Yesterday, in the precedential opinion, Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (May 11, 2017 Fed. Cir.), a panel of the Federal Circuit upheld the lower court’s summary judgment of non-infringement based on a claim construction that included a prosecution disclaimer. In an issue of first impression for the Court, the panel held that a patent owner’s statements made during an inter partes review proceeding (IPR) can be relied on to support a finding of prosecution disclaimer. See Opinion at 8.
The Aylus decision adds to the strategic justifications for using an IPR in defending a claim of patent infringement. Not only may a defending party hope to invalidate the asserted claims using an IPR proceeding, but may now also (or in the alternative) hope to obtain favorable prosecution history that narrows the scope of the asserted claims.