Board construction of “wherein” clause affirmed; remanded for review of non-instituted grounds

Alere, Inc. v. Rembrandt Diagnostics, LP

Docket Nos. 2018-1812 (IPR2016-01502)
October 29, 2019

Brief Summary: Board’s claim construction of the “wherein” clause affirmed; decision remanded for consideration of non-instituted grounds.

Summary: Alere appealed Board IPR final written decision (FWD) finding certain challenged claims of Rembrandt’s US 6,548,019 regarding “[a] device for collecting and assaying a sample of biological fluid” not unpatentable for obviousness. Claim 1 of the ‘019 patent includes a “wherein” clause describing the position of the “flow control channel” and how liquid flows through the device. Alere petitioned for IPR challenging claims 1-6 and 9-15 on 13 grounds, and the Board instituted review of claims 1-5, 9 and 11-15 on certain grounds but not others. Rembrandt then disclaimed claims 1, 9, and 11-15, leaving claims 2-5 in the IPR. The Board concluded that Alere had shown claim 2, but not claims 3-5 to be unpatentable. Alere argued this is incorrect since the Board erred in its construction of the “wherein” clause, which the Board found to be “consistent with the plain language of the claim and disclosures in the specification.” The FC panel agreed with the Board’s claim construction under the Phillips (FC 2005) or broadest reasonable interpretation standards (see FN1), and found it to be consistent with the “functional language that informs us of the structural requirements of the claim” (K-2 Corp., FC 1999) as well as the specification (“apparent from the figures and corresponding portions of the written description…No figure shows a device incapable of having fluid added after a flow control channel is placed inside…nothing in the specification is inconsistent”). The FC panel also explained that “[t]he Board’s construction is also consistent with the title and the abstract…which describe the invention as a ‘single-step’ collecting and assaying device” and “the claim language does not create a process limitation” (“As the Board pointed out, the claim recites a device, not a method-an important distinction.” (IPXL Holdings, FC 2005; Hewlett-Packard, FC 1990 (“apparatus claims cover what a device is, not what a device does”)). The FC panel therefore affirmed the Board’s claim construction of the “wherein” clause. Altere and Rembrandt agreed that Alere is entitled to remand under SAS (US 2018) “in order for the Board to consider the non-instituted claims and grounds in the petition”, and the FC panel concluded “that the better course of action in this case is to remand without addressing the merits of the patentability challenges” (BioDelivery, FC 2018 (not addressing the merits); Medtronic, FC 2018 (addressing the merits)).

This entry was posted in Claim Construction, Functional limitations, Inter Parties Review (IPR), IPR, Obviousness, Uncategorized, Wherein. Bookmark the permalink.

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