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Cochlear Bone Anchored Solutions AB v. Oticon Medical AB

IPR May Evaluate Claim Requiring an Indefinite Element “and/or” Another Element

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, __ F.3d __, 2020 WL 2503475 (Fed. Cir. May 15, 2020) (Newman (CIP/DIP), O’Malley, TARANTO) (PTAB) (3 of 5 stars)

Fed Cir part-affirms, part-vacates IPR decision that had found (1) five Cochlear claims to be unpatentable, and (2) four additional claims not proved unpatentable due to claim defects obstructing comparison to prior art. Cochlear’s patent relates to a bone-anchored hearing aid usable by patients deaf in one ear, which works by transmitting vibrations through the skull to the non-deaf ear. The Board did not reversibly err in finding the five claims unpatentable. Preamble language “for rehabilitation of unilateral hearing loss” was merely a statement of intended use, and not a limitation on the invention. “The language at issue here, which states only an intended use, adds no structural element, and provides no antecedent basis for the body of the claims, is not limiting.” Op. at 11. The requirement that the hearing aid be “specially adapted to transmit vibrations in the skull bone,” under BRI, did not require more than that adaptation to account for the mechanics of the skull, and requires no “particular intent or objective” by the designer. Id. at 12. Substantial evidence supported the other determinations challenged by Cochlear.

The Board did not err in determining that three Cochlear claims were indefinite because they required means-plus-function elements that lacked corresponding structure in the description, and so could not be analyzed against the prior art. The Board erred as to a fourth claim because the defective means-plus-function element the Board identified was not actually required. The claim required a “means comprising” a structural element (a microphone) “and/or” a means-plus-function element. As to the means-plus-function element, the Board correctly identified that the description lacked corresponding structure. Thus the claim is indefinite, but per Samsung, 948 F.3d 1342 (Fed. Cir. 2020), it is still reviewable for IPR purposes, and on remand the Board should evaluate it for unpatentability over the presented prior art.

Judge Newman’s opinion: Judge Newman concurs as to the means-plus-function claims, but would have reversed as to the others because in her view the preamble’s statement that the invention is “for rehabilitation of unilateral hearing loss” is limiting. Her opinion describes how there was an unmet need at the time of the invention concerning single-sided deafness, and notes that the patented system “escaped the many persons studying the problem and seeking solution.” Op. at 2.

KEYWORDS: INTER PARTES REVIEW; MEANS-PLUS-FUNCTION; INDEFINITENESS (YES); CORRESPONDING STRUCTURE