Alfred E. Mann Found. for Scientific Research, Advanced Bionics, LLC v. Cochlear Corp., 2015-1580
| Decision Date | 17 November 2016 |
| Docket Number | 2015-1580,2015-1606,2015-1607 |
| Parties | ALFRED E. MANN FOUNDATION FOR SCIENTIFIC RESEARCH, ADVANCED BIONICS, LLC, Plaintiffs-Cross-Appellants v. COCHLEAR CORPORATION, NKA COCHLEAR AMERICAS, COCHLEAR LTD., Defendants-Appellants |
| Court | U.S. Court of Appeals — Federal Circuit |
Appeals from the United States District Court for the Central District of California in No. 2:07-cv-08108-FMO-SH, Judge Fernando M. Olguin.
THOMAS 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 Angeles, CA.
DONALD MANWELL FALK, Mayer Brown, LLP, Palo Alto, CA, for plaintiff-cross-appellant Advanced Bionics, LLC. Also represented by PAUL WHITFIELD HUGHES, Washington, DC.
J. 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 Angeles, CA.
Before NEWMAN, CHEN, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge HUGHES.
The 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.
The 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.
The 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. 10-24.1 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.
Image materials not available for display.
FIG. 6
The 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 l. 65-col. 33 l. 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.
Cochlear's 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.
On 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.
On 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.
Cochlear 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).
We 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.
Cochlear 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 banc).
Claim 10 of the '616 patent reads, in relevant part:
'616 patent, col. 35 l. 43-col. 36 l. 7 (emphases added).
Cochlear 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.
While 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....
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