{"id":1554,"date":"2017-05-11T12:49:30","date_gmt":"2017-05-11T16:49:30","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1554"},"modified":"2017-05-21T13:16:26","modified_gmt":"2017-05-21T17:16:26","slug":"patent-owner-statements-during-an-ipr-disclaimed-claim-scope","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1554","title":{"rendered":"Patent Owner Statements During an IPR Disclaimed Claim Scope"},"content":{"rendered":"

In Aylus Networks, Inc., v. Apple<\/a>, [2016-1599] (May 11, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE 44,412 on systems and methods for\u00a0implementing digital home networks having a control\u00a0point located on a wide area network.<\/p>\n

Apple argued that it did not practice the claim requirement\u00a0\u201cwherein the CPP logic is invoked to negotiate media\u00a0content delivery between the MS and the MR\u201d recited in the two asserted claims 2 and 21. \u00a0Apple argued that this language required\u00a0that only the CPP\u00a0logic is invoked to negotiate media content delivery between\u00a0the MS and the MR, and based upon this construction the district court granted summary judgment.<\/p>\n

In construing the \u201cwherein the CPP logic is invoked to\u00a0negotiate media content delivery between the MS and the\u00a0MR\u201d limitation, the district court relied on statements\u00a0made by Aylus in its preliminary responses to Apple\u2019s\u00a0petitions for IPR of the \u2019412 patent, finding these \u00a0statements
\n\u201cakin to prosecution disclaimer.\u201d \u00a0On appeal\u00a0Aylus argued that\u00a0statements made during an IPR cannot be relied on to\u00a0support a finding of prosecution disclaimer, and that even if they can, the statements it made did not constitute a\u00a0clear and unmistakable disclaimer of claim scope.<\/p>\n

The Federal Circuit rejected Aylus’s first argument, holding that statements made by a patent\u00a0owner during an IPR proceeding can<\/em> be relied on to support\u00a0a finding of prosecution disclaimer during claim\u00a0construction. \u00a0After briefly reviewing the disclaimer doctrine, and noting that disclaimer have been applied in post-issuance proceedings before the patent office, such as reissues and reexaminations, the Federal Circuit said that extending the prosecution\u00a0disclaimer doctrine to IPR proceedings will ensure that\u00a0claims are not argued one way in order to maintain their\u00a0patentability and in a different way against accused
\ninfringers. \u00a0The Federal Circuit noted that several district courts have already held that statements in an IPR can be considered for prosecution disclaimer. \u00a0The Federal Circuit also rejected Aylus argument that statements in a Patent Owner’s Preliminary Response don’t count as a disclaimer because they are made pre-institution.<\/p>\n

The Federal Circuit then turned to the question of whether Aylus’s statements in the IPR were sufficiently “clear and unmistakable.” \u00a0After examining the statements themselves, and the fact that the statements worked — avoiding IPR for the subject claims — the Federal Circuit\u00a0agreed with the district court that the statements represent
\nan unequivocal and unambiguous disavowal, and found no
\nerror in the district court\u2019s claim construction.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Aylus Networks, Inc., v. Apple, [2016-1599] (May 11, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE 44,412 on systems and methods for\u00a0implementing digital home networks having a control\u00a0point located on a wide area … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,26],"tags":[],"class_list":["post-1554","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1554","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1554"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1554\/revisions"}],"predecessor-version":[{"id":1555,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1554\/revisions\/1555"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1554"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1554"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1554"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}