Rembrandt Diagnostics, LP v. Alere, Inc., No. 21-1796 (Fed. Cir. 2023)Annotate this Case
Rembrandt’s 019 patent is directed to test assay devices and methods for testing biological fluids. The test assay device receives a fluid sample “introduced directly to the sample loading zone” of one or more assay test strips. Alere petitioned for inter partes review.
The Patent Trial and Appeal Board found that claims 3–6 and 10 would have been unpatentable for obviousness. Rembrandt argues that the Board erred by relying on Alere’s new theories asserted for the first time in its reply brief. The Federal Circuit affirmed. Alere did not offer new theories. Alere’s reply argument was responsive to Rembrandt’s arguments and the Board’s observations. Substantial evidence supports the Board’s determinations. The Board was presented with “two alternative theories” about what the prior art discloses; the court reasoned that it was not its task “to determine which theory we find more compelling.”