Malvern Panalytical Inc. v. TA Instruments-Waters LLC
Docket No. 2022-1439 (https://cafc.uscourts.gov/opinions-orders/22-1439.OPINION.11-1-2023_2215474.pdf)
PROST, HUGHES, CUNNINGHAM
November 1, 2023
Brief Summary: DC claim construction vacated and remanded as it incorrectly limited claim term based on ambiguous prosecution history of commonly owned by unrelated patent.
Summary: Malvern appealed DC claim construction order construing the term “pipette guiding mechanism” in the microcalorimeter (isothermal titration calorimeter (“ITC”)) of US 8,827,549 and US 8,449,175 (having the same specification) as a “mechanism that manually guides the pipette assembly” (emphasis added). There is no language in the disputed claims restricting the term to only manual embodiments, and the FC panel explained that it could encompass both manual and automatic mechanisms. The specification was also found to describe two embodiments of the guiding mechanism but not to explicitly limit it to manual operation. The opinion explained that the DC considered Malvern’s response to an anticipation rejection during prosecution of its US 9,103,782 (unrelated to the ‘549 and ‘175 patents), by the US ‘968 application that matured into the ‘175 patent. Malvern argued the ‘968 application only disclosed a manual system but dropped that argument in favor of a successful pre-AIA section 103(c)(1) position. After taking ownership of the ‘175 patent, Malvern sought supplemental examination of the ‘968 application during which it cited seven “office action documents from the ’782 patent prosecution” in an IDS, without describing or discussing those documents. Regarding claim construction, the DC found that “‘pipette guiding mechanism’ was a coined term” (e.g., no evidence it “was known or readily understandable”) and “thus examined the intrinsic evidence for ‘objective boundaries to the scope of the term’” (Iridescent, FC 2019). Relying in part on Malvern’s “manual” statements made during prosecution of the ‘782 patent, the DC “limited ‘pipette guiding mechanism’ to manual guiding mechanisms”. The FC panel found the claim language and specification support both manual and automatic embodiments (Hill-Rom, FC 2014; Indacon, FC 2016 (“claim terms…ordinarily cannot be construed broader than the disclosure in the specification”) and the ‘175 supplemental examination did not change its view (Myco Indust., FC 2020; Omega Eng’g, FC 2003 (“too vague or ambiguous to qualify as a disavowal of claim scope”); “merely listing the ’782 patent office actions in the IDS of the ’175 patent supplemental examination was insufficient to inform the meaning…in the unrelated ’175 and ’549 patents”; Goldenberg, FC 2004 (narrow view regarding relevance of non-familial prosecution history); Ekchian, FC 1997; Abbott, FC 2003 (listing references “does no more than admit” those “may be material to prosecution of the pending claims,’ but…does not admit materiality”)). The FC panel also explained that since Malvern abandoned its “manual” arguments regarding the ‘175 patent, that “prosecution history lacks the clarity necessary to establish prosecution disclaimer” (Ecolab, FC 2009; MIT, FC 2016 (examiner rejected the added limitation under § 112 as new matter, and the applicant “never again sought to limit the claims” with the additional limitation)). The DC decision was therefore vacated and remanded.