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

______________________ 

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 
2 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

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 
AGILENT 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 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 
4 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

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. 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 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 
AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 5

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 

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. 284 

(2011), discontinued such proceedings, the pre-AIA versions 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 Consti-

 
6 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

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 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; see also 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; standing is a question of whether a plaintiff is sufficiently 

adversary to a defendant to create 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, appropriately 

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, 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 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 owners and third-party requesters. 

In its opening brief, 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 Agilent 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-ininterest and, therefore, that it is the true third-party 

requester. After explaining why Agilent was correct to 
8 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

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.

As Waters points out, while § 141 does not reference 

privies of third-party requesters when defining the categories of litigants who may appeal from reexamination 

decisions, other statutory provisions governing inter 

partes reexaminations specifically mention privies. 

Provisions governing estoppel for inter partes reexaminations state: 

(a) . . . [O]nce an order for inter partes reexamination of a patent has been issued . . . 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

certificate is issued . . . 

(b) . . . if a final decision in an inter partes reexamination proceeding instituted by a third-party 

requester is favorable to the patentability of any 

original or proposed amended or new claim of the 

patent, then neither that party nor its privies may 

thereafter request an inter partes reexamination 

of any such patent claim on the basis of issues 

which that party or its privies raised or could have 

raised in such civil action or inter partes reexamination proceeding . . . .

35 U.S.C. § 317 (emphases added). Thus, Congress explicitly estops privies from requesting or maintaining certain 

inter 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. ResCare, 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 terms 
AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 9

within related statutes generally implies that different 

meanings were intended.’” (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, we conclude that, based on the unambiguous 

language of the statutes, mere privies lack a cause of 

action to appeal. “[W]hen a statute provides a detailed 

mechanism for judicial consideration of particular issues 

at the behest of particular persons, judicial 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 Aurora’s successor-in-interest, and, by its reply brief, contends 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 requester” in Title 35 to mean “a person requesting ex parte 

reexamination under section 302 or inter partes reexamination under section 311 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” reexamination 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, it similarly does 
10 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

not appear to address whether and under what circumstances a change in the identity of the third-party requester can occur. See Vaillancourt v. Becton Dickinson & 

Co., 749 F.3d 1368, 1370 (Fed. Cir. 2014) (rejecting former 

patent owner’s argument that § 141 “does not explicitly 

bar” delegation of appeal rights and holding that “[t]his 

court sees no reason . . . to extend that procedural right 

beyond what is clearly set forth in § 141”). At best, it does 

not inform us either 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 states that “[a]ny third-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, 

include the identity of the real party in interest, and be 

accompanied by payment of an inter partes reexamination 

fee.” It is undisputed that Agilent 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 inapposite, 

as it does not address § 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 reexamination 

proceeding but before an appeal to this court. Id. Whereas 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 instance, from the ownership of 

a set of particular assets. 

 
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 

reexaminations)” 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 transaction, Aurora remained a distinct, ongoing entity. And 

after the examiner issued an ACP in September 2012, 

Waters filed a response, and in November, it was Aurora—not Agilent—who submitted third-party comments. 

That November 2012 submission—which significantly 

post-dates the asset purchase agreement—belies Agilent’s 

claim that it effectively stepped into Aurora’s shoes as the 

third-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 could be transitioned 

among counsel.” Oral Argument 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 after 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 requester,” 

however. At the hearing before the Board on April 23, 

2014, Aurora’s counsel 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 thirdparty requester. 

In addition, Aurora remains a party to the underlying 

district court litigation. Agilent makes much of the fact 
12 AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES

that, “[a]s part of th[e] acquisition, Agilent also agreed to 

be bound by the outcome of the two reexamination proceedings, and the patent infringement litigation.” Appellant Br. 9. But in doing so, it ignores the fact that Aurora 

would also be bound by the outcome of the patent litigation, and, therefore, retains an apparent stake in the 

outcome of the case. Indeed, 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 Supplemental 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 underlying infringement analysis.” See Answering Brief in Opposition re Motion for Leave to Add Agilent, Dkt. 122 at 16, 

Waters, No. 1:11-cv-00708-JEI-KW. On 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 bound by the judgment in the 

underlying infringement litigation, we do not find that 

Agilent has established that it is Aurora’s successor-ininterest or has otherwise “stepped into the shoes of Aurora” for all intents and purposes. See Appellant Br. 17. 

Finally, though not dispositive, 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 Michael Tang, 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 the declaration, it is an incomplete account of the agreement and

does not allow us to verify all of Agilent’s claims and 
AGILENT TECHNOLOGIES v. WATERS TECHNOLOGIES 13

develop our own understandings. For example, the declaration 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 cause of action rests 

on Agilent, the party seeking relief. See Jazz Photo Corp. 

v. ITC, 264 F.3d 1094, 1102 (Fed. Cir. 2001) (“The initial 

burden is upon the complainant to establish its cause of 

action”). Agilent has had ample opportunity to establish 

itself as Aurora’s successor-in-interest, but has failed to 

do so. Therefore, we need not reach whether a successorin-interest would qualify as a third-party requester. For 

the foregoing reasons, we hold that Agilent lacks a statutory cause of action to appeal the reexamination decision 

to this court. Accordingly, we dismiss. 

DISMISSED