PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC

• Decision Date: 22 February 2016
• Docket Number: 2015–1369,2015–1366,2015–1368.,Nos. 2015–1361,s. 2015–1361
• Citation: 815 F.3d 734
• Parties: PPC BROADBAND, INC., Appellant v. CORNING OPTICAL COMMUNICATIONS RF, LLC, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

815 F.3d 734

PPC BROADBAND, INC., Appellant

v.CORNING OPTICAL COMMUNICATIONS RF, LLC, Appellee.

Nos. 2015–1361

2015–1369

2015–1366

2015–1368.

United States Court of Appeals, Federal Circuit.

Feb. 22, 2016.

J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for appellant. Also represented by Robert L. Burns, II, Reston, VA; Justin A. Hendrix, Palo Alto, CA.

Todd Ray Walters, Buchanan Ingersoll & Rooney P.C., Alexandria, VA, argued for appellee. Also represented by Scott Lloyd Smith, Roger Hyungil Lee.

Before Moore, O'MALLEY, and WALLACH, Circuit Judges.

MOORE

, Circuit Judge.

PPC Broadband, Inc. appeals from the Patent Trial and Appeal Board's ("Board") final written decisions in inter partes reviews ("IPRs") concluding that claims 1–32 of U.S. Patent No. 8,287,320

, claims 1–9 of U.S. Patent No. 8,323,060, and claims 7–27 of U.S. Patent No. 8,313,353 would have been obvious. We vacate 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 are unpatentable, affirm the Board's determination that claims 1–7, 9–15, 17–30, and 32 of the '320 patent are unpatentable, and remand for further proceedings.

BACKGROUND

A coaxial cable has an inner electrical conductor (often called the "signal" or "signal feed") and an outer electrical conductor (often called the "ground return" or "ground"). Poor or intermittent connections on either conductor can result in noise or non-functionality. The '320 patent

family discloses coaxial cable connectors having a connector body 50, a post 40, a nut 30 (also called a "coupler"), and a "continuity member" that contacts the post and the nut so that electrical grounding continuity is extended through the post and the nut. '320 patent col. 2 ll. 3–6, 15–19, 37–41.¹ The '320 patent discloses more than twenty embodiments of continuity members. For example, Figure 13 depicts an embodiment where the continuity member 370 extends underneath the body 50. Figure 17 depicts a continuity member 570 that is sandwiched between the post 40 and the body 50.

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Corning Optical Communications RF, LLC, filed petitions requesting 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"). Between November and December 2013, the Board instituted four separate IPR proceedings.²

The Board held a consolidated hearing for the four IPRs in this appeal and issued four separate decisions in which it concluded that all claims at issue would have been obvious. The terms "continuity member" or "electrical continuity member" are present in every claim at issue, and the construction of these terms is central to the Board's decisions. For example, claim 1 of the ' 320 patent

(emphases added) recites:

1. A coaxial cable connector comprising:

a connector body;

a post engaged with the connector body, wherein the post includes a flange;

a nut, axially rotatable with respect to the post and the connector body, the nut having a first end configured for coupling to an interface port, and an opposing second end, wherein the nut includes an internal lip, and wherein the second end portion of the nut starts at a side of the lip of the nut facing the first end of the nut and extends rearward to the second end of the nut;

a continuity member disposed only rearward of the start of the second end portion of the nut and contacting the post and the nut, so that the continuity member extends electrical grounding continuity through the post and the nut; and

wherein the nut does not touch the connector body, and the continuity member is configured to contact a rearward facing surface of the lip of the nut and extend between a portion of the post and a portion of the connector body.

The Board construed these terms to require "that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there," rather than requiring consistent or continuous contact between the coupler/nut and the post as PPC Broadband argued. J.A. 10, 102, 156, 207.

The Board also construed the terms "shaped to fit" and "configured to fit," which are present in claims 1–9 of the '060 patent

, claims 16 and 24 of the '353 patent, and claim 28 of the '320 patent. The Board held that components or surfaces that are shaped or configured to fit one another "are sized and dimensioned to abut one another," including components whose surfaces are perpendicular. J.A. 13, 105, 159.

The Board concluded that all claims at issue would have been obvious over the combination of Matthews and Tatsuzuki. The Board considered PPC Broadband's evidence of objective considerations, but determined it did not outweigh the strong evidence of obviousness. PPC Broadband appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)

.

DISCUSSION

We review the Board's legal decisions de novo and its underlying factual determinations for substantial evidence.

In re Sullivan, 498 F.3d 1345, 1350 (Fed.Cir.2007)

. Obviousness is a question of law with underlying issues of fact. Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.Cir.2013). In IPRs, the Board gives claims their broadest reasonable interpretation consistent with the specification. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed.Cir.2015), cert. granted, ––– U.S. ––––, 136 S.Ct. 890, 193 L.Ed.2d 783 (2016). We review claim construction de novo except for subsidiary fact findings based on extrinsic evidence, which we review for substantial evidence. Id. at 1280.

I. "Continuity Member"/"Electrical Continuity Member"

PPC Broadband argues 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 (i.e., always connected). PPC Broadband asserts that the Board did not find that the combination of Matthews and Tatsuzuki teaches consistent or continuous contact with coupler/nut and the post, as required by all claims when they are correctly construed.

Under Cuozzo, the Patent and Trademark Office ("PTO") gives claim language its broadest reasonable interpretation in IPRs. 793 F.3d at 1279

. Historically, the PTO applied this standard in the examination and reexamination of patents, where the applicant may freely amend the claim language to clarify the scope of the claim. Examinations and reexaminations are not adjudicatory. Instead, the patent examiner and the applicant work together to determine the scope of the claimed invention. See In re Buszard, 504 F.3d 1364, 1366–67 (Fed.Cir.2007) ("The patent examiner and the applicant, in the give and take of rejection and response, work toward defining the metes and bounds of the invention to be patented."); In re Zletz, 893 F.2d 319, 321 (Fed.Cir.1989) ("[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed."). By giving the claim language its broadest reasonable interpretation, the patent examiner is able to "reduce the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified." In re Prater, 56 CCPA 1381, 415 F.2d 1393, 1404–05 (1969). While broadly construing claim language increases the likelihood that otherwise distinguishable prior art will render the claimed invention anticipated or obvious, the patentee can amend the claim language during prosecution—and narrow it if necessary—to clarify the scope of the invention and avoid rejection or cancellation of the claims.

District courts, by contrast, do not assign terms their broadest reasonable interpretation. Instead, district courts seek out the correct construction—the construction that most accurately delineates the scope of the claimed invention—under the framework laid out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005)

(en banc). The same is true of reexaminations before the PTO when claims have expired, and therefore may not be amended. In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed.Cir.2014).

In 2011, Congress enacted the America Invents Act ("AIA"), Pub.L. No. 112–29, 125 Stat. 284 (2011).

The AIA created several new adjudicatory proceedings before the PTO for determining the patentability of already-issued patent claims. These proceedings include IPRs, post-grant reviews, and covered business method reviews ("CBMs"). IPRs are the proceedings at issue here. Post-grant reviews are available for nine months after the issuance of a patent, and IPRs are available after those nine months have passed. See 35 U.S.C. § 321(c)

. CBM review is a temporary program allowing parties sued or charged with infringing a patent covering financial products or services to challenge that patent. AIA § 18(a)-(d), 125 Stat. 284, 329–31.

Congress intended these programs to provide "quick and cost effective alternatives" to litigation in the courts. H.R.Rep. No. 112–98

, pt. 1, at 48 (2011), as reprinted in 2011 U.S.C.C.A.N. 67, 78; see also id. at 40 ("[AIA] is designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs."). Indeed, CBM review is only available if the petitioner "has been sued for infringement of the patent or has been charged with infringement under that patent." AIA § 18(a)(1)(B).

One hallmark of these proceedings is their adversarial nature. H.R. Rep. No. 112–98, at 46–47

("The Act converts inter partes reexamination from an examinational to an adjudicative proceeding, and renames the proceeding ‘inter partes review.’...