Belden Inc. v. Berk-Tek LLC
Addressing issues of obviousness and procedural issues related to the use of declarations, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a decision by the Patent Trial and Appeal Board (PTAB or Board), finding that all claims of the patent at issue were invalid. Belden Inc. v. Berk-Tek LLC, Case No. 14-1575 (Fed. Cir., Nov. 5, 2015) (Taranto, J.).
Appellant Belden owns the patent at issue, which relates to a method of producing a transmission cable. Petitioner and cross-appellant Berk-Tek challenged the validity of the patent’s claims in an inter partes review (IPR), arguing that they are obvious in view of a combination of prior art references. The Board ultimately concluded that some of the claims were obvious, but that other claims were patentable. Specifically the Board found that certain dependent claims relating to twisted pairs of conductors were patentable because Berk-Tek had not explained why a person of ordinary skill in the art would have had sufficient reason to combine the references as proposed. The patent owner appealed.
On appeal, the Federal Circuit agreed with the Board’s conclusion that certain claims were obvious, but then went on to find that the remaining claims, the patentability of which had been confirmed by the Board, were obvious as well. Despite reviewing the Board’s factual findings under the substantial-evidence standard of review, the Court found that the Board erred in concluding that the prior art did not provide a sufficient reason for making the proposed combination. The Court noted that the Board had identified, in a prior art reference, the importance of aligning conductors with a core for subsequent twisting in a stranding device. According to the Court, this evidence pointed to a motivation of a skilled artisan to arrive at the methods of the dependent claims in question.
The Federal Circuit also affirmed the Board’s denial of Belden’s motion to exclude an expert declaration that Berk-Tek had submitted as part of its reply. Belden’s motion to strike the declaration argued that Berk-Tek should have submitted it as part of the original petition because it was necessary to support Belden’s prima facie case of obviousness. The Board disagreed, concluding that the declaration was not necessary to establish a prima facie case and also that the declaration was responsive to the arguments and evidence submitted in Belden’s response. In affirming the Board’s decision, the Court noted that the Board provided Belden with adequate opportunities to address the declaration, including an opportunity to cross-examine the declarant. Belden could also have sought additional procedural opportunities to rebut the declaration, such as disputing the substance of the declaration at oral hearing, moving for permission to submit a surreply and requesting that the Board waive or suspend any regulation that Belden believed would impair its ability to respond to the declaration. Without the Board’s denial of any such requests, the Court was unable to conclude that Belden was denied a meaningful opportunity to respond to the grounds of rejection.