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You Are Unreasonable
March 4, 2016

By: Danielle N. Gross, Ph.D. and Douglas J. Bucklin, Ph.D.

During proceedings before the USPTO, including patent application examination or inter partes review (IPR), claims must be given their broadest reasonable interpretation. Examiners often apply this standard in ways that extend the scope of a claim to overlap with what others have done before. This leads to claim rejections. But advocates for applicants and patentees should now respond to say: ”A broad claim construction that conflicts with the specification is not the broadest reasonable interpretation and is, instead, unreasonably broad. The broadest unreasonable interpretation is improper. The rejection is unreasonable, and should be withdrawn.”

In PPC Broadband, Inc v. Corning Optical Communications, Broadband challenged the USPTO’s construction of the term “reside around” in claim 10 of U.S. Patent No. 8,323,060 during IPR of the patent. Relevant portions of claim 10 are reproduced below. At the USPTO, the Patent and Trial Appeal Board used the dictionary definition of “around” and selected the broadest definition therein; “in the immediate vicinity of; near.” This would result in a construction of “reside around” as “reside in the immediate vicinity of” or “reside near.”

But this construction conflicted with the specification of the patent. At the Federal Circuit, the court noted that the word “around” was used seven times in the specification, with every one of its references relating to encircling or surrounding.” In contrast the words “near” or “nearest” were used twelve times in the specification, with every one of its references relating to “in the vicinity of.” The specification never interchanged the meaning of “around” to mean “near” or “in the vicinity of.”

Different Terms Do Not Always Have Different Meanings

There is a general assumption that “different terms have different meanings.” In the IPR proceedings, the Board noted that in claim 10 “surrounded” was used three times in addition to the use of “reside around.” They reasoned that PPC Broadband’s construction was linguistically at odds and concluded that the use of “surrounded” versus “reside around” suggested that the inventors intended the words to have different meanings.

But the court recognized that this “linguistic differentiation, ‘is not true for terms in the preamble’ Id.” When the preamble is only used to set forth the general nature of the invention, the construction canon that presumes different terms be given different meanings has less applicability. This was the case in claim 10 of the patent; “surrounded” was recited only in the preamble, which did not limit the claim, and “reside around” was recited only in the body of the claim.

Every Claim Does Not Have to Cover Every Embodiment

Also in the IPR proceedings, Corning argued that the Board should reject PPC Broadband’s construction because it excluded multiple embodiments disclosed in the ‘060 patent. They also argued that the broadest reasonable interpretation is that which covers the most embodiments. The specification of the ‘060 patent disclosed more than 20 embodiments of continuity members, and PCP Broadband’s construction did not cover all of them.

The court remarked “that a construction which excludes the preferred embodiment is ‘rarely, if ever correct’.” But this does not imply that all or even the majority of embodiments must fall within the broadest reasonable construction. The embodiments that PPC Broadband’s construction covered were those whereby the continuity member encircled or surrounded the body in a “sleeve-like configuration.” Because the discussion surrounding these embodiments repeatedly used the term “around,” the court agreed with PPC Broadband’s construction. In its opinion, the court stated that “Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”

Conclusion

A broad claim construction that conflicts with the specification is not the broadest reasonable interpretation and is instead unreasonably broad.
Claim 10 recites in part:

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 the connector to help prevent RF ingress into the connector.

 

PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, U.S. Court of Appeals for the Federal Circuit 2015-1364PPC
See Symantec Corp. v. Comput. Assoc. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008).