PTAB Issues Final Decision that Renders Some Claims Unpatentable and Others Not Unpatentable while Denying and Granting In Part a Motion to Exclude Evidence

February 14, 2018 – Abbott Laboratories and Alere Inc. had filed a petition for inter partes review against Rembrandt Diagnostics, LP under both 35 U.S.C. §102 and §103 in the USPTO’s Patent Trial & Appeal Board. On February 9, in a final written decision, the Board found Claims 1 and 2 of the patent anticipated under 35 U.S.C. § 102(b). However, the Board found claims 3 to 5 of the patent not rendered obvious under 35 U.S.C. § 103(a).

The Board also partly granted the petitioner’s motion to exclude exhibits because they were not cited in the patent owner’s response but contended that one exhibit should not be excluded because it was relied upon by the patent owner’s expert in his Declaration. The Board dismissed as moot the Motion to Exclude of exhibits regarding the structure of a particular prior art device and several documents demonstrating the definition of test devices because the Board had already considered these exhibits and still found in favor of Petitioner on the matters for which the exhibits were presented.

The patent at issue was U.S. Patent No. 6,548,019, entitled “Device and Methods for Single Step Collection and Assaying of Biological Fluids.” The case is captioned Alere Inc. et al v. Rembrandt Diagnostics, LP, Case No. IPR2016-01502.

By: Julian G. Pymento