       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

       TMC FUEL INJECTION SYSTEM, LLC,
               Plaintiff-Appellant

                            v.

              FORD MOTOR COMPANY,
                  Defendant-Appellee
                ______________________

                       2016-2122
                 ______________________

   Appeal from the United States District Court for the
Eastern District of Pennsylvania in No. 2:12-cv-04971-NS,
Senior Judge Norma L. Shapiro.
                 ______________________

                Decided: March 27, 2017
                ______________________

    JOHN F. WARD, Kelley Drye & Warren, LLP, New
York, NY, argued for plaintiff-appellant. Also represented
by DAVID LINDENBAUM.

     EUGENE ALEXIS SOKOLOFF, Hogan Lovells US LLP,
Washington, DC, argued for defendant-appellee. Also
represented by JESSICA LYNN ELLSWORTH; FRANK A.
ANGILERI, MARC LORELLI, Brooks Kushman PC, South-
field, MI.
               ______________________
2      TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY




    Before PROST, Chief Judge, WALLACH and STOLL, Circuit
                           Judges.
PROST, Chief Judge.
    TMC Fuel Injection System, LLC (“TMC”) appeals the
U.S. District Court for the Eastern District of Pennsylva-
nia’s grant of summary judgment of noninfringement.
The district court based its decision on an application of
prosecution history disclaimer. We affirm.
                        BACKGROUND
    TMC filed this infringement suit against Ford Motor
Co. (“Ford”) in 2012, alleging that fuel injection systems
in Ford’s vehicles infringe claims 38 and 40 (“the asserted
claims”) of U.S. Patent No. 7,318,414 (“’414 patent”).
                              I
     The ’414 patent relates to a fuel injection system for
supplying fuel to engines, such as in automobiles. ’414
patent col. 1 ll. 7–8. Pressurized fuel is generally deliv-
ered from a fuel tank to fuel injectors, along a main fuel
supply line, by the action of a fuel pump. Id. at col. 2 ll.
12–16. The fuel injectors spray fuel mist into the engine,
and when that fuel is ignited by sparkplugs, it combusts
and powers the engine. Id. at col. 2 ll. 15–20. Prior art
fuel injection systems would return excess fuel to the fuel
tank whenever the engine used less fuel (such as when an
automobile was idling). Id. at col. 3 ll. 54–57. But that
fuel would be heated by the warmth of the engine before
returning to the fuel tank, which was not desirable. Id. at
col. 4 ll. 57–60, col. 5 ll. 16–22. Another problem with the
prior art was that there was a lag in response time when
trying to adjust the amount of fuel delivered based on the
amount of fuel required by the engine. Id. at col. 3 ll. 45–
47.
TMC FUEL INJECTION SYSTEM, LLC     v. FORD MOTOR COMPANY     3



     By using components that allow the fuel system to
switch quickly between two different pressure levels, the
’414 patent discloses “the capability to instantly increase
fuel supply to an engine on-demand instead of waiting for
the system to stabilize . . . [and to] deliver[] much less fuel
to keep the engine running when idle to save fuel.” Id. at
col. 4 ll. 1–5; see also id. at col. 6 l. 59–col. 7 l. 7. The
asserted claims have preambles that describe the use of a
fuel recirculation loop “to minimize [or eliminate] the need
of a hot fuel return line and a low pressure regulator.” 1
Id. at col. 17 ll. 15–18, 46–48 (emphasis added). Both
asserted claims also recite, among other limitations, a
“fuel return path” with a “flow constraint” for stabilizing
fuel pressure. Id. at col. 17 ll. 28–33, 58–65.
                              II
    While the underlying case was pending, Ford success-
fully petitioned the Patent Trial and Appeal Board
(“Board”) for inter partes review (“IPR”) of the asserted
claims. The district court stayed the litigation, including
a then-pending motion for summary judgment of nonin-
fringement, until the resolution of the IPR proceedings.
    In a consolidated final written decision the Board held
that Ford had not carried its burden of showing that the
asserted claims are unpatentable as anticipated or obvi-
ous. The Board concluded, in relevant part, that several
of the asserted prior art references failed to disclose a fuel
return path with “flow constraint” because those refer-
ences used pressure regulators, whereas “the prosecution
history states an express disclaimer of pressure regula-
tors” from the ’414 patent’s “flow constraint” limitation.



    1  Asserted claim 38 recites “minimize or eliminate,”
whereas asserted claim 40 only recites “minimize.” Be-
sides noting this difference, TMC does not distinguish
between the asserted claims on appeal.
4   TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY



J.A. 1875 (internal quotation marks omitted). The dis-
trict court then invited the parties to supplement their
briefing on Ford’s summary judgment motion in view of
the Board’s IPR decision.
    The district court’s summary judgment decision fol-
lowed in the Board’s footsteps. The court held that during
prosecution, “TMC repeatedly, unequivocally stated its
system does not use a pressure regulator and distin-
guished its invention from prior art using a pressure
regulator.” TMC Fuel Injection Sys., LLC v. Ford Motor
Co., No. 12-4971, 2016 WL 7155793, at *3 (E.D. Pa. Apr.
20, 2016). Although Ford had pressed the prosecution
disclaimer theory without success before in the litigation,
the court explained that it had not previously considered
the prosecution history. Id.
    The district court therefore amended its claim con-
struction “to exclude pressure regulators of any type from
the system.” Id. It also granted summary judgment of
noninfringement because the parties did not dispute that
Ford’s accused systems included a pressure regulator. Id.
TMC appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
                       DISCUSSION
    The only issue on appeal is whether the prosecution
history of the ’414 patent demonstrates that all pressure
regulators were disclaimed from the fuel systems of the
asserted claims. There is no dispute that if such broad
prosecution disclaimer attaches, then Ford would not
infringe the asserted claims.
    Prosecution history disclaimer applies when a patent-
ee makes statements during prosecution that would cause
“a competitor [to] reasonably conclude that the applicant
clearly and unmistakably limited” the scope of its claims.
Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1316 (Fed. Cir. 2013). “[T]he doctrine of prosecution
TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY    5



disclaimer attaches and narrows the ordinary meaning of
the claim congruent with the scope of the surrender.”
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324
(Fed. Cir. 2003). In reviewing a grant of summary judg-
ment, we look to the law of the regional circuit, and the
Third Circuit applies de novo review. Microsoft Corp. v.
GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016) (citing
Third Circuit law). We also review de novo a claim con-
struction that is based, as it is here, on the intrinsic
evidence. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841–42 (2015).
    The parties do not dispute that the claimed “flow con-
straint,” which provides fixed resistance, excludes the use
of a “pressure regulator,” which provides variable re-
sistance. Rather, they dispute whether during prosecu-
tion TMC disclaimed pressure regulators more broadly—
from the fuel system as a whole, and not just from the
flow constraint portion. TMC argues that any disclaimer
of pressure regulators was limited to the system’s flow
constraint, while Ford contends that there was a categori-
cal disclaimer of pressure regulators from the entire
system.
   TMC supports its position with statements that the
Board made in its IPR decision. 2 But as TMC acknowl-


   2     To be sure, we disagree with TMC’s contention
that the Board only found a disclaimer of pressure regula-
tors from the flow constraint. The Board did not so cabin
its discussion. It “conclude[d] that the prosecution history
states an express disclaimer of ‘pressure regulators and
incremental regulation means of any type from the sys-
tem’” and then “applie[d]” this disclaimer to the flow
constraint limitation. J.A. 1785 (emphasis added) (quot-
ing the prosecution history). One of the administrative
patent judges wrote separately to address an argument
that was raised during the oral hearing in the IPR.
6   TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY



edges, “[w]hether prosecution history disclaimer applies is
a legal question this court reviews de novo.” Ecolab, Inc.
v. FMC Corp., 569 F.3d 1335, 1342 (Fed. Cir. 2009); see
Appellant’s Opening Br. 22 (same); Oral Argument 4:44–
5:56,                     available                     at
http://oralarguments.cafc.uscourts.gov/mp3/2016-
2122.mp3 (same). Accordingly, that is the standard we
apply here. 3
    We turn, instead, to the prosecution history of the
’414 patent. During prosecution, the examiner issued a
final rejection of all pending claims, after which TMC filed
a response stating that the claimed “invention takes a
completely different approach” from prior art fuel sys-
tems, J.A. 327, and that “[t]he Application does not use [a]
pressure regulator or pressure relief valve,” J.A. 336. The
examiner again rejected all of the pending claims—
including claims with the preamble language about
“minimiz[ing]” the need for pressure regulators—in an
advisory action. On appeal to the then-existing Board of
Patent Appeals and Interferences (“BPAI”), TMC distin-
guished the prior art by reiterating that the claimed
“invention is not directed to pressure regulators. . . . In
this case, every cited reference has at least one pressure
regulator.” J.A. 533. TMC further stated, in no uncertain
terms, that the claimed invention “eliminate[es] pressure
regulators and incremental regulation means of any type
from the system,” and explained that “no regulator of any
kind is used by the Appellant in the system nor needs to
be used at anytime.” J.A. 502 (emphases added). It made
this express disavowal repeatedly in its BPAI appeal
brief. See, e.g., J.A. 545 (“Appellant’s system does not use



    3   TMC attempts to discount the Board’s IPR deci-
sion by trying to raise a due process defect. Because we
are not reviewing that decision here, we do not reach that
issue.
TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY   7



pressure regulators.”); J.A. 546 (“The Appellant’s system
does not use pressure regulator [sic], but depends on the
recirculation loop and flow constraint element to obtain
pressure at the pre-set level.”); J.A. 548 (“[TMC’s] teach-
ing does not use any pressure regulator or pressure
regulating element.”). Persuaded by these arguments, the
examiner withdrew his rejections.
    TMC’s prosecution statements, particularly the ones
made during the BPAI appeal, unequivocally disavow the
use of pressure regulators from the entire fuel system.
TMC made those statements to traverse the examiner’s
rejections, and the examiner withdrew his rejections
directly in response to the representation in TMC’s BPAI
appeal brief. It is immaterial whether or not TMC needed
to make such a broad disclaimer in order to traverse the
prior art because “the scope of surrender is not limited to
what is absolutely necessary to avoid a prior art refer-
ence; patentees may surrender more than necessary.”
Tech. Props. Ltd. v. Huawei Techs. Co., – F.3d –, 2017 WL
836597, at *6 (Fed. Cir. Mar. 3, 2017). “When this hap-
pens, we hold patentees to the actual arguments made,
not the arguments that could have been made.” Id.
    TMC submits that the claim language of the ’414 pa-
tent demonstrates that any disclaimer was limited be-
cause the claims themselves clearly contemplate the
presence of pressure regulators in a fuel system. It points
to the preambles of the asserted claims, which provide the
option of “minimiz[ing],” rather than necessarily eliminat-
ing, the use of pressure regulators. Appellant’s Opening
Br. 26. It also points to several unasserted claims of the
’414 patent that allegedly reference the possibility of
including a pressure regulator. But the language of those
claims does not affect the scope of the prosecution dis-
claimer in this case. TMC’s statements in the prosecution
history clearly and unmistakably disavowed pressure
regulators from the claimed systems. “[T]he doctrine of
prosecution disclaimer attaches and narrows the ordinary
8   TMC FUEL INJECTION SYSTEM, LLC   v. FORD MOTOR COMPANY



meaning of the claim congruent with the scope of the
surrender.” Omega Eng’g, 334 F.3d at 1324. Therefore,
even if there is claim language that might have otherwise
left open the option of using pressure regulators in the
claimed fuel systems, TMC’s statements during prosecu-
tion definitively closed that door. This is precisely the
point of prosecution disclaimer.
    In the alternative, TMC argues that any disclaimer of
pressure regulators only applies to a particular type of
pressure regulator—a three-port valve—based on how
pressure regulators were purportedly defined during
prosecution. Having reviewed the prosecution history, we
decline to limit the type of pressure regulator disclaimed.
TMC relies on a single statement from the prosecution
history that refers to three-port valves, but that state-
ment was made before the numerous categorical disavow-
als made during the BPAI appeal. As noted above, the
’414 patent claims were eventually allowed after a disa-
vowal of pressure regulators “of any type from the sys-
tem.” J.A. 502 (emphasis added); see also id. (“[N]o
regulator of any kind is used by the Applicant in the
system nor needs to be used at anytime.”). This disavowal
was unambiguous and was not directed to any particular
type of valve.
    Therefore, on the basis of prosecution disclaimer, the
asserted claims exclude the use of any pressure regulator
from the fuel system.
                       CONCLUSION
    There is no dispute that Ford’s accused products can-
not infringe in light of our determination of prosecution
disclaimer. Accordingly, the district court’s grant of
summary judgment of noninfringement is affirmed.
                      AFFIRMED
