United States: "Common Sense" Cannot Substitute For Record Evidence To Support Obviousness Rejections In Inter Partes Reexamination

In K/S HIMPP v. Hear-Wear Technologies, LLC, No. 13-1549 (Fed. Cir. May 27, 2014), the Federal Circuit affirmed the Board and held that it was correct to require record evidence to support a proposed obviousness rejection in an inter partes reexamination.

Hear-Wear Technologies, LLC ("Hear-Wear") is the owner of U.S. Patent No. 7,016,512 ("the '512 patent"), directed to a hearing aid.  The claims-at-issue, dependent claims 3 and 9, recite a "plurality of prongs that provide a detachable mechanical and electrical connection" from the behind-the-ear audio processing module to the in-the-canal module of the hearing aid.  Slip op. at 3.

During prosecution of the '512 patent, the examiner initially rejected these claims as known in the art and therefore obvious.  However, Hear-Wear amended the independent claims and the examiner ultimately allowed all the claims.  K/S HIMPP ("HIMPP") requested an inter partes reexamination of the '512 patent, which the PTO granted.  HIMPP proposed an obviousness rejection that the Central Reexamination Unit ("CRU") examiner refused to adopt because HIMPP "failed to provide evidence in support of [its obviousness] contention."  Id.  Hear-Wear appealed to the Board, which then concluded that, "although HIMPP argued that the content of claims 3 and 9 was 'well known,' HIMPP failed to direct the Board 'to any portion of the record for underlying factual support for the assertion.'"  Id. at 4 (citation omitted).  HIMPP appealed to the Federal Circuit and contended that the Board erred in requiring record evidence to support the assertion that the features were known prior art elements.

We recognize that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is 'basic knowledge' or 'common sense' as a replacement for documentary evidence for core factual findings in a determination of patentability.  To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence."  Slip op. at 8 (citing In re Zurko, 258 F.3d 1379, 1385-86 (Fed. Cir. 2001)).

On appeal, the Federal Circuit affirmed the Board and held that record evidence was required to support a finding that structural elements were known prior art elements.  The majority emphasized how this holding complied with the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).  In KSR, the Supreme Court cautioned against overemphasizing the importance of published articles and issued patents for combining references in obviousness determinations.  The majority distinguished KSR, stating that "the present case does not present a question whether the Board declined to consider the common sense that an ordinarily skilled artisan would have brought to bear when combining or modifying references.  Instead, it is about whether the Board declined to accept a conclusory assertion from a third party about general knowledge in the art without evidence on the record . . . ."  Slip op. at 6-7.  The essence of the majority's distinction was that KSR was a case related to "the combinability of references where the claim limitations were in evidence," and the instant case "involve[d] the lack of evidence of a specific claim limitation."  Id. at 7.

The Federal Circuit explained that neither the examiner nor the Board took official notice of what HIMPP asserted was known in the art.  The majority stated that although PTO examination procedure allows examiners to rely on common knowledge to support a rejection, it is only appropriate in narrow circumstances.  The majority reasoned that since the examiner and the Board did not take official notice of the facts at issue, HIMPP could not point to any evidence on the record.  The majority concluded that the Board correctly refused to accept "general conclusions about what is 'basic knowledge' or 'common sense' as a replacement for documentary evidence for core factual findings" in patentability determinations.  Id. at 8 (quoting In re Zurko, 258 F.3d 1379, 1385-86 (Fed. Cir. 2001)).  "To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence."  Id.  Accordingly, because HIMPP was unable to point the Board to any record evidence to support its contention that the claims were known in the art, the majority affirmed the Board's decision to not adopt HIMPP's obviousness rejection.

Finally, the majority turned to HIMPP's requests for the Court to take judicial notice.  First, HIMPP requested that the Court take judicial notice that a multiprong plug mechanical and electrical connection was known in the art.  The majority declined to take judicial notice "for the same reasons . . . that it was reasonable for the Board and Examiner to decline to take official notice."  Id. at 9.  Second, HIMPP requested that the Court take judicial notice of a prior art reference not cited in the inter partes reexamination.  The majority again refused to take judicial notice.  The majority noted that inter partes reexamination is usually limited to prior art references cited in the reexamination request and "prior art that raises a substantial new question of patentability as determined by the Director."  Id. (citing Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012)).  Because HIMPP did not cite the reference in its request for inter partes reexamination and the Director did not cite the reference as creating a substantial new question of patentability, the majority "decline[d] to exercise [its] discretion to take judicial notice."  Id.

Accordingly, because HIMPP failed to cite to any record evidence in support of its contention that claims 3 and 9 of the '512 patent contained only known prior art limitations, the Federal Circuit affirmed the Board's decision declining to accept HIMPP's obviousness contention.

Judge Dyk dissented, stating that "[t]his should be an easy case, reversing the quite odd decision of the [PTO]."  Dyk Dissent at 1.  Judge Dyk expressed concern that limiting the Board to record evidence would "undermine[] the purpose of post-grant agency review."  Id. at 2.  Moreover, in Judge Dyk's view, "the majority's holding is inconsistent with the Supreme Court's decision in KSR."  Id.  Judge Dyk concluded that the electrical and mechanical plug in question was well known and within the common sense of a person of ordinary skill, stating that "[e]very purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections."  Id. at 4.

Judge Dyk explained that KSR expanded the sources of information that could be used in the obviousness inquiry to include "background knowledge, creativity, and common sense of the person of ordinary skill."  Id. at 6 (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).  Disagreeing with the majority's distinction between KSR and the instant case, Judge Dyk reasoned that KSR allowed the Board to use "logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference."  Id. (quoting Perfect Web, 587 F.3d at 1329).  Accordingly, Judge Dyk would have reversed the Board's decision and "remand[ed] for proceedings consistent with the Supreme Court's decision in KSR."  Id. at 8.

Judges:  Lourie (author), Dyk (dissenting), Wallach
[Appealed from Board]

This article previously appeared in Last Month at the Federal Circuit, June, 2014.

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