{"id":2841,"date":"2020-05-15T16:15:48","date_gmt":"2020-05-15T21:15:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2841"},"modified":"2020-07-19T05:18:24","modified_gmt":"2020-07-19T10:18:24","slug":"federal-circuit-to-ptab-try-harder-to-construe-claims-in-ipr","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2841","title":{"rendered":"Federal Circuit to PTAB: Try Harder to Construe Claims in IPR"},"content":{"rendered":"\n

In Cochlear Bone Anchored Solutions AB, v. Oticon Medical AB<\/a>, [2019-1105, 2019-1106] (May 15, 2020), the Federal Circuit affirmed the PTAB\u2019s determination that claims 4-6 and 11-12 of U.S. Patent No. 7,043,040, that claims 7-9 were not unpatenable, and vacated and remanded the determination that claim 10 was not unpatentable.<\/p>\n\n\n\n

With respect to claims 4-6 and 11-12, Cochlear argued that the preamble \u201cfor rehabilitation of unilateral hearing loss\u201d 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 \u201crehabilitation of unilateral hearing loss\u201d 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.<\/p>\n\n\n\n

With respect to claims 4-5, Cochlear argued that it was error for the Board to conclude that \u201cspecifically adapted to\u201d had its ordinary meaning.\u00a0 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.\u00a0 The Federal Circuit has held that the claim term \u201cadapted to\u201d generally means \u201cmade to,\u201d \u201cdesigned to,\u201d or \u201cconfigured to\u201d perform the stated function, without introducing a subjective element into the construction of the phrase.\u00a0 To the extent that Cochlear is suggesting an objective characteristic of the configuration, it has not shown overbreadth of the Board\u2019s 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.\u00a0 The Federal Circuit held that the\u00a0 Board did not err as to claims 7\u20139, but did err as to claim 10.\u00a0 The Federal Circuit claim 10 is different in a crucial respect. It does not contain a required <\/em>claim element in means-plus-function form. Claim 10 recites a \u201cdirectivity means comprising at least one directivity dependent microphone and\/or <\/em>signal processing means in the electronic circuitry.\u00a0 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.\u00a0 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.\u00a0 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.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Cochlear Bone Anchored Solutions AB, v. Oticon Medical AB, [2019-1105, 2019-1106] (May 15, 2020), the Federal Circuit affirmed the PTAB\u2019s determination that claims 4-6 and 11-12 of U.S. Patent No. 7,043,040, that claims 7-9 were not unpatenable, and vacated … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2841","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2841","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2841"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2841\/revisions"}],"predecessor-version":[{"id":2842,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2841\/revisions\/2842"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2841"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2841"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2841"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}