Docket No. 2016-2122
PROST, WALLACH, STOLL
March 27, 2017
Non-precedential
Brief Summary: DC grant of SJ of noninfringement of US 7,318,414 relating to fuel injection systems to Ford on the basis of prosecution history disclaimer (PHD) affirmed (“even if there is claim language that might have otherwise left open” the disclaimed option, “TMC’s statements during prosecution definitively closed that door” which is “precisely the point of prosecution disclaimer.”)
Summary: TMC appealed DC grant of SJ of noninfringement of US 7,318,414 relating to fuel injection systems to Ford on the basis of prosecution history disclaimer (PHD). While this litigation was pending, Ford successfully petitioned for IPR and the DC stayed the litigation. The PTO finally decided Ford has not shown the claims would have been anticipated or obvious, concluding, “in relevant part, that several of the asserted prior art references failed to disclose a fuel return path with ‘flow constraint’ because those references used pressure regulators, whereas ‘the prosecution history states an express disclaimer of pressure regulators’ from the ‘414 patent’s ‘flow constraint’ limitation.” The DC followed this argument and “amended its claim construction ‘to exclude pressure regulators of any type from the system’” and granted SJ to Ford “because the parties did not dispute that Ford’s accused systems include a pressure regulator.” The only issue considered in this appeal was “whether the prosecution history…demonstrates that all pressure regulators were disclaimed…from the fuel system as a whole, and not just from the flow constraint portion” thereof. The FC panel opinion explains that PHD “applies when a patentee makes a statement during prosecution that would cause ‘a competitor [to] reasonably conclude that the applicant clearly and unmistakably limited’ the scope of its claims” (Uship, FC 2013; Omega Eng’g, FC 2003 (where PHD “attaches”, it “narrows the ordinary meaning”); Tech. Props., FC (March 3, 2017) (“the scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary…we hold patentees to the actual arguments made”); reviewed de novo (Ecolab, FC 2009)). TMC argued the Board only found a disclaimer of pressure regulators from the flow constraint” but the FC explained in FN2 that “[t]he Board did not so cabin its discussion” and instead “applie[d]” the “disclaimer to the flow constraint limitation.” During prosecution, TMC responded to a prior art rejection by stating “that ‘[t]he Application does not use [a] pressure regulator or pressure relief valve” which was reiterated in the appeal of the examiner’s subsequent rejection (“TMC distinguished the prior art by reiterating that the claimed ‘invention is not directed to pressure regulators…In this case, every cited reference has at least one pressure regulator”, “stated, in no uncertain terms, that the claimed invention ‘eliminat[es] pressure regulators and incremental regulation means of any type from the system,’ and explained that ‘no regulator of any kind is use by the Appellant in the system nor needs to be used at anytime.”) The FC panel concluded “TMC’s prosecution statements, particularly the ones made during the BPAI appeal, unequivocally disavow the use of pressure regulators from the entire fuel system.” TMC argued the ‘414 claims “demonstrate any disclaimer was limited because the claims themselves clearly contemplate the presence of pressure regulators” but the FC panel stated that “even if there is claim language that might have otherwise left open [that] option…TMC’s statements during prosecution definitively closed that door” which is “precisely the point of prosecution disclaimer.”
Federal Circuit summaries 