Docket No. 2015-1580, -1606, -1607
NEWMAN, CHEN, HUGHES
November 17, 2016
Brief Summary: DC decision of indefiniteness of certain claims for failure to disclosure an algorithm affirmed; another found supported by “adequate defining structure”. Finding of no willfulness vacated and remanded for consideration under Halo.
Summary: AEM appealed DC finding that claim 1 of its US 5,609,616 and claims 6-7 of US 5,938,691 directed to ear implants were invalid for indefiniteness and grant of Cochlear’s JMOL of no willfull infringement and its motion for a new trial on damages. Cochlear appealed DC finding of infringement of those claims and ‘616 claim 10. The jury found Cochlear willfully infringed the claims, awarding $131 million in damages, and that all were not invalid for anticipation or obviousness. The court then determined all claims except ‘616 claim 10 were invalid for indefiniteness and granted Cochlear’s other motions. The FC panel opinion first addressed the claim construction of claim 10 (reviewed de novo under Teva (US 2015) and Phillips (FC 2005)) and disagreed with Cochlear’s proposed construction as it “conflicts with specification” and is not supported by the prosecution history. Reviewing the jury finding of infringement of claim 10 for substantial evidence (Lucent, FC 2009), the FC panel agreed. The FC panel opinion explains that the ultimate determination of indefiniteness is reviewed de novo while factual findings based on extrinsic evidence are reviewed for clear error (UlimatePointer, FC 2016). The DC found the means-plus-function language of ‘691 claim 6 (“means for generating data indicative of the audio signal”, on which claim 7 depends) indefinite since “the specification…fails to disclose the requisite algorithmic structure to perform” the claimed function (“where the logarithmic conversion functions takes place and because [it] could be implemented through multiple logarithmic algorithms, none of which the specification describes…the ‘691 patent does not disclose an algorithm, or even a small set of algorithms for performing the claimed logarithmic conversion function”; Judge Newman disagreed in the dissent). AEM argued “a person of ordinary skill in the art would know of potential logarithmic conversion functions to implement” but the FC panel explained that “this does not create structure in the patent where there was none to begin with” (Triton Tech., FC 2014). The DC decision of indefiniteness was therefore affirmed. The DC found the means-plus-function term “external processing means…” of ‘616 claim 1 indefinite “because the patent does not explicitly identify Ohm’s law and there are multiple ways of calculating impedence.” The FC panel disagreed “[b]ecause there is ‘adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art” (e.g., the specification discloses that both voltage and current are measured, and that these values are associated with the resulting ‘status-indicating signal’” and “experts testified that a person of ordinary skill iwould know how to apply Ohm’s law to voltage and current to yield impedence values”). AEM argued the no willful infringement decision should be vacated and remanded in light of Halo (US 2016) since it was based on the failure to establish the “objective prong of the Seagate inquiry” (rejected in Halo), and the FC panel agreed (“the court must consider whether Cochlear’s infringement ‘constituted an ‘egregious case of misconduct beyond typical infringement’ meriting damages under § 284”). The FC panel also determined it lacked jurisdiction on the new trail issue (DC decision not within the scope of Rule 54(b) or § 1282(c)(2)’s accounting exception).