Addressing obviousness issues, including commercial success, the Patent Trial and Appeal Board (PTAB or Board) maintained its previous decision invalidating the claims of a patent related to coaxial cable connectors after the US Court of Appeals for the Federal Circuit remanded the case to the PTAB to address whether the prior art teaches a particular claim limitation as properly construed and to reassess the patent owner’s evidence of commercial success. Corning Optical Communications RF, LLC v. PPC Broadband, Inc., Case No. IPR2013-00340 (PTAB, Nov. 16, 2016) (Zecher, APJ).

Corning filed a petition requesting inter partes review (IPR) of claims of a patent directed to a coaxial cable connector. After instituting the IPR proceeding, the PTAB construed the term “continuity member” to require that “the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” but without requiring consistent or continuous contact. The PTAB then issued a final written decision invalidating the claims as being obvious over the prior art.

On appeal, the Federal Circuit affirmed the PTAB’s construction of the term “continuity member” under the broadest reasonable interpretation (BRI) standard, even though the Court concluded that the construction was not correct under Phillips (IP Update, Vol. 19, No. 3). The Federal Circuit, however, concluded that other claim limitations required the continuity member to “maintain electrical continuity” during certain specified periods of operation of the connector, and that “maintaining electrical continuity” required consistent or continuous contact under either a BRI or Phillips construction. The Federal Circuit further determined that the PTAB did not make any factual findings as to whether the prior art maintains “consistent or continuous contact.” The Court also disagreed with the PTAB’s analysis of commercial success, finding that the PTAB erred in concluding that PPC’s commercial product did not meet all the limitations of the challenged claims when the evidence of record was to the contrary. The Court noted that there is a presumption in IPR proceedings that any commercial success of the products is due to the patented invention. In view of the above, the Federal Circuit remanded the case back to the PTAB (IP Update, Vol. 19, No. 11).

On remand, the PTAB maintained its obviousness decision. In particular, in light of the Federal Circuit’s guidance, and assessing the claimed invention “as a whole,” the PTAB found that the prior art did teach the “maintain electrical continuity” limitation. The PTAB also concluded that the evidence of record did not establish commercial success, because PPC’s market share had not increased after introduction of the relevant commercial product and because it was unclear whether PPC’s relevant commercial product was a true alternative to its pre-existing product or a replacement for a discontinued pre-existing product.