Statements made in IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction

Shan Gong | July 5, 2017

Aylus Networks, Inc., v. Apple Inc.

May 11, 2017

Before Moore, Linn, and Stoll.  Opinion by Stoll.

Summary

Patent owner Aylus Networks, Inc. sued Apple Inc. in district court for infringement of the U.S. Patent No. RE 44,412 (“the ‘412 patent”). Apple filed two separate IPRs challenging validity of all the claims. PTAB denied to institute claim 2 based on Aylus’s explanation of a limitation to claim 2. During claim construction in district court, this same explanation is relied on to support a finding of prosecution disclaimer. CAFC affirmed the district court’s finding of prosecution history disclaimer. CAFC also stated that prosecution disclaimer applies whether a statement is made before or after instituting an IPR.

Details

The ‘412 patent is directed to systems and methods for implementing digital home networks having a control point located on a wide area network. The systems and methods provide users with video related services and file upload and download services which consumes more bandwidth than traditional services by using various wireless network technologies, such as Wifi and 3G wireless.

The system claim of claim 1 includes network elements: a media server (MS), a media renderer (MR), control point (CP) and control point proxy (CPP), as shown in the figure below. When users select a video to watch, CP and CPP are selectively invoked in the media content delivery negotiation process depending on the wireless local area network accessibility of the MS and MR. The claims at issue are claims 2 and 21. Claim 21 is substantially identical to claim 2. Claim 2 depends on claim 1, thus, claims 1 and 2 are recited as below:

 

 

 

 

 

 

 

 

Claim 1:

 1.  A method of controlling and delivering media content from a media server (MS) to a media renderer (MR) utilizing a wide area network for control, comprising the acts of:

provisioning a serving node in the wide area network with control point (CP) logic that includes logic to negotiate media content delivery with at least one of the MS and the MR, wherein the CP logic, MS, and MR resides outside of a user endpoint (UE) and the CP logic resides in the signaling domain and serves as a first proxy;

provisioning the UE of the wide area network with control point proxy (CPP) logic that includes (i) logic to negotiate media content delivery with at least one of the MS and the MR, (ii) logic to cooperate with CP logic to negotiate media content delivery between the MS and the MR, and (iii) video cassette recorder (VCR) controls to control a presentation of content provided by the MS and rendered by the MR, wherein the CPP logic resides in the UE and serves as a second proxy;

in response to a media content delivery request, determining a network context of the UE and a network connectivity of the MS and MR;

invoking the CPP logic and the CP logic to cooperatively negotiate media content delivery between the MS and the MR if one of the MS and MR are not in communication with the UE via a local wireless network; and

once media content delivery is negotiated, controlling a presentation of delivery via the VCR controls on the UE.

(emphasis added).

Claim 2:

 The method of claim 1, wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR if the MS and MR are both in communication with the UE via a local wireless network.

(emphasis added).

The question raised during claim construction is which element(s) (i.e., only CPP or also CP) is(are) invoked to negotiate media content delivery between the MR and MS when MS and MR are both in communication with the UE via a local wireless network. The district court construed the limitation in claim 2 as only the CPP is invoked based on Aylus preliminary response to Apple’s petition for IPR of the ‘412 patent and grant summary judgment of non-infringement of the claims. Aylus appealed.

Discussion:

Since the statement which is critical to understanding the limitations of the claim is made during IPR, CAFC started with the question of 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. CAFC concluded that statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction.

CAFC stated that prosecution disclaimer doctrine has been applied in pre-issuance proceeding, post-issuance proceeding including reissue and reexamination. The doctrine of prosecution disclaimer ensures that claims are not construed one way in order to obtain allowance and in a different way against accused infringers. Thus, it should be applied to IPR proceedings as well.

Aylus argued that statements made during an IPR proceeding is an adjudicative proceeding other than an administrative one. CAFC did not agree.

CAFC explained that an IPR proceeding, which was used to be called reexamination, offers a second look at an issued patent. The basic purpose of the proceedings did not change, though the name changed. CAFC also reasoned that since IPR involved reexamination of an earlier administrative grant of a patent, the statements made during an IPR proceeding can be relied on to support a finding of prosecution disclaimer.

Aylus argued that the statements were made before the board issued the decision to institute the IPR and thus should not be included in the IPR proceeding. CAFC disagrees.

Two steps are involved in an IPR proceeding: 1) the PTO director decides whether to institute a proceeding 2) if yes, then the board conducts the proceeding to decide if the claims are patentable. CAFC explained that the purpose of prosecution disclaimer is the same for both steps. Furthermore, papers submitted in these steps are made publicly available such that the public may have made decisions on product strategies based on these publications.

CAFC also decided whether this same statement made by Aylus constitutes a clear and unmistakable surrender of claim scope. The decision on the surrendering of claim scope followed Aylus’ preliminary response which distinguished claim 2 with claim 1. Aylus’s preliminary response to IPR explicitly stated that only CPP is invoked when it is determined that both the MS and MR are in communication with the UE via the local wireless network. In comparison, claim 1, as stated, required CPP and CP in a different scenario in which one of MS or MR is not in communication with UE via local wireless network. CAFC stated that it is a clear and unmistakable surrender of method invoking the CP logic as stated in claim 2. In addition, Aylus also explained that the objective of the design as such is to reduce the consumption of expensive wireless bandwidth in wide area network (e.g., 3G wireless) and to use local wireless network (e.g., WIFI) as much as possible. CAFC stated that Aylus’s explanation to its designed system architecture, especially the one in claim 2 is consistence with this objective.

CAFC also finds that the CP logic, as explained by Aylus, cannot be invoked for the method of claim 2 in an oral argument. The court also looked at the claim language and specification and found that they are consistent with District Court’s claim construction.

Takeaways

  • Statements made in IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction before and after IPR institution
  • When deciding whether a statement is a clear and unmistakable surrender of claim scope, the court will look at not only the claim at issue but also the context and the objective to see whether they are consistence with one another

Full Opinion

 

 

 

 

 

 

 

 

 

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