Aylus Networks, Inc. (“Aylus”) owns the ’412 patent, which “provides systems and methods for implementing digital home networks having a control point located on a wide area network.” The patent teaches various network architectures for streaming and displaying media content using combinations of networked components. These networked components include: (1) a media server (“MS”); (2) a media renderer (“MR”); (3) a control point (“CP”) logic that includes logic to negotiate media content delivery with at least one of an MS and an MR; and (4) control point proxy (“CPP”) logic.
Aylus sued Apple for infringement of the ’412 patent. Apple filed two separate petitions for IPR with the Patent Trial and Appeal Board (the “Board”), each challenging different claims of the ’412 patent. The Board instituted an IPR on all claims of the ’412 patent, except claims 2, 4, 21, and 23. Following institution, Aylus filed notice of voluntary dismissal in the district court, dismissing with prejudice its infringement contentions as to all of the asserted claims, except claims 2 and 21. Apple then filed a motion for summary judgment, arguing that it does not practice the limitation “wherein the CPP logic is invoked to negotiate media content delivery between the MS and the MR.” The district court construed this limitation in claims 2 and 21 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.”
The Court first addressed whether statements made by a patent owner during an IPR can support a finding of prosecution disclaimer during claim construction. It explained that “when the patentee unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered.” Such disclaimer can occur through amendment or argument. Prosecution has become “a fundamental precept in

[the Court’s] claim construction jurisprudence” which “promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Prosecution disclaimer ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers. It reasoned that this extension will promote the public notice function of the intrinsic evidence and protect the public’s reliance on definitive statements made during IPR proceedings.

The Court rejected this argument, invoking Cuozzo Speed Technologies, LLC v. Lee. In Cuozzo, the Supreme Court recognized that an IPR involves the reexamination of a patent. Supreme Court explained that, in some “significant respects, inter partes review is less like a judicial proceeding and more like a specialized agency proceeding.” For example, (1) parties that initiate an IPR need not have a concrete stake in the outcome; (2) a petition is not required to remain in an IPR, and the PTO may continue to conduct an IPR after a petitioner has settled; (3) the PTO can intervene in a later judicial proceeding to defend its decision; and (4) unpatentability in an IPR must be established by a preponderance of the evidence, whereas invalidity in a district court must be established by clear and convincing evidence.
Aylus also argued that its statements were not part of an IPR proceeding because they were made in a preliminary response, before the Board issued its institution decision. The Court again disagreed. While an “IPR does not begin until it is instituted,” the differences between the two phases of an IPR are immaterial for purposes of prosecution disclaimer. A patent owner’s preliminary response filed prior to an institution decision and a patent owner’s response filed after institution are both official papers filed with the PTO and made available to the public. In both, the patent owner can define claim terms and make representations about claim scope.
Finally, the Court considered whether Aylus’s statements constitute a clear and unmistakable surrender of claim scope. Apple filed two IPR petitions and Aylus filed a preliminary response in each proceeding. Aylus told the PTO that there were “a number of substantial differences between the challenged claims and the asserted references.” Aylus stated that “the challenged claims require selectively invoking the CP logic and/or CPP logic based on whether the MS and/or MR can communicate with the UE [user endpoint device] through the local network” (emphasis added)
Aylus argued that these statements are not a clear and unmistakable surrender of claim scope because they “can reasonably be interpreted to mean that ‘only’ the CPP logic is required to be invoked in those claims—not that the CP logic is precluded from being invoked.” It further argued that this interpretation is best understood in the context of surrounding statements. The Court explained that it has held that “when a prosecution argument is subject to more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable disclaimer.” However, it found that Aylus’s interpretation was not reasonable. The surrounding statements did not change the plain meaning of Aylus’s disavowing statements.