05/27/14

K/S HIMPP v. Hear-Wear Tech.: Need Evidentiary Support to Assert Claim Limitation As "Well-Known" in Reexam

Category: Post-Grant Proceedings 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleK/S HIMPP v. Hear-Wear Tech., LLC, No. 2013-1549 (Fed. Cir. 2013-1549).
IssueHIMPP argues that the CRU Examiner and the Board failed to consider the knowledge of a person having ordinary skill in the art [as articulated by the prosecuting examiner of the patent application] solely because HIMPP did not provide documentary evidence to prove purportedly well-known facts.
K/S HIMPP at *5 (text added).
HoldingsWe agree with Hear-Wear that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ’512 patent were known prior art elements. […] HIMPP must […] “point to some concrete evidence in the record in support of these findings[,]” [in order to reject a claim limitation].
Id. at *6 (text added).
 
 
 
Procedural HistoryK/S HIMPP (“HIMPP”) appeals from the decision of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences (“Board”) in an inter partes reexamination affirming the Central Reexamination Unit (“CRU”) Examiner’s decision not to reject claims 3 and 9 of U.S. Patent 7,016,512 (the “’512 patent”) owned by Hear-Wear Technologies, L.L.C. (“Hear-Wear”).[…]
K/S HIMPP at *2 (internal citations omitted).
 
 
 
 
Legal Reasoning (Lourie, Wallach)
Background
Claims at Issue3. The at least partially in-the-canal module for a hearing aid of claim 2 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.

9. The hearing aid of claim 8 wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to said behind-the-ear module.

K/S HIMPP at *3.
Pre-Grant and Post-Grant ProceedingsDuring prosecution of the ’512 patent, the Examiner initially rejected claims 3 and 9 because they would have been obvious. For claim 3, the Examiner found that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art.” [...] Hear-Wear never challenged the Examiner’s finding of “known in the art,” but instead focused on the independent claims. All claims were allowed. The PTO then granted a third party request by HIMPP for inter partes reexamination of the ’512 patent. HIMPP argued in its request that claims 3 and 9 would have been obvious because “such detachable connections were known at the time of the alleged invention as concluded by the Examiner during prosecution.” […] The CRU Examiner refused to adopt HIMPP’s proposed rejection because HIMPP failed to provide evidence in support of that contention. […] The Board found 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 *3-4 (internal citations omitted).
Analysis: Evidentiary Support for "Well-Known" Subject Matter
KSR and 'well-known' subject matterIn KSR, the Supreme Court criticized a rigid approach to determining obviousness based on the disclosures of individual prior art references that were already on the record, with little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications. [...] But 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, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art.
K/S HIMPP at *6-7 (internal citations omitted).
Need evidence to reject claim limitationThe Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support. Zurko, 258 F.3d at 1385– 86. Accordingly, the Board’s holding is not inconsistent with KSR’s caution against the overemphasis on publications and patents for combining or modifying prior art that are already on the record. […] In contradistinction to KSR, this case involves the lack of evidence of a specific claim limitation, whereas KSR related to the combinability of references where the claim limitations were in evidence.
Id. at *7 (internal citations omitted).
Analysis: Issues Not Presented in Inter Partes Reexamination
Reexamination Appeals Limited to Original 'Substantial New Question of Patentability'
We decline to exercise our discretion to take judicial notice of any “multi-pronged plug” knowledge for the same reasons mentioned above that it was reasonable for the Board and Examiner to decline to take official notice. See […] We also decline to take judicial notice of the Prentiss reference and to expand the scope of our review beyond the grounds upon which the Board actually relied. […]
K/S HIMPP at *9 (internal citations omitted).
The PTO’s rules make clear that an inter partes reexamination requester may not, except in limited circumstances, submit new prior art evidence that was not cited in the reexamination request. 37 C.F.R. § 1.948 (listing exceptions not applicable here). The scope of the inter partes reexamination is otherwise limited to the prior art that raises a substantial new question of patentability as determined by the Director. [...] Prentiss was a part of the ex parte reexamination, but the PTO, as was within its discretion, explicitly declined to merge the two proceedings. Since HIMPP did not cite the Prentiss reference in its request for inter partes reexamination and the Director did not cite the reference for the substantial new question of patentability, we decline to consider the Prentiss reference.
Id. at *9-10.
Conclusion
Because HIMPP failed to cite any evidence on the rec- ord to support its contention that claims 3 and 9 of the ’512 patent contained only known prior art limitations, we affirm the Board’s decision to decline to adopt HIMPP’s obviousness contention.
K/S HIMPP at *10.





DYK, Circuit Judge, dissenting. K/S HIMPP, Dyk Op. at *1.
Grounds for DissentIn my view, the majority’s holding is inconsistent with the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and will have substantial adverse effects on the examination process. The majority adopts a “[r]igid preventative rule[] that den[ies] factfinders recourse to common sense” even though the Court held such rules “neither necessary under our case law nor consistent with it.” Id. at 421. Precluding examiners from using their knowledge and common sense significantly impairs their ability to review applications adequately and undermines the purpose of post-grant agency review. I respectfully dissent.
K/S HIMPP, Dyk Op. at *2.
No One on Reexam or Appeal Determined with limitation was 'well-known'HIMPP argued that claims 3 and 9 were similarly obvious. The only difference between those claims and the rejected claims was “a plurality of prongs that provide a detachable mechanical and electrical connection,” and HIMPP argued that “such detachable connections were known at the time of the alleged invention as concluded by the Examiner during prosecution.” J.A. 138, 140. The examiner in the inter partes reexami- nation declined to adopt the rejection on the ground that K/S HIMPP submitted “no evidence in support of requester’s contention.” J.A. 415. […] Neither the examiner nor the Board even addressed the question of whether a plurality of prongs used to make a detachable connection was well known in the art at the time of the patent’s 2001 priority date.
Id. at *3.
Examiner's Should be able their expert knowledgeThe question is whether the PTO was obligated to utilize its expert knowledge to determine whether the connection was well known in the prior art. As the Supreme Court has recognized, “the primary responsibility for sifting out unpatentable material lies in the Patent Office.” Graham v. John Deere Co., 383 U.S. 1, 18 (1966). The assumption that PTO examiners will use their knowledge of the art when examining patents is the foundation for the presumption in 35 U.S.C. § 282(a) that issued patents are valid. […] Just as the PTO’s expert knowledge is the foundation for the presumption of validity, in Dickinson v. Zurko, the Court held that the agency’s expert knowledge was the foundation for the substantial evidence standard of appellate review. 527 U.S. 150, 162 (1999).
Id. at *4.



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