958 F.3d 1348
Fed. Cir.2020Background
- The ’040 patent claims a bone-anchored hearing aid that mechanically transmits vibrations through a patient’s skull from the deaf side to the hearing-side cochlea; claim 1 is independent and claims 4–12 were at issue (claims 1–3 and 13 disclaimed).
- Oticon petitioned two IPRs; the PTAB instituted review on claims 1–6 and 11–13 and later added claims 7–10 after SAS. The Board found claims 4–6 and 11–12 unpatentable, and ruled claims 7–10 not proved unpatentable because means-plus-function limitations lacked corresponding structure.
- Key prior art: Vaneecloo (clinical study showing treble amplification/transcranial attenuation), Carlsson (device with separate bass/treble tuning), Leysieffer (digital processing, inductive coupling and rechargeable internal battery), and Hough (Xomed device using external coil and implanted magnet to vibrate).
- The Board construed claims under the broadest reasonable interpretation: the preamble "for rehabilitation of unilateral hearing loss" was non-limiting; "electronic circuitry" required an A/D converter; and "induction" meant electromagnetic induction but did not require generation of voltage/current in the implant.
- Federal Circuit disposition: affirmed the Board as to claims 4–6 and 11–12 (unpatentable) and as to claims 7–9 (could not be analyzed because §112(f) structure absent); vacated and remanded as to claim 10 because an express structural alternative (directivity-dependent microphone) can be compared to prior art despite other indefinite alternatives.
Issues
| Issue | Cochlear's Argument | Oticon's Argument | Held |
|---|---|---|---|
| Preamble "for rehabilitation of unilateral hearing loss" — limiting? | Preamble limits claims to unilateral (and narrow/profound) hearing-loss use | Preamble is an intended-use statement and not claim-limiting | Preamble is not limiting; Board and court affirmed (not part of claim scope) |
| "Specifically adapted to transmit vibrations..." (claims 4–5) — meaning? | Requires adaptation accounting for skull mechanics | Ordinary meaning: "adapted/ configured to" transmit across skull | Court adopted ordinary meaning; no separate skull-mechanics requirement |
| Treble > bass amplification — does prior art disclose this? | Board lacked substantial evidence that Vaneecloo/BAHA teach preferential treble amplification | Vaneecloo expressly reports amplification of high-pitched sounds and BAHA devices allowed treble/bass adjustment | Substantial evidence supports Board that Vaneecloo (and device capability) discloses treble amplification greater than bass |
| Claim 6 (A/D converter) — motivation to combine Leysieffer with Vaneecloo/Carlsson? | No convincing motivation to add digital A/D processing | Digital processing benefits (multi‑channel, feedback reduction, reprogrammability) provide motivation | Substantial evidence supports a motivation to combine; claim 6 obvious over the cited art |
| "Induction" in claims 11–12 — does Hough anticipate? | "Induction" requires generation of voltage/current in internal part; Hough lacks that | "Induction" = electromagnetic induction; Hough’s external coil producing alternating fields meets limitation | Court affirmed Board: Hough anticipates; "induction" need not require generated voltage/current in implant |
| Means-plus-function claims 7–9 and claim 10 — can Board analyze prior art? | Patent owner defends validity; claims have corresponding structure or should be construed narrowly | Means-plus-function elements lack corresponding structure in spec, preventing claim‑to‑prior‑art comparison | Claims 7–9: Board correctly declined to reach merits (no corresponding structure). Claim 10: vacated/remanded — because claim 10 also recites a structural alternative (directivity-dependent microphone) that can be compared to prior art, so the Board must analyze that alternative |
Key Cases Cited
- SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018) (Supreme Court decision prompted Board to add claims 7–10 to IPR)
- Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020) (Board cannot complete prior-art analysis when a means-plus-function element lacks corresponding structure)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (principles on means-plus-function claiming and indefiniteness)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) (limits on IPR proceedings and Board’s treatment of issued claims)
- Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320 (Fed. Cir. 2019) (preamble language is generally not limiting)
- Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) (when preamble limits claims; "necessary to give life, meaning, and vitality")
- Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420 (Fed. Cir. 1997) (a claim using "means" that also recites sufficient structure is not subject to §112(f))
- In re Man Machine Interface Techs. LLC, 822 F.3d 1282 (Fed. Cir. 2016) ("adapted to" construed as "made to" or "configured to")