IPR Petition Response => Claim Construction Disclaimer

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.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

9 thoughts on “IPR Petition Response => Claim Construction Disclaimer

  1. Will it work the same way for claim construction arguments made by petitioners? Say the IPR petitioner argues a broadest reasonable construction for a claim element – institution is then denied, and back in district court the petitioner/defendant then argues for a narrower, non-infringing construction, invoking the Phillips standard AND the inapplicability of IPR estoppel (because institution was denied, under Shaw Industries).
    Seems unfair that patentees would be subject to this form of estoppel when petitioners aren’t.

    1. I think that this is a good point, the challenger should likely also be bound to arguments that it makes regarding claim construction.

      1. But petitioners can logically argue for BRI [broader] claim construction in an IPR and narrower [In re Phillips] claim construction in the D.C.
        Whereas a patent owner would be illogical in arguing for a narrower claim construction under BRI in an IPR than its claim construction argument in a D.C.

    2. There is a further asymmetry in that patent holders are “one against the world” and that there is NO requirement for standing for anyone wanting to challenge a patent in Post grant reviews.

      Even IF you wanted to apply some type of “being bound,” the petitioner may not have anything to be bound to.

      1. Anon, I’ll go you one better: what if someone were to start a non-profit corporation, say “The Coalition for Patent Perfidy”. And the CPP were to accept donations from, oh, some large high-tech companies or some generic drug manufacturers to cover its operating costs, including employee salaries and PTO fees. And the CPP were to maintain a web site where people can suggest patents to attack in IPR/PGR/CBM, including arguments that could be made and documentation that could be presented – heck, even whole briefs, ready to go. And the CPP were to then file IPRs etc. Would the CPP need to list anyone beside itself as the real party in interest in those proceedings? And if legally it needed to do so, but didn’t, and the PTAB found a patent challenged by the CPP to be invalid, would the failure to list the real party in interest undo such invalidation?

        1. Atari Man,

          Well I think that we both know that any such infirmity leading to an otherwise valid invalidation will not change the end result.

          This happens a lot by the way. Another blatant example is the reopening and new searching that goes on after appeals are decided against the Office (and I am NOT talking about he mere “refresh the search” efforts).

      2. Yes, but if an IPR petitioner has no standing it cannot appeal an IPR decision to the Fed. Cir.

        1. Does that mean that there is an inclination to lean towards the petitioner’s side while still at the Office?

  2. I’m surprised this does not happen more often. Close coordination and understanding of the significant differences between D.C. litigation and the IPRs that triggers is needed, and often they are different attorneys [for good reasons] with different expertise and egos, plus or minus whatever role is played by in-house counsel.

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