Limitations on the Broadest Reasonable Interpretation

February 24, 2015

In PPC Broadband Inc. v. Corning Optical Commc'ns, Docket No. 2015-1364 (Fec. Cir. 2016), the Federal Circuit strongly relied on the intrinsic evidence of the specification to limit the Patent and Trial Appeal Board's broadest reasonable interpretation of a term at issue.  During the instituted inter partes review (IPR) of US Patent 8,323,060, the PTAB construction of the term "reside around" resulted in a meaning of "in the immediate vicinity of; near". Id. at p. 5.  As a result of this interpretation, the PTAB determined that the claims at issue reciting this term were obvious.  Reviewing the claims de novo (based on intrinsic evidence) and its factual determinations (based on extrinsic) for substantial evidence per In re Sullivan, 498 F.3d. 1345, 1350 (Fed. Cir. 2007), the Court remanded the IPR proceedings for further proceedings.

As noted above, the PTAB construed the term "reside around" to mean "in the immediate vicinity of; near". Id. at p. 5.  The basis for the PTAB's construction was based on receiving multiple dictionary definitions and selecting the broadest definition cited in those definitions.  PPC Broadband argued that the PTAB's construction was unreasonably broad in view of the '060 patent's claims and specification.  Rather, PPC asserted that the broadest reasonable construction should result in the term "reside around" to mean "encircle or surround". 

While the Court appeared to agree that the dictionary definition selected by the PTAB was the broadest, they noted that this construction did not necessarily comport with the broadest reasonable construction in light of the specification.  Id. at 7.  Regarding definitions provided by the parties, the Court noted that some of the definitions supported PCC's narrower interpretation.  In particular, the Court recognized that the term "around" has multiple dictionary definitions, but reasoned that not all of these definitions were reasonable in light of the specification.  Id.  Specifically, the Court noted that "it seems odd to construe the term 'reside around' without recognizing the context of its use in the terms of the coaxial cable at issue." Id

Because the specification used the term "around" seven times in the specification, and in each instance it relates to "encircling" or "surrounding", the Court found the PTAB's construction of "in the immediate vicinity of; near" inconsistent with the use of the terms within the specification.  In contrast, the Court found PPC's construction consistent with the specification.

Moreover, the Court discounted various cannons of claim construction, including term differentiation, preferred embodiment coverage, and use of the term in a preamble; instead giving the express use of the term within the specification more weight.  See Id. pp. 11-13.  Consequently, petitioners seeking to invalidate patents should carefully consider and weigh the use of claim terms with within the specification as primary support for their claim interpretations.