Federal Circuit Vacates District Court’s Claim Construction of the Term “Pipette Guiding Mechanism” | Sheppard Mullin Richter & Hampton LLP

In Malvern Panalytical Inc. v. TA Instruments-Waters LLC, the Federal Circuit addressed the proper construction of the claim term “pipette guiding mechanism.” Specifically, the Federal Circuit found the plain and ordinary meaning of “pipette guiding mechanism” sufficient and addressed how various claim construction doctrines affected its analysis, including the use of a non-related patent cited in an IDS as intrinsic evidence.

Background

Malvern Panalytical Inc. (“Malvern”) sued TA Instruments-Waters LLC and Waters Technology Corporation (collectively, “Waters”) in the District of Delaware for infringement of various claims of U.S. Patent No. 8,827,549 (the “’549 patent”) and its parent, U.S. Patent No. 8,449,175 (the “’175 patent”). The ’549 and ’175 patents are each directed to isothermal titration calorimeters (“ITC”), which are a specific type of microcalorimeter that measures the amount of energy absorbed or released during a chemical reaction.

During prosecution of a commonly owned, but unrelated patent, U.S. Patent No. 9,103,782 (the “’782 patent”), the examiner rejected various claims as anticipated based on the application that matured into the ’175 patent. In particular, the Examiner alleged that the ’175 patent’s ITC system that manually guided the pipette anticipated the ’782 patent’s automated ITC system that used an automated guidance system. The applicant, Malvern, unsuccessfully traversed the rejection on the merits, but removed the ’175 patent from prior art consideration by arguing that § 103(c)(1) applied, due to common ownership.

After a change in ownership, Malvern sought supplemental examination of the ’175 patent under 35 U.S.C. § 257. During the supplemental examination, Malvern cited seven office action documents from the ’782 patent prosecution in an IDS and introduced two declarations by the co-inventor Rochalski. Rochalski’s first declaration described the ITC device they alleged to have invented, and his second declaration indicated that the features they invented were included in the iTC200 Microcalorimeter, whose user manual was used as an anticipatory reference.

During claim construction, Malvern argued that “pipette guiding mechanism” should mean a “mechanism that guides the pipette assembly,” while Waters argued that term should mean a “mechanism that manually guides the pipette assembly.” The district court adopted Waters’ proposed construction, limiting “pipette guiding mechanism” to manual guided embodiments. The district court reasoned based on an interpretation of the ’782 patent’s file history that the applicant’s statements limited the scope of the ’782 patent’s “pipette guiding mechanism” to only manual guided embodiments. The district court considered the statements because the ’782, ’549, and ’175 patents have a common assignee and because both parties and the district court treated the common assignee as Malvern.

Following the district court’s claim construction order, the parties stipulated to non-infringement, which the district court entered. Malvern appealed.

Issue(s)

Whether the claim term “pipette guiding mechanism” encompasses only manual guiding mechanisms or covers both manual and automatic guiding mechanisms.

Whether patent documents listed in an information disclosure statement (“IDS”) should be given weight to inform the meaning of “pipette guiding mechanism” in the unrelated ’175 and ’549 patents.

Holding(s)

The Federal Circuit held that the district court erred in concluding that “pipette guiding mechanism” is a coined term with no commonly understood meaning in the art, and instead held that the plain and ordinary meaning of “pipette guiding mechanism” is a mechanism that guides a pipette, which can be either manual or automatic.

The Federal Circuit held 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.

Reasoning

First, the Federal Circuit considered whether the claim term “pipette guiding mechanism” encompassed both manual and automatic guiding mechanisms, or was limited to manual guiding mechanisms. The Federal Circuit looked to the claim language, specification, and the co-inventor declarations submitted with the ’175 patent supplemental examination. Specifically, the Federal Circuit considered the plain and ordinary meaning of the term to a skilled artisan at the time of the invention.

The Federal Circuit interpreted the plain and ordinary meaning of “pipette guiding mechanism” to be a mechanism that guides the pipette assembly, and further that it was appropriate to look at the words “pipette,” “guiding,” and “mechanism” individually. The plain language made it “immediately apparent” that the meaning of “pipette guiding mechanism” is a mechanism that guides pipettes, and that the plain and ordinary meaning of the claim language did not contain any restrictions that would indicate such a term is limited to manual mechanisms.

The Federal Circuit considered other claim language and found no support for limiting the assembly to manually guided pipettes. Specifically the panel noted that claim 1 of the ’549 patent specified that the “pipette guiding mechanism” was “arranged to restrict the movement of the pipette assembly along safe paths to ensure that the titration needle cannot be damaged during movement thereof between different positions of operation,” and claim 9 specified that the “pipette guiding mechanism” was “arranged to guide the pipette assembly between and into at least two positions of operations.” The Federal Circuit noted that these “claims clarify and restrict what the guiding mechanism does, but they provide no language suggesting the restriction manual embodiments Waters advocates.” It further noted that the “specification contains no language describing the invention as limited to a manual guiding mechanism, stating that ‘the present invention “is,” “includes,” or “refers to”’ a manual guiding mechanism, or “expressing the advantages, importance, and essentiality” of a manual guiding mechanism.” Importantly, the specification does not disclose whether the guiding mechanism is manual or automatic. The Federal Circuit reasoned that “[t]his absence leads us to conclude that nothing in the specification explicitly or implicitly limits the guiding mechanism to manual embodiments.”

Waters based its argument on portions of the specification and prosecution history of the ’175 patent, which the Federal Circuit found unpersuasive. Accordingly, the Federal Circuit held that the claim language and the specification indicated that the term “pipette guiding mechanism” in the ’549 and ’175 patents should be constructed as a mechanism that guides the pipette assembly either manually or automatically.

Second, the Federal Circuit considered whether the district court erred by concluding that the prosecution history of the ’782 patent was relevant to the construction of “pipette guiding mechanism.” The Federal Circuit noted that “[i]n the absence of an incorporation into the intrinsic evidence, the court’s precedent takes a narrow view on when a related patent or its prosecution history is available to construe the claims of a patent at issue and draws a distinct line between patents that have a familial relationship and those that do not” (Goldenberg v. Cytogen, Inc., 373 F.3d at 1167). It further noted that “even once a reference has been incorporated into the intrinsic record, such as by citation in an IDS … the amount of characterization of that reference in the IDS impacts how informative we consider the reference when evaluating a patent.” In the present case, Malvern’s bare listing of the ’782 patent office actions in the IDS during supplemental prosecution of the ’175 patent did not amount to a material interpretation of the term “pipette guiding mechanism” but instead was merely an admission that the “reference[] in the disclosure may be material to prosecution of the pending claims.” Since Malvern merely listed the seven documents from the prosecution of the ’782 patent, but did not characterize the documents in any manner, the listing of the ’782 patent office action in the IDS of the ’175 patent supplemental examination was held to be insufficient to impact the Federal Circuit’s understanding of the specification and claim language of the ’175 and ’549 patents.

Moreover, the Federal Circuit went on to reason that even if the ’782 patent’s file history were sufficient to consider during construction of “pipette guiding mechanism,” the statements in the ’782 patent prosecution history did not clearly and unambiguously disclaim any scope of “pipette guiding mechanism.” In other words, even though the applicant argued that the ’175 application disclosed only a manual guiding mechanism, the Examiner clearly rejected this argument several times, at which point the applicant abandoned this argument. The Federal Circuit reasoned that by abandoning this argument, the applicant acquiesced to the examiner’s view that the ’175 patent was not limited to manual guiding systems. From this, the Federal Circuit concluded that when an applicant abandons an unsuccessful argument, it is indicative that the prosecution history lacks the clarity necessary to establish prosecution disclaimer.

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