United States Court of Appeals 

for the Federal Circuit ______________________ 

ALFRED E. MANN FOUNDATION FOR 

SCIENTIFIC RESEARCH, 

ADVANCED BIONICS, LLC,

Plaintiffs-Cross-Appellants

v.

COCHLEAR CORPORATION, NKA COCHLEAR 

AMERICAS, COCHLEAR LTD.,

Defendants-Appellants

______________________ 

2015-1580, 2015-1606, 2015-1607

______________________ 

Appeals from the United States District Court for the 

Central District of California in No. 2:07-cv-08108-FMOSH, Judge Fernando M. Olguin.

______________________ 

Decided: November 17, 2016

______________________ 

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.
2 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

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. 

Opinion concurring in part, dissenting in part filed by 

Circuit Judge NEWMAN. 

HUGHES, Circuit Judge. 

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 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 3

S. Ct. 1923 (2016). We also conclude that we do not have 

jurisdiction over the damages issue.

I 

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.

 

1 The patents share substantially the same specification. 
4 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

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 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 5

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, CrossAppellants) 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 
6 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

damages. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1). 

II

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. 

A 

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:

A method of testing an implantable tissue stimulating system comprising: . . . 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 7

[f] selectively monitoring the at least one

pair of the multiplicity of electrodes to 

measure a voltage associated therewith at 

the same time the stimulation signals are 

applied thereto;

[g] generating stimulator status-indicating 

signals representative of the measurements made within the implanted stimulator;

[h] transmitting the stimulator statusindicating signals to an external receiver 

coupled to the external transmitter;

[i] receiving and processing the statusindicating signals to produce processed 

status-indicating signals which convey information regarding the status of the implanted stimulator, including the 

measurements made within the implanted 

stimulator; and

[j] displaying the processed statusindicating signals, whereby the status of 

the implanted stimulator, including the results of the measurements made within the 

implanted stimulator, may be made 

known.

’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 
8 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

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. 60–62. According to part (i), the signals 

described in part (g) are further processed such that they 

only “convey information regarding the status of the 

implanted stimulator.” Id. at col. 35 l. 66–col. 36 l. 3. 

Parts (g) and (i) together make clear that the statusindicating signals, regardless of whether they are processed or not, only have to convey information about the 

voltage measurements, but do not require such information to be displayed. Furthermore, Cochlear’s construction would require us to find that to “convey” the 

voltage measurements, the signals in part (i) must “display” this information. There is no intrinsic support for 

this definition, which would also render part (j) redundant

under Cochlear’s proposed construction. Merck & Co. v. 

Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 

2005) (“A claim construction that gives meaning to all the 

terms of the claim is preferred over one that does not do 

so.”). 

Cochlear next argues that the “whereby” clause in 

part (j) is material to patentability such that voltage must 

be made available for display. Cochlear Br. at 38. The 

district court determined that the “whereby” clause merely provides a more illustrative expression of the “displaying the status-indicating signals” limitation, and provides 

no additional restrictions on the claim. J.A. 26436. We 

agree. There is no support for Cochlear’s construction, 

particularly because parts (g) and (i) of claim 10 make

clear that the processed status-indicating signals only 

have to convey information about the voltage measure-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 9

ments, but do not have to include the measurements for 

display. In addition, Cochlear’s construction would require us to find that the term “may be made known” 

means “available for display.” There is no support for this

interpretation, particularly because the limitation states 

that only the processed status-indicating signals must be 

displayed. 

Cochlear’s proposed construction also conflicts with 

the specification. As depicted in Figure 6, the control 

knob 308 (the right most knob) is one of three knobs that 

dictate “the parameters measured and displayed by the 

ICS and Physician’s Tester combination.” ’616 patent, col. 

33 ll. 14–18. Positions 1–3 correspond to the impedance, 

and are distinct from positions 4–7, which correspond to 

the voltage. Id. at ll. 36–40 (Table 7). Because the specification envisions that impedance, voltage, or the current 

may be displayed, the voltage measurement does not have 

to be displayed as Cochlear argues.

The prosecution history also does not support Cochlear’s proposed claim construction. In response to a § 112 

rejection, the patentee amended “voltages/current” to 

“voltage” in part (f), and in response to a § 103 rejection, 

added parts (i) and (j). J.A. 15834–35. Cochlear argues 

that the applicant made this amendment to specify that 

the voltage must be displayed. Cochlear Br. at 38. But, it 

is clear that the patentee amended the claim to distinguish the invention from the prior art based on its realtime testing abilities. See J.A. 15843–44 (noting that the 

invention allowed a physician to perform real-time testing, where a sensed parameter (voltage) “is sent back to 

the physician’s tester as part of a feedback signal were 

[sic] it is displayed or otherwise processed. Such action 

thereby provides, in effect, a ‘snapshot’, in real time, of 

the selected parameter . . . .”). Though the Examiner 

allowed the claim because “the prior art does not show or 

suggest the measuring of the electrode voltage for external display,” id. at 15850, an examiner’s unilateral state-
10 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

ment does not give rise to a clear disavowal of claim scope 

by the applicant, see Salazar v. Procter & Gamble Co., 414 

F.3d 1342, 1347 (Fed. Cir. 2005). Here, the patentee did 

not argue that the voltage must be displayed, instead 

focusing its arguments on the real-time features of the 

invention. 

In light of the intrinsic evidence, we reject Cochlear’s 

proposed claim construction.

B 

Cochlear argues that even under the district court’s 

construction, its accused system does not infringe. Infringement is a question of fact that we review for substantial evidence when tried to a jury. Lucent Techs., Inc. 

v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). 

Cochlear asserts that even though its system may display 

the impedance value, the voltage value is not “made 

known” as required by part (j) of claim 10. Cochlear’s Br.

at 43–44. The relationship between voltage, impedance, 

and current is defined by Ohm’s Law, where voltage = current x impedance. Because there is sufficient 

evidence that the accused system sets forth the current 

level associated with each measurement, J.A. 4700, and 

voltage may be measured by multiplying the current level 

by the accused system’s displayed impedance value, there 

is substantial evidence that Cochlear’s accused system 

infringes claim 10. 

III

We next turn to Cross-Appellants’ cross-appeal on the 

court’s indefiniteness determinations. The ultimate 

determination of indefiniteness is a question of law that 

we review de novo, although any factual findings by the 

district court based on extrinsic evidence are reviewed for 

clear error. UltimatePointer, LLC v. Nintendo Co., 816

F.3d 816, 826 (Fed. Cir. 2016).
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 11

To satisfy the definiteness requirement, a meansplus-function claim requires sufficient disclosure of the 

underlying structure. That task lies with the patentee. E.g., Med. Instrumentation & Diagnostics Corp. v. 

Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (“The 

duty of a patentee to clearly link or associate structure 

with the claimed function is the quid pro quo for allowing 

the patentee to express the claim in terms of function 

under section 112, paragraph 6.”) (citing Budde v. Harley–

Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001)); 

Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 

1042 (Fed. Cir. 1993) (“The applicant must describe in the 

patent specification some structure which performs the 

specified function.”). In cases involving a computerimplemented invention, we have held that the structure 

must be more than a general purpose computer or a 

microprocessor, Aristocrat Techs. Austl. Pty Ltd. v. Int’l 

Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008), unless, 

in the rare circumstance, any general purpose computer 

without any special programming can perform the function, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 

F.3d 1361, 1365 (Fed. Cir. 2012). Where the structure is a 

general purpose computer or microprocessor, “[r]equiring 

disclosure of an algorithm properly defines the scope of 

the claim and prevents pure functional claiming.” Ergo, 

673 F.3d at 1364. An “algorithm” is “a step-by-step procedure for accomplishing a given result,” and may be 

expressed “in any understandable terms including as a 

mathematical formula, in prose, or as a flow chart, or in 

any other manner that provides sufficient structure.” Id.

at 1365 (citations and internal quotation marks omitted). 

“Claim definiteness . . . depends on the skill level of a 

person of ordinary skill in the art. In software cases, 

therefore, algorithms in the specification need only disclose adequate defining structure to render the bounds of 

the claim understandable to one of ordinary skill in the 

art.” AllVoice Computing PLC v. Nuance Commc’ns, Inc., 
12 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

504 F.3d 1236, 1245 (Fed. Cir. 2007) (internal citations 

omitted). 

A 

Claim 6 of the ’691 patent reads, in relevant part:

A cochlea stimulation system, comprising:

[a] audio signal receiving means;

[b] an externally wearable signal processor (WP) for receiving and processing the 

audio signals received by the audio signal 

receiving means and including means for 

generating data indicative of the audio 

signal; . . . .

’691 patent, col. 34 l. 51–col. 35 l. 6 (emphasis added).

Claim 7 of the ’691 patent is dependent on claim 6, 

and the reproduced portion of claim 6 is the only part 

relevant here. 

The limitation “means for generating data indicative 

of the audio signal” is a means-plus-function limitation. 

Cross-Appellants do not dispute that the function is 

“generating data indicative of the audio signal,” and the 

corresponding structure is a microprocessor. See J.A. 53; 

Foundation Br. at 54; Advanced Bionics Br. at 20–21. A 

portion of Figure 1, depicting the wearable system 10, is 

reproduced below, where structure 30 is the microprocessor.
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 13

The district court found claims 6–7 indefinite because 

the specification of the ’691 patent fails to disclose the 

requisite algorithmic structure to perform the “means for 

generating data indicative of the audio signal” function. 

J.A. 53–56. Cross-Appellants argue that the claims are 

not indefinite because the “microprocessor implements a 

logarithmic conversion algorithm to generate data indicative of an audio signal.” J.A. 54. According to CrossAppellants, the algorithm performed by the microprocessor has two steps: first, the microprocessor receives digital 

data from the A/D converter 28, and second, the microprocessor uses a logarithmic conversion function to format 

the data. J.A. 33657. The district court found the claims 

indefinite because the ’691 patent does not disclose where

the logarithmic conversion function takes place and 

because the logarithmic conversion function could be 
14 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

implemented through multiple logarithmic algorithms, 

none of which the specification describes. J.A. 54–55. We 

agree that the claims are indefinite for these reasons.

Cross-Appellants argue that the logarithmic conversion must be performed in the microprocessor. Foundation Reply Br. 6. This argument conflicts with the 

testimony of both experts. Dr. Robert Stevenson, Cochlear’s expert, explained that the logarithmic conversion

could be placed in the A/D convertor, or “[a]lternatively[,] 

you could put this algorithm into the microprocessor.” 

J.A. 2596, ll. 11–15. Dr. Darrin J. Young, CrossAppellants’ expert, testified that “[t]he patent doesn’t say

that” the logarithmic conversion must be done in the 

microprocessor, J.A. 2617 ll. 2–4, and agreed that “[y]ou 

could implement a logarithmic function into the [A/D] 

converter.” J.A. 2616, ll. 13–15. Since the patent does not 

disclose which component performs the logarithmic conversion function, the specification does not disclose “with 

sufficient particularity the corresponding structure for 

performing the claimed function . . . .” Triton Tech of Tex., 

LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. 

Cir. 2014); see also In re Katz Interactive Call Processing 

Patent Litig., 639 F.3d 1303, 1315 (Fed. Cir. 2011); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 

(Fed. Cir. 2009) (“The question before us is whether the 

specification contains a sufficiently precise description of 

the ‘corresponding structure’ to satisfy section 112, paragraph 6, not whether a person of skill in the art could 

devise some means to carry out the recited function.”).

These claims are indefinite for another reason: the

logarithmic conversion may be implemented through 

various unspecified algorithms. In describing some 

additional possible algorithms, Dr. Young testified that 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 15

logarithmic conversions could be implemented using a 

binary logarithmic algorithm or a lookup table.2 J.A. 

2618, ll. 12–19. According to Dr. Young, the only limit on 

the number of algorithms that could be used was how 

“complicated you want to make the logarithmic function.” 

J.A. 2617, ll. 5–9. For instance, Dr. Young testified that a 

logarithmic function implemented in the A/D converter 

would not be simple but would have “multiplication 

factors” that would “need[] to be programmed.” J.A. 2616, 

ll. 13–21. 

As the testimony reflects, the ’691 patent does not disclose an algorithm, or even a small set of algorithms for 

performing the claimed logarithmic conversion function. 

“Disclosing the broad class of [logarithmic conversion] 

does not limit the scope of the claim to the ‘corresponding 

structure, material, or acts’ that perform the function, as 

required by Section 112.” Triton Tech., 753 F.3d at 1379. 

Although Cross-Appellants argue that a person of ordinary skill in the art would know of potential logarithmic 

conversion functions to implement, Foundation Br. 59–60,

this does not create structure in the patent where there 

was none to begin with. Triton Tech., 753 F.3d at 1379 

(“Although a person of skill in the art might be able to 

choose an appropriate numerical integration algorithm 

and program it onto a microprocessor, the [p]atent discloses no algorithm at all.”) (alteration in original). 

Because the court did not err in finding claims 6–7 indefinite where the specification fails to disclose the requisite 

 

2 As the district court noted in evaluating the testimony, this was inconsistent with Dr. Young’s earlier 

unequivocal declaration that he “kn[e]w of no other way 

to implement such a logarithmic algorithm in a DSP.” 

J.A. 55.
16 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

structure, we affirm the district court’s indefiniteness 

finding.

B 

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; . . . . 

’616 patent, col. 34 ll. 23–61 (emphases added).

The limitation “external processor 

means . . . for . . . processing the status-indicating signals 

to derive information therefrom” is a means-plus-function 

limitation. It is undisputed that the structure is the 

microprocessor. J.A. 50. 

The district court rejected Cross-Appellants’ argument that the patent discloses a two-step algorithm, 

where first, the microprocessor accepts signals representative of voltage, and second, the microprocessor 

applies Ohm’s law to convert the voltage into an impedance value. Id. at 51. The court found claim 1 indefinite 

because the patent does not explicitly identify Ohm’s law 

and there are multiple ways of calculating impedance. Id.

at 52. We disagree.
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 17

The specification discloses that both voltage and current are measured, and that these values are associated 

with the resulting “status-indicating signal.” See, e.g.,

’616 patent, col. 32 ll. 36–42 (“[T]he system of the present 

invention provides for . . . measurement of different 

voltages and currents within the ICS in response to 

commands and data changes transmitted by the WP in 

response to data telemetered back to the WP in the form 

of status indicating and measurement signals.”). 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 

68:11–18 (“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 

patent. 
18 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

IV

The jury found that Cochlear willfully infringed 

claims 1 and 10 of the ’616 patent and claims 6–7 of the 

’691 patent. J.A. 63, 67. The court set this verdict aside 

in granting Cochlear’s JMOL of no willful infringement. 

The court concluded that a reasonable jury could not find 

that the objective prong of the Seagate inquiry was established by clear and convincing evidence, and that Cochlear had presented several reasonable noninfringement

defenses. Id. at 18–19. Although the parties stipulated 

that “Cochlear was aware of the ’691 patent and its subject matter by June 2004” and “was aware of the ’616 

patent and its subject matter by July 2003[,]” id. 265, the 

court determined that the Foundation failed to satisfy the 

subjective prong because (1) the Foundation did not 

provide pre-suit notice regarding the ’691 patent, and (2) 

Cochlear responded with reasonable infringement defenses after being notified of the ’616 patent, id. at 19.

In Halo, the Supreme Court rejected the Seagate test 

for willful infringement as “unduly rigid” and “impermissibly encumber[ing] the statutory grant of discretion to 

district courts.” 136 S. Ct. at 1932 (internal citation and 

quotation marks omitted). The Court rejected the Seagate 

test’s clear-and-convincing standard of proof, as well as 

the tripartite framework for appellate review. Id. at 1934

(“As we explained in Octane Fitness, ‘patent-infringement 

litigation has always been governed by a preponderance of 

the evidence standard.’” (citing Octane Fitness, LLC v. 

ICON Health & Fitness, 572 U.S. __, 134 S. Ct. 1749, 1758 

(2014))). The Court also rejected Seagate’s requirement of 

“a finding of objective recklessness in every case before 

district courts may award enhanced damages.” Id. at 

1932. “Such a threshold requirement excludes from 

discretionary punishment many of the most culpable 

offenders, such as the ‘wanton and malicious pirate’ who 

intentionally infringes another’s patent—with no doubts 

about its validity or any notion of a defense—for no pur-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 19

pose other than to steal the patentee’s business.” Id. The 

Court described “[t]he sort of conduct warranting enhanced damages. . . .as willful, wanton, malicious, badfaith, deliberate, consciously wrongful, [or] flagrant . . . .” 

Id. 

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 

1934). 

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.

V 

Lastly, the court ordered a new trial on damages for 

claim 10 of the ’616 patent and vacated the jury’s damages award. J.A. 23. Cross-Appellants argue that the court 

abused its discretion in granting Cochlear’s motion. We 

lack jurisdiction to consider this issue.

Ordinarily, we apply regional circuit law to substantive and procedural issues not “intimately involved in 

federal patent law.” Verinata Health, Inc. v. Ariosa 

Diagnostics, Inc., 830 F.3d 1335, 1338 (Fed. Cir. 2016). 

However, on matters concerning our jurisdiction, “we 

apply our own law and not the law of the regional circuit.” 

Spraytex Inc. v. DJS&T, 96 F.3d 1377, 1379 (Fed. Cir. 

1996); see also Woodard v. Sage Prods., Inc., 818 F.2d 841, 
20 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

844 (Fed. Cir. 1987) (“[D]eference [to regional circuit law] 

is inappropriate on issues of our own appellate jurisdiction. This court has the duty to determine its jurisdiction 

and to satisfy itself that an appeal is properly before it.”).

“By statute, this court has jurisdiction over an appeal 

of a decision of a district court if it is ‘final’ under 28 

U.S.C. § 1295(a)(1) or if it is an interlocutory order as 

specified in 28 U.S.C. § 1292.” Orenshteyn v. Citrix Sys., 

Inc., 691 F.3d 1356, 1357 (Fed. Cir. 2012). One exception 

to the foregoing is when the judgment is final except for 

an “accounting.” 28 U.S.C. § 1292(c)(2); see Robert Bosch, 

LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1309 (Fed. Cir. 

2013) (en banc) (holding that an “accounting” may include 

a trial on damages). 

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). 

Cross-Appellants also argue that we have jurisdiction 

because of the district court’s certification of judgment

under Fed. R. Civ. P. 54(b). Foundation Reply Br. 24. 

The Rule provides in relevant part: “[w]hen an action 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 21

presents more than one claim for relief . . . or when multiple parties are involved, the court may direct entry of a 

final judgment as to one or more, but fewer than all, 

claims or parties only if the court expressly determines 

that there is no just reason for delay.” Rule 54(b) was 

implemented to specifically “avoid the possible injustice of 

delay[ing] judgment on a distinctly separate claim [pending] adjudication of the entire case.” Gelboim v. Bank of 

Am. Corp. 135 S. Ct 897, 902 (2015) (alterations in original). 

There are three prerequisites for invoking Rule 54(b): 

(1) multiple claims for relief or multiple parties must be 

involved; (2) at least one claim or the rights and liabilities 

of at least one party must be finally decided; and (3) the 

district court must find that there is no just reason for 

delaying an appeal. 10 Charles Alan Wright et al., Federal Practice and Procedure § 2656 (3d ed. 2016). Because 

“the district court has no discretion to authorize an appeal 

when Rule 54(b) does not apply, its decision that the 

requirements of the rule have been met is fully reviewable 

by an appellate court.” Id. at § 2655.

The district court’s entry of judgment on the damages 

question does not meet the standards of Rule 54(b) because damages have not been finally decided. In Sears, 

Roebuck & Co. v. Mackey, the Supreme Court discussed 

Rule 54(b): 

[I]t does not relax the finality required of each decision, as an individual claim, to render it appealable, but it does provide a practical means of 

permitting an appeal to be taken from one or more 

final decisions on individual claims, in multiple 

claims actions, without waiting for final decisions 

to be rendered on all the claims in the case. 

351 U.S. 427, 435 (1956). The standard for finality under 

Rule 54(b) is analogous to the standard under 28 U.S.C. 

§ 1291 (or 28 U.S.C. § 1295). Id. at 438 (“[Rule 54(b)]
22 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

scrupulously recognizes the statutory requirement of a 

‘final decision’ under § 1291 as a basic requirement for an 

appeal to the Court of Appeals. It merely administers 

that requirement in a practical manner in multiple claims 

actions and does so by rule instead of by judicial decision.”); see also Wright, Federal Practice and Procedure

§ 2656. The Supreme Court has explained that judgments “where assessment of damages or awarding of 

other relief remains to be resolved have never been considered to be ‘final’” for purposes of Rule 54(b). Liberty 

Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744 (1976). 

The issue of the propriety of the damages award was 

not properly certified for appeal under Rule 54(b) because 

the district court ordered a new trial on damages. A new 

trial is not a final order that falls within Rule 54(b).3 See 

 

3 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)). The facts of 

this case do not fall within the unique circumstances of 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 23

Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 34 (1980)

(“An order granting a new trial is interlocutory in nature 

and therefore not immediately appealable.”). Therefore, 

because the district court’s judgment does not fall within 

the scope of Rule 54(b) or § 1292(c)(2)’s accounting exception, we lack jurisdiction to consider whether the court 

erred in ordering a new trial on damages.

VI 

For the reasons stated herein, we affirm-in-part, reverse-in-part, and vacate-in-part the district court’s 

judgments and remand the case to the district court to 

proceed in accordance with the holdings discussed herein.

AFFIRMED-IN-PART, REVERSED-IN-PART, 

VACATED-IN-PART, AND REMANDED

No costs. 

 

Gillespie, which involved a claim under Ohio’s wrongful 

death statute and general maritime law.
United States Court of Appeals 

for the Federal Circuit ______________________ 

ALFRED E. MANN FOUNDATION FOR 

SCIENTIFIC RESEARCH, 

ADVANCED BIONICS, LLC,

Plaintiffs-Cross-Appellants

v.

COCHLEAR CORPORATION, NKA COCHLEAR 

AMERICAS, COCHLEAR LTD.,

Defendants-Appellants

______________________ 

2015-1580, 2015-1606, 2015-1607

______________________ 

Appeals from the United States District Court for the 

Central District of California in No. 2:07-cv-08108-FMOSH, Judge Fernando M. Olguin.

______________________ 

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part.

I agree that claim 10 of the ’616 patent is valid and infringed, and I agree that claim 1 of the ’616 patent is 

valid. Thus I join Parts II and III-B of the court’s opinion. 

I also agree that, in view of changed law, remand is 

appropriate on the issue of willful infringement, and to 

that extent I join Part IV of the court’s opinion.

However, I do not share the court’s view that claims 6 

and 7 of the ’691 patent are invalid for indefiniteness. 
2 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

The district court’s finding of indefiniteness was contrary 

to the testimony of the experts for both sides. I respectfully dissent from the court’s decision in Part III-A.

As for the district court’s vacatur of the jury’s damages verdict and order for a retrial of damages, I do not 

agree that the order is immune from the appellate review

requested by the district court under Rule 54(b). Thus I 

respectfully dissent from part V of the court’s decision. 

I 

Indefiniteness of Claims 6 and 7 

The court affirms the invalidation of claims 6 and 7 on 

the ground that the Foundation does not persuasively 

show that the microprocessor performs a logarithmic 

conversion function. Maj. Op. at 14. This position is 

contrary to the evidence presented by both sides; Cochlear 

failed to carry its burden to present clear and convincing 

evidence of invalidity on the ground of indefiniteness.

The court also finds the claims indefinite because the 

’691 patent does not state which of several known methods was used for the logarithmic conversion. The specification expressly discloses the non-linear mapping steps, 

and the experts for both sides agreed that persons in the 

field of the invention know how to perform the simple

conversion, which was well-known in the prior art.

The claims at issue, claims 6 and 7 of the ’691 patent, 

are challenged only for the clause here shown in bold: 

6. A cochlea stimulation system, comprising:

audio signal receiving means;

an externally wearable signal processor (WP) for 

receiving and processing the audio signals received by the audio signal receiving means and including means for generating data indicative 

of the audio signal; 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 3

means for transmitting the data to an implanted 

cochlear stimulator (ICS), the ICS including:

means for transmission from the WP,

processor means for processing such transmissions to generate stimulation pulses and 

for controlling the pulse width of the stimulation pulses,

a plurality of electrically isolated capacitorcoupled cochlea stimulating electrodes for receiving the stimulation pulses,

means in the ICS responsive to data from the 

WP for selectively monitoring at least one of 

the electrodes or voltages in the ICS and for 

generating ICS-status-indicating signals, and

means in the ICS for transmitting such ICSstatus-indicating signals to the WP; and

means in the WP for receiving and processing 

the ICS-status-indicating signals.

’691 Patent, cl. 6. The structure described in the specification for the “means for generating data indicative of the 

audio signal” is a microprocessor performing a logarithmic 

conversion function.

The ’691 patent describes all of the claim elements in 

the form that is customary in computer-facilitated inventions: stating the function and how it is performed, in 

text, drawings, and flow-charts. The patent explains that 

the cochlear electrodes mimic sound by outputting stimulation signals in the cochlear electrodes with voltages 

between 0 and 2500 microamps. ’691 Patent, col. 6 ll. 8–

48. The specification includes a detailed logarithmic 

schedule of steps corresponding to the range of sounds. 

’691 Patent, col. 4 ll.43–64. Sound waves are translated 

into digital information in the D/A converter and then 

into the selected output voltage in the microprocessor by a 
4 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

logarithmic conversion. ’691 Patent, col. 10, ll. 1–8. The 

patent teaches that the means for generating “data indicative of the audio signal” is a microprocessor performing a 

basic logarithmic conversion, for which the specification 

includes a look-up table. ’691 Patent, col. 6 ll. 8–48.

Precedent requires that the court views the technology as it would be viewed by persons of skill in the field of 

the invention. See Finisar Corp. v. DirecTV Grp., Inc., 

523 F.3d 1323, 1340 (Fed. Cir. 2008) (“[T]he specification 

must permit one of ordinary skill in the art to ‘know and 

understand what structure corresponds to the means 

limitation.’”). The overarching requirement is that the 

particular factual situation must be viewed, and definiteness evaluated, in the same way as by persons in the field 

of the invention.

With respect to software-implemented systems, this 

court has explained that:

Claim definiteness . . . depends on the skill level of 

a person of ordinary skill in the art. In software 

cases, therefore, algorithms in the specification 

need only disclose adequate defining structure to 

render the bounds of the claim understandable to 

one of ordinary skill in the art.

AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 

F.3d 1236, 1245 (Fed. Cir. 2007) (citations omitted). In 

Typhoon Touch Technology, Inc. v. Dell, Inc., 659 F.3d 

1376, 1386 (Fed. Cir. 2011), the court observed that 

“known computer-implement[ed] operations . . . are 

readily implemented by persons of skill in computer 

programming.”

Logarithmic conversion has been known for centuries. 

The experts for both sides agreed that logarithmic conversion is well-known, and that persons of skill in the field of 

the invention would understand the description of the 

logarithmic conversion in the claimed system. Alfred E. 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 5

Mann Found. for Sci. Res. v. Cochlear Corp., No. 07-8108 

FMO (SHx) (Testimony of The Foundation Expert Dr. 

Young) (Dkt. 454) (“Your output relationship is well 

defined. I can’t change the log value. It’s a fixed function.”); Trial Tr. at 75, ll. 1–11, Alfred E. Mann Found. for 

Sci. Res. v. Cochlear Corp., No. 07-8108 (C.D. Cal. Jan. 22, 

2014) (Dkt. 456) (Testimony of Cochlear Expert Dr. Stevenson) (testifying that a logarithmic conversion is used 

because “at the other end you want this exponential”); 

The Foundation Expert Dr. Young Decl. at ¶ 17, Mann. 

Found, No. 07-8108 (Dkt. 406) (“That [logarithmic] algorithm is implemented with a simple logarithmic lookup 

table.”). The ’691 patent includes a lookup table containing the results of the calculations. ’691 Patent, col. 4 

ll.43–64.

No witness for either side testified that a person of 

skill in the field would have difficulty performing the

logarithmic conversion. No testimony on examination or 

cross-examination placed this aspect in dispute. It was 

not disputed that the conversion of sound into “data 

indicative of the audio signal” is conventional and was 

known and used in the operation of prior art cochlear 

implants. No contrary evidence was presented, and no 

contrary argument is offered. Nonetheless, my colleagues 

find the claims indefinite on the ground that there are 

“multiple logarithmic algorithms[] none of which the 

specification describes.” Maj. Op. at 14. Precedent does 

not require that well-known formulas must be stated in 

the specification, when they are known in the relevant 

art.

A known procedure is not rendered indefinite when 

there is more than one known way of carrying it out. As 

stated in Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 

732 F.3d 1376, 1379 (Fed. Cir. 2013): “For a claim to be 

definite, a recited algorithm, or other type of structure for 

a section 112(f) claim limitation, need not be so particularized as to eliminate the need for any implementation 
6 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

choices by a skilled artisan.” Here, there was no dispute

that persons “skilled in the particular art” would “understand what structure(s) the specification discloses.” Amtel 

Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 

1382 (Fed. Cir. 1999).

Both parties’ experts and the district court agreed 

that the invention necessarily employs a logarithmic 

conversion. See Mann Found., 96 F. Supp. at 1051 

(“While it may be necessary for the wearable processor 

(WP) . . . to perform a logarithmic conversion, because the 

implantable cochlear system includes an exponential D/A 

converter, it has not been established that the logarithmic 

conversion must take place in the microprocessor.”). It 

was not disputed that logarithmic conversion was known 

for audio data, and had been used in prior art cochlear

implants. 

My colleagues’ holding that it was necessary to state 

which of the two or three known logarithmic conversion 

routines was used, on pain of invalidity, is unsupported 

by mathematics, reason, or precedent. See S3 Inc. v. 

NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001) 

(“[P]atent documents need not include subject matter that 

is known in the field of the invention and is in the prior 

art, for patents are written for persons experienced in the 

field of the invention.”); Intel Corp. v. VIA Techs., Inc., 319 

F.3d 1357, 1366–67 (Fed. Cir. 2003) (implementation 

choices of “known algorithms” are “properly left to the 

knowledge of those skilled in the art, and need not be 

specified in the patent”). 

On similar facts, this court has held that claims are 

not invalid for indefiniteness when expert testimony “sets 

forth several straightforward ways that the algorithm . . . 

could be implemented by one skilled in the art.” AllVoice, 

504 F.3d at 1245. On cross examination at trial, the 

Foundation’s expert, Dr. Young, explained that no matter 

how a logarithmic conversion is implemented, the algo-
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 7

rithm will be the same: “your output relationship is well 

defined. I can’t change the log value. It’s a fixed function.” Alfred E. Mann Found. for Sci. Res. v. Cochlear 

Corp., No. 07-8108 FMO (SHx) (Testimony of The Foundation Expert Dr. Young) (Dkt. 454).

A finding of invalidity based on indefiniteness requires proof by clear and convincing evidence that persons 

skilled in the field of the invention would not be “able to 

perform the recited function” based on the description in 

the specification and the knowledge in the art. Intel 

Corp., 319 F.3d at 1366. This standard controls, along 

with the truism that “[p]atent documents are written for 

persons familiar with the relevant field . . . lest every 

patent be required to be written as a comprehensive 

tutorial and treatise for the generalist.” Verve, LLC v. 

Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).

The court errs in finding claims 6 and 7 invalid for indefiniteness, upon new and ill-defined requirements for 

patent specifications that are unrealistic and unnecessary, adding burdens and pitfalls with no benefit to 

anyone. The implementing structure “must be sufficiently defined to render the bounds of the claim—declared by 

section 112(f) to cover the particular structure and its 

equivalents—understandable by the implementer.” 

Ibormeith, 732 F.3d at 1379. As computer-implemented 

technology continues to provide new public benefits,

consistency of judicial view is essential to stability of the

law and progress of the technology. 

II

Jurisdiction to review the Order for a new trial

The district court vacated the jury’s damages verdict, 

Judgment at 2, Mann Found., No. 07-8108 (Dkt. 548), and 

ordered a new trial on damages on the ground that “the 

damages awarded by the jury were not broken down as to 

each claim or patent,” Order Re: Post-Trial Motions at 23,
8 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

Mann Found., No. 07-8108 (Dkt. 540). My colleagues hold

that this court lacks jurisdiction to review the district 

court’s order of vacatur and a new trial, holding that the 

district court abused its discretion in certifying and 

entering judgment under Rule 54(b), on the theory that 

there is not a final decision on damages. Maj. Op. at 20-

21. The vacatur order is reviewable under either the 

district court’s Rule 54(b) certification or under 28 U.S.C. 

§ 1292(c)(2). The district court entered “[j]udgment . . . in 

favor of Defendants as to the vacatur of the jury’s damages award,” Judgment at 2. Thus the district court assured 

that its judgment of vacatur was appealable. Mann. 

Found, No. 07-8108 (Dkt. 547). Precedent and sound 

practice counsel that we attend to this appeal requested 

by the district court. 

The Supreme Court does not view the requirement of 

finality as strictly “jurisdictional,” but as a matter of 

practical jurisprudence and comity. The Court has counseled 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)

(internal quotations omitted); see American Export Lines, 

Inc. v. Alvez, 446 U.S. 274, 279 (1980) (“[N]ow that the 

case is before us . . . the eventual costs, as all the parties 

recognize, will certainly be less if we now pass on the 

questions presented here rather than send the case back 

with those issues undecided.”) (alterations original) (citing 

Gillespie, 379 U.S. at 153)). In White v. New Hampshire 

Department of Employment Security, the Court observed 

that “district courts have ample authority to deal with”

the “problem” of piecemeal appeals. Here, the district 

court prudently exercised such authority, entering judgment as to the vacatur of the jury’s damages verdict and 

certifying the issue under Rule 54(b).

The district court vacated the damages verdict that 

was fully tried on the jury instruction submitted by Cochlear, the party now complaining of the result. The verdict 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 9

form, proposed and accepted by Cochlear, instructed the 

jury: 

25. If you find that the Cochlear Defendants have 

infringed a valid claim of either the ’616 patent or 

the ’691 patent, what is the reasonable royalty

rate that the Cochlear Defendants should pay to 

the Foundation?

The jury answered: 7.5%. Verdict Form, Mann Found., 

No. 07-8108 (Dkt. 460). The Foundation argues that the 

instructions were correct and Cochlear’s post-trial objection waived, and also that the verdict is well supported by 

the evidence.

Precedent and sound practice provide appellate jurisdiction of the vacatur order. The Ninth Circuit, whose 

precedent controls as to procedural matters in its district 

courts, has recognized that appellate review must promote judicial efficiency and sensible litigation economy. 

See Wabol v. Villacrusis, 958 F.2d 1450, 1455 (9th Cir. 

1990) (“Though the remaining issues could eventually 

ascend to this court, this alone should not prevent our 

adjudication of important and potentially dispositive 

questions which have been fully briefed and argued. Such 

a result would disserve the cause of judicial economy and 

therefore frustrate the very purpose of the final judgment 

rule.”). This is particularly true when, as here, the district court invokes appellate review. Id. at n.7 (“Significantly, our exercise of jurisdiction will not interfere with 

the course of the trial. The trial court purported to issue a 

final judgment.”).

If the proposed new trial were to proceed, it would be 

on the basis of separating the damages assessment by 

patent and claim, as the district court apparently was 

persuaded after the verdict was rendered. However, 

Cochlear presented the verdict form that the district court 

accepted and used. The Ninth Circuit counsels reluctance 

to “allow litigants to play procedural brinkmanship with 
10 ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION

the jury system and take advantage of uncertainties they 

could well have avoided.” McCord v. Maguire, 873 F.2d 

1271, 1274 (9th Cir. 1989) (holding that litigants have the 

responsibility to request or submit special verdict forms); 

see also Mitsubishi Elec. Corp. v. Ampex Corp., 190 F.3d 

1300, 1304 (Fed. Cir. 1999) (party forfeited post-trial 

challenge on the ground that a special verdict should have 

been obtained, by proposing and accepting a verdict form 

that did not separate the potential grounds of invalidity).

Nor was the verdict form that was adopted incorrect 

in law. It was not disputed that the royalty base was the 

same as to any of the four claims, such that infringement 

of any claim would produce the same damages calculation. On this premise, the evidence presented by both 

parties did not differentiate among the four claims and 

two patents. See TiVo, Inc. v. EchoStar Commc’ns Corp., 

516 F.3d 1290, 1312 (Fed. Cir. 2008) (“Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have 

upheld the jury’s verdict that all of the accused devices 

infringe the software claims, we affirm the damages 

award.”); SK Hynix Inc. v. Rambus Inc., 2013 WL 

1915865, at *15 (N.D. Cal. May 8, 2013) (denying new 

trial where “damages were awarded based upon infringement by particular products, not upon infringement of 

particular patent claims”). 

Cochlear concedes that “[t]he evidence . . . did not give 

the jury any way to assess a royalty rate assuming infringement of fewer claims or patents.” Cross-Appellee 

Resp. Br. at 28. The concession that the evidence of 

record provided no way to differentiate among infringement by claim or patent, distinguishes this case from the 

facts of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 

1245, 1262 (Fed. Cir. 2014), where this court remanded to 

determine whether the invalidation of one patent might 

affect the damages calculation. The evidence, instructions, and damages theories presented led the jury to a 
ALFRED E. MANN FOUNDATION v. COCHLEAR CORPORATION 11

single, permissible conclusion: that a reasonable royalty 

for the invention—back telemetry—was required to 

compensate the Foundation for infringement of even a 

single claim.

Precedent and sound practice establish the appellate 

obligation to review this grant of a new trial. Such review 

is not barred. From the court’s contrary holding, I respectfully dissent.