Thursday, November 17, 2016

Outcome in Mann v. Cochlear: we affirm-in-part, reverse-in-part, and vacate-in-part

There was a mixed outcome in the CAFC case of

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

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

Of the matter with claim 1 of US '616:

Claim 1 of the ’616 patent reads, in relevant part:

A physician’s testing system for testing a multichannel
cochlear stimulating system, comprising
a physician's tester, an external headpiece/transmitter,
and an implanted cochlear
stimulator (ICS), . . .
[c] the physician’s tester comprising:
[1] external processor means coupled to the
transmitting means of the external headpiece/transmitter
for receiving and processing
the status-indicating signals to
derive information therefrom regarding the
operation of the implanted stimulator and
its plurality of tissue stimulating electrodes;
. . . .

The CAFC noted:

Both parties’ experts testified that a person of ordinary skill
would know to apply Ohm’s law to voltage and current to
yield impedance values. See J.A. 33662 (“[Impedance] is
always calculated based on the ratio of voltage to current.
One of ordinary skill in the art would readily understand
from the disclosure in the ’616 patent that this [sic] the
algorithm is implemented. The algorithm for calculating
impedance is Ohm’s law, which is famous and well known
to a person of ordinary skill in the art.”); id. at 2586 at
(“Q: If you know what the current is that’s being
applied and you know what the voltage is being measured,
then you could use that information to put it into
the Ohm’s law equation and calculate impedance; right?
A: In this application where you want to do something
like this, you could do that. There are other things you
could do.”). The specification also discloses that impedance
is calculated based on voltage and current. ’616
patent, col. 31 ll. 55–58 (“[B]oth the stimulus voltage and
current can be measured and, thereby, the impedance of
the electrode and the tissue-electrode interface can be
measured and transmitted back to the WP.”). Because
there is “adequate defining structure to render the bounds
of the claim understandable to one of ordinary skill in the
art,” AllVoice, 504 F.3d at 1245, we reverse the district
court’s indefiniteness finding as to claim 1 of the ’616

Of the Halo issue:

Cross-Appellants argue that, at a minimum, we
should vacate and remand the court’s grant of JMOL on
willfulness in light of Halo. We agree. On remand,
mindful of Halo’s “preponderance of the evidence standard,”
136 S. Ct. at 1934, the court must consider whether
Cochlear’s infringement “constituted an ‘egregious case[]
of misconduct beyond typical infringement’ meriting
enhanced damages under § 284 and, if so, the appropriate
extent of the enhancement.” WesternGeco L.L.C. v. ION
Geophysical Corp., --- F.3d ---, 2016 WL 5112047, at *5
(Fed. Cir. Sept. 21, 2016) (quoting Halo, 136 S. Ct. at

Accordingly, we vacate the district court’s determination
that Cochlear’s infringement of the Foundation’s
patents was not willful and remand for further proceedings.

Of the damages matter:

There has not been a final decision on the damages issue.
We are not persuaded by Cross-Appellants’ argument
that the § 1292(c)(2) exception to the rule of finality
applies here. Under Bosch, the exception allows us to
consider the liability issues in this case, but does not go so
far as to permit us to consider the non-final order itself.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759
F.3d 1333, 1339 (Fed. Cir. 2014) (“As an exception to the
final judgment rule, § 1292(c)(2) is to be interpreted
narrowly.”). Clearly, if the parties were only appealing
the damages issue, we would not have jurisdiction under
§ 1295(a)(1). The addition of the liability issues in this
case does not change our jurisdictional reach. Orenshteyn,
691 F.3d at 1363–64 (dismissing as premature portion
of invalidity and sanctions appeal relating to
sanctions because the district court had not yet made a
final determination regarding the amount of the sanctions).

Footnote 3 observed:

Since the question of what is “final” is sometimes
a difficult question, the Supreme Court has cautioned
that the requirement of “finality is to be given a ‘practical
rather than a technical construction.’” Gillespie v. United
States Steel Corp., 379 U.S. 148, 152 (1964) (quoting
Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546
(1949)). But the Supreme Court has noted that “[i]f
Gillespie were extended beyond the unique facts of that
case, § 1291 would be stripped of all significance.” Coopers
& Lybrand v. Livesay, 437 U.S. 463, 477 n.30 (1978).
We have similarly held that the “‘exception to finality
created by Gillespie is to be very rarely used beyond the
unique facts of that case.’” Spread Spectrum Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1356–57 (Fed.
Cir. 2011) (quoting Fairchild Republic Co. v. United
States, 810 F.2d 1123, 1126 (Fed. Cir. 1987)).


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