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. MICHAEL JAKES, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, argued for 

appellant. Also represented by ROBERT L. BURNS, II,

Reston, VA; JUSTIN A. HENDRIX, Palo Alto, CA.

 TODD RAY WALTERS, Buchanan Ingersoll & Rooney 

P.C., Alexandria, VA, argued for appellee. Also represented by SCOTT LLOYD SMITH, ROGER HYUNGIL LEE. 

______________________ 

Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.
2 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

MOORE, Circuit Judge.

PPC Broadband, 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. 


PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’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 

cable through the 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 proceedings.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 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 

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.
6 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

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, 498 F.3d 1345, 1350 (Fed. Cir. 

2007). Obviousness is a question of 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 1280.

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 construction of “reside around” in light of the claims and specification 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 construction, concluding that it is the broadest reasonable construction in light of the claims and specification. 

The Board gives claims their broadest reasonable interpretation 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 that among the many defini-
PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS 7

tions contained in the dictionaries of record “in the immediate 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 skilled 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 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 “around” 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 context of its use in 

terms of the coaxial cable at issue.
8 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

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., 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 equally 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 

dispositive 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 invention being claimed. 

It is generally not used as or intended to be a limiting 

factor in delineating boundaries of the scope of the invention as claimed. And in this case, no party argues, and 

the Board did not conclude, that the preamble of claim 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 

should be given different meanings has less applicability. 
PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS 9

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 occurrences relates to encircling or surrounding. 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.” (emphases added)), col. 7 

ll. 14–16 (“a body O-ring configured to fit around a portion 

of the connector body 50” (emphasis added)), 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 1079a-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, the 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 specification never uses the word “around” to mean “near” or “in 

the vicinity of.”

PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’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 continuity member. But if these arm members were 

fully extended, they would encircle the continuity member 

completely, albeit at an angle. We do not think the construction “encircle or surround” requires complete encirclement, or encirclement in a plane perpendicular to the 

axis—particularly under the broadest reasonable interpretation standard. Even if PPC Broadband’s construction did require complete or near-complete encirclement,

the specification teaches that in this embodiment the 

arms extend around the continuity member “in yin/yang 

like fashion.” The phrase “in yin/yang like fashion” 

modifies 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 embodiment. 

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, includes all of the 

embodiments of the ’060 patent. Essentially, Corning 

argues that the broadest reasonable interpretation is the 

interpretation which includes 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, 1371 
12 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

(Fed. Cir. 2010) (refusing to read out preferred embodiment when patent-at-issue included only two embodiments). 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 

each 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 continuity member encircles or surrounds the body in a “sleevelike 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 Broadband’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, Figure 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 Figure 13 depicts a continuity member 

that extends underneath 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 claims and specification. The fact that one 

construction may cover more embodiments than another 

does not categorically render that construction reasonable.2 

 

2 And though it is not dispositive, we are not certain based on this record that Corning is correct that the 
PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS 13

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 

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 discuss 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 surrounding and applying only to components with this 

configuration. 

 

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 Appellee’s Br. 24; see also

’060 patent, figs. 5 & 11 (depicting continuity members 

positioned underneath the body).
14 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

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. 

The 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 reasonable 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., 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 Phillips, and in fact if 

the Board had applied the Phillips standard rather than 

the broadest reasonable construction, this case would be 

straight-forward. PPC Broadband’s construction 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 interpretation 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 broadest reasonable interpretation in IPRs will not affect the 

outcome of this case. Cuozzo, 793 F.3d 1268, cert. granted, 84 U.S.L.W. 3218. 
PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS 15

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, 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 construction 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 supports the Board’s finding that the Tatsuzuki spring contacts the post at more 

than just a point. The Board reasoned that Tatsuzuki 

discloses that the spring is stamp cut, and does not disclose that the spring contacts the post at a point. J.A. 82. 

Moreover, 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. 

CONCLUSION

For the foregoing reasons, we vacate the rejection of 

claims 10–25 of the ’060 patent and remand.

VACATED AND REMANDED
16 PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS

COSTS

Costs to PPC Broadband.