Summary: CAFC affirms requirement of record evidence to support assertion that a claimed structural limitation was a known prior art element in a reexamination.

Case: K/S HIMPP V. Hear-Wear Technologies, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014) (precedential).1 On appeal from Patent Trial and Appeal Board in Reexamination No. 95/001,022.  Before Lourie, Dyk, and Wallach.

Procedural Posture: K/S HIMPP (“HIMPP”) requested inter partes reexamination of patent holder Hear-Wear’s patent on the grounds that the claims would have been obvious at the time of invention.  During the reexamination, the Central Reexamination Unit Examiner did not adopt HIMPP’s proposed rejection for two of the challenged claims, and the PTAB affirmed.

  • Obviousness: The PTAB was correct in requiring record evidence to support an assertion that a claimed structural limitation (“a plurality of prongs that provide a detachable mechanical and electrical connection”) was a known prior art element. Unlike peripheral issues, such as whether the person of ordinary skill in the art would have combined or modified references, the question of whether an important structural limitation was known in the prior art requires “a core factual finding,” and thus requires more than conclusory statements. KSR’s caution against overemphasis on publications and patents for combining or modifying prior art already on the record is not inconsistent with declining to accept a conclusory assertion by a third party about general knowledge in the art without evidence on the record. In contrast to KSR, the present case involves the lack of evidence of an important structural limitation not evidently and indisputably within the common knowledge of those skilled in the art, whereas KSR relates to combinability of references where the claim limitations were in evidence.

Dyk, dissenting:

  • Obviousness: The dissent admonishes the majority’s narrow approach to obviousness as inconsistent with the court’s post-KSR approach that permits findings of obviousness based on logic, judgment, and common sense available to one of ordinary skill without necessarily requiring explication of any reference. The dissent finds that in this case, the Examiner could resort to common knowledge of one skilled in the art rather than only considering evidence of record to find that the claim limitation in question (a plurality of prongs that provide a detachable mechanical and electrical connection), was well known as of the patent’s priority date.