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
August 11, 2025
In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.
IP Newsflash
August 8, 2025
Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.
IP Newsflash
August 6, 2025
In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”
IP Newsflash
August 5, 2025
The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.
IP Newsflash
August 5, 2025
A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.
IP Newsflash
August 5, 2025
In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.
IP Newsflash
July 25, 2025
Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings. The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.
IP Newsflash
July 11, 2025
The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.
© 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.