Plantronics v. Aliph: Ambiguous Restriction Does Not Limit Scope of Claim

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor  
TitlePlantronics, Inc. v. Aliph, Inc., No. 2012-1355 (Fed. Cir. July 31, 2013).
Issue[1] "[W]hether the district court improperly construed the terms “stabilizer support member” in claim 1 and “concha stabilizer” in claim 10 [because Plantronics elected a species limited to “elongated” structures]." Plantronics, at *7 (text added).
[2] "[W]hether the district court erred in granting Aliph’s motion for summary judgment of obviousness [based on a common sense finding]. " Id. (text added).
Holding[1] “The ‘stabilizer support member’ and the ‘concha stabilizer’ are not structurally limited either in claim language or in their corresponding description in the specification. Likewise, the election of species pertaining to Figures 1A and 1B in response to the restriction requirement does not narrow the claim scope, because the election was made without any indication that the ‘stabilizer support’ and the ‘concha stabilizer’ to one that is ‘longer than [they are] wide.’” Plantronics, at *14.
[2] “[W]hen all of the factual disputes regarding the objective evidence are resolved in favor of Plantronics, we cannot hold that the claims would have been obvious as a matter of law. […] 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.” Plantronics, at *21-22.

Procedural History"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, at *2.
Legal Reasoning (Wallach, O'Malley, C.J. Rader)
Representative claims 1 and 10
Claim 11. An apparatus for stabilizing a headset including a receiver sized to fit between a tragus and an antitragus of an ear, the apparatus comprising: […] a resilient and flexible stabilizer support member coupled to the ear cushion […]; and a concha stabilizer pad coupled to the stabilizer support member, for contacting the upper concha.
Claim 1010. A headset comprising: a receiver sized to fit between a tragus and an antitragus of an ear […]; and a concha stabilizer coupled to the ear cushion and dimensioned to contact an upper concha […].
[1] Claim Construction of "stabilizer support" and "concha stabilizer"
Plain Meaning“The asserted claims are drafted broadly, without bounds to any particular structure. […] [W]hile the claims are instructive as to the general dimensions of a ‘stabilizer support” and a “concha stabilizer,’ they do not require any particular structure, e.g., one that is longer than it is wide. Phillips, 415 F.3d at 1312–13 (providing for a presumption that claim terms are to be given their ordinary and customary meaning).” Plantronics, at *8-9.
... in view of the Specification“Like the claim language, the specification of the ’453 patent does not limit the claimed apparatus to any particular structure. Aliph claims support in a portion of the specification referring to the ‘stabilizer support’ as a member that is ‘elongated.’ ’453 patent col. 2 l. 14. In the very next paragraph, however, the ‘stabilizer support’ is described alternatively as an ‘arch’ or a ‘torus’ ring-shaped structure. Id. col. 2 ll.19–29. 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."  Plantronics, at *9.
Construction Constraints from Prosecution History: Election of Species"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. " Plantronics, at *11.
[2] Analysis of Objective Indicia of Nonobviousness Required When Grounds of Combination is Founded on Common Sense
Standard“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. […] As we have said before though: ‘the mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.’ Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012). Thus, we have required that [obviousness findings] grounded in ‘common sense’ must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. […]” Plantronics, at * 17-18.
Common Sense and Objective Indicia of Nonobviousness“Failure to give proper consideration to such evidence [of objective indicia of nonobviousness], 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. […] 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.” Plantronics, at *18-19 (text added).
“For the foregoing reasons, the district court’s decision is vacated in part, reversed in part, and remanded for further proceedings. To the extent the parties raise arguments based on issues the district court denied on summary judgment, we decline to address them here.” Plantronics, at *22-23.

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