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.
District Court Granted Summary Judgment of Invalidity Because the Patent for Cochlear Implants Recited the Patent Ineligible Abstract Idea of Communicating Information Wirelessly
Mar 7, 2023
Reading Time : 1 min
By: C. Brandon Rash
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 involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool.” Id. at 1293. The court determined that the focus of the ’747 Patent was fitting a cochlear implant and hearing aid in a patient’s ear. The court found that claim 3 recites “well-known and conventional” components and that the inventive aspect is “wireless communication between a computer and the other components for fitting.”
The court concluded that claim 3 does not resolve any problem regarding a computer’s communication with hearing devices and does not identify any specific improvements to the device’s capabilities or functionalities. The court noted that wireless communication between a computer and various devices, without more, is an abstract concept. See Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1347 (Fed. Cir. 2019). AB argued that the specification clarifies that the system of claim 3 necessitates changes to the hardware, but the court found that claim 3 focused on the wireless communication between a computer and hearing devices, and not the inner workings of those devices.
Addressing step two, the court determined that claim 3 is not sufficiently inventive for two reasons. First, the claim “is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea.” Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021). The court found that the simple recitation of a computer wirelessly connecting with various pieces of hardware is not inventive. Second, the court found that prior art incorporated wireless communication between a computer and various cochlear implant and hearing aid components. According to the court, nothing in claim 3 suggests anything more inventive than the concepts discussed in the prior art of record.
Practice Tip: This case presents the situation where the claim-at-issue depends from an already invalidated independent claim. Because of this, the court focused its patent ineligibility analysis on the limitations of the dependent claim and whether those limitations were inventive. To anticipate this scenario, patent owners should consider describing and claiming technical details for tangible components not only in the independent claims, but also in each dependent claim. For defendants, this case showcases the advantage of maintaining a § 101 defense as a back-up where a dependent claim may survive an IPR proceeding.
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 involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool.” Id. at 1293. The court determined that the focus of the ’747 Patent was fitting a cochlear implant and hearing aid in a patient’s ear. The court found that claim 3 recites “well-known and conventional” components and that the inventive aspect is “wireless communication between a computer and the other components for fitting.”
The court concluded that claim 3 does not resolve any problem regarding a computer’s communication with hearing devices and does not identify any specific improvements to the device’s capabilities or functionalities. The court noted that wireless communication between a computer and various devices, without more, is an abstract concept. See Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1347 (Fed. Cir. 2019). AB argued that the specification clarifies that the system of claim 3 necessitates changes to the hardware, but the court found that claim 3 focused on the wireless communication between a computer and hearing devices, and not the inner workings of those devices.
Addressing step two, the court determined that claim 3 is not sufficiently inventive for two reasons. First, the claim “is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea.” Yu v. Apple Inc., 1 F.4th 1040, 1043 (Fed. Cir. 2021). The court found that the simple recitation of a computer wirelessly connecting with various pieces of hardware is not inventive. Second, the court found that prior art incorporated wireless communication between a computer and various cochlear implant and hearing aid components. According to the court, nothing in claim 3 suggests anything more inventive than the concepts discussed in the prior art of record.
Practice Tip: This case presents the situation where the claim-at-issue depends from an already invalidated independent claim. Because of this, the court focused its patent ineligibility analysis on the limitations of the dependent claim and whether those limitations were inventive. To anticipate this scenario, patent owners should consider describing and claiming technical details for tangible components not only in the independent claims, but also in each dependent claim. For defendants, this case showcases the advantage of maintaining a § 101 defense as a back-up where a dependent claim may survive an IPR proceeding.
Previous Entries
IP Newsflash
October 1, 2025
In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.
IP Newsflash
September 30, 2025
The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.
IP Newsflash
September 25, 2025
In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.
IP Newsflash
September 24, 2025
The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.
IP Newsflash
September 17, 2025
A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.
IP Newsflash
September 9, 2025
The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.
IP Newsflash
August 29, 2025
In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue.
IP Newsflash
August 29, 2025
The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).
© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.