IPSILON : pioneer in the american procedure of patents invalidation, the Inter Partes Review

30 Mar IPSILON : pioneer in the american procedure of patents invalidation, the Inter Partes Review

IPSILON’s European and US teams led by Valerie Feray in France and Joe Sofer in New York are proud to announce a complete victory for handling four major IPRs (Inter-Partes Reviews) for their client Berk-Tek, a Nexans subsidiary.  The IPSILON team coordinated its work with the law firm of Kaye Scholer creating an ideal arrangement where the litigation aspects were predominantly handled by Kaye Scholer while the intricate Patent Office arguments and submissions were predominantly handled by Joe Sofer and his partner Greg Antrim.

Berk-Tek is a leading manufacturer and provider in high-speed telecommunications cables, with a substantial portfolio of issued and pending patents.

In response to serious threats by Belden one of Berk-Tek’s competitors, in November 2012 Berk-Tek instituted four of the very first IPRs challenging the validity of the Belden patents.

In a complex proceeding — with unprecedented issues because of the infancy of the IPR process– the Patent Trial and Appeal Board invalidated 79 out of the 81 challenged claims in four separate decisions. Belden appealed three of those decisions.

In April 2015, the CAFC (Court of Appeal for the Federal Circuit) affirmed two of these decisions, holding all the claims of those two patents invalid.

On November 5, 2015, the CAFC reversed the PTAB’s validity finding of the two surviving claims – invalidating each and every one of the challenged claims.

The outcome of these final decisions that took just a little over two years from the very beginning to the end allowed Berk-Tek a significant victory in a much shorter time than a regular lawsuit in federal court, along with substantial cost savings. Based on the most recent statistics from PTAB, it appears that the IPR proceedings have become a reliable and effective tool in combating invalid patents.

We are proud to be one of the early pioneers in handling IPRs and will be glad to provide you with any further information that you may need.

Joe Sofer & Valérie Feray