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In an IPR proceeding brought by Berk-Tek, the PTAB held that asserted claims 1-4 were invalid as being obvious and held that the validity of claims 5-6 would be confirmed.  On appeal, the Federal Circuit held that substantial evidence existed in the record for affirming the obviousness finding on claims 1-4.  It also held that the PTAB erred by confirming the validity of claims 5-6, because the evidence established that there was a motivation to combine references.

Belden raised an additional procedural issue.  In its IPR request, Berk-Tek had not submitted any expert declaration.  In its Patent Owner Response, Belden had submitted a declaration of its expert, William Clark, one of the inventors.  In its Reply, Berk-Tek submitted a declaration from its expert Mr. Baxter.  Belden objected, and the PTAB allowed Belden to depose Mr. Baxter and submit “non-argumentative observations,” as permitted by the regulations.  Belden also moved to exclude Mr. Baxter’s declaration, claiming that it was not responsive to Mr. Clark’s declaration and that it contained arguments and evidence necessary for Berk-Tek to make a prima facie case for obviousness, which the PTAB denied as fairly responding to Mr. Clark’s declaration and unnecessary to prove a prima facie case of obviousness.  The court held that the PTAB correctly permitted Mr. Baxter’s reply declaration, finding that it was responsive to Belden’s arguments and not needed for a prima facie case of obviousness. 

In addressing Belden’s due process concerns, the court listed the potential non-mutually exclusive responses a patent owner has if the petitioner in an IPR proceeding submits a new expert declaration with its reply: (1) cross-examine the expert and file observations; (2) move to exclude the declaration; (3) dispute the substance of the declaration at the oral hearing; (4) move for permission to submit a surreply; or (5) request that the Board waive or suspend a regulation that the patent owner believes impairs its opportunity to respond to the declaration. 

Belden, Inc. v. Berk-Tek LLC, Case Nos. 2014-1575, -1576 (November 5, 2015); Opinion by: Taranto, joined by Newman and Dyk; Appealed From: Patent Trial and Appeal Board. Read the full opinion here

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