Docket No. 2015-1364 (IPR2013-00342)
MOORE, O’MALLEY, WALLACH
February 22, 2016
Brief Summary: PTAB “broadest reasonable construction” of claim term found not to be “reasonable” in view of the specification.
Summary: PPC Broadband appealed from PTAB IPR decision that claims 1-10 of US 8,323,060 relating to coaxial cable would have been obvious. IPR proceedings were also instituted against US 8,287,320 and 8,313,353 and separately appealed. The claims require “a continuity member…positioned to reside around an external portion of the connector body”. The Board construed “reside around” using a “generalist dictionary” “to mean ‘in the immediate vicinity of; near.” PPC argued this definition was “unreasonably broad in light of the ‘060 patent’s claims and specification” and it should be “encircle or surround”, and the FC panel agreed. The opinion explained that the Board is to “give claims their broadest reasonable interpretation consistent with the specification” and that “among the many definitions contained in the dictionaries of record ‘in the immediate vicinity of; near’ is the broadest”. However, it also explained that “[w]hile such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification” and that “[t]he Board’s approach in this case fails to account for how the claims themselves and the specification inform the ordinarily skilled artisan as to precisely which ordinary definition the patentee was using.” Thus, it found “the Board’s construction is not reasonable” “in light of this specification” because it does not “recognize[e] the context of its [reside around] use in terms of the coaxial cable at issue.” It also found PPC’s definition not to be “at odds with other claim language” (e.g., “the inventors of the ‘060 patent did not intend the word ‘reside around’ to have the same meaning as ‘surrounded’” (Symantec, FC 2008 (“the general assumption is that different terms have different meanings”)). The opinion explained that the “general canon, recognizing linguistic differentiation, is ‘not true for terms in the preamble’” (in which “surrounded” is used) which “set[s] forth the general nature of the invention being claimed” and “is generally not used as or intended to be a limiting factor”. Here, “the preamble…is not being used as a claim limitation itself” and, therefore, “the construction canon which presumes that different germs should be given different meanings has less applicability.” The specification, however, was found to “provide strong support for PPC Broadband’s interpretation.” The opinion also explains that “[w]e will not adopt the position advocated by Corning that the broadest reasonable construction is always the one which covers the most embodiments” (“Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”) (also considering Vitronics, FC 1996; Funai, FC 2010 (refusing to read out preferred embodiment); Baran, FC 2010). It also noted that “[t]his is a close and difficult case because of the standard that the Board uses to construe claims” (“The Board uses this standard even when the identical patent may be simultaneously in litigation involving the identical parties and where the district court would be deciding the correct construction consistent with Phillips” (FC 2005)). And under Phillips, the FC panel explained, “[PPC’s] construction is the only construction of the term consistent with the use of the same term throughout the specification” (and the grant of certiorari in Cuozzo “will not affect the outcome of this case”). Although the FC panel agreed with the Board’s construction of “axially lengthwise contact”, the rejection of the claims was vacated and remanded.