Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp.
841 F.3d 1334
| Fed. Cir. | 2016Background
- The Alfred E. Mann Foundation (with Advanced Bionics as involuntary plaintiff) sued Cochlear Corp. and Cochlear Ltd. for infringement of claims of U.S. Pat. Nos. 5,609,616 (the '616 patent) and 5,938,691 (the '691 patent), both directed to cochlear implants with telemetry and physician testing functionality.
- The accused Cochlear system includes an implant, behind‑the‑ear processor, and diagnostic software that displays electrode status (red/green) and may display impedance but does not directly display measured voltage between electrodes.
- A jury found willful infringement and awarded ~$131 million; the district court later held (after a bench trial) that claim 10 of the '616 patent was infringed but invalidated claim 1 of the '616 patent and claims 6–7 of the '691 patent for indefiniteness, set aside willfulness (JMOL), and ordered a new trial on damages.
- On appeal the Federal Circuit reviewed: (a) claim construction and infringement of claim 10; (b) indefiniteness of claims 6–7 ('691) and claim 1 ('616); (c) district court JMOL of no willfulness in light of Halo; and (d) whether the court had jurisdiction to review the new‑trial‑on‑damages order.
- The panel affirmed infringement of claim 10, affirmed that claims 6–7 are indefinite, reversed the indefiniteness finding as to claim 1, vacated and remanded the JMOL on willfulness in light of Halo, and held it lacked jurisdiction to review the damages retrial order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Construction/infringement of claim 10 ('616): whether claim requires displaying measured voltage between electrodes | Foundation: claim language, specification, and prosecution history support district court construction and that Cochlear’s system (via displayed impedance and known current) makes voltage information "knowable" and thus infringes | Cochlear: claim requires that voltage itself be displayed/made available; because system does not display voltage, it does not infringe | Court rejected Cochlear’s narrow construction; affirmed infringement because processed signals conveying measurement info (and displayed impedance + known current) provide substantial evidence of infringement |
| Indefiniteness of claims 6–7 ('691): whether the means‑for limitation ("generating data indicative of the audio signal") discloses sufficient structure/algorithm | Foundation: microprocessor implementing a logarithmic conversion (e.g., lookup table) supplies corresponding structure | Cochlear: specification fails to identify where or which logarithmic algorithm is used (A/D converter vs microprocessor; many possible algorithms) so no definite corresponding structure | Court affirmed district court: claims 6–7 indefinite because spec does not disclose required algorithmic structure or identify where it is performed |
| Indefiniteness of claim 1 ('616): whether the external processor means adequately discloses structure for deriving impedance | Foundation: spec discloses measuring voltage and current and a skilled artisan would apply Ohm’s law; that suffices as algorithmic structure | Cochlear: district court said multiple ways to calculate impedance and Ohm’s law not explicitly stated, creating indefiniteness | Court reversed district court: specification and testimony sufficiently disclose deriving impedance from measured voltage and current (Ohm’s law) so claim 1 is not indefinite |
| Willfulness JMOL and standard to apply | Foundation: jury verdict of willfulness should stand; objective and subjective evidence supported willfulness | Cochlear: JMOL proper under Seagate framework; reasonable defenses existed | Supreme Court’s Halo decision supersedes Seagate; Federal Circuit vacated the JMOL of no willfulness and remanded for district court to re‑evaluate willfulness under Halo’s preponderance standard and discretionary enhanced‑damages framework |
Key Cases Cited
- Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016) (rejected Seagate test; willfulness assessed under discretionary preponderance standard permitting awards for egregious misconduct)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction: factual findings reviewed for clear error)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction principles; intrinsic evidence controls)
- Merck & Co. v. Teva Pharm. USA Inc., 395 F.3d 1364 (Fed. Cir. 2005) (prefer claim constructions that give meaning to all claim terms)
- Triton Tech. of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375 (Fed. Cir. 2014) (Section 112(f) requires specification to disclose structure/algorithm corresponding to claimed function)
- AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236 (Fed. Cir. 2007) (in software claims, disclosed algorithms need only render claim bounds understandable to one of ordinary skill)