Beware Prosecution History in PTAB Trials

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…

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