Corning Optical Communications RF LLC v. PPC Broadband Inc

1. Case Identification

• Case #: IPR2016-01569
• Patent #: 8,075,338
• Filed: August 9, 2016
• Petitioner(s): Corning Optical Communications RF LLC, Corning Incorporated, and Corning Optical Communications LLC
• Patent Owner(s): PPC Broadband, Inc.
• Challenged Claims: 5, 6, and 8

2. Patent Overview

• Title: Coaxial Cable Connector
• Brief Description: The ’338 patent discloses a coaxial cable connector designed to ensure reliable electrical and physical continuity between the connector’s post and its rotatable port coupling element (nut). The invention aims to solve problems arising from improperly or loosely tightened connectors by providing an alternative grounding path.

3. Grounds for Unpatentability

Ground 1: Claims 5, 6, and 8 are anticipated by Bence.

• Prior Art Relied Upon: Bence (Patent 7,114,990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bence discloses every limitation of the challenged claims. Specifically, Bence teaches a coaxial cable connector with a resilient, electrically-conductive grounding member disposed between the tubular post and the port coupling element (coupler). Petitioner asserted that this grounding member, which includes a plurality of outward-extending "projections" (1117) or "fingers" (703), corresponds to the claimed "plurality of engagement fingers." These fingers are biased to maintain constant contact with the inner surface of the coupler, thereby meeting the limitation of being "biased into a position of interference." Dependent claim 6 is met because this constant contact exerts a radial force that maintains physical and electrical continuity. Dependent claim 8 is met because the spaces between Bence's fingers constitute the claimed "axially aligned slots positioned on the post." This argument relies on Petitioner's proposed claim constructions, which do not require the fingers to be integral with the post or the slots to be through-holes.

Ground 2: Claims 5, 6, and 8 are obvious over Bence.

• Prior Art Relied Upon: Bence (Patent 7,114,990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that, as an alternative to anticipation, if the claims are construed to require the "engagement fingers" to be formed as a single, integral component with the post, then such a structure would have been obvious over Bence. Bence discloses all features of the connector except for this integral formation, instead teaching a separate grounding member (with fingers) and a separate post.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to modify Bence by forming its separate grounding member and post into a single, integral component. The motivation stemmed from the desire to simplify the manufacturing process by eliminating an assembly step and to enhance the reliability and durability of the electrical contact between the engagement fingers and the post. Petitioner contended this modification is a simple substitution of one known element (separate components) for another (an integral component) to obtain predictable results.
  • Expectation of Success: A POSITA would have had a high expectation of success. Forming multiple metallic connector components into a single, integral piece was a matter of obvious design choice and well within the skill of an ordinary artisan at the time. Known manufacturing techniques such as casting or molding could be used to create the integrated component with predictable results.

4. Key Claim Construction Positions

• "a plurality of engagement fingers": Petitioner argued this term does not require the fingers to be formed as an integral, homogenous part of the post. The patent specification itself describes engagement fingers as potentially being separate "resilient members" or "biasing members." This construction is critical for the anticipation ground, as Bence’s fingers are part of a separate grounding member component that is attached to the post, not integral with it.
• "axially aligned slots": Petitioner contended this term should be construed broadly to include openings, spaces, voids, or grooves, and does not require a void that extends through the entire thickness of the post wall. This construction allows the spaces between the projections on Bence's grounding member to satisfy the limitation, even though they are not cut through the post itself.
• "on": For the limitation "axially aligned slots positioned on the post," Petitioner argued "on" encompasses a position that is above and supported by or over, and does not require direct contact. This allows the slots (spaces) on Bence's separate grounding member to be considered "on" the post, as the grounding member itself is secured to the post's flange.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the arguments presented in the petition were not considered during the original prosecution. During prosecution, the claims were rejected over Bence in view of Spencer (Patent 4,979,911), but were ultimately allowed after Applicant argued against the combination. Petitioner asserted this petition is substantially different because it does not rely on Spencer and instead relies on features of Bence (the projections/fingers) that the Examiner did not appear to consider as meeting the "engagement fingers" or "slots" limitations.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 5, 6, and 8 of the ’338 patent as unpatentable.