Earlier this year, 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.” Aylus Networks, Inc., v. Apple Inc., Appeal 2016-1599 (Fed. Cir. May 11, 2017). In so holding, the court affirmed the district court’s summary judgment that Apple Inc’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. Critical to the district court’s judgment was its claim construction of the limitation “wherein the CPP logic is invoked” to “require only the CPP logic is invoked.” (emphasis added). The Patent Owner’s arguments presented during the pre-institution phase of the IPR proceeding compelled the district court to construe the claim so narrowly that the court also concluded that the accused AirPlay feature does not infringe.
To understand how we got here, let’s rewind a bit. After Aylus sued Apple for infringement of the ’412 patent, Apple filed two IPR petitions challenging different claims of the ’412 patent. The Board refused to institute IPR on certain claims (including claims 2 and 21), but instituted on the other challenged claims. Following institution, Aylus dismissed infringement contentions as to all of the asserted claims except for claims 2 and 21. Apple then filed a motion for summary judgment of non-infringement of these two remaining claims.
Aylus attempted to persuade the PTAB to deny Apple’s IPR petitions, by stating in its optional preliminary response to the petitions that its patent claims were patentably different from the prior art because the claims require invoking only the referenced logic. The district court, finding those Aylus statements “akin to prosecution disclaimer,” accordingly construed the claims narrowly. The Federal Circuit agreed, determining that, similar to other post-issuance proceedings, such as reissue and reexamination, statements made by the patentee during IPRs may be relied on to support a finding of prosecution disclaimer.
Additionally, the Federal Circuit rejected Aylus’s argument that its statements made in its optional preliminary response are not a part of an IPR proceeding. A patent owner’s optional preliminary response and its post-institution response are both official papers filed with the PTO and made available to the public. In both cases, the patent owner can define claim terms and claim scope to avoid prior art for the purposes of demonstrating patentability. The public, according to the Court, is “entitled to rely on those representations when determining a course of lawful conduct, such as launching a new product or designing-around a patented invention.” Accordingly, the court concluded that for purposes of applying the doctrine of prosecution disclaimer it does not matter when during an IPR—either pre-institution or post-institution—the patent owner makes statements.
The application of the prosecution disclaimer doctrine in Aylus is not surprising. In a long line of cases, the court has applied the doctrine to other post-issuance proceedings. Perhaps the only interesting wrinkle here is that the court appears to contradict its statement in earlier cases that an “IPR does not begin until it is instituted.” Without that contradiction, the Patent Owner’s argument distinguishing pre-institution and post-institution statements may have carried the day.
 See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448 (Fed. Cir. 1985); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430 (Fed. Cir. 1988); Krippelz v. Ford Motor Co., 667 F.3d 1261 (Fed. Cir. 2012); Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d 1324 (Fed. Cir. 2011); In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011).
 See Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016).