Federal Circuit Weighs in on Parameters for Prosecution Disclaimer

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.

Malvern sued TA Instruments-Waters, LLC (Waters) for infringing various claims of its U.S. Patent Nos. 8,827,549 (“the ’549 patent”) and 8,449,175 (“the ’175 patent”). The patents relate to an “isothermal titration calorimeter” (ITC), which is a type of machine that “measures the amount of energy absorbed or released during a chemical reaction between two compounds.”

The claim term at issue in the case is “pipette guiding mechanism,” which Malvern argued should be construed to mean a “mechanism that guides the pipette assembly,” while Waters argued that it should mean a “mechanism that manually guides the pipette assembly.” The district court agreed with Waters, in part because it determined that intrinsic evidence in the form of statements made during prosecution of U.S. Patent No. 9,103,782 (“the ’782 patent”) “limited the ‘pipette guiding mechanism’ to only manual embodiments.” The ’782, ’549, and ’175 patents have a common assignee and both parties and the district court treated the common assignee as Malvern.

The district court also said that Malvern agreed the statements cited in the IDS during supplemental examination of the ‘782 patent were incorporated into the intrinsic record. The district court concluded that statements made by the applicant during prosecution of the ‘782 patent indicated that the “pipette guiding mechanism” was limited to only manual embodiments.

However, on appeal, the CAFC agreed with Malvern that “’pipette guiding mechanism’ means a mechanism that guides the pipette assembly manually or automatically.” The court said the term itself has a plain and ordinary meaning—”a mechanism that guides the pipette assembly”—and that the specification contains no language limiting the invention to a manual guiding mechanism, despite Waters’ arguments to the contrary. While the district court held that “’pipette guiding mechanism’ is a coined term with no commonly understood meaning in the art,” the CAFC said that analysis “predominantly addressed whether ‘pipette guiding mechanism’ has a plain and ordinary meaning broadly in the art,” rather than “what plain and ordinary meaning a term has in the context of a patent.”

Turning to the question of how much weight to give the ‘782 prosecution history, the CAFC concluded that “merely listing the ’782 patent office actions in the IDS of the ’175 patent supplemental examination was insufficient to inform the meaning of ‘pipette guiding mechanism’ in the unrelated ’175 and ’549 patents.” Even when a reference has been incorporated into the intrinsic record, said the CAFC, “the amount of characterization of that reference in the IDS impacts how informative we consider that reference when evaluating a patent.” Listing references in an IDS, as Malvern did in the ‘175 patent, “does no more than admit ‘that references in the disclosure may be material to prosecution of the pending claims,’” explained the CAFC.

Furthermore, even if bare references to the office actions in an IDS were sufficient, the CAFC said that, here, the statements at issue “do not clearly and unambiguously disclaim any scope of ‘pipette guiding mechanism.’”

The patent applicant for the ‘782 patent initially argued that the patent was not anticipated by a prior art reference, U.S. Patent Application Publication No. 2010/0238968, cited by the examiner, because it said that application disclosed “a prior art ‘manual ITC system,’…in apparent contrast to the pipette translation unit that is a component of the ’782 patent’s automated ITC.” The ‘968 reference ultimately became the ‘175 patent at issue. But the CAFC said this does not amount to prosecution disclaimer:

“Here, although the ’782 patent applicant argued that the ’968 application discloses only a manual guiding mechanism…the examiner clearly stated its rejection of this argument several times…. The ’782 patent applicant then abandoned this unviable argument that the ’968 application only discloses a manual guiding mechanism and instead successfully argued that the ’968 application did not qualify as prior art…. A reasonable interpretation of this colloquy with the examiner is that by abandoning its argument that the ’968 application discloses only a manual guiding mechanism, the ’782 patent applicant acquiesced to the examiner’s views regarding the scope of the ’968 application.” [citations omitted]

The CAFC said this interpretation is consistent with its past precedent and that “by abandoning its arguments about the scope of the ‘968 application, ‘a reasonable reader’ of the ’782 patent prosecution history could conclude that the ’782 patent applicant ‘recognized its error and never again repeated or relied upon the erroneous rationale.’”

The court thus vacated the stipulated judgment of non-infringement and remanded to the district court.

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