CAFC Vacates a PTAB Decision Due To Faulty Claim Construction
In a rare case of disagreeing with the Patent Trial and Appeal Board (PTAB), the Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a PTAB decision invalidating claims 10-25 of PPC Broadband, Inc.’s U.S. Patent No. 8,323,060, which were challenged in an inter partes review (IPR) proceeding by Corning Optical Communications RF, LLC. (IPR2013-00342).
The challenged claims of PPC’s patent relate to a coaxial cable connector and require that the cable connector include “a continuity member having a nut contact portion positioned to electrically contact the nut and positioned to reside around an external portion of the connector body when the connector is assembled …” The Board held that the broadest reasonable construction of “reside around” was “in the immediate vicinity of; near.” Based on this construction, the Board concluded that the claims were obvious in view of the references cited by the petitioner, Corning, against the claims.
The Board reached this construction by relying on the broadest dictionary definition of the term “around.” In contrast, PPC (the patent owner) had proposed that the broadest reasonable construction of the term “reside around” in light of the claims and the specification is “encircle or surround.”
The CAFC sided with the patent owner and held that in the context of the patent the Board’s construction was not reasonable. The CAFC explained that “[t]he fact that ‘around’ has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of the specification.” The CAFC further stated that all of the claims of the patent are directed to coaxial cable connectors and the components of these connectors partially or wholly encircle the inner electrical conductor. The CAFC emphasized that “[g]iven the context of this technology, it seems odd to construe the term ‘reside around’ without recognizing the context of its use in terms of the coaxial cable at issue.”
Nor was the CAFC persuaded by the Board’s reasoning that the patent owner’s construction was at odds with the other claim language. The Board had reasoned that the use of “surround” in the preamble of independent claim 10 indicated that the inventors did not intend the word “reside around” to have the same meaning as “surrounded.” The CAFC held that although there is a general presumption that different terms in claims have different meanings, this presumption is not dispositive but should be used as a tool to aid in assessing meaning. In particular, when the preamble does not limit the claim scope, the construction canon, which presumes that different terms should be given different meanings, has less applicability. The CAFC noted that in this case, no party argued, and the Board did not conclude, that the preamble of claim 10 was limiting.