The Federal Circuit Held that Mere Submission of Office Actions of an Unrelated (but commonly owned) Patent in an IDS Does Not Cause an Applicant to Adopt Statements in Those Office Actions, and is an Insufficient Basis to Limit Claim Scope.

The Federal Circuit, in Malvern Panalytical Inc. v. TA Instruments-Waters LLC, 85 F.4th 1365 (Fed. Cir. Nov. 1, 2023), held that the amount of weight a court gives during claim construction to a reference incorporated into the intrinsic record by IDS is determined by the amount of characterization of that reference. Merely listing a reference alone does not actually admit materiality and is insufficient, on its own, to limit the claims of the patent-at-issue. Specifically, submission of Office Actions from applicant’s other patents in an IDS does not cause applicant to adopt statements made in those Office Actions in the patent-at-issue.