Opinion
No. C09-1714 BZ
03-23-2012
PLANTRONICS, INC., Plaintiff(s), v. ALIPH, INC. AND ALIPHCOM, INC. Defendant(s).
ORDER GRANTING
SUMMARY JUDGMENT
In this patent infringement action involving concha-style earbuds, Defendants Aliph, Inc. and Aliphcom, Inc. (collectively "Aliph") move for summary judgment of non-infringement and invalidity. For the reasons stated below, the motion is GRANTED IN PART and DENIED IN PART.
All parties have consented to my jurisdiction for all proceedings including entry of final judgment, pursuant to 28 U.S.C. § 636(c).
BACKGROUND
Plaintiff Plantronics, Inc. ("Plantronics") filed suit on January 15, 2009 alleging that Aliph infringes U.S. Patent No. 5,712,453 (filed Jan. 27, 1998) (the "'453 patent"). The '453 patent relates to wireless concha-style earbuds for use primarily with cell phone receivers and headsets. ('453 patent col.1 9-15.) On March 1, 2011, the U.S. Patent Office issued a reexamination certificate that added dependent claims 16-56. Plantronics accuses Aliph's "Ergo" and "Spout" earbuds, which are used in connection with Aliph's "Jawbone" wireless headset, of infringing the '453 patent.
Following a claim construction hearing, pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), I issued a Claim Construction Order, construing several of the disputed claim terms in the '453 patent. (Docket No. 142.) Aliph now moves for summary judgment on non-infringement and invalidity.
EVIDENTIARY OBJECTIONS
Plantronics' Objections
Plantronics objects to the expert reports of Professor Dennis Lieu and Stephen Ambrose because "[u]nsworn expert reports prepared in compliance with Rule 26(a)(2) do not qualify as affidavits or otherwise admissible evidence for purpose of Rule 56, and may be disregarded by the court when ruling on a motion for summary judgment." (Pl.'s Opp. Br. p. 1) (citing, inter alia, Smith v. City of Oakland, Case No. 05-4045, 2007 U.S. Dist. LEXIS 59941, WL 2288328, at *9-10 (N.D. Cal. Aug. 9, 2007).) Plantronics objects even though its expert, Professor Barry Katz, also submitted a sworn declaration to which he attached his unsworn report. (See Docket No. 199.) This is a practice of which I disapprove, and with which other courts have struggled. See, e.g., Maytag Corp. v. Electrolux Home Products, Inc., 448 F.Supp.2d 1034, 1064 (N.D. Iowa 2006). No good reason exists, and none has been given, why an expert cannot fully state his or her opinions in a declaration made under penalty of perjury as required by Rule 56(c)(4). In their sworn declarations, Professor Lieu and Mr. Ambrose expressly reserve the right to correct or amend their reports, undercutting their usefulness on this motion. The expert reports are quite lengthy and touch on issues outside the scope of this motion. There is no good reason to require a court to both read through an expert's declaration, and then pick through an expert's lengthy report to locate those portions which may be relevant to the motion. In the exercise of my discretion (see Acoustical Design, Inc. v. Control Elecs. Co., 932 F.2d 939, 942 (Fed. Cir. 1991) "[a]dmission of expert testimony is within the discretion of the trial court"), I have relied only on the sworn declarations and not on the unsworn attached reports, and sustain objections accordingly.
In many of the cases which have accepted an unsworn report, the unsworn report was the only evidence submitted, leaving the trial court with a Hobson's choice. See e.g., Mills v. County of Lapeer, Case No. 09-14026, 2011 U.S. Dist. LEXIS 16030, 2011 WL 669389 (E.D. Mich. Feb. 17, 2011).
Aliph's Objections
Aliph's motion to strike the report of Plantronic's expert, Professor Katz, is DENIED without prejudice to being renewed were this case to proceed to trial. As noted above, I will only consider Professor Katz's declaration in ruling on this motion. With respect to Aliph's argument that Professor Katz is not qualified to render an opinion in this matter, that motion is DENIED to the extent that he is rendering opinions which are based on his knowledge of design rather than his knowledge of mechanical engineering.
This disposes of Docket No. 190. On this motion for summary judgment, there is no need to rule on those opinions of Professor Katz that are not pertinent to the motion. See Cornell Research Fund v. Hewlett-Packard Co., Case No. 01-1974, 2007 U.S. Dist. LEXIS 89637, WL 4349135, at *9 (N.D.N.Y. Jan. 31, 2007); Maytag Corp., 448 F.Supp.2d at 1063-65.
ANALYSIS
A. Non-infringement
Aliph seeks summary judgment that the accused products do not infringe the patent-in-suit. Neither party disputes that the focus of the infringement analysis is on independent claims 1 and 10, since the remaining claims at issue are all dependent on these two.
Courts engage in a two-step process to evaluate infringement. First, the court determines the scope and meaning of the claims via claim construction; then, the court compares that construction of the patent against the accused products. See, e.g., Business Objects, S.A. v. Microstrategy, Inc., 393 F.3d 1366, 1371 (Fed. Cir. 2004) (citations omitted); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999). While claim construction is a matter of law, infringement itself is a question of fact. See Frank's Casing Crew and Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1376 (Fed. Cir. 2004) (citations omitted). Therefore, a defendant is only entitled to summary judgment on the question of infringement "if the facts and inferences, when viewed in the light most favorable to [plaintiff], would not persuade a reasonable jury to return a verdict in favor of [plaintiff], the non-moving party." Business Objects, 393 F.3d at 1371. Put differently, "summary judgment of non-infringement can only be granted if, after viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue whether the accused device is encompassed by the claims." Pitney Bowes, 182 F.3d at 1304.
Infringement may be proven by literal infringement, or under the doctrine of equivalents. A claim is "literally infringed" if each properly construed claim element directly reads on the accused product or process. See Jeneric/Pentron Inc. v. Dillon Co., 205 F.3d 1377, 1382 (Fed. Cir. 2000); see also BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378-79 (Fed. Cir. 2007).
The parties dispute whether several claim elements are literally infringed. Aliph asserts five reasons why its accused products cannot infringe: (1) its products lack the "elongated" stabilizer of claims 1 and 10; (2) its products lack stabilizers "dimensioned" in the manners specified in claims 1 and 10; (3) its products lack a receiver "sized" in the manner specified in claims 1 and 10; (4) its products do not have "stabilizer pads" as required by claims 1 and 11; and (5) its products do not have the "contact points" specified in claim 10. I will address each argument in turn.
1. "Elongated" Stabilizers
In the claim construction order, I construed "stabilizer support" as "an elongated structure that extends from the ear cushion to the concha stabilizer pad and stabilizes the headset" and "concha stabilizer" as "an elongated stabilizing structure, which extends between the ear cushion and the upper concha." (Docket No. 142.) As Plantronics notes, both terms require an "elongated" structure. (Pl.'s Opp. Br. p. 4.) Since the parties' dispute centers on the meaning of "elongated," a term that I was not asked to (and did not) construe during claim construction, I must first construe that term.
Plantronics argues that "elongated" should be construed to mean "to . . . extend" and cites a statement I made during the claim construction hearing that "elongated" means "extend[ing] upward." (Pl.'s Opp. Br. p. 3.) Aliph, by contrast, asserts that "elongated" should be construed to mean a structure that is "longer than it is wide." (Def.'s Br. p. 4.) Because neither side argues that the asserted patent adopts a specialized meaning for the term, I begin with its ordinary meaning. Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331, 1337 (Fed. Cir. 2008). The word "elongated" means "having a form notably long in comparison to its width," "has more length than width" or "made longer." Oxford English Dictionary (1989); American Heritage Dictionary (1993); Webster's Third New International Dictionary (1981); Webster's New Collegiate Dictionary (1979). Even Plantronics' expert seems to acknowledge that "elongated" can mean something is "longer than it is wide." (Def.'s Br. p. 6 (citing Docket No. 186-6 at 103:20-104:1).) None of these definitions suggests that "elongated" means something that simply "extends upward." Indeed, if that was the case, any structure that extends upward could be "elongated" even if that structure is squat. Such a construction would not conform to the ordinary meaning of the word and is inconsistent with the notion I expressed during the hearing that the stabilizer extends upward into the upper concha.
The context of this statement was to explain that I believed that "a person of skill in the art looking at this invention would conclude that this [stabilizer] was something that extends upward and into . . . the upper concha." (Declaration of Jessie J. Ho, Ex. 1 at 77:11-13.)
Having read and evaluated the parties' competing positions, I am persuaded that Aliph's definition of the term "elongated" as a structure that is "longer than it is wide" is the better construction, and adopt it.
This definition is also consistent with other courts' construction of the term. See, e.g., Rembrandt Data Storage, LP v. Seagate Tech. LLC, Case No. 10-693, 2011 U.S. Dist. LEXIS 120018, 2011 WL 4950088, at *3 (W.D. Wis. Oct. 17, 2011); Spine Solutions, Inc. v. Medtronic Sofamor Danek, Inc., Case No. 07-2175, 2008 U.S. Dist. LEXIS 116648, 2008 WL 4831770 (W.D. Tenn. July 2, 2 008); see also McHugh v. Hillerich & Bradsby Co., Case No. 07-03677, 2010 U.S. Dist. LEXIS 16164, 2010 WL 682339 (N.D. Cal. Feb. 24, 2010) (construing "elongated" as "long and thin").
Plantronics next argues that even applying Aliph's proposed construction of the term "elongated," Aliph's allegedly infringing earbuds have "two concha stabilizer supports" that are elongated, and that summary judgment on non-infringement is therefore inappropriate. (Pl.'s Opp. Br. p. 4.) In support of this argument, Plantronics contends that the U-shaped "stabilizer support member" of Aliph's earbud is comprised of two stabilizer support members - one on either side of the ear cushion - and that both of these stabilizer support members are "elongated" because they are longer than they are wide. (Id.) This argument is unpersuasive. For Plantronics to prevail, the concha stabilizer support in Aliph's earbuds must be divided into three parts even though it is undisputed that the stabilizer is a single piece. (See JSUF No. 11.) Even Plantronics' expert admits that the division of this solitary U-shaped piece into three regions is "difficult to impossible to specify in a precise and quantitative fashion." (Declaration of Dane Reinstedt ("Reinstedt Decl."), Ex. 6 at 181.) It would certainly be possible for Aliph's U-shaped stabilizer support member to be "elongated" if the U-shaped piece was greater in length than width, but here, the undisputed evidence submitted by Aliph is that the stabilizer support members of Aliph's earbuds are wider than they are long (see JSUF Nos. 5-10; Declaration of Dennis Lieu ("Lieu Decl.") at ¶¶ 6-7), and are therefore not "elongated."
I also agree with Aliph that Plantronics' "two-stabilizer theory" is "irreconcilable" with its position on the claims in the '453 patent that require the concha stabilizer of claim 10 to be "ring shaped" or "torus shaped" with an "opening" or "vacant center." (See Deposition of Barry Katz, Docket No. 186-6 at 181:18-23.) This inconsistency in Plantronics' expert's opinion fails to create a genuine factual dispute. See Mshift, Inc. v. Digital Insight Corp., 747 F.Supp.2d 1147, 1170 (N.D. Cal. 2010).
Consequently, I find that Aliph's earbuds lack an elongated stabilizer. Given that literal infringement requires the patentee to prove the accused device contains each and every limitation of the asserted claim (see Bayer AG, 212 F.3d at 1247), Aliph is entitled to summary judgment on non-infringement of claims 1 and 10, and its motion on non-infringement is therefore GRANTED. I will nonetheless address Aliph's additional four arguments regarding non-infringement.
2. Stabilizer "Dimensioned" To Fit
Aliph next argues that it is entitled to summary judgment on non-infringement because its accused products lack stabilizers "dimensioned to fit within an upper concha" as required by claim 1 or "dimensioned to contact an upper concha" as required by claim 10. (Def.'s Br. at p. 7.) Specifically, Aliph argues that its products are not "dimensioned" in the manners required by the '453 patent because the U-shaped stabilizers of its products are not designed with the purpose or intent of engaging or contacting the upper concha. Rather, Aliph argues, it is undisputed that its products are dimensioned to fit within or contact the "lower, rear part of the concha." (Id.)
Given the evidence presented by the parties, I am not persuaded that Aliph is entitled to summary judgment on this issue. Aliph relies heavily on Professor Lieu, a mechanical engineer, who looked at a drawing of the upper concha and concluded that "it would appear to be a spot of only several millimeters in width," and that in effect, Aliph's products cannot fit within that space. (Lieu Decl. at ¶ 9.) Plantronics, however, relies on expert testimony that the accused products do in fact fit within or contact the upper concha because, as Plantronics argues, the upper concha "is much larger than Prof. Lieu thinks" and actually comprises the entire depression in the human ear that "lies above the crux of the helix and below the antihelix," as described in the '453 patent. (Pl.'s Opp. Br. at p. 7.) Accordingly, Plantronics contends that the accused products, which undisputedly contact this portion of the human ear, may infringe and that summary judgment is not appropriate. Based on the competing declarations of the parties' experts, there appears to be a material factual dispute regarding the location and scope of the "upper concha."
Aliph's objection to the Declaration of Gabriele Bungardt is OVERRULED. The court treated her declaration as providing factual testimony, not expert opinions.
Moreover, I am not persuaded by Aliph's argument that the "dimensioned to" language in claims 1 and 10 includes an "intent" requirement. Aliph made this same argument during the claim construction hearing, arguing that the claim language suggests an intentional purpose, i.e. , that a product must be intentionally designed to contact or fit within the upper concha. I disagreed with Aliph then and refused to read an "intent" requirement into the claims, finding that the claims' plain meaning simply requires that the stabilizer be "sized" in a particular manner. As there is a disputed issue of fact with respect to whether Aliph's accused products are "dimensioned to" contact or fit within the upper concha, Aliph's motion is DENIED.
3. Receiver "Sized" to Fit Between The Tragus and Anti-Tragus
Aliph also contends that it is entitled to summary judgment on non-infringement because its accused products do not literally include a "receiver sized to fit between a tragus and an anti-tragus of an ear" or a "receiver disposed between the tragus and anti-tragus" as required by claims 1 and 10. (Def.'s Br. at p. 9.) Aliph argues that the parties agreed to the definition of the terms "tragus" and "anti-tragus" and "receiver" and that its accused products have a receiver that sits behind (not between) the tragus and anti-tragus, and that it is the "stem" of the receiver (not the receiver itself) that sits between the tragus and anti-tragus. (Id. at 10.)
Plantronics contends that the '453 patent does not identify a "stem" and that to the extent that there is a structure that can be identified as a "stem," that structure is "part of the same structure from which sound is transmitted, and therefore part of the receiver." (Pl.'s Opp. Br. p. 10.)
The parties agree that a "receiver" is "the structure on the headset from which sound is transmitted." (Def.'s Br. at p.9 (citing Docket No. 99 at p. 2).) But the parties agree on little else. Given the evidence before me, I cannot rule as a matter of law that the "stem" identified by Aliph in Figure 1B of the '453 patent is not part of the receiver. Neither party submitted evidence on this specific point.Having therefore failed to carry its burden, Aliph's motion on this point is DENIED.
Plantronics' objection to the Second Declaration of Dane Reinstedt ("Second Reinstedt Declaration") is OVERRULED. (Docket No. 211.) I find that the evidence attached to the Second Reinstedt Declaration is proper reply evidence, and, in any event, did not find that evidence particularly useful. Accordingly, Plantronics' request for leave to respond is DENIED.
4. Stabilizer Pads
Aliph also argues that it is entitled to summary judgment for non-infringement of claims 1 and 11 because those claims require both a "stabilizer support" as well as a "concha stabilizer pad." More specifically, Aliph contends that claims 1 and 11 identify the "stabilizer support" and the "concha stabilizer pad" as two separate components, and that Aliph's accused products only have "a single, unitary piece of material with no distinguishing physical feature to indicate a 'pad.'" (Def.'s Br. p. 11.) Plantronics contends that the '453 patent is a utility patent, unconcerned by aesthetics, and that claim 11 demonstrates that the pad can be part of the stabilizer, citing Applied Med. Resources Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (emphasis in original), for the proposition that "the use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures."
Here, the claim language itself undercuts Plantronics' argument that the "stabilizer support member" and the "stabilizer pad" can be comprised of the same component. Claim 11 states in no uncertain terms that the "concha stabilizer" described in claim 10 is "comprised" of (1) a "stabilizer support coupled to the ear cushion" and (2) "a concha stabilizer pad coupled to the stabilizer support." ('453 patent col.6 9.19-24.) It may be, as Plantronics contends, that the "stabilizer support member" and the "stabilizer pad" need not be separately molded pieces. See Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1303 (Fed. Cir. 2011). This is particularly true given that neither party provided evidence regarding what the term "coupled to" in claims 1, 10 and 11 means. Cf. Id. at 1304 ("The specifications further disclose a method to couple the two structures by 'expos[ing] them to a temperature of about 120°C for twenty minutes or so to allow some diffusion or incipient melting to occur where they touch.' This passage suggests that the needle holder, retainer member, and bridging portion could be formed as an integral structure in the first instance. Thus, the specifications and the claims indicate that the 'retainer member' and the 'needle holder' need not be two separate pieces."). Nevertheless, Aliph has presented evidence that Plantronics' position is untenable because, under its interpretation, the "stabilizer pad" changes depending on how the earbud is positioned in an ear (see Reinstedt Decl., Ex. 6 at 155:4-156:9), such that when the accused product is removed from an ear it is impossible to determine where the pad is located (id. at 156:3-17). According to Aliph, this interpretation of the claims must fail because it would "never provide the public with adequate notice of what does or does not infringe the patent" given that the "stabilizer pad" is an ever-changing component. I agree. The '453 patent teaches that the "stabilizer support member" and the "stabilizer pad," while they may be molded from the same piece, are nevertheless separate structures. In other words, the "pad" must be separately identifiable from the "support member." If it were otherwise, Aliph is correct that there would be no distinction between the "stabilizer support member" and the "pad," and the latter would therefore be "superfluous" in violation of Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F. 3d 1111, 1119 (Fed. Cir. 2004).
Plantronics does not provide any evidence that the accused products have a "stabilizer support member" that is separate and distinct from a "stabilizer pad." Instead, Plantronics claims that separate structures are merely aesthetic and so long as Aliph's stabilizer support member performs both functions, Aliph's products infringe. Plantronics provides no authority for this proposition. Accordingly, Aliph's motion on this issue is GRANTED.
4. Contact Points
Aliph next moves for non-infringement as to claim 10 on the grounds that the "receiver" on its accused products does not "contact" the tragus and anti-tragus portions of the ear since the receiver is always covered by an ear cushion. Thus, it is Aliph's position that the ear cushion of its accused products "contact" the tragus and anti-tragus, but not the receiver itself.
Plantronics asserts that Aliph made this same argument during claim construction, and that I rejected this argument, finding that "direct touching" of the receiver is not required by claim 10. (Docket No. 142 at pp. 7-8.) I maintain the belief that Aliph's construction of the term "contact" is too narrow, and that a person skilled in the art would not necessarily conclude that the receiver has to "directly touch" the tragus and anti-tragus of the ear in order to be in "contact" with them. I also agree with Plantronics that the embodiments illustrated in Figures 1A and 1B of the '453 patent, which show an ear cushion that surrounds the receiver completely, demonstrate that there is at the very least a disputed issue of fact regarding whether Aliph's accused products infringe claim 10 of the '453 patent. Aliph's motion is therefore DENIED. 5. "Torus shaped" Stabilizer
Aliph moves for non-infringement as to claims 29, 35, 36, 47 and 53. Plantronics no longer asserts infringement of these claims. (Pl.'s Opp. Br. p. 13.) Accordingly, Aliph's motion for summary judgment as to claims 29, 35, 36, 47 and 53 is GRANTED.
C. Invalidity
Aliph next moves for summary judgment of invalidity of the '453 patent on a theory of anticipation and obviousness. (Def.'s Br. p. 13.) Each argument is addressed in turn. 1. Anticipation
Title 35 U.S.C. § 102 establishes the various grounds for invalidation of patents anticipated by prior art. Under section 102(a), a patent may be anticipated if the claimed invention was described in a printed publication "before the invention thereof by the applicant for patent." 35 U.S.C. § 102(a). In other words, a claimed invention cannot be validly patented if it was known, in use, patented, or described in a printed publication anywhere in the world, before the patentee's date of invention. Id. To invalidate a patent under section 102(b), an invention must have been "patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for the patent in the United States." 35 U.S.C. § 102(b). The "reference must describe the applicant's claimed invention sufficiently to have placed a person of ordinary skill in the field of the invention in possession of it." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) (to anticipate, "[t]here must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention"). "Because the hallmark of anticipation is prior invention, the prior art reference — in order to anticipate under 35 U.S.C. § 102 — must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements 'arranged as in the claim.'" Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); see also Therasense, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1333 (Fed. Cir. 2010). In order to anticipate, the prior art reference also must enable one of ordinary skill in the art to make the invention without undue experimentation. Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); see also In re Omeprazole Patent Litig., 483 F.3d 1364, 1379 (Fed. Cir. 2007). The accused infringer bears the burden of proving invalidity of the asserted patent by clear and convincing evidence. Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347, 1357-58 (Fed. Cir. 2007). "[A]nticipation is a question of fact, including whether or not an element is inherent in the prior art." Eli Lilly and Co. v. Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006).
In this case, the prior art alleged to anticipate is U.S. Patent No. 1,893,474 (the "Lieber patent"). (See Reinstedt Decl., Ex. 3.) Aliph asserts that the Lieber patent anticipates claims 1, 7, 10, 11, 18, 20, 21, 26, 28, 30 and 43 of the '453 patent. Plantronics asserts that the Lieber patent does not disclose: (1) a receiver sized to fit between a tragus and an antitragus of an ear, as required by claims 1 and 10 of the '453 patent; (2) an ear cushion dimensioned to cover a portion of the receiver, as required by claims 1 and 10 of the '453 patent; or (3) a concha stabilizer pad and stabilizer support member, required by claims 1, 10 and 11 of the '453 patent.
I agree with Plantronics that Aliph is not entitled to summary judgment on anticipation because there is a material factual dispute over whether the Lieber patent discloses all elements of the '453 patent. For example, Plantronics' expert, Professor Jesa H. Kreiner, declares that the Lieber patent does not disclose a receiver sized to fit between the tragus and the anti-tragus because the Lieber receiver is too large to so fit. (Declaration of Jesa H. Kreiner ("Kreiner Dec.") at ¶¶ 8-11.) Aliph's expert, Mr. Ambrose, does not categorically state that the Lieber patent discloses such a receiver, but merely that it discloses a "small receiver," which when placed in the user's ear will "seat on the anti-tragus." (Declaration of Stephen Ambrose ("Ambrose Decl.") at ¶ 3.) "Seating" on the anti-tragus is not the same as being "sized to fit between" the tragus and anti-tragus, as the '453 patent requires. Aliph has failed to establish by clear and convincing evidence that the Lieber patent discloses all elements of the '453 patent and Aliph's motion on the grounds of anticipation is therefore DENIED.
2. Obviousness
If the requirements for an anticipation defense are not satisfied, obviousness provides another basis for invalidating a patent. 35 U.S.C. § 103(a). To avoid being obvious, a patent must be "more than the predictable use of prior art elements according to their established functions." KSR In't Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). To determine obviousness, "the invention must be considered as a whole and the claims must be considered in their entirety." Kahn v. General Motors Corp., 135 F.3d 1472, 1479 (Fed. Cir. 1998).
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 questions of fact." Green Edge Enters., LLC v. Rubber Mulch Etc., 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 secondary considerations, including "commercial success, long felt but unsolved needs, [and] failure of others." KSR, 550 U.S. at 406 (quoting Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17-18 (1966)). Obviousness must be proved by clear and convincing evidence. Procter & Gamble Company v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). Thus, the inquiry on summary judgment is whether a jury applying the clear and convincing 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, 1339-1340 (Fed. Cir. 2010). Summary judgment of obviousness is appropriate if "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in dispute, and the obviousness of the claim is apparent in light of these factors." KSR, 550 U.S. at 427. Conversely, a factual dispute as to any one of these elements will defeat a motion for summary judgment. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. If an ordinarily skilled artisan can implement a predictable variation of a work available in the same field of endeavor, section 103 likely bars its patentability. Id. at 417. However, "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Id. at 418. Determining whether a patent claiming a combination of known elements would have been obvious usually entails considering the "interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Trimed, 608 F.3d at 1341 (quoting KSR, 550 U.S. at 418). Identifying a motivation to combine can be important because "inventions in most, if not all, instances rely upon building blocks since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known." KSR, 550 U.S. at 418-19. "[A]ny need known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420.
Additionally, a patent's subject matter can be proved obvious "by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims." Id. at 419-20; see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2010) (holding that obviousness analysis "may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion"). "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." KSR, 550 U.S. at 420.
Aliph asserts that it is entitled to summary judgment that claims 1, 7, 10, 11, 18, 20, 21, 26, 28, 30, 43 and 44 of the '453 Patent are obvious (1) in light of the Lieber patent and knowledge of a person skilled in the art; or (2) in light of the combination of the Lieber patent with Japanese Utility Patent Application No. 60-40187(U) ("Komoda patent") and knowledge of a person skilled in the art. (Def.'s Br. pp. 18-21.)
a. Undisputed Graham Factors: Scope/content of
prior art & Differences between prior art and
asserted claims
There are two relevant factors that the Federal Circuit has identified to determine whether prior art is analogous: "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d at 658.
Here, there is no material issue of disputed fact that the prior art is analogous. The parties agree that the scope of the prior art in the field of in-the-ear devices was broad by the 1990s and that the telecommunications, hearing, and audio industries all used receivers, ear cushions, and stabilizing features for engaging the upper concha. (JSUF Nos. 20-24.) It is also undisputed that between the 1930s and the 1990s receivers became smaller and that this was "a trend" known to those skilled in the art. (JSUF No. 24.) There is thus no material issue of disputed fact regarding whether the prior art identified by Aliph is "from the same field of endeavor." The prior art was clearly directed toward the same problem the inventor was trying to solve in the '453 patent, namely, providing a comfortable, stable device that would conform and adapt to the shape of any ear, with an emphasis on reducing the number of mechanical parts. Thus, as a matter of law, the Lieber patent and the Komoda patent were pertinent prior art.
There is also no disputed issue of fact regarding differences between the prior art and the asserted claims. Not only does Plantronics not argue that there are appreciable differences between the prior art devices and the device disclosed in the '453 patent, Plantronics admits that Lieber discloses features that "can be called a receiver, ear cushion, stabilizer support and pad." (Pl.'s Opp. Br. p. 16.) Thus, even though Plantronics disputes whether these features meet the requirements of the claims in the '453 patent, it nonetheless is undisputed the each of the technical components are disclosed in the Lieber and Komoda prior art. For example, the Lieber and Komoda patents both disclose in-the-ear receivers (see JSUF Nos. 28, 31) that fit within the concha. In fact, it is undisputed that Komoda discloses a receiver sized to fit between the tragus and the anti-tragus on an ear (see JSUF No. 32), consistent with claims 1 and 10 of the '453 patent. The Lieber prior art patent and, in particular, the Komoda prior art patent also disclose an ear cushion that covers a portion of the receiver (see Lieber patent, col.2:60-71; JSUF No. 34), as well as stabilizer support members that utilize the external anatomy of the human ear, particularly the upper concha of an ear. (See JSUF No. 35; see also Deposition of Jesa A. Kreiner ("Kreiner Depo."), Docket No. 186, Ex. 10 at 71:24-73:10, 86:14-87:6.) There is therefore no material issue of disputed fact as to either of the first two Graham factors.
b. The level of ordinary skill in the art
There is also no material issue of disputed fact as to the level of skill in the art. I previously ruled, consistent with the positions taken by both parties, that with respect to the '453 patent, a person of ordinary skill in the art would have either (1) an engineering or design degree that covered mechanical design and materials science, or (2) considerable work experience in the audio, telecommunications, or hearing industries that involved researching or developing devices designed to interact with the human ear." (Docket No. 142 at 3 n.2.)
Plantronics' main argument on the issue of obviousness is that a person of ordinary skill in the art would not have been motivated to combine the Lieber patent and the Komoda patent. It is to this issue that I now turn.
The presence or absence of a motivation to combine is a question of fact. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). The motivation to combine references serves to prevent hindsight bias. See McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir. 2001) ("To prevent hindsight invalidation of patent claims, the law requires some 'teaching, suggestion or reason' to combine cited references.") (quoting Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573 (Fed. Cir. 1997)); see also Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (stating that evidence of a motivation to combine prior art references "may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.").
Having reviewed the prior art and the evidence submitted by the parties, I find that the prior art clearly and convincingly discloses "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the" '453 patent does. KSR, 550 U.S. at 418. The Lieber and Komodo in-the-ear device patents teach that a small in-the-ear receiver that utilizes a stabilizer support member to secure the receiver may serve to reduce the number of mechanical components necessary to stabilize the receiver, and provide increased comfort to a variety of users irrespective of the uniqueness of the user's ear. Specifically, the Lieber patent teaches that the in-the-ear receiver should be covered with a soft ear cushion for increased user comfort and so that the earpiece can "adapt itself within reasonable limits to ears of different sizes and shapes." (Lieber patent, col. 1:19-23.) The Komoda patent teaches that the in-the-ear receiver should be "small, compact and extremely easy to carry around" (Reinstedt Decl., Ex. 4 at p. 9). Both the Lieber and Komoda prior art patents teach that in order to stabilize the receiver and prevent it from falling out of the ear, a stabilizer support member is necessary. (Lieber patent, col. 2:63-72, 75-81; Reinstedt Decl., Ex. 4 at p. 9.) Both of the prior art patents also teach that this stabilizer support member should be "flexible" (see Liber patent, col. 3 1.42-50; Reinstedt Decl., Ex. 4 at p. 10), and engage the external anatomy of the ear at the crux of the helix. (Id.) As a matter of common sense, a person of ordinary skill in the art would be expected to combine the Komoda and Lieber in-the-ear devices, and apply technology widely available in 1994 to (1) address the known difficulty of ensuring stability of the device via a stabilizing structure (other than an ear hook or a headset) that engages the external ear anatomy; and (2) ensure comfort to the user by miniaturizing the receiver and surrounding it with a soft, adaptable ear cushion. See KSR, 550 U.S. at 421. ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.") That person would be expected to produce a device substantially similar to that described in the '453 patent, much like Aliph did. This is particularly true here where it is undisputed that there are a limited number of anatomical features of the external ear that an in-the-ear device can engage to ensure stability without the use of additional mechanical parts (JSUF No. 25), and where it is also undisputed that there was a trend between the 1930s and the 1990s known to those skilled in the art towards the miniaturization of in-the-ear devices. (JSUF No. 24.) Indeed, the Lieber patent even teaches that the stabilizing support member should somehow utilize the upper portion of the external anatomy of an ear in order to "be held against outward and downward turning movement," a force that assists in "holding the earpiece in position." (Lieber patent, col. 2:76-81.) Professor Kreiner's declaration and deposition testimony, upon which Plantronics relies in an attempt to create a triable issue of fact, do not in fact create any triable issue; his testimony is largely conclusory, and focuses rigidly on whether parts of Lieber and Komoda can be combined in a strict sense to create a workable device, and not on whether a person of ordinary skill would improve on Lieber and Komoda in a predictable fashion. See KSR, 550 U.S. at 417.
Plantronics' argument that a person of ordinary skill in the art would not combine the Lieber and Komoda prior art patents because the "Lieber design relies on filling the concha, and the Komoda design relies on a hook in the crux (crus) of the helix" is also not persuasive. (Pl.'s Opp. Br. at p. 17.) In fact, the opposite is true. The Lieber patent does not simply rely on the receiver to "fill the entire concha" for the purposes of providing stability. The Lieber patent plainly discloses "two projecting parts," one of which is "adapted to extend behind the crus of the helix of the ear to aid in holding the earpiece in position in the ear." (Lieber patent, col. 1:67, 70-73) (emphasis added).) This stabilizing member is disclosed in Figure 2 of the Lieber patent, and identified in preferred embodiment as structure number four.
Moreover, KSR and cases decided in its aftermath have established that "the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony." Wyers v. Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010).
"The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art." KSR, 550 U.S. at 420. Here, it is undisputed that all of the technical elements of the invention identified in the '453 patent are present in the prior art, and that the invention of in-the-ear devices that were comfortable and provided a stabilizing member that worked with the anatomy of an ear was a problem known in the field of the endeavor at the time of the invention. It 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 comfortable, 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.
d. Relevant secondary considerations
Plantronics further argues that secondary indicia of nonobviousness, including copying and commercial success, support a finding of nonobviousness. (Pl.'s Opp. Br. at 18-19.) 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." Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (citing, inter alia, Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
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, unsworn expert report.
I did not find Plantronics' evidence of secondary considerations, to the extent it was not in expert reports I did not consider, particularly persuasive. For example, I found nothing helpful in the Drysdale testimony which Plantronics cites on page 19, line 1 of its Opposition.
Accordingly, I find that the asserted claims of the '453 Patent are invalid pursuant to 35 U.S.C. section 103, and GRANT Aliph's motion for invalidity of claims 1, 7, 10, 11, 18, 20, 21, 26, 28, 30, 43 and 44.
Finally, Aliph moves for partial summary judgment as to invalidity of the new dependent claims 25, 29, 31-42 and 45-56, which it argues are made obvious by the combination of the Lieber patent, the Komoda patent and U.S. Patent No. 5,048,090 (the "Geers patent"). Dependent claims 25, 29, 31-42, and 45-56 relate to concha stabilizers that are "ring shaped," "torus shaped," or have an "opening" or "vacant center." Aliph argues that the Geers patent discloses a "hoop" as a stabilizing structure, which is substantially torus shaped, or, at a minimum, ring-shaped. Accordingly, Aliph argues that it would have been obvious to one skilled in the art to employ a toroidal or ring-shaped stabilizer in light of Geers, and to combine the toroidal or ring-shaped stabilizer to the in-the-ear device disclosed in Lieber with the small-sized receiver disclosed in Komoda. Plantronics contends that summary judgment should be denied because there are disputes of fact regarding the motivation to combine the references. (Pl.'s Opp. Br. p. 20.)
I find that there is sufficient undisputed evidence of a motivation to combine the prior art Lieber and Komoda patents with the prior art Geers patent to derive a ring-shaped or toroidal stabilizing structure. As a threshold matter, I note that much of the parties' evidence on this issue has been excluded due to my evidentiary rulings. (See supra at pp. 2-3.) The consequence of my excluding the report of Mr. Ambrose is that there is no expert testimony supporting a holding of obviousness; however, I conclude that no such testimony is required because there are no underlying factual issues in dispute as to obviousness. See Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008). The technology in this case is simple and "neither party claims that expert testimony is required to support such a holding." Id. (citing Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984) ("[T]he references and appellant's invention are easily understandable without the need for expert explanatory testimony."); Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369-70 (Fed. Cir. 2004); Iron Grip Barbell Co., v. USA Sports, Inc., 392 F.3d 1317, 1323 n.3 (Fed. Cir. 2004)). "The ultimate judgment of obviousness is a legal determination." KSR, 550 U.S. at 425. Where, as here, "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." Id. There is no genuine dispute that Geers discloses a hoop-shaped or ring-shaped stabilizing structure for an in-the-ear device. And, as noted above, there is also no genuine dispute that (1) achieving a comfortable fit for devices that engage the human ear was a goal for decades before 1994 (JSUF No. 21); (2) circular ear cushions were known in the art prior to 1994 (JSUF No. 23); and (3) there are only a limited number of anatomical features that any in-the-ear device can engage (JSUF No. 25). These undisputed facts, in conjunction with the prior art patents, which teach that a stabilizing structure should (1) be flexible and adaptable to fit a wide range of ears; (2) engage the ear anatomy for stability and security without the use of multiple mechanical parts; (3) be soft and comfortable to the user without impairing technical operation of the in-the-ear device; and (4) as Greer teaches, provide "good ventilation" to the ear (see Greer patent, col. 1:25), demonstrate that a person skilled in the art would have been motivated to combine the ring-shaped stabilizer of Geers to the ear cushion and receiver of Lieber and Komoda, in order to create an in-the-ear device that is small, comfortable and adaptable to a wide-variety of ears. The use of a ring-shaped or hoop-like structure that engages the upper concha for stability is obvious in light of the prior art patents and the market pressures in this field of endeavor. "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." KSR, 550 U.S. at 420. Such a combination is more likely to be obvious where it "'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement." Id. at 417 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)). The "ring shaped" and "vacant center" stabilizers of claims 25, 29, 31-42 and 45-56 of the '453 patent are the result of precisely such an obvious combination, and Aliph's motion on this point is therefore GRANTED.
In light of the above rulings, I need not reach Aliph's final request for partial summary judgment of no liability for the new claims added during reexamination prior to the issuance of the reexamination certificate on March 1, 2011.
--------
A judgment in Aliph's favor on the issues of both noninfringement and invalidity will be entered accordingly.
IT IS SO ORDERED.
________________
Bernard Zimmerman
United States Magistrate Judge
G:\BZALL-BZCASES\PLANTRONICS V. ALIPH\ORDER ON ALIPHS MOT FOR SUMMARY JUDGMENT.BZ VERSION2.FINAL RULING.wpd