Impact of Restriction/Election on Claim Scope and Integrating Objective Indicia Into the Obviousness Analysis

By Dennis Crouch

Plantronics is an important case for patent prosecutors both for its discussion of proper restriction/election technique and for its language requiring the consideration of objective indicia of nonobviousness prior to reaching a conclusion of obviousness.

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Plantronics, Inc. v. Aiph, Inc. (Fed. Cir. 2013)

On summary judgment, district court Judge Bernard Zimmerman found Plantronics’ concha-style headset patent (5,712,453) to be both invalid (obvious) and not infringed. On appeal, the Federal Circuit has rejected that decision on several grounds.

Impact of Election on Claim Scope: Early in prosecution, the PTO issued a restriction requirement – noting that the original application improperly included multiple inventions. Plantronics elected to limit the claim scope to claim species of “Figures 1a and 1b.” Those figures both show the headset stabilizer support as an elongated member while other non-elected figure-species were structurally different (arguably without the elongated member). The district court relied upon that the restriction/election to construe “stabilizer support” as an elongated member that is longer than it is wide. On appeal, the Federal Circuit rejected that claim scope narrowing because the reason for the restriction requirement was not necessarily the elongated structural difference. Judge Wallach writes:

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. … Neither the PTO nor Plantronics made any particular remarks regarding the differences (e.g., in structure) of what the PTO found to be different inventions, and while Plantronics elected without traverse the invention of Figures 1A and 1B, Plantronics did disagree with the PTO’s comments on claim 11 when it responded that claim 11 is a generic claim that read on all the embodiments illustrated in the application. This exchange with the PTO thus does not amount to anything clear or unambiguous to disclaim claim scope otherwise encompassed by the broadly drafted claims.

The court thus indicates that restriction/response do have the potential of limiting claim scope, but not in this case.

Further, the court went on to note the standard rule that structure found in the patent drawings should not be seen as limiting to the claim scope – unless the structure is written into the claims. Further, because the drawings do not provide particular dimensions, they “may not be relied upon to show particular sizes” or proportions. See MPEP 2125.

Because the district court had unduly limited the claim scope, the Federal Circuit vacated the non-infringement finding and remanded for additional review.

Obviousness: The district court also found the claims invalid as obvious. On appeal, the Federal Circuit vacated – finding that the record was not sufficiently clear for such a ruling as a matter of law. Rather, on remand, the issue of obviousness will go to trial.

In its analysis, the district court missed two key points: (1) identifying the motivation for combining prior art references and (2) fully considering objective indicia that may negate obviousness.

Motivation to Combine: It is often the case that combination inventions are deemed nonobvious (and thus patentable) even when all of the claim elements are individually found in the prior art. In KSR v. Teleflex, the Supreme Court noted that there must also be some reasoning as to why someone of skill in the art would seek to combine the reference in the manner claimed. That motivation to combine may be found explicitly or implicitly in market forces; design incentives; as well as by considering the background knowledge, creativity, and common sense of the person of ordinary skill in the art.

Although KSR added flexibility to the process, the motivation to must still be based upon evidence. Here, the district court indicated that “common sense” serves as the motivation. On appeal, the Federal Circuit found that explanation insufficient without more extensive reasoning with evidentiary support. As the court wrote in Mintz, “the mere recitation of the words ‘common sense’ without any support adds nothing to the obviousness equation.”

Objective Indicia of Nonobviousness: The appellate court linked the above discussion of “common sense” with an analysis of objective indicia of nonobviousness – noting that these considerations (such as commercial success, copying, or prior failures) could weigh against a KSR-style finding of common-sense motivation to combine.

Here, the district court did consider the patentee’s evidence regarding copying and commercial success however, the appellate panel found that the district court’s decision provided insufficient written analysis of the patentee’s evidence. In addition the appellate panel found that the lower court had mis-ordered its analysis by first finding a prima facie case of obviousness and then considering whether the objective factors negate that original conclusion. Rather, according to the panel here, the objective indicia of nonobviousness must be considered prior to reaching an obviousness conclusion.

Here, the district court concluded that the ‘453 patent was invalid as obvious before considering objective indicia of nonobviousness. . . . 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.” 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. 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.”

When done properly, this ordering could be irrelevant. However, the court argues that including the secondary factors as an integrated element of the analysis helps “guard against the dangers of hindsight bias.” The court writes:

Failure to give proper consideration to such evidence, 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.

In the end, the court sided with the patentee – finding that the evidence presented raise a genuine issue of material fact – sufficient to overcome the summary judgment motion and proceed to trial.

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. Because evidence pertaining to objective considerations raises genuine issues of material fact, the district court’s decision is reversed as to all the asserted claims in this case.

End.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

18 thoughts on “Impact of Restriction/Election on Claim Scope and Integrating Objective Indicia Into the Obviousness Analysis

  1. Denis Crouch writes: “However, the court argues that including the secondary factors as an integrated element of the analysis helps “guard against the dangers of hindsight bias.”

    I tend to agree with the court on this. And might add, It’s encouraging to see ‘Integration Analysis” working its way into the various interstices of 35. U.S.C. to penetrate the whole of the patent law permaculture. In this decision the court states: “This court has consistently pronounced that all evidence pertaining to the objective indicia of nonobviousness 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). [Emphasis Added]

    The key phraseology is “before reaching a conclusion”. It is highly improper to identify an invention – as a “process” for example- and to immediately suspect it as not worthy of a patent, as many have advocated doing on this blog. Before reaching such a decision one must take the claims as a whole. As we have witness on this blog alone , hysterical notions of ignoring the steps or elements of certain inventions in the concluding analysis, namely software or so called business methods, as well as attempts to expand the limited judicial exceptions with unlimited preemption, or searching for the underlying gist of the invention have run rampant. And as the Court has cautioned, such actions would indeed swallow up the whole of patent law and impede rather than promote the progress of human innovation. With the courts increasing embrace of “Integration Analysis” we are beginning to see a turn back to the broad and expansive approach of the way patent laws are written and are to be applied.

  2. It is rare that a restriction requirement would actually tell you anything about claim scope or different “inventions”. It’s overzealously used, and especially when the examiner has a deadline to respond … this allows them to push it off for a bit longer … one less thing on the docket. That it’d be brought up in court to construe terminology in a claim is pretty ridiculous, but of course the applicant has to be careful what they put on the record, not only in response to a restriction, but all the time.

  3. Aren’t they always? I can’t tell you the last time that I got anything other than

    Claims X-Y are drawn to a first invention.
    Claim Z is drawn to a second invention.

    Elect one.

  4. That defeats the point of getting a quick early count and multiplying your counts for examining what everyone knows to be one application.

  5. link to nypost.com

    After somehow scoring a seat on the advisory board of the rising Democratic star’s Waywire video-sharing site, 15-year-old Andrew [son of CNN President Jeff] Zucker abruptly quit yesterday amid questions over his qualifications.

    The rich kid’s consulting career as a “millennial adviser” ended just hours after it was revealed that he had been granted stock options in the firm co-founded by Booker, the Newark mayor who polls show is a shoo-in for the US Senate after a special election….

    A Waywire spokesman said Andrew was hired in March after another member of the firm’s advisory board told co-founder Sarah Ross that he “had developed a reputation of being able to identify technologies that would be popular with teenagers and which ones wouldn’t be.”

    How’s his reputation now? What a bunch of m0r0ns.

  6. Meanwhile, meet the modern day “social-media” “entrepeneur”:

    link to digbysblog.blogspot.com

    Two and a half years later, some of those same Silicon Valley leaders joined forces again on Mr. Booker’s behalf. But this time, their efforts resulted in giving Mr. Booker, until then an admired outsider, the equivalent of full-fledged membership in their elite circle: an Internet start-up of his own.

    Mr. Booker personally has obtained money for the start-up, called Waywire, from influential investors, including Eric E. Schmidt, Google’s executive chairman. A year after its debut, Waywire has already endured a round of layoffs and had just 2,207 visitors in June, according to Compete, a Web-tracking service. The company says it is still under development.

    …. with just a week left in Mr. Booker’s campaign for the Democratic nomination for the United States Senate, [the revelations show] how a few tech moguls and entrepreneurs, many of them also campaign donors, not only made a financial bet on the mayor’s political future but also provided the brainpower and financing to help create a company that could make him very rich.

    Too funny. I’m sure the patents are awesome, though.

  7. Dennis: Is it really improper to include claims to multiple inventions? I do it all the time, to force a restriction, so one set of claims is protected in case the other is invalidated. There is a statute that says I get that protection if I file a divisional in response to a restriction requirement.

  8. There’s a difference in an argument and a reliance. People are free to show their ar se all they like and make whatever arguments suit their fancy but a judge is not free to just rely on whatevz to make his claim construction, at least not so free as to survive an appeal. But yes, on the whole I agree that is a major takeaway.

  9. It was a fair argument to say that the claims didn’t cover the infringing scope, but the better lesson to be taken here is that the restrictions issued by Examiners need to have clear reasons supporting them if the restriction and resulting election is to have any meaning or effect.

  10. It’s not very usual to get to trial, Max, but yes, the expert witness testimony is often a key part of the trial, and yes, this happened at trial, presumably (although not necessarily) in front of a jury.

    The expert witnesses are also examined (deposed) pre-trial. In this case, the expert said nothing during the deposition to revise his pre-trial report, which is why the judge had little choice but to exclude his trial testimony – changing expert testimony at trial gives the defense no fair opportunity to defend. Since the expert testimony was excluded, there was no evidence left regarding the “softness” of the lenses, which meant that the judge had to take the case away from the jury. This victory was won on purely procedural grounds – we have no idea whether or not the lenses at issue were really “soft” under the claims.

  11. Hilarity from the DC opinion. Not only is relying a restriction to make a huge jump in a claim construction rather odd, but apparently the PTO didn’t even list down why the species were mutually exclusive. Lol.

  12. The x-exam of the opposed technical experts is the heart of a patent trial in England. The single judge is invariably an ex patents trial lawyer who observes the demeanour of the witness from a vantage point only a few feet away from the witness, and then finds the facts. The process can be absolutely gripping to watch.

    I had thought that, in US patent litigation, the x-exam of the witnesses happens before the trial begins. LB, thanks for the Link and, did this particular unfortunate witness get cross-examined at the trial itself. Is this usual?

  13. So, the scientific expert witness they hired can’t remember how he went about proving it, can’t keep his story straight, contradicts what’s in his report, and screws the pooch for the plaintiff.

    That’s the straight-up view of what happened. Another possibility (for which I have no evidence) is that the expert witness freaked out at the cross-examination, which suggested that his testing was not according to industry standards, and decided to “help” by retroactively changing his test procedure. He might have survived the “industry standard” attack by simply testifying that the differences between his procedure and the industry standard procedure wouldn’t have altered the results significantly.

    Kudos to the defense attorneys on cross, though. That was apparently excellent work.

  14. LB – thanks, that’s just plain hilarious.

    A lens sold as a soft contact lens must be proven to be soft.

    So, the scientific expert witness they hired can’t remember how he went about proving it, can’t keep his story straight, contradicts what’s in his report, and screws the pooch for the plaintiff.

    Everyone knows soft contact lenses are soft (?right?).

    But not if your evidence that they are “soft” is unreliable.

    :-)

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