PPC Broadband, Inc. v. Corning Optical Communications RF, LLC

  United States Court of Appeals
      for the Federal Circuit
                 ______________________

               PPC BROADBAND, INC.,
                     Appellant

                            v.

CORNING OPTICAL COMMUNICATIONS RF, LLC,
                  Appellee
           ______________________

                       2015-1364
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00342.
                 ______________________

               Decided: February 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 represent-
ed by SCOTT LLOYD SMITH, ROGER HYUNGIL LEE.
                 ______________________

Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.
2         PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



MOORE, Circuit Judge.
    PPC Broadband, Inc. appeals from the United States
Patent and Trademark Office’s Patent Trial and Appeal
Board’s (“Board”) final written decision in an inter partes
review (“IPR”) concluding that claims 10–25 of U.S.
Patent No. 8,323,060 would have been obvious. Because
we conclude that the Board erred in its construction of
“reside around,” we vacate and remand for further pro-
ceedings.
                      BACKGROUND
     A coaxial cable has an inner electrical conductor (of-
ten 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
’060 patent discloses coaxial cable connectors having a
connector body 50, a post 40, a nut 30 (also called a “cou-
pler”), and a “continuity member” that contacts the post
and the nut so that electrical grounding continuity is
extended through the post and the nut. ’060 patent,
Abstract. The ’060 patent discloses more than twenty
embodiments of continuity members. In some of these
embodiments, the continuity member lays adjacent to or
extends underneath the body 50. See, e.g., ’060 patent,
figs. 13, 17.
PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS       5



       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 and helps extend
       electromagnetic shielding from the coaxial
       cable through the connector to help pre-
       vent RF ingress into the connector.
     Corning Optical Communications RF, LLC filed a pe-
tition requesting an IPR of claims 10–25 of the ’060 pa-
tent on grounds that the claims were invalid as obvious
over the combination of U.S. published patent application
2006/0110977 (“Matthews”) and Japanese published
patent application JP 2002-015823 (“Tatsuzuki”). On
November 26, 2013, the Board instituted proceedings. 1
    In the IPR proceedings, relying on a generalist dic-
tionary, the Board construed the term “reside around” to
mean “in the immediate vicinity of; near.” The Board
concluded that the combination of Matthews and Tatsu-
zuki taught a continuity member that was positioned in
the immediate vicinity of, or near, an external portion of
the connector body. Having found the combination of
Matthews and Tatsuzuki to teach all other limitations of
claims 10–25 of the ’060 patent, the Board concluded that


   1    Corning also sought, and the Board granted, IPR
proceedings on claims 1–9 of the ’060 patent, claims 1–32
of related U.S. Patent No. 8,287,320, and claims 7–27 of
related U.S. Patent No. 8,313,353. In separate proceed-
ings, the Board invalidated all of these claims as obvious
over the combination of Matthews and Tatsuzuki. PPC
Broadband also appealed these decisions to this court in
Appeal Nos. 2015-1361, -1366, -1368, and -1369.
6         PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



the claims at issue were obvious. PPC Broadband ap-
peals. 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 evi-
dence. 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 IPR proceedings, 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, 84
U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). 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.   The “Reside Around” Limitation
     PPC Broadband challenges the Board’s construction of
“reside around.” It argues 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
Broadband argues that the broadest reasonable construc-
tion of “reside around” in light of the claims and specifica-
tion is “encircle or surround.” PPC Broadband argues
that the continuity member resides around an external
portion of the connector body even if it is not completely
continuous. We agree with PPC Broadband’s construc-
tion, concluding that it is the broadest reasonable con-
struction in light of the claims and specification.
    The Board gives claims their broadest reasonable in-
terpretation consistent with the specification. Cuozzo,
793 F.3d at 1279. The Board seems to have arrived at its
construction by referencing the dictionaries cited by the
parties and simply selecting the broadest definition
therein. And it does appear that among the many defini-
PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS         7



tions contained in the dictionaries of record “in the imme-
diate vicinity of; near” is the broadest. While such an
approach may result in the broadest definition, it does not
necessarily result in the broadest reasonable definition in
light of the specification. The 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.
    As the Board noted, the primary and secondary defi-
nitions 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 as to encircle
or surround: a sash around the waist.” J.A. 65 (citing J.A.
2966). These definitions would support PPC Broadband’s
proposed construction. The fourth definition of “around”
in THE AMERICAN HERITAGE COLLEGE DICTIONARY is “in
the immediate vicinity of; near: She lives around Norfolk.”
J.A. 2966. This definition would support the Board’s
construction.
    The fact that “around” has multiple dictionary mean-
ings does not mean that all of these meanings are reason-
able interpretations in light of this specification. And we
conclude that in this context the Board’s construction is
not reasonable. Claim 10 and indeed all of the claims of
the ’060 patent claim coaxial cable connectors. The com-
ponents of these connectors—for example, the nut, the
post, the body, and the continuity member—partially or
wholly encircle the inner electrical conductor. See ’060
patent, fig. 1. For the most part, each of these compo-
nents has a geometry that is symmetrical around the
inner electrical conductor. Id. 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.
8         PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



     To the extent that the Board reasoned that PPC
Broadband’s construction was at odds with other claim
language, we do not agree. Claim 10 recites a continuity
member that is “positioned to reside around an external
portion of the connector body when the connector is as-
sembled.” The Board concluded that the use of “sur-
rounded” in the preamble of claim 10—“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”—indicates that the inventors
of the ’060 patent did not intend the word “reside around”
to have the same meaning as “surrounded.” J.A. 65–66.
There is a canon of construction: “the general assumption
is that different terms have different meanings.” Syman-
tec Corp. v. Comput. Assoc. Int’l, Inc., 522 F.3d 1279, 1289
(Fed. Cir. 2008). This canon is certainly employed in both
statutory interpretation and claim construction. In fact,
many of the canons of statutory construction apply equal-
ly when interpreting patent claims. Thus, if the term
“surrounded” was used in one claim element and “resides
around” in a second claim element, it is reasonable to
view the differing terms as being intended to have a
different scope. None of these canons are themselves
dispositive but rather exist as a tool to aid in assessing
meaning.      This general canon, recognizing linguistic
differentiation, is “not true for terms in the preamble.”
Id. (citation omitted). The purpose of a preamble is to set
forth the general nature of the invention being claimed.
It is generally not used as or intended to be a limiting
factor in delineating boundaries of the scope of the inven-
tion as claimed. And in this case, no party argues, and
the Board did not conclude, that the preamble of claim 10
is limiting. When the preamble has this general purpose,
and is not being used as a claim limitation itself, the
construction canon which presumes that different terms
should be given different meanings has less applicability.
PPC BROADBAND, INC.     v. CORNING OPTICAL COMMC’NS                  9



     When we turn to the specification of the ’060 patent, it
provides strong support for PPC Broadband’s interpreta-
tion. Neither party disputes that the word “reside” indi-
cates location. Instead, the parties’ dispute centers on the
meaning of the word “around.” The specification’s use of
the word “around” leaves no doubt about its meaning.
“Around” occurs seven times in the specification. Every
one of these occurrences relates to encircling or surround-
ing. See, e.g., ’060 patent, col. 6 ll. 24–26 (“[T]he shield 14
may comprise a metal foil wrapped around the dielectric
16, or several conductive strands formed in a continuous
braid around the dielectric 16.” (emphases added)), col. 7
ll. 14–16 (“a body O-ring configured to fit around a portion
of the connector body 50” (emphasis added)), col. 8 ll. 47–
49 (“the post 40 may be inserted . . . around the dielectric
16” (emphasis added)), col. 12 ll. 26–28 (“A continuity
member 70 may be positioned around an external surface
of the post 40” (emphasis added)), col. 16 ll. 61–64 (“The
flexible portions 1079a-b may be pseudo-coaxially curved
arm members extending in yin/yang like fashion around
the electrical continuity member 1070.” (second emphasis
added)), col. 20 ll. 3–6 (“A body sealing member 1280 may
be positioned . . . snugly around the connector body 1250.”
(emphasis added)).
     By contrast, the words “near” or “nearest” are used
twelve times in the specification, each time meaning “in
the vicinity of.” Id. col. 2 l. 3, col. 2 l. 5, col. 8 l. 27, col. 9
l. 3, col. 9 l. 30, col. 9 l. 40, col. 12 l. 48, col. 12 l. 52, col. 14
l. 63, col. 15 l. 1, col. 19 l. 40, col. 19 l. 44. The specifica-
tion never uses the word “around” to mean “near” or “in
the vicinity of.”
PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS      11



17:39–18:12,                  available                 at
http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2015-1364.mp3. It is correct that the arm
members of this embodiment extend only partway around
the continuity member. But if these arm members were
fully extended, they would encircle the continuity member
completely, albeit at an angle. We do not think the con-
struction “encircle or surround” requires complete encir-
clement, or encirclement in a plane perpendicular to the
axis—particularly under the broadest reasonable inter-
pretation standard. Even if PPC Broadband’s construc-
tion did require complete or near-complete encirclement,
the specification teaches that in this embodiment the
arms extend around the continuity member “in yin/yang
like fashion.” The phrase “in yin/yang like fashion”
modifies the term “extending . . . around” just as if the
inventor had written that the arms extend partially
around the continuity member. The specification uses the
modifier “yin/yang like fashion” to further delineate its
meaning of “around” in the context of that one embodi-
ment.
    Corning also argues that we should reject PPC Broad-
band’s construction because it excludes multiple embodi-
ments disclosed in the ’060 patent. It argues that the
Board’s construction, by contrast, includes all of the
embodiments of the ’060 patent. Essentially, Corning
argues that the broadest reasonable interpretation is the
interpretation which includes as many of the disclosed
embodiments as possible.
    We have often remarked that a construction which
excludes the preferred embodiment is “rarely, if ever
correct.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1583 (Fed. Cir. 1996). A construction which reads
the preferred embodiment out of the scope of the claims
would generally seem at odds with the intention of the
patentee as expressed in the specification. See Funai
Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1371
12        PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



(Fed. Cir. 2010) (refusing to read out preferred embodi-
ment when patent-at-issue included only two embodi-
ments). This does not mean, however, that each and
every claim ought to be interpreted to cover each and
every embodiment. Baran v. Med. Device Techs., Inc., 616
F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that
each claim read on every embodiment.”). The ’060 patent
specification has more than 50 figures and discloses more
than 20 embodiments of continuity members. The specifi-
cation discloses several embodiments where the continui-
ty member encircles or surrounds the body in a “sleeve-
like configuration.” ’060 patent col. 14 ll. 47–52, col. 15
ll. 33–37, figs. 21–26. And, in fact, it is in the discussion
of components that encircle or surround that the specifi-
cation repeatedly uses the term “around.” PPC Broad-
band’s construction of “reside around” as “encircle or
surround” is consistent with the use of “around” in these
embodiments, and construed in this manner claim 10
would cover these disclosed embodiments. It is correct
that PPC Broadband’s construction would not cover all
disclosed embodiments. For example, Figure 17 of the
’060 patent depicts a continuity member that does not
encircle or surround the body but rather abuts the face of
the body. And Figure 13 depicts a continuity member
that extends underneath the body.
     We 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. The fact that one
construction may cover more embodiments than another
does not categorically render that construction reasona-
ble. 2



     2  And though it is not dispositive, we are not cer-
tain based on this record that Corning is correct that the
PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS        13



    The canons of construction are but tools to be used to
help determine the meaning of claim terms. Our con-
struction creates no incongruity. While there will be some
embodiments that do not fall within the broadest reason-
able construction of claim 10, it is clear based on the
patentee’s use of “around” in the specification to refer to
components that encircle or surround that the broadest
reasonable interpretation is limited to this use of the
term. Moreover, claim 10 is certainly not the only claim
in this patent. And while we will not prophetically dis-
cuss whether particular embodiments are covered by
claims not at issue, Corning has not argued that PPC
Broadband’s construction of “reside around” would result
in preferred embodiments being entirely excluded from
claim coverage. We note that claim 1 does not contain the
“reside around” limitation. Although claims ought to be
construed such that their preferred embodiment falls
within their scope, this does not require the construction
adopted by the Board. This patent contains many claims
of varying scope and more than twenty different disclosed
embodiments. And the specification consistently uses the
term “around” in a manner to indicate encircling or sur-
rounding and applying only to components with this
configuration.




Board’s construction would bring all of the twenty embod-
iments within the coverage of claim 10. Corning itself
admits that the Board’s construction would not extend to
a continuity member located “inside the body”—and it is
not clear, and we do not need to decide, whether the
continuity members depicted in Figure 5 and Figure 11
are located inside the body or in the vicinity of the exter-
nal portion of the body. See Appellee’s Br. 24; see also
’060 patent, figs. 5 & 11 (depicting continuity members
positioned underneath the body).
14        PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



    Given the context of the claims, the specification, and
the technology of the ’060 patent, we conclude 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 specification is “encircle
or surround.” We agree with PPC Broadband that the
’060 patent indicates that such encirclement need not be
absolute.
     This is a close and difficult case because of the stand-
ard that the Board uses to construe claims. The Board
applies the broadest reasonable construction standard
even in IPRs which are litigation-like contested proceed-
ings before the Board. 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 v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). Thus, it is possible to have two
different forums construing the same term in the same
patent in a dispute involving the same parties but using
different standards. If we were tasked with reviewing the
Board’s construction according to Phillips, and in fact if
the Board had applied the Phillips standard rather than
the broadest reasonable construction, this case would be
straight-forward. PPC Broadband’s construction is the
only construction of the term consistent with the use of
the same term throughout the specification. But this case
is much closer under the broadest reasonable interpreta-
tion standard given the ordinary meanings attributable to
the term at issue. We conclude that while close, the
Board’s construction is not reasonable in light of the
specification. Given our conclusion, the Supreme Court’s
grant of certiorari to consider the propriety of the broad-
est reasonable interpretation in IPRs will not affect the
outcome of this case. Cuozzo, 793 F.3d 1268, cert. grant-
ed, 84 U.S.L.W. 3218.
PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS         15



    II.   The “Axially Lengthwise Contact” Limitation
    PPC Broadband also challenges the Board’s determi-
nation that the Tatsuzuki spring met claim 13’s “axially
lengthwise contact” limitation. Dependent claim 13 of the
’060 patent recites that the continuity member “is config-
ured to make axially lengthwise contact with the post at a
position axially rearward of the external annular protru-
sion.” In construing the term “axially lengthwise contact,”
the Board adopted PPC Broadband’s proposed construc-
tion of “contact that is in the direction of, on, or along an
axis that includes at least some length.” J.A. 81. The
Board further explained that “because lengthwise contact
includes at least some length, it precludes point contact.”
J.A. 81. The Board found that Tatsuzuki’s “thin metal
plate” met this limitation, reasoning that it provided more
than point contact “[r]egardless of how thin” it was. J.A.
82–83.
    PPC Broadband does not dispute the Board’s con-
struction of the “axially lengthwise contact” limitation;
instead, it argues that the Board erred in finding that the
Tatsuzuki spring met this limitation. We disagree, and
find that substantial evidence supports the Board’s find-
ing that the Tatsuzuki spring contacts the post at more
than just a point. The Board reasoned that Tatsuzuki
discloses that the spring is stamp cut, and does not dis-
close that the spring contacts the post at a point. J.A. 82.
Moreover, the Board explained that “in [its] view, [the
Tatsuzuki spring] has a length of contact with the post
that is beyond a point.” J.A. 82. Figure 3 of Tatsuzuki
supports this finding, as the spring depicted has visible
width. See J.A. 1035.
                        CONCLUSION
    For the foregoing reasons, we vacate the rejection of
claims 10–25 of the ’060 patent and remand.
             VACATED AND REMANDED
16        PPC BROADBAND, INC.   v. CORNING OPTICAL COMMC’NS



                         COSTS
     Costs to PPC Broadband.