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ARTICLE · 03 OCTOBER 2016

PTO Must Apply Phillips Standard When Construing Expired Patents

The Federal Circuit agreed with CSB that the PTAB should have applied the Phillips standard rather than the BRI standard because the patent expired during the reexamination.

United StatesIntellectual Property

In an opinion addressing the standard for claim construction of a patent that expires during reexamination, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s) decision finding all challenged claims invalid, but found that the PTAB had used the incorrect standard for its claim construction. In re: CSB-System Int’l, Inc., Case No. 15-1832 (Fed. Cir., Aug. 9, 2016) (Stoll, J).

CSB is the owner of a patent directed to a circuit arrangement for integrating an electronic data processing system with telephone systems connected to an integrated services digital network telephone network. A third party successfully petitioned for ex parte reexamination of the patent. During the resulting reexamination proceeding, the examiner construed several claim terms, applying the broadest reasonable interpretation (BRI) standard for the terms “personal computer” and “LAN server,” and, using these constructions, rejected the

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