What do you mean by “Around?” And Why the PTAB and the Courts May Disagree

By Shaukat Karjeker

While non-patent lawyers might wonder why there is such a fuss about the word “around,” the meaning of what appears to be a common term is a “big deal” in determining the scope of patent claims, and whether a patent that was subjected to the dreaded Inter Partes Review proceeding has valid claims.

By way of introduction, under the America Invents Act (the “AIA”) new proceedings were instituted to test the validity of already issued patents in the Patent Office.  One of these is the Inter Partes Review (“IPR”) proceeding in which any party can challenge the validity of an issued patent by presenting prior publications (“prior art”) to show that the patent claims were invalid because they did not meet the statutory requirements of novelty, or non-obviousness.

In general, the more broadly a patent claim is construed, the higher the likelihood that it will encompass prior art and be found invalid.  Ordinarily, once a patent is issued, a challenger must show invalidity in a court by “clear and convincing” evidence, which is a relatively high burden of proof.  In addition, the court will interpret the patent claim in view of the patent specification and the prosecution history.[1]  This standard limits the scope of the patent claim to some extent, which reduces the chance of invalidity.  This was the only avenue available prior to the AIA.  But now, in an IPR proceeding under the AIA, the challenger has a significant advantage: the Patent Trial and Appeals Board (“PTAB”) uses standards that tilt the balance toward the challenger.  Firstly, the PTAB applies “the broadest reasonable” claim interpretation (i.e. a broader claim scope than in court).  Secondly, in an IPR the challenger has only to meet the “preponderance of the evidence” (i.e. >50% probability) burden of proof as to invalidity.  No wonder then that most challengers select the IPR route to try to invalidate a “problematic patent.”  Also, unsurprisingly, IPRs have gained a reputation as the “graveyard of patents.”

In light of these differing standards between the courts and the PTAB, it might now become clearer why challengers to a patent love the IPR proceedings.  It is quite possible for the PTAB, applying its standards of broad claim interpretation and low burden of proof, to find a patent claim invalid, while a court, applying its standard of narrower claim interpretation and higher burden of proof, might find that same patent claim valid, in view of the very same asserted prior art.

Recently, the court revived a patent consigned to the graveyard in an IPR proceeding.  Corning Optical Communications (“Corning”) had challenged the validity of Claims 10-25 of PPC Broadband’s (“PPC”) US Patent 8,323,060.  Applying the “broadest reasonable interpretation” standard, the PTAB found the claims invalid.  The PTAB’s rationale for invalidity revolved around claim interpretation, and more specifically the meaning of the word “around,” as used in the patent claims.  The PTAB held it meant located “in the immediate vicinity of; near.”  In an effort to resurrect the patent, PPC appealed the holding of invalidity to the Federal Circuit Court of Appeals.[2]

The Court reversed the PTAB.  The claim interpretation that the Court applied in reversing the PTAB is very instructive; and the Court’s dicta may be a very useful guide to drafting patent applications that could withstand scrutiny under the “broadest reasonable interpretation” standard, both in patent prosecution as well as in an IPR proceeding.

The technology in question deals with coaxial cables for transmitting signals for television, and broadband internet connectivity.  These coaxial cables have an inner electrical conductor (“signal”) that is usually surrounded by an outer electrical conductor (“ground”).  If connection between signal and ground is poor or intermittent, this results in noise or failure.  The PPC patent has a continuity member that addresses this signal-to-ground connection issue, and it shows about 20 different embodiments for maintaining the connection.  The main claim at issue reads in part as follows, with emphasis added:

10.  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 surrounded by a conductive grounding shield, the conductive grounding shield being surrounded by a protective 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 helps extend electromagnetic shielding from the coaxial cable through the connector to help prevent RF ingress into the connector.

Based on the prior art asserted by Corning, and applied by the PTAB, the claim is invalid if the phrase “reside around,” as used in the claim, means that “the continuity member is position in the immediate vicinity of or near an external portion of the connector body.”  The PTAB arrived at this interpretation of the phrase based on a dictionary; specifically the 4th definition of “around” found in The American Heritage College Dictionary.  (The word “reside” was not in contention by itself.)

PPC argued to the Court that in interpreting the claims, the PTAB did not take into account the specification, and urged that the correct interpretation of “around” should be to “encircle or surround,” but not necessarily to completely continuously encircle or surround.

The Court indicated that the same dictionary would support PPC’s urged construction, in the first two definitions provided.  It then opined that while a dictionary may provide multiple definitions, this does not mean that all of these definitions are “reasonable in light of the specification.”  The Court then concluded that in this context the PTAB construction was not reasonable.  (Of particular note to patent practitioners is that the Court limited the reasonableness of the interpretation based on the contextual use of the words in the specification.  This ought to be useful in dealing with Patent Office Examiners that routinely apply the broadest reasonable interpretation standard without regard to the specification.)

The Court also addressed whether the PTAB might have come to its decision in an effort to distinguish between the word “surround” also used in the same patent claim, and the term “reside around,” to avoid having two terms essentially have the same meaning.  While conceding that statutory and claim construction rules (“canons”) recognize differentiation when different words are used, the Court did not regard these rules as dispositive of the issue.  (Patent practitioners should be careful to be consistent in using words.)

Of interest to patent practitioners, Corning (and the PTAB) failed to argue that in this instance the preamble was a limitation.  Had Corning or the PTAB made this argument successfully, then “reside around” could not, with any consistency, mean surround, since the word “surround” itself is used in the preamble.  The Court might have had another hurdle to surmount.  As it is, neither the PTAB nor Corning raised the issue.  The Court dismissed the preamble language as non-limiting of the claim; and reasoned that as a result, the preamble’s use of the word “surround” could be ignored!  Thus, “reside around” is the same as surround.

To bolster its interpretation, the Court referred to the number of times the word “around” is used in the specification, and to describe features of the drawings where there was “encircling or surrounding.”  The specification never uses around to mean near or in the vicinity.  This reliance on the specification further indicates the Court’s restriction of the broadest reasonable interpretation to an interpretation based on the specification and claims.  One might argue that on appeal the Court has effectively applied the Phillips standard used in courts (that relies on the claims, specification and prosecution history for interpretation) rather than the Patent Office standard, which is currently the standard used in IPRs.

Corning also argued that the broadest reasonable claim interpretation should not exclude multiple embodiments, but should be the one that covers as many as possible.  While allowing that an interpretation that excludes the preferred embodiment is “seldom correct,” the Court did not accept that the broadest reasonable interpretation is one that necessarily covers most of the embodiments: That one interpretation covers more embodiments than another does not render it reasonable.  Reasonableness is adjudged in light of the claims and the specification.  This also sounds like the Phillips approach.

The Court vacated the PTAB’s rejection of the claims, and remanded.  In so doing, it remarked that this was a “close case” and opined that the ruling would not be affected by the Supreme Court’s upcoming consideration of the Cuozzo case[3], which deals with the propriety of the broadest reasonable interpretation standard in IPRs.

So, in answer to the question, what does “around” mean, it means what the PTAB says it means — subject to what the Federal Circuit Court of Appeals says it means.



[1] Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)

[2] PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, US Lexis____ (slip op 2/22/2016) (Fed. Cir.).

[3] In re Cuozo Speed Techs., LLC, 793 F. 3d 1268 (Fed. Cir. 2015), cert, granted, 84 U.S. L. W 328 (U.S. Jan. 15. 2016) (No. 15-446)