ABS International, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023).
Now we have one other precedential Federal Circuit determination that activates the that means of the only phrase within the English language: “A.”
Cytonome’s US Patent No. 10,583,439 covers a microfluidic machine for processing particles of curiosity in a pattern fluid. The declare requires
‘439 Patent, declare 1 (emphasis added). On the PTAB, patent holders usually search a slim declare building in an effort to separate their claims from the closest prior artwork.
Right here, the PTAB agreed with the patentee’s slim building that “the pattern stream” was restricted to a single, contiguous pattern stream. The PTAB relied totally on two fundamental causes for its singular-only building:
- The PTAB believed that permitting a number of streams can be inconsistent with dependent declare 2, which refers to “a centerline of the pattern stream” within the singular. The PTAB reasoned a single centerline implies just one pattern stream.
- The PTAB wished to keep away from redundancy with different claims that recite “a centerline of the movement channel” (declare 5) and “a centerline of the microfluidic channel” (declare 20). It distinguished these phrases as referring to the bodily machine itself.
As well as, the patent doc incorporates solely embodiments exhibiting a single stream. This slim declare building allowed the patentee to keep away from the closest prior artwork (Simonnet) that disclosed a cut up stream.
On enchantment, the Federal Circuit reversed — discovering that the correct declare building of “the pattern stream” permitted a number of streams (together with a cut up stream) on the identical microfluidic machine.
The Federal Circuit started its evaluation by noting that “not less than in an open-ended ‘comprising’ declare, use of ‘a’ or ‘an’ earlier than a noun naming an object requires that the phrase be construed to imply ‘a number of’ except the context sufficiently signifies in any other case.” Slip op. at 8-9 (Fed. Cir. Oct. 19, 2023) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008)). The court docket known as this the “basic rule,” and noticed that the specification strengthened this rule with its boilerplate definition within the specification defining “‘a’ or ‘an’ entity [as] refer[ring] to a number of of that entity.” Id.
Though the overall rule might be overcome based mostly upon the circumstances of a specific case, the Federal Circuit held there was no ample foundation for deviating from the overall rule on this case. It rejected the PTAB’s view that dependent declare 2’s reference to “a centerline of the pattern stream” implied a single stream, discovering declare 2’s language “on its face is broad sufficient to cowl” alternate options like separate centerlines or branches. The court docket additionally disagreed that the specification’s lack of a multiple-stream embodiment compelled a slim building, absent “‘clear and manifest disavowal’ of [the plural] that means.” Id. (quoting Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir. 2009)).
Given the presumption of plural that means and discovering no persuasive motive to deviate, the Federal Circuit held “the pattern stream” shouldn’t be restricted to a singular-only interpretation. Reversed with a holding that claims 1 and eight are actually anticipated. The Federal Circuit remanded the case for additional proceedings on dependent claims 2, 6, and 9 to contemplate whether or not these claims are actually apparent.
One query I’ve is whether or not the patent is now additionally possible invalid for lack of enablement and written description as a result of it claims a number of streams whereas disclosing just one stream in authentic specification.