Ppc Broadband, Inc. v. Iancu ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PPC BROADBAND, INC.,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2017-1362, 2017-1363, 2017-1364
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2013-00340, IPR2013-00345, IPR2013-00346.
______________________
Decided: July 3, 2018
______________________
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for
appellant. Also represented by ROBERT L. BURNS, II,
Reston, VA; JUSTIN A. HENDRIX, Palo Alto, CA.
LORE A. UNT, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
2 PPC BROADBAND, INC. v. IANCU
intervenor. Also represented by NATHAN K. KELLEY, MAI-
TRANG DUC DANG, THOMAS W. KRAUSE, FARHEENA
YASMEEN RASHEED.
______________________
Before DYK, MOORE, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
The three inter partes review (“IPR”) proceedings that
gave rise to this consolidated appeal were previously
considered in PPC Broadband, Inc. v. Corning Optical
Communications RF, LLC (PPC I), 815 F.3d 734 (Fed. Cir.
2016). In PPC I, we vacated the Patent Trial and Appeal
Board’s (“Board”) determination that the following claims
are unpatentable and remanded for further proceedings:
claims 8, 16, and 31 of U.S. Patent No. 8,287,320 (“the
’320 patent”), claims 1–9 of U.S. Patent No. 8,323,060(“the ’060 patent”), and claims 7–27 of U.S. Patent No.
8,313,353 (“the ’353 patent”). In particular, we criticized
the Board (1) for not making sufficient factual findings to
support its conclusion that the combination of two prior
art references would have made the limitations of these
claims obvious; (2) for improperly concluding that patent
owner PPC Broadband, Inc. (“PPC”) did not establish that
its “SignalTight” connectors met all of the elements of the
challenged claims for the purpose of giving rise to a
presumption of commercial success; and (3) for failing to
give due weight to PPC’s unrebutted evidence of copying
and failure of others.
The Board repeated these same errors on remand.
We therefore vacate the Board’s determination that
claims 8, 16, and 31 of the ’320 patent, claims 1–9 of the
’060 patent, and claims 7–27 of the ’353 patent are un-
patentable, and remand once more for further proceed-
ings.
PPC BROADBAND, INC. v. IANCU 3
I. BACKGROUND
An overview of the patents and technical background
is provided in PPC I. In relevant part, the ’320 patent
family discloses coaxial cable connectors having a con-
nector body 50, a post 40, a nut 30 (also called a “cou-
pler”), and a “continuity member” that contacts the post
and the nut so that electrical grounding continuity is
extended through the post and the nut. ’320 patent, col.
2, ll. 3–6, 15–19, 37–41. The claims at issue in this appeal
include limitations that require the continuity member to
“maintain electrical continuity” during certain specified
periods of operation of the connector. PPC I, 815 F.3d at
743. Independent claim 1 of the ’060 patent, for example,
recites:
1. A connector for coupling an end of a coaxial cable,
. . . the connector comprising:
***
a continuity member disposed only rearward of
the forward facing lip surface of the internal lip of
the coupler, the continuity member having a con-
tinuity base portion extending between the conti-
nuity 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 sur-
face 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.
’060 patent, col. 20, l. 57–col. 21, l. 39 (emphases added).
Independent claims 7 and 20 of the ’353 patent recite
methods of assembling a coaxial cable connector, the
4 PPC BROADBAND, INC. v. IANCU
method comprising “positioning an electrical continuity
member so as to . . . maintain electrical continuity be-
tween the post and the nut when the post pivots relative
to the nut.” ’353 patent, col. 22, ll. 12–48; id. at col. 23, l.
43–col. 24, l. 24. Finally, dependent claims 8, 16, and 31
of the ’320 patent require the continuity member to
“maintain electrical continuity when the nut is in both the
partially tightened position on the interface port and in
the fully tightened position on the interface port.” ’320
patent, col. 21, ll. 48–52; id. at col. 22, ll. 63–67; id. at col.
24, ll. 40–44.
Corning Optical Communications RF, LLC (“Corn-
ing”) filed petitions requesting IPR of claims 1–32 of the
’320 patent, claims 1–9 of the ’060 patent, and claims 7–
27 of the ’353 patent on grounds that these claims were
unpatentable as obvious over the combination of U.S.
published patent application 2006/0110977 (“Matthews”)
and Japanese published patent application JP 2002–
015823 (“Tatsuzuki”), among certain other grounds not at
issue in this appeal. 1 Corning principally relied on the
1 Corning participated in the appeal in PPC I and
in the proceedings on remand, but withdrew as a party to
this appeal after it reached a settlement with PPC. See
Corning’s Unopposed Mot. to Withdraw (June 30, 2017),
ECF No. 23; Order (July 10, 2017), ECF No. 24. The
United States Patent and Trademark Office (“PTO”)
intervened. At oral argument, PPC and the PTO stated
that they waive any right to seek a remand for the Board
to institute on all grounds challenged in Corning’s IPR
petitions under SAS Institute, Inc. v. Iancu, 138 S. Ct.
1348 (2018), and further stated they were not aware of
Corning ever having made such a request. See Oral Arg.
11:40–12:20, 27:54–28:15, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?
fl=2017-1362.mp3. In PGS Geophysical AS v. Iancu, 891
PPC BROADBAND, INC. v. IANCU 5
declaration of its expert, Dr. Robert S. Mroczkowski,
while PPC relied on the declaration of its expert, Dr.
Charles A. Eldering. The Board instituted these IPR
proceedings, and, after the parties’ experts were deposed,
the Board issued final written decisions in which it de-
termined that all challenged claims would have been
obvious over the combination of Matthews and Tatsuzuki.
PPC I, 815 F.3d at 739.
In these decisions, the Board construed the “continui-
ty member” limitation to require that the continuity
member “make contact with the coupler/nut and the post
to establish an electrical connection there,” but did not
separately construe the “maintain electrical continuity”
limitations. Id. at 740–45. The Board then relied on a
proposed modification of Matthews with Tatsuzuki’s “disc-
shaped spring” advanced by Dr. Mroczkowski to explain
how the two references could be combined. See J.A. 1215–
16, 1276–77, 1330–31. Finally, although the Board found
that Corning both failed to manufacture connectors with a
continuity member that could be sold to customers and
copied PPC’s SignalTight connectors—factors that
weighed in favor of non-obviousness—it concluded that,
because PPC did not present persuasive evidence of
commercial success, the collective objective indicia evi-
dence did not outweigh the “strong evidence of obvious-
ness.” PPC I, 815 F.3d at 746–47.
Corning appealed the Board’s decisions to this court.
We affirmed the Board’s unpatentability determinations
F.3d 1354 (Fed. Cir. 2018), we held that partial-grounds
institution is a waivable error on which we need not act
“in the absence of an appropriate request for relief on that
basis.” Id. at 1362 (citation omitted). We, thus, decline to
vacate and remand solely for the Board to issue final
written decisions addressing other grounds challenged in
Corning’s IPR petitions.
6 PPC BROADBAND, INC. v. IANCU
as to the claims that lacked the “maintain electrical
continuity” limitation, and we vacated the Board’s un-
patentability determinations as to the “maintain electrical
continuity” claims and remanded for further proceedings.
We construed these claims to “require [that] the continui-
ty member maintain electrical continuity when the cou-
pler is in a certain position or during certain modes of
operation,” and stated that “[m]aintaining electrical
continuity requires consistent or continuous contact”
under any relevant claim construction standard. Id. at
744. We observed that, “[n]owhere in its decisions did the
Board find that the combination of Matthews and Tatsu-
zuki maintains electrical continuity during the specific
positions or modes of operation required by these limita-
tions,” and noted that the Board’s decisions in fact “sug-
gest the opposite.” Id. In other words, we concluded that
the Board’s decisions assumed that merely making con-
tact on a non-continuous or intermittent basis would
satisfy the relevant claim limitations, a conclusion we
found inconsistent with the claims themselves. We then
rejected Corning’s argument that we should nevertheless
affirm the Board’s unpatentability determination as to
these claims because the combination of Matthews and
Tatsuzuki otherwise teaches these limitations, recogniz-
ing that the “Board did not make any such fact findings.”
Id.
We also took issue with the Board’s objective indicia
analysis. First, we clarified that Corning’s failure to
manufacture connectors with a continuity member that
could be sold to consumers and its decision to, instead,
copy PPC’s SignalTight connectors weighed in favor of a
finding of non-obviousness. Id. at 746. We then ex-
plained that, because the evidence shows that the Signal-
Tight connectors are “the invention disclosed and claimed
in the patent,” we presume that any commercial success
of these products is due to the patented invention. Id. at
747 (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co.,
PPC BROADBAND, INC. v. IANCU 7
106 F.3d 1563, 1571 (Fed. Cir. 1997)). We expressly
rejected the Board’s unexplained belief that “commercial
success is not established where a product has a very
large market share if that product was replacing the same
party’s earlier version which likewise enjoyed a high
market share,” noting “that it would be wrong to conclude
that a product with a high market share is not commer-
cially successful solely because it is replacing a similarly
successful earlier version of the product produced by the
same company.” Id. at 747 n.3. Finally, we criticized the
Board’s failure to weigh PPC’s unrebutted evidence of
failed attempts by Corning to design a prototype coaxial
cable with a continuity member and Corning’s copying.
Id. at 746.
On remand, the Board, after determining that no ad-
ditional evidence was required, issued the three Decisions
on Remand, again holding each of the claims reciting
“maintain electrical continuity” limitations unpatentable
over Matthews and Tatsuzuki. Relying solely on disclo-
sures in Tatsuzuki and portions of Dr. Mroczkowski’s
declarations—which did not address our construction of
the maintain electrical continuity limitations—the Board
found that Tatsuzuki’s disc-shaped spring 13, when
positioned in the manner depicted in Exhibit 2007, “would
maintain electrical connection between Matthews’s cou-
pler/nut 30 and post 40 during [the] specified periods of
operation of coaxial cable connector 100” required by the
claim limitations. J.A. 25, 65, 98. It then criticized
several aspects of PPC’s evidence of commercial success,
purported to reweigh the objective indicia evidence, and
once again concluded that the proffered objective indicia
evidence was insufficient to overcome “Corning’s strong
evidence of obviousness.” J.A. 33, 74, 106.
PPC appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4).
8 PPC BROADBAND, INC. v. IANCU
II. DISCUSSION
Obviousness is a question of law with underlying is-
sues of fact. Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013). We review the Board’s legal decisions de
novo and its underlying factual determinations for sub-
stantial evidence. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A
finding is supported by substantial evidence if a reasona-
ble mind might accept the evidence to support the finding.
In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002). “In
reviewing the record for substantial evidence, this court
takes into account evidence that both justifies and de-
tracts from the factual determinations.” In re Glatt Air
Techniques, Inc., 630 F.3d 1026, 1029 (Fed. Cir. 2011).
Finally, the Board, in reaching its decisions, must “make
the necessary findings and have an adequate ‘evidentiary
basis for its findings.’” In re Nuvasive, 842 F.3d 1376,
1382 (Fed. Cir. 2016) (quoting In re Lee, 277 F.3d 1338,
1344 (Fed. Cir. 2002)).
A.
We conclude that the Board has not sufficiently ex-
plained its finding that Tatsuzuki’s disc-shaped spring 13,
if located within Matthews’s connector in the manner
proposed by Dr. Mroczkowski, “would maintain electrical
connection between Matthews’s coupler/nut 30 and post
40 during [the] specified periods of operation of coaxial
cable connector 100” required by the claim limitations.
J.A. 25, 65, 98. None of the evidence cited by the Board,
which does not include Dr. Mroczkowski’s deposition
testimony, supports a finding that the continuity member
in the modified coaxial cable connector would make
consistent contact with the post during these periods of
operation.
A comparison of the Board’s original final written de-
cisions with its Decisions on Remand is instructive. In its
first set of final written decisions, the Board relied on a
PPC BROADBAND, INC. v. IANCU 9
modification of Matthews with Tatsuzuki proposed by Dr.
Mroczkowski to explain why the combined coaxial cable
connector would meet the broader “continuity member”
limitations. According to Dr. Mroczkowski, this modifica-
tion entails placing Tatsuzuki’s disc-shaped spring 13 (the
continuity member) inside the coaxial cable connector
disclosed in Figure 1 of Matthews so that a portion of the
spring “contacts 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.” J.A.
3185 ¶ 92. This proposed modification is depicted in
PPC’s annotated Exhibit 2007, reproduced below:
J.A. 1216 (IPR2013-00340 final written decision). The
Board offered the following rationale to support its finding
that the “continuity member” limitation would be met by
this proposed combination:
In considering the proposed incorporation of
Tatsuzuki’s disc-shaped spring 13 into Matthews’s
connector 100 shown in the illustration repro-
duced 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 Tatsu-
zuki’s disc-shaped spring 13, when positioned in
10 PPC BROADBAND, INC. v. IANCU
the manner depicted, would extend between, and
facilitate electrical connection among, surfaces of
a coupler/nut and a post of a coaxial cable con-
nector. Furthermore, we also credit Dr. Mrocz-
kowski’s testimony to that effect. See, e.g., Ex.
1007, ¶¶ 92, 93.
J.A. 1216–17.
In its Decisions on Remand, the Board determined
that the narrower “maintain electrical continuity” limita-
tions of the claims at issue would be met by the same
proposed modification on the same evidence. The Board
began by taking “th[e] opportunity to clarify” that find-
ings in each of its original final written decisions were
intended to “refer to maintaining electrical continuity
between Matthews’s coupler/nut 30 and post 40 during
specified periods of operation of coaxial cable connector
100 that are required by” claims containing these limita-
tions—perplexing “clarifications” given that the “maintain
electrical continuity” limitations were not separately
construed or analyzed in any of the Board’s final written
decisions. J.A. 23, 62, 96. The Board went on to state
that, “[i]n any event, taking into account the Federal
Circuit’s guidance, and for the sake of completeness, we
now make explicit fact findings as to how the combination
of Matthews and Tatsuzuki teaches the ‘maintain electri-
cal continuity’ limitation.” Id.The fact-finding and reasoning in the Board’s Deci-
sions on Remand are substantially similar to that con-
tained in its first set of final written decisions, except that
the three sentences reproduced in the block quote above
are modified as follows:
That is, we find that Tatsuzuki’s disc-shaped
spring 13, when positioned in the manner depict-
ed above, would maintain electrical connection be-
tween Matthews’s coupler/nut 30 and post 40
during certain specified periods of operation of co-
PPC BROADBAND, INC. v. IANCU 11
axial cable connector 100, such as when the cou-
pler/nut is tightened partially or fully on interface
port 20, and even when the post moves relative to
the coupler/nut. Our finding in this regard is re-
inforced further by the stated objective of Tatsu-
zuki’s disc-shaped spring 13, which is to provide
an electrical connection even in a loosened state.
Ex. 1002 ¶¶ 7, 17. We also credit Dr. Mroczkow-
ski’s testimony on this issue, particularly his
statement that Corning’s proposed combination
“would . . . maintain[] electrical continuity from
the interface port to the coaxial cable.” Ex. 1007
¶ 93.
J.A. 25 (IPR2013-00340 Decision on Remand). The only
material differences between the Board’s fact-finding in
its original final written decision and its Decision on
Remand in IPR2013-00340 are that the latter (1) recites
the language of the claim limitation at issue rather than
the phrase “in the manner required by claim 1”;
(2) describes the stated objective of Tatsuzuki’s disc-
shaped spring as “provid[ing] an electrical connection
even in a loosened state”; and (3) includes a “particularly”
credited statement from Dr. Mroczkowski that his pro-
posed combination “would . . . maintain[] electrical conti-
nuity from the interface port to the coaxial cable.” The
Decisions on Remand in the other IPR proceedings con-
tain similar alterations.
These minor, stylistic alterations are insufficient to
rescue the Decisions on Remand, because the Board failed
to offer a reasoned explanation why the proposed modifi-
cation meets the “maintain electrical continuity” limita-
tions—which require that the continuity member have
“consistent or continuous contact” with the post. PPC I,
815 F.3d at 744.
We begin with Tatsuzuki. This reference discloses a
disc-shaped spring 13 with an inner ring-shaped interface
12 PPC BROADBAND, INC. v. IANCU
portion 13a that is sized to slide over curling processed
part 11f of main plug 11 during assembly so that it can be
“accommodated” or “contained” in spring storage groove
11e:
J.A. 1519 ¶ 17, 1526–27. The disc-shaped spring there-
fore connects the radial surface of rotary mounting ele-
ment 12 (the “nut”) and the radial surface of spring
storage groove 11e to form an electrical path between the
two, acting as a spring in the horizontal (or axial) direc-
tion such “that even if the rotary mounting element is
loosened, it prevents connection of grounding from becom-
ing incomplete.” Id. 1518 ¶¶ 11, 13. The Board’s finding
that Tatsuzuki discloses a disc-shaped spring that is
“purposed specifically to provide ‘electrical connection’
between plug body 11 and rotary mounting element 12 of
the connector” is consistent with these disclosures. J.A.
23–24.
The Board’s findings vis-à-vis the “maintain electrical
continuity” limitations fail to consider sufficiently either
Tatsuzuki’s disclosures or the experts’ testimony. Dr.
Mroczkowski testified at his deposition that Tatsuzuki
does not disclose a disc-shaped spring “in constant contact
with the post,” agreeing with PPC that it is instead “ac-
commodated in the groove.” J.A. 1957:21–25. He testi-
fied, moreover, that Tatsuzuki only teaches “constant
PPC BROADBAND, INC. v. IANCU 13
contact between the nut and the body.” J.A. 1958:2–9
(emphasis added). PPC’s expert, Dr. Eldering, similarly
concluded that Tatsuzuki’s disc-shaped spring would not
provide continuous contact with the post, but instead
would provide only intermittent contact. J.A. 2988–89
¶¶ 82–83. Notwithstanding this undisputed evidence, the
Board relied on Tatsuzuki’s “stated objective” of providing
an electric connection even in a loosened state” to support
its finding that the combination would include a continui-
ty member that “maintains electrical continuity” with the
post during the specified periods of operation. J.A. 25
(citations omitted).
The Board also relied on Dr. Mroczkowski’s opinion
that his proposed combination “would . . . maintain[]
electrical continuity from the interface port to the coaxial
cable,” J.A. 25, but this opinion does not withstand scru-
tiny. First, Dr. Mroczkowski offered this opinion in his
initial declaration accompanying Corning’s IPR petitions,
without the benefit of our construction of the “maintain
electrical continuity” limitations. Second, to the extent
one could plausibly interpret Dr. Mroczkowski’s opinion
as evidence that the proposed modification would main-
tain “consistent or continuous contact” between the conti-
nuity member and the post during the modes of operation
recited in the claims, PPC I, 815 F.3d at 743–44, the
Board would have been required to explain how it reached
this conclusion, see In re Lee, 277 F.3d 1338, 1346 (Fed.
Cir. 2002) (holding that agency tribunals “must make
findings of relevant facts, and present its reasoning in
sufficient detail that the court may conduct meaningful
review of the agency action”).
At his deposition, Dr. Mroczkowski attempted to cure
the aforementioned deficiencies in Tatsuzuki by theoriz-
ing that its disc-shaped spring “could” be “press fit onto
the post.” J.A. 1953:9:11, 1958:22–25, 1960:14–18. None
of the Board’s Decisions on Remand cite any of Dr.
Mroczkowski’s deposition testimony, nor do they include
14 PPC BROADBAND, INC. v. IANCU
any discussion of this “press fit” theory. Because the
viability of this “press fit” theory is all that arguably could
support the Board’s findings that the combination teaches
the “maintain electrical continuity” limitations, the Board
was required to “examine the relevant data and articulate
a satisfactory explanation for its action including a ra-
tional connection between the facts found and the choice
made.” Nuvasive, 842 F.3d at 1382 (quoting Motor Vehi-
cle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S.
29, 43 (1983)). It failed to do so. 2
Dr. Mroczkowski, moreover, was cross-examined at
length about this theory, during which he conceded a
number of points relevant to his “press fit” theory, includ-
ing, among others, that (1) “press fitting” is not disclosed
in Tatsuzuki, J.A. 1958:10–18; (2) he did not mention
“press fitting” in any of his declarations, J.A. 2318:9–
22319:5; (3) Tatsuzuki describes its disc-shaped spring as
being made of a “thin piece of metal,” J.A. 1959:17–
1962:11; and (4) he had never done any press fit designs
and would not know how “thin” the disc-shaped spring
could be for it to be press fit onto the post, J.A. 1959:1–16.
The Board did not address this testimony.
The need to consider the merits of Dr. Mroczkowski’s
“press fit” theory becomes even more relevant when one
considers that Tatsuzuki expressly teaches that its disc-
2 To the extent the PTO relies in its brief on factual
findings not made by the Board, such as that “Tatsuzuki’s
Figure 3 shows the inner circumference of its continuity
member positioned in direct contact with the post portion
of its unitary body and post, without any indication of
gaps or intermittent contact,” Intervenor Br. 41–42 (foot-
note omitted), we may not “accept appellate counsel’s post
hoc rationalization for agency action,” In re Lee, 277 F.3d
1338, 1345 (Fed. Cir. 2002) (quoting Burlington Truck
Lines, Inc. v. United States, 371 U.S. 156, 168 (1962)).
PPC BROADBAND, INC. v. IANCU 15
shaped spring “is not pressed to the point of becoming
crushed flat and does not lose its spring operation.” J.A.
at 1519 ¶ 17. Dr. Eldering testified both that Tatsuzuki
“teaches away from such a press-fitting modification” and
that press fitting Tatsuzuki’s disc-shaped spring onto the
post “would substantially change [its] intended use and
operation.” J.A. 2977 ¶ 54. Yet the Board did not consid-
er either this disclosure in Tatsuzuki or any of Dr. Elder-
ing’s opinions or challenges to Dr. Mroczkowski’s proposed
modification in its Decisions on Remand. As such, the
Board failed to point to evidence that a person of ordinary
skill would have known that Tatsuzuki’s disc-shaped
spring could be “press fit” onto the post, that a skilled
artisan would have been motivated to pursue this modifi-
cation, or that a skilled artisan could have succeeded in
making this modification. “[T]he Board cannot simply
reach conclusions based on its own understanding or
experience—or on its assessment of what would be basic
knowledge or common sense,” but instead “must point to
some concrete evidence in the record in support of these
findings.” In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir.
2001). The Board also must, consistent with its obliga-
tions under the Administrative Procedure Act (“APA”),
consider all evidence of record, including that which
opposes its conclusions. See Princeton Vanguard, LLC v.
Frito-Lay N. Am., Inc., 786 F.3d 960, 970 (Fed. Cir. 2015)
(explaining that substantial evidence review “requires an
examination of the record as a whole, taking into account
both the evidence that justifies and detracts from an
agency’s opinion” (quoting Falkner v. Inglis, 448 F.3d
1357, 1363 (Fed. Cir. 2006))).
As noted above, moreover, the Board chose not to
permit additional discovery on remand, notwithstanding
that we construed the “maintain electrical continuity”
limitations for the first time on appeal in PPC I. This is
particularly salient given none of Dr. Mroczkowski’s
testimony—on which the Board almost exclusively re-
16 PPC BROADBAND, INC. v. IANCU
lied—was offered with the benefit of our claim construc-
tion.
In PPC I, we concluded that the Board “did not make
any” factual findings that the combination of Matthews
and Tatsuzuki teaches the “maintain electrical continui-
ty” limitations. 815 F.3d at 744. On remand, the Board
sought to circumvent its fact-finding obligations. Where,
as here, “the Board’s action is ‘potentially lawful but
insufficiently or inappropriately explained,’ we have
consistently vacated and remanded for further proceed-
ings.” In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017)
(quoting In re Lee, 277 F.3d at 1346). The same resulted
is warranted here.
B.
Vacatur is alternatively proper based on the Board’s
treatment of PPC’s evidence concerning objective indicia
of non-obviousness. PPC first argues that the Board erred
in rejecting the evidence of commercial success, claiming
the Board ignored our instruction in PPC I not to reject
such evidence “solely on th[e] ground” that the Signal-
Tight connectors were a replacement for PPC’s earlier
connectors that did not practice the claims. Appellant Br.
40. It also claims that the Board erred in stating that it
could not discern whether PPC’s other connectors had
been discontinued and replaced by the new connectors, as
the evidence clearly answered that question in the nega-
tive. Id. at 44. We agree.
“The objective indicia of non-obviousness play an im-
portant role as a guard against the statutorily proscribed
hindsight reasoning in the obviousness analysis.” WBIP,
LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016).
Indeed, we have held that such evidence “may often be
the most probative and cogent evidence in the record.” Id.(quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538 (Fed. Cir. 1983)). “A determination of whether a
patent claim is invalid as obvious under § 103 requires
PPC BROADBAND, INC. v. IANCU 17
consideration of all four Graham factors, and it is error to
reach a conclusion of obviousness until all those factors
are considered.” Id. (citing In re Cyclobenzaprine Hydro-
chloride Extended-Release Capsule Patent Litig., 676 F.3d
1063, 1075 (Fed. Cir. 2012)).
To prove commercial success as an objective indicator
of non-obviousness, any commercial success of the product
embodying the claims must “result[] from the claimed
invention . . . beyond what was readily available in the
prior art.” J.T. Eaton & Co., Inc. v. Atl. Paste & Glue Co.,
106 F.3d 1563, 1571 (Fed. Cir. 1997). Moreover, if a
patentee in an IPR can demonstrate commercial success—
often shown by significant sales in a relevant market—
and that the successful product is the invention disclosed
and claimed in the patent, it is presumed that the com-
mercial success is due to the patented invention. PPC I,
815 F.3d at 747; Ecolochem, Inc. v. S. Cal. Edison Co., 227
F.3d 1361, 1378 (Fed. Cir. 2000). If the patentee meets
these hurdles, the burden shifts to the challenger to prove
that the commercial success is instead due to other fac-
tors, such as advertising or superior workmanship.
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-13
(Fed. Cir. 2006) (holding that evidence that success was
due to prior art features rebutted the presumption).
The Board failed to apply these principles properly. It
claimed that it presumed a “nexus” between the claims
and the SignalTight connectors, but determined that PPC
failed to prove that these connectors were commercially
successful. It reached this determination in the face of
undisputed evidence that (1) PPC sold approximately 181
million of these connectors in 2013 alone, generating
nearly $50 million in revenue, J.A. 2934 ¶ 18; (2) in 2013,
SignalTight connectors comprised 67% of the total con-
nector market, with another 15% captured by Corning’s
UltraShield connectors that copied PPC’s patented conti-
nuity member; J.A. 2939 ¶ 25; and (3) SignalTight con-
18 PPC BROADBAND, INC. v. IANCU
nectors were “priced at a premium to non-continuity and
other connectors available on the market,” J.A. 2936 ¶ 20.
The Board found ways to discount this evidence, but
none of its reasons pass muster. First, it inappropriately
discounted PPC’s evidence that its SignalTight connectors
were sold at a premium vis-à-vis its unpatented connect-
ors. The Board’s reasoning is contrary to our decision in
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012). There,
the district court rejected a jury finding that commercial
success supported non-obviousness, writing that the
success of Transocean’s products was “due primarily to
various litigation[s],” and thus they “are not a result of a
free market.” 699 F.3d at 1349–50. The prevailing party
also had argued that “Transocean failed to tie its commer-
cial success evidence to the claimed combination of two
advancing stations with a pipe transfer assembly,” and
“that unclaimed features of Transocean’s rigs, such as
increased size and capacity, are responsible for any com-
mercial success.” Id. at 1350. We disagreed on all fronts,
writing that “Transocean needed to show both commercial
success and that a nexus exists between that success and
the merits of the claimed invention,” and that it presented
sufficient evidence of both. Id. (citation omitted). Specifi-
cally, we wrote that Transocean showed “that its dual-
activity drilling rigs commanded a market premium over
single-activity rigs” by “point[ing] to two contracts it
signed on the same day . . ., one for a dual-activity drilling
rig” for which it “charged a roughly 12% premium,” and
“one for a single-activity rig.” Id. It also introduced other
contracts that provided for reduced daily rates if the dual-
activity feature on the rig was not available, and its
damages expert “testified that the average reduction in
this circumstance is 10%.” Id. Furthermore, it “presented
evidence that some customers expressly require dual-
activity rigs.” Id. “From this evidence,” we found that “a
reasonable jury could conclude that Transocean’s dual-
PPC BROADBAND, INC. v. IANCU 19
activity rigs have been a commercial success and that this
success has a nexus to the features claimed in the pa-
tents.” Id.
Here, as we explained in PPC I, because Corning did
not dispute that PPC’s products practiced the claimed
limitations and because PPC offered evidence of the
commercial success of those products, the nexus we dis-
cussed in Transocean should have been presumed, and, in
the absence of evidence overcoming that presumption
submitted by Corning, should have established conclu-
sively the fact of commercial success. Though the Board
gave lip service to the presumption we instructed it to
apply, it then ignored it. Corning offered no evidence
attacking PPC’s claim of commercial success; instead, it
simply argued that, even if established, that success did
not bar a finding of obviousness.
Rather than treat this evidentiary failure for what it
was and find that PPC had, indeed, made a sufficient
showing of commercial success, it placed the burden on
PPC (as it had in its original final written decisions) to
show more. That was error.
Putting aside this structural error, moreover, the
Board misunderstood and, thus, gave insufficient weight
to PPC’s evidence of commercial success. PPC presented
evidence that customers chose to purchase its more expen-
sive, patented SignalTight connectors than its unpatented
EX connectors, and did so while maintaining PPC’s over-
all share of the connector market. The Board wrote that
“[t]his price premium comparison, however, is not suffi-
ciently meaningful as an objective indicator of non-
obviousness in the absence of more information or evi-
dence regarding increase in market share,” J.A. 32, but
did not explain why this should be the case. To the extent
the Board required PPC to show that it obtained a higher
market share after introducing the SignalTight connector
than it had prior to such introduction, there is no authori-
20 PPC BROADBAND, INC. v. IANCU
ty for such a proposition. Maintaining market share with
a price premium is also meaningful.
The evidence instead suggests that PPC convinced
customers to pay approximately 16% more for SignalTight
connectors than they would have paid for “comparable EX
non-continuity connectors,” and did so in the face of
customers’ “extreme skepticism” about whether the
“SignalTight® connectors would solve the loose connector
continuity problem that had plagued the industry for
many years.” J.A. 2934 ¶ 17. Other coaxial cables existed
in the market, including PPC’s non-continuity EX con-
nectors and Corning’s non-continuity and (copied) conti-
nuity connectors, all of which customers could have
purchased instead of PPC’s patented SignalTight connect-
ors. Yet a significant number of buyers—67% of the total
market—decided to purchase SignalTight connectors.
The Board committed a second fundamental error in
criticizing PPC’s evidence of overall market share. The
Board reasoned that PPC’s data “suggests that at least a
portion of the purported commercial success appears due
to PPC’s pre-existing market share in the connector mar-
ket, which seemingly provided a commercial advantage
for any promotion of a new product, such as the Signal-
Tight connectors.” J.A. 30–31 (emphases added). As
support, it cited Geo. M. Martin Co. v. Alliance Machine
Sys. Int’l ILC, 618 F.3d 1294, 1304 (Fed. Circ. 2010), for
our statement that Alliance, the accused infringer, “con-
clusively established that much of George Martin’s com-
mercial success was due to Martin’s pre-existing market
share in the stacker market, which, according to Martin’s
president, gave it a ‘huge advantage’ in selling other
products because it allowed Martin to sell a ‘single-source
system,’” and that as a result, “this factor carries little
weight.” Id. at 31. The reasoning of Martin therefore
does not apply to the situation here, in which PPC’s
evidence suggests a transition away from its unpatented
PPC BROADBAND, INC. v. IANCU 21
EX connectors to its more expensive, patented Signal-
Tight connectors.
Moreover, although it is certainly possible that PPC’s
pre-existing market share from its EX connectors contrib-
uted to sales of PPC’s more expensive SignalTight con-
nectors, the burden rested with Corning, as the IPR
petitioner, to make this showing. Indeed, in Martin, we
determined in relevant part that the “commercial success”
of George Martin’s stackers “carrie[d] little weight” be-
cause “Alliance conclusively established that much of
George Martin’s commercial success was due to Martin’s
pre-existing market share in the stacker market.’” 618
F.3d at 1304 (emphasis added). Corning, however, did not
introduce any evidence, much less “conclusive” evidence,
that “much” of the success of PPC’s SignalTight connect-
ors was due to its earlier foothold in the marketplace.
Viewed in this light, PPC’s unrebutted evidence that it
was able to sell its SignalTight connectors at a premium
above its EX connectors while maintaining its overall
market share strongly supports the conclusion that cus-
tomers valued the patented continuity member in its
SignalTight connectors.
At bottom, it appears that the Board repeated the
same error on remand that it had committed in its final
written decisions: concluding that PPC’s SignalTight
connectors, which have a high market share, are “not
commercially successful solely because [they are] replac-
ing a similarly successful earlier version of the product
produced by the same company.” PPC I, 815 F.3d at 747
n.3. And, it did so without giving proper weight to the
presumption of commercial success we instructed it to
employ. As we explained in ClassCo, Inc. v. Apple, Inc.,
838 F.3d 1214, 1222 (Fed. Cir. 2016), where a patent
owner “present[s] unrebutted evidence that its products
experienced some, albeit limited, commercial success, and
that those products embodied the claimed features,” such
22 PPC BROADBAND, INC. v. IANCU
evidence must be weighed in the obviousness analysis and
a “blanket dismissal of it” is error.
PPC’s other arguments regarding objective indicia of
non-obviousness pertain to the Board’s failure to properly
consider PPC’s evidence of Corning’s failed attempts to
manufacture coaxial cables with a continuity member
that could be sold to consumers and its copying of PPC’s
patented design. In its initial final written decisions, the
Board determined that, although some of Corning’s efforts
to design connectors with continuity members “failed”
tests and although Corning “did not sell such connectors
to customers for whatever reason,” it was “not persuaded”
by PPC’s evidence of failed attempts by Corning because
other prototype connectors passed these same tests. J.A.
1231–32, 1239. It also determined that, although it was
persuaded that Corning copied PPC’s SignalTight design,
because “a showing of copying is only equivocal evidence
of non-obviousness in the absence of more compelling
objective indicia of other secondary considerations,” this
evidence was insufficient to overcome “Corning’s strong
evidence of obviousness.” J.A. 1234, 1239–40 (quoting
Ecolochem, 227 F.3d at 1378).
On appeal, we clarified that Corning’s failure to man-
ufacture connectors with a continuity member that could
be sold to consumers weighed in favor of non-obviousness,
as did the evidence of Corning’s copying. PPC I, 815 F.3d
at 746. On remand, however, the Board stated only that
it “t[ook] note of [its] prior assessment of the evidence
presented by PPC in connection with purported long-felt
but unresolved need, purported failed attempts by Corn-
ing, and copying by Corning,” and found “once again” that
such evidence did not outweigh “Corning’s strong evidence
of obviousness.” J.A. 33. Putting aside questions of how
evidence of obviousness and non-obviousness interact, the
Board simply ignored our directive to give due weight to
these indicia of non-obviousness in its obviousness analy-
sis and the evidence that prompted it. It also appears
PPC BROADBAND, INC. v. IANCU 23
that the Board failed to reconsider the weight it initially
gave PPC’s evidence of copying. Since it is now clear that
such evidence does not stand alone, this evidence must be
considered in conjunction with PPC’s showing of commer-
cial success and Corning’s failure to manufacture con-
nectors with a continuity member that could be sold to
consumers. On remand, the Board must consider PPC’s
objective indicia evidence anew and consider this evi-
dence, which “may often be the most probative and cogent
evidence in the record,” WBIP, 829 F.3d at 1328, along
with its consideration of the other three Graham factors.
III. CONCLUSION
For the foregoing reasons, we vacate the Board’s de-
termination that claims 8, 16, and 31 of the ’320 patent,
claims 1–9 of the ’060 patent, and claims 7–27 of the ’353
patent are unpatentable, and remand for further proceed-
ings
VACATED AND REMANDED
COSTS
Costs to PPC Broadband, Inc.