Case: 22-1761 Document: 35 Page: 1 Filed: 10/19/2023
United States Court of Appeals
for the Federal Circuit
______________________
ABS GLOBAL, INC., GENUS PLC,
Appellants
v.
CYTONOME/ST, LLC,
Appellee
______________________
2022-1761
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00088.
______________________
Decided: October 19, 2023
______________________
STEVEN J. HOROWITZ, Sidley Austin LLP, Chicago, IL,
argued for appellants. Also represented by STEPHANIE P.
KOH.
Z.W. JULIUS CHEN, Akin Gump Strauss Hauer & Feld
LLP, Washington, DC, argued for appellee. Also repre-
sented by PRATIK A. SHAH; DANIEL LYNN MOFFETT, San An-
tonio, TX.
______________________
Before REYNA, TARANTO, and STARK, Circuit Judges.
Case: 22-1761 Document: 35 Page: 2 Filed: 10/19/2023
2 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
TARANTO, Circuit Judge.
Cytonome/ST, LLC owns U.S. Patent No. 10,583,439,
which describes and claims a microfluidic device for use in
processing particles of interest contained in a sample fluid.
ABS Global, Inc. and Genus plc (collectively, ABS) peti-
tioned the Patent and Trademark Office (PTO) for an inter
partes review, under 35 U.S.C. §§ 311–19, of the patenta-
bility of claims 1, 2, 6, 8, and 9 of the ’439 patent. The
PTO’s Patent Trial and Appeal Board, acting for the PTO’s
Director, granted the petition. After conducting the re-
view, the Board determined that ABS had not shown any
of the challenged claims to be unpatentable. ABS Global,
Inc. v. Cytonome/ST, LLC, No. IPR2021-00088, 2022 WL
1406461 (P.T.A.B. Apr. 28, 2022) (Final Written Decision).
ABS appeals. We agree with ABS’s principal conten-
tion—that the Board erred in its claim construction of a
limitation common to all challenged claims. Having re-
jected the Board’s construction, we reverse the Board’s fi-
nal written decision with respect to claims 1 and 8, vacate
the decision with respect to claims 2, 6, and 9, and remand
the matter to the Board.
I
A
The ’439 patent, issued in 2020 (on an application filed
in 2014 after a 2013 provisional application) and titled “Hy-
drodynamic Focusing Apparatus and Methods,” describes
and claims a microfluidic device for “particle” processing.
’439 patent, col. 1, lines 14–35. Microfluidic devices employ
small channels for the movement of fluids—in particular,
fluids that contain cells, molecules, or other particles of in-
terest to the device user, who may wish, e.g., to sort, count,
analyze, or test them. See U.S. Patent No. 6,506,609, cols.
1–2 (Wada) (filed 2000, issued 2003) (J.A. 2221); Declara-
tion of David Issadore ¶ 46 (J.A. 1983); see also Bio-Rad
Laboratories, Inc. v. 10X Genomics Inc., 967 F.3d 1353,
Case: 22-1761 Document: 35 Page: 3 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 3
1360 (Fed. Cir. 2020). The ’439 patent concerns the focus-
ing of the flow of a sample fluid by use of other fluids (“hy-
drodynamic focusing”) in such a device. ’439 patent, col. 1,
lines 14–19.
Under certain conditions, if one fluid is introduced into
a microchannel and then a second fluid is introduced into
the same microchannel, the two fluids travel in “laminar
flow,” i.e., in parallel layers (which may, for example, be
horizontally or vertically aligned), without mixing. See
J.A. 1983; Albert Folch, Introduction to BioMEMS 101
(2012) (J.A. 2384). “Sheath flow” is a type of laminar flow
in which a layer of “sample fluid” that contains particles is
abutted on more than one side by a layer of particle-free
sheath fluid. ’439 patent, col. 1, lines 23–25 (“surrounded
by another layer of focusing fluid on more than one side”).
By introducing focusing fluid (e.g., sheath fluid) to “focus”
(i.e., squeeze and confine) the sample fluid, a device user
can accurately position particles (e.g., “in a single row file”)
for inspection or other use at a point in the flow path. Id.,
col. 1, lines 25–46; see Wada, col. 1.
Figure 3A of the ’439 patent shows one focusing device
(with S=sample fluid, SF=sheath fluid, and CL=channel):
Case: 22-1761 Document: 35 Page: 4 Filed: 10/19/2023
4 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
The record before us discloses some general properties
of hydrodynamic focusing. The sheath fluid’s speed, rela-
tive to that of the sample fluid, affects whether and how
the sample fluid is focused. Chih-Chang Chang et al.,
Three-dimensional Hydrodynamic Focusing in Two-layer
Polydimethylsiloxane (PDMS) Microchannels, 17 Journal
of Micromechanics and Microengineering 1479, 1483
(2007) (Chang) (J.A. 2782). At some speeds, some sheath
and sample fluids will mix. See U.S. Patent No. 6,159,739,
cols. 1–2 (Weigl) (filed 1997, issued 2000) (J.A. 2176). Gen-
erally, though, the greater the sheath fluid’s speed relative
to that of the sample fluid, the more the sample fluid is
compressed to reduce (along one or more axes) the cross-
section of its flow profile. Chang at 1483 (J.A. 2782). If the
relative-speed ratio is especially high, the sample fluid can
split, producing a lane of sheath fluid between two lanes of
sample fluid. Id. (showing an experiment result in which
“the focused stream . . . has a gap in the middle”).
Independent claim 1 of the ’439 patent claims a micro-
fluidic device configured to focus sample fluid:
1. A microfluidic assembly for use with a particle
processing instrument, the microfluidic assembly
comprising:
a substrate; and
a flow channel formed in the substrate, the
flow channel having:
an inlet configured to receive a sample
stream;
a fluid focusing region configured to focus
the sample stream, the fluid focusing region
having a lateral fluid focusing feature, a
first vertical fluid focusing feature, and a
second vertical fluid focusing feature, the
lateral, the first vertical, and the second
vertical fluid focusing features provided at
Case: 22-1761 Document: 35 Page: 5 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 5
different longitudinal locations along the
flow channel, wherein a bottom surface of
the flow channel lies in a first plane up-
stream of the first and second vertical fluid
focusing features and the bottom surface of
the flow channel shifts vertically upward to
lie in a second plane downstream of the first
and second vertical focusing features; and
an inspection region at least partially
downstream of the fluid focusing region.
’439 patent, col. 18, lines 43–63 (emphases added).
Claims 2, 6, 8, and 9 depend on claim 1. The narrowing
limitation of claim 2, which is of particular relevance to the
key dispute before us, requires that the “lateral fluid focus-
ing feature” of claim 1 be “configured to introduce focusing
fluid into the flow channel symmetrically with respect to a
centerline of the sample stream.” Id., col. 18, lines 64–67
(emphases added). Also of relevance to the dispute before
us is a definition stated in the patent’s specification: “[F]or
the purposes of the present disclosure, the term ‘a’ or ‘an’
entity refers to one or more of that entity. As such, the
terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used
interchangeably herein.” Id., col. 18, lines 27–30.
B
In October 2020, ABS petitioned for an inter partes re-
view of claims 1, 2, 6, 8, and 9 of the ’439 patent, arguing
unpatentability for anticipation and/or obviousness based
on three references: Claire Simonnet & Alex Groisman,
High-Throughput and High-Resolution Flow Cytometry in
Molded Microfluidic Devices, 78 Analytical Chemistry
5653 (2006) (Simonnet); Dong Sung Kim et al., An Efficient
3-Dimensional Hydrodynamic Focusing Microfluidic De-
vice By Means of Locally Increased Aspect Ratio, 86 Micro-
electronic Engineering 1343 (2009) (Kim); A. Kummrow et
al., Microfluidic Structures for Flow Cytometric Analysis of
Case: 22-1761 Document: 35 Page: 6 Filed: 10/19/2023
6 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
Hydrodynamically Focussed Blood Cells Fabricated by Ul-
traprecision Micromachining, 9 Lab on a Chip 972 (2009)
(Kummrow). See Final Written Decision, at *4. ABS sub-
mitted other prior art, including Folch, Wada, Chang, and
Weigl, for background understanding, but resolution of the
claim-construction issue we decide does not turn on those
references or anything but legal principles and evidence in-
trinsic to the ’439 patent.
ABS challenged claims 1, 2, 6, and 8 as unpatentable
under 35 U.S.C. § 102 for anticipation by Simonnet. Id. 1
ABS also asserted that all challenged claims are unpatent-
able under 35 U.S.C. § 103 for obviousness. Id. Specifi-
cally, regarding obviousness, ABS relied for claims 1, 2, 6,
and 8 on Simonnet alone, for claim 8 on Simonnet in com-
bination with Kim, and for claim 9 on Simonnet in combi-
nation with Kummrow. Id.
In its final written decision, the Board held that ABS
had not proved any of the challenged claims to be unpatent-
able. Id. at *25. In rejecting ABS’s challenges, the Board’s
sole stated basis was that Simonnet failed to disclose one
claim limitation—specifically, “the sample stream” compo-
nent of the “fluid focusing region” element. Id. at *20, *24–
25. The Board determined that, as a matter of claim con-
struction, “the sample stream” language in claim 1 had a
singular-only meaning, not allowing a plurality of streams
or a split stream. Id. at *9–12.
1 It is undisputed that the applicable versions of
§§ 102 and 103 are the ones that pre-date the amendments
to those sections made by the Leahy-Smith America In-
vents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, 287–88
(2011). Final Written Decision, at *4 n.2. Regardless, no
AIA-made change has been suggested to be material to this
appeal. We therefore omit the date in citing the statute.
Case: 22-1761 Document: 35 Page: 7 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 7
With regard to ABS’s anticipation challenges, the
Board found that Simonnet did not disclose a “fluid focus-
ing region configured to focus the sample stream.” Id. at
*15–16. That finding rested on a claim construction and a
finding about what Simonnet disclosed. The claim con-
struction was that the quoted claim limitation requires
that there be only a single sample stream from entry of the
sample at least to inspection. Id. at *9–12. The finding
about Simonnet was that it did not disclose such a single
stream. Specifically, the Board found that figures 3(a) and
3(b) in Simonnet, which are micrographs of cross-sections
of sample fluid in two experiments, both show a split sam-
ple stream with a gap in the middle, which the Board held
was not the single stream required by the Board’s claim
construction. Id. at *15–16. This rationale precluded an-
ticipation by Simonnet of independent claim 1 and, neces-
sarily, of dependent claims 2, 6, and 8. Id. at *20.
The Board also rejected ABS’s obviousness challenges,
and the reasoning depended on the claim construction that
claim 1 required that there be only a single stream, pre-
cluding a split one. Id. at *21–25. Under the adopted claim
construction, a modification of Simonnet would be required
for obviousness, but the Board determined that ABS had
not “provided adequate reasoning as to why a person of or-
dinary skill would have sought to modify the teachings of
Simonnet, e.g., to vary the flow rate ratios and eliminate
the gap in the sample streams.” Id. at *22. That rationale
required rejection of ABS’s challenge to claims 1, 2, 6, and
8 for obviousness over Simonnet alone. Id. at *24. And
because neither Kim nor Kummrow remedied the defi-
ciency in the ground of obviousness for claim 1 over Simon-
net, the Board concluded that ABS also could not establish
that claim 8 or claim 9 was unpatentable for obviousness.
Id. at *24–25.
Case: 22-1761 Document: 35 Page: 8 Filed: 10/19/2023
8 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
C
The Board issued its final written decision on April 28,
2022, and ABS timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
II
ABS has presented several arguments on appeal. The
principal argument is that the Board erred in its claim con-
struction limiting claim 1’s disputed language to a flow
channel’s focusing region configured for only a single sam-
ple stream, not more than one. ABS also argues, among
other things, that Simonnet meets the single-stream re-
quirement even under the Board’s construction. We re-
verse the Board’s claim construction, without addressing
other arguments independent of the correctness of the
Board’s construction. We then explain the effect of that re-
versal on the challenges to the five claims at issue.
A
We decide the proper claim construction in this case de
novo, as intrinsic evidence is decisive of the proper con-
struction. See, e.g., Polaris Innovations Ltd. v. Brent, 48
F.4th 1365, 1372 (Fed. Cir. 2022); Best Medical Interna-
tional, Inc. v. Elekta Inc., 46 F.4th 1346, 1355 (Fed. Cir.
2022). The Board determined that the ’439 patent’s claim
language requires that the flow channel’s focusing region
of claim 1 (and hence all claims challenged here) be config-
ured for only a single, contiguous sample stream, not more
than one. Final Written Decision, at *9–12. In light of the
claim language and specification, we reject this construc-
tion.
The specific claim language at issue is “a fluid focusing
region configured to focus the sample stream.” The use of
the definite article, “the,” means that the phrase “the sam-
ple stream” refers back to earlier language as an anteced-
ent. The antecedent language is “a sample stream” in the
preceding limitation, and it is the singular-only or plural-
Case: 22-1761 Document: 35 Page: 9 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 9
allowing meaning of that limitation which is determina-
tive. The reference-back “the” language takes its meaning
from the meaning of the antecedent, so if “a sample stream”
has a plural-allowing meaning, so does the reference-back
“the sample stream” phrase. See, e.g., Salazar v. AT&T
Mobility LLC, 64 F.4th 1311, 1315 (Fed. Cir. 2023); Lite-
Netics, LLC v. Nu Tsai Capital LLC, 60 F.4th 1335, 1346
(Fed. Cir. 2023); Baldwin Graphic Systems, Inc. v. Siebert,
Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008).
Two familiar aspects of claim-construction analysis
strongly support the plural-allowing meaning here. First,
“at least in an open-ended ‘comprising’ claim,” like claim 1
of the ’439 patent, “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 oth-
erwise.” Lite-Netics, 60 F.4th at 1345; see Salazar, 64 F.4th
at 1315; Convolve, Inc. v. Compaq Computer Corp., 812
F.3d 1313, 1321 (Fed. Cir. 2016); Baldwin, 512 F.3d at
1342–43. The court has called this the “general rule,” add-
ing that an exception “only arises where the language of
the claims themselves, the specification, or the prosecution
history necessitate a departure from the rule.” Baldwin,
512 F.3d at 1343. Second, the specification here states:
“[F]or the purposes of the present disclosure, the term ‘a’ or
‘an’ entity refers to one or more of that entity. As such, the
terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used
interchangeably herein.” ’439 patent, col. 18, lines 27–30.
That definition reinforces, rather than negates, the ap-
plicability here of the “one or more” general rule concerning
“a” or “an.” It also brings into play the lexicography prin-
ciple—that, with narrow exceptions, “[w]here the specifica-
tion instructs as to the meaning of a claim term, ‘the
inventor’s lexicography governs.’” Grace Instrument In-
dustries, LLC v. Chandler Instruments Co., 57 F.4th 1001,
1010 (Fed. Cir. 2023) (quoting Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc)); see Thorner v.
Sony Computer Entertainment America LLC, 669 F.3d
Case: 22-1761 Document: 35 Page: 10 Filed: 10/19/2023
10 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
1362, 1365 (Fed. Cir. 2012); Martek Biosciences Corp. v.
Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009).
There is no sufficient basis for rejecting the plural-al-
lowing meaning of “a sample stream” here. The prosecu-
tion history has not been shown, or even meaningfully
argued, to do so. Nor does anything in the specification
supply a “clear and manifest disavowal” of that meaning,
Martek, 579 F.3d at 1380, or “totally negate[]” it, id. at 1383
(Lourie, J., dissenting in part). In particular, the singular-
only meaning is not demanded by the specification’s em-
bodiments, described as nothing more than examples. See,
e.g., ’439 patent, col. 3, lines 52–57; id., col. 18, lines 16–22.
Nor has Cytonome shown an operational impossibility or
something comparable that requires rejecting the plural-
allowing meaning.
The Board relied centrally, for its singular-only con-
struction, on the conclusion that a plural-allowing scope of
“a sample stream” would be inconsistent with claim 2’s re-
quirement that the focusing fluid be “introduced into the
flow channel symmetrically with respect to a centerline of
the sample stream.” Id., col. 18, lines 64–67 (emphases
added); Final Written Decision, at *10–11. We disagree.
Claim 2’s language does not support rejection of the doubly
presumed plural-allowing meaning of “a sample stream.”
The Board at one point stated: “[T]he claim refers to
the centerline of the sample stream, and not simply the
center of the device.” Final Written Decision, at *10. To
the extent that the Board, in referring to “the centerline,”
suggested that there can be only one centerline, that sug-
gestion relies on a departure from the language of claim 2,
which refers to “a centerline.” That language is itself pre-
sumptively plural-allowing for the reasons already dis-
cussed regarding “a sample stream.” It presumptively
covers one or more centerlines of one or more sample
streams.
Case: 22-1761 Document: 35 Page: 11 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 11
ABS urges that claim 2 therefore covers at least (a) sep-
arate centerlines of separate streams and (b) a single cen-
terline of a pair of streams (or branches of a split stream).
We need not endorse or reject that position (or either por-
tion of it) to conclude that claim 2 does not require narrow-
ing the disputed claim 1 limitation to a singular-only
meaning.
The Board’s core reasoning was that “a centerline of the
sample stream” must lie in the sample fluid—which, the
Board said, would not be true of a centerline (understood
as a singular) of a pair of streams or a split stream with a
gap in the middle filled by focusing fluid, where the center-
line ran through the focusing fluid. Id. at *10–11. But that
reasoning does not address the drawing of separate center-
lines for separate streams (or of the branches of a split
stream). And even as to the drawing of a single centerline
for a pair of streams (or branches of a split stream), the
language on its face is broad enough to cover such a center-
line, like a centerline of a highway that runs through a
plant-filled median or a centerline of a river that runs
through islands in the river. Here, the symmetry property
expressly required by claim 2 is symmetry in “intro-
duc[ing]” the focusing fluid—not necessarily symmetry of
focusing fluid everywhere along the length of a sample
stream. ’439 patent, col. 18, lines 65–67. A “centerline of
the sample stream” is merely a reference point for how fo-
cusing fluid should be introduced. It has not been shown
that satisfaction of the claim 2 requirement precludes a
sample-stream centerline from running through focusing
fluid.
The Board also reasoned that a “centerline of the sam-
ple stream” must lie in the sample fluid in order to avoid
redundancy with the terms “a centerline of the flow chan-
nel” and “a centerline of the microfluidic channel” in claims
5 and 20, respectively. Final Written Decision, at *10–11.
But there is no such redundancy to be avoided. “A center-
line of the flow channel” and “a centerline of the microfluid
Case: 22-1761 Document: 35 Page: 12 Filed: 10/19/2023
12 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
channel” refer to a centerline through the solid physical
boundaries of the channel, even when no sample fluid is
flowing in the apparatus. See ’439 patent, col. 19, lines 23–
25 (requiring that “the first pair and the second pair of fluid
focusing channels are symmetrically arranged with respect
to a centerline of the flow channel” (emphasis added)); id.,
col. 21, lines 5–7 (requiring that “the first and second focus-
ing fluid channels are located to a first side of a centerline
of the microfluidic channel” (emphasis added)). “A center-
line of the sample stream” refers to a centerline of the fluid
flow of the sample through that channel, when there is
such a fluid flow. See id., col. 18, lines 65–67 (requiring
that “the lateral fluid focusing feature is configured to in-
troduce focusing fluid into the flow channel symmetrically
with respect to a centerline of the sample stream” (empha-
sis added)). Although the three phrases share a term, “cen-
terline,” the additional terms (“of the sample stream,” “of
the flow channel,” and “of the microfluid channel”) make
clear that the phrases as a whole refer to different things
(even if they may overlap)—precluding the conclusion of re-
dundancy on which the Board relied.
For the foregoing reasons, we reverse the Board’s claim
construction and hold that “the sample stream” is not lim-
ited to a singular-only sample stream.
B
In many cases involving reversal of a Board claim con-
struction, the appropriate course of action is to vacate the
Board’s decision and remand the matter. See, e.g., Kaken
Pharmaceutical Co., Ltd. v. Iancu, 952 F.3d 1346, 1355
(Fed. Cir. 2020); Arista Networks, Inc. v. Cisco Systems,
Inc., 908 F.3d 792, 798 (Fed. Cir. 2018). In some cases,
however, depending on what contentions were made to the
Board and what evidence the record contains, “where only
one answer is supported by substantial evidence and there
is . . . [no] apparent reason to grant a second record-making
opportunity, reversal is warranted.” Owens Corning v.
Case: 22-1761 Document: 35 Page: 13 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 13
Fast Felt Corp., 873 F.3d 896, 901–02 (Fed. Cir. 2017).
Thus, it is appropriate to reverse the Board’s determina-
tion when the evidence supports only the conclusion that
the challenged claims are unpatentable, where no properly
raised issues still need to be decided by the Board in order
to adjudicate a particular patentability challenge. See id.
We address claim 1 first, then the dependent claims.
1
Under the correct claim construction, we conclude that
the evidence requires the finding that independent claim 1
is anticipated by Simonnet. A claim is anticipated if “each
and every element as set forth in the claim is found, either
expressly or inherently, in a single prior art reference.” Ar-
butus Biopharma Corp. v. ModernaTx, Inc., 65 F.4th 656,
662 (Fed. Cir. 2023). Anticipation is a question of fact re-
viewed for substantial evidence. Id.
The Board rejected ABS’s anticipation challenge solely
on the ground that the Simonnet device produces only a
split sample stream, which is not a “singular” stream and
thus “does not satisfy ‘the sample stream’ limitation.” Fi-
nal Written Decision, at *16, *20. But because under the
proper construction “the sample stream” may refer to one
or more sample streams, Simonnet satisfies this claim lim-
itation—regardless of whether the “split” sample stream
disclosed by Simonnet is properly viewed as two different
sample streams or as a singular sample stream with a gap
in the middle. As the Board found that every other element
of claim 1 was disclosed by Simonnet and Cytonome has
not meaningfully challenged those findings on appeal, the
evidence compels a finding that claim 1 is anticipated.
That finding makes an inquiry into obviousness for claim 1
unnecessary.
2
The challenged dependent claims (2, 6, 8, and 9) all
claim “[t]he microfluidic assembly of claim 1” with one
Case: 22-1761 Document: 35 Page: 14 Filed: 10/19/2023
14 ABS GLOBAL, INC. v. CYTONOME/ST, LLC
additional limitation each. ABS seeks reversal of the
Board’s determinations as to all challenged dependent
claims, while 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 regard-
ing claims 2, 6, and 9 and with ABS regarding claim 8.
Claim 2 requires the lateral fluid focusing feature of
claim 1 to be “configured to introduce focusing fluid into the
flow channel symmetrically with respect to a centerline of
the sample stream.” ’439 patent, col. 18, lines 64–67.
Claim 6 adds to claim 1 a different additional limitation:
that “the sample stream and the focusing fluid . . . enter
the fluid focusing region in a same plane.” Id., col. 19, lines
26–29. The parties continue to dispute the proper applica-
tion (and perhaps interpretation) of claims 2 and 6, at least
of the terms “symmetrically” in claim 2, ABS’s Opening Br.
at 62–63; Cytonome’s Br. at 52, and “a sample plane” in
claim 6, ABS’s Opening Br. at 63–66; Cytonome’s Br. at 53.
We remand for further consideration of claims 2 and 6.
Claim 9 adds to claim 1 the limitation that “each of the
fluid focusing features is in fluid communication with a
first focusing fluid inlet port provided on a top surface of
the substrate.” ’439 patent, col. 19, lines 40–43. ABS con-
cedes that Simonnet does not disclose this limitation and
instead argues that the claimed apparatus would have
been an obvious combination of Simonnet and Kummrow.
ABS’s Opening Br. at 68–71. The Board has not decided
the merits of components of ABS’s obviousness challenge,
including whether a relevant artisan would have had a mo-
tivation to combine Simonnet and Kummrow. We remand
for further consideration of claim 9.
Claim 8 warrants different treatment. It adds to claim
1 a requirement that the “fluid flow channel . . . transition[]
from a first cross section shape to a second cross section
shape different from the first cross section shape.” ’439 pa-
tent, col. 19, lines 36–39. ABS asserts that the microfluidic
Case: 22-1761 Document: 35 Page: 15 Filed: 10/19/2023
ABS GLOBAL, INC. v. CYTONOME/ST, LLC 15
device taught by Simonnet changes cross-section shapes
multiple times. ABS’s Opening Br. at 66–67. But neither
before the Board nor in this court has Cytonome disputed
whether Simonnet discloses this limitation. Cytonome’s
Br. at 54. Because the uncontested evidence establishes
that Simonnet discloses claim 8’s additional limitation, we
reverse the Board’s determination and hold that claim 8 is
anticipated by Simonnet.
III
The Board’s claim construction, and its final written
decision regarding claims 1 and 8, are reversed. The
Board’s final written decision regarding claims 2, 6, and 9
is vacated. The matter is remanded for further proceedings
consistent with this opinion.
Costs awarded to appellants.
REVERSED IN PART, VACATED, AND REMANDED