Docket No. 2015-1832
NEWMAN, MOORE, STOLL
August 9, 2016
Brief Summary: Board’s decision affirming the examiner’s rejections was affirmed, but claim terms of a patent that expires during reexamination must be construed under Phillips, not the broadest reasonable interpretation.
Summary: CSB appealed PTAB finding upholding the rejection of claims its US 5,631,953 related to digital telephone networks as anticipated (claims 1-6) or obvious (claims 7-8) during an ex parte reexamination. CSB argued the PTAB incorrectly used the broadest reasonable interpretation (BRI) claim construction standard and should have applied the Phillips standard (FC 2005 (plain meaning of the claim terms themselves in view of the intrinsic record)) because the patent expired during the reexamination (BRI is proper for reexamination of unexpired patents). “[T]he examimer refused to depart from the plain meaning of the term ‘personal computer’ but not, as CSB had argued, inserting a limitation which would exclude personal computers that emulate terminals” and “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 FC opinion explains that “the Board’s ultimate claim construction is a reexamination [is reviewed] de novo” and “any determinations involving extrinsic evidence for substantial evidence” (Teva, US 2015). But, here, “the intrinsic record fully determines the proper construction” and claim construction was therefore reviewed de novo (Microsoft, FC 2015, citing Teva). The FC opinion explained that application of BRI to reexamination of unexpired patents is acceptable because the patent owner “may amend claims to narrow their scope” (unlike after the patent expires) and the “exercise must always be reasonable and must consider the claims ‘in light of the specification and teachings in the underlying patent”, “negating any unfairness that may otherwise result from adopting the BRI standard” (In re ICON, FC 2007; Microsoft, FC 2015). But “[w]hen a patent expires during a reexamination proceeding, the PTO should thereafter apply the Phillips standard for claim construction…regardless of whether this means that the Board applies a different standard than the examiner” (In re Rambus, FC 2014). The PTO argued “that because the Board operates as a tribunal of review for the examiner’s work, the Board must scrutinize the claims consistent used by the examiner” but the FC panel noted that “if anything, the Phillips standard would result in a more narrow claim scope and, consequently, we see little change of the Board issuing a new grounds of rejection based on a narrower claim scope” (Facebook, US 2014). Here it also held that “the Board’s use of BRI did not produce a different result than the one we reach using…Phillips”. Thus, the Board’s decision affirming the examiner’s rejections was affirmed.