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July 24, 2014

Objective Indicia of Non-Obviousness Must Be Considered Before Concluding Patent Claims Are Obvious

Addressing the objective indicia of non-obviousness in the context of summary judgment, the U.S. Court of Appeals for the Federal Circuit overturned a district court’s judgment of obviousness, finding the district court did not properly consider objective indicia of non-obviousness, including copying and commercial success.  Plantronics, Inc. v. Aliph, Inc., Case Nos. 12-1355 (Fed. Cir., July 31, 2013) (Wallach, J.).

Plantronics, Inc. (Plantronics) filed suit alleging that Aliph and Aliphcom (collectively, Aliph) products infringe Plantronics patent directed to headphones or ear buds that are inserted into a user’s ear without projections hooking onto the user’s ear. 

Aliph requested ex parte reexamination of Plantronics’ asserted patent by the U.S. Patent and Trademark Office (USPTO), asserting that the asserted claims were invalid as anticipated and obvious in view of four prior art references.  The USPTO granted reexamination, and the district court litigation was stayed.  After the USPTO confirmed the patentability of the challenged claims the district court issued its claim construction order.

The district court granted summary judgment for Aliph, holding the asserted claims were invalid on the basis that common sense would have motivated a person of ordinary skill in the art to combine prior art references to achieve the patented invention.  However, the district court did not cite any expert testimony indicating that there was a motivation to combine.  Moreover, the court did not consider any objective indicia of non-obviousness before coming to their conclusion, but determined that common sense would motivate a skilled artisan to combine the relevant references’ teachings.  Plantronics appealed. 

In reversing the summary judgment, the Federal Circuit explained that the trial courts must weigh all evidence, including objective considerations, and must find support in the record before issuing an obviousness determination.  Objective evidence, such as a previous inventor’s failed attempt to combine the prior art, or evidence that Aliph profited by copying the patent, had been considered by the district court only as a type of supplemental review after it already had found the claimed invention to be obvious.  As the Federal Circuit explained, failure to give proper consideration to such evidence can be fatal because “common sense” may not be so apparent in view of objective evidence of non-obviousness (e.g., commercial success and copying), particularly when all reasonable inferences are drawn in favor of the patentee.

The Federal Circuit noted that its jurisprudence has consistently stood for the proposition that all evidence pertaining to the objective indicia of non-obviousness must be considered before reaching an obviousness conclusion.  The significance of the fourth Grahamf actor cannot be overlooked or be relegated to “secondary status.”  Accordingly, the Court found that the commercial success of Aliph’s product and the failed of attempts to combine the prior art elements before the subject patent did so in the claimed invention provided genuine issues of material fact as to whether it would be mere “common sense” to combine the elements in the prior art to arrive at the claimed invention.

© 2014 McDermott Will & Emery

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