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

Patent Trial and Appeal Board

Nov 21, 2014

13523668 (P.T.A.B. Nov. 21, 2014)

Trials@uspto.gov Paper 79
571-272-7822 Entered: 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 IPR2013-00340
Patent 8,323,060 B2
____________

Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL R. ZECHER,
Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

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I. BACKGROUND
Petitioner, Corning Optical Communications RF, LLC
1
(“Corning”),
filed an amended Petition requesting an inter partes review of claims 1–9 of
U.S. Patent No. 8,323,060 B2 (Ex. 1001, “the ’060 patent”). Paper 5
(“Pet.”). Patent Owner, PPC Broadband, Inc. (“PPC”), did not file a
Preliminary Response. The Board determined that the information presented
in the Petition demonstrated that there was a reasonable likelihood that
Corning would prevail in challenging claims 1–9 as unpatentable under 35
U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, the Board instituted this
proceeding on November 26, 2013, on the ground that these claims are
unpatentable under 35 U.S.C. § 103(a) over the combination of Matthews
2

and Tatsuzuki.
3
Paper 18 (“Dec.”).
During the course of this proceeding, PPC timely filed unredacted and
redacted versions of a Patent Owner Response (Papers 32 and 33, “PO
Resp.”), a Revised Motion to Seal and proposed Protective Order (Paper 42),
and three additional Motions to Seal (Papers 45, 61, 71), each of which is
subject to the same proposed Protective Order. Corning timely filed a
Response to PPC’s Revised Motion to Seal (Paper 43), its own Motion to
Seal (Paper 47), and a Substitute Reply to the Patent Owner Response
(Paper 54, “Pet. Reply”).

1
During the course of this proceeding, 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 26, 1.
2
Matthews, US 2006/0110977 A1, published May 25, 2006 (Ex. 1004).
3
Tatsuzuki, JP 2002-015823, published Jan. 18, 2002 (Ex. 1033) (English
translation Ex. 1002).
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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 57, “Mot. to
Exclude.” Corning filed an Opposition to PPC’s Motion to Exclude. Paper
63, “Exclude Opp.” PPC filed a Reply to Corning’s Opposition. Paper 67,
“Exclude Reply.”
A consolidated oral hearing was held on July 24 and 25, 2014, in
relation to this proceeding and the following four other related proceedings
involving the same parties: (1) IPR2013-00342; (2) IPR2013-00345; (3)
IPR2013-00346; and (4) IPR2013-00347. Transcripts of the entire
consolidated oral hearing are included in the record. Papers 76–78. In
particular, Paper 77 (“Tr.”) corresponds to the transcript from the first
session of the consolidated oral hearing, held the morning of July 24, 2014,
and pertains to this proceeding and IPR2013-00345.
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 1–9 of the ’060 patent. For the reasons discussed
below, Corning has demonstrated by a preponderance of the evidence that
these claims are unpatentable under 35 U.S.C. § 103(a). PPC’s Motion to
Exclude is denied.
A. Related Matters
Corning indicates that PPC asserted the ’060 patent against it in PPC
Broadband, Inc. v. Corning Gilbert Inc., 5:12-cv-0911-GLS-DEP, which
was filed in the United States District Court for the Northern District of New
York. Pet. 1. In addition, Corning filed five other petitions seeking inter
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partes review of the following patents owned by PPC: (1) the ’060 patent
(IPR2013-00342); (2) U.S. Patent No. 8,313,353 B2 (“the ’353 patent”)
(IPR2013-00343 and IPR2013-00345); and (3) U.S. Patent No. 8,287,320
B2 (IPR2013-00346 and IPR2013-00347). Id. at 1–2.
On April 15, 2014, we granted PPC’s request in IPR2013-00343 to
cancel claims 1–6 of the ’353 patent, 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’060 Patent
The’060 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, 1:18–22.
Figure 1 of the ’060 patent, reproduced below, illustrates a cut-away view of
the elements of coaxial cable connector 100 having electrical continuity
member 70. Id. at 2:53–56, 5:66–6:1.

As shown in Figure 1 of the ’060 patent, coaxial cable connector 100
may be affixed, or functionally attached, to coaxial cable 10 that includes
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protective outer jacket 12, conductive grounding shield 14, interior dielectric
16, and center conductor 18. Ex. 1001, 6:1–5. 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. Id. at 7:10–16.
The ’060 patent discloses that post 40 includes first forward end 41,
opposing second rearward end 42, and flange 44 located at first forward end
41. Ex. 1001, 8:5–10. 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 8:17–21.
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 8:66–9:9. The internal surface of post
mounting portion 57 includes an engagement feature, 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 9:9–14.
The ’060 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.
Ex. 1001, 7:17–26. In one embodiment, continuity member 70 includes first
end 71, axially opposing second end 72, and post contact portion 77. Id. at
11:4–8. When coaxial cable connector 100 is assembled, post contact
portion 77 makes physical and electrical contact with post 40, which, in turn,
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helps facilitate the extension of electrical ground continuity through post 40.
Id. at 11:8–11.
C. Illustrative Claim
Of the challenged claims, claim 1 is the only independent claim.
Claims 2–9 directly or indirectly depend from independent claim 1.
Independent claim 1 is illustrative of the ’060 patent and reproduced below:
1. A connector for coupling an end of a coaxial cable,
the coaxial cable having a center conductor surrounded by a
dielectric, the dielectric being surrounded by a conductive
grounding shield, the conductive grounding shield being
surrounded by a protective outer jacket, the connector
comprising:
a post including a forward post end, a rearward post end,
and a flange having a forward facing flange surface, a rearward
facing flange surface, a lip surface extending from the rearward
facing flange surface, and a continuity post engaging surface
extending from the lip surface, wherein the rearward post end is
configured to be inserted into an end of the coaxial cable
around the dielectric and under at least a portion of the
conductive grounding shield thereof to make electrical contact
with the conductive grounding shield of the coaxial cable;
a connector body having a forward body end, a rearward
body end, and a continuity body engaging surface configured to
fit the continuity post engaging surface of the flange of the post
when the connector body is positioned around a portion of the
post;
a coupler configured to rotate relative to the post and the
connector body, the coupler including a forward coupler end
configured for fastening to an interface port and to move
between a partially tightened coupler position on the interface
port and a fully tightened coupler position on the interface port,
a rearward coupler end, and an internal lip having a forward
facing lip surface facing the forward coupler end and
configured to rotate relative to the rearward facing flange
surface of the post and allow the post to pivot relative to the
coupler, a rearward facing lip surface facing the rearward
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coupler end, and an intermediate surface between the forward
facing lip surface and the rearward facing lip surface, the
intermediate surface configured to fit the lip surface of the
flange of the post that extends from the rearward facing flange
surface of the flange of the post; and
a continuity member disposed only rearward of the
forward facing lip surface of the internal lip of the coupler, the
continuity member having a continuity based portion extending
between the continuity post engaging surface of the post and
the continuity body engaging surface of the connector body,
and a continuity contact surface configured to be biased against
the rearward facing lip surface of the internal lip of the coupler
so as to maintain electrical continuity between the coupler and
the post when the coupler is in the partially tightened position
on the interface port, even when the coupler is in the fully
tightened position on the interface port, and even when the post
moves relative to the coupler.
Ex. 1001, 20:57–21:39.

II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe a claim by applying the
broadest reasonable interpretation in light of the specification of the patent in
which it appears. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
1. “pivot” (claim 1)
In its Petition, Corning contends that the claim term “pivot” should be
construed as “the rotational movement of the post relative to the coupler
about the longitudinal axis of the connector.” Pet. 6 (citing Ex. 1001, 8:2–
4). In the Decision to Institute, we disagreed with Corning’s overly narrow
claim construction of the claim term “pivot,” and instead construed this
claim term as “including rotating.” Dec. 7–9 (citing Ex. 1001, 8:2–4, 16:12–
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15, 18:1–3; Ex. 1009, 43). PPC does not propose an alternative claim
construction for this claim term in its Patent Owner Response, nor does
Corning challenge our claim construction in its Reply. We discern no reason
to alter our claim construction for this Final Written Decision.
2. “the body” (claim 3)
In its Petition, Corning contends that there is a lack of antecedent
basis for “the body,” as recited in dependent claim 3. Pet. 6. Claim 3
directly depends from independent claim 1, which recites “a connector
body.” Ex. 1001, 21:6. Therefore, Corning proposes that the claim term
“the body” should be construed to mean “the connector body.” Pet. 6. In
the Decision to Institute, we adopted Corning’s claim construction for
dependent claim 3 because “a connector body,” as recited in independent
claim 1, provides sufficient antecedent basis for “the connector body.”
Dec. 9. PPC does not propose an alternative claim construction for this
claim term in its Patent Owner Response. We discern no reason to alter our
claim construction for this Final Written Decision.
3. “the continuity member having a continuity base portion extending
between the continuity post engaging surface of the post and the
continuity body engaging surface of the connector body and a
continuity contact surface configured to be biased against the
rearward facing lip surface of the internal lip of the coupler so as to
maintain electrical continuity between the coupler and the post”
(claim 1)

In its Patent Owner Response, PPC contends that the aforementioned
claim limitation should be construed to require that “the continuity member
makes consistent contact with the coupler/nut and the post to maintain a
continuous electrical connection between the coupler/nut and the post.” PO
Resp. 18. To support its claim construction, PPC directs us to various
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portions of the Specification of the ’060 patent, a dictionary definition of
“continuity,” and the testimony of its expert, Dr. Charles A. Eldering. Id. at
17–18 (citing Ex. 1001, 13:15–20, 13:46–51, 14:25–35, 15:9–15, 16:10–22,
18:58–65, 19:1–4, 19:21–26, 20:31–35, Fig. 50; Ex. 2071, 6; Ex. 2074
¶¶ 75–78).
In response, Corning contends that independent claim 1 does not
require “consistent contact” and a “continuous electrical connection.” Pet.
Reply 6 (citing Ex. 1001, 20:57–21:39). Corning argues that PPC’s
proposed claim construction improperly imports limitations from the
specification into the claims. Id. at 6–7. Corning also argues that, when
applying the broadest reasonable construction standard, the claim 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 ’060 patent acted as their
own lexicographer and provided a special definition in the Specification of
the ’060 patent for the claim term “continuity member” that is different from
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its recognized meaning to one of ordinary skill in the art. Absent a special
definition set forth in the Specification in the ’060 patent, we decline to
import limitations into the disputed claim limitation that would require the
“continuity member” to make “consistent contact” with the coupler/nut and
the post 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 coupler/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 coupler/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 coupler/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 limitation to require that the continuity member need only
make contact with the coupler/nut and the post to establish an electrical
connection there-between.

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4. “configured to fit” (claim 1)
In its Patent Owner Response, PPC contends that a surface
“configured to fit” another surface should be construed as requiring that one
surface “has a complementary size and shape as, and faces” the other
surface. PO Resp. 23 (citing Ex. 2071, 8; Ex. 2074 ¶¶ 92–95). During oral
argument counsel for PPC elaborated that, in requiring components that
“face” one another, “configured to fit” excludes surfaces that are strictly
perpendicular to one another, i.e., arranged at a right angle or 90 degree
angle to one another. E.g., Tr. 60–64. Counsel for PPC further represented
that “configured to fit” does not require surfaces that are “perfectly parallel”
(id. at 71), but, in response to queries from the panel, was unable to convey
the extent of variation from parallel that is encompassed or permitted such
that surfaces remain “configured to fit” one another, yet not parallel (id. at
66–72).
In response, Corning challenges PPC’s proposed claim construction
for the claim phrase “configured to fit.” To that end, pointing in-part to the
cross-examination testimony of its expert, Dr. Robert S. Mroczkowski,
Corning contends that this disputed claim phrase “encompasses both (1)
perpendicular surfaces that abut each other, and (2) parallel surfaces that
face each other.” Pet. Reply 9 (citing Ex. 1036, 159:7–8).
We note that the term “configured to fit” does not appear in the
Specification of the ’060 patent outside of independent claim 1. Although,
as noted by both parties, the Specification of the ’060 patent describes
embodiments of the disclosed invention in which particular portions of a
coaxial cable connector include “opposing complimentary surfaces,” (e.g.,
Ex. 1001, 12:56–59, 17:20–23, 19:49–52, Fig. 50), contrary to PPC’s
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argument (PO Resp. 23), the Specification of the ’060 patent does not
associate such a configuration with the characteristic of being “configured to
fit.” PPC points us to a dictionary definition of “fit” as meaning to be a
“proper size and shape for: These shoes fit me.” Id. (citing Ex. 2071,
8). Both PPC’s expert, Dr. Eldering, and Corning’s expert, Dr.
Mroczkowski, also explain that surfaces shaped to fit one another “need to
be dimensioned to abut each other.” Ex. 1036, 158:20–159:12; Ex. 2074
¶ 93.
In that vein, we understand that surfaces are “configured to fit” one
another if the surfaces are of an appropriate size and shape with respect to
each other, and are dimensioned to abut one another. As noted above, the
parties have differing views as to what extent surfaces, in being sized
appropriately and dimensioned to abut, also must be recognized as facing
each another. In that regard, the dispute centers on whether the surfaces, in
being configured to fit each other, must “face” one another in a manner that
excludes abutment of surfaces that are perpendicular.
It is not apparent to us that surfaces that abut one another, yet are
perpendicular, do not “face” each other to some extent. To that end,
surfaces that abut and touch, but are arranged at a 90-degree angle, while not
directly opposed from one another, are nevertheless in a configuration in
which the faces of the surfaces are exposed to one another. Put another way,
surfaces that are perpendicular to one another are not separated by an obtuse
angle so as to be regarded as diverging from one another. As noted above,
although the Specification of the ’060 patent depicts embodiments of the
invention in which surfaces corresponding to those of the claims appear
parallel to one another, it does not use the phrase “configured to fit” or
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otherwise intrinsically associate such an arrangement as the sole
configuration that constitutes surfaces that “fit” one another. That the
Specification of the ’060 patent depicts embodiments in which portions of a
post and body are arranged parallel to one another does not, by itself,
mandate that singular arrangement as the sole configuration presenting
surfaces that are “configured to fit.” The broadest reasonable construction
of the term includes various positional interrelationships of the surfaces. As
noted above, although PPC maintains that perpendicular surfaces are
excluded from fitting one another, during oral argument, PPC’s counsel was
unable to express cogently how “configured to fit” encompasses surfaces
arranged in a manner that deviates from parallel, but necessarily excludes
perpendicular surfaces.
In considering the totality of the record before us, we conclude that
components or surfaces that are “configured to fit” one another are sized and
dimensioned to abut one another, but that such meaning does not
categorically exclude an arrangement of the components in which they are
situated perpendicularly with respect to one another.
5. “configured to arch away” (claim 8); and “arched above” (claim 9)
In its Patent Owner Response, PPC contends that the claim phrases
“configured to arch away” and “arched above” each require a “smooth,
continuous curve.” PO Resp. 34. To support its claim construction, PPC
directs us to the Specification of the ’060 patent, the cross-examination
testimony of Dr. Mroczkowski, the dictionary definition of “arch,” the
dictionary definition of “curve,” and the testimony of Dr. Eldering. Id. at
17–18 (citing Ex. 1001, 18:45–65, Figs. 43–47, 51, 52; Ex. 1037, 309:8–16,
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310:9–16, 316:21–317:6, 409:13–410:14; Ex. 1035; Ex. 2071, 7; Ex. 2074
¶¶ 101–105).
In response, Corning contends that these claim phrases should be
construed as “extend[ing] from [a] plane in the shape of an arch, and
hav[ing] arched portions above the plane,” however, this configuration does
not preclude a “straight line.” Pet. Reply 14–15. To support its claim
construction, Corning directs us to the cross-examination testimony of Dr.
Mroczkowski, the dictionary definition of “arch,” and the cross-examination
testimony of Dr. Eldering. Id. (citing Ex. 1037, 317:14–16, 411:8–13;
Ex. 1035; Ex. 1056; Ex. 2077, 301:5–303:6).
Although the Specification of the ’060 patent describes embodiments
where a continuity member includes at least one flexibly raised portion
“arched above” or “arch[ed] away from” the disc-like portion of the
continuity member, e.g., Ex. 1001, 18:45–65, Figs. 43–47, 51, 52, there is no
indication that the inventors of the ’060 acted as their own lexicographer and
provide a special definition for the claim phrases “configured to arch away”
and “arched above” that are different from their recognized meanings to one
of ordinary skill in the art. Therefore, we refer to its 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). Because the claim term “arch” is a commonly
understood word, we will rely on a general purpose dictionary in
ascertaining its meaning. See Agfa Corp. v. Creo Prods., Inc., 451 F.3d
1366, 1376 (Fed. Cir. 2006).
THE RANDOM HOUSE COLLEGE DICTIONARY 69 (Revised ed. 1988)
entered into the record by Corning, and referred to by Dr. Mroczkowski in
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his re-direct testimony, defines “arch” as “something bowed or curved; or
any bowlike part.” Ex. 1035. We recognize, however, that a structure that is
“bowed or curved,” or has “any bowlike part,” does not preclude the
structure from also including some straight portions because the shape of
structure, as whole, still would be considered bowed or curved.
Consequently, we construe the claim phrases “configured to arch
away” and “arched above” to cover an elongated structure that includes “a
bowed or curved portion” or “any bowlike part.” We observe that such a
structure may still include some straight portions. This claim construction is
consistent with the ordinary and customary meaning of “arch,” as would be
understood by one with ordinary skill in the art in light of the ’060 patent.
B. 35 U.S.C. § 103(a) Ground of Unpatentability Based on the
Combination of Matthews and Tatsuzuki
In its Petition, Corning contends that claims 1–9 are unpatentable
under 35 U.S.C. § 103(a) over the combination of Matthews and Tatsuzuki.
Pet. 38–57. In support of this asserted ground of unpatentability, Corning
relies upon claim charts to explain how the proffered combination teaches
the claimed subject matter recited in each of these challenged claims, as well
as the Declaration of Dr. Mroczkowski (Ex. 1007 ¶¶ 70–125) to support its
positions. Id.
In its Patent Owner Response, PPC presents the following arguments:
(1) the combination of Matthews and Tatsuzuki does not teach that the
continuity member makes consistent contact with the coupler/nut and the
post to maintain a continuous electrical connection between the coupler/nut
and the post, as required by independent claim 1; (2) the combination of
Matthews and Tatsuzuki does not teach that the continuity body engaging
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surface of the connector body is configured to fit the continuity post
engaging surface of the flange of the post when the connector body is
positioned around a portion of the post, as required by independent claim 1;
(3) Corning’s expert, Dr. Mroczkowski, engaged in impermissible hindsight
reconstruction when combining the teachings of Matthews and Tatsuzuki;
(4) the combination of Matthews and Tatsuzuki does not teach that the
continuity member includes a flexible portion configured to arch away or
above the disc, as required by dependent claims 8 and 9; and (5) evidence of
secondary considerations, on balance, outweighs the evidence supporting
Corning’s asserted grounds of unpatentability based on Matthews and
Tatsuzuki. PO Resp. 16–60.
We begin our analysis with the principles of law that generally apply
to a ground of unpatentability based on obviousness, followed by our
determination regarding the knowledge level of a person with ordinary skill
in the art, as well as brief discussions of Matthews and Tatsuzuki, and then
we address each of PPC’s arguments in turn.
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.
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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)).
We analyze the ground of unpatentability based on the combination of
Matthews and Tatsuzuki with the principles identified above in mind.
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
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. 1007 ¶ 11. 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.
In addition, 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,
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1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86,
91 (CCPA 1978).
3. Matthews
Matthews generally relates to a coaxial cable connector that includes
at least one conductive member. Ex. 1004 ¶ 1. Figure 1 of Matthews,
reproduced below, illustrates a sectional side view of coaxial cable
connector 100. Id. ¶¶ 16, 26.

As shown in Figure 1 of Matthews, 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.
Ex. 1004 ¶ 26. Coaxial cable connector 100 also may include threaded nut
30, post 40, connector body 50, fastener member 60, mating edge conductive
member, e.g., O-ring 70, a connector body conductive member, e.g., O-ring
80, and a means for sealing and coupling connector body 50 and threaded
nut 30. Id. ¶ 28.
Figure 3 of Matthews, reproduced below, illustrates a sectional side
view of post 40. Ex. 1004 ¶¶ 18, 30.
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As shown in Figure 3 of Matthews, post 40 includes first end 42,
opposing second end 44, and flange 46 configured to contact internal lip 36
of threaded nut 30 (illustrated in Figure 2), thereby facilitating the
prevention of axial movement of post 40 beyond contacted internal lip 36.
Ex. 1004 ¶ 30. 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, reproduced below, illustrates a sectional side
view of connector body 50. Ex. 1004 ¶¶ 19, 31.

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As shown in Figure 4 of Matthews, connector body 50 includes first
end 52, opposing second end 54, and internal annular lip 55 configured to
engage surface feature 48 of post 40. Ex. 1004 ¶ 31.
Figure 2 of Matthews, reproduced below, illustrates a sectional side
view of threaded nut 30. Ex. 1004 ¶¶ 17, 29.

As shown in Figure 2 of Matthews, 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. Ex. 1004
¶ 29. Threaded nut 30 may be formed of conductive materials, thereby
facilitating grounding through threaded nut 30. Id.
4. Tatsuzuki
Tatsuzuki generally relates to 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 connector. Id.
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Figures 7(a) and 7(b) of Tatsuzuki, reproduced below, illustrate disc-
shaped spring 13, and related side-view diagram, respectively. Ex. 1002
¶ 17.

As shown in Figures 7(a) and 7(b) of Tatsuzuki, disc-shaped spring 13
is formed by stamp cutout processing of a thin metal plate possessing
elasticity, e.g., phosphor bronze. Ex. 1002 ¶ 17. 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, reproduced below, illustrates a cross-section
view of coaxial plug 1 securely installed in coaxial cable connector 50.
Ex. 1002 ¶ 12.

As shown in Figure 3 of Tatsuzuki, 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-
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shaped part 11c of plug body 11 and rotary mounting element 12 is
facilitated by disc-shaped spring 13 interposed there between. Id. ¶ 17.
Disc-shaped spring 13 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. The Combination of Matthews and Tatsuzuki Collectively Teaches
That the Claimed Continuity Member Makes Contact with the
Coupler/Nut and the Post to Maintain an Electrical Connection
There-Between

Independent claim 1 recites, in relevant part:
the continuity member having a continuity base portion
extending between the continuity post engaging surface of the
post and the continuity body engaging surface of the connector
body and a continuity contact surface configured to be biased
against the rearward facing lip surface of the internal lip of the
coupler so as to maintain electrical continuity between the
coupler and the post.

Ex. 1001, 21:29–35.
In its Petition, Corning contends that Matthews and Tatsuzuki
collectively teach “a continuity member,” as recited in independent claim 1.
Pet. 44–45 (citing Ex. 1004 ¶¶ 28, 34–36, Figs. 1, 7; Ex. 1002 ¶¶ 1, 2, 16,
Figs. 3, 7; Ex. 1007 ¶¶ 84–87, 94, 95). In particular, Corning acknowledges
that, although Matthews discloses that connector 100 includes connector
body conductive member 80, Matthews does not indicate that connector
body conductive member 80 directly contacts post 40 so as to extend
electrical grounding through post 40 and nut 30. See, e.g., id. at 44 (citing
Ex. 1004 ¶ 28, Fig. 1). Corning then relies upon Tatsuzuki’s disc-shaped
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spring 13 that promotes electrical connection between components of
connector 50. Id. at 44–45 (citing Ex. 1002, Fig. 7).
Based on these cited disclosures, Corning asserts that both Matthews’s
connector body conductive member 80 and Tatsuzuki’s disc-shaped spring
13 are positioned rearward of the forward facing lip surface of the internal
lip of the nut. Pet. 50 (citing Ex. 1007 ¶ 88). Corning further asserts that
both Matthews’s connector body conductive member 80 and Tatsuzuki’s
disc-shaped spring 13 maintain conductivity between components of a
connector. Id. Therefore, Corning contends that, because Matthews’s
connector body conductive member 80 and Tatsuzuki’s disc-shaped spring
13 are positioned in the same general location to perform the same function
(id.), it would have been obvious to one with ordinary skill in the art to
modify Matthews’s connector 100 by incorporating Tatsuzuki’s disc-shaped
spring 13 (Pet. 51 (citing Ex. 1004, Figs. 1, 7; Ex. 1007 ¶ 91)).
In its Patent Owner Response, PPC contends this disputed claim
limitation should be construed to require that “‘the continuity member
makes consistent contact with the coupler/nut and the post to maintain a
continuous electrical connection between the coupler/nut and the post.’”
PO Resp. 18. PPC directs us to the cross-examination testimony of Dr.
Mroczkowski, as well as the testimony of Dr. Eldering, to support its
argument that Tatsuzuki’s disc-shaped spring 13 only intermittently contacts
Matthews’s post 40 and, therefore, does not teach the “continuity post
engaging surface,” as recited in independent claim 1. Id. at 18–19 (citing
Ex. 1036, 73:25–74:11, 76:6–11, 76:12–77:4, 96:10–25, 119:25–120:5,
123:11–17, 128:22–131:10; Ex. 2007; Ex. 2074 ¶¶ 80–83).
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In its Reply, Corning contends that when the proper claim
construction is applied, Matthews and Tatsuzuki collectively teach the
disputed claim limitation. Pet. Reply. 10. Corning argues that Figure 3 of
Tatsuzuki illustrates that disc-shaped spring 13 is disposed only rearward of
the forward facing lip surface of the internal lip of the coupler/nut. Id.
(citing Ex. 1007 ¶¶ 87, 88). Corning further argues that, for example,
Tatsuzuki’s disc-shaped spring 13 arranged in Matthews’s connector 100
includes a portion of Tatsuzuki’s disc-shaped spring 13 “‘contact[ing] the
rearward facing surface H2 of the internal lip 36 of the coupler 30 and also
extends between the continuity post engaging surface of the post 40 and the
continuity body engaging surface of the body 50.’” Id. at 10–11 (quoting
Ex. 1007 ¶ 92; citing Ex. 2007; Ex. 2077, 268:2–12). Corning asserts that
Dr. Eldering admitted that the aforementioned embodiment described by
Dr. Mroczkowski satisfies this disputed claim limitation. Id. at 11 (citing
Ex. 1034; Ex. 2077, 356:5–359:2).
As discussed previously, we are not persuaded that PPC’s proposed
claim construction of the claim limitation reproduced above constitutes the
broadest reasonable interpretation. In particular, we are not persuaded that
the independent claim 1 requires a continuity member that makes contact
between the coupler/nut and the post in a manner that is “consistent” and
facilitating only electrical connection that is “continuous,” to the exclusion
of other contact implementations. As we explained previously, applying the
broadest reasonable interpretation standard, we conclude that the continuity
member need only make contact with the coupler/nut and the post to
establish an electrical connection there-between.

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We note that Tatsuzuki discloses a coaxial connector that includes
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, ¶ 17. 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.
Corning explains that Tatsuzuki’s disc-shaped spring 13 constitutes a
continuity member because it promotes electrical connection between
components of coaxial plug 1, particularly plug body 11 and mounting
element 12. Pet. 50. That explanation is echoed by Dr. Mroczkowski.
Ex. 1007 ¶ 86.
During the course of this proceeding, Dr. Mroczkowski explained
possible approaches, from the perspective of one of ordinary skill in the art,
in combining the teachings of the prior art so as to incorporate Tatsuzuki’s
disc-shaped spring 13 into Matthews’s connector 100 in order to harness the
electrical connection benefits of the disc-shaped spring. One such approach
has received extensive evaluation by PPC, and is encompassed by a sketch
provided by Dr. Mroczkowski during depositions taken in connection with
this proceeding. An illustration of this sketch is reproduced below as it has
been presented in the Patent Owner Response.
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PO Resp. 12 (PPC presents an annotated version of Ex. 2007), 19 (PPC
presents a clean version of Ex. 2007 with no annotations).
As offered by PPC, this illustration reproduced above depicts an
opinion of Dr. Mroczkowski as to an implementation of Tatsuzuki’s disc-
shaped spring 13 positioned with respect to coupler/nut 30 and post 40 of
Matthews’s connector 100. Id. at 18–19. In considering the proposed
incorporation of Tatsuzuki’s disc-shaped spring 13 into Matthews’s
connector 100 shown in the illustration reproduced above, we are satisfied
that it establishes a continuity member positioned to make contact with
surfaces of Matthews’s coupler/nut 30 and post 40 in the manner required by
independent claim 1. In that regard, we conclude that Tatsuzuki’s disc-
shaped spring 13, when positioned in the manner depicted, would extend
between, and facilitate electrical connection among, surfaces of a
coupler/nut and a post of a coaxial cable connector. Furthermore, we also
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credit Dr. Mroczkowski’s testimony to that effect. See, e.g., Ex. 1007,
¶¶ 92, 93.
4

6. Matthews Teaches the Claimed Connector Body Having a Continuity
Body Engaging Surface Configured to Fit the Continuity Post
Engaging Surface of the Flange of the Post

Independent claim 1 recites, in relevant part, “a connector body
having . . . a continuity body engaging surface configured to fit the
continuity post engaging surface of the flange of the post when the
connector body is positioned around a portion of the post.” Ex. 1001, 21:6–
10.
In its Petition, Corning contends that Matthews teaches this disputed
claim limitation. Pet. 41 (citing Ex. 1004, figs, 1, 4, 7; Ex. 1007 ¶¶ 77, 78).
In particular, Corning argues that Figure 7 of Matthews illustrates that
connector body 50 includes a continuity body engaging surface. Id.
Corning further argues that Figure 7 of Matthews also illustrates that the
continuity body engaging surface of connector body 50 is configured to fit
the continuity post engaging surface of flange 46 of post 40 when connector
body 50 is positioned around a portion of post 40. Id.

4
We are not persuaded by PPC’s argument that Dr. Mroczkowski’s opinions
should be accorded “little to no weight” because Dr. Mroczkowski has
indicated that his experience is not directed specifically to the design and
operation of the particular connectors associated in some respect to PPC’s
patents. PO Resp. 10–11. The record reflects that Dr. Mroczkowski has
considerable background and experience relevant to the coaxial cable
connector industry. Ex. 1007 ¶¶ 1–4; Ex. 1008. 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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In its Patent Owner Response, PPC contends that a surface
“configured to fit” another surface should be construed as requiring that one
surface “has a complementary size and shape as, and faces” the other
surface. PO Resp. 23. PPC then directs us to Dr. Mroczkowski’s cross
examination testimony, as well as the testimony of Dr. Eldering, to support
its argument that Matthews’s continuity post engaging surface and the
continuity body engaging surface are perpendicular to, and do not face, each
other. Id. at 24 (citing Ex. 1036, 111:11–112:21, 115:13–116:25, 163:2–6,
165:17–23; Ex. 2003, 2; Ex. 2005; Ex. 2006; Ex. 2013, 47, 50, 57; Ex. 2074
¶ 96, 97). PPC asserts that Dr. Mroczkowski’s testimony during cross-
examination, which includes the sketches he produced during the course of
his testimony that represent possible approaches for combining the teachings
of Matthews and Tatsuzuki, confirms that Matthews’s continuity post
engaging surface does not have a complementary size and shape as, and does
not face, the continuity body engaging surface. Id. at 24–25 (citing Ex.
2003, 2; Ex. 2006).
In its Reply, Corning disagrees with PPC’s proposed claim
construction, and instead construes the claim phrase “configured to fit” as
“encompass[ing] both (1) perpendicular surfaces that abut each other, and
(2) parallel surfaces that face each other.” Pet. Reply 11. Corning then
argues that two possible approaches taken by Dr. Mroczkowski during his
cross-examination satisfy its proposed claim construction. Id. at 11–12
(citing Exs. 2005–2007 (illustrating perpendicular surfaces that abut each
other); Exs. 1034, 1039, 2008 (illustrating parallel surfaces that face each
other)). Corning asserts that Tatsuzuki’s disc-shaped spring 13 is configured
to extend “‘between the continuity post engaging surface of [Matthews’s]
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post 40 and the continuity body engaging surface of [Matthews’s] body
50.’” Id. at 12 (citing Ex. 1007 ¶ 92).
As discussed previously, we are not persuaded that PPC’s proposed
claim construction of the claim phrase “configured to fit.” In particular, we
disagree with PPC’s proposed claim construction because it excludes
categorically surfaces that are configured in a perpendicular relationship.
Instead, we conclude that components or surfaces that are “configured to fit”
one another are properly sized and dimensioned to abut one another.
As we mentioned previously, during the course of this proceeding, Dr.
Mroczkowski explained possible approaches, from the perspective of one of
ordinary skill in the art, in combining the teachings of the prior art so as to
incorporate Tatsuzuki’s disc-shaped spring 13 into Matthews’s connector
100 in order to harness the electrical connection benefits of the disc-shaped
spring. Some of these possible approaches are encompassed by sketches
provided by Dr. Mroczkowski during depositions taken in connection with
this proceeding. Illustrations of those sketches are reproduced below as they
have been presented in the Patent Owner Response.

PO Resp. 24.
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As offered by PPC, the illustrations reproduced above depict Dr.
Mroczkowski’s possible approaches as to horizontal and vertical surfaces of
Matthews’s flange 46 of post 40 and connector body 50 in connector 100.
Id. at 23–24. In considering the proposed incorporation of Tatsuzuki’s disc-
shaped spring 13 into Matthews’s connector 100 shown in the illustrations
above, we are satisfied that Matthews’s flange 46 of post 40 and connector
body 50 are properly sized and dimensioned to abut one another in the
manner required by independent claim 1. In that regard, we conclude that
the particular horizontal and vertical surfaces marked on Matthews’s flange
46 of post 40 and connector body 50 are understood reasonably as
constituting surfaces that are configured to fit one another.
7. Corning Provides a Sufficient Rationale to Combine the Teachings of
Matthews and Tatsuzuki

In the Petition, Corning 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 coupler/nut 30 and post
40 so that connector body 50 may be made of non-conductive material. Pet.
52–54. 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 this benefit and, therefore, would have
been motivated to make this modification. Id. at 53–54 (citing Ex. 1007
¶¶ 93, 95, 96).
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
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the teachings of Matthews and Tatsuzuki, to support its argument that Dr.
Mroczkowski engaged in impermissible hindsight reconstruction when
assessing whether the challenged claims are unpatentable over the cited prior
art. PO Resp. 25–33 (citing Ex. 1034; Ex. 2005; Ex. 2007; Ex. 2008).
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.
1007 ¶¶ 91–93. 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 directs our attention to another
prior art reference directed to coaxial cable connectors that was introduced
into the record by PPC—namely, U.S. Patent No. 7,114,990 (“Bence ’990
patent”).
5
Id. at 4. Corning asserts that, upon being questioned about Bence
during cross-examination, Dr. Eldering admits that sandwiching a continuity
member between a post and a body is a well-known technique for
incorporating a continuity member into a connector. Id. (citing Ex. 2076,
190:10–21).

5
When PPC filed its Patent Owner Response, it entered the Bence ’990
patent into the record as Exhibit 2024. Paper 31. When Corning filed its
initial Reply to the Patent Owner Response, it also entered the Bence ’990
patent into the record as Exhibit 1038. Paper 48.
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We understand PPC’s argument to be that our obviousness evaluation
here requires that we consider only a single approach for combining the
teachings of Matthews and Tatsuzuki that was presented by Dr.
Mroczkowski—namely the approach illustrated in Ex. 2007 reproduced
above—without recourse to any other assessment of the viewpoint of one of
ordinary skill in the art in so combining the teachings. See PO Resp. 25–33.
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 Matthews and
Tatsuzuki does not mandate a singular approach for combining those
references that precludes consideration of other such approaches. Indeed,
the evidence of record reflects that a person of ordinary skill in the art would
have known of other approaches for positioning a continuity member
between a body and post of a coaxial cable connector. For instance, as we
explained above, upon being questioned about the Bence ’990 patent during
cross-examination, PPC’s own expert witness, Dr. Eldering, testified that it
was known in the art that a continuity member may be “sandwiched”
between the body and post. Ex. 2076, 190:16–21.
Although the Bence ’990 patent is not a reference that has been
offered by Corning as the basis of its asserted ground of unpatentability
instituted 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.”
GPAC, 57 F.3d at 1579 (citing Custom Accessories, Inc., 807 F.2d at 962).
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
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level of ordinary skill in the art. Moreover, “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. 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
establish electrical connection between components in a coaxial cable
connector, and that such an arrangement 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., Matthews, Tatsuzuki, and
the Bence ’990 patent provide evidence that one of ordinary skill in the art
would have known that there is not a sole 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. 1002, 1004, 1038, 2024. 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
independent claim 1. We also are satisfied that one of ordinary skill in the
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art would have appreciated that Tatsuzuki’s disc-shaped spring 13 may be
arranged in Matthews’s connector 100 so as to form a continuity member
positioned in the manner required by independent claim 1. In that respect,
instead of presenting reasoning that is based on impermissible hindsight
reconstruction as is urged 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 connector 100 so as to
harness the electrical connectivity benefits attributed to this arrangement.
8. Tatsuzuki Teaches a Continuity Member with a Flexible Portion that
Arches Away or Above the Disc

Dependent claim 8 recites “the continuity member includes a disc-like
portion and a resilient flexible portion connected to the disc-like portion and
configured to arch away from a plane of the disc-like portion of the
continuity member.” Ex. 1001, 21:63–67 (emphasis added). Dependent
claim 9 recites “wherein the continuity member includes a plurality of
flexible portions, the plurality of flexible portions forming symmetrical
portions each arched above the general plane of the disc. Id. at 22:1–4
(emphasis added).
In its Petition, Corning contends that Tatsuzuki’s disc-shaped spring
13 includes ring-shaped surface 13a and spring pieces 13b. Pet. 49, 56–57
(citing Ex. 1002 ¶ 17, Figs. 3, 7; Ex. 1007 ¶¶ 119, 120, 123, 124). Corning
argues that Tatsuzuki’s spring pieces 13b are connected to ring-shaped
surface 13a and are configured to arch away or arched above the plane of the
ring-shaped surface. Id.
In its Patent Owner Response, PPC contends that the claim phrases
“configured to arch away” and “arched above” each require a “smooth,
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continuous curve.” PO Resp. 34. PPC then argues that Tatsuzuki does not
teach that its spring pieces 13b are “configured to arch away” or “arch
above” ring-shaped surface 13a because the spring pieces extend away from
the ring-shaped surface in a straight line and include pieces bent in a sharp
angle at their ends. Id. at 34–35. To support its argument, PPC directs our
attention to Tatsuzuki’s specification, which indicates that spring pieces 13b
are bent in an L-shape. Id. at 35 (citing Ex. 1002 ¶ 17, Fig. 7(b); Ex. 2074
¶¶ 106–108).
In its Reply, Corning contends that PPC relies upon a side view of
Figure 7(b) of Tatsuzuki when these limitations actually are shown in Figure
7A of Tatsuzuki. Pet. Reply. 14. In particular, Corning argues that Figure
7A of Tatsuzuki illustrates that spring pieces 13b extend from the plane of
ring-shaped surface 13a in the shape of an arch, and have arched portions
above the plane. Id. at 14–15 (citing Ex. 1002, Fig. 7(a); Ex. 1037, 317:14–
16, 411:8–13; Ex. 1035). Corning further contends that the “arch”
limitations do not preclude the flexible portion from including at least some
“straight line” portion. Id. at 15. In addition, Corning contends that PPC
does not provide sufficient or credible evidence that the claimed arch
structure is significant. Id.
As discussed previously, we are not persuaded that PPC’s proposed
claim construction of the claim phrases “configured to arch away” and
“arched above” constitutes the broadest reasonable interpretation. In
particular, we are not persuaded that these claim phrases each require a
“smooth, continuous curve.” We construe these claim phrases broadly, but
reasonably, to cover an elongated structure that includes “a bowed or curved
portion” or “any bowlike part.” Such a structure may still include some
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straight portions. With this claim construction in mind, we turn to the
portions of Tatsuzuki relied upon by Corning to teach the arch structure
required by dependent claims 8 and 9.
Figures 7(a) and 7(b) of Tatsuzuki illustrates the detailed structure of
disc-shaped spring 13. Ex. 1002 ¶ 17. For convenience, each Figure is
reproduced again, but enlarged for clarity.

As shown in Tatsuzuki’s Figures 7(a) and 7(b), disc-shaped spring 13
includes spring piece 13b and ring-shaped surface 13a. Id. Spring piece 13b
includes eight bent spring pieces, which are formed integrally by ring-
shaped surface 13a. Id. The leading end of each spring piece 13b is bent in
an L-shape. Id. Consistent with our claim construction above, Tatsuzuki’s
spring piece 13b constitutes a bowlike part because it includes at least one
portion that is curved or bowed, i.e., as seen at the bend of the L-shape. In
that regard, we conclude that Tatsuzuki’s disc-shaped spring 13 includes
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spring pieces 13b that are “configured to arch away” or “arched above” ring-
shaped surface 13a in the manner required by dependent claims 8 and 9.
Even if we were to assume that Tatsuzuki’s disc-shaped spring 13
does not, by itself, teach the arch structure required by dependent claims 8
and 9, we agree with Corning that PPC does not provide sufficient or
credible evidence that such a structure is significant. As Corning indicates
in its Reply, “[a] change in form or shape is generally recognized as being
within the level of ordinary skill in the art, absent any showing of
unexpected results.” Pet. Reply 15 (quoting In re Dailey, 357 F.2d 669,
672–73 (C.C.P.A. 1966)). An important consideration when determining
whether the claimed arch structure is significant includes reviewing the
specification, in its entirety, and ascertaining if these limitations in question
are disclosed as serving any advantage or particular purpose, or whether they
solve a stated problem. With this in mind, we turn to the Specification of the
’060 patent.
When describing electrical continuity member 1270 illustrated in
Figures 43–53, the Specification of the ’060 patent discloses that it “has
some physical likeness to a disc having a central circular opening and at
least one section being flexibly raised above the plane of the disc; for
instance, at least one flexible portion 1279 of the continuity member 1270 . .
. [is] being arched above the general plane of the disc.” Ex. 1001, 18:49–53.
The Specification also indicates that “[a]s the flexibly raised portions 1279a-
b arch away from the more generally disc-like portion of the electrical
continuity member 1270, the flexibly raised portions . . . make resilient and
consistent physical and electrical contact with a conductive surface of the
nut 1230.” Id. at 18:58–65.
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38
Based on these disclosures in the Specification of the ’060 patent, we
do not find that there is any criticality associated with flexible portions that
are “configured to arch away” or “arch above” the plane of the disc-like
portion of the continuity member, nor a reasoned explanation why this
structure serves a particular purpose or solves a stated problem. In other
words, that fact that one section is “flexibly raised above the plane of the
disc” is critical, but the “arch” shaped per se is not. Absent a showing of
unexpected results, we are satisfied that Tatsuzuki’s disc-shaped spring 13,
which includes ring-shaped surface 13a with spring pieces 13b flexibly
raised above the plane of the ring-shaped surface, renders obvious the arch
structure required by dependent claims 8 and 9.
9. Summary
Based on the record before us, we conclude that Corning has
demonstrated by a preponderance of the evidence that independent claim 1,
and dependent claims 8 and 9, would have been obvious over the
combination of Matthews and Tatsuzuki. In addition, upon reviewing the
unchallenged contentions and supporting evidence regarding dependent
claims 2–7 that were presented by Corning in its Petition (Pet. 46–49, 54–
55; Ex. 1007 ¶¶ 98–117), we are persuaded that Corning presents sufficient
evidence to support a finding that the combination of Matthews and
Tatsuzuki teaches the claimed subject matter recited in these dependent
claims. Therefore, based on the record before us, we conclude that Corning
has demonstrated by a preponderance of the evidence that dependent claims
2–7 would have been obvious over the combination of Matthews and
Tatsuzuki.

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C. Secondary Considerations of Non-Obviousness
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. 40–42), failed attempts by Corning (id. at 42–47),
copying by Corning (id. at 38–40, 47–54), and commercial success (id. at
54–60), “clearly establish the non-obviousness of the claims at issue.” Id. at
38. In support of this argument, PPC relies on, inter alia, the Declaration
and cross-examination testimony of Corning’s Mr. Burris (Exs. 2019, 2020),
as well as Declarations of Mr. David Jackson, Vice President, General
Manager of PPC (Exs. 2072 (unredacted version), 2073 (redacted version)),
and its own expert, 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. 41 (quoting Ex. 1001, 1:45–48). 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, 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 UltraShield connector
(including a continuity member) in 2010. See id. at 39–42.
Based on the record before us, we are persuaded that coaxial
connectors known in the art before 2009 had “solved” PPC’s asserted “long-
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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.
Ex. 1038, Abstract; Ex. 2076, 190:16–21. As noted by Corning (Pet. Reply
16–17), 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.”
Ex. 1038, 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. 1007 ¶ 86. 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.” Id. ¶ 7.
2. Failed Attempts by Corning
PPC contends that from September 2008 until March 2010, Corning’s
Mr. Burris attempted, but failed, “to incorporate a continuity member into
the UltraRange connector.” PO Resp. 42. During this time, according to
PPC, Corning developed a number of different concept designs for providing
a continuity member in the UltraRange 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 43–
45. PPC contends that prior to March 2010, Mr. Burris was aware of
Matthews, his own Bence ’990 patent, and the UltraEase continuity member
design, but nonetheless “still went through dozens of failed and widely
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differing concepts for several years.” Id. at 46–47. 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 46.
Corning responds that PPC relies only on Corning’s alleged Research
and Development efforts, not efforts by any other industry participant.
Pet. Reply 17. 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. Id. In addition, Corning
argues that a certain number 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, Dr. Eldering. Id. (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. 43
(referring to Corning’s “fifteen different concepts for providing a continuity
member in the UltraRange connector,” citing Ex. 2036, 2); see Ex. 2036, 2
(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. 43–44), 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,
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passed the Argentina test in 2009. Id.; see also Ex. 2034, 25 (stating that
RC-1350-50 “did well” in the Argentina test in August 2009), 31 (stating
that RC-1350-90 “yielded acceptable results” in the 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 that include 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. 48–54. In particular, PPC contends that Mr. Burris knew of PPC’s
design when he developed the UltraShield connector in April-June 2010
time frame. Id. at 46. 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. at 49. Thereafter, when
that “continuity member failed,” “Mr. Burris claims that he moved the
continuity member for the first 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
49–50.
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
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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 Mr. David J. Johnson and Mr. Burris’s co-inventor Mr. William B.
Lutz (Ex. 2048). PO Resp. 50. 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). PO Resp. 51. 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 the Corning UltraShield connector. Id. at 51–
52 (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.” PO Resp. 52 (citing
Ex. 2019, 25:20–28:8). PPC further contends that on June 1, 2010, Mr. Lutz
sent an e-mail to Mr. 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, a
Corning’s salesperson indicated that other PPC EX Plus connectors were
being sent overnight to Mr. Lutz. Id. at 53 (citing Ex. 2052). Thereafter, on
June 25, 2010, according to PPC, “Mr. Burris reported completing the
design of the RC-1350-350 design which led to the UltraShield design.” Id.
at 53–54. 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
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connector. Id. at 53 (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 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.
Corning also contends that, even assuming Mr. Burris saw the PPC
advertisement for the EX Plus Signal Tight Connector, PPC’s 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. In
considering the entirety of the record, we are persuaded that PPC’s
contentions and cited evidence provide at least some evidence of objective
indicia of non-obviousness, i.e., copying by Corning of PPC’s EX Plus
SignalTight design, in relation to the challenged claims.
4. Commercial Success
PPC contends that its “flagship Signal Tight series connectors” are
commercial embodiments of the coaxial connectors recited in the challenged
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claims, citing the Declarations by Mr. Jackson (Ex. 2072) and Dr. Eldering
(Ex. 2074). PO Resp. 55–56 (citing Ex. 2072 ¶¶ 12, 13, 26–28; Ex. 2074
¶ 116). In particular, 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 required by a number of the challenged claims. Id. (citing 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. 56 (citing Ex. 2072 ¶¶ 22, 23, 26–28; Ex. 2074 ¶ 117). To support
this argument, PPC relies on Mr. Jackson’s Declaration, which presents
photographs of a SignalTight connector and an UltraShield connector, with
added arrows pointing to 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 in the manner
required by the challenged claims. PO Resp. 56.
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 the relevant marketed products
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embody 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, Corning’s UltraShield
connectors, and PPC’s “non-continuity EX connectors.” PO Resp. 58–60.
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 58 (referring to $50 million in revenue in 2013). PPC
contends that 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 16% more than
PPC’s comparable, non-continuity EX connectors.” Id. at 59. 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
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embodiments of the PPC patents has gone from zero to 82% in only three
years.” Id.
Even if we were to assume that such statements and comparisons 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 coaxial connector to anyone before
2009. PO Resp. 58–59; 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).
Moreover, 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 by 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. Id. ¶ 19. Thus, as
between EX connectors and SignalTight connectors, PPC’s market share
either remained the same, or slightly decreased, from 2009 to 2013.
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
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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, for example, from 2009 to 2013. 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. 57 (citing Ex. 2056). Again, PPC’s contentions and cited evidence in
this regard do not address adequately commercial sales or market share
relative to all competing coaxial connectors sold, i.e., the overall relevant
market, as relevant to a product assembled according to methods coextensive
with the challenged claims.
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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 PPC’s SignalTight and Corning’s
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, Tatsuzuki, and the ’990 Bence 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.
Thus, although we recognize that PPC provides evidence that it and
Corning commercially sold SignalTight and UltraShield connectors,
respectively, and that sales of such products increased after their
introduction to the market in 2009–2010 time frame, we are not persuaded
that PPC’s contentions and cited evidence of commercial success provide
persuasive support of objective indicia of non-obviousness in relation to the
challenged claims.
5. Analysis Regarding All Asserted Evidence of Secondary Considerations
For the reasons discussed above, we are not persuaded that 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
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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
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 purported evidence of non-
obviousness. On balance, we determine that a preponderance of the
evidence supports a conclusion that claims 1–9 of the ’060 patent would
have been obvious over the combination of Matthews and Tatsuzuki.
D. PPC’s Motion to Exclude
In its Motion to Exclude, PPC seeks to exclude certain portions of the
deposition testimony of Corning’s Mr. Burris (Ex. 2019, 180:5–8, 189:22–
23, 235:12–16), as well as certain portions of Mr. Burris’s Declaration
(Ex. 2020 ¶¶ 4, 16), because these statements made by Mr. Burris 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 note that the content that PPC seeks to exclude was
introduced into this proceeding by PPC. Paper 41, 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
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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.
E. Motions to Seal
On March 26, 2014, PPC filed redacted and unredacted versions of its
Patent Owner Response (Papers 32 and 33), along with an initial Motion to
Seal (Paper 30). 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 38. On April 17, 2014, PPC filed a Revised Motion
to Seal (Paper 42) 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, and included in the aforementioned
Exhibits, contain Corning’s confidential information. Paper 43.
On May 16, 2014, PPC filed a Second Motion to Seal that seeks to
seal certain portions of Exhibit 2075 and 2079. Paper 45. 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
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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 47. On June 20, 2014, based on a joint
proposal from the parties, we dismissed Corning’s Motion to Seal. Paper 51.
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 61. 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 71. 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 74. 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
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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
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 29, 3 (citing Trial Practice Guide, Fed. Reg. 48,761).
We have reviewed the unredacted version of the Patent Owner
Response (Paper 33), as well as Exhibits 2019, 2020, 2025, 2026, 2030,
2031, 2034–2039, 2042, 2044, 2045, 2047, 2048, 2050–2054, 2056, 2072,
2075, 2079, 2084, and 2085, and we are persuaded that good cause exists to
have some, but not all, of 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
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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
under seal under the terms of the protective order entered in this proceeding.
See Paper 42, 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 29, 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 demonstrated by a preponderance of the evidence that
claims 1–9 of the ’060 patent are unpatentable under 35 U.S.C. § 103(a)
over the combination of Matthews and Tatsuzuki.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that Corning has shown by a preponderance of the
evidence that claims 1–9 of the ’060 patent are unpatentable;
FURTHER ORDERED that PPC’s Motion to Exclude is DENIED;
FURTHER ORDERED that PPC’s Revised Motion to Seal (Paper
42), Second Motion to Seal (Paper 45), and Third Motion to Seal (Paper 61)
are GRANTED-IN-PART. The unredacted version of the Patent Owner
IPR2013-00340
Patent 8,323,060 B2

55
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 42, 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;
FURTHER ORDERED that Corning’s Motion to Seal (Paper 47) and
PPC’s Fourth Motion to Seal (Paper 71) are DISMISSED;
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our 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.

IPR2013-00340
Patent 8,323,060 B2

56
For PETITIONER:

Todd R. Walters
Roger H. Lee
Buchanan Ingersoll & Rooney PC
todd.walters@bipc.com
roger.lee@bipc.com

For PATENT OWNER:
Denis J. Sullivan
Douglas J. Nash
HISCOCK & BARCLAY, LLP
dsullivan@hblaw.com
dnash@hblaw.com