Agilent Techs., Inc. v. Waters Techs. Corp., 2015–1280.

• Decision Date: 29 January 2016
• Docket Number: No. 2015–1280.,2015–1280.
• Citation: 811 F.3d 1326
• Parties: AGILENT TECHNOLOGIES, INC., Appellant v. WATERS TECHNOLOGIES CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

811 F.3d 1326

AGILENT TECHNOLOGIES, INC., Appellant

v.WATERS TECHNOLOGIES CORPORATION, Appellee.

No. 2015–1280.

United States Court of Appeals, Federal Circuit.

Jan. 29, 2016.

John M. Griem, Jr., Carter Ledyard & Milburn LLP, New York, NY, argued for appellant.

Erik Paul Belt, McCarter & English, LLP, Boston, MA, argued for appellee. Also represented by Kia Lynn Freeman, Deborah M. Vernon.

Before MOORE, O'MALLEY, and TARANTO, Circuit Judges.

O'MALLEY, Circuit Judge.

Agilent Technologies, Inc. ("Agilent") seeks review of a final decision of the United States Patent and Trademark Office Patent Trial and Appeal Board ("the Board") in an inter partes reexamination of U.S. Patent No. 6,648,609 to Terry A. Berger et al. ("the '609 patent"). The threshold question is whether Agilent is the right party to appeal the reexamination decision. Because Aurora SFC Systems, Inc. ("Aurora"), not Agilent, is the third-party requester, Agilent lacks a cause of action to bring this appeal. We, therefore, dismiss Agilent's appeal.

I. BACKGROUND

A. The '609 patent

We include some background information about the claimed invention to provide context. The '609 patent relates to chromatography systems that use highly compressed gas, compressible liquid, or supercritical fluid. In liquid chromatography, a sample is first mixed with a liquid and this mixture then flows through a chromatography column that is typically packed with absorbent particles or gel. The '609 patent is directed to using a pump as a pressure source for supercritical fluid chromatography ("SFC"), a more efficient and advanced form of chromatography. SFC uses pumps to regulate the flow of compressible fluids, such as supercritical carbon dioxide, through the column. Accurately controlling the flow in this system is difficult and typically requires an expensive pump.

The '609 patent provides an alternative system for SFC that allows for the effective use of a less expensive and less precise pump than was required by the prior art. The system regulates the flow of the compressible fluid using pressure regulators and a restriction in the flow stream. A forward-pressure regulator ("FPR") is installed directly downstream of the pump. Downstream of the FPR, the flow is restricted with a precision restrictor, which is also called an orifice. Downstream of the orifice is a back-pressure regulator ("BPR"). "The series of an FPR–orifice–BPR is designed to control the pressure drop across the orifice, which dampens out oscillation from noisy pressure signals caused by large ripples in the flow leaving the pump." '609 patent col. 4 ll. 32–36. A differential pressure transducer can also be installed on the flow lines around the restrictive orifice to "control" the pressure drop across the orifice. As originally issued on November 18, 2003, the '609 patent had 11 claims, with two independent claims, 1 and 9, directed to a system. Claims 1 and 9 differed in their use of the word "restrictor" or "orifice," this difference being immaterial for the appeal. Dependent claim 4 added a differential pressure transducer to control pressure drops across the restrictor.

B. Procedural History

In 2011, Appellee Waters Technologies Corporation ("Waters") brought suit against Aurora for, inter alia, infringement of the '609 patent in the United States District Court for the District of Delaware in Waters Technologies Corp v. Aurora SFC Systems, Inc., No. 1:11–cv–00708–JEI–KW.

On March 27, 2012, Aurora filed a request for inter partes reexamination of all claims of the '609 patent. The Request cited new prior art, including U.S. Patent No. 4,799,511 to Azimov ("Azimov") and U.S. Patent No. 5,952,556 to Shoji ("Shoji"). On July 9, 2012, in response to an initial Office Action rejecting all the claims of the '609 patent, Waters amended independent claims 1 and 9 to incorporate claim 4 and added dependent claims 12 and 13, which recite the system of claims 1 and 9 respectively, with the additional limitation: "wherein the flow stream comprises CO2."

According to Agilent, on or about August 2012, it acquired substantially all of Aurora's assets. Appellant Br. 8–9. As part of that acquisition, Agilent says it agreed to be bound by the outcome of the two reexamination proceedings, including the '609 reexamination and the pending patent infringement litigation. Id. At that point in time, nothing was filed identifying Agilent in the reexamination. In fact, after the examiner issued its Action Closing Prosecution ("ACP") on September 24, 2012 and Waters filed its response, Aurora, not Agilent, submitted third-party comments.

The examiner then issued a Right of Appeal Notice ("RAN"), rejecting all remaining claims of the '609 patent on various grounds. The examiner found that amended independent claims 1 and 9 were anticipated by Azimov and that new dependent claims 12 and 13 were obvious in view of Azimov and the Admitted Prior Art of the '609 patent. The examiner also noted that the specification itself showed that pumping carbon dioxide through a pressure regulator and restrictors was well-known.

Waters filed a notice of appeal to the Board, and Aurora cross-appealed on March 8, 2013. The cross-appeal notice took issue with the examiner's failure to adopt the proposed rejection of claims 1, 2, 9–11, 12, and 13 over Azimov in view of Shoji. Aurora filed a request to change the real party in interest from Aurora to Agilent on April 26, 2013. Agilent's counsel began participating in the proceedings along with counsel for Aurora.

The Board reversed all of the examiner's rejections. Aurora SFC Sys., Inc. v. Waters Techs. Corp., No. 2014003320, 2014 WL 4923558, at *17 (P.T.A.B. Sept. 29, 2014). According to the Board, Azimov did not anticipate the independent claims because it does not disclose a "differential pressure transducer." The Board's disagreement with the examiner stemmed from the Board's construction of the word "control" to mean "to adjust to a requirement" or to "regulate." Id. at *6. This construction excludes shutting off a pressure drop across the orifice, which is all the Azimov reference's flow switch is capable of doing. Id. at *10. The Board adopted the new ground of rejection proposed in the cross-appeal as to claims 1, 2, and 9–11, however, because Shoji teaches a differential pressure transducer capable of controlling the pressure drop across the orifice. The Board declined to enter a new ground of rejection for claims 12 and 13 because the cross-appellant did "not explain how either Azimov or Shoji, or a combination of the two, teaches or suggests" the limitation of the flow stream comprising CO2. Id. at *17. The Board's decision listed Aurora as the third-party requester and Aurora's counsel as counsel for the third-party requester.

Agilent appealed to this court. Waters moved to dismiss the appeal for lack of standing. A motions panel denied the motion, directing the parties to address the issue in their briefs instead.

II. DISCUSSION

The parties dispute our jurisdiction over this appeal. Agilent asserts that we have jurisdiction over this appeal under 35 U.S.C. § 141.¹ Waters disagrees, arguing that, while § 141 is the right statute, Agilent is the wrong party to bring this appeal because Aurora—not Agilent—is the third-party requester of the inter partes reexamination.

Although the parties frame this dispute as one relating to jurisdiction, it is properly framed as one relating to whether Agilent has a cause of action. Jurisdiction and standing are concepts distinct from each other, though they are related for Article III purposes, and distinct from having the right to maintain a cause of action.² These are not interchangeable terms and should be used with care. "[I]t is well settled that the failure to state a proper cause of action calls for a judgment on the merits and not for a dismissal for want of jurisdiction." Engage Learning, Inc. v. Salazar, 660 F.3d 1346, 1353 (Fed.Cir.2011) (quoting Bell v. Hood, 327 U.S. 678, 682, 66 S.Ct. 773, 90 L.Ed. 939 (1946) ).

The question the parties raise, in fact, is whether Agilent is a member of a class of litigants that may enforce a legislatively created right or obligation created under 35 U.S.C. § 141. "If a litigant is an appropriate party to invoke the power of the courts, it is said that he has a ‘cause of action’ under the statute, and that this cause of action is a necessary element of his ‘claim.’ " Davis, 442 U.S. at 239, 99 S.Ct. 2264 ; see also Shapiro v. McManus, ––– U.S. ––––, 136 S.Ct. 450, 455, 193 L.Ed.2d 279 (2015) ("We have long distinguished between failing to raise a substantial federal question for jurisdictional purposes ... and failing to state a claim for relief on the merits"). "Whether petitioner has asserted a cause of action, ... depends not on the quality or extent of her injury, but on whether the class of litigants of which petitioner is a member may use the courts to enforce the right at issue." Davis, 442 U.S. at 239 n. 18, 99 S.Ct. 2264. We turn to that properly identified question.

The parties agree that Agilent's right to appeal, if any, comes from 35 U.S.C. § 141. We, therefore, turn to the language of the statute. After all, statutory interpretation focuses on the language of the statute itself, and a statute's unambiguous language is ordinarily regarded as conclusive. See Wyeth v. Kappos, 591 F.3d 1364, 1369 (Fed.Cir.2010).

A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.

35 U.S.C. § 141. 35 U.S.C. § 315(b) further provides that:

A third-party requester [ ] may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability

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