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Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings.  The Court explained that extending the doctrine to cover patent owner statements, made either before or after institution of an IPR, ensures that claims are not argued in one way to maintain patentability and a different way to support infringement allegations.  The Court also noted that its conclusion promotes the public notice function of intrinsic evidence and protects the public’s reliance on statements made during IPR proceedings.

By way of context, the doctrine of prosecution disclaimer prevents patent owners from recapturing claim meanings disclaimed during prosecution through later claim interpretation.  The disclaiming actions or statements made during prosecution must be both clear and unmistakable in order for prosecution disclaimer to apply—only when a patentee clearly and unmistakably disavows a certain meaning in order to obtain a patent is the claim narrowed consistent with the patent owner’s disavowal.  This doctrine allows competitors to rely on statements made during prosecution when determining a course of conduct, for example, when designing or launching new products.

The doctrine originally arose in the context of pre-issuance patent prosecution.  However, it was later applied to statements made during reissue and reexamination proceedings.  The Court found that extending the doctrine to statements made during IPR proceedings naturally flowed from these previous applications. In doing so, the Court rejected two arguments made by Aylus: (1) that an IPR proceeding is adjudicative rather than administrative, and therefore statements made during an IPR proceeding are unlike those made in reissue or reexamination proceedings; and (2) the statements at issue in Aylus v. Apple were not part of an IPR “proceeding” because they were made in a preliminary response.

In dismissing the first argument, the Court found that, because an IPR proceeding involves the reexamination of an earlier patent grant by an administrative body, it follows that statements made during the course of IPR proceedings can be used during claim construction.   Second, though the Court has previously said that an IPR does not begin until it is instituted, for purposes of prosecution disclaimer the differences between the decision on institution and the proceeding itself are immaterial.  Papers filed before and after institutions are official, public documents in which patent owners can define claim terms and make representations about claim scope.  Regardless of whether filed before or after institution, the Court noted that the public is entitled to rely on representations made by patent owners in these official, public documents.  For these reasons, the Court found that prosecution disclaimer applied to IPR proceedings regardless of which point in the IPR the statements were made.

As a result, patent owners in the future must take care in arguments to the Patent Trial and Appeal Board (PTAB) during IPRs, even in their Patent Owner’s Initial Response to the Petition, in order to ensure they are not unintentionally limiting the scope of patent claims. Failing to take such care may undermine existing or future patent infringement actions.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VII, Number 137


About this Author

 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence

Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual...

Tiffany Knapp, Mintz Levin Law Firm, Intellectual Property Attorney

Tiffany concentrates her practice on intellectual property litigation, with an emphasis on patent cases. She uses her background in computer science and mathematics to help clients in matters at the International Trade Commission and in Federal District Courts.

Prior to joining Mintz as an Associate, Tiffany was a law clerk to Clerk Joseph Stanton of the Massachusetts Appeals Court. During her last year in law school, prior to graduation, Tiffany worked as an Intern to Mintz’s IP practice. She assisted with the preparation of and research for documents to help clients strategize the use of their patent portfolio, such as a market-specific patent litigation and damages awards report. Tiffany researched effects of Supreme Court decisions and the America Invents Act on the rights and litigation strategies of patent holders, and prepared memoranda and drafted publications related to the development of standard setting organizations and their impact on patent policies.

Tiffany was involved with the New England Law Review while earning her degree at New England Law as an associate member and later as the Executive Online Editor and a published author. Tiffany was also a research assistant for Trademark matters while attending New England Law.