CAFC reverses ND CA in Plantronics v Aliph case
A decision of the Northern District of California is altered in the Plantronics v. Aliph case:
In this patent infringement case, Plantronics, Inc.
(“Plantronics”) filed suit alleging that Aliph, Inc. and
Aliphcom, Inc.’s (collectively, “Aliph”) products infringe
U.S. Patent No. 5,712,453, entitled “Concha Headset
Stabilizer” (the “’453 patent”). On March 23, 2012, the
district court granted-in-part Aliph’s motion for summary
judgment of noninfringement and invalidity, construing
certain disputed terms, finding in relevant part that the
accused products do not infringe claims 1 and 10, and
holding the asserted claims invalid as obvious. Plantronics,
Inc. v. Aliph, Inc., No. C09-1714BZ, 2012 WL 994636,
at *12 (N.D. Cal. Mar. 23, 2012) (“Summ. J. Decision”).
The district court’s decision is reversed in part, vacated in part, and remanded for further proceedings.
The terms concha and tragus are discussed in claim 1
Independent claim 1 is representative of the asserted
claims:
1. An apparatus for stabilizing a headset including
a receiver sized to fit between a tragus and an
anti-tragus of an ear, the apparatus comprising:
an ear cushion dimensioned to cover a portion of
the receiver disposed between the tragus and the
anti-tragus;
a resilient and flexible stabilizer support member
coupled to the ear cushion, and dimensioned to fit
within an upper concha with the ear cushion coupled
to the receiver and the receiver disposed between
the tragus and the anti-tragus; and
a concha stabilizer pad coupled to the stabilizer
support member, for contacting the upper concha.
’453 patent col. 5 ll. 10–22 (emphases added).
Within the district court:
On September 19, 2011, the district court issued a
tentative claim construction order, and held its Markman
hearing on September 21, 2011. On October 6, 2011, the
district court issued its claim construction order construing,
in relevant part, the terms “stabilizer support member”
in claim 1 and “concha stabilizer” in claim 10.
Plantronics, Inc. v. Aliph, Inc., No. C09-1714BZ, 2011 WL
4634066, at *4 (N.D. Cal. Oct. 6, 2011). On March 23,
2012, the district court granted summary judgment,
holding the asserted claims were invalid and not infringed.
Of limiting claims to preferred embodiments:
Hence, limiting the
“stabilizing support member” and “concha stabilizer” to an
“elongated” structure that is “longer than it is wide”
would improperly limit the broadly drafted claims to one
preferred embodiment (thereby excluding others) or would
be the result of improperly importing a limitation from
the specification into the claims. Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his claims,
and we will not limit him to his preferred embodiment or
import a limitation from the specification into the
claims.”).
Of species selection:
Accordingly, the PTO directed
Plantronics to elect “a single disclosed species for prosecution
on the merits to which the claims shall be restricted
if no generic claim is finally held to be allowable.” J.A.
380. The PTO also concluded that the application presented
no “generic claim” covering more than a single
species of the invention. In response, Plantronics
“elect[ed], without traverse, to prosecute” only the “Species
of Figures 1a and 1b.” J.A. 384. Plantronics indicated
that “[c]laims 1–6 and 9–12 read on the elected species . . .
AND
Thus, when the patentee
unequivocally and unambiguously disavows a certain
meaning to obtain a patent, the doctrine of prosecution
history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered. Phillips,
415 F.3d at 1317. Plantronics’ election of species of
Figures 1A and 1B did not amount to such a surrender of
claim scope.
The PTO’s restriction requirement did not suggest
that the different inventions it found were based on
differences in structure (i.e., “elongated” versus an
“arch”). Indeed, the PTO found four patentably distinct
inventions in the figures of the ’453 patent without
providing any reasons why in its view the application
presented differing inventions.
AND
The election of an invention in response to an
ambiguous restriction requirement in turn cannot be said
to provide any guidance forming a basis for narrowing a
broadly drafted claim. Omega Eng’g, 334 F.3d at 1325 (We
have “consistently rejected prosecution statements too
vague or ambiguous to qualify as a disavowal of claim
scope.”). Neither the PTO nor Plantronics made any
particular remarks regarding the differences (e.g., in
structure) of what the PTO found to be different inventions,
and while Plantronics elected without traverse the
invention of Figures 1A and 1B,
AND
This case differs from LG Electronics and Acco
Brands. The PTO’s restriction requirement here did not
clearly demarcate the actual differences among the species of inventions, as was done in LG Electronics and Acco Brands. Regarding the restriction requirement imposed in LG Electronics, the PTO required the patentee to elect one of two identified inventions in the application, and the
limitation at issue (never using “valid/invalid bits”) was
found to be relevant only as to the first unelected invention
and not to the second elected invention. 453 F.3d at
1378. In Acco Brands, it was also made clear that certain
embodiments were claimed in other patents, and that the
patent at issue was directed to one particular figure/
embodiment. 346 F.3d at 1079.
As to obviousness:
The gravamen of the parties’ dispute here involved
whether a skilled artisan would have been motivated to
combine certain prior art references, an issue that focuses
heavily on the first and third Graham factors. Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006)
(“[T]he motivation to combine requirement entails consideration
of both the scope and content of the prior art and
level of ordinary skill in the pertinent art aspects of the
Graham test.”) (citation and quotation marks omitted).
and
“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
As to common sense
“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
why common sense compels a finding of obviousness.
See KSR, 550 U.S. at 418; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on obviousness
grounds cannot be sustained by mere
conclusory statements; instead, there must be
some articulated reasoning with some rational
underpinning to support the legal conclusion of
obviousness.”).
In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012). Where,
as here, the necessary reasoning is absent, we cannot
simply assume that “an ordinary artisan would be awakened
to modify prior art in such a way as to lead to an
obviousness rejection.” Id. It is in such circumstances,
moreover, that it is especially important to guard against
the dangers of hindsight bias.
AND
Here, the district court concluded that the ’453 patent
was invalid as obvious before considering objective indicia
of nonobviousness. According to the district court, “[i]t
would have been obvious to one of ordinary skill in the art
to modify the Lieber device to reduce the size of the inthe-
ear receiver while pairing the receiver with a comfortable,
adaptable ear cushion that stabilized the device with
a flexible support member that invoked the ear anatomy
to avoid the use of headsets and earhooks.” Summ. J.
Decision, 2012 WL 994636, at *11. The district court
addressed Plantronics’ objective evidence of nonbviousness—
including copying and commercial success—only
after reaching this conclusion. It stated: “Even accepting
as true Plantronics’ assertions on these secondary considerations,
they do not save Plantronics from summary
judgment here since such secondary considerations simply
cannot overcome a strong prima facie case of obviousness.”
Id. To the extent the district court conducted a post
hoc analysis of objective considerations, it was improper.
This court has consistently pronounced that all evidence
pertaining to the objective indicia of nonobviousness
must be considered before reaching an obviousness
conclusion. See, e.g., In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1076 (Fed. Cir. 2012). The significance of this fourth
Graham factor cannot be overlooked or be relegated to
“secondary status.” See id. at 1079.
Osram is cited:
This argument is without merit because “[i]t is
not our role to scour the record and search for something
to justify a lower court’s conclusions, particularly at the
summary judgment stage.” OSRAM, 701 F.3d at 707.
“[T]his court must be furnished sufficient findings and
reasoning to permit meaningful appellate scrutiny.” Id.
(citation and internal quotation marks omitted). The
district court’s opinion lacked such findings and reasoning.
In this patent infringement case, Plantronics, Inc.
(“Plantronics”) filed suit alleging that Aliph, Inc. and
Aliphcom, Inc.’s (collectively, “Aliph”) products infringe
U.S. Patent No. 5,712,453, entitled “Concha Headset
Stabilizer” (the “’453 patent”). On March 23, 2012, the
district court granted-in-part Aliph’s motion for summary
judgment of noninfringement and invalidity, construing
certain disputed terms, finding in relevant part that the
accused products do not infringe claims 1 and 10, and
holding the asserted claims invalid as obvious. Plantronics,
Inc. v. Aliph, Inc., No. C09-1714BZ, 2012 WL 994636,
at *12 (N.D. Cal. Mar. 23, 2012) (“Summ. J. Decision”).
The district court’s decision is reversed in part, vacated in part, and remanded for further proceedings.
The terms concha and tragus are discussed in claim 1
Independent claim 1 is representative of the asserted
claims:
1. An apparatus for stabilizing a headset including
a receiver sized to fit between a tragus and an
anti-tragus of an ear, the apparatus comprising:
an ear cushion dimensioned to cover a portion of
the receiver disposed between the tragus and the
anti-tragus;
a resilient and flexible stabilizer support member
coupled to the ear cushion, and dimensioned to fit
within an upper concha with the ear cushion coupled
to the receiver and the receiver disposed between
the tragus and the anti-tragus; and
a concha stabilizer pad coupled to the stabilizer
support member, for contacting the upper concha.
’453 patent col. 5 ll. 10–22 (emphases added).
Within the district court:
On September 19, 2011, the district court issued a
tentative claim construction order, and held its Markman
hearing on September 21, 2011. On October 6, 2011, the
district court issued its claim construction order construing,
in relevant part, the terms “stabilizer support member”
in claim 1 and “concha stabilizer” in claim 10.
Plantronics, Inc. v. Aliph, Inc., No. C09-1714BZ, 2011 WL
4634066, at *4 (N.D. Cal. Oct. 6, 2011). On March 23,
2012, the district court granted summary judgment,
holding the asserted claims were invalid and not infringed.
Of limiting claims to preferred embodiments:
Hence, limiting the
“stabilizing support member” and “concha stabilizer” to an
“elongated” structure that is “longer than it is wide”
would improperly limit the broadly drafted claims to one
preferred embodiment (thereby excluding others) or would
be the result of improperly importing a limitation from
the specification into the claims. Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his claims,
and we will not limit him to his preferred embodiment or
import a limitation from the specification into the
claims.”).
Of species selection:
Accordingly, the PTO directed
Plantronics to elect “a single disclosed species for prosecution
on the merits to which the claims shall be restricted
if no generic claim is finally held to be allowable.” J.A.
380. The PTO also concluded that the application presented
no “generic claim” covering more than a single
species of the invention. In response, Plantronics
“elect[ed], without traverse, to prosecute” only the “Species
of Figures 1a and 1b.” J.A. 384. Plantronics indicated
that “[c]laims 1–6 and 9–12 read on the elected species . . .
AND
Thus, when the patentee
unequivocally and unambiguously disavows a certain
meaning to obtain a patent, the doctrine of prosecution
history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered. Phillips,
415 F.3d at 1317. Plantronics’ election of species of
Figures 1A and 1B did not amount to such a surrender of
claim scope.
The PTO’s restriction requirement did not suggest
that the different inventions it found were based on
differences in structure (i.e., “elongated” versus an
“arch”). Indeed, the PTO found four patentably distinct
inventions in the figures of the ’453 patent without
providing any reasons why in its view the application
presented differing inventions.
AND
The election of an invention in response to an
ambiguous restriction requirement in turn cannot be said
to provide any guidance forming a basis for narrowing a
broadly drafted claim. Omega Eng’g, 334 F.3d at 1325 (We
have “consistently rejected prosecution statements too
vague or ambiguous to qualify as a disavowal of claim
scope.”). Neither the PTO nor Plantronics made any
particular remarks regarding the differences (e.g., in
structure) of what the PTO found to be different inventions,
and while Plantronics elected without traverse the
invention of Figures 1A and 1B,
AND
This case differs from LG Electronics and Acco
Brands. The PTO’s restriction requirement here did not
clearly demarcate the actual differences among the species of inventions, as was done in LG Electronics and Acco Brands. Regarding the restriction requirement imposed in LG Electronics, the PTO required the patentee to elect one of two identified inventions in the application, and the
limitation at issue (never using “valid/invalid bits”) was
found to be relevant only as to the first unelected invention
and not to the second elected invention. 453 F.3d at
1378. In Acco Brands, it was also made clear that certain
embodiments were claimed in other patents, and that the
patent at issue was directed to one particular figure/
embodiment. 346 F.3d at 1079.
As to obviousness:
The gravamen of the parties’ dispute here involved
whether a skilled artisan would have been motivated to
combine certain prior art references, an issue that focuses
heavily on the first and third Graham factors. Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006)
(“[T]he motivation to combine requirement entails consideration
of both the scope and content of the prior art and
level of ordinary skill in the pertinent art aspects of the
Graham test.”) (citation and quotation marks omitted).
and
“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
As to common sense
“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
why common sense compels a finding of obviousness.
See KSR, 550 U.S. at 418; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on obviousness
grounds cannot be sustained by mere
conclusory statements; instead, there must be
some articulated reasoning with some rational
underpinning to support the legal conclusion of
obviousness.”).
In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012). Where,
as here, the necessary reasoning is absent, we cannot
simply assume that “an ordinary artisan would be awakened
to modify prior art in such a way as to lead to an
obviousness rejection.” Id. It is in such circumstances,
moreover, that it is especially important to guard against
the dangers of hindsight bias.
AND
Here, the district court concluded that the ’453 patent
was invalid as obvious before considering objective indicia
of nonobviousness. According to the district court, “[i]t
would have been obvious to one of ordinary skill in the art
to modify the Lieber device to reduce the size of the inthe-
ear receiver while pairing the receiver with a comfortable,
adaptable ear cushion that stabilized the device with
a flexible support member that invoked the ear anatomy
to avoid the use of headsets and earhooks.” Summ. J.
Decision, 2012 WL 994636, at *11. The district court
addressed Plantronics’ objective evidence of nonbviousness—
including copying and commercial success—only
after reaching this conclusion. It stated: “Even accepting
as true Plantronics’ assertions on these secondary considerations,
they do not save Plantronics from summary
judgment here since such secondary considerations simply
cannot overcome a strong prima facie case of obviousness.”
Id. To the extent the district court conducted a post
hoc analysis of objective considerations, it was improper.
This court has consistently pronounced that all evidence
pertaining to the objective indicia of nonobviousness
must be considered before reaching an obviousness
conclusion. See, e.g., In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1076 (Fed. Cir. 2012). The significance of this fourth
Graham factor cannot be overlooked or be relegated to
“secondary status.” See id. at 1079.
Osram is cited:
This argument is without merit because “[i]t is
not our role to scour the record and search for something
to justify a lower court’s conclusions, particularly at the
summary judgment stage.” OSRAM, 701 F.3d at 707.
“[T]his court must be furnished sufficient findings and
reasoning to permit meaningful appellate scrutiny.” Id.
(citation and internal quotation marks omitted). The
district court’s opinion lacked such findings and reasoning.
posted by Lawrence B. Ebert at 2:30 PM
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