Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.
– Joe Robinson, Bob Schaffer, Lindsay Henner, Parker Hancock, and Puja Dave
84-3. Broadest Reasonable Interpretation in IPR May Be Narrower Than Broadest Ordinary Meaning, Yet Broader Than Phillips Standard
- PPC Broadband, Inc. v. Corning Optical Communs. RF, LL., No. 2015-1361, 2015-1366, 2015-1368, 2015-1369 2016 U.S. App. LEXIS 3022 (Fed. Cir. Feb. 22, 2016) (Before Moore, O’Malley, and Wallach, J.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.
- PPC Broadband, Inc. v. Corning Optical Communs. RF, LL., No. 2015-1364 2016 U.S. App. LEXIS 3084 (Fed. Cir. Feb. 22, 2016) (Before Moore, O’Malley, and Wallach, J.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.
Corning Optical filed a petition requesting an IPR of claims 10-25 of PPC’s ’060 patent for coaxial cable connectors, alleging the patents are obvious over a U.S. and Japanese patent application. The Board construed the term “reside around” to mean “in the immediate vicinity of” or “near” and concluded that the combination of the two references rendered the patent obvious. PPC appealed.
PPC argued on appeal that the Board’s construction of “reside around” was unreasonably broad, and instead should be construed as “encircle or surround.” The Court agreed, concluding that this was the broadest reasonable construction in light of the claims and specification. The Court noted that the Board failed to account for how the claims and specification inform the ordinary skilled artisan as to what ordinary definition the patentee was using. The Court noted that just because “around” has several dictionary definitions does not mean all these meanings were reasonable in light of the specification. The Court argued that all of the components of the cable connectors encircled an inner electrical conductor, and thus it would seem odd to construe “reside around” without recognizing the context of its use in terms of the cable.
Corning argued that “around” could not mean “encircle or surround” because the curved arm members referred only to arms partially extended “around” the continuity member. The Court found that while this was true, the broadest reasonable interpretation of “encircle or surround” did not require complete encirclement. Further, the specification referred to embodiments where the arms extended in “yin/yang like fashion.” The Court noted that the patent at issue had more than 20 embodiments and 50 figures, and thus, every claim did not cover each and every embodiment. PPC’s construction of “reside around” was consistent with the use of “around” in the embodiments where the continuity member encircled the body in a sleeve-like configuration. The Court held that the specification consistently used the term “around” to indicate encircling or surrounding and applied only to components with this configuration.
PPC also challenged the Board’s determination that the Japanese reference met the patent’s “axially lengthwise contact” limitation. The Court disagreed with PPC, noting that substantial evidence supported the Board’s finding that the reference’s spring contacted the post at more than just a single point, and thus had a length of contact that was beyond one point. Given the new claim construction, the Court vacated and remanded the Board’s decision as to claims 10-25 of the ’060 patent.
Corning also filed IPR petitions for claims 1-9 of the ’060 patent and certain claims of the ‘320 and ‘353 patents, on the grounds that these claims were obvious over the two prior art references. The Board found all of these claims to be obvious, and PPC appealed.
PPC disputed the Board’s construction of “continuity member” and “electrical continuity member,” which required that “the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there.” PPC argued that the contact needed to be consistent or continuous with time, and that the combination of the references did not teach consistent or continuous contact as required by the claims. The Court agreed with PPC that the specification supports this construction. The specification taught that the fundamental purpose of the invention was to “ensure ground continuity.” However, in IPRs, claims are given their broadest reasonable interpretation consistent with the specification, but not necessarily the construction laid out in Phillips v. AWH Corp.,415 F.3d 1303 (Fed. Cir. 2005) (en banc). By this standard, the Board’s broader construction, which did not require continuity at all times, was not unreasonable.
There were other claims that required temporal continuity by virtue of other claim limitations. Corning argued that the Board considered these as part of the claim construction analysis for the terms “continuity member” and “electrical continuity member.” The Court disagreed on this point, and questioned the Board’s decision to explicitly decline the requirement for the continuity member to “maintain a ‘continuous electrical connection.’” In particular, the Board did not make any factual findings in its determination. Thus, the Court vacated the Board’s determination that these claims were unpatentable, noting that it would not make factual findings for the first time during an appeal.
The Court agreed with the Board’s construction of “shaped to fit” and “configured to fit” to mean that components that are shaped to fit one another “are sized and dimensioned to abut one another.”
The parties argued over the Board’s findings with certain indicia of nonobviousness. The Board found that PPC had not shown persuasive evidence of commercial success. The Court held the Board erred, because PPC submitted multiple declarations to show that its connectors were commercial embodiments of the connectors recited in the claim. The Board rejected this evidence without explanation. Thus, the Court held that the Board must conduct fact finding under the correct claim construction. The Board’s decision was vacated in part, affirmed in part, and remanded for further proceedings.