Arlington Industries, Inc. v. Bridgeport Fittings, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ARLINGTON INDUSTRIES, INC.,
Appellant,
v.
BRIDGEPORT FITTINGS, INC.
Cross-Appellant.
______________________
2013-1400, -1401
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Reexami-
nation No. 95/000,196.
______________________
Decided: August 29, 2014
______________________
KATHRYN L. CLUNE, Crowell & Moring, LLP, of Wash-
ington, DC, argued for appellant. With her on the brief
were AMIR D. KATZ, of Washington, DC; SCOTT L.
BITTMAN, of New York, New York. Of counsel was JACOB
ZIEMOWIT ZAMBRZYCKI. Of counsel on the brief was
CARTER G. PHILLIPS, Sidley Austin LLP, of Washington,
DC.
MARK E. UNGERMAN, Ungerman IP PLLC, of Wash-
ington, DC, argued for cross appellant.
2 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
______________________
Before PROST, Chief Judge, * LOURIE, and LINN, Circuit
Judges.
LINN, Circuit Judge
Arlington Industries, Inc. (“Arlington”) appeals from
the decision of the Board of Patent Appeals and Infer-
ences (“Board”) on inter partes Reexamination No.
95/000,196, affirming the final rejection of claims 1, 5, and
6 of U.S. Pat. No. 6,521,831 (“the ’831 patent”) as obvious
under 35 U.S.C. § 103(a) in view of the prior art. Bridge-
port Fittings, Inc. (“Bridgeport”), which filed the inter
partes reexamination request, cross appeals from the
Board’s decision on issues that concern the Board’s affir-
mance of the patentability of claims 3 and 4 of the ’831
patent. For the reasons that follow, we affirm the Board’s
decision except as to claim 3, in which respect we vacate
and remand.
I. BACKGROUND
Arlington and Bridgeport are direct competitors in the
market for electrical connectors. Electrical connectors
make connections between a junction box and electrical
conductors, such as metal-clad cables, using an access
hole in the junction box. See ’831 Patent col. 1 ll. 44–49.
Arlington owns the ’831 patent, which relates to a duplex
electrical connector, allowing two cables to be connected to
a junction box via a single access hole. See id. at col. 1 ll.
59–61. Claim 1 of the ’831 patent recites:
Sharon Prost assumed the position of Chief Judge on
*
May 31, 2014.
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 3
1. A duplex electrical connector compris-
ing:
a) a housing having a cylindrical out-
bound end, a generally oval inbound end,
and an interior channel linking said inbound
and said outbound end;
b) a pair of parallel openings in said in-
bound end;
c) a tubular spring steel cable retainer
secured in each of said openings in said in-
bound end for accepting separate cables, said
retainers including a set of inwardly extend-
ing tangs to receive and engage said separate
cables inserted from said inbound end and
guide said separate cables toward said cylin-
drical outbound end in a manner that said
separate cables are advanced to said out-
bound end, said inwardly extending tangs
restricting removal of said separate cables by
force applied on said separate cables from
said inbound end; and
d) a tubular spring steel adapter secured
to said cylindrical outbound end of said hous-
ing, said adapter having outwardly extend-
ing tangs.
’831 Patent col. 6 l. 64–col. 7 l. 15. Claim 3 depends from
claim 1, adding that the inbound end has within it an
oval-shaped insert with a pair of parallel openings with
annual ridges in the rearward end of the openings. Id. at
col. 7 l. 23–col. 8 l. 3. Claim 4 also depends from claim 1,
adding that the retainers are secured by tangs that snap
into place upon insertion. Id. at col. 8 ll. 4–10. Claim 5
depends from claim 1, adding limitations regarding the
number and orientation of the retainer tangs. Id. at col. 8
ll. 11–16. Claim 6 depends from claim 5, adding limita-
4 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
tions regarding the orientation of the cable retainers and
a cable passageway. Id. at col. 8 ll. 17–24.
Bridgeport sought inter partes reexamination of
the ’831 patent after Arlington accused Bridgeport’s
Whipper-Snap Duplex Connectors of infringing the ’831
patent. Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
No. 3:06-CV-1105 (M.D.P.A.). The Board ultimately
affirmed the final rejection of claims 1, 5 and 6 and the
patentability of claims 3 and 4. Claim 1 was found obvi-
ous over the combination of U.S. Patent No. 1,295,304
(“Grindle”); U.S. Pat. No. 4,885,429 (“Schnittker”); and
U.S. Pat. No. 2,744,769 (“Roeder”). J.A. 23. Arlington did
not separately argue the patentability of dependent
claims 5 and 6. J.A. 44. The Board affirmed the patenta-
bility of claims 3 and 4, ruling that the priority date of
those claims antedated at least one of the asserted prior
art references. J.A. 48. Arlington appeals, and Bridge-
port cross appeals. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(4).
II. STANDARDS OF REVIEW
Obviousness is a question of law, reviewed de novo,
based on underling facts, the findings of which are re-
viewed for substantial evidence. In re Kotzab, 217 F.3d
1365, 1369 (Fed. Cir. 2000), Rapoport v. Dement, 254 F.3d
1053, 1058 (Fed. Cir. 2001).
Likewise, priority under 35 U.S.C. § 120 is a question
of law, reviewed de novo, based on underlying facts, the
findings of which are reviewed for substantial evidence.
In re Daniels, 144 F.3d 1452, 1455 (Fed. Cir. 1998).
III. DISCUSSION
A. Arlington’s Appeal
In its appeal, Arlington raises four primary argu-
ments. First, it contends that the prior art combination
does not result in retainers “secured in each of said open-
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 5
ings in said inbound end for accepting separate cables” as
required by claim 1. Second, it contends that the combi-
nation of the prior art lacks “tangs” that “guide” and
“advance[]” cables “toward” the outbound end, as required
by claim 1. Third, Arlington argues that the Board failed
to identify any prior art that disclosed or suggested the
claimed “tubular spring steel adapter” and that, in fact,
the prior art teaches away from such an adapter. Fourth,
it argues that the Board erred in rejecting Arlington’s
evidence offered in support of secondary considerations of
non-obviousness.
Bridgeport counters by arguing that because Arling-
ton did not raise the issue of claim construction to the
Board, it has waived argument regarding the claim lan-
guage “secured in each of said openings in said inbound
end.” Bridgeport argues that in any event, Arlington
misunderstands the end point of the edge of the housing
and that the prior art combination does result in retainers
secured in the inbound end of the housing. Bridgeport
also contends that the Board correctly found that the
prior art guides or permits cable movement to the out-
bound end “in a manner commensurate in scope with the
language of independent claim 1,” J.A. 25, and that Ar-
lington did not propose an alternative construction to the
Board, thus again waiving the argument. Bridgeport
further argues that use of spring steel widely was known,
that Arlington did not contest this knowledge at the
Board, and that therefore the Board had substantial
evidence on which to determine that one of skill in the art
would have substituted one known element for another
made of spring steel. Lastly, Bridgeport argues that the
Board properly rejected the evidence of secondary consid-
erations because Arlington’s products do not embody the
claims and thus lack a nexus to the claims, that Arlington
failed to provide adequate evidence that customers bought
Arlington’s products due to allegedly claimed features,
and that Arlington failed to provide evidence of market
6 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
share and thus failed to show that its products were
commercially successful.
1. The claimed “retainers”
Claim 1 requires retainers “secured in each of said
openings in said inbound end for accepting separate
cables.” Arlington argues that the combination of Grindle
with Schnittker (a) lacks a retainer entirely, (b) results
merely in retainers secured to each opening of the con-
nector, and (c) would not have been obvious because there
was no motivation to combine and because the combina-
tion requires substantial reconstruction of the prior art.
The Board found that Grindle is a duplex connector with
“parallel inlets . . . adapted to receive armor clad electrical
wires” that uses a set screw to hold the cables in place.
J.A. 12–14; see also Grindle fig. 1. The Board further
found that Schnittker discloses a single-cable connector
with a metal grounding ring with tangs that engage a
metal-clad cable. J.A. 14–15; see also Schnittker col. 2 ll.
22–31. We see no error in these factual findings.
The Board in affirming the examiner’s final rejection
found it obvious to combine Grindle and Schnittker,
substituting Grindle’s single set screw with two ground-
ing rings as taught by Schnittker, with one grounding
ring per cable. J.A. 58. The Board reasoned that the
resulting combination yielded retainers “secured in each
of said openings in said inbound end for accepting sepa-
rate cables” and thus rendered the limitation obvious.
J.A. 23–35.
Arlington argues that the examiner’s rejection was
improper because Schnittker’s grounding ring cannot be a
retainer because it merely grounds a metal-clad cable
rather than restricting its removal. The Board disagreed,
finding that Schnittker discloses that the grounding ring
has a number of tangs that, when the grommet is tight-
ened, “engage the outer surface . . . of [a] metal clad
cable . . . to create a force which resists a rearward force
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 7
that could pull the cable out of the connector . . . .” J.A.
15. This finding is supported by substantial evidence in
Schnittker’s disclosure. See, e.g., Schnittker col. 5 l. 66–
col. 6 l. 2 (tangs are shaped and arranged “to aid in grip-
ping the metal clad cable . . . .”), id. at col. 7 ll. 48–53
(grounding ring cannot move rearwardly once a gland nut
is tightened to compress a grommet). Accordingly, we see
no error in the Board’s conclusion that the combination of
Schnittker with Grindle would have included the claimed
retainer.
Arlington also argues that Schnittker’s grounding
ring is not in the “opening in said inbound end.” Arling-
ton first argues that the combination results in the
grounding ring being secured “to” the opening rather than
“in” the opening. Arlington further argues that the
grounding ring cannot be in the “inbound end” of the
connector because the ring is placed towards the back of
the connector disclosed in Schnittker. Both arguments
fail, however, because Arlington focuses only on the
spatial argument of components within the Schnittker-
type connector separately from the Grindle-type connect-
or. The proper focus is on the Grindle-Schnittker combi-
nation. The examiner’s combination involves placing two
Schnittker-type connectors on the inbound end of a Grin-
dle-type duplex connector. In that context, the connector’s
“housing” is the Grindle-type duplex connector together
with two of the Schnittker-type connectors, and we find no
error in the Board’s conclusion that the grounding rings of
Schnittker are secured in the inbound end of that housing
as a whole.
This court further sees no error in the Board’s affir-
mance of the examiner’s determination that substitution
of Grindle’s set screw with the Schnittker-type retainers
merely was the substitution of one known element for
another. Arlington contends that there was no motivation
to combine, but the Board specifically noted that the
“combination would maintain equal resistance on each
8 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
inlet in a way that the single screw of Grindle could not.”
J.A. 31. Arlington does not attack the Board’s explana-
tion, and we see no error in it. Arlington further contends
that the combination of Grindle with Schnittker-type
retainers would not have been obvious because the com-
bination of Grindle and Schnittker would require “sub-
stantial reengineering,” citing In re Ratti, 270 F.2d 810,
813 (CCPA 1959). However, Arlington itself notes that
the combination requires merely threading the parallel
openings in Grindle to accept the connectors disclosed in
Schnittker, Appellant’s Br. 47, a modification that hardly
amounts to substantial reengineering. Arlington finally
argues that the time-span between the prior art and the
filing date of the ’831 patent’s application undermines any
“obvious to try” inference, citing to Leo Pharma. Prods.,
Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013). However, the
Board’s decision was not predicated on an “obvious to try”
rationale and the facts are unlike those in Leo. Here, the
art is not unpredictable and Arlington does not argue that
the prior art taught away from the combination.
2. The claimed “tangs”
Claim 1 further requires that the retainer has tangs
to “guide said separate cables toward said cylindrical
outbound end in a manner that said separate cables are
advanced to said outbound end.” Arlington contends that
the combination of the prior art lacks “tangs” that “guide”
and “advance[]” cables “toward” the outbound end. Ar-
lington argues that the tangs of Schnittker’s grounding
ring do not guide or advance the cables to the outbound
end because the tangs instead merely direct the cable
straight down the bore. Appellant’s Br. 52. Arlington
contends that the shoulders of the Grindle-Schnittker
housing, and not the tangs, actually guide the cables.
Arlington further argues that the tangs cannot “advance”
the cable because Schnittker’s grounding ring is not
locked into place—by tightening a gland nut and grom-
met—until the cable already is fully inserted. Arlington
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 9
lastly repeats its argument that the tangs are not in the
inbound end of the connector.
Bridgeport counters that Arlington did not propose
any construction for these terms and that under the
terms’ broadest reasonable construction, the Board con-
cluded correctly that “the inwardly extending tines of
Schnittker’s grounding ring . . . incorporated into Grin-
dle’s duplex connector would function to receive, engage,
and guide or permit forward movement of the metal clad
cables from the inbound end through the grounding ring
and towards an outbound end, in a manner commensu-
rate with the language of independent claim 1.” J.A. 25.
Arlington’s arguments are not persuasive. Arlington’s
argument that the examiner’s combination does not
advance cables toward the outbound end, but only
straight down the bore of the housing, assumes that the
duplex connector must have an offset outbound end.
However, an offset outbound end is not claimed. Moreo-
ver, even with an offset outbound end, straight down the
bore still is “toward” the outbound end. That the shoul-
ders of the housing provide additional guidance and
advancing toward the outbound end does not negate the
guidance and advancing initially provided by the tangs.
Further, though a cable must already be fully inserted
into Schnittker’s grounding ring before the ring is tight-
ened and locked into place, the grounding ring’s tangs
engage the cable before that point. See Schnittker at col.
7 ll. 33–37. Moreover, Arlington does not appear to have
presented this particular argument to the Board in the
first instance. Lastly, the argument that the tangs are
not in the inbound end of the connector has been ad-
dressed and rejected above.
3. The claimed “tubular spring steel adapter”
Claim 1 additionally requires a “tubular spring steel
adapter” in the outbound end of the housing. The Board
found that it would have been obvious to substitute Roed-
10 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
er’s bushing for Grindle’s lock-nut and threads as an
adapter for Grindle’s housing, J.A. 32, and that it further
would have been obvious to make the adapter out of
spring steel, id. at 33–34. Arlington argues that the
Board failed to identify any prior art that disclosed or
suggested an “adapter” made of spring steel and that the
art relied on by the Board actually teaches away from
using spring steel. Arlington contends that to the extent
it did not raise this specific argument to the Board, the
implications of the spring steel limitation were known at
the Board and thus may be addressed here. Bridgeport
counters that Arlington did not argue to the Board that
the use of spring steel for the adapter would not have
been obvious and that, therefore, Arlington waived the
argument. Bridgeport further contends that the Board
had substantial evidence on which to conclude that use of
Roeder’s bushing with the Grindle-Schnittker combina-
tion merely involved the substitution of one known ele-
ment for another with a predictable benefit.
Arlington argued to the Board that the combination of
Roeder with Grindle was inadequate because Roeder’s
bushing would not establish a proper grounding mecha-
nism and because it was not intended as a permanent
connector. Id. The Board disagreed with Arlington,
noting first that both arguments failed because they were
directed to unclaimed limitations. Id. We agree with the
Board’s conclusion, as the claims recite neither a ground-
ing mechanism nor a connector that is permanent.
Arlington did not argue to the Board that the examin-
er lacked evidence to support the substitution of spring
steel as the material. However, Arlington contends that it
preserved the issue for this court’s review when it argued
to the Board that Roeder did not disclose the claimed
spring steel adapter’s outwardly extending tangs, prompt-
ing the Board to acknowledge that Roeder’s bushing was
not made of spring steel. However, the examiner already
had concluded that Roeder’s bushing was not made of
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 11
spring steel and would have to be modified, concluding
that it would have been obvious “to allow for continual
reuse.” J.A. 1208–09. Though Arlington disputed a
number of aspects concerning the combination with
Roeder—such as whether the resulting combination
would establish a ground connection or whether Roeder
was intended to be permanent—the examiner’s and the
Board’s conclusion that it would have been obvious to
make the Roeder bushing from spring steel was not one of
the disputes that was raised.
Arguing against waiver, Arlington relies on In re Bax-
ter Intern., Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) for
the proposition that no waiver exists when the appellant
raised timely arguments regarding the examiner’s analy-
sis of a limitation. Here, however, Arlington did not raise
any argument before the Board that the substitution of
spring steel for the adapter was not obvious. Arlington
similarly relies on Wm. Wrigley Jr. Co. v. Cadbury Adams
USA LLC, 683 F.3d 1356, 1360–61 n.3 (Fed. Cir. 2012) for
the proposition that presenting the “essence of its present
arguments” to the Board is sufficient to preserve the
issue. Here, however, Arlington’s arguments regarding
the adapter limitation were not, in essence, that it would
not have been obvious to make the adapter of spring steel.
Arlington argued that the Board’s combination lacked
proper grounding and was not a permanent connector.
The Board concluded that these were unclaimed limita-
tions and further that the use of spring steel would re-
solve those issues in any event. Arlington did not argue
that spring steel would not have been obvious to use in
the first instance. Lastly, Arlington relies on Warner-
Lambert Co. v. Teva Pharmaceuticals USA, Inc., 418 F.3d
1326, 1338 n.1 (Fed. Cir. 2005) for the proposition that it
is sufficient to raise the general legal issue below. How-
ever, the legal principle from Warner-Lambert is that
“this court does not review supporting arguments, but
only the decisions reached by the trial court.” Interactive
12 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323,
1346 (Fed. Cir. 2001) (citing Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983)). The exam-
iner concluded that it would have been obvious to make
the adapter out of spring steel to allow for continuous
reuse. J.A. 1208–09. Rather than disputing that deci-
sion, Arlington instead disputed whether the Roeder
adapter would provide proper grounding or permanence.
Unsurprisingly, the Board did not further discuss the
obviousness of spring steel because its decision was not
challenged. We “generally do not consider arguments
that the applicant failed to present to the Board” and see
no exceptional circumstances here requiring otherwise.
Baxter, 678 F.3d at 1362.
In any event, the references before the Board provide
substantial evidence to support the substitution of spring
steel. Schnittker’s grounding ring indisputably is spring
steel and was known to be used with the heavier metal-
clad cables. Accordingly, the record does provide substan-
tial evidence to support its finding that a person of ordi-
nary skill in the art would have known of spring steel’s
grounding properties and its suitability for working with
metal-clad cables.
Arlington further contends that Roeder actually
teaches away from the claimed invention. Here, Arling-
ton argues that Roeder teaches away because as disclosed,
the Roeder adapter was too weak to function with metal
clad cables. Appellant’s Br. 60–61. Arlington is referring
to the Board’s finding that it would have been obvious to
use spring steel for the adapter “to allow for continual
reuse to address the increase in weight” from the metal-
clad cables. J.A. 34. However, the Board did not conclude
that the combination would not function with metal clad
cables (only that modification would be needed for contin-
ual reuse), and Arlington presents no evidence that the
combination would in fact be nonfunctional. Thus, be-
cause substantial evidence supports the Board’s conclu-
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 13
sion that the combination was at least functional, Arling-
ton misplaces its reliance on In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984) (“If references taken in combination
would produce a ‘seemingly inoperative device,’ . . . such
references teach away from the combination and thus
cannot serve as predicates for a prima facie case of obvi-
ousness.”).
4. Secondary Considerations
Arlington offered evidence of commercial success and
of a long-felt but unresolved need. The Board rejected
both forms of evidence for lack of a demonstrated nexus to
the claimed invention. Arlington argues that this was
error. Arlington contends that its connectors embody the
claimed inventions, sell in large numbers, and sell at a
premium to non-embodying connectors. Arlington further
argues that it was not required to present evidence of
market share because Arlington and Bridgeport are the
only participants in the relevant market, Bridgeport did
not produce its sales figures, and a district court already
concluded that each infringing Bridgeport sale was likely
a lost Arlington sale. Bridgeport contends that the Board
correctly determined that Arlington’s evidence did not
establish commercial success because there was insuffi-
cient evidence of Arlington’s market share.
Arlington’s evidence of commercial success included
sales figures of its SNAP2IT® (“SNAP2IT”) connectors.
Arlington argues that these connectors embody the
claimed inventions and that the sales figures demonstrate
the invention’s commercial success. To demonstrate that
the SNAP2IT connectors embody the claims, Arlington
submitted to the Board a claim chart in which Arlington’s
expert charted the limitations of the ’831 patent’s claims
to the SNAP2IT products. Arlington contends that this
established a prima facie case of a nexus between
SNAP2IT’s commercial success and the claimed invention,
citing Crocs, Inc. v. Int’l Trade Com'n, 598 F.3d 1294,
14 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
1311 (Fed. Cir. 2010) (citing In re GPAC Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995)). Arlington then concludes
that because conventional duplex connectors sell for, on
average, 75% less per unit than similarly insulated
SNAP2IT connectors, Arlington’s SNAP2IT sales figures
demonstrate the success of the claimed invention. Appel-
lant’s Br. 72.
The Board found Arlington’s showing to fall short in
part because the sales figures demonstrated that 96% of
the SNAP2IT sales were for duplex connectors with an
unclaimed feature: an insulated throat design. Without
any ability to assess the overall market, the Board did not
err when it concluded that it was unable to gauge wheth-
er the SNAP2IT sales actually constituted commercial
success or any meaningful share of the duplex connector
market. Arlington contends that Bridgeport is the only
other participant in the relevant market and that because
Bridgeport did not produce its sales figures, it could not
provide the evidence in question. However, the relevant
market is for duplex connectors in general, not solely
Bridgeport’s connectors. Arlington never offered evidence
of the entire market for insulated-throat duplex connect-
ors or uninsulated-throat duplex connectors relevant to
the remaining 4% of the SNAP2IT sales. Arlington argues
that it did not need to provide that evidence because a
district court concluded that every Bridgeport Whipper-
Snap duplex connector sold was a lost sale of Arlington’s
SNAP2IT connector. That finding also is insufficient
because it does not establish that either product is a
commercially successful duplex connector in the context of
the overall market of duplex connectors.
Arlington did submit customer declarations and pub-
lications praising the SNAP2IT connectors, but the Board
discounted their weight, finding the declarant’s state-
ments vague and otherwise unpersuasive. Because the
Board’s assessment of secondary considerations is sup-
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 15
ported by substantial evidence, we have no reason to
upset it.
For the foregoing reasons, we affirm the Board’s deci-
sion on obviousness as to claims 1, 5 and 6.
B. Bridgeport’s Cross Appeal
Bridgeport cross appeals the Board’s decision concern-
ing the priority date of claim 1 and the Board’s affirmance
of the patentability of claim 3. The cross appeal concern-
ing claim 1’s priority date implicates not only the patent-
ability of claim 1, but also of claim 4, which depends from
claim 1 and was found to be patentable based on claim 1’s
priority date.
The ’831 patent issued from Pat. Appl. No. 09/941,341
(“the ’341 application), filed on August 29, 2001. That
application is a continuation-in-part of U.S. Pat. App. No.
09/792,185 (’185 application), filed on February 23, 2001,
which is a continuation-in-part of U.S. Pat. App. No.
09/373,427 (“’427 application”), filed on August 13, 1999.
The examiner and the Board found that claim 1 was
entitled to the August 13, 1999 date of the ’427 applica-
tion. Like the ’341 application, the ’185 and ’427 applica-
tions describe a duplex connector with an oval-shaped
inbound end with a large, single cavity and an insert
plugging that cavity to divide it into a pair of parallel
openings. However, the ’341 application includes, for the
first time, a discussion of a housing that does not use this
insert, instead having an inbound end with an integrally-
formed pair of openings. ’831 Patent col. 2 ll. 42–48.
Bridgeport argues that claim 1 of the ’831 patent is
entitled only to the August 29, 2001 date of the ’341
application. Bridgeport’s argument centers on the ’831
patent’s description of an insert as distinct from the
connector’s housing. See, e.g., ’831 patent col. 1 ll. 52–53
(“[t]he inbound end of the housing is adapted to accept an
insert containing” the two openings), col. 2 ll. 6–9 (“The
16 ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC.
duplex connector of the present invention could be made
even simpler by modifying the inbound end of the con-
nector housing to hold the cable retainers. Modified in
this manner, the insert could be eliminated . . . .”). Be-
cause the ’831 patent’s claim 1 requires that the pair of
parallel openings be in the “housing,” Bridgeport contends
that the claim cannot encompass a connector that uses an
insert to define the openings. And because the ’341
application was the first to discuss a housing that does
not use an insert, Bridgeport argues that therefore claim
1’s priority date only can be August 29, 2001. Arlington
counters that substantial evidence supports the Board’s
conclusion that claim 1 is entitled to the August 13, 1999
priority date because nothing in the relevant disclosures
or the claim would limit the openings to exist only as part
of an insert.
The examiner and the Board concluded that in light of
Figures 1 and 2 of the ’427 application—which illustrate a
connector with a pair of openings in an insert—a person of
ordinary skill in the art would have understood the inven-
tors to possess a duplex connector with a pair of parallel
openings in the inbound end of the housing and that claim
1 is not limited to having openings only defined within an
insert. J.A. 46–47. We find no error in that decision. In
reexamination, the claims must be given their broadest
reasonable interpretation. In re Trans Texas Holdings,
Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). Under
that standard, the claim merely requires that the inbound
end of the housing be generally oval and have a pair of
openings. No aspect of the claims requires the housing,
much less the inbound end of the housing, to have a
unitary structure. Thus, an insert is not excluded by the
claim. Indeed, claim 3 depends from claim 1 and further
adds that the pair of parallel openings is included in an
insert secured within the inbound end of the hous-
ing. ’831 patent col. 7 ll. 23–26.
ARLINGTON INDUSTRIES, INC. v. BRIDGEPORT FITTINGS, INC. 17
Bridgeport does, however, accurately identify error in
the Board’s handling of claim 3. The examiner concluded
that claim 3 was entitled only to the August 29, 2001
filing date because the claim requires that the walls of the
insert include an annular ridge, and none of the parent
applications supported a disclosure of that annular ridge.
J.A. 2126. Arlington did not dispute this finding. J.A.
1204. Thus, the examiner considered Bridgeport’s assert-
ed prior art on the merits but found that it did not estab-
lish unpatentability. J.A. 1218. The Board affirmed but
did so on the basis that Bridgeport’s asserted prior art did
not antedate the August 13, 1999 priority date of claim 1.
J.A. 48. This was error because the examiner found,
without dispute from either party, that claim 3 was
entitled only to the later August 29, 2001 priority date.
Arlington urges this court to affirm the patentability
of claim 3 as being unobvious, but the Board did not pass
on that issue and we decline to consider it in the first
instance. See SEC v. Chenery Corp., 332 U.S. 194, 196
(1947). Because the Board relied on erroneous grounds,
we vacate the decision as to claim 3 and remand for
further proceedings.
IV. CONCLUSION
For the reasons discussed above, the Board’s decision
is affirmed with respect to claims 1, 4, 5 and 6. The
Board’s decision is vacated with respect to claim 3, and
the case is remanded so that the Board may consider the
patentability of that claim in view of the appropriate
priority date.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Costs to Bridgeport.