"Common Sense" Cannot Substitute For Record Evidence To Support Obviousness Rejections In Inter Partes Reexamination

In K/S HIMPP v. Hear-Wear Technologies, LLC, No. 13-1549 (Fed. Cir. May 27, 2014), the Federal Circuit affirmed the Board and held that it was correct to require record evidence to support a proposed obviousness rejection in an inter partes reexamination.

Hear-Wear Technologies, LLC ("Hear-Wear") is the owner of U.S. Patent No. 7,016,512 ("the '512 patent"), directed to a hearing aid.  The claims-at-issue, dependent claims 3 and 9, recite a "plurality of prongs that provide a detachable mechanical and electrical connection" from the behind-the-ear audio processing module to the in-the-canal module of the hearing aid.  Slip op. at 3.

During prosecution of the '512 patent, the examiner initially rejected these claims as known in the art and therefore obvious.  However, Hear-Wear amended the independent claims and the examiner ultimately allowed all the claims.  K/S HIMPP ("HIMPP") requested an inter partes reexamination of the '512 patent, which the PTO granted.