Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Jeff Ginsberg and Zhiqiang Liu
July 01, 2020

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.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.