Corning Optical Communications RF LLC v. PPC Broadband Inc

1. Case Identification

• Case #: IPR2013-00342
• Patent #: Patent 8,323,060
• Filed: June 10, 2013
• Petitioner(s): Corning Gilbert Inc.
• Patent Owner(s): PPC Broadband, Inc.
• Challenged Claims: 10-25

2. Patent Overview

• Title: Coaxial Cable Connector Having Electrical Continuity Member
• Brief Description: The ’060 patent discloses a coaxial cable connector designed to ensure a reliable electrical ground path between a coaxial cable and an appliance. The invention focuses on using a "continuity member" to maintain this ground connection, even if the threaded portions of the connector are not fully tightened.

3. Grounds for Unpatentability

Ground 1: Claims 10-25 are obvious over Tatsuzuki in view of Montena and further in view of Matthews.

• Prior Art Relied Upon: Tatsuzuki (Japanese Publication No. 2002-15823), Montena (Patent 6,558,194), and Matthews (Application # 2006/0110977).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tatsuzuki disclosed a coaxial connector with all major components of independent claim 10, including a connector body, post, rotatable nut, and a disc-shaped spring that functions as the claimed "continuity member." However, Tatsuzuki’s connector body and post were disclosed as a single, integral component. Petitioner asserted that Montena and Matthews explicitly taught that it was well-known in the art to make these components as separate pieces. For dependent claims, Petitioner argued that adding a sealing ring (claim 11) was taught by both Montena and Matthews, and adding a movably coupled fastener member (claim 16) was taught by Matthews.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references for several reasons. First, substituting two separate components for a single integral component that performs the same function was presented as a matter of obvious design choice. Second, using separate post and body components, as taught by Montena and Matthews, allows for the use of different, more suitable materials for each part. Third, this modification simplifies connector assembly by avoiding the complex "curling process" required to assemble the integral-body connector of Tatsuzuki.
  • Expectation of Success: A POSITA would have reasonably expected success in creating a connector with separate post and body components based on the explicit teachings in Montena and Matthews, as it involved combining known components to achieve predictable results.

Ground 2: Claims 10-25 are obvious over Matthews in view of Tatsuzuki.

• Prior Art Relied Upon: Matthews (Application # 2006/0110977) and Tatsuzuki (Japanese Publication No. 2002-15823).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Matthews was a stronger primary reference because it disclosed a coaxial connector with separate post and connector body components, a rotatable nut, and a continuity member (termed a "connector body conductive member 80"). However, Petitioner argued Matthews's continuity member was deficient because it did not directly contact the post, creating a less reliable ground path. Furthermore, an alternative embodiment in Matthews lacked a continuity member entirely. Tatsuzuki was cited to supply its disc-shaped continuity spring, which provides direct contact between the nut, connector body, and post to ensure robust electrical grounding.
  • Motivation to Combine: A POSITA would have been motivated to modify the Matthews connector by incorporating the continuity member from Tatsuzuki to improve performance. For the Matthews embodiment lacking any continuity member, adding one from Tatsuzuki would provide the essential grounding function. For the embodiment with the allegedly deficient member, Tatsuzuki's member would provide a superior, direct ground path. Petitioner argued this modification would be particularly advantageous as it would allow the connector body of Matthews to be made from a non-conductive material while still ensuring a reliable ground path through the added continuity member.
  • Expectation of Success: A POSITA would have expected success because the modification involved incorporating a known type of spring contact into a standard connector design to achieve the predictable result of improved electrical continuity.

4. Key Claim Construction Positions

• Petitioner argued that several claim terms lacked antecedent basis and proposed constructions to resolve the ambiguity. For example:
  • The term "the second surface of the internal lip of the nut" in claim 15 lacks a direct antecedent. Petitioner proposed it should be construed to mean "the rear surface of the internal lip of the nut," which is recited in the parent claim 10.
  • Similarly, "the external protrusion of the post" in claims 18 and 19 should be construed as the "external annular protrusion" recited in claim 10. These constructions were presented as necessary to enable a proper comparison with the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention underpinning the petition, particularly for Ground 1, was that the substitution of an integral, single-piece component (like the body/post of Tatsuzuki) with two separate components that perform the same function (as taught by Montena and Matthews) is a fundamental and obvious design choice for a POSITA in the field of connector manufacturing. Petitioner asserted this principle applies broadly to mechanical designs and is not an inventive step.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 10-25 of the ’060 patent as unpatentable.