General Conclusions About Basic Knowledge or Common Sense Are Insufficient for Core Factual Findings

by McDermott Will & Emery

K/S HIMPP v. Hear-Wear Techs., LLC

Addressing whether the U.S. Patent and Trademark Office (USPTO) properly refused to reject as obvious a claim calling for a multi-prong electrical connection, the U.S. Court of Appeals for the Federal Circuit affirmed the USPTO, finding that there must be documentary evidence of record to support core factual findings, such as whether a claim element was in the prior art.  K/S HIMPP v. Hear-Wear Techs., LLC, Case No. 13-1549 (Fed. Cir., May 27, 2014) (Lourie, J.) (Dyk, J., dissenting).

K/S HIMPP sought an inter partes reexamination of Hear-Wear’s patent covering a three-module hearing aid.  Two dependent claims were directed to the middle connector module and called for a plurality of prongs for an electrical connection.  During the original prosecution of the patent, the USPTO examiner concluded that multi-prong electrical connections were well known in the art, but the claims were eventually allowed as depending from allowable independent claims.  In the reexamination, K/S HIMPP argued that the dependent claims were obvious and relied on the original prosecution examiner’s conclusion that multi-prong connections were well known in the art.  Both the reexamination examiner and the USPTO appeals board maintained the patentability of the dependent claims, concluding that K/S HIMPP failed to provide record evidence in support of its contention.  K/S HIMPP appealed.

The Federal Circuit affirmed, agreeing that the board correctly declined to accept K/S HIMPP’s assertion without supporting evidence in the record.  The Federal Circuit found that whether the prior art contains a claim limitation is a “core factual finding” that requires more than a conclusory statement, in contrast to “peripheral issues” where examiners may rely on their own expertise.  The Federal Circuit distinguished the Supreme Court of the United States’ ruling in KSR as addressing the combinability of references that do contain the claim limitations, rather than addressing a situation where there is a lack of evidence for a specific claim limitation.  The Federal Circuit rejected the patent challenger’s reliance on the original prosecution examiner’s conclusion that the claim element was well known in the art.  The Federal Circuit noted that both the reexamination examiner and the board refused to take official notice that multi-prong electrical connections were well known and also declined K/S HIMPP’s request to take judicial notice of that fact.

Judge Dyk dissented from what he considered “an easy case” in which he would reverse the USPTO’s “quite odd decision” and stated that limiting the applicability of expert knowledge and common sense to peripheral issues was inconsistent with KSR’s rejection of rigid rules that deny factfinders recourse to common sense.  Instead, Judge Dyk would have concluded that the claimed terminal prongs were well known in the prior art and that “[e]very purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections.”



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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