Rembrandt Diagnostics, Lp v. Alere, Inc.

Case: 21-1796 Document: 56 Page: 1 Filed: 08/11/2023

United States Court of Appeals
for the Federal Circuit
______________________

REMBRANDT DIAGNOSTICS, LP,
Appellant

v.

ALERE, INC.,
Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________

2021-1796
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01502.
______________________

Decided: August 11, 2023
______________________

JARED C. BUNKER, Knobbe, Martens, Olson & Bear,
LLP, Irvine, CA, argued for appellant. Also represented by
JOSEPH F. JENNINGS.

JASON M. WILCOX, Kirkland & Ellis LLP, Washington,
DC, argued for appellee. Also represented by JOHN C.
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2 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

O'QUINN; AMANDA J. HOLLIS, MEREDITH ZINANNI, Chicago,
IL.

MONICA BARNES LATEEF, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. KRAUSE,
MAUREEN DONOVAN QUELER, FARHEENA YASMEEN
RASHEED.
______________________

Before MOORE, Chief Judge, DYK and REYNA, Circuit
Judges.
REYNA, Circuit Judge.
This case returns to us from the Patent Trial and Ap-
peal Board. Appellant Rembrandt appeals a final written
decision in an inter partes review in which the Board found
that claims 3–6 and 10 of U.S. Patent No. 6,548,019 would
have been unpatentable for obviousness. Rembrandt ar-
gues that the Board erred by relying on Appellee Alere’s
new theories asserted for the first time in its reply brief.
Because Alere did not offer new theories and because sub-
stantial evidence supports the Board’s determinations, we
affirm.
BACKGROUND
A. The ’019 Patent
We provide a brief overview of U.S. Patent No.
6,548,019 (the “’019 patent”) because we previously dis-
cussed the patent in detail in Alere, Inc. v. Rembrandt Di-
agnostics, LP, 791 F. App’x 173 (Fed. Cir. 2019) and
Rembrandt Diagnostics, LP v. Alere, Inc., 809 F. App’x 903
(Fed. Cir. 2020). The ’019 patent is directed to test assay
devices and methods for testing biological fluids. ’019 pa-
tent at 1:15–18. The test assay device receives a fluid sam-
ple “introduced directly to the sample loading zone” (30) of
one or more assay test strips (22). Id. at 4:65–5:6; 7:54–62.
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As shown in Figures 3 and 6 below, the assay test strips
(22) may each be encapsulated within separate “flow con-
trol channel[s]” (34) in one embodiment. Id. at 1:39–47;
5:51–59; 6:46–47.

Id. at Figs. 3 & 6. Figure 6 illustrates that to assemble the
full testing assay device, the test strip assembly (22, 28, 34)
from Figure 3 may be combined with a holder (40) and
placed inside a fluid sample container (i.e., a cup) (2) that
has a cap (45) to fit over the opening (3) of the container.
Id. at 5:53–64; 6:15–45; 7:11–28; Figs. 5 & 6. Figure 6 also
shows that the sample loading zones (30) of the assay test
strips are oriented toward the base (1) of the fully assem-
bled container. Id. at 6:35–45; 7:22–27. As the assay sam-
ple fluid in the container contacts the sample loading zone
(30), it migrates upward through the assay test strip. Id.
at 6:55–67. In another embodiment, multiple test strips
may be held within a single “continuous in width” flow con-
trol channel. Id. at 6:47–54.
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4 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

Claims 3–6 and 10 are the focus of this appeal. These
claims all depend (either directly or indirectly) from claim
1, which is directed toward the assay testing device.
Claims 1 and 9 were disclaimed by Rembrandt and are not
at issue on appeal. J.A. 3. Claims 3–6 and 10 all include
this arrangement of test strips “oriented toward” the base
of the container. ’019 patent at 8:57–59; J.A. 75. Claim 10
is directed to the embodiment where “all of the assay test
strips are disposed in a single flow control channel.” Id. at
10:5–6.
B. The Prior Art
Alere argued before the Board that the challenged
claims would have been obvious over two combinations of
prior art patents relating to assay testing devices: (1) U.S.
Patent No. 5,656,502 (“MacKay”) in view of U.S. Patent
No. 5,985,675 (“Charm”) or U.S. Patent No. 5,602,040
(“May”) and (2) U.S. Patent No. 6,379,620 (“Tydings”) in
view of MacKay or U.S. Patent No. 5,500,375 (“Lee-Own”).
J.A. 13, 25. We briefly summarize the relevant portions of
these prior art patents.
Turning to the first combination, MacKay describes a
test strip holder that holds one test strip. J.A. 1423 at 1:5–
6. In MacKay, one end of the holder is open to allow liquid
to enter so that the liquid can reach the sole test strip in-
side. J.A. 1424–25 at 3:10–18; 5:66–6:21; 6:55–58. Charm
discloses that its “test device may employ one or more test
strips directed to a variety of tests.” J.A. 1446 at 4:6–12.
May explains that “a device according to the invention can
incorporate two or more discrete bodies of porous solid
phase material, e.g., separate strips or sheets, each carry-
ing mobile and immobilised reagents.” J.A. 1526 at 6:26–
29.
For the second combination, Tydings, which shares an
inventor with the ’019 patent, discloses test strips that are
oriented upwards toward the mouth of the container (the
opposite of the ’019 patent’s configuration). J.A. 1477 at
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REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. 5

2:46–67; Fig. 1. Tydings’s objectives include providing a
testing device that is “simple to use and inexpensive and
easy to manufacture.” J.A. 1477 at 1:40–42. Lee-Own’s
test strip is placed inside a sealed “holder laminate” and
advantageously does “not require extraneous wicks” “to
augment sample migration.” J.A. 1467–69 at 3:26–34;
3:65–67; 7:28–39; 7:53–62. Lee-Own also explains “a single
strip or multiple strips” may be included within the lami-
nate structure to run multiple tests simultaneously. Id. at
1:42–44; 3:40–42; 5:1–12; 8:54–57.
PROCEDURAL HISTORY
This dispute began in 2016 when Rembrandt sued
Alere in district court for patent infringement. The district
court case is currently stayed pending the outcome of this
appeal.
A. The Board Proceeding
After Rembrandt sued, Alere petitioned for inter partes
review (“IPR”) before the Patent Trial and Appeal Board
(“Board”) challenging claims 1–6 and 9–15 of the ’019 pa-
tent. J.A. 81–173. The IPR was based on, among other
references, Tydings, MacKay, May, Lee-Own, and Charm.
Id. The Board instituted only on certain grounds and de-
clined to review claims 6 and 10. J.A. 302–38. In declining
to review claim 10, based on MacKay in view of Charm or
May, the Board explained that Alere did not sufficiently
explain how MacKay’s device would be modified. J.A. 332–
33. After institution, Rembrandt disclaimed claims 1, 9,
and 11–15, leaving claims 2–5 for the Board to review.
J.A. 3. The Board issued a final written decision in Febru-
ary 2018, finding that while claim 2 was anticipated by
MacKay, Alere had failed to prove claims 3–5 were un-
patentable. See Alere Inc. v. Rembrandt Diagnostics, LP,
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6 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

No. IPR2016-01502, 2018 WL 852133, at *11 (P.T.A.B. Feb.
9, 2018).
Alere appealed. See Alere, Inc., 791 F. App’x at 174. It
challenged the Board’s determination as to claims 3–5, the
Board’s claim construction of a disputed term, and asked
this court to remand for the Board to consider all non-insti-
tuted claims and grounds under the Supreme Court’s deci-
sion in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
Id. at 176, 178. We affirmed the Board’s claim construction
but remanded for the Board to consider all the challenged
claims and grounds under SAS. Id. at 178.
B. Remand Proceeding
On remand from this court, the Board authorized
“briefing with respect to all non-instituted grounds set
forth in the [p]etition.” J.A. 692–94. Rembrandt filed a
patent owner response addressing those grounds but did
not submit an accompanying expert declaration. J.A. 697–
740. Alere filed a reply with an accompanying declaration
from its expert, Dr. Robert Bohannon, responding both to
Rembrandt’s arguments and to the observations the Board
raised in its original institution decision. J.A. 743–79; J.A.
1891–1933 (¶¶ 38–51, 68–74). Rembrandt’s sur-reply fol-
lowed. J.A. 788–813.
On sur-reply, Rembrandt argued that Alere “resort[ed]
to new theories in reply.” J.A. 793. Regarding a ground
not at issue here—MacKay and Cipkowski—Rembrandt
argued that Alere and Dr. Bohannon “propose[d] three new
theories” in reply and that the Board should thus “disre-
gard[]”them. J.A. 794–95, 801–05. Rembrandt, however,
did not specifically contest that Alere or Dr. Bohannon
raised new theories in reply for the two combinations at
issue here: (1) MacKay in view of Charm or May, and
(2) Tydings in view of MacKay or Lee-Own. J.A. 806–13.
At the oral hearing before the Board, Rembrandt repeated
that Alere allegedly offered “new evidence and arguments”
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REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. 7

and discussed MacKay and Cipkowski as an example.
J.A. 974–75.
In February 2021, the Board issued its post-remand fi-
nal written decision finding claims 2–6 and 10 unpatenta-
ble. See Alere Inc. v. Rembrandt Diagnostics, LP, No.
IPR2016-01502, 2021 WL 471532, at *25 (P.T.A.B. Feb.
9, 2021) (“Decision”); J.A. 1–65. 1 For claims 3–6, the Board
found that Tydings, MacKay, and Lee-Own demonstrate
these claims would have been obvious because Alere relied
“on credible expert testimony [by Dr. Bohannon] and docu-
mentary evidence” on why a skilled artisan would modify
Tydings “to remove the wicking material and re-orient the
flow control channels towards the bottom of the container.”
Decision, at *14. The Board rejected Rembrandt’s argu-
ments that wicking material was “fundamental” to
Tydings, id. at *13, and credited Dr. Bohannon’s unrebut-
ted testimony that eliminating the wicking material would
reduce cost, complexity, and oversaturation of the test
strip, id. at *11–14. The Board also relied on Dr. Bohan-
non’s testimony that Lee-Own’s disclosure expressly sup-
plies a motivation to combine because it lists no need for
“extraneous wicks” as one of the “advantage[s]” of its in-
vention. Id. at *13.
As for claim 10, the Board found it would have been
obvious over MacKay in view of Charm or May. Id. at *10.
The Board found that, although MacKay teaches a single
test strip, Dr. Bohannon’s unrebutted testimony supported
that a skilled artisan would have modified MacKay based
on Charm and May’s teachings that it was advantageous
to use multiple test strips with a single device. Id. at *9.
The Board determined that a skilled artisan would have
understood “the multiple test strips of Charm and May are

1 Rembrandt has not challenged on appeal the
Board’s finding that MacKay anticipates claim 2. Decision,
at *2, *25 n.19.
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8 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

located within a single flow control channel.” Id. at *8, *9
n.14. Accordingly, the Board concluded that a skilled arti-
san would have found it obvious to “successfully dispose
multiple test strips in the single flow control channel of
MacKay” because doing so “would be more efficient and use
less resources than a device with multiple flow control
channels.” Id. at *8. Rembrandt petitioned for Director
rehearing, which was denied. J.A. 2366–68.
Rembrandt appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
LEGAL STANDARD
“Decisions related to compliance with the Board’s pro-
cedures are reviewed for an abuse of discretion.” Ericsson
Inc. v. Intell. Ventures I LLC, 901 F.3d 1374, 1379 (Fed.
Cir. 2018). “An abuse of discretion is found if the decision:
(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
based on an erroneous conclusion of law; (3) rests on clearly
erroneous fact finding; or (4) involves a record that contains
no evidence on which the Board could rationally base its
decision.” Id. (citation omitted).
We review the Board’s legal conclusion on obviousness
de novo and its underlying factual findings for substantial
evidence. Id. The underlying factual findings include the
“scope and content of the prior art,” the “differences be-
tween the prior art and the claimed invention,” and “the
presence or absence of a motivation to combine.” Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364
(Fed. Cir. 2015).
DISCUSSION
Rembrandt argues that the Board abused its discretion
when it relied on Alere’s new theories and evidence, and
alternatively, that substantial evidence fails to support the
Board’s unpatentability determinations. Alere disagrees
with both arguments. Alere asserts that Rembrandt for-
feited the new theories and evidence argument, but even if
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REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. 9

not forfeited, that Rembrandt’s position lacks merit be-
cause Alere’s theories and evidence were responsive to
Rembrandt’s arguments and the Board’s observations.
Alere also contends that substantial evidence, including
unrebutted expert testimony, supports the Board’s factual
findings. We address each issue in turn.
I.
We hold that the Board did not abuse its discretion by
relying on Alere’s theories and evidence. First, we agree
with Alere that Rembrandt forfeited its argument that
Alere offered new theories. Forfeiture is the failure to
make the timely assertion of a right. See Philip Morris
Prods. S.A. v. Int’l Trade Cmm’n, 63 F.4th 1328, 1336 (Fed.
Cir. 2023). Alere contends that Rembrandt forfeited its
new-theories argument by expressly objecting to one obvi-
ousness ground (MacKay in view of Cipkowski) for alleg-
edly raising new theories without also making the same
objection to the grounds at issue here (MacKay in view of
Charm or May; and Tydings in view of MacKay or Lee-
Own). Rembrandt contends that it objected to the grounds
here on the first page of its brief where it stated that Alere
“resorts to new theories in reply,” J.A. 793, and at the oral
hearing before the Board, J.A. 974–75.
We hold that Rembrandt’s generic objection is insuffi-
cient to constitute a proper objection—especially because
Rembrandt expressly objected to other allegedly new theo-
ries without doing so here. Compare J.A. 794–95; J.A. 801–
05; J.A. 974–75, with J.A. 806–13. Indeed, it would be un-
fair to both the parties and the Board to read so broadly
such a generic objection: Neither would have adequate no-
tice of which theories are allegedly new. This would be par-
ticularly problematic for the Board, as it must “make
judgments about . . . when a [r]eply contention crosses the
line from the responsive to the new.” Ariosa, 805 F.3d at
1368.
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10 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

Second, we address Rembrandt’s new-theories argu-
ment. The petitioner in an IPR must “identify ‘with partic-
ularity’ the ‘evidence that supports the grounds for the
challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illu-
mina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
(quoting 35 U.S.C. § 312(a)(3)); see also 37 C.F.R.
§ 42.22(a). Following institution, the patent owner may
submit a response with supporting factual evidence and ex-
pert opinions. See 35 U.S.C. § 316(a)(8); 37 C.F.R. § 42.120.
In reply, the petitioner may “only respond to arguments
raised in the corresponding opposition, patent owner pre-
liminary response, patent owner response, or decision on
institution.” 37 C.F.R. § 42.23(b). And in sur-reply, the pa-
tent owner “may only respond to arguments raised in the
corresponding reply and may not be accompanied by new
evidence other than deposition transcripts of the cross-ex-
amination of any reply witness.” Id.
We have held that in some circumstances the Board
acts within its discretion when declining to consider a new
theory of unpatentability raised by petitioner in reply or a
new theory of patentability raised by patent owner in sur-
reply. In Intelligent Bio-Systems, for instance, the peti-
tioner asserted in its petition that a single reference dis-
closed a limitation and then instead argued in its reply that
there was a motivation to combine references to arrive at
that limitation. 821 F.3d at 1369. We concluded that peti-
tioner’s motivation-to-combine argument was an imper-
missible “new theory of invalidity” and affirmed the
Board’s decision to exclude the reply and accompanying ev-
idence. Id. at 1369–70; see also Henny Penny Corp. v. Fry-
master LLC, 938 F.3d 1324, 1329–31 (Fed. Cir. 2019)
(rejecting a new theory of unpatentability where petitioner
argued for the first time in its reply that a reference dis-
closed a limitation); Wasica Fin. GmbH v. Cont’l Auto. Sys.,
Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (finding that pe-
titioner’s “subsequent arguments amount to an entirely
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REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. 11

new theory of prima facie obviousness absent from the pe-
tition”).
And in Ariosa, for example, we held that a petitioner
who asserted in its reply previously unidentified prior-art
disclosures “to make a meaningfully distinct contention”
was impermissibly raising a new theory of unpatentability.
805 F.3d at 1367. There, the petitioner generically argued
in the petition that any method could be used to perform a
particular sequencing step without discussing how the type
of method may impact the use of a certain primer. Id. In
reply, the petitioner attempted to address counterargu-
ments of incompatibility of the references by switching the-
ories to argue that some embodiments do not use that
specific primer, citing previously unidentified embodi-
ments of the reference. Id. at 1367–68. We affirmed the
Board’s rejection of this new theory. Id. at 1368.
In other circumstances, we have held that a reply may
be proper if it is responsive and simply expands on previ-
ously raised arguments. For example, in Ericsson, we re-
versed the Board’s decision to exclude the petitioner’s reply
argument in part because the petitioner had “merely ex-
pand[ed] on a previously argued rationale as to why the
prior art disclosures are insubstantially distinct from the
challenged claims.” 901 F.3d at 1381. We cautioned the
Board not to parse “arguments on reply with too fine of a
filter.” Id. at 1380; see also Chamberlain Grp., Inc. v. One
World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Par-
ties are not barred from elaborating on their arguments on
issues previously raised.”); Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1081–82 (Fed. Cir. 2015) (reasoning that re-
buttal evidence should be responsive such that it is offered
“to explain, repel, counteract, or disprove the evidence of
the adverse party”).
And in Apple Inc. v. Andrea Electronics Corp., we found
that the Board abused its discretion in excluding “another
example” of the same prior-art reference’s algorithm used
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12 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

in both the petition and reply to “further explain” its legal
argument. 949 F.3d 697, 706 (Fed. Cir. 2020). We con-
cluded that the petitioner’s reply asserted the same “legal
ground” as its petition because it relied on the “same prior
art” to support the “same legal argument.” Id. (explaining
that “responsive” arguments “eliminate[]” “any ambiguity”
of a new argument). Thus, the very nature of the reply and
sur-reply briefs are to respond (whether to refute, rebut,
explain, discredit, and so on) to prior raised arguments
within the confines of 37 C.F.R. § 42.23(b).
Since the need to rely on new evidence in response may
not arise until a particular point has been raised in the pa-
tent owner response or the institution decision, we have
held that there is no blanket prohibition against the intro-
duction of new evidence during an IPR. See Anacor
Pharms., Inc. v. Iancu, 889 F.3d 1372, 1380–82 (Fed. Cir.
2018) (explaining that the petitioner “may introduce new
evidence after the petition stage if the evidence is a legiti-
mate reply to evidence introduced by the patent owner”).
In fact, “the introduction of new evidence in the course of
the trial is to be expected in [IPR] trial proceedings” and
permissible “as long as the opposing party is given notice
of the evidence and an opportunity to respond to it.” Gen-
zyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm.
Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016).
With these principles in mind, we turn to whether
Alere’s reply arguments were improper. Rembrandt ar-
gues Alere raised several new theories. We need only dis-
cuss two representative examples.
We start with claim 10. Rembrandt contends that
Alere improperly raised the benefit of cost and time savings
as a new argument in reply to modify MacKay. Alere had
asserted in its petition that modifying MacKay to hold mul-
tiple test strips in a single housing, as taught by Charm
and May, would have increased the “efficiency” of MacKay
by allowing “multiple tests to be conducted
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REMBRANDT DIAGNOSTICS, LP v. ALERE, INC. 13

simultaneously.” J.A. 120. Rembrandt countered in its pa-
tent owner response that Charm and May did not “provide
the missing motivation or expectation of success” to accom-
modate additional test strips. J.A. 725. Alere argued, in
its reply, that a skilled artisan would understand “addi-
tional strips would save cost and time by allowing for rapid,
efficient, simultaneous testing for multiple analytes,”
which can be successfully accommodated by MacKay’s
structure. J.A. 768 (citing J.A. 1918–19, ¶ 47).
Alere’s reply argument discussing cost and time sav-
ings has a nexus to Rembrandt’s prior argument and is re-
sponsive. It refutes Rembrandt’s assertions that there is
no motivation to add multiple test strips or an expectation
of success. And by discussing time and cost savings as a
form of efficiency, it also properly expands on and is a fair
extension of its previously raised efficiency argument. See
Ericsson, 901 F.3d at 1381.
Rembrandt’s arguments for claims 3–6 fare no better.
Rembrandt contends, for instance, that Alere improperly
raised the benefits of reducing cost and simplifying a device
as a new argument in reply to modify Tydings. Alere had
argued in its petition that it would have been obvious to
dispense with Tydings’s wicking material to “achieve the
benefits of having the liquid sample contact the test strip
only [at] a predetermined designated area designed for di-
rect contact with the liquid as taught by MacKay or Lee-
Own.” J.A. 163 (citing J.A. 1406, ¶ 190). In the original
institution decision, the Board found that the petition did
“not explain sufficiently why modifying Tydings to remove
the wicking material would have been understood to be
beneficial.” J.A. 336–37. Following this court’s remand,
Rembrandt contended, in its patent owner response, that
there was a lack of motivation to combine because
Tydings’s use of an intermediate wicking material is fun-
damental to its invention. J.A. 736–37. Alere then argued,
in its reply, that a skilled artisan would have been moti-
vated to make the proposed modification of removing the
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14 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

wicking material because it would align with Tydings’s ob-
jectives of “reduc[ing] cost” and “simplify[ing]” its device.
J.A. 777 (citing J.A. 1929–30, ¶ 70). Alere cited previously
unidentified disclosures of MacKay and Lee-Own for teach-
ing the benefits of removing wicking material. Id.
We conclude that Alere’s reply argument is responsive
to Rembrandt’s arguments and the Board’s observations.
Alere disputes Rembrandt’s contention that wicking mate-
rial is fundamental to Tydings and explains that removing
wicking material would further achieve Tydings’s goals of
inexpensive and easy manufacturing. J.A. 777. And
Alere’s reply argument elaborates on the motivation-to-
combine argument that Alere made in its petition—that
there were benefits known in the art of removing the wick-
ing material—by relying on MacKay and Lee-Own. See Er-
icsson, 901 F.3d at 1381.
Rembrandt next argues that Alere’s use of previously
unidentified disclosures of MacKay and Lee-Own is imper-
missible, as were such disclosures relied on in Ariosa. 805
F.3d at 1367–68. We disagree. As we recognized in Apple,
949 F.3d at 706, the petitioner in Ariosa relied on “an em-
bodiment of the prior art that was not discussed in the pe-
tition” to switch theories between its petition and reply.
Unlike the petitioner there, Alere does not point to any new
embodiments not previously identified to advance a mean-
ingfully distinct contention from what it first asserted in
its petition. It points to those additional portions to convey
the benefits of removing wicking material as “a legitimate
reply” to Rembrandt’s arguments and the Board’s observa-
tions. Apple, 949 F.3d at 706–07. Alere’s reply argument
involves the same “legal ground” based on “the same prior
art reference[s]” and the “same legal argument”—the mo-
tivation to remove Tydings’s wicking material and reverse
its orientation. Id. at 706.
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In short, Alere’s responsive reply arguments do not
constitute new theories, and the Board did not abuse its
discretion in considering them.
II.
Rembrandt argues that the Board’s factual findings
underlying its obviousness determinations are not sup-
ported by substantial evidence. We disagree.
For MacKay in view of Charm or May, Rembrandt as-
serts that the references’ disclosures fail to support the
Board’s finding that MacKay, Charm, or May accommodate
multiple test strips. For example, Rembrandt contends
that Charm’s description of “the test device may employ
one or more test strips directed to a variety of tests” only
teaches the use of different types of test strips and does not
teach using multiple test strips at the same time. Rem-
brandt makes a similar argument for May’s description of
“a device” with “separate strips.” As for Tydings in view of
MacKay or Lee-Own, Rembrandt argues that there is in-
sufficient evidentiary support for the Board’s finding that
a skilled artisan would have been motivated to remove
Tydings’s wicking material and to reverse its orientation.
These arguments center on the interpretation of disclo-
sures from the prior art and the presence of motivation to
combine. But Rembrandt, as the Board explained, “cites to
no counter testimony from a qualified declarant to refute
Dr. Bohannon’s conclusions regarding how [a skilled arti-
san] would have interpreted the identified disclosures.”
Decision, at *9 n.14 (noting Dr. Bohannon’s testimony as
“credible”). Based on our review of the record—particularly
the express disclosure in the prior art and Dr. Bohannon’s
credible testimony—there is evidence that “a reasonable
mind might accept” “as adequate to support” the Board’s
factual findings. Henny Penny, 938 F.3d at 1330. The
Board was presented with “two alternative theories” about
what the prior art discloses, and it is not this court’s task
“to determine which theory we find more compelling.”
Case: 21-1796 Document: 56 Page: 16 Filed: 08/11/2023

16 REMBRANDT DIAGNOSTICS, LP v. ALERE, INC.

Shoes by Firebug LLC v. Stride Rite Childs. Grp., LLC, 962
F.3d 1362, 1371 (Fed. Cir. 2020). We hold that the Board’s
obviousness determinations are supported by substantial
evidence.
CONCLUSION
The Board did not abuse its discretion when it relied on
Alere’s responsive theories, and substantial evidence sup-
ports the Board’s underlying factual findings. We therefore
affirm the Board’s determinations that claims 3–6 and 10
of the ’019 patent would have been unpatentable due to ob-
viousness. We have considered Rembrandt’s other argu-
ments and find them unpersuasive.
AFFIRMED
COSTS
No costs.