May 15, 2020
Federal Circuit to PTAB: Try Harder to Construe Patent Claims in IPR
In Cochlear Bone Anchored Solutions AB, v. Oticon Medical AB, [2019-1105, 2019-1106] (May 15, 2020), the Federal Circuit affirmed the PTAB’s determination that claims 4–6 and 11–12 of U.S. Patent No. 7,043,040 were unpatenable and that claims 7–9 were not unpatenable, and vacated and remanded the determination that claim 10 was not unpatentable.
With respect to claims 4–6 and 11–12, Cochlear argued that the preamble “for rehabilitation of unilateral hearing loss” should have been treated as a claim limitation. The Federal Circuit noted that 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. 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 as patentably significant.
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. The Federal Circuit concluded that the preamble was merely a statement of intended use of the claimed hearing aid; it identified 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. Further, the bodies of the claims contain the only descriptions of the structure for the hearing aid, with no additional structure furnished by the preamble.
With respect to claims 4–5, Cochlear argued that it was error for the Board to conclude that “specifically adapted to” had its ordinary meaning. The Federal Circuit rejected this argument, noting that to the extent that Cochlear was suggesting that the language requires a particular intent or objective of a hearing-aid designer or manufacturer, this was incorrect. The Federal Circuit has held that the claim term “adapted to” generally means “made to,” “designed to,” or “configured to” perform the stated function, without introducing a subjective element into the construction of the phrase. To the extent that Cochlear is suggesting an objective characteristic of the configuration, it has not shown overbreadth of the Board’s ordinary-meaning construction.
With respect to claims 7–10, the Board determined that it could not conduct a prior art analysis of these claims because they contained means-plus-function elements. The Federal Circuit held that the Board did not err as to claims 7–9, but did err as to claim 10.
The Federal Circuit held that 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.” Thus claim 10, unlike the other means-plus-function claims, also describes 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 relied entirely on the presence of the signal-processing-means alternatives in the claim to deem a prior art analysis impossible, and this was error. 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.