September 20, 2013

Overwhelming Prior Art Makes Board’s Job Easy in Grant of IPR Trial

By Matthew L. Cutler, Principal

In a concise decision, for a case involving 28 alleged grounds of unpatentability, Berk-Tek was successful in getting all 21 challenged claims of a Belden patent into an inter partes review trial in a case styled as Berk-Tek, Inc. v. Belden, Inc. (IPR2013-00069), involving U.S. Pat. No. 7,663,061.  Patent Owner did not file a preliminary patent owner response.

The ‘061 patent relates to a high performance data cable using twisted pairs of conductors. Specifically, the invention relates to a cable with an interior support around which the twisted pairs are disposed.

Patent Challenger asserted that the challenged claims were unpatentable as obvious over 28 combinations of references and anticipated by two references. One reference in particular, however, formed the basis of many of the proposed grounds for challenge, and was the focus of the Board in its decision.  Among the interesting findings of the Board was the logical rationale surrounding a limitation requiring an absence of an electrically conductive shield in the jacket of the cable.  The prior art reference at issue did not disclose any such shielding and, thus, the non-disclosure of such a shield indicated the absence of a shield.  Order at 11.  The prior art, therefore, met the subject limitation of the challenged claims.

The Board also had no trouble finding that a range of thicknesses set forth in a prior art reference (0.27-0.43 inches) was more than sufficient to disclose the claimed range of 0.300-0.400 inches.  The primary reference did not provide any diameter dimensions, but a secondary reference provided a range that encompassed the claimed range, and also provided a motivation to combine – that in the art of telecommunication cables, the outer diameter is variable and desirably minimized.  Order at 13.

In the end, the Board granted the inter partes review trial based on 3 of the 28 grounds – finding the remaining grounds redundant to those included in the trial.