Plantronics, Inc. v. Aliph, Inc. ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
PLANTRONICS, INC.,
Plaintiff-Appellant,
v.
ALIPH, INC. AND ALIPHCOM, INC.,
Defendants-Appellees.
______________________
2012-1355
______________________
Appeal from the United States District Court for the
Northern District of California in No. 09-CV-1714, Magis-
trate Judge Bernard Zimmerman.
______________________
Decided: July 31, 2013
______________________
KARA F. STOLL, Finnegan, Henderson, Farabow, Gar-
rett & Dunner, LLP, of Washington, DC, argued for
plaintiff-appellant. With her on the brief was JASON W.
MELVIN. Of counsel on the brief were DAVID C. BOHRER,
Confluence Law Partners, of San Jose, California, and
BRUCE G. CHAPMAN, Connolly Bove Lodge & Hutz LLP, of
Los Angeles, California.
ROBERT P. FELDMAN, Quinn Emanuel Urquhart &
Sullivan, LLP, of Redwood Shores, California, argued for
2 PLANTRONICS, INC. v. ALIPH, INC.
defendants-appellees. With him on the brief were DANIEL
H. BROMBERG and DANE W. REINSTEDT.
______________________
Before RADER, Chief Judge, O’MALLEY, and WALLACH,
Circuit Judges.
WALLACH, Circuit Judge.
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. Plantron-
ics, Inc. v. Aliph, Inc., No. C09-1714BZ, 2012 WL 994636,
at *12 (N.D. Cal. Mar. 23, 2012) (“Summ. J. Decision”).
The district court’s decision is reversed in part, vacated in
part, and remanded for further proceedings.
BACKGROUND
The ’453 patent is directed to a concha-style headset
for transmitting received sounds to the ear of a user, e.g.,
headsets used with cell phone receivers. ’453 patent col. 1
ll. 13–16. In particular, the patent discloses an apparatus
for stabilizing a concha style headset during use. Id. col. 2
ll. 56–63. Because the claimed apparatus requires some
familiarity with the human ear, an illustration is provid-
ed below:
PLANTRONICS, INC. v. ALIPH, INC. 3
Id. fig. 3. Of particular relevance is the concha, “a deep
cavity containing the entry to the ear canal,” and which is
divided into the upper and lower concha, 43 and 41. ’453
patent col. 4 ll. 50–52.
Prior art headset stabilizers included large supports
outside the ear or relied on appendages to hook onto the
crux of the helix 31. Id. col. 1 ll. 20–55. The ’453 patent
purports to improve upon prior art headset stabilizers. In
particular, the claimed headset consists of “a receiver
attachment that couples to the body of the receiver, a
support member extending from the receiver attachment,
and a concha stabilizer pad coupled to the end of the
support member such that the concha stabilizer pad
contacts the upper concha under the antihelix of the ear
with the receiver placed in the lower concha in front of the
ear canal.” Id. at [57]. Thus, the concha stabilizer pad has
three points of contact: the tragus, the anti-tragus, and
the upper concha. Id. col. 2 ll. 2–6. Certain embodiments
of the claimed concha stabilizer are depicted below:
4 PLANTRONICS, INC. v. ALIPH, INC.
Id. figs 1A, 1B.
The stabilizing concha style headset is described as
typically including a receiver 27 and a voice tube 30. Id.col. 2. ll. 64–65. A receiver attachment comprises an ear
cushion 11 preferably dimensioned as an oblate spheroid,
formed of a reticulated, fully open-pore flexible, ester type
polyurethane foam. Id. col. 2 l. 66–col. 3 l. 2. The ear
cushion 11 has an open central recessed portion 13 form-
ing a “C” shape, which is dimensioned to fit snugly onto
the receiver 27. Id. col. 3. ll. 6–9. A flexible support
member, stabilizer support 17, extends from the upper
surface of the ear cushion 11. Id. col. 3 ll. 18–19. The end
of the stabilizer support 17 is coupled to a concha stabi-
lizer pad 21 which contacts the upper concha 43 beneath
the antihelix. Id. col. 3 ll. 26–28. When placed into the
lower concha 41 during use, the ear cushion 11 contacts
the tragus 35 and the antitragus 39 at a tragus contact
point 23 and an antitragus contact point 25, respectively,
where the face 15 of the ear cushion 11 rests in the lower
concha 41 and faces toward the ear canal 33. Id. col. 3. ll.
9–14. The left/right orientation of the tragus contact
point 23 and the antitragus contact point 25 with respect
PLANTRONICS, INC. v. ALIPH, INC. 5
to the face 15 of the ear cushion 11 is reversed for the left
and right ears. Id. col. 3 ll. 14–16.
Independent claim 1 is representative of the asserted
claims:
1. An apparatus for stabilizing a headset includ-
ing a receiver sized to fit between a tragus and an
anti-tragus of an ear, the apparatus comprising:
an ear cushion dimensioned to cover a portion of
the receiver disposed between the tragus and the
anti-tragus;
a resilient and flexible stabilizer support member
coupled to the ear cushion, and dimensioned to fit
within an upper concha with the ear cushion cou-
pled to the receiver and the receiver disposed be-
tween the tragus and the anti-tragus; and
a concha stabilizer pad coupled to the stabilizer
support member, for contacting the upper concha.
’453 patent col. 5 ll. 10–22 (emphases added). Independ-
ent claim 10 is also relevant here and is recited below:
10. A headset comprising:
a receiver sized to fit between a tragus and an an-
titragus of an ear, the receiver having a tragus
contact point, and an anti-tragus contact point
disposed substantially opposite to the tragus con-
tact point;
an ear cushion dimensioned to cover a portion of
the receiver; and
a concha stabilizer coupled to the ear cushion and
dimensioned to contact an upper concha between
an antihelix and a crux of a helix with the receiver
disposed between the tragus and the antitragus.
Id. col. 6 ll. 5–14 (emphasis added).
6 PLANTRONICS, INC. v. ALIPH, INC.
On January 15, 2009, Plantronics filed the underlying
patent infringement suit against Aliph originally assert-
ing claims 1, 7, 10 and 11. Subsequently, on November 9,
2009, Aliph requested ex parte reexamination by the U.S.
Patent and Trademark Office (“PTO”) of the asserted
claims, which the PTO granted. As a result, the district
court litigation was stayed. In its request for reexamina-
tion, Aliph argued that the asserted claims were invalid
as anticipated and obvious in view of four prior art refer-
ences: (1) U.S. Patent No. 1,753,817 to Aber (“Aber”); (2)
U.S. Patent No. 1,893,143 to Koch (“Koch”); (3) U.S.
Patent No. 4,720,857 to Burris et al. (“Burris”); and (4)
Japanese Application Publication No. JP58-104077 to
Watanabe (“Watanabe”). On March 1, 2011, the PTO
issued a reexamination certificate confirming the patent-
ability of the challenged claims along with the addition of
dependent claims 16–56. Plantronics thereafter amended
its infringement contentions to assert new claims 18, 20–
21, 25–26, and 28–56 in addition to the originally asserted
claims 1, 7, 10, and 11 (collectively, “asserted claims”).
On September 19, 2011, the district court issued a
tentative claim construction order, and held its Markman
hearing on September 21, 2011. On October 6, 2011, the
district court issued its claim construction order constru-
ing, in relevant part, the terms “stabilizer support mem-
ber” in claim 1 and “concha stabilizer” in claim 10.
Plantronics, Inc. v. Aliph, Inc., No. C09-1714BZ, 2011 WL
4634066, at *4 (N.D. Cal. Oct. 6, 2011). On March 23,
2012, the district court granted summary judgment,
holding the asserted claims were invalid and not in-
fringed.
In its summary judgment decision, the district court
provided further construction of a “stabilizer support
member” and “concha stabilizer,” and in turn, found no
infringement of claims 1 and 10. Likewise, the district
PLANTRONICS, INC. v. ALIPH, INC. 7
court held claims 1, 7, 10, 11, 18, 20, 21, 26, 28, 30, 43 and
44 of the ’453 patent were invalid as obvious in light of
the combination of U.S. Patent No. 1,893,474 (“Lieber”)
with Japanese Utility Patent Application No. 60–
40187(U) (“Komoda”). Furthermore, the district court
determined that dependent claims 25, 29, 31–42 and 45–
56 were obvious by the combination of the Lieber patent,
the Komoda patent and U.S. Patent No. 5,048,090(“Geers”). Plantronics appeals. This court has jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
DISCUSSION
Plantronics raises the following issues: (1) whether
the district court improperly construed the terms “stabi-
lizer support member” in claim 1 and “concha stabilizer”
in claim 10; (2) whether the district court erred in grant-
ing summary judgment of noninfringement; and (3)
whether the district court erred in granting Aliph’s mo-
tion for summary judgment of obviousness. These issues
are addressed seriatim.
1. The District Court Erred in Construing the Terms
“Stabilizer Support Member” and “Concha Stabilizer”
When it Limited Them to “Elongated” Structures
We review a district court’s claim construction de no-
vo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–
55 (Fed. Cir. 1998) (en banc). To ascertain the scope and
meaning of the asserted claims, we look to the words of
the claims themselves, the specification, the prosecution
history, and, if necessary, any relevant extrinsic evidence.
Chicago Bd. Options Exch., Inc. v. Int’l Secs. Exch., LLC,
677 F.3d 1361, 1366 (Fed. Cir. 2012) (citing Phillips v.
AWH Corp., 415 F.3d 1303, 1315–17 (Fed. Cir. 2005) (en
banc)).
8 PLANTRONICS, INC. v. ALIPH, INC.
The district court construed “stabilizer support mem-
ber” as “an elongated structure that extends from the ear
cushion to the concha stabilizer pad and stabilizes the
headset” and construed “concha stabilizer” as “an elongat-
ed stabilizing structure, which extends between the ear
cushion and the upper concha.” Summ. J. Decision, 2012
WL 994636, at *3. In its summary judgment decision, the
district court clarified the meaning of “elongated” as
“longer than it is wide.” Id. Thus, the district court placed
a narrowing structural limitation to the claims with its
construction of “elongated” to mean “longer than it is
wide.”
Plantronics contends that the district court’s con-
struction improperly imported a limitation to the claims
from the specification, and proposes that these terms
require a structure that simply “extends from something
else.” Aliph, on the other hand, agrees with the district
court’s construction. Aliph argues that because Plantron-
ics, during prosecution, elected a species of the invention
that is limited to “elongated” structures, a “stabilizer
support member” and a “concha stabilizer” must be “elon-
gated” and that “elongated” means “longer than it is
wide.” Upon review of the claim language, the specifica-
tion, and the prosecution history of the ’453 patent, the
district court’s construction limiting the “stabilizer sup-
port” and “concha stabilizer” to a structure that is “elon-
gated” and “longer than it is wide” is reversed. Those
terms require a meaning that is not as limiting as the
district court imposed.
The asserted claims are drafted broadly, without
bounds to any particular structure. Specifically, claim 1
recites a “stabilizer support” as “dimensioned to fit within
an upper concha with the ear cushion coupled to the
receiver [which is] disposed between the tragus and the
anti-tragus.” ’453 patent col. 5 ll. 17–20. In addition,
claim 10 recites a “concha stabilizer . . . coupled to the ear
cushion and dimensioned to contact an upper concha
PLANTRONICS, INC. v. ALIPH, INC. 9
between an antihelix and a crux of a helix with the re-
ceiver disposed between the tragus and the anti-tragus. . .
.” ’453 patent col. 6 ll. 12–15. Thus, while 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 ordi-
nary and customary meaning).
Like the claim language, the specification of the ’453
patent does not limit the claimed apparatus to any par-
ticular 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. Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his claims,
and we will not limit him to his preferred embodiment or
import a limitation from the specification into the
claims.”).
Contrary to Aliph’s argument, the prosecution history
of the ’453 patent does not salvage its position. Specifical-
ly, Aliph argues that the prosecution history makes clear
that the stabilizer elements are “elongated” structures.
Aliph bases its contention on the PTO-initiated restriction
requirement during prosecution in which Plantronics was
instructed to elect among what the PTO viewed as multi-
ple inventions. See 35 U.S.C. § 121 (“If two or more inde-
pendent and distinct inventions are claimed in one
10 PLANTRONICS, INC. v. ALIPH, INC.
application, the Director may require the application to be
restricted to one of the inventions.”). Plantronics aban-
doned that application and subsequently filed a second
similar patent application. The PTO again issued a
restriction requirement, finding four patentably distinct
inventions in: (1) Figures 1A/1B; (2) Figure 2A; (3) Figure
2B; and (4) Figure 2C. Accordingly, the PTO directed
Plantronics to elect “a single disclosed species for prosecu-
tion on the merits to which the claims shall be restricted
if no generic claim is finally held to be allowable.” J.A.
380. The PTO also concluded that the application pre-
sented no “generic claim” covering more than a single
species of the invention. In response, Plantronics
“elect[ed], without traverse, to prosecute” only the “Spe-
cies of Figures 1a and 1b.” J.A. 384. Plantronics indicated
that “[c]laims 1–6 and 9–12 read on the elected species . . .
. Claim 11 is generic.” Id. This application was eventual-
ly issued as the ’453 patent on January 27, 1998. Because
Plantronics elected to prosecute the species of Figures 1A
and 1B, Aliph proposes that the asserted claims must be
limited to the disclosures and embodiments pertaining to
Figures 1A and 1B—effectively carving out disclosures
related to the arch-shaped and torus-shaped structures of
the “stabilizing support” and limiting the “stabilizing
support” to disclosures describing an “elongated” struc-
ture. In other words, Aliph avers that the claims should
be limited to the single invention depicting a single em-
bodiment having one “elongated” structure as Plantronics
elected to pursue.
“[P]rosecution history can often inform the meaning of
the claim language by demonstrating how the inventor
understood the invention and whether the inventor lim-
ited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.”
Phillips, 415 F.3d at 1317. When narrowing claim scope,
as here, this court has recognized that a “clear and unmis-
takable” disavowal during prosecution overcomes the
PLANTRONICS, INC. v. ALIPH, INC. 11
“‘heavy presumption’ that claim terms carry their full
ordinary and customary meaning.” Omega Eng’g, Inc. v.
Raytek Corp., 334 F.3d 1314, 1323, 1326 (Fed. Cir. 2003);
see also Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d
1321, 1334 (Fed. Cir. 2009) (“A heavy presumption exists
that claim terms carry their full ordinary and customary
meaning, unless [a party] can show the patentee express-
ly relinquished claim scope.”). Thus, when the patentee
unequivocally and unambiguously disavows a certain
meaning to obtain a patent, the doctrine of prosecution
history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered. Phil-
lips, 415 F.3d at 1317. Plantronics’ election of species of
Figures 1A and 1B did not amount to such a surrender of
claim scope.
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. Omega Eng’g, 334 F.3d at 1325 (We
have “consistently rejected prosecution statements too
vague or ambiguous to qualify as a disavowal of claim
scope.”). Neither the PTO nor Plantronics made any
particular remarks regarding the differences (e.g., in
structure) of what the PTO found to be different inven-
tions, and while Plantronics elected without traverse the
invention of Figures 1A and 1B, Plantronics did disagree
12 PLANTRONICS, INC. v. ALIPH, INC.
with the PTO’s comments on claim 11 when it responded
that claim 11 is a generic claim that read on all the em-
bodiments illustrated in the application. This exchange
with the PTO thus does not amount to anything clear or
unambiguous to disclaim claim scope otherwise encom-
passed by the broadly drafted claims.
Even without the election, Aliph contends each of the
species of invention, both elected and unelected, illus-
trates stabilizer members that are “elongated.” “Patent
drawings [however] do not define the precise proportions
of the elements and may not be relied on to show particu-
lar sizes if the specification is completely silent on the
issue.” Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc.,
222 F.3d 951, 956 (Fed. Cir. 2000); see also In re Wright,
569 F.2d 1124, 1127 (C.C.P.A. 1977) (“Absent any written
description in the specification of quantitative values,
arguments based on measurement of a drawing are of
little value.”); Manual of Patent Examining Procedure
2125 (“Proportions of features in a drawing are not evi-
dence of actual proportions when drawings are not to
scale.”). Because the figures in the ’453 patent do not
evidence actual dimensions of the “stabilizer support” and
the “concha stabilizer,” they cannot be relied upon to
argue that the disputed terms should be limited to a
particular structure.
Aliph cites LG Electronics, Inc. v. Bizcom Electronics,
Inc., 453 F.3d 1364, 1378 (Fed. Cir. 2006), rev’d on other
grounds by Quanta Computer, Inc. v. LG Electronics, Inc.,
553 U.S. 617 (2008), and Acco Brands, Inc. v. Micro
Security Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir.
2003), for support; these cases are distinguishable. In
both cases, during claim construction, the district court
considered the patentee’s election of an invention in
response to a PTO restriction requirement. In LG Elec-
tronics, the defendants proposed a narrowing construction
of a disputed claim term arguing that the patentee disa-
vowed the use of “valid/invalid bits” by pointing to por-
PLANTRONICS, INC. v. ALIPH, INC. 13
tions of the specification that contemplated never using
“valid/invalid bits.” 453 F.3d at 1377. We held that: (1)
the claims were drafted broadly, without consideration of
using or not using “valid/invalid bit”; (2) the specification
disclosed varying embodiments, including those that used
and did not use “valid/invalid bits,” and limiting the
claims to any one of these embodiments would be improp-
er; and (3) even though the specification disclosed embod-
iments that never used “valid/invalid bits,” defendant
cannot point to those disclosures to show disavowal
because they were directed to unelected portions of the
invention. Id. at 1377. In Acco Brands, after holding that
the patentee disclaimed claim scope during reexamination
we determined that embodiments containing the dis-
claimed limitation were only relevant to other unelected
portions of the specification, which were claimed in other
related patents and could not be used to recapture and
broaden claim scope that was disclaimed during reexami-
nation. Id. at 1079.
This case differs from LG Electronics and Acco
Brands. The PTO’s restriction requirement here did not
clearly demarcate the actual differences among the spe-
cies of inventions, as was done in LG Electronics and Acco
Brands. Regarding the restriction requirement imposed
in LG Electronics, the PTO required the patentee to elect
one of two identified inventions in the application, and the
limitation at issue (never using “valid/invalid bits”) was
found to be relevant only as to the first unelected inven-
tion and not to the second elected invention. 453 F.3d at
1378. In Acco Brands, it was also made clear that certain
embodiments were claimed in other patents, and that the
patent at issue was directed to one particular fig-
ure/embodiment. 346 F.3d at 1079.
As discussed, the PTO here found four patentably dis-
tinct inventions in the figures of the ’453 patent without
providing any reasons why these figures represented
differing species. We cannot discern from the correspond-
14 PLANTRONICS, INC. v. ALIPH, INC.
ence between the PTO and Plantronics whether the
“stabilizer support member” and the “concha stabilizer”
were interpreted by any party to contain particular struc-
tural limitations. Given these ambiguities, there is no
basis to limit the broadly drafted claims at issue. 1
The “stabilizer support member” and the “concha sta-
bilizer” are not structurally limited either in claim lan-
guage or in their corresponding description in the
specification. Likewise, the election of species pertaining
to Figures 1A and 1B in response to the restriction re-
quirement does not narrow the claim scope, because the
election was made without any indication that the “stabi-
lizer support” and the “concha stabilizer” to one that is
“longer than [they are] wide.” Because the patent sup-
ports broader constructions, the “stabilizer support mem-
ber” is construed to mean “a structure that extends from
the ear cushion to the concha stabilizer pad and stabilizes
the headset,” and “concha stabilizer” is construed to mean
“a stabilizing structure dimensioned to extend between
the ear cushion and the upper concha.” Since the district
court’s claim construction is reversed, its finding of no
1 Even if this court were to limit the scope of the
claim to the portions of the specification which were
elected, there is nothing requiring the “stabilizer support
member” and the “concha stabilizer” to be limited to an
“elongated” structure. Phillips, 415 F.3d at 1323 (“[W]e
have expressly rejected the contention that if a patent
describes only a single embodiment, the claims of the
patent must be construed as being limited to that embod-
iment.”); Laryngeal Mask Co. v. Ambu A/S, 618 F.3d
1367, 1372 (Fed. Cir. 2010) (holding that the claims
cannot be limited to the preferred embodiment absent a
clear intent to give a unique meaning different from its
ordinary and customary meaning to one of skill in the
art).
PLANTRONICS, INC. v. ALIPH, INC. 15
infringement is vacated and the issue is remanded for
further proceedings.
2. The District Court Failed to Give Proper
Consideration to Objective Evidence of Nonobvious-
ness and Therefore Erred in Granting Aliph’s Motion
for Summary Judgment of Obviousness
This court reviews a district court’s grant of summary
judgment without deference. OSRAM Sylvania, Inc. v.
Am. Induction Techs., Inc., 701 F.3d 698, 704 (Fed. Cir.
2012). Summary judgment is appropriate if no genuine
issues of material fact exist such that the moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P.
56(a). On a motion for summary judgment, courts review
the evidence in the light most favorable to the non-moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255
(1986). In addition, “a district court can properly grant,
as a matter of law, a motion for summary judgment on
patent invalidity when the factual inquiries into obvious-
ness present no genuine issue of material facts.” Ryko
Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 716 (Fed. Cir.
1991). “When the facts underlying an obviousness deter-
mination are not in dispute, we review whether summary
judgment of invalidity is correct by applying the law to
the undisputed facts.” Tokai Corp. v. Easton Enters., 632
F.3d 1358, 1366 (Fed. Cir. 2011).
Whether the claimed subject matter would have been
obvious to an ordinarily skilled artisan at the time of the
invention “is a question of law based on underlying ques-
tions of fact.” Green Edge Enters., LLC v. Rubber Mulch
Etc. LLC, 620 F.3d 1287, 1298 (Fed. Cir. 2010). The
underlying factual inquiries include: (1) “the scope and
content of the prior art”; (2) “differences between the prior
art and the claims at issue”; (3) “the level of ordinary skill
in the pertinent art”; and (4) relevant objective considera-
tions, including “commercial success, long felt but un-
16 PLANTRONICS, INC. v. ALIPH, INC.
solved needs, [and] failure of others . . . .” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966))
(internal quotation marks omitted). Obviousness must be
proved by clear and convincing evidence. Procter & Gam-
ble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.
Cir. 2009). The burden of proof lies with the challenger,
and this court has rejected any formal burden-shifting
framework in evaluating the four Graham factors.
OSRAM, 701 F.3d at 709. Thus, the inquiry on summary
judgment is whether a jury applying the clear and con-
vincing evidence standard could reasonably find, based on
the evidence produced by the accused infringer, that the
claimed invention was obvious. See TriMed, Inc. v. Stryker
Corp., 608 F.3d 1333, 1339–40 (Fed. Cir. 2010).
The gravamen of the parties’ dispute here involved
whether a skilled artisan would have been motivated to
combine certain prior art references, an issue that focuses
heavily on the first and third Graham factors. Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006)
(“[T]he motivation to combine requirement entails consid-
eration of both the scope and content of the prior art and
level of ordinary skill in the pertinent art aspects of the
Graham test.”) (citation and quotation marks omitted).
The district court found that Lieber and Komoda disclosed
“a receiver, ear cushion, stabilizer support and pad” and
that any gap between these prior art elements and those
recited, in relevant part, claims 1 and 11 of the ’453
patent was bridged by “common sense.” In particular, the
district court determined that (1) the need for a stabiliz-
ing member that worked with the anatomy of an ear was
a problem known in the art at the time of the invention,
(2) there was a trend towards miniaturization of in-the-
ear devices, and (3) miniaturizing the receiver described
in Lieber and Komoda while pairing the receiver with a
comfortable, adaptable, and stabilizing ear cushion as
claimed in the ’453 patent was a matter of common sense
PLANTRONICS, INC. v. ALIPH, INC. 17
for those skilled in the art at the time of the invention.
Summ. J. Decision, 2012 WL 994636, at *10.
“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. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
Although the obviousness analysis is somewhat flexi-
ble, a district court’s conclusions with respect to obvious-
ness must find support in the record. In determining that
a person of skill in the art would have been motivated to
combine the references at issue, the district court did not
cite any expert testimony indicating that there was a
motivation to combine. See Summ. J. Decision, 2012 WL
994636, at *10–11. Instead, the court determined that
common sense would motivate a skilled artisan to com-
bine the relevant references’ teachings. Id. As we have
said before though:
“the mere recitation of the words ‘common sense’
without any support adds nothing to the obvious-
ness equation.” Mintz v. Dietz & Watson, 679 F.3d
1372, 1377 (Fed. Cir. 2012). Thus, we have re-
quired that [obviousness findings] grounded in
“common sense” must contain explicit and clear
reasoning providing some rational underpinning
18 PLANTRONICS, INC. v. ALIPH, INC.
why common sense compels a finding of obvious-
ness. See KSR, 550 U.S. at 418; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on ob-
viousness grounds cannot be sustained by mere
conclusory statements; instead, there must be
some articulated reasoning with some rational
underpinning to support the legal conclusion of
obviousness.”).
In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012). Where,
as here, the necessary reasoning is absent, we cannot
simply assume that “an ordinary artisan would be awak-
ened to modify prior art in such a way as to lead to an
obviousness rejection.” Id. It is in such circumstances,
moreover, that it is especially important to guard against
the dangers of hindsight bias.
As a safeguard against “slipping into use of hindsight
and to resist the temptation to read into the prior art the
teachings of the invention in issue,” we have required
courts to consider evidence of the objective indicia of
nonobviousness prior to making the ultimate determina-
tion of whether an invention is obvious. Graham, 383 U.S.
at 36; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538 (Fed. Cir. 1983) (objective considerations “may often
be the most probative and cogent evidence [of non- obvi-
ousness] in the record”). Failure to give proper considera-
tion to such evidence, as in this case, can be fatal because
“common sense” may not be so apparent in view of objec-
tive evidence of nonobviousness (e.g., commercial success
and copying), particularly when all reasonable inferences
are drawn in favor of the patentee. See Transocean Off-
shore Deepwater Drilling, Inc. v. Maersk Contractors USA,
Inc., 617 F.3d 1296, 1305 (Fed. Cir. 2010) (reversing for
failure to consider the objective evidence of nonobvious-
ness and because there are genuine issues of material fact
remaining as to objective considerations).
PLANTRONICS, INC. v. ALIPH, INC. 19
Here, the district court concluded that the ’453 patent
was invalid as obvious before considering objective indicia
of nonobviousness. According to the district court, “[i]t
would have been obvious to one of ordinary skill in the art
to modify the Lieber device to reduce the size of the in-
the-ear receiver while pairing the receiver with a comfort-
able, adaptable ear cushion that stabilized the device with
a flexible support member that invoked the ear anatomy
to avoid the use of headsets and earhooks.” Summ. J.
Decision, 2012 WL 994636, at *11. The district court
addressed Plantronics’ objective evidence of nonbvious-
ness—including copying and commercial success—only
after reaching this conclusion. It stated: “Even accepting
as true Plantronics’ assertions on these secondary consid-
erations, they do not save Plantronics from summary
judgment here since such secondary considerations simply
cannot overcome a strong prima facie case of obvious-
ness.” 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 evi-
dence pertaining to the objective indicia of nonobvious-
ness 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.” See id. at 1079. As we explained:
The objective considerations, when considered
with the balance of the obviousness evidence in
the record, guard as a check against hindsight bi-
as . . . . In other words, knowing that the inventor
succeeded in making the patented invention, a
fact finder might develop a hunch that the
claimed invention was obvious, and then construct
a selective version of the facts that confirms that
hunch. This is precisely why the Supreme Court
explained that objective considerations might pre-
20 PLANTRONICS, INC. v. ALIPH, INC.
vent a fact finder from falling into such a trap, ob-
serving that objective considerations might serve
to resist the temptation to read into the prior art
the teachings of the invention in issue. And, it is
precisely why fact finders must withhold judg-
ment on an obviousness challenge until it consid-
ers all relevant evidence, including that relating
to the objective considerations.
Id. (citation and internal quotation marks omitted). 2
Plantronics contends that it presented evidence of
copying and commercial success that at least raise genu-
ine issues of material fact underlying the ultimate conclu-
sion of obviousness. For example, Plantronics argues that
the design of Aliph’s accused product began with Plant-
ronics’ concha-style headset stabilizer, that it is undisput-
ed that Aliph initially installed Plantronics’ stabilizer into
Aliph’s headset, and from there, that Aliph copied Plant-
ronics’ design. Plantronics also avers that it presented
evidence that the functional fit provided by the copied
design is critical to Aliph’s headset, establishing a nexus
between the secondary evidence and the claimed inven-
tion. With the copied design, Plantronics argues that
Aliph enjoyed commercial success. In response, Aliph
contends that the evidence Plantronics presented was not
sufficient, but otherwise does little to rebut the evidence.
The district court’s scant consideration of relevant objec-
tive evidence belies Aliph’s argument.
2 Even in Wyers v. Master Lock Co., which the dis-
trict court cited for support of its determination, this court
held the claims at issue obvious only after thoroughly
considering evidence related to commercial success and
copying. 616 F.3d 1231, 1246 (Fed. Cir. 2010).
PLANTRONICS, INC. v. ALIPH, INC. 21
The full extent of the district court’s analysis was as
follows: “In support of these secondary considerations,
Plantronics relies, in part, upon the supplemental report
of its expert, Barry Katz. Consistent with the evidentiary
rulings above, I did not rely on this supplemental, un-
sworn expert report.” Summ. J. Decision, 2012 WL
994636, at *11 n.11. The district court also stated: “I did
not find Plantronics’ evidence of secondary considerations,
to the extent it was not in expert reports I did not consid-
er, particularly persuasive. For example, I found nothing
helpful in the Drysdale testimony . . . .” Id. at *11 n. 12.
These statements, alone, fail to provide any meaningful
analysis for this court’s review. Nevertheless, Aliph asks
that we reject Plantronics’ objective considerations by
finding in the first instance that Plantronics’ evidence is
not tied adequately to the full scope of the asserted
claims. This argument is without merit because “[i]t is
not our role to scour the record and search for something
to justify a lower court’s conclusions, particularly at the
summary judgment stage.” OSRAM, 701 F.3d at 707.
“[T]his court must be furnished sufficient findings and
reasoning to permit meaningful appellate scrutiny.” Id.
(citation and internal quotation marks omitted). The
district court’s opinion lacked such findings and reason-
ing.
Moreover, we cannot discern whether the district
court, in this summary judgment context, drew all justifi-
able inferences in favor of Plantronics and found no
disputed issues of material fact to support its holding
with respect to obviousness. Transocean, 617 F.3d at 1305
(stressing that a court must draw all reasonable infer-
ences in favor of a patent owner with respect to objective
evidence of nonobviousness in the context of a motion for
summary judgment of obviousness). In fact, when 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. See id.
22 PLANTRONICS, INC. v. ALIPH, INC.
(“Viewing the objective evidence of nonobviousness in a
light most favorable to Transocean, we cannot hold that
the claims would have been obvious as a matter of law.”);
see also Simmons Fastener Corp. v. Ill. Took Works, Inc.,
739 F.2d 1573, 1576 (Fed. Cir. 1984) (reversing the lower
court, in part, because evidence of objective considera-
tions, particularly commercial success, was extremely
strong and entitled to great weight). 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 inven-
tion. Because evidence pertaining to objective considera-
tions raises genuine issues of material fact, the district
court’s decision is reversed as to all the asserted claims in
this case. 3
CONCLUSION
For the foregoing reasons, the district court’s decision
is vacated in part, reversed in part, and remanded for
3 The district court also erred to the extent it inval-
idated the unasserted claims of the ’453 patent or to the
extent the district court invalidated claims not at issue in
the motion before it. Fox Grp., Inc. v. Cree, Inc., 700 F.3d
1300, 1308 (Fed. Cir. 2012) (holding that the district court
had no jurisdiction over the unasserted claims of the
patent at issue because there was there was no case or
controversy with respect to them); OSRAM, 701 F. 3d at
709 (“While a trial court may invalidate a claim sua
sponte, where no motion regarding that claim is before it,
it may not do so without prior notice to the non-movant
and an opportunity for the non-movant to address such an
unanticipated action.”). Accordingly, to the extent the
district court’s final judgment invalidates patent claims
not at issue, that determination is vacated.
PLANTRONICS, INC. v. ALIPH, INC. 23
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. See
M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439
F.3d 1335, 1344 (Fed. Cir. 2006) (“Denials of summary
judgment are ordinarily not appealable, and we will not
decide the issue of invalidity here.”). Furthermore, we
have considered all other remaining arguments and
conclude that they are without merit.
REVERSED IN PART, VACATED IN PART, AND
REMANDED