Kaye Scholer Achieves First-Ever Federal Circuit Reversal of an AIA Validity Determination

Kaye Scholer has achieved a significant victory in the United States Court of Appeals for the Federal Circuit on behalf of Berk-Tek LLC, a Nexans SA affiliate company in the high-speed telecommunications cable industry. On November 5, in a first-in-kind decision, the Federal Circuit reversed a finding of validity in an inter partes review (IPR).

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 30-page precedential opinion shows that there are limits to the Federal Circuit’s deference to PTAB validity determinations, as the opinion explained: “Even giving the Board the deference it is due under the substantial-evidence standard of review of factual findings, we agree that the record requires the finding Berk-Tek urges. The Board’s contrary finding rests on legal errors.”

Kaye Scholer partner James Blank argued on behalf of Berk-Tek. The client team also included associate David Soofian.