Patent Attorney Gauges Ongoing Cochlear, US University Infringement Suit

16 August 2022

Patent Attorney Gauges Ongoing Cochlear, US University Infringement Suit

As Australian biotech company Cochlear and the University of Pittsburgh engage in a patent infringement dispute in an American court, Dr. Simon Potter, a principal at Spruson & Ferguson in Sydney, said it will be interesting to see how the case will end up.

The university slapped the patent infringement suit against the Sydney-based firm, developer of cochlear implant systems which aid people with hearing problems.

Among its products are the Nucleus 6 and 7 implants with a sound processor that works via wireless technology. University of Pittsburgh claimed it owns the patent for these wireless technologies and said Cochlear should pay damages and royalties. The patent was filed in 2008.

Cochlear raised a counterclaim, saying it developed the technology first and made products using the technology available in the market prior to the patent filing. This renders the patent invalid.

“It will certainly be interesting to see how this litigation pans out with a lot riding on the outcome from Cochlear’s perspective given it very recently lost another infringement action in 2020 to the tune of US$268 million in damages awarded to two other US competitors,” he added, referring to an earlier patent-related case involving the California-based Alfred E. Mann Foundation for Scientific Research and Advanced Bionics, maker of cutting-edge cochlear implant devices.

Both organizations own patents for implantable cochlear stimulators. Cochlear appealed to lessen the damages but the court ruled against this.

According to Potter, it is interesting to note that when the university first accused the biotech firm of patent infringement in 2021, the latter stated that none of its products infringe the claims of the patent. Cochlear said the infringement allegation “relies on a flawed reading of its patent that improperly attempts to ensnare technology far afield of anything the patent actually covers,” as reported by The Sydney Morning Herald.

“This suggests that apart from asserting the argument that it was already publicly exploiting the technology before the patent was filed, Cochlear may also attack the patent on the allegation that its claims are too broad and seek to have them narrowed or invalidated on that ground to potentially avoid the infringement issue that way,” explained Potter.  

“Although it is not clear whether Cochlear was already aware of the University of Pittsburgh patent and indeed the subject patent of the earlier 2020 litigation, it would be interesting to have insight into the internal mechanics of Cochlear’s clearance searching and freedom to operate assessment procedures in what is a very crowded technical area, given the significant fallout from the 2020 litigation and the potential for a similarly damaging outcome in the present circumstances,” he added.

“Regardless, the outcome of the 2020 litigation showed that if it was the case that Cochlear was aware of the Alfred E. Mann Foundation patent, its risk assessment was perhaps misguided given the outcome of the litigation and it will certainly be hoping that the same scenario does not unfold in the latest round of US litigation.”





Espie Angelica A. de Leon

Law firms

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