       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                     ALERE, INC.,
                       Appellant

                           v.

         REMBRANDT DIAGNOSTICS, LP,
                    Appellee
             ______________________

                      2018-1812
                ______________________

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

               Decided: October 29, 2019
                ______________________

   JASON M. WILCOX, Kirkland & Ellis LLP, Washington,
DC, argued for appellant. Also represented by JOHN C.
O'QUINN; AMANDA J. HOLLIS, Chicago, IL.

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

    Before NEWMAN, DYK, and REYNA, Circuit Judges.
2                   ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




     Opinion for the court filed by Circuit Judge REYNA.
    Opinion dissenting in part filed by Circuit Judge DYK.
REYNA, Circuit Judge.
    Alere, Inc., appeals from a final written decision of the
Patent Trial and Appeal Board in an inter partes review
proceeding, upholding certain challenged claims as not un-
patentable. We conclude that the Board correctly con-
strued the disputed “wherein” clause in claim 1 and affirm
that limited portion of the Board’s final written decision.
Because the Board improperly declined to institute review
on certain claims and grounds included in Alere’s petition
and its final written decision did not address those claims
and grounds, we vacate the remaining aspects of the final
written decision and remand for further proceedings.
                        BACKGROUND
                  I. The Challenged Patent
    Rembrandt Diagnostics, LP, owns U.S. Patent No.
6,548,019 (“the ’019 patent”). The patent, entitled “Method
for Single Step Collection and Assaying of Biological Flu-
ids” relates to a device and method for collecting biological
fluid samples. The ’019 patent explains that prior art im-
munoassay devices used wicking material to bring test
sample fluid into contact with the sample loading zone of
assay test strips. According to the ’019 patent, the method
of using wicking material was undesirable because it was
slow in producing results, the wicking could occur une-
venly, and it increased manufacturing costs because of the
need to overlap the wicking material with the test strips.
The ’019 patent overcomes these problems by removing the
wicking material and introducing the sample loading zone
of the test strip directly into the fluid sample while also
providing a means for preventing oversaturation of the test
strip. The ’019 patent discloses one such means that uses
“flow control channels” consisting of liquid impervious
ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP                      3



walls and backing that encapsulate the assay test strip, ex-
cept where one liquid pervious side has an opening through
which the sample loading zone of the assay test strip pro-
trudes. Figure 3 from the ’019 patent shows this configu-
ration:




’019 patent Fig. 3. In Figure 3, 36 labels the opening, 34
labels the flow control channel, and 30 labels the sample
loading zone of the assay test strip (22). Id. at col. 6 ll. 10–
15. In the patented device, several flow control channels
are placed around the perimeter of a collection cup with the
opening (36) oriented toward the bottom. As fluid is intro-
duced into the cup, the fluid contacts the sample loading
zone of the test strip and “begins migrating up through the
assay test strip.” Id. at col. 6 ll. 55–57. The trapped air
and ambient air pressure within the flow control channel
prevent oversaturation of the test strip. Id. at col. 1 ll. 39–
47.
    Figure 6 shows the assay sample fluid collection device
with the assembly of Figure 3 in place in a collection cup.
4                  ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




Id. Fig. 6. Figure 6 confirms that the openings of the flow
control channels shown in Figure 3 are oriented toward the
bottom of the cup when disposed in the collection cup.
    Claim 1 is illustrative of the challenged claims and in-
cludes the disputed claim terms:
    1. A device for collecting and assaying a sample of
    biological fluid, the device comprising:
    (a) a flow control channel defined by at least one
    liquid pervious side joined to liquid impervious
    sides, wherein the internal dimensions of the flow
    control channel are sufficient to permit placement
    therein of an assay test strip;
    (b) an assay test strip within the flow control chan-
    nel, wherein the assay test strip has a sample load-
    ing zone therein, and wherein further the assay
    test strip is disposed within the flow control chan-
    nel so the sample fluid contacts the sample loading
    zone at a liquid pervious side of the flow control
    channel; and
    (c) a sample fluid container having a base, an open
    mouth, and walls connecting the base to the mouth;
ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP                      5



    wherein the flow control channel is disposed inside
    the sample fluid container with the liquid pervious
    side oriented toward the base of the sample fluid
    container so that the assay sample fluid, when
    added to the container, is delivered to the sample
    loading zone of the assay test strip by entry through
    a liquid pervious side of the flow control channel
    without migration through an intermediate struc-
    ture, and wherein entry of the fluid into the flow
    control channel creates an ambient pressure within
    the flow control channel equivalent to the ambient
    pressure outside of the flow control channel,
    thereby eliminating a pressure gradient along
    which excess sample fluid could flow into the flow
    control channel.
’019 patent col. 8 l. 42–col. 9 l. 2 (emphases added). Like
claim 1, all claims in the ’019 patent are directed to a “de-
vice.”
                  II. The IPR Proceedings
     Alere, Inc., filed a petition for inter partes review chal-
lenging claims 1–6 and 9–15 of the ’019 patent on thirteen
grounds. The Board instituted review as to only claims 1–
5, 9, and 11–15 on certain grounds but declined to institute
review as to those same claims on other grounds raised in
the petition. After institution, Rembrandt disclaimed
claims 1, 9, and 11–15, leaving dependent claims 2–5 in the
proceeding.
    In its final written decision and relevant to this appeal,
the Board construed the “wherein” clause in part (c) of
claim 1 “to require a structure that is capable of allowing
liquid to enter the container when the flow control channel
is disposed therein and capable of directing this liquid to
the sample loading zone of the assay test strip without the
liquid having to migrate through an intermediate struc-
ture.” J.A. 17. The Board determined that Alere had
6                  ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




shown claim 2 to be unpatentable but had not shown claims
3–5 to be unpatentable.
    Alere appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
                        DISCUSSION
    The Administrative Procedure Act (“APA”) at 5 U.S.C.
§ 706(2) guides our review of Board decisions. Dickinson v.
Zurko, 527 U.S. 150, 152, 165 (1999). Under the APA, we
review the Board’s legal determinations de novo and its fac-
tual findings for substantial evidence. ACCO Brands Corp.
v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). As
such, we review the Board’s ultimate determinations on
claim construction de novo and any subsidiary factual find-
ings for substantial evidence. HTC Corp. v. Cellular
Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir.
2017).
    Alere challenges the Board’s patentability determina-
tions as to claims 3–5 and the Board’s decision not to insti-
tute review as to certain claims and grounds in its petition.
We first address Alere’s arguments related to the claim
construction relied on by the Board in reaching its patent-
ability determinations.
                   I. Claim Construction
    Alere argues that the Board erred in construing the
“wherein” clause to require that the claimed device be ca-
pable of allowing the addition of fluid after the flow control
channel is in place in the collection cup. Appellant Br. 34.
Rembrandt responds that the Board’s construction is con-
sistent with plain language of the claim and disclosures in
the specification. Appellee Br. 20–21. We agree with the
Board’s construction.
ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP                    7



    We start with the plain language of the claim. 1 Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). The
disputed “wherein” clause is found in claim 1 and states:
    wherein the flow control channel is disposed inside
    the sample fluid container with the liquid pervious
    side oriented toward the base of the sample fluid
    container so that the assay sample fluid, when
    added to the container, is delivered to the sample
    loading zone of the assay test strip by entry through
    a liquid pervious side of the flow control channel
    without migration through an intermediate struc-
    ture . . . .
’019 patent col. 8 ll. 57–64 (emphases added). This clause
includes functional language that informs us of the struc-
tural requirements of the claim. K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1363 (Fed. Cir. 1999). The most natural
reading of this claim language shows a functional limita-
tion that simply requires that in the claimed device, when
the flow control channel is in place (i.e., “disposed inside
the . . . container”), fluid can be “added to the container”
and “delivered to” the loading zone of the assay test strip
without migration through another structure. In other
words, when (1) the flow control channel is in place and (2)
fluid is added to the container, then the fluid is delivered
to the loading zone.




    1   The ’019 patent expired in November 2018, after
the Board issued its final written decision. We do not need
to decide the question about whether the broadest reason-
able interpretation standard or the Phillips standard ap-
plies for resolution of this appeal because the Board’s
construction is “correct on the point at issue” under either
standard. Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d
987, 990 (Fed. Cir. 2017).
8                  ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




     This understanding of the plain language of the claim
is entirely consistent with the specification. See Phillips,
415 F.3d at 1312–14. The capability of adding fluid to the
container after the flow control channel is disposed inside
is apparent from the figures and corresponding portions of
the written description. Figure 3 of the ’019 patent shows
the flow control channels arranged in a panel. According
to the ’019 patent describing Figure 3, “[a]s assay sample
fluid collects in cup 2, it contacts sample loading zone 30
and begins migrating upwards through assay test strip 22.”
’019 patent col. 6 ll. 55–57. Figure 6 shows the channels
arranged in the panel disposed in the described cup, capa-
ble of allowing fluid to enter. No figure shows a device in-
capable of having fluid added after a flow control channel
is placed inside.
      The Board’s construction is also consistent with the ti-
tle and the abstract of the ’019 patent, which describe the
invention as a “single-step” collecting and assaying device,
meaning that one need only add sample fluid to the con-
tainer when the flow control channel is disposed inside to
collect and assay the sample. See id. Title, Abstract. The
written description further describes the “invention” as “a
combination assaying device and collection chamber which
is capable of easily collecting and testing a biological fluid
. . . .” Id. at col. 1 ll.62–64. Although these references do
not limit the claims to a single unitary structure, they are
consistent with the Board’s claim construction with respect
to the capability of adding fluid after the flow control chan-
nel is placed in the container. See J.A. 13, 15–16.
    Nothing in the claim language excludes a container
that contains fluid before the flow control channel is dis-
posed inside or imports a temporal limitation on when fluid
must be introduced into the container. As the Board
pointed out, the claim recites a device, not a method—an
important distinction. See IPXL Holdings, L.L.C. v. Ama-
zon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Thus,
the claim language does not create a process limitation.
ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP                   9



Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (stating that “apparatus claims
cover what a device is, not what a device does”). That the
written description includes examples of embodiments
where the flow control channel is placed into fluid already
in the container does not mean that the device disclosed is
incapable of allowing the addition of fluid after the flow
control channel is “disposed inside.” Further, there are no
embodiments that disclose devices without that capability.
Accordingly, nothing in the specification is inconsistent
with the requirement of being able to add fluid to the con-
tainer once the flow control channel is placed inside.
    The Board correctly construed the wherein clause as
creating a functional limitation for structural relationships
of the device. Accordingly, we agree with the Board’s con-
struction of the “wherein” clause found in claim 1(c) as “re-
quir[ing] a structure that is capable of allowing liquid to
enter the container when the flow control channel is dis-
posed therein and capable of directing this liquid to the
sample loading zone of the assay test strip without the liq-
uid having to migrate through an intermediate structure.”
                        II. Remand
    The parties agree that Alere is entitled to remand un-
der SAS Institute, Inc. v. Iancu, ––– U.S. ––––, 138 S.Ct.
1348, 200 L.Ed.2d 695 (2018) in order for the Board to con-
sider the non-instituted claims and grounds in the petition.
The parties dispute whether we should first reach the mer-
its of the unpatentability challenges for the instituted
claims and grounds. We have previously declined parties’
invitations to address the merits of instituted claims and
grounds before remanding partially instituted proceedings,
recognizing that, “[a]ppellate courts have historically dis-
favored piecemeal litigation and permitted appeals from
complete and final judgments only.” BioDelivery Scis. Int’l,
Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1210
(Fed. Cir. 2018) (quoting W.L. Gore & Assocs., Inc. v. Int’l
10                   ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




Med. Prosthetics Research Assocs., Inc., 975 F.2d 858, 861
(Fed. Cir. 1992)). Other panels of this court, however, have
taken a different approach, addressing the merits of the in-
stituted claims and grounds and then remanding for the
Board to consider the non-instituted claims and grounds.
E.g., Medtronic, Inc. v. Barry, 891 F.3d 1368, 1371 n.1 (Fed.
Cir. 2018).
     We conclude that the better course of action in this case
is to remand without addressing the merits of the patenta-
bility challenges. Here, there are both non-instituted
claims and non-instituted grounds. As Alere points out,
the Board did not institute review on the same claims at
issue in this appeal for four other challenges included in
the petition. The likelihood of having to review the Board’s
patentability determinations for some of the same claims
for different grounds after the Board considers all claims
and grounds included in the petition weighs in favor of
awaiting a “complete and final” decision without further
addressing the merits.
                         CONCLUSION
    We discern no error in the Board’s construction of the
“wherein” clause found in claim 1(c) of the ’019 patent and
we affirm that limited aspect of the Board’s final written
decision. Under SAS, however, the Board erred by insti-
tuting review on less than all claims and grounds included
in Alere’s petition. We therefore vacate the remainder of
Board’s final written decision and remand for the Board to
review all claims and grounds included in the petition and
issue a complete final written decision.
     AFFIRMED-IN-PART, VACATED-IN-PART, AND
                   REMANDED
                            COSTS
      Each party shall bear its own costs.
        NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                  ______________________

                      ALERE, INC.,
                        Appellant

                              v.

          REMBRANDT DIAGNOSTICS, LP,
                     Appellee
              ______________________

                        2018-1812
                  ______________________

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

DYK, Circuit Judge, dissenting in part.
    The Board in this inter partes review proceeding held
that the petitioner had failed to establish that dependent
claims 3–5 of the ’019 patent are obvious, based on its con-
struction of the claim language of independent claim 1.
The majority affirms the Board’s claim construction. I re-
spectfully disagree that the Board correctly construed the
relevant claim language in claim 1.
   Claim 1 recites:
    A device . . . comprising:
   (a) a flow control channel . . .;
2                  ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP




    (b) an assay strip within the flow control chan-
    nel . . .; and
    (c) a sample fluid container . . .; wherein the flow
    control channel is disposed inside the sample fluid
    container . . . so that the assay sample fluid, when
    added to the container, is delivered to the sample
    loading zone of the assay test strip by entry
    through a liquid pervious side of the flow control
    channel without migration through an intermedi-
    ate structure . . . .
’019 patent 8:41–9:2. This language is ambiguous as to
whether the test strip may be inserted after the fluid is
added to the container. However, the specification dis-
closes two embodiments: (1) disposing the control channel
into the container before adding the sample fluid, ’019 pa-
tent 6:40–45, or (2) immersing the control channel into
sample fluid that is already in the container, id. 5:60–63.
It is clear from the specification that the claim covers both
embodiments. The majority agrees that claim 1 includes
both embodiments. See Majority Op. 9.
      The Board’s construction adds a limitation to the sec-
ond embodiment that is not recited in the claim language
or specification. The Board construed the “when added to
the container” language in claim 1 “to require a structure
that is capable of allowing liquid to enter the container
when the flow control channel is disposed therein.” J.A. 17.
The Board explained that this construction requires that
the device allow “additional sample fluid [to] enter[] the
container” if the flow control channel is placed into fluid
that is already in the container. J.A. 21 (emphasis added).
Similarly, the majority clarifies: “[t]hat the written de-
scription includes examples of embodiments where the flow
control channel is placed into fluid already in the container
does not mean that the device disclosed is incapable of al-
lowing the addition of fluid after the flow control channel
is ‘disposed inside.’” Majority Op. 9.
ALERE, INC. v. REMBRANDT DIAGNOSTICS, LP                    3



    Yet there is nothing in the claim language or specifica-
tion that describes adding fluid to the container, placing
the flow channel into the fluid, and then adding more fluid.
In short, the specification does not disclose adding more
fluid to a container that already has sample fluid. Indeed,
there is no logical reason to add more sample fluid to a con-
tainer that already has fluid. Even if, as the majority
states, “nothing in the specification is inconsistent with the
requirement of being able to add fluid to the container once
the flow control channel is placed inside,” Majority Op. 9,
this does nothing to support a requirement that the device
have that capability.
     I respectfully dissent from the majority’s affirmance of
the Board’s claim construction, though I agree with the ma-
jority that this case should be remanded under SAS Insti-
tute, Inc. v. Iancu, 138 S.Ct. 1348 (2018) for further
consideration.
