PPC Broadband Decision Volunteers Philips Claim Read in IPR Decision
The Patent Trial & Appeal Board's (PTAB) use of the Broadest Reasonable Interpretation (BRI) standard is now slated for review by the Supreme Court in Cuozzo Speed v. Lee. Opponents of the BRI standard, such as Cuozzo, argue that a "Philips" style claim construction is most appropriate for the PTAB because issued claims should be construed consistent with district court. More importantly, Philips is considered to be a more patent friendly (i.e., narrower) interpretation. Yet, as I have pointed out before, the BRI and Philips frameworks are largely the same. While the question posed to the Supreme Court in Cuozzo alleges a difference in the application of "plain and ordinary meaning," this difference is readily disproven.
To the extent a difference can be delineated between PTAB and district court claim interpretation practices it is the perspective of the decision makers. When applyingPhilips, courts will attempt to identify a "most reasonable" scope rather than the "broadest reasonable" scope. While both selections require a reasonable outcome, and the constructions may lead to the same result in many cases, the "most reasonable" interpretation could include a selection between competing, reasonable constructions. This selection is all too often driven by invalidity concerns. (despite the caution against such in the Philips decision itself)
Given that the PTAB has consistently maintained earlier BRI interpretations for patents that expired during review (requiring a switch to Philips) it is difficult to even identify a case where the PTAB's proper application of Philips would move the needle. Yesterday, the CAFC set out to provide such an example in PPC Broadband Inc., v. Corning Optical Communications RF, L.L.C.
In PPC, the Court reviewed the PTAB's determination to cancel claims of several patents (8,287,320; 8,323,060; and 8,313,353) directed to coaxial cable connectors (such as the type you might screw into the back of your cable tv box). The claims of these patents were directed to connectors that included a "continuity member." The continuity member operates to ensure the electrical connections were maintained even when the threaded connectors became loose.
The prior art cited against the PPC patents showed a continuity member formed of a spring mechanism. Patentee argued that the spring did not provide "consistent" or "continuous contact" despite the fact that such temporal features were not recited in its apparatus claims. In the Final Written Decision, the Board explained:
[T]he claimed “continuity member” does not cease to be a continuity member, as would be understood by one of ordinary skill in the art, simply because the contact made between the coupler/nut and post may not be consistent to maintain a continuous electrical connection between these components." . . . .“continuity” does not require some undefined level of consistency, reliability, or robustness of an electrical connection between the coupler/nut and post over some undefined period of time.
On appeal to the Federal Circuit, the majority (including Judges Moore and O'Malley who dissented from the denial of Cuozzo's en banc rehearing request) explained how BRI was applied at the PTAB "despite important differences" between AIA proceedings and patent examination practices (reiterating points of the earlier dissent). The majority also noted that the application of BRI was outcome determinative, explained as "a scenario likely to arise with frequency." The decision then volunteered a Philips construction for comparison to the Board's BRI findings. (here)
Under Phillips, we would hold that the correct construction of the term “continuity member” requires, as PPC Broadband argues, a continuous or consistent connection. The American Heritage College Dictionary (4th ed. 2002) defines “continuity” as “1. The state or quality of being continuous. 2. An uninterrupted succession or flow; a coherent whole.”
Furthermore, the specification discloses in multiple places that the continuity member should maintain a consistent and continuous connection. The specification teaches that “even when the coaxial connector 100 is only partially installed . . . the continuity member 70 maintains an electrical ground path,” and that “this continuous grounding path provides operable functionality of the coaxial cable connector 100 allowing it to work as it was intended even when the connector 100 is not fully tightened.” It teaches that one embodiment of the continuity member is designed to “flex and retain constant physical and electrical contact with the nut 30, thereby ensuring continuity of a grounding path extending through the nut 30.” It describes other embodiments as making “resilient and consistent physical and electrical contact” with the nut, as “enhanc[ing]” the continuity member’s “ability to make consistent operable contact with a surface of the nut,” and as creating “a continuous electrical shield” from the cable through the port. It teaches that “[t]hose skilled in the art should appreciated [sic] that other geometric configurations may be utilized for the post contact portion 1277, as long as the electrical continuity member 1270 is provided so as to make consistent physical and electrical contact with the post.” (emphasis added). Indeed, the specification teaches that the fundamental purpose of the invention is to “ensur[e] ground continuity” and thereby solve problems associated with intermittent ground connections in the prior art, such as “loss of ground and discontinuity of the electromagnetic shielding.” In light of the ordinary meaning of “continuity” and the specification, which is replete with discussion of the “continuous” or “consistent” contact established by the continuity member, the correct construction of “continuity member” under the framework laid out in Phillips requires “consistent or continuous contact with the coupler/nut and the post to establish an electrical connection.”
However, claim construction in IPRs is not governed by Phillips. UnderCuozzo, claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips. Here, the Board’s construction is not unreasonable.
While the ordinary meaning of “continuity” and “continuous” often refers to something that is uninterrupted in time, these terms can also refer to something that is uninterrupted in space. . . For example, a continuous line is continuous for the length of the line; there is no additional requirement of temporal continuity. . . .Corning argues that “continuity member” only requires spatial continuity—a physical connection that extends without interruption through the post, the continuity member, and the nut. There is some language in the specification to support Corning’s interpretation of “continuity member.” . . . .This description of a “continuous ground path” extending from component to component is consistent with Corning’s argument that the term “continuity” refers to an unbroken physical route, not necessarily a connection that is uninterrupted over time. We thus conclude that the Board’s construction— “that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” without requiring consistent or continuous contact—is the broadest reasonable construction.
(internal citations omitted)
Interestingly, the decision goes on to vacate the PTAB decision on some dependent claims that are deemed to expressly recite a persistent (i.e., "maintain") connection. Unfortunately no discussion on claim differentiation is provided. Perhaps this issue was not part of the PTAB record.
Absent an interest to preserve the validity of these claims in view of the particular cited art, I don't see how the public could construe these claims to include an unrecited, temporal limitation. In my view, this decision only amplifies the value of BRI in protecting the public.