CAFC Effectively Says "Miranda Warning" Does Not Apply to Patent Prosecution

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Whether in film or television crime dramas, most people have seen a suspected criminal given her “Miranda Warning” which includes the familiar line: “Anything you say can and will be used against you in a court of law.” The U.S. Court of Appeals for the Federal Circuit recently ruled that patent applicants, in certain circumstances, may make statements during prosecution of their applications without any consequences at all.

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In 1966, the U.S. Supreme Court held in Miranda v. Arizona[1] that a criminal suspect’s constitutional rights are meaningless unless the suspect is aware of them. Since then, whether in American-made film or television crime dramas, or perhaps in real-world experiences (though we hope not the latter), most people have seen a suspected criminal given her “Miranda Warning” which includes the familiar line: “Anything you say can and will be used against you in a court of law.” In Malvern Panalytical Inc. v. TA Instruments-Waters LLC,[2] the U.S. Court of Appeals for the Federal Circuit (CAFC) recently ruled that patent applicants, in certain circumstances, may say things during prosecution of their applications without those statements having any adverse consequences at all. In the author’s opinion, this is an unwise decision that can have only bad consequences in the future for the U.S. patent system.[3]

Among other issues in Malvern Panalytical, the trial court was required to construe the meaning of the claim phrase “pipette guiding mechanism” to determine whether the language included only manual guiding mechanisms or both manual and automatic guiding systems. For a number of reasons, the trial court decided that the claim language covered only manual guiding mechanisms, one of the reasons being the applicant’s explicit argument that a related application sharing the same disclosure only disclosed manual guiding mechanisms.

In its appellate decision, the CAFC examined each of the reasons relied upon by the trial court for its claim interpretation ruling. Importantly, for several independently sufficient reasons the CAFC found that the district court erred when it relied on certain aspects of the patent prosecution history to limit “pipette guiding mechanism” to only manual guiding mechanisms. The CAFC could, and should, have stopped right there; instead, having already decided the issue, the court proceeded to analyze whether the doctrine of prosecution disclaimer should be invoked to limit “pipette guiding mechanism” to only manual guiding mechanisms. Because the CAFC’s discussion of this issue was wholly unnecessary to its decision, it may—and should—be considered incidental and non-precedential in future cases, in the author’s opinion.

More specifically, the doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution of their patent applications.  Prosecution disclaimer, which can arise from arguments made during prosecution or claim amendments, only applies to unambiguous disavowals. In Malvern Panalytical, there was no doubt that the patentee made such an “unambiguous disavowal” of claim scope, clearly and explicitly arguing that the identical disclosure of the related patent showed only manual guiding mechanisms. Apparently, however, the patentee was obviously mistaken, or at least so said the CAFC noting that the USPTO examiner “clearly stated its rejection of this argument several times.” According to the CAFC, the patentee “then abandoned this unviable argument that the [related] application only discloses a manual guiding mechanism,” and switched to another argument that was ultimately successful. 

The CAFC did not identify any statement by the patentee evidencing any abandonment of its unsuccessful argument. Instead, the court explained: “A reasonable interpretation of this colloquy with the examiner is that by abandoning its argument that the [related] application discloses only a manual guiding mechanism, the [successful] patent applicant acquiesced to the examiner’s views regarding the scope of the [related] application.” The CAFC does not say that this is the only possible reasonable interpretation; another wholly logical and possible interpretation is that the applicant continued making different arguments until the examiner relented and agreed with the latest one, and did not abandon any of the previously unsuccessful ones, and never acquiesced in anything said or done by the USPTO examiner. It is reasonably safe to surmise that all of the unsuccessful arguments would have been re-argued in any appeal of the examiner’s final rejection to the Patent Trial and Appeal Board, had the patent prosecution not resulted in allowance of the application and grant of the patent.

The CAFC concluded: “In these circumstances, where an applicant abandons its unsuccessful argument, we conclude that the prosecution history lacks the clarity necessary to establish prosecution disclaimer.” But this improperly deflects the focus of prosecution disclaimer away from unambiguous disavowals of claim scope made by the applicant to whether or not those unambiguous disavowals were successful. This redirection of the doctrine is highly problematic and can only encourage mischief.

First, USPTO examiners may, but are not always required to, explain their reasons for allowing an application to pass to grant of a patent. Second, even when examiners do provide a statement for reasons of allowance, such statements are only very rarely “models of clarity” in the author’s four decades of experience. 

Third, and possibly most importantly, the Malvern decision may encourage applicants to submit multiple arguments, no matter how dubious, on every issue relating to every claim rejection. Examiners will not likely take the time to specify which one was the winning argument and which ones were the losing arguments. Then, during the claim construction phase of subsequent patent infringement litigation, the patentee will be free to argue that it should not be held to whatever it clearly and unambiguously said about claim scope in any of its arguments, by asserting that the particular limiting statement in one of the alternative positions was not accepted by the examiner and was therefore “abandoned.”

The CAFC justified this aspect of its decision by citing two of its own previous decisions, but both of those decisions are clearly and easily distinguishable from the facts presented in Malvern. Moreover, by failing to provide any example of an applicant’s statement that the court considers sufficient to constitute “abandonment” of an unsuccessful argument, an entirely new pathway to avoidance of the prosecution disclaimer effect of otherwise unambiguous disavowals of claim scope has been established by the CAFC in Malvern. Instead, the CAFC has told applicants: “Say anything you want about claim scope to USPTO examiners, and if you do it right, it cannot and will not be used against you in a court of law.”