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Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00057.
MATTHEW B. LOWRIE, Foley & Lardner LLP, Boston, MA, argued for appellant. Also represented by MATTHEW AMBROS, AARON W. MOORE.
JAMES S. BLANK, Kaye Scholer LLP, New York, NY, argued for cross-appellant. Also represented by BENJAMIN C. HSING, DAVID SOOFIAN; GREGORY C. ANTRIM, JOSEPH SOFER, Sofer & Haroun, LLP, New York, NY.
FRANCES LYNCH, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by NATHAN K. KELLEY, THOMAS W. KRAUSE, ROBERT J. MCMANUS, SCOTT WEIDENFELLER.
Before NEWMAN, DYK, and TARANTO, Circuit Judges.
[116 U.S.P.Q.2d 1871] Taranto, Circuit Judge.
Belden Inc. owns U.S. Patent No. 6,074,503, which discloses and claims a method for making a communications cable. On a petition for inter partes review under 35 U.S.C. § 311 et seq. filed by the predecessor of Berk-Tek LLC, the Patent and Trademark Office's Patent Trial and Appeal Board instituted a review and later reached a mixed decision: it rejected claims 1-4 of the '503 patent for obviousness, while confirming claims 5 and 6. We now affirm the rejection of claims 1-4 and reverse the upholding of claims 5 and 6. We also reject Belden's contention that the Board denied it procedural rights in the review.
Belden and Berk-Tek compete in making and selling telecommunications cable and cabling systems. The '503 patent, issued on June 13, 2000, discloses a method of making a cable by passing a core and conducting wires through one or more dies, bunching the wires into grooves on the core, twisting the bunch to close the cable, and jacketing the entire assembly. These figures show an assembly described as containing three dies (403, 411, 413) and a cross-section of a resulting cable (200):
[116 U.S.P.Q.2d 1872] [Image Omitted.]
The patent contained four claims when issued in 2000. Belden added claims 5 and 6 in 2010 in an ex parte reexamination. Claim 1 is the only independent claim:
1. A method of producing a cable, comprising steps of:
passing a plurality of transmission media and a core through a first die which aligns the plurality of transmission media with surface features of the core and prevents twisting motion of the core;
bunching the aligned plurality of transmission media and core using a second die which forces each of the plurality of transmission media into contact with the surface features of the core which maintain a spatial relationship between each of the plurality of transmission media;
twisting the bunched plurality of transmission media and core to close the cable; and
jacketing the closed cable.
'503 patent, col. 6, lines 4-17.
Belden groups claim 4 with claim 1 for analysis. Claim 4, dependent on claim 1, adds an " extrusion" requirement: during the passing step, " extruding the core so that the surface features thereof align with the plurality of transmission media." Id., col. 6, lines 28-31.
Belden groups claims 2 and 3 for analysis. Claim 2 requires, " before passing the transmission media and the core through the first die, passing the transmission media and the core through a third die which generally centers the core relative to the plurality of transmission media." Id., col. 6, lines 18-22 (emphases added). That is, claim 2 calls for the large die (" third" ) that is upstream of the
[116 U.S.P.Q.2d 1873]small die (" first" ) shown in the left figure above--the " second" being the tube-shaped structure shown there. Claim 3, dependent on claim 2, claims for the third die what claim 4 claims for the first: it requires " extruding the core at a center position relative to the plurality of transmission media" when the core and media pass through the third die. Id., col. 6, lines 23-27.
Belden groups claims 5 and 6 for analysis. Claim 5, dependent on claim 1, requires that the transmission media be " twisted pairs of insulated conductors." '503 patent reexamination certificate, col. 2, lines 7-9 (emphasis added). Claim 6, dependent on claim 5, requires four such pairs. Id., col. 2, lines 10-12.
On November 19, 2012, Berk-Tek's predecessor, Nexans, Inc., petitioned for inter partes review of all claims of the '503 patent under 35 U.S.C. § 311. The petition--actually, the corrected petition filed nine days later, making changes not material here--asserts anticipation and obviousness based on seven prior-art references. On April 16, 2013, the Board, as delegee of the PTO Director, instituted a review of all claims under § 314(a), finding a " reasonable likelihood" that the methods of all six claims were unpatentable. Nexans, Inc. v. Belden Technologies Inc., IPR2013-57, 2013 WL 8595538 (PTAB Apr. 16, 2013).
The Board found likely obviousness of the methods of claims 1 and 4 based on Japanese Patent No. 19910 (JP '910). It found likely obviousness of the methods of claims 2 and 3 based on JP '910 together with either U.S. Patent No. 4,393,582 (U.S. '582) or Japanese Patent No. 76694 (JP '694). And it found likely obviousness of
the methods of claims 5 and 6 based on JP '910 together with Canadian Patent No. 2,058,046 (CA '046).
The central reference, JP '910, describes a method of making a communication cable, illustrated below. The method entails extruding a core (thread-like object 1) through heated rollers (2a--2c) to form four grooves in the core, located at corners of a square when viewed in cross-section. The core and four conducting wires (4a--4d) are fed through a die (wire-splitting board 5), the wires placed into the grooves on the core, and the assembly bunched, stranded, and jacketed to form a cable.
JP '694 and U.S. '582 also describe methods of making a cable or cable core, illustrated below. JP '694 teaches passing a group of wires and shielding tape through a first die (plate 31), then a second die (plate 32), and finally a set of shaping tubes that wrap the shielding tape around the wires. JP '694, col. 4, lines 7-28. U.S. '582 similarly teaches making a cable core, in which a metallic tape and two groups of wires are fed through a first die (plate 67) and a second die (plate 71). '582 patent, col. 5, lines 1-33.
[116 U.S.P.Q.2d 1874] [Image omitted.]
CA '046 describes a telecommunications cable containing twisted pairs of conducting wires, separated by a spacer to minimize cross talk. The patent illustrates different spacers separating four twisted pairs of wires. CA '046, col. 3, line 36 to col. 4, line 37.
Among the Board's preliminary determinations in its Institution Decision are the following. (We discuss only claims 1, 2, and 5, there being no separate arguments for claims 4, 3, and 6.) As to claim 1, the Board determined that " JP '910 articulates a special need to have the wires aligned at precise locations on the core during stranding after passing through wire-splitting board 5" and, based on ...