In Re: Csb-System International, Inc. , 832 F.3d 1335 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: CSB-SYSTEM INTERNATIONAL, INC.,
Appellant
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2015-1832
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,210.
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Decided: August 9, 2016
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BRUCE KOCH, Schmidt LLC, New York, NY, argued
for appellant. Also represented by THORSTEN SCHMIDT.
JEREMIAH HELM, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, AMY J. NELSON.
______________________
Before NEWMAN, MOORE, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
CSB-System International, Inc. appeals the decision
of the Patent Trial and Appeal Board upholding an exam-
iner’s rejection of all claims of CSB’s U.S. Patent No.
5,631,953 as unpatentable over the prior art during an ex
parte reexamination. CSB argues that the Board con-
strued claims applying an incorrect legal standard and
2 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
that, regardless of the standard, the Board misconstrued
claim terms which led to rejection of all claims of the ’953
patent. We agree with CSB that the Board should have
applied the Phillips standard of claim construction rather
than the broadest reasonable interpretation standard
used by the examiner because the ’953 patent expired
during the reexamination. We conclude, however, that
the Board’s claim construction was correct even under the
Phillips standard, and we affirm its rejection of all claims
of the ’953 patent as unpatentable over the prior art.
BACKGROUND
CSB is the assignee of the ’953 patent, issued May 20,
1997, and directed to a circuit arrangement for integrat-
ing an electronic data processing (“EDP”) system with
telephone systems connected to an integrated services
digital network (“ISDN”) telephone network. Figure 1
illustrates the arrangement the patent discloses.
IN RE: CSB-SYSTEM INTERNATIONAL, INC. 3
In this arrangement, telephone line “a” (shown using
a dotted line) connects individual telephone units 2, 11, 13
directly with an intelligent telephone installation 3, which
interfaces with the ISDN network 1. A local area network
(“LAN”) 9, with a LAN server 10, aggregates personal
computers 4, 12, 14, which each connect to the intelligent
telephone installation 3 through an integration compo-
nent 5. The integration component is a computing system
6 running software 7 and including an ISDN connector 8.
The ’953 patent contemplates providing data from in-
coming telephone calls over the LAN to personal comput-
ers. For example, when an incoming call is received from
the ISDN network 1, the intelligent telephone installation
3 will route the telephone call to one of the telephones 2,
11, 13 and will send call information to the integration
component 5. A personal computer, upon having a call
routed to its associated telephone by the intelligent tele-
phone installation 3, will retrieve call information from
the integration component via the LAN 9.
Independent claim 1 of the ’953 patent is representa-
tive and recites:
1. A circuit arrangement for integration of EDP
systems in utilization of telephone systems con-
nected to a public ISDN or Euro ISDN telephone
network, the circuit arrangement comprising
a plurality of telephone extensions which are
directly connectable to a telephone network se-
lected from the group consisting of a public ISDN
telephone network and Euro ISDN telephone
network;
a first line;
an intelligent telephone system arranged so
that said telephone extensions are connectable
with said at least one telephone network through
4 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
said first line and said intelligent telephone sys-
tem;
a plurality of personal computers;
an integration element arranged between said
intelligent telephone system and said personal
computers, said integration element receiving
signals via at least one connection element select-
ed from the group consisting of an SDLC connec-
tion element and an ISDN connection element via
a second line from said at least one telephone
network via said intelligent telephone system and
sending back signals to said at least one tele-
phone network, said integration element also
sending a data record assigned an appropriate in-
formation via a third line, via a LAN connected to
a LAN server by a fourth line and via a fifth line
to said personal computers and receiving a data
record from said personal computers again;
a computing system; and
a software layer arranged so that a conversion
of the signals into a data record and vice versa is
carried by said integration element, by said com-
puting system, by said software layer and by said
at least one connection element with an internal
software.
’953 patent col. 5 l. 52 – col. 6 l. 12 (emphases added).
A third-party requested ex parte reexamination of the
’953 patent, which was granted. As part of the reexami-
nation proceeding, the examiner construed several of the
’953 patent’s claim terms. Pertinent here, the examiner
refused to depart from the plain meaning of the term
“personal computer” by not, as CSB had argued, inserting
IN RE: CSB-SYSTEM INTERNATIONAL, INC. 5
a limitation which would exclude personal computers that
emulate terminals. 1 The examiner also declined to adopt
CSB’s construction of the claim term “LAN server,” which
sought to read in that the “LAN server” must provide
shared services to other components on the LAN and to
respond to requests from clients.
The primary prior art patent considered during the
reexamination was U.S Patent No. 5,097,528 (“Gursa-
haney”). Gursahaney is directed to “a subsystem for
providing a programmable interface between a host based
application program and a telephone network to automat-
ically transfer operands derived from caller identification
data from the telephone network to the host application
program.” Gursahaney col. 1 ll. 50–54. Gursahaney
discloses a system including “a workstation coupled to a
telephone network for receiving caller identification data
and coupled to a host computer running a menu driven
host application program which exchanges menu images
with the workstation . . . .” Id. col. 1 ll. 55–58. Gursa-
haney explains that its workstations “can be an IBM PS/2
model 80, for example,” id. col. 15 ll. 28–29, with a
memory which “includes a multi-tasking operating sys-
tem . . . and a terminal emulation program,” id. col. 16
ll. 6–10. The workstations in Gursahaney are connected
to a LAN through which they can access a host computer,
which in turn provides the workstations with call infor-
mation. Id. col. 4 ll. 37–48. Figure 4 depicts an embodi-
ment of Gursahaney.
1 A terminal is a device through which data may be
sent, received, and displayed. E.g., J.A. 9118.
6 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
The examiner rejected claims 1–6 as anticipated by
Gursahaney and claims 7–8 as obvious over: (1) Gursa-
haney in view of U.S. Patent No. 5,046,183 (“Dorst”) and
U.S. Patent No. 4,995,073 (“Okata”); and (2) Gursahaney
in view of Dorst and U.S. Patent No. 4,652,933 (“Koshii-
shi”). CSB appealed to the Board, and during the pen-
dency of that appeal, the ’953 patent expired. The Board
nonetheless decided to apply the broadest reasonable
interpretation (“BRI”) standard when analyzing the claim
constructions entered by the examiner, ultimately agree-
ing with the constructions and affirming the examiner’s
rejection of all claims of the ’953 patent.
CSB appealed to us, and we have jurisdiction under
28 U.S.C § 1295(a)(4)(A).
DISCUSSION
We review the Board’s ultimate claim construction in
a reexamination de novo. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 840–41 (2015); In re Teles AG
Informationstechnologien, 747 F.3d 1357, 1366 (Fed. Cir.
2014). We review any determinations involving extrinsic
IN RE: CSB-SYSTEM INTERNATIONAL, INC. 7
evidence for substantial evidence, but in this case “be-
cause the intrinsic record fully determines the proper
construction, we review the Board’s claim constructions
de novo.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015) (citing Teva, 135 S. Ct. at
840–42).
I.
Typically, claims in issued patents are construed us-
ing the framework set forth in Phillips v. AWH Corp.,
which emphasizes considering the plain meaning of the
claim terms themselves in light of the intrinsic record.
415 F.3d 1303, 1312–15 (Fed. Cir. 2005) (en banc). Dur-
ing reexamination proceedings of unexpired patents,
however, the Board uses the “broadest reasonable inter-
pretation consistent with the specification” standard, or
BRI. In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011)
(requiring use of BRI in reexamination of unexpired
patents); cf. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2145 (2016) (acknowledging Board use of BRI
during reexamination (citing In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984))). The rationale for permit-
ting this broader standard in reexaminations is that a
patent owner before the Patent and Trademark Office
(“PTO”) with an unexpired patent “may amend claims to
narrow their scope,” negating any unfairness that may
otherwise result from adopting the BRI standard. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. Of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004); Yamamoto, 740 F.2d at
1571); see also Cuozzo, 136 S. Ct. at 2145–46. Further
justification comes from the fact that constructions un-
hinged from the patent in which they are found are erro-
neous even under BRI, as the BRI claim construction
exercise must always be reasonable and must consider the
claims “in light of the specification and teachings in the
underlying patent.” Proxyconn, 789 F.3d at 1298 (quoting
In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
8 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
2010)). Even so, when an expired patent is subject to
reexamination, the traditional Phillips construction
standard attaches. In re Rambus Inc. (Rambus I), 694
F.3d 42, 46 (Fed. Cir. 2012).
The ’953 patent expired on May 20, 2014, after the
examiner issued a final rejection but before consideration
by the Board. The Board’s decision acknowledged that
the patent had expired, but nevertheless applied the BRI
standard. The Board contended that employing BRI was
proper because CSB had the opportunity to amend its
patent claims while they were pending before the examin-
er in the reexamination, as the patent had yet to expire.
We disagree with the Board’s approach. When a pa-
tent expires during a reexamination proceeding, the PTO
should thereafter apply the Phillips standard for claim
construction. We hold as much regardless of whether this
means that the Board applies a different standard than
the examiner. Our decision in In re Rambus, Inc. (Ram-
bus II), 753 F.3d 1253 (Fed. Cir. 2014) is instructive. In
Rambus II, the patent undergoing reexamination expired
after the examiner issued a right of appeal notice. See id.
at 1255–56; Rambus II Joint Appendix at 64, 130. While
the Board’s decision did not indicate whether it reviewed
the examiner’s claim construction under the BRI standard
or the Phillips standard, see Rambus II Joint Appendix at
1–54, on appeal we indicated that we must use the Phil-
lips standard because the patent had expired during the
appeal before the Board. Rambus II, 753 F.3d at 1256; see
also Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x
864, 868–69 (Fed. Cir. 2014) (non-precedential) (applying
Phillips standard when patent expired after the Board’s
reexamination decision pending appeal to the Federal
Circuit).
The PTO argues that because the Board operates as a
tribunal of review for the examiner’s work, the Board
must scrutinize claims consistent with the standard used
IN RE: CSB-SYSTEM INTERNATIONAL, INC. 9
by the examiner in the first instance, even after a patent
has expired. But, if anything, the Phillips standard
would result in a more narrow claim scope and, conse-
quently, we see little chance of the Board issuing new
grounds of rejection based on a narrower claim scope. See
Facebook, 582 F. App’x at 869 (explaining that construc-
tion of term under the BRI standard “cannot be narrower”
than that under the Phillips standard). In many cases,
the claim construction will be the same under the Phillips
and BRI standards. See, e.g., Proxyconn, 789 F.3d at 1302
n.1 (noting that the claim term under review had the
same construction under the BRI and Phillips standards);
Facebook, 582 F. App’x at 869 (“The broadest reasonable
interpretation of a claim term may be the same as or
broader than the construction of a term under the Phillips
standard.”).
We are also not persuaded by the PTO’s argument
that BRI should apply here because the patent owner
could have amended its claims while before the examiner.
The policy underlying our embrace of BRI in limited
circumstances does not extend to cases where a patent
expires during a reexamination because the patent own-
er’s ability to amend is substantially diminished when
this occurs regardless of the stage of the reexamination.
Under the PTO’s regulations, a patentee may not amend a
claim that expires during prosecution. 37 C.F.R.
§ 1.530(j) (“No amendment may be proposed for entry in
an expired patent.”). Moreover, patents that expire
during an appeal to the Board, as in this case, will not be
issued with amended claims even if the patent owner
amended them while before the examiner. See Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino,
738 F.3d 1337, 1343 (Fed. Cir. 2013) (holding that, under
§ 1.530(j), (k), “the PTO may not issue the amended claim
now that the patent has expired” after the Board issued a
reexamination decision). Because it is not always clear
how much time a Board appeal will take and at what
10 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
point a patent owner can reopen prosecution and amend
its claims, and we do not think an inquiry into whether or
not a patent owner could have amended its claims, or
speculation as to whether the patent owner could in the
future have an opportunity to amend its claims, should
resolve the question.
In sum, we hold that BRI is not a monolithic standard
that the Board can use even after a patent expires.
Rather, consistent with our prior precedent and custom-
ary practice, we reaffirm that once a patent expires, the
PTO should apply the Phillips standard for claim con-
struction.
II.
While we hold that the Board erred in using the BRI
standard, the Board’s use of BRI did not produce a differ-
ent result than the one we reach using the Phillips stand-
ard. See, e.g., Proxyconn, 789 F.3d at 1302 n.1; Facebook,
582 F. App’x at 869. Even under the Phillips standard,
there is no basis for limiting the claims as narrowly as
CSB argues.
First, contrary to CSB’s arguments, there is no sup-
port whatsoever for limiting the broad claim term “per-
sonal computer” in the ’953 patent to exclude personal
computers running software to emulate terminals. In the
context of the ’953 patent, a personal computer is defined
by its hardware and computing capability, not by the
software it happens to run at a point in time. Indeed, the
specification refers only to PCs generically, with no spe-
cial or unusual explanation. E.g., ’953 patent col. 2 l. 35 –
col. 3 l. 14, col. 4 l. 33 – col. 5 l. 17. Nothing in the ’953
patent suggests that any other understanding should
apply. Thus, we agree with the Board’s view of “personal
computer” and decline to import the negative limitation
sought by CSB. Because CSB’s arguments that Gursa-
haney does not teach a “personal computer” hinge on its
IN RE: CSB-SYSTEM INTERNATIONAL, INC. 11
proffered construction, we reject CSB’s argument that
Gursahaney fails to teach a personal computer.
We are also not convinced by CSB’s argument that the
term “LAN server” requires embellishment beyond its
plain meaning. CSB argues that LAN server should be
construed to expressly require purported characteristics
of a LAN server, such as providing shared services to
other components on the LAN and responding to requests
from clients. At the same time, however, CSB describes
the Board’s construction of the term as “agreed upon.”
Appellant Br. 14. Moreover, its specific arguments relate
to a comparison of the ’953 patent claims to the prior
art—which is part of the anticipation analysis, reviewed
for substantial evidence, not claim construction. Id. at 14,
36–38. Without a “fundamental dispute regarding the
scope” of this term, construction is not necessary. O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1362 (Fed. Cir. 2008).
Substantial evidence supports the Board’s finding
that Gursahaney discloses a LAN server. Gursahaney
discloses that the “workstation components 100 [are]
connected by a token ring local area network (LAN),”
Gursahaney col. 4 ll. 37–38, and that these workstations
“access[] host applications running on the host 200, to
provide caller-specific information to the service repre-
sentative,” id. col. 4 ll. 46–48.
Because there is substantial evidence that Gursa-
haney discloses the “personal computer” and “LAN server”
limitations, the Board did not err in rejecting the sole
independent claim of the ’953 patent, claim 1, as antici-
pated by Gursahaney. The Board also rejected dependent
claims 2–6 as anticipated by Gursahaney and claims 7
and 8 as obvious over Gursahaney in view of several prior
art references not directly at issue in this appeal. CSB
makes no particularized argument to support patentabil-
ity of these dependent claims apart from the arguments it
12 IN RE: CSB-SYSTEM INTERNATIONAL, INC.
makes for claim 1, so we also affirm these rejections.
Having affirmed the Board’s rejection of all claims on
these grounds, we need not discuss the other prior art
grounds that the Board found rendered the claims of the
’953 patent unpatentable.
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion to reject all claims of the ’953 patent in view of prior
art presented during reexamination.
AFFIRMED