In Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, 2014-1576, on appeal from an IPR, the Federal Circuit affirmed the PTAB’s decision not to exclude a patent owner’s expert declaration filed after the patent owner response and reversed the PTAB’s decision to confirm the nonobviousness of two dependent claims. 

The IPR petitioner did not file a supporting expert declaration with its opening petition. Instead, the petitioner first submitted a declaration after the patent owner response. The patent owner filed a motion to exclude the expert declaration, arguing the petitioner should be required to produce all evidence in the initial petition. The PTAB denied the motion. And in the final written decision, the PTAB canceled an independent claim and three dependent claims for obviousness but confirmed the separate patentability of two dependent claims.  Both parties appealed.

The Federal Circuit affirmed the PTAB’s decision to deny the motion to exclude. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art. . . . Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance. In the present case, which is all we address, we conclude that the . . . declaration was not necessary for the prima facie case of obviousness.” The Federal Circuit did not review whether the declaration was new evidence.

On the issue of obviousness, the patent owner challenged the PTAB’s factual findings, including that there would have been a motivation to modify the prior art to meet the claims. The Federal Circuit affirmed that substantial evidence supported the PTAB’s factual findings.  Regarding the PTAB’s findings on motivation, the Federal Circuit supported the PTAB’s decision to “rely on its own reading of [the prior art]—supported by the Petition’s observations about it” where the circumstances “involv[ed] a simple point in a mechanical field and one very close piece of prior art.”  The petitioner challenged one of the PTAB’s factual findings favoring separate patentability of the two dependent claims.  But the Federal Circuit viewed the real underlying issue as a question of law.  The Federal Circuit held the PTAB legally erred by disregarding a certain prior art teaching, which “violates the principle that a reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” The Federal Circuit held the two dependent claims were unpatentable for obviousness.