# United States **Court of Appeals**  **for the Federal Circuit**

______________________ PPC BROADBAND, INC., Appellant

v.

CORNING OPTICAL COMMUNICATIONS RF, LLC, Appellee

______________________

2015

- 1364

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013

- 00342.

______________________

Decided: February 22 , 2016

______________________

J. M ICHAEL J AKES , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for appellant. Also represented by R OBERT L. B URNS , II, Reston, VA; J USTIN A. H ENDRIX , Palo Alto, CA.

T ODD R AY W ALTERS , Buchanan Ingersoll & Rooney P.C., Alexandri a, VA, argued for appellee. Also represen ted by S COTT L LOYD S MITH , R OGER H YUNGIL L EE

.

______________________
Before M OORE , O’M ALLEY , and W ALLACH , Circuit Judges.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 2

M OORE , Circuit Judge

. PPC Broadband , Inc. appeals from the United States Patent and Trademark Of fice’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 ,0 60 would have been obvious

. Because we conclude that t he Board erred in its construction of “reside around ,” we vacate and remand for further pr oceedings

. B ACKGROUND
A coaxial cable has an inner electrical conductor ( o ften called the “signal” or “signal feed” ) and an outer electrical conductor (often called the “ground return” or “ground”). Poo r 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 “co upler”), 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.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 5

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

c able through the connector to help pr event RF ingress into the connector. Corning Optical Communications RF, LLC filed a p etition requesting an IPR of claims 10

– 25 of the ’060 p atent 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 proceedings. 1 In the IPR proceedings, relying on a generalis t di ctionary, the Board construed the term “reside around” to mean “in the immediate vicinity of; near.” The Board concluded that the combin ation of Matthews and Tats uzuki taught a continuity member that was positioned in the immediate vicinity of, or nea r, an external portion of the connector body. Having found the combination of Matthews and Tatsuzuki to teach all other limitations of claims 10

– 25 of the ’060 patent, the Board concluded that

1 Corning also sought, and the Board granted, IPR

pr o ceedings on claims 1

– 9 of the ’060 patent, claims 1

– 32 of related U.S. Patent No. 8,287,320

, and cla ims 7

– 27 of related U.S. Patent No. 8,313,353. In separate procee ding s, 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.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 6

the claims at issue were obvious. PPC Broadband a ppeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).

D ISCUSSION We review the Board’s legal decisions de novo and its underlying factual determinations for substantial ev idence. In re Sullivan , 498 F.3d 1345, 1350 (Fed. Cir. 2007). Obviousness is a question o f law with underlying issues of fact. Randall Mfg. v. Rea , 733 F.3d 1355, 1362 (Fed. Cir. 2013). In IPR proceedings, the Board gives claims their broadest reasonable interpretation consistent with the specification. In re Cuozzo Speed Techs., LLC

, 793 F .3d 1268, 1279 (Fed. Cir. 2015)

, cert. granted

, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) ( No. 15

- 446 ) . We review claim construction de novo except for subsidiary fact findings based on extrinsic evidence, which we review for substantial evidence. Id. at 128 0.

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 constru ction of “reside around” in light of the claims and specific ation is “encircle or surround.” PPC Broadband argues that the continuity member resides around an external portion of the connector body even if it is not completely continuous. We agree with PPC Broadband ’s constru ction, concluding that it is the broadest reasonable co nstruction in light of the claims and specification.
The Board gives claims their broadest reasonable i nterpretation consistent with the specification. Cuozzo

, 793 F.3d at 1279 . The Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein. And it does appear t hat among the many defin i-PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 7

tions contained in the dictionaries of recor d “in the imm ediate vicinity of; near” is the broadest. While such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification. The Board’s approach in this

case fails to account for how the claims themselves and the specification inform the ordinarily skill ed artisan as to precisely which ordinary definition the patentee was using. As the Board noted, the primary and secondary definitions of the term “around” in T HE A MERICAN H ERITAGE C OLLEGE D ICTIONARY (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. T he fourth definition of “around” in T HE A MERICAN H ERITAGE C OLLEGE D ICTIONARY i s “in the immediate vicinity of; near : She lives around Norfolk .” J. A

. 2966. Th is definition would support the Board’s construction.

T he fact that “around” has multiple dictionary mea nings does not mean that all of these meanings are reaso nable interpretations in light of this specification

. And we conclude that in this context t he Board’s construction is
not reasonable

. Claim 10 and indeed all of the claims of the ’060 patent claim coaxial cable connec tor s. T he co mponents of these connect ors— 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 the se comp onents ha s a geometry that is symmet rical around the inner electrical conductor

. Id. Given the context of this technology, it seems odd to construe the term “ reside around” without recognizing the context of its use in terms of the coaxial cable at issue.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 8

To the extent that the Board reasoned that PPC Broadband’s construction was at odds with other claim language, we do not agree. C laim 10 recites a continuity member that is “positioned to reside around an external portion of the connector body when the connector is a ssembled .” The Board concluded that the use of “su rrounded” in the preamble of c laim 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 .” Syma ntec C or

p. v. Comput. Assoc. Int’l, Inc. , 522 F.3d 1279, 1289 (Fed. Cir. 2008)

. This canon is certainly employed in both statutory interpretation and claim construction. In fact, many of the canons of statutory construction apply equa lly when interpreting patent claims. Thus, if the term

“ surrounded ” was used in one claim element and “ resides around ” in a second claim element, it is reasonable to view the differing terms as being intended to have a different scope. None of these canons are themselves dispositiv e but rather exist as a tool to aid in assessing meaning. This general canon, recognizing linguistic differentiation, is “ not true for terms in the preamble. ” Id. (citation omitted). The purpose of a preamble is to set forth the general nature of the in vention being claimed. It is generally not used as or intended to be a limiting factor in delineating boundaries of the scope of the inve ntion as claimed. And in this case, no party argues, and the Board did not conclude, that the preamble of c laim 10 is limiting. When the preamble has this general purpose, and is not being used as a claim limitation itself, the construction canon which presumes that different terms shou ld be given different meanings ha s less applicability

.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 9

When we turn to the specific ation of the ’060 patent , it provides strong support for PPC Broadband’s interpret ation. Neither part y disputes that the word “reside” ind icates location

. Instead, the parties’ dispute centers on the meaning of the word “around.” T he specification ’s use of the word “around” leaves no doubt about its meaning. “Around” occurs seven times in the specification. Every one of these occurrences relates to encircling or surroun ding. See, e.g. , ’060 patent , col. 6 ll. 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

. ” (e mphase s added))

, col. 7 ll. 14

– 16 (“ a body O- ring configured to fit around a portion of the connector body 50 ” (emphasis a dded))

, col. 8 ll. 47

– 49 ( “ the post 40 may be inserted

. . . around the dielectric 16 ” (emphasis added))

, col. 12 ll. 26

– 28 (“ A continuity member 70 may be positioned around an external surface of the post 40 ” (emphasis added))

, col. 16 ll. 61

– 64 (“ The flexible portions 1079 a-b may be pseudo

- coaxially curved arm members extending in yin/yang like fashion around the electrical continuity member 1070

. ” (second emphasis added))

, col. 20 ll. 3

– 6 (“ A body sealing member 1280 may be positioned

. . . snugly around the connector body 1250 .” (emphasis added)).
By contrast, t he words “near” or “nearest” are used twelve times in the specification, each time meaning “in the vicinity of.” Id. col. 2 l. 3, col. 2 l. 5, col. 8 l. 27
, col. 9 l. 3, col. 9 l. 30
, col. 9 l. 40
, col. 12 l. 48
, col. 12 l. 52
, col. 14 l. 63
, col. 15 l. 1, col. 19 l. 40
, col. 19 l. 44

. The specific ation never uses the word “around” to mean “ near ” or “in the vicinity of.”PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 11

17:39

– 18:12
, available at http://oralarguments.cafc.uscourts.gov/ default.aspx?fl=2015

- 1364.mp3

. It is correct that the arm members of this embodiment extend only partway around the continu ity member. But if these arm members were fully extended, they would encircle the continuity member completely, al beit at an angle. W e do not think the co nstruction “encircle or surround” requires complete encirclement, or encirclement in a plane perpendicular to the axis

— particularly under the broadest reasonable inte rpreta tion standard

. E ven if PPC Broadband’s con struction did require complete or near

- complete encirclement, the specification teaches that in this embodi ment the arms extend around the continuity member “in yin/yang like fashion

. ” The phrase “in yin/yang like fashion” modif ies the term “ extending

. . . around ” just as if the inventor had written that the arms extend partially around the continuity member. The specification uses the modifier “yin / yang like fashion” to further delineate its meaning of “ around ” in the context of that one embod iment. Corning also argues that we should reject PPC Broa dband’s construction because it excludes multiple embod iments disclosed in the ’060 patent. It argues that the Board’s construction, by contrast, includes all of the embodiments of the ’060 patent

. Es sentially, Corning argues that the broadest reasonable interpretation is the interpretation which include s as many of the disclosed embodiments as possible

. We have often remarked that a construction which excludes the preferred embodiment is “rarely, if ever correct.” Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1583 (Fed. Cir. 1996)

. A construction which reads the preferred embodiment out of the scope of the claims would generally seem at odds with the intention of the patentee as expressed in the specification. See Funai Elec. Co. v. Daewoo Elecs. Corp. , 616 F.3d 1357, 1371PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 12

(Fed. Cir. 2010) (refusing to read out preferred embod iment when patent

- at

- issue included only two embod iments). This does not mean

, however, that each and every claim ought to be interpreted to cover each and every embodiment. Baran v. Med. Device Techs., Inc. , 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“ It is not necessary that

e ach claim read on every embodiment. ”). The ’060 patent specification has more than 50 figures and discloses more than 20 embodiments of continuity members. The specification discloses several embodiments where the continu ity member encircles or surrounds the body in a “sleeve

like configuration.” ’060 patent col. 14 ll. 47

– 52
, col. 15 ll. 33

– 37
, figs. 21

– 26. And, in fact, it is in the discussion of components that encircle or surround that the specification repeatedly uses the term “around.” PPC Broa db and’s construction of “reside around” as “ encircle or surround ” is consistent with the use of “ around ” in these embodiments, and construed in this manner claim 10 would cover these disclosed embodiments. It is correct that PPC Broadband’s construction would not cover all disclosed embodiments. For example, F igure 17 of the ’060 patent depicts a continuity member that does not encircle or surround the body but rather abuts the face of the body. And F igure 13 depicts a continuity member that extends un derneath the body.

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 cl aims and specification. The fact that one construction may cover more embodiments than another does not categorically render that construction reason able

. 2

2 And though it is not dispositive, we are not ce rtain based on this record that Corning is correct that thePPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 13

The canons of construction are but tools to be used to help determine the meaning of claim terms. Our co nstruction creates no incongruity. While there will be some embodiments that do not fall within the broadest reaso nable construction of claim 10, it is clear based on the patentee ’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 di scuss whether particular embodiments are covered by claims not at issue, Corning has not argued that PPC Broadband’s construction of “reside around” would result in preferred embodiments being entirely excluded from claim coverage

. We note that claim 1 does not contain the “reside around” limitation. Although claims ought to be construed such that their preferred embodiment falls within their scope, this does not require the construction adopted by the Board. This patent contains many claims of varying scope and more than twenty different disclosed embodiments . And the specification consistently uses the term “around” in a manner to indicate encircling or su rrounding and applying only to components with this configuration

.

Board’s construction would bring all of the twenty embo diments within the coverage of claim 10. Corning itself admits that the Board’s construction would not extend to
a cont i nuity member located “inside the body”

— and it is not clear, and we do not need to decide, whether the continu i ty members depicted in F igure 5 and F igure 11 are loca t ed inside the body or in the vicinity of the exte rnal portion of the body. See Appellee’s Br. 24; see a lso ’060 patent, figs. 5 & 11 (depicting continuity members positioned underneath the body).PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 14

Given the context of the claims, the specification, and the technology of the ’ 060 patent, we conclude that t he Board’s construction of “reside around” is unreasonable. The broadest reasonable interpretation of th e term “reside around” in light of the claims and specification is “encircle or surround.” W e 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 stan dard that the Board uses to construe claims. The Board applies the broadest reasonable construction standard

even in IPRs w hich are litigation

- like contested procee dings 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 con struction consistent with Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Thus, it is possible to have two different forums construing the same term in the same patent in a dispute involving the same parties but using different standards. If we were tasked with reviewing the Board’s construction according to Phil l ips , and in fact if the Board had applied the Phi l lips standard rather than the broadest reasonable construction, this case would be straight

- forward. PPC Broadband ’s constructi on is the only construction of the term consistent with the use of the same term throughout the specification. But this case is much closer under the broadest reasonable interpret ation standard given the ordinary meanings attributable to the term at issue . We conclude that while close, the Board’s construction is not reasonable in light of the specification. Given our conclusion, the Supreme Court’s grant of certiorari to consider the propriety of the broa dest reasonable interpretation in IPRs will not a ffect the outcome of this case. Cuozzo , 793 F.3d 1268

, cert. gran ted

, 84 U .S.L.W. 3218

.PPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 15

II. The “Axially Lengthwise Contact” Limitation
PPC Broadband also challenges the Board’s determ ination 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 confi gured to make axially lengthwise contact with the post at a position axially rearward of the external annular protr usion.” In cons truing the term “axially lengthwise contact,” the Board adopted PPC Broadband ’s proposed constru ction of “contact that is in the direction of, on, or along an axis tha t includes at least some length. ” J.A. 81. The Board further explain ed that “because le ngthwise 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, reasoning that it provided more than point contact “[r]egardless of how thin” it was. J.A. 82

– 83. PPC Broadband does not dispute the Board’s co nstruction of the “axially lengthwise contact” limitation; instead, it argues that the Board erred in finding that the Tatsuzuki spring met this limitation. We disagree, and find that substantial evidence s upports the Board’s fin ding that the Tatsuzuki spring contacts the post at more than just a point. T he Board reasoned that Tatsuzuki disclos es that the spring is stamp cut, and does not di sclose that the spring contacts the post at a point. J. A . 82. Mor eover, the Board explained that “in [its] view, [the Tatsuzuki spring] has a length of contact with the post that is beyond a point.” J.A. 82. Figure 3 of Tatsuzuki supports this finding, as the spring depicted has visible width. See J. A

. 1035

. C ONCLUSION For the foregoing reasons, we vacate the rejection of claims 10

– 25 of the ’060 patent and remand

. VACATE D AND REMAND EDPPC BROADBAND , INC

. v. CORNING OPTICAL COMM C ’ NS 16

C OSTS
Costs to PPC Broadband.