Docket No. 2016-1599
MOORE, LINN, STOLL
May 11, 2017
Brief Summary: DC grant of SJ on non-infringement to Apple affirmed since “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 long as the same are “both clear and unmistakable”.
Summary: Aylus appealed DC grant of SJ that Apple does not infringe the asserted claims of US RE 44,412 related to methods for “controlling and delivering media content from a media server (MS) to a media renderer (MR)”. The contested limitation “wherein the CPP [control point proxy] logic is invoked to negotiate media content delivery between the MS and the MR” appears in dependent claim 2 and which Apple claims it does not practice. After Aylus sued for infringement, Apple filed two IPRs, one challenging certain claims (including claim 2) which was denied and the other challenging all of the claims which was denied as to claims 2, 4, 21 and 23. Aylus then file a notice of voluntary dismissal of its claims except as to claims 2, 4, 21 and 23. In granting Apple SJ, the DC construed the contested limitation as “require[ing] that only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, in contrast to claims 1 and 20 which require both the CP and CPP” to do the same. The FC panel reviews “the ‘ultimate interpretation’ of a claim term” and intrinsic evidence de novo (Teva, US 2015) and “[s]ubsidiary factual determinations based on extrinsic evidence…for clear error” (Info-Hold, FC 2015). And “claim terms are to be given their ordinary and customary meaning” which may include consideration of the prosecution history (Phillips, FC 2005; Aventis Pharm., FC 2013; SAS Inst., FC 2016; Southwall Techs., FC 1995 (“ensures that claims are not ‘construed one way in order to obtain their allowance and in a different way against accused infringers”)). A key question here relates to the DC’s reliance on Aylus’s statement made during the IPR as “akin to prosecution disclaimer”, which Aylus argued was improper. The FC panel disagreed, finding 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” as long as the same are “both clear and unmistakable” (Omega Eng’g, FC 2003; Biogen, FC 2013 (“when a prosecution argument is subject to more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable disclaimer”)). It explained that it has “applied the doctrine in other post-issuance proceedings before the PTO” (Standard Oil, FC 1998 (reissue/reexamination); Kripplez, FC 2012 (reexamination)), and in its Cuozzo decision SCOTUS “recognized that an IPR proceeding involves the reexamination of a patent.” Aylus also argued its statements were not part of an IPR proceeding because they were made in a preliminary response before the Board issues its institution decision” but the FC panel disagreed, finding “the differences between the two phases of an IPR” (decision to institute and proceeding/decision) “to be a distinction without a difference” since both the preliminary response and the response are “public papers filed with the PTO and made available to the public” in which “the patent owner can define claim terms and otherwise make representations about claim scope”. Aylus also argued its statements did not “constitute a clear and unmistakable surrender of claim scope” but the FC panel disagreed given Aylus’s “repeated statements that claims 2 and 21 ‘require that…only the [CPP] be invoked”. Thus, the DC decision was affirmed.