PPC Brоadband, Inc. appeals from the United States Patent and Trademark Office’s Patent Trial and Appeal Board’s (“Board”) final written decision in an inter partes review (“IPR”) concluding that claims 10-25 of U.S. Patent No. 8,323,060 would have been obvious. Because we conclude that the Board erred in its construction of “reside around,” we vacate and remand for further proceedings.
Background
A coaxial cable has an inner electrical conductor (often called the “signal” or “signal feed”) and an outer electrical conductor (often called the “ground return” or “ground”). Poor or intermittent connections on either conductor can result in noise or non-functionality. The '060 patent discloses coaxial cable connectors having a connector body 50, a post 40, a nut 30 (also called a “coupler”), and a “continuity member” that contacts the post and the nut so that electrical grounding continuity is extended through the post and the nut. '060 patent, Abstract. The '060 patent discloses more than twenty embodiments of continuity members. In some of these embodiments, the continuity member lays adjacent to or extends underneath the body 50. See, e.g., '060 patent, figs. 13,17.
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Figure 17 of the ’000 patent: In this embodiment. the continuity member 570 abuts the face of l he body 50.
In other embodiments, the continuity member is fitted around the body 50 in a “sleeve-like configuration.” '060 patent, col. 141.51, figs. 21-26.
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Figure 24 of t he ‘0(10 patent: In this embodiment. the continuity member 770 is fitted around sbe body 50 in a slemedik»-» configuration.
Claim 10, the only independent claim on appeal, recites (emphasis added):
A coaxial cable connector 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:
a continuity member having a nut contact portion positioned to electrically contact the nut and positioned to reside around an external portion of the connector body when the connector is assembled, wherein the continuity member helps facilitate electrical grounding continuity through the body and the nut and helps extend electromagnetic shielding from the coaxial cable through thе connector to help prevent RF ingress into the connector.
Corning Optical Communications RF, LLC filed a petition requesting an IPR of claims 10-25 of the '060 patent on grounds that the claims were invalid as obvious over the combination of U.S. published patent application 2006/0110977 (“Matthews”) and Japanese published patent application JP 2002-015823 (“Tatsuzuki”). On November 26, 2013, the Board instituted proceеdings. 1
In the IPR proceedings, relying on a generalist dictionary, the Board construed the term “reside around” to mean “in the immediate vicinity of; near.” The Board concluded that the combination of Matthews and Tatsuzuki taught a continuity member that was positioned in the immediate vicinity of, or near, an external portion of the connector body. Having found the combination of Matthews and Tatsu-zuki to teach all other limitations of claims 10-25 of the '060 patent, the Board concluded that the claims at issue were obvious. PPC Broadband appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).
Discussion
We review the Board’s legal decisions de novo and its underlying factual determinations for substantial evidence.
In re Sullivan,
I.- The “Reside Around” Limitation
PPC Broadband challenges the Board’s construction of “reside around.” It argues that the Board’s construction, “in the immediate vicinity of; near,” is unreasonably broad in light of the '060 patent’s claims and specification. PPC Broadband argues that the broadest reasonable com
The Board gives claims their broadest
reasonable
interpretation consistent with the specification.
Cuozzo,
As the- Board noted, the primary and secondary definitions of the term “around” in The American Heritage College Dictionary (4th ed.2002) are “1. On all sides of: trees around the field. 2. In such a position as to encircle or surround: a sash around the waist.” J.A. 65 (citing J.A. 2966). These definitions would support PPC Broadband’s proposed construction.. The fourth definition of “around” in The American Heritage College Dictionary is “in the immediate vicinity of; near: She lives around Norfolk.” J.A. 2966. This definition would support the Board’s construction.
The fact that “arоund” has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of this specification. And we conclude that in this context the Board’s construction is not reasonable. Claim 10 and indeed all of the claims of the '060 patent claim coaxial cable connectors. The components of these connectors — for example, the nut, the post, the body, and the continuity member — partially or wholly encircle the inner electrical conductor. See '060 patent, fig. 1. For the most part, each of these components has a geometry that is symmetrical around the inner electrical conductor. Id. Given the context of this technology, it seems odd to construe the term “reside around” without recognizing the contеxt of its use in terms of the coaxial cable at issue.
To the extent that the Board reasoned that PPC Broadband’s construction was at odds with other claim language, we do not agree. Claim 10 recites a continuity member that is “positioned to reside around an external portion of the connector body when the connector is assembled.” The Board concluded that the use of “surrounded” in the preamble of claim 10— “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” — indicates that the inventors of the '060 patent did not intend the word “reside around” to have the same meaning as “surrounded.” J.A. 65-66. There is a canon of construction: “the general assumption is that different terms have different meanings.”
Symantec Corp. v. Comput. Assoc. Int’l, Inc.,
When we turn to the specification of the '060 patent, it provides strong support for PPC Broadband’s interpretation. Neither party disputes that the word “reside” indicates location. Instead, the parties’ dispute centers on the meaning of the word “around.” The specification’s use of the word “around” leaves no doubt about its meaning. “Around” occurs seven times in the specification. Every one of these оccurrences relates to encircling or surrounding. See, e.g., '060 patent, col. 6 11. 24-26 (“[T]he shield 14 may comprise a metal foil wrapped around the dielectric 16, or several conductive strands formed in a continuous braid around the dielectric 16.” (emphases added)), col. 7 11. 14-16 (“a body O-ring configured to fit around a portion of the connector body 50” (emphasis added)), col. 8 11. 47-49 (“the post 40 may be inserted ... around the dielectric 16” (еmphasis added)), col. 12 11. 26-28 (“A continuity member 70 may be positioned around an external surface of the post 40” (emphasis added)), col. 16 11. 61-64 (“The flexible portions 1079a-6 may be pseudo-coaxially curved arm members extending in yin/yang like fashion around the electrical continuity member 1070.” (second emphasis added)), col. 20 11. 3-6 (“A body sealing member 1280 may be positioned ... snugly around the connector body 1250.” (emphasis added)).
By contrast, the words “near” or “nearest” are used twelve times in the specification, each time meaning “in the vicinity of.” Id. col. 2 1.3, col. 2 1.5, col. 8 1.27, col. 9 1.3, col. 9 1.30, col. 9 1.40, col. 12 1.48, col. 12 1.52, col. 14 1.63, col. 15 1.1, col. 19 1.40, col. 19 1.44. The specification never uses the word “around” to mean “near” or “in the vicinity of.”
Corning argues that the term “around” does not mean “encircle or surround” in one of the occurrences of “around” in the specification- — -thе “pseudo-coaxially curved arm members extending in yin/yang like fashion
around
the electrical continuity member.” '060 patent, col. 16 11. 61-64;
see also id.
fig. 35. Instead, it argues
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Corning also argues that we should reject PPC Broadband’s construction because it excludes multiple embodiments disclosed in the '060 patent. It argues that the Board’s construction, by contrast,
We have often remarked that a construction which excludes the preferred embodiment is “rarely, if ever correct.”
Vitronics Corp. v. Conceptronic, Inc.,
We will not adopt the position advocated by Corning that the broadest reasonable construction is always the one which covers the most embodiments. Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification. The fact that one construction may cover more embodimеnts than another does not categorically render that construction reasonable. 2
The canons of construction are but tools to be used to help determine the meaning of claim terms. Our construction creates no incongruity. While there will be some embodiments that do not fall within the broadest reasonable construction of claim 10, it is clear based on the patenteе’s use of “around” in the specification to refer to components that encircle or surround that the broadest reasonable interpretation is limited to this use of the term. Moreover, claim 10 is certainly not the only claim in this patent. And while we will not prophetically discuss whether particular embodiments are covered by claims not at issue, Corning has not argued that PPC Broadband’s cоnstruction
Given the context of the claims, the specification, and the technology of the '060 patent, we conclude that the Board’s construction of “reside around” is unreasonable. Thе broadest reasonable interpretation of the term “reside around” in light of the claims and specification is “encircle or surround.” We agree with PPC Broadband that the '060 patent indicates that such encirclement need not be absolute.
This is a close and difficult case because of the standard that the Board uses to construe claims. The Board applies the broadest rеasonable construction standard even in IPRs which are litigation-like contested proceedings before the Board. The Board uses this standard even when the identical patent may be simultaneously in litigation involving the identical parties and where the district court would be deciding the correct construction consistent with
Phillips v. AWH Corp.,
II. The “Axially Lengthwise Contact” Limitation
PPC Broadband also challenges the Board’s determination that the Tatsuzuki spring met claim 13’s “axially lengthwise contact” limitation. Dependent claim 13 of the '060 patent recites that the continuity member “is configured to make axially lengthwise contact with the post at a position axially rearward of the external annular protrusion.” In construing the term “axially lengthwise contact,” the Board adopted PPC Broadband’s proposed construction of “contact that is in the direction of, on, or along an axis that includes at least some length.” J.A. 81. The Board further explained that “because lengthwise contact includes at least some length, it precludes point contact.” J.A. 81. The Board found that Tatsuzuki’s “thin metal plate” met this limitation, reаsoning that it provided more than point contact “[r]e-gardless of how thin” it was. J.A. 82-83.
PPC Broadband does not dispute the Board’s construction of the “axially lengthwise contact” limitation; instead, it argues that the Board erred in finding that the
Conclusion
For the foregoing reasons, we vacate the rejection of claims 10-25 of the '060 patent and remand.
VACATED AND REMANDED
Costs
Costs to PPC Broadband.
Notes
. Corning also sought, and the Board granted, IPR proceedings on claims 1-9 of the '060 patent, claims 1-32 of related U.S. Patent No. 8,287,320, and claims 7-27 of related U.S. ' Patent No. 8,313,353. In separate proceedings, the Board invalidated all of these claims as obvious over the combination of Matthews and Tatsuzuki. PPC Broadband also appealed these decisions to this court in Appeal Nos.2015-1361, -1366, -1368, and -1369.
. And though it is not dispositive, we are not certain based on this record that Corning is correct that the Board's construction would bring all of the twenty embodiments within the coverage of claim 10. Corning itself admits that the Board's construction would not extend to a continuity member located "inside the body” — and it is not clear, and we do not need to decide, whether the continuity members depicted in Figure 5 and Figure 11 are located inside the body or in the vicinity of the external portion of the body. See Appel-lee’s Br. 24; see also '060 patent, figs. 5 & 11 (depicting continuity members positioned underneath the body).