Tmc Fuel Injection System, LLC v. Ford Motor Company
682 F. App'x 895
| Fed. Cir. | 2017Background
- TMC sued Ford in 2012, alleging Ford’s vehicle fuel injection systems infringe claims 38 and 40 of U.S. Patent No. 7,318,414 (the ’414 patent), which describe a fuel recirculation loop and a "flow constraint" to stabilize fuel pressure and reduce hot fuel returns.
- The asserted claims’ preambles reference minimizing or eliminating the need for a hot fuel return line and a low pressure regulator; the claim body includes a fuel return path with a flow constraint (fixed resistance).
- Ford petitioned for IPR; the PTAB found Ford had not shown unpatentability but relied on prosecution statements that disclaimed pressure regulators when evaluating prior art.
- The district court, after the PTAB decision, found that TMC’s prosecution history unequivocally disavowed pressure regulators from the claimed system and amended claim construction to exclude pressure regulators of any type, then granted summary judgment of noninfringement because Ford’s accused systems use pressure regulators.
- On appeal the Federal Circuit reviewed de novo whether the prosecution history created a clear and unmistakable disclaimer of all pressure regulators from the claimed fuel system and affirmed the district court.
Issues
| Issue | Plaintiff's Argument (TMC) | Defendant's Argument (Ford) | Held |
|---|---|---|---|
| Whether prosecution history disclaimed pressure regulators from the claimed system | Any disclaimer was limited to the flow-constraint component (not the entire system); claims and some claim language leave open use of regulators | TMC’s prosecution statements categorically disclaimed pressure regulators from the entire system | The court held TMC’s prosecution statements unequivocally disavowed pressure regulators of any type from the claimed system |
| Whether the disclaimer was limited to a specific type (three-port valve) | Any disavowal at most referred to a particular regulator type (three-port valve) | The prosecution repeatedly disclaimed regulators “of any type” | The court rejected limiting the disclaimer to a regulator subtype; the disclaimer was general |
| Whether intrinsic claim language can overcome prosecution disclaimer | Claim preambles and unasserted claims permit minimizing or including regulators, so disclaimer should be narrow | Prosecution statements can narrow claim scope regardless of broader claim language | The court held prosecution disclaimer governs and can override claim language that otherwise would be broader |
| Impact on infringement | TMC: claims still read to allow some regulators; infringement dispute remains | Ford: if disclaimer applies, accused products (which include regulators) do not infringe | Because disclaimer excludes regulators and Ford’s systems include them, summary judgment of noninfringement affirmed |
Key Cases Cited
- Uship Intellectual Props., LLC v. United States, 714 F.3d 1311 (Fed. Cir. 2013) (prosecution disclaimer requires clear and unmistakable surrender)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (prosecution disclaimer narrows ordinary claim meaning congruent with surrender)
- Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305 (Fed. Cir. 2016) (appellate review standard for district court summary judgment in patent claim construction context)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (de novo review of intrinsic-evidence-based claim constructions)
- Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed. Cir. 2009) (prosecution disclaimer is a legal question reviewed de novo)