May 11, 2017

Patent Owner Statements During an IPR Disclaimed Claim Scope

By Bryan K. Wheelock, Principal

In Aylus Networks, Inc., v. Apple, [2016-1599] (May 11, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE 44,412 on systems and methods for implementing digital home networks having a control point located on a wide area network.

Apple argued that it did not practice the claim requirement “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR” recited in the two asserted claims 2 and 21.  Apple argued that this language required that only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, and based upon this construction the district court granted summary judgment.

In construing the “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR” limitation, the district court relied on statements made by Aylus in its preliminary responses to Apple’s petitions for IPR of the ’412 patent, finding these  statements “akin to prosecution disclaimer.”  On appeal, Aylus argued that statements made during an IPR cannot be relied on to support a finding of prosecution disclaimer, and that even if they can, the statements it made did not constitute a clear and unmistakable disclaimer of claim scope.

The Federal Circuit rejected Aylus’s first argument, holding that statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction.  After briefly reviewing the disclaimer doctrine, and noting that disclaimers have been applied in post-issuance proceedings before the patent office, such as reissues and reexaminations, the Federal Circuit said that extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers.  The Federal Circuit noted that several district courts have already held that statements in an IPR can be considered for prosecution disclaimer.  The Federal Circuit also rejected Aylus’s argument that statements in a Patent Owner’s Preliminary Response don’t count as a disclaimer because they are made pre-institution.

The Federal Circuit then turned to the question of whether Aylus’s statements in the IPR were sufficiently “clear and unmistakable.”  After examining the statements themselves, and the fact that the statements worked — avoiding IPR for the subject claims — the Federal Circuit agreed with the district court that the statements represent an unequivocal and unambiguous disavowal, and found no error in the district court’s claim construction.