The Software IP Report

Federal Circuit Reverses PTAB Claim Construction as Unreasonably Broad

The Federal Circuit recently clarified that the “broadest reasonable interpretation” of claims construed in an inter partes review (“IPR”) must still be “reasonable.” In PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, No. 2015-1564 (Fed. Cir. Feb. 22, 2016), the court vacated and remanded a decision from the Patent Trial and Appeal Board (“PTAB”) holding claims 10-25 of U.S. Patent No. 8,323,060 obvious under 35 U.S.C. § 103.  The court held that the PTAB’s construction of the asserted claims was unreasonably broad under the broadest reasonable interpretation (“BRI”) standard.

The ‘060 patent is directed toward coaxial cables with an electrical conducting “continuity member” to improve signal quality. Because coaxial cables are cylindrical, the continuity members may surround parts of the cable “in a sleeve-like configuration.”  (Internal quotations omitted). Claim 10, which was the only independent claim asserted, recites, in relevant part, “positioned to reside around an external portion of the connector body.” (Emphasis added). The PTAB construed the term “reside around” to mean “in the immediate vicinity of; near,” and held claim 10 obvious.

The Federal Circuit, applying de novo review, reversed this construction as unreasonably broad, agreeing with Petitioner’s argument that the broadest reasonable interpretation is “encircle or surround.” The court therefore reversed the PTAB’s rejection of claim 10. The PTAB “seems to have arrived at its construction by referencing the dictionaries and simply selecting the broadest definition therein.” The court stated that “[the PTAB’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.” Despite the fact that a dictionary defined “around” as “near,” the Court explained that not all dictionary definitions “are reasonable interpretations in light of this specification.” Rather than looking solely to dictionary definitions, the Federal Circuit looked to the context of the technology and the specification of the ‘060 patent to determine how broadly to reasonably construe the term “reside around.”

The court noted that while the construction of claim 10 under BRI resulted in a close decision, construction of the claims under Phillips v. AWH Corp., as is used in litigation, would have resolved this case much sooner.  That is, “[i]f we were tasked with reviewing the Board’s construction according to Phillips…PPC Broadband’s construction is the only construction of the term consistent with the use of the same term throughout the specification.” Furthermore, because the Court’s interpretation under BRI followed the Phillips interpretation, the Court held that the Supreme Court’s upcoming decision in In re Cuozzo Speed Techs, LLC would not affect the outcome of the case.

The takeaway: when Examiners and the PTAB use a dictionary definition in their constructions, PPC Broadband shows that a detailed specification with well-defined terms can define the scope of a “reasonable” interpretation. And draft specifications with clear definitions for terms and argue against unreasonable interpretations of those terms during prosecution.

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