Malvern Panalytical Inc. v. Ta Instruments-Waters LLC, Waters Technologies Corporation

United States Court of Appeals
for the Federal Circuit
______________________
MALVERN PANALYTICAL INC.,
Plaintiff-Appellant
v.
TA INSTRUMENTS-WATERS LLC, WATERS
TECHNOLOGIES CORPORATION,
Defendants-Appellees
______________________
2022-1439
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:19-cv-02157-RGA, Judge
Richard G. Andrews.
______________________
Decided: November 1, 2023
______________________
BRIAN R OBERT MATSUI, Morrison & Foerster LLP,
Washington, DC, argued for plaintiff-appellant. Also rep-
resented by D ANIEL P. MUINO, F AHD H. P ATEL ; MICHAEL
ALLEN J ACOBS , San Francisco, CA.
MATTHEW WOLF , Arnold & Porter Kaye Scholer LLP,
Washington, DC, argued for defendants-appellees. Also
represented by J EFFREY MILLER, Palo Alto, CA; J ONATHAN
SWISHER, San Francisco, CA.
______________________
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 2
Before P ROST , HUGHES , and CUNNINGHAM , Circuit Judges.
P ROST , Circuit Judge.
Malvern Panalytical Inc. (“Malvern”) appeals a claim
construction order construing the term “pipette guiding
mechanism” in the patents-in-suit as a “mechanism that
manually guides the pipette assembly.” Malvern Panalyt-
ical Inc. v. TA Instruments-Waters LLC, No. 19-cv-2157,
2021 WL 965684, at *3–6 (D. Del. Mar. 15, 2021) (“Deci-
sion”). Because the district court erred in construing “pi-
pette guiding mechanism,” we vacate the stipulated
judgment of non-infringement and remand for further pro-
ceedings.
BACKGROUND
I
Malvern sued TA Instruments-Waters LLC and Wa-
ters Technologies Corporation (together, “Waters”) in the
District of Delaware for infringing various claims of, among
others, U.S. Patent Nos. 8,827,549 (“the ’549 patent”) and
8,449,175 (“the ’175 patent”).1 These patents both disclose
microcalorimeters, which are machines that measure the
amount of energy absorbed or released during a chemical
reaction between two compounds. ’549 patent col. 1 ll. 26–
29. The specific type of microcalorimeter described in these
patents is an isothermal titration calorimeter (“ITC”). Id.
at col. 1 ll. 37–41.
1 The ’549 patent is a continuation of the ’175 patent,
and they share a substantially similar specification. For
brevity, this opinion cites only the ’549 patent specification.
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 3
The ITC in the ’549 and ’175 patents contains several
components. One component is the automatic pipette as-
sembly. “The automatic pipette assembly [220] comprises
a pipette housing 340, a syringe 350 with a titration needle
360 arranged to be inserted into the sample cell 250 for
supplying titrant, and a linear activator 370 for driving a
plunger 380 in the syringe 350.” Id. at col. 4 ll. 60–64.2
Figure 2 illustrates the pipette assembly components in the
context of the microcalorimeter:
Id. at Fig. 2.
2 While the specification discloses an “automatic pi-
pette assembly 210” here, we assume it meant to disclose
an “automatic pipette assembly 220,” as it did earlier. ’549
patent col. 3 l. 67–col. 4 l. 1.
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 4
Another component, the pipette guiding mechanism,
“guide[s] the pipette assembly 220 between and into at
least two positions of operation.” Id. at col. 7 ll. 10–11. The
’549 and ’175 patents disclose two embodiments of the pi-
pette guiding mechanism. The first embodiment is “a pi-
pette arm 520 that supports the pipette assembly 220, and
an essentially vertical guide rod 530.” Id. at col. 7. ll. 18–
20. “The pipette arm 520 is moveably attached by a sleeve
540 to the guide rod 530, but its motion about the guide rod
is restricted by a guide grove 550 in the guide rod 530 and
a guide pin 560 that protrudes from the inner surface of the
sleeve 540 and which fits into the guide groove 550.” Id. at
col. 7 ll. 20–25. With this embodiment, the “movement of
the pipette assembly 220 in the vertical direction is re-
stricted to the angular positions of the positions of opera-
tion,” id. at col. 7 ll. 28–30, and “rotational movement of the
pipette assembly 220 between the angular positions only is
permitted when the titration needle 260 is fully retracted
from respective positions of operation,” id. at col. 7 ll. 31–
34. Figure 5a illustrates the guide rod embodiment of the
guiding mechanism:
Id. at Figure 5a.
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 5
A second embodiment of the pipette guiding mecha-
nism, “wherein the guide groove in the guide rod 530 is re-
placed by a coaxial external guide sleeve 610 with
corresponding guide paths 620 for the guide arm 520,” id.
at col. 7 l. 66–col. 8 l. 2, is depicted in Figure 6:
Id. at Fig. 6.
Claim 1 of the ’549 patent and claim 9 of the ’175 patent
are independent and contain the disputed term, “pipette
guiding mechanism.”
Claim 1 of the ’549 patent states:
1. A micro titration calorimetry system compris-
ing:
an automatic pipette assembly comprising a titra-
tion needle arranged to be inserted into a sample
cell for supplying titrant, a syringe for supplying
titrant to the titration needle, a stirring paddle for
stirring fluid in the sample cell, and a stirring mo-
tor for rotating the stirring paddle, and
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 6
a pipette guiding mechanism 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 differ-
ent positions of operation.
’549 patent claim 1 (emphasis added).
Claim 9 of the ’175 patent states:
9. A micro titration calorimetry system compris-
ing:
an automatic pipette assembly comprising a titra-
tion needle arranged to be inserted into a sample
cell for supplying titrant, a syringe for supplying
titrant to the titration needle, a stirring paddle for
stirring fluid in the sample cell, and a stirring mo-
tor for rotating the stirring paddle, and
a pipette guiding mechanism arranged to guide the
pipette assembly between and into at least two po-
sitions of operation, wherein a first position of op-
eration is a pipette washing position wherein the
titration needle is inserted in a washing apparatus,
and a second position of operation is a titration po-
sition wherein the titration needle is inserted into
the sample cell for calorimetric measurements.
’175 patent claim 9 (emphasis added).
II
Relevant to this appeal is another patent, U.S. Patent
No. 9,103,782 (“the ’782 patent”). Although the ’782 patent
is unrelated to the ’549 and ’175 patents, all three patents
had a common assignee and are now owned by Malvern.
During prosecution of the ’782 patent, the examiner re-
jected various claims as anticipated by U.S. Patent Appli-
cation Publication No. 2010/0238968 (“the ’968
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 7
application”).3 J.A. 2926. The ’782 patent describes the
’968 application as disclosing a prior art “manual ITC sys-
tem,” ’782 patent col. 2 l. 62, in apparent contrast to the
pipette translation unit that is a component of the ’782 pa-
tent’s automated ITC, id. at col. 6 ll. 24–32. Despite this
characterization, the examiner rejected the ’782 patent as
anticipated by the ’968 application because the examiner
understood the ’968 application to disclose an automated
ITC system. J.A. 2926–27. The ’782 patent applicant tried
to overcome this rejection by arguing that the ’968 applica-
tion contains a purely manual guiding system. J.A. 2919.
The examiner again disagreed and rejected the ’782 patent
as anticipated by the ’968 application. J.A. 2893, 2907.
The ’782 patent applicant again argued that the pipette
guiding mechanism in the ’968 application is “purely a pas-
sive guiding mechanism arranged to prevent damage of the
sensitive titration needle.” J.A. 2885. The examiner once
again disagreed and observed that the ’968 application
teaches that “the movements of the pipette are performed
using a program (such as that provided by the ITC control
system).” J.A. 2872. In this same rejection, the examiner
noted that because the ’968 application and the ’782 patent
had a common assignee, the ’968 application might not
qualify as prior art under pre-America Invents Act 35
U.S.C. § 103(c)(1). J.A. 2858. The ’782 patent applicant,
seemingly taking the hint, then argued that the anticipa-
tion rejections over the ’968 application should be with-
drawn because the ’968 application did not count as prior
art under § 103(c)(1). J.A. 2852. The examiner withdrew
the anticipation rejection on this basis. J.A. 2842.
III
After a change in ownership by which Malvern came to
own the ’549 and ’175 patents, Malvern sought supple-
mental examination of the ’175 patent under 35 U.S.C.
3 The ’968 application resulted in the ’175 patent.
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§ 257. J.A. 1418. As part of an information disclosure
statement (“IDS”), Malvern cited 154 documents. Seven of
these were the office action documents from the ’782 patent
prosecution. J.A. 1488. Malvern did not describe or char-
acterize the ’782 patent office actions in any way, and noth-
ing in the supplemental examination shows any further
discussion of the ’782 patent office actions.
During the supplemental examination, the examiner
rejected claim 9 of the ’175 patent as anticipated by a Mi-
crocal iTC200 Microcalorimeter User’s Manual. J.A. 1464–
66. The iTC200 manual contains several descriptions of its
guiding mechanism as manually operated. J.A. 1169,
1174, 1176–77. Malvern sought to overcome this rejection
by arguing that the iTC200 was the applicant’s own work.
To do so, Malvern submitted declarations of co-inventor Ro-
chalski. J.A. 1546. The first Rochalski declaration stated
that the iTC200 manual “simply describes the product Va-
lerian Plotnikov and I invented.” J.A. 1553. The second
Rochalski declaration stated that “Valerian Plotnikov and
I invented the features described and claimed in the ’549
and ’175 Patents” and that “[t]hese relevant features were
included in the iTC200 Microcalorimeter.” J.A. 1686. The
examiner thereafter withdrew the rejection of claim 9 over
the iTC200 manual. J.A. 1707.
IV
During claim-construction proceedings before the dis-
trict court in this case, Malvern argued that “pipette guid-
ing mechanism” should mean a “mechanism that guides
the pipette assembly,” while Waters argued that it should
mean a “mechanism that manually guides the pipette as-
sembly.” Decision, 2021 WL 965684, at *3–4. The district
court adopted Waters’s proposed construction. Id. at *4. In
doing so, the district court first concluded that the term “pi-
pette guiding mechanism” was a coined term because Mal-
vern presented “no evidence . . . that a ‘pipette guiding
mechanism’ was known or readily understandable” to a
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 9
person of ordinary skill in the art. Id. at *5. The district
court thus examined the intrinsic evidence for “objective
boundaries to the scope of the term.” Id. (quoting Iridescent
Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1353
(Fed. Cir. 2019)).
The district court looked to the ’782 patent applicant’s
statements during prosecution of the ’782 patent to ascer-
tain the scope of the “pipette guiding mechanism,” conclud-
ing that the ’782 patent applicant limited the “pipette
guiding mechanism” to only manual embodiments. Id. The
district court attributed the statements of the ’782 patent
applicant to Malvern because the ’782, ’549, and ’175 pa-
tents had a common assignee and because both parties and
the district court treated the common assignee as Malvern.
Id. at *4 n.2. The district court considered statements
made during the ’782 patent prosecution when interpreting
the ’549 and ’175 patents because it concluded that Mal-
vern agreed the statements cited in the IDS during supple-
mental examination were incorporated into the intrinsic
record. Id. In part relying on this prosecution history, the
district court limited “pipette guiding mechanism” to man-
ual guiding mechanisms.
Following claim construction, the parties stipulated to
non-infringement, J.A. 34–35, and the district court en-
tered a final judgment of non-infringement, J.A. 29. Mal-
vern timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
D ISCUSSION
Claim construction is a question of law this court re-
views entirely de novo where, as here, the construction re-
lies solely on the intrinsic evidence. Baxalta Inc. v.
Genentech, Inc., 972 F.3d 1341, 1345 (Fed. Cir. 2020).
Malvern and Waters dispute whether the term “pipette
guiding mechanism” encompasses only manual guiding
mechanisms (Waters’s position) or covers both manual and
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 10
automatic guiding mechanisms (Malvern’s position). We
agree with Malvern that “pipette guiding mechanism”
means a mechanism that guides the pipette assembly man-
ually or automatically.
We proceed first by analyzing the claim language, spec-
ification, and the co-inventor declarations submitted with
the ’175 patent supplemental examination. We then ana-
lyze the district court’s conclusion that “pipette guiding
mechanism” is a coined term. We finally analyze the im-
pact, if any, that the ’782 patent prosecution history has on
our claim construction.
I
Claim terms are generally construed according to their
ordinary meaning to a skilled artisan at the time of the in-
vention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc). This meaning “provides an ob-
jective baseline from which to begin claim interpretation.”
Id. at 1313. To that end, we consult intrinsic evidence,
such as “the words of the claims themselves, the remainder
of the specification, [and] the prosecution history,” and, to
the extent it applies, extrinsic evidence. Id. at 1314. We
keep in mind that a skilled artisan “is deemed to read the
claim term . . . in the context of the entire patent, including
the specification.” Id. at 1313. Additionally, “the prosecu-
tion history can often inform the meaning of the claim lan-
guage by demonstrating how the inventor understood the
invention and whether the inventor limited the invention
in the course of prosecution.” Id. at 1317. However, “be-
cause the prosecution history represents an ongoing nego-
tiation between the [United States Patent and Trademark
Office] and the applicant, rather than the final product of
that negotiation, it often lacks the clarity of the specifica-
tion and thus is less useful for claim construction pur-
poses.” Id.
Starting with the claim language, we conclude that “pi-
pette guiding mechanism” has a plain and ordinary
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meaning—a mechanism that guides the pipette assembly.
It is appropriate to construe this term by looking to the
words “pipette,” “guiding,” and “mechanism” individually.
Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376,
1381 (Fed. Cir. 2022) (“[T]he district court was correct in
seeking to give meaning to the term ‘fastening stem’ by
looking to the meaning of the words ‘fastening’ and ‘stem’
as used in the patent.”); see also 3M Innovative Props. Co.
v. Tredegar Corp., 725 F.3d 1315, 1329 (Fed. Cir. 2013)
(“For this claim term the patentee offers an ascertainable
definition in the body of the claim, and our cases do not
support prescribing a more particularized meaning unless
a narrower construction is required by the specification or
prosecution history.”). Looking at the individual words in
the claim, the immediately apparent meaning is that a “pi-
pette guiding mechanism” is a mechanism that guides the
pipette. The claim language contains no restrictions that
would suggest that the “pipette guiding mechanism” is only
manual. Instead, the broad claim language supports the
conclusion that the “pipette guiding mechanism” encom-
passes both manual and automatic embodiments.
The claim term here is similar to the claim term we in-
terpreted in Hill-Rom Services, Inc. v. Stryker Corp., 755
F.3d 1367 (Fed. Cir. 2014). In Hill-Rom, we construed the
term “datalink” to mean a link that conveys data. Id. at
1375. We did so over the objection of the accused infringer,
who argued that we should limit the construction of data-
link to the wired embodiments disclosed in the patent. Id.
at 1373–74. In our view, the broad language of the claim
supported a broad construction of the claim term. See id.
at 1375 (“There is nothing improper about defining ‘data-
link’ as a link that conveys data. If one of skill in the art
at the relevant time would understand that datalinks can
be both wired and wireless, then the patentee is entitled to
the full range of that claim term.”). The similar breadth
here compels a similarly broad result—that the “pipette
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 12
guiding mechanism” is not limited to manual embodi-
ments.
The remaining language in claim 1 of the ’549 patent
and claim 9 of the ’175 patent supports this reading. Claim
1 specifies that the “pipette guiding mechanism” is “ar-
ranged 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 specifies that the “pi-
pette guiding mechanism” is “arranged to guide the pipette
assembly between and into at least two positions of opera-
tion.” The claims clarify and restrict what the guiding
mechanism does, but they provide no language suggesting
the restriction to manual embodiments Waters advocates.
The specification confirms our broader understanding
of the “pipette guiding mechanism.” It discloses two em-
bodiments of the guiding mechanism. The first embodi-
ment is a guide arm that can move only by way of a guide
rod where permitted by guide grooves. ’549 patent col. 7
ll. 8–65. The second is a guide arm that can only move
where permitted by a coaxial guide sleeve. Id. at col. 7
l. 66–col. 8 l. 2. The specification contains no language de-
scribing the invention as limited to a manual guiding
mechanism, stating that “the present invention ‘is,’ ‘in-
cludes,’ or ‘refers to’” a manual guiding mechanism, or “ex-
pressing the advantages, importance, or essentiality” of a
manual guiding mechanism. Hill-Rom, 755 F.3d at 1372.
In fact, the specification states nothing about whether the
guiding mechanism is manual or automatic. This absence
leads us to conclude that nothing in the specification ex-
plicitly or implicitly limits the guiding mechanism to man-
ual embodiments. See id. at 1373 (“There are no magic
words that must be used, but to deviate from the plain and
ordinary meaning of a claim term to one of skill in the art,
the patentee must, with some language, indicate a clear in-
tent to do so in the patent. And there is no such language
here.”).
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Waters resists this conclusion by invoking portions of
the specification that allegedly indicate that the “pipette
guiding mechanism” is manual. Waters cites descriptions
of “pre-set factory alignment” of the pipette assembly that
“significantly improves usability and reliability of the in-
strument” and “makes the quality of measurements inde-
pendent of the user skills.” ’549 patent col. 8 ll. 21–25.
Waters also cites that the guiding mechanism “enables
proper positioning of the pipette assembly.” Id. at col. 8 ll.
25–26. According to Waters, “these references plainly con-
template that a ‘user’ must manually move the pipette as-
sembly into positions of operation, assisted by the pre-
aligned guidance mechanism to avoid variability between
experiments.” Appellee’s Br. 51. Waters’s heavy reliance
on these disclosures is misplaced, however, because the
benefits articulated in these disclosures are consistent with
both manual and automatic embodiments of the guiding
mechanism. As Malvern persuasively argues, “a guiding
mechanism that restricts the movement of the pipette as-
sembly between predetermined positions of operation im-
proves usability and reliability and makes measurement
independent of user skills—regardless [of] whether the pi-
pette assembly is manually or automatically moved within
those constraints.” Reply Br. 25. At bottom, these descrip-
tions say nothing about whether the guiding mechanism is
manually or automatically operated.
Waters further invokes the fact that the pipette assem-
bly and stirring motor are automatic. ’549 patent col. 5
l. 1–col. 6 l. 2. According to Waters, the implication is that
the “pipette guiding mechanism” is not automatic since the
specification never explicitly describes the “pipette guiding
mechanism” as automatic. Our conclusion from this differ-
ence, however, is that unlike the pipette assembly and the
stirring motor, the specification describes the guiding
mechanism broadly, without limitation to either manual or
automatic embodiments. Waters does not point to portions
of the specification that change our conclusion—that the
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 14
specification neither explicitly nor implicitly limits the “pi-
pette guiding mechanism” to manual embodiments.
Waters also argues that the prosecution history of the
’175 patent supplemental examination limits the guiding
mechanism to manual embodiments. The co-inventor dec-
larations submitted during the ’175 patent supplemental
examination do not change our conclusion. During the sup-
plemental examination, the examiner initially rejected
claim 9 of the ’175 patent as anticipated by the iTC200
manual. J.A. 1464–66. Malvern overcame this anticipa-
tion rejection by submitting co-inventor declarations estab-
lishing that the iTC200 was the original applicant’s own
prior art. J.A. 1553, 1686. Waters argues that these state-
ments mean that Malvern argued the ’175 patent was co-
extensive with the iTC200, which is manually operated.
Appellee’s Br. 52–54. The context of Malvern’s statements
during the supplemental examination, however, indicates
that the co-inventor declarations do not bear on the precise
scope of the ’175 patent; they establish only that the
iTC200 embodied what was described and claimed in the
’549 and ’175 patents. See Myco Indus., Inc. v. BlephEx,
LLC, 955 F.3d 1, 15 (Fed. Cir. 2020) (“[C]laim construction
. . . focuses on the recited limitations of the claims, not the
features of a commercial embodiment of the invention.”).4
In sum, the claim language and the specification indi-
cate that the term “pipette guiding mechanism” in the ’549
and ’175 patents is used broadly. The prosecution history
discussed above does not change our conclusion. Thus, the
claim language and specification both support the conclu-
sion that “pipette guiding mechanism” is a mechanism that
4 For this reason, we consider these statements “too
vague or ambiguous to qualify as a disavowal of claim
scope.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
1325 (Fed. Cir. 2003).
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 15
guides the pipette assembly either manually or automati-
cally.
II
The district court took a different view, concluding that
“pipette guiding mechanism” is a coined term with no com-
monly understood meaning in the art. Decision, 2021 WL
965684, at *5. On this basis, the district court concluded
that “pipette guiding mechanism” “cannot be construed
broader than the disclosure in the specification.” Id. at *6
(quoting Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352,
1357–58 (Fed. Cir. 2016)).
In Indacon, we held that claim terms that “have no
plain or established meaning to one of ordinary skill in the
art” “ordinarily cannot be construed broader than the dis-
closure in the specification.” Indacon, 824 F.3d at 1357 (cit-
ing Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d
1295, 1300 (Fed. Cir. 2004)). We have sparingly applied
this principle of construction in other cases. See, e.g., Iri-
descent Networks, 933 F.3d at 1353 (considering a “coined
term of degree”); Honeywell Int’l Inc. v. Universal Avionics
Sys. Corp., 488 F.3d 982, 991 (Fed. Cir. 2007) (citing Irdeto,
383 F.3d at 1300).
The district court’s analysis predominantly addressed
whether “pipette guiding mechanism” has a plain and or-
dinary meaning broadly in the art. Decision, 2021 WL
965684, at *5 (concluding that “pipette guiding mecha-
nism” is a coined term because Malvern did not show “pi-
pette guiding mechanism” was known in the art or readily
understandable to a skilled artisan). This analysis, how-
ever, does not answer the question of what plain and ordi-
nary meaning a term has in the context of a patent, which
is the focus of our analysis. See 3M Innovative Props., 725
F.3d at 1328–30 (evaluating the plain and ordinary mean-
ing of a patent term that “does not have an ordinary mean-
ing outside of the [asserted] Patents”). We discern plain
and ordinary meaning by examining the claims
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 16
themselves, the specification, and the prosecution history.
Phillips, 415 F.3d at 1314. As we explained above, the
plain and ordinary meaning of “pipette guiding mecha-
nism” is a mechanism that guides a pipette, which can be
either manual or automatic.
III
A remaining question is how much weight we should
give the ’782 patent prosecution history in our analysis.
The district court concluded that the prosecution history of
the ’782 patent was relevant to the construction of “pipette
guiding mechanism.” Decision, 2021 WL 965684, at *5.
The district court relied heavily on the ’782 patent prose-
cution history to limit the guiding mechanism to manual
embodiments. Id. at *5–6.
We conclude that merely listing the ’782 patent office
actions in the IDS of the ’175 patent supplemental exami-
nation was insufficient to inform the meaning of “pipette
guiding mechanism” in the unrelated ’175 and ’549 pa-
tents. On this basis alone, we conclude that the district
court erred when it used the ’782 patent prosecution his-
tory statements to limit “pipette guiding mechanism” to
manual guiding mechanisms.
“In the absence of an incorporation into the intrinsic
evidence, this 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 dis-
tinct line between patents that have a familial relationship
and those that do not.” Goldenberg v. Cytogen, Inc., 373
F.3d 1158, 1167 (Fed. Cir. 2004). However, even once a
reference has been incorporated into the intrinsic record,
such as by citation in an IDS, see Ekchian v. Home Depot,
Inc., 104 F.3d 1299, 1303–04 (Fed. Cir. 1997), the amount
of characterization of that reference in the IDS impacts
how informative we consider that reference when evaluat-
ing a patent. For example, listing of references in an IDS
does no more than admit “that references in the disclosure
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 17
may be material to prosecution of the pending claims,” but
it does not admit materiality. Abbott Labs. v. Baxter
Pharm. Prods., Inc., 334 F.3d 1274, 1279 (Fed. Cir. 2003).
Likewise, a patentee has not necessarily admitted that a
listed reference’s characterization or use of a claim term
bears on the proper construction of that term in the patent.
See id.
We conclude that Malvern’s bare listing of the ’782 pa-
tent office actions in the IDS during the ’175 patent sup-
plemental examination did not amount to an admission
that the ’782 patent prosecution history is material (or con-
trolling) in construing “pipette guiding mechanism.” The
sum total of the references to the ’782 patent prosecution
history is seven lines in the IDS citing office actions from
the ’782 patent prosecution.5 Malvern’s bare references to
the ’782 patent office actions in the IDS for the ’175 patent
supplemental examination are insufficient to impact our
understanding of the specification and claim language. On
this basis alone, the ’782 patent prosecution history state-
ments cannot limit the scope of “pipette guiding mecha-
nism.”
IV
Even if, however, the bare references to the office ac-
tions in the IDS were sufficient for us to consider the ’782
patent prosecution history in our analysis, the statements
in the ’782 patent prosecution history do not clearly and
5 The IDS in the ’175 patent supplemental examina-
tion cites only the office actions from the ’782 patent pros-
ecution, not the ’782 patent applicant’s arguments.
Because we conclude the district court improperly consid-
ered the ’782 patent prosecution history, we do not address
the propriety of the district court’s consideration of addi-
tional documents not cited in the IDS.
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 18
unambiguously disclaim any scope of “pipette guiding
mechanism.”
Because we concluded above that the ordinary mean-
ing of “pipette guiding mechanism” is a mechanism that
guides the pipette assembly either manually or automati-
cally, we consider whether the ’782 patent prosecution
statements could disclaim the broad scope of “pipette guid-
ing mechanism.” The doctrine of prosecution disclaimer
“preclud[es] patentees from recapturing through claim in-
terpretation specific meanings disclaimed during prosecu-
tion.” Omega Eng’g, 334 F.3d at 1323. Prosecution
disclaimer, which can arise from arguments made during
prosecution or claim amendments, “only applies to unam-
biguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d
1335, 1341 (Fed. Cir. 2012).
Here, although the ’782 patent applicant argued that
the ’968 application discloses only a manual guiding mech-
anism, J.A. 2919, the examiner clearly stated its rejection
of this argument several times. J.A. 2858, 2872–73, 2893,
2906–07, 2926–27. The ’782 patent applicant then aban-
doned this unviable argument that the ’968 application
only discloses a manual guiding mechanism and instead
successfully argued that the ’968 application did not qual-
ify as prior art. J.A. 2842, 2852. A reasonable interpreta-
tion of this colloquy with the examiner is that by
abandoning its argument that the ’968 application dis-
closes only a manual guiding mechanism, the ’782 patent
applicant acquiesced to the examiner’s views regarding the
scope of the ’968 application.
In these circumstances, where an applicant abandons
its unsuccessful argument, we conclude that the prosecu-
tion history lacks the clarity necessary to establish prose-
cution disclaimer. We have previously declined to find
prosecution disclaimer where an applicant made an alleg-
edly disclaiming argument to overcome prior art, the ex-
aminer disagreed, and the applicant “never repeated the
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MALVERN PANALYTICAL INC. v. TA INSTRUMENTS- WATERS LLC 19
allegedly disclaiming statements and instead offered alter-
native reasons to overcome” the prior art. Ecolab, Inc. v.
FMC Corp., 569 F.3d 1335, 1343 (Fed. Cir. 2009). The cir-
cumstances here are similar to the circumstances in
Ecolab. By abandoning its arguments about the scope of
the ’968 application, “a reasonable reader” of the ’782 pa-
tent prosecution history could conclude that the ’782 patent
applicant “recognized its error and never again repeated or
relied upon the erroneous rationale.” Id. In such circum-
stances, an applicant’s statements “simply are not clear
and unmistakable enough to invoke the doctrine of prose-
cution history disclaimer.” Id.; see also Mass. Inst. of Tech.
v. Shire Pharms., Inc., 839 F.3d 1111, 1120–21 (Fed. Cir.
2016) (concluding no unambiguous prosecution disclaimer
where a patent applicant attempted to add a limitation, the
examiner rejected the added limitation under § 112 as new
matter, and the applicant “never again sought to limit the
claims” with the additional limitation).
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
conclude that the proper construction of “pipette guiding
mechanism” is a mechanism that guides the pipette assem-
bly either manually or automatically.6 We thus vacate the
stipulated judgment of non-infringement and remand for
further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to Malvern.
6 The district court may need to further refine this
construction on remand, consistent with our holding here.
In re Papst Licensing Digital Camera Pat. Litig., 778 F.3d
1255, 1261 (Fed. Cir. 2015).
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