Berk-Tek LLC v Belden Technologies Inc.

Patent Trial and Appeal Board

Apr 28, 2014

11197718 (P.T.A.B. Apr. 28, 2014)

Trials@uspto.gov Paper 27
571-272-7822 Entered: April 28, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BERK-TEK LLC
Petitioner

v.

BELDEN TECHNOLOGIES INC.
Patent Owner
____________

Case IPR2013-00059
Patent 7,135,641
____________

Before JAMESON LEE, JOSIAH C. COCKS, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
On November 19, 2012, Petitioner, Berk-Tek, LLC, filed a petition
for inter partes review of claims 1-22 of U.S. Patent No. 7,135,641 B2 (“the
’641 Patent”).1 Paper 1. Petitioner filed a revised petition on November 28,
2012.2 Paper 4 (“Pet.”). On May 2, 2013, the Board instituted trial for
claims 1-22. Paper 12 (“Dec.”).
After institution of trial, Patent Owner filed a patent owner response
(Paper 19, “PO Resp.”), but did not file a motion to amend. Subsequently,
Petitioner filed a reply to Patent Owner’s Response. Paper 20 (“Pet.
Reply”).
Oral hearing was held on January 23, 2014.3
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Claims 1-9, 11-19, 21, and 22 of the ’641 Patent are unpatentable.
Claims 10 and 20 have not been shown to be unpatentable.

1 On the original Petition, Petitioner is identified as “Nexans, Inc.” Paper 1.
By Notice dated April 18, 2013, Nexans informed the Board that Nexans’s
successor in interest is “Berk-Tek, LLC.” Paper 12.
2 All further references to the Petition are to the revised Petition unless
otherwise stated.
3 A transcript of the oral hearing is included in the record as Paper 26
(“Tr.”).
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B. Standard for Decision with Respect to Patentability
When, as here, an inter partes review is instituted and not dismissed,
the Board shall issue a final written decision with respect to the patentability
of any patent claim challenged by Petitioner. 35 U.S.C. § 318(a). The
standard for determining patentability is set forth in 35 U.S.C. § 316(e),
which provides as follows:
(e) Evidentiary standards - In an inter partes review instituted
under this chapter, Petitioner shall have the burden of proving a
proposition of unpatentability by a preponderance of the
evidence.

C. The ’641 Patent
The ’641 Patent relates to high-speed communication cables using at
least two twisted pairs of wires. Ex. 1001, 1:29-30. As background, the
’641 Patent describes that when twisted pairs of conductors lay close
together, such as in a cable, electrical energy may be transferred from one
pair within a cable to another, causing crosstalk, which is undesirable
generally. Ex. 1001, 1:47-51. If adjacent twisted pairs of conductors either
have the same pair lay (the longitudinal distance between twists in twisted
pairs of conductors) or have the same twist direction, the pairs lay closer
together, increasing undesirable crosstalk between those pairs. Id. at 1:58-
65. Conversely, varying pair lay and/or twist direction between adjacent
twisted pairs increases the distance between these pairs and reduces
crosstalk. Id. at 1:66˗2:3.
One embodiment of the ’641 Patent includes a jacket that comprises a
plurality of protrusions, which extend away from an inner circumferential
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surface of the jacket and keep the plurality of twisted pairs of insulated
conductors away from the inner circumferential surface of the jacket,
thereby reducing alien near end crosstalk between the plurality of twisted
pairs. Id. at 3:48-60.
Figure 13 of the ’641 Patent is reproduced below:

Figure 13 illustrates an embodiment of cables
having jackets with inwardly extending projections.
Cable 117, shown in Figure 13, includes striated jacket 171 having a
plurality of inwardly extending projections 173 that provide “more air
separating the jacket . . . from the twisted pairs 103 compared with a
conventional jacket.” Id. at 11:5-11. The separation of the jacket from the
twisted pairs permits “less attenuation due to increased air surrounding the
twisted pairs” and helps “to reduce alien crosstalk between adjacent cables .
. . in a bundled cable.” Id. at 11:14-18.

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D. Illustrative Claim
Of the challenged claims, claims 1 and 13 are independent. Claim 1 is
illustrative and is reproduced below:
1. A cable comprising:
a plurality of twisted pairs of insulated conductors
including a first twisted pair and a second twisted pair, each
twisted pair comprising two insulated conductors twisted
together in a helical manner;
a separator disposed among the plurality of twisted pairs
of insulated conductors so as to physically separate the first
twisted pair from the second twisted pair; and
a jacket surrounding the plurality of twisted pairs of
insulated conductors;
wherein the jacket comprises a plurality of protrusions
extending away from an inner circumferential surface of the
jacket, and wherein the plurality of protrusions cause the
plurality of twisted pairs of insulated conductors to be kept away
from the inner circumferential surface of the jacket.

E. The Prior Art References Supporting Alleged Unpatentability of
Claims 1-22
Gingue ’748 US 5,670,748 Sep. 23, 1997 Ex. 1014
Newmoyer ’046 US 5,796,046 Aug 18, 1998 Ex. 1008
Grandy ’612 US 6,150,612 Nov. 21 2000 Ex. 1010
Gagnon ’308 US 6,441,308 B1 Aug 27, 2002 Ex. 1012
Clark ’954 US 6,248,954 B1 Jun. 19, 2001 Ex. 1013

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F. Pending Grounds of Unpatentability Against Claims 1-224
References Basis Claims Challenged
Newmoyer ’046 and either Grandy
’612 or Admitted Prior Art (APA)
§ 103(a) 1-3, 5, 7-9, 11-17,
19, 21 and 22
Newmoyer ’046 and Grandy ’612 § 103(a) 18
Newmoyer ’046, Gagnon ’308,
and either Grandy ’612 or APA
§ 103(a) 4
Newmoyer ’046, Clark ’954, and
either Grandy ’612 or APA
§ 103(a) 6
Newmoyer ’046, Gingue ’748, and
either Grandy ’612 or APA
§ 103(a) 10 and 20
II. CLAIM INTERPRETATION
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
Claim terms are also given their ordinary and customary meaning as would
be understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An inventor may rebut that presumption by providing a definition of
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the

4 See Dec. 16.
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specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).

A. Claim Language5
We begin our claim construction analysis with the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“It is a
bedrock principle of patent law that the claims of a patent define the
invention to which the patentee is entitled the right to exclude.” (citations
and quotations omitted)). Independent claims 1 and 13 are each directed to a
cable that includes a jacket comprising “a plurality of protrusions extending
away from an inner circumferential surface of the jacket.” Ex. 1001, 11:50-
52; 12:34-36 (emphasis added). Both claims call for the protrusions to
provide space between the plurality of twisted pairs of insulated conductors
and the inner circumferential surface of the jacket. Id. at 11:52-55 (claim 1,
cause “to be kept away”); 12:36-39 (claim 13, “provide an air gap”).
This language establishes two requirements regarding the claimed
circumferential surface. First, the protrusions are not part of the claimed
circumferential surface because the protrusions cannot both be part of the
circumferential surface and provide space between that surface and the
plurality of twisted pair conductors. Second, the circumferential surface

5 Patent Owner and Petitioner each discusses the meaning of an “inner
circumferential surface” as claimed. See, e.g., Pet. Reply 16; Pet. Reply 8.
However, the claim term “inner” is not in dispute, and identifies the inner as
opposed to the outer surface of the jacket. Therefore, our discussion focuses
on the claim term “circumferential surface.”
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serves as a reference point from which the protrusions extend because the
protrusions extend away from the circumferential surface.

B Patent Owner Interpretation
According to Patent Owner, a person of ordinary skill in the art would
recognize that claims 1 and 13 require that the jacket has an inner
circumferential surface and that the plurality of protrusions 173 extend away
from this inner circumferential surface, as illustrated in Figure 13. PO Resp.
16-19. This assertion simply echoes the claim language. Patent Owner
provides a more detailed claim construction via an annotated drawing and
reference to the prior art.

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10
’641 Patent. Ex. 2001 ¶¶ 2, 46-49. In light of these assertions, Patent
Owner’s claim interpretation is that the claimed “circumferential surface”
must extend some distance between protrusions and does not extend across
the base of the protrusions.

C. Petitioner Interpretation
Petitioner contends that the claimed “circumferential surface” is a
virtual surface that spans a circumference from which the protrusions
extend. Pet. Reply 7. To illustrate this claim construction, Petitioner
provides a figure contrasting the inner surface to the claimed
“circumferential surface” for both the ’641 Patent and Newmoyer ’046. Id.
Petitioner’s figure contrasting the two inner
surfaces is reproduced below:

’641 Patent ’046 Patent

The figure is a cross-sectional view of a portion of the
cable jackets of the ’641 Patent and Newmoyer ’046.6

6 Column labels added for clarity.
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In this figure, Petitioner illustrates the inner surface (top left and right)
includes the protrusions while the claimed “circumferential surface” (bottom
left and right) is a virtual surface that spans the circumference and does not
include the protrusions. Id.
Therefore, Patent Owner contends that the claimed “circumferential
surface” is discontinuous, extending some distance between protrusions and
not extending across the base of the protrusions, while Petitioner contends
that the claimed “circumferential surface” is continuous (spans the
circumference) to include extending across the base of the protrusions.

D. Interpretation
We agree with Petitioner that the claimed “circumferential surface” is
“virtual,” in that, as explained above, the claims require that the
“circumferential surface” serves as a reference point from which the
protrusions extend. We also agree with Petitioner that the claimed
“circumferential surface” spans the circumference (is continuous rather than
discontinuous) to include extending across the base of the protrusions. The
ordinary meaning of “circumferential” is “of, at, or close to the
circumference,” and the ordinary meaning of “circumference” is “the line
bounding a circle or other rounded surface, a periphery.” WEBSTER’S NEW
UNIVERSAL UNABRIDGED DICTIONARY (Deluxe Second Ed. 1983)
(“circumferential,” a.; “circumference,” n. def. 1) (Ex. 3001). Therefore, the
ordinary meaning of the term “circumferential” suggests that the claimed
“circumferential surface” extends along the line bounding the inner surface
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(the periphery) of the jacket, to include extending across the base of the
protrusions.
We discern nothing in the Specification inconsistent with the ordinary
meaning of “circumferential.” The Specification simply echoes the claim
language, describing that “[t]he jacket comprises a plurality of protrusions
extending away from an inner circumferential surface of the jacket.” See
e.g., Ex. 1001, 3:42-44. Also consistent with the ordinary meaning of
“circumferential,” the Specification describes that cable 117 is provided with
striated jacket 171 having a plurality of extending projections 173 that hold
jacket 171 further away from the twisted pairs 103. Id. at 11:5-7, 15-17; fig.
13.
Patent Owner’s reliance on Figure 13 of the ’641 Patent is misplaced.
Although the embodiment shown in Figure 13 includes a surface that spans
some distance between protrusions, claims 1 and 13 do not recite explicitly
that the claimed circumferential surface is limited to the surface between
protrusions. See Ex. 1001, 11:5-7. Nor does the Specification describe the
claimed circumferential surface as extending between but not across the base
of the protrusions. See Pet. Reply 9. Therefore, the language of claims 1
and 13 is broader than this example as reflected in Figure 13 of the
Specification. Accordingly, such limitation is not imported into claims 1
and 13. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim. For
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example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.”); see also Pet. Reply 7-9 (arguing that Patent Owner’s claim
construction is an improper attempt to import limitations of the
Specification).
The Clark Declaration parallels Patent Owner’s argument in that it
repeats the claim language with emphasis added, and attempts to incorporate
the characteristics of the embodiment shown in Figure 13 as limitations of
claims 1 and 13. Ex. 2001 ¶ 46. This interpretation suffers from the
shortcomings noted above.
Having considered Patent Owner’s proposed claim construction,
argument, and supporting evidence, the claim construction proffered is not
the broadest reasonable interpretation in light of the Specification.
Significantly, we note that at the oral hearing, when asked if the broadest
reasonable interpretation permitted the “circumferential surface” to extend
along the base of the protrusions, counsel for Patent Owner answered that he
could not say that such interpretation was unreasonable. Tr. 52-54.
Under the broadest reasonable interpretation consistent with the
specification, the claimed “circumferential surface” of the jacket extends
along the periphery of the inner surface of the jacket, including the base of
the protrusions.

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III. PATENTABILITY
A. Alleged Obviousness over Newmoyer ’046 and either Grandy ’612 or
APA
Petitioner provides sufficient explanations and evidence to
demonstrate by a preponderance of the evidence that the combination of
Newmoyer ’046 and either Grandy ’612 or APA would have rendered the
subject matter of claims 1-3, 5, 7-9, 11-17, 19, 21, and 22 obvious to one
with ordinary skill in the art. Pet. 18-22, 26-31, 42-47; Pet. Reply 1-5, 7-13.
1. Newmoyer ’046
Newmoyer ’046 discloses a communications cable that includes a
striated jacket having an inner surface that includes a plurality of sharply
angled, inwardly directed projections. Ex. 1008, 1:7-12; fig. 1.
Newmoyer ’046 states that a major concern for cable manufacturers is
the deleterious effects of capacitive coupling between the plurality of
electrical conductors and the cable jacket. Id. at 1:15-19. One technique for
reducing coupling and attenuation is to cause the jacket to be loosely fitting
over the core; however, this technique has the drawback of causing
impedance variations. Id. at 1:54-63. Another technique to reduce
capacitive coupling between the electrical conductors and the cable jacket is
to cause the cable jacket to be less intimate with electrical conductors it
encases. Id. at 1:38-41.
Newmoyer ’046’s cable includes a plurality of sharply angled,
inwardly directed projections on the inner surface of the cable jacket to
maintain the pairs of electrical conductors in the core of the cable in an
intended configuration, such that impedance variations and capacitive
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coupling between the electrical conductors and the cable jacket are both
reduced. Id. at 2:9-26. Specifically, the cable includes means 20 that spaces
the inner surface of the cable jacket 14 away from the twisted pairs. Id. at
3:29-32. In one embodiment of Newmoyer ’046’s invention,
communications cable 10 includes inner surface 18 of cable jacket 14 that is
spaced away from twisted pairs 12 by means 20, a plurality of sharply
angled striations 21 that define sharply angled, inwardly directed projections
23.7 Id. at 3:9-16, 33-37.
Newmoyer ’046 discloses that the number of striations may be varied
depending on a variety of factors, such as: the number of cables 12 in core
11; the specific jacketing compound used; and the dielectric properties, melt
flow characteristics, and hardness of the jacketing compound. Id. at 3:50-58.
For example, a cable having four twisted pairs of conductors 12 in core 11
may have between 18 and 36 striations 21 equally spaced about the inner
surface 20 of cable jacket 14. Id. at 3:40-45.
2. Grandy ’612
Grandy ’612 discloses a high performance data cable that includes star
separator 50 having longitudinal projections (54, 56, 58, and 60) that extend
outwardly from core 52 and form regions (55, 57, 59, and 61) that house
conductors (10, 20, 30, and 40), which maximizes pair to pair distance and
improves crosstalk performance. Ex. 1010, 1:4-5, 5:66˗6:12; fig. 1; Pet. 25-

7 Newmoyer ’046 identifies the inner surface of cable 10 as element 18 and
the outer surface as element 16 (Ex 1008, 3:12-13; fig. 1), and later
mistakenly identifies the inner surface as element 16 (Ex. 1008, 3:30).
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26. Grandy ’612 further states that the separator has a cross sectional profile
that maximizes air space around the twisted conductor pairs, while holding
the pairs in relatively fixed position within the core in relation to each other,
enhancing attenuation performance and providing stable impedance
performance. Id. at 4:66˗5:4.
3. APA
The ’641 Patent states that another solution to twisted pairs lying too
closely together is demonstrated in Belden Wire & Cable Company’s
product number 1711A, which includes a “star”-shaped core that separates
adjacent twisted pairs of conductors of the cable to help reduce and stabilize
crosstalk between the twisted pairs. Ex. 1001, 2:18-26.
4. Petitioner’s Obviousness Reasoning
a) Newmoyer ’046 and Grandy ’612
Petitioner provides two primary reasons for adding the separator of
Grandy ’612 to the cable of Newmoyer ’046. First, Petitioner reasons that
Newmoyer ’046 and Grandy ’612 each seek to improve transmission
properties by maintaining the twisted pairs in position with respect to each
other to minimize impedance variations in the communications cable. Pet.
28-29. Second, Petitioner asserts a person of ordinary skill in the art would
have combined Grandy ’612’s separator with Newmoyer ’046’s cable to
enhance the overall performance of the cable as market forces demanded
because doing so would incorporate the benefits of Newmoyer ’046’s design
(improved attenuation, impedance, and alien crosstalk) and those of Grandy
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’612’s design (improved attenuation, impedance, and internal crosstalk).
Pet. 22, 27-29; Pet. Reply 12.
Petitioner asserts this combination would have had a reasonable
expectation of success because the cables have a substantial overlap of
technology and would produce a predictable result. Pet. 28. Therefore,
according to Petitioner, the combination would have been obvious because it
is the combination of familiar elements according to known methods that
yields predictable results. Id.
b) Newmoyer ’046 and APA
Petitioner’s reasoning for this combination is similar to that for the
combination of Newmoyer ’046 and Grandy ’612, discussed above.
Specifically, Petitioner asserts a person of ordinary skill in the art
would have combined the separator of the APA with Newmoyer ’046’s
cable to enhance the overall performance of the cable as market forces
demanded because doing so would incorporate the benefits of Newmoyer
’046’s design (improved attenuation, impedance, and alien crosstalk) and
those of the separator of the APA (reducing crosstalk). Pet. 22, 31-33; Pet.
Reply 12.
Petitioner asserts that such combination would have had a reasonable
expectation of success because the cables have a substantial overlap of
technology and would produce a predictable result. Pet. 28. Therefore,
according to Petitioner, the combination would have been obvious because it
is the combination of familiar elements according to known methods that
yields predictable results. Id.
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5. Analysis
We have reviewed the parties’ arguments and supporting evidence.
Petitioner’s explanations and supporting evidence demonstrate by a
preponderance of the evidence how the subject matter of the challenged
claims would have been unpatentable as obvious over Newmoyer ’046 and
either Grandy ’612 or APA. Our analysis will focus on the deficiencies
alleged by Patent Owner.
Patent Owner presents three main arguments: Newmoyer ’046 does
not disclose a “circumferential surface” as claimed; the combination would
not have had predictable results; and Petitioner has not provided a sufficient
rationale for combining the teachings of the references.
a) Circumferential Surface
Patent Owner argues that the inner surface of Newmoyer ’046’s cable
jacket consists entirely of angled surfaces forming peaks and valleys, and
therefore, Newmoyer ’046 does not disclose a circumferential surface as
claimed. PO Resp. 17-18.
As explained in our claim construction above, the broadest reasonable
interpretation of a circumferential surface of the jacket as claimed excludes
the protrusions, and extends along the periphery of the inner surface of the
jacket to include the base of the protrusions. Consequently, Patent Owner’s
argument is unpersuasive because it is not commensurate in scope with
claims 1 and 13. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because . . . they are not based
on limitations appearing in the claims.”).
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Patent Owner also argues that Petitioner identifies an inner
circumference of the jacket but fails to identify an inner circumferential
surface as claimed. PO Resp. 18-19. This argument is factually incorrect.
Petitioner states that the jacket of Newmoyer ’046’s cable includes inner
surface 16 and that this jacket includes a plurality of protrusions extending
away from its inner circumference. Pet. 18-19.
Patent Owner also argues that Newmoyer ’046 teaches away from
configurations of the protrusions other than striations that are angled peaks
and valleys. PO Resp. 20-21. Our decision is based upon the conclusion
that Petitioner has demonstrated that Newmoyer ’046 discloses a
circumferential surface as claimed. We do not rely upon Petitioner’s
alternative assertion that Newmoyer ’046 suggests alternative configurations
of the protrusions (striations). See Pet. 21. For that reason, this argument is
not relevant.
b) Predictability of the Newmoyer ’046 and Grandy ’612
Combination
Patent Owner argues that Petitioner’s reasoning for the combination
of Newmoyer ’046 and Grandy ’612 cannot be applied properly because the
combination of Newmoyer ’046 and Grandy ’612 would not have had
predictable results. PO Resp. 22. In support of this contention, the Clark
Declaration states that in the area of communications cable design, the
relationship between any single design parameter and any particular
performance criterion is rarely one-to-one; rather, parameters are interrelated
and affect the performance criteria and manufacturability in complex and
unpredictable ways. Ex. 2003 ¶¶ 27, 55. The Clark declaration also states:
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[a]t the time of the ’641 Patent’s inventions, it would not have
yielded predictable results to combine a separator disposed
among the plurality of twisted pairs of insulated conductors so
as to physically separate the first twisted pair from the second
twisted pair, and a jacket having a plurality of protrusions
extending away from the inner circumferential surface of the
jacket.
Ex. 2001 ¶ 56.
Similarly, the Brenneke Declaration states that the design and
fabrication of data cables having twisted pairs is not an exact science, and
even changes to physical attributes that appear minor can change the
interaction of electric and magnetic fields to have unforeseen and
unpredictable consequences on the cable’s electrical performance. Ex. 2003
¶¶ 6-7. Patent Owner also provides testimony of Mr. Baxter from litigation
in Delaware8 involving the ’641 Patent. There, Mr. Baxter conceded that
changing one cable parameter, such as attenuation, may impact other
characteristics of the cable, and that these trade-offs can be quite complex.
Ex. 2001 ¶ 28. Further, Mr. Baxter testified that many factors affect cable
performance, such as flammability, stability, and durability, and other
factors must be considered such as manufacturability and cost. Id.
Patent Owner’s assertions do not demonstrate that the proposed
combination would not have yielded predictable results. Patent Owner’s

8 Belden Technologies, Inc. and Belden CDT (Canada) Inc. v. Superior
Essex Inc. and Superior Essex Communications LP, Case No. 08-cv-063-
SLR (D. Del.).
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evidence simply presents general design concerns, and fails to address the
predictability of adding a separator to a cable. See Pet. Reply 10-11.
Further, “general unpredictability in the art of cable design” (PO
Resp. 23), without more, does not establish that the proposed combination
would not have yielded predictable results. Even in an unpredictable art, the
appropriate inquiry is whether there was a reasonable expectation of success.
For example, in O’Farrell, Appellants argued that at the time of the claimed
invention there was significant unpredictability in the field of the claimed
invention. In re O’Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988). Applying a
Graham factor analysis, the court held that obviousness does not require
absolute predictability of success; rather, a reasonable expectation of success
is all that is required. Id. at 903-904; see in re Inland Steel Co. 265 F.3d
1354 (Fed. Cir. 2001); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
Consequently, the proper inquiry here is whether there was a reasonable
expectation of success in adding Grandy ’612’s separator to Newmoyer
’046’s cable.
The ’641 Patent includes embodiments utilizing a separator (core or
separator 101). See e.g., Ex. 1001, 5:3-16; 11:45-65; figs. 1, 9A, 9B. The
Specification does not disclose that incorporation of a separator proved
difficult or produced unexpected/unpredictable results. To the contrary, the
’641 Patent acknowledges that it was known to utilize a core that separates
twisted pairs to reduce and stabilize crosstalk between the twisted pairs
(APA). Id. at 2:18-26. In light of this, we agree with Petitioner that the
addition of a separator (core) was a known method with a predictable result
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(reduced crosstalk). Grandy ’612’s star separator is similar to the core of the
APA, in that it separates the twisted pair conductors of the cable to improve
crosstalk. Ex. 1010, 5:66˗6:12; fig. 1; Ex. 1001, 5:3-16; 11:45-65; Pet. 25-
26.
For these reasons, Petitioner has established a reasonable expectation
of success in the proposed modification, and Patent Owner’s argument
regarding predictability is unpersuasive.
c) Motivation to combine Newmoyer ’046 with either Grandy
’612 or APA
Patent Owner presents four contentions in support of the argument
that a person of ordinary skill in the art would have no motivation to
combine the elements of Newmoyer ’046 with the elements of either Grandy
’612 or the APA.9 PO Resp. 24-30.
1) General Desire to Reduce Crosstalk
Patent Owner asserts that given the large number of parameters that
may be modified in a cable, the general desire to reduce crosstalk is
insufficient to provide a motivation to make the specific combination of
features recited in claims 1 and 13. PO Resp. 25-26 (citing Ex. 2001 ¶ 60).
Patent Owner goes on to assert that Petitioner’s sole support for the
motivation to combine, the Baxter Declaration, is entitled to no weight. PO
Resp. 26.
For the reasons that follow, we disagree with the characterization that
the rationale proffered is simply a general desire to reduce crosstalk, and the

9 Patent Owner’s arguments have been reorganized to facilitate our analysis.
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23
characterization that the Baxter declaration is the sole support for
Petitioner’s proffered rationale.
Rationale
As detailed above, Petitioner reasons that a person of ordinary skill in
the art would have made the proposed combination in order to enhance
overall performance of the cable as market forces demanded to incorporate
the benefits of Newmoyer ’046 (improved attenuation, impedance, and alien
crosstalk) and those of either Grandy ’612 (improved attenuation,
impedance, and internal crosstalk) or the APA (reducing crosstalk). Pet. 22,
27-29, 31-33; Pet. Reply 12. The references support this contention, the
merits of which are unchallenged by Patent Owner. See Ex. 1001, 2:18-26;
Ex. 1008, 1:66˗2:57; Ex. 1010, 4:24-29, 37-40; 5:2-4. Petitioner also
reasons that Newmoyer ’046 and Grandy ’612 each seek to improve
transmission properties by maintaining the twisted pairs in position with
respect to each other to minimize impedance variations in the
communications cable. Indeed, Newmoyer ’046 and Grandy ’612 each seek
to minimize impedance variations. Ex. 1008, 2:9-18, 51-53; Ex. 1010, 4:24-
29, 378-40; 4:66˗5:4.
Patent Owner has not addressed persuasively either of these
sufficiently supported rationales. Thus, even without considering the Baxter
Declaration, Patent Owner’s argument does not demonstrate cogently how
the proffered rationale is in error.

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Baxter Declaration
Patent Owner provides three lines of argument for according no
weight to the Baxter Declaration. First, Patent Owner argues that the
Declaration may not be considered as expert testimony. At the oral hearing,
counsel for Patent Owner acknowledged that the Baxter Declaration was
admissible. Tr. 30, 33; see also 37 CFR § 42.61(b) (admissibility of records
of the Office). Patent Owner asserted that although the Declaration is
admissible, it should not be considered as expert testimony because Mr.
Baxter has not been utilized as an expert in this proceeding and been subject
to cross-examination. Tr. at 29-36; see also PO Resp. 26.
But admissibility as an Office record does not preclude a hearsay
objection if the Declaration is relied on by Petitioner as expert testimony for
the truth of the matter asserted therein. An Office record is admissible to
show what was said during a previous Office proceeding. Petitioner clearly
has relied on the Baxter declaration as expert testimony for the truth of the
matter asserted therein, beyond the nature of an Office record. Patent Owner
could have made a hearsay objection and requested cross-examination of
Mr. Baxter. Then, Petitioner would have had to produce Mr. Baxter for
cross-examination or address the issue in some other way. Here, Patent
Owner neither made a hearsay objection nor requested cross-examination.
See generally 37 CFR § 42.52; see 37 CFR § 42.64(b)(1)(ii). Therefore, this
line of argument is unpersuasive.
Second, Patent Owner argues that, “Mr. Baxter never actually opines
on the state of the art at the time the invention was made, as required by 35
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25
U.S.C. 103(a), meaning his declaration cannot be said to provide an ‘alien
crosstalk’ motivation.” PO Resp. 26. Patent Owner’s contention is factually
incorrect in that the Declaration contains information regarding the state of
the art at the time of the invention. See e.g., Ex. 1015 ¶ 18 (discussing
industry interest in alien crosstalk in 2003); ¶ 20 (discussing whether the
proposed combination would have been within the level of ordinary skill in
the art at the time of the ’641 priority date).
Third, Patent Owner contends that the Declaration is not credible
because it offers no objective support, and is undermined by testimony of
Mr. Baxter regarding the unpredictable nature of high-speed, data cable
design in a Delaware lawsuit regarding the ’641 Patent. PO Resp. 26. We
disagree. The Declaration provides objective support. For example, the
Declaration details Mr. Baxter’s education, background, and experience.
Ex. 1015 ¶¶ 2-7. The Declaration also states that Mr. Baxter’s opinion is
based on the ’641 Patent, Newmoyer ’046, and an industry standard from
2003. Id. ¶¶ 8, 9, and 18.
Regarding Mr. Baxter’s testimony in the Delaware lawsuit, as detailed
above, such testimony acknowledges that changing one cable parameter may
impact other characteristics of the cable, that design trade-offs can be quite
complex, and that other factors must be considered. Patent Owner fails to
explain persuasively how these acknowledgements regarding the state of that
art undermine Mr. Baxter’s credibility.
Accordingly, Patent Owner’s arguments regarding the Baxter
Declaration are unpersuasive.
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2) Newmoyer ’046 suggests the modification is not necessary
Patent Owner argues that Newmoyer ’046 suggests that addition of
the Grandy ’612 separator is not necessary because Newmoyer ’046’s jacket
already reduces crosstalk and attenuation. PO Resp. 27 (citing Ex. 2001 ¶
62).
This argument is not supported adequately by the reference.
Newmoyer ’046 does not disclose or suggest that the cable invented is the
pinnacle of design with regard to crosstalk and attenuation. Rather,
Newmoyer ’046 discloses a cable that reduces attenuation and alien
crosstalk. Ex. 1008, 2:13-18; Ex. 1015 ¶ 16.
3) Tradeoffs
Patent Owner argues that adding a separator to a cable increases the
size and weight of the cable, reduces flexibility, and increases cost. PO
Resp. 28 (citing Ex. 2001 ¶ 63). To that end, Patent Owner contends that
one of ordinary skill in the art would not have been motivated to combine
the teachings of Newmoyer ’046 and Grandy ’612.
At most, Patent Owner’s argument identifies drawbacks of the
proposed combination; however, that there are tradeoffs involved regarding
features, costs, manufacturability, or the like, does not necessarily prevent
the proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
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27
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). Patent Owner’s argument is unpersuasive in that it
fails to weigh the alleged drawbacks against the benefit identified by
Petitioner. In particular, Petitioner has attributed the benefit of reducing
“internal crosstalk” to the presence of a separator in data communications
cables. Pet. Reply 29 (citing Ex. 1015 ¶¶ 10-17).
4) Alien Crosstalk
Patent Owner argues that increasing the size of the striations of
Newmoyer ’046’s jacket to address alien crosstalk adequately would result
in a loose jacket. PO Resp. 28 (citing Ex. 2001 ¶ 63). According to Patent
Owner, this result would be undesirable because Grandy’s impedance
stability is dependent on a tightly applied jacket that holds the core in a
manner that reduces conductor-to-conductor spacing variation. Id.
Contrary to what Patent Owner’s argument implies, this ground of
unpatentability does not propose to increase the size of the striations in
Newmoyer’s jacket in order to further reduce alien crosstalk. Rather, as
explained in the obviousness reasoning above, the Petition lists reduction of
alien crosstalk as one advantage of Newmoyer ’046’s cable that would be
retained when combined with Grandy’s separator to enhance the overall
performance of the cable.

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6. Conclusion
Upon review of the Petition, Patent Owner’s response, and
Petitioner’s reply, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1-3, 5, 7-9, 11-17, 19, 21, and 22
are unpatentable as obvious over Newmoyer ’046 and either Grandy ’612 or
APA.

B. Alleged Obviousness over Newmoyer ’046 and Grandy ’612
As noted in section I.F. above, Petitioner contends that claim 18 is
unpatentable as obvious over Newmoyer ’046 and Grandy ’612. Petitioner
provides sufficient explanations and evidence to demonstrate by a
preponderance of the evidence that the combination of Newmoyer ’046 and
Grandy ’612 would have rendered the claimed subject matter obvious to one
with ordinary skill in the art. Pet. 18-22, 26-31, 45-46; Pet. Reply 1-8, 10-
15. Our analysis will focus on the deficiencies alleged by Patent Owner.
Claim 18 depends from independent claim 13, and recites, “wherein
the jacket has a substantially circular cross-sectional shape.” Patent Owner
repeats the arguments for independent claim 13 against the first ground of
unpatentability, and makes no separate argument based upon the limitation
added by claim 18. PO Resp. 30. The analysis of independent claim 13 in
the first ground of unpatentability above is applicable here. Patent Owner
does not challenge other aspects of this ground of unpatentability.
Upon review of the Petition, Patent Owner’s response, and
Petitioner’s reply, we determine that Petitioner has shown by a
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preponderance of the evidence that claim 18 is unpatentable as obvious over
Newmoyer ’046 and Grandy ’612

C. Alleged Obviousness over Newmoyer ’046, Gagnon ’308, and either
Grandy ’612 or APA
As noted in section I.F. above, Petitioner contends that claim 4 is
unpatentable as obvious over Newmoyer ’046, Gagnon ’308, and either
Grandy ’612 or APA. Petitioner provides sufficient explanations and
evidence to demonstrate by a preponderance of the evidence that the
combination of Newmoyer ’046, Gagnon ’308, and either Grandy ’612 or
APA would have rendered the claimed subject matter obvious to one with
ordinary skill in the art. Pet. 18-22, 26-31, 35-37, 45-46; Pet. Reply 1-8, 10-
15. Our analysis will focus on the deficiencies alleged by Patent Owner.
Claim 4 depends from independent claim 1 and recites, “wherein the
jacket comprises a dual-layer structure including a first jacket layer and a
second jacket layer and wherein the plurality of protrusions extend away
from an inner circumferential surface of the first jacket layer.”
1. Gagnon ’308
Gagnon ’308 discloses a dual layer jacket electrical cable that includes
a first layer 40 and a second layer 41 that exceeds certain standards for
Category 5 type cables. Ex. 1012, 1:4-5; 7:29˗8:17; fig. 4b; see also Pet. 34,
42.
2. Analysis
Patent Owner argues that Gagnon ’308 does not cure the deficiencies
of Newmoyer ’046 and Grandy ’612 discussed with regard to independent
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claim 1 for the first ground of unpatentability. PO Resp. 30-31. This
argument is unpersuasive because our analysis of independent claim 1 in the
first ground of unpatentability revealed that there are no deficiencies in
Newmoyer ’046 or Grandy ’612 to be cured.
Upon review of the Petition, Patent Owner’s response and Petitioner’s
reply, we determine that Petitioner has shown by a preponderance of the
evidence that claim 4 is unpatentable as obvious over Newmoyer ’046,
Gagnon ’308, and either Grandy ’612 or APA.

D. Alleged Obviousness over Newmoyer ’046, Clark ’954, and either
Grandy ’612 or APA
As noted in section I.F. above, Petitioner contends that claim 6 is
unpatentable as obvious over Newmoyer ’046, Clark ’954, and either
Grandy ’612 or APA. Petitioner provides sufficient explanations and
evidence to demonstrate by a preponderance of the evidence that the
combination of Newmoyer ’046, Clark ’954, and either Grandy ’612 or APA
would have rendered the claimed subject matter obvious to one with
ordinary skill in the art. Pet. 18-22, 26-31, 35-38, 45-46; Pet. Reply 1-8, 10-
15. Our analysis will focus on the deficiencies alleged by Patent Owner.
Claim 6 depends from independent claim 1 and recites, “wherein the
plurality of twisted pairs of insulated conductors and the jacket are helically
twisted together with a cable twist lay that is within a range of about 2 to 6
inches.”

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1. Clark ’954
Clark ’954 discloses helical twisting of a cable. Ex. 1013, 8:63˗9:4;
see also Pet. 36-37.
2. Analysis
Patent Owner argues that Clark ’954 does not cure the deficiencies of
Newmoyer ’046 and Grandy ’612 discussed with regard to independent
claim 1 for the first ground of unpatentability. PO Resp. 31. This argument
is unpersuasive because our analysis of independent claim 1 in the first
ground of unpatentability above revealed that there are no deficiencies in
Newmoyer ’046 or Grandy ’612 to be cured.
Upon review of the Petition, Patent Owner’s response, and
Petitioner’s reply, we determine that Petitioner has shown by a
preponderance of the evidence that claim 6 is unpatentable as obvious over
Newmoyer ’046, Clark ’954, and either Grandy ’612 or APA.

E. Alleged Obviousness over Newmoyer ’046, Gingue ’748, and either
Grandy ’612 or APA
As noted in section I.F. above, Petitioner contends that claims 10 and
20 are unpatentable as obvious over Newmoyer ’046, Gingue ’748, and
either Grandy ’612 or APA. For the reasons that follow, we do not agree.
Having reviewed the parties’ arguments and supporting evidence, we
determine that Petitioner’s explanations and supporting evidence do not
demonstrate by a preponderance of the evidence how the subject matter of
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the challenged claims would have been obvious over Newmoyer ’046,
Gingue ’748, and either Grandy ’612 or APA.
Claim 10 depends indirectly from independent claim 1 and claim 20
depends from independent claim 13. Claims 10 and 20 each add the
limitation that the jacket comprises a foamed polymer.
1. Gingue ’748
Gingue ’748’s invention “relates to insulated electrical conductors and
jacketed electrical cables.” Ex. 1014, 1:8-9. Gingue ’748 states that the
electrical performance of an insulating material, such as fluorinated
ethylene/propylene polymer, is enhanced by foaming or expanding the
corresponding solid material, and for a given volume of material this
decreases the flammable material involved, providing a favorable balance of
electrical properties and flame retardancy. Gingue ’748, 2:60˗3:26; see also
Pet. 38, 43.
Gingue ’748 discloses a cable design having a foamed polymeric
inner layer that provides optimized electrical characteristics, and a
halogenated polymeric outer layer that incorporates intumescent char and
flame retardancy. Ex. 1014, 4:2-10, 22-31.
In a first embodiment, insulated electrical conductor 10 includes
electrical conductor 12 having foamed polymeric inner layer 14 and
halogenated polymeric outer layer 16. Id. at 5:3-8, 25-30; fig. 1. In a
second embodiment, jacketed electrical cable 20 includes electrical
conductor 24 surrounded by foamed polymeric inner layer 26 and
halogenated polymeric outer layer 28. Id. at 6:41-54; fig. 2.
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Outer jacket 30 of the second embodiment may be comprised of the
same halogenated polymeric material as the outer layer 28. Id. at 6:64-67.
Gingue ’748 does not disclose that a halogenated polymeric material
is a foamed polymeric material, and Petitioner offers no evidence that a
halogenated material is a foamed polymer. Consequently, there is
insufficient evidence in the record that a halogenated polymeric material is a
foamed polymeric material. Further, Gingue ’748 does not disclose that a
cable jacket may be comprised of a foamed polymeric material.
2. Obviousness reasoning
Petitioner notes that Gingue ’748 discloses the advantages of foamed
insulation for any type of insulating material, and that the same material
(halogenated polymeric material) may be used as a layer of insulation as
may be used for the jacket. Pet. Reply 14. In light of this, Petitioner reasons
that it would have been obvious to modify Newmoyer’s jacket to be
comprised of a foamed polymer. Pet. 38-40; Pet. Reply 14-15.
3. Analysis
Patent Owner argues that, “Gingue ’748 merely discloses foaming a
polymer in the context of material used for the insulation layer surrounding
the conductors of a twisted pair, not for use in a cable jacket.” PO Resp. 32
(citing Ex. 1014, 5:23˗6:40 as an example); Ex. 2001 ¶ 72.
Petitioner incorrectly associates Gingue ’748’s disclosure relating to
halogenated polymeric material with the disclosure related to foamed
polymeric material. As detailed above, Gingue ’748 discloses that a
halogenated polymeric material is suitable for use as an outer layer of
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34
insulation on a conductor to provide intumescent char and flame retardancy
when used in conjunction with an inner layer of foamed polymeric material
providing optimal electrical characteristics. This halogenated polymeric
material is also suitable for use in a cable jacket; however, the record
contains no evidence that a halogenated polymeric material is a foamed
polymeric. Further, although Gingue ’748 discloses that a foamed
polymeric material is suitable as an inner layer of insulation for a conductor,
Gingue ’748 makes no disclosure that a foamed polymeric material is also
suitable for use in a cable jacket. See Brand v. Miller, 487 F.3d 862, 868-69
(Fed. Cir. 2007) (Although the Board may apply its expertise to interpreting
evidence in the record, it is impermissible for the Board to base factual
findings on its expertise.).
Upon review of the Petition, Patent Owner’s response, and
Petitioner’s reply, we determine that Petitioner has not shown by a
preponderance of the evidence that claims 10 and 20 are unpatentable over
Newmoyer ’046, Gingue ’748, and either Grandy ’612 or APA.

IV. CONCLUSION
Petitioner has met its burden of proof by a preponderance of the
evidence in showing under 35 U.S.C. § 103 that: (1) claims 1-3, 5, 7-9, 11-
17, 19, 21, and 22 are unpatentable as obvious over Newmoyer ’046 and
either Grandy ’612 or APA; (2) claim 18 is unpatentable as obvious over
Newmoyer ’046 and Grandy ’612; (3) claim 4 is unpatentable as obvious
over Newmoyer ’046, Gagnon ’308, and either Grandy ’612 or APA; and (4)
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35
claim 6 is unpatentable as obvious over Newmoyer ’046, Clark ’954, and
either Grandy ’612 or APA.
Petitioner has not meet its burden of proof by a preponderance of the
evidence in showing that claims 10 and 20 are unpatentable over Newmoyer
’046, Gingue ’748, and either Grandy ’612 or APA.

V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1-9, 11-19, 21 and 22 of U.S. Patent
7,135,641 are unpatentable;
FURTHER ORDERED that claims 10 and 20 of U.S. Patent
7,135,641 have not been demonstrated to be unpatentable; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER

Joseph Sofer
Robert Haroun
James Blank
David Soofian
SOFER & HAROUN L.L.P
joesofer@soferharoun.com
james.blank@kayescholer.com
david.soofian@kayescholer.com

For PATENT OWNER

Matthew B. Lowrie
Aaron W. Moore
FOLEY & LARDNER LLP
mlowrie-PTAB@foley.com
amoore-PTAB@foley.com

Vsh