United States: Presumptions Can Apply In Inter Partes PTAB Proceedings

PPC Broadband, Inc. v. Corning Optical Commc'n RF, LLC

Addressing issues of claim construction and obviousness, the US Court of Appeals for the Federal Circuit affirmed, vacated and remanded in part the Patent Trial and Appeal Board's (PTAB's or Board's) obviousness conclusion, finding that the Board failed to give certain claim terms their broadest reasonable interpretations. PPC Broadband, Inc. v. Corning Optical Commc'n RF, LLC, Case Nos. 15-1361, -1366, -1368, -1369 (Fed. Cir., Feb. 22, 2016) (Moore, J).

Corning Optical filed several inter partes review (IPR) petitions challenging various claims of three of PPC's patents directed to coaxial cables. The Board instituted on the petitions and eventually concluded that various claims of each patent would have been obvious. PPC appealed.

The Federal Circuit began its analysis by addressing the difference in claim construction standards between the district court and the Board. In proceedings where the applicant may amend the claim language, the Board must give the claims their broadest reasonable interpretation consistent with the specification. By contrast, district courts construe claims using the framework laid out in Phillips, seeking to reach a construction that most accurately delineates the scope of the claimed invention.

In this case, the Federal Circuit affirmed the Board's conclusion that the term "continuity member" did not require temporal continuity or continuous contact, finding the Board's construction was "not unreasonable" in light of the ordinary meaning of "continuity" and disclosure in the specification. Here, the result hinged on the claim construction standard applied. While the Court found that the Board's construction was not correct under Phillips, it nevertheless upheld the Board's conclusion based on the broadest reasonable interpretation of "continuity member." The Court clarified, however, that even under their broadest reasonable interpretations, certain claims required temporal continuity by virtue of their additional limitations. These limitations require that the continuity member "maintain electrical continuity" during certain specified periods of operation of the connector. Because the Board did not make any fact findings regarding temporal continuity in the prior art, the Court vacated the conclusion of obviousness with respect to the claims that included the additional limitations.

Similarly, the Court vacated the Board's holdings regarding the term "encircle or surround." Although the Board gave this term its broadest reasonable interpretation, the Board arrived at its construction by simply selecting what it considered to be the broadest dictionary definition. The Board's approach did not take into account how the claims or the specification informed the construction.

Finally, the Federal Circuit addressed certain secondary considerations of nonobviousness, finding that the Board's conclusions with respect to long-felt but unresolved need, failed attempts and copying were supported by "substantial evidence." With respect to commercial success, however, the Court reversed the Board, finding that the Board erred in concluding that PPC's connector did not embody all of the features of the claims. In this case, Corning did not dispute that PPC's connectors are commercial embodiments of the claimed connectors, and it was error for the Board to find to the contrary without further explanation. Since the evidence showed that the PPC connectors embodied the claimed invention, the court noted that there was a presumption that any commercial success of these products is due to the patented invention. The Court noted that this presumption would not apply in the ex parte context, because the Board cannot gather evidence regarding commercial success. However, in the case of IPRs, the presumption applies because Corning had the means to rebut PPC's evidence, but chose not to do so.

Presumptions Can Apply in Inter Partes PTAB Proceedings

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