Aylus Networks v. Apple (Fed. Cir. 2017)
The court here holds that claim construction “prosecution disclaimer” applies to statements made by the patentee in a preliminary response to an IPR proceeding. This holding makes sense and was entirely expected — however it also sets yet another trap for patentees seeking to enforce their patent rights.
The appeal here involves Aylus infringement lawsuit against Apple that alleges AirPlay infringes U.S. Patent No. RE 44,412. After Aylus sued Apple for infringement, Apple responded with two inter partes review (IPR) petitions challenging all of the patented claims. However, the Director (via the PTAB) refused to grant the petition as to several claims, including 2, 4, 21, and 23.
Back in the litigation, Aylus amended its complaint to only allege infringement of those non-instituted claims. In its subsequent motion for summary judgment of non-infringement, Apple argued for a narrow interpretation of the claimed use of “CPP logic . . . negotiate media content delivery between the MS and the MR.” As evidence for the narrow interpretation, Apple and the district court focused on statements by the patentee (Aylus) in its preliminary response to Apple’s IPR petition. On appeal here, the Federal Circuit has affirmed:
[S]tatements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied on to support a finding of prosecution disclaimer.
Those of us closely following IPR doctrine will raise some hairs at this statement since the Federal Circuit has previously held that “IPR does not begin until it is instituted.” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016). Here, the court recognized that general holding, but found that it dies not apply “for the purposes of prosecution disclaimer.” Rather, for this situation, the court found that the proceedings begin with the IPR petition.
If I were writing the opinion, I would have come to the same result – that statements by the applicant to the PTO can form prosecution disclaimer. However, I would have reached the conclusion without upsetting and further complicating the definition of an IPR proceeding.
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An oddity of all of this is that the Federal Circuit appears quite concerned in this case about the linkages between claim construction during inter partes review and subsequent litigation, but previously ignored that issue during the prior cuozzo debate. My take has long been that we should be applying the actual claim construction in both situations.
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This case focused on prosecution disclaimer and the finding of a clear and unmistakable disclaimer of claim scope. However, the same approach should also apply in applying IPR statements as primary intrinsic evidence used in the claim construction analysis even when short of disclaimer.