PTAB Erred in Upholding Claims in Inter Partes Review: Federal Circuit | Practical Law

PTAB Erred in Upholding Claims in Inter Partes Review: Federal Circuit | Practical Law

In Belden Inc. v. Berk-Tek LLC, the US Court of Appeals for the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) erred in rejecting Berk-Tek LLC's argument that two claims of Belden Inc.'s patent were obvious under 35 U.S.C. Section 103 in an inter partes review (IPR) under the Leahy-Smith America Invents Act (AIA), holding that the PTAB ignored overwhelming evidence of obviousness in its decision. The court also affirmed the PTAB's denial of Belden's motion to exclude an expert declaration Berk-Tek submitted in support of its reply.

PTAB Erred in Upholding Claims in Inter Partes Review: Federal Circuit

Practical Law Legal Update w-000-7433 (Approx. 4 pages)

PTAB Erred in Upholding Claims in Inter Partes Review: Federal Circuit

by Practical Law Intellectual Property & Technology
Law stated as of 06 Nov 2015 • USA (National/Federal)
In Belden Inc. v. Berk-Tek LLC, the US Court of Appeals for the Federal Circuit ruled that the Patent Trial and Appeal Board (PTAB) erred in rejecting Berk-Tek LLC's argument that two claims of Belden Inc.'s patent were obvious under 35 U.S.C. Section 103 in an inter partes review (IPR) under the Leahy-Smith America Invents Act (AIA), holding that the PTAB ignored overwhelming evidence of obviousness in its decision. The court also affirmed the PTAB's denial of Belden's motion to exclude an expert declaration Berk-Tek submitted in support of its reply.
On November 5, 2015, in Belden Inc. v. Berk-Tek LLC, the US Court of Appeals for the Federal Circuit rejected in part the Patent Trial and Appeal Board's (PTAB) determination in an inter partes review (IPR) that claims one through four of US Patent No. 6,074,503 (the '503 patent) were invalid, and that claims five and six of the same patent were valid ((Fed. Cir. Nov. 5, 2015)). The Federal Circuit determined that the PTAB:
  • Should have found all of the '503 claims invalid.
  • Did not abuse its discretion in denying Belden's motion to exclude Berk-Tek's expert's declaration submitted in reply to Belden's patent owner response.
The '503 patent relates to a method of manufacturing a data communications cable. The PTAB ruled that claims one through four of the '503 patent were invalid for obviousness based on a combination of Japanese and Canadian prior art. The PTAB also determined that claims five and six were not invalid for obviousness, because the prior art did not teach a method of manufacturing the types of cables outlined in the '503 patent.
The Federal Circuit ruled that the PTAB should have also found claims five and six invalid for obviousness, reasoning that the PTAB's decision rested on legal errors, and that the evidence one-sidedly indicated that a skilled artisan would have combined the Japanese and Canadian prior art to arrive at the methods covered by claims five and six.
Specifically, the Federal Circuit found that the PTAB wrongly determined that, among other things:
  • The claims were valid because the prior art only covered insulated wires.
  • Berk-Tek failed to explain why a skilled artisan would have used the specific twisting step from the Japanese prior art.
  • A skilled artisan would have had no reason to use a step to create insulating jacketing from the Japanese prior art.
The Federal Circuit ruled that the PTAB's findings were incorrect because:
  • Claims five and six do not depend on:
    • whether the wires were insulated; or
    • a particular method of twisting.
  • The language of claims five and six does not require the jacket to be insulating.
The Federal Circuit also affirmed the PTAB's denial of Belden's motion to exclude an expert declaration submitted by Berk-Tek with its reply (the Baxter Declaration). Berk-Tek did not submit an expert declaration in support of its petition, and Belden argued that the PTAB should have excluded the Baxter Declaration because it:
  • Went beyond responding to arguments raised in Belden's expert's declaration submitted with its patent owner response, as required by 37 C.F.R. Section 42.23(b).
  • Was necessary for Berk-Tek to create a prima facie case of obviousness and therefore should have been excluded based on a passage in the Patent Office Trial Practice Guide identifying such evidence as improper in a reply.
Specifically, the court affirmed that, among other things:
  • Every point in the declaration responded directly to arguments raised in Belden's expert's declaration.
  • The declaration wasn't necessary for a prima facie case of obviousness. A prima facie case had already been made by the petition in combination with the prior art itself.
  • No part of the declaration was improper or material to the Board's ruling.
  • Belden had fair notice of and opportunities to respond to the declaration and therefore was afforded due process.
Notably, the Federal Circuit stated that, if a patent owner submits a new expert declaration with its reply, the patent owner can respond by:
  • Cross-examining the expert and moving to file observations on the cross-examination.
  • Moving to exclude the declaration.
  • Disputing the declaration's substance at the oral hearing before the Board.
  • Moving for permission to submit a surreply responding to the declaration's contents.
  • Requesting that the Board waive or suspend a regulation that the patent owner believes impairs its opportunity to respond to the declaration.