Belden Inc., v. Berk-Tek LLC., No. 2014-1575, -1576 (Fed. Cir. 2015)

Written by: Justin Blaufeld

Belden and Berk-Tek compete in making and selling telecommunications cable and cabling systems. In 2012, Berk-Tek's predecessor (Nexans, Inc.) petitioned for inter partes review of Belden's U.S. Patent No. 6,074,503, which claims a method for making a communications cable.    

In its Patent Owner Response, Belden attached a declaration from its expert (a named inventor on the ’503 patent and many other cabling patents). Berk-Tek then submitted its Reply, attaching a declaration from its expert. Berk-Tek's original petition had not previously included a declaration. 

Belden moved to exclude the Berk-Tek expert's declaration and accompanying exhibits, arguing that portions of his declaration were not responsive to Belden's expert's declaration. The Board denied the motion, concluding that the Berk-Tek expert fairly responded to Belden's declaration.

Finding claims 1-4 to be obvious, the Board canceled claims 1-4 but found that one of ordinary skill in the art would not have been motivated to combine the prior art in order to arrive at the invention of claims 5 and 6. Belden appealed both the substantive finding of obviousness and the Board's denial of its motion, while Berk-Tek argued that claims 5 and 6 should also have been canceled.

The Federal Circuit addressed the substantive issue first. Since obviousness is a legal question based on factual determinations about the art, the Board's factual findings are given greater deference (i.e., the substantial evidence test) than its ultimate legal conclusion of obviousness (i.e., the de novo standard). With respect to claims 1-4, the Federal Circuit sided with the Board, finding that the rejection was supported by substantial evidence. However, the Federal Circuit also found that the Board should have rejected claims 5 and 6, because the motivation to combine the references for those claims was applicable.

As for the motion to exclude, the Federal Circuit sided with the Board's decision to deny the motion, holding that Berk-Tek’s response fairly replied to the declaration filed by Belden.  Moreover, a declaration need not be fully excluded if merely a few portions of the declaration are improper:

Belden cites the Patent Trial Guide’s statement that “[t]he Board will not attempt to sort proper from improper portions of the reply.” 77 Fed. Reg. at 48,767. It argues on that basis that the Board had to exclude Berk-Tek’s entire Reply and supporting material if any portion was improper. But Belden has identified no part of the Reply and supporting declaration that is improper and material to the Board’s ruling. Nothing in the Guide requires wholesale exclusion in such circumstances. More generally, the Guide cannot fairly be read to do more than put the public on notice that the Board may, in its discretion, refuse to consider a Reply if any part is improper. Here, the Board warned Berk-Tek and gave it an opportunity to truncate its Reply and supporting submissions to eliminate any improper material. We see no error in that reasonable course of action.

The full decision may be read here.

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