The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB erred in construing one of the claim terms. Corning Optical Communications RF, LLC v. PPC Broadband, Inc., Case No. IPR2013-00342 (PTAB, Oct. 12, 2016) (Zecher, APJ).

Corning Optical Communications filed a petition requesting inter partes review (IPR) of claims of a patent covering a coaxial cable connector. The PTAB determined that there was a reasonable likelihood that the claims were invalid in light of the prior art raised in the petition. The PTAB therefore instituted the IPR proceeding. During this proceeding, the PTAB construed the term “reside around” to mean “in the immediate vicinity of; near” rather than “encircle or surround.” The PTAB based this construction on competing dictionary definitions in light of the fact that the specification did not contain the term, and that the preamble of an independent claim used the term “surrounded,” which suggested that the inventors intended “reside around” to have a different meaning than surround. The IPR proceeding concluded in the issuance of a final written decision that the claims were invalid in light of the prior art raised in the petition.

The patent owner, PPC Broadband, appealed the PTAB’s final written decision to the Federal Circuit (IP Update, Vol. 19, No. 3). In this appeal, PPC again asserted that the broadest reasonable meaning of the term “reside around” was “encircle or surround.” The Federal Circuit agreed with PPC and found that the PTAB’s construction was not the broadest reasonable meaning of the term “reside around” in light of the specification. The Federal Circuit based its conclusion in part on the claim construction canon that different claim terms should be given different meanings does not apply to a non-limiting preamble. In addition, the Federal Circuit found that the specification’s use of the word “around” supported PPC’s construction. Based on this changed construction, the Federal Circuit remanded the case to the PTAB.

In light of the Federal Circuit’s construction and additional submission from the parties, the PTAB found that the prior art in Corning’s IPR petition did not invalidate the claims of a patent covering a coaxial cable connector.