Federal Circuit holds that patent owner’s statements can trigger prosecution disclaimers.

On May 11, 2017 in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit addressed for the first time whether statements made during an IPR proceeding may give rise to a prosecution disclaimer. Prosecution disclaimer is a claim construction doctrine that precludes patent owners from recapturing subject matter disclaimed either through claim amendment or the patentee’s statements during prosecution. Aylus held that statements made by a patent owner during an IPR proceeding, whether before or after institution, may support prosecution disclaimer.