`
`Paper 55
`Entered: July 16, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OTICON MEDICAL AB; OTICON MEDICAL LLC;
`WILLIAM DEMANT HOLDING A/S,
`Petitioner,
`
`v.
`
`COCHLEAR BONE ANCHORED SOLUTIONS AB,
`Patent Owner.
`____________
`
`Case IPR2017-010181
`Patent 7,043,040 B2
`____________
`
`
`
`Before JAMES B. ARPIN, BARBARA A. PARVIS, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`1 Case IPR2017-01019 has been consolidated with the instant proceeding.
`
`
`
`IPR2017-01018
`Patent 7,043,040 B2
`
`
`
`A conference call was held on July 15, 2020, between Administrative
`Patent Judges Wieker, Parvis, and Arpin, and counsel for the parties
`including Mr. D. Richard Anderson and Mr. Eugene Perez, for Petitioner,
`and Ms. Laura Burson, for Patent Owner. The conference call was
`scheduled to discuss the procedure for this case upon remand from the
`U.S. Court of Appeal for the Federal Circuit.
`In accordance with the parties’ pre-conference agreement, no
`additional briefing, submission of additional evidence, or oral argument is
`requested, and none is authorized. Thus, the scope of the issues that the
`Board will consider on remand are limited to: (1) “whether the directivity-
`dependent-microphone alternative [of claim 10] is outside the scope of
`§ 112, ¶6, because it recites a structure (the directivity dependent
`microphone) that sufficiently corresponds to the claimed directivity means”;
`and (2) “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.”2 See Cochlear Bone Anchored Solutions AB
`v. Oticon Medical AB, 958 F.3d 1348, 1360 (Fed. Cir. 2020); see id. at
`1359–60 (“The first alternative is independent of the others, and it has a
`discernible meaning and can be compared to prior art.”). The Board’s
`consideration of these issues will be undertaken consistent with the Federal
`Circuit’s mandate and the guidance set forth in the Patent Trial and Appeal
`
`
`2 Petitioner contends that claim 10 is unpatentable under 35 U.S.C. § 103
`over the combined teachings of Vaneecloo, Carlson, Leysieffer, and
`Lesinski. Pet. 6.
`
`2
`
`
`
`IPR2017-01018
`Patent 7,043,040 B2
`
`
`Board’s Standard Operating Procedure 9.
`Mr. Anderson, for Petitioner, and Ms. Burson, for Patent Owner,
`agreed with this procedure and scope for the proceeding on remand.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that no further briefing, submission of evidence, or oral
`argument is authorized; and
`FURTHER ORDERED that the panel will consider the above-
`identified issues on remand, in accordance with Standard Operating
`Procedure 9.
`
`
`
`PETITIONER:
`D. Richard Anderson
`dra@bskb.com
`
`Eugene Perez
`etp@bskb.com
`
`Lynde Herzbach
`Lynde.herzbach@bskb.com
`
`PATENT OWNER:
`Bruce Chapman
`bchapman@sheppardmullin.com
`
`Laura Burson
`lburson@sheppardmullin.com
`
`
`
`3
`
`
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