. Patents Nos. 8,631,488 ("'488 patent"), 9,106,683 ("'683 patent"), and 9,843,595 ("'595 patent") unpatentable as obvious over two prior art references: U.S. Patent No. 7,818,803 ("Gordon") and U.S. Patent App. Pub. No. 2010/0218012 A1 ("Joseph").

The three patents at issue address the problem of malicious attacks aimed at mobile devices. They generally concern systems and methods for waking a mobile device from a power-saving mode and then performing security operations on the device. The key issue is a claim construction that applies to each of the three patents. In March 2019, Trend Micro petitioned the Board for inter partes review of several claims in the '488, '683, and '595 patents. Trend Micro argued that the claims were unpatentable as obvious, relying on Gordon and Joseph individually to show that all challenged claims would have been obvious.

CUPP responded that the security system processor limitation required that the security system processor be "remote" from the mobile device processor. The Board instituted review and, in three final written decisions, found all the challenged claims obvious over the prior art. "Construing the claim[s] in accordance with their ordinary and customary meaning . . . as understood by one of ordinary skill in the art," the Board held that the challenged claims did not require that the security system processor be remote from the mobile device processor."

In reviewing the Board's determination on the question of obviousness, the Court reviews the Board's legal conclusions de novo and its factual findings for substantial evidence. "A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art . . . ." 35 U.S.C. ' 103(a).

CUPP argues that the security system processor limitation requires that the mobile device have a mobile device processor different than the mobile security system processor. The Board properly concluded that the fact that the security system processor is "different" than the mobile device processor does not suggest that the two processors are remote from one another. CUPP responded that...