Fed Circuit affirms invalidation of patent despite faulty PTAB analysis
The US Court of Appeals for the Federal Circuit has affirmed the invalidation of a cable making patent, despite finding that the Patent Trial and Appeal Board’s (PTAB) had erred in its analysis.
The precedential decision was handed down on Friday, September 8.
Southwire, a manufacturer of electrical wire and cable, is the owner of US patent number 7,557,301, a patent which covers a method to make an electrical cable.
In September 2012, rival Cerro Wire filed a request for inter partes reexamination of the patent.
Prior to this, the patent had undergone two previous ex parte reexaminations. Original claims 1-21 were determined to be patentable, and new claims 22-29 were added.
During the re-examination sought by Cerro Wire, in which Southwire sought to add claims 30–42, the examiner concluded that all claims would have been obvious over various combinations of prior art.
In the appeal before the Federal Circuit, only one combination was at issue—US patent number 6,160,940 (Summers), in view of two pieces of prior art.
Summers describes a “fibre optic cable that is suitable for installation in a cable passageway” and says that “to reduce resistance to a cable pulling force”, the plastic material used to form the cable “can include a friction reducing additive” that “migrat[es] to the surface of the cable jacket”.
The examiner rejected the patent and the PTAB affirmed the decision, concluding that the examiner’s rejection was supported by a “preponderance of the evidence”.
“Where the claimed and prior art products are … produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established,” said the board.
In its appeal to the Federal Circuit, Southwire disputed the board’s interpretation of Summers, claiming that the PTAB had erred in relying on “inherency” in making its obviousness determination.
The board had concluded that because Summers teaches reducing the coefficient of friction using a lubricant, it inherently teaches the 30% reduction limitation (as required by claim 1 of the ‘301 patent) because it renders it “obvious to have selected [lubricant] amounts” that achieve the claimed reduction.
According to the Federal Circuit, the board had erred in relying on inherency and it hadn’t cited any evidence that a reduction of 30% in the pulling force would “necessarily result from the claimed process, which contains no steps that ensure such reduction”.
But the court went on to say that the PTAB’s error was “harmless” because “although it improperly invoked inherency, it need not have”.
Circuit Judge Alan Lourie, on behalf of the court, added that the PTAB had “made the necessary underlying factual findings to support an obviousness determination”.
None of the patented steps differed in any “material way” from the process disclosed in Summers (in combination), said the Federal Circuit, adding that there was no evidence that the claimed 30% reduction would have been “unexpected or unattainable from the process disclosed in Summers”.
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