Malvern Panalytical Inc. v. TA Instruments-Waters LLC, No. 22-1439 (Fed. Cir. 2023)
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The 549 and 175 patents disclose microcalorimeters, machines that measure the amount of energy absorbed or released during a chemical reaction between two compounds, specifically an isothermal titration calorimeter (ITC). Malvern’s 782 patent is unrelated to those patents. An examiner rejected various claims of the 782 patent (with an automated ITC) as anticipated by the 968 application, disclosing a prior art “manual ITC system.” The examiner understood the 968 application to disclose an automated ITC system but 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). The examiner then withdrew the rejection, finding that the 968 application did not count as prior art. After Malvern acquired the 549 and 175 patents, Malvern sought supplemental examination of the 175 patent under 35 U.S.C. 257.
Malvern sued Waters for infringing the 549 and 175 patents. The district court construed the term “pipette guiding mechanism” as a “mechanism that manually guides the pipette assembly.” The Federal Circuit vacated. The claim language and the specification indicate that the term is used broadly in the 549 and 175 patents and refers to a mechanism that guides the pipette assembly either manually or automatically. 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 unrelated patents.
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