by Dennis Crouch
ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023).
We have another precedential Federal Circuit decision that turns on the meaning of the simplest word in the English language: “A.”
Cytonome’s US Patent No. 10,583,439 covers a microfluidic device for processing particles of interest in a sample fluid. The claim requires
an inlet configured to receive a sample stream; [and]
a fluid focusing region configured to focus the sample stream;. . .
‘439 Patent, claim 1 (emphasis added). At the PTAB, patent holders typically seek a narrow claim construction in order to separate their claims from the closest prior art.
Here, the PTAB agreed with the patentee’s narrow construction that “the sample stream” was limited to a single, contiguous sample stream. The PTAB relied primarily on two main reasons for its singular-only construction:
- The PTAB believed that allowing multiple streams would be inconsistent with dependent claim 2, which refers to “a centerline of the sample stream” in the singular. The PTAB reasoned a single centerline implies only one sample stream.
- The PTAB wanted to avoid redundancy with other claims that recite “a centerline of the flow channel” (claim 5) and “a centerline of the microfluidic channel” (claim 20). It distinguished those terms as referring to the physical device itself.
In addition, the patent document contains only embodiments showing a single stream. This narrow claim construction allowed the patentee to avoid the closest prior art (Simonnet) that disclosed a split stream.
On appeal, the Federal Circuit reversed — finding that the proper claim construction of “the sample stream” permitted multiple streams (including a split stream) on the same microfluidic device.
The Federal Circuit began its analysis by noting that “at least in an open-ended ‘comprising’ claim, use of ‘a’ or ‘an’ before a noun naming an object requires that the phrase be construed to mean ‘one or more’ unless the context sufficiently indicates otherwise.” 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 called this the “general rule,” and observed that the specification reinforced this rule with its boilerplate definition in the specification defining “‘a’ or ‘an’ entity [as] refer[ring] to one or more of that entity.” Id.
Although the general rule can be overcome based upon the circumstances of a particular case, the Federal Circuit held there was no sufficient basis for deviating from the general rule in this case. It rejected the PTAB’s view that dependent claim 2’s reference to “a centerline of the sample stream” implied a single stream, finding claim 2’s language “on its face is broad enough to cover” alternatives like separate centerlines or branches. The court also disagreed that the specification’s lack of a multiple-stream embodiment compelled a narrow construction, absent “‘clear and manifest disavowal’ of [the plural] meaning.” Id. (quoting Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir. 2009)).
Given the presumption of plural meaning and finding no persuasive reason to deviate, the Federal Circuit held “the sample stream” should not be limited to a singular-only interpretation. Reversed with a holding that claims 1 and 8 are now anticipated. The Federal Circuit remanded the case for further proceedings on dependent claims 2, 6, and 9 to consider whether those claims are now obvious.
= = = =
One question I have is whether the patent is now also likely invalid for lack of enablement and written description because it claims one or more streams while disclosing only one stream in original specification.
I’ve wondered about this for a while.
Are patentee’s limiting statements during an IPR relevant for the purposes of claim construction? Was the Fed Cir supposed to take those statements into account for its claim construction?
Put another way, I would find it shocking if patentee or a challenger could say the claims read on multiple streams if there was no appeal here.
>One question I have is whether the patent is now also likely invalid for lack of enablement and written description because it claims one or more streams while disclosing only one stream in original specification.<
What about the boilerplate? There in black and white, it surely satisfies written description. Whether that is also enabling might be open to further investigation, but depending on the circumstances, and level of skill in the art, just saying it can be enabling.
Reading this article without looking at ANY details of the case, I think the answer is that you cannot say one way or the other as a general rule. As the Fed Cir noted, general rule is that “a” or “an” is presumed to mean one OR MORE UNLESS spec’n and/or prosecution history show otherwise. Even without boilerplate, if you enter prosecution with claim using “comprising” and “comprising” is understood ab initio to be open-ended, that initial claim, in and of itself, should constitute the written description and, presumably — unless there is something about the specific technology that suggests it can’t be done with multiples — enable the multiple-component version.
From a drafting perspective, using the term “one or more” x’s makes every subsequent reference to the element cumbersome (“said one or more x’s”) and talking about a particular one of each even more cumbersome (“a respective one of said one or more x’s”).
If distinction over the art is that you do it with one whereas art does it with two AND SPEC makes clear that that is what really sets you apart for some nonobvious reason, then it SHOULD be interpreted to be one AND ONLY ONE. Otherwise, reference with two would invalidate AS ANTICIPATING claim to one (and prima facie at least, interpreting to maintain validity canon would likely be subjugated to that).
As I responded to the very first question in torts on the very first day of law school (a bites b’s dog; dog dies; is a liable?), and as is the case with SO much of patent law, it depends.
My guess: enablement? No. Written description: Yes, probably invalid.
Off topic but I think you should start labeling the articles with the comments turned off with “WARNING PROBAGANDA.”
“The court called this the “general rule,” and observed that the specification reinforced this rule with its boilerplate definition in the specification defining “‘a’ or ‘an’ entity [as] refer[ring] to one or more of that entity.” Id.”
Yes, but what if the portion of the specification actually describing the invention would lead a person of ordinary skill in the art to believe that only a single stream was being used? Does a boilerplate definition of “a” now trump the description of the invention?
It is less “Trump” or “over ride” and more merely understanding that one must always be deliberate with boilerplate.
Its inclusion cannot be 1gn0red.
In a different forum I was reading the lamenting of how fixed price pitches combined with some Big Law salary levels were combining to create situations in which the prep side were driving unsustainable hour targets. This point about deliberate inclusion of boilerplate is thus ever important.
Most of those I know who worked at Big Law firms as associates would never have made their yearly billable hours if they had just been doing patent prep/pros work. Litigation support activities allowed them to bill, bill, bill.
Understood — but that is likely a bug rather than a feature.
wow – that’s some image file wrapper…
link to patentcenter.uspto.gov
Re the “question ..whether the patent is now also likely invalid for lack of enablement and written description because it [allegedly inherently broadly] claims one or more streams while disclosing only one..”
Would it make a vital difference in that respect if the subject claim had instead said “at least one stream” as filed?
Still includes two, so not full scope enabled??
Now, what if they used “one stream”. Narrower on paper…but you still have the open-ended “comprising” to capture multi- stream infringers??
(May also need “direct” vs “focus”)
One question I have is whether the patent is now also likely invalid for lack of enablement and written description because it claims one or more streams while disclosing only one stream in original specification.
I can see it now. We’ll be seeing ads pop up while surfing: This one weird trick can allow you to invalidate all of your competitor’s patents.
The term “comprising” is open ended. This means a claim reciting: “An apparatus comprising A, B, and C” can encompass any apparatus that has A, B, and C and anything else under the sun and still be infringing — even if that “anything else” didn’t exist. Should those claims be invalid for lack of enablement/written description?
A different way to look at it is that if “the sample stream” is not limited to a single-only interpretation, why should the disclosure of the sample stream in the specification be interpreted as being limited to a single stream? What’s good for the goose is good for the gander? Am I wrong?
As an aside, with this being an IPR, could the patentee request a claim amendment that explicitly limits the stream to a single stream? I’m not familiar with how the process works to know whether that is possible at this stage in the process. If so, wouldn’t a claim amendment easily dispose of the issue?
“ with this being an IPR, could the patentee request a claim amendment that explicitly limits the stream to a single stream”
I would guess that some of the non-anticipated claims are already limited in that regard, or at least that there is unambiguous written support for such claims in the specification. Otherwise just a massive fail on the part of the drafters.
In any event, a single stream embodiment in view of the prior art is so obvious that all of this discourse is a waste of time. Oh but wait! Other companies who refused to license this plainly invalid sewage pile sold products that read on the claims so “commercial success”! LOL
“This one weird trick can allow you to invalidate all of your competitor’s patents.”
Thanks. My patent laugh for the day.
The ad all inventors, patent attorneys, and patent agents would really like to see:
“This one weird trick allows you to traverse eligibility rejections.”
Would everyone who’d click on such an ad please raise your hand.
As an aside, with this being an IPR, could the patentee request a claim amendment that explicitly limits the stream to a single stream? I’m not familiar with how the process works to know whether that is possible at this stage in the process. If so, wouldn’t a claim amendment easily dispose of the issue?
Normally, not possible at this stage, no. Have to notify about intent to amend X number of days after the Institution Decision. It’s been a while, so I forget how long.
However, the Court reversed on claim 1 (i.e., no remand) and remanded on certain dependent claims, saying: “Cytonome urges a remand for the Board to consider the dependent claims in the first instance under a new claim construction. We agree with Cytonome regarding claims 2, 6, and 9 and with ABS regarding claim 8.”
It might be worth a shot to amend claim 1, knowing that the Board is likely to find claim amendments waived even under a new claim construction.
Amending the claims in IPRs is generally quite messy though: intervening rights (and the loss of pre-amendment damages is huge) issues will predominate and, if litigation counsel is handling the IPRs, a Patent Owner will almost certainly have to replace counsel: most protective orders include meaningful prosecution bars.
… you forgot**, at this stage amendments are not a matter of right
** from a prior discussion of ours, wherein one of your positions was ‘just amend.’
What does that have to do with price of tea in China?
It’s your tea.
¯\_(ツ)_/¯
What did the patentee believe is inventive about going from the multiple stream situation described in the prior to the single stream disclosed in their application? Was there some problem with the multiple stream that the patentee believed it was solving? Presumably that’s all in the specification and this prior art was not news to them …
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