Thursday, May 11, 2017

Aylus loses appeal at CAFC in Apple case

The outcome

Aylus Networks, Inc. appeals the United States District Court for the Northern District of California’s grant of summary judgment finding that Apple Inc.’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. For the reasons below, we affirm.

The CAFC observed:

The “ultimate interpretation” of a claim term, as well as interpretations of “evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history),” are legal conclusions, reviewed by this court de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). “Subsidiary factual determinations based on extrinsic evidence are reviewed for clear error.” Info–Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265 (Fed. Cir. 2015) (citing Teva, 135 S. Ct. at 841). The purpose of claim construction is to give claim terms the meaning understood by a person of ordinary skill in the art at the time of invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “There is a heavy presumption that claim terms are to be given their ordinary and customary meaning.” Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013). “Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Phillips, 415 F.3d at 1321. A patent’s prosecution history, though generally “‘less useful for claim construction purposes’ than the claim language and written description, plays various roles in resolving uncertainties about claim scope.” SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1349 (Fed. Cir. 2016) (quoting Phillips, 415 F.3d at 1317).

A key legal determination:

We must initially determine an issue of first impression for this court: whether statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction. As explained below, we hold that they can.


This doctrine is deeply rooted in Supreme Court precedent. See, e.g., Roemer v. Peddie, 132 U.S. 313, 317 (1889). As the Supreme Court has explained, “when a patentee, on the rejection of his application, inserts in his specification, in consequence, limitations and restrictions for the purpose of obtaining his patent, he cannot after he has obtained it, claim that it shall be construed as it would have been construed if such limitations and restrictions were not contained in it.” Id. Over time, prosecution disclaimer has become “a fundamental precept in our claim construction jurisprudence,” which “promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, 334 F.3d at 1323–24. The doctrine is rooted in the understanding that “[c]ompetitors are entitled to rely on those representations when determining a course of lawful conduct, such as launching a new product or designing-around a patented invention.” Biogen, 713 F.3d at 1095. Similarly, we have explained that the prosecution history “provides evidence of how the [PTO] and the inventor understood the patent.” Id. (quoting Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (alteration in original)).

Ultimately, the doctrine of prosecution disclaimer ensures that claims are not “construed one way in order to obtain their allowance and in a different way against accused infringers.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).


We note that many district courts have addressed this issue and have likewise concluded that statements made by patent owners during an IPR can be considered for prosecution disclaimer. See Ilife Techs., Inc. v. Nintendo of Am., Inc., No. 3:13-cv-04987, 2017 WL 525708, at *7 (N.D. Tex. Feb. 9, 2017) (“[S]tatements during the IPR may be considered for prosecution disclaimer.”); Signal IP, Inc. v. Fiat U.S.A., Inc., No. 14-cv-13864, 2016 WL 5027595, at *16 (E.D. Mich. Sept. 20, 2016) (finding that “statements in the prosecution history, particularly during the recent IPR proceeding are unmistakable statements disavowing the plain and ordinary meaning of” a claim term).3 We endorse this conclusion.

Note also:

Aylus next argues that its statements were not part of an IPR proceeding because they were made in a preliminary response before the Board issued its institution decision. We disagree. An IPR proceeding is a two-step process: “the Director’s decision whether to institute a proceeding, followed (if the proceeding is instituted) by the Board’s conduct of the proceeding and decision with respect to patentability.” St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76 (Fed. Cir. 2014). We have said that an “IPR does not begin until it is instituted,” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016), but for the purposes of prosecution disclaimer, we find the differences between the two phases of an IPR to be a distinction without a difference. A patent owner’s preliminary response filed prior to an institution decision and a patent owner’s response filed after institution are both official papers filed with the PTO and made available to the public.


Post a Comment

<< Home