Corning Optical Communications RF LLC v. PPC Broadband Inc

1. Case Identification

• Case #: IPR2016-01573
• 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 with Enhanced Grounding Continuity
• Brief Description: The ’338 patent discloses a coaxial cable connector designed to ensure electrical continuity even when not fully tightened on an interface port. The invention aims to maintain a reliable ground path by ensuring continuous physical and electrical communication between the connector’s post and its port coupling element (nut).

3. Grounds for Unpatentability

Ground 1: Claims 5, 6, and 8 are obvious over Matthews in view of Aujla and Bence.

• Prior Art Relied Upon: Matthews (Application # 2006/0110977), Aujla (Patent 4,156,554), and Bence (Patent 7,114,990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Matthews disclosed the foundational structure of the claimed coaxial connector, including a connector body, a post, and a rotatable port coupling element. However, Matthews did not explicitly teach the claimed "plurality of engagement fingers" for ensuring ground continuity. Petitioner asserted that Aujla remedied this deficiency by teaching a coaxial connector with a post (ferrule) having an axially slotted flange that forms "spring projections" (engagement fingers). These spring projections are designed to maintain pressure contact and good electrical contact with the inner surface of the coupling element. Finally, Bence was cited for its explicit teaching of using a resilient, electrically-conductive grounding member with fingers or projections to provide a constant, reliable alternate ground path between the post and the coupling element, specifically to solve the problem of loose connectors, while still permitting free rotation of the coupler.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to modify the basic connector design of Matthews to improve its grounding reliability, a well-known problem in the industry. To solve this, a POSITA would look to known solutions. Aujla provided a known method for ensuring a ground path through an axially slotted post with integral spring projections. Bence provided an express rationale for using resilient fingers to create a reliable ground path that is maintained even when the connector is loose, without impeding the rotation of the coupling element. Therefore, a POSITA would combine Aujla's slotted post-with-fingers structure and Bence's resilient grounding principles with the Matthews connector to achieve the predictable result of a connector with a more reliable ground path.
  • Expectation of Success: Petitioner contended there was a high expectation of success because the combination involved the simple substitution of known elements to achieve their predictable functions. Aujla and Bence both demonstrated that spring-like fingers or projections could successfully create a resilient electrical contact. Applying this known technique to the conventional connector structure of Matthews would predictably result in a connector that maintains a ground path even when loose, which was the intended purpose of the modification.

4. Key Claim Construction Positions

• "axially aligned slots": Petitioner argued that, based on the patent's intrinsic evidence and the Patent Owner's infringement contentions in related litigation, this term should not be limited to voids that extend through the entire thickness of the post wall. Petitioner asserted the term is broad enough to encompass mere spaces or grooves between projections, such as those disclosed in the Bence prior art, which do not pass through the entire wall. This construction was critical to mapping Bence's grounding member, which has spaces between its fingers, onto the claim language.
• "plurality of engagement fingers": Petitioner proposed that this term should be broadly construed to include various structures such as resilient members, biasing members, teeth, or projections, and that the fingers are not required to be formed as an integral, one-piece component with the post. This interpretation allowed Petitioner to argue that the separate, multi-component "resilient, electrically-conductive grounding member" taught by Bence met the "engagement fingers" limitation of the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the grounds presented in the petition were substantially different from those considered during the original ex parte prosecution. The Examiner's rejection during prosecution was based on a combination of Bence and Spencer (Patent 4,979,911), and allowance was granted after the Applicant successfully argued that Bence and Spencer were not combinable. This petition, in contrast, did not rely on Spencer and instead introduced Matthews and Aujla, which were not part of the Examiner's obviousness rejection, to present a new and distinct invalidity challenge.

6. Relief Requested

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