ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH, ADVANCED BIONICS, LLC, Plaintiffs-Cross-Appellants
COCHLEAR CORPORATION, NKA COCHLEAR AMERICAS, COCHLEAR LTD., Defendants-Appellants
from the United States District Court for the Central
District of California in No. 2:07-cv-08108-FMO-SH, Judge
Fernando M. Olguin.
M. Peterson, Morgan, Lewis & Bockius LLP, San Francisco,
CA, argued for plaintiff-cross-appellant Alfred E. Mann
Foundation for Scientific Research. Also represented by
Michael John Lyons, Ehsun Forghany, Jason Evan Gettleman,
Corey Ray Houmand, Jacob Joseph Orion Minne, Lindsey M.
Shinn, Palo Alto, CA; Esther K. Ro, Daniel Grunfeld, Los
Manwell Falk, Mayer Brown, LLP, Palo Alto, CA, for
plaintiff-cross-appellant Advanced Bionics, LLC. Also
represented by Paul Whitfield Hughes, Washington, DC.
Michael Jakes, Finnegan, Henderson, Farabow, Garrett &
Dunner, LLP, Washington, DC, argued for
defendants-appellants. Also represented by DAVID MROZ; Bruce
G. Chapman, Sheppard, Mullin, Richter & Hampton LLP, Los
Newman, Chen, and Hughes, Circuit Judges.
HUGHES, CIRCUIT JUDGE.
Alfred E. Mann Foundation for Scientific Research sued
Cochlear Corporation and Cochlear Ltd. for infringing claims
1 and 10 of U.S. Patent No. 5, 609, 616 and claims 6-7 of
U.S. Patent No. 5, 938, 691, which cover implantable cochlear
stimulators. After conducting a jury trial and a bench trial
on separate issues, the district court entered judgment
finding claim 10 of the '616 patent infringed and claim 1
of the '616 patent and claims 6-7 of the '691 patent
invalid for indefiniteness. The court also granted
Cochlear's JMOL of no willful infringement and its motion
for a new trial on damages. Both parties appeal. Because we
find that the district court did not err in its infringement
determination or in finding claims 6-7 indefinite, but did
err in finding claim 1 indefinite, we affirm-in-part and
reverse-in-part. We vacate and remand the district
court's determination regarding willfulness in light of
the Supreme Court's decision in Halo Electronics,
Inc. v. Pulse Electronics, Inc., 579 U.S.___, 136 S.Ct.
1923 (2016). We also conclude that we do not have
jurisdiction over the damages issue.
Alfred E. Mann Foundation for Scientific Research (The
Foundation) owns the '616 and '691 patents, and
formed Advanced Bionics, LLC (Advanced Bionics) to
manufacture implants. The Foundation sued Cochlear
Corporation and Cochlear Ltd. (Cochlear) for infringing the
'616 and '691 patents, and Advanced Bionics was later
added as an involuntary plaintiff. Claims 1 and 10 of the
'616 patent and claims 6-7 of the '691 patent are at
issue in this appeal.
patents are directed to an ear implant with telemetry
functionality for testing purposes, and generally describe a
two-part system comprising an external wearable system with a
wearable processor (WP) and headpiece, and an internal
implantable cochlear stimulator (ICS). Sound is transmitted
from the headpiece to the WP, which processes the
transmissions before sending them to the ICS. The ICS
processes the sound to stimulate the cochlea-the organ that
converts sound to nerve impulses-via implanted electrodes,
thereby allowing the user to hear. See '616
patent, col. 3 ll. 10-24. In addition, the system allows testers,
usually physicians, to measure and adjust various parameters
of the implant to assess whether the device is functioning
properly. Id. at col. 32 ll. 34-54. The tester may
observe the implant's functionality through the
"physician's tester." As depicted in Figure 6,
the physician's tester is a modification of the
previously described WP. Id. at col. 51-55.
tester may interact with the ICS by adjusting various knobs
on the control panel 302, such that the physician's
tester measures and displays different parameters on visual
display 304. Id. at col. 32 1. 65-col. 33 1. 18.
Table 7 of the patents describes "typical parameter
settings" for the control knobs, which in turn dictate
the parameters that are measured and displayed. Id.
at col. 33 ll. 14-24. These parameter settings include
impedance, voltage, and output current. Id. at col.
33 ll. 26-54.
accused system includes an implant with a pair of electrodes,
a speech processor worn behind the patient's ear, and
diagnostic software used to test the implant. After a
physician inserts the implant and electrodes, he can use the
diagnostic software to send stimulation signals through the
electrodes and determine the impedance, which is the
resistance to electrical current. The accused system displays
the results of the impedance testing by depicting the
electrodes as either red or green, where an electrode
displayed in red indicates that the electrode has a circuit
condition. In addition to displaying a red or green
electrode, Cochlear's system may also display the
calculated impedance value. Cochlear's system does not
display the measured voltage across the two electrodes.
January 23, 2014, the jury found that Cochlear willfully
infringed claims 1 and 10 of the '616 patent and claims
6-7 of the '691 patent. The jury also found that all of
the asserted claims were not invalid under §§ 102
or 103. The jury awarded approximately $131 million in
damages. J.A. 59-70.
March 31, 2015, the court conducted a bench trial on
equitable estoppel, laches, inequitable conduct, prosecution
history, and indefiniteness, and determined that all of the
asserted claims except for claim 10 of the '616 patent
were invalid for indefiniteness. Id. at 47-56. On
the same day, the court denied Cochlear's JMOL of
noninfringement as to claim 10 of the '616 patent,
granted Cochlear's JMOL of no willful infringement, and
granted Cochlear's motion for a new trial on damages.
Id. at 10-24.
appeals the court's denial of its JMOL of noninfringement
as to claim 10 of the '616 patent. The Foundation and
Advanced Bionics (collectively, Cross-Appellants) appeal the
court's indefiniteness findings as to claim 1 of the
'616 patent and claims 6-7 of the '691 patent, grant
of Cochlear's JMOL of no willful infringement, and grant
of Cochlear's motion for a new trial on damages. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
first address the district court's denial of
Cochlear's JMOL of noninfringement of claim 10 of the
'616 patent. We review the denial of a motion for
judgment as a matter of law under the law of the regional
circuit. Verizon Servs. Corp. v. Cox Fibernet Va.,
Inc., 602 F.3d 1325, 1331 (Fed. Cir. 2010). The Ninth
Circuit reviews the district court's denial de novo.
Rivero v. City & Cty. of San Francisco, 316 F.3d
857, 863 (9th Cir. 2002). Judgment as a matter of law is
appropriate where there is no legally sufficient evidentiary
basis for a reasonable jury to find for the party on that
issue. Fed.R.Civ.P. 50(a)(1). Cochlear raises two arguments
on appeal: first, the district court erred in construing
claim 10, and second, even under the district court's
construction, Cochlear's accused system does not
infringe. We address each of these arguments in turn.
argues that claim 10 of the '616 patent requires that an
infringing system must display the voltage between two
electrodes. Cochlear Br. at 31-32. We review claim
construction de novo, and underlying factual determinations
concerning extrinsic evidence for clear error. Teva
Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. ___, 135
S.Ct. 831, 841 (2015). We do not find Cochlear's
arguments persuasive based on the claim language,
specification, and prosecution history. See Phillips v.
AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005) (en
10 of the '616 patent reads, in relevant part:
A method of testing an implantable tissue stimulating system
comprising: . . .
[f] selectively monitoring the at least one pair of the
multiplicity of electrodes to measure a voltage associated
therewith at the same time the stimulation signals are
[g] generating stimulator status-indicating signals
representative of the measurements made within the implanted
[h] transmitting the stimulator status-indicating signals to
an external receiver coupled to the external transmitter;
[i] receiving and processing the status-indicating signals to
produce processed status-indicating signals which convey
information regarding the status of the implanted stimulator,
including the measurements made within the implanted
[j] displaying the processed status-indicating signals,
whereby the status of the implanted stimulator, including the
results of the measurements made within the implanted
stimulator, may be made known.
'616 patent, col. 35 1. 43-col. 36 1. 7 (emphases added).
first argues that voltage measurements must be included in
the processed status-indicating signals because part (i) of
the claim states that "processed status-indicating
signals . . . convey information . . . including the
measurements made within the implanted stimulator."
See Cochlear Br. at 36 (emphasis added). Cochlear
reasons that part (i) "does not permit processing that
calculates impedance values from the voltage measurements
without maintaining the voltage measurements for
display." Id. We find Cochlear's argument
unpersuasive in light of the claim language as a whole.
it is true that the "measurements made within the
implanted stimulator" in part (i) are the voltage
measurements according to the plain language of the claim and
the court's construction, see J.A. 13, part (g)
defines the pre-processed status-indicating signals as merely
"representative" of these measurements,
see '616 patent, col. 35 ll. 60-62. According to
part (i), the signals described in part (g) are
further processed such that they only "convey
information regarding the status of the implanted
stimulator." Id. at col. 35 1. 66-col. 36 1. 3.
Parts (g) and (i) together make clear that the
status-indicating signals, regardless of whether they are
processed or not, only have to convey information
about the voltage measurements, but do not require
such information to be displayed. Furthermore, Cochlear's
construction would require us to find that to
"convey" the voltage measurements, the signals in
part (i) must "display" this information. There is
no intrinsic support for this definition, which would also
render part (j) redundant under Cochlear's proposed
construction. Merck & Co. v. Teva Pharm. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A
claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.").
next argues that the "whereby" clause in part (j)
is material to patentability such that voltage must be made
available for display. Cochlear Br. at 38. The district court
determined that the "whereby" clause merely
provides a more illustrative expression of the
"displaying the status-indicating signals"
limitation, and provides no additional restrictions on the
claim. J.A. 26436. We agree. There is no support for
Cochlear's construction, particularly because parts (g)
and (i) of claim 10 make clear that the processed
status-indicating signals only have to convey information
about the voltage measurements, but do not have to include
the measurements for display. In addition, Cochlear's
construction would require us to find that the term "may
be made known" means "available for display."
There is no support for this interpretation, particularly
because the limitation states that only the processed
status-indicating signals must be displayed.
proposed construction also conflicts with the specification.
As depicted in Figure 6, the control knob 308 (the right most
knob) is one of three knobs that dictate "the parameters
measured and displayed by the ICS and Physician's Tester
combination." '616 patent, col. 33 ll. 14-18.
Positions 1-3 correspond to the impedance, and are distinct
from positions 4-7, which correspond to the voltage.
Id. at ll. 36-40 (Table 7). Because the
specification envisions that impedance, voltage, or the
current may be displayed, the voltage measurement does not
have to be displayed as Cochlear argues.
prosecution history also does not support Cochlear's
proposed claim construction. In response to a § 112
rejection, the patentee amended "voltages/current"
to "voltage" in part (f), and in response to a
§ 103 rejection, added parts (i) and (j). J.A. 15834-35.
Cochlear argues that the applicant made this amendment to
specify that the voltage must be displayed. Cochlear Br. at
38. But, it is clear that the patentee amended the claim to
distinguish the invention from the prior art based on its
realtime testing abilities. See J.A. 15843-44
(noting that the invention allowed a physician to perform
real-time testing, where a sensed parameter (voltage)
"is sent back to the physician's tester as part of a
feedback signal were [sic] it is displayed or otherwise
processed. Such action thereby provides, in effect, a
'snapshot', in real time, of the selected parameter .
. . ."). Though the Examiner allowed the claim because
"the prior art does not show or suggest the measuring of
the electrode voltage for external display, "
id. at 15850, an examiner's unilateral statement
does not give rise to a clear disavowal of claim scope by the
applicant, see Salazar v. Procter & Gamble Co.,
414 F.3d 1342, 1347 (Fed. Cir. 2005). Here, the patentee did
not argue that the voltage must be displayed, instead
focusing its arguments on the real-time features of the
light of the intrinsic evidence, we reject Cochlear's
proposed claim construction.
argues that even under the district court's construction,
its accused system does not infringe. Infringement is a
question of fact that we review for substantial evidence when
tried to a jury. Lucent Techs., Inc. v. Gateway,
Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). Cochlear
asserts that even though its system may display the impedance
value, the voltage value is not "made known" as
required by part (j) of claim 10. Cochlear's Br. at
43-44. The relationship between voltage, impedance, and
current is defined by Ohm's Law, where voltage = current
x impedance. Because there is sufficient evidence that the
accused system sets forth the current level associated with
each measurement, J.A. 4700, and voltage may be measured by
multiplying the current level by the accused system's
displayed impedance value, there is substantial evidence that
Cochlear's accused system infringes claim 10.
turn to Cross-Appellants' cross-appeal on the court's
indefiniteness determinations. The ultimate determination of
indefiniteness is a question of law that we review de novo,
although any factual findings by the district court based on
extrinsic evidence are reviewed for clear ...