# United States **Court of Appeals**  **for the Federal Circuit**

______________________
AGILENT TECHNOLOGIES , INC., Appellant

v.

WATERS TECHNOLOGIES CORPORATION, Appellee

______________________

2015

- 1280

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board

, in No. 95/001,947.

______________________
Decided: January 29, 2016

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J OHN M. G RIEM , J R

. , Carter Ledyard & Milburn LLP, New York, NY, argued for appellant.

E RIK P AUL B ELT , McCarter & English, LLP, Boston, MA, argued for appellee. Also represented by K IA L YNN F REEMAN , D EBORAH M. V ERNON

.

______________________
Before M OORE , O’M ALLEY , and T ARANTO , Circuit Judges.

O’M ALLEY , Circuit Judge

. Agilent Technologies, Inc. (“Agilent”) seeks review of a final decision of the United States Patent and TrademarkAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 2

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 thres hold 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. B ACKGROUND
A. The ’609 patent We include some background information about the claimed invention to provide context

. T he ’609 patent relates to chromatography systems that use highly co mpressed gas, compressible liquid, or supercritical fluid. In liquid chromatography, a sample is first mixed with a liquid and this mixture then flows through a chromato graphy column that is typically packed with a bsorbent part icles or gel. The ’609 patent is directed to using a pump as a pressure source for s upe r critical fluid chrom atog raphy (“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 prov ides 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 res tricted with a precision restrictor

, which is also called a n orifice . Downstream of the orifice is a back

- pressure regulator (“BPR”) . “The series of an FPR

- orifice

- BPR is designed to control the pressure dropAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 3

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 differe nt ia l pressure transducer can also be installed on the flow lines around the restrictive orifice to “ control ” the pre ssure 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 “restri ctor” 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”) b rought 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

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cv

- 00708

- JEI

- KW.
On March 27, 2012, Auror a filed a request for inter partes reexamination of all claims of the ’609 patent . The Request cited new prior art, including U.S. Pate nt No. 4,799,5 11 to Azimov (“Azimo v”) and U.S . Patent No. 5,952,556 to Shoji (“Shoji”)

. On July 9, 2012, i n 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 addition al limitation: “wherein the flow stream comprises CO 2 .” According to Agilent, on or about August 20 12, it a cquired 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 pr oceed ings , including the ’ 609 reexamination and the pen ding patent infringement litigation. Id. At that point inAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 4

time, nothing was filed identifying Agilent in the reexa mination. In fact, after the examin er issued its Action Closing Prosecution (“ACP”) on September 24, 2012 and Waters filed its response, Aurora, not Agilent, s ubmitted third

- party comments.

The examiner then issued a Right of Appeal N otice (“RAN”), rejecting all remaining claims of the ’609 patent on various grounds. T he examiner found that amended independent claims 1 and 9 were anticipated by Azimov and t hat new dependent claims 12 and 13 were obvious in view of Azimov an d 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 A urora cross

- appealed on March 8, 2013

. The cross

- appeal notice took issue with the examiner’s failure to adopt the proposed rejection of c laims 1, 2, 9

- 11, 12
, and 13 over Azimov in view of Shoji. Aurora fil ed a request to change the real part y 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 S FC Sys., Inc. v. Waters Tech s . Corp.

, No. 2014

- 003320 , 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 disagre ement with the e xaminer stemmed from the Board’s co nstruction of the word “control” to mean “to adjust to a requirement” or to “regulate.” Id. at *6. This constru ction 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 -a ppeal as to claims 1
, 2 , and 9- 11, however, because Shoji teaches aAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 5

differential pressure transducer capable of controlling the pressure drop across the orifice. The Board declined t o 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 CO 2

. Id. at *17. The Board’s decision listed Auro ra as the third

- party requester and Aurora’s counsel as counsel for the third

- party requester

. Agilent appealed to this court

. Waters moved to di smiss the appeal for lack of standing. A motions panel denied the motion, directing t he parties to address the issue in their briefs instead

. II. D ISCUSSION
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 rela ting to jurisdiction, it is properly f ramed 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 ar e

1 Agilent correctly notes that

, because the inter partes reexamination was filed before the Leahy

- Smith America Invents Act, Pub. L. No. 112

- 29, 125 Stat. 28 4 (2011) , discontinued such proceedings, the pre

- AIA ve rsions of the relevant provisions apply.

2 Davis v. Passman , 442 U.S. 228, 239 n.18 (1979) (“ Thus it may be said that jurisdiction is a question of whether a federal court has the power, under the Const i-AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 6

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 (1946)). The question the parties raise, in fact, is whether A gilent is a member of a class of litigants that may enforce a legislatively created right or obligation created under 3 5 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 ; s ee als o Shapiro v. McManus

, 136 S. Ct. 450, 455 (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. 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

tution or laws of the United States, to hear a case; stan ding is a question of whether a plaintiff is sufficiently adversary to a defendant to cre ate an Art. III case or controversy, or at least to overcome prudential limitations on federal

- court jurisdiction; cause of action is a question of whether a particular plaintiff is a member of the class of litigants that may, as a matter of law, appropria tely invoke the power of the court ; and relief is a question of the various remedies a federal court may make available.” (internal citations omitted) ).AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 7

the language of the statute . After all, s tatutory interpr etation focuses on the language of t he 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

an y reexamination proceeding dissatisfied with the final decision in an appeal to the Board of P atent 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 p atentability of any original or proposed amended or new claim of the patent

. . . . These two statutory provisions thus appear, on their face,
to confer the right to appeal an adverse reexamination decision only on patent owne rs and third

- party r equesters. In its opening b rief, Agilent alternately calls itself the “successor

- in

- interest” and “privy” of Aurora, and argues that it, therefore, “enjoys the protection extended by the statutes.” Appellant Br. 22. Waters responds that A gilent is, at best, merely Aurora’s privy, that mere privies do not enjoy the right to appeal under the statutes, and that Agilent does not become the third

- party requester by being Aurora’s privy. In reply, Agilent abandoned its original statement that it is Aurora’s privy and argues that it is, in fact, Aurora’s factual and legal successor

- in

interest and, therefore, that it is the true third

- party requester. After explaining why Agilent was correct toAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 8

abandon its “privy” argument, we evaluate Agilent’s claim that the asset purchase on which it relies confers on it the status of a third

- party requester for purposes of pursuing this appeal.

A s Waters points out, while § 141 does not reference privies of third

- party requesters when defining the cat egories of litigants who may appeal from reexaminat ion decisions, other statutory provisions governing inter partes reexaminations specifically mention privies. P rovisions governing estoppel for inter partes reex amin ations state : (a) . . . [O] nce an order for inter partes ree x amin ation of a p atent has bee n i s sued

. . . neither the third

- party requester nor its privies may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination certif i cate is issued . . . (b) . . . if a final decision in an inter partes ree xamination proceeding instituted by a third

- party requester is favorable to the p a tentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may ther e after request an inter partes reexamination

o f any such patent claim on the basis of i s sues which that party or its privies raised or could have raised in such civil action or inter partes reexam ination proceeding . . . . 35 U.S.C. § 317 (emphases added)

. Thus, Congress expli citly estops privies fro m requesting or maintaining certain i nter partes reexaminations against the same patent. The fact that Congress references privies here, but not in § 141

, indicates that Congress recognized the difference between the third

- party requester and its privies

. Res

Care, Inc. v. United States , 735 F.3d 1384, 1389 (Fed. Cir. 2013) (“A cardinal doctrine of statutory interpretation is the presumption that Congress’s ‘use of different termsAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 9

within related statutes generally implies that diff erent meanings were inte nded.’” (quoting 2A Norman Singer, Statutes and Statutory Construction § 46.06 (7th ed. 2007)) )

. Because Congress explicitly provided for appeals of reexaminations by third

- party requesters but not privies, w e conclude that, based on the unambiguous language of the statutes, mere privies lack a cause of

a ction to appeal

. “[W]hen a statute provides a detailed mechanism for judicial consideration of particular issues at the behest of particular persons, judicia l review of those issues at the behest of other persons may be found to be impliedly precluded.” Pregis Corp. v. Kappos , 700 F.3d 1348, 1358 (Fed. Cir. 2012) (citation omitted). But Agilent does not stop there; it also calls itself A urora’s successor

- in -i nterest, and

, by its reply brief

, co ntends that “Agilent is far more than a ‘mere privy’

— it is the legal and factual successor in interest to Aurora.” Appellant Reply Br. 12. Agilent maintains that it is the latter because it bought substantially all of Aurora’s
assets before the reexamination concluded, including rights relating to the underlying reexaminations

. Agilent contends that this fact alone is sufficient to allow it to substitute itself for Aurora as the third

- party requester, both for purposes of participation in the reexamination and for purposes of § 141.

35 U.S.C. § 100(e) defines the term “third

- party r equester” in Title 35 to mean “a person requesting ex parte reexamination under section 302 or inter partes reexam ination under section 31 1 who is not the patent owner.” Agilent asks us to assign significance to the tense of the verb “request” in § 100(e)

— specifically, the fact that the “third

- party requester” is the person “ requesting ” reexa mination as of any given point in time and not the person “who requested ” reexamination upon initiation

. While the language of the statute does not explicitly forbid a change in the identity of the third

- party requester over the course of the proceeding or on appeal

, however, i t similarly doesAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 10

not app ear to address whether and under what circu mstances a change in the identity of the third

- party r equester can occur

. See Vaillancourt v. Becton Dickinson & Co. , 749 F.3d 1368, 1370 (Fed. Cir. 2014) ( rejecting former patent owner’s argument that § 141 “doe s not explicitly bar ” delegation of appeal rights and holding that “[t]his court sees no reason . . . to extend that procedural right beyond wha t is clearly set forth in § 141 ”). A t best, it does
not inform us e ither way about how to resolve the parties’ debate

. 3

Waters argues that one could just as easily read 35 U.S.C. § 311 , which governs a “Request for inter partes reexamination,” to suggest that a third

- party requester cannot change over the course of a proceeding. Section 311 sta tes that “[a]ny th ird

- party requester at any time may file a request for inter partes reexamination by the Office of a patent,” and the request shall “be in writing, includ e the identity of the real party in interest, and be accompanied by payment of an inter partes reexami nation fee.” It is undisputed that Agilen t did not perform any of these actions.

We decline to decide whether a successor

- in -interest becomes the third party requester for purposes of either

3 Vaillancourt , 749 F.3d at 1368

- 69, does little to advance Agilent’s claim. That case is largely i napposite, as it does not addre ss § 141 as it applies to third

- party requesters. Rather, it holds that the identity of the patent

owner can change for purposes of § 141 with the complete transfer of a patent’s ownership after the r eexamination proceeding but before an appeal to this court. Id. Wher eas ownership of a patent is the sine qua non of a patent owner, a party’s status as a third

- party requester does not derive, at least in the first in stance, from the ownership of

a set of particular asset s

.AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 11

§ 100(e) or § 141 because Agilent has not established that it is , in fact, Aurora’s successor

- in

- interest. According to Agilent , it “acquired substantially all the assets of Aurora (including all rights relating to the reexamina tions)” in August 2012, five months after the filing of the reexamination request. Appellant Br. 8

- 9. We do not know precisely what was transferred, but “substantially all” does not mean “all.” After the transa ction, Aurora remained a distinct, ongoing enti ty

. A nd

a fter the examiner issued an ACP in September 2012, Waters filed a resp onse, and in November, it was Aur ora

— not Agilent

— who submitted third

- party comments. Th at No vember 2012 submission

— which significantly post

- dates the asset purchase agreement —belies Agilent’s claim that it effectively stepped into Aurora’s shoes as the th ird

- party requester upon taking over Aurora’s assets

. Agilent never addresses this point, except to state at oral argument that, “ I believe that that was simply so that legal knowledge and strategies coul d be transitioned among counsel .” Oral A rgument at 2:45

- 3:02
, available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20 15

- 1280.mp3

. It was not until April 26, 2013

— approximately eight months af ter the asset transfer and one month after the

cross

- appeal to the Board was noticed

— that Aurora filed a request to change the “ real party in interest ” from Aurora to Agilent. Neither Aurora nor Agilent requested that Agilent be substituted as the “third

- party requ ester,” however. At the hearing before the Board on April 23, 2014, Aurora’s co unsel appeared on behalf of Aurora as the respondent. She never withdrew as counsel from the reexamination proceeding. Aurora was subsequently listed in the caption of the Board’s decision as the third

party requester

. In addition, Aurora remains a party to the underlying district court l itigation. Agilent makes much of the factAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 12

that, “[a]s part of th [e] acquisition, Agilent also agreed to be bound by the outcome of the two reexamination pr oceedings, and the patent infringement litigation.” Appe llant Br. 9. But in doing so, it ignores the fact that Aurora would also be bound by the outcome of the patent litig ation, and, therefore, retains an apparent stake in the outcome of the case

. In deed, in November 2012, Waters moved for leave to amend its complaint and add Agilent as a defendant in the district court litigation. See Motion for Leave to Add Agilent and File Amended and Suppl emental Complaint, Dkt. 110, Waters

, No. 1:11

- cv

- 00708

- JEI

- KW. Aurora filed an answering brief opposing the motion, arguing, inter alia , that “Waters fails to explain why the transfer of Aurora’s assets changes the underl ying infringement analysis.” See Answering Brief in Opp osition re Motion for Leave to Add Agilent, Dkt. 122 at 16
, Waters , No. 1:11

- cv

- 00708

- JEI

- KW. O n January 25, 2013, the district court issued an order granting leave to amend. Order Granting Motion for Leave to Add Agilent, Dkt. 149, Waters , No. 1:11

- cv

- 00708

- JEI

- KW

. Because Aurora is still a party to and will be boun d by the judgment in the under lying infringemen t litigation, we do not find that Agilent h as established that it is Aurora’s successor

- in

interest or has otherwise “stepped into the shoes of Aur ora” for all intents and purposes. See Appellant Br. 17.
Finally, though not dispositi ve, we note that Agilent has not furnished this court with a copy of the asset transfer agreement, while simultaneously relying on a portion of its contents as the basis for its right to appeal. Agilent provided only the four

- page Declaration of M ichael T ang, Agilent’s Assistant General Counsel, to establish that Agilent has “succeeded to all of Aurora’s legal claims and liabilities relating to the purchased Business.” Appellant Reply Br. 3. Although we do not doubt the veracity of the statements made in th e declar ation, it is an incomplete account of the agreement and does not allow us to verify all of Agilent’s claims andAGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 13

develop our own understanding s

. For example, the decl aration refers several times to the Seller’s “Business,” “the terms and conditions set forth in this Agreement,” and “the Excluded Assets,” yet fails to provide definitions for any of these terms

. See Tang. Decl. ¶ ¶ 2, 5. The burden of demonstrating a cau se of a ction rests on Agilent, the party seeking relief

. See Jazz Photo Corp. v. ITC , 264 F.3d 1094, 1102 (Fed. Cir. 2001) (“T he initial burden is upon the complainant to establish its cause of action”). Agilent has had ample opportunity to establish its elf as Aurora’s successor

- in -interest

, but has failed to do so

. Therefore, we need not reach whether a successor

in

- interest would qualify as a third

- party requester. For the foregoing reasons, we hold that Agilent lacks a stat utory cause of action to appeal the reexamination decision to this c ourt . Accordingly, we dismiss.

DISMISSED