Docket No. 2015-1575, -1576
NEWMAN, DYK, TARANTO
November 5, 2015
Brief Summary: PTAB conclusion that claims 1-4 of Belden’s patent would have been obvious affirmed. Its conclusions that claims 5 and 6 would not have been obvious due to no motivation to combine reversed (“reference must be considered for everything it teaches by way of technology”).
Summary: This is an appeal following the PTAB’s finding after IPR2013-57 filed by Berk-Tek that claims 1-4, but not claims 5-6, of Belden’s US 6,074,503 relating to methods for making a communication cable “likely obvious” in view of a JP patent or combinations of that patent with a US and another JP patent, or with a CA patent. Belden argued the main JP reference did not disclose “cables but mere components of cables” but the FC found the ‘503 claims “do not so limit the meaning of ‘cable’ to a category that excludes” such components. Regarding claims 1 and 4, it agreed with the Board’s obviousness conclusions because it properly considered “whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention” (InTouch Tech., FC 2014). The FC panel also agreed with the Board’s conclusions regarding claims 2 and 3 because is properly considered whether “in the context of [its] findings about why a skilled artisan would have had reason to add a third die that the Board quoted the Supreme Court’s reference to a ‘predictable variation’ in KSR Int’l” (“The Supreme Court’s passage does not establish that it suffices for obviousness that a variation of the prior art wouldpredictably work, but requires consideration of whether, in light of factors such as ‘design incentives and other market forces,’ the hypothetical skilled artisan would recognize the potential benefits and pursue the variation.”) Berk-Tek argued that claims 5 and 6, which the Board concluded would not have been obvious, that there would have been a motivation to combine the two prior art documents (“There is not meaningful dispute here, and the Board did not deny, that the two pieces of prior art in combination teach or sugges the methods of claims 5 and 6. The dispute concerns motivation to combine.”) The FC panel agreed, finding the Board disregarded “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” (EWP Corp., FC 1985; In re Applied Materials, FC 2012). Belden also argued that Board’s denial of its motion to exclude an expert declaration was improper, but the FC panel rejected this argument, finding no error with its conclusion “that Mr. Baxter’s testimony was necessary for Berk-Tek to establish a prima facie case” even though it also found the declaration was not actually “necessary for the prima facie case” and that Belden had not “identified a deficiency in the application of Board rules and practices to this case.”