Patent Owner's PTAB Statements May Constitute Prosecution Disclaimer: Federal Circuit | Practical Law

Patent Owner's PTAB Statements May Constitute Prosecution Disclaimer: Federal Circuit | Practical Law

In Aylus Networks, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit held, in an issue of first impression, that a patent owner's statements during an inter partes review may surrender claim scope under the doctrine of prosecution disclaimer, even if the statements were made before the review's institution in the patent owner's preliminary response.

Patent Owner's PTAB Statements May Constitute Prosecution Disclaimer: Federal Circuit

by Practical Law Intellectual Property & Technology
In Aylus Networks, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit held, in an issue of first impression, that a patent owner's statements during an inter partes review may surrender claim scope under the doctrine of prosecution disclaimer, even if the statements were made before the review's institution in the patent owner's preliminary response.
On May 11, 2017, in Aylus Networks, Inc. v. Apple Inc., the US Court of Appeals for the Federal Circuit held that a patent owner's remarks to the Patent Trial and Appeal Board concerning two petitions for inter partes review (IPR) can support a district court's finding of prosecution disclaimer during claim construction in a related lawsuit involving the same patent ( (Fed. Cir. May 11, 2017)).
Aylus Networks, Inc. owns Patent No. RE 44,412 ('412 patent), which relates to systems and methods for streaming and displaying media content between electronic devices on the same personal Wi-Fi network. Aylus claimed that Apple Inc.'s AirPlay feature infringed its '412 patent and sued in the US District Court for the Northern District of California. Apple responded by filing IPR petitions with the Patent Trial and Appeal Board (PTAB) challenging the '412 patent's validity.
In its preliminary responses to Apple's IPR petitions, Aylus distinguished the claimed invention from the asserted references and explained that the prior art did not disclose a limitation in claims 2 and 21 concerning an improved method for delivering media over a Wi-Fi network, which allegedly reduced the claimed invention's Wi-Fi usage. Based on Aylus' arguments, the PTAB declined to institute IPRs for claims 2 and 21.
After the PTAB's institution decision, Aylus withdrew all of its infringement claims before the district court except the infringement claims for claims 2 and 21. Apple then filed a motion for summary judgment of non-infringement and argued that it did not practice the claimed method for delivering media content. The district court granted Apple's motion and relied on Aylus' statements to the PTAB in its preliminary responses to the IPR petitions to adopt a limiting construction of the claimed media delivery method. Aylus appealed to the Federal Circuit and argued that the statements in its preliminary responses to Apple's IPR petitions cannot constitute a prosecution disclaimer of claim scope.
In an issue of first impression, the Federal Circuit ruled that:
  • A patent owner's statements to the PTAB may constitute prosecution disclaimer that limits a claim limitation's scope during claim construction.
  • Prosecution disclaimer still attaches even if a patent owner's statements in its preliminary responses occurred before the PTAB determined whether to institute the IPRs.
The Federal Circuit explained that:
  • The prosecution disclaimer doctrine ensures that a patent owner cannot construe a claim one way for validity and another way for infringement.
  • Courts have used patent owner statements in other administrative proceedings, such as reissues and reexaminations, to find prosecution disclaimers of claim scope.
  • While an IPR is adjudicative in nature, it has many aspects that make it more akin to a specialized administrative proceeding.
Aylus also argued that its statements were not a part of the IPR proceedings because they were made in preliminary responses before the PTAB decided whether to institute the IPRs. The Federal Circuit:
  • Admitted that it has previously stated that an IPR does not begin until it is instituted.
  • Reasoned that, for the purposes of prosecution disclaimer, a patent owner's statements have the same effect whether made before or after an IPR's institution.
Therefore, the Federal Circuit held that a patent owner's statements may be relied on to find prosecution disclaimer during claim construction regardless of when they occurred in the IPR proceeding, and affirmed the district court's grant of summary judgment.