Aylus Networks, Inc. v. Apple Inc.
856 F.3d 1353
| Fed. Cir. | 2017Background
- The ’412 patent claims methods for controlling media delivery in a home network using a wide area network control point (CP) and a user-end control point proxy (CPP); dependent claims 2 and 21 require that "the CPP logic is invoked to negotiate media content delivery between the MS and the MR" when both MS and MR are on a local wireless network.
- Aylus sued Apple for infringement; Apple petitioned for inter partes review (IPR) of the ’412 patent; the PTAB instituted some challenges but denied institution as to claims 2 and 21.
- Aylus filed preliminary responses in the IPRs distinguishing claims 2 and 21 by stating those claims require that only the CPP (and not the CP) be invoked when MS and MR both communicate with the UE via a local network.
- The district court construed the contested limitation to mean that only the CPP is invoked (excluding CP invocation) and granted summary judgment of noninfringement because Apple’s accused AirPlay did not meet that construction.
- On appeal the Federal Circuit addressed whether statements made by a patent owner during an IPR (including preliminary responses before institution) can create prosecution disclaimer and whether Aylus’s IPR statements amounted to a clear and unmistakable disclaimer.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether statements in an IPR (including preliminary responses) can give rise to prosecution disclaimer | Aylus: IPR statements are not prosecution history and cannot be used for disclaimer | Apple: IPR filings are part of PTO proceedings and can be relied on for disclaimer | Held: Yes; statements during IPR (before or after institution) can support prosecution disclaimer |
| Whether Aylus’s preliminary IPR statements clearly and unmistakably disclaimed invoking CP in claims 2 and 21 | Aylus: Its statements only meant CPP is required, not that CP is precluded; at most ambiguous | Apple: Aylus expressly said claims "require that only the CPP be invoked," disavowing CP involvement | Held: Aylus’s repeated statements were a clear and unmistakable surrender; disclaimer applied |
| Proper construction of the limitation "CPP logic is invoked to negotiate..." | Aylus: Should read in light of the specification and not bar CP invocation | Apple: Construction should exclude CP invocation as disclaimed | Held: Court adopted construction that claims 2 and 21 require only CPP invocation (no CP involvement) |
| Infringement under the court’s construction | Aylus: AirPlay practices the claimed limitation (implicit) | Apple: AirPlay does not meet the construction (no sole-CPP invocation) | Held: Summary judgment of noninfringement affirmed (Aylus conceded noninfringement under construction) |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (review standard: claim construction legal conclusion with subsidiary factual findings) (Supreme Court)
- Phillips v. AWH Corp., 415 F.3d 1303 (principles for giving claim terms their ordinary meaning to a person of skill) (Fed. Cir.)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (prosecution disclaimer requires clear and unmistakable disavowal) (Fed. Cir.)
- Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090 (clarifies standard that disclaimer must be unambiguous) (Fed. Cir.)
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (characterizes IPR as akin to PTO reexamination; supports treating IPR statements as prosecution history) (Supreme Court)