Aylus v. Apple: IPR Statements Can Limit Claim Scope
By David R. Mika
In Aylus Networks, Inc. v. Apple Inc.
, No. 2016-1599 (Fed. Cir. May 11, 2007), the Federal Circuit recently held that prosecution disclaimer applies to statements made by a patent owner during the course of inter partes review (IPR). As a result, such statements can be used during later claim construction proceedings to provide meaning to claim terms and ultimately limit or otherwise define claim scope.
Introduced as part of the America Invents Act, IPRs provide parties with a way to challenge issued patents within the Patent Office rather than a Federal court. Since their introduction, IPRs have steadily gained in popularity due in large part to the high rates at which IPRs have resulted in invalidation of challenged patent claims. From the petitioner’s perspective, the adversarial nature of IPR proceedings also often requires patent owners to adopt and defend relatively definitive positions regarding claim language and prior art as compared to normal prosecution. However, the strength of claims that survive an IPR challenge can be significantly bolstered by statutory estoppel provisions that preclude arguments for invalidity based on grounds that were raised or could have been raised during the IPR in later Patent Office, Federal court, or International Trade Commission proceedings.
At issue in Aylus
was whether statements made by a patent owner during the course of an IPR proceeding give rise to prosecution disclaimer. The doctrine of prosecution disclaimer provides that “clear and unmistakable” statements made by a patent owner during the course of normal prosecution regarding claim language can be used to interpret and often limit the scope of the claims during later litigation. The effects of prosecution disclaimer may also extend from a parent patent to continuation and divisional applications derived from the parent patent and, as a result, can potentially affect claim interpretation and claim scope for some or all of a given priority chain. The underlying policy of the doctrine is to prevent a patent owner from arguing for a first interpretation of the claims to obtain a patent and a second, often broader or otherwise different interpretation of the same claims during enforcement. Allowing a patent owner to do so would upset both the public notice function of a patent’s prosecution history and the public’s reasonable reliance on definitive statements made by the patent owner regarding the claims.
In support of finding that prosecution disclaimer applies to IPR proceedings, the Federal Circuit pointed to previous decision in which prosecution disclaimer was applied to statements made during analogous reexamination and reissue proceedings. The Federal Circuit’s position was consistent with those of multiple district courts that previously found statements made during IPR proceedings to carry claim-limiting effects. Notably, the Federal Circuit also explained that prosecution disclaimer even applies to preliminary responses by the patent owner submitted prior to the Patent Trial and Appeal Board’s decision to institute an IPR. Ultimately, the Federal Circuit held that Aylus’ repeated characterization of certain claim elements as being “required” and identification of certain claimed processes as being fundamental to the claimed invention were sufficiently clear to give rise to prosecution disclaimer.
In confirming the application of prosecution disclaimer to IPR proceedings, the Federal Circuit reinforced the importance and impact of IPRs on concurrent and subsequent litigation. In light of Aylus
, accused infringers may now clearly use the IPR process to invalidate patent claims but also to compel patent owners to take more definitive claim construction positions. In contrast, patent owners must be increasingly cautious of statements related to characterization of a patent’s claims made during IPR proceedings. As previously noted, prosecution disclaimer may extend from a challenged patent to continuation and divisional patents claiming priority to the challenged patent. As a result, patent owners should be particularly mindful when an IPR involves a foundational patent of a broader patent portfolio as statements made during the IPR may carry significant ramifications for the broader portfolio’s strength and value.
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