Minor but inconsistent examples in the specification may facilitate invalidity by broadening claim interpretation at the PTO so as to bring in additional prior art without necessarily broadening the scope of patent protection. Here, for example, although the specification was replete with sufficient discussion of the “continuous” or “consistent” contact established by the claimed “continuity member” of a coaxial cable to warrant a narrower claim construction under Phillips, the interpretation asserted by the PTO during IPR proceedings to invalidate the patents was found to be substantially broader under the broadest reasonable interpretation standard due to a few minor counterexamples in the specification. “[At the PTO,] claims are given their broadest reasonable interpretation consistent with the specification, not necessarily the correct construction under the framework laid out in Phillips.” It may therefore be best to ensure that the specification is consistent and that ample dependent claims with desired interpretations are provided to try to narrow the detrimental claim construction gap between infringement scope and invalidity.
Background / Facts: The patents on appeal here from IPR proceedings at the PTO are directed to coaxial cables having a “continuity member” that contacts a post and nut so that electrical grounding continuity is extended throughout the cable. The specification discloses in multiple places that the continuity member should maintain a consistent and continuous connection. It states that various geometrical configurations may be utilized “as long as the electrical continuity member [] is provided so as to make consistent physical and electrical contact with the post.”
Issue(s): Whether, under the broadest reasonable interpretation standard at the PTO, the claims nevertheless require only that the “continuity member” make minimal contact with the nut/post so as to establish an electrical connection, without requiring that contact to be consistent or continuous in time (i.e., always connected).
Holding(s): Yes. “This case hinges on the claim construction standard applied—a scenario likely to arise with frequency.” While acknowledging that “[u]nder Phillips, we would hold that the correct construction of the term ‘continuity member’ requires, as [the patentee] argues, a continuous or consistent connection,” the court was ultimately forced to “conclude that the Board’s construction … is the broadest reasonable construction.” In particular, it found that select “description[s] [in the specification] of a ‘continuous ground path’ extending from component to component is consistent with [the broader] argument that the term ‘continuity’ refers to an unbroken physical route, not necessarily a connection that is uninterrupted over time.”