The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending August 2, 2013. David Kuklewicz and Mike Connor prepared this edition.
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Claim Interpretation: Intrinsic Evidence: Specification
Claim Interpretation: Intrinsic Evidence: Prosecution Disclaimer
Litigation Practice and Procedure: Procedure: Summary Judgment: Sufficiency of Evidence
Plantronics, Inc. v. Aliph, Inc., et al., No. 12-1355 (Fed. Cir. N.D. Cal.) July 31, 2013. Opinion by Wallach, joined by Rader and O’Malley.
In reversing the district court’s claim constructions, the Federal Circuit held that an election to prosecute an invention and species in response to an ambiguous Patent and Trademark Office (“PTO”) restriction requirement did not narrow the scope of the claims where the specification supports broader constructions. Accordingly, the Federal Circuit vacated and remanded the district court’s finding of no infringement. Further, the Federal Circuit reversed the district court’s grant of summary judgment of obviousness, as the court had failed to consider all objective evidence of nonobviousness prior to reaching its conclusions. Finally, the Federal Circuit vacated the district court’s judgment invalidating patent claims that were not at issue in the litigation.
In January of 2009, Plantronics, Inc. (“Plantronics”) filed suit against Aliph, Inc. and Aliphcom, Inc. (collectively “Aliph”) in the U.S. District Court for the Northern District of California, alleging infringement of U.S. Patent No. 5,712,453 (“the ’453 patent”), which relates to headsets used with cell phone receivers. In October of 2011, the district court issued a claim construction order in which the court imposed a narrowing structural limitation on the relevant terms. In March of 2012, the district court granted-in-part Aliph’s motion for summary judgment of noninfringement and invalidity, finding that the accused products did not infringe asserted Claims 1 and 10, and holding that the asserted claims were invalid as obvious. The district court further held that unasserted claims were invalid as obvious. Plantronics appealed.
In reversing the district court’s claim constructions for the terms “stabilizer support member” and “concha stabilizer,” the Federal Circuit held that the terms require a meaning that is not as limiting as that imposed by the district court because the claims are drafted broadly and the specification does not limit the claimed apparatus to any particular structure. Aliph argued that the claims of the ’453 patent should be limited to the single invention depicting a single embodiment having one “elongated” structure that Plantronics chose to pursue in response to an ambiguous PTO restriction requirement. The Federal Circuit held that Plantronics’s election of species did not amount to a surrender of claim scope because the PTO’s restriction requirement did not clearly indicate that the four different inventions found were based on differences in structure. Further, figures corresponding to the unelected species also depict “elongated” structures, which refutes any argument that the PTO’s restriction requirement was based on that structural difference. The court further held that because the figures in the ’453 patent are not to scale, they cannot be used to limit the claim terms to a particular structure. Reversing the district court’s claim constructions, the Federal Circuit vacated and remanded the district court’s finding of no infringement.
In reversing the district court’s summary judgment determination, the Federal Circuit ruled that the district court improperly concluded that the claims of the ’453 patent were invalid as obvious prior to addressing Plantronics’s objective indicia of obviousness, including copying and commercial success. Further, the court ruled that, despite the somewhat flexible nature of an obviousness analysis, the district court’s conclusory determination that “common sense” would have motivated one skilled in the art to combine the relevant references was insufficient. Specifically, the district court failed to cite any expert testimony for support. Accordingly, the Federal Circuit reversed the district court’s summary determination of obviousness as to all of the asserted claims. Finally, the Federal Circuit held that the district court erred in invalidating claims of the ’453 patent that were not at issue, and thus vacated the district court’s judgment related to those claims.
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