Even Preliminary Proceeding Arguments Notice the Public
It is well-established that statements made by a Patent Owner
during an inter partes review (IPR) can constitute
prosecution disclaimer— even in papers filed by a Patent
Owner before the trial. Aylus Networks, Inc. v. Apple
Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)
As a reminder, prosecution disclaimer prevents a patentee that
clearly and unmistakably disclaimed a certain meaning for its
patent claims during prosecution from recapturing this same meaning
during claim construction in a subsequent litigation. As was the
case in Aylus, Patent Owners are learning that the timing
of such a disclaimer, or lack of express adoption by the Patent
Trial & Appeal Board (PTAB), is of no moment.More recently, in F5 Networks, Inc. v.
Radware, Inc.,(CAND 2018-11-19, Order) (here) the Court considered the meaning of the
term "decision function." In deciding the meaning of this
term the Court reviewed the record of earlier
