Advanced Bionics LLC v. Med El Elektromedizinische GeraETe GmbH

1. Case Identification

• Case #: IPR2019-01572
• Patent #: RE46,057
• Filed: September 4, 2019
• Petitioner(s): Advanced Bionics, LLC
• Patent Owner(s): MED-EL Elektromedizinische Geraete GMBH
• Challenged Claims: 19

2. Patent Overview

• Title: Implantable Magnetic Hearing Aid System
• Brief Description: The ’057 patent relates to a hearing implant system, such as a cochlear implant, designed to be compatible with Magnetic Resonance Imaging (MRI). It purports to solve the problem of harmful torque and demagnetization on an implanted magnet during an MRI by using a cylindrical implant magnet adapted to be freely turnable in response to the external magnetic field.

3. Grounds for Unpatentability

Ground 1: Obviousness over Teissl and Adelberg - Claim 19 is obvious over Teissl in view of Adelberg.

• Prior Art Relied Upon: Teissl (a 1998 university dissertation) and Adelberg (Patent 6,077,299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Teissl disclosed a conventional cochlear implant system with a cylindrical internal magnet and expressly identified the problem of torque and demagnetization from MRI fields. Critically, Teissl suggested a solution: using "an internal magnet which aligns itself within an external magnetic field" to make the implant MR-safe. Adelberg disclosed an implantable medical valve containing the very solution Teissl proposed: a "freely rotating magnetic...rotor...configured to rotate with an external applied magnetic field." Petitioner contended that combining Teissl’s cochlear implant with Adelberg’s freely rotating magnet mechanism renders all limitations of claim 19 obvious.
  • Motivation to Combine: A POSITA seeking to solve the MRI-compatibility problem explicitly described in Teissl would be motivated to incorporate a known solution for aligning an implant magnet with an external field. Teissl’s own suggestion to use a self-aligning magnet would have directed a POSITA to references like Adelberg, which taught such a mechanism. The motivation arose from Teissl’s clear identification of a problem and a proposed path to a solution, which Adelberg provided.
  • Expectation of Success: A POSITA would have had a high expectation of success. Teissl itself predicted that a self-aligning magnet would effectively reduce torque and prevent demagnetization. Because the magnetic principles are well-understood and Adelberg taught a functional rotating magnet, its incorporation into Teissl’s system was expected to work for its intended purpose.

Ground 2: Obviousness over Dormer and Beyar - Claim 19 is obvious over Dormer in view of Beyar.

• Prior Art Relied Upon: Dormer (Patent 4,352,960) and Beyar (Patent 6,127,597).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Dormer disclosed a foundational bio-electronic hearing aid, including a cochlear implant unit with internal and external magnets for alignment and coupling. However, Dormer’s magnet was fixed. Beyar disclosed an implantable prosthesis with a "preferably cylindrical" and "rotatable" magnet designed to be activated by an external magnetic field, including that from an MRI machine. Petitioner argued that modifying Dormer’s standard cochlear implant to replace its fixed magnet with Beyar’s freely rotatable cylindrical magnet would result in the system of claim 19.
  • Motivation to Combine: The motivation was to improve the design of an older cochlear implant system (Dormer) to address the known and worsening problem of MRI incompatibility, especially with the advent of higher-strength MRI machines. A POSITA would combine Beyar’s MRI-compatible rotating magnet technology with Dormer’s implant to reduce MRI-related torque and demagnetization, thereby improving patient safety and device longevity.
  • Expectation of Success: Success would be expected because Beyar taught that its rotatable magnet could function reliably when exposed to MRI fields. Applying this known technique to a standard cochlear implant like Dormer's was a predictable combination of known elements to achieve a known goal.

Ground 3: Obviousness over Teissl, Adelberg, and Dormer - Claim 19 is obvious over the combination of Teissl, Adelberg, and Dormer.

• Prior Art Relied Upon: Teissl (a 1998 university dissertation), Adelberg (Patent 6,077,299), and Dormer (Patent 4,352,960).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. Petitioner argued that the combination of Teissl and Adelberg fully disclosed claim 19. However, to the extent that Teissl might be argued to lack certain basic details of a cochlear implant, Dormer provided a clear example of such a system. Dormer would serve to supply any missing conventional elements, while Teissl would still provide the problem and the suggestion for a self-aligning magnet, and Adelberg would provide the specific implementation of that freely rotating magnet.
  • Motivation to Combine: The primary motivation remained the same as in Ground 1: Teissl’s explicit call to solve the MRI-torque problem with a self-aligning magnet. If a POSITA implementing Teissl's suggestion needed further details on conventional implant construction, they would naturally look to a well-established prior art reference like Dormer. The motivation to then incorporate Adelberg's rotating magnet to solve the problem identified by Teissl would remain unchanged.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core arguments were that the primary references asserted in the petition—Teissl, Adelberg, and Beyar—were never considered, cited, or substantively evaluated by the examiner during prosecution. Petitioner contended this new art was materially different from the art of record and not cumulative, as the examiner did not previously have the benefit of references teaching freely turnable magnets to solve the exact problem addressed by the ’057 patent.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claim 19 of Patent RE46,057 as unpatentable under 35 U.S.C. §103.