In a recent decision, the Northern District of California decided that a patent owner’s submissions in an inter partes review constituted a prosecution disclaimer for claim construction purposes. Based in part on prosecution estoppel, the court found on summary judgement that the defendant did not infringe the patent. The court stated the following:
[T]his distinction [of the claim terms] is confirmed by Aylus’s preliminary responses to Apple’s inter partes review petitions of the ‘412 patent and the PTAB’s adjudication of the petition. In this regard, Aylus’s statements are akin to a prosecution disclaimer. Under that doctrine, “[t]he patentee is held to what he declares during the prosecution of his patent.” Page 8.
The court supported this conclusion by pointing out that other courts in the Northern District have also held that inter partes review proceedings can result in prosecution estoppel:
Other courts in this District have noted that prosecution disclaimer has viability in in partes review proceedings, even though such proceedings are technically an adjudicative proceeding rather than an examination. See, e.g., Evolutionary Intelligence, LLC v. Spring Nextel Corp., No. C-13-4513, 2014 U.S. Dist. LEXIS 139066, at *20 (N.D. Cal. Sept. 26, 2014) (“The IPR proceedings will also add to the ‘536 Patent’s prosecution history. Prosecution history is an important part of the intrinsic record relevant to claim construction.”); Pragmatus AV, LLC v. Yahoo! Inc., No. C-13-cv-1176 EMC, 2014 U.S. Dist. LEXIS 65813, at *14-15 (N.D. Cal. May 13, 2014) (“Under Federal Circuit law, comments made by a patent holder during inter partes reexamination proceedings can limit claim scope. The same should be true now that inter partes review, rather than inter partes reexamination, is in effect.”); Samuels v. TriVascular Corp., No. 13-cv-2261-EMC, 2015 U.S. Dist. LEXIS 153437, at *16-17 n.3 (N.D. Cal. Nov. 12, 2015) (same). Footnote page 8.
Though, arguably, inter partes review and inter partes reexamination proceedings are inherently very different.
Has anyone run into this issue in other District Courts?
The case is Aylus Networks, Inc. v. Apple Inc., 3-13-cv-04700 (N.D. Cal. January 21, 2016, Order) (Chen, J.).
Hat tip to Docket Navigator for highlighting this case.
Image courtesy Pixabay.
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