PTAB

IPR2020-00190

Med El Elektromedizinische GeraETe GesmbH v. Advanced Bionics AG

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electric and Acoustic Stimulation Fitting Systems and Methods
  • Brief Description: The ’747 patent discloses a system for modifying the operational parameters of hearing devices that provide both acoustic and electric stimulation. The system comprises a computer with software configured to communicate with and adjust devices, such as a hearing aid and a cochlear implant, that are situated in the same ear.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1 and 3-7 are anticipated by Anderson

  • Prior Art Relied Upon: Anderson (Patent 5,721,783).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Anderson disclosed every limitation of claim 1. Anderson’s system included a remote processor unit (RPU) with a digital signal processor, which constituted the claimed "computer provided with access to software." This RPU was configured to modify parameters for both an acoustic hearing aid earpiece and an electric cochlear implant. Critically, Anderson’s figures and description explicitly showed these acoustic and electric components being equipped for use in the same ear. Petitioner asserted that the RPU’s software was configured to modify parameters for both devices, thus meeting the core limitations of independent claim 1. For dependent claims, Anderson was alleged to disclose wireless communication (claim 3), the known existence of prior art wired systems (rendering claim 4 anticipated or obvious), a display on the RPU for evaluating parameters (claim 5), software for performing hearing tests to evaluate operational data (claim 6), and software that determines gain-versus-frequency parameters, which a POSITA would understand as mapping patient responses (claim 7).

Ground 2: Anticipation - Claims 1, 2, 4, and 5 are anticipated by Leysieffer

  • Prior Art Relied Upon: Leysieffer (Application # 2001/0031996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Leysieffer’s system, which included a PC-based external programming system and an internal microcontroller, met the "computer with software" limitation. This system was used to modify parameters of a hearing prosthesis having both an "electromechanical transducer" (acoustic element) and an "intracochlear stimulation electrode array" (electric element). Leysieffer’s figures illustrated these elements situated in the same ear, thereby providing both acoustic and electric stimulation as required by claim 1. For dependent claims, Petitioner argued that Leysieffer’s telemetry system and data bus served as the programming interface unit (claim 2), its use of wired feed lines between modules met the wired communication limitation (claim 4), and its PC-based programming system inherently included a display for modifying parameters (claim 5).

Ground 3: Obviousness - Claims 1, 2, and 4-7 are obvious over Dooley in view of von Ilberg 1999

  • Prior Art Relied Upon: Dooley (WO 92/08330) and von Ilberg 1999 (a journal article titled "Electric-Acoustic Stimulation of the Auditory System").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Dooley taught nearly all elements of the challenged claims, including a personal computer-based programming unit for modifying the parameters of a bimodal system having both an acoustic hearing aid and an electric cochlear implant. However, Dooley primarily described a contralateral (opposite ear) configuration. The von Ilberg 1999 reference was introduced to supply the teaching of an ipsilateral (same ear) arrangement, which it explicitly disclosed and found to provide improved, more natural-sounding hearing.
    • Motivation to Combine: A POSITA would combine Dooley’s fitting system with the ipsilateral configuration taught by von Ilberg 1999 to achieve the demonstrated benefits of same-ear stimulation. Petitioner argued that any earlier concerns about hearing damage from same-ear implants, which may have motivated Dooley’s contralateral design, had subsided by the late 1990s, making the combination a logical step to improve patient outcomes.
    • Expectation of Success: A POSITA would have had a high expectation of success because von Ilberg 1999 demonstrated that the central auditory system could effectively integrate simultaneous acoustic and electric stimulation in the same ear without interference, leading to a predictable improvement in hearing quality.
  • Additional Grounds: Petitioner asserted additional challenges, including that Dooley alone anticipates the claims (arguing the "same ear" limitation is a non-structural statement of intended use), that claims 1, 2, 4, and 5 are obvious over Leysieffer and Harrison (WO 00/69512), and that claim 8 is obvious over combinations including Leysieffer and von Ilberg ’604 (Patent 6,231,604).

4. Key Claim Construction Positions

  • "electric-acoustic processor": Petitioner did not propose a specific construction but relied on the definition provided in the ’747 patent’s specification. The patent defines the term as a system that can include "any combination of the elements of cochlear implant systems and hearing aid systems" to provide both acoustic and electric stimulation signals to the same ear. This broad definition was central to Petitioner's arguments that the combined-modality systems in Anderson, Leysieffer, and Dooley met this limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • "Situated in the Same Ear" as an Intended Use Limitation: A central contention, particularly for the anticipation ground against Dooley, was that the claim 1 limitation "wherein the...devices...are situated in the same ear" is a statement of intended use, not a structural limitation. Petitioner argued that Dooley disclosed the necessary hardware (a computer, hearing aid, and cochlear implant) and software, and that the apparatus itself does not change structurally whether the components are placed in the same or opposite ears. Therefore, because the prior art apparatus was capable of the claimed use, it anticipated the claim regardless of whether it explicitly described an ipsilateral arrangement.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8 of the ’747 patent as unpatentable.