Corning v. PPC Broadband: Technological Context Informs Claim Construction; Preambles Do Not
In a recent PTAB ruling, Corning Gilbert, Inc. v. PPC Broadband, Inc., No. IPR2013-00342, Paper 57 (PTAB Oct. 12, 2016), the PTAB reversed itself on remand from the Federal Circuit. The Corning series of decisions is instructive in its own right for its focus on preamble language in claim construction disputes. In fact, the Corning Federal Circuit decision appears to be the first time the court reversed the PTAB for its treatment of the preamble.
In 2012, PPC sued Corning Optical for infringement of US 8,323,060 (“the ‘060 patent”). See John Mezzalingua Associates, Inc. d/b/a PPC v. Corning Gilbert, Inc., No. 5:12-cv-00911 (D.N.Y. filed June 5, 2012). In response, Corning petitioned the PTAB to institute an IPR of the patent-in-suit, and the PTAB instituted the review on obviousness grounds. See Paper 14.
The ‘060 patent is directed to a device for maintaining continuous electromagnetic shielding and grounding at junctions between electromagnetic cables (e.g., coaxial cables) and electronic devices.
‘060 Patent FIGS. 1, 3
An abridged claim 10 is copied below (emphasis added):
A coaxial cable connector (100) 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:
. . . ; and
a continuity member (70) having a nut contact portion (74) positioned to electrically contact the nut (30) and positioned to reside around an external portion of the connector body (50) . . .
From the outset, the parties offered competing dictionary definitions of “around” to interpret “reside around” as used in independent claim 10 since the term did not explicitly appear in the specification. PPC advocated for “encircle or surround” while Corning advanced a broader definition – “in the immediate vicinity of; near.” See Paper 49 at 7. The Board disagreed with PPC and adopted Corning’s broader definition. The Board observed that PPC used “surrounded by” three times in the preamble, but “reside around” in the body of the claim, and then applied the canon that different claim terms should be given different meanings. Id. at 10 (“[i]f the inventors of the ‘060 patent intended the claim terms ‘surrounded’ and ‘reside around’ to be mean the same thing, i.e., ‘encircle or surround,’ one would have expected the ‘060 patent to consistently use only one term, but not two different terms, especially within the same claim.”). Id. at 10. Ultimately, relying on Corning’s interpretation, the Board determined that claims 10-25 were invalid as obvious under § 103(a) over a combination of two references.
On appeal, the Federal Circuit vacated the PTAB’s findings with respect to independent claim 10 and dependent claims 11-25 after determining that the PTAB’s construction of the term “around” exceeded the broadest reasonable interpretation standard. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016). The court underscored that “[t]he fact that ‘around’ has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of this specification.” Id. at 752. The Federal Circuit stated that, “[w]hile such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification.” Id. The court further undermined the PTAB’s reasoning by stating the linguistic differentiation canon “is not true for terms in the preamble” because preamble terms do not limit the scope of the claimed invention. From this, the court determined that no conflict arose from assigning the same meaning to “surrounded by” and “reside around” when the former appeared in the preamble only and the latter appeared in the claim body only. Id. at 753.
Rather, the court placed great emphasis on the fact that all claims recited coaxial connectors, the figures depicted coaxial connector components encircling the inner electrical conductor of the cable, and the components generally had a symmetrical construction around the cable. “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.” Id. at 752. Applying this reasoning, the court determined that “encircle or surround” was the broadest reasonable interpretation of “reside around” in light of the claims and specification, and remanded to the PTAB. Id. at 756.
The Federal Circuit’s opinion gave the PTAB little room to maneuver on remand. The PTAB applied the new claim construction and determined the prior art did not read on claim 10. Accordingly, the PTAB found that claims 10-25 of the ‘060 patent were nonobvious and thus not invalid. Id.
This series of rulings is notable for at least the following reasons:
Confirmation that preambles have limited significance to claim construction:The canon of giving different claim terms different meanings (linguistic differentiation) has little applicability to preamble language. Also, “[The preamble] is generally not used as or intended to be a limiting factor in delineating boundaries of the scope of the invention as claimed.” PPC Broadband, 815 F.3d at 753.
Intrinsic technological context limits the broadest reasonable interpretation: Even when a claim term is not explicitly supported elsewhere in the specification, the figures, disclosed embodiments, and specification language will color that term’s meaning and may be afforded greater weight than extrinsic sources such as dictionaries. Id. at 752.
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 Note: for the remainder of this article, citations to the Corning Gilbert IPR will simply refer to the Paper filed (e.g., Paper 57).