Federal Circuit On Combining References

Practice Tip: Significant attention should be paid to motivations to combine rationales in petition drafting especially at the PTAB Trial Phase versus the Appeal Phase. 

Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015) – Appeal from IPR2013-00057.

In IPR2013-00057, the Board considered six claims of patent owner Belden’s U.S. Patent No. 6,074,503. That patent claimed mechanisms for producing a communication cable made up of a number of individual wire strands by running those strands through a series of dies (guides) to wrap the strands around the cable core in an neat and organized fashion. In its final written decision, the Board found claims 1-4 to be unpatentable but determined that Petitioner Berk-Tek had not made a sufficient case for claims 5 and 6. Specifically, the Board found that Berk-Tek had given no “apparent reason to combine the known elements” of the two references.

The Federal Circuit affirmed most of the Board’s decision, but interestingly overturned the Board’s non-obviousness decision on claims 5 and 6. In finding that the two references used in the petitioner’s obviousness combination were not combinable, the Board had taken a highly technical view that one reference’s teachings of manipulating uninsulated wires would not be combinable with the other reference’s teachings of operations on insulated component wires of a cable. The Federal Circuit panel disagreed stating that the “alignment problem and solution do not depend on whether the wires are insulated. The Board’s disregard of the insulation-independent alignment teaching of JP ‘910 violates 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.” Thus, the Federal Circuit reversed the Board’s findings that claims 5 and 6 were not shown to be obvious.

This case highlights a trend seen since 2014 of the PTAB applying a very high level of scrutiny to obviousness combinations. The Board regularly finds claims not unpatentable based on perceived insufficiencies in petitioner reasons for combining. It has often seemed that the Board has raised the bar for combining references significantly higher than KSR indicated as required. To combat this raised bar, Petitioners may provide robust motivation to combine rationales in all petitions and accompanying declarations.