On November 5, 2015, the United States Court of Appeals for the Federal Circuit (CAFC) handed down its decision in Belden Inc. v. Berk-Tek LLC regarding an appeal of the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Inter Partes Review No. IPR2013-00057. For only the second time ever, the CAFC partially reversed the PTAB in an inter partes review proceeding.
The subject of the IPR proceeding was U.S. Patent No. 6,074,503, which is directed to a method for making a communications cable. Belden Inc. is the owner of the ‘503 patent, which contained four claims, i.e., independent claim 1 and dependent claims 2, 3, and 4, when issued in 2000. In 2010, during an ex parte reexamination proceeding, Belden added dependent claims 5 and 6. The following is a reproduction of claims 1, 5, and 6 of the ‘503 patent:
1. A method of producing a cable, comprising steps of:
passing a plurality of transmission media and a core through a first die which aligns the plurality of transmission media with surface features of the core and prevents twisting motion of the core;
bunching the aligned plurality of transmission media and core using a second die which forces each of the plurality of transmission media into contact with the surface features of the core which maintain a spatial relationship between each of the plurality of transmission media;
twisting the bunched plurality of transmission media and core to close the cable; and
jacketing the closed cable.
5. The method of claim 1, further comprising:
providing as the plurality of transmission media, a plurality of twisted pairs of insulated conductors.
6. The method of claim 5, further comprising:
providing as the plurality of transmission media, four twisted pairs of insulated conductors.
As a result of the IPR proceeding, the PTAB rejected claims 1-4 for obviousness over Japanese Patent No. 19910 (“JP ‘910”) while confirming the validity of claims 5 and 6. The CAFC affirmed the rejection of claims 1-4, but reversed the PTAB regarding claims 5 and 6, holding that claims 5 and 6 are also invalid due to obviousness over JP ‘910 in view of Canadian Patent No. 2,058,046 (“CA ‘046”). In this aspect, the CAFC states:
There is no meaningful dispute here, and the Board did not deny, that the two pieces of prior art in combination teach or suggest the methods of claims 5 and 6. The dispute concerns motivation to combine.
Belden Inc. v. Berk-Tek LLC at 17.
Accordingly, the important issue under consideration by the CAFC was whether one of ordinary skill in the art would have been motivated to combine CA ‘046 with JP ‘910, a question which had been addressed by the PTAB in its decision to institute the IPR proceeding in Nexans, Inc. v. Belden Technologies Inc., IPR2013-57, 2013 WL 8595538 (PTAB April 16, 2013).
In the CAFC’s analysis of the PTAB’s “Institution Decision,” the CAFC points to the following findings by the PTAB:
1) It is “undisputed that CA ‘046 discloses ‘a helically twisted cable'” (Id. at 17);
2) “There is no dispute that the twisted pairs in CA ‘046 need to . . . be aligned with . . . the separator . . . for the resulting cable to be made” (Id. at 17); and
3) “JP ‘910 clearly teaches the importance of aligning conductors with a separator (core), and suggests doing so with a die to prevent twisting of the separator, before they are all bunched together for twisting in a stranding device” (Id. at 17-18).
Based on these findings, the CAFC concludes that “[this] evidence points clearly toward a motivation of a skilled artisan to arrive at the methods of claims 5 and 6 based on JP ‘910 and CA ‘046” (Id. at 18).
The CAFC then tackles three arguments which were relied on by the PTAB in its decision to uphold the validity of claims 5 and 6 because of a lack of motivation to combine CA ‘046 with JP ‘910:
1. “The Board’s first reason was that JP ‘901 shows only conductors that are not individually insulated, so that ‘one of ordinary skill, tasked to produce the conventional twisted cable of CA ‘046, would not have motivated by the teachings of JP ‘910 simply to substitute twisted pairs of insulated conductors for the bare metal conductors in the method of JP ‘910.’” Id. at 18. In response, the CAFC indicates that “[t]he alignment problem and solution do not depend on whether the wires are insulated,” and faults the PTAB for failing to consider the JP ‘910 reference for everything it teaches technologically in favor of an apparent focus on the particular invention described in the reference. See id. at 18.
2) The PTAB stated that “the S-Z stranding step of JP ‘910 is inconsistent with production of a helically-twisted cable,” and inferred that one of ordinary skill in the art would therefore not “have had sufficient reason to use the S-Z stranding step of JP ‘910 to manufacture the helically-twisted cable of CA ‘046.” The CAFC responds by again referring to the overall teaching of JP ‘910, and pointing out that the relevant alignment teaching is not dependent upon the method of stranding. See id. at 18-19.
3) The PTAB also found that “a person of ordinary skill in the art would [not] have had sufficient reason to use the final jacketing/extrusion step of JP ‘910, which serves to insulate electrically the bare-metal conductors of JP ‘910, to manufacture a cable comprising twisted pairs of individually-insulated conductors that do not require additional electrical insulation.” Similarly as above, the CAFC responds that this focus on insulation is misplaced: “The evident function is to hold the assembly together to form a cable, and hold its components in place, whether or not the component conductors are insulated.” Id. at 19.
The CAFC therefore holds that “the record is one-sided on the proper question of whether JP ‘910 taught a solution to the problem of aligning cable components that a skilled artisan would have been motivated to use in making CA ‘046’s cables.” Id. at 20.
Patent practitioners will note that the CAFC has continued to steadily erode the effectiveness of arguing a lack of motivation to combine references in the aftermath of KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In particular, the CAFC has indicated that in this case, “[e]ven giving the Board the deference it is due under the substantial-evidence standard of review of factual findings” (id. at 16-17), a reversal of the PTAB is warranted, despite its relative rarity, because in analyzing whether there is sufficient motivation to combine references, the relevant inquiry is whether a solution to the problem addressed by the patent-in-suit is taught, and not whether the reference is intended to address a different problem or a different subject.
Mr. Gromada practices in all areas of patent law, including: patent preparation and prosection; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom-to-operate analysis, and due diligence work.
His experience includes a wide range of electrical and mechanical technologies, including radio frequent (RF) communcations technologies and equipment, cellular networks, medical devices, computer and Internet-related technologies, televisions and image display devices, computer gaming applications, and financial systems. Mr. Gromada was previously employed with Science Applications International Corporation (SAIC) as a research engineer in the defense intelligence industry.
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