Federal Circuit Extends Prosecution Disclaimer To IPR Proceedings

The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution disclaimer in district court.

On May 11, the US Court of Appeals for the Federal Circuit addressed an issue of first impression: whether statements made by a patent owner during an inter partes review (IPR) proceeding can support a finding of prosecution disclaimer during claim construction in district court.¹

In Aylus Networks, Inc. v. Apple, Inc., 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 in district court.²