Corning Optical Communications RF, LLCv.PPC Broadband, Inc.

Patent Trials and Appeals Board

Nov 21, 2014

12633792 - (D) (P.T.A.B. Nov. 21, 2014)

Trials@uspto.gov Paper 77
571-272-7822 Date: November 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CORNING OPTICAL COMMUNICATIONS RF, LLC,
Petitioner,

v.

PPC BROADBAND, INC.,
Patent Owner.
____________

Case IPR2013-00347
Patent 8,287,320 B2

Before JAMESON LEE, JOSIAH C. COCKS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner, Corning Optical Communications RF, LLC
1
(“Corning”),
filed an amended Petition requesting an inter partes review of claims 9, 17,
and 32 of U.S. Patent No. 8,287,320 (Ex. 1001, “the ’320 patent”). Paper 5
(“Pet.”) Patent Owner, PPC Broadband Inc. (“PPC”), did not file a
Preliminary Response. The panel determined that the information presented
in the Petition demonstrated that there was a reasonable likelihood that
Corning would prevail in challenging claims 9, 17, and 32 as unpatentable
under 35 U.S.C. §103(a). Pursuant to 35 U.S.C. § 314, the panel instituted
this proceeding on November 26, 2013, as to those claims of the ’320
patent. Paper 15 (“Dec.”) In that regard, the panel instituted an inter partes
review of claims 9, 17, and 32 as unpatentable under 35 U.S.C. § 103(a)
over Matthews
2
and Tatsuzuki
3
.
During the course of this proceeding, PPC timely filed unredacted and
redacted versions of a Patent Owner Response (Papers 30 and 31, “PO
Resp.”), along with a Revised Motion to Seal and proposed Protective Order
(Paper 40), and three additional Motions to Seal, each with the same
proposed Protective Order (Papers 43, 59, and 69). Corning timely filed a
Response to PPC’s Revised Motion to Seal (Paper 41), a Motion to Seal

1
During trial, Petitioner filed an updated mandatory notice indicating that
Corning Gilbert Inc., the original Petitioner in this proceeding, changed its
name to Corning Optical Communications RF, LLC. Paper 24, 1.

2
US 2006/0110977 A1 published May 25, 2006 (Ex. 1004).

3
JP 2002-015823 published Jan. 18, 2002 (Ex. 1022) (English translation
Ex. 1002).

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(Paper 45), as well as a Substitute Reply to the Patent Owner Response
(Paper 52, “Pet. Reply”).
PPC filed a Motion to Exclude seeking to exclude portions of a
declaration and deposition testimony of Mr. Donald Burris, Development
and IP Manager at Corning, that were relied upon by Corning in its
Substitute Reply to the Patent Owner Response. Paper 53, “Mot. to
Exclude.” Corning filed an Opposition to PPC’s Motion to Exclude. Paper
61. PPC file a Reply to Corning’s Opposition. Paper 65.
A consolidated oral hearing was held on July 24 and 25, 2015, in
relation to this proceeding and the following four other related proceedings
involving the same parties: (1) IPR2013-00340; (2) IPR2013-00342; (3)
IPR2013-00345; and (4) IPR2013-00346. Transcripts of the entire
consolidated oral hearing are included in the record. Papers 74–76. In
particular, Paper 74 corresponds to the transcript from the second session of
the consolidated oral hearing, held the morning of July 25, 2014, and
pertains to this proceeding and IPR2013-00346.
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of claims 9, 17, and 32 of the ’320 patent. For the reasons
discussed below, Corning has demonstrated by a preponderance of the
evidence that those claims are unpatentable under 35 U.S.C. § 103(a).
PPC’s Motion to Exclude is denied.
A. Related Matters
Corning indicates that the ’320 patent was asserted against it in PPC
Broadband, Inc. v. Corning Gilbert Inc., 5:12-cv-0911-GLS-DEP, which
was filed in the U.S. District Court for the Northern District of New York.
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Pet. 1. Corning also filed five other petitions seeking inter partes review of
the following patents owned by PPC: the ’320 patent (IPR2013-00346);
U.S. Patent No. 8,323,060 (IPR2013-00340 and IPR2013-00342); U.S.
Patent No. 8,313,353 (IPR2013-00343 and IPR2013-00345). Id. at 1–2.
On April 15, 2014, we granted PPC’s request in IPR2013-00343 to
cancel claims 1–6 of U.S. Patent No. 8,313,353, i.e., all claims at issue in
that proceeding, as well as PPC’s request for entry of adverse judgment
against it in that case. IPR2013-00343, Paper 27.
B. The ’320 Patent (Ex. 1001)
The invention of the ’320 patent generally relates to coaxial cable
connectors having electrical continuity members that extend continuity of an
electromagnetic interference shield from a cable through the connector.
Ex. 1001, 1:14–18. Figure 1 of the ’320 patent is reproduced below:

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Figure 1 of the ’320 patent depicts a cut-away view of the elements of
coaxial cable connector 100 having electrical continuity member 70. Id. at
2:49–52, 5:62–64. Coaxial cable connecter 100 may be affixed, or
functionally attached, to coaxial cable 10 that includes protective outer
jacket 12, conductive grounding shield 14, interior dielectric 16, and center
conductor 18. Id. at 5:64–6:1. Coaxial cable connector 100 also may
include threaded nut 30, post 40, connector body 50, fastener member 60,
continuity member 70 formed of conductive material, and connector body
sealing member 80, e.g., a body O-ring configured to fit around a portion of
connector body 50. Ex. 1001, 7:6–12.
The ’320 patent discloses that post 40 includes first forward end 41,
opposing second rearward end 42, and flange 44 located at first forward end
41. Id. at 8:1–6. Post 40 also may include surface feature 47, such as a lip
or protrusion, which engages a portion of connector body 50 to secure axial
movement of post 40 relative to connector body 50. Id. at 8:13–17.
Connector body 50 includes first end 51, opposing second end 52, and post
mounting portion 57 proximate or otherwise near first end 51 that is
configured to locate securely connector body 50 relative to a portion of the
outer surface of post 40. Id. at 8:62–9:5. Internal surface of post mounting
portion 57 includes engagement feature 54, which facilitates the secure
location of continuity member 70 with respect to connector body 50 and/or
post 40, by engaging physically continuity member 70 when assembled
within coaxial cable connector 100. Id. at 9:5–10.
The ’320 patent further discloses that threaded nut 30 includes first
forward end 31, opposing second rearward end 32, and internal lip 34, e.g.,
an annular protrusion, located proximate to second rearward end 32. Id. at
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7:13–22. In one embodiment, continuity member 70 includes first end 71,
axially opposing second end 72, and post contact portion 77. Id. at 10:65–
11:3. When coaxial cable connector 100 is assembled, post contact portion
77 makes physical and electrical contact with post 40, which, in turn, helps
facilitate the extension of electrical ground continuity through post 40. Id. at
11:3–6.
Claims 9, 17, and 32 are each independent claims. Claim 9 is
representative and is reproduced below:
9. 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 having a first end configured for
coupling to an interface port, and an opposing second end,
wherein the nut includes an internal 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 rearward 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;

a fastener member having a central passageway with an
internal ramped surface that deformably compresses the outer
surface of the connector body when the fastener member is
pressed into tight and secure position on the connector body; and

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wherein the continuity member is configured to contact a
rearward facing surface of the lip of the nut and extend between
a portion of the post and a portion of the connector body.

Ex. 1001, 21:53–22:9.
II. ANALYSIS
A. Claim Construction
We construe claims by applying the broadest reasonable interpretation
in light of the specification. 37 C.F.R. § 42.100(b); see also Office Patent
Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Claim
terms also are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). However, a “claim term will not receive its ordinary meaning if the
patentee acted as his own lexicographer and clearly set forth a definition of
the disputed claim term in either the specification or prosecution history.”
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
In its Petition, Corning offered an explicit construction for the
following terms appearing in claims 9, 17, and 32:
Claim(s) Claim Phrase Corning’s Proposed
Construction

9 and 17

a fastener member having
a central passageway
with an internal ramped
surface that deformably
compresses the outer
surface of the connector
body
“Claims 9 and 17 are
interpreted to require that the
continuity member has an
outer surface which the
fastener member deformably
compresses when the
fastener member is pressed
into a tight and secure
position on the connector
body” Pet. 5–6
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9

a post engaged to the
connector body

“In each case, a portion of
the connector body is axially
secured to the post in a
manner that prevents the two
components from moving
with respect to each other in
a direction parallel to the
axis of the connector.” Pet. 6

17

a post operably attached
to the connector body

32

a post attached to the
connector body

For purposes of our Decision instituting trial, we adopted the above-
noted claim constructions proposed by Corning. Dec. 6–8. PPC has not
opposed those constructions. We discern no reason to alter those
constructions for purposes of this Final Written Decision.
Neither party asserts that the patentee of the ’320 patent attempted to
be its own lexicographer by providing special meanings for any terms, or
that any term should take on a meaning other its ordinary and customary
meaning. As noted above, Corning made explicit the ordinary meaning of
certain terms, which we adopted in our Decision instituting trial. With
respect to this Final Written Decision, it is apparent that the meaning of
certain claim phrases concerning a “continuity member” (claim 9) or
“electrical continuity member” (claims 17 and 32) should be made explicit.
The feature, as it appears in claim 9, reads:
a continuity member disposed only rearward 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;
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. . . wherein the nut does not touch the connector body,
and the continuity member is configured to contact a rearward
facing surface of the lip of the nut and extend between a portion
of the post and a portion of the connector body.

The feature, as it appears in claim 17, reads:
an electrical continuity member disposed axially
rearward of a surface of the internal lip of the nut that faces the
flange and the first end of the nut, wherein the continuity
member electrically contacts both the nut and the post;
. . .
wherein the continuity member is configured to contact
the rearward facing surface of the li of the nut and extend
between a portion of the post and a portion of the connector
body.

Lastly, the feature as it appears in claim 32, reads:
an electrical continuity member positioned to contact the
post, the body, and the nut, wherein the electrical continuity
member contacts and electrically couples the post to the nut at a
position other than between the rearward facing surface of the
flange of the post and the forward facing surface of the lip of
the nut;
. . .
wherein the continuity member is configured to contact a
rearward facing surface of the lip of the nut and reside between
a portion of the post and a portion of the connector body.

In its Patent Owner Response, PPC contends that the pertinent claim
limitation should be construed to require that “‘the continuity member
makes consistent contact with the nut and the post to maintain a continuous
electrical connection between the nut and the post.’” PO Resp. 19. To
support its claim construction, PPC directs us to various portions of the
Specification of the ’320 patent, a dictionary definition of “continuity,” and
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the testimony of its expert witness, Dr. Charles A Eldering. Id. at 18–19
(citing portions of Ex. 1001; Ex. 2071, 6; Ex. 2074 ¶¶ 75–78).
In reply, Corning contends that the claims of the ’320 patent do not
require “consistent contact” and a “continuous electrical connection.” Pet.
Reply 8–9 (citing Ex. 1001, 20:55–24:44). Corning argues that PPC’s
proposed claim construction improperly imports limitations from the
specification into the claims. Id. Corning also argues that, when applying
the broadest reasonable construction standard, “the term ‘continuity’ does
not require some undefined level of consistency, reliability, or robustness of
an electrical connection over some undefined period of time.” Id. at 8.
We agree with Corning in both respects. We must be careful not to
read limitations from a particular embodiment appearing in the specification
into the claim if the claim language is broader than that embodiment. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). If a feature in the
disclosure is not necessary to give meaning to what the inventor means by a
claim term, it would be “extraneous” and should not be read into the
claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249
(Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1433 (Fed. Cir. 1988).
PPC does not allege that the inventors of the ’320 patent acted as their
own lexicographer and provided a special definition in the Specification of
the ’320 patent for the claim term “continuity member” that is different from
its recognized meaning to one of ordinary skill in the art. Absent a special
definition set forth in the Specification in the ’320 patent, we decline to
import limitations into the disputed claim limitations that would require the
“continuity member” to make “consistent contact” with the nut and the post
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such that it maintains a “continuous electrical connection” between these
components. Indeed, the claimed “continuity member” does not cease to be
a continuity member, as would be understood by one of ordinary skill in the
art, simply because the contact made between the nut and post may not be
“consistent” to maintain a “continuous electrical connection” between these
components.
We agree with Corning that the term “continuity” does not require
some undefined level of consistency, reliability, or robustness of an
electrical connection between the nut and post over some undefined period
of time. PPC does not direct us to a well-defined or otherwise recognizable
standard for making an objective determination as to how long a continuity
member must make “consistent contact” with a nut and post to maintain
“continuous electrical connection” between these components. If we were to
read the requirements of “consistent contact” and a “continuous electrical
connection” into the disputed claim limitation, that would interject
ambiguity into the determination of claim scope because of the uncertainty
arising from the meaning of “consistent” and “continuous.”
Applying the broadest reasonable interpretation standard, we construe
the disputed claim limitations in connection with the “continuity member” to
require that the continuity member makes contact with the nut and the post
to establish an electrical connection between the nut and the post.
B. Grounds of Unpatentability
In its Petition, Corning contends that each of independent claims 9,
17, and 32 is unpatentable for obviousness over the combination of
Matthews and Tatsuzuki. Pet. 39–60. In support of those proposed grounds
of unpatentability, Corning relies upon claim charts to explain how the
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proffered combination teaches the claimed subject matter recited in each of
these challenged claims, as well as the Declaration of Dr. Robert S.
Mroczkowski (Ex. 1006) to support its positions. Id. PPC disagrees that
claims 9, 17, and 32 are unpatentable over the prior art. PO Resp. 14–29.
We consider the respective positions of the parties in light of the
record before us.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
that prior art references must be “considered together with the knowledge of
one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
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the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)).
There is evidence in the record before us that reflects the knowledge
level of a person with ordinary skill in the art. Corning’s expert, Dr.
Mroczkowski, attests that a person with ordinary skill in the art would be an
individual who possesses a bachelor’s degree in engineering and several
years of experience in the cable and telecommunications industry relating to
the design and manufacture of coaxial cable connectors. Ex. 1006 ¶ 15. Dr.
Mroczkowski also attests that ten or more years of experience in the art
could be a substitute for a bachelor’s degree in engineering. Id. PPC’s
expert, Dr. Eldering, generally agrees with Dr. Mroczkowski’s assessment of
the knowledge level of a person with ordinary skill in the art. Ex. 2074 ¶ 10.
Furthermore, the prior art of record in this proceeding also is indicative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579
F.2d 86, 91 (CCPA 1978).
3. Matthews (Ex. 1004)
Matthews generally discloses a coaxial cable connector that includes
at least one conductive member. Ex. 1004 ¶ 1. Figure 1 of Matthews
illustrates a sectional side view of coaxial cable connector 100. Id. ¶¶ 16,
26. Figure 1 of Matthews is reproduced below:
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As shown in Figure 1, coaxial cable connector 100 includes coaxial
cable 10 that has protective outer jacket 12, conductive grounding shield 14,
interior dielectric 16, and center conductor 18. Id. ¶ 0026. The coaxial
cable connector 100 also may include threaded nut 30, post 40, connector
body 50, fastener member 60, a mating edge conductive member, e.g., O-
ring 70, and a connector body conductive member, e.g., O-ring 80, as a
means for sealing and coupling connector body 50 and threaded nut 30. Id.
¶ 28.
Figure 3 of Matthews illustrates a sectional side view of post 40.
Ex. 1004 ¶¶ 18, 30. Figure 3 of Matthews is reproduced below:

As shown in Figure 3, post 40 includes first end 42, opposing second
end 44, and flange 46. Id. ¶ 30. The flange is configured to contact internal
lip 36 of threaded nut 30 (neither shown in Figure 3) thereby facilitating the
prevention of axial movement of the post beyond contacted internal lip 36.
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Id. Post 40 also includes surface feature 48, e.g., a shallow recess, detent,
cut, slot, or trough, and mating edge 49 configured to make physical and/or
electrical contact with interface port 20 or mating edge member, e.g., O-ring
70 (illustrated in Figure 1). Id. In one embodiment, post 40 may be inserted
into an end of coaxial cable 10, around interior dielectric 16 and under
protective outer jacket 12 and conductive grounding shield 14. Id.
Accordingly, substantial physical and/or electrical contact with conductive
grounding shield 14 may be accomplished, thereby facilitating grounding
through post 40. Id.
Figure 4 of Matthews illustrates a sectional side view of connector
body 50. Ex. 1004 ¶¶ 19, 31. Figure 4 of Matthews is reproduced below:

As shown in Figure 4, connector body 50 includes first end 52,
opposing second end 54, and internal annular lip 55 configured to engage the
surface feature 48 of post 40. Id. ¶ 31.
Figure 2 of Matthews illustrates a sectional side view of threaded nut
30. Ex. 1004 ¶¶ 17, 29. Figure 2 of Matthews is reproduced below:
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As shown in Figure 2, threaded nut 30 includes first end 32, opposing
second end 34, and internal lip 36 located proximate to second end 34 that is
configured to hinder the axial movement of post 40. Id. ¶ 29. Threaded nut
30 may be formed of conductive materials, thereby facilitating grounding
through threaded nut 30. Id.
4. Tatsuzuki (Ex. 1022) (English translation Ex. 1002)
Tatsuzuki generally discloses a coaxial plug installed at the tip of a
coaxial cable. Ex. 1002 ¶ 1. Tatsuzuki discloses installing a coaxial cable
connector in reception devices, such as television-satellite broadcasting
tuners. Id. ¶ 2. Reception signals are inputted into these reception devices
by fixing a coaxial plug installed at the tip of a coaxial cable to the coaxial
cable connecter. Id.
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Figures 7(a) and 7(b) of Tatsuzuki illustrate disc-shaped spring 13,
and related side-view diagram, respectively. Ex. 1002 ¶ 17. Figures 7(a)
and 7(b) of Tatsuzuki are reproduced below:

As shown in Figures 7(a) and 7(b), disc-shaped spring 13 is formed by
stamp cutout processing of a thin metal plate possessing elasticity, e.g.,
phosphor bronze. Id. ¶ 17. The disc-shaped spring 13 includes spring piece
13b and ring-shaped joining part 13a. Id. Spring piece 13b includes eight
bent spring pieces, which are formed integrally by ring-shaped joining part
13a. Id.
Figure 3 of Tatsuzuki illustrates a cross-section view of coaxial plug 1
securely installed in coaxial cable connecter 50. Id. ¶ 12. Figure 3 of
Tatsuzuki is reproduced below:
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As shown in Figure 3, coaxial plug 1 includes plug body 11 and rotary
mounting element 12, which is fixed in a rotatable manner to plug body 11.
Ex. 1002 ¶ 13. The electrical connection between ring-shaped part 11c of
plug body 11 and rotary mounting element 12 is performed by disc-shaped
spring 13 interposed therebetween. Id. ¶ 17. The disc-shaped spring is
located within housing channel 11e (illustrated in Figure 2) and, therefore, is
not pressed to the point of becoming flat, i.e., it does not lose its spring
operation. Id.
5. Corning’s Contentions
In its Petition, Corning presented detailed claim charts and relies on
supporting evidence demonstrating how Matthews teaches most of the
limitations of independent claims 9, 17, and 32. In particular, Corning
explained how Matthews’s coaxial cable connector 100 includes connector
body 50, post 40 with flange 46 engaged with the connector body, and nut
member 30 with internal lip 36, and that those components correspond to the
connector body, post, and nut features required by claims 9, 17, and 32. Pet.
39–60. According to Corning, however, certain limitations of those claims
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directed to the required “continuity member” (claim 9) or “electrical
continuity member” (claims 17 and 32) are not disclosed in Matthews.
Although Matthews discloses “connector body conductive member”
80 (Ex. 1004 ¶ 35), Corning acknowledges that conductive member 80 may
not contact directly post 40 so as to extend electrical grounding continuity
through post 40 and nut 30. See, e.g., Pet. 45–46. In accounting for the
“continuity member” requirement of claims, Corning relies on Tatsuzuki.
As discussed above, Tatsuzuki discloses coaxial connector 1 that
incorporates disc-shaped spring 13. That spring is positioned between “plug
body 11” and “rotary mounting element 12” so as to maintain an electrical
connection between those components. Ex. 1002, Abstract. Corning
contends that Tatsuzuki’s plug body 11 and rotary mounting element 12
correspond to the claimed post and nut, and to post 40 and nut 30 set forth in
Matthews. Pet. 43, 51–52, 58. Corning reasons that it would have been
obvious to one with ordinary skill in the art to modify Matthews’s coaxial
cable connector 100 by incorporating Tatsuzuki’s disc-shaped spring 13. In
that regard, Corning contends that such modification would “promote
electrical continuity by providing an alternate ground path” between
Matthews’s nut 30 and post 40 and also “enable the connector body 50 to be
made from a non-conductive material if desired while still maintaining
electrical continuity.” Pet. 43–47 (citing Ex. 1006 ¶¶ 101–106, 110).
Corning further maintains that such modification would result in a continuity
member that contacts a rearward facing surface of the lip of Matthews’s nut
30 and extending between a portion of post 40 and connector body 50. Id.
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6. PPC’s Contentions
PPC disagrees with Corning’s assessment of the obviousness of
claims 9, 17, and 32. To that end, PPC contends that the continuity member
required by the claims is absent from the collective teachings of Matthews
and Tatsuzuki. PO Resp. 17–29. More specifically, PPC is of the view that
arranging Tatsuzuki’s disc-shaped spring 13 between nut 30 and post 40 of
Matthews’s coaxial connector 100 would not result in the formation of a
continuity member that makes consistent contact with the nut and the post to
maintain continuous electrical connection between those components. Id. at
19–20.
PPC also challenges the combination of Matthews and Tatsuzuki
under the premise that such combination as proposed by Corning during the
course of this inter partes review proceeding rests on “pure speculation” and
“hindsight reconstruction of the prior art to fit PPC’s claims” that is
“impermissible,” and prohibits an assessment of obviousness of those claims
based on the prior art. Id. at 21–29.
7. Discussion – Grounds of Unpatentability
As set forth above, in construing claims 9, 17, and 32, we disagree
with PPC’s proposed interpretation of the “continuity member” feature of
the above-noted claims of the ’320 patent. In particular, we are not
persuaded that the claims require a continuity member that makes contact
between a nut and a post in a manner that is “consistent” and facilitating
only electrical connection that is “continuous,” to the exclusion of other
contact implementations. As explained above, in affording the claims their
broadest reasonable construction, we conclude that the continuity member
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need only make contact with the nut and the post to establish an electrical
connection there-between.
Tatsuzuki describes a coaxial plug including disc-shaped spring 13,
which is purposed specifically to provide “electrical connection” between
plug body 11 and rotary mounting element 12 of the connector. Ex. 1002,
Abstract. Tatsuzuki further characterizes the overall “object” of its disclosed
invention as being “to provide a coaxial plug without deterioration of
insertion loss characteristics and reflection loss characteristics even in the
state when the coaxial plug is loosened.” Id. ¶ 7.
In its Petition, Corning explains that Tatsuzuki’s disc-shaped spring
13, in establishing electrical connection with plug body 11 and mounting
element 12 in the manner described, is understood reasonably as constituting
a continuity member. Pet. 44–45. Corning also contends that modifying
Matthews’s connector 100 by incorporating Tatsuzuki’s disc-shaped spring
13 would create an arrangement that promotes electrical continuity by
providing an alternative ground path directly between Matthews’s nut 30
and post 40 so that connector body 50 may be made of non-conductive
material. Pet. 46–47. Corning relies upon the testimony of Dr.
Mroczkowski to support its argument that a person with ordinary skill in the
art at the time of the invention would have recognized such benefit, and,
therefore, would have been motivated to make the modification. Id. at 46
(citing Ex. 1006 ¶ 103).
In its Patent Owner Response, PPC relies upon the cross-examination
testimony of Dr. Mroczkowski, including the sketches he produced during
the course of his testimony that represent possible approaches for combining
the teachings of Matthews and Tatsuzuki, to support its argument that Dr.
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Mroczkowski engaged in impermissible hindsight reconstruction to render
the challenged claims unpatentable. PO Resp. 13–29 (citing Exs. 2005–
2008 and 1034).
In its Reply, Corning relies upon Dr. Mroczkowski’s testimony to
support its argument that one of ordinary skill in the art would have
recognized that there are multiple ways to incorporate Tatsuzuki’s disc-
shaped spring 13 into Matthews’s connector 100. Pet. Reply 2 (citing Ex.
1006 ¶¶ 103–104, 120–121, 137–138). Corning argues that, in one
approach, Tatsuzuki’s disc-shaped spring 13 may be positioned on the outer
surface of Matthews’s post 40. Id. (citing Exs. 2005–2007). Corning argues
that, in a second approach, Tatsuzuki’s disc-shaped spring 13 may be
sandwiched between Matthews’s post 40 and connector body 50. Id. (citing
Ex. 1034; Ex. 1039; Ex. 2008). With respect to the second approach,
Corning asserts that even PPC’s own expert witness, Dr. Eldering, admits
that sandwiching a continuity member between a post and a body is a well-
known technique for incorporating the continuity member into connector, as
evidenced by Figure 6A of U.S. Patent No. 7,114,990 (“Bence ’990
patent”).
4
Id. at 45(citing Ex. 2076, 190:10–21).
An illustration of the above-noted sketch produced by Dr.
Mroczkowski in connection with the first approach, is reproduced below, as
it has been presented in Patent Owner’s Response:

4
When PPC filed its Patent Owner Response, it entered the Bence ’990
patent into the record in this proceeding as Exhibit 2024. When Corning
filed its initial Reply to the Patent Owner Response, it also entered the
Bence ’990 patent into the record of this proceeding as Exhibit 1038.

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PO Resp. 13.
As offered by PPC, the illustration reproduced above depicts an
opinion of Dr. Mroczkowski as to an implementation approach of
Tatsuzuki’s disc-shaped spring 13 positioned with respect to nut, post, and
body surfaces of Matthews’s connector. Id. at 13–14. According to PPC,
our assessment of obviousness of the claims of the ’320 patent should be
limited to evaluation solely of the above-noted illustration, and PPC asserts
that the illustration does not depict a continuity member positioned as
required by claims 9, 17, and 32.
In considering the proposed implementation of Tatsuzuki’s teachings
onto Matthews’s connector shown in the illustration above, contrary to
PPC’s assertion, the illustration does not encompass the features laid out in
the claims. The illustration depicts Tatsuzuki’s disc-shaped spring 13
positioned with respect to portions of Matthews’s connector identifiable as
nut 30, post 40, and connector body 50. We are satisfied that the noted
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implementation conveys a continuity member positioned to contact a
rearward surface of the nut and extend between the post and connector body.
Tatsuzuki’s disc-shaped spring, when positioned in the manner depicted,
would extend between, and facilitate electrical connection among, surfaces
of the nut, post, and body, as is required by the claims. Furthermore, we
credit Dr. Mroczkowski’s testimony to that effect. See, e.g., Ex. 1006
¶¶ 103–106.
5

In any event, we also reject PPC’s contention that our obviousness
evaluation here requires that we consider only the approach presented in the
illustration reproduced above in combining the teachings of the prior art,
without recourse to any other assessment of the skill of a person of ordinary
skill’s viewpoint in so combining the teachings. See PO Resp. 29. A person
of ordinary skill in the art is a person of ordinary creativity, not an
automaton. KSR, 550 U.S. at 421. A person of ordinary skill and creativity
would have recognized that combining the teachings of the prior art, in
particular Matthews and Tatsuzuki, does not mandate a singular technique
for combining those references that precludes consideration of other such

5
We are not persuaded by PPC’s argument that Dr. Mroczkowski’s opinions
should be accorded “little to no weight,” because Dr. Mroczkowski indicated
that his experience is not directed specifically to the design and operation of
the particular connectors associated, in some respect, with PPC’s patents.
See PO Resp. 11. The record reflects that Dr. Mroczkowski has
considerable background and experience relevant to the connector industry.
See, e.g., Ex. 1007. There is no requirement that a witness must have
personal familiarity with a particular product to provide meaningful
testimony as to the perspective of one of ordinary skill in a particular art or
technological field. See, e.g., SEB S.A. v. Montgomery Ward & Co., Inc.,
594 F.3d 1360, 1373 (Fed. Cir. 2010).

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techniques. Indeed, the evidence of record reflects that a person of ordinary
skill in the art knew of other techniques for positioning a continuity member
between a body and post of a coaxial connector. For instance, as noted
above, upon being questioned about the Bence ’990 patent during cross-
examination, Dr. Eldering testified that it was known in the art that a
continuity member may be “sandwiched” between such a body and post.
Ex. 2076, 190:16–21.
Although the Bence ’990 patent is not a reference that has been
offered by Corning as forming a part of a proposed ground of unpatentability
in this proceeding, it is a reference providing evidence of the level of
ordinary skill in the art. “The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant prior art.” In re
GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc.
v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). As noted
above, the level of ordinary skill in the art is reflected by the prior art of
record. What is described by the Bence ’990 patent is indicative of the level
of ordinary skill in the art. Furthermore, “the knowledge of such an artisan
is part of the store of public knowledge that must be consulted when
considering whether a claimed invention would have been obvious.”
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
According to the Supreme Court, “[w]hen there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR, 550
U.S. at 421 (2007). In this case, there is a design need to solve a problem,
i.e., Tatsuzuki provides evidence that its disc-shaped spring 13 operates to
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establish electrical connection between components in a coaxial cable
connector as a part of an arrangement that is intended to address
“deterioration of insertion loss characteristics and reflection loss
characteristics even in the state when the coaxial plug is loosened” (Ex. 1002
¶ 7). There also is a finite number of identified, predictable solutions, i.e.,
the Bence ’990 patent, Matthews, and Tatsuzuki provide evidence that one
of ordinary skill in the art would have known that there is not a sole position
or location recognized for positioning a continuity member in a coaxial cable
connector; however, there are a limited number of possible positions for
such a continuity member (Exs. 2024, 1004, and 1022). As such, an
ordinarily skilled artisan would have had reason to pursue known options
within his or her technical grasp when contemplating where, and how, to
position Tatsuzuki’s disc-shaped spring 13 in Matthews’s connector 100.
In considering the entirety of the record, we are persuaded that
Tatsuzuki’s disc-shaped spring 13 forms a “continuity member” as required
by the claims of the ’320 patent. We also are satisfied that one of ordinary
skill in the art would have appreciated reasonably that such a spring may be
arranged in the coaxial connector of Matthews so as to form a continuity
member or electrical continuity member positioned to contact nut, post, and
body components of a coaxial cable connector in the manner required by the
claims. In that respect, instead of presenting reasoning that is speculative or
impermissible hindsight, as is argued by PPC, Corning has articulated
reasoning with rational underpinnings in urging that an ordinarily skilled
artisan would have incorporated Tatsuzuki’s disc-shaped spring 13 into
Matthews’s connector 100 so as to harness the electrical connectivity
benefits attributed to Tatsuzuki’s spring arrangement.
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Based on the record before us, Corning has presented sufficient
evidence to support a finding that the feature of claims 9, 17, and 32 are
taught by the combination of Matthews and Tatsuzuki.
C. Secondary Considerations
In its Patent Owner Response, in addition to the contentions discussed
above, PPC argues that secondary considerations, including long-felt but
unsolved need (PO Resp. 33–35), failed attempts by Corning (id. at 35–40),
copying by Corning (id. at 31–33, 40–47), and commercial success (id. at
47–53), “clearly establish the non-obviousness of the claims at issue.” Id. at
31. In support, PPC relies on, inter alia, Declaration and cross-examination
testimony of Mr. Burris (Exs. 2019, 2020), as well as Declarations of Mr.
David Jackson, Vice President, General Manager of PPC (Ex. 2072), and Dr.
Eldering (Ex. 2074), among other evidence.
1. Long-felt But Unsolved Need
PPC contends that the problem addressed by its patents “is that ‘often
connectors are not properly tightened or otherwise installed to the interface
port and proper electrical mating of the connector with the interface port
does not occur.’” PO Resp. 34 (quoting Ex. 1001 1:41–44). PPC contends
that it “solved this problem such that continuity was established even if the
connector was only loosely connected to the port.” Id. (citing Ex. 2074
¶ 112). PPC further contends that Corning’s expert witness, Dr.
Mroczkowski acknowledged that the problem existed for decades before
2009, and that Mr. Burris indicated that he spent several years working
unsuccessfully on a continuity member design for Corning’s UltraRange
connector (lacking a continuity member), before he developed Corning’s
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UltraShield connector (including a continuity member) in 2010. Id. at 35,
31–33.
Based on the record before us, we are persuaded that coaxial
connectors known in the art before 2009 had “solved” PPC’s asserted “long-
felt” need for connector continuity “even if the connector was only loosely
connected to the port.” For example, the Bence ’990 patent (Ex. 1038, Ex.
2024), which issued in 2006, disclosed a connector having a “grounding
member,” i.e., a continuity member, placed between a coupler/nut and post.
Exs. 1038, 2024, Abstract; Ex. 2076, 190:16–21. As noted by Corning (Pet.
Reply 16), in relation to such a connector, the Bence ’990 patent states that
an “electrical grounding path is maintained between the coupler and the
tubular post whether or not the coupler is tightly fastened to the appliance.”
Exs. 1038, 2024, Abstract. Likewise, as discussed above, Tatsuzuki, which
published in 2002, disclosed a connector that included disc-shaped spring
13, which provided an “electrical connection” between plug body 11 and
rotary mounting element 12 of the connector. Ex. 1002, Abstract, ¶ 17; see
Ex. 1006 ¶ 36. Tatsuzuki states that it provides “a coaxial plug without
deterioration of insertion loss characteristics and reflection loss
characteristics even in the state when the coaxial plug is loosened.” Ex.
1002 ¶ 7.
2. Failed Attempts by Corning
PPC contends that from September 2008 until March 2010, Mr.
Burris, an employee of Corning, attempted, but failed, “to incorporate a
continuity member into the UltraRange connector.” PO Resp. 35. During
this time, according to PPC, Corning developed a number of different
concept designs for providing a continuity member in the UltraRange
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connector, but either Corning did not move forward with such designs, or
did not pursue the designs commercially, or the designs “failed” Corning’s
continuity test. Id. at 36–40. PPC contends that prior to March 2010, Mr.
Burris was aware of Matthews, his own Bence ’990 patent (Ex. 1038; Ex.
2024) and the UltraEase continuity member design, but nonetheless “still
went through dozens of failed and widely differing concepts for several
years.” Id. at 40. According to PPC, in March 2010, it was “only after
seeing PPC’s design that Mr. Burris was able to design the copied
UltraShield connector.” Id. at 39–40.
Corning responds that PPC relies only on Corning’s alleged Research
and Development efforts, not efforts by any other industry participant.
Corning also contends that it chose not to implement a number of Mr.
Burris’s designs from 2008 to 2010 for reasons unrelated to a “failure” of
design, such as manufacturing costs. In addition, Corning contends that
certain of Mr. Burris’s designs “failed” Corning’s test (the “Argentina” test),
which measured noise, and not necessarily continuity, citing deposition
testimony by PPC’s expert witness, Dr. Eldering. Pet. Reply 16–17 (citing
Ex. 2078, 60:25–61:15).
The record before us indicates that Corning prepared connectors with
continuity members that maintained electrical continuity in the September
2008 to March 2010 time frame, even if Corning did not sell such
connectors to customers for whatever reason. Although some designs may
have “failed” the “Argentina” test, as PPC notes, evidence cited by PPC
indicates that other designed connectors passed the test. PO Resp. 36
(referring to Corning’s “fifteen different concepts for providing a continuity
member in the UltraRange connector,” citing Ex. 2036, 2); see Ex. 2036, 2
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(indicating that some passed and some failed the Argentina test)). For
example, contrary to PPC’s contention that “RC-1350-1 Rev 01” failed (PO
Resp. 36), the cited “Test Matrix” chart indicated that this design presented
“[s]ome impr[ovement] over current prod[uct]” during the test. Ex. 2036, 2.
In addition, the same evidence indicates that designs, such as “RC-1350-50
Rev 02,” “RC-1350-70,” and “RC-1350-80,” among others, passed the
Argentina test in 2009. Id.; see also Ex. 2034, 25 (stating that RC-1350-50
“did well” in Argentina test in August 2009), 31 (stating that RC-1350-90
“yielded acceptable results” in Argentina test and that “connector was ‘well
behaved’” in October 2009), 37 (stating that RC-1350-150 “performed well
clear up until it threaded off the mating port” in November 2009).
Thus, although evidence indicates failure of some Corning connector
designs including a continuity member developed before April 2010, some
designs did work as connectors, even if Corning did not pursue those designs
commercially for reasons such as “production expense” or “difficulty in
turning the nut” (Pet. Reply 17).
3. Copying by Corning
PPC contends that Mr. Burris copied PPC’s product, i.e., PPC’s EX
Plus SignalTight design, when designing Corning’s UltraShield connector.
PO Resp. 40–47. Specifically, PPC contends that Mr. Burris knew of PPC’s
design when he developed the UltraShield connector in April-June 2010. Id.
at 42. PPC contends that in initial designs, Mr. Burris “placed the continuity
member on the forward side of the internal lip of the nut as it had been in the
UltraEase connector.” Id. Thereafter, when that “continuity member
failed,” “Mr. Burris claims that he moved the continuity member for the first
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time to the rearward side of the lip of the nut in the May–June 2010
timeframe as part of the project RC-1350-350.” Id. at 42–43.
According to PPC, “Mr. Burris admitted that he had seen the PPC EX
Plus with Signal Tight design in an email prior to April 2010, directly
contradicting his earlier sworn declaration,” citing a transcript from a
deposition of Mr. Burris (Ex. 2019, 179:3–180:8, 191:6–192:2), as well as a
March 1, 2010, e-mail sent by a Corning sales representative to Corning
executive David Johnson and Mr. Burris’s co-inventor Mr. Lutz (Ex. 2048).
PO Resp. 43. PPC also cites a March 31, 2010 e-mail sent by Mr. Johnson
to Mr. Burris and Mr. Lutz attaching a “‘new ad showing the PPC
Continuity Connector’” (Ex. 2053). Id. at 44. PPC contends that “Mr.
Burris agreed” that the ad showed the continuity member as located between
the post and body on the rearward side of the internal lip of the nut, as
eventually implemented in Corning’s UltraShield connector. Id. at 44–45.
(citing Ex. 2019 189:16–191:5; Ex. 2053; Ex. 2074 ¶ 114).
According to PPC, Mr. Burris also admitted during cross-examination
that he and others at Corning would obtain PPC connector samples, and then
test, cross-section, and/or disassemble the connectors to “see how the
connector is designed” and “to see what they’re doing.” Id. at 45 (citing Ex.
2019, 25:20–28:8). PPC further contends that on June 1, 2010, Mr. Lutz
sent an e-mail to William McDade, copying Mr. Burris, requesting the
testing of PPC EX Plus connector samples obtained by Mr. Lutz. Id. (citing
Ex. 2054). PPC also contends that in an e-mail dated June 21, 2010,
Corning’s salesperson indicated that other PPC EX Plus connectors were
being sent overnight to Mr. Lutz. Id. at 46 (Ex. 2052). Thereafter, on June
25, 2010, according to PPC, “Mr. Burris reported completing the design of
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the RC-1350-350 design which led to the UltraShield design.” Id. at 47.
Based on such evidence, PPC contends that “Mr. Burris admitted that it was
likely that he did see samples of the PPC’s embodiment of the PPC patents
in June 2010,” before he designed Corning’s UltraShield connector. Id. at
46 (citing (Ex. 2019, 194:15–198:13; Ex. 2061, 49:12–24, 51:1–52:15).
Corning responds that PPC does not establish copying because
Corning’s “UltraShield connector is fundamentally different from [PPC’s]
SignalTight connector in numerous respects.” Pet. Reply 17–18. In
addition, Corning suggests that the evidence fails to establish that Mr. Burris
saw the SignalTight connector before he designed the UltraShield connector.
Id. at 18. Also, even assuming Mr. Burris saw the PPC advertisement for
the EX Plus Signal Tight Connector, Corning contends that PPC’s expert
witness, Dr. Eldering, “admitted that ‘[i]t would be hard to draw an accurate
drawing of that continuity member’” from the figure in the advertisement.
Id. (citing Ex. 2077, 273:5–10; Ex. 2053).
Based on the record before us, we are persuaded that there is
sufficient evidence indicating that developers at Corning, including Mr.
Burris, saw and studied PPC EX Plus products just before Corning
developed its final design, RC-1350-350, in April 2010. There also is
sufficient evidence indicating that Corning later sold its final design as the
UltraShield connector, which included a continuity member between the
post and body on the rearward side of the internal lip of the nut. We are
persuaded that PPC has provided some evidence of copying by Corning of
PPC’s EX Plus SignalTight design, in relation to the challenged claims.
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4. Commercial Success
PPC contends that its “flagship SignalTight series connectors” are
commercial embodiments of the coaxial connectors recited in the challenged
claims, citing Declarations by Mr. Jackson (Ex. 2072) and Dr. Eldering
(Ex. 2074). PO Resp. 48 (citing Ex. 2072 ¶¶ 12–13, 26–28; Ex. 2074 ¶
116). Specifically, PPC and its witnesses state that the SignalTight
connectors use a continuity member that “(a) makes consistent contact with
the post and the nut of the connector while extending between a portion of
the post and a portion of the body to maintain or extend electrical continuity
between the post and the nut on the rearward side of the internal lip of the
nut,” and/or “(b) extends between a portion of the post that is configured or
shaped to fit the portion of the body and makes consistent contact with the
post to maintain or extend electrical continuity between the post and the
nut,” as recited in certain elements of the challenged claims. Id.; Ex. 2072 ¶
27; Ex. 2074 ¶ 116.
In addition, PPC contends that “Corning’s UltraShield connectors
constitute a copy of PPC’s SignalTight connectors in all material respects.”
PO Resp. 49 (citing Ex. 2072 ¶¶ 22–23, 26–28; Ex. 2074 ¶ 117). In more
specific support, PPC cites Mr. Jackson’s Declaration, which presents
photographs of a SignalTight connector and an UltraShield connector, with
added arrows pointing the continuity member in each connector. Ex. 2072
¶ 22. Thus, as with its own product, PPC infers that Corning’s UltraShield
connectors use a continuity member that contacts and/or maintains electrical
continuity between the post, nut, and body as recited in certain elements of
the challenged claims. Id.
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Such statements and evidence, even if accurate, however, do not show
sufficiently that PPC’s SignalTight connectors or Corning’s UltraShield
connectors meet all elements of the challenged claims at issue here. Thus,
the evidence cited by PPC fails to show that a relevant marketed product
embodies all claimed features at issue. Brown & Williamson Tobacco Corp.
v. Philip Morris Inc., 229 F. 3d 1120, 1130 (Fed. Cir. 2000) (stating the
presumption that commercial success is due to the patented invention applies
“if the marketed product embodies the claimed features, and is coextensive
with them”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed.
Cir. 2006). Consequently, we cannot presume nexus between any asserted
commercial success and what is recited in the challenged claims. Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988) (stating that a “prima facie case of nexus is generally made out when
the patentee shows both that there is commercial success, and that the thing
(product or method) that is commercially successful is the invention
disclosed and claimed in the patent”).
In addition, in relation to evidence of commercial sales and market
share, PPC discusses sales of PPC’s SignalTight connectors, Corning’s
UltraShield connectors, and PPC’s “non-continuity EX connectors.” PO
Resp. 50–52. In this context, PPC asserts that “[i]n only three years, the
percentage of non-continuity EX connectors sold by PPC has decreased
steadily and dramatically—93% of PPC’s connector sales are now of
SignalTight connectors.” Id. at 51 (referring to $50 million in revenue in
2013). PPC contends that the “SignalTight’s Market Share” has grown
from 0% to approximately 67%. Id. PPC also contends that SignalTight
connectors are sold at a premium, i.e., “have been sold for approximately
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16% more than PPC’s comparable, non-continuity EX connectors.” Id. at
52. In addition, PPC contends that the “market share of Corning‟s
UltraShield connectors has similarly grown, and is now approximately
15%.” Id. Thus, according to PPC, the total market share of “products
constituting commercial embodiments of the PPC patents has gone from
zero to 82% in only three years.” Id.
Even assuming such statements and comparison are accurate, we are
not persuaded that PPC presents sufficient evidence of the market share of
PPC’s SignalTight and Corning’s UltraShield connectors in relation to all
relevant connectors commercially sold in the time frame discussed by PPC.
For example, PPC’s “SignalTight’s Market Share” graph seems to imply that
PPC’s relevant connector market share before 2009 was zero, i.e., that PPC
did not sell a relevant axial connector to anyone before 2009. Resp. 52; Ex.
2072 ¶¶ 18–21. That implication, however, is undermined by evidence cited
by PPC. Ex. 2072 ¶ 19 (presenting a chart depicting sales of EX connector
units in 2009 as higher than sales of SignalTight connector units in 2013).
Furthermore, it is apparent from the record that the relevant “market”
includes connectors that do not have a continuity member. Indeed, PPC’s
own expert, Mr. Jackson, assesses market share including percentages and
product sales for products that do not have a continuity member, i.e., the EX
connectors. See, e.g., Ex. 2072 ¶¶ 18–21. In that respect, and as noted
above, Mr. Jackson testifies that PPC sold the same, if not more, EX
connectors in 2009, before PPC’s SignalTight connector was introduced,
than the number of SignalTight connectors sold in 2013. Ex. 2072 ¶ 19
Thus, as between EX connectors and SignalTight connectors, PPC’s market
share either remained the same, or slightly decreased from 2009 to 2013.
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Likewise, when discussing percentage of sales, or how SignalTight
connectors “are sold at a premium,” PPC only considers a comparison to one
product, PPC’s own EX connector, which lacks a continuity member. PPC
provides no evidence regarding sale percentages or sales “at a premium” in
relation to all coaxial connectors (with or without a continuity member, and
regardless of position of the continuity member, if present) purchased by
multiple system operators from 2009 to 2013, for example. The cited
evidence does not show adequately a significant market share relative to all
competing connectors sold, i.e., the overall relevant market. In re Applied
Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (“An important
component of the commercial success inquiry in the present case is
determining whether Applied had a significant market share relative to all
competing pads based on the merits of the claimed invention, which Applied
did not show”). Moreover, we cannot tell from the record before us whether
the asserted “commercial success” of PPC’s SignalTight connectors (or
Corning’s UltraShield connectors) might have been due to a pre-existing
market share in the coaxial connector market, providing an advantage when
promoting newer products over existing ones.
Similarly, PPC does not explain how an e-mail exchange between
Corning sales employees and buyers (e.g., Comcast) establishes that
Corning’s UltraShield connector “was different from and superior to its non-
continuity UltraRange connector” for any reason beyond the fact that
Corning’s UltraShield connector included a continuity member at all, while
Corning’s pre-existing UltraRange connector lacked one at any location. PO
Resp. 50 (citing Ex. 2056). Again, PPC’s contentions and cited evidence in
this regard do not address adequately commercial sales or market share
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relative to all competing connectors sold, i.e., the overall relevant market, as
relevant to a product assembled according to methods coextensive with the
challenged claims.
In addition, PPC’s contentions and cited evidence do not explain
sufficiently the nexus between the subject matter of the challenged claims
and the asserted commercial success of the SignalTight and UltraShield
connectors. Even assuming such connectors enjoyed commercial success
over connectors that lacked a continuity member, PPC does not clarify how
that commercial success was due to features recited in the challenged claims
(e.g., a continuity member in a specific location) rather than features (e.g., a
continuity member) expressly described in the prior art, such as in Matthews
and the Bence ’990 patent. “[I]f the commercial success is due to an
unclaimed feature of the device,” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco, 463 F.3d at 1312.
5. Discussion—All Asserted Evidence of Secondary Considerations
For the reasons discussed above, we are not persuaded by PPC’s
contentions and cited evidence regarding a long-felt but unsolved need, or
failed attempts by Corning. Likewise, PPC’s contentions and evidence
regarding commercial success are less than persuasive. PPC’s strongest
position regarding secondary considerations pertains to copying by Corning
of at least one relevant aspect of PPC’s SignalTight connectors. As noted by
the Federal Circuit, however, “a showing of copying is only equivocal
evidence of non-obviousness in the absence of more compelling objective
indicia of other secondary considerations.” Ecolochem, Inc. v. S. California
Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000). For the reasons
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discussed above, we determine the record before us lacks sufficient evidence
in relation to other asserted objective indicia of non-obviousness. We have
considered the entirety of the evidence, both Corning’s strong evidence of
obviousness and PPC’s asserted objective evidence of non-obviousness. On
balance, we determine that a preponderance of the evidence supports a
conclusion that claims 9, 17, and 32 of the ’320 patent would have been
obvious over Matthews and Tatsuzuki.
D. Motion to Exclude
In its Motion to Exclude, PPC seeks to exclude certain portions of the
deposition testimony of Mr. Burris (Ex. 2019, 180:5–8, 189:22–23, 235:12–
16), as well as certain portions of a Declaration from Mr. Burris (Ex. 2020
¶¶ 4, 16), because these statement made by Mr. Burris allegedly constitute
hearsay, in violation of Federal Rule of Evidence 802. Mot. to Exclude 1.
As we indicated previously, Corning opposes PPC’s Motion to Exclude, and
PPC filed a Reply to Corning’s Opposition to its Motion to Exclude.
At the outset, we observe that the content that PPC seeks to exclude
was introduced into this proceeding by PPC. See Paper 39, 4. The fact that
PPC introduced and relied on Mr. Burris’s deposition testimony means PPC
may not bar similar use of that evidence by Corning. In any event, when
determining whether Corning copied PPC’s EX Plus SignalTight design,
i.e., the coaxial cable connector embodied in the challenged claims, we only
relied upon Exhibit 2019 to the extent it was asserted by PPC—not by
Corning. With respect to Exhibit 2020, we did not rely upon it when
addressing PPC’s arguments regarding long-felt but unsolved need, failed
attempts by Corning, copying by Corning, and commercial
success. Accordingly, we deny PPC’s Motion to Exclude.
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E. Motions to Seal
On March 26, 2014, PPC filed redacted and unredacted versions of its
Patent Owner Response (Papers 30 and 31), along with an initial Motion to
Seal (Paper 28). After multiple discussions between the parties and the
panel regarding what materials, if any, should be subject to a Motion to Seal,
we withdrew PPC’s initial Motion to Seal, authorized PPC to file a Revised
Motion to Seal, and authorized Corning to file a Response to the Revised
Motion to Seal. Paper 36. On April 17, 2014, PPC filed a Revised Motion
to Seal (Paper 40) that seeks to seal certain portions of its Patent Owner
Response, as well as certain portions of the supporting evidence PPC relied
upon in its Patent Owner Response (Exs. 2019, 2020, 2025, 2026, 2030,
2031, 2034–2039, 2042, 2044, 2045, 2047, 2048, 2050–2054, 2056, and
2072). On April 21, 2014, Corning filed a Response to the Revised Motion
to Seal that seeks to explain why certain portions of the evidence relied upon
by PPC in its Patent Owner Response contains Corning’s confidential
information. Paper 41.
On May 16, 2014, PPC filed a Second Motion to Seal that seeks to
seal certain portions of Exhibit 2075 and 2079. Paper 43. Exhibit 2079
includes the transcript of Dr. Eldering’s deposition taken on April 25, 2014,
and Exhibit 2075 includes a timeline of facts that purportedly are undisputed
regarding how Corning copied the coaxial cable connector embodied in the
claims at issue in this proceeding. Also on May 16, 2014, Corning filed
redacted and unredacted versions of its initial Reply to the Patent Owner
Response, along with a Motion to Seal that seeks to seal certain portions of
its initial Reply and certain portions of the supporting evidence Corning
relied upon in its initial Reply. Paper 45. On June 23, 2014, based on a joint
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proposal from the parties, we dismissed Corning’s Motion to Seal. Paper 49.
We expunged the redacted and unredacted versions of its initial Reply, along
with the supporting evidence relied upon therein that Corning originally
requested to be sealed. Id. We also authorized Corning to file a substitute
Reply to the Patent Owner Response and substitute exhibits. Id.
On July 9, 2014, PPC filed a Third Motion to Seal that seeks to seal
Exhibits 2084 and 2085. Paper 59. Exhibits 2084 and 2085 include
mechanical drawings of PPC’s coaxial cable connector embodied in the
patent claims at issue in this proceeding. On July 21, 2014, PPC filed a
Fourth Motion to Seal that seeks to seal certain portions of Exhibit 2092.
Paper 69. Exhibit 2092 included PPC’s demonstrative exhibits that it
intended to use at oral argument. On July 23, 2014, we dismissed PPC’s
Fourth Motion to Seal. Paper 72. We explained that the oral argument in
this proceeding is open to the public and, therefore, no confidential
information should be included in the demonstrative exhibits filed by either
Corning or PPC. Id. We expunged Exhibit 2092 and authorized PPC to file
a new set of demonstrative exhibits. Id.
There is a strong public policy in favor of making information filed in
an inter partes review open to the public, especially because the proceeding
determines the patentability of claims in an issued patent and, therefore,
affects the rights of the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
§ 42.14, the default rule is that all papers filed in an inter partes review are
open and available for access by the public; a party, however, may file a
concurrent motion to seal and the information at issue is sealed pending the
outcome of the motion. It is, however, only “confidential information” that
is protected from disclosure. 35 U.S.C. § 316(a)(7); see Trial Practice
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Guide, 77 Fed. Reg. at 48,760. The standard for granting a motion to seal is
“for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the
burden of proof in showing entitlement to the requested relief, and must
explain why the information sought to be sealed constitutes confidential
information. 37 C.F.R. § 42.20(c). Before PPC filed its initial Motion to
Seal, we reminded the parties that confidential information filed under a
motion to seal will become public if identified in this Final Written
Decision. Paper 27, 3 (citing Trial Practice Guide, Fed. Reg. 48,761).
We have reviewed the unredacted version of the Patent Owner
Response (Paper 31), as well as Exhibits 2019, 2020, 2025, 2026, 2030,
2031, 2034–2039, 2042, 2044, 2045, 2047, 2048, 2050–2054, 2056, 2072,
2075, 2079, 2084, 2084, and 2085 and we are persuaded that good cause
exists to have some, but not all, these documents remain under seal. The
redacted portions of the Patent Owner Response and the aforementioned
Exhibits contain confidential information pertaining to either PPC’s business
or Corning’s business, and are narrowly tailored to redact only confidential
information. However, in the Secondary Considerations section above, we
discuss Exhibits 2019, 2034, 2036, 2048, 2052–2054, 2056, and 2072. For
instance, we substantively rely on Exhibits 2034 and 2036 to refute PPC’s
contentions regarding failed attempts by others, Exhibits 2019, 2048, and
2052–2054 when favorably considering PPC’s contentions regarding
copying by Corning, and Exhibits 2056 and 2072 to refute PPC’s
contentions regarding commercial success.
Consequently, the unredacted version of the Patent Owner Response
and Exhibits 2020, 2025, 2026, 2030, 2031, 2035, 2037–2039, 2042, 2044,
2045, 2047, 2050, 2051, 2075, 2079, 2084 and 2085 will be maintained
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under seal under the terms of the protective order entered in this
proceeding. See Paper 40, Appendix A. Consistent with our guidance that
confidential information filed under a motion to seal will become public if
identified in this Final Written Decision (Paper 27, 3), as well as the public’s
interest in maintaining a complete and understandable record, Exhibits 2019,
2034, 2036, 2048, 2052–2054, 2056, and 2072 will not be maintained under
seal under the terms of the protective order entered in this proceeding.
III. CONCLUSION
Corning has shown by a preponderance of the evidence that claims 9,
17, and 32 are unpatentable under 35 U.S.C. § 103(a) over Matthews and
Tatsuzuki.
IV. ORDERS
After due consideration of the record before us, it is
ORDERED that claims 9, 17, and 32 of the ’320 patent are held
unpatentable;
FURTHER ORDERED that PPC’s Motion to Exclude is denied;
FURTHER ORDERED that PPC’s Revised Motion to Seal (Paper
40), Second Motion to Seal (Paper 43), and Third Motion to Seal (Paper 59)
are granted-in-part. The unredacted version of the Patent Owner Response
and Exhibits 2020, 2025, 2026, 2030, 2031, 2035, 2037–2039, 2042, 2044,
2045, 2047, 2050, 2051, 2075, 2079, 2084, and 2085 will be kept under the
terms of the Protective Order entered in this proceeding (see Paper 40,
Appendix A). Exhibits 2019, 2034, 2036, 2048, 2052–2054, 2056, and 2072
will not be maintained under seal under the terms of the protective order
entered in this proceeding;
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FURTHER ORDERED that PPC’s Fourth Motion to Seal (Paper 69)
and Corning’s Motion to Seal (Paper 45) are dismissed; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
Certain documents have been sealed in this proceeding, but have not
been relied upon in this Final Written Decision. See supra Section II.E. The
record will be maintained undisturbed pending the outcome of any appeal
taken from this decision. At the conclusion of any appeal proceeding, or if
no appeal is taken, the documents will be made public. See Trial Practice
Guide, 77 Fed. Reg. at 48,760–61. Further, either party may file a motion to
expunge the sealed documents from the record pursuant to 37 C.F.R.
§ 42.56. Any such motion will be decided after the conclusion of any appeal
proceeding or the expiration of the time period for appealing.

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For PETITIONER:
Todd Walters
Roger Lee
Todd.walters@bipc.com
Roger.lee@bipc.com

For PATENT OWNER:

Denis Sullivan
dsullivan@hblaw.com