IPR statements by Aylus disavowed claim scope, supported prosecution disclaimer


May 11, 2017

Statements made by Aylus Networks during inter partes review (IPR) of patent claims involving systems and methods for implementing "digital home networks with a control point located on a wide area network" constituted a clear and unmistakable disavowal of claim scope, the U.S. Court of Appeals for the Federal Circuit has ruled. Statements by a patent owner during an IPR proceeding, whether they were made before or after an institution decision, could be relied on to support a finding of prosecution disclaimer, the court held. In light of the disclaimer by Aylus, the Federal Circuit affirmed a district court’s claim construction and grant of summary judgment of non-infringement to Apple Inc. (Aylus Networks, Inc. v. Apple Inc., May 11, 2017, Stoll, K.).

Lawsuit. Aylus sued Apple for the infringement of U.S. Patent No. RE 44,412. The patent disclosed multiple network architectures for streaming and displaying media content using combinations of networked components. The networked components included: (1) a media server (MS); (2) a media renderer (MR); (3) control point (CP) logic that included logic to negotiate media content delivery with at least one MS and an MR; and (4) control point proxy (CPP) logic.

Apple filed two separate IPR petitions that challenged various claims of the ’412 patent. The Board instituted an IPR proceeding on a petition that challenged all of claims of the ’412 patent, but denied institution as to four of those claims: Claims 2, 4, 21, and 23. Following institution, Aylus filed a notice of voluntary dismissal with the district court, dismissing with prejudice its infringement contentions as to all but two of the asserted claims: Claims 2 and 21. Apple sought summary judgment of non-infringement on those two claims, arguing that it did not practice the limitation "wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR," which was recited in both claims.

The district court construed the limitation "wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR" to require that "only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, in contrast to claims 1 and 20, which require both the CP and CPP to negotiate media content delivery." Based on that construction, the district court granted summary judgment of non-infringement to Apple on Claims 2 and 21.

In construing the limitation, the court relied on statements that were made by Aylus in its preliminary responses to Apple’s IPR petitions, and found that the statements were "akin to prosecution disclaimer." On appeal, Aylus argued that statements made during an IPR proceeding could not be used to support a finding of prosecution disclaimer. Alternatively, Aylus argued that its statements did not constitute a clear and unmistakable disclaimer of claim scope.

Threshold issue. The court first had to resolve an issue of first impression for the Federal Circuit: whether statements made by a patent owner during an IPR proceeding could be relied on to support a finding of prosecution disclaimer during claim construction. The doctrine of prosecution history disclaimer precluded patentees from recapturing, through claim interpretation, specific meanings that were disclaimed during prosecution, the court explained. In this case, the Federal Circuit concluded that Aylus’s statements could indeed be relied on to support a finding of prosecution disclaimer.

The doctrine arose in the context of pre-issuance prosecution, but the court noted that it had applied the doctrine in post-issuance USPTO proceedings. The court had, for example, applied the doctrine based on statements that were made during reissue proceedings. Similarly, it had applied the doctrine based on statements that were made in reexamination proceedings. Accordingly, the court concluded that the doctrine was applicable in IPR proceedings before the USPTO.

In the court’s view, extending the prosecution disclaimer doctrine to IPR proceedings would "ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers." In keeping with the underlying purposes of the doctrine, that extension would "promote[] the public notice function of the intrinsic evidence and protect[] the public’s reliance on definitive statements made during" IPR proceedings.

Because an IPR proceeding involved the reexamination of an administrative grant of a patent, it followed that statements made by a patent owner during an IPR proceeding could be considered during claim construction and relied on to support a finding of prosecution disclaimer, the court explained. To invoke the doctrine of prosecution disclaimer, however, those statements had to be "both clear and unmistakable."

Aylus’s statements. Aylus argued that its statements were made in a preliminary response—before the Board had issued its institution decision—and thus were not part of the IPR proceeding. The Federal Circuit disagreed. In the court’s view, a patent owner’s preliminary response filed prior to an institution decision and a patent owner’s response filed after institution were both official papers that were filed with the USPTO and made available to the public.

In both types of papers, the patent owner could define claim terms and otherwise make representations about claim scope to avoid prior art for the purpose of either: (1) demonstrating that there was not a reasonable likelihood that the claims were unpatentable on the asserted grounds or (2) demonstrating that the challenger had not shown by a preponderance of the evidence that the claims were unpatentable on the asserted grounds. Regardless of when the statements were made, the public was entitled to rely on them to determine a course of lawful conduct, such as launching a new product or designing around a patented invention.

For those reasons, the court found that statements made by a patent owner during an IPR proceeding, whether they were made before or after an institution decision, could be: (1) considered for claim construction and (2) relied on to support a finding of prosecution disclaimer.

Clear and unmistakable surrender of claim scope. The court considered whether Aylus’s statements constituted a "clear and unmistakable surrender of claim scope." Aylus argued that they did not, but the Federal Circuit disagreed.

In relying on Aylus’s statements to the Board during IPR, the district court concluded that Claims 2 and 21 required that the CPP logic alone was invoked to negotiate media content delivery between the MS and the MR, in contrast to Claims 1 and 20, which required both the CP and the CPP to negotiate such delivery.

The Federal Circuit found that Aylus’s statements to the Board during IPR was a "clear and unmistakable surrender of methods invoking the CP logic" in the negotiation of media content delivery between the MS and the MR "if the MS and MR are both in communication with the UE via a local wireless network." In the Federal Circuit’s view, Aylus’s repeated statements that claims 2 and 21 required that "only the control point proxy logic[] be invoked," and that "only ‘the CPP is invoked,’" represented an unequivocal and unambiguous disavowal of the CP logic’s invocation. Based on that disclaimer, the Federal Circuit found no error in the district court’s claim construction. Moreover, the patent’s specification and claim language were consistent with, and further supported, the claim construction.

For all of those reasons, the appellate court affirmed the district court’s claim construction and affirmed the grant of summary judgment of non-infringement to Apple.

The case is No. 2016-1599.

Attorneys: Amardeep Lal Thakur (Quinn, Emanuel, Urquhart & Sullivan, LLP) for Aylus Networks, Inc. Mark D. Fowler (DLA Piper US LLP) for Apple Inc.

Companies: Aylus Networks, Inc.; Apple Inc.

MainStory: TopStory Patent FedCirNews

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