IP Law Daily, PATENT NEWS—Bright Data seeks certiorari to review Federal Circuit decision invalidating claims relating to improving network speed, (Jan 6, 2026)

By Robert Margolis, J.D.

Bright Data asserts Federal Circuit’s refusal to consider disclaimer narrowing scope of claims is at odds with “certainty” goal expressed in Supreme Court precedent and reflects inconsistency in the Federal Circuit as to the effect of prosecution disclaimers.

Bright Data Ltd. (Bright) has filed a Petition for a Writ of Certiorari with the United States Supreme Court, seeking review of a recent Federal Circuit decision invalidating the claims of three U.S. Patents, arguing that the appellate court’s refusal to consider Bright’s express disclaimers of scope during IPR proceedings creates uncertainty and “asymmetry” to the detriment of patentees, investors, their rivals, and the public. Bright’s petition asserts that certiorari should be granted because the case “raises important issues regarding fundamental tenets of claim construction and prosecution disclaimer,” and would afford the Court the opportunity to provide guidance and address what Bright calls “inconsistencies in the Federal Circuit’s approach to claim construction in the context of disclaimer.” According to the Supreme Court docket, a response to the petition is due on February 4, 2026 (Bright Data Ltd. v. Code200, UAB, No. 25-779 (U.S. Jan. 5, 2026)).

Claims invalidated. Bright was the owner of U.S. Patents Nos. 11,044,342 (the ’342 patent), 10,257,319 (the ’319 patent), and 10,484,510, the ’510 patent), each of which were part of the same family and shared a specification. The patents were directed to a system for improving network speed by retrieving information requested by users from multiple online sources and offloading the data transfers to nearby peers. Several entities, including Code200, UAB (Code200), petitioned for inter partes review (IPR). As Bright asserts in its petition, throughout prosecution and including during underlying IPRs, it recited “multiple, consistent disclaimers that limited the scope of the claims.” Bright expressly defined “client devices” as “computers of consumers” in its specifications, as distinct from and in contrast to “servers,” and consistent with that limitation, “consistently disclaimed any broader scope of the claims.”

This was significant, Bright asserts, because the PTAB deemed the patents-at-issue invalid as having been rendered obvious by a prior art reference (Crowds). Bright argued that Crowds does not anticipate or render obvious the claims, because it does not disclose the claimed network architecture as reciting a client device between two servers, and Bright’s disclaimers limit the claims to such devices. Nonetheless the PTAB adopted broad “role-based” constructions of the terms “client devices” and “second server” rather than Bright’s “hardware-based” constructions of those terms. The Federal Circuit then affirmed the PTAB, adopting the same “role-based” constructions.

Inconsistency. Starting with the Supreme Court’s assertion in Markman v. Westview Instruments, 517 U.S. 370, 390 (1996), that “the limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public,” Bright argued that the Federal Circuit’s inconsistency in determining what prosecution history, including prosecution disclaimers, should be credited, undermines the goal of certainty articulated in Markman. Bright then discussed how some Federal Circuit panels have recognized an inventor’s disclaimer during patent prosecution as relevant to claim construction in both IPR proceedings and subsequent federal court proceedings. Citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005); Aylus Networks, Inc. v. Apple, Inc., 856 F.3d 1353, 1364 (Fed. Cir. 2017).

But other Federal Circuit panels, according to Bright, have held that a disclaimer in an IPR proceeding is binding in later proceedings, but not binding on the PTO in the IPR proceeding in which the disclaimer is made. Citing Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022). And still others have disagreed on whether a patentee’s prosecution disclaimers can be credited based on whether the USPTO relied on and/or credited the disclaimer during prosecution. Some cases refused to credit patentee disclaiming statements where the USPTO did not rely on them, while others credited the disclaimers, irrespective of whether the USPTO relied on them.

Bright thus argued that the above-described “chaotic” regime, should be replaced by “the regularity and predictability of a system that respects disclaimers” whenever made. The uncertainty that the Federal Circuit’s “inconsistent” rulings creates “is a compelling reason” for the Supreme Court to grant review, Bright urges in its petition.

Further, Bright noted the holding in Aylus Networks that in the context of a patentee’s infringement claims, the patentee’s prosecution disclaimer was held to preclude the patentee from asserting disclaimed meanings to support infringement. If prosecution disclaimers can be used against a patentee’s attempt to assert broader claim constructions in an infringement case, then “symmetry” requires that prosecution disclaimers be credited to a patentee’s benefit when adjudicating validity. And what made the failure to credit Bright’s disclaimers “particularly egregious” to Bright, is that the Federal Circuit used the broader constructions to invalidate the patents based on the Crowds prior art reference to which Bright’s disclaiming statements applied.

The Case is No. 25-779.

Attorneys: Robert M. Harkins Jr. (Cherian LLP) for Bright Data Ltd.

Companies: Bright Data Ltd.; Code200, UAB

News: Patent FedCirNews