Docket No. 2012-1355
RADER, O’MALLEY, WALLACH
July 31, 2013
Brief summary: DC found to have improperly imported limitations into the claims and failed to consider objective indicia of obviousness.
Summary: Plantronic appealed DC grant of SJ of noninfringement and invalidity for obviousness of its US 5,712,453 relating to “concha style headsets” (concha being “a deep cavity containing the entry to the ear canal”). After Aliph filed an infringement suit, Aliph request ex parte reexamination and the litigation was stayed until the PTO confirmed the patentability of the claims (and Plantronics added dependent claims 16-56). The DC then held a Markman hearing and construed the terms “stabilizer support member” and “concha stabilizer”. It then granted Aliph’s summary judgement request. In its Markman determination, the DC “placed a narrowing structural limitation to the claims” which Plantronics contended “improperly imported a limitation to the claims from the specification”. The FC panel agreed with Plantronics because “the claims are drafted broadly, without bounds to any particular structure” and neither the specification nor the prosecution history (e.g., election of a species of a figure) limits the structure (citing Kara Tech Inc., FC 2009; In re Wright, CCPA 1977 (drawings “may not be relied on to show particular sizes is specification is completely silent”); comparing LG Electronics (FC 2006) (no disclaimer) and Acco Brands (FC 2003) (disclaimer)). The DC also concluded the claims were obvious because “common sense would motivate a skilled artisan to combine” the prior art (Perfect Web, FC 2009 (citing KSR)). However, the FC panel found that it did not provide “explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness” (KSR, US 2007) without relying on “hindsight bias” and did not consider the objective indicia of nonobviousness (e.g., copying and commercial success) which provides a safeguard against “slipping into use of hindsight”. The DC decision was therefore reversed because this evidence raised genuine issues of material fact.