By Thomas Long, J.D.
In five separate inter partes reviews involving three patents related to coaxial cable connectors, the Patent Trial and Appeal Board erred in determining that three claims of one patent, 25 claims of a second patent, and 21 claims of third patent were invalid for obviousness, the U.S. Court of Appeals for the Federal Circuit has decided (PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, February 22, 2016, Moore, K.). The Board’s obviousness findings with respect to these claims were vacated and remanded. The court affirmed, however, the Board’s determination that 29 claims of the first patent-at-issue were invalid.
Patents-at-issue. PPC Broadband, Inc., held U.S. Patent Nos. 8,287,320 (“the ’320 patent”), 8,323,060 (“the ’60 patent”), and 8,313,353 (“the ’353 patent”). The ’353 patent and the ’060 patent were continuations of the ’320 patent. The three patents shared the same specification, in relevant part. The patents disclosed a number of embodiments of connectors for coaxial cables that were intended to reduce noise and improve functionality. More specifically, the ’320 patent family disclosed coaxial cable connectors having a connector body, a post, a nut (also called a “coupler”), and a “continuity member” that contacted the post and the nut so that electrical grounding continuity was extended through the post and the nut.
Review proceedings. Corning Optical Communications RF, LLC, filed petitions requesting inter partes reviews (IPRs) of claims 1-32 of the ’320 patent, claims 1-9 of the ’060 patent, and claims 7-27 of the ’353 patent on grounds that these claims were unpatentable as obvious over the combination of U.S. published patent application 2006/0110977 (“Matthews”) and Japanese published patent application JP 2002-015823 (“Tatsuzuki”).
Four of the IPRs were consolidated; these proceedings focused on the terms “continuity member” and “electrical continuity member,” one or both of which were present in every challenged claim. In the fifth IPR (which was appealed separately and dealt with in a separate opinion), the review centered on the Board’s construction of the term “reside around.” The Board found all challenged claims invalid as obvious under the prior art references. PPC Broadband appealed.
Claim constructions. The Board construed “continuity member” and “electrical continuity member” to require “that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there.” With respect claims 10-25 of the ’060 patent, the Board interpreted the language a “continuity member having a nut contact portion positioned to electrically contact the nut and positioned to reside around an external portion of the connector body when the connector is assembled,” and construed “reside around” as meaning “mean “in the immediate vicinity of; near.” PPC Broadband challenged these constructions on appeal.
“Continuity member”/“electrical continuity member.” PPC Broadband argued that the Board erred when it construed the terms “continuity member” and “electrical continuity member” to require “that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” without requiring that contact to be consistent or continuous in time. According to PPC Broadband, the Board did not find that the combination of Matthews and Tatsuzuki taught consistent or continuous contact with coupler/nut and the post.
The court noted that, in an IPR proceeding, the Board applied the broadest reasonable interpretation when construing claims. In contrast, district courts sought to arrive at the “correct construction”—that is, the construction that most accurately delineated the scope of the claimed invention. Under the latter standard, the court said that it would side with PPC Broadband and hold that “continuity member” required a continuous or consistent connection. However, under the proper standard applicable in IPRs, the Board’s construction was not unreasonable, in the court’s view. “Continuity” could refer to something that was uninterrupted in time, but it could also refer to something that was uninterrupted in space. Therefore, Board’s construction “that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” without requiring consistent or continuous contact, was the broadest reasonable construction. This construction was outcome-determinative with respect to 29 claims of the’320 patent, and the Board’s obviousness determination with respect to those claims was affirmed.
Other limitations requiring temporal continuity. Despite this construction, there were several claims that required temporal continuity by virtue of other claim limitations, the court said. For example, claim 1 of the ’060 patent, claims 7 and 20 of the ’353 patent, and claims 8, 16, and 31 of the ’320 patent required the continuity member to “maintain electrical continuity” during the operation of the connector. The Board did not find that the combination of Matthews and Tatsuzuki maintained electrical continuity during the specific positions or modes of operation required by these limitations. Therefore, the court vacated the Board’s determination that claims 8, 16, and 31 of the ’320 patent, claims 1-9 of the ’060 patent, and claims 7-27 of the ’353 patent were unpatentable.
Objective considerations. Although the Board found that certain objective considerations pointed towards non-obviousness, it concluded that Corning’s strong evidence of obviousness outweighed these considerations. PPC Broadband argued that there was a long-felt but unsolved need for coaxial cable connectors where ground continuity could be established even if the connector was only loosely connected to the port; however, in the court’s view, substantial evidence supported the Board’s findings that this long-felt need had been satisfied by earlier connectors invented before the priority date of the patents-at-issue.
The court disagreed, however, with the Board’s finding that PPC Broadband had not presented persuasive evidence of commercial success. The finding was not supported by substantial evidence. Accordingly, the Board was directed to make additional fact findings with respect to commercial success on remand under the correct claim construction.
“Reside around.” With respect to claims 10-25 of the ’060 patent, PPC Broadband argued that the Board’s construction of “reside around” as meaning “in the immediate vicinity of; near” was unreasonably broad. The court noted that the Board seemingly arrived at its construction by referencing dictionaries cited by the parties and simply selecting the broadest definition therein. This approach did not, in the court’s view, necessarily result in the broadest reasonabledefinition in light of the specification. The Board did not account for how the claims themselves and the specification informed a reasonably skilled artisan as to precisely which ordinary definition the patentee was using.
After examining the claim language and the specification, the court stated that, in context, the Board’s construction of “reside around” was unreasonable. The broadest reasonable interpretation of the term “reside around” in light of the claims and specification was “encircle or surround.” The court agreed with PPC Broadband that the ’060 patent indicated that such encirclement need not be absolute. Accordingly, the court vacated the rejection of claims 10-25 of the ’060 patent and remanded.
Attorneys: J. Michael Jakes (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for PPC Broadband, Inc. Todd Ray Walters (Buchanan Ingersoll & Rooney P.C.) for Corning Optical Communications RF, LLC.
Companies: PPC Broadband, Inc.; Corning Optical Communications RF, LLC
MainStory: TopStory Patent FedCirNews
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