Case: Plantronics, Inc. v. Aliph, Inc., No. 2012-1355 (Fed. Cir. July 31, 2013) (precedential). On appeal from N.D. Cal. Before Rader, O’Malley and Wallach.
Procedural Posture: Plaintiff patent-owner Plantronics appealed claim construction, and summary judgment of noninfringement and invalidity (obviousness). The CAFC reversed the district court’s claim construction, vacated summary judgment of noninfringement and remanded the issue, and reversed summary judgment of invalidity.
- Claim Construction: The asserted patent is directed to a concha-style (in-ear) headset that includes a stabilizer to hold it in place within the ear. The district court construed the claim terms “stabilizer support member” and “concha stabilizer” to require an “elongated” structure—“longer than it is wide.” The CAFC held that the intrinsic evidence did not support limiting “stabilizer support member” and “concha stabilizer” to an “elongated” structure.
- Prosecution History Disclaimer (election/restriction): Plantronics did not limit the terms “stabilizer support member” and “concha stabilizer” to “elongated” structures by electing a “species” in response to a PTO restriction requirement. The restriction requirement identified four patentably distinct “species,” but did not state that the stabilizer structure distinguished between them. Plantronics elected a “species,” and noted that one elected claim was generic to multiple species. The CAFC held that the restriction requirement and election/response, taken together, did not amount to a clear and unambiguous disclaimer that limited the disputed terms to “elongated” structures.
- Obviousness (objective indicia of non-obviousness): The district court concluded that the asserted claims were invalid for obviousness without “properly” considering objective indicia of non-obviousness. The district court determined that “common sense” would have motivated a skilled artisan to combine the prior art teachings and that the objective indicia evidence was unpersuasive. The CAFC held that evidence of the defendant copying Plantronics’s stabilizer and the evidence of defendant’s commercial success raised a genuine issue of material fact as to whether it would have been “common sense” to combine the prior art elements to arrive at the claimed invention.