Belden Inc. v. Berk-Tek LLC
805 F.3d 1064
| Fed. Cir. | 2015Background
- Belden owns U.S. Patent No. 6,074,503 claiming a method of making communications cable by passing a core and transmission media through dies, aligning media in grooves, twisting (stranding), and jacketing.
- Nexans (predecessor to Berk‑Tek) petitioned for inter partes review challenging all claims as anticipated/obvious based on JP ’910 and other prior art; the PTAB instituted review.
- The Board’s Final Written Decision: canceled claims 1–4 as obvious (based principally on JP ’910, and for claims 2–3 combined with US ’582 or JP ’694) but upheld claims 5–6 (involving twisted pairs) as not obvious (finding insufficient motivation to combine JP ’910 with CA ’046).
- Belden contested both the substantive obviousness rulings and the Board’s refusal to exclude an expert declaration (Baxter) submitted by Berk‑Tek with its Reply; the Board allowed cross‑examination and considered the declaration responsive.
- The Federal Circuit affirmed cancellation of claims 1–4, reversed the Board as to claims 5–6 (finding motivation to combine JP ’910 and CA ’046), and upheld the Board’s evidentiary rulings regarding the Baxter declaration.
Issues
| Issue | Plaintiff's Argument (Belden) | Defendant's Argument (Berk‑Tek/Nexans) | Held |
|---|---|---|---|
| Obviousness of claims 1 & 4 (use of die to prevent core twisting) | JP ’910 does not teach preventing twisting and would not allow a die to grip core without deforming it | JP ’910 teaches alignment needs at the die and a skilled artisan would use the die to prevent twisting; expert explains materials/cooling mitigate deformation | Affirmed: claims 1 & 4 obvious (substantial evidence supports Board’s findings) |
| Obviousness of claims 2 & 3 (adding an upstream centering die) | No reason to combine third die from US ’582/JP ’694 with JP ’910; would increase stress without benefit | Third die is disclosed in US ’582 and JP ’694; adding it to JP ’910 predictably improves alignment and is routine | Affirmed: claims 2 & 3 obvious (Board had substantial evidence of motivation to combine) |
| Obviousness of claims 5 & 6 (method applied to twisted, insulated pairs) | JP ’910’s teachings inapplicable because it uses bare conductors and S‑Z stranding; jacket may be redundant with insulated pairs | JP ’910 teaches an insulation‑independent alignment solution; a skilled artisan would apply that method to CA ’046’s twisted pairs | Reversed: claims 5 & 6 obvious (Board erred legally by discounting JP ’910’s insulation‑independent teaching and the evident motivation to combine) |
| Procedural fairness — admission of Baxter declaration with Reply | Baxter declaration raised new evidence/issue necessary for prima facie case; Belden had insufficient opportunity to respond | Baxter fairly replied to Belden’s expert and patent‑owner response; Board gave cross‑examination and other procedural opportunities | Affirmed: Board did not abuse discretion in admitting Baxter declaration and provided meaningful opportunity to respond |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (supreme‑court framework on obviousness and predictable variations)
- Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013) (standard of review for obviousness in IPRs)
- InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014) (motivation-to-combine/why skilled artisan would make modifications)
- EWP Corp. v. Reliance Universal Inc., 755 F.2d 898 (Fed. Cir. 1985) (references are to be considered for everything they teach, not limited to their preferred embodiments)
- In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012) (scope of teachings in prior art and obviousness analysis)
- Abbott Labs. v. Cordis Corp., 710 F.3d 1318 (Fed. Cir. 2013) (due process — notice and opportunity to be heard in adjudications)