Docket No. 2015-1361, -1366, -1368, -1369 (IPR2013-00340, -00345, -00346, -00347)
MOORE, O’MALLEY, WALLACH
February 22, 2016
Brief Summary: Certain Board claim constructions found not to be unreasonable under Cuozzo (broadest reasonable interpretation) even though it is “not necessarily the correct construction under the framework laid out in Phillips”. Board conclusions on commercial success found erroneous for lack of explanation in its opinions.
Summary: PPC appealed PTAB final written IPR decisions concluding that claims 1-32 of US 8,323,090, claims 1-9 of US 8,323,060 and claims 7-27 of US 8,313,353 relating to coaxial cables would have been obvious. The decisions were vacated as to certain claims and affirmed as to others. Central to the Board’s decisions was the construction of the terms “continuity member” or “electrical continuity member”, which are present in every claim, under its broadest reasonable interpretation (BRI) standard (In re Cuozzo, FC 2015) (not “the framework laid out in Phillips” (FC 2005)). The opinion notes that “[d]espite the differences between the new AIA proceedings [IPR, PGR, CBM], and the earlier examinational proceedings [e.g., examinations, reexaminations], the PTO applies the same claim construction standard-the broadest reasonable interpretation-in both types of proceedings”, an approach upheld in Cuozzo (currently under review at SCOTUS). “Under Phillips”, the FC panel explains, they would hold that “continuity member” should be defined as argued by PPC (and defined in a standard dictionary) as “a continuous or consistent connection” (“uninterrupted in time”), consistent with the specification “in multiple places”. “However,…[u]nder Cuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips” and, therefore, it found the Board’s construction not to be unreasonable. Corning argued “‘continuity member’ only requires spatial continuity”, consistent with the Board’s BRI and “some language in the specification”. The Board’s construction was affirmed under Cuozzo. Claims including the term “maintain electrical continuity” were determined to “require…temporal continuity by virtue of other claim limitations”, as well as under either Cuozzo or Phillips. The Board “explicitly declined to require the continuity member to ‘maintain a ‘continuous electrical connection’” and their determinations of obviousness based on thereupon were vacated. “[S]haped to fit” and “configured to fit” were found to be correctly construed by the Board under the BRI, the opinion noting the PPC “put forth no dictionary definition supporting its argument” or evidence “any disavowel or disclaimer. . . compelling departure from [the] ordinary meaning”, and did not show the “Board’s construction is inoperable.” The Board’s decision that claim 28 of the ‘320 patent would have been obvious was affirmed. The Board also concluded “Corning’s strong evidence of obviousness outweighed” “certain objective considerations point[ing] towards non-obviousness” (long-felt but unresolved need, failed attempts by Corning, copying by Corning, commercial success). The FC panel disagreed with the Board’s conclusions that PPC had not presented evidence of commercial success as it “did not explain why the SignalTight connectors fail to embody the claimed features, or what claimed features in particular are missing from the SignalTight connectors.” (J.T. Eaton, FC 1997; Ecolochem, FC 2000; Ormco, FC 2006)