John Mezzalingua Associates, Inc. v. Corning Gilbert Inc.

Filing 103

MEMORANDUM DECISION AND ORDER: It is ORDERED that Magistrate Judge David E. Peebles' March 14, 2014 # 91 Report and Recommendation is ADOPTED in its entirety. It is further ORDERED that Times Fiber's # 67 Motion for leave to intervene in this action is DENIED. Signed by Chief Judge Gary L. Sharpe on 8/21/2014. (mc)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
PPC BROADBAND, INC.,
d/b/a PPC,
Plaintiff,

5:12-cv-911
(GLS/DEP)

v.
CORNING OPTICAL
COMMUNICATIONS RF, LLC,
Defendant.
TIMES FIBER COMMUNICATIONS,
INC.
Proposed Intervenor.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Hiscock, Barclay Law Firm
Syracuse Office
One Park Place
300 South State Street
Syracuse, NY 13202-2078
FOR THE DEFENDANT:
Harter, Secrest Law Firm
Rochester Office
1600 Bausch & Lomb Place
Rochester, NY 14604-2711
DLA Piper LLP
DC Office
500 Eighth Avenue NW

DOUGLAS J. NASH, ESQ.
JOHN D. COOK, ESQ.
JASON C. HALPIN, ESQ.

DAVID M. LASCELL, ESQ.
JERAULD E. BRYDGES, ESQ.

JOSEPH P. LAVELLE, ESQ.
ANDREW N. STEIN, ESQ.

Washington, DC 22004
Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction
Plaintiff PPC Broadband, Inc., doing business as PPC, commenced
this action against defendant Corning Optical Communications RF, LLC, 1
for alleged infringement of four of PPC’s coaxial cable connector patents.
(See generally Am. Compl., Dkt. No. 24.) Following the parties’ request for
the construction of twelve disputed terms in the four patents in suit, the
court referred the matter to Magistrate Judge David E. Peebles for a
Markman2 hearing. (Dkt. Nos. 37, 41, 42, 57, 58, 62.) In a Report and
Recommendation (R&R) filed December 5, 2013, Judge Peebles
recommended constructions for eight of the disputed terms, and, with
respect to the remaining four, found that no construction was necessary.
(Dkt. No. 64.) Pending are Corning’s objections to the R&R. (Dkt. No. 96.)

1

On June 27, 2014, the court approved the parties’ stipulation to amend the caption in
this case, in order to reflect that Corning Gilbert Inc. has changed its formal corporate name to
Corning Optical Communications RF, LLC. (Dkt. Nos. 88, 102.)
2

See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), aff’d 517
U.S. 370 (1996)

2

Also pending is a motion by nonparty Times Fiber Communications, Inc.,
seeking to intervene in this action, for the limited purpose of objecting to
the claim construction recommended in the R&R. (Dkt. No. 67.) On March
14, 2014, Judge Peebles recommended, in a second R&R, that the motion
to intervene be denied in all respects. (Dkt. No. 91.) No party has filed
objections to that R&R. Largely for the reasons articulated by Judge
Peebles, and for the reasons that follow, all of Judge Peebles’
recommendations are adopted in their entirety.
II. Standard of Review
Before entering final judgment, this court reviews report and
recommendation orders in cases it has referred to a magistrate judge. If a
party properly objects to a specific element of the magistrate judge’s
findings and recommendations, this court reviews those findings and
recommendations de novo. See Almonte v. N.Y. State Div. of Parole, No.
Civ. 904CV484GLS, 2006 WL 149049, at *3, *5 (N.D.N.Y. Jan. 18, 2006).
In those cases where no party has filed an objection, only vague or general
objections are made, or a party resubmits the same papers and arguments
already considered by the magistrate judge, this court reviews the findings
and recommendations of the magistrate judge for clear error. See id. at *43

5.
III. Discussion
Although there were twelve disputed terms at issue in the R&R,
Corning’s objections relate only to the proposed construction of four of the
terms: “connector body”; “a post, engageable with the connector body”;
“positioned along the post”; and “conductive coating.” (Dkt. No. 96 at 922.) In response to Corning’s objections, PPC argues that Judge Peebles’
recommendations were appropriate and should be adopted by this court.
(Dkt. No. 97 at 8-25.) The court will address each of the terms, and the
respective recommended constructions to which Corning has objected,
below.
A.

Connector Body
Judge Peebles recommended that the term “connector body” be

given the construction: “structure of the connector that is secured to the
post at one end and includes an open end for receiving a portion of the
coaxial cable. This structure can be comprised of more than one piece,
and is therefore not limited to a single integral or unitary one-piece
component.” (Dkt. No. 64 at 33-36.) Corning objects primarily to the
second sentence of that construction, arguing that the recommended
4

construction is improper and that the court should strike the last sentence
of the construction. (Dkt. No. 96 at 9-15.)
When faced with “an actual dispute regarding the proper scope” of a
patent claim, the court must construe the allegedly infringed claim to
determine its meaning and scope. O2 Micro Int’l Ltd. v. Beyond Innovation
Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008). In so doing, the
court is cognizant that unless the patentee “acts as his own lexicographer”
or “disavows the full scope of a claim term either in the specification or
during prosecution,” the words of a claim are “given their plain and ordinary
meaning [as understood by] one of skill in the art.” See Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365-67 (Fed. Cir. 2012).
When “the meaning of a claim term as understood by persons of skill in the
art is not readily apparent,” the court must construe the disputed claim
terms in order to resolve such disputes. O2 Micro, 521 F.3d at 1360.
Here, Corning argues that Judge Peebles’ recommended
construction should not be adopted, because it conflicts with this court’s
construction of a similar term in another case. (Dkt. No. 96 at 9-10.)
Specifically, Corning points to the court’s construction of the term
“connector body” in a different patent, from a separate case pending
5

between these two parties. See John Mezzalingua Assocs., Inc. v. Corning
Gilbert Inc., No. 5:11-cv-761, 2012 WL 5880674, at *1-2 (N.D.N.Y. Nov. 21,
2012). There, the court, finding that there was “neither ambiguity in the
terms, nor a dispute as to the scope of the claim,” gave the terms
“cylindrical body member” and “connector body” their plain and ordinary
meanings. Id. at *2. Although Corning argues that the court should follow
that same course here, in this case, as Judge Peebles pointed out, the
parties plainly dispute the scope of “connector body,” and whether it can be
more than one component or is limited to a single component piece. (Dkt.
No. 64 at 35-36.) Therefore, the court is obligated to resolve this dispute in
claim scope, in order to prevent the parties from impermissibly arguing
claim construction, a question of law, to the jury. See O2 Micro, 521 F.3d
at 1360 (“When the parties raise an actual dispute regarding the proper
scope of . . . claims, the court, not the jury, must resolve that dispute.”
(citing Markman, 52 F.3d at 979)). Here, because there is no indication in
the patents or their specifications “that the inventors intended to restrict the
term connector [body] to a single unitary structure,” (Dkt. No. 64 at 36), it is
entitled to its full scope and there is no basis to limit it to a single or unitary
one-piece component. The court therefore adopts the construction
6

recommended in the R&R.
B.

A Post, Engageable With the Connector Body
In his R&R, Judge Peebles recommended that the term “a post,

engageable with the connector body” be construed as “a post and
connector body, which are separate components of the connector ( i.e.,
they are not a single integral component), that are interlocked with one
another to prevent axial movement of one relative to the other.” ( Id. at 3133.) The primary disagreement between the parties with respect to this
term is whether the post and connector body must always be separate and
distinct components of a connector. Corning asserts that this term requires
no construction, and should be given its ordinary, plain meaning. (Dkt. No.
57 at 8-9.) Specifically, in its objections, Corning argues that Judge
Peebles’ recommended construction is not consistent with the entirety of
the patent specifications because, while some terms referring to the post
and connector body imply that they would be separate components, others,
such as “attached,” could potentially refer to a single, integrated body and
post. (Dkt. No. 96 at 15-18.)
However, the court finds persuasive the precedent cited by PPC in
response to Corning’s objections, (Dkt. No. 97 at 21), in which the Federal
7

Circuit held that, where a claim required components to be “affixed,”
“joined,” “connected,” or “conjoin[ed]”, this “claim language fully support[ed]
a requirement of separateness.” Regents of Univ. of Minn. v. AGA Med.
Corp., 717 F.3d 929, 935, 938 (Fed. Cir. 2013). Similarly, as Judge
Peebles noted in his R&R, clarifying that the connector body and post are
not part of a single unitary piece is consistent with the ordinary meaning of
this term, as the limitations that these components be “engageable,”
“configured to engage,” or “attached” would be superfluous and
unnecessary if the body and post constituted a single component. (Dkt.
No. 64 at 32-33.) Accordingly, the court adopts the recommended
construction of this term.
C.

Positioned Along the Post
With respect to this term, Judge Peebles recommended that it be

defined as “located a point on the length of the post, and behind the first
surface of the internal lip of the nut.” (Id. at 28-31.) As above, Corning
argued that no construction of this term is necessary, (Dkt. No. 42 at 24),
and, in its objections, it takes issue with the apparent limitation in the claim
which requires that the continuity member be located “behind” the nut, (Dkt.
No. 96 at 18-20). While Judge Peebles acknowledged that “positioned
8

along the post” is a commonly understood phrase that ordinarily would not
require further construction or modification by the court that would restrict
the term, he noted that the patentee in this case has disavowed the full
scope of positioning, and has limited this claim term to mean only continuity
members that are located behind the nut, so as not to include positioning of
the continuity member in front of the first surface of the lip of the nut. (Dkt.
No. 64 at 28-31.) It is to this particular aspect of the recommendation that
Corning objects. Specifically, Corning argues that disavowal of the full
scope of the term has not occurred here, as there has been no clear and
unambiguous disclaimer of the full scope. (Dkt. No. 96 at 18-20.)
A patentee may avoid attributing the customary and ordinary
meaning to a claim term if “the patentee disavows the full scope of a claim
term either in the specification or during prosecution.” Thorner, 669 F.3d at
1366. “To disavow claim scope, the specification must contain
‘expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.’” Retractable Techs., Inc. v. Becton, Dickinson &
Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l
Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)).
The court disagrees with Corning’s argument that the disavowal here
9

is insufficiently clear and unambiguous. (Dkt. No. 96 at 18-20.) Although
the language of the claims of the patent at issue teach “a continuity
member, positioned along the post . . . to contact the post[ ] and . . . the
second surface of the internal lip of the nut,” (Dkt. No. 24, Attach. 1 at 70),
the patent specification plainly states that “all continuity members . . .
reside rearward of the . . . lip of the nut,” (id. at 66). Further, during patent
prosecution, in communications with the Patent and Trademark Office, the
inventors distinguished their invention from similar prior art based at least
in part on the fact that, in the prior art, the continuity member was in front of
(“axially forward”) the lip of the nut, unlike the patented invention at issue
here, where the continuity member is located behind the lip of the nut.
(Dkt. No. 41, Attach. 10 at 17-18.) The court therefore finds that the
patentee’s disavowal of the full scope of this term was sufficiently clear and
unambiguous, see Thorner, 669 F.3d at 1366, and thus adopts Judge
Peebles’ recommended construction.
D.

Conductive Coating
Judge Peebles recommended that “conductive coating” be given the

construction: “a layer of material that is conductive.” (Dkt. No. 64 at 45-47.)
Specifically, he declined to import Corning’s suggested limitation on this
10

term, which purports to require that the conductive material be applied by a
coating process to a non-conductive surface, (Dkt. No. 42 at 18), because
this limitation came only from one example cited in the patent, and not from
the patent claims or patent specification, (Dkt. No. 64 at 46-47); see Silicon
Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010).
Corning’s objections to the construction of “conductive coating” consist of
arguments it already presented to Judge Peebles in its opening claim
construction brief. (Compare Dkt. No. 42 at 18-20, with Dkt. No. 96 at 2122.) Despite its claim that the entire R&R is reviewed de novo, (Dkt. No. 96
at 7), the court need only conduct a clear error review with respect to
arguments that have already been submitted to the Magistrate Judge. See
Almonte, 2006 WL 149049, at *4. Having reviewed those arguments and
the remainder of Judge Peebles’ R&R for clear error, and finding none, and
for the reasons discussed in the sections above, the court accepts and
adopts Judge Peebles’ claim construction R&R in its entirety.
E.

Motion to Intervene
In a second R&R, Judge Peebles addressed Times Fiber’s motion

seeking leave to intervene in this action, solely for the purpose of objecting
to the proposed claim construction. (Dkt. No. 91.) He recommended that
11

the motion be denied because Times Fiber had not demonstrated any
legally recognized interest that would be affected if it were prevented from
intervening in this action, and, even if it had, no ruling on claim construction
here would be binding in PPC’s action against Times Fiber. (Id. at 9-11.)
Further, he recommended that the court decline to exercise its discretion to
allow permissive intervention. (Id. at 11-12.) No objections having been
filed to Judge Peebles’ recommendation that this motion be denied in its
entirety, the court has reviewed this recommendation for clear error and
found none. See Almonte, 2006 WL 149049, at *4-5. Accordingly, the
second R&R is adopted in its entirety, and the motion to intervene is
denied.
IV. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Magistrate Judge David E. Peebles’ December 5,
2013 Report and Recommendation (Dkt. No. 64) is ADOPTED in its
entirety; and it is further
ORDERED that the following meanings shall be affixed to the patent
claim terms in dispute:
Disputed Term

Proposed Construction
12

Continuity Member

“conductive
component that
provides continuity of grounding”

Electrical Grounding Continuity
and/or Electrical Continuity

No construction necessary

Positioned Along the Post

“located a point on the length of the
post, and behind the first surface of
the internal lip of the nut”

A Post, Engageable with the “a post and connector body, which
Connector Body
are separate components of the
connector (i.e., they are not a single
integral component), that are
interlocked with one another to
prevent axial movement of one
relative to the other”
Connector Body

“structure of the connector that is
secured to the post at one end and
includes an open end for receiving
a portion of the coaxial cable. This
structure can be comprised of more
than one piece, and is therefore not
limited to a single integral or unitary
one-piece component”

Flange of the Post

“a rim, edge, rib, or collar,
protruding from the post that can
include one or more steps”

Lip Surface

“a surface of the flange of the post
that extends from the rearward
facing flange surface toward the
rearward post”

The Nut Does Not Touch the
Connector Body

No construction necessary
13

Prevents the Connector Body
from Contacting the Nut

No construction necessary

Conductive Coating

“a layer of
conductive”

Obtains Electrical Continuity

“extends and maintains a consistent
electrical ground path through the
nut and the post”

Coaxial Cable Includes a Center
Conductor Surrounded by a
Dielectric Covered by a
Conductive Grounding Shield,
the Conductive Grounding
Shield Being Configured to Be
Surrounded by a Protective
Outer Jack[et]

No construction necessary

material

that is

ORDERED that Magistrate Judge David E. Peebles’ March 14, 2014
Report and Recommendation (Dkt. No. 91) is ADOPTED in its entirety; and
it is further
ORDERED that Times Fiber’s motion for leave to intervene in this
action (Dkt. No. 67) is DENIED; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
August 21, 2014
Albany, New York
14