# United States **Court of Appeals**  **for the Federal Circuit**

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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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B RUCE K OCH , Schmidt LLC, New York, NY, argued for appellant. Also represented by T HORSTEN S CHMIDT

.

J EREMIAH H ELM , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Michelle K. Lee . Also represented by T HOMAS W. K RAUSE , A MY J. N ELSON

.

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Before N EWMAN , M OORE , and S TOLL , Circuit Judges.

S TOLL , Circuit Judge

. CSB

- System International, Inc. appeals the decision of the Patent Trial and Appeal Board uphold ing an exa miner’s rejection of all claims of CSB’s U.S. Patent No. 5,631,953 as unpatentable over the prior art during an ex part e reexamination. CSB argues that the Board co nstrued claims applying an incorrect legal standard andIN RE : CSB

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that

, regardless of the standard, the Board misconstrued claim terms w hich 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 pate nt 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.

B ACKGROUND
CSB is the assignee of the ’ 953 patent, issued May 20, 1997
, and directed to a circuit arrangement for integra ting an electronic data processing (“EDP”) system with telephone systems connected to an integrated services digital network (“ISDN”) telephone netwo rk. Figure 1 illustrates the arrangement the patent discloses

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In this arran gement, telephone line “a ” (shown using

a dot t ed line) connects individual telephone units 2, 11, 13 directly with an intelligent telephone installa tion 3, which in terfaces with t he 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 installa tion 3 through an integration comp onent 5 . The integration c omponent is a computing sys tem 6 running software 7 and including an ISDN connector 8. The ’953 patent contemplates p roviding data from i ncoming telephone calls over the LAN to personal compu ters. For example, when an incoming call is received from the ISDN net work 1 , the intelligent telephone installa tion 3 will route the telephone call to one of the telephones 2, 11, 13 and will send call information to the integration

compo nent 5 . A personal computer , upon having a call routed to its associated telephone by the intellig ent tel ephone installation 3 , will retrieve call information from the integration component via th e LAN 9

. Independent claim 1 of the ’953 patent is represent ative and recites:

1. A circuit arrangement for integration of EDP systems in utilization of tel ephone systems co nnected 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 s elected from the group consisting of a public ISDN tele phone 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 throughIN RE : CSB

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said first line and said intelligent telephone sy stem; 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 selec ted from the group consist ing of an SDLC conne ction 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 tel ephone network, said integration element also sending a data record assigned an appropriate i nformation 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 co mputing system, by said software layer and by said at least one connection element with an inter nal software.
’953 patent col. 5 l. 52 – col. 6 l. 12 (emphase s added)

. A third

- party requested ex parte reexamination of the ’953 patent, which was granted. As part of the reexam ination proceeding , t he 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

, insertingIN RE : CSB

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a limitation which would exclude personal computers that emulate terminals. 1 The examiner also decline d 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 request s from clients

. The primary prior art pa tent considered during the reexamination was U.S Patent No. 5,097,528 (“Gurs ahaney”). Gursahaney is directed to “ a subsystem for providing a programmable interface between a host based application program and a telephone network to automa tically transfer operands derived from c aller identification data from the telephone network to the host applicatio n 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. Gurs ahaney explains that its workstations “can be an IBM PS/2 model 80, for example,” i d. col. 15 ll. 28

– 29 , with a memory which “includes a multi

- tasking operating sy stem . . . 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 provide s the workstations with call info rmation

. I d. col. 4 ll. 37

– 48. Figure 4 depicts an embod iment of Gursahaney

.

1 A terminal is a device through whi ch data may be
sent
, received, and displayed

. E.g.

, J.A. 9118.IN RE : CSB

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The examiner rejected claims 1– 6 as anticipated by Gursahaney and claims 7

– 8 as obvious over: (1) Gurs ahaney 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 (“Koshi ishi”)

. CSB ap pealed to the Board

, and during the pe ndency of that appeal, the ’953 patent expired. The Board

none theless decided to ap ply the broadest reasonable interpretation (“ BRI ”) standard when analyzing the claim constructions entered by the examiner

, ultimately agre eing with the constructions and af firming 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).

D ISCUSSION
We review the Board’ s ultimate claim construction in a reexamination de novo. Teva Pharm . USA, Inc. v. Sandoz, Inc ., 135 S. Ct. 831, 84 0–4 1 (2015) ; In re Teles AG Informationstechnologien

, 747 F.3d 1357, 1366 (Fed. Cir. 2014). We review any determinations involving extrinsicIN RE : CSB

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evidence for substantial evidence, but in this case “ because the intrinsic record fully determines the proper

co nstruction, we review the Boar d’ 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 u sing 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)

. Du ring reexamination proceedings of unexpired patents, however, the Board uses the “broadest reasonable inte rpretation 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 permi tting 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 u nhinged from the patent in which they are found are err oneous 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.3 d 1255, 1260 (Fed. Cir.IN RE : CSB

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2010) )

. Even so, when a n expired patent is subject to reexamination, the traditional Phillips construction standard attaches. In re Rambus Inc. ( Ram bus I ) , 694 F.3d 42, 46 (Fed. Cir. 2012)

. T he ’953 patent expired on May 20, 2014, after the examin er issu ed a final rejection but before consideration by the Board. T he Board ’s decision acknowledged that the patent had expired, but nevertheless applied the BRI standard

. The Board contend ed that employing BRI was prope r because CSB had the opportunity to amend its patent claims while the y were pending before the exami ner in the reexamination, as the patent had yet to expire

. We disagree with the Board ’s approach

. When a p atent 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. ( Ra mbus 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 , o n appeal we indicated that we must use the Phi llips standard because the patent had expired during the appeal before the Board

. Rambus II , 753 F.3d at 1256; s ee 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

reex amination 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 usedIN RE : CSB

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by the examiner in the first instance, even after a patent has expired. But, i f anything, the Phillips standard would result in a more narrow claim scope and, cons equently, we see little chance of the Board issuing new grounds of rejection based on a narr ower claim scope. See Facebook , 582 F. App’x at 869 ( explaining that construction of term under the BRI standard “cannot be narrower” than that under the Phillips stand ard ). I n many cases, the claim construction will be the same under the Phillips and BR I standard s

. See

, e.g. , Proxyconn , 789 F.3d at 1302 n.1 (noting that the claim term under re view 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

c ould have amended its claims while before the examiner

. The policy underlying our embrace of BRI in limited circumstances does not extend to case s where a patent expires during a reexamination because the patent ow ner’s ability to amend is substantially d iminished 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 prosecu tion

. 37 C.F.R. § 1.530(j) (“ No amendment may be proposed for entry in an expired patent. ”)

. Moreover, p atents 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), “t he PTO may not issue the amended claim now that the patent has expired ” after the Board issued a reexamination decision ). Because i t is not always clear how much time a Board app eal will take and at whatIN RE : CSB

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point a patent owner can reopen prosecution and amend its claims

, and we do not think an inquiry into whether or not a patent owne r could have amended its claims, or speculation as to whether the patent owner could in the future h ave an opportuni ty 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 custo mary practice, we reaffir m that once a patent expires, the PTO should apply the Phillips standard for claim co nstruction.

II. While we hold that the Board erred in using the BRI standard, the Board’s use of BRI did not produce a diffe rent result than the one we reach using the Phillips stan dard. 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, t here is no su pport whatsoever for limiting the broad claim term “pe rsonal computer” in the ’953 patent to exclude personal computers running software to e mulate termi nals

. In the context of the ’ 953 patent, a personal computer is defined by its hardware and computing capabil ity, not by the software it happens to run at a point in time. Indeed, t he specification refers only to PCs generically, with no sp ecial 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 Gurs ahaney does not teach a “personal co mputer” hinge on itsIN RE : CSB

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proffered construc tion, w e 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 Boar d’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 are a 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 repr esentative ,” id. col. 4 ll. 46

– 48

. Because there is substantial evidence that Gurs ahaney discloses the “personal computer” and “LA N server” limitations, the Board did not err in rejecting the sole independent cl aim of the ’953 patent, claim 1, as antic ipated by Gursahaney

. The Board also rejected dependent claims 2

– 6 as anticipated by Gursahaney and claims 7 and 8 as obvious over Gu rsahaney in view of several prior art references not directly at issue in this appeal. CSB makes no particularized argument to support patentabi lity of the se dependent claims apart from the argument s itIN RE : CSB

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makes for claim 1, so we also affirm these rejection s. 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.

C ONCLUSION For the foregoing reasons, we affirm the Board’s dec ision to r eject all claims of the ’953 patent in view of prior art presented during reexamination.

AFFIRMED