Managing IP Interviews Blank on Berk-Tek Victory and Key Takeaways
IP partner James Blank recently spoke with Managing IP regarding key takeaways from his recent victory for Berk-Tek LLC, which marked the Federal Circuit’s first reversal of a PTAB finding of validity. Berk-Tek is a Nexans SA affiliate company in the high-speed telecommunications cable industry.
In November of 2012, Kaye Scholer filed four of the very first IPRs challenging the validity of four patents for network cable manufacturing held by Belden Inc., a competitor of Berk-Tek. The Patent Office’s PTAB instituted review on all four challenged patents and invalidated 98% (79 out of the 81) of the challenged claims. Belden appealed three of those decisions. This April the Federal Circuit affirmed two of those decisions, holding that all of the claims of those two patents are invalid. On November 5, the Federal Circuit reversed the PTAB’s validity finding of the two surviving claims—invalidating each and every one of the challenged claims.
The Belden v. Berk-Tek case is particularly instructional to practitioners as the Patent Trial and Appeal Board (PTAB) determined that no expert testimony was necessarily required in order to support a finding of invalidity. “It is not absolutely necessary for expert testimony to be supplied by the patent challenger with the initial petition,” says Blank.
Additionally, the Federal Circuit found the PTAB does not always need expert evidence to understand the prior art and make findings of validity based on that expertise. “If you look at the decision you’ll see that there are no citations to any other cases on these types of propositions,” explains Blank.
As another important takeaway, the Federal Circuit underlined that the PTAB can rely on its own reading of the prior art. As such, invalidity can be determined by the Board based on its own expertise as well as arguments made by the patent challenger. “In other words, as it was in this case the prior art itself and the Board’s reading of it can be sufficient to support a finding of substantial evidence, which is the appellate standard,” says Blank. “The Board determined in this case that no expert testimony was necessarily required in order to support a finding of invalidity.”
Blank noted that practitioners should take steps during the PTAB trial to address perceived procedural errors if they are going to bring them up in the appeal as well: “One lesson is that if you are going to argue that the PTAB committed procedural errors in considering or not considering a certain piece of evidence you better be sure to afford yourself the opportunity at the PTAB level of the various remedies that may be available there.”
Blank also believes that the ratio of appeals receiving substantial opinions will increase and that the Federal Circuit is doing a fair job. “In the cases where they feel guidance needs to be given, they are giving it,” he says. “The more appeals there are, the more they are getting their heads around what issues require guidance and they are providing that guidance in those cases. I think it is likely that we will see more written decisions over the coming year.”