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Aylus Networks, Inc. v. Apple Inc.

Statements in IPR Preliminary Response Lead to Prosecution Disclaimer

Aylus Networks, Inc. v. Apple Inc., (Fed. Cir. May 11, 2017) (Moore, Linn, STOLL) (N.D. Cal.: Chen) (4 of 5 stars)

Fed Cir affirms summary judgment of noninfringement. The district court did not err in concluding that Aylus’s statements during IPR could be relied on to support a finding of prosecution disclaimer. The opinion reviews a number of cases applying prosecution disclaimer in other post-issuance proceedings. “It follows that we should apply the doctrine in IPR proceedings[.]” Op. at 10. Citing Cuozzo, the opinion rejects Aylus’s argument that statements in IPR should receive different treatment under Aylus’s characterization that IPR is “adjudicative,” not administrative. IPR extended from the IPRx process, but did not change that process’s basic administrative character.

The district court also did not err in concluding that statements in an preliminary response may lead to prosecution disclaimer. Although, per Shaw, 817 F.3d 1293 (Fed. Cir. 2016), an IPR does not begin until instituted, “we find the differences between the two phases of an IPR to be a distinction without a difference.” Op. at 13. Statements in the preliminary response are part of the public record, and the public may rely on them.

The district court also did not err in finding that Aylus had made clear, unmistakable disclaimers of claim scope. This part of the discussion is fact-specific.

KEYWORDS: INTER PARTES REVIEW; PROSECUTION HISTORY DISCLAIMER (YES); NONINFRINGEMENT (YES)