Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple.

The Aylus patent is directed to a media streaming architecture. During trial, Apple filed an IPR petition challenging the validity of the asserted patent. In its Preliminary Response, Aylus argued that claim 2 requires that "only" the Control Point Proxy logic is invoked under the conditions described in claim 2. Aylus avoided institution in the IPR proceeding on claim 2. The district court later construed claim 2 to require that "only" the Control Point Proxy logic is invoked, which ultimately led the court to find noninfringement in favor of Apple on SJ. Aylus appealed, disputing the district court's construction of "wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR" and asserting that the district court erred in granting SJ of noninfringement of claims 2 and 21 of the asserted patent.

On appeal, the Federal Circuit noted it must initially "determine an issue of first impression for this court: whether statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction.” The Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.

The Court noted that "the doctrine of prosecution disclaimer ensures that claims are not 'construed one way in order to obtain their allowance and in a different way against accused infringers.'" In recognizing statements made during an IPR proceeding can shape a court's claim construction, the Federal Circuit analogized statements in IPR proceedings to statements made during reissue proceedings and statements made in reexamination proceedings, explaining that each situation falls in the category of post-issuance prosecution.

The Court further held that Aylus's statements amount to a "clear and unmistakable" disavowal of claim scope and, based on this disclaimer, affirmed the district court's claim construction and grant of SJ of noninfringement.