Kaye Scholer Achieves Four Major Inter Partes Review Victories for Nexans and Berk-Tek
NEW YORK (June 13, 2014): Recently, in the span of a month, Kaye Scholer achieved four inter partes review (IPR) victories before the US Patent Trial and Appeal Board (PTAB) on behalf of clients Nexans Inc. and Berk-Tek, companies in the high-speed telecommunications cable industry.
IPR is a fairly new administrative trial proceeding implemented as a result of the America Invents Act that allows third parties to challenge the validity of a patent before the PTAB on any ground that could be raised under 35 U.S.C. §§ 102 (the invention must be novel) or 103 (the invention must be non-obvious). Kaye Scholer filed four separate IPRs challenging the validity of four patents for network cables held by Belden Inc., all of which are being asserted against Nexans and Berk-Tek in a parallel District Court proceeding in Delaware.
On March 18, 2014, the PTAB entered a final written decision invalidating claims of U.S. Pat. No. 6,074,503. The decision invalidated the original ‘503 patent claims, leaving only two dependent claims that were added in 2010 in a reexamination proceeding. Then, on April 28, 2014, the PTAB declared that two of the three remaining patents, U.S. Pat. Nos. 7,977,575 and 7,663,061 were completely invalid. The fourh patent and final patent, U.S. Patent No. 7,135,641, was invalidated with the exception of two claims that are not being asserted against Nexans and Berk-Tek in the District Court proceeding.
“More than 500 inter partes reviews were filed in the first year of AIA, with the first final ruling being issued on November 13, 2013,” said Kaye Scholer Intellectual Property Partner James Blank. “As such, precedent is still very new—but the fact that we were able to demonstrate that the patents were invalid under the new guidelines and the fact that all reviews were decided within a span of just over a month clearly indicates that one of the key intents of inter partes reviews when it was first enacted, which was to speed up the process, is working and working effectively.”
In addition to Blank, Kaye Scholer Associate David Soofian represented Nexans and Berk-Tek in the IPRs. Sofer & Haroun served as co-counsel.
Launched more than 45 years ago, Kaye Scholer’s Intellectual Property Department focuses on resolving disputes, both in and out of the courtroom. With an emphasis on patent litigation, we combine sophisticated scientific, technical and business knowledge with extensive courtroom experience. We also defend high-stakes trademark, false advertising, and copyright lawsuits and advise companies on trade secrets protection, as well as hearings before the PTO. Finally, we advise on technology and outsourcing issues, as well as litigation and public policy issues related to cybersecurity working in conjunction with Kaye Scholer’s transactional practices and our Global Cybersecurity & Privacy Group.