{"id":3563,"date":"2023-11-01T21:17:00","date_gmt":"2023-11-02T02:17:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=3563"},"modified":"2023-12-12T17:28:40","modified_gmt":"2023-12-12T23:28:40","slug":"co-owned-but-unrelated-application-cited-in-ids-does-not-inform-the-meaning-of-the-claims","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=3563","title":{"rendered":"Co-owned, but Unrelated Application Cited in IDS Does not Inform the Meaning of the Claims"},"content":{"rendered":"\n

In Malvern Panalytical Inc., v. TA Instruments-Waters LLC<\/em>, [2022-1439]<\/a> (November 1, 2023), because the district court erred in construing \u201cpipette guiding mechanism,\u201d the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent Nos. 8,827,549 (\u201cthe \u2019549 patent\u201d) and 8,449,175 and remanded for further proceedings.  These patents both disclose microcalorimeters, which are machines that measure the amount of energy absorbed or released during a chemical reaction between two compounds.<\/p>\n\n\n\n

Malvern and Waters disputed whether the term \u201cpipette guiding mechanism\u201d encompasses only manual guiding mechanisms (Waters\u2019s position) or covers both manual and automatic guiding mechanisms (Malvern\u2019s position). The Federal Circuit agreed with Malvern that \u201cpipette guiding mechanism\u201d means a mechanism that guides the pipette assembly manually or automatically.<\/p>\n\n\n\n

Starting with the claim language, the Federal Circuit concluded that \u201cpipette guiding mechanism\u201d has a plain and ordinary meaning\u2014a mechanism that guides the pipette assembly.  It is appropriate to construe this term by looking to the words \u201cpipette,\u201d \u201cguiding,\u201d and \u201cmechanism\u201d individually.  Looking at the individual words in the claim, the immediately apparent meaning is that a \u201cpipette guiding mechanism\u201d is a mechanism that guides the pipette. The claim language contains no restrictions that would suggest that the \u201cpipette guiding mechanism\u201d is only manual. Instead, the broad claim language supports the conclusion that the \u201cpipette guiding mechanism\u201d encompasses both manual and automatic embodiments.<\/p>\n\n\n\n

The specification confirms the broader understanding of the \u201cpipette guiding mechanism.\u201d It discloses two embodiments of the guiding mechanism. The first embodiment is a guide arm that can move only by way of a guide rod where permitted by guide grooves.  The second is a guide arm that can only move where permitted by a coaxial guide sleeve.  The specification contains no language describing the invention as limited to a manual guiding mechanism, stating that \u201cthe present invention \u2018is,\u2019 \u2018includes,\u2019 or \u2018refers to\u2019\u201d a manual guiding mechanism, or \u201cexpressing the advantages, importance, or essentiality\u201d of a manual guiding mechanism.<\/p>\n\n\n\n

The district court took a different view, concluding that \u201cpipette guiding mechanism\u201d is a coined term with no commonly understood meaning in the art.  On this basis, the district court concluded that \u201cpipette guiding mechanism\u201d \u201ccannot be construed broader than the disclosure in the specification.\u201d  The Federal Circuit said that it has sparingly applied this principle of construction in other cases.  The district court\u2019s analysis predominantly addressed whether \u201cpipette guiding mechanism\u201d has a plain and ordinary meaning broadly in the art. The Federal Circuit said that this analysis, however, did not answer the question of what plain and ordinary meaning a term has in the context of a patent, which is the focus of the Federal Circuit\u2019s analysis.  The Federal Circuit said that it discerns plain and ordinary meaning by examining the claims themselves, the specification, and the prosecution history.<\/p>\n\n\n\n

The district court relied heavily on the co-owned, but unrelated \u2019782 patent prosecution history to limit the guiding mechanism to manual embodiments.  The Federal Circuit concluded that merely listing the \u2019782 patent office actions in the IDS of the patent supplemental examination was insufficient to inform the meaning of \u201cpipette guiding mechanism\u201d in the unrelated \u2019175 and \u2019549 patents.  On this basis, the Federal Circuit concluded that the district court erred when it used the \u2019782 patent prosecution history statements to limit \u201cpipette guiding mechanism\u201d to manual guiding mechanisms.  The Federal Circuit said:<\/p>\n\n\n\n

\n

\u201cIn the absence of an incorporation into the intrinsic evidence, this court\u2019s 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.\u201d<\/p>\n<\/blockquote>\n\n\n\n

The amount of characterization of that reference in the IDS impacts how informative we consider that reference when evaluating a patent. For example, listing of references in an IDS does no more than admit \u201cthat references in the disclosure may be material to prosecution of the pending claims,\u201d but it does not admit materiality.  Likewise, a patentee has not necessarily admitted that a listed reference\u2019s characterization or use of a claim term bears on the proper construction of that term in the patent.<\/p>\n\n\n\n

The Federal Circuit noted that although the \u2019782 patent applicant argued that the \u2019968 application discloses only a manual guiding mechanism, the examiner clearly stated its rejection of this argument several times.\u00a0 In these circumstances, where an applicant abandons its unsuccessful argument, the Federal Circuit concluded that the prosecution history lacks the clarity necessary to establish prosecution disclaimer.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Malvern Panalytical Inc., v. TA Instruments-Waters LLC, [2022-1439] (November 1, 2023), because the district court erred in construing \u201cpipette guiding mechanism,\u201d the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent Nos. 8,827,549 (\u201cthe \u2019549 patent\u201d) and … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,1],"tags":[],"class_list":["post-3563","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3563","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=3563"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3563\/revisions"}],"predecessor-version":[{"id":3564,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3563\/revisions\/3564"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3563"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3563"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3563"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}