K/S Himpp v. Hear-Wear Technologies, LLC
751 F.3d 1362
| Fed. Cir. | 2014Background
- Hear-Wear owns U.S. Patent No. 7,016,512 for a two-module hearing aid connected by a wiring/connector; dependent claims 3 and 9 recite an insulated wiring portion "terminated by a plurality of prongs" providing a detachable mechanical and electrical connection.
- During original prosecution the Examiner found that "providing a plurality of prongs" was "known in the art," but Hear-Wear focused prosecution arguments on other claim elements; claims issued.
- K/S HIMPP requested inter partes reexamination, arguing claims 3 and 9 were obvious because multipronged detachable connections were known and could be combined with primary reference Shennib; the CRU Examiner declined to adopt HIMPP’s obviousness rejection for lack of supporting record evidence.
- HIMPP later submitted Prentiss in an ex parte reexamination and attempted to merge proceedings; the PTO declined to merge and the Board affirmed the inter partes decision, concluding HIMPP failed to point to record evidence showing the specific structural limitation was known prior art.
- The Federal Circuit reviews legal issues de novo and factual findings for substantial evidence; it affirms the Board, holding that core factual findings (here, whether the "plurality of prongs" limitation was known) require record support and cannot be sustained by conclusory assertions or unchecked official notice.
Issues
| Issue | Plaintiff's Argument (HIMPP) | Defendant's Argument (Hear-Wear / PTO) | Held |
|---|---|---|---|
| Whether the Board and Examiner erred by refusing to treat the "plurality of prongs" limitation as known in the art absent documentary proof | Examiners and the Board may rely on common knowledge of a person of ordinary skill (per KSR); documentary proof not required for well‑known facts | A core structural limitation requires concrete record evidence; conclusory assertions of "known in the art" are insufficient | Court held Board did not err: substantial‑evidence review requires record support for core factual findings; refusal to adopt rejection affirmed |
| Whether the court should take judicial notice of (a) multipronged plug knowledge or (b) the Prentiss reference from the ex parte reexamination | Judicial notice appropriate of well‑known multipronged plugs; consider Prentiss reference to support rejection | Judicial notice not warranted for core factual matter; Prentiss not part of inter partes record and cannot be considered | Court declined to take judicial notice of either; refused to expand review beyond the grounds the Board relied on |
Key Cases Cited
- In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) (agency may not reach core factual conclusions based solely on its own experience)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (flexible obviousness analysis; reliance on background knowledge and common sense)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (obviousness is a legal conclusion based on underlying factual findings)
- In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004) (standard of review for Board legal conclusions and factual findings)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial evidence standard explained)
- Consolidated Edison Co. v. NLRB, 305 U.S. 197 (1938) (definition of substantial evidence)
- In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012) (review limited to the grounds the agency relied upon)