United States Court of Appeals 

for the Federal Circuit ______________________

COCHLEAR BONE ANCHORED SOLUTIONS AB,

Appellant

v.

OTICON MEDICAL AB, OTICON MEDICAL LLC, 

WILLIAM DEMANT HOLDING A/S,

Cross-Appellants

______________________

2019-1105, 2019-1106

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

01018, IPR2017-01019.

______________________

Decided: May 15, 2020

______________________

LAURA BURSON, Sheppard, Mullin, Richter & Hampton 

LLP, Los Angeles, CA, argued for appellant. Also represented by BRUCE G. CHAPMAN; MARK PATRICK, Washington, 

DC. 

 DAVID R. ANDERSON, Birch Stewart Kolasch & Birch, 

LLP, Falls Church, VA, argued for cross-appellants. Also 

represented by EUGENE PEREZ. 

 ______________________

Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.

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2 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

Opinion for the court filed by Circuit Judge TARANTO.

Opinion concurring in part and dissenting in part filed by 

Circuit Judge NEWMAN.

TARANTO, Circuit Judge.

Cochlear Bone Anchored Solutions AB owns U.S. Patent No. 7,043,040, which describes and claims a bone-anchored hearing aid that transmits soundwaves

transcranially from a patient’s deaf side to the patient’s 

non-deaf ear. Oticon Medical AB, Oticon Medical LLC, and 

William Demant Holding A/S (together, Oticon) successfully sought from the Patent and Trademark Office (PTO) 

two inter partes reviews of, collectively, all claims of the 

’040 patent under 35 U.S.C. §§ 311–319. In those reviews, 

the PTO’s Patent Trial and Appeal Board concluded that 

Oticon proved claims 4–6 and 11–12 unpatentable, but did 

not prove claims 7–10 unpatentable. (Cochlear disclaimed 

claims 1–3 and 13.) Cochlear appeals the ruling on claims 

4–6 and 11–12, while Oticon cross-appeals the ruling on 

claims 7–10. We affirm the Board’s conclusions as to all 

claims except claim 10, as to which we vacate and remand.

I

A

The ’040 patent describes a hearing aid with several 

parts. One part is a vibration-producing component implanted and mechanically anchored into a patient’s skull 

on the patient’s deaf side. ’040 patent, col. 2, lines 16–22, 

48–55. An external part of the hearing aid, which includes

a microphone, picks up sound on the patient’s deaf side, 

processes the sound, and generates vibrations in the implanted part. Id., col. 2, line 44, through col. 3, line 8. 

Those vibrations are transmitted through the patient’s 

skull to the patient’s non-deaf ear, so that the patient’s 

non-deaf ear perceives sound originating from the deaf-ear

side. Id. 

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Several additional details discussed in the specification 

are relevant to the issues before us. The ’040 patent notes 

that high-frequency soundwaves, as they traverse the 

skull, weaken in strength more than do low-frequency 

soundwaves; that is, transcranial attenuation is greater for 

treble than for bass frequencies. Id., col. 2, lines 56–62. 

The patent suggests that this differential attenuation may 

be addressed by selectively amplifying treble frequencies 

relative to bass frequencies. Id. In addition, the patent 

describes the following alternative embodiments of the 

hearing aid: one with a battery in the external part that 

powers the internal part through induction, another with a

battery in the internal part that is recharged through induction. Id., col. 3, lines 11–24. 

Claim 1 of the ’040 patent is the independent claim on 

which all claims now at issue depend, directly or indirectly. 

It recites:

1. A bone-conducting bone-anchored hearing aid 

apparatus for sound transmission from one 

side of a patient’s head to the patient’s cochlea 

on another side of the patient’s head for rehabilitation of unilateral hearing loss, the hearing aid apparatus comprising:

a vibratory generating part arranged to 

generate vibrations that are mechanically transmitted through the skull 

bone from a deaf side to the inner ear 

on the other side of the patient; and

an implantable part operative to mechanically anchor the vibratory generating 

part, the implantable part being osseointegrated in the patient’s skull bone 

behind an external ear at the deaf side 

of a patient.

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Id., col. 3, lines 29–41. Cochlear statutorily disclaimed independent claims 1 and 13 and dependent claims 2–3 during the inter partes reviews. The claims addressed by the 

Board and now before us are dependent claims 4–12, all of 

which are apparatus claims.

Claims 4 and 5 require that the frequency characteristics of the hearing aid are “specifically adapted to transmit 

vibrations in the skull bone from one side of the skull to the 

other side” (by incorporation of claim 3) and require that 

treble frequencies are amplified more than bass frequencies. Id., col. 3, lines 44–53. Claim 6, dependent on claim 

1, requires electronic circuitry “to convert a signal from a 

microphone of the hearing aid to the vibratory generating 

part from an analog signal to a digital signal.” Id., col. 4, 

lines 1–5. Claims 7–9, dependent on claim 6, all require 

certain “digital signal processing means” or “signal processing means.” Id., col. 4, lines 7–19. Claim 10, dependent on claim 6, requires “directivity means comprising at 

least one directivity dependent microphone and/or signal 

processing means.” Id., col. 4, lines 20–24. Claim 11, dependent on claim 1, specifies that the implanted part and 

the vibration-producing part are included in the internal 

part and that power is transmitted from the external part 

of the hearing aid to the internal part by induction. Id., col. 

4, lines 26–32. Claim 12, dependent on claim 11, adds that 

the internal part includes a rechargeable battery to be 

charged by induction from an external power supply. Id., 

col. 4, lines 33–36.

B

Oticon filed two petitions for inter partes reviews, challenging all claims of the ’040 patent. The Board, acting as 

delegee of the PTO’s Director, 37 C.F.R. §§ 42.4, 42.108, initially instituted a review only of claims 1–6 and 11–13. It 

declined to institute a review of claims 7–10 on the ground 

that those claims likely are means-plus-function claims 

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subject to 35 U.S.C. § 112, ¶ 6 (2006),1 but there is no identified corresponding structure in the specification, without 

which “the differences between the claimed invention and 

the asserted prior art cannot be ascertained.” J.A. 295. 

The Board consolidated the two IPR proceedings. 

After the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Board 

added claims 7–10 to the proceedings. It authorized the 

filing of supplemental briefs on those claims. In the supplemental briefing, the parties agreed to broad constructions for the means-plus-function limitations, namely that 

the “digital signal processing means” and “signal processing means” limitations include a “digital signal processor” and the “directivity means” limitation includes “a 

directivity dependent microphone (or directional microphone) and/or a digital signal processor.” J.A. 461–63, 476.

The Board proceeded to trial on the following invalidity 

grounds: claims 4–5 as obvious over Vaneecloo2 and Carlsson;3 claims 6, 7, and 9 as obvious over Vaneecloo, Carlsson, and Leysieffer;4 claim 8 as obvious over Vaneecloo, 

1 Because of the filing date of the application that issued as the ’040 patent, the means-plus-function provision 

applicable in this case is 35 U.S.C. § 112, ¶ 6, which is now 

codified, without change material to this case, as 35 U.S.C. 

§ 112(f). See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 

1006 n.2 (Fed. Cir. 2018). 

2 F.M. Vaneecloo et al., Prosthetic Rehabilitation of 

Unilateral Anakusis: Study by Stereo-Audiometry, 117

Ann. Otolaryngol. Chir. Cervicofac. 410 (2000).

3 Peder U. Carlsson, Dep’t of Applied Electronics, 

Chalmers Univ. of Tech., Tech. Report No. 195, On Direct 

Bone Conduction Hearing Devices: Advances in Transducer 

Technology and Measurement Methods (1990).

4 Can. Patent Pub. No. 2301437 A1.

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Carlsson, Leysieffer, and Schaefer;5 claim 10 as obvious 

over Vaneecloo, Carlsson, Leysieffer, and Lesinski;6 claim 

11 as anticipated by Hough;7 and claim 12 as obvious over 

Hough and Leysieffer.

Vaneecloo describes a clinical study of the “possibilities 

of prosthetic rehabilitation by semi-implantable bone-anchored hearing aid (BAHA) in two patients with unilateral 

anakusis.”8 J.A. 783. The study involved surgically implanting a bone-anchored hearing device on a patient’s deaf 

side that transcranially transmits sound received on the 

deaf side to the patient’s non-deaf ear. J.A. 784. The investigators concluded that “the amplification of the highpitched sounds captured on the anakusis side and perceived by transcranial route by the contralateral ear allowed for a significant rise in sound perception thresholds 

of frequencies between 1,000 and 4,000 Hz.” J.A. 788.

Carlsson discloses the use of a bone-anchored hearing 

device for the treatment of patients with conductive or sensorineural hearing loss. J.A. 840. Carlsson also discloses

a hearing aid fitting process in which the user manipulates 

the bass and treble frequency controls independently to optimize the device’s frequency characteristics for that user. 

J.A. 819–22. 

Leysieffer describes a partially or fully implantable 

hearing aid system capable of processing or generating signals according to set parameters and converting acoustic 

signals into electrical signals. J.A. 916, 926. Leysieffer discloses transmitting signals, through inductive coupling,

5 U.S. Patent No. 4,729,366.

6 U.S. Patent No. 5,881,158.

7 J.V.D. Hough et al., Long-Term Results for the Xomed Audiant Bone Conductor, 28 Otolaryngol. Clinics of N. 

America 43 (1995).

8 “Anakusis” refers to hearing loss or deafness.

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from an external unit to an implanted part. J.A. 917. 

Leysieffer also describes charging, by inductive coupling, a 

rechargeable battery cell located in the hearing aid’s implanted part. J.A. 925. 

Hough describes the Xomed Audiant Bone Conductor 

device, which uses an alternating electrical current generated by an external processor to electromagnetically vibrate an implanted osseointegrated magnet. J.A. 1097–98. 

The external processor includes a microphone to pick up 

sounds on a patient’s deaf side, an amplifier, and an electromagnetic coil to vibrate the implanted magnet, which 

sends vibrations transcranially to a patient’s non-deaf ear

when activated. J.A. 1098. 

In its final written decision, the Board concluded that 

claims 4–6 and 11–12 are unpatentable on the grounds 

raised in Oticon’s petitions. J.A. 48–86, 89. The Board also 

concluded that Oticon had not proven claims 7–10 unpatentable, reasoning that the means-plus-function limitations of those claims have no corresponding structure 

disclosed in the specification, so that the Board could not 

“ascertain the differences between the claimed invention 

and the asserted prior art” for those claims. J.A. 16–30, 89. 

The Board decided several claim-construction disputes 

relevant to the issues now before us, relying on the broadest-reasonable-interpretation standard, whose applicability to this case is not in dispute. It ruled that claim 1’s 

preamble phrase “for rehabilitation of unilateral hearing 

loss,” applicable to all claims currently at issue, did not 

limit the scope of the claims. J.A. 33–35. The Board also 

considered claim 3’s phrase “the frequency characteristics 

of the apparatus are specifically adapted to transmit vibrations in the skull bone from one side of the skull to the other 

side,” applicable to claims 4 and 5, and determined that

frequency characteristic adaptations need not “account for 

the mechanics of the skull.” J.A. 38–41. The Board construed claim 6’s “electronic circuitry” limitation, applicable 

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to claims 6–10, to mean “an analog-to-digital converter.” 

J.A. 31. The Board construed “induction,” in claims 11 and 

12, to mean “electromagnetic induction,” but held that the 

term did not require the generation of voltage or current in 

the implanted part. J.A. 41–45.

C

Cochlear timely appealed the Board’s determination

that claims 4–6 and 11–12 have been proved unpatentable, 

and Oticon timely cross-appealed the Board’s decision that

claims 7–10 have not been proved unpatentable. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

We review the Board’s compliance with legal standards 

de novo, Pride Mobility Products Corp. v. Permobil, Inc., 

818 F.3d 1307, 1313–14 (Fed. Cir. 2016), and its underlying 

factual determinations for substantial evidence, Personal 

Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991 

(Fed. Cir. 2017). Among the factual determinations in an 

obviousness analysis are “findings as to the scope and content of the prior art . . . [and] the presence or absence of a

motivation to combine or modify with a reasonable expectation of success.” Ariosa Diagnostics v. Verinata Health, 

Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015). A determination 

of anticipation is a factual finding reviewed for substantialevidence support. Dell Inc. v. Acceleron, LLC, 818 F.3d 

1293, 1298 (Fed. Cir. 2016). “We review the Board’s claim 

construction de novo and any underlying factual findings 

for substantial evidence.” Kaken Pharm. Co. v. Iancu, 952 

F.3d 1346, 1350 (Fed. Cir. 2020).

II

Cochlear challenges several aspects of the Board’s unpatentability determinations for claims 4–6 and 11–12. We 

do not find these challenges persuasive.

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A

Cochlear challenges the Board’s conclusion that claim 

1’s preamble phrase “for rehabilitation of unilateral hearing loss” does not limit the scope of the claims and also the 

Board’s rejection of Cochlear’s narrowing construction of 

that phrase as limited to certain profound hearing loss. We 

reject this challenge at the first step, agreeing with the 

Board that the phrase is not limiting for the apparatus 

claims at issue.

“We have treated the effect of preamble language as a 

claim-construction issue.” Arctic Cat Inc. v. GEP Power 

Prods., Inc., 919 F.3d 1320, 1327 (Fed. Cir. 2019). We have 

stated that “as a general rule preamble language is not 

treated as limiting,” Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir. 2012), but

“[w]hether to treat a preamble as a limitation is determined on the facts of each case in light of the overall form 

of the claim[] and the invention as described in the specification and illuminated in the prosecution history,” Deere 

& Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir. 

2012) (quotation marks omitted). We have also explained 

that “[t]hose general formulations have for decades been 

implemented through a number of more concrete and objective rules.” Arctic Cat, 919 F.3d at 1327.

“In general, a preamble limits the invention if it recites 

essential structure or steps, or if it is necessary to give life, 

meaning, and vitality to the claim.” Catalina Mktg. Int’l, 

Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 

2002) (quotation marks omitted). The preamble may be 

limiting to the extent it is “necessary to provide antecedent 

basis for the body of the claim.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); 

see TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 

2015). But “preamble language merely extolling benefits 

or features of the claimed invention does not limit the claim 

scope without clear reliance on those benefits or features 

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as patentably significant.” Catalina, 289 F.3d at 809. Further, “[w]e have long ruled that a preamble is not limiting 

where a patentee defines a structurally complete invention 

in the claim body and uses the preamble only to state a 

purpose or intended use for the invention.” Arctic Cat, 919 

F.3d at 1328 (quotation marks omitted); see Georgetown 

Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed.

Cir. 2017); Catalina, 289 F.3d at 808; Rowe v. Dror, 112 

F.3d 473, 478 (Fed. Cir. 1997).

The Board in this case correctly held that the preamble 

phrase “for rehabilitation of unilateral hearing loss” is not 

a limitation on the scope of these apparatus claims. J.A. 

31–35. The preamble’s recitation of “for rehabilitation of 

unilateral hearing loss” is merely a statement of intended 

use of the claimed hearing aid. It identifies no structure 

for the apparatus claimed. Moreover, this use itself is not

an inventive or patentably distinct aspect of the claimed 

invention, as “rehabilitation of unilateral hearing loss” was 

a conventional use of prior art bone-anchored hearing aids. 

See ’040 patent, col. 1, lines 44–61; Arctic Cat, 919 F.3d at 

1329–30 (preamble phrase “[a] personal recreational vehicle” was not limiting because it merely described conventional, rather than inventive aspects of the claimed 

invention).

The bodies of the claims contain the only descriptions 

of the structure for the hearing aid, with no additional 

structure furnished by the preamble phrase at issue. For 

example, the body of independent claim 1 identifies the orientation and implantation of the device relative to the patient’s head. See ’040 patent, col. 3, lines 36–37 (“from a 

deaf side to the inner ear on the other side of the patient”); 

id., col. 3, lines 39–41 (“the implantable part being osseointegrated in the patient’s skull bone behind an external ear 

at the deaf side of a patient”). The body of the claim also 

recites the function and position of the implanted “vibratory generating part.” See id., col. 3, lines 34–39 (“generate 

vibrations that are mechanically transmitted through the 

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skull” and “an implantable part operative to mechanically 

anchor the vibratory generating part”). These descriptions 

offer a complete structure such that “for rehabilitation of 

unilateral hearing loss” adds nothing to the configuration

of the claimed device. 

The phrase “for rehabilitation of unilateral hearing 

loss” also is not necessary to provide antecedent basis for 

the body of the claims. Although the preamble term “a patient” may provide antecedent basis for claim 1’s later recitation of “the patient,” that is not the preamble language 

Cochlear argues is limiting. A conclusion that some preamble language is limiting does not imply that other preamble language, or the entire preamble, is limiting. See 

TomTom, 790 F.3d at 1322–23. The language at issue 

here, which states only an intended use, adds no structural 

element, and provides no antecedent basis for the body of 

the claims, is not limiting.

B

Claims 4 and 5, which depend directly or indirectly on 

disclaimed claim 3, require that “the frequency characteristics of the [bone-anchored hearing aid] are specifically 

adapted to transmit vibrations in the skull bone from one 

side of the skull to the other side.” Claim 4 further requires 

that the hearing aid amplifies treble frequencies more than 

bass frequencies. Claim 5 additionally requires that the 

amplified “treble frequencies have a frequency greater 

than 1 kHz.”

Cochlear challenges the Board’s obviousness determinations for claims 4 and 5 on three grounds. The first argument—that Carlsson teaches away from use in patients 

with profound hearing loss—is premised on an incorrect assumption that the intended-use language of the preamble 

is limiting, an assumption we have rejected above. The second argument—that the “specifically adapted to” limitation requires that the frequency characteristics “account 

for the mechanics of the skull”—and third argument—that 

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12 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

the Board lacked substantial evidence to find that 

Vaneecloo teaches amplifying treble frequencies more than 

bass frequencies—are not persuasive for the reasons we 

now discuss.

Cochlear has not persuasively identified an error in the 

Board’s conclusion that the “specifically adapted to” limitation has its ordinary meaning, with no additional requirement that adaptions be made to frequency characteristics

to “account for the mechanics of the skull.” J.A. 39–41. In 

fact, Cochlear has not concretely identified why the Board’s 

ordinary-meaning construction is not the broadest reasonable interpretation.

To the extent that Cochlear is suggesting that the language requires a particular intent or objective of a hearingaid designer or manufacturer, we reject the suggestion. We 

have previously held that the claim term “adapted to” generally means “made to,” “designed to,” or “configured to”

perform the stated function, and we have not introduced a 

subjective element into the construction of the phrase. See 

In re Man Machine Interface Techs. LLC, 822 F.3d 1282, 

1286 (Fed. Cir. 2016); In re Giannelli, 739 F.3d 1375, 1379 

(Fed. Cir. 2014); Aspex Eyewear, 672 F.3d at 1349. To the 

extent that Cochlear is suggesting an objective characteristic of the configuration, it has not shown overbreadth of 

the Board’s ordinary-meaning construction. The claim 

phrase at issue, in its broadest reasonable interpretation, 

covers any frequency-characteristic adaption “to transmit 

vibrations in the skull bone from one side of the skull to the 

other side.” Either Cochlear’s proposal is redundant of that 

language or it is unduly limiting. In neither case is there 

error in the Board’s claim construction.

Cochlear’s final challenge to the Board’s conclusion 

about claims 4 and 5 addresses the additional differentialamplification limitations of those claims. This challenge 

turns specifically on whether there is substantial evidence 

in the record from which the Board could have determined 

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that Vaneecloo discloses amplifying treble frequencies 

more than bass frequencies. We conclude that the Board 

did have such evidence.

The Board relied on Vaneecloo’s disclosure that “the 

amplification of the high-pitched sounds captured on the 

anakusis side and perceived by transcranial route by the 

contralateral ear allowed for a significant rise in sound perception thresholds of frequencies between 1,000 Hz and 

4,000 Hz.” J.A. 59 (citing J.A. 788). Based on that statement, the Board found that Vaneecloo discloses amplifying

treble frequencies more than bass frequencies. See J.A. 

59–62. Vaneecloo’s disclosure explicitly states that the 

study involved amplification of treble frequencies. J.A. 

788. Vaneecloo also notes that “high-pitched sounds reach 

the ear opposite the source with an attenuation that increases proportionately with the frequency of the sound,” 

indicating that high-pitched sounds must be amplified 

more than low-pitched sounds. J.A. 783; see J.A. 59. Other 

record evidence further supports the notion that Vaneecloo

discloses amplifying treble frequencies more than bass frequencies. The BAHA Classic 300 device available at the 

time of the Vaneecloo study9 was capable of adjusting treble and bass frequencies relative to each other. J.A. 1414

(“The low frequency response can be adjusted using the 

tone control . . . . Turn the tone control [counterclockwise]

to decrease the low frequency sound.”); J.A. 1443 (“[T]he 

low-frequency response can be adjusted in order to increase 

. . . the treble sound relative to the bass.”). The Board, 

therefore, had substantial evidence to conclude that 

Vaneecloo discloses amplifying treble frequencies more 

than bass frequencies.

9 Cochlear agrees that the BAHA Classic 300 was 

the bone-anchored hearing aid in existence at the time of 

the Vaneecloo study. J.A. 58; J.A. 385.

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C

Claim 6 requires electronic circuitry that converts an 

analog signal to a digital signal, which the Board construed 

as requiring “an analog-to-digital converter.” Cochlear 

does not dispute that the combination of Vaneecloo, Carlsson, and Leysieffer discloses all limitations of claim 6. But 

Cochlear challenges the Board’s finding that a relevant artisan would have been motivated to combine the signal processor disclosed in Leysieffer with the hearing aid disclosed 

by the combination of Vaneecloo and Carlsson. 

We reject that challenge, concluding that the Board’s 

finding is supported by substantial evidence. Oticon’s expert, Dr. Popelka, asserted that a relevant artisan would 

have been motivated to modify the Vaneecloo/Carlsson device to include an analog-to-digital converter in order to obtain the advantages associated with digital processing (e.g., 

real-time and multi-channel audio signal processing; feedback reduction; more closely matching the needs of the individual patient). J.A. 737–38. Leysieffer itself discusses 

the benefits of digital signal processing in bone-anchored 

hearing aids, including adapting for patient-specific circumstances and updating processing software without removing the implanted part of the hearing aid. J.A. 921,

931. In light of that evidence, and the absence of persuasive contrary evidence that the Board had to credit, the 

Board reasonably found a motivation to combine Leysieffer 

with Vaneecloo and Carlsson.10

10 Cochlear additionally argues that the Board did 

not analyze the motivation to combine references in light 

of the claim preamble. As discussed above, however, the 

preamble is not limiting.

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D

Claim 11 requires the external part of the hearing aid 

to transmit power to the internal part by induction. The 

Board found that Hough’s disclosure of an external electromagnetic coil that generates an alternating current, 

thereby causing the implanted magnet to vibrate, meets 

the induction limitation. J.A. 78–81 (citing J.A. 1097–98); 

see also J.A. 1098 (“When the current is passed through the 

external coil . . . alternating electromagnetic fields cause 

the magnet implanted in the temporal bone to vibrate.”). 

Cochlear challenges the Board’s finding that Hough anticipates claim 11, arguing that because there is no voltage or 

current generated in the internal part of Hough, it is not 

powered by induction. We reject this challenge.

Cochlear does not challenge the Board’s construction of 

“induction” to mean, without further qualification, “electromagnetic induction.” Appellant’s Br. 29. Although Cochlear earlier disputed the Board’s construction of “power”—

which the Board declined to limit to electric power—Cochlear’s argument on appeal focuses only on the construction 

of “induction.” Appellant’s Br. 29–30; J.A. 41–45. Cochlear 

does not challenge the Board’s understanding of Hough. 

Instead, Cochlear argues that “electromagnetic induction” 

necessarily requires the generation of voltage or current in 

the internal part, a limitation that the Board specifically 

excluded from its construction of “induction.” J.A. 44–45.

We are not persuaded. Cochlear has not established a 

plain meaning of “electromagnetic induction” (or “power”)

as requiring a voltage or current on the receiving end. Nor 

does the ’040 patent specification require a particular 

structure or the generation of voltage or current in the internal part. See, e.g., ’040 patent, col. 3, lines 11–14. Particularly for the vibrator, the ’040 patent describes the 

element in only general terms. Id., col. 3, lines 9–11; see 

also id., col. 2, lines 50–53; id., Fig. 2. We therefore affirm 

the Board’s finding that Hough anticipates claim 11.

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E

Claim 12, which depends on claim 11, further requires 

the external part of the hearing aid to charge, by induction, 

a rechargeable battery in the internal part. Cochlear does 

not dispute that the combination of Hough and Leysieffer 

teaches every limitation of claim 12. Cochlear argues only 

that the Board did not have substantial evidence to find a 

motivation to combine Hough with Leysieffer because the 

internal part in Hough—a magnet—is not powered by a

battery.

We disagree. The Board had substantial evidence to 

find that moving the battery to an internal part of the hearing aid would allow for a smaller and more aesthetically 

pleasing external part, a benefit that would have motivated 

a relevant artisan to combine the two references. J.A. 82–

85. The prior art specifically notes a patient preference for 

hearing aids with smaller, more discrete external parts, 

which can be achieved by moving external elements of the 

device to the internal part. J.A. 83 (citing J.A. 918–19, 

1343); see also J.A. 918–19 (visible external parts “stigmatize the wearer and therefore are not willingly worn,” and 

for these devices, “it now seems to be a good idea to design 

the systems such that they can be completely implanted”). 

Moving the battery to an internal part reduces the size of 

the external part even if the internal part itself does not 

require power, as is the case for Hough.

Cochlear lastly argues that Hough teaches away from 

using its disclosed device in patients with profound hearing 

loss. See J.A. 1099. Because the preamble is not limiting, 

and there is therefore no limitation on the type of hearing 

loss to be treated by the claimed hearing aid, this argument 

is not persuasive.

III

On cross-appeal, Oticon argues that the Board erred in 

determining that it could not conduct a prior-art analysis 

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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 17

for claims 7–10 and, on that sole basis, ruling that those 

claims had not been proved unpatentable. The Board concluded that because these claims contain means-plus-function limitations, without a corresponding structure 

disclosed in the specification, it could not construe the 

claims in order to compare the claim requirements with the 

prior art. We hold that the Board did not err as to claims 

7–9, but did err as to claim 10.

A

Where a claim contains a requirement that must be 

met by any device or process within its scope, and the 

meaning of that requirement is entirely unknown, the 

claim cannot be compared to the prior art for purposes of 

an invalidity analysis, and so that analysis cannot be conducted. See Samsung Elecs. America, Inc. v. Prisua Eng’g 

Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020). One such situation can occur when a multi-element claim recites as one 

required element a means for performing a function but 

does not recite a structure for performing that function. If 

the claim is in that format, 35 U.S.C. § 112, ¶ 6, states that 

the claim scope is defined based on what the specification 

sets out as corresponding structures for performing the 

claimed function. 35 U.S.C. § 112, ¶ 6 (claim element defined to mean those structures and equivalents). If the 

specification fails to recite a corresponding structure, then 

there is a wholly undefined claim element: the claim has 

what amounts to an inkblot as a required element of the 

claim. Such a claim logically cannot be compared to prior 

art, because an essential claim element has no discernible 

meaning.

Such a claim is indefinite, Williamson v. Citrix Online, 

LLC, 792 F.3d 1339, 1351–52 (Fed. Cir. 2015), but that is 

not the inquiry in an inter partes review, in which the 

Board may not hold a challenged claim of a patent indefinite. See 35 U.S.C. § 311(b); Cuozzo Speed Techs., LLC v. 

Lee, 136 S. Ct. 2131, 2141–43 (2016); Samsung, 948 F.3d 

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18 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

at 1350–53. The crucial point for purposes of an inter 

partes review of issued claims is that, in the situation just 

described, it is impossible to conduct a prior-art analysis

because there is a required claim element without meaning. In this situation, the Board should “conclude that it 

could not reach a decision on the merits with respect to 

whether petitioner had established the unpatentability of 

those claims under sections 102 or 103.” Samsung, 948 

F.3d at 1353.

The Board here properly did just that for claims 7–9. 

Each of those claims plainly contains at least one required 

means-plus-function claim element for which the specification provides no corresponding structure. In this circumstance, the Board’s necessary course of action was to 

conclude that unpatentability of claims 7–9 could not be 

shown. We therefore affirm the Board’s ruling as to claims 

7–9.

Such a necessary rejection of the petitioner’s prior-art 

challenge rests on a deficiency of the patentee’s making, 

not the petitioner’s. We have accordingly held, and here 

reiterate, that “in cases in which the Board cannot reach a 

final decision as to the patentability of certain claims because it cannot ascertain the scope of those claims with reasonable certainty, the petitioner would not be estopped by 

35 U.S.C. § 315(e) from challenging those claims under sections 102 or 103 in other proceedings.” Samsung, 948 F.3d 

at 1353 n.3. 

B

Claim 10 is different in a crucial respect. It does not 

contain a required claim element in means-plus-function 

form. Claim 10 recites a “directivity means comprising at 

least one directivity dependent microphone and/or signal 

processing means in the electronic circuitry.” ’040 patent, 

col. 4, lines 20–24 (emphasis added). The use of the disjunctive creates three alternative subsets of claim coverage—a directivity dependent microphone only; signal 

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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 19

processing means only; and a directivity dependent microphone together with signal processing means. The first alternative is independent of the others, and it has a 

discernible meaning and can be compared to prior art.

The Board correctly held that claim 10 invokes meansplus-function claiming in part, i.e., insofar as it claims a 

“signal processing means.” The Board also correctly held 

that the specification does not recite a corresponding structure for performing the signal processing function. J.A. 25–

27. Oticon does not challenge these holdings. But claim 

10, unlike the other means-plus-function claims, also describes a stand-alone alternative to the signal processing 

means: a directivity dependent microphone, which is a 

clear structure for performing the claimed directivity 

means. The Board did not conclude that this alternative 

(which recites structure in the claim) is even subject to 35 

U.S.C. § 112, ¶ 6, let alone that it flunks the requirement 

of that provision. Rather, it relied entirely on the presence 

of the signal-processing-means alternatives in the claim to 

deem a prior-art analysis impossible. J.A. 26–29. That was 

error.

For present purposes, we may assume that claim 10 is 

indefinite because it includes what is tantamount to an 

inkblot as an alternative way of coming within its boundaries. But Samsung establishes that indefiniteness of a 

claim does not always imply inability to conduct a prior-art 

analysis needed for an inter partes review. See Samsung, 

948 F.3d at 1352–53, 1355 (remanding for the Board to proceed despite one kind of indefiniteness, based on mixing 

product and process elements in a claim). The questions 

are different. Here, even if claim 10 is indefinite, such a 

conclusion would not imply that it is incapable of being 

compared to prior art to determine if one of its alternatives 

is anticipated or would have been obvious on the grounds 

asserted.

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20 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

We vacate the Board’s ruling as to claim 10 and remand. The Board should consider on remand whether the 

directivity-dependent-microphone alternative is outside 

the scope of § 112, ¶6, because it recites a structure (the 

directivity dependent microphone) that sufficiently corresponds to the claimed directivity means. Sage Prods., Inc. 

v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 

1997) (even if a claim uses the term “means,” “where a 

claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to 

perform entirely the recited function, the claim is not in 

means-plus-function format”); see also Williamson, 792 

F.3d at 1349; cf. Media Rights Techs., Inc. v. Capital One 

Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015). The Board 

also should consider whether any asserted prior-art challenges render the directivity-dependent-microphone alternative within claim 10 unpatentable, if considered on its 

own, and whether, if so, claim 10 as a whole is unpatentable on that ground. See In re Cuozzo Speed Techs., LLC,

793 F.3d 1268, 1281 (Fed. Cir. 2015); see also In re Klein, 

987 F.2d 1569, 1570 (Fed. Cir. 1993).

We emphasize that we go no farther in vacating and 

remanding with respect to claim 10 than to hold that a 

prior-art analysis is not made impossible, in the context of 

the “and/or” claim at issue, by the impossibility of such an 

analysis as to other alternatives in such a disjunctive formulation.

IV

We affirm the Board’s decision that claims 4–6 and 11–

12 are unpatentable and that claims 7–9 have not been 

proven unpatentable. We vacate the Board’s decision that 

claim 10 has not been proven unpatentable, and we remand for further proceedings on that claim.

Each party shall bear its own costs.

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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 21

AFFIRMED IN PART, VACATED IN PART, AND 

REMANDED

Case: 19-1105 Document: 53 Page: 21 Filed: 05/15/2020
United States Court of Appeals 

for the Federal Circuit ______________________

COCHLEAR BONE ANCHORED SOLUTIONS AB,

Appellant

v.

OTICON MEDICAL AB, OTICON MEDICAL LLC, 

WILLIAM DEMANT HOLDING A/S,

Cross-Appellants

______________________

2019-1105, 2019-1106

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

01018, IPR2017-01019.

______________________

NEWMAN, Circuit Judge, concurring in part, dissenting in 

part.

I concur in the court’s decision concerning claims 7–10. 

However, the Board erred in its invalidation of claims 4–6, 

11, and 12,1 and my colleagues err in sustaining that ruling.

The invention in United States Patent No. 7,043,040 

(“the ’040 patent”) is a hearing aid for use in single-side 

1 Cochlear Bone Anchored Sols. AB v. Oticon Medical AB, IPR2017-01018, Paper No. 52, at 48–86 (P.T.A.B. 

Aug. 21, 2018) (“Board Op.”).

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2 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

deafness, or “unilateral hearing loss.” Cochlear Bone Anchored Solutions AB (“Cochlear”) explains that single-side 

deafness is usually due to damage to one ear such that the

ear cannot perceive sound, and is not remediable by simply 

increasing amplification to that ear. The experts agreed 

that there was an unmet need for effective remedy. However, my colleagues find the system in the ’040 patent to be 

obvious, although the system escaped the many persons 

studying the problem and seeking solution, as seen in the 

prior art.

In finding the ’040 patent’s system obvious, the court 

employs an improper analytic technique. The court first 

removes major limitations from the claims, and then applies selected pieces of prior art to the residue. This is 

achieved by holding that the opening clause of all the 

claims is “not limiting,” whereby the claims are freed of 

critical limitations and are then held to embrace prior art 

that is excluded from the ’040 system by the introductory 

statement. My colleagues dispose of these limitations by 

designating the introductory clause as a mere “preamble” 

that does not limit the claims—although the clause states 

limitations fundamental to the ’040 invention. It is incorrect to remove such claim limitations when they describe 

substantive aspects of the invention, and the error is compounded when, as here, the court then broadens the residue of the claim into obviousness over prior art that is 

disavowed by the preamble.

The claim is viewed as a whole

Claims 4–6, 11, and 12 all depend from claim 1, and 

start with the following clause:

1. A bone-conducting bone-anchored hearing aid 

apparatus for sound transmission from one side of 

a patient’s head to the patient’s cochlea on another 

side of the patient’s head for rehabilitation of unilateral hearing loss, . . . .

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COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB 3

The court rules that this entire clause is “not limiting,” and 

thereby opens the claims to prior art that is distinct from 

the ’040 invention, prior art that is distinguished by the 

limitations in this clause. As stated in In re Bulloch, 604 

F.2d 1362, 1365 (CCPA 1979), the “introductory claim language . . . is more than a mere statement of purpose; and 

that language is essential to particularly point out the invention defined by the claims.”

This introductory claim language provides the “understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works 

v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. 

Cir. 1989). The proper analytic method is to determine obviousness of the invention as a whole and the claims as a 

whole in light of the prior art as a whole. See In re Gorman, 

933 F.2d 982, 986 (Fed. Cir. 1991) (“[T]he test is whether 

the teachings of the prior art, taken as a whole, would have 

made obvious the claimed invention.”). It is a distortion to 

hold that the obviousness determination does not include 

consideration of the introductory words of the claim.

Claims cannot enlarge what is described in the specification, but neither can the claims be redacted to provide a 

broader focus for prior art. Determination of obviousness 

(and anticipation) is of the invention that is claimed, with

claims that are viewed in light of the specification. See 

United States v. Adams, 383 U.S. 39, 48–49 (1966) (“While 

the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly, it 

is fundamental that claims are to be construed in the light 

of the specifications and both are to be read with a view to 

ascertaining the invention.”) (internal citations omitted).

The court’s analysis produces major changes in the relation of the claimed invention to the prior art; as illustrated in the majority opinion at page 14 n.10, where the 

court disposes of the obviousness analysis by stating that 

there is no need to “analyze the motivation to combine 

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4 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

references in light of the claim preamble” because “the preamble is not limiting.”

The opinion distorts the ’040 patent’s invention by stating: “Because the preamble is not limiting, [] there is therefore no limitation on the type of hearing loss to be treated 

by the claimed hearing aid.” Maj. Op. at 16. It is, however, 

stated throughout the patent documents that the ’040 invention is directed to unilateral hearing loss. See, e.g., ’040 

patent, Abstract (“A hearing aid apparatus is intended 

for . . . rehabilitation of patients with unilateral hearing 

loss.”); ’040 patent, col. 1, ll. 5–11 (“The present invention 

relates to a hearing aid . . . for rehabilitation of patients 

with unilateral hearing loss.”). This is the invention for 

which patentability is determined. See Jansen v. Rexall 

Sundown, Inc., 342 F.3d 1329, 1333–34 (Fed. Cir. 2003) 

(the preamble is a statement of the purpose of the invention).

Here, the “specification makes clear that the inventors 

were working on the particular problem” of an effective 

treatment for unilateral hearing loss, not on “general improvements” in hearing aids. Corning Glass, 868 F.2d at 

1257; see ’040 patent, col. 1, ll. 5–11. The court’s exclusion 

of the “preamble” from the description of the claimed invention underlies the court’s entire analysis, and leads to 

the court’s erroneous ruling of invalidity.

The invention described and claimed in the 

’040 patent is not obvious from the prior art

The Board recognized that the ’040 patent’s hearing device is not simply a combination of known elements, and 

stated: “we do not disagree with Patent Owner’s contention 

that the proposed modification would require ‘substantially 

modifying the device.’” Board Op. at 85. However, the 

Board then itself modified the device by removing the preamble’s limitations from the claims.

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Recourse to “broadest reasonable interpretation” does 

not permit an interpretation that is broader than that 

which is described and claimed. See Organik Kimya AS v. 

Rohm & Haas Co., 873 F.3d 887, 892 (Fed. Cir. 2017) 

(“Even under the broadest reasonable interpretation, the 

Board’s construction cannot be divorced from the specification and the record evidence.”) (internal quotation marks 

omitted). That interpretation must be consistent with the 

specification and the prosecution history, and must be the 

reasonable interpretation that would be reached by a person of skill in the field of the invention.

For example, there is dispute about the meaning of “induction” in claims 11 and 12. Oticon argues that “induction” should be broadly construed to encompass Hough’s 

magnet, although the experts agreed that induction requires generation of current or voltage in the receiver. The 

Board, and now this court, hold that claim 11 is anticipated 

by the Hough device, although the Board recognized that 

“Hough does not include an internal receiving conductor.” 

Board Op. at 84. The Board held that Hough anticipates 

claim 11 even though the experts for both sides agreed that 

Hough’s magnet does not serve as a conductor. The court 

errs in holding that Hough’s different system “anticipates” 

the ’040 patent claims. See MEHL/Biophile Int’l Corp. v. 

Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“anticipation” requires that the invention is described in a single 

reference disclosing every limitation of the claims).

The question of obviousness includes determining

whether the prior art suggests producing the claimed combination and with a reasonable expectation of success. 

Here, no prior art suggests the combination that is described and claimed in the ’040 patent. It appears undisputed that at the time of this invention, transcranial 

attenuation was not even considered in bone-anchored 

hearing devices. Reply Br. 21–22 (citing J.A. 464–65 (“[A]t 

the critical date, [hearing devices] were primarily used to 

treat conductive hearing loss (CHL), where sound 

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6 COCHLEAR BONE ANCHORED v. OTICON MEDICAL AB

vibrations are sent to the normal functioning cochlea, not 

an injured cochlea. . . . TA [transcranial attenuation] was 

not a consideration. When treating CHL, sound vibrations 

are not being transmitted to the opposite side of the head 

(and thus do not need to travel very far within the skull), 

and therefore TA is not a concern.”); J.A. 2352–53, ¶ 21 

(“[S]ince sound waves are not needed to travel across the 

skull to the cochlea on the other side of the head (in the 

treatment of conductive hearing loss), transcranial attenuation is not an important consideration.”).

In sum, the analysis by the Board, and now by my colleagues, is contrary to the laws of obviousness and anticipation. There is no suggestion in the prior art of this new 

and useful device. See Interconnect Planning Corp. v. Feil, 

774 F.2d 1132, 1143 (Fed. Cir. 1985) (“[T]here must be 

some reason for the combination other than the hindsight 

gleaned from the invention itself.”). Nonetheless, the court 

here uses the ’040 patent’s teachings to select various aspects from the prior art, and then combines these selections 

with the template of the ’040 patent, having removed the 

limitations of the claims’ introductory clause. From this 

flawed analysis, and its flawed conclusion, I respectfully 

dissent.

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