By Dennis Crouch
Plantronics is an important case for patent prosecutors both for its discussion of proper restriction/election technique and for its language requiring the consideration of objective indicia of nonobviousness prior to reaching a conclusion of obviousness.
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Plantronics, Inc. v. Aiph, Inc. (Fed. Cir. 2013)
On summary judgment, district court Judge Bernard Zimmerman found Plantronics' concha-style headset patent (5,712,453) to be both invalid (obvious) and not infringed. On appeal, the Federal Circuit has rejected that decision on several grounds.
Impact of Election on Claim Scope: Early in prosecution, the PTO issued a restriction requirement – noting that the original application improperly included multiple inventions. Plantronics elected to limit the claim scope to claim species of "Figures 1a and 1b." Those figures both show the headset stabilizer support as an elongated member while other non-elected figure-species were structurally different (arguably without the elongated member). The district court relied upon that the restriction/election to construe "stabilizer support" as an elongated member that is longer than it is wide. On appeal, the Federal Circuit rejected that claim scope narrowing because the reason for the restriction requirement was not necessarily the elongated structural difference. Judge Wallach writes:
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. Likewise, other figures of the '453 patent depicting other unelected species of the invention also reveal a "stabilizer support" that appears "elongated," which refutes Aliph's contention that the restriction requirement was based on that structural difference. 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. … 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, Plantronics did disagree with the PTO's comments on claim 11 when it responded that claim 11 is a generic claim that read on all the embodiments illustrated in the application. This exchange with the PTO thus does not amount to anything clear or unambiguous to disclaim claim scope otherwise encompassed by the broadly drafted claims.
The court thus indicates that restriction/response do have the potential of limiting claim scope, but not in this case.
Further, the court went on to note the standard rule that structure found in the patent drawings should not be seen as limiting to the claim scope – unless the structure is written into the claims. Further, because the drawings do not provide particular dimensions, they "may not be relied upon to show particular sizes" or proportions. See MPEP 2125.
Because the district court had unduly limited the claim scope, the Federal Circuit vacated the non-infringement finding and remanded for additional review.
Obviousness: The district court also found the claims invalid as obvious. On appeal, the Federal Circuit vacated – finding that the record was not sufficiently clear for such a ruling as a matter of law. Rather, on remand, the issue of obviousness will go to trial.
In its analysis, the district court missed two key points: (1) identifying the motivation for combining prior art references and (2) fully considering objective indicia that may negate obviousness.
Motivation to Combine: It is often the case that combination inventions are deemed nonobvious (and thus patentable) even when all of the claim elements are individually found in the prior art. In KSR v. Teleflex, the Supreme Court noted that there must also be some reasoning as to why someone of skill in the art would seek to combine the reference in the manner claimed. That motivation to combine may be found explicitly or implicitly in market forces; design incentives; as well as by considering the background knowledge, creativity, and common sense of the person of ordinary skill in the art.
Although KSR added flexibility to the process, the motivation to must still be based upon evidence. Here, the district court indicated that "common sense" serves as the motivation. On appeal, the Federal Circuit found that explanation insufficient without more extensive reasoning with evidentiary support. As the court wrote in Mintz, "the mere recitation of the words 'common sense' without any support adds nothing to the obviousness equation."
Objective Indicia of Nonobviousness: The appellate court linked the above discussion of "common sense" with an analysis of objective indicia of nonobviousness – noting that these considerations (such as commercial success, copying, or prior failures) could weigh against a KSR-style finding of common-sense motivation to combine.
Here, the district court did consider the patentee's evidence regarding copying and commercial success however, the appellate panel found that the district court's decision provided insufficient written analysis of the patentee's evidence. In addition the appellate panel found that the lower court had mis-ordered its analysis by first finding a prima facie case of obviousness and then considering whether the objective factors negate that original conclusion. Rather, according to the panel here, the objective indicia of nonobviousness must be considered prior to reaching an obviousness conclusion.
Here, the district court concluded that the '453 patent was invalid as obvious before considering objective indicia of nonobviousness. . . . 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." 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."
When done properly, this ordering could be irrelevant. However, the court argues that including the secondary factors as an integrated element of the analysis helps "guard against the dangers of hindsight bias." The court writes:
Failure to give proper consideration to such evidence, as in this case, can be fatal because "common sense" may not be so apparent in view of objective evidence of nonobviousness (e.g., commercial success and copying), particularly when all reasonable inferences are drawn in favor of the patentee.
In the end, the court sided with the patentee – finding that the evidence presented raise a genuine issue of material fact – sufficient to overcome the summary judgment motion and proceed to trial.
The commercial success of Aliph's alleged copied product and the failure of attempts to combine the prior art elements before the '453 patent provide a genuine issue of material fact as to whether it would be "common sense" to combine the elements in the prior art to arrive at the claimed invention. Because evidence pertaining to objective considerations raises genuine issues of material fact, the district court's decision is reversed as to all the asserted claims in this case.