In Re: Csb-System International, Inc.
832 F.3d 1335
| Fed. Cir. | 2016Background
- CSB-System owned U.S. Patent No. 5,631,953, directed to integrating personal computers (PCs) and LANs with an ISDN-connected intelligent telephone system to deliver call data to PCs.
- A third party requested ex parte reexamination; the examiner rejected all claims as unpatentable over prior art (primarily Gursahaney) and construed claim terms using the broadest reasonable interpretation (BRI).
- Key disputed claim terms included “personal computer” (CSB sought to exclude PCs running terminal-emulation software) and “LAN server” (CSB sought an express requirement that it provide shared services/respond to client requests).
- The ’953 patent expired after the examiner’s final rejection but before the Board decision; nevertheless the Board applied BRI and affirmed the examiner’s rejections.
- CSB appealed, arguing the Board should have used the Phillips claim-construction standard (because the patent had expired) and that the Board misconstrued claim terms, making the prior art rejections erroneous.
- The Federal Circuit held that Phillips applies to reexaminations once the patent has expired, but concluded the Board’s constructions were correct even under Phillips and affirmed the unpatentability findings.
Issues
| Issue | Plaintiff's Argument (CSB) | Defendant's Argument (PTO/Board) | Held |
|---|---|---|---|
| Appropriate claim-construction standard after patent expiration during reexamination | Board should have applied Phillips (claims of an expired patent are construed under Phillips) | Board applied BRI because the examiner used BRI and CSB had had opportunity to amend claims pre-expiration | Held for CSB: Phillips applies once a patent expires during reexamination; BRI is inappropriate thereafter |
| Construction of “personal computer” | Term should exclude PCs running terminal-emulation software (i.e., read a negative limitation) | Term has plain meaning defined by hardware/capability; software state (emulation) not a limiting feature | Held for PTO: No basis to import limitation; “personal computer” reads broadly to include PCs running terminal emulation |
| Construction of “LAN server” | CSB urged adding requirements (provide shared services; respond to client requests) | Board’s plain-meaning construction suffices; no fundamental dispute on scope requiring elaboration | Held for PTO: No additional embellishment required; substantial evidence supports that Gursahaney discloses a LAN server |
| Anticipation/obviousness in view of Gursahaney (and other refs) | If claim terms are narrowly construed as CSB urges, Gursahaney would not anticipate/obviousness would fail | Under Board constructions, Gursahaney discloses the claimed elements; dependent-claim rejections likewise supported | Held for PTO: All claims unpatentable (claim 1 anticipated by Gursahaney; dependent claims anticipated or obvious as the Board found) |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (en banc) (primary framework for claim construction of issued patents)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (de novo review of intrinsic-based claim construction; review of factual findings for substantial evidence)
- In re Rambus, Inc., 694 F.3d 42 (Fed. Cir.) (Phillips standard applies when patent expires during reexamination)
- In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir.) (clarifying application of Phillips when patent expiration occurs during appeal)
- In re NTP, Inc., 654 F.3d 1268 (Fed. Cir.) (requirement to use BRI in reexamination of unexpired patents)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (recognition of PTO practice of using BRI in reexamination)
- O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (construction unnecessary absent fundamental dispute regarding scope)