Addressing the disavowal of claim scope by an election in response to a restriction requirement where the examiner provided no guidance regarding the differences by which he distinguished the patentably distinct inventions, the U.S. Court of Appeals for the Federal Circuit overturned a district court's summary judgment of no infringement, holding that an election in response to such a restriction requirement does not amount to a clear and unmistakable disavowal of claim scope. Plantronics, Inc. v. Aliph, Inc., Case No. 12-1355 (Fed. Cir. July 31, 2013) (Wallach, J.) The Federal Circuit also overturned the district court's grant of summary judgment of obviousness, finding that the lower court improperly concluded the patent was invalid as obvious before considering objective indicia of non-obviousness.
The asserted patent is directed to a concha-style headset for transmitting sound to a user's ear. During prosecution, the U.S. Patent and Trademark Office (USPTO) imposed a restriction requirement, finding four patentably distinct inventions. The USPTO directed the applicant 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." Plantronics, without traverse, elected and prosecuted one of the identified species, which eventually issued as the asserted patent. Neither the USPTO nor Plantronics made any specific remark concerning the differences between what the USPTO found to be patentably distinct inventions. The district court's claim construction limited the claim scope to the elected invention, and, on summary judgment, the district court concluded that the claimed invention was invalid as obvious. Plantronics appealed.
As to the district court's finding of disavowal of claim scope, the Federal Circuit found that, unlike the fact patterns in LG Electronics and Acco Brands, the restriction requirement imposed here "did not clearly demarcate the actual differences among the species of inventions." Because the USPTO gave no reasons as to why the figures represented different species, the Federal Circuit found no guidance forming a basis to limit the broadly drafted claims. As a result, there was no clear or unambiguous disavowal of claim scope. Without direction as to what distinguished the four species of invention, and because the terms at issue were not structurally limited either by the claim language or the corresponding description in the specification, the Federal Circuit reversed the district court's construction limiting the scope to structural aspects exhibited by the figures and vacated the finding of non-infringement.
The Federal Circuit also analyzed the district court's grant of summary judgment of obviousness, explaining that secondary considerations of non-obviousness cannot be "relegated to 'secondary status.'" Rather, the Court explained that secondary considerations of non-obviousness must be considered prior to an obviousness determination as a check against hindsight bias. The Federal Circuit explained that in finding that the patent owner's evidence of secondary considerations "cannot overcome a strong prima facie case of obviousness," the district court erred by engaging in a post hoc analysis of objective considerations of non-obviousness. The Federal Circuit went on to reverse the lower court's decision, finding that in light of Plantronics' evidence of copying and commercial success, and of the "scant consideration of relevant objective evidence" by the lower court, and drawing all justifiable inferences in favor of Plantronics, it could not hold that the claims would have been obvious as a matter of law.
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