Medmix Switzerland Ag v. John A. Squires, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MEDMIX SWITZERLAND AG,
Appellant
v.
JOHN A. SQUIRES, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2024-1516
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01462.
______________________
Decided: June 15, 2026
______________________
ANGELA M. O LIVER , Haynes and Boone, LLP, Washing-
ton, DC, argued for appellant. Also represented by ADAM
CARL F OWLES , J. ANDREW L OWES , Plano, TX; D EBRA
J ANECE MCC OMAS , Dallas, TX; SUZANNE K ONRAD, Spencer
Fane LLP, Washington, DC; MICHAEL T. M URPHY , I, Global
IP Counselors LLP, Washington, DC.
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MEDMIX SWITZERLAND AG v. SQUIRES 2
J USTIN B OVA, Office of the Solicitor, United States Pa-
tent and Trademark Office, Alexandria, VA, argued for in-
tervenor. Also represented by MONICA B ARNES L ATEEF ,
N ICHOLAS T HEODORE MATICH , IV.
______________________
Before L OURIE, P ROST , and CHEN, Circuit Judges.
L OURIE, Circuit Judge.
Medmix Switzerland AG (“medmix”) appeals from a fi-
nal written decision of the United States Patent Trial and
Appeal Board (“the Board”) determining that claims 1–3,
9–13, and 16–17 of U.S. Patent 9,010,578 (“the ’578 pa-
tent”) had been shown to be unpatentable as obvious.
Xinial Sys. Gmbh & Co. Kg v. Medmix Switzerland Ag, No.
IPR2022-01462, 2024 WL 714900, at *1
(P.T.A.B. Feb. 21, 2024) (“Decision”). For the following
reasons, we affirm.
BACKGROUND
Medmix owns the ’578 patent, which is directed to an
arrangement for mixing and discharging fluids. ’578 pa-
tent, Abstract; J.A. 215 (Petition). The design contains
three main parts: a “cartridge [with] at least two cham-
bers,” an “accessory part,” i.e., a mixer, and a “connecting
device” that links the cartridge and mixer. ’587 patent col.
9 ll. 50–51, 55–57, Abstract. Within the connecting device
are two complementary “engagement parts,” referred to in
the patent as “guide grooves” (attached to the cartridge)
and “ramps” (attached to the mixer). Id. col 10 ll. 8–11. To
connect and disconnect the cartridge and mixer, the guide
grooves and ramps rotate into and away from one another
along the axis of the device. See id. col. 10 ll. 5–7. The ’578
patent aims “to produce a reliable and rapid connection be-
tween the cartridge and the accessory part in such a way
that, with little force being applied, the [mixer] can be se-
cured sealingly on the cartridge and can also be lifted from
the cartridge.” Id. at col. 2 ll. 16–20.
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MEDMIX SWITZERLAND AG v. SQUIRES 3
Figure 4, shown below, depicts the design prior to con-
nection. Reference numeral 2 corresponds to the cartridge;
3 the mixer; 6 and 7 the ramps; and 25 and 26 the guide
grooves.
Appx1543–45 ¶ 57 (annotating FIG. 4 of the ’578 patent).
Representative claim 1 of the ’578 patent reads as fol-
lows:
A discharge arrangement, comprising:
an accessory part with at least two inlets;
a cartridge for at least two components, wherein
the cartridge has at least two chambers for in each
case one of the components and has at least two
outlets, complementary to the inlets, for the com-
ponents, wherein each of the outlets is adapted to
be plugged into one of the inlets, or vice versa; and
a connecting device with a first connecting compo-
nent, which is arranged on the accessory part, and
a second connecting component, which is comple-
mentary to the first connecting component and is
arranged on the cartridge,
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MEDMIX SWITZERLAND AG v. SQUIRES 4
wherein one of the connecting components com-
prises a socket and the other connecting component
comprises a connector part that is adapted to be in-
serted into the socket along a longitudinal direc-
tion,
wherein first engagement parts of a rotational
guide placed at an incline to the longitudinal direc-
tion are provided on an outer circumference of the
connector part, and corresponding second engage-
ment parts of the rotational guide are provided on
the inner circumference of the socket,
wherein the connecting components are adapted to
be rotated into each other over an effective connect-
ing section along the rotational guide after the con-
nector part has been plugged into the socket,
wherein one of the engagement parts comprises
guide grooves and the other engagement parts co-
operating with the guide grooves comprise at least
two ramps, which are designed corresponding to
the guide grooves, and wherein the guide grooves
and the at least two ramps are adapted to be
brought increasingly into engagement with each
other while being guided in the axial direction and
to be disengaged from each other while being
guided over an effective connecting section in the
axial direction, such that, when the connection is
established, the accessory part is positively guided
towards the cartridge in a constrained manner, and
such that, when the connection is released, the ac-
cessory part is lifted from the cartridge in a posi-
tively guided manner to cause a constrained lifting.
Id. col. 9 l. 48–col. 10 l. 23. (emphases added).
Xinial Systems GmbH & Co. KG (“Xinial”) petitioned
for inter partes review (“IPR”), arguing that claims 1–3, 9–
13, and 16–17 of the ’578 patent would have been obvious
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MEDMIX SWITZERLAND AG v. SQUIRES 5
over one or both of U.S. Patents 6,769,574 (“Keller ’574”)
and 6,161,730 (“Heusser”), together with Canadian Patent
1,238,023 (“Yu”). Keller ’574 and Heusser disclose fluid
mixing and discharging devices that contain dual-chamber
cartridges attached to a mixer. J.A. 1680–1725 (Keller
’574), 1746–52 (Heusser). Yu discloses a caulking gun with
a removable nozzle that is mounted with a curved coarse
thread connection between the nozzle and gun. J.A. 1726–
45 (Yu). Xinial asserted, in relevant part, that a skilled
artisan would have been motivated to incorporate Yu’s
coarse thread connection into Keller ’574 and Heusser’s de-
signs. J.A. 230–39, 272–76 (Petition).
At the Board, the parties disputed the construction of
the term “at least two ramps” recited in all challenged
claims. Medmix argued that the term should be construed
to require an “inclined plane” shape, i.e., an angled plane
with no curvature. Decision at *5. Xinial contended that
the term does not require any specific shape. See id. The
Board agreed with Xinial, stating that “at least two ramps”
should be construed “using its plain and ordinary mean-
ing,” which “does not require a particular shape . . . with
inclined planes.” Id. at *6–7.
The Board then held that Xinial had met its burden to
show that all challenged claims of the ’578 patent are un-
patentable as obvious based on a motivation to combine
both Keller ’574 and Heusser, with Yu. Id. at *42.
Medmix timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Medmix presents two main arguments on appeal. The
principal argument is that the Board improperly construed
the term “at least two ramps” to not require an “inclined
plane.” Open. Br. 42–60. Separately, medmix asserts that
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MEDMIX SWITZERLAND AG v. SQUIRES 6
the Board’s motivation-to-combine findings were not sup-
ported by substantial evidence. Open. Br. 73–76. We ad-
dress each in turn.
As the claims are not argued separately, we do not ad-
dress them separately; they all rise and fall together.
I
We start with medmix’s claim construction argument.
When the Board relies only on intrinsic evidence to con-
strue a claim, we review that construction de novo. Netflix,
Inc. v. DivX, LLC, 166 F.4th 1341, 1345 (Fed. Cir. 2026).
In doing so, “[w]e consider the ordinary meaning of the lan-
guage specifically at issue, other claim language providing
context, the specification, and aspects of prosecution his-
tory.” Id. (citing Phillips v. AWH Corp., 415 F.3d 1303,
1312–17 (Fed. Cir. 2005) (en banc)) (other citations omit-
ted).
The disputed limitation recites: “wherein one of the en-
gagement parts comprises guide grooves and the other en-
gagement parts cooperating with the guide grooves
comprise at least two ramps.” ’578 patent col. 10, ll. 8–12;
see also id. at col. 10, ll. 13–18. As is evident from its text,
the disputed limitation does not specify that the recited
ramps must be a particular shape, let alone an inclined
plane. The same is true of the surrounding limitations in
claim 1 and the dependent claims: there is no indication
that the disputed ramps must be any specific shape. See
generally id. col. 9 l. 48–col. 10 l. 23. The text of the claims
of the ’578 patent therefore suggest that “at least two
ramps” should not be construed to require an inclined
plane. Phillips, 415 F.3d at 1312 (“It is a bedrock principle
of patent law that the claims of a patent define the inven-
tion.”) (cleaned up and citations omitted).
The specification supports that understanding. The
specification states: “a guide groove . . . whose incline and
shape correspond substantially to the ramps.” ’578 patent
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MEDMIX SWITZERLAND AG v. SQUIRES 7
col. 6 ll. 14–17. No specific shape is mentioned for the
“guide groove.” Rather, it is described only in broad terms,
as having a generic “shape.” Id. And because the specifi-
cation states that the guide groove’s shape “correspond[s]
substantially” to the shape of the “ramps,” the specification
likewise contemplates no particular shape for the “ramps.”
See id.
Medmix does not dispute the above. Rather, medmix
points to the few instances in the specification where a
ramp is depicted or suggested to have an inclined plane
shape and thus asserts that the disputed limitation should
be limited to require such a shape. Specifically, medmix
points to Figures 1 and 4, where the two disclosed ramps
are inclined planes. Open. Br. 53–54; see ’578 patent,
FIGS. 1, 4. Similarly, medmix points to a statement in the
specification describing the ramps and a separate part of
the connecting component—the “socket jaw.” Open. Br. 55.
After referencing the “ramps,” the specification provides
that a part of the socket jaws is “likewise designed . . . as
an inclined plane.” Id. col. 8 ll. 7–10. Medmix asserts that
the word “likewise” refers to the “ramps,” meaning that the
specification “ramps” are also described as having an “in-
clined plane” shape. See id.
But “it is improper to read limitations from a preferred
embodiment described in the specification . . . into the
claims absent a clear indication in the intrinsic record that
the patentee intended the claims to be so limited.” Cf. Po-
laris Innovations Ltd. v. Brent, 48 F.4th 1365, 1377
(Fed. Cir. 2022) (cleaned up and citation omitted). Medmix
points to no such clear indication here, because there is
none. Rather, the specification explicitly provides that its
figures are “preferred illustrative embodiments,” and thus
are not intended to limit the scope of the claims, including
the “at least two ramps” limitation. Id. col. 4 ll. 38–41.
Medmix’s specification-based arguments are therefore un-
persuasive.
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MEDMIX SWITZERLAND AG v. SQUIRES 8
Medmix’s main argument in support of its inclined-
plane-requiring construction is based on the prosecution
history of the ’578 patent. During prosecution, claim 1 orig-
inally recited “connecting components,” but was rejected
over U.S. Patent 5,033,650 (“Colin”) (J.A. 1830–36), which
does not contain ramps with an inclined-plane shape. J.A.
562 (annotating Colin FIG. 2).
Claim 1 was then amended to recite “engagement
parts” containing “guide grooves” and “ramps.” J.A. 1235–
36, 1241–42. Medmix contends that this amendment indi-
cates that the applicant intended to narrow the engage-
ment parts to “having a particular shape,” i.e., a “ramp.”
Open. Br. 47. In other words, medmix contends that
“ramps” cannot be construed to be shape-agnostic or else
the amendment would “read ‘ramps’ out of the claims.”
Open. Br. 47. We disagree.
The amended claims were allowed after the applicant
explained that Colin fails to disclose ramps and corre-
sponding guide grooves that are axially guided when the
connection between the cartridge and mixer “is released.”
J.A. 1241. That is, the “at least two ramps” language was
added to distinguish prior art that did not permit such ax-
ial guidance both during attachment and release of the car-
tridge and mixer. See J.A. 1241. There is no indication
that the applicant intended the amendment to limit the
scope of the claims to any particular shape of ramps, let
alone those with inclined planes. Cf. Saffran v. Johnson &
Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (determining
applicant disclaimed claim scope on two separate grounds
despite Patent Office stating it accepted claims on only one
of said grounds).
For the foregoing reasons, we conclude that the Board
correctly construed the “at least two ramps” limitation to
not require an inclined plane. And because medmix does
not materially dispute that Yu discloses the “at least two
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MEDMIX SWITZERLAND AG v. SQUIRES 9
ramps” limitation under that construction, we turn to the
next issue.
II
We now address medmix’s motivation-to-combine ar-
gument. We review the Board’s legal conclusions de novo
and its factual findings for substantial evidence. Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
(Fed. Cir. 2015). The presence or absence of a motivation
to combine references is a question of fact reviewed for sub-
stantial evidence. In re Gartside, 203 F.3d 1305, 1316
(Fed. Cir. 2000). Substantial evidence is “such relevant ev-
idence as a reasonable mind might accept as adequate to
support a conclusion.” Consol. Edison Co. v. NLRB, 305
U.S. 197, 229 (1938).
The Board found that a skilled artisan would have been
motivated to incorporate Yu’s coarse thread design into
both Keller ’574 and Heusser because doing so provides
“mechanical advantage[s].” J.A. 39, 76. For the Keller
’574-Yu combination, the Board found that such a modifi-
cation would reduce the axial force required to detach the
cartridge and mixer in Keller ’574. J.A. 39 (Keller ’574).
And for the Heusser-Yu combination, such a modification
reduces the “rotations necessary” to attach and detach the
cartridge and mixer in Heusser. J.A. 75.
Medmix, relying on our decision in Henny Penny Cor-
poration v. Frymaster LLC, contends that the Board’s mo-
tivation-to-combine finding was not supported by
substantial evidence because the Board did not “weigh the
disadvantages” of the proposed Keller ’574- and Heusser-
Yu combinations against the mechanical benefits. Open.
Br. 61–62 (citing 938 F.3d 1324 (Fed. Cir. 2019)). Before
the Board, medmix argued that a skilled artisan would
have been dissuaded from making the proposed combina-
tions because each combination would have resulted in a
design where the backpressure generated during dispens-
ing would cause the coarse-thread connection between the
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MEDMIX SWITZERLAND AG v. SQUIRES 10
mixer and cartridge to separate, leading to undesirable
fluid leakage. J.A. 489–507 (Patent Owner Response).
That argument is unpersuasive.
In Henny Penny, we stated that, when considering
whether there was a motivation to combine asserted refer-
ences, “the benefits, both lost and gained, should be
weighed against one another.” 938 F.3d at 1332 (cleaned
up and citation omitted). Applying that principle, the
Henny Penny panel concluded that the Board’s no-motiva-
tion-to-combine finding appropriately considered that the
proposed combination resulted in an “unappetizing combi-
nation” with “decreased efficiency.” Id.
But here, the Board explicitly found that a skilled arti-
san would have “easily” mitigated any back-pressure and
leakage concerns by using “tangs” and “flanges,” small pro-
jections on each of the mixer and cartridge which attach to
one another, to reinforce the connection between the mixer
and cartridge. J.A. 46, 73; see e.g., J.A. 2921 (supporting
Xinial expert testimony). Thus, this case is unlike Henny
Penny because the proposed combination does not result in
an “unappetizing combination” with “decreased efficiency”
that may dissuade a skilled artisan from making the pro-
posed combination. 938 F.3d at 1332. The Board’s motiva-
tion-to-combine finding therefore does not contravene
Henny Penny and is otherwise supported by substantial ev-
idence.
CONCLUSION
We have considered medmix’s remaining arguments
but find them unpersuasive. For the foregoing reasons, we
affirm the Board’s holding that the asserted claims would
have been obvious and therefore are unpatentable and in-
valid.
AFFIRMED
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