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Federal Circuit Finds Preamble Not Limiting and Claims Reciting Means-Plus-Function Limitations Without Disclosure of Corresponding Structures Cannot Be Determined Unpatentable as Indefinite in an IPR Proceeding
On May 15, 2020, a Federal Circuit panel consisting of Judges Newman, O'Malley and Taranto issued a split opinion in Cochlear Bone Anchored Solutions AB v. Oticon Medical AB et al., 958 F.3d 1348 (Fed. Cir. 2020). Patent Owner Cochlear appealed, and Petitioner Oticon cross-appealed, from final written decisions issued by the PTAB in two inter partes review (IPR) proceedings concerning the same patent on hearing aids, in which the PTAB found a first set of claims unpatentable and a second set (claims 7-10) not unpatentable. Writing for the majority, Judge Taranto affirmed the PTAB's conclusions as to all claims except claim 10, as to which the majority vacated and remanded.
The majority first addressed whether the sole independent claim's preamble phrase "for rehabilitation of unilateral hearing loss" limits the scope of the claims, and found that it does not. Slip Op. at 9. The majority found that: 1) the preamble phrase is merely a statement of intended use of the claimed hearing aid; 2) it identifies no structure, let alone essential structure, for the hearing aid; 3) the use is not an inventive or patentably distinct aspect of the claimed invention but a conventional use of prior art hearing aids; and 4) the phrase is not necessary to provide antecedent basis for the body of the claims. Id. at 10-11. On these facts, the majority concluded that the PTAB correctly found that the preamble is not limiting. Id. at 9.
The majority then turned to whether the PTAB erred in construing the term "specifically adapted to" by its ordinary meaning, and found no error. Id. at 12. Several claims recite that "the frequency characteristics of the apparatus are specifically adapted to transmit vibrations in the skull bone from one side of the skull to the other side." Id. at 7. Under the broadest reasonable interpretation standard that is applicable here, the majority rejected Cochlear's contention that the term requires a particular intent or objective of a hearing-aid designer or manufacturer, i.e., making adaptions to frequency characteristics to account for the mechanics of the skull. Id. at 12. The majority concluded that the PTAB correctly construed the term to cover any frequency-characteristic adaption to transmit vibrations from one side of the skull to the other side. Id. at 12.
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