Is Evidence of Obviousness Always Required?

by Foley & Lardner LLP

In K/S HIMPP v. Hear-Wear Technologies, LLC, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the decision of the Central Reexamination Unit Examiner that refused to hold claims obvious where the inter partes reexamination requestor had failed to provide any evidence that the claim element at issue was known in the art. Judge Dyk’s strong dissenting opinion is notable for taking the USPTO to task for failing to invoke its own technical expertise to invalidate the claims at issue without requiring direct evidence of obviousness.

The Patent at Issue

The patent at issue was Hear-Wear’s U.S. Patent 7,016,512, directed to a “hearing aid with three main parts: a behind-the-ear audio processing module, an in-the-canal module, and a connector between the modules.” Claims 3 and 9 were at issue:

3. 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.

During prosecution, the Examiner asserted that the “plurality of prongs that provide a detachable mechanical and electrical connection” recited in claims 3 and 9 was “known in the art.” According to the Federal Circuit decision, Hear-Wear never challenged that assertion, but obtained allowance based on the independent claims.

The Inter Partes Reexamination

HIMPP requested inter partes reexamination of the patent. In its request, HIMPP argued 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.’” As summarized in the Federal Circuit decision, “[t]he CRU Examiner refused to adopt HIMPP’s proposed rejection because HIMPP failed to provide evidence in support of that contention.” Thus, the patentability of claims 3 and 9 was maintained.

The PTAB upheld the CRU Examiner’s decision, agreeing that the record did not show that “the particular distinct connection structures set forth in … claims [3 and 9] [were] disclosed,” and that the original Examiner “never took official notice” that the “plurality of prongs” was known in the art.

While the inter partes reexamination was pending, HIMPP filed a request for ex parte reexamination of claims 3 and 9 citing U.S. Patent 3,123,678 (“Prentiss”) for disclosing the features of claims 3 and 9.

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Lourie and joined by Judge Wallach. The majority cited the 2001 Federal Circuit decision in In re Zurko and held:

We 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. The patentability of claims 3 and 9 with the limitation “a plurality of prongs that provide a detachable mechanical and electrical connection” presents more than a peripheral issue.…. The determination of patentability… therefore requires a core factual finding, and as such, requires more than a conclusory stateent from either HIMPP or the Board.

The majority explained further:

The requirement that evidence on the record is necessary to support the “plurality of prongs” limitation is not inconsistent with KSR’s caution against the “overemphasis on the importance of published articles and the explicit content of issued patents.”…. [T]he 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.

The majority also refused to take judicial notice that “use of a multi-pronged plug to form a detachable mechanical and electrical connection at the end of an insulated wire would have been known to a person having ordinary skill in the art at the time of the invention” or rely on the Prentiss reference in order to invalidate the claims, citing the USPTO’s inter partes reexamination rules that limit a requester’s ability to submit new prior art evidence.

Judge Dyk’s Dissent

While I read this case as addressing the burden placed on a third party requester to cite evidence demonstrating invalidity, Judge Dyk saw this case as “rais[ing] important questions regarding the role of the PTO in making obviousness determinations.”

The question is whether the PTO was obligated to utilize its expert knowledge to determine whether the connection was well known in the prior art.

Judge Dyk emphasizes the USPTO’s “primary responsibility for sifting out unpatentable material” and the “assumption that PTO examiners will use their knowledge of the art when examining patents.”

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.

Judge Dyk appears to disavow Zurko as inconsistent with KSR and earlier decisions of the CCPA “which, prior to Zurko, repeatedly held that an examiner could rely on verifiable facts within his knowledge to reject claims” and “that the Board ‘may take notice of facts beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute,” regardless of whether the issue was “core” or “peripheral.”

Judge Dyk states that “the claim limitation—a plurality of prongs that provide a detachable mechanical and electrical connection—was well known as of the patent’s 2001 priority date,” and so he “would reverse the Board’s decision and remand for proceedings consistent with the Supreme Court’s decision in KSR.”

Could Versus Must

The majority decision of the Federal Circuit affirmed the PTAB and CRU decisions that required evidence that the “plurality of prongs” feature was known in the art, but does that mean that the decision holds that the CRU Examiner could not have taken “official notice” if he had chosen to?

On the other hand, Judge Dyk’s dissent suggests that the USPTO is obligated to take “official notice” about what is well known in the art in order to ensure that it is “fully utilizing [its] independent and specialized technical expertise” and performing its examination functions.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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