District Court Granted Summary Judgment Of Invalidity Because The Patent For Cochlear Implants Recited The Patent Ineligible Abstract Idea Of Communicating Information Wirelessly

• Jurisdiction: United States,Federal
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Subject Matter: Intellectual Property, Patent
• Author: Mr C. Brandon Rash and Lisa Hladik
• Published date: 15 March 2023

Judge Wolson in the District of Delaware recently granted a motion for summary judgment of invalidity for patent-ineligible subject matter under 35 U.S.C. ' 101. The patent is directed to cochlear implants. A single dependent claim remained at issue in the case after other claims were invalidated in an inter partes review (IPR) proceeding. The court found that the claim-at-issue recited the abstract idea of wireless communication between a computer and hearing devices.

MED-EL Elektromedizinische Gerate GES.M.B.H. v. Advanced Bionics, LLC, No. 1:15-cv-1530-JDW (D. Del. Feb. 23, 2023).

Plaintiffs MED-EL Elektromedizinische Gerate GES.M.BH. and MED-EL Corporation, USA (collectively, MED-EL) sued Defendants Advanced Bionics, LLC, Advanced Bionics AG and Sonova AG (collectively, AB) for infringing patents related to cochlear implants. In response, AB asserted its own patents, including U.S. Patent No. 8,155,747 (the "'747 Patent"). The '747 Patent is directed to systems for fitting cochlear implants and hearing aids. Clinicians "fit" these components by modifying parameters for electrical and acoustic stimulation to ensure comfortable sound ranges.

Claim 1 of the '747 Patent was invalidated in an IPR proceeding. See IPR2020-00190, Paper 45 (P.T.A.B. June 2, 2021). Claim 3, which depends from claim 1 and survived the IPR proceeding, recites that "the computer is configured to communicate directly with at least one of the hearing aid, the cochlear implant speech processor, the electric elements of the electric-acoustic processor, and the acoustic elements of the electric-acoustic processor through wireless communications." MED-EL argued that claim 3 recites patent-ineligible subject matter under 35 U.S.C. ' 101.

The court analyzed eligibility using the U.S. Supreme Court's two-step Alice framework. In step one, a court determines whether the claims are "directed to" a patent-ineligible concept, such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014). If they are, the court proceeds to step two and considers "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id.

Addressing step one, the court asked "what the patent asserts to be the focus of the claimed advance over the prior art." TecSec, Inc. v. Adobe, Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020). The court recognized that, "[i]n cases...