Trials@uspto.gov
`571-272-7822
`
` Paper 8
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`
` Entered: May 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIDGEPORT FITTINGS, INC.,
`Petitioner,
`
`v.
`
`ARLINGTON INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00005
`Patent 9,553,415 B1
`____________
`
`
`
`Before DEBRA K. STEPHENS, MINN CHUNG, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`571-272-7822
`
` Paper 8
`
`
` Entered: May 8, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIDGEPORT FITTINGS, INC.,
`Petitioner,
`
`v.
`
`ARLINGTON INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00005
`Patent 9,553,415 B1
`____________
`
`
`
`Before DEBRA K. STEPHENS, MINN CHUNG, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`PGR2018-00005
`Patent 9,553,415 B1
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`
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`I. INTRODUCTION
`Petitioner Bridgeport Fittings, Inc. (“Petitioner” or “Bridgeport”) filed
`a Petition (Paper 2, “Pet.”) requesting a post-grant review of claims 1–9 (the
`“challenged claims”) of U.S. Patent 9,553,415 B1 (Ex. 1001, “the ’415
`patent”). Patent Owner Arlington Industries, Inc. (“Patent Owner” or
`“Arlington”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We
`have authority to determine whether to institute a post-grant review.
`35 U.S.C. § 324; 37 C.F.R. § 42.4(a).
`The standard for instituting a post-grant review is set forth in
`35 U.S.C. § 324(a), which provides that a post-grant review may not be
`instituted unless “the information presented in the petition . . . , if such
`information is not rebutted, would demonstrate that it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.” Upon
`consideration of the Petition and the Preliminary Response, we conclude that
`the information presented in the Petition does not demonstrate that it is more
`likely than not at least one of the challenged claims is unpatentable.
`Accordingly, we do not institute a post-grant review.
`
`
`II. BACKGROUND
`A. Related Proceedings
`Petitioner indicates that there are no other proceedings involving the
`’415 patent. Pet. 3. Similarly, Patent Owner indicates that there exist no
`other pending proceedings that would affect, or be affected by, a decision in
`this proceeding. Paper 5, 1.
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`Petitioner identifies inter partes reexamination proceedings Control
`Nos. 95/000,196, 95/001,829, and 95/001,830 involving U.S. Patent Nos.
`6,521,831 (Ex. 1005, “the ’831 patent”), 7,954,538 (Ex. 1007, “the ’538
`patent”), and 7,882,886 (Ex. 1004, “the ’886 patent”), respectively, as
`related matters.1 Pet. 1–3. Patent Owner notes that, to the extent the
`reexamination of the ’831 patent is a related matter, dependent claim 3 of the
`’831 patent is currently before the Board on remand from the Federal
`Circuit. Prelim. Resp. 5 (citing Ex. 1006, 15–17).
`
`B. The ’415 Patent
`The ’415 patent relates to connectors for connecting electrical cables
`to an electrical panel. Ex. 1001, 1:15–16. As background, the ’415 patent
`describes duplex electrical fittings that are used to connect one or two
`electrical cables through a single opening of an electrical box installed in
`residential or commercial buildings. Id. at 1:21–24. According to the ’415
`patent, duplex fittings typically include an inbound end to accept insertion of
`armored electrical cables and an outbound end for connection to an electrical
`box. Id. at 1:24–29. Duplex fittings typically include two inbound bores at
`the inbound end that transition to a single outlet bore at the outbound end of
`the fittings. Id. at 1:29–31, 56–57. Having these structures, according to the
`’415 patent, duplex fittings provide a pathway for advancing the electrical
`conductors of the inserted armored electrical cables through the internal
`bores to the outbound end of the fitting. Id. at 1:16–18, 40–42.
`
`1 The ’886 patent issued from a predecessor application of the application
`that led to the ’415 patent. The ’538 patent is a continuation of the ’886
`patent. The ’831 patent is not directly related to the ’415 patent.
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`Also as background, the ’415 patent describes that there is typically
`scant space surrounding an electrical box, limiting the length of the duplex
`fittings which must fit within the cramped spaces between the electrical box,
`the walls, and other surrounding structures. Id. at 1:31–35. According to the
`’415 patent, due to their compact dimensions, a shortcoming of the prior art
`connectors is the difficulty in advancing the conductors through the internal
`structure of the fittings. Id. at 1:37–39.
`The ’415 patent describes a duplex fitting including a radius disposed
`in the transition area for effectively stopping advancement of the armor layer
`of the inserted cables while at the same time enabling easy passage of the
`conductors of the cables to the outbound end. Id., Abstract. Specifically,
`according to the ’415 patent, an end stop at the transition area includes a
`radius surface, which enables the end stop to effectively stop advancement
`of the armor layer of the cables while at the same time enabling easy passage
`of the conductors through the internal bores to the outbound end of the
`fitting. Id. at 1:57–61.
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`Figure 17 of the ’415 patent is reproduced below.
`
`
`Figure 17 is an exploded perspective view of an exemplary duplex fitting of
`the ’415 patent. Id. at 2:38–40, 5:33–35. As shown in Figure 17 above,
`duplex fitting 200 includes connector body 202, which comprises inbound
`end 204, outbound end 206, and nose portion 208. Id. at 5:35–38.
`Connector body 202 also includes two inbound bores 211 defined by tubular
`inbound walls 212 and dividing wall 214. Id. at 5:38–40. As also shown in
`Figure 17, duplex fitting 200 further comprises fastening arrangement 33 for
`fastening duplex fitting 200 to an electrical panel or junction box. Id. at
`5:46–48. According to the ’415 patent, fastening arrangement 33
`“include[s] snap ring 34,” which is shown in Figure 17 in alignment for
`insertion on seat 210 of nose portion 208. Id. at 5:46–50. Duplex fitting 200
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`also comprises cable retaining arrangement 36, including cable retaining
`ring 38 for insertion in each inbound bore 211. Id. at 5:50–51.
`According to the ’415 patent, in the prior art duplex fittings, due to
`their compact length, the transition from two bores to one bore within the
`short length of the fittings, and the need to stop the forward advance of the
`cables’ armor at the transition, the conductors of the electrical cables tend to
`hang up within the fittings. Id. at 5:52–56. The ’415 patent describes that a
`“critical feature” is provided to enable the conductors to pass through the
`transition from inbound bores 211 to outbound bore 224 more easily. Id. at
`5:57–62.
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`Figure 24 of the ’415 patent is reproduced below.
`
`
`Figure 24 is an isometric view of the interior half of the connector body
`depicted in Figure 18, which is a top view of the embodiment depicted in
`Figure 17. Id. at 2:38–43, 2:53–54.
`Referencing Figure 24 as well as Figures 20 and 21 (not reproduced
`herein), the ’415 patent describes that, to provide easier pass through of
`conductors, a radius or arcuate edge 226 has been provided on end stop 228
`at outbound end 229 of dividing wall 214. Id. at 5:59–62. According to the
`’415 patent, arcuate edge 226, as shown in Figure 24, “has provided
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`unexpected results in that conductors pass much more easily through the
`transition area 230,” making the conductors “much less likely to hang up in
`the interior of the connector body 202 at the transition from the inbound
`double bores 211 to the outbound single bore 224.” Id. at 5:62–6:7.
`
`C. Illustrative Claim
`Claim 1 is the only independent claim in the ’415 patent. Claim 1 is
`illustrative of the challenged claims and is reproduced below with the key
`disputed limitations emphasized in italics.
`1.
`A duplex fitting for connection of electrical cables to an
`electrical box comprising:
`a tubular connector body including a nose portion, two inbound
`bores and a transition area leading to an outbound bore;
`a dividing wall separating said inbound bores, said dividing wall
`including an outbound end;
`an end stop at the outbound end of including an edge at the
`transition area;
`an arcuate edge on said end stop;
`said connector body including an inbound end and an outbound
`end;
`a snap ring on said nose portion of said connector body; and
`a cable retaining ring secured in each of said inbound bores of
`said connector body.
`Ex. 1001, 6:18–33 (emphases added).
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability in relation
`to the challenged claims in the ’415 patent (Pet. 12–13):
`
`Claims Challenged
`
`Statutory Basis
`
`1–9
`
`§ 112(b)
`
`1, 2, and 4–7
`
`§ 102
`
`3, 8, and 9
`
`1, 2, 6, and 7
`
`3, 8, and 9
`
`4 and 5
`
`§ 103
`
`§ 102
`
`§ 103
`
`§ 103
`
`1, 2, and 4–7
`
`§ 103
`
`3, 8, and 9
`
`§ 103
`
`Reference(s) /
`Asserted Prior Art
`
`
`U.S. Patent No. 6,521,831 B1
`(Ex. 1005, “the ’831 patent”)2
`U.S. Patent No. 6,352,439 B1
`(Ex. 1035, “the ’439 patent”)3 and
`the ’831 patent
`3838ASP Connector4
`3838ASP Connector and
`the ’439 patent
`3838ASP Connector and
`the ’831 patent
`U.S. Patent No. 1,328,290
`(Ex. 1020, “the ’290 patent”)5 and
`the ’831 patent
`The ’290 patent, the ’831 patent,
`and the ’439 patent
`
`
`2 The ’831 patent issued on February 18, 2003.
`3 The ’439 patent issued on March 5, 2002.
`4 Petitioner relies on the sale of the Bridgeport 3838ASP connector
`(“3838ASP Connector”), which Petitioner asserts took place on September
`13, 2006. Pet. 32–33 (citing Ex. 1018, 45).
`5 The ’290 patent issued on January 20, 1920.
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`In addition, Petitioner asserts that claims 1–9 are unpatentable under
`35 U.S.C. § 103 as obvious “over the respective references as applied to
`each claim” under the above § 102 and § 103 grounds further in view of the
`industry standards UL514B and NEMA FB-1. Pet. 14.
`Petitioner also relies on the Declaration of Nicholas J. Williamson
`(Ex. 1021) as well as the Declaration of Lawrence J. Smith (Ex. 1019). In
`addition, Petitioner relies on the Trial Expert Report of Christopher D. Rahn,
`Ph.D. (Ex. 1018), from a prior district court litigation.
`
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`We begin our analysis by addressing the level of ordinary skill in the
`art. In determining the level of skill in the art, various factors may be
`considered, including the types of problems encountered in the art, prior art
`solutions to those problems, the sophistication of the technology, rapidity
`with which innovations are made, and educational level of active workers in
`the field. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`addition, we may be guided by the level of skill in the art reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed.
`Cir. 2001).
`Relying upon the Declaration of Mr. Williamson, Petitioner contends
`that a person of ordinary skill in the art at the time of the effective filing date
`of the ’415 patent would have had a degree in electrical or mechanical
`engineering and two to three years’ experience in the industry, or a lesser
`qualification such as a trade school diploma and four to five years’
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`experience in the industry. Pet. 19 (citing Ex. 1021 ¶ 32). Petitioner further
`asserts that a person of ordinary skill in the art would have had the
`knowledge of UL Standard 514B on Fittings for Cables and Conduit (“UL
`514B”). Id. (citing Ex. 1021 ¶ 32). Citing the testimony of Mr. Smith,
`Petitioner asserts that UL 514B is one of the baseline standards that fittings
`must meet to comply with the National Electrical Code, NFPA 70. Id.
`(citing Ex. 1019 ¶ 17).
`Petitioner additionally contends that a person of ordinary skill in the
`art would have had the knowledge that “a basic requirement for electrical
`connectors for armored cable [is that they have] a rounded end stop, so that
`the armor will not pass through.” Id. (emphasis added) (citing Ex. 1019
`¶ 26; Ex. 1021 ¶ 32).
`At this time, Patent Owner does not dispute Petitioner’s assessment of
`the level of ordinary skill in the art or propose an alternative assessment.
`Based on the record presented, we are persuaded by Petitioner’s
`argument and evidence regarding the ordinary artisan’s level of education
`and knowledge of industry standards, such as UL 514B. We are, however,
`not persuaded by Petitioner’s argument that the alleged “basic requirement
`for electrical connectors” to have a “rounded end stop” would have been part
`of the knowledge of a person of ordinary skill in the art. Petitioner’s
`contention is based on the declaration testimony of Mr. Williamson and Mr.
`Smith6 (see Pet. 19 (citing Ex. 1019 ¶ 26; Ex. 1021 ¶ 32)), who discuss
`industry standards, such as UL 514B, as teaching or disclosing that
`
`
`6 According to Mr. Smith, he is currently Petitioner Bridgeport’s Senior Vice
`President of Manufacturing and Engineering. Ex. 1019 ¶ 1.
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`connectors for armored cables are to have a smooth, well rounded end stop
`(see Ex. 1019 ¶¶ 25–26; Ex. 1021 ¶¶ 31–32). However, neither Mr.
`Williamson nor Mr. Smith explains adequately why the specific teaching of
`the standard they rely on, i.e., a smooth, well rounded end stop, would have
`been part of the general knowledge of a person of ordinary skill in the art at
`the time of the invention. Hence, Petitioner may have demonstrated that a
`person of ordinary skill in the art would have been aware of industry
`standards, such as UL 514B, but not that the specific teaching of the
`standards with respect to an end stop relied upon by Petitioner would have
`been part of the general knowledge of a person of ordinary skill in the art at
`the time of the invention.
`Therefore, based on the record presented and for purposes of this
`Decision, we determine that a person of ordinary skill in the art at the time
`of the effective filing date of the ’415 patent would have had a degree in
`electrical or mechanical engineering and two to three years’ experience in
`the industry, or a lesser qualification such as a trade school diploma and four
`to five years’ experience in the industry. In addition, we determine a person
`of ordinary skill in the art in the same time frame would have been familiar
`with industry standards, such as UL 514B.
`
`B. Claim Construction
`In a post-grant review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.200(b). Under the broadest
`reasonable interpretation standard, and absent any special definitions, claim
`terms generally are given their ordinary and customary meaning, as would
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`be understood by one of ordinary skill in the art, in view of the specification.
`In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes express constructions for the claim terms “tubular
`connector body,” “dividing wall including an outbound end,” “end stop,”
`“edge,” and “arcuate edge on said end stop.” Pet. 20–23. Petitioner also
`contends that several terms recited in the challenged claims cannot be
`construed, rendering the challenged claims indefinite. Id. at 22–25, 34–38.
`Patent Owner addresses the constructions of the terms “an end stop at the
`outbound end” and “an arcuate edge on said end stop” recited in claim 1.
`Prelim. Resp. 36–44. Patent Owner also disputes Petitioner’s contention that
`the challenged claims are indefinite. Id. at 30–36.
`For purposes of this Decision, we need only to construe the terms
`“end stop at the outbound end” and “arcuate edge on said end stop.” We
`need not construe explicitly any other claim terms because we need only
`construe terms “that are in controversy, and only to the extent necessary to
`resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Although we
`discuss Petitioner’s contentions regarding the indefiniteness of the
`challenged claims separately below, we address Petitioner’s assertion that
`certain claim terms cannot be construed, to the extent it is necessary to
`ascertain proper constructions for the terms discussed below.
`
`1. “end stop at the outbound end”
`As set forth above, claim 1 recites “an end stop at the outbound end of
`including an edge at the transition area.” Ex. 1001, 6:25–26. Petitioner
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`addresses the terms “end stop,” “outbound end,” and “edge” separately and
`proposes constructions for terms “end stop” and “edge.” Pet. 21–23.
`Petitioner also asserts that the term “outbound end” is impossible to
`construe. Id. at 22.
`First, Petitioner contends that the term “end stop” should be construed
`to mean “a restriction that limits the end of a cable, conduit, or other element
`from insertion into a passageway beyond the restriction” based on the
`general understanding of the term in the electrical fitting art, as reflected in
`the use of end stop in UL Standard 514B on Fittings for Cables and Conduit
`(“UL 514B”). Id. at 21–22. Petitioner also proposes to interpret the term
`“edge” based on dictionary definitions as “the line or point where a material
`object or area begins or ends” or “the portion of the surface of an object or
`area that is adjacent to its border.” Id. at 23 (citing Ex. 1032, 4;7 Ex. 1021
`¶¶ 39–44 (citing Ex. 1032, 5–6)).
`Patent Owner asserts that Petitioner’s proposed constructions are
`unreasonably broad. Prelim. Resp. 37. Referencing Petitioner’s proposed
`construction of the term “end stop,” Patent Owner argues that, under
`Petitioner’s construction, the claimed “end stop” may include the shoulder or
`the transition area in the connector body. Id. (citing Pet. 40 (“The transition
`between leading to the outbound bore of both the ’831 patent and the ’415
`patent serves as an end stop.”), 51 (“The end stop of the 3838ASP is the
`transition area leading to the outbound bore.”)).
`
`
`7 The page numbers for Ex. 1032 refer to the page numbers inserted by
`Petitioner at the bottom-right corner of each page.
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`We agree with Patent Owner that Petitioner’s proposed constructions
`are unreasonably broad in view of the claim language and the specification
`of the ’415 patent. See PPC Broadband, Inc. v. Corning Optical Commc’ns
`RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (“the broadest reasonable
`interpretation must be reasonable in light of the claims and specification”).
`Petitioner construes individual terms “end stop,” “outbound end,” and
`“edge” separately in isolation from the claim limitation in which they appear
`and without considering the context within the claim as whole and the
`specification. “Construing individual words of a claim without considering
`the context in which those words appear is simply not ‘reasonable.’”
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016); see also
`In re Geerdes, 491 F.2d 1260, 1262–63 (CCPA 1974) (“every limitation in
`the claim must be given effect rather than considering one in isolation from
`the others” (emphasis added)); cf. Apple Computer, Inc. v. Articulate Sys.,
`Inc., 234 F.3d 14, 25 (Fed. Cir. 2000) (“the claim must be viewed as a
`whole” (emphasis added)).
`Beginning with the claim language, Interactive Gift Express, Inc. v.
`Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001), we note that claim
`1 expressly recites “an end stop at the outbound end.” Ex. 1001, 6:24
`(emphasis added). And this recitation follows the immediately preceding
`limitation, which recites “a dividing wall separating said inbound bores, said
`dividing wall including an outbound end.” Ex. 1001, 6:23–24 (emphasis
`added).
`As noted by Patent Owner, claim 1 introduces “an outbound end” of
`the dividing wall as a new claim element. Prelim. Resp. 31. Patent Owner
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`argues, because no other outbound ends have been introduced at that point,
`the term “the outbound end” recited in the very next limitation must refer to
`the outbound end of the dividing wall as its antecedent basis. Id. Hence,
`Patent Owner asserts that the term “an end stop at the outbound end” should
`be construed to mean “an end stop at the outbound end of the dividing wall
`between two inbound bores.” Id. at 41.
`Patent Owner asserts that its proposed construction is supported by the
`specification. Patent Owner provides an annotated version of Figure 24,
`which is reproduced below.
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`
`Id. at 32. Annotated Figure 24 above shows Patent Owner’s identification of
`end stop 228 at outbound end 229 of dividing wall 214 disclosed in an
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`exemplary embodiment of the ’415 patent. Referring to Annotated Figure
`24, Patent Owner argues the specification discloses that an “arcuate edge
`226 has been provided on the end stop 228 at the outbound end 229 of
`dividing wall 214,” which matches the claim language the “dividing wall . . .
`including an outbound end; [and] an end stop at the outbound end,” as
`recited in claim 1. Id. (citing Ex. 1001, 5:59–62) (emphasis by Patent
`Owner). Patent Owner further asserts that “the only disclosure regarding an
`end stop” in the ’415 patent is in reference to the embodiment depicted in
`Figure 24 discussed above. Id. at 33 (citing Ex. 1001, 5:59–6:9).
`Hence, Patent Owner argues, when read in context of the claim as a
`whole and in light of the specification, a person skilled in the art would
`understand that the “end stop at the outbound end” means an end stop at the
`outbound end of the dividing wall between two inbound bores, which
`functions to prevent advancement of armored cables beyond the inbound
`bores. Id. at 41 (citing Ex. 1001, 1:56–61 (“An end stop at the transition
`area includes a radius surface thereon to enable the end stop to effectively
`stop advancement of the armor layer of the cable while at the same time
`enabling easy passage of the conductors there through to the outbound
`end.”), 5:52–56 (end stop functions to “stop the forward advance of the
`cable’s armor at the transition”)).
`We are persuaded by Patent Owner’s argument and evidence and,
`based on the record before us, interpret “an end stop at the outbound end” to
`mean “an end stop at the outbound end of the dividing wall between two
`inbound bores” based on Patent Owner’s proposed construction.
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`Petitioner asserts that the term “outbound end” is impossible to
`construe because claim 1 does not specify what comes after the preposition
`“of” in the recited phrase “the outbound end of.” Pet. 22–23. Petitioner
`makes essentially the same argument in the context of its unpatentability
`argument based on indefiniteness. See id. at 35–36. We address Petitioner’s
`indefiniteness argument separately below. For the reasons explained below,
`the information presented by Petitioner does not demonstrate that it is more
`likely than not that claim 1 is indefinite or the term “the outbound end” is
`impossible to construe.
`
`2. “arcuate edge on said end stop”
`Relying upon a dictionary definition, Petitioner asserts that the term
`“an arcuate edge on said end stop” should be construed to mean “a curved
`boundary.” Pet. 23 (citing Ex. 1031, 3–4).
`Patent Owner asserts that Petitioner’s proposed construction is so
`broad that the term reads on a wide range of curved walls throughout the
`interior of the connector body. Prelim. Resp. 41. Patent Owner argues that
`Petitioner’s construction effectively reads out the claim’s requirement that
`the arcuate edge is on the end stop. Id. at 44. Patent Owner asserts that,
`when read in the context of claim 1 as a whole and in light of the
`specification, the term “an arcuate edge on said end stop” is properly
`interpreted to mean “a radius on the end stop at the outbound end of the
`dividing wall.” Id. at 43.
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`Patent Owner provides another annotated version of Figure 24, which
`is reproduced below.
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`Id. at 16. Annotated Figure 24 above shows Patent Owner’s identification of
`arcuate edge 226 (annotated in red), end stop 229 (annotated in grey), and
`dividing wall 214 (annotated in blue) disclosed in the same exemplary
`embodiment of the ’415 patent discussed above.
`Referencing Annotated Figure 24 above, Patent Owner argues that the
`’415 patent describes “arcuate edge 226 is ‘provided on the end stop 228 at
`the outbound end 229 of dividing wall 214.’” Id. (citing Ex. 1001, 5:59–62).
`Patent Owner asserts that, while a lower edge of the end stop is designed to
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`engage with and prevent advancement of the armored layer of the cable, the
`arcuate edge on the dividing wall’s outbound end enables the conductors to
`pass through easily. Id. (citing Ex. 1001, 1:56–61). According to Patent
`Owner, “the location and design of the arcuate edge facilitates easier passing
`of the conductors and eliminates potential hanging up at the transition from
`the two bores 211 to the single bore 224.” Id. (citing Ex. 1001, 5:62–6:6).
`Patent Owner argues, therefore, in the context of claim 1 as a whole
`and in view of the specification, the claimed “arcuate edge” is properly
`understood as having a radius of curvature and being positioned at an edge
`of the end stop and the outbound end of the dividing wall. Id. (citing
`Ex. 1001, 5:59–62).
`We agree with Patent Owner that Petitioner’s proposed interpretation
`of “an arcuate edge on said end stop” as “a curved boundary” is
`unreasonably broad. First, the claim expressly recites that the claimed
`“arcuate edge” is on “said end stop.” Hence, we agree with Patent Owner
`that Petitioner’s proposed construction would read out the expressly recited
`limitation “said end stop” from claim 1.
`Further, the limitation “an arcuate edge on said end stop” follows the
`immediately preceding limitation, which recites “an end stop at the outbound
`end.” Ex. 1001, 6:25–27. No other “end stop” is recited in claim 1. Hence,
`the plain language of the claim indicates that the term “said end stop” refers
`to the “end stop at the outbound end” recited in the immediately preceding
`limitation. As discussed above, we construe “an end stop at the outbound
`end” to mean “an end stop at the outbound end of the dividing wall between
`two inbound bores.” Thus, the language of claim 1 indicates that the
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`claimed “arcuate edge” is disposed on the end stop at the outbound end of
`the dividing wall.
`Still further, as discussed in Section II.B above, the ’415 patent
`describes “a radius or arcuate edge 226 . . . provided on the end stop 228 at
`the outbound end 229 of dividing wall 214” (Ex. 1001, 5:59–62) (emphases
`added) as a “critical feature” that “enable[s] the conductors [to] pass through
`the transition from inbound bore 211 to outbound bore 224” (id. at 5:57–59).
`The ’415 patent further discloses that “[t]he arcuate edge 226, as shown in
`FIG. 24, has provided unexpected results in that conductors pass much more
`easily through the transition area 230.” Id. at 5:62–6:3 (emphasis added). In
`addition, in the section titled “SUMMARY OF THE INVENTION,” the
`’415 patent describes that “[a]n end stop at the transition area includes a
`radius surface thereon to enable the end stop to effectively stop
`advancement of the armor layer of the cable while at the same time enabling
`easy passage of the conductors there through to the outbound end.” Id. at
`1:57–61 (emphasis added). Therefore, the ’415 patent describes, as a key
`inventive feature, the edge of the end stop at the outbound end of the
`dividing wall has a radius, radius surface, or arcuate portion. As noted by
`Petitioner, a dictionary definition of the word “arcuate” is “bent or curved in
`the form of a bow.” Pet. 23 (emphasis added) (citing Ex. 1032, 3–4).
`Based on the foregoing, considering the context of claim 1 as a whole
`and in view of the specification, we construe “an arcuate edge on said end
`stop” to mean “a radius or curvature edge on the end stop at the outbound
`end of the dividing wall.”
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`C. Post-Grant Review Eligibility
`Post-grant reviews are available only for patents “described in section
`3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112-
`29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A). Such patents are those that
`issue from applications “that contain[] or contained at any time . . . a claim
`to a claimed invention that has an effective filing date as defined in section
`100(i) of title 35, United States Code, that is on or after” “the expiration of
`the 18-month period beginning on the date of the enactment of” the AIA.
`Id. § 3(n)(1). Because the AIA was enacted on September 16, 2011, post
`grant review is available only for patents that issue from applications that, at
`one point, contained at least one claim with an “effective filing date,” as
`defined by 35 U.S.C. § 100(i), on or after March 16, 2013.
`Our rules require a petitioner for post grant review to certify that the
`challenged patent is available for post grant review. 37 C.F.R. § 42.204(a)
`(“The petitioner must certify that the patent for which review is sought is
`available for post-grant review . . . .”). Petitioner includes the requisite
`certification, and further, asserts that at least claim 3 has an effective filing
`date of August 1, 2016, which is the actual filing date of the ’415 patent.
`Pet. 5–7, 10–11.
`The effective filing date of an application for a patent on an invention
`is “the filing date of the earliest application for which the . . . application is
`entitled, as to such invention, to a right of priority under section 119, 365(a),
`365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under
`section 120, 121, 365(c), or 386(c).” 35 U.S.C. § 100(i)(1)(B). In the event
`that the application is not entitled to any earlier filing date or right of
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`priority, the effective filing date is “the actual filing date of the . . .
`application for the patent containing a claim to the invention.” 35 U.S.C.
`§ 100(i)(1)(A).
`According to the front page of the ’415 patent, the ’415 patent was
`filed on August 1, 2016 and is a continuation-in-part of application no.
`12/384,467, filed April 3, 2009 (Ex. 1016, “the ’467 application”), which in
`turn is a continuation of application No. 12/080,482, filed on April 3, 2008
`(Ex. 1003, “the ’482 application”). Ex. 1001 at [63]. The ’482 application
`issued as U.S Patent No. 7,882,886 (Ex. 1004, “the ’886 patent). Id.
`Petitioner asserts that, if the limitation “an arcuate edge on said end
`stop” is interpreted to mean a curvature edge of the end stop at the outbound
`end of the dividing wall, this limitation, and, hence, claim 1, is not supported
`by any priority application. Pet. 11. Petitioner further contends that, under
`its proposed construction, claim 3, which depends from claim 1, recites
`subject matter which is not supported by any priority application. Id.
`Patent Owner does not dispute the post-grant review eligibility of the
`’415 patent. See generally Prelim. Resp.
`As discussed above, we construe “an arcuate edge on said end stop” to
`mean “a radius or curvature edge on the end stop at the outbound end of the
`dividing wall.” Upon reviewing the ’467 application, the ’482 application,
`and the ’886 patent, we agree with Petitioner that no arcuate, radius, or
`curvature edge disposed on the end stop at the outbound end of the dividing
`wall is described in any of the priority documents. Based on the record
`presented, we are persuaded that claim 1 has an effective filing date of
`Augus
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