In Plantronics, Inc. v. Aliph, Inc., No. 12-1355 (Fed. Cir. July 31, 2013), the Federal Circuit
reversed-in-part and vacated-in-part the district court's partial SJ of noninfringement and invalidity for obviousness, and remanded for further proceedings.

Plantronics, Inc. ("Plantronics") filed suit against Aliph, Inc. and Aliphcom, Inc. (collectively "Aliph"), alleging infringement of U.S. Patent No. 5,712,453 ("the '453 patent").  The '453 patent is directed to a concha-style stabilizer for headsets transmitting sounds to the ear of a user.  Independent claim 1 recites "[a]n apparatus for stabilizing a headset . . . , the apparatus comprising:  . . . a resilient and flexible stabilizer support member . . . ," and independent claim 10 recites "[a] headset comprising . . . a concha stabilizer . . . ."  Slip op. at 5.

The district court construed the terms "stabilizer support member" in claim 1 and "concha stabilizer" in claim 10 and, based on its constructions, granted SJ of noninfringement.  The district court also granted SJ of invalidity for obviousness of the asserted claims.  Plantronics appealed.

"The election of an invention in response to an ambiguous restriction requirement . . . cannot be said to provide any guidance forming a basis for narrowing a broadly drafted claim."  Slip op. at 11 (citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)).

On appeal, the Federal Circuit held that the district court erred in construing the terms "stabilizer support member" and "concha stabilizer."  The Court reasoned that by construing "stabilizer support member" and "concha stabilizer" as "elongated" structures, further defined by the district court as "longer than it is wide," the district court introduced a narrowing structural limitation to the claims.  Id. at 8 (citation omitted).  In the Court's view, based on the claim language, the specification, and the prosecution history, "[t]hose terms require a meaning that is not as limiting as the district court imposed."  Id.  With regard to the prosecution history, the Court stated that Plantronics's "election of an invention in response to an ambiguous restriction requirement . . . cannot be said to provide any guidance forming a basis for narrowing a broadly drafted claim."  Id. at 11 (citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)).  In particular, the Court rejected Aliph's argument that an election during prosecution related to the form of the stabilizer support:  "We cannot discern from the correspondence between the PTO and Plantronics whether the 'stabilizer support member' and the 'concha stabilizer' were interpreted by any party to contain particular structural limitations."  Id. at 13-14.  The Court concluded that the '453 patent supports broader constructions, and construed the terms "stabilizer support member" and "concha stabilizer" without requiring an "elongated" structure that is "longer than it is wide."  Id. at 14.  As a result of the new construction, the Court vacated the district court's SJ of infringement and remanded for further proceedings.

Regarding invalidity, the Federal Circuit held that the district court erred in granting SJ of obviousness.  The Court noted that "[t]he 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."  Id. at 16.  The Court noted that the district court did not cite any expert testimony indicating that there was a motivation to combine the prior art references, instead determining that common sense provided the motivation.  The Court concluded that although the obviousness analysis is somewhat flexible, the record lacked the necessary reasoning by the district court to support its determination that common sense would provide the motivation to combine.

Further, the Court held that the district court erred by reaching its obviousness conclusion before considering Plantronics's objective evidence of nonobviousness, which included copying and commercial success.  The Court stated that "[t]he significance of this fourth Graham factor cannot be overlooked or by relegated to 'secondary status,'" noting that "[t]he objective considerations, when considered with the balance of the obviousness evidence in the record, guard as a check against hindsight bias."  Id. at 19 (citations omitted).  The Court concluded that the district court's opinion lacked "sufficient findings and reasoning to permit meaningful appellate scrutiny."  Id. at 21 (quoting OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 707 (Fed. Cir. 2012)).

The Court further stated that it could not discern whether the district court, in this SJ context, drew all justifiable inferences in favor of Plantronics and found no disputed issues of material fact to support its holding with respect to obviousness.  The Court concluded that the objective evidence of nonobviousness raises genuine issues of material fact, and thus reversed the district court's grant of SJ of invalidity.

Judges: Rader, O'Malley, Wallach (author)

[Appealed from N.D. Cal., Magistrate Judge Zimmerman]

This article previously appeared in Last Month at the Federal Circuit, August 2013

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