Hearing Components, Inc. v. Shure Inc.

Decision Date01 April 2010
Docket Number2009-1365.,No. 2009-1364,2009-1364
Citation600 F.3d 1357
PartiesHEARING COMPONENTS, INC., Plaintiff-Appellant, v. SHURE INC., Defendant-Cross Appellant.
CourtU.S. Court of Appeals — Federal Circuit

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Kevin M. Flannery, Dechert LLP, of Philadelphia, PA, argued for plaintiff-appellant. With him on the brief were Joseph R. Heffern and Vincent A. Gallo.

Marc S. Cooperman, Banner & Witcoff, Ltd., of Chicago, IL, argued for defendant-cross appellant. With him on the brief were J. Peter van Es, Erik S. Maurer, Bradley J. Van Pelt and Katherine L. Fink.

Before LOURIE, RADER and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Hearing Components, Inc. ("Hearing Components") appeals from the judgment of the United States District Court for the Eastern District of Texas determining that claims 1 and 2 of U.S. Patent 5,401,920 (the "'920 patent") are invalid as being indefinite. Hearing Components, Inc. v. Shure, Inc., No. 9:07-CV-104, slip op. at 11-13, 2008 WL 6763141 (E.D.Tex. Dec. 1, 2008) ("Claim Construction Opinion"). Hearing Components also appeals from the court's grant of judgment as a matter of law ("JMOL") of noninfringement of claims 17 and 36 of U.S. Patent 4,880,076 (the "'076 patent") and claims 1 and 13 of U.S. Patent 5,002,151 (the "'151 patent") by Shure Inc.'s ("Shure's") earphones employing a straight nozzle. Hearing Components, Inc. v. Shure, Inc., No. 9:07-CV-104, 2009 WL 593756, 2009 U.S. Dist. Lexis 17163 (E.D.Tex. Mar. 6, 2009) ("Infringement Opinion"). Shure cross-appeals from the court's denial of JMOL of noninfringement of the same claims of the '076 and '151 patents by Shure's earphones employing a barbed nozzle, id., its denial of JMOL of invalidity, Hearing Components, Inc. v. Shure, Inc., No. 9:07-CV-104, 2009 U.S. Dist. Lexis 17168 (E.D.Tex. Mar. 6, 2009) ("Validity Opinion"), and its determination of no laches, J.A. 4940-49, for those patents. We affirm in part, reverse in part, and remand.

BACKGROUND

Hearing Components owns the three patents in suit. The '076 and '151 patents are related patents with similar specifications and are directed toward a hearing aid ear piece connected to a disposable, compressible foam sleeve by an attaching or fastening means, for inserting into the ear canal. The '920 patent describes and claims a fibrous guard that is sound-porous but blocks cerumen, or ear wax. Shure sells earphone products, including earphones with two different nozzle designs, straight and barbed.

In May 2007, Hearing Components sued Shure, accusing Shure of infringing the '076 and '151 patents with both the straight and barbed nozzle designs. All of the asserted claims of the '076 and '151 patents include an "attaching" or a "fastening" means. Claim 1 of the '151 patent reads as follows:

1. An ear piece component for use with a user-disposable sleeve, having a duct and soft polymeric foam firmly secured to the duct, to facilitate transmission of sound to an ear canal of a user, said ear piece component comprising:
a connecting portion having (i) distal and proximal ends and an exterior surface between said distal and proximal ends, (ii) a sound tube extending through said connecting portion between said distal and proximal ends, and (iii) means on said exterior surface for disposably attaching the duct of the sleeve to said connecting portion, and
a flange portion secured to said proximal end.

'151 patent col. 14 ll.26-38 (emphasis added). Claims 13 of the '151 patent and 17 and 36 of the '076 patent further recite that the sleeve is "insertable into the ear canal of a user." Although claim 1 of the '151 patent does not explicitly recite insertion into the ear canal, the court construed the recited "ear piece" component to mean "a constituent part of the portion that is inserted into the external ear canal, a part of which may extend outwardly into the bowl of the ear." Claim Construction Opinion, slip op. at 5-6 (emphasis added); see Validity Opinion, 2009 WL 593836 at *4 n. 7, 2009 U.S. Dist Lexis 17168 at *16 n. 7.

Hearing Components also alleged that another Shure product infringed claims 1 and 2 of the '920 patent. Claim 1, which is representative of the asserted claims of the '920 patent and from which claim 2 depends, reads as follows:

1. For use in connection with a sound transmitting device of the type in which a housing contains a sound transmitting tube having a sound outlet port confronting the ear drum when said device is fitted within a user's ear canal,
a disposable wax guard for mounting over the sound outlet port to prevent cerumen from fouling said outlet port, said wax guard being readily installed and replaced by a user, comprising a thin, flexible membrane that permits a user to position said guard over said outlet port, one side of said membrane being provided with a normally tacky and pressure-sensitive adhesive layer except in that portion adapted to overlie said outlet port, the portion of said guard overlying said outlet port being porous to sound and capable of wax entrapment.

'920 patent col.6 ll.38-53 (emphasis added).

In December 2008, the district court construed certain claims of the patents in suit. Claim Construction Opinion, No. 9:07-CV-104. During claim construction, the court found the limitation in the '920 patent stating "said wax guard being readily installed and replaced by a user" indefinite. Id., slip op. at 11-13. The court reasoned that the word "readily" was not sufficiently explained in the specification. Id. at 12-13. According to the court, the specification first notes that some prior art products required a tool or solvent to remove wax buildup, but it then disparages prior art products for having filters that were difficult to remove or replace by the elderly and those "unable to see clearly enough or to perform fine physical actions well enough." Id. at 12. The court found that the specification's standard for the word "readily" was so subjective that the court could not determine what the claim term meant in the context of the patent. Id. The court stated that "it would be extremely difficult, if not impossible, for someone attempting to design around claim 1 to determine what test group of users would be used to measure ease of replacement and which degree of difficulty would be sufficient to avoid infringement. The court therefore finds this claim term indefinite." Id. at 13.

The district court proceeded to trial on the '076 and '151 patents, and the jury found both patents not invalid and infringed by Shure's products both with a barb and with a straight nozzle. The jury therefore awarded damages of $4,622,999. Infringement Opinion, 2009 WL 593756 at *1, 2009 U.S. Dist. Lexis 17163 at *2. Shure moved for JMOL of invalidity of those patents and noninfringement by both its barbed- and straight-nozzled products. In March 2009, the court denied Shure's motion for JMOL of invalidity and granted in part its motion for JMOL of noninfringement.

In addressing infringement on Shure's motion for JMOL regarding the '076 and '151 patents, the district court focused on the "attaching" or "fastening" means. The court had previously determined that both "means" limitations were in means-plus-function format and therefore were governed by 35 U.S.C. § 112, paragraph 6. The court had further found that the corresponding structures for the limitations in all four claims were the same:

(1) A duct to which a foam sleeve is firmly secured by (a) being molded onto the duct or (b) a layer of adhesive cement where: (i) The duct and ear piece are connected using mating screw threads; (ii) The duct and ear piece are connected using a bayonet or ball-and-socket attachment; (iii) The duct and ear piece are connected using a layer of adhesive cement between the proximal end of the sleeve and the distal end of the ear piece; and
(2) Equivalents thereof.

Infringement Opinion, 2009 WL 593756 at *2, 2009 U.S. Dist. Lexis 17163 at *6-8. The '076 and '151 patents depict a screw thread attachment at Figure 1 and a ball-and-socket attachment at Figure 4, both reproduced below:

In Figures 1 and 4, the ear piece is represented by numerals 11 and 41, respectively. The sleeves, 13 and 43, each include an elongated plastic duct, 16 and 46. In Figure 1, the "attaching means" consists of screw threads 12, and in Figure 4, it consists of ball 42 and socket 47. The parties had agreed that none of Shure's accused devices contained a structure identical to screw threads, a bayonet/ball-and-socket attachment, or a layer of adhesive cement. Id. at *3, 2009 U.S. Dist. Lexis 17163 at *8. However, Hearing Components had argued, and the jury had found, that both the straight and barbed nozzles were equivalent to a screw thread or a ball-and-socket attachment. Id. Representative examples of Shure's straight- and barbed-nozzled earphones, inserted in ducts of cross-sectioned foam sleeves, as shown in Shure's brief, are depicted below.* The straight-nozzled earphone is on the left, and the barbed-nozzled earphone is on the right.

Shure's Br. 7. Shure's products include a plastic duct that is glued to a foam sleeve. Shure's straight nozzle is attached by interference fit into the duct, i.e., the outer diameter of the nozzle is larger than the inner diameter of the duct. The duct is therefore stretched outward when the nozzle is inserted, and friction holds the nozzle inside the duct. Similarly, Shure's barbed nozzle is attached to the duct by interference fit, but the nozzle also includes a protrusion, or barb, molded out of the same piece of plastic, to increase the friction holding the duct on the nozzle.

Focusing on equivalence, the district court held that Shure's straight-nozzled products did not infringe the asserted claims, but that its barbed-nozzled products did. The court found the evidence legally insufficient to support the jury's finding of infringement by Shure's straight-nozzled products. The court...

To continue reading

Request your trial
81 cases
  • Chamberlain Grp., Inc. v. Techtronic Indus. Co., Case No. 16 C 6097
    • United States
    • U.S. District Court — Northern District of Illinois
    • May 23, 2018
    ...the '275 patent claims, the jury heard substantial evidence supporting a finding of nonobviousness. See, Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1374 (Fed. Cir. 2010), abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., ––– U.S. ––––, 134 S.Ct. 2120, 189......
  • WesternGeco L.L.C. v. ION Geophysical Corp., CASE NO. 4:09-CV-1827
    • United States
    • U.S. District Court — Southern District of Texas
    • June 26, 2012
    ...perform their function of notifying the public of the scope of the patentee's right to exclude.Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366-67 (Fed. Cir. 2010) (citations omitted). This distinctiveness or definiteness requirement is met if "one skilled in the art would unders......
  • WesternGeco L.L.C. v. ION Geophysical Corp., CASE NO. 4:09-CV-1827
    • United States
    • U.S. District Court — Southern District of Texas
    • June 11, 2012
    ...perform their function of notifying the public of the scope of the patentee's right to exclude.Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366-67 (Fed. Cir. 2010) (citations omitted). This distinctiveness or definiteness requirement is met if "one skilled in the art would unders......
  • Westerngeco L.L.C. v. Ion Geophysical Corp.
    • United States
    • U.S. District Court — Southern District of Texas
    • June 26, 2012
    ...adequately perform their function of notifying the public of the scope of the patentee's right to exclude.Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366–67 (Fed.Cir.2010) (citations omitted). This distinctiveness or definiteness requirement is met if “one skilled in the art wou......
  • Request a trial to view additional results
3 books & journal articles
  • Chapter §2.04 Claim Definiteness Requirement
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 1 Basic Principles
    • Invalid date
    ...(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)).[164] Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366 (Fed. Cir. 2010).[165] Datamize, 417 F.3d at 1347 (stating that "a difficult issue of claim construction does not ipso facto result in a......
  • Chapter §9.06 Graham Factor (4): Secondary Considerations
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 9 The Nonobviousness Requirement
    • Invalid date
    ...Soverain Software, 705 F.3d at 1346.[390] Soverain Software, 705 F.3d at 1346–1347.[391] Soverain Software, 705 F.3d at 1347.[392] 600 F.3d 1357 (Fed. Cir. 2010) (Lourie, J.), abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).[393] Hearing Comp......
  • Chapter §16.03 Infringement Under the Doctrine of Equivalents
    • United States
    • Full Court Press Mueller on Patent Law Volume II: Patent Enforcement Title CHAPTER 16 Comparing the Properly Interpreted Claims to the Accused Device
    • Invalid date
    ...62 F.3d 1512 (Fed. Cir. 1995) (en banc).[107] Hilton Davis, 62 F.3d at 1519. See also Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1370 (Fed. Cir. 2010) (observing that Federal Circuit has "stated that '[e]vidence of known interchangeability between structure in the accused device......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT