IPR obviousness findings affirmed except for one claim that “describes a stand-alone alternative” to means-plus-function limitation

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al.

Docket No. 2019-1105, -1106 (IPR2017-01018, -01019)
May 15, 2020

Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR.

Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during the IPR; the challenged claims are dependent on disclaimed claim 1. The Board originally declined to review claims 7-10 after finding those to be means-plus-function claims and that “there is no identified corresponding structure in the specification” leaving it unable to compare the claim to the prior art, but later added the claims following the SAS decision (US 2018). That reasoning led to the Board’s final decision that claims 7-10 were not shown to be unpatentable. Regarding claim 1, the Board concluded that the “preamble phrase ‘for rehabilitation of unilateral hearing loss’ does not limit the scope of the claims”. The FC panel explained that “[i]n general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim” or if “necessary to provide antecedent basis for the body of the claim”, but not if it “merely extol[s] benefits” and “does not limit the claim scope without clear reliance on those benefits” (Catalina Mktg., FC 2002; Symantec, FC 2008). And the FC panel found the Board correctly found the disputed preamble is not a limitation but “merely a statement of intended use” (“no additional structure” to claim “furnished by the preamble”, “not necessary to provide antecedent basis”), and therefore rejected Cochlear’s first argument. The FC panel also rejected Cochlear’s second argument “that the ‘specifically adapted to’ limitation requires that the frequency characteristics ‘account for the mechanics of the skull’”, finding the Board correctly construed the limitation by “ordinary-meaning construction” (e.g., “‘adapted to’ generally means ‘made to,’ ‘designed to,’, or ‘configured to’ perform the stated function” (In re Man Machine, FC 2016; In re Giannelli, FC 2014; Aspex, FC 2012), and correctly concluded obviousness based on its construction. Cochlear also argued that there was no motivation to combine the prior art that it acknowledged disclosed all the claimed limitations, but the FC panel found the Board’s obviousness findings to be supported by substantial evidence (e.g., the preamble is not a limitation). Regarding Oticon’s cross-appeal as to claims 7-10, the FC panel also concluded that the Board did not err in finding “it could not construe the” means-plus-function limitations of claims 7-9 “in order to compare the claim requirements with the prior art” (Samsung, FC 2020 (cannot compare where “the meaning of that requirement is entirely unknown”); “Each of those claims plainly contains at least one required means-plus-function claim element for which the specification provides no corresponding structure.”; Williamson, FC 2015 (“[s]uch a claim is indefinite…but that is not the inquiry in an” IPR (311(b); Cuozzo, US 2016)). In finding the Board erred in its analysis of claim 10 and vacating this decision, the FC panel found it did not “contain a required claim element in means-plus-function form” and “also describes a stand-alone alternative to the signal processing means” (still indefinite but not relevant to IPR). Judge Newman’s dissent argued that “the court employ[ed] an improper analytic technique” here in part because it “dispose[d] of…limitations by designating the introductory clause as a mere ‘preamble’ that does not limit the claims”.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness. Bookmark the permalink.

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