Dictionary Definitions and the Broadest Reasonable Interpretation Standard
| March 3, 2016
PPC Broadband, Inc. v. Corning Optical Communications, RF, LLC (Precedential)
February 22, 2016
Before Moore, O’Malley and Wallach. Opinion by Moore.
Summary:
Corning Optical Communications requested inter partes review (“IPR) of claims 10-25 of PPC Broadband’s US Patent No. 8,323,060, on the grounds that the claims were invalid as obvious. During the IPR proceedings, the Patent Trial and Appeal Board (“Board”) found claims 10-25 of the ‘060 patent to be obvious, relying on a general dictionary definition of the term “around” to construe the language “reside around” to mean “in the immediate vicinity of; near.” The Court of Appeals for the Federal Circuit (“CAFC”) concluded that the Board erred in its construction of “reside around”. While the Board’s construction may have resulted in the broadest definition of “reside around”, the Board’s construction was not reasonable in light of the specification.
Details:
Corning Optical Communications filed a petition requesting IPR of claims 10-25 of the ‘060 patent on the grounds that the claims were invalid as obvious over the combination of US published patent application 2006/0110977 and Japanese published patent application JP 2002-015823.
Claims 10-25 of the ‘060 patent are directed to a coaxial cable connector having a “continuity member” to ensure electrical grounding continuity in the connector.
Claim 10, the only independent claim on appeal, recites (emphasis added):
A coaxial cable connector for coupling an end of a coaxial cable, the coaxial cable having a center conductor surrounded by a dielectric, the dielectric being surrounded by a conductive grounding shield, the conductive grounding shield being surrounded by a protective outer jacket, the connector comprising:
………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, wherein the continuity member helps facilitate electrical grounding continuity through the body and the nut helps extend electromagnetic shielding from the coaxial cable through the connector to help prevent RF ingress into the connector.
Claim construction during IPR proceedings
In IPR proceedings, the Board gives claims their broadest reasonable interpretation consistent in with the specification. However, in this case the Board apparently arrived at their construction of the term “around” solely by referencing the dictionaries cited by the parties. The Board noted that the primary and secondary definitions of the term “around” in the American Heritage College Dictionary (4th ed. 2002) are “1. On all sides of: trees around the field. 2. In such a position to encircle or surround: a sash around the waist.” The fourth definition of “around” in the American Heritage College Dictionary is “in the immediate vicinity of; near: She lives around Norfolk.”
The Board seemingly arrived at their construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein, i.e., “in the immediate vicinity of; near”.
The Board’s construction of “reside around” is not reasonable in light of the specification
PPC Broadband challenged the Board’s construction of “reside around” arguing that the Board’s construction “in the immediate vicinity of; near” is unreasonably broad in light of the ‘060 patent’s claims and specification. PPC argued that the broadest reasonable construction of “reside around” in light of the claims and specification is “encircle or surround”.
The CAFC agreed with PPC Broadband’s construction. Turning to the specification of the ‘060 patent, the court pointed out that the term “around’ occurs seven times in the specification and every one of those 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”. However, the specification never uses the term “around” to mean “near” or “in the vicinity of”.
The CAFC commented, “Given 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.”
Given the context of the claims, the specification, and the technology of the ‘060 patent, the court concluded that the Board’s construction of “reside around” is unreasonable. The broadest reasonable interpretation of the term “reside around” in light of the claims and the specification is “encircle or surround”.
The inconsistency between IPR standard of claim construction and the Phillips standard used during district court litigation
Because the Board uses the broadest reasonable construction standard even in IPRs, which are litigation-like proceedings, and the district court uses the claim construction standard in Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005), the possibility exists that two different forums could be construing the same term, in the same patent, in a dispute involving the same parties, yet using different standards. The Supreme Court has granted certiorari to consider the propriety of the broadest reasonable interpretation in IPRs. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), cert. granted, 84 U.S.L. W. 3218.
However, the court noted that if they had been tasked with reviewing the Board’s construction according to Phillips, this case would have been straightforward as “PPC Broadband’s construction is the only construction of the term consistent with the same term throughout the specification.”
