Federal Circuit No. 2016-1599 (Fed. Cir. May 11, 2017)
In Aylus Networks, Inc. v. Apple Inc. (Fed. Cir. No. 2016-1599, May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.
The Federal Circuit explained that because prosecution disclaimer is applied to i) pre-issuance prosecution, ii) reissue applications and ii) reexamination applications, “[i]t follows that we should apply the doctrine in IPR proceedings before the PTO. Extending the prosecution disclaimer doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain their patentability and in a different way against accused infringers.”
The patent at issue is directed to a method of controlling and delivering media content from a media server (MS) to a media renderer (MR) utilizing a wide area IP Multimedia Subsystem (IMS) network for control. Specifically, the claims (claims 2 and 21 depending from claims 1 and 20, respectively) at issue describe an embodiment where a control point (CP) is located in a wide area network via a service provider and a control proxy point (CPP) is located within a user premise thereby the method invokes the CPP logic and the CP logic to cooperatively negotiate media content delivery if one of the MS and MR are not in communication with an user endpoint (UE) via a local wireless network while the method invokes the CPP logic if the MS and MR are both in communication with the UE.
In the court below, the district court construed the limitation of the claims 2 and 21 at issue to require 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 negotiate media content delivery. In construing the limitation of claims 2 and 21, the district court relied on statements made by Aylus in its preliminary responses to Apple’s petitions for IPR of the ’412 patent, finding the statements “akin to prosecution disclaimer.”
The Federal Circuit held that because the patent owner (Aylus) explained that the claims at issue “require that only the control point logic (or only the control point proxy logic) be invoked if it is determined that neither (or both) the MS or the MR are in communication with the UE via the local wireless network” during their preliminary response in the IPR proceeding, prosecution disclaimer indeed applies and agreed with the district court’s claim construction.
Mr. Chon is a member of the firm’s Electrical/Mechanical Patent group. Mr. Chon’s practice focuses on the preparation of the Mechanical patent applications as well as the prosecution of these applications before the U. S Patent and Trademark Office.
Mr. Chon was previously employed with Pratt & Whitney, a United Technology Corporation Company, and he has more than 10 years of aerospace industry experience in engineering, strategy / business development and operations. His roles have included Joint Strike Fighter F-135 Senior Engineer, Commercial Engines (CE) Technology Licensing Specialist, CE Joint Ventures and Partnerships Specialist and Operations Export Compliance Manager.
Mr. Chon is an inventor listed on several patents in the art of gas turbine airfoil design.
On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas under 35 U.S.C. § 101.
US Patent No. 8,660,88 (the ‘888 patent) is directed to a system, method, and computer-readable medium for evaluating a relative market value of a cattle sale group. In the PGR, the Petitioner relied on two grounds that are not available in an Inter-Parties Review (IPR) proceeding.
The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents. While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method (“CBM”) patents is another mechanism for reviewing validity. Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the petitioner more bases for review than in an IPR.
Analyzing AIA reviews of Orange Book-listed patents to date – strategic considerations in filing and conducting AIA review proceedings
Attorneys from Sughrue Mion and other international law firms recently participated in the annual Symposium for Managing Pharmaceutical, Biotechnology and Chemical Patent Portfolios, hosted by the Institute of Intellectual Property Research and Development. As a member of the group from Sughrue Mion, I presented two lectures – one on strategic considerations in deciding whether to file AIA reviews of pharmaceutical patents (i.e., patents listed in the Orange Book), and a second on strategies and pitfalls in conducting an inter partes review of a pharmaceutical patent, including analysis of each of the unique final written decisions to date.
On April 29, 2015, the Judiciary Committee of the Senate introduced an anti-patent troll bill (Protecting American Talent and ENTrepreneurship Act — or PATENT Act — S.1137). The Senate bill is very different from a competing bill that was introduced by the House of Representatives in February. Focusing on patent office trials, highlights from the bill are:
Like the House bill, the Senate bill would reduce the estoppel provision for a PGR petitioner. This would-allow patent challengers to start PGR proceedings without the substantial “chilling” effect of not knowing how far estoppel would apply, should the PGR prove unsuccessful.
House Reintroduces Bill that would Eliminate BRI standard in IPR and PGR Proceedings one day after Federal Circuit finds BRI standard is proper
On February 5, 2015, the Judiciary Committee of the House of Representatives’ re-introduced an anti-patent troll bill (Innovation Act of 2015, H.R. 9). This bill is essentially the same as the bill that was passed by Congress in December, 2013 but stalled in the Senate.
The Central Reexamination Unit (“CRU”) appears to be at odds with the Board of Patent Trial and Appeal Board (“PTAB”) with respect to a Patent Owner’s ability to amend or add claims in an ex parte reexamination proceeding filed during an inter partes review (“IPR”) proceeding. In Game Show Network, LLC et al. v. Stephenson, IPR 2013-00289 (Paper No. 31), the PTAB denied the Petitioner’s request to terminate an ex parte reexamination (“reexam”) stating that nothing in AIA prohibits Patent Owner from filing a reexam to amend claims at issue in a concurrent IPR. On the same day as the PTAB decision, the CRU denied the request to institute reexam, expressing that statements from the PTAB appear to be “contrary to established Office policy.” See USSN 90/013,148, Decision dated 3/21/2014.
On November 20, 2013, the House Judiciary Committee passed an anti-patent troll bill (Innovation Act of 2013, H.R. 3309). As discussed in our previous post, most of the provisions are directed towards discouraging patent trolls from filing federal district court infringement actions. However, there are a few provisions that would affect inter partes review (IPR) and post grant review (PGR).
The Board’s requirements for amending a claim in inter partes review impose significant limitations for a Patent Owner as compared to conventional patent prosecution, reissue proceedings, or ex parte reexamination. The Board’s recent decisions have discussed many of the requirements set forth in 37 C.F.R. 42.121, making clear that there are substantial limitations on the Patent Owner’s ability to amend its claims during inter partes review.