Case: 20-2129 Document: 44 Page: 1 Filed: 07/01/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PULSE ELECTRONICS, INC.,
Appellant
v.
U.D. ELECTRONIC CORP.,
Cross-Appellant
______________________
2020-2129, 2020-2177
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00511.
______________________
Decided: July 1, 2021
______________________
ERIC CARR, Gazdzinski & Associates, PC, San Diego,
CA, argued for appellant.
ROBERT H. SLOSS, Procopio, Cory, Hargreaves and Sa-
vitch LLP, Palo Alto, CA, argued for cross-appellant.
______________________
Before DYK, LINN, and O’MALLEY, Circuit Judges.
DYK, Circuit Judge.
Case: 20-2129 Document: 44 Page: 2 Filed: 07/01/2021
2 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
Patent owner Pulse Electronics, Inc. (“Pulse”) appeals
the final written decision by the Patent Trial and Appeal
Board (“Board”) in an inter partes review proceeding. Pe-
titioner U.D. Electronic Corp. (“UDE”) cross-appeals. We
affirm in part and reverse in part.
BACKGROUND
Pulse is the owner of U.S. Patent No. 6,773,302 (the
“’302 patent”), which is directed to an improved design for
a connector such as a phone jack or ethernet plug. See ’302
patent, Abstract; col. 1, l. 63–col. 2, l. 4; col. 4, ll. 46–52.
The ’302 patent’s design is intended to use the interior vol-
ume of the connector more efficiently while reducing cross-
talk and electromagnetic interference between the internal
components. To achieve these ends, the ’302 patent speci-
fication describes using one or more substrates, such as cir-
cuit boards, arranged vertically within the connector
housing and orthogonal to the front face of the connector.
The specification also teaches shaping the conductors
within the housing using approximately 90° bends to re-
duce the extent to which the conductors overlap with each
other (thereby reducing interference).
UDE filed a petition for inter partes review of the
’302 patent on December 28, 2018, challenging claims 1, 3–
9, and 11–16 as obvious over various combinations of prior
art references. In addition to its response, Pulse filed a
contingent motion to amend in which it proposed substi-
tute claims 17–23, corresponding to original claims 1, 9, 11,
and 13–16, in the event that the Board found any of said
original claims unpatentable.
After instituting inter partes review proceedings, the
Board issued its final written decision on July 22, 2020,
concluding that all of the original challenged claims were
unpatentable. The Board granted the motion to amend
with respect to substitute claims 18, 19, 22, and 23, but de-
termined that substitute claims 17, 20, and 21 are indefi-
nite. Pulse appeals as to original claims 1, 3–9, and 11–16
Case: 20-2129 Document: 44 Page: 3 Filed: 07/01/2021
PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP. 3
(i.e., all of the challenged original claims), as well as sub-
stitute claims 17, 20, and 21. UDE cross-appeals as to sub-
stitute claims 22 and 23.
DISCUSSION
I
Pulse contends that original claims 1, 3, 7, 9, and 13–
16 are patentable because the Board erred in its construc-
tion of the term “effectively curved portion” appearing in
those claims. We disagree.
Claim 1, which the Board found illustrative, reads as
follows:
A connector assembly comprising:
a connector housing comprising a connector hav-
ing:
...
a plurality of first conductors disposed . . . to form
an electrical contact . . .
...
wherein at least a portion of said first conductors
are substantially coplanar and each include an ef-
fectively curved portion, the effective radius of each
said effectively curved portion being different for
each of said first conductors.
’302 patent, col. 19, ll. 23–47.
The Board construed “effectively curved portion” as
“any form of bend of the first conductors,” finding that this
interpretation is consistent with the term’s plain meaning
and that the specification does not define the term differ-
ently. J.A. 15–16.
Because UDE filed its petition for inter partes review
after November 13, 2018, the Phillips claim construction
Case: 20-2129 Document: 44 Page: 4 Filed: 07/01/2021
4 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
standard applies. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Be-
fore the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b)).
We exercise de novo review when, as here, the Board’s
claim construction does not rely on extrinsic evidence. See
SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 870 (Fed.
Cir. 2020) (citing AC Techs. S.A. v. Amazon.com, Inc., 912
F.3d 1358, 1365 (Fed. Cir. 2019)).
Pulse contends that the claim should be construed to
limit the curvature to approximately 90 degrees, arguing
that the figures in the specification support this definition
and that the orientation of the substrate requires that the
conductors curve at approximately 90 degrees. UDE re-
sponds that Pulse’s construction would improperly limit
the claim language by reference to embodiments in the
specification.
We agree with the Board’s claim construction. As UDE
notes, the claim language itself does not limit the “effec-
tively curved portion” to curvature of approximately 90 de-
grees, nor does it specify a particular orientation for
arranging the substrates. As we have repeatedly held, it is
improper “to import limitations from the specification into
the claims.” Hill-Rom Servs., Inc. v. Stryker Corp., 755
F.3d 1367, 1371–72 (Fed. Cir. 2014) (citing Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
2004)). Embodiments in the specification—even if there is
only one embodiment—cannot limit the scope of the claims
absent the patentee’s “words or expressions of manifest ex-
clusion or restriction.” Id. at 1372 (quoting Liebel-
Flarsheim, 358 F.3d at 906); see also Info-Hold, Inc. v. Ap-
plied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir.
2015) (explaining that an invention will only be limited to
its preferred embodiment when “the patentee uses words
that manifest a clear intention to restrict the scope of the
claims to that embodiment”). Here, there are no such
words; nothing in the claims or specification indicates that
Case: 20-2129 Document: 44 Page: 5 Filed: 07/01/2021
PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP. 5
the claims should be limited to the embodiments presented
in the specification. The ’302 patent demonstrates, moreo-
ver, that Pulse knew how to restrict angles to 90 degrees
when it wanted to—and did not so limit the “effectively
curved portion.” See ’302 patent, col. 20, ll. 14–16 (specify-
ing “substantially orthogonal” placement of substrate rela-
tive to the front face of the connector housing); id. col. 20,
ll. 32–35 (same); id. col. 21, ll. 1–3, 39–42 (same); id.
col. 24, ll. 1–3 (same).
Pulse further argues that the internal structure of the
connector requires the conductors to bend approximately
90 degrees. Pulse, however, has not demonstrated that the
Board’s construction would render the device inoperable.
See Power Integrations, Inc. v. Fairchild Semiconductor
Int’l, Inc., 904 F.3d 965, 972 (Fed. Cir. 2018) (citing Ecolab,
Inc. v. FMC Corp., 569 F.3d 1335, 1345 (Fed. Cir. 2009))
(noting impermissibility of an inoperable claim construc-
tion when the term admits of an operable construction).
This argument therefore does not demonstrate that the
Board’s claim construction was erroneous.
We therefore affirm the Board’s construction of the
term “effectively curved portion” and its determination
that claims 1, 3, 7, 9, and 13–16 are unpatentable.
Relatedly, Pulse argues that the terminals depicted in
a prior art reference, U.S. Patent No. 6,179,668 (“Kan”),
are “effectively parallel straight runs” and do not have dif-
ferent effective radii, thus failing to satisfy the claim limi-
tation. See Appellant’s Br. at 33–34; Kan fig. 3A. We find
that the Board’s characterization—that the terminals in
this portion of Kan have different effective radii—is a fac-
tual determination supported by substantial evidence.
II
Pulse next argues that the Board erred in finding
claims 6–8 obvious over two prior art references. We see
no error in the Board’s determination.
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6 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
A patent claim is unpatentable “if the differences be-
tween the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art.” 35 U.S.C. § 103(a)
(pre-AIA). 1 Obviousness is a mixed question of law and
fact. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
(Fed. Cir. 2016). In reviewing the Board’s determination
on obviousness, we review the ultimate legal conclusion de
novo and the underlying factual findings for substantial ev-
idence. Id. (citing In re Cuozzo Speed Techs., LLC, 793 F.3d
1268, 1280 (Fed. Cir. 2015)).
In relevant part, claim 6 (from which claims 7 and 8
depend) recites:
A connector assembly comprising:
a connector housing comprising a connector hav-
ing:
...
at least one substrate having at least one electri-
cally conductive pathway associated therewith;
...
wherein said at least one substrate is disposed in
substantially vertical orientation within, and sub-
stantially orthogonal to the front of, said housing.
’302 patent, col. 19, l. 61–col. 20, l. 16.
1 Because the challenged claims of the ’302 patent
have an effective filing date before March 16, 2013, we ap-
ply the version of § 103 in effect before the adoption of the
Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
112-29, 125 Stat. 284 (2011). See id. § 3(n)(1), 125 Stat. at
293.
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PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP. 7
The Board determined that the vertical and orthogonal
orientation of the substrate was obvious over the combina-
tion of Kan and U.S. Patent No. 4,225,209 (“Hughes”). Kan
and Hughes—discussed in further detail below—are both
directed to electric connectors. In its housing, Kan includes
a circuit board with a substantially vertical orientation.
Hughes, meanwhile, discloses a connector that can mount
orthogonally to an external circuit board. Relying on ex-
pert testimony, the Board found that a person of ordinary
skill in the art would have been motivated, in view of
Hughes, to reorient the circuit board in Kan to achieve a
vertical and orthogonal orientation (thereby also saving
space in the connector).
Pulse argues that these references teach away from
each other because circuit board in Hughes is mounted to
the outside of the connector and would be too large to fit
inside the connector housing. This does not foreclose the
possibility, however, that a skilled artisan could take inspi-
ration from the orientation of the external circuit board in
Hughes and apply that insight to reorient the internal cir-
cuit board in Kan.
The Board’s finding is supported by substantial evi-
dence, and we see no error in its analysis. We therefore
affirm the determination that claims 6–8 would have been
obvious over the combination of Kan and Hughes. Simi-
larly, we find no error in the Board’s finding that the
“multi-port connector assembly” in claims 9, 11, 12, and 16
of the ’302 patent would have been obvious in light of Kan,
Hughes, and a prior art reference directed to a multi-port
connector assembly—viz., U.S. Patent No. 5,639,267
(“Loudermilk”).
We have considered Pulse’s remaining arguments re-
garding the original claims and find them unpersuasive.
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8 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
III
Pulse finally argues that the Board erred by finding
substitute claims 17, 20, and 21 indefinite. We agree.
Substitute claim 17 reads as follows:
A connector assembly comprising:
a connector housing comprising a connector hav-
ing:
...
a plurality of first conductors . . . configured to
form an electrical contact . . .
wherein at least a portion of said first conductors
are substantially coplanar and each include a por-
tion producing a desired effect of being curved by
approximately 90 degrees . . . .
J.A. 593 (redline markup removed). Similarly, substitute
claim 20 recites “a portion producing a desired effect of
changing direction by approximately 90 degrees,” id. at
598, and substitute claim 21 recites conductors that “in-
clude a portion producing a desired effect of being curved
by approximately 90 degrees.” id. at 599.
The Board found that a person of ordinary skill would
understand the recited curves of approximately 90 degrees
as “a term of degree including values near or equal to 90
degrees” (to account, e.g., for “manufacturing tolerances”).
Id. at 60. The Board determined, however, that “the addi-
tion of ‘producing a desired effect’ adds ambiguity, and
makes it impossible to define the metes and bounds of sub-
stitute claims 17, 20, and 21.” Id. at 57. In the Board’s
view, because the specification does not define the “desired
effect,” the term “would be subject to much speculation”
and “open to too much interpretation to be considered def-
inite.” Id. at 59.
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PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP. 9
A patent must describe the invention “in such full,
clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains . . . to make and use
the same,” and “shall conclude with one or more claims par-
ticularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶¶ 1–2 (pre-AIA). 2 The Supreme Court has
interpreted “§ 112, ¶ 2 to require that a patent’s claims,
viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the inven-
tion with reasonable certainty.” Nautilus, Inc. v. Biosig In-
struments, Inc., 572 U.S. 898, 910 (2014). That is, because
claims “notify that public of what is within the protections
of the patent, and what is not,” claims must “be cast in
clear—as opposed to ambiguous, vague, [or] indefinite—
terms,” to an appropriate degree of “reasonable precision in
the use of language in the context of the circumstances.” In
re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
“Indefiniteness, as a subset of claim construction, is a
question of law which this court reviews without defer-
ence.” Id. at 1311 (citing Kinetic Concepts, Inc. v. Blue Sky
Med. Grp., Inc., 554 F.3d 1010, 1022 (Fed. Cir. 2009)).
The Board erred in finding that the term “a desired ef-
fect” renders substitute claims 17, 20, and 21 indefinite.
The “desired effect” has a clear objective meaning: that the
conductors curve or change direction by approximately 90
degrees. No “speculation” is necessary to understand “the
desired effect”; the term is merely an instance of inartful
surplusage rather than a fatal ambiguity. While we gener-
ally disfavor claim constructions resulting in surplus lan-
guage, we have also recognized that “surplusage may exist
in some claims.” ERBE Elektromedizin GmbH v. Canady
2 Because the ’302 patent was filed before the adop-
tion of the AIA, the prior version of § 112 governs. See AIA
§ 4(e), 125 Stat. at 297.
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10 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
Tech. LLC, 629 F.3d 1278, 1286 (Fed. Cir. 2010) (citing
Pickholtz v. Rainbow Tech., Inc., 284 F.3d 1365, 1373 (Fed.
Cir. 2002) (concluding that the word “system” was surplus-
age when the patent at issue used “computer” and “com-
puter system” interchangeably with no indication of a
difference in meaning)). Because the “desired effect” is ob-
jectively restricted to curvature “near or equal to 90 de-
grees,” see J.A. 60, substitute claims 17, 20, and 21 are not
indefinite. The Board’s determination to the contrary is
reversed.
IV
In its cross-appeal, UDE argues that the Board erred
by finding that substitute claims 22 and 23 are not ren-
dered obvious by the combination of Kan and Hughes. We
see no error in the Board’s determination.
Substitute claims 22 and 23 recite a “connector assem-
bly” in which several “first conductors” (or “first conductor
means”) include a portion in which the conductors change
direction by approximately 90 degrees, such that the bent
portion of each conductor has a different “effective radius.”
J.A. 599–602.
Before the Board, UDE argued that substitute claims
22 and 23 were obvious over (1) Kan alone, and (2) Kan in
combination with Hughes. According to UDE, it would be
obvious to modify Kan in view of Hughes to achieve the
claimed bend of 90 degrees.
Kan is directed to an electric connector with an inter-
nal circuit board (to enable functionality such as processing
input signals and preventing crosstalk) and “curved con-
tacts.” Kan, Abstract; col. 1, ll. 6–11, 29–35. In particular,
Kan includes a set of terminals that run horizontally
through a terminal board, in which the terminals are
spaced out by curving away from one another. See id., figs.
1, 3A. The terminals then bend downward by about 90 de-
grees, protruding out of the terminal board, and then
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PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP. 11
continue to curve back underneath the terminal board. Id.,
fig. 3B.
Hughes discloses a type of phone jack that can be
plugged into a receptacle; the receptacle can in turn be or-
thogonally mounted to a circuit board. This is enabled by
the plurality of conductors in the receptacle, which are
“bent laterally . . . through an angle of 90 degrees.” See
Hughes, col. 3, ll. 42–44; see also id., figs. 1, 3. The ends of
the conductors extend through the side wall of the recepta-
cle so that they can be soldered into a circuit board
mounted on the side of the receptacle. See id., col. 3, ll. 56–
59; col. 4, ll. 11–13; fig. 1.
The Board determined that substitute claims 22 and 23
would not have been obvious over Kan alone. The Board
noted that the “first conductors” in the substitute claims
must have “portions” that both produce a net change in di-
rection of approximately 90 degrees and have different ef-
fective radii. The Board found that the terminals in Kan
fail to teach that combination—i.e., while Figures 1 and 2
of Kan depict a 90-degree bend in the terminals, and Figure
3A depicts the terminals as having different effective radii,
the 90-degree bend and the different radii are found in sep-
arate portions of the terminals. See J.A. 62–63 (citing Kan,
figs. 1, 2, 3A). Thus, Kan does not depict terminals in
which the same portion is bent 90 degrees with different
effective radii.
The Board also rejected UDE’s argument (the only ar-
gument UDE presses on appeal) that the orthogonal con-
nection taught in Hughes could be combined with Kan to
produce a change in direction of 90 degrees. The Board
found no motivation to combine Kan and Hughes to “rear-
range the conductors” and “meet the limitations of pro-
posed substitute claims 22 and 23.” J.A. 63. As such, the
Board determined that the combination of Kan and Hughes
did not render substitute claims 22 and 23 obvious.
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12 PULSE ELECTRONICS, INC. v. U.D. ELECTRONIC CORP.
Substantial evidence supports the Board’s decision.
Pulse’s expert testified that a skilled artisan would not
have been motivated to combine Kan and Hughes, given
the substantial differences between the two prior art con-
nectors. This evidence supports a finding that a skilled ar-
tisan would not have combined the terminals in Kan with
the orthogonal bend in Hughes to create the structure of
the conductors recited in substitute claims 22 and 23.
UDE also argues that the Board’s finding that substi-
tute claims 22 and 23 are not obvious over the combination
of Kan and Hughes is inconsistent with its finding that this
combination renders claims 6–8 obvious. With respect to
claims 6–8, however, the Board was discussing a different
aspect the prior art—finding a motivation to reorient Kan’s
internal circuit board in view of Hughes. The fact that the
references could be combined for one purpose does not re-
quire that they would necessarily be combined for another
purpose.
We therefore affirm the Board’s decision to grant the
motion to amend with respect to substitute claims 22 and
23.
AFFIRMED IN PART AND REVERSED IN PART
COSTS
No costs.