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The Federal Circuit held that the PTAB had correctly given the claim terms “continuity member” and “shaped to fit” their broadest reasonable interpretation, but gave the incorrect construction to the term “maintain electrical continuity.”  It also held that the PTAB erred in finding, with respect to the evidence of non-obviousness, that the patentee had not established commercial success, and remanded for further proceedings.

As to “continuity member,” the PTAB gave the term a construction that required that the member make contact to establish an electrical connection, but did not require that the connection be continuous in time.  Although the court held that under the correct construction (i.e., the Phillips construction that would be applied in litigation), “continuity member” would include a temporal requirement, for the broadest reasonable interpretation, it does not, because the ordinary meaning of continuous does not have a temporal limitation and the description in the specification refers to physical connections, not temporal.  Unlike the term “continuity member,” the other claim term “maintain electrical continuity” does have a temporal limitation, and therefore the PTAB’s construction which did not include the temporal limitation was not correct and the claims that had this term were not obvious, because the prior art references did not disclose the temporal continuity. 

As to “shaped to fit,” the patentee argued that the PTAB’s construction was incorrect, because it did not include the limitation that one surface must face the other surface.  The court, however, held that there is no dictionary definition that included this requirement and there is no disclaimer in the patent or the file history and therefore the PTAB’s construction was correct.

The court also reviewed the PTAB’s finding that the objective evidence of non-obviousness did not outweigh the strong evidence of obviousness.  The court held that the PTAB’s finding that the patentee had not established commercial success because it had not established that its commercial product practiced the claimed invention, was erroneous.  And, the court held that the fact that the patentee’s product practiced the claims meant that there was a presumption that any commercial success was due to the patented invention.  The presumption does not apply in an ex parte proceeding.   However, because this was an IPR, and therefore an adversarial proceeding, the presumption applies, because the petitioner has the ability to rebut the patentee’s evidence.  Accordingly, the court remanded to the PTAB for further consideration of the commercial success evidence.  

PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, Case Nos. 2015-1361, -1366, -1368, -1369 (February 22, 2016); Opinion by: Moore, joined by O’Malley and Wallach; Appealed From: United States Patent Trial and Appeal Board.  Read the full opinion here.

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