VTech Communications, Inc.v.Spherix Incorporated

Patent Trial and Appeal Board

Feb 3, 2016

09494721 (P.T.A.B. Feb. 3, 2016)

Trials@uspto.gov Paper 47
571-272-7822 Entered: February 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VTECH COMMUNICATIONS, INC., and
UNIDEN AMERICA CORPORATION,
Petitioner,

v.

SHPERIX INCORPORATED,
Patent Owner.

Case IPR2014-01432
Patent 6,614,899 B1

Before HOWARD B. BLANKENSHIP, JONI Y. CHANG, and
BEVERLY M. BUNTING, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
VTech Communications, Inc. and Uniden America Corporation
(collectively, “VTech”) filed a Petition requesting an inter partes review of
claims 1–5 and 8–23 of U.S. Patent No. 6,614,899 (Ex. 1001, “the ’899
patent”). Paper 2 (“Pet.”). Patent Owner Spherix Incorporated (“Spherix”)
filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). Upon
consideration of the Petition and Preliminary Response, we instituted this
trial as to claims 1–5 and 8–23, pursuant to 35 U.S.C. § 314, on March 3,
2015. Paper 14 (“Dec.”).
Subsequent to institution, Spherix filed a Patent Owner Response
(Paper 24, “PO Resp.”), and VTech filed a Reply to the Patent Owner
Response (Paper 27, “Reply”). An oral hearing1 was held on September 28,
2015.2
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
herein, we determine that VTech has shown by a preponderance of the
evidence that claims 1–5 and 8–23 of the ’899 patent are unpatentable.
A. Related Matter
VTech indicates that the ’899 patent has been asserted in Spherix Inc.
v. VTech Telecomm., Ltd., No. 3:13-cv-3494-M (N.D.Tex.) and Spherix Inc.
v. Uniden Corp., No. 3:13-cv-3496-M. (N.D.Tex.). Pet. 1.

1 The oral hearings for this trial and IPR2014-01431 were consolidated.
2 A transcript of the oral hearing is entered in the record as Paper 44 (“Tr.”).
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B. The ’899 Patent
The ’899 patent relates generally to a method and apparatus for
providing Internet Protocol (“IP”) telephony services. Ex. 1001, 1:7–9.
In particular, the disclosed embodiments are directed to IP telephony
intelligent devices that are said to be capable of updating local IP telephony
directories from an IP network server, performing click-to-dial services
using the local IP telephony directories, and performing advanced IP
telephony services on incoming IP telephony communications. Id. at 1:9–
15. According to the ’899 patent, IP telephony was known generally in the
art at the time of the invention. Id. at 1:18–19. One of the advantages of IP
telephony devices was to provide users the capability of making telephone
calls over the Internet, eliminating long distance charges. Id. at 1:22–28.
Figure 1 of the ’899 patent is reproduced below.

As shown in Figure 1, communication system 100 is a network of
computers, including IP network 104, intelligent IP telephony device 106,
computing device 108, IP telephony apparatus 112, and directory server 114.
Id. at 3:3–17, 4:7–9.
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C. Illustrative Claim
Claims 1, 13, 14, 18, and 20 are independent. Claims 2–5 and 8–12
depend, either directly or indirectly, from claim 1; claims 15–17 depend
ultimately from claim 14; claim 19 depends directly from claim 18; and
claims 21–23 depend directly from claim 20.
Claim 1 is illustrative of the claimed subject matter of the ’899 patent,
and is reproduced below:
1. A method in a communications system for updating, from a
network directory server, a local telephony directory on a
telephony device, comprising:
establishing a communication connection between the telephony
device and the network directory server;
sending an update request to the network directory server
through the communication connection;
receiving updated telephony directory information from the
network directory server through the communication connection;
and
updating the local telephony directory based on the updated
telephony directory information.
Ex. 1001, 12:49–61 (emphases added).
D. Prior Art Relied Upon
VTech relies upon the following prior art references:
Wood US 6,091,808 Jul. 18, 2000 (Ex. 1008)
Pickering US 6,076,093 Jun. 13, 2000 (Ex. 1009)
Gerszberg US 6,570,974 B1 May 27, 2003 (Ex. 1010)

Huiwei Guan, et al., Java-Based Approaches for Accessing Databases
on the Internet and a JDBC-ODBC Implementation, 9(2) COMPUTING AND
CONTROL ENGINEERING JOURNAL 71–78, IEE Xplor (Apr. 1998) (Ex. 1011,
“Guan”)

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E. Instituted Grounds of Unpatentability
We instituted the instant trial based on the following grounds of
unpatentability (Dec. 26):
Claims Basis References
1–5 and 8–23 § 103(a) Pickering in view of Wood
2, 3, 9, 10, 11, 15, and 16 § 103(a) Pickering in view of Guan

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1277–79 (Fed. Cir. 2015) (“Congress
implicitly approved the broadest reasonable interpretation standard in
enacting the AIA,”3 and “the standard was properly adopted by PTO
regulation.”), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 84
U.S.L.W. 3218 (Jan. 15, 2016) (No. 15-446). Under this standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). An inventor may rebut that presumption by providing a definition of

3 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”).
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the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Furthermore, only those terms, which are in controversy, need to
be construed, and only to the extent necessary to resolve the controversy.
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999).
Preambles of Claims 1, 13, 18, and 20
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is
not limiting ‘where a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or intended use
for the invention.’” Id. In other words, the preamble is regarded as limiting
if it recites essential structure that is important to the invention or necessary
to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418
F.3d 1282, 1305–06 (Fed Cir. 2005). When the limitations in the body of
the claim “rely upon and derive antecedent basis from the preamble, then the
preamble may act as a necessary component of the claimed invention.”
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
Here, the preambles of independent claims 1, 13, and 18 recite “for
updating, from a network directory server, a local telephony directory on a
telephony device.” See, e.g., Ex. 1001, 12:49–50. The preamble of claim 20
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recites “that initiates a telephony call, over a network having a network
directory server, to a receiving telephony device.” Id. at 14:36–38.
The preambles of these claims recite essential structural elements of
the claimed method and apparatus pertaining to the network directory server,
local telephony directory, and telephony device, rather than merely stating
the purpose or intended use of the claimed method or apparatus. For
instance, in claims 1, 13, and 18, the recitation of “a local telephony
directory on a telephony device” describes a fundamental characteristic of
the claimed method and apparatus—namely, the local telephony directory
resides on a telephony device. The Specification states that “[t]he present
invention provides methods and apparatus for providing advanced IP
telephony services using an intelligent endpoint device,” and “[t]he
apparatus is capable of performing updates to a local directory by retrieving
directory information from a directory server using an Internet connection.”
Ex. 1001, 1:46–53 (emphases added). Essentially, the preambles of these
claims recite structural elements that are important to the claimed invention.
See Vizio, Inc. v. ITC, 605 F.3d 1330, 1340 (Fed. Cir. 2010) (“[T]he ‘for
decoding’ language . . . is properly construed as a claim limitation, and not
merely a statement of purpose or intended use for the invention, because
‘decoding’ is the essence or a fundamental characteristic of the claimed
invention.”); Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303,
1309–10 (Fed. Cir. 2004) (“blown-film” in the preamble was limiting where
the specification was “replete with references to the invention as a ‘blown-
film’ liner” and described it as a fundamental characteristic of the
invention).
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Moreover, the bodies of the claims do not recite the complete
invention, but refer back to the structural features in the preamble, so that the
references to the network directory server, local telephony directory, and
telephony device in the bodies of the claims derive their antecedent basis
from the preamble. For example, claims 1 and 13 recite, in the body,
“updating the local telephony directory based on the updated telephony
directory information.” Id. at 12:59–60, 13:53–55. Claim 18 recites a
similar limitation. Id. at 14:31–32.
In consideration of the foregoing, we determine that the preambles of
claims 1, 13, 18, and 20 are entitled to patentable weight.
local telephony directory
Prior to institution, Spherix submitted its proposed claim construction
for the claim term “local telephone directory.” Prelim. Resp. 19. In the
Decision on Institution, we addressed Spherix’s contentions, and noted that
the Specification indicates that the graphical user interface of a directory
listing includes fields for personal contact information, including the
person’s name, address, Internet address, telephone number. Dec. 8–9;
Ex. 1001, 7:4–23, Fig. 4. We did not adopt Spherix’s proposed construction,
but rather, in light of the Specification, we construed the claim term a “local
telephony directory” broadly, but reasonably, as a “listing of telephone
contact information that resides on a user’s device, rather than on a remote
system or server on the network.” Dec. 8–9. After institution, the parties do
not challenge any aspect of our claim construction as to this term. PO Resp.
21; see generally Reply. Upon review of the present record, we discern no
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reason to change our claim construction as to the preamble of claims 1, 13,
and 18, and “a local telephony directory” for this Final Written Decision.
updating, updates, and to update
Each of claims 1 and 13 recites “updating the local telephony
directory based on the updated telephone directory information”; claim 14
recites “updates a local telephony directory based on the updated telephony
directory information”; and claim 18 recites “the updated telephony
directory information being used by the telephony device to update the local
telephony directory.” Ex. 1001, 12:59–60, 13:53–55, 14:30–32 (emphases
added). In that regard, the parties’ dispute centers on whether these claim
phrases require a comparison step, as construed by the District Court in a
related proceeding. PO Resp. 21–25; Reply 5–11; Ex. 2004, 81–90, 105.
For instance, the District Court construed the “updating” phrase recited in
claims 1 and 13 to mean “comparing an entry in the local telephony
directory with an entry in the updated telephony directory information and
executing instructions to overwrite an entry in the local telephony directory,
add an entry to the local telephony directory, or delete the updated telephony
directory information.” Ex. 2004, 89 (emphasis added).
In its Petition, VTech contends that all of the aforementioned
“updating” claim phrases essentially have the same meaning in the context
of the ’899 patent. Pet. 7. For the claim term “updating,” VTech urges us to
adopt Spherix’s proposed claim construction previously submitted with the
District Court as the broadest reasonable construction. Id. at 7–8. In its
brief filed with the District Court, Spherix indicated that the ordinary and
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customary meaning of the term “updating” is simply “to change something
to reflect the most recent, up-to-date, information.” Ex. 1013, 24–25.
In its Patent Owner Response, Spherix urges us to adopt the District
Court’s claim constructions for the “updating” claim phrases to require a
comparison step, because “there is no meaningful distinction between the
‘broadest reasonable construction’ standard applied by the Board and the
Phillips-based claim construction applied in federal court litigation.” PO
Resp. 20–25 (citing Ex. 2004, 81–90, 105).
Although a district court’s interpretation of a claim term recited in the
involved patent is instructive, we nevertheless are not bound by that
construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326
(Fed. Cir. 2015) (“There is no dispute that the board is not generally bound
by a prior judicial construction of a claim term.”). We note that patent
claims have a presumption of validity in a district court proceeding. In
contrast, there is no presumption of validity in an inter partes review, and,
therefore, we will not be applying a rule of construction with an aim to
preserve the validity of claims. Further, we observe that the parties’
arguments and supporting evidence submitted here are different than those
presented in the district court proceeding. In any event, we have reviewed
and considered the District Court’s Claim Construction Order insofar as its
reasoned analysis is relevant to the issues before us regarding the
patentability of claims 1–5 and 8–23 of the ’899 patent and the claim terms
in dispute here. See Power Integrations, 797 F.3d at 1326 (“The fact that the
board is not generally bound by a previous judicial interpretation of a
disputed claim term does not mean, however, that it has no obligation to
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acknowledge that interpretation or to assess whether it is consistent with the
broadest reasonable construction of the term.”).
In its Reply, VTech argues that the broadest reasonable interpretation
of the claim term “updating” does not require a comparison step because
Dr. Paul D. Franzon testified that updating a local directory may involve a
simple overwrite of the directory without a comparison step. Reply 8–11;
Ex. 1017 ¶¶ 79–80.
The District Court considered Dr. Franzon’s testimony but, in the
context of the claims and Specification of the ’899 patent, the District Court
found that the claim term “updating” requires a comparison step because the
“updating” step is not simply overwriting or replacing the entire local
directory with the updated telephony directory, as Dr. Franzon suggested.
Ex. 2004, 86; Ex. 1017 ¶ 80. Apart from the claim language itself, the
specification is “the single best guide to the meaning of a disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).
Indeed, the Summary of the Invention section of the ’899 patent states that
“[t]he apparatus further compares the directory update[d] information
against local directory information to determine if corresponding directory
listings are present.” Ex. 1001, 1:59–61 (emphases added).
In addition, Dr. Franzon also testified that “‘update’ does not have to
mean an update of the entire telephone directory,” and that “[n]ormal usage
could imply a partial update, for example requesting information about one
specific entry.” Ex. 1017 ¶ 80 (emphases added). As such, one of ordinary
skill in the art would have appreciated that, in a partial update or an update
of a specific entry, the system must determine whether the local directory
contains a corresponding entry for that specific entry, and where the
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corresponding entry is located, before the system can update or make
changes to the corresponding entry in the local directory.
Having considered the relevant portions of the District Court’s Claim
Construction Order and the evidence in this record, we are persuaded that
each of the “updating” claim phrases requires a comparison step.
That being said, we nevertheless are not persuaded that the
comparison step must include “comparing an entry in the local telephony
directory with an entry in the updated telephony directory information,” as
construed by the District Court. Ex. 2004, 89–90, 105 (emphases added).
Notably, the Specification of the ’899 patent makes clear that the
comparison step does not necessarily include such an entry-by-entry
comparison. Ex. 1001, 6:34–42. As explained in the Specification, the
directory update device determines whether a corresponding listing is
present in the local directory by, “for example, using a simple filename
comparison” or, alternatively, “a more complex comparison taking into
account actual data values within the files.” Id. (emphases added). The
District Court’s claim construction is based on the exemplary embodiments
shown in Figures 5 and 12 of the ’899 patent. Ex. 2004, 86–88; Ex. 1001,
2:24–30, 2:42–44 (“FIG. 5 is an exemplary diagram of a graphical user
interface for comparing a local directory listing and a directory server listing
according to the present invention”), 2:62–63 (“FIG. 12 is a flowchart
outlining an exemplary operation of the directory update device of FIG. 3”),
3:1–2, 12:35–47. Our reviewing court “has repeatedly cautioned against
limiting the claimed invention to preferred embodiments or specific
examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1346–47 (Fed. Cir. 2015). “[I]t is the claims, not the written
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description, which define the scope of the patent right.” Laitram Corp. v.
NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998); see also id. (“[A] court
may not import limitations from the written description into the claims.”).
Therefore, we decline to adopt the District Court’s claim construction that
requires an entry-by-entry comparison because such a construction would
import improperly a limitation from a preferred embodiment or specific
example into the claims. Rather, in light of the Specification, we conclude
that each of the “updating” claim phrases requires no more than a
comparison step for determining whether there is a corresponding listing or
entry in the local directory. The comparison step may encompass a filename
comparison or other comparison methods for such a determination.
We also decline to adopt the District Court’s claim construction that
requires “executing instructions to overwrite an entry in the local telephony
directory, add an entry to the local telephony directory, or delete the updated
telephony directory information.” Ex. 2004, 89–90. Although overwriting
or adding an entry in the local telephony directory would make changes to
the local telephony directory, deleting the updated telephony directory
information would not make any changes to the local telephony directory.
As noted by Spherix, the ordinary and customary meaning of the term
“updating” is to change something to reflect the most recent, up-to-date
information or make it more current. Ex. 1013, 24–25; see also MICROSOFT
COMPUTER DICTIONARY at 486 (3rd ed. 1997) (defining “update” as “[t]o
change a system or a data file to make it more current”) (Ex. 3001). There is
a “heavy presumption” that a claim term carries its ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002). Here, nothing in this record requires us to interpret the claim
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term “updating the local telephony directory” contrary to its ordinary and
customary meaning. We decline to treat a step for “deleting the updated
telephony directory information,” which makes no changes to the local
telephony directory, as “updating the local telephony directory.” We,
therefore, construe each of the “updating” claim phrases to require the
system to make at least a change to the local telephone directory to reflect
the most recent, up-to-date information or make it more current.
network browser application
Claim 9 recites “wherein the establishing, sending, and receiving steps
are performed using a network browser application.” Ex. 1001, 13:27–30.
The Specification states that the “IP network interface 230 may further make
use of an IP network browser application, such as Netscape™ or Microsoft
Internet Explorer™, to log onto an IP network 104 server in order to gain
access to the IP network 104.” Ex. 1001, 4:48–52 (emphasis added).
In its Claim Construction Order, the District Court found that the
claims are not limited to IP networks, and that the use of the term “web
browser” in exemplary embodiments of the ’899 patent does not amount to a
special definition of the term “network browser application.” Ex. 2004, 79–
80. The District Court also found that one of ordinary skill in the art would
have understood that a “network browser application” can be used to browse
a network. Id. In that light, the District Court declined to construe the claim
term “network browser application” as “web browser,” but rather construed
it to mean “an application used to browse a network.” Id. at 79–81. In this
inter partes review, the parties do not object to the District Court’s claim
construction. Reply 15; Ex. 2005 ¶ 79; see generally PO Resp.
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That being said, Spherix’s expert, Dr. Franzon, testifies that browsing
a network “includes supporting accessing any compatible web page, as well
as web-connected directories, ftp sites, etc.” Ex. 2005 ¶ 79. The District
Court, however, already rejected a claim construction that requires a web
browser, and its claim construction does not require these additional
functions identified by Dr. Franzon. Ex. 2004, 79–81. Further, one of
ordinary skill in the art would have understood that browsing a network
means “to scan a [network] either for a particular item or for anything that
seems to be of interest.” See MICROSOFT COMPUTER DICTIONARY at 64
(3rd ed. 1997) (Ex. 3001) (defining “browse” as “to scan a database, a list of
files, or the Internet, either for a particular item or for anything that seems to
be of interest.”). Dr. Franzon’s implicit interpretation would redefine the
term “browse” to import improperly extraneous features into the claims—
namely, “supporting accessing any compatible web page, as well as
web-connected directories, ftp sites, etc.” Ex. 2005 ¶ 79. It is well-settled
that if a feature is not necessary to give meaning to what the inventor means
by a claim term, it would be “extraneous” and should not be read into the
claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249
(Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
849 F.2d 1430, 1433 (Fed. Cir. 1988).
Accordingly, we adopt the District Court’s claim construction for the
claim term “network browser application,” as the broadest reasonable
interpretation—“an application used to browse a network.” We, however,
decline to further define browsing a network to require the extraneous
features identified by Dr. Franzon.
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applet
Claim 9 recites “an applet for downloading updated telephony
directory information.” Ex. 1001, 13:27–30. The Specification clearly sets
forth a definition for the term “applet”—“An applet is a small application
program having limited utility.” Ex. 1001, 5:30–45. The District Court
adopted that definition, and rejected the additional limitation that would
require the recited “applet” to run within a web browser. Ex. 2004, 74–76.
Here, we also adopt that definition, without the additional limitation, as the
broadest reasonable interpretation for the claim term “applet” because the
term has been defined in the Specification with reasonable clarity,
deliberateness, and precision. See Paulsen, 30 F.3d at 1480.
B. Principles of Law
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In that regard, an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
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ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
Translogic, 504 F.3d at 1259. A prima facie case of obviousness is
established when the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
531 F.2d 1048, 1051 (CCPA 1976).
The level of ordinary skill in the art is reflected by the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
579 F.2d 86, 91 (CCPA 1978).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Obviousness over Pickering in view of Wood or Guan
VTech asserts, in its Petition, that claims 1–5 and 8–23 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
Pickering and Wood. Pet. 44–51. VTech also asserts that claims 2, 3, 9, 10,
11, 15, and 16 are unpatentable over the combination of Pickering and Guan.
Id. at 54–57. As support, VTech provides detailed explanations as to how
each combination of prior art meets each claim limitation and proffers a
Declaration of Dr. Robert Akl. Id. at 21–33, 44–51, 54–57; Ex. 1007.
Spherix counters that the prior art combinations do not disclose all of
the claim limitations. PO Resp. 28–36. Spherix also argues that VTech
does not provide a sufficient rationale to combine Pickering with Wood or
Guan. Id. at 25–28, 36–41.
We have considered the parties’ contentions and supporting evidence.
In our discussion below, we begin with a brief overview of Pickering, Wood,
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and Guan, and then we turn to the contentions presented by the parties,
focusing on the deficiencies alleged by Spherix.
Pickering
Pickering describes a real-time interactive directory application
implemented in a computer-telephony integration environment. Ex. 1009,
Abs. Figure 1 of Pickering, reproduced below, illustrates an exemplary
computer-telephony integration environment.

As shown in Figure 1 of Pickering, the computer-telephony
integration environment includes: (1) publicly switched telephone network
or Internet Protocol Telephony Networks (“IPTN”) 101, which includes
telephony switches 103, 104; (2) Internet 102; (3) workstations 110, 130,
which are connected to PSTN 101 and Internet 102; and (4) cellular
telephone 120. Id. at 3:37–55, 4:3–15, 5:51–53. Workstation 110 includes
personal computer 112 and telephone 111 (a telephony device). Id. at 4:5–
15. Real-time interactive directory application 108 is executed on
workstation 110, to provide an interactive telephone directory of contact
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names, telephone numbers, and status information (a local telephony
directory). Id. at 4:61–67. The real-time interactive directory application
also has an interactive function for placing calls, sending electronic mails,
and accessing a forwarded telephone number. Id. at 6:35–40. A user may
place a call using the input function of the real-time interactive directory
application, by clicking on one of the telephone numbers listed in the
directory. Id. at 6:40–46, 6:61–66.
Wood
Wood describes a telephone management system, which enables
subscribers to control telephone connections and obtain information from
telephone directories and call logs, using a web browser. Ex. 1008, Abs.,
2:31–35. Figure 1 of Wood is reproduced below.

As shown in Figure 1 of Wood, a subscriber has telephone 10 and web
browser 12. Id. at 3:20–22. Telephone 10 is coupled via path 14 to
telephone switch 16, and web browser 12 is coupled via path 18 to
Internet 20. Id. at 3:22–3:25. The functions of web browser 12 and
telephone 10 can be integrated into a single unit, such as an integrated
mobile unit, combining voice communication and network browsing
functions by using wireless communication paths to Internet 20. Id. at 3:55–
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67. Web facility 22 provides a user interface, having web pages for
subscribers to manage telephone functions. Id. at 4:32–36.
Figure 2 of Wood illustrates an exemplary web facility, and is
reproduced below.

As shown in Figure 2 of Wood, the web facility includes web
system 30 and call control system 32. Id. at 4:57–63. Web system 30
supports web server 34, web page manager 36, Communications Gateway
Interface scripts 38, and cache 40. Id. at 4:64–66. Call control system 32
supports database 42, Application Program Interfaces 44, and call control
interface 46. Id. at 5:15–32.
Figure 3 of Wood, reproduced below, illustrates an exemplary call
management web page provided by the web facility.

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As shown in Figure 3 of Wood, the web page is divided into a
plurality of frames, including: (1) frame 55, which provides a number of
function buttons 61–66; (2) frame 56, which provides editing windows 68,
directory function buttons 71–74 and communication function buttons 75–
78; and (3) frame 57, which provides a directory of contact names, telephone
numbers and e-mail addresses. Id. at 5:37–67, 6:17–24. To initiate a call,
the user clicks on any record, causing the fields of that record to be
reproduced in editing windows 68, and then clicks on DIAL button 75,
triggering the telephone switch to set up a connection between the
subscriber’s telephony device and receiving device. Id. at 6:26–28, 47–50.
Guan
Guan discloses a method of using a Java applet on a local device for
accessing information in databases on the Internet. Ex. 1011, 73–74.
According to Guan, the advantage of using Java applets is that Java supports
platform-independent access to a wide range of information resources, so
that applications can easily access databases from multiple vendors. Id. at
71, 74. Java programs also could provide an interactive and user-friendly
interface and other capabilities. Id.
Updating a local telephony directory
Claims 1 and 13 recite “updating the local telephony directory based
on the updated telephone directory information”; claim 14 recites “updates a
local telephony directory based on the updated telephony directory
information”; and claim 18 recites “the updated telephony directory
information being used by the telephony device to update the local telephony
directory.” Ex. 1001, 12:59–60, 13:53–55, 14:30–32. As discussed above,
we construe a “local telephony directory” as a listing of telephone contact
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information that resides on a user’s device, rather than on a remote system or
server on the network.
VTech asserts that Pickering in view of Wood or Guan discloses or
suggests these aforementioned “updating” limitations. Pet. 21–33, 44–51,
54–57. Based on the evidence before us, we are persuaded by VTech’s
explanations and supporting evidence.
Notably, Pickering discloses a real-time interactive directory
application executing on a local workstation that maintains and displays a
telephony directory. Ex. 1009, 4:61–67, Fig. 2. The local workstation
includes a personal computer and telephone (a telephony device). Id. at 4:5–
15. The telephony directory, residing on the local workstation, provides a
listing of telephone contact information (a local telephony directory). Id. at
5:4–6:20. The real-time interactive directory application receives the most
recent, up-to-date information from the server, and updates the local
telephony directory. Id. Figure 2 of Pickering is reproduced below.

As depicted in Figure 2 of Pickering, the local telephony directory
contains a plurality of contact names, telephone numbers, and status
information. Id. at 5:4–14. The directory may be accessed at the local
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workstation statically when it is not connected to the Internet, or
interactively when it is connected to the Internet. Id. at 5:14–21.
Pickering’s system also allows a user to update selectively a specific
entry or field in real-time. Id. at 5:22–6:20. For instance, a user at the local
workstation may request the most recent, up-to-date, status information of a
particular person (e.g., John Doe) by selecting the name among the list
displayed. Id. at 5:23–25. In response, the real-time interactive directory
application establishes a communication connection with the network
directory server over the Internet, negotiates for access to the up-to-date,
status information of John Doe, and immediately updates the local telephony
directory after receiving the information. Id. at 5:25–34.
In its Patent Owner Response, Spherix argues that Pickering does not
disclose the comparison requirement under the District Court’s claim
construction. PO Resp. 29–32. In particular, Spherix argues that Pickering
does not disclose comparing the downloaded status information to the
existing status information because the downloaded status information
immediately overwrites and replaces the existing status information residing
on the local workstation. Id. Spherix acknowledges the existing status
information is immediately updated, but alleges that the language
“immediately update” strongly indicates that “there is no comparison step.”
Id. at 29–30 (citing Ex. 1009, 5:30–34, 5:66–6:1). Spherix also maintains
that the failure to teaching a comparison step is significant because keeping
data synchronized across multiple locations is challenging. Id. at 32.
We are not persuaded by Spherix’s arguments. The claims do not
require an entry-by-entry comparison step, much less a time delay between
the receiving step and the updating step, as suggested by Spherix. We are
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cognizant that the preferred embodiment illustrated in Figure 5 of the ’899
patent allows the user to compare entry by entry manually. Ex. 1001, 7:24–
37, Fig. 5. Nothing in the claims or Specification, however, requires us to
import a preferred or exemplary embodiment from the Specification into the
claims. See Van Geuns, 988 F.2d at 1184. Spherix does not submit, nor do
we discern, that the Specification sets forth a special definition that requires
those extraneous features. See Paulsen, 30 F.3d at 1480.
In fact, as discussed above, we decline to adopt the District Court’s
claim construction to require an entry-by-entry comparison. Ex. 2004, 89–
90. Rather, we determine that the comparison step may encompass a simple
file name comparison or other comparison methods for determining whether
there is a corresponding listing or entry in the local telephony directory.
Spherix confirms that, in the context of a directory update, the term
“update” appears multiple times in Pickering. PO Resp. 29–30 (citing
Ex. 1009, 2:23–26, 3:16–22, 5:30–53, 5:66–6:5, 6:15–18, 6:49–51). Yet,
Spherix assumes that Pickering only teaches overwriting or replacing the
individual’s status information. Id. at 29. Spherix’s assumption is incorrect
because Pickering in fact uses the term “update” in the context of updating a
specific entry or field in a local directory, and does not use “overwrite” or
“replace.” See generally Ex. 1009.
The language “immediately update” in Pickering does not support
Spherix’s interpretation of Pickering that “there is no comparison step” at all
(PO Resp. 30) because that language refers to the real-time feature of
Pickering’s invention. Ex. 1009, 5:15–6:21. Spherix fails to appreciate that
Pickering’s local directory is updated in real time automatically, rather than
manually.
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We also are not persuaded by Spherix’s contention that the “failure of
Pickering to teach comparing is significant from a technical perspective
because keeping data synchronized across multiple locations is a challenging
task.” PO Resp. 32. The Specification of the ’899 patent states that
updating the local directory also is referred to as synchronizing the local
directory. Ex. 1001, 6:13–13. As we discussed above, Pickering teaches
updating a local directory based on the most recent, up-to-date information
downloaded from the network server. Ex. 1009, 5:4–6:20. In fact, Pickering
allows a user to selectively update a specific entry or field. Id. Pickering
also discloses that the real-time interactive directory application can
synchronize a directory over the Internet. Id. at 7:3–6. Moreover, a person
of ordinary skill in the art would have understood that, in the context of
application or database files (e.g., a telephone directory), “synchronization”
means “version comparisons of copies of the files to ensure they contain the
same data.” See MICROSOFT COMPUTER DICTIONARY 456 (3rd ed. 1997)
(emphasis added) (Ex. 3001). Therefore, Spherix’s assumption that
Pickering’s updating process does not include a comparison step is incorrect.
Spherix’s interpretation of Pickering does not take into account the
knowledge of an ordinarily skilled artisan. It is well-settled that prior art
disclosure must be viewed in light of the knowledge of one of ordinary skill
in the art. In re Antor Media Corp, 689 F.3d 1282, 1291 (Fed. Cir. 2012);
DeGeorge v. Bernier, 768 F.2d 1318, 1323 (Fed. Cir. 1985) (a reference
“need not, however, explain every detail since [it] is speaking to those
skilled in the art”). When considering whether a claimed invention would
have been obvious, “the knowledge of such an artisan is part of the store of
public knowledge that must be consulted.” Randall Mfg. v. Rea, 733 F.3d
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1355, 1362 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 1365 (Fed. Cir. 2015).
We are not persuaded by Spherix’s arguments that Wood does not
disclose “a local telephony directory” and the “updating” limitations. PO
Resp. 33–36. Nonobviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). As discussed above, Pickering discloses a local telephony
directory as well as the “updating” limitations.
In view of the foregoing, we determine that VTech has demonstrated
by a preponderance of the evidence that Pickering in view of Wood or Guan
discloses or suggests “updating the local telephony directory based on the
updated telephone directory information,” as recited in claims 1 and 13, and
similarly, other “updating” limitations recited in claims 14 and 18.
Network browser application
Claims 9–11 require “wherein the establishing, sending, and receiving
steps are performed using a network browser application.” Ex. 1001,
13:27–30 (emphasis added). VTech asserts that Pickering in view of Wood
or Guan discloses or suggests a network browser application, as required by
the claims. Pet. 21–29, 44–51.
Spherix, based on Dr. Franzon’s testimony, counters that Pickering in
view of Wood or Guan does not disclose “a network browser application.”
PO Resp. 41. Dr. Franzon testifies that browsing a network “includes
supporting accessing any compatible web page, as well as web-connected
directories, ftp sites, etc.” and that “Pickering only discloses specific
functions for the RTID, with examples given above,” but it “never mentions
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any of the other functions that a ‘network browser application’ can
perform.” Ex. 2005 ¶ 79.
We are not persuaded by Spherix’s argument and supporting expert
testimony. As discussed above, we adopt the District Court’s claim
construction for a “network browser application,” as the broadest reasonable
interpretation, and construe it as “an application used to browse a network.”
Ex. 2004, 79–81. We also decline to define “browse a network” in our claim
construction to import improperly the additional functions identified by
Dr. Franzon into the claims. Ex. 2005 ¶ 79. The District Court already
rejected a claim construction that requires a web browser, and its
construction does not include these additional functions identified by
Dr. Franzon. Ex. 2004, 79–81. Moreover, one of ordinary skill in the art
would have understood that browsing a network means “to scan a [network]
either for a particular item or for anything that seems to be of interest.” See
MICROSOFT COMPUTER DICTIONARY at 64 (3rd ed. 1997) (Ex. 3001).
As discussed above, Pickering’s system allows a user to update
selectively a specific entry or field in real-time. Id. at 5:22–6:20.
For instance, a user at the local workstation may request the most recent,
up-to-date, status information of a particular person (e.g., John Doe) by
selecting the name among the list displayed. Id. at 5:23–25. In response, the
real-time interactive directory application establishes a communication
connection with the network directory server over the Internet, request for
access to the up-to-date, status information of John Doe, and immediately
updates the local telephony directory after receiving the information from
the network directory server. Id. at 5:25–34.
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In sum, Pickering’s real-time interactive directory application
establishes a communication connection between the telephony device on
the local workstation and the network directory server, sends an update
request to the network server, and receives the updated telephony directory
information from the network server. As Dr. Akl testifies, one of ordinary
skill in the art would have recognized that Pickering’s real-time interactive
directory application is an application for browsing a network—a network
browser application. Ex. 1007 ¶¶ 62–64; Ex. 1019 ¶ 10.
For the foregoing reasons, we determine that VTech has demonstrated
by a preponderance of the evidence that Pickering in view of Wood or Guan
discloses that “the establishing, sending, and receiving steps are performed
using a network browser application,” as required by claims 9–11.
Applet
Claims 2–3, 15, and 16 require “initiating an applet to facilitate
communication with the network directory server and with the telephony
device.” Ex. 1001, 12:61–13:2, 14:9–16. Claims 9–11 also require “an
applet for downloading updated telephony directory information.” Ex. 1001,
13:27–36. As discussed above, consistent with the definition set forth in the
Specification, we construe the claim term “applet” as “a small application
program having limited utility.”
In its Petition, VTech asserts that Pickering describes the claim
elements “establishing a communication connection between the telephony
device and the network directory server” and “downloading updated
telephony directory information.” Pet. 21–29. As discussed above,
Pickering’s real-time interactive directory application establishes a
communication connection between a local telephony workstation and a
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network directory server, via an Internet communication link, for accessing
updated directory information from the server. See, e.g., Ex. 1009, 4:55–60,
5:4–6:20, 7:3–6, Figs. 1–2. When access is granted, the real-time interactive
directory application receives the updated information downloaded from the
server and updates the local telephony directory. Id.
Although Pickering does not disclose explicitly an applet, VTech
nevertheless alleges that Pickering’s real-time interactive directory
application qualifies as an applet because, as Dr. Akl testifies, the
application provides an interactive user interface and obtains updated
information from a network directory server. Pet. 24; Ex. 1007 ¶¶ 61–62.
VTech also maintains that, in view of Wood or Guan, it would have been
obvious to use an applet to facilitate the communication between Pickering’s
local workstation and server, and to download the updated directory
information. Pet. 44–47, 54–57. VTech explains that Wood discloses the
use of an applet to facilitate the communication between a telephony device
and a web server, and to access caller information from the web server.
Pet. 47; Ex. 1008, 8:14–25.
VTech also submits that Guan describes the use of an applet to
facilitate communication between a local device and a network server, for
retrieving and displaying information obtained from the server. Pet. 54–56
(citing Ex. 1011, 71, 76, Figs. 5–7). Specifically, Guan describes using a
Java applet on a local device for accessing information from databases on
the Internet. Ex. 1011, 71, 76, Figs. 5–7. Guan also discloses several
benefits of using Java applets, including “reduced maintenance and support
of application software.” Id. at 71.
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VTech contends that, in view of Wood or Guan, one of ordinary skill
in the art would have used an applet in conjunction with Pickering’s system
to improve the communication between the local workstation and network
directory server. Pet. 46–47, 56–57. Based on the prior art of record and for
the reasons discussed below, we are persuaded by VTech’s contentions.
Spherix counters that VTech fails to provide a rationale to combine
Pickering with Wood and a rationale to combine Pickering with Guan. PO
Resp. 25–28, 36–41. To that end, Spherix advances several arguments.
First, Spherix argues that VTech “does not address or even
acknowledge the general problem faced by the ’899 inventors.” Id. at 27–
28. This argument is misplaced because “the problem motivating the
patentee may be only one of many addressed by the patent’s subject matter.”
KSR, 550 U.S. at 420. “Under the correct analysis, any need or problem
known in the field of endeavor at the time of the invention and addressed by
the patent can provide a reason for combining the elements in the manner
claimed.” Id. In short, VTech’s reasons to combine “are not limited to the
same motivation that may have motivated the inventors.” See PAR Pharm.,
Inc., v. TWI Pharms., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014); Alcon
Research, Ltd. v. Apotex Inc., 687 F.3d. 1362, 1368 (Fed. Cir. 2012) (noting
that the courts “have repeatedly held that the motivation to modify a prior art
reference to arrive at the claimed invention need not be the same motivation
that the patentee had”). “Motivation to combine may be found in many
different places and forms.” Allergan, Inc. v. Sandoz, Inc., 726 F.3d 1286,
1292 (Fed. Cir. 2013); see also Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1294 (Fed. Cir. 2006) (stating that the motivation to combine does not
have to be explicitly stated in the prior art, and can be supported by
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testimony of an expert witness regarding knowledge of a person of skill in
the art at the time of invention).
Second, Spherix argues that “the teachings and solutions of Pickering
and Wood are distinct and not amenable to combination merely because
Petitioners characterize them as being in the same art generally.” PO Resp.
26–27. Spherix contends that Pickering teaches an independent application
real-time interactive directory, whereas Wood discloses a web page-based
interface that views, but does not download, information at a web facility.
Id. at 26–27, 37. Spherix also alleges that VTech fails to discuss how
Pickering and Wood could be combined. Id. at 36–37.
Spherix’s arguments, however, are premised on bodily incorporating
Wood’s system into Pickering’s system. “It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756 F.2d 852, 859 (Fed.
Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether
the references can be combined physically, but whether the claimed
invention is rendered obvious by the teachings of the prior art as a whole).
In that regard, one with ordinary skill in the art is not compelled to follow
blindly the teaching of one prior art reference over the other without the
exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984); see also KSR, 550 U.S. at 420–21
(stating that a person with ordinary skill in the art is “a person of ordinary
creativity, not an automaton,” and “in many cases . . . will be able to fit the
teachings of multiple patents together like pieces of a puzzle”).
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As evidenced by Wood, using an applet in a computer-telephony
integrated system to facilitate the communication between a telephony
device and network directory server, downloading updated information from
the server, was well known in the art at the time of the invention. Ex. 1008,
Abs, 2:28–30, 8:14–25, 8:45–65. Spherix does not provide sufficient or
credible evidence that using an applet in Pickering’s computer-telephony
integrated system would have been “uniquely challenging” or otherwise
beyond the level of an ordinary skilled artisan. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
We also are not persuaded by Spherix’s argument that Wood discloses
a webpage-based interface that views, but does not download, information at
a web facility. PO Resp. 26–27, 37. Spherix’s interpretation of Wood is too
narrow. As VTech points out, Wood discloses that the software manages all
of the functions of the telephony device, which includes establishing
communication with a network directory server, and requesting and
receiving directory information from the server. Pet. 47; Ex. 1008, 4:33–37
(“The web facility 22 provides an interface to the subscriber, . . . that enable
the subscriber to manage at least some and preferably all telephone functions
for the telephone 10.”); 8:45–65 (“the subscriber can scroll through the
directory information, click on any record to reproduce it in the windows 68,
click on the ADD button 72 to add a corresponding record to the
subscriber’s personal directory, click on the DIAL button 75 to establish a
call to the selected number, etc.”); Ex. 1007 ¶ 87.
Further, we are not persuaded by Spherix’s argument that VTech fails
to discuss how Pickering and Wood could be combined. PO Resp. 36–37.
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As noted above, VTech specifically explains that Pickering discloses the use
of a real-time interactive directory application for establishing a
communication connection between the local telephony device and the
network directory server, and for downloading updated directory
information from the server. Pet. 21–25; Ex. 1009, 5:4–6:20. VTech asserts
that Pickering’s real-time interactive directory application qualifies as an
applet. Pet. 24; Ex. 1007 ¶¶ 61–62. VTech further submits that, although
Pickering does not use the term “applet” explicitly, it would have been
obvious to use an applet, in light of Wood or Guan, to perform those
functions in Pickering’s computer-telephony integrated system. Pet. 46–47.
Therefore, VTech has explained explicitly how Pickering and Wood could
be combined, and articulated reasoning with underpinnings as to why an
ordinarily skilled artisan would have combined Pickering with Wood.
Third, Spherix alleges Wood teaches away from the ’899 patent
because Wood teaches centralizing functions at a network server to decrease
telephone complexity and cost, while the ’899 patent teaches decentralizing
functions. PO Resp. 38–39.
As Dr. Akl testifies, however, the ’899 patent does not disclose a
decentralized system exclusively, and, in fact, the Specification of the ’899
patent specifically describes a centralized network directory server.
Ex. 1019 ¶¶ 7–8; Ex. 1001, 5:30–46. Spherix’s argument once again is
premised improperly on bodily incorporating Wood’s entire system into
Pickering’s system. Spherix’s argument also lacks sufficient specificity as
to how Wood teaches away from the claimed subject matter. In fact, Wood
does not teach away using an applet for facilitating a communication
connection between a telephony device and a network directory server, let
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alone for downloading updated information from the server. A reference
does not teach away, if it merely expresses a general preference for an
alternative invention but does not “criticize, discredit, or otherwise
discourage” investigation into the invention claimed. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Just because “better alternatives” may exist in
the prior art “does not mean that an inferior combination is inapt for
obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)
(citing Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). More importantly, using
an applet in Pickering’s system would not take away any functionality, but
instead improving the method for the local workstation to access the network
directory or database file. Based on the evidence in this record, we do not
discern that Wood’s teaching criticizes, discredits or otherwise discourages
the use of an applet in a computer-telephony integration system for
facilitating communication between a telephony device and a network
directory server, or downloading updated directory information.
Fourth, Spherix argues that VTech fails to articulate a reason to
combine Pickering with Guan, and there would be no reason for a person of
ordinary skill in the art to combine Pickering with Guan because Guan does
not disclose telephony or telephone directories. PO Resp. 40–41.
A prior art reference is considered to be analogous if it is reasonably
pertinent to the particular problem with which the inventor is concerned,
regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59
(Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may
be in a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” Id. at 659. In
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that regard, “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one.” KSR, 550 U.S. at 417.
Here, Guan is reasonably pertinent to the problem addressed by the
’899 patent, at least with respect to using an applet to facilitating the
communication with a network server and local device, and downloading
information from a database file that resides on the server. Pickering
discloses databases and directories, and, significantly, the functionality of
accessing updated telephony directory information from a server over the
Internet. Ex. 1009, 2:16–38, 5:4–6:20. As discussed above, Guan describes
using a Java applet on a local device for accessing information from
databases on the Internet. Ex. 1011, 71, 76, Figs. 5–7. Guan discloses
several advantages of using Java applets, including “reduced maintenance
and support of application software.” Id. at 71. According to Guan, Java
supports platform-independent access to a wide range of information
resources, so that applications can access easily databases from multiple
vendors. Id. at 71, 74. Guan further describes that Java programs could
provide an interactive and user-friendly interface and other capabilities. Id.
Therefore, in light of the advantages of using an applet, we agree with
VTech’s position that an ordinarily skilled artisan would have combined
Pickering with Guan.
Fifth, Spherix argues that Pickering could not have used Guan’s Java
applet because Guan states that “[o]ur prototype software can be run on a
platform with Netscape Communicator 4.0 browser and any browsers for
supporting the Java JDK1.1 or over” and Pickering’s real-time interactive
directory application is not a network browser application. PO Resp. 41;
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Ex. 1011, 78; Ex. 2005 ¶¶ 82–83. As discussed above, however, Pickering’s
real-time interactive directory application is a network browser application.
Spherix also interprets Guan too narrowly, limiting Guan’s teaching to an
exemplary embodiment, and assumes Guan’s Java applets can only be
executed on a web browser. A prior art reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
In addition, we also are not persuaded by Spherix’s argument that
Guan does not disclose the “updating” limitation. PO Resp. 41. As
discussed above, Pickering discloses the “updating” limitations. The ground
of unpatentability here is based on Pickering in view of Guan or Wood.
Pet. 54–57. Attacking Guan individually does not undermine VTech’s
showing of obviousness. See Keller, 642 F.2d at 426.
Based on the evidence in this record, we are persuaded by VTech’s
explanation and supporting evidence because one with ordinary skill in the
art would have appreciated the aforementioned advantages recognized in the
prior art for using an applet to facilitate the communication between a local
device and a server on the Internet, and to download updated directory
information from the server. We also note that “if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
See KSR, 550 U.S. at 417. Accordingly, we determine that VTech has
articulated reasoning with rational underpinnings as to why a person of
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ordinary skill in the art would have combined Pickering with Wood and
combined Pickering with Guan.
Conclusion on Obviousness
For the foregoing reasons, we determine that VTech has demonstrated
by a preponderance of the evidence that claims 1–5 and 8–23 are
unpatentable over Pickering in view of Wood, and that claims 2, 3, 9, 10, 11,
15, and 16 are unpatentable over Pickering in view of Guan.
D. Motion to Exclude Evidence
Spherix filed a Motion to Exclude, seeking to exclude the deposition
transcript of Dr. Franzon (Ex. 1020) and two paragraphs of the Declaration
of Dr. Akl (Ex. 1019 ¶¶ 4, 5), because the evidence purportedly exceeds the
proper scope of a reply under 37 C.F.R. § 42.23(b). Paper 31 (“Mot.”), 1–2.
Notwithstanding that Spherix acknowledges that a motion to exclude
evidence is not an appropriate mechanism for presenting arguments that a
reply or reply evidence exceeds the proper scope of reply under 37 C.F.R.
§ 42.23(b), Spherix ignores our Order (Paper 17, 3), as well as the Board’s
trial rules and practice, by presenting such arguments in its Motion to
Exclude Evidence. Mot. 3, n. 1. Spherix could have sought relief under 37
C.F.R. § 42.20 during this trial, but did not do so. See Belden Inc. v. Berk-
Teck LLC, 805 F.3d 1064, 1081–82 (Fed. Cir. 2015) (noting that “if the
petitioner submits a new expert declaration with its Reply, the patent owner
can respond in multiple ways”); see also id. (“The tribunal has broad
discretion to regulate the presentation of evidence under Fed. R. Evid.
611(a).”). We remind counsel of Spherix that they are required to comply
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Patent 6,614,899 B1

38
with the Office Patent Trial Practice Guide and the Board’s Rules of Practice
for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations.
In any event, we did not rely upon the evidence that Spherix seeks to
exclude, and, therefore, it is not necessary for us to assess the merits of
Spherix’s Motion to Exclude Evidence. Accordingly, Spherix’s Motion to
Exclude Evidence is dismissed as moot.
III. CONCLUSION
For the foregoing reasons, we determine that VTech has demonstrated
by a preponderance of the evidence that claims 1–5 and 8–23 of the ’899
patent are unpatentable under § 103(a) over Pickering in view of Wood, and
that claims 2, 3, 9, 10, 11, 15, and 16 of the ’899 patent are unpatentable
under § 103(a) over Pickering in view of Guan.
IV. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 1–5 and 8–23 of the ’899 patent are held
unpatentable;
FURTHER ORDERED that Spherix’s Motion to Exclude Evidence is
dismissed as moot; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-01432
Patent 6,614,899 B1

39
For PETITIONER:

James R. Nuttall
John L. Abramic
STEPTOE & JOHNSON LLP
jnuttall@steptoe.com
jabramic@steptoe.com

Brian C. McCormack
BAKER & MCKENZIE LLP
brian.mccormack@bakermckenzie.com

For PATENT OWNER:

Tarek N. Fahmi
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com

Steven W. Hartsell
SKIERMONT DERBY LLP
shartsell@skiermontderby.com

Donald Puckett
NELSON BUMGARDNER
puckett@nelbum.com