  United States Court of Appeals
      for the Federal Circuit
                ______________________

              AYLUS NETWORKS, INC.,
                 Plaintiff-Appellant

                           v.

                    APPLE INC.,
                  Defendant-Appellee
                ______________________

                      2016-1599
                ______________________

   Appeal from the United States District Court for the
Northern District of California in No. 3:13-cv-04700-EMC,
Judge Edward M. Chen.
                 ______________________

                Decided: May 11, 2017
                ______________________

    AMARDEEP LAL THAKUR, Quinn Emanuel Urquhart &
Sullivan, LLP, Los Angeles, CA, argued for plaintiff-
appellant. Also represented by BRUCE R. ZISSER; JOSHUA
L. SOHN, Washington, DC.

    MARK D. FOWLER, DLA Piper US LLP, East Palo Alto,
CA, argued for defendant-appellee. Also represented by
ROBERT BUERGI, CHRISTINE K. CORBETT, ERIK RYAN
FUEHRER; STANLEY JOSEPH PANIKOWSKI, III, San Diego,
CA.
               ______________________
2                         AYLUS NETWORKS, INC.   v. APPLE INC.



       Before MOORE, LINN, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
     Aylus Networks, Inc. appeals the United States Dis-
trict Court for the Northern District of California’s grant
of summary judgment finding that Apple Inc.’s AirPlay
feature does not infringe the asserted claims of U.S.
Patent No. RE 44,412. For the reasons below, we affirm.
                        BACKGROUND
                             I.
     The ’412 patent “provides systems and methods for
implementing digital home networks having a control
point located on a wide area network.” ’412 patent col. 5
ll. 35–37. The specification explains that as bandwidth
provided by wireless networks increases, these networks,
such as 3G networks, “are now expected to provide broad-
cast content, video telephony, multimedia conferencing,
video streaming services, file upload and download ser-
vices, and interactive multimedia services.” Id. at col. 4
l. 60 – col. 5 l. 3. But the availability of network coverage
supporting these multimedia services is uneven, because
“[i]n some areas several networks may be available simul-
taneously that could be used by a handset, whereas in
other regions there may be insufficient coverage to sup-
port a given network service.” Id. at col. 5 ll. 4–8. The
specification also describes “an inherent disadvantage” to
using handsets due to their small screen sizes, which are
not amenable to long viewing periods or being jointly
viewed by multiple users. Id. at col. 5 ll. 14–24.
    To overcome these disadvantages, the patent teaches
various network architectures for streaming and display-
ing media content using combinations of networked
components. These networked components include: (1) a
media server (MS); (2) a media renderer (MR); (3) control
point (CP) logic that includes logic to negotiate media
AYLUS NETWORKS, INC.   v. APPLE INC.                      3



content delivery with at least one of an MS and an MR;
and (4) control point proxy (CPP) logic that includes:
   (i) logic to negotiate media content delivery with
   at least one of an MS and an MR, (ii) logic to coop-
   erate with CP logic to negotiate media content de-
   livery between an MS and an MR, and (iii) VCR
   controls to control a presentation of content pro-
   vided by the MS and rendered by the MR.
Id. at col. 5 ll. 56–62. In one embodiment, “[t]he control
point and control point proxies cooperatively negotiate
media delivery from a user-selected media server, such as
a home stereo or DVD player, to a user-selected media
renderer, such as a TV display or the display on a hand-
set.” Id. at col. 5 ll. 42–48.
    The specification further explains that when one of an
MS and an MR are not in communication with the user
endpoint device (“UE”) via a local wireless network, both
the CP logic and CPP logic are invoked to cooperatively
negotiate media content delivery between the MS and
MR. When both an MS and an MR are in communication
with the UE via a local wireless network, however, “[t]he
CPP logic is invoked to negotiate media content delivery
between” the MS and MR. Id. at col. 6 ll. 5–8. Finally,
when neither an MS nor an MR are in communication
with the UE via a local wireless network, “[t]he CP logic is
invoked to negotiate media content delivery between” the
MS and MR. Id. at col. 6 ll. 9–12.
   The architecture of the networked components of one
embodiment is depicted in Figure 12:
4                        AYLUS NETWORKS, INC.   v. APPLE INC.




 ’412 patent Fig. 12. Claims 2 and 21 are at issue in this
appeal. 1 Because claim 2 is dependent upon claim 1, we
reproduce both claims below:
        1. A method of controlling and delivering me-
    dia content from a media server (MS) to a media
    renderer (MR) utilizing a wide area network for
    control, comprising the acts of:
            provisioning a serving node in the
        wide area network with control point (CP)
        logic that includes logic to negotiate media
        content delivery with at least one of the
        MS and the MR, wherein the CP logic,
        MS, and MR resides outside of a user end-
        point (UE) and the CP logic resides in the


    1    Aylus concedes that asserted claim 21 “is substan-
tially identical to asserted claim 2 and contains the same
[contested] limitation.” Appellant Br. 10. For these
reasons, we only reproduce claim 2.
AYLUS NETWORKS, INC.   v. APPLE INC.                    5



       signaling domain and serves as a first
       proxy;
             provisioning the UE of the wide area
       network with control point proxy (CPP)
       logic that includes (i) logic to negotiate
       media content delivery with at least one of
       the MS and the MR, (ii) logic to cooperate
       with CP logic to negotiate media content
       delivery between the MS and the MR, and
       (iii) video cassette recorder (VCR) controls
       to control a presentation of content pro-
       vided by the MS and rendered by the MR,
       wherein the CPP logic resides in the UE
       and serves as a second proxy;
           in response to a media content deliv-
       ery request, determining a network con-
       text of the UE and a network connectivity
       of the MS and MR;
            invoking the CPP logic and the CP log-
       ic to cooperatively negotiate media content
       delivery between the MS and the MR if
       one of the MS and MR are not in commu-
       nication with the UE via a local wireless
       network; and
           once media content delivery is negoti-
       ated, controlling a presentation of delivery
       via the VCR controls on the UE.
       2. The method of claim 1, wherein the CPP log-
   ic is invoked to negotiate media content delivery
   between the MS and the MR if the MS and MR are
   both in communication with the UE via a local
   wireless network.
’412 patent col. 24 ll. 37–67 (contested limitation empha-
sized).
6                         AYLUS NETWORKS, INC.   v. APPLE INC.



                             II.
    Aylus sued Apple for infringement of the ’412 patent.
Apple then filed two separate petitions for inter partes
review with the Patent Trial and Appeal Board, each
challenging different claims of the ’412 patent. 2 The
Board instituted an IPR proceeding on the petition chal-
lenging all claims of the ’412 patent. But the Board
denied institution as to claims 2, 4, 21, and 23. Following
institution, Aylus filed a notice of voluntary dismissal in
the district court, dismissing with prejudice its infringe-
ment contentions as to all of the asserted claims, except
as to claims 2 and 21. Apple subsequently filed a motion
for summary judgment of noninfringement of claims 2
and 21, 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” recited in
both asserted claims.
    In its order on Apple’s summary judgment motion, the
district court construed the limitation “wherein the CPP
logic is invoked to negotiate media content delivery be-
tween the MS and the MR” to “require that only the CPP
logic is invoked to negotiate media content delivery be-
tween the MS and the MR, in contrast to claims 1 and 20
which require both the CP and CPP to negotiate media
content delivery.” Aylus Networks, Inc. v. Apple Inc., No.
13-cv-04700-EMC, 2016 WL 270387, at *6 (N.D. Cal. Jan.
21, 2016) (Summary Judgment Order). Based on this
construction, the district court granted summary judg-
ment of noninfringement of claims 2 and 21 of the ’412
patent. Id. at *7.



    2    One of Apple’s petitions challenged claims 1, 2, 5,
8, 9, 15, 20, 21, 27, 29, and 33 of the ’412 patent, on which
the Board did not institute. The other petition challenged
all claims of the ’412 patent.
AYLUS NETWORKS, INC.   v. APPLE INC.                      7



    Aylus appeals, disputing the district court’s construc-
tion of “wherein the CPP logic is invoked to negotiate
media content delivery between the MS and the MR” and
asserting that the district court erred in granting sum-
mary judgment of noninfringement of claims 2 and 21 of
the ’412 patent. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
                         DISCUSSION
    The “ultimate interpretation” of a claim term, as well
as interpretations of “evidence intrinsic to the patent (the
patent claims and specifications, along with the patent’s
prosecution history),” are legal conclusions, reviewed by
this court de novo. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015). “Subsidiary factual
determinations based on extrinsic evidence are reviewed
for clear error.” Info–Hold, Inc. v. Applied Media Techs.
Corp., 783 F.3d 1262, 1265 (Fed. Cir. 2015) (citing Teva,
135 S. Ct. at 841).
     The purpose of claim construction is to give claim
terms the meaning understood by a person of ordinary
skill in the art at the time of invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc).
“There is a heavy presumption that claim terms are to be
given their ordinary and customary meaning.” Aventis
Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373
(Fed. Cir. 2013). “Properly viewed, the ‘ordinary meaning’
of a claim term is its meaning to the ordinary artisan
after reading the entire patent.” Phillips, 415 F.3d at
1321. A patent’s prosecution history, though generally
“‘less useful for claim construction purposes’ than the
claim language and written description, plays various
roles in resolving uncertainties about claim scope.” SAS
Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1349
(Fed. Cir. 2016) (quoting Phillips, 415 F.3d at 1317). We
have recognized that “the prosecution history can often
inform the meaning of the claim language by demonstrat-
8                       AYLUS NETWORKS, INC.   v. APPLE INC.



ing how the inventor understood the invention.”       Phil-
lips, 415 F.3d at 1317.
    In construing the “wherein the CPP logic is invoked to
negotiate media content delivery between the MS and the
MR” limitation, the district court relied on statements
made by Aylus in its preliminary responses to Apple’s
petitions for IPR of the ’412 patent, finding the state-
ments “akin to prosecution disclaimer.” Summary Judg-
ment Order, at *5.       On appeal, Aylus argues that
statements made during an IPR cannot be relied on to
support a finding of prosecution disclaimer. Alternative-
ly, Aylus argues that its statements did not constitute a
clear and unmistakable disclaimer of claim scope. We
address these arguments in turn.
                            I.
    We must initially determine an issue of first impres-
sion for this court: whether statements made by a patent
owner during an IPR proceeding can be relied on to sup-
port a finding of prosecution disclaimer during claim
construction. As explained below, we hold that they can.
                           A.
    Prosecution disclaimer “preclud[es] patentees from
recapturing through claim interpretation specific mean-
ings disclaimed during prosecution.” Omega Eng’g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). “[F]or
prosecution disclaimer to attach, our precedent requires
that the alleged disavowing actions or statements made
during prosecution be both clear and unmistakable.” Id.
at 1325–26. “Thus, 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.” Biogen Idec, Inc. v.
GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir.
2013). Such disclaimer can occur through amendment or
AYLUS NETWORKS, INC.   v. APPLE INC.                       9



argument. See Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 452 (Fed. Cir. 1985). In Standard Oil, we
explained, in the context of disclaimer, that the prosecu-
tion history “includes all express representations made by
or on behalf of the applicant to the examiner to induce a
patent grant . . . includ[ing] amendments to the claims
and arguments made to convince the examiner.” Id.
     This doctrine is deeply rooted in Supreme Court prec-
edent. See, e.g., Roemer v. Peddie, 132 U.S. 313, 317
(1889). As the Supreme Court has explained, “when a
patentee, on the rejection of his application, inserts in his
specification, in consequence, limitations and restrictions
for the purpose of obtaining his patent, he cannot after he
has obtained it, claim that it shall be construed as it
would have been construed if such limitations and re-
strictions were not contained in it.” Id.
    Over time, prosecution disclaimer has become “a fun-
damental precept in our claim construction jurispru-
dence,” which “promotes the public notice function of the
intrinsic evidence and protects the public’s reliance on
definitive statements made during prosecution.” Omega
Eng’g, 334 F.3d at 1323–24. The doctrine is rooted in the
understanding that “[c]ompetitors are entitled to rely on
those representations when determining a course of
lawful conduct, such as launching a new product or de-
signing-around a patented invention.” Biogen, 713 F.3d
at 1095. Similarly, we have explained that the prosecu-
tion history “provides evidence of how the [PTO] and the
inventor understood the patent.” Id. (quoting Edwards
Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed.
Cir. 2009) (alteration in original)). Ultimately, the doc-
trine of prosecution disclaimer ensures that claims are not
“construed one way in order to obtain their allowance and
in a different way against accused infringers.” Southwall
Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.
Cir. 1995).
10                       AYLUS NETWORKS, INC.   v. APPLE INC.



                            B.
    Though this doctrine arose in the context of pre-
issuance prosecution, we have also applied the doctrine in
other post-issuance proceedings before the PTO. We
have, for example, applied the doctrine based on state-
ments made during reissue proceedings, holding that “all
express representations made by or on behalf of the
applicant to the examiner to . . . reissue a pa-
tent . . . limit[] the interpretation of claims so as to ex-
clude any interpretation that may have been disclaimed
or disavowed during prosecution in order to obtain claim
allowance.” Standard Oil, 774 F.2d at 452; see also E.I.
du Pont de Nemours & Co. v. Phillips Petroleum Co., 849
F.2d 1430, 1439 (Fed. Cir. 1988) (finding that statements
made during a merged reissue/reexamination proceeding
“are relevant prosecution history when interpreting
claims”); Howes v. Med. Components, Inc., 814 F.2d 638,
645 (Fed. Cir. 1987).
    We have also applied the doctrine based on state-
ments made in reexamination proceedings, holding that a
“patentee’s statements during reexamination can be
considered during claim construction, in keeping with the
doctrine of prosecution disclaimer.” Krippelz v. Ford
Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012); see also
Am. Piledriving Equip., Inc. v. Geoquip, Inc., 637 F.3d
1324, 1336 (Fed. Cir. 2011); In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1324–25
(Fed. Cir. 2011) (finding no error in district court’s claim
construction based on an argument made during reexam-
ination to avoid prior art).
    It follows that we should apply the doctrine in IPR
proceedings before the PTO. Extending the prosecution
disclaimer doctrine to IPR proceedings will ensure that
claims are not argued one way in order to maintain their
patentability and in a different way against accused
infringers. See Southwall Techs., 54 F.3d at 1576. In
AYLUS NETWORKS, INC.   v. APPLE INC.                     11



keeping with the underlying purposes of the doctrine, 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.
Omega Eng’g, 334 F.3d at 1324.
    Aylus argues that statements made during an IPR
proceeding are unlike those made during a reissue or
reexamination proceeding because an IPR proceeding is
an adjudicative proceeding as opposed to an administra-
tive proceeding. This argument is belied by the recent
Supreme Court decision in Cuozzo Speed Technologies,
LLC v. Lee, 136 S. Ct. 2131 (2016).
     In Cuozzo, the Supreme Court recognized that an IPR
proceeding involves the reexamination of a patent. Id. at
2143–44. Specifically, the Supreme Court, analyzing the
competing adjudicatory and administrative characteris-
tics of an IPR proceeding, explained that, in some “signifi-
cant respects, inter partes review is less like a judicial
proceeding and more like a specialized agency proceed-
ing.”    Id. at 2143.       These characteristics include:
(1) parties that initiate an IPR need not have a concrete
stake in its outcome; (2) a petitioner 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 estab-
lished by a preponderance of the evidence whereas inva-
lidity in a district court must be established by clear and
convincing evidence. Id. at 2143–44.
    Summarizing the effect of these administrative char-
acteristics, the Court explained that:
   these features, as well as inter partes review’s
   predecessors, indicate that the purpose of the pro-
   ceeding is not quite the same as the purpose of
   district court litigation. The proceeding involves
   what used to be called a reexamination (and . . . a
12                         AYLUS NETWORKS, INC.   v. APPLE INC.



     cousin of inter partes review, ex parte reexamina-
     tion, 35 U.S.C. § 302 et seq., still bears that name).
     The name and accompanying procedures suggest
     that the proceeding offers a second look at an ear-
     lier administrative grant of a patent. Although
     Congress changed the name from “reexamination”
     to “review,” nothing convinces us that, in doing so,
     Congress wanted to change its basic purposes,
     namely, to reexamine an earlier agency decision.
Id. at 2144.
    Because an IPR proceeding involves reexamination of
an earlier administrative grant of a patent, it follows that
statements made by a patent owner during an IPR pro-
ceeding can be considered during claim construction and
relied upon to support a finding of prosecution disclaimer.
See Krippelz, 667 F.3d at 1266. Of course, to invoke the
doctrine of prosecution disclaimer, any such statements
must “be both clear and unmistakable.” Omega Eng’g,
334 F.3d at 1326.
    We note that many district courts have addressed this
issue and have likewise concluded that statements made
by patent owners during an IPR can be considered for
prosecution disclaimer. See Ilife Techs., Inc. v. Nintendo
of Am., Inc., No. 3:13-cv-04987, 2017 WL 525708, at *7
(N.D. Tex. Feb. 9, 2017) (“[S]tatements during the IPR
may be considered for prosecution disclaimer.”); Signal
IP, Inc. v. Fiat U.S.A., Inc., No. 14-cv-13864,
2016 WL 5027595, at *16 (E.D. Mich. Sept. 20, 2016)
(finding that “statements in the prosecution history,
particularly during the recent IPR proceeding are unmis-
takable statements disavowing the plain and ordinary
meaning of” a claim term). 3 We endorse this conclusion.



     3 See also Wonderland Nurserygoods Co. v. Kids II,
Inc., No. 1:13-CV-01114-ELR, 2016 WL 4035521, at *1
AYLUS NETWORKS, INC.   v. APPLE INC.                    13



                                C.
    Aylus next argues that its statements were not part of
an IPR proceeding because they were made in a prelimi-
nary response before the Board issued its institution
decision. We disagree.
     An IPR proceeding is a two-step process: “the Direc-
tor’s decision whether to institute a proceeding, followed
(if the proceeding is instituted) by the Board’s conduct of
the proceeding and decision with respect to patentability.”
St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749
F.3d 1373, 1375–76 (Fed. Cir. 2014). We have said that
an “IPR does not begin until it is instituted,” Shaw Indus.
Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293,
1300 (Fed. Cir. 2016), but for the purposes of prosecution
disclaimer, we find the differences between the two phas-
es of an IPR to be a distinction without a difference. 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 official
papers, the patent owner can define claim terms and
otherwise make representations about claim scope to


(N.D. Ga. Mar. 16, 2016) (adopting report and recommen-
dation from special master, see 2016 WL 3958733, at *6
(N.D. Ga. Feb. 10, 2016)); Anglefix, LLC v. Wright Med.
Tech., Inc.,    No. 2:13-cv-02407-JPM-TMP, 2015 WL
9581865, at *7 (W.D. Tenn. Dec. 30, 2015); Samuels v.
Trivascular Corp., No. 13-cv-02261-EMC, 2015 WL
7015330, at *6 (N.D. Cal. Nov. 12, 2015); Cellular
Commc’ns Equip. LLC v. HTC Corp., No. 6:13-cv-507,
2015 WL 3464733, at *5–6 (E.D. Tex. June 1, 2015);
Evolutionary Intelligence, LLC v. Sprint Nextel Corp., No.
C–13–04513, 2014 WL 4802426, at *4 (N.D. Cal. Sept. 26,
2014); Zillow, Inc. v. Trulia, Inc., No. C12–1549JLR, 2013
WL 5530573, at *2 (W.D. Wash. Oct. 7, 2013).
14                       AYLUS NETWORKS, INC.   v. APPLE INC.



avoid prior art for the purposes of either demonstrating
that there is not a reasonable likelihood that the claims
are unpatentable on the asserted grounds or demonstrat-
ing that the challenger has not shown by a preponderance
of the evidence that the claims are unpatentable on the
asserted grounds. Regardless of when the statements are
made during the proceeding, the public is “entitled to rely
on those representations when determining a course of
lawful conduct, such as launching a new product or de-
signing-around a patented invention.” Biogen, 713 F.3d
at 1095.
    In conclusion, we hold that statements made by a pa-
tent 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.
                            II.
    Now that we have determined that prosecution dis-
claimer can apply to statements made by a patent owner
in a preliminary response to an IPR, we consider whether
Aylus’s statements constitute a clear and unmistakable
surrender of claim scope. Aylus argues that they do not.
We disagree.
    Apple filed two petitions for IPR to review the patent-
ability of the ’412 patent. Aylus filed a preliminary
response in both proceedings. In its response, Aylus told
the PTO that there were “a number of substantial differ-
ences between the challenged claims and the asserted
references.” J.A. 971. Aylus explained that independent
claims 1 and 20 “require that the control point logic and
control point proxy logic both be invoked to ‘cooperatively
negotiate media content delivery between the MS and the
MR’ if it is determined that ‘one of the MS and MR are not
in communication with the UE via a local wireless net-
work.’” J.A. 973, 1039 (quoting ’412 patent col. 24 ll. 58–
61 (claim 1)). Distinguishing dependent claims 2, 4, 21,
AYLUS NETWORKS, INC.   v. APPLE INC.                      15



and 23, Aylus explained that these claims “require that
only the control point logic (or only the control point proxy
logic) be invoked if it is determined that neither (or both)
the MS or the MR are in communication with the UE via
the local wireless network.” Id. (emphasis added). “In
other words,” Aylus explained, “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 through the local network.” Id. (emphasis
added). Aylus explained that “this is a key aspect of the
claimed invention, which addresses an important objec-
tive, namely: reducing the use of expensive bandwidth
(e.g., wide area cellular networks) by implementing a
least-cost routing decision about how to negotiate media
content delivery that utilizes the less costly local wireless
network whenever possible.” Id. (emphasis added).
     Aylus repeated these same statements later in its re-
sponse when distinguishing the specific prior art refer-
ences cited in the petition. Specifically, Aylus made the
following statement as to claims 2 and 21: “If, however,
‘the MS and MR are both in communication with the UE
via a local wireless network,’ then only ‘the CPP [logic] is
invoked to negotiate media content delivery between the
MS and the MR.’” J.A. 1004, 1068 (emphasis added)
(quoting ’412 patent col. 24 ll. 64–67 (claim 2)). Aylus
reiterated the objective of this architecture, namely that
“these steps serve the key purpose of enabling the claimed
invention to use a local wireless network whenever such a
network is available in order to reduce the ‘wireless
spectrum-consuming communications.’” Id. (quoting ’412
patent col. 16 ll. 33–34).
    The Board did not institute IPR as to claims 2 and 21,
finding that Apple had not demonstrated a reasonable
likelihood that it would prevail in showing that claims 2
and 21 would have been obvious. The Board explained
that it was unclear from Apple’s petition how the asserted
prior art met the limitations of claims 2 and 21 in which
16                       AYLUS NETWORKS, INC.   v. APPLE INC.



“the CPP logic exclusively handles the negotiation of
media content delivery between the MS and MR.”
J.A. 842 (emphasis added).
    Relying on Aylus’s statements to the Board during the
IPR proceeding, which the district court described as
“akin to prosecution disclaimer,” Summary Judgment
Order, at *5, the district court concluded that “claims 2
and 21 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,” id. at
*6.
    We agree with the district court that Aylus’s state-
ments to the Board during the IPR proceeding regarding
claims 2 and 21 constitute a clear and unmistakable
surrender of methods invoking the CP logic in the negoti-
ation of media content delivery between the MS and the
MR if the MS and MR are both in communication with the
UE via a local wireless network. Aylus’s repeated state-
ments that claims 2 and 21 “require that . . . only the
control point proxy logic[] be invoked,” J.A. 973, 1039, and
that “only ‘the CPP is invoked,’” J.A. 1004, 1068, repre-
sent an unequivocal and unambiguous disavowal of the
CP logic’s invocation. Based on this disclaimer, we see no
error in the district court’s claim construction.
    Aylus argues 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.”
Appellant Br. at 30–31. Aylus argues that this interpre-
tation is best understood in the context of surrounding
statements. After each of the disclaiming statements,
Aylus explained that these disclosed architectures accom-
plish a key aspect of the invention: the reduction of band-
width. Aylus argues that, had it intended to eliminate
AYLUS NETWORKS, INC.   v. APPLE INC.                    17



the possible invocation of the CP logic in claims 2 and 21,
it would have explained that the key aspect of the inven-
tion is the elimination of bandwidth.
    We have 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 dis-
claimer.” Biogen, 713 F.3d at 1100. Aylus’s interpreta-
tion, however, is not reasonable. When Aylus explained
that the reduction of bandwidth is a key aspect of its
invention, it did so in relation to all of the various net-
work architectures described in claims 1, 2, 4, 20, 21, and
23: (1) where the CPP logic and CP logic are invoked
(claims 1 and 20); (2) where the CPP logic is invoked
(claims 2 and 21); and (3) where the CP logic is invoked
(claims 4 and 23). The reduction of bandwidth is con-
sistent with all of these architectures, whereas the elimi-
nation of bandwidth would only be consistent with the
architecture in claims 2 and 21. These surrounding
statements do not change the plain meaning of Aylus’s
disavowing statements. At oral argument, Aylus even
conceded that the plain meaning of these statements
suggests that the CP logic cannot be invoked. See Oral
Arg. at 5:13–27, http://oralarguments.cafc.uscourts.gov/d
efault.aspx?fl=2016-1599.mp3. Accordingly, we hold that
Aylus’s statements in the IPR proceeding are a clear and
unmistakable surrender of methods invoking the CP logic
in claims 2 and 21, and based on these disclaiming state-
ments, we see no error in the district court’s claim con-
struction or its grant of summary judgment of
noninfringement.
    Finally, we note that the claim language and specifi-
cation of the ’412 patent are consistent with and further
support the district court’s claim construction. Claims 2
and 21 disclose that “the CPP logic is invoked to negotiate
media content delivery between the MS and the MR if the
MS and MR are both in communication with the UE via a
local wireless network.” ’412 patent col. 24 ll. 64–67.
18                       AYLUS NETWORKS, INC.   v. APPLE INC.



These claims are narrower than the claims upon which
they depend, independent claims 1 and 20, which disclose
“invoking the CPP logic and the CP logic to cooperatively
negotiate media content delivery between the MS and the
MR if one of the MS and MR are not in communication
with the UE via a local wireless network.” Id. at col. 24
ll. 58–61.
    The specification’s description of the embodiment cor-
responding to claims 2 and 21 discloses that, “[i]n the case
where the UE is in the proximity of both the desired MS
and the desired MR and can communicate with them via
a [Personal Area Network], such as Wi-Fi, the CPP in the
UE negotiates the association between the MS and MR.”
Id. at col. 17 ll. 50–53. The specification further explains
that, “[i]n this case there is no need to involve the CP in
the [serving node], since this would involve unnecessary
use of wireless bandwidth.” Id. at col. 17 ll. 53–55.
Neither the claim language nor the specification suggests
that the CP logic is invoked in the method of claims 2 and
21. This is consistent with the district court’s construc-
tion that “claims 2 and 21 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.” Summary Judgment Order, at *6. Aylus
concedes that Apple does not infringe claims 2 and 21 as
construed by the district court. See Appellant Br. 35.
Accordingly, we affirm the district court’s claim construc-
tion and grant of summary judgment of non-infringement.
                       CONCLUSION
    We have considered Aylus’s remaining arguments and
find them unpersuasive.      Accordingly, we hold that
statements made by a patent owner during an IPR pro-
ceeding, whether before or after an institution decision,
can be relied upon to support a finding of prosecution
disclaimer. Here, we find that Aylus’s statements during
AYLUS NETWORKS, INC.   v. APPLE INC.                  19



an IPR proceeding were a clear and unmistakable disa-
vowal of claim scope. Based on this disclaimer, we affirm
the district court’s claim construction and grant of sum-
mary judgment of non-infringement.
                        AFFIRMED
                            COSTS
   Costs to Appellee.
