PTAB “Broadest Reasonable Construction” for Connector Patents Deemed Unreasonable by CAFC

In two related opinions (Docket Nos. 2015–1361, 2015–1369, 2015–1366, 2015–1368 and Docket No. 2015-1364) issued February 22, 2016 (each captioned PPC Broadband, Inc. v. Corning Optical Communications RF, LLC), the U.S. Court of Appeals for the Federal Circuit (“CAFC”) vacated and remanded portions of decisions rendered by the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent & Trademark Office (“USPTO”) in five separate inter partes review proceedings initiated by Corning Optical Communications RF, LLC (“Corning”) against PPC Broadband, Inc. (“PPC”). PPC is the owner of three patents at issue in the inter partes review proceedings (US 8,287,320, US 8,323,060, and US 8,313,353). The patents are related and directed to features of a coaxial cable connector. The CAFC decisions focus primarily on claim construction issues relating to the application of the PTAB’s “broadest reasonable construction” (“BRC”) claim construction standard and illustrate how the Court may evaluate the reasonableness of claim constructions in PTAB decisions on appeal.

Judge Kimberly Moore authored the two CAFC opinions, in which she was joined by CAFC Judges Kathleen O’Malley and Evan Wallach. In the first opinion, the Court examined the PTAB’s claim construction for the term “continuity member,” which appears in claims for each of the three patents. In these patents, the continuity member is claimed as an element of the coaxial connector designed to extend function of an electromagnetic interference shield provided in the sheath of an attached coaxial cable to the connector. The Court generally agreed with a PTAB construction that did not require that the continuity member to maintain a “continuous or consistent electrical connection.” However, for claims including additional language providing that the continuity member be “configured to maintain electrical continuity,” the Court applied a more restrictive construction requiring the continuity member to be construed as providing a continuous electrical connection.

In the second opinion, the Court examined the PTAB’s claim construction for the claim term “reside around” as used in claims of US 8,323,060 (the “‘060 patent”). The Court found the PTAB’s construction ( “in the vicinity of; near”) unreasonably broad in view of the claims and specification. In the Court’s opinion, the PTAB erred by selecting the broadest dictionary definition provided to it by the parties, without considering how this definition conforms with the full claim language and text in the specification:

The fact that “around” has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of this specification. And we conclude that in this context the Board’s construction is not reasonable. Claim 10 and indeed all of the claims of the ’060 patent claim coaxial cable connectors. The components of these connectors—for example, the nut, the post, the body, and the continuity member—partially or wholly encircle the inner electrical conductor. …

In its de novo construction of the term “reside around,” the Court agreed that PPC’s alternatively-proposed construction of reside around as “encircle or surround” was reasonable in view of the claims and specification:

The specification’s use of the word “around” leaves no doubt about its meaning. “Around” occurs seven times in the specification. Every one of these occurrences relates to encircling or surrounding. By contrast, the words “near” or “nearest” are used twelve times in the specification, each time meaning “in the vicinity of.” …. The specification never uses the word “around” to mean “near” or “in the vicinity of.”

The PTAB’s BRC standard has been viewed as casting a broader claim construction “net” than the Phillips “plain meaning” standard applied to claim construction in the federal district courts. Bearing this in mind, it appears with evidence from these two CAFC opinions that the CAFC will act on appeal to restrain so-called “dictionary” claim constructions that it determines to be overbroad or inadequately supported by the language of the claims and specification.

Thomas J. Bean is a Director in the Gibbons Intellectual Property Department.
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