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In re CSB-System International, Inc.

United States Court of Appeals, Federal Circuit

August 9, 2016

IN RE: CSB-SYSTEM INTERNATIONAL, INC., Appellant

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 90/012, 210.

          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 examiner'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 construed claims applying an incorrect legal standard and 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 integrating 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.

         (IMAGE OMITTED)

         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 component 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 incoming telephone calls over the LAN to personal computers. 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 telephone installation 3, will retrieve call information from the integration component via the LAN 9.

         Independent claim 1 of the '953 patent is representative and recites:

1. A circuit arrangement for integration of EDP systems in utilization of telephone systems connected 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 selected 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 said first line and ...

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