Alfred E. Mann Foundation v. Cochlear Corporation , 841 F.3d 1334 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
ALFRED E. MANN FOUNDATION FOR
SCIENTIFIC RESEARCH,
ADVANCED BIONICS, LLC,
Plaintiffs-Cross-Appellants
v.
COCHLEAR CORPORATION, NKA COCHLEAR
AMERICAS, COCHLEAR LTD.,
Defendants-Appellants
______________________
2015-1580, 2015-1606, 2015-1607
______________________
Appeals from the United States District Court for the
Central District of California in No. 2:07-cv-08108-FMO-
SH, Judge Fernando M. Olguin.
______________________
Decided: November 17, 2016
______________________
THOMAS M. PETERSON, Morgan, Lewis & Bockius LLP,
San Francisco, CA, argued for plaintiff-cross-appellant
Alfred E. Mann Foundation for Scientific Research. Also
represented by MICHAEL JOHN LYONS, EHSUN FORGHANY,
JASON EVAN GETTLEMAN, COREY RAY HOUMAND, JACOB
JOSEPH ORION MINNE, LINDSEY M. SHINN, Palo Alto, CA;
ESTHER K. RO, DANIEL GRUNFELD, Los Angeles, CA.
2 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
DONALD MANWELL FALK, Mayer Brown, LLP, Palo Al-
to, CA, for plaintiff-cross-appellant Advanced Bionics,
LLC. Also represented by PAUL WHITFIELD HUGHES,
Washington, DC.
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for
defendants-appellants. Also represented by DAVID MROZ;
BRUCE G. CHAPMAN, Sheppard, Mullin, Richter & Hamp-
ton LLP, Los Angeles, CA.
______________________
Before NEWMAN, CHEN, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge HUGHES.
Opinion concurring in part, dissenting in part filed by
Circuit Judge NEWMAN.
HUGHES, Circuit Judge.
The Alfred E. Mann Foundation for Scientific Re-
search sued Cochlear Corporation and Cochlear Ltd. for
infringing claims 1 and 10 of U.S. Patent No. 5,609,616
and claims 6–7 of U.S. Patent No. 5,938,691, which cover
implantable cochlear stimulators. After conducting a jury
trial and a bench trial on separate issues, the district
court entered judgment finding claim 10 of the ’616 patent
infringed and claim 1 of the ’616 patent and claims 6–7 of
the ’691 patent invalid for indefiniteness. The court also
granted Cochlear’s JMOL of no willful infringement and
its motion for a new trial on damages. Both parties
appeal. Because we find that the district court did not err
in its infringement determination or in finding claims 6–7
indefinite, but did err in finding claim 1 indefinite, we
affirm-in-part and reverse-in-part. We vacate and re-
mand the district court’s determination regarding willful-
ness in light of the Supreme Court’s decision in Halo
Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __, 136
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 3
S. Ct. 1923 (2016). We also conclude that we do not have
jurisdiction over the damages issue.
I
The Alfred E. Mann Foundation for Scientific Re-
search (The Foundation) owns the ’616 and ’691 patents,
and formed Advanced Bionics, LLC (Advanced Bionics) to
manufacture implants. The Foundation sued Cochlear
Corporation and Cochlear Ltd. (Cochlear) for infringing
the ’616 and ’691 patents, and Advanced Bionics was later
added as an involuntary plaintiff. Claims 1 and 10 of the
’616 patent and claims 6–7 of the ’691 patent are at issue
in this appeal.
The patents are directed to an ear implant with te-
lemetry functionality for testing purposes, and generally
describe a two-part system comprising an external wear-
able system with a wearable processor (WP) and head-
piece, and an internal implantable cochlear stimulator
(ICS). Sound is transmitted from the headpiece to the
WP, which processes the transmissions before sending
them to the ICS. The ICS processes the sound to stimu-
late the cochlea––the organ that converts sound to nerve
impulses––via implanted electrodes, thereby allowing the
user to hear. See ’616 patent, col. 3 ll. 10–24. 1 In addi-
tion, the system allows testers, usually physicians, to
measure and adjust various parameters of the implant to
assess whether the device is functioning properly. Id. at
col. 32 ll. 34–54. The tester may observe the implant’s
functionality through the “physician’s tester.” As depicted
in Figure 6, the physician’s tester is a modification of the
previously described WP. Id. at col. 51–55.
1 The patents share substantially the same specifi-
cation.
4 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
The tester may interact with the ICS by adjusting
various knobs on the control panel 302, such that the
physician’s tester measures and displays different param-
eters on visual display 304. Id. at col. 32 l. 65–col. 33 l.
18. Table 7 of the patents describes “typical parameter
settings” for the control knobs, which in turn dictate the
parameters that are measured and displayed. Id. at col.
33 ll. 14–24. These parameter settings include imped-
ance, voltage, and output current. Id. at col. 33 ll. 26–54.
Cochlear’s accused system includes an implant with a
pair of electrodes, a speech processor worn behind the
patient’s ear, and diagnostic software used to test the
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 5
implant. After a physician inserts the implant and elec-
trodes, he can use the diagnostic software to send stimu-
lation signals through the electrodes and determine the
impedance, which is the resistance to electrical current.
The accused system displays the results of the impedance
testing by depicting the electrodes as either red or green,
where an electrode displayed in red indicates that the
electrode has a circuit condition. In addition to displaying
a red or green electrode, Cochlear’s system may also
display the calculated impedance value. Cochlear’s
system does not display the measured voltage across the
two electrodes.
On January 23, 2014, the jury found that Cochlear
willfully infringed claims 1 and 10 of the ’616 patent and
claims 6–7 of the ’691 patent. The jury also found that all
of the asserted claims were not invalid under §§ 102 or
103. The jury awarded approximately $131 million in
damages. J.A. 59–70.
On March 31, 2015, the court conducted a bench trial
on equitable estoppel, laches, inequitable conduct, prose-
cution history, and indefiniteness, and determined that
all of the asserted claims except for claim 10 of the ’616
patent were invalid for indefiniteness. Id. at 47–56. On
the same day, the court denied Cochlear’s JMOL of nonin-
fringement as to claim 10 of the ’616 patent, granted
Cochlear’s JMOL of no willful infringement, and granted
Cochlear’s motion for a new trial on damages. Id. at 10–
24.
Cochlear appeals the court’s denial of its JMOL of
noninfringement as to claim 10 of the ’616 patent. The
Foundation and Advanced Bionics (collectively, Cross-
Appellants) appeal the court’s indefiniteness findings as
to claim 1 of the ’616 patent and claims 6–7 of the ’691
patent, grant of Cochlear’s JMOL of no willful infringe-
ment, and grant of Cochlear’s motion for a new trial on
6 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
damages. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
II
We first address the district court’s denial of Cochle-
ar’s JMOL of noninfringement of claim 10 of the ’616
patent. We review the denial of a motion for judgment as
a matter of law under the law of the regional circuit.
Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d
1325, 1331 (Fed. Cir. 2010). The Ninth Circuit reviews
the district court’s denial de novo. Rivero v. City & Cty. of
San Francisco, 316 F.3d 857, 863 (9th Cir. 2002). Judg-
ment as a matter of law is appropriate where there is no
legally sufficient evidentiary basis for a reasonable jury to
find for the party on that issue. Fed. R. Civ. P. 50(a)(1).
Cochlear raises two arguments on appeal: first, the dis-
trict court erred in construing claim 10, and second, even
under the district court’s construction, Cochlear’s accused
system does not infringe. We address each of these argu-
ments in turn.
A
Cochlear argues that claim 10 of the ’616 patent re-
quires that an infringing system must display the voltage
between two electrodes. Cochlear Br. at 31–32. We
review claim construction de novo, and underlying factual
determinations concerning extrinsic evidence for clear
error. Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S.
__, 135 S. Ct. 831, 841 (2015). We do not find Cochlear’s
arguments persuasive based on the claim language,
specification, and prosecution history. See Phillips v.
AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005) (en
banc).
Claim 10 of the ’616 patent reads, in relevant part:
A method of testing an implantable tissue stimu-
lating system comprising: . . .
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 7
[f] selectively monitoring the at least one
pair of the multiplicity of electrodes to
measure a voltage associated therewith at
the same time the stimulation signals are
applied thereto;
[g] generating stimulator status-indicating
signals representative of the measure-
ments made within the implanted stimu-
lator;
[h] transmitting the stimulator status-
indicating signals to an external receiver
coupled to the external transmitter;
[i] receiving and processing the status-
indicating signals to produce processed
status-indicating signals which convey in-
formation regarding the status of the im-
planted stimulator, including the
measurements made within the implanted
stimulator; and
[j] displaying the processed status-
indicating signals, whereby the status of
the implanted stimulator, including the re-
sults of the measurements made within the
implanted stimulator, may be made
known.
’616 patent, col. 35 l. 43–col. 36 l. 7 (emphases added).
Cochlear first argues that voltage measurements
must be included in the processed status-indicating
signals because part (i) of the claim states that “processed
status-indicating signals . . . convey information . . .
including the measurements made within the implanted
stimulator.” See Cochlear Br. at 36 (emphasis added).
Cochlear reasons that part (i) “does not permit processing
that calculates impedance values from the voltage meas-
urements without maintaining the voltage measurements
8 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
for display.” Id. We find Cochlear’s argument unpersua-
sive in light of the claim language as a whole.
While it is true that the “measurements made within
the implanted stimulator” in part (i) are the voltage
measurements according to the plain language of the
claim and the court’s construction, see J.A. 13, part (g)
defines the pre-processed status-indicating signals as
merely “representative” of these measurements, see ’616
patent, col. 35 ll. 60–62. According to part (i), the signals
described in part (g) are further processed such that they
only “convey information regarding the status of the
implanted stimulator.” Id. at col. 35 l. 66–col. 36 l. 3.
Parts (g) and (i) together make clear that the status-
indicating signals, regardless of whether they are pro-
cessed or not, only have to convey information about the
voltage measurements, but do not require such infor-
mation to be displayed. Furthermore, Cochlear’s con-
struction would require us to find that to “convey” the
voltage measurements, the signals in part (i) must “dis-
play” this information. There is no intrinsic support for
this definition, which would also render part (j) redundant
under Cochlear’s proposed construction. Merck & Co. v.
Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005) (“A claim construction that gives meaning to all the
terms of the claim is preferred over one that does not do
so.”).
Cochlear next argues that the “whereby” clause in
part (j) is material to patentability such that voltage must
be made available for display. Cochlear Br. at 38. The
district court determined that the “whereby” clause mere-
ly provides a more illustrative expression of the “display-
ing the status-indicating signals” limitation, and provides
no additional restrictions on the claim. J.A. 26436. We
agree. There is no support for Cochlear’s construction,
particularly because parts (g) and (i) of claim 10 make
clear that the processed status-indicating signals only
have to convey information about the voltage measure-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 9
ments, but do not have to include the measurements for
display. In addition, Cochlear’s construction would re-
quire us to find that the term “may be made known”
means “available for display.” There is no support for this
interpretation, particularly because the limitation states
that only the processed status-indicating signals must be
displayed.
Cochlear’s proposed construction also conflicts with
the specification. As depicted in Figure 6, the control
knob 308 (the right most knob) is one of three knobs that
dictate “the parameters measured and displayed by the
ICS and Physician’s Tester combination.” ’616 patent, col.
33 ll. 14–18. Positions 1–3 correspond to the impedance,
and are distinct from positions 4–7, which correspond to
the voltage. Id. at ll. 36–40 (Table 7). Because the speci-
fication envisions that impedance, voltage, or the current
may be displayed, the voltage measurement does not have
to be displayed as Cochlear argues.
The prosecution history also does not support Cochle-
ar’s proposed claim construction. In response to a § 112
rejection, the patentee amended “voltages/current” to
“voltage” in part (f), and in response to a § 103 rejection,
added parts (i) and (j). J.A. 15834–35. Cochlear argues
that the applicant made this amendment to specify that
the voltage must be displayed. Cochlear Br. at 38. But, it
is clear that the patentee amended the claim to distin-
guish the invention from the prior art based on its real-
time testing abilities. See J.A. 15843–44 (noting that the
invention allowed a physician to perform real-time test-
ing, where a sensed parameter (voltage) “is sent back to
the physician’s tester as part of a feedback signal were
[sic] it is displayed or otherwise processed. Such action
thereby provides, in effect, a ‘snapshot’, in real time, of
the selected parameter . . . .”). Though the Examiner
allowed the claim because “the prior art does not show or
suggest the measuring of the electrode voltage for exter-
nal display,” id. at 15850, an examiner’s unilateral state-
10 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
ment does not give rise to a clear disavowal of claim scope
by the applicant, see Salazar v. Procter & Gamble Co., 414
F.3d 1342, 1347 (Fed. Cir. 2005). Here, the patentee did
not argue that the voltage must be displayed, instead
focusing its arguments on the real-time features of the
invention.
In light of the intrinsic evidence, we reject Cochlear’s
proposed claim construction.
B
Cochlear argues that even under the district court’s
construction, its accused system does not infringe. In-
fringement is a question of fact that we review for sub-
stantial evidence when tried to a jury. Lucent Techs., Inc.
v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009).
Cochlear asserts that even though its system may display
the impedance value, the voltage value is not “made
known” as required by part (j) of claim 10. Cochlear’s Br.
at 43–44. The relationship between voltage, impedance,
and current is defined by Ohm’s Law, where volt-
age = current x impedance. Because there is sufficient
evidence that the accused system sets forth the current
level associated with each measurement, J.A. 4700, and
voltage may be measured by multiplying the current level
by the accused system’s displayed impedance value, there
is substantial evidence that Cochlear’s accused system
infringes claim 10.
III
We next turn to Cross-Appellants’ cross-appeal on the
court’s indefiniteness determinations. The ultimate
determination of indefiniteness is a question of law that
we review de novo, although any factual findings by the
district court based on extrinsic evidence are reviewed for
clear error. UltimatePointer, LLC v. Nintendo Co., 816
F.3d 816, 826 (Fed. Cir. 2016).
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 11
To satisfy the definiteness requirement, a means-
plus-function claim requires sufficient disclosure of the
underlying structure. That task lies with the patent-
ee. E.g., Med. Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (“The
duty of a patentee to clearly link or associate structure
with the claimed function is the quid pro quo for allowing
the patentee to express the claim in terms of function
under section 112, paragraph 6.”) (citing Budde v. Harley–
Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001));
Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039,
1042 (Fed. Cir. 1993) (“The applicant must describe in the
patent specification some structure which performs the
specified function.”). In cases involving a computer-
implemented invention, we have held that the structure
must be more than a general purpose computer or a
microprocessor, Aristocrat Techs. Austl. Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008), unless,
in the rare circumstance, any general purpose computer
without any special programming can perform the func-
tion, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673
F.3d 1361, 1365 (Fed. Cir. 2012). Where the structure is a
general purpose computer or microprocessor, “[r]equiring
disclosure of an algorithm properly defines the scope of
the claim and prevents pure functional claiming.” Ergo,
673 F.3d at 1364. An “algorithm” is “a step-by-step pro-
cedure for accomplishing a given result,” and may be
expressed “in any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in
any other manner that provides sufficient structure.” Id.
at 1365 (citations and internal quotation marks omitted).
“Claim definiteness . . . depends on the skill level of a
person of ordinary skill in the art. In software cases,
therefore, algorithms in the specification need only dis-
close adequate defining structure to render the bounds of
the claim understandable to one of ordinary skill in the
art.” AllVoice Computing PLC v. Nuance Commc’ns, Inc.,
12 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
504 F.3d 1236, 1245 (Fed. Cir. 2007) (internal citations
omitted).
A
Claim 6 of the ’691 patent reads, in relevant part:
A cochlea stimulation system, comprising:
[a] audio signal receiving means;
[b] an externally wearable signal proces-
sor (WP) for receiving and processing the
audio signals received by the audio signal
receiving means and including means for
generating data indicative of the audio
signal; . . . .
’691 patent, col. 34 l. 51–col. 35 l. 6 (emphasis added).
Claim 7 of the ’691 patent is dependent on claim 6,
and the reproduced portion of claim 6 is the only part
relevant here.
The limitation “means for generating data indicative
of the audio signal” is a means-plus-function limitation.
Cross-Appellants do not dispute that the function is
“generating data indicative of the audio signal,” and the
corresponding structure is a microprocessor. See J.A. 53;
Foundation Br. at 54; Advanced Bionics Br. at 20–21. A
portion of Figure 1, depicting the wearable system 10, is
reproduced below, where structure 30 is the microproces-
sor.
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 13
The district court found claims 6–7 indefinite because
the specification of the ’691 patent fails to disclose the
requisite algorithmic structure to perform the “means for
generating data indicative of the audio signal” function.
J.A. 53–56. Cross-Appellants argue that the claims are
not indefinite because the “microprocessor implements a
logarithmic conversion algorithm to generate data indica-
tive of an audio signal.” J.A. 54. According to Cross-
Appellants, the algorithm performed by the microproces-
sor has two steps: first, the microprocessor receives digital
data from the A/D converter 28, and second, the micropro-
cessor uses a logarithmic conversion function to format
the data. J.A. 33657. The district court found the claims
indefinite because the ’691 patent does not disclose where
the logarithmic conversion function takes place and
because the logarithmic conversion function could be
14 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
implemented through multiple logarithmic algorithms,
none of which the specification describes. J.A. 54–55. We
agree that the claims are indefinite for these reasons.
Cross-Appellants argue that the logarithmic conver-
sion must be performed in the microprocessor. Founda-
tion Reply Br. 6. This argument conflicts with the
testimony of both experts. Dr. Robert Stevenson, Cochle-
ar’s expert, explained that the logarithmic conversion
could be placed in the A/D convertor, or “[a]lternatively[,]
you could put this algorithm into the microprocessor.”
J.A. 2596, ll. 11–15. Dr. Darrin J. Young, Cross-
Appellants’ expert, testified that “[t]he patent doesn’t say
that” the logarithmic conversion must be done in the
microprocessor, J.A. 2617 ll. 2–4, and agreed that “[y]ou
could implement a logarithmic function into the [A/D]
converter.” J.A. 2616, ll. 13–15. Since the patent does not
disclose which component performs the logarithmic con-
version function, the specification does not disclose “with
sufficient particularity the corresponding structure for
performing the claimed function . . . .” Triton Tech of Tex.,
LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed.
Cir. 2014); see also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1315 (Fed. Cir. 2011); Black-
board, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385
(Fed. Cir. 2009) (“The question before us is whether the
specification contains a sufficiently precise description of
the ‘corresponding structure’ to satisfy section 112, para-
graph 6, not whether a person of skill in the art could
devise some means to carry out the recited function.”).
These claims are indefinite for another reason: the
logarithmic conversion may be implemented through
various unspecified algorithms. In describing some
additional possible algorithms, Dr. Young testified that
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 15
logarithmic conversions could be implemented using a
binary logarithmic algorithm or a lookup table. 2 J.A.
2618, ll. 12–19. According to Dr. Young, the only limit on
the number of algorithms that could be used was how
“complicated you want to make the logarithmic function.”
J.A. 2617, ll. 5–9. For instance, Dr. Young testified that a
logarithmic function implemented in the A/D converter
would not be simple but would have “multiplication
factors” that would “need[] to be programmed.” J.A. 2616,
ll. 13–21.
As the testimony reflects, the ’691 patent does not dis-
close an algorithm, or even a small set of algorithms for
performing the claimed logarithmic conversion function.
“Disclosing the broad class of [logarithmic conversion]
does not limit the scope of the claim to the ‘corresponding
structure, material, or acts’ that perform the function, as
required by Section 112.” Triton Tech., 753 F.3d at 1379.
Although Cross-Appellants argue that a person of ordi-
nary skill in the art would know of potential logarithmic
conversion functions to implement, Foundation Br. 59–60,
this does not create structure in the patent where there
was none to begin with. Triton Tech., 753 F.3d at 1379
(“Although a person of skill in the art might be able to
choose an appropriate numerical integration algorithm
and program it onto a microprocessor, the [p]atent dis-
closes no algorithm at all.”) (alteration in original).
Because the court did not err in finding claims 6–7 indefi-
nite where the specification fails to disclose the requisite
2 As the district court noted in evaluating the tes-
timony, this was inconsistent with Dr. Young’s earlier
unequivocal declaration that he “kn[e]w of no other way
to implement such a logarithmic algorithm in a DSP.”
J.A. 55.
16 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
structure, we affirm the district court’s indefiniteness
finding.
B
Claim 1 of the ’616 patent reads, in relevant part:
A physician’s testing system for testing a multi-
channel cochlear stimulating system, comprising
a physician's tester, an external head-
piece/transmitter, and an implanted cochlear
stimulator (ICS), . . .
[c] the physician’s tester comprising:
[1] external processor means coupled to the
transmitting means of the external head-
piece/transmitter for receiving and pro-
cessing the status-indicating signals to
derive information therefrom regarding the
operation of the implanted stimulator and
its plurality of tissue stimulating elec-
trodes; . . . .
’616 patent, col. 34 ll. 23–61 (emphases added).
The limitation “external processor
means . . . for . . . processing the status-indicating signals
to derive information therefrom” is a means-plus-function
limitation. It is undisputed that the structure is the
microprocessor. J.A. 50.
The district court rejected Cross-Appellants’ argu-
ment that the patent discloses a two-step algorithm,
where first, the microprocessor accepts signals repre-
sentative of voltage, and second, the microprocessor
applies Ohm’s law to convert the voltage into an imped-
ance value. Id. at 51. The court found claim 1 indefinite
because the patent does not explicitly identify Ohm’s law
and there are multiple ways of calculating impedance. Id.
at 52. We disagree.
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 17
The specification discloses that both voltage and cur-
rent are measured, and that these values are associated
with the resulting “status-indicating signal.” See, e.g.,
’616 patent, col. 32 ll. 36–42 (“[T]he system of the present
invention provides for . . . measurement of different
voltages and currents within the ICS in response to
commands and data changes transmitted by the WP in
response to data telemetered back to the WP in the form
of status indicating and measurement signals.”). Both
parties’ experts testified that a person of ordinary skill
would know to apply Ohm’s law to voltage and current to
yield impedance values. See J.A. 33662 (“[Impedance] is
always calculated based on the ratio of voltage to current.
One of ordinary skill in the art would readily understand
from the disclosure in the ’616 patent that this [sic] the
algorithm is implemented. The algorithm for calculating
impedance is Ohm’s law, which is famous and well known
to a person of ordinary skill in the art.”); id. at 2586 at
68:11–18 (“Q: If you know what the current is that’s being
applied and you know what the voltage is being meas-
ured, then you could use that information to put it into
the Ohm’s law equation and calculate impedance; right?
A: In this application where you want to do something
like this, you could do that. There are other things you
could do.”). The specification also discloses that imped-
ance is calculated based on voltage and current. ’616
patent, col. 31 ll. 55–58 (“[B]oth the stimulus voltage and
current can be measured and, thereby, the impedance of
the electrode and the tissue-electrode interface can be
measured and transmitted back to the WP.”). Because
there is “adequate defining structure to render the bounds
of the claim understandable to one of ordinary skill in the
art,” AllVoice, 504 F.3d at 1245, we reverse the district
court’s indefiniteness finding as to claim 1 of the ’616
patent.
18 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
IV
The jury found that Cochlear willfully infringed
claims 1 and 10 of the ’616 patent and claims 6–7 of the
’691 patent. J.A. 63, 67. The court set this verdict aside
in granting Cochlear’s JMOL of no willful infringement.
The court concluded that a reasonable jury could not find
that the objective prong of the Seagate inquiry was estab-
lished by clear and convincing evidence, and that Cochle-
ar had presented several reasonable noninfringement
defenses. Id. at 18–19. Although the parties stipulated
that “Cochlear was aware of the ’691 patent and its sub-
ject matter by June 2004” and “was aware of the ’616
patent and its subject matter by July 2003[,]” id. 265, the
court determined that the Foundation failed to satisfy the
subjective prong because (1) the Foundation did not
provide pre-suit notice regarding the ’691 patent, and (2)
Cochlear responded with reasonable infringement defens-
es after being notified of the ’616 patent, id. at 19.
In Halo, the Supreme Court rejected the Seagate test
for willful infringement as “unduly rigid” and “impermis-
sibly encumber[ing] the statutory grant of discretion to
district courts.” 136 S. Ct. at 1932 (internal citation and
quotation marks omitted). The Court rejected the Seagate
test’s clear-and-convincing standard of proof, as well as
the tripartite framework for appellate review. Id. at 1934
(“As we explained in Octane Fitness, ‘patent-infringement
litigation has always been governed by a preponderance of
the evidence standard.’” (citing Octane Fitness, LLC v.
ICON Health & Fitness, 572 U.S. __, 134 S. Ct. 1749, 1758
(2014))). The Court also rejected Seagate’s requirement of
“a finding of objective recklessness in every case before
district courts may award enhanced damages.” Id. at
1932. “Such a threshold requirement excludes from
discretionary punishment many of the most culpable
offenders, such as the ‘wanton and malicious pirate’ who
intentionally infringes another’s patent—with no doubts
about its validity or any notion of a defense—for no pur-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 19
pose other than to steal the patentee’s business.” Id. The
Court described “[t]he sort of conduct warranting en-
hanced damages. . . .as willful, wanton, malicious, bad-
faith, deliberate, consciously wrongful, [or] flagrant . . . .”
Id.
Cross-Appellants argue that, at a minimum, we
should vacate and remand the court’s grant of JMOL on
willfulness in light of Halo. We agree. On remand,
mindful of Halo’s “preponderance of the evidence stand-
ard,” 136 S. Ct. at 1934, the court must consider whether
Cochlear’s infringement “constituted an ‘egregious case[]
of misconduct beyond typical infringement’ meriting
enhanced damages under § 284 and, if so, the appropriate
extent of the enhancement.” WesternGeco L.L.C. v. ION
Geophysical Corp., --- F.3d ---, 2016 WL 5112047, at *5
(Fed. Cir. Sept. 21, 2016) (quoting Halo, 136 S. Ct. at
1934).
Accordingly, we vacate the district court’s determina-
tion that Cochlear’s infringement of the Foundation’s
patents was not willful and remand for further proceed-
ings.
V
Lastly, the court ordered a new trial on damages for
claim 10 of the ’616 patent and vacated the jury’s damag-
es award. J.A. 23. Cross-Appellants argue that the court
abused its discretion in granting Cochlear’s motion. We
lack jurisdiction to consider this issue.
Ordinarily, we apply regional circuit law to substan-
tive and procedural issues not “intimately involved in
federal patent law.” Verinata Health, Inc. v. Ariosa
Diagnostics, Inc., 830 F.3d 1335, 1338 (Fed. Cir. 2016).
However, on matters concerning our jurisdiction, “we
apply our own law and not the law of the regional circuit.”
Spraytex Inc. v. DJS&T, 96 F.3d 1377, 1379 (Fed. Cir.
1996); see also Woodard v. Sage Prods., Inc., 818 F.2d 841,
20 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
844 (Fed. Cir. 1987) (“[D]eference [to regional circuit law]
is inappropriate on issues of our own appellate jurisdic-
tion. This court has the duty to determine its jurisdiction
and to satisfy itself that an appeal is properly before it.”).
“By statute, this court has jurisdiction over an appeal
of a decision of a district court if it is ‘final’ under 28
U.S.C. § 1295(a)(1) or if it is an interlocutory order as
specified in 28 U.S.C. § 1292.” Orenshteyn v. Citrix Sys.,
Inc., 691 F.3d 1356, 1357 (Fed. Cir. 2012). One exception
to the foregoing is when the judgment is final except for
an “accounting.” 28 U.S.C. § 1292(c)(2); see Robert Bosch,
LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1309 (Fed. Cir.
2013) (en banc) (holding that an “accounting” may include
a trial on damages).
There has not been a final decision on the damages is-
sue. We are not persuaded by Cross-Appellants’ argu-
ment that the § 1292(c)(2) exception to the rule of finality
applies here. Under Bosch, the exception allows us to
consider the liability issues in this case, but does not go so
far as to permit us to consider the non-final order itself.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759
F.3d 1333, 1339 (Fed. Cir. 2014) (“As an exception to the
final judgment rule, § 1292(c)(2) is to be interpreted
narrowly.”). Clearly, if the parties were only appealing
the damages issue, we would not have jurisdiction under
§ 1295(a)(1). The addition of the liability issues in this
case does not change our jurisdictional reach. Orensht-
eyn, 691 F.3d at 1363–64 (dismissing as premature por-
tion of invalidity and sanctions appeal relating to
sanctions because the district court had not yet made a
final determination regarding the amount of the sanc-
tions).
Cross-Appellants also argue that we have jurisdiction
because of the district court’s certification of judgment
under Fed. R. Civ. P. 54(b). Foundation Reply Br. 24.
The Rule provides in relevant part: “[w]hen an action
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 21
presents more than one claim for relief . . . or when multi-
ple parties are involved, the court may direct entry of a
final judgment as to one or more, but fewer than all,
claims or parties only if the court expressly determines
that there is no just reason for delay.” Rule 54(b) was
implemented to specifically “avoid the possible injustice of
delay[ing] judgment on a distinctly separate claim [pend-
ing] adjudication of the entire case.” Gelboim v. Bank of
Am. Corp. 135 S. Ct 897, 902 (2015) (alterations in origi-
nal).
There are three prerequisites for invoking Rule 54(b):
(1) multiple claims for relief or multiple parties must be
involved; (2) at least one claim or the rights and liabilities
of at least one party must be finally decided; and (3) the
district court must find that there is no just reason for
delaying an appeal. 10 Charles Alan Wright et al., Feder-
al Practice and Procedure § 2656 (3d ed. 2016). Because
“the district court has no discretion to authorize an appeal
when Rule 54(b) does not apply, its decision that the
requirements of the rule have been met is fully reviewable
by an appellate court.” Id. at § 2655.
The district court’s entry of judgment on the damages
question does not meet the standards of Rule 54(b) be-
cause damages have not been finally decided. In Sears,
Roebuck & Co. v. Mackey, the Supreme Court discussed
Rule 54(b):
[I]t does not relax the finality required of each de-
cision, as an individual claim, to render it appeal-
able, but it does provide a practical means of
permitting an appeal to be taken from one or more
final decisions on individual claims, in multiple
claims actions, without waiting for final decisions
to be rendered on all the claims in the case.
351 U.S. 427, 435 (1956). The standard for finality under
Rule 54(b) is analogous to the standard under 28 U.S.C.
§ 1291 (or 28 U.S.C. § 1295). Id. at 438 (“[Rule 54(b)]
22 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
scrupulously recognizes the statutory requirement of a
‘final decision’ under § 1291 as a basic requirement for an
appeal to the Court of Appeals. It merely administers
that requirement in a practical manner in multiple claims
actions and does so by rule instead of by judicial deci-
sion.”); see also Wright, Federal Practice and Procedure
§ 2656. The Supreme Court has explained that judg-
ments “where assessment of damages or awarding of
other relief remains to be resolved have never been con-
sidered to be ‘final’” for purposes of Rule 54(b). Liberty
Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744 (1976).
The issue of the propriety of the damages award was
not properly certified for appeal under Rule 54(b) because
the district court ordered a new trial on damages. A new
trial is not a final order that falls within Rule 54(b). 3 See
3 Since the question of what is “final” is sometimes
a difficult question, the Supreme Court has cautioned
that the requirement of “finality is to be given a ‘practical
rather than a technical construction.’” Gillespie v. United
States Steel Corp., 379 U.S. 148, 152 (1964) (quoting
Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546
(1949)). But the Supreme Court has noted that “[i]f
Gillespie were extended beyond the unique facts of that
case, § 1291 would be stripped of all significance.” Coop-
ers & Lybrand v. Livesay, 437 U.S. 463, 477 n.30 (1978).
We have similarly held that the “‘exception to finality
created by Gillespie is to be very rarely used beyond the
unique facts of that case.’” Spread Spectrum Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1356–57 (Fed.
Cir. 2011) (quoting Fairchild Republic Co. v. United
States, 810 F.2d 1123, 1126 (Fed. Cir. 1987)). The facts of
this case do not fall within the unique circumstances of
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 23
Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 34 (1980)
(“An order granting a new trial is interlocutory in nature
and therefore not immediately appealable.”). Therefore,
because the district court’s judgment does not fall within
the scope of Rule 54(b) or § 1292(c)(2)’s accounting excep-
tion, we lack jurisdiction to consider whether the court
erred in ordering a new trial on damages.
VI
For the reasons stated herein, we affirm-in-part, re-
verse-in-part, and vacate-in-part the district court’s
judgments and remand the case to the district court to
proceed in accordance with the holdings discussed herein.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
No costs.
Gillespie, which involved a claim under Ohio’s wrongful
death statute and general maritime law.
United States Court of Appeals
for the Federal Circuit
______________________
ALFRED E. MANN FOUNDATION FOR
SCIENTIFIC RESEARCH,
ADVANCED BIONICS, LLC,
Plaintiffs-Cross-Appellants
v.
COCHLEAR CORPORATION, NKA COCHLEAR
AMERICAS, COCHLEAR LTD.,
Defendants-Appellants
______________________
2015-1580, 2015-1606, 2015-1607
______________________
Appeals from the United States District Court for the
Central District of California in No. 2:07-cv-08108-FMO-
SH, Judge Fernando M. Olguin.
______________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
I agree that claim 10 of the ’616 patent is valid and in-
fringed, and I agree that claim 1 of the ’616 patent is
valid. Thus I join Parts II and III-B of the court’s opinion.
I also agree that, in view of changed law, remand is
appropriate on the issue of willful infringement, and to
that extent I join Part IV of the court’s opinion.
However, I do not share the court’s view that claims 6
and 7 of the ’691 patent are invalid for indefiniteness.
2 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
The district court’s finding of indefiniteness was contrary
to the testimony of the experts for both sides. I respect-
fully dissent from the court’s decision in Part III-A.
As for the district court’s vacatur of the jury’s damag-
es verdict and order for a retrial of damages, I do not
agree that the order is immune from the appellate review
requested by the district court under Rule 54(b). Thus I
respectfully dissent from part V of the court’s decision.
I
Indefiniteness of Claims 6 and 7
The court affirms the invalidation of claims 6 and 7 on
the ground that the Foundation does not persuasively
show that the microprocessor performs a logarithmic
conversion function. Maj. Op. at 14. This position is
contrary to the evidence presented by both sides; Cochlear
failed to carry its burden to present clear and convincing
evidence of invalidity on the ground of indefiniteness.
The court also finds the claims indefinite because the
’691 patent does not state which of several known meth-
ods was used for the logarithmic conversion. The specifi-
cation expressly discloses the non-linear mapping steps,
and the experts for both sides agreed that persons in the
field of the invention know how to perform the simple
conversion, which was well-known in the prior art.
The claims at issue, claims 6 and 7 of the ’691 patent,
are challenged only for the clause here shown in bold:
6. A cochlea stimulation system, comprising:
audio signal receiving means;
an externally wearable signal processor (WP) for
receiving and processing the audio signals re-
ceived by the audio signal receiving means and in-
cluding means for generating data indicative
of the audio signal;
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 3
means for transmitting the data to an implanted
cochlear stimulator (ICS), the ICS including:
means for transmission from the WP,
processor means for processing such trans-
missions to generate stimulation pulses and
for controlling the pulse width of the stimula-
tion pulses,
a plurality of electrically isolated capacitor-
coupled cochlea stimulating electrodes for re-
ceiving the stimulation pulses,
means in the ICS responsive to data from the
WP for selectively monitoring at least one of
the electrodes or voltages in the ICS and for
generating ICS-status-indicating signals, and
means in the ICS for transmitting such ICS-
status-indicating signals to the WP; and
means in the WP for receiving and processing
the ICS-status-indicating signals.
’691 Patent, cl. 6. The structure described in the specifi-
cation for the “means for generating data indicative of the
audio signal” is a microprocessor performing a logarithmic
conversion function.
The ’691 patent describes all of the claim elements in
the form that is customary in computer-facilitated inven-
tions: stating the function and how it is performed, in
text, drawings, and flow-charts. The patent explains that
the cochlear electrodes mimic sound by outputting stimu-
lation signals in the cochlear electrodes with voltages
between 0 and 2500 microamps. ’691 Patent, col. 6 ll. 8–
48. The specification includes a detailed logarithmic
schedule of steps corresponding to the range of sounds.
’691 Patent, col. 4 ll.43–64. Sound waves are translated
into digital information in the D/A converter and then
into the selected output voltage in the microprocessor by a
4 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
logarithmic conversion. ’691 Patent, col. 10, ll. 1–8. The
patent teaches that the means for generating “data indic-
ative of the audio signal” is a microprocessor performing a
basic logarithmic conversion, for which the specification
includes a look-up table. ’691 Patent, col. 6 ll. 8–48.
Precedent requires that the court views the technolo-
gy as it would be viewed by persons of skill in the field of
the invention. See Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323, 1340 (Fed. Cir. 2008) (“[T]he specification
must permit one of ordinary skill in the art to ‘know and
understand what structure corresponds to the means
limitation.’”). The overarching requirement is that the
particular factual situation must be viewed, and definite-
ness evaluated, in the same way as by persons in the field
of the invention.
With respect to software-implemented systems, this
court has explained that:
Claim definiteness . . . depends on the skill level of
a person of ordinary skill in the art. In software
cases, therefore, algorithms in the specification
need only disclose adequate defining structure to
render the bounds of the claim understandable to
one of ordinary skill in the art.
AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504
F.3d 1236, 1245 (Fed. Cir. 2007) (citations omitted). In
Typhoon Touch Technology, Inc. v. Dell, Inc., 659 F.3d
1376, 1386 (Fed. Cir. 2011), the court observed that
“known computer-implement[ed] operations . . . are
readily implemented by persons of skill in computer
programming.”
Logarithmic conversion has been known for centuries.
The experts for both sides agreed that logarithmic conver-
sion is well-known, and that persons of skill in the field of
the invention would understand the description of the
logarithmic conversion in the claimed system. Alfred E.
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 5
Mann Found. for Sci. Res. v. Cochlear Corp., No. 07-8108
FMO (SHx) (Testimony of The Foundation Expert Dr.
Young) (Dkt. 454) (“Your output relationship is well
defined. I can’t change the log value. It’s a fixed func-
tion.”); Trial Tr. at 75, ll. 1–11, Alfred E. Mann Found. for
Sci. Res. v. Cochlear Corp., No. 07-8108 (C.D. Cal. Jan. 22,
2014) (Dkt. 456) (Testimony of Cochlear Expert Dr. Ste-
venson) (testifying that a logarithmic conversion is used
because “at the other end you want this exponential”);
The Foundation Expert Dr. Young Decl. at ¶ 17, Mann.
Found, No. 07-8108 (Dkt. 406) (“That [logarithmic] algo-
rithm is implemented with a simple logarithmic lookup
table.”). The ’691 patent includes a lookup table contain-
ing the results of the calculations. ’691 Patent, col. 4
ll.43–64.
No witness for either side testified that a person of
skill in the field would have difficulty performing the
logarithmic conversion. No testimony on examination or
cross-examination placed this aspect in dispute. It was
not disputed that the conversion of sound into “data
indicative of the audio signal” is conventional and was
known and used in the operation of prior art cochlear
implants. No contrary evidence was presented, and no
contrary argument is offered. Nonetheless, my colleagues
find the claims indefinite on the ground that there are
“multiple logarithmic algorithms[] none of which the
specification describes.” Maj. Op. at 14. Precedent does
not require that well-known formulas must be stated in
the specification, when they are known in the relevant
art.
A known procedure is not rendered indefinite when
there is more than one known way of carrying it out. As
stated in Ibormeith IP, LLC v. Mercedes-Benz USA, LLC,
732 F.3d 1376, 1379 (Fed. Cir. 2013): “For a claim to be
definite, a recited algorithm, or other type of structure for
a section 112(f) claim limitation, need not be so particu-
larized as to eliminate the need for any implementation
6 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
choices by a skilled artisan.” Here, there was no dispute
that persons “skilled in the particular art” would “under-
stand what structure(s) the specification discloses.” Amtel
Corp. v. Information Storage Devices, Inc., 198 F.3d 1374,
1382 (Fed. Cir. 1999).
Both parties’ experts and the district court agreed
that the invention necessarily employs a logarithmic
conversion. See Mann Found., 96 F. Supp. at 1051
(“While it may be necessary for the wearable processor
(WP) . . . to perform a logarithmic conversion, because the
implantable cochlear system includes an exponential D/A
converter, it has not been established that the logarithmic
conversion must take place in the microprocessor.”). It
was not disputed that logarithmic conversion was known
for audio data, and had been used in prior art cochlear
implants.
My colleagues’ holding that it was necessary to state
which of the two or three known logarithmic conversion
routines was used, on pain of invalidity, is unsupported
by mathematics, reason, or precedent. See S3 Inc. v.
NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001)
(“[P]atent documents need not include subject matter that
is known in the field of the invention and is in the prior
art, for patents are written for persons experienced in the
field of the invention.”); Intel Corp. v. VIA Techs., Inc., 319
F.3d 1357, 1366–67 (Fed. Cir. 2003) (implementation
choices of “known algorithms” are “properly left to the
knowledge of those skilled in the art, and need not be
specified in the patent”).
On similar facts, this court has held that claims are
not invalid for indefiniteness when expert testimony “sets
forth several straightforward ways that the algorithm . . .
could be implemented by one skilled in the art.” AllVoice,
504 F.3d at 1245. On cross examination at trial, the
Foundation’s expert, Dr. Young, explained that no matter
how a logarithmic conversion is implemented, the algo-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 7
rithm will be the same: “your output relationship is well
defined. I can’t change the log value. It’s a fixed func-
tion.” Alfred E. Mann Found. for Sci. Res. v. Cochlear
Corp., No. 07-8108 FMO (SHx) (Testimony of The Foun-
dation Expert Dr. Young) (Dkt. 454).
A finding of invalidity based on indefiniteness re-
quires proof by clear and convincing evidence that persons
skilled in the field of the invention would not be “able to
perform the recited function” based on the description in
the specification and the knowledge in the art. Intel
Corp., 319 F.3d at 1366. This standard controls, along
with the truism that “[p]atent documents are written for
persons familiar with the relevant field . . . lest every
patent be required to be written as a comprehensive
tutorial and treatise for the generalist.” Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
The court errs in finding claims 6 and 7 invalid for in-
definiteness, upon new and ill-defined requirements for
patent specifications that are unrealistic and unneces-
sary, adding burdens and pitfalls with no benefit to
anyone. The implementing structure “must be sufficient-
ly defined to render the bounds of the claim—declared by
section 112(f) to cover the particular structure and its
equivalents—understandable by the implementer.”
Ibormeith, 732 F.3d at 1379. As computer-implemented
technology continues to provide new public benefits,
consistency of judicial view is essential to stability of the
law and progress of the technology.
II
Jurisdiction to review the Order for a new trial
The district court vacated the jury’s damages verdict,
Judgment at 2, Mann Found., No. 07-8108 (Dkt. 548), and
ordered a new trial on damages on the ground that “the
damages awarded by the jury were not broken down as to
each claim or patent,” Order Re: Post-Trial Motions at 23,
8 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
Mann Found., No. 07-8108 (Dkt. 540). My colleagues hold
that this court lacks jurisdiction to review the district
court’s order of vacatur and a new trial, holding that the
district court abused its discretion in certifying and
entering judgment under Rule 54(b), on the theory that
there is not a final decision on damages. Maj. Op. at 20-
21. The vacatur order is reviewable under either the
district court’s Rule 54(b) certification or under 28 U.S.C.
§ 1292(c)(2). The district court entered “[j]udgment . . . in
favor of Defendants as to the vacatur of the jury’s damag-
es award,” Judgment at 2. Thus the district court assured
that its judgment of vacatur was appealable. Mann.
Found, No. 07-8108 (Dkt. 547). Precedent and sound
practice counsel that we attend to this appeal requested
by the district court.
The Supreme Court does not view the requirement of
finality as strictly “jurisdictional,” but as a matter of
practical jurisprudence and comity. The Court has coun-
seled that “the requirement of finality is to be given a
practical rather than a technical construction.” Gillespie
v. United States Steel Corp., 379 U.S. 148, 152 (1964)
(internal quotations omitted); see American Export Lines,
Inc. v. Alvez, 446 U.S. 274, 279 (1980) (“[N]ow that the
case is before us . . . the eventual costs, as all the parties
recognize, will certainly be less if we now pass on the
questions presented here rather than send the case back
with those issues undecided.”) (alterations original) (citing
Gillespie, 379 U.S. at 153)). In White v. New Hampshire
Department of Employment Security, the Court observed
that “district courts have ample authority to deal with”
the “problem” of piecemeal appeals. Here, the district
court prudently exercised such authority, entering judg-
ment as to the vacatur of the jury’s damages verdict and
certifying the issue under Rule 54(b).
The district court vacated the damages verdict that
was fully tried on the jury instruction submitted by Coch-
lear, the party now complaining of the result. The verdict
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 9
form, proposed and accepted by Cochlear, instructed the
jury:
25. If you find that the Cochlear Defendants have
infringed a valid claim of either the ’616 patent or
the ’691 patent, what is the reasonable royalty
rate that the Cochlear Defendants should pay to
the Foundation?
The jury answered: 7.5%. Verdict Form, Mann Found.,
No. 07-8108 (Dkt. 460). The Foundation argues that the
instructions were correct and Cochlear’s post-trial objec-
tion waived, and also that the verdict is well supported by
the evidence.
Precedent and sound practice provide appellate juris-
diction of the vacatur order. The Ninth Circuit, whose
precedent controls as to procedural matters in its district
courts, has recognized that appellate review must pro-
mote judicial efficiency and sensible litigation economy.
See Wabol v. Villacrusis, 958 F.2d 1450, 1455 (9th Cir.
1990) (“Though the remaining issues could eventually
ascend to this court, this alone should not prevent our
adjudication of important and potentially dispositive
questions which have been fully briefed and argued. Such
a result would disserve the cause of judicial economy and
therefore frustrate the very purpose of the final judgment
rule.”). This is particularly true when, as here, the dis-
trict court invokes appellate review. Id. at n.7 (“Signifi-
cantly, our exercise of jurisdiction will not interfere with
the course of the trial. The trial court purported to issue a
final judgment.”).
If the proposed new trial were to proceed, it would be
on the basis of separating the damages assessment by
patent and claim, as the district court apparently was
persuaded after the verdict was rendered. However,
Cochlear presented the verdict form that the district court
accepted and used. The Ninth Circuit counsels reluctance
to “allow litigants to play procedural brinkmanship with
10 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION
the jury system and take advantage of uncertainties they
could well have avoided.” McCord v. Maguire, 873 F.2d
1271, 1274 (9th Cir. 1989) (holding that litigants have the
responsibility to request or submit special verdict forms);
see also Mitsubishi Elec. Corp. v. Ampex Corp., 190 F.3d
1300, 1304 (Fed. Cir. 1999) (party forfeited post-trial
challenge on the ground that a special verdict should have
been obtained, by proposing and accepting a verdict form
that did not separate the potential grounds of invalidity).
Nor was the verdict form that was adopted incorrect
in law. It was not disputed that the royalty base was the
same as to any of the four claims, such that infringement
of any claim would produce the same damages calcula-
tion. On this premise, the evidence presented by both
parties did not differentiate among the four claims and
two patents. See TiVo, Inc. v. EchoStar Commc’ns Corp.,
516 F.3d 1290, 1312 (Fed. Cir. 2008) (“Because the dam-
ages calculation at trial was not predicated on the in-
fringement of particular claims, and because we have
upheld the jury’s verdict that all of the accused devices
infringe the software claims, we affirm the damages
award.”); SK Hynix Inc. v. Rambus Inc., 2013 WL
1915865, at *15 (N.D. Cal. May 8, 2013) (denying new
trial where “damages were awarded based upon infringe-
ment by particular products, not upon infringement of
particular patent claims”).
Cochlear concedes that “[t]he evidence . . . did not give
the jury any way to assess a royalty rate assuming in-
fringement of fewer claims or patents.” Cross-Appellee
Resp. Br. at 28. The concession that the evidence of
record provided no way to differentiate among infringe-
ment by claim or patent, distinguishes this case from the
facts of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1262 (Fed. Cir. 2014), where this court remanded to
determine whether the invalidation of one patent might
affect the damages calculation. The evidence, instruc-
tions, and damages theories presented led the jury to a
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 11
single, permissible conclusion: that a reasonable royalty
for the invention—back telemetry—was required to
compensate the Foundation for infringement of even a
single claim.
Precedent and sound practice establish the appellate
obligation to review this grant of a new trial. Such review
is not barred. From the court’s contrary holding, I re-
spectfully dissent.