United States Court of Appeals
`for the Federal Circuit
`______________________
`
`
`
`
`
`PPC BROADBAND, INC.,
`Appellant
`
`v.
`
`CORNING OPTICAL COMMUNICATIONS RF, LLC,
`Appellee
`______________________
`
`2015-1361, 2015-1366, 2015-1368, 2015-1369
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2013-00340,
`IPR2013-00345,
`IPR2013-00346,
`IPR2013-00347.
`
`______________________
`
`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 represent-
`ed by SCOTT LLOYD SMITH, ROGER HYUNGIL LEE.
`______________________
`
`Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
`
`MOORE, Circuit Judge.
`PPC Broadband, Inc. appeals from the Patent Trial
`and Appeal Board’s (“Board”) final written decisions in
`inter partes reviews (“IPRs”) concluding that claims 1–32
`of U.S. Patent No. 8,287,320, claims 1–9 of U.S. Patent
`No. 8,323,060, and claims 7–27 of U.S. Patent No.
`8,313,353 would have been obvious. We vacate the
`Board’s determination that claims 8, 16, and 31 of the
`’320 patent, claims 1–9 of the ’060 patent, and claims 7–
`27 of the ’353 patent are unpatentable, affirm the Board’s
`determination that claims 1–7, 9–15, 17–30, and 32 of the
`’320 patent are unpatentable, and remand for further
`proceedings.
`
`BACKGROUND
`A coaxial cable has an inner electrical conductor (of-
`ten 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
`’320 patent family discloses coaxial cable connectors
`having a connector body 50, a post 40, a nut 30 (also
`called a “coupler”), and a “continuity member” that con-
`tacts the post and the nut so that electrical grounding
`continuity is extended through the post and the nut. ’320
`patent col. 2 ll. 3–6, 15–19, 37–41.1 The ’320 patent
`discloses more than twenty embodiments of continuity
`members. For example, Figure 13 depicts an embodiment
`where the continuity member 370 extends underneath the
`body 50. Figure 17 depicts a continuity member 570 that
`is sandwiched between the post 40 and the body 50.
`
`
`1 The ’353 patent and the ’060 patent are both con-
`tinuations of the ’320 patent. The three patents share the
`same specification, in relevant part.
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`PPC BROADBAND, INC. V. CORNING OPTICAL COMMC’NS
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`3
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`Figure 17 of the ’060 patent: In this embod-
`iment, the continuity member 570 abuts the
`face of the body 50.
`
`Figure 13 of the ’060 patent: In this embod-
`iment,
`the continuity member 370 extends
`underneath the body 50.
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`Corning Optical Communications RF, LLC, filed peti-
`tions requesting IPRs of claims 1–32 of the ’320 patent,
`claims 1–9 of the ’060 patent, and claims 7–27 of the ’353
`patent on grounds that these claims were unpatentable as
`obvious over the combination of U.S. published patent
`application 2006/0110977 (“Matthews”) and Japanese
`published patent application JP 2002-015823 (“Tatsuzu-
`ki”). Between November and December 2013, the Board
`instituted four separate IPR proceedings.2
`The Board held a consolidated hearing for the four
`IPRs in this appeal and issued four separate decisions in
`which it concluded that all claims at issue would have
`been obvious. The terms “continuity member” or “electri-
`cal continuity member” are present in every claim at
`issue, and the construction of these terms is central to the
`Board’s decisions. For example, claim 1 of the ’320 patent
`(emphases added) recites:
`1. A coaxial cable connector comprising:
`a connector body;
`a post engaged with the connector body,
`wherein the post includes a flange;
`a nut, axially rotatable with respect to the
`post and the connector body, the nut hav-
`ing a first end configured for coupling to
`an interface port, and an opposing second
`end, wherein the nut includes an internal
`
`
`2 Corning also sought, and the Board granted, IPR
`proceedings on claims 10–25 of the ’060 patent. In a
`separate proceeding, the Board canceled all of these
`claims as unpatentable for obviousness over the combina-
`tion of Matthews and Tatsuzuki. PPC Broadband also
`appealed this decision to this court in Appeal No. 2015-
`1364.
`
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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`5
`
`lip, and wherein the second end portion of
`the nut starts at a side of the lip of the nut
`facing the first end of the nut and extends
`rearward to the second end of the nut;
`a continuity member disposed only rear-
`ward of the start of the second end portion
`of the nut and contacting the post and the
`nut, so that the continuity member extends
`electrical grounding continuity through the
`post and the nut; and
`wherein the nut does not touch the con-
`nector body, and the continuity member is
`configured to contact a rearward facing
`surface of the lip of the nut and extend be-
`tween a portion of the post and a portion
`of the connector body.
`The Board construed these terms to require “that the
`continuity member need only make contact with the
`coupler/nut and the post to establish an electrical connec-
`tion there,” rather than requiring consistent or continuous
`contact between the coupler/nut and the post as PPC
`Broadband argued. J.A. 10, 102, 156, 207.
`The Board also construed the terms “shaped to fit”
`and “configured to fit,” which are present in claims 1–9 of
`the ’060 patent, claims 16 and 24 of the ’353 patent, and
`claim 28 of the ’320 patent. The Board held that compo-
`nents or surfaces that are shaped or configured to fit one
`another “are sized and dimensioned to abut one another,”
`including components whose surfaces are perpendicular.
`J.A. 13, 105, 159.
`The Board concluded that all claims at issue would
`have been obvious over the combination of Matthews and
`Tatsuzuki. The Board considered PPC Broadband’s
`evidence of objective considerations, but determined it did
`not outweigh the strong evidence of obviousness. PPC
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`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 evi-
`dence. 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 IPRs, 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 substan-
`tial evidence. Id. at 1280.
`I.
`“Continuity Member” / “Electrical Continuity
`Member”
`PPC Broadband argues that the Board erred when it
`construed the terms “continuity member” and “electrical
`continuity member” to require “that the continuity mem-
`ber need only make contact with the coupler/nut and the
`post to establish an electrical connection there,” without
`requiring that contact to be consistent or continuous in
`time (i.e., always connected). PPC Broadband asserts
`that the Board did not find that the combination of Mat-
`thews and Tatsuzuki teaches consistent or continuous
`contact with coupler/nut and the post, as required by all
`claims when they are correctly construed.
`Under Cuozzo, the Patent and Trademark Office
`(“PTO”) gives claim language its broadest reasonable
`interpretation in IPRs. 793 F.3d at 1279. Historically,
`the PTO applied this standard in the examination and
`reexamination of patents, where the applicant may freely
`amend the claim language to clarify the scope of the
`
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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`claim. Examinations and reexaminations are not adjudi-
`catory. Instead, the patent examiner and the applicant
`work together to determine the scope of the claimed
`invention. See In re Buszard, 504 F.3d 1364, 1366–67
`(Fed. Cir. 2007) (“The patent examiner and the applicant,
`in the give and take of rejection and response, work
`toward defining the metes and bounds of the invention to
`be patented.”); In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`1989) (“[D]uring patent prosecution when claims can be
`amended, ambiguities should be recognized, scope and
`breadth of language explored, and clarification imposed.”).
`By giving the claim language its broadest reasonable
`interpretation, the patent examiner is able to “reduce the
`possibility that, after the patent is granted, the claims
`may be interpreted as giving broader coverage than is
`justified.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA
`1969). While broadly construing claim language increases
`the likelihood that otherwise distinguishable prior art will
`render the claimed invention anticipated or obvious, the
`patentee can amend the claim language during prosecu-
`tion—and narrow it if necessary—to clarify the scope of
`the invention and avoid rejection or cancellation of the
`claims.
`District courts, by contrast, do not assign terms their
`broadest reasonable interpretation. Instead, district
`courts seek out the correct construction—the construction
`that most accurately delineates the scope of the claimed
`invention—under the framework laid out in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The
`same is true of reexaminations before the PTO when
`claims have expired, and therefore may not be amended.
`In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014).
`In 2011, Congress enacted the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011). The
`AIA created several new adjudicatory proceedings before
`the PTO for determining the patentability of already-
`issued patent claims. These proceedings include IPRs,
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`post-grant reviews, and covered business method reviews
`(“CBMs”). IPRs are the proceedings at issue here. Post-
`grant reviews are available for nine months after the
`issuance of a patent, and IPRs are available after those
`nine months have passed. See 35 U.S.C. § 321(c). CBM
`review is a temporary program allowing parties sued or
`charged with infringing a patent covering financial prod-
`ucts or services to challenge that patent. AIA § 18(a)–(d),
`125 Stat. 284, 329–31.
`Congress intended these programs to provide “quick
`and cost effective alternatives” to litigation in the courts.
`H.R. Rep. No. 112-98, pt. 1, at 48 (2011), as reprinted in
`2011 U.S.C.C.A.N. 67, 78; see also id. at 40 (“[AIA] is
`designed to establish a more efficient and streamlined
`patent system that will improve patent quality and limit
`unnecessary and counterproductive litigation costs.”).
`Indeed, CBM review is only available if the petitioner
`“has been sued for infringement of the patent or has been
`charged with infringement under that patent.” AIA
`§ 18(a)(1)(B).
`One hallmark of these proceedings is their adversarial
`nature. H.R. Rep. No. 112-98, at 46–47 (“The Act con-
`verts inter partes reexamination from an examinational
`to an adjudicative proceeding, and renames the proceed-
`ing ‘inter partes review.’”). To institute an IPR, a peti-
`tioner must challenge the patentability of existing patent
`claims by filing a petition with the PTO. 35 U.S.C.
`§ 311(a). The patentee can file an initial response. Id.
`§ 313. Within three months, the Director must decide
`whether to grant the petition and institute IPR. Id.
`§ 314(b). If IPR is instituted, the case proceeds to discov-
`ery. The patentee is permitted discovery, and may con-
`duct depositions.
` 35 U.S.C. § 316(a)(5); 37 C.F.R.
`§ 42.120. If the patentee files a response, the petitioner is
`permitted discovery, including depositions. 35 U.S.C.
`§ 316(a)(5); 37 C.F.R. § 42.51. A trial is conducted by a
`panel of at least three administrative law judges. 35
`
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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`9
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`U.S.C. §§ 6(c), 316(c). Both discovery and trial proceed at
`a rapid pace. The entire IPR, including the Board’s final
`decision, must be completed within one year from the date
`of institution, absent an extension for good cause. Id.
`§ 316(a)(11). Moreover, claim amendments are not a
`matter of right for IPRs, as they are in examinations and
`reexaminations. See 35 U.S.C. § 316(d)(1); 37 C.F.R.
`§ 42.121(a).
`Despite the important differences between the new
`AIA proceedings and the earlier examinational proceed-
`ings, the PTO applies the same claim construction stand-
`ard—the broadest reasonable interpretation—in both
`types of proceedings. We upheld this approach in Cuozzo,
`a decision currently under review by the Supreme Court.
`Cuozzo, 793 F.3d 1268, cert. granted, 84 U.S.L.W. 3218.
`This case hinges on the claim construction standard
`applied—a scenario likely to arise with frequency. And in
`this case, the claim construction standard is outcome
`determinative. Under Phillips, we would hold that the
`correct construction of the term “continuity member”
`requires, as PPC Broadband argues, a continuous or
`consistent connection. The American Heritage College
`Dictionary (4th ed. 2002) defines “continuity” as “1. The
`state or quality of being continuous. 2. An uninterrupted
`succession or flow; a coherent whole.” J.A. 2967.
`Furthermore, the specification discloses in multiple
`places that the continuity member should maintain a
`consistent and continuous connection. The specification
`teaches that “even when the coaxial connector 100 is only
`partially installed . . . the continuity member 70 main-
`tains an electrical ground path,” and that “this continuous
`grounding path provides operable functionality of the
`coaxial cable connector 100 allowing it to work as it was
`intended even when the connector 100 is not fully tight-
`ened.” ’320 patent col. 14 ll. 20–30. It teaches that one
`embodiment of the continuity member is designed to “flex
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`and retain constant physical and electrical contact with
`the nut 30, thereby ensuring continuity of a grounding
`path extending through the nut 30.” Id. at col. 15 ll. 2–10.
`It describes other embodiments as making “resilient and
`consistent physical and electrical contact” with the nut,
`id. at col. 18 ll. 52–59, as “enhanc[ing]” the continuity
`member’s “ability to make consistent operable contact
`with a surface of the nut,” id. at col. 18 ll. 62–65, and as
`creating “a continuous electrical shield” from the cable
`through the port, id. at col. 16 ll. 10–17. It teaches that
`“[t]hose skilled in the art should appreciated [sic] that
`other geometric configurations may be utilized for the
`post contact portion 1277, as long as the electrical continu-
`ity member 1270 is provided so as to make consistent
`physical and electrical contact with the post.” Id. at col. 19
`ll. 16–21 (emphasis added). Indeed, the specification
`teaches that the fundamental purpose of the invention is
`to “ensur[e] ground continuity” and thereby solve prob-
`lems associated with intermittent ground connections in
`the prior art, such as “loss of ground and discontinuity of
`the electromagnetic shielding.” Id. at col. 1 ll. 44–53. In
`light of the ordinary meaning of “continuity” and the
`specification, which is replete with discussion of the
`“continuous” or “consistent” contact established by the
`continuity member, the correct construction of “continuity
`member” under the framework laid out in Phillips, 415
`F.3d 1303, requires “consistent or continuous contact with
`the coupler/nut and the post to establish an electrical
`connection.”
`However, claim construction in IPRs is not governed
`by Phillips. Under Cuozzo, claims are given their broad-
`est reasonable interpretation consistent with the specifi-
`cation, not necessarily the correct construction under the
`framework laid out in Phillips. Cuozzo, 793 F.3d at 1279.
`Here, the Board’s construction is not unreasonable.
`While the ordinary meaning of “continuity” and “con-
`tinuous” often refers to something that is uninterrupted
`
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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`in time, these terms can also refer to something that is
`uninterrupted in space. See J.A. 2967 (defining “continu-
`ous” as “1. Uninterrupted in time, sequence, substance, or
`extent” (emphasis added)). For example, a continuous line
`is continuous for the length of the line; there is no addi-
`tional requirement of temporal continuity. Corning
`argues that “continuity member” should not be construed
`to require temporal continuity, as PPC Broadband argues.
`Instead, Corning argues that “continuity member” only
`requires spatial continuity—a physical connection that
`extends without interruption through the post, the conti-
`nuity member, and the nut.
`There is some language in the specification to support
`Corning’s interpretation of “continuity member.” The
`specification discloses that the continuity member “ex-
`tends electrical grounding continuity through the post
`and the nut.” ’320 patent col. 2 ll. 5–6, 17–19. It also
`teaches a “continuous ground path” that “extends from
`the interface port 20 to the nut 30, to the continuity
`member 70, to the post 40, to the conductive grounding
`shield 14.” Id. at col. 14 ll. 20–30. This description of a
`“continuous ground path” extending from component to
`component is consistent with Corning’s argument that the
`term “continuity” refers to an unbroken physical route,
`not necessarily a connection that is uninterrupted over
`time. We thus conclude that the Board’s construction—
`“that the continuity member need only make contact with
`the coupler/nut and the post to establish an electrical
`connection there,” without requiring consistent or contin-
`uous contact—is the broadest reasonable construction.
`Under the Board’s construction, there is no require-
`ment of consistent or continuous contact through the post
`and the nut. Because the Board’s construction does not
`include this additional temporal limitation, it is broader
`than PPC Broadband’s proposed construction. Thus,
`while the Board’s construction is not the correct construc-
`tion under Phillips, it is the broadest reasonable interpre-
`
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`tation of “continuity member,” and because this is an IPR,
`under our binding precedent, we must uphold the Board’s
`construction of “continuity member” and “electrical conti-
`nuity member.”
`II.
`The “Maintain Electrical Continuity” Limitations
`Although the broadest reasonable interpretation of
`“continuity member” does not require the temporal conti-
`nuity argued for by PPC Broadband, there are several
`claims that require such temporal continuity by virtue of
`other claim limitations. Claim 1 of the ’060 patent, claims
`7 and 20 of the ’353 patent, and claims 8, 16, and 31 of the
`’320 patent require the continuity member “maintain
`electrical continuity” during the operation of the connect-
`or. Independent claim 1 of the ’060 patent (emphasis
`added) recites:
`1. A connector for coupling an end of a coaxial ca-
`ble, . . . the connector comprising:
`. . .
`a continuity member disposed only rear-
`ward of the forward facing lip surface of
`the internal lip of the coupler, the continu-
`ity member having a continuity base por-
`tion extending between the continuity post
`engaging surface of the post and the con-
`tinuity body engaging surface of the con-
`nector body, and a continuity contact
`surface configured to be biased against the
`rearward facing lip surface of the internal
`lip of the coupler so as to maintain electri-
`cal continuity between the coupler and the
`post when the coupler is in the partially
`tightened position on the interface port,
`even when the coupler is in the fully tight-
`ened position on the interface port, and
`
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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`even when the post moves relative to the
`coupler.
`Similarly, independent claims 7 and 20 of the ’353 patent
`recite methods of assembling a coaxial cable connector,
`the method comprising “positioning an electrical continui-
`ty member so as to . . . maintain electrical continuity
`between the post and the nut when the post pivots rela-
`tive to the nut.” And dependent claims 8, 16, and 31 of
`the ’320 patent require the continuity member to “main-
`tain electrical continuity when the nut is in both the
`partially tightened position on the interface port and in
`the fully tightened position on the interface port.”
`These limitations require the continuity member
`“maintain electrical continuity” during certain specified
`periods of operation of the connector. For example, claims
`7 and 20 of the ’353 patent require the connector to main-
`tain electrical continuity “when the post pivots relative to
`the nut.” See also ’320 patent, claims 8, 16, and 31 (re-
`quiring the continuity member to maintain electrical
`continuity “when the nut is in both the partially tightened
`position on the interface port and in the fully tightened
`position on the interface port”); ’060 patent, claim 1
`(requiring the continuity member to maintain electrical
`continuity “when the coupler is in the partially tightened
`position on the interface port, even when the coupler is in
`the fully tightened position on the interface port, and even
`when the post moves relative to the coupler.”). These
`claims require the continuity member maintain electrical
`continuity when the coupler is in a certain position or
`during certain modes of operation. Maintaining electrical
`continuity requires consistent or continuous contact—
`under both the broadest reasonable interpretation stand-
`ard required by Cuozzo and the framework laid out in
`Phillips.
`Nowhere in its decisions did the Board find that the
`combination of Matthews and Tatsuzuki maintains elec-
`
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`trical continuity during the specific positions or modes of
`operation required by these limitations. Corning argues
`that the Board did not ignore these limitations, but con-
`sidered it as part of its claim construction analysis for the
`terms “continuity member” and “electrical continuity
`member.” See Appellee’s Br. 36–37. But the portions of
`the Board decisions cited by Corning suggest the opposite.
`As the Board explained:
`[W]e decline to import limitations into the disput-
`ed claim limitation that would require the “conti-
`nuity member” to make “consistent contact” with
`the coupler/nut and the post such that it main-
`tains a “continuous electrical connection” between
`these components.
`J.A. 10; J.A. 101–02; J.A. 155; J.A. 206–07. The Board
`explicitly declined to require the continuity member to
`“maintain[] a ‘continuous electrical connection.’” Id. But
`when the coupler is in a certain position or during certain
`modes of operation, that is exactly what these claims
`expressly require—not because they use the term “conti-
`nuity member,” but because they use the phrase “main-
`tain electrical continuity.”
`Corning argues that we should nonetheless affirm the
`Board’s decision because the combination of Matthews
`and Tatsuzuki teaches these limitations. The Board did
`not make any such fact findings, and we will not make
`fact findings for the first time on appeal. We therefore
`vacate the Board’s determination that claims 8, 16, and 31
`of the ’320 patent, claims 1–9 of the ’060 patent, and
`claims 7–27 of the ’353 patent are unpatentable.
`III.
`The “Shaped to Fit” / “Configured to Fit” Limita-
`tions
`Claims 1–9 of the ’060 patent, claims 16 and 24 of the
`’353 patent, and claim 28 of the ’320 patent recite a post
`and a body that are “shaped to fit” or “configured to fit”
`
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`one another. The Board held that components that are
`shaped or configured to fit one another “are sized and
`dimensioned to abut one another,” including components
`with surfaces that do not face one another.
`
`Figure 17 of the ’060 patent: Certain claims
`require the body 50 to be “shaped to fit” or
`“configured to fit” the post 40.
`
`PPC Broadband does not dispute that the plain mean-
`ing of “fit” is that “an object is the proper size and shape.”
`Appellant’s Br. 31. Instead, PPC Broadband argues that
`this plain meaning requires the two surfaces that are
`shaped or configured to fit one another to be somewhat
`parallel—that one surface “has a complementary size and
`shape as, and faces” the other surface. Appellant’s Br. 31
`(emphasis added). It argues that components whose
`surfaces do not face one another cannot be “shaped to fit”
`or “configured to fit” one another. It argues that we
`should vacate and remand the Board’s determination as
`to these claims because the Board did not find that the
`combination of Matthews and Tatsuzuki teaches this
`limitation.
`
`IPR2015-01898 & IPR2015-01899
`Ex. 2010
`Page 15 of 20
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
`
`We hold that the Board correctly construed these
`terms. Under their broadest reasonable interpretation,
`these terms have their ordinary meaning, which merely
`requires one surface to have a complementary size and
`shape as the other surface. PPC Broadband puts forth no
`dictionary definition supporting its argument that the
`surfaces must be somewhat parallel.
`Nor does PPC Broadband point to any disavowal or
`disclaimer in the specifications of the ’320 patent family
`compelling departure from this ordinary meaning. PPC
`Broadband argues that the specifications refer to surfaces
`that are configured to fit one another as “opposing com-
`plimentary surfaces,” which excludes perpendicular
`surfaces. ’320 patent col. 19 ll. 45–52, fig. 50. But there
`is no disclaimer or disavowal here; indeed, the specifica-
`tions’ descriptions of “opposing complimentary surfaces”
`do not include the terms “configured to fit” or “shaped to
`fit.” Id. Second, PPC Broadband notes that the specifica-
`tions teach that the continuity member extends between
`two fitting surfaces such that the body, the continuity
`member, and the post are secured “both axially and
`rotationally,” and argues that surfaces that are perpen-
`dicular cannot be secured as the specifications describe.
`’320 patent col. 13 ll. 15–20. But perpendicular surfaces
`can be fitted together in a manner that prevents move-
`ment of the surfaces relative to each other, thereby ensur-
`ing the surfaces are axially and rotationally secured.
`Finally, PPC Broadband argues that the Board’s con-
`struction is inoperable. For example, it notes that claim 1
`of the ’060 patent requires that the “body is positioned
`around a portion of the post,” with the continuity member
`“extend[ing] between” the post and the body. It argues
`that if the surfaces of the post and body are perpendicu-
`lar, the continuity member cannot extend between them.
`We disagree, and see no reason a continuity member
`could not extend between two perpendicular surfaces.
`
`IPR2015-01898 & IPR2015-01899
`Ex. 2010
`Page 16 of 20
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`

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`PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`17
`
`We therefore uphold the Board’s construction of
`“shaped to fit” and “configured to fit.” Because PPC
`Broadband’s argument that the combination of Matthews
`and Tatsuzuki does not disclose this limitation is entirely
`predicated on our adoption of its claim construction, we
`affirm the Board’s decision that claim 28 of the ’320
`patent is unpatentable. And although we vacate the
`Board’s determination that claims 1–9 of the ’060 patent
`and claims 16 and 24 of the ’353 patent are unpatentable
`because of the “maintain electrical continuity” limitation,
`the Board correctly found that the prior art teaches the
`“shaped to fit” and “configured to fit” limitation in these
`claims.
`
`IV. Objective Considerations
`Although the Board found that certain objective con-
`siderations pointed towards non-obviousness, it concluded
`that Corning’s strong evidence of obviousness outweighed
`these considerations. On appeal, the parties dispute the
`Board’s findings with respect to the various indicia of
`nonobviousness, including long-felt but unresolved need,
`failed attempts by Corning, copying by Corning, and
`commercial success, as well as the overall weight given by
`the Board to these indicia.
`Substantial evidence supports the Board’s conclusions
`on long-felt but unresolved need, failed attempts, and
`copying. The Board rejected PPC Broadband’s argument
`that there was a long-felt but unsolved need for coaxial
`cable connectors where ground continuity could be estab-
`lished even if the connector was only loosely connected to
`the port. Substantial evidence supports the Board’s
`findings that this long-felt need had been satisfied by
`earlier connectors invented before the priority date of the
`patents at issue here. Substantial evidence also supports
`the Board’s finding that Corning had both successful and
`unsuccessful attempts to design a prototype coaxial cable
`with a continuity member, but that none of these success-
`
`IPR2015-01898 & IPR2015-01899
`Ex. 2010
`Page 17 of 20
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` PPC BROADBAND, INC. v. CORNING OPTICAL COMMC’NS
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`ful designs were manufactured or sold to consumers. In
`light of Corning’s failure to manufacture connectors with
`a continuity member that could be sold to consumers, this
`factor weighs in favor of a finding of non-obviousness.
`Substantial evidence also supports the Board’s conclusion
`that there was copying by Corning. This too weighs in
`favor of non-obviousness.
`Lastly, the Board found that PPC Broadband had not
`presented persuasive evidence of commercial success. In
`coming to this conclusion, the Board found that PPC
`Broadband had not established that its SignalTight
`connectors met all of the elements of the challenged
`claims at issue. Here, the Board erred. PPC Broadband
`alleges that its SignalTight connectors are commercial
`embodiments of the connectors recited in the claims. PPC
`Broadband presented multiple declarations supporting
`this allegation. Corning did not argue to the Board that
`the SignalTight connectors are not commercial embodi-
`ments of the claimed connectors. When the patentee has
`presented undisputed evidence that its product is the
`invention disclosed in the challenged claims, it is error for
`the Board to find to the contrary without further explana-
`tion. There was no such explanation here. The Board in
`its opinions did not explain why the SignalTight connect-
`ors fail to embody the claimed features, or what claimed
`features in particular are missing from the SignalTight
`connectors.3 Nor does Corning justify this finding on
`
`
`3 Without any detailed explanation, the Board also
`noted that commercial success is not established where a
`product has a very large market share if that product was
`replacing the same party’s earlier version which likewise
`enjoyed a high market share. We note that it would be
`wrong to conclude that a product with a high market
`share is not commercially