Cochlear Bone Anchored v. Oticon Medical Ab ( 2020 )

Case: 19-1105 Document: 53 Page: 1 Filed: 05/15/2020
United States Court of Appeals
for the Federal Circuit
______________________
COCHLEAR BONE ANCHORED SOLUTIONS AB,
Appellant
v.
OTICON MEDICAL AB, OTICON MEDICAL LLC,
WILLIAM DEMANT HOLDING A/S,
Cross-Appellants
______________________
2019-1105, 2019-1106
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01018, IPR2017-01019.
______________________
Decided: May 15, 2020
______________________
LAURA BURSON, Sheppard, Mullin, Richter & Hampton
LLP, Los Angeles, CA, argued for appellant. Also repre-
sented by BRUCE G. CHAPMAN; MARK PATRICK, Washington,
DC.
DAVID R. ANDERSON, Birch Stewart Kolasch & Birch,
LLP, Falls Church, VA, argued for cross-appellants. Also
represented by EUGENE PEREZ.
______________________
Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
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2 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
Opinion for the court filed by Circuit Judge TARANTO.
Opinion concurring in part and dissenting in part filed by
Circuit Judge NEWMAN.
TARANTO, Circuit Judge.
Cochlear Bone Anchored Solutions AB owns U.S. Pa-
tent No. 7,043,040, which describes and claims a bone-an-
chored hearing aid that transmits soundwaves
transcranially from a patient’s deaf side to the patient’s
non-deaf ear. Oticon Medical AB, Oticon Medical LLC, and
William Demant Holding A/S (together, Oticon) success-
fully sought from the Patent and Trademark Office (PTO)
two inter partes reviews of, collectively, all claims of the
’040 patent under 35 U.S.C. §§ 311–319. In those reviews,
the PTO’s Patent Trial and Appeal Board concluded that
Oticon proved claims 4–6 and 11–12 unpatentable, but did
not prove claims 7–10 unpatentable. (Cochlear disclaimed
claims 1–3 and 13.) Cochlear appeals the ruling on claims
4–6 and 11–12, while Oticon cross-appeals the ruling on
claims 7–10. We affirm the Board’s conclusions as to all
claims except claim 10, as to which we vacate and remand.
I
A
The ’040 patent describes a hearing aid with several
parts. One part is a vibration-producing component im-
planted and mechanically anchored into a patient’s skull
on the patient’s deaf side. ’040 patent, col. 2, lines 16–22,
48–55. An external part of the hearing aid, which includes
a microphone, picks up sound on the patient’s deaf side,
processes the sound, and generates vibrations in the im-
planted part. Id., col. 2, line 44, through col. 3, line 8.
Those vibrations are transmitted through the patient’s
skull to the patient’s non-deaf ear, so that the patient’s
non-deaf ear perceives sound originating from the deaf-ear
side. Id.
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 3
Several additional details discussed in the specification
are relevant to the issues before us. The ’040 patent notes
that high-frequency soundwaves, as they traverse the
skull, weaken in strength more than do low-frequency
soundwaves; that is, transcranial attenuation is greater for
treble than for bass frequencies. Id., col. 2, lines 56–62.
The patent suggests that this differential attenuation may
be addressed by selectively amplifying treble frequencies
relative to bass frequencies. Id. In addition, the patent
describes the following alternative embodiments of the
hearing aid: one with a battery in the external part that
powers the internal part through induction, another with a
battery in the internal part that is recharged through in-
duction. Id., col. 3, lines 11–24.
Claim 1 of the ’040 patent is the independent claim on
which all claims now at issue depend, directly or indirectly.
It recites:
1. A bone-conducting bone-anchored hearing aid
apparatus for sound transmission from one
side of a patient’s head to the patient’s cochlea
on another side of the patient’s head for reha-
bilitation of unilateral hearing loss, the hear-
ing aid apparatus comprising:
a vibratory generating part arranged to
generate vibrations that are mechani-
cally transmitted through the skull
bone from a deaf side to the inner ear
on the other side of the patient; and
an implantable part operative to mechani-
cally anchor the vibratory generating
part, the implantable part being osse-
ointegrated in the patient’s skull bone
behind an external ear at the deaf side
of a patient.
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4 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
Id., col. 3, lines 29–41. Cochlear statutorily disclaimed in-
dependent claims 1 and 13 and dependent claims 2–3 dur-
ing the inter partes reviews. The claims addressed by the
Board and now before us are dependent claims 4–12, all of
which are apparatus claims.
Claims 4 and 5 require that the frequency characteris-
tics of the hearing aid are “specifically adapted to transmit
vibrations in the skull bone from one side of the skull to the
other side” (by incorporation of claim 3) and require that
treble frequencies are amplified more than bass frequen-
cies. Id., col. 3, lines 44–53. Claim 6, dependent on claim
1, requires electronic circuitry “to convert a signal from a
microphone of the hearing aid to the vibratory generating
part from an analog signal to a digital signal.” Id., col. 4,
lines 1–5. Claims 7–9, dependent on claim 6, all require
certain “digital signal processing means” or “signal pro-
cessing means.” Id., col. 4, lines 7–19. Claim 10, depend-
ent on claim 6, requires “directivity means comprising at
least one directivity dependent microphone and/or signal
processing means.” Id., col. 4, lines 20–24. Claim 11, de-
pendent on claim 1, specifies that the implanted part and
the vibration-producing part are included in the internal
part and that power is transmitted from the external part
of the hearing aid to the internal part by induction. Id., col.
4, lines 26–32. Claim 12, dependent on claim 11, adds that
the internal part includes a rechargeable battery to be
charged by induction from an external power supply. Id.,
col. 4, lines 33–36.
B
Oticon filed two petitions for inter partes reviews, chal-
lenging all claims of the ’040 patent. The Board, acting as
delegee of the PTO’s Director, 37 C.F.R. §§ 42.4, 42.108, in-
itially instituted a review only of claims 1–6 and 11–13. It
declined to institute a review of claims 7–10 on the ground
that those claims likely are means-plus-function claims
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 5
subject to 35 U.S.C. § 112, ¶ 6 (2006), 1 but there is no iden-
tified corresponding structure in the specification, without
which “the differences between the claimed invention and
the asserted prior art cannot be ascertained.” J.A. 295.
The Board consolidated the two IPR proceedings.
After the Supreme Court issued its decision in SAS In-
stitute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board
added claims 7–10 to the proceedings. It authorized the
filing of supplemental briefs on those claims. In the sup-
plemental briefing, the parties agreed to broad construc-
tions for the means-plus-function limitations, namely that
the “digital signal processing means” and “signal pro-
cessing means” limitations include a “digital signal proces-
sor” and the “directivity means” limitation includes “a
directivity dependent microphone (or directional micro-
phone) and/or a digital signal processor.” J.A. 461–63, 476.
The Board proceeded to trial on the following invalidity
grounds: claims 4–5 as obvious over Vaneecloo 2 and Carls-
son; 3 claims 6, 7, and 9 as obvious over Vaneecloo, Carls-
son, and Leysieffer; 4 claim 8 as obvious over Vaneecloo,
1 Because of the filing date of the application that is-
sued as the ’040 patent, the means-plus-function provision
applicable in this case is 35 U.S.C. § 112, ¶ 6, which is now
codified, without change material to this case, as 35 U.S.C.
§ 112(f). See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003,
1006 n.2 (Fed. Cir. 2018).
2 F.M. Vaneecloo et al., Prosthetic Rehabilitation of
Unilateral Anakusis: Study by Stereo-Audiometry, 117
Ann. Otolaryngol. Chir. Cervicofac. 410 (2000).
3 Peder U. Carlsson, Dep’t of Applied Electronics,
Chalmers Univ. of Tech., Tech. Report No. 195, On Direct
Bone Conduction Hearing Devices: Advances in Transducer
Technology and Measurement Methods (1990).
4 Can. Patent Pub. No. 2301437 A1.
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6 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
Carlsson, Leysieffer, and Schaefer; 5 claim 10 as obvious
over Vaneecloo, Carlsson, Leysieffer, and Lesinski; 6 claim
11 as anticipated by Hough; 7 and claim 12 as obvious over
Hough and Leysieffer.
Vaneecloo describes a clinical study of the “possibilities
of prosthetic rehabilitation by semi-implantable bone-an-
chored hearing aid (BAHA) in two patients with unilateral
anakusis.” 8 J.A. 783. The study involved surgically im-
planting a bone-anchored hearing device on a patient’s deaf
side that transcranially transmits sound received on the
deaf side to the patient’s non-deaf ear. J.A. 784. The in-
vestigators concluded that “the amplification of the high-
pitched sounds captured on the anakusis side and per-
ceived by transcranial route by the contralateral ear al-
lowed for a significant rise in sound perception thresholds
of frequencies between 1,000 and 4,000 Hz.” J.A. 788.
Carlsson discloses the use of a bone-anchored hearing
device for the treatment of patients with conductive or sen-
sorineural hearing loss. J.A. 840. Carlsson also discloses
a hearing aid fitting process in which the user manipulates
the bass and treble frequency controls independently to op-
timize the device’s frequency characteristics for that user.
J.A. 819–22.
Leysieffer describes a partially or fully implantable
hearing aid system capable of processing or generating sig-
nals according to set parameters and converting acoustic
signals into electrical signals. J.A. 916, 926. Leysieffer dis-
closes transmitting signals, through inductive coupling,
5 U.S. Patent No. 4,729,366.
6 U.S. Patent No. 5,881,158.
7 J.V.D. Hough et al., Long-Term Results for the Xo-
med Audiant Bone Conductor, 28 Otolaryngol. Clinics of N.
America 43 (1995).
8 “Anakusis” refers to hearing loss or deafness.
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 7
from an external unit to an implanted part. J.A. 917.
Leysieffer also describes charging, by inductive coupling, a
rechargeable battery cell located in the hearing aid’s im-
planted part. J.A. 925.
Hough describes the Xomed Audiant Bone Conductor
device, which uses an alternating electrical current gener-
ated by an external processor to electromagnetically vi-
brate an implanted osseointegrated magnet. J.A. 1097–98.
The external processor includes a microphone to pick up
sounds on a patient’s deaf side, an amplifier, and an elec-
tromagnetic coil to vibrate the implanted magnet, which
sends vibrations transcranially to a patient’s non-deaf ear
when activated. J.A. 1098.
In its final written decision, the Board concluded that
claims 4–6 and 11–12 are unpatentable on the grounds
raised in Oticon’s petitions. J.A. 48–86, 89. The Board also
concluded that Oticon had not proven claims 7–10 un-
patentable, reasoning that the means-plus-function limita-
tions of those claims have no corresponding structure
disclosed in the specification, so that the Board could not
“ascertain the differences between the claimed invention
and the asserted prior art” for those claims. J.A. 16–30, 89.
The Board decided several claim-construction disputes
relevant to the issues now before us, relying on the broad-
est-reasonable-interpretation standard, whose applicabil-
ity to this case is not in dispute. It ruled that claim 1’s
preamble phrase “for rehabilitation of unilateral hearing
loss,” applicable to all claims currently at issue, did not
limit the scope of the claims. J.A. 33–35. The Board also
considered claim 3’s phrase “the frequency characteristics
of the apparatus are specifically adapted to transmit vibra-
tions in the skull bone from one side of the skull to the other
side,” applicable to claims 4 and 5, and determined that
frequency characteristic adaptations need not “account for
the mechanics of the skull.” J.A. 38–41. The Board con-
strued claim 6’s “electronic circuitry” limitation, applicable
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8 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
to claims 6–10, to mean “an analog-to-digital converter.”
J.A. 31. The Board construed “induction,” in claims 11 and
12, to mean “electromagnetic induction,” but held that the
term did not require the generation of voltage or current in
the implanted part. J.A. 41–45.
C
Cochlear timely appealed the Board’s determination
that claims 4–6 and 11–12 have been proved unpatentable,
and Oticon timely cross-appealed the Board’s decision that
claims 7–10 have not been proved unpatentable. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
We review the Board’s compliance with legal standards
de novo, Pride Mobility Products Corp. v. Permobil, Inc.,
818 F.3d 1307, 1313–14 (Fed. Cir. 2016), and its underlying
factual determinations for substantial evidence, Personal
Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991
(Fed. Cir. 2017). Among the factual determinations in an
obviousness analysis are “findings as to the scope and con-
tent of the prior art . . . [and] the presence or absence of a
motivation to combine or modify with a reasonable expec-
tation of success.” Ariosa Diagnostics v. Verinata Health,
Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015). A determination
of anticipation is a factual finding reviewed for substantial-
evidence support. Dell Inc. v. Acceleron, LLC, 818 F.3d
1293, 1298 (Fed. Cir. 2016). “We review the Board’s claim
construction de novo and any underlying factual findings
for substantial evidence.” Kaken Pharm. Co. v. Iancu, 952
F.3d 1346, 1350 (Fed. Cir. 2020).
II
Cochlear challenges several aspects of the Board’s un-
patentability determinations for claims 4–6 and 11–12. We
do not find these challenges persuasive.
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 9
A
Cochlear challenges the Board’s conclusion that claim
1’s preamble phrase “for rehabilitation of unilateral hear-
ing loss” does not limit the scope of the claims and also the
Board’s rejection of Cochlear’s narrowing construction of
that phrase as limited to certain profound hearing loss. We
reject this challenge at the first step, agreeing with the
Board that the phrase is not limiting for the apparatus
claims at issue.
“We have treated the effect of preamble language as a
claim-construction issue.” Arctic Cat Inc. v. GEP Power
Prods., Inc., 919 F.3d 1320, 1327 (Fed. Cir. 2019). We have
stated that “as a general rule preamble language is not
treated as limiting,” Aspex Eyewear, Inc. v. Marchon Eye-
wear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012), but
“[w]hether to treat a preamble as a limitation is deter-
mined on the facts of each case in light of the overall form
of the claim[] and the invention as described in the specifi-
cation and illuminated in the prosecution history,” Deere
& Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir.
2012) (quotation marks omitted). We have also explained
that “[t]hose general formulations have for decades been
implemented through a number of more concrete and ob-
jective rules.” Arctic Cat, 919 F.3d at 1327.
“In 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.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002) (quotation marks omitted). The preamble may be
limiting to the extent it is “necessary to provide antecedent
basis for the body of the claim.” Symantec Corp. v. Com-
puter Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008);
see TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir.
2015). But “preamble language merely extolling benefits
or features of the claimed invention does not limit the claim
scope without clear reliance on those benefits or features
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10 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
as patentably significant.” Catalina, 289 F.3d at 809. Fur-
ther, “[w]e have long ruled that a preamble is not limiting
where a patentee defines a structurally complete invention
in the claim body and uses the preamble only to state a
purpose or intended use for the invention.” Arctic Cat, 919
F.3d at 1328 (quotation marks omitted); see Georgetown
Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed.
Cir. 2017); Catalina, 289 F.3d at 808; Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997).
The Board in this case correctly held that the preamble
phrase “for rehabilitation of unilateral hearing loss” is not
a limitation on the scope of these apparatus claims. J.A.
31–35. The preamble’s recitation of “for rehabilitation of
unilateral hearing loss” is merely a statement of intended
use of the claimed hearing aid. It identifies no structure
for the apparatus claimed. Moreover, this use itself is not
an inventive or patentably distinct aspect of the claimed
invention, as “rehabilitation of unilateral hearing loss” was
a conventional use of prior art bone-anchored hearing aids.
See ’040 patent, col. 1, lines 44–61; Arctic Cat, 919 F.3d at
1329–30 (preamble phrase “[a] personal recreational vehi-
cle” was not limiting because it merely described conven-
tional, rather than inventive aspects of the claimed
invention).
The bodies of the claims contain the only descriptions
of the structure for the hearing aid, with no additional
structure furnished by the preamble phrase at issue. For
example, the body of independent claim 1 identifies the ori-
entation and implantation of the device relative to the pa-
tient’s head. See ’040 patent, col. 3, lines 36–37 (“from a
deaf side to the inner ear on the other side of the patient”);
id., col. 3, lines 39–41 (“the implantable part being osseoin-
tegrated in the patient’s skull bone behind an external ear
at the deaf side of a patient”). The body of the claim also
recites the function and position of the implanted “vibra-
tory generating part.” See id., col. 3, lines 34–39 (“generate
vibrations that are mechanically transmitted through the
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 11
skull” and “an implantable part operative to mechanically
anchor the vibratory generating part”). These descriptions
offer a complete structure such that “for rehabilitation of
unilateral hearing loss” adds nothing to the configuration
of the claimed device.
The phrase “for rehabilitation of unilateral hearing
loss” also is not necessary to provide antecedent basis for
the body of the claims. Although the preamble term “a pa-
tient” may provide antecedent basis for claim 1’s later rec-
itation of “the patient,” that is not the preamble language
Cochlear argues is limiting. A conclusion that some pre-
amble language is limiting does not imply that other pre-
amble language, or the entire preamble, is limiting. See
TomTom, 790 F.3d at 1322–23. 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.
B
Claims 4 and 5, which depend directly or indirectly on
disclaimed claim 3, require that “the frequency character-
istics of the [bone-anchored hearing aid] are specifically
adapted to transmit vibrations in the skull bone from one
side of the skull to the other side.” Claim 4 further requires
that the hearing aid amplifies treble frequencies more than
bass frequencies. Claim 5 additionally requires that the
amplified “treble frequencies have a frequency greater
than 1 kHz.”
Cochlear challenges the Board’s obviousness determi-
nations for claims 4 and 5 on three grounds. The first ar-
gument—that Carlsson teaches away from use in patients
with profound hearing loss—is premised on an incorrect as-
sumption that the intended-use language of the preamble
is limiting, an assumption we have rejected above. The sec-
ond argument—that the “specifically adapted to” limita-
tion requires that the frequency characteristics “account
for the mechanics of the skull”—and third argument—that
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12 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
the Board lacked substantial evidence to find that
Vaneecloo teaches amplifying treble frequencies more than
bass frequencies—are not persuasive for the reasons we
now discuss.
Cochlear has not persuasively identified an error in the
Board’s conclusion that the “specifically adapted to” limita-
tion has its ordinary meaning, with no additional require-
ment that adaptions be made to frequency characteristics
to “account for the mechanics of the skull.” J.A. 39–41. In
fact, Cochlear has not concretely identified why the Board’s
ordinary-meaning construction is not the broadest reason-
able interpretation.
To the extent that Cochlear is suggesting that the lan-
guage requires a particular intent or objective of a hearing-
aid designer or manufacturer, we reject the suggestion. We
have previously held that the claim term “adapted to” gen-
erally means “made to,” “designed to,” or “configured to”
perform the stated function, and we have not introduced a
subjective element into the construction of the phrase. See
In re Man Machine Interface Techs. LLC, 822 F.3d 1282,
1286 (Fed. Cir. 2016); In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014); Aspex Eyewear, 672 F.3d at 1349. To the
extent that Cochlear is suggesting an objective character-
istic of the configuration, it has not shown overbreadth of
the Board’s ordinary-meaning construction. The claim
phrase at issue, in its broadest reasonable interpretation,
covers any frequency-characteristic adaption “to transmit
vibrations in the skull bone from one side of the skull to the
other side.” Either Cochlear’s proposal is redundant of that
language or it is unduly limiting. In neither case is there
error in the Board’s claim construction.
Cochlear’s final challenge to the Board’s conclusion
about claims 4 and 5 addresses the additional differential-
amplification limitations of those claims. This challenge
turns specifically on whether there is substantial evidence
in the record from which the Board could have determined
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 13
that Vaneecloo discloses amplifying treble frequencies
more than bass frequencies. We conclude that the Board
did have such evidence.
The Board relied on Vaneecloo’s disclosure that “the
amplification of the high-pitched sounds captured on the
anakusis side and perceived by transcranial route by the
contralateral ear allowed for a significant rise in sound per-
ception thresholds of frequencies between 1,000 Hz and
4,000 Hz.” J.A. 59 (citing J.A. 788). Based on that state-
ment, the Board found that Vaneecloo discloses amplifying
treble frequencies more than bass frequencies. See J.A.
59–62. Vaneecloo’s disclosure explicitly states that the
study involved amplification of treble frequencies. J.A.
788. Vaneecloo also notes that “high-pitched sounds reach
the ear opposite the source with an attenuation that in-
creases proportionately with the frequency of the sound,”
indicating that high-pitched sounds must be amplified
more than low-pitched sounds. J.A. 783; see J.A. 59. Other
record evidence further supports the notion that Vaneecloo
discloses amplifying treble frequencies more than bass fre-
quencies. The BAHA Classic 300 device available at the
time of the Vaneecloo study 9 was capable of adjusting tre-
ble and bass frequencies relative to each other. J.A. 1414
(“The low frequency response can be adjusted using the
tone control . . . . Turn the tone control [counterclockwise]
to decrease the low frequency sound.”); J.A. 1443 (“[T]he
low-frequency response can be adjusted in order to increase
. . . the treble sound relative to the bass.”). The Board,
therefore, had substantial evidence to conclude that
Vaneecloo discloses amplifying treble frequencies more
than bass frequencies.
9 Cochlear agrees that the BAHA Classic 300 was
the bone-anchored hearing aid in existence at the time of
the Vaneecloo study. J.A. 58; J.A. 385.
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14 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
C
Claim 6 requires electronic circuitry that converts an
analog signal to a digital signal, which the Board construed
as requiring “an analog-to-digital converter.” Cochlear
does not dispute that the combination of Vaneecloo, Carls-
son, and Leysieffer discloses all limitations of claim 6. But
Cochlear challenges the Board’s finding that a relevant ar-
tisan would have been motivated to combine the signal pro-
cessor disclosed in Leysieffer with the hearing aid disclosed
by the combination of Vaneecloo and Carlsson.
We reject that challenge, concluding that the Board’s
finding is supported by substantial evidence. Oticon’s ex-
pert, Dr. Popelka, asserted that a relevant artisan would
have been motivated to modify the Vaneecloo/Carlsson de-
vice to include an analog-to-digital converter in order to ob-
tain the advantages associated with digital processing (e.g.,
real-time and multi-channel audio signal processing; feed-
back reduction; more closely matching the needs of the in-
dividual patient). J.A. 737–38. Leysieffer itself discusses
the benefits of digital signal processing in bone-anchored
hearing aids, including adapting for patient-specific cir-
cumstances and updating processing software without re-
moving the implanted part of the hearing aid. J.A. 921,
931. In light of that evidence, and the absence of persua-
sive contrary evidence that the Board had to credit, the
Board reasonably found a motivation to combine Leysieffer
with Vaneecloo and Carlsson. 10
10 Cochlear additionally argues that the Board did
not analyze the motivation to combine references in light
of the claim preamble. As discussed above, however, the
preamble is not limiting.
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 15
D
Claim 11 requires the external part of the hearing aid
to transmit power to the internal part by induction. The
Board found that Hough’s disclosure of an external electro-
magnetic coil that generates an alternating current,
thereby causing the implanted magnet to vibrate, meets
the induction limitation. J.A. 78–81 (citing J.A. 1097–98);
see also J.A. 1098 (“When the current is passed through the
external coil . . . alternating electromagnetic fields cause
the magnet implanted in the temporal bone to vibrate.”).
Cochlear challenges the Board’s finding that Hough antic-
ipates claim 11, arguing that because there is no voltage or
current generated in the internal part of Hough, it is not
powered by induction. We reject this challenge.
Cochlear does not challenge the Board’s construction of
“induction” to mean, without further qualification, “electro-
magnetic induction.” Appellant’s Br. 29. Although Coch-
lear earlier disputed the Board’s construction of “power”—
which the Board declined to limit to electric power—Coch-
lear’s argument on appeal focuses only on the construction
of “induction.” Appellant’s Br. 29–30; J.A. 41–45. Cochlear
does not challenge the Board’s understanding of Hough.
Instead, Cochlear argues that “electromagnetic induction”
necessarily requires the generation of voltage or current in
the internal part, a limitation that the Board specifically
excluded from its construction of “induction.” J.A. 44–45.
We are not persuaded. Cochlear has not established a
plain meaning of “electromagnetic induction” (or “power”)
as requiring a voltage or current on the receiving end. Nor
does the ’040 patent specification require a particular
structure or the generation of voltage or current in the in-
ternal part. See, e.g., ’040 patent, col. 3, lines 11–14. Par-
ticularly for the vibrator, the ’040 patent describes the
element in only general terms. Id., col. 3, lines 9–11; see
also id., col. 2, lines 50–53; id., Fig. 2. We therefore affirm
the Board’s finding that Hough anticipates claim 11.
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16 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
E
Claim 12, which depends on claim 11, further requires
the external part of the hearing aid to charge, by induction,
a rechargeable battery in the internal part. Cochlear does
not dispute that the combination of Hough and Leysieffer
teaches every limitation of claim 12. Cochlear argues only
that the Board did not have substantial evidence to find a
motivation to combine Hough with Leysieffer because the
internal part in Hough—a magnet—is not powered by a
battery.
We disagree. The Board had substantial evidence to
find that moving the battery to an internal part of the hear-
ing aid would allow for a smaller and more aesthetically
pleasing external part, a benefit that would have motivated
a relevant artisan to combine the two references. J.A. 82–
85. The prior art specifically notes a patient preference for
hearing aids with smaller, more discrete external parts,
which can be achieved by moving external elements of the
device to the internal part. J.A. 83 (citing J.A. 918–19,
1343); see also J.A. 918–19 (visible external parts “stigma-
tize the wearer and therefore are not willingly worn,” and
for these devices, “it now seems to be a good idea to design
the systems such that they can be completely implanted”).
Moving the battery to an internal part reduces the size of
the external part even if the internal part itself does not
require power, as is the case for Hough.
Cochlear lastly argues that Hough teaches away from
using its disclosed device in patients with profound hearing
loss. See J.A. 1099. Because the preamble is not limiting,
and there is therefore no limitation on the type of hearing
loss to be treated by the claimed hearing aid, this argument
is not persuasive.
III
On cross-appeal, Oticon argues that the Board erred in
determining that it could not conduct a prior-art analysis
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 17
for claims 7–10 and, on that sole basis, ruling that those
claims had not been proved unpatentable. The Board con-
cluded that because these claims contain means-plus-func-
tion limitations, without a corresponding structure
disclosed in the specification, it could not construe the
claims in order to compare the claim requirements with the
prior art. We hold that the Board did not err as to claims
7–9, but did err as to claim 10.
A
Where a claim contains a requirement that must be
met by any device or process within its scope, and the
meaning of that requirement is entirely unknown, the
claim cannot be compared to the prior art for purposes of
an invalidity analysis, and so that analysis cannot be con-
ducted. See Samsung Elecs. America, Inc. v. Prisua Eng’g
Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). One such sit-
uation can occur when a multi-element claim recites as one
required element a means for performing a function but
does not recite a structure for performing that function. If
the claim is in that format, 35 U.S.C. § 112, ¶ 6, states that
the claim scope is defined based on what the specification
sets out as corresponding structures for performing the
claimed function. 35 U.S.C. § 112, ¶ 6 (claim element de-
fined to mean those structures and equivalents). If the
specification fails to recite a corresponding structure, then
there is a wholly undefined claim element: the claim has
what amounts to an inkblot as a required element of the
claim. Such a claim logically cannot be compared to prior
art, because an essential claim element has no discernible
meaning.
Such a claim is indefinite, Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1351–52 (Fed. Cir. 2015), but that is
not the inquiry in an inter partes review, in which the
Board may not hold a challenged claim of a patent indefi-
nite. See 35 U.S.C. § 311(b); Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2141–43 (2016); Samsung, 948 F.3d
Case: 19-1105 Document: 53 Page: 18 Filed: 05/15/2020
18 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
at 1350–53. The crucial point for purposes of an inter
partes review of issued claims is that, in the situation just
described, it is impossible to conduct a prior-art analysis
because there is a required claim element without mean-
ing. In this situation, the Board should “conclude that it
could not reach a decision on the merits with respect to
whether petitioner had established the unpatentability of
those claims under sections 102 or 103.” Samsung, 948
F.3d at 1353.
The Board here properly did just that for claims 7–9.
Each of those claims plainly contains at least one required
means-plus-function claim element for which the specifica-
tion provides no corresponding structure. In this circum-
stance, the Board’s necessary course of action was to
conclude that unpatentability of claims 7–9 could not be
shown. We therefore affirm the Board’s ruling as to claims
7–9.
Such a necessary rejection of the petitioner’s prior-art
challenge rests on a deficiency of the patentee’s making,
not the petitioner’s. We have accordingly held, and here
reiterate, that “in cases in which the Board cannot reach a
final decision as to the patentability of certain claims be-
cause it cannot ascertain the scope of those claims with rea-
sonable certainty, the petitioner would not be estopped by
35 U.S.C. § 315(e) from challenging those claims under sec-
tions 102 or 103 in other proceedings.” Samsung, 948 F.3d
at 1353 n.3.
B
Claim 10 is different in a crucial respect. It does not
contain a required claim element in means-plus-function
form. Claim 10 recites a “directivity means comprising at
least one directivity dependent microphone and/or signal
processing means in the electronic circuitry.” ’040 patent,
col. 4, lines 20–24 (emphasis added). The use of the dis-
junctive creates three alternative subsets of claim cover-
age—a directivity dependent microphone only; signal
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 19
processing means only; and a directivity dependent micro-
phone together with signal processing means. The first al-
ternative is independent of the others, and it has a
discernible meaning and can be compared to prior art.
The Board correctly held that claim 10 invokes means-
plus-function claiming in part, i.e., insofar as it claims a
“signal processing means.” The Board also correctly held
that the specification does not recite a corresponding struc-
ture for performing the signal processing function. J.A. 25–
27. Oticon does not challenge these holdings. But claim
10, unlike the other means-plus-function claims, also de-
scribes a stand-alone alternative to the signal processing
means: a directivity dependent microphone, which is a
clear structure for performing the claimed directivity
means. The Board did not conclude that this alternative
(which recites structure in the claim) is even subject to 35
U.S.C. § 112, ¶ 6, let alone that it flunks the requirement
of that provision. Rather, it relied entirely on the presence
of the signal-processing-means alternatives in the claim to
deem a prior-art analysis impossible. J.A. 26–29. That was
error.
For present purposes, we may assume that claim 10 is
indefinite because it includes what is tantamount to an
inkblot as an alternative way of coming within its bounda-
ries. But Samsung establishes that indefiniteness of a
claim does not always imply inability to conduct a prior-art
analysis needed for an inter partes review. See Samsung,
948 F.3d at 1352–53, 1355 (remanding for the Board to pro-
ceed despite one kind of indefiniteness, based on mixing
product and process elements in a claim). The questions
are different. Here, even if claim 10 is indefinite, such a
conclusion would not imply that it is incapable of being
compared to prior art to determine if one of its alternatives
is anticipated or would have been obvious on the grounds
asserted.
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20 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
We vacate the Board’s ruling as to claim 10 and re-
mand. The Board should consider on remand whether the
directivity-dependent-microphone alternative is outside
the scope of § 112, ¶6, because it recites a structure (the
directivity dependent microphone) that sufficiently corre-
sponds to the claimed directivity means. Sage Prods., Inc.
v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir.
1997) (even if a claim uses the term “means,” “where a
claim recites a function, but then goes on to elaborate suf-
ficient structure, material, or acts within the claim itself to
perform entirely the recited function, the claim is not in
means-plus-function format”); see also Williamson, 792
F.3d at 1349; cf. Media Rights Techs., Inc. v. Capital One
Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015). The Board
also should consider whether any asserted prior-art chal-
lenges render the directivity-dependent-microphone alter-
native within claim 10 unpatentable, if considered on its
own, and whether, if so, claim 10 as a whole is unpatenta-
ble on that ground. See In re Cuozzo Speed Techs., LLC,
793 F.3d 1268, 1281 (Fed. Cir. 2015); see also In re Klein,
987 F.2d 1569, 1570 (Fed. Cir. 1993).
We emphasize that we go no farther in vacating and
remanding with respect to claim 10 than to hold that a
prior-art analysis is not made impossible, in the context of
the “and/or” claim at issue, by the impossibility of such an
analysis as to other alternatives in such a disjunctive for-
mulation.
IV
We affirm the Board’s decision that claims 4–6 and 11–
12 are unpatentable and that claims 7–9 have not been
proven unpatentable. We vacate the Board’s decision that
claim 10 has not been proven unpatentable, and we re-
mand for further proceedings on that claim.
Each party shall bear its own costs.
Case: 19-1105 Document: 53 Page: 21 Filed: 05/15/2020
COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 21
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
Case: 19-1105 Document: 53 Page: 22 Filed: 05/15/2020
United States Court of Appeals
for the Federal Circuit
______________________
COCHLEAR BONE ANCHORED SOLUTIONS AB,
Appellant
v.
OTICON MEDICAL AB, OTICON MEDICAL LLC,
WILLIAM DEMANT HOLDING A/S,
Cross-Appellants
______________________
2019-1105, 2019-1106
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
01018, IPR2017-01019.
______________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
I concur in the court’s decision concerning claims 7–10.
However, the Board erred in its invalidation of claims 4–6,
11, and 12, 1 and my colleagues err in sustaining that rul-
ing.
The invention in United States Patent No. 7,043,040
(“the ’040 patent”) is a hearing aid for use in single-side
1 Cochlear Bone Anchored Sols. AB v. Oticon Medi-
cal AB, IPR2017-01018, Paper No. 52, at 48–86 (P.T.A.B.
Aug. 21, 2018) (“Board Op.”).
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2 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
deafness, or “unilateral hearing loss.” Cochlear Bone An-
chored Solutions AB (“Cochlear”) explains that single-side
deafness is usually due to damage to one ear such that the
ear cannot perceive sound, and is not remediable by simply
increasing amplification to that ear. The experts agreed
that there was an unmet need for effective remedy. How-
ever, my colleagues find the system in the ’040 patent to be
obvious, although the system escaped the many persons
studying the problem and seeking solution, as seen in the
prior art.
In finding the ’040 patent’s system obvious, the court
employs an improper analytic technique. The court first
removes major limitations from the claims, and then ap-
plies selected pieces of prior art to the residue. This is
achieved by holding that the opening clause of all the
claims is “not limiting,” whereby the claims are freed of
critical limitations and are then held to embrace prior art
that is excluded from the ’040 system by the introductory
statement. My colleagues dispose of these limitations by
designating the introductory clause as a mere “preamble”
that does not limit the claims—although the clause states
limitations fundamental to the ’040 invention. It is incor-
rect to remove such claim limitations when they describe
substantive aspects of the invention, and the error is com-
pounded when, as here, the court then broadens the resi-
due of the claim into obviousness over prior art that is
disavowed by the preamble.
The claim is viewed as a whole
Claims 4–6, 11, and 12 all depend from claim 1, and
start with the following clause:
1. A bone-conducting bone-anchored hearing aid
apparatus for sound transmission from one side of
a patient’s head to the patient’s cochlea on another
side of the patient’s head for rehabilitation of uni-
lateral hearing loss, . . . .
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 3
The court rules that this entire clause is “not limiting,” and
thereby opens the claims to prior art that is distinct from
the ’040 invention, prior art that is distinguished by the
limitations in this clause. As stated in In re Bulloch, 604
F.2d 1362, 1365 (CCPA 1979), the “introductory claim lan-
guage . . . is more than a mere statement of purpose; and
that language is essential to particularly point out the in-
vention defined by the claims.”
This introductory claim language provides the “under-
standing of what the inventors actually invented and in-
tended to encompass by the claim.” Corning Glass Works
v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed.
Cir. 1989). The proper analytic method is to determine ob-
viousness of the invention as a whole and the claims as a
whole in light of the prior art as a whole. See In re Gorman,
933 F.2d 982, 986 (Fed. Cir. 1991) (“[T]he test is whether
the teachings of the prior art, taken as a whole, would have
made obvious the claimed invention.”). It is a distortion to
hold that the obviousness determination does not include
consideration of the introductory words of the claim.
Claims cannot enlarge what is described in the specifi-
cation, but neither can the claims be redacted to provide a
broader focus for prior art. Determination of obviousness
(and anticipation) is of the invention that is claimed, with
claims that are viewed in light of the specification. See
United States v. Adams, 383 U.S. 39, 48–49 (1966) (“While
the claims of a patent limit the invention, and specifica-
tions cannot be utilized to expand the patent monopoly, it
is fundamental that claims are to be construed in the light
of the specifications and both are to be read with a view to
ascertaining the invention.”) (internal citations omitted).
The court’s analysis produces major changes in the re-
lation of the claimed invention to the prior art; as illus-
trated in the majority opinion at page 14 n.10, where the
court disposes of the obviousness analysis by stating that
there is no need to “analyze the motivation to combine
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4 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
references in light of the claim preamble” because “the pre-
amble is not limiting.”
The opinion distorts the ’040 patent’s invention by stat-
ing: “Because the preamble is not limiting, [] there is there-
fore no limitation on the type of hearing loss to be treated
by the claimed hearing aid.” Maj. Op. at 16. It is, however,
stated throughout the patent documents that the ’040 in-
vention is directed to unilateral hearing loss. See, e.g., ’040
patent, Abstract (“A hearing aid apparatus is intended
for . . . rehabilitation of patients with unilateral hearing
loss.”); ’040 patent, col. 1, ll. 5–11 (“The present invention
relates to a hearing aid . . . for rehabilitation of patients
with unilateral hearing loss.”). This is the invention for
which patentability is determined. See Jansen v. Rexall
Sundown, Inc., 342 F.3d 1329, 1333–34 (Fed. Cir. 2003)
(the preamble is a statement of the purpose of the inven-
tion).
Here, the “specification makes clear that the inventors
were working on the particular problem” of an effective
treatment for unilateral hearing loss, not on “general im-
provements” in hearing aids. Corning Glass, 868 F.2d at
1257; see ’040 patent, col. 1, ll. 5–11. The court’s exclusion
of the “preamble” from the description of the claimed in-
vention underlies the court’s entire analysis, and leads to
the court’s erroneous ruling of invalidity.
The invention described and claimed in the
’040 patent is not obvious from the prior art
The Board recognized that the ’040 patent’s hearing de-
vice is not simply a combination of known elements, and
stated: “we do not disagree with Patent Owner’s contention
that the proposed modification would require ‘substantially
modifying the device.’” Board Op. at 85. However, the
Board then itself modified the device by removing the pre-
amble’s limitations from the claims.
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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 5
Recourse to “broadest reasonable interpretation” does
not permit an interpretation that is broader than that
which is described and claimed. See Organik Kimya AS v.
Rohm & Haas Co., 873 F.3d 887, 892 (Fed. Cir. 2017)
(“Even under the broadest reasonable interpretation, the
Board’s construction cannot be divorced from the specifica-
tion and the record evidence.”) (internal quotation marks
omitted). That interpretation must be consistent with the
specification and the prosecution history, and must be the
reasonable interpretation that would be reached by a per-
son of skill in the field of the invention.
For example, there is dispute about the meaning of “in-
duction” in claims 11 and 12. Oticon argues that “induc-
tion” should be broadly construed to encompass Hough’s
magnet, although the experts agreed that induction re-
quires generation of current or voltage in the receiver. The
Board, and now this court, hold that claim 11 is anticipated
by the Hough device, although the Board recognized that
“Hough does not include an internal receiving conductor.”
Board Op. at 84. The Board held that Hough anticipates
claim 11 even though the experts for both sides agreed that
Hough’s magnet does not serve as a conductor. The court
errs in holding that Hough’s different system “anticipates”
the ’040 patent claims. See MEHL/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“anticipa-
tion” requires that the invention is described in a single
reference disclosing every limitation of the claims).
The question of obviousness includes determining
whether the prior art suggests producing the claimed com-
bination and with a reasonable expectation of success.
Here, no prior art suggests the combination that is de-
scribed and claimed in the ’040 patent. It appears undis-
puted that at the time of this invention, transcranial
attenuation was not even considered in bone-anchored
hearing devices. Reply Br. 21–22 (citing J.A. 464–65 (“[A]t
the critical date, [hearing devices] were primarily used to
treat conductive hearing loss (CHL), where sound
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6 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB
vibrations are sent to the normal functioning cochlea, not
an injured cochlea. . . . TA [transcranial attenuation] was
not a consideration. When treating CHL, sound vibrations
are not being transmitted to the opposite side of the head
(and thus do not need to travel very far within the skull),
and therefore TA is not a concern.”); J.A. 2352–53, ¶ 21
(“[S]ince sound waves are not needed to travel across the
skull to the cochlea on the other side of the head (in the
treatment of conductive hearing loss), transcranial attenu-
ation is not an important consideration.”).
In sum, the analysis by the Board, and now by my col-
leagues, is contrary to the laws of obviousness and antici-
pation. There is no suggestion in the prior art of this new
and useful device. See Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143 (Fed. Cir. 1985) (“[T]here must be
some reason for the combination other than the hindsight
gleaned from the invention itself.”). Nonetheless, the court
here uses the ’040 patent’s teachings to select various as-
pects from the prior art, and then combines these selections
with the template of the ’040 patent, having removed the
limitations of the claims’ introductory clause. From this
flawed analysis, and its flawed conclusion, I respectfully
dissent.