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IP Alert: Statements Made by Patent Owner During IPR Proceeding Can Support Prosecution Disclaimer

May 11, 2017

Today, in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit decided an issue of the first impression—whether statements made by a patent owner during an inter partes review proceeding can be subsequently relied upon to support a finding of prosecution disclaimer during claim construction. The court answered this question in the affirmative.

After Aylus sued Apple for infringement of U.S. Patent RE44,412, Apple petitioned for inter partes review. Aylus, in its preliminary response, made certain statements that Apple sought to rely on for prosecution disclaimer in the district court. The district court accepted Apple’s argument that Aylus’s statements were operative to disclaim certain subject matter and that Apple was entitled to summary judgment of noninfringement.

On appeal, the Federal Circuit affirmed. The court held that statements made by the patentee in an IPR proceeding, as in other types of post-grant proceedings, could operate as a disclaimer. The court explained that this rule ensures that claims are not argued one way in order to maintain their patentability before the U.S. Patent and Trademark Office and in a different way against accused infringers.

Aylus argued that statements made during an IPR proceeding are unlike those made during other types of post-grant proceedings because of the “adjudicative” nature of an IPR proceeding. The court rejected this contention, observing that an IPR proceeding involves reexamination of an earlier administrative grant of the patent. Aylus also argued that its statements were not part of the IPR proceeding because they were made in a preliminary response. The court rejected this contention as well, holding that the public was entitled to rely on Aylus’s representations regardless of when those statements were made during the course of the proceeding.

The court went on to agree with the district court that Aylus’s statements did operate as a disclaimer, and affirmed the grant of summary judgment in favor of Apple.

Today’s decision is not surprising, but serves as an important reminder to patentees when making arguments before the Patent Trial and Appeal Board in post-grant proceedings.

 

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