Federal Circuit No. 2016-1599 (Fed. Cir. May 11, 2017)

In Aylus Networks, Inc. v. Apple Inc. (Fed. Cir. No. 2016-1599, 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 considered for claim construction and relied upon to support a finding of prosecution disclaimer.

The Federal Circuit explained that because prosecution disclaimer is applied to i) pre-issuance prosecution, ii) reissue applications and ii) reexamination applications, “[i]t follows that we should apply the doctrine in IPR proceedings before the PTO. Extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers.”

The patent at issue is directed to a method of controlling and delivering media content from a media server (MS) to a media renderer (MR) utilizing a wide area IP Multimedia Subsystem (IMS) network for control. Specifically, the claims (claims 2 and 21 depending from claims 1 and 20, respectively) at issue describe an embodiment where a control point (CP) is located in a wide area network via a service provider and a control proxy point (CPP) is located within a user premise thereby the method invokes the CPP logic and the CP logic to cooperatively negotiate media content delivery if one of the MS and MR are not in communication with an user endpoint (UE) via a local wireless network while the method invokes the CPP logic if the MS and MR are both in communication with the UE.

In the court below, the district court construed the limitation of the claims 2 and 21 at issue 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. In construing the limitation of claims 2 and 21, the district court relied on statements made by Aylus in its preliminary responses to Apple’s petitions for IPR of the ’412 patent, finding the statements “akin to prosecution disclaimer.”

The Federal Circuit held that because the patent owner (Aylus) explained that the claims at issue “require that only the control point logic (or only the control point proxy logic) be invoked if it is determined that neither (or both) the MS or the MR are in communication with the UE via the local wireless network” during their preliminary response in the IPR proceeding, prosecution disclaimer indeed applies and agreed with the district court’s claim construction.