Not all patents are created equal. All patents stem from some level of thoughtfulness and ingenuity. But great patents are the result of a patent strategy: forethought about their use as a business tool and care during the “prosecution” phase when negotiating with patent examiners to obtain allowance. Great patents are better positioned to withstand the inevitable challenges that happen when enforced against infringing competitors or during monetization activities. A patent strategy, when properly implemented, can not only ensure that patent claims cover products made and sold by competitors, but also provide additional protection when validity of the patent is challenged. Here is a case in point.

CUPP Computing is the owner of three related patents entitled “systems and methods for providing security services during power management mode.” After CUPP sued Trend Micro for patent infringement, Trend Micro filed petitions for inter partes review (“IPR”) challenging all three patents, asserting that several claims of CUPP’s patents were obvious over prior art references. The Board instituted trials on all three petitions and found all challenged claims unpatentable as obvious. CUPP appealed.

One example of the claims at issue reads as follows:

A mobile security system, comprising:

a mobile security system processor; …

a security engine configured to: …

provide a wake signal to the mobile device, the mobile device having a mobile device processor different than the mobile security system processor.

In support of CUPP’s arguments that the prior art relied upon in the IPR petitions did not render claims like this obvious, CUPP asserted that “different” in the phrase—“the mobile device having a mobile device processor different than the mobile security system processor”—requires the “mobile security system” be remote (located remotely) from the mobile device. In other words, according to CUPP, the claims, specification, and prosecution history all required construing “different” to mean “remote,” which would preclude the mobile security system processor from being incorporated into the mobile device and as such help to distinguish the claims from Trend Micro’s prior art.

However, the Federal Circuit rejected CUPP’s argument that the evidence required the claimed “security system processor” be remote from a “mobile device processor.” Starting with the claims, the court found that they simply required that the two processors be different: “two processors may be different from one another and yet both be embedded in a single device.” Although some claims required the security system to send a wake signal to or communicate with the mobile device, that language, according to the court, did not support CUPP’s remoteness construction. The court also explained: “Just as a person can send an email to him or herself, and an employee can communicate with the entity that employs that person, a unit of a mobile device can send a signal “to,” or “communicate with,” the device of which it is a part.” Indeed, some of the claims teach communication via an internal port of the mobile device, which was consistent with a preferred embodiment disclosed in the specification in which the two processors could be within the same mobile device.

If the inventors of CUPP’s patent had implemented a proper patent strategy, the story of CUPP’s patents likely would have ended differently. Among other things, the inventors would have included in the patent application support for the argument that different may mean remote from the mobile device in at least certain instances. A core aspect of the patent strategy when drafting a new application is to consider ways in which competitors may infringe patent claims as well as ways in which they might avoid infringement of claims. With this information in mind, both the claims and specification are drafted and revised to reflect alternatives ways in which an invention may be practiced. And it is this aspect of a patent strategy that might have saved CUPP’s patent. A failure to fully develop and implement a patent strategy, at the outset of a new project as well as during the patent procurement (prosecution) process, will jeopardize the company’s investment in patents and potentially lead to a result like that in CUPP’s case.

Originally printed in Calcalist Magazine on March 13, 2023.