VTech Communications, Inc.v.Spherix Incorporated

Patent Trials and Appeals Board

Feb 3, 2016

08175534 - (D) (P.T.A.B. Feb. 3, 2016)

Trials@uspto.gov Paper 50
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 IPR2014-01431
Patent 5,581,599

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 1–13 and 17–19 of U.S. Patent 5,581,599 (Ex. 1001, “the ’599
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 determined that
there is a reasonable likelihood that VTech would prevail in challenging
claims 1–7 and 18 as unpatentable under 35 U.S.C. § 103(a), but not with
respect to claims 8–13, 17, and 19. Pursuant to 35 U.S.C. § 314, we
instituted this trial as to claims 1–7 and 18 of the ’599 patent. Paper 13
(“Dec.”), 33.
Subsequent to institution, Spherix filed a Patent Owner Response
(Paper 25, “PO Resp.”), and VTech filed a Reply to the Patent Owner
Response (Paper 28, “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 entered pursuant to 35 U.S.C. § 318(a). For the reasons set forth
below, we determine that VTech has shown by a preponderance of the
evidence that claims 1–7 and 18 of the ’599 patent are unpatentable.

1 The oral hearings for this trial and IPR2014-01432 were consolidated.
2 A transcript of the oral hearing is entered in the record as Paper 47 (“Tr.”).
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A. Related Matter
VTech indicates that the ’599 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. 58.
B. The ’599 Patent
The ’599 patent relates to a telephone system having an interactive
cordless telephone handset and an associated base station. Ex. 1001, Abs.
Figure 1 of the ’599 patent is reproduced below.

Figure 1 of the ’599 patent illustrates a telephone system 10 that
includes base station 11 and cordless handset 13. Id. at 2:54–64. Cordless
handset 13 includes dial pad 15 and display screen 16. Id. Base station 11
includes dial pad 17 and function keys. Id. at 2:65–3:1.

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C. Illustrative Claim
Of the instituted claims, claims 1 and 18 are the only independent
claims. Claims 2–7 depend, either directly or indirectly, from claim 1.
Claim 1, reproduced below, is illustrative:
1. A method for displaying data and processing appearances
thereof from an alphanumeric display screen of a cordless
handset in user-interactive radio communication with an
associated base station of a cordless telephone terminal in
onhook communication with a telephone exchange, wherein said
base station comprises a memory device, and wherein said
memory device comprises first and second submemories, said
method comprising the steps of:
generating predetermined command and alphanumeric
data from selected ones of key operations at the handset;
enabling first processor means at the handset for
displaying keyed alphanumeric data on the screen and
concurrently transmitting the alphanumeric data and commands
to the base station;
enabling second processor means at the base station for
receiving the alphanumeric data and commands, retrievably
storing the data in a first submemory of the base station and
operably responding to the commands;
capturing service data from an incoming telephone call
received at the base station;
testing the service data at the base station to confirm its
validity;
retrievably storing the valid data in a second submemory
of the base station and concurrently transmitting the valid data to
the handset for display on the screen;
generating a set of user-interactive prompts having
predetermined appearances on the display screen; and
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accessing individual ones of the first and second
submemories via key operations at the handset corresponding to
the user-interactive prompts for selectively processing and
editorially revising the alphanumeric data stored in the
submemories while under display screen observation.
Ex. 1001, 12:57–13:23 (emphases added).

D. Prior Art Relied Upon
VTech relies upon the following prior art references:
Martensson US 6,349,212 B1 Feb. 19, 2002 (Ex. 1002)
Schneyer US 5,388,150 Feb. 7, 1995 (Ex. 1003)
Figa US 4,924,496 May 8, 1990 (Ex. 1004)
Nishihara US 5,561,712 Oct. 1, 1996 (Ex. 1008)
Obata US 5,251,250 Oct. 5, 1993 (Ex. 1010)
Silver US 4,882,745 Nov. 21, 1989 (Ex. 1015)

Bell Communication Research, SPCS Customer Premises Equipment
Data Interface, BELLCORE TECHNICAL REFERENCE TR-TSY-000030 Issue 1
(1988) (Ex. 1012, “Bellcore I”).

Bell Communication Research, CLASS Feature: Calling Number
Delivery, BELLCORE TECHNICAL REFERENCE TR-TSY-000031 Issue 2 (1998)
(Ex. 1013, “Bellcore II”).3

3 We also refer to Bellcore I and Bellcore II, collectively, as “Bellcore
Technical References.”
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E. The Instituted Ground of Unpatentability
We instituted the instant trial based on the sole ground that claims 1–7
and 18 of the ’599 patent are unpatentable under 35 U.S.C. § 103(a) over the
combination of Figa and Martensson. Dec. 33.

II. ANALYSIS
A. Claim Construction
The ’599 patent was issued from U.S. Patent Application
No. 08/175,534, filed on December 30, 1993, and has expired. Ex. 1001, at
[22]; Pet. 7–10; PO Resp. 21. For claims of an expired patent that cannot be
amended, the Board’s claim interpretation analysis is similar to that at
district court. In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). The
words of a claim “are generally given their ordinary and customary
meaning,” as understood by one of ordinary skill in the art at the time of the
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). “In determining the meaning of the disputed claim limitation, we
look principally to the intrinsic evidence of record, examining the claim
language itself, the written description, and the prosecution history, if in
evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
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) (citation omitted). To overcome this
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presumption, the patentee must “clearly set forth” and “clearly redefine” a
claim term away from its ordinary meaning. Bell Atlantic Network Servs.,
Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001).
The disavowal must be “unmistakable” and “unambiguous.” Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012).
VTech agrees with Spherix’s claim constructions submitted
previously in the related district court proceeding, to give the claim terms
their ordinary and customary meaning. Pet. 8–10 (citing Ex. 1009;
Ex. 1021). Subsequent to Institution, Spherix urges us to adopt all of the
constructions entered in the Claim Construction Order (Ex. 2012) by the
District Court. PO Resp. 22–23.
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. For instance, Spherix argued in
the district court proceeding that the claim elements “first processor means”
and “second processor means” are not means-plus-function limitations.
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Prelim. Resp. 17; Ex. 2012, 33–52. Here, however, Spherix urges us in this
inter partes review to construe these claim terms as means-plus-function
limitations under § 112, ¶ 6.4 PO Resp. 22–23.
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 1–7 and 18 of the ’599
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 acknowledge that interpretation or to assess whether it
is consistent with the broadest reasonable construction of the term.”). Based
on this record before us, we discern no inconsistency between our
determination of the patentability issues in dispute here and the District
Court’s claim constructions.
We are mindful that 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). For purposes of this Final Written Decision, we determine that it is
necessary to address only the following claim terms or elements expressly:

4 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as § 112(f).
Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011). Because the ’599 patent
has a filing date before September 16, 2012 (effective date), we will refer to
the pre-AIA version of § 112, in this Decision.
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the preamble of claims 1 and 18, “first submemory,” “second submemory,”
“service data,” “concurrently transmitting the alphanumeric data and
commands,” “first processor means,” and “second processor means.”5
Therefore, it is not necessary for us to adopt all of the District Court’s claim
constructions, as requested by Spherix.
Preambles of Independent Claims 1 and 18
“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).
The preambles of claims 1 and 18 recite:
A method for displaying data and processing appearances thereof
from an alphanumeric display screen of a cordless handset in
user-interactive radio communication with an associated base
station of a cordless telephone terminal in onhook

5 The district court did not construe the preamble of claims 1 and 18 nor the
terms “service data,” “first submemory,” and “second submemory.”
Ex. 2012, 104.
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communication with a telephone exchange, wherein said base
station comprises a memory device, and wherein said memory
device comprises first and second submemories, said method
comprising the steps of:
Ex. 1001, 12:57–64, 15:26–33 (emphases added).
The preambles of claims 1 and 18 recite essential structural elements
of the claimed method pertaining to the cordless handset, base station, and
memory device, rather than merely stating the purpose or intended use of the
claimed method or apparatus. For instance, the recitation of “said memory
device comprises first and second submemories” in the preambles of the
claims sets forth the structural limitation that the first and second
submemories are portions of the same memory device. Although the bodies
of the claims recite first and second submemories, they do not recite a
memory device, much less the structural relationship between the
submemories and the memory device. It is apparent that the bodies of the
claims do not recite the complete invention, and that the claim drafter of the
’599 patent chose to use both the preamble and the body of each claim to
define the subject matter of the claimed method. See Bell Commc’ns
Research v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)
(noting that if the claim drafter “chooses to use both the preamble and the
body to define the subject matter of the claimed invention, the invention so
defined, and not some other, is the one the patent protects.” (emphasis in
original)).
Moreover, the recitation of a “cordless handset in user-interactive
radio communication with an associated base station” in the preambles of
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claims 1 and 18 describes a fundamental characteristic of the claimed
method—namely, the handset referenced in the bodies of the claims is a
cordless handset. The Specification states that “a principal objective of the
present invention is to provide a digital data display in the cordless handset.”
Ex. 1001, 1:51–53 (emphasis added). Essentially, the preambles of the
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).
In consideration of the foregoing, we determine that the preambles of
claims 1 and 18 are entitled to patentable weight.
“first submemory” and “second submemory”
Claims 1 and 18 recite “wherein said base station comprises a
memory device, and wherein said memory device comprises first and second
submemories.” Ex. 1001, 12:57–24, 15:31–33 (emphasis added).
VTech agrees with Spherix’s claim constructions submitted in the
district court proceeding, which is to give these claim terms their ordinary
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and customary meaning. Pet. 8–10. For example, VTech points out Spherix
asserted that “‘[s]ubmemory’ is simply an engineering shorthand way of
saying ‘a portion of the memory.’” Id. at 8 (citing Ex. 1009, 18).
In its Patent Owner Response, however, Spherix urges us to construe
the claim terms “first submemory” and “second submemory” as “a first
logically distinct portion of a physical memory” and “a second logically
distinct portion of the same said physical memory,” respectively. PO Resp.
24–25 (emphases added). Spherix alleges that its current proposed
constructions would make clear that the first submemory and the second
submemory are separate portions of a physical memory, and they must be
portions of the same physical memory device. Id. (citing Ex. 2010 ¶¶ 62–
67, 74). Spherix further maintains that its proposed constructions submitted
here are consistent with the prosecution history, the Specification of the ’599
patent, and the ordinary and customary meaning of these terms. Id.
We have considered the evidence cited by Spherix that purportedly
supports its current proposed claim constructions. We observe that adopting
those constructions would import improperly an extraneous feature into the
claims—namely, “logically distinct portion of a physical memory.” 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). More importantly,
Spherix does not provide sufficient evidence or reasoning to overcome the
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“heavy presumption” that a claim term carries its ordinary and customary
meaning. See CCS Fitness, 288 F.3d at 1366.
We observe that the cited portions of the prosecution history merely
contain a copy of the ’599 patent (Ex. 2016, 16, 20–21) and the examiner’s
amendment cited by Spherix provides no explanation as to why the
amendment—adding “sub” before “memory”—was made (Ex. 2020, 4–5).6
PO Resp. 25. It is unclear how the prosecution history supports Spherix’s
current proposed claim constructions. Spherix also does not proffer any
meaningful explanation as to whether there is a prosecution history
disclaimer or whether there is a clear and deliberate disavowal. See PO
Resp. 24–25. At most, the portions of the prosecution history cited by
Spherix are ambiguous. It is well-settled that “the doctrine of prosecution
disclaimer only applies to unambiguous disavowals.” Grober v. Mako
Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). “It is inappropriate to
limit a broad definition of a claim term based on prosecution history that is
itself ambiguous.” Inverness Med. Switz. GmbH v. Warner Lambert Co.,
309 F.3d 1373, 1382 (Fed. Cir. 2002).
Further, based on our review of the portions of the Specification cited
by Spherix, we note that the term “submemory” is not used in the
Specification. See Reply 19; PO Resp. 24–25 (citing Ex. 1001, 4:13–23,

6 All references to the page numbers of Exhibits 2016 and 2020 refer to the
exhibit page number on the bottom right corner of the page.
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7:23–35, 9:33–67). In fact, the cited portions of the Specification merely
disclose storing data in a nonvolatile NVRAM (memory), and are silent as to
storing data in a submemory or a logically distinct portion of a memory.
Ex. 1001, 4:13–23 (“the data is retrievably stored in a nonvolatile NVRAM
34”); 7:23–35 (“such data is stored in a non-volatile NVRAM 34”); 9:33–67
(“In the case of storing the corresponding name, storage occurs in the
nonvolatile memory NVRAM 34 in which the directory resides.”).
Spherix’s expert witness, Dr. Paul Franzon, testifies that the Specification
describes storing separate lists of alphanumeric data in logically separate
memory portions that are part of a single physical memory device. Ex. 2010
¶ 64. Dr. Franzon’s testimony, however, also is unsupported, as the portions
of the Specification cited by Dr. Franzon are likewise silent as to storing
data “in logically separate memory portions” of a memory device. Ex. 1001,
9:33–67 (storing predialed alphanumeric data in the NVRAM 34); 4:13–23,
7:23–34 (storing captured caller ID service data in the NVRAM 34). It is
unclear how those cited portions of the Specification support Spherix’s
current proposed claim constructions. “Although an inventor is indeed free
to define the specific terms used to describe his or her invention, this must
be done with reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this proceeding before us,
Spherix points to nothing that defines the “submemory” claim terms with
“reasonable clarity, deliberateness, and precision.”
With respect to the ordinary and customary meaning of these
“submemory” claim terms as would be understood by a person of ordinary
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skill in the art, Dr. Franzon testifies that “[t]echniques for partitioning a
single physical memory into separate registers for different types of data or
functions would have been well known to a POSITA in December 1993.”
Ex. 2010 ¶ 66. During cross-examination, Dr. Franzon implied that storing
two lists in one memory device necessarily means that those lists have to be
logically separate, and further explained that logically separate, “in the view
of the person of ordinary skill in the art, is to treat those two lists as . . . not
being one joint list, . . . because you have got to find the information again.”
Ex. 1024, 108:3–24. Further, as VTech points out, Spherix previously
asserted in the district court proceeding that the plain and ordinary meaning
of the term “submemory” is “a portion of the memory.” Pet. 8–10; Reply
18–19; Ex. 1009, 18. In that light, we determine that the claim terms “first
submemory” and “second submemory” should be given their ordinary and
customary meaning as would be understood by a person with ordinary skill
in the art at the time of the invention, in that the term “submemory” means
“a portion of the memory.”
“service data”
Claim 1 recites “testing the service data at the base station to confirm
its validity,” and claim 2 further recites “wherein the service data comprises
digitally encoded calling line identification data including a caller’s name, a
directory number sequence, date and time of call.” Ex. 1001, 13:11–12, 24–
27 (emphases added).
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Because Spherix raised the issue of whether the combination of Figa
and Martensson renders these limitations concerning service data in its
Preliminary Response, we construed the term “service data” in the Decision
of Institution. Dec. 8–9, 18–21. Specifically, we construed the claim term
“service data” as “caller identification information,” in light of the
Specification. Dec. 9; Ex. 1001, 4:10–13. Subsequent to institution, in its
Patent Owner Response, Spherix agrees that “caller identification
information” is within the proper scope of the “service data” in the context
of the claims of the ’599 patent. PO Resp. 21. VTech does not propose a
different claim construction as to this claim term. See generally Reply.
Upon review of the present record in its entirety, we discern no reason to
change our claim construction for this Final Written Decision.
“concurrently transmitting the alphanumeric data and commands”
Claims 1 and 18 recite “displaying keyed alphanumeric data on the
screen and concurrently transmitting the alphanumeric data and commands
to the base station.” Ex. 1001, 13:1–4, 15:34–37 (emphasis added). Spherix
urges us to adopt the District Court’s claim construction, which is “plain and
ordinary meaning.” PO Resp. 22–23 (citing Ex. 2012, 104). We agree. As
District Court found, the claim language, in light of the Specification,
indicates that the term “concurrently” as used in the claim limitation does
not refer to both “displaying” and “transmitting” but rather refers to
“transmitting the alphanumeric data and commands to the base station.”
Ex. 2012, 24; Ex. 1001, 8:42–55, Fig. 6b. According to the District Court’s
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finding, “the specification does not state that each time an alphanumeric data
is keyed, it is concurrently transmitted.” Ex. 2012, 25; Ex. 1001, 9:2–28 (the
displayed number is not transmitted to the base station until the users strikes
the command key to dial the number). We also agree with the District
Court’s finding that a person of ordinary skill in the art would have
understood that the term “concurrently” only requires the transmission of the
alphanumeric data and commands to occur within the same interval of time,
and not at the same instant of time. Ex. 2012, 33.
Based on the evidence in this record, we determine that the claim term
“concurrently transmitting the alphanumeric data and commands” should be
given its ordinary and customary meaning. See Phillips, 415 F.3d at 1312.
“first processor means” and “second processor means”
Claims 1 and 18 each recite:
A method for displaying data and processing appearances . . .
enabling first processor means at the handset for displaying
keyed alphanumeric data on the screen and concurrently
transmitting the alphanumeric data and commands to the base
station;
enabling second processor means at the base station for receiving
the alphanumeric data and commands, retrievably storing the
data in a first submemory of the base station and operably
responding to the commands;
Ex. 1001, 12:57–13:8, 15:26–42 (emphases added).
Spherix argued in the district court proceeding that the claim elements
“first processor means” and “second processor means” are not means-plus-
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function limitations subject to § 112, ¶ 6, because they are in method claims
and the claims themselves disclose the necessary structure for performing
the recited function. PO Resp. 26; Ex. 1009, 14–23. In contrast, Spherix
urges us in this inter partes review to construe these claim elements as
means-plus-function limitations, and that VTech’s Petition is defective for
applying Spherix’s proposed claim constructions previously presented in the
District Court. PO Resp. 26–30; Pet. 8–10.
We are unpersuaded by Spherix’s argument that we must hold the
Petition as defective. It was reasonable for VTech to treat these claim
elements in dispute as non-means-plus-function limitations at the time of
filing the Petition because Spherix, who is the patent owner and drafter of
the claims, maintained that these claim elements are not means-plus-function
limitations in the district court proceeding. Spherix also concedes that, at
the time of filing of the Petition, the parties were engaged in a good faith
dispute as to whether these claim elements are in fact means-plus-function
limitations under § 112, ¶ 6. See PO Resp. 26. Moreover, as Spherix
acknowledges, the District Court recognized that having a means-plus-
function limitations in a method claim is a “somewhat novel issue.” Id. at 26
n.4; Ex. 2005, 89–95, 102–107. Based on the totality of the circumstances,
we decline to hold VTech’s Petition as defective.
With regard to the issue of whether the “processor means” claim
elements should be construed as means-plus-function limitations in this inter
partes review, we observe at the outset that this claim construction
determination does not affect the patentability determination of claims 1–7
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and 18 of the ’599 patent, based on the prior art in this record. In other
words, our determination on patentability of claims 1–7 and 18 of the ’599
patent is the same whether or not we adopt the District Court’s claim
constructions as to these claim terms. For convenience, we reproduce those
District Court’s claim constructions below (Ex. 2012, 104).

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
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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).
C. The Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art at the time of the
invention, we note that various factors may be considered, including “type of
problems encountered in the art; prior art solutions to those problems;
rapidity with which innovations are made; sophistication of the technology;
and educational level of active workers in the field.” In re GPAC, Inc.,
57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
In its Preliminary Response, Spherix raised the issue of whether
VTech articulated in its Petition the knowledge of a person with ordinary
skill in the art. Prelim. Resp. 24–25. In our Decision on Institution, we
determined that Spherix’s arguments are unpersuasive. Dec. 9–12. After
institution, Spherix does not maintain those arguments, but rather proffers its
own definition as to a person with ordinary skill in the art, in the context of
the ’599 patent. PO Resp. 20–21.
At the outset, we observe that VTech’s Petition provides a description
of the technology in the relevant art at the time of the claimed invention of
the ’599 patent, including a discussion regarding caller identification and
cordless telephone systems in general with supporting factual evidence.
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Pet. 2–7. For instance, VTech explains that caller identification technology
dates back to the late 1960’s and early 1970’s, and that, by the time of the
’599 patent filing date, caller identification standards and protocols were
adopted and set forth in Bellcore Technical References. Pet. 2 (citing
Exs. 1012, 1013). Indeed, according to the ’599 patent, the feature of calling
number identification “refers to a contemporary method and protocols of
data transfers which are defined in Bellcore Technical References”
(Exs. 1012, 1013). Ex. 1001, 4:4–8.
Further, it is well-settled that the level of ordinary skill in the art may
be reflected by the prior art of record, as here. Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001). One of ordinary skill is presumed to
be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid
Co., 774 F.2d 448, 454 (Fed. Cir. 1985). In that regard, VTech explains that
cordless telephone handsets, having a display screen and features for
creating and modifying telephone directories from the cordless handset,
were well known in the art, as evidenced by the prior art of record, including
Martensson, Nishihara, and Silver. Pet. 4–6 (citing Ex. 1002; Ex. 1008;
Ex. 1015). Indeed, according to the ’599 patent, cordless telephones were
popular, at the time of the invention, in domestic, business, and industrial
environments, due to their unrestricted freedom of movement. Ex. 1001,
1:12–19. Telephone services in both voice and data communications were
available to support a wide range of applications in the network. Id. at 1:20–
26. It was also common to store and display a telephone directory at the
subscriber’s telephone device. Id. at 1:26–36.
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In support of its contentions, VTech further directs us to a Declaration
of Dr. David Lyon. See, e.g., Pet. 2–7 (citing Ex. 1006 ¶¶ 36–46). Dr. Lyon
testifies that a “person of ordinary skill in the relevant art of the ’599 Patent
would have had a Bachelor of Science in electrical engineering, computer
science, or another related field such as applied physics, and two to four
years of experience working with and/or designing telecommunication
systems.” Ex. 1006 ¶ 28 (emphasis added). In its Patent Owner Response,
Spherix alleges that a person having ordinary skill in the art would have a
bachelor’s degree in electrical engineering with two to three years of
experience designing and coding processor-based circuits and systems for
communications systems and devices, or the equivalent. PO Resp. 20 (citing
Ex. 1009; Ex. 1022 ¶ 12). Spherix acknowledges that the minor differences
in the parties’ definitions have no practical consequence. PO Resp. 20–21.
For the foregoing reasons, we are persuaded that VTech’s description
of the caller identification and cordless telephone technology known in the
art, at the time of the invention, suffices as an articulated discussion on the
knowledge and skill of a person with ordinary skill in the art to substantiate
VTech’s obviousness analysis.
D. Obviousness
VTech asserts that claims 1–7 and 18 are unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Figa and Martensson.
Pet. 44–52. In support of this asserted ground of unpatentability, VTech
provides detailed explanations as to how the combination of cited prior art
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references renders the claims at issue obvious. Id. VTech also relies upon
Dr. Lyon’s Declaration. Ex. 1006.
Spherix responds that the combination of Figa and Martensson does
not disclose every claim element. PO Resp. 36–41. Spherix also argues that
VTech fails to articulate a rationale to combine the technical teachings
disclosed in the prior art references. Id. at 32–36. To support its
contentions, Spherix relies upon a Declaration of Dr. Franzon. Ex. 2010.
In our discussion below, we begin with a brief overview of Figa and
Martensson, and then we turn to the contentions presented by the parties,
focusing on the deficiencies alleged by Spherix.
Figa
Figa discloses an automatic telephone caller identification system,
which utilizes the Automatic Number Identification service offered by the
telephone company. Ex. 1004, 1:8–12, 3:47–50. The system includes a
directory of telephone numbers and parties associated with the telephone
numbers. Id. at 2:45–47. The system has a detector to identify the incoming
call number. Id. at 3:65–67. The system compares the incoming call
number with the telephone numbers listed in the directory to identify the
party associated with the incoming call, and then displays the incoming call
number and the identified associated party. Id. at 2:48–53. The system also
records the incoming call number and the date and time of the call. Id. at
2:53–56.
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Figure 2 of Figa, reproduced below, illustrates a telephone caller
identification system implemented within a portable telephone console (id.
at 4:12–14).

As depicted in Figure 2 of Figa, the telephone system has console 24
(a base station) and hand receiver 28 (a hand set). Console 24 includes
control panel 26 (a user interface), having display 23, alpha keypad 36,
numeric keypad 38, and control keypad 40. Id. at 4:12–19. Display 23 is
used to display information regarding incoming or outgoing telephone calls.
Id. at 4:19–22.
Martensson
Martensson describes a cordless telephone system, comprising a base
station coupled to a telephone network, and a cordless handset capable of
communicating with other telephones on the network via radio
communication with the base station. Ex. 1002, 1:7–11. According to
Martensson, a variety of cordless telephone systems existed at the time of
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the invention. Id. at 1:14–15. A common feature of these well-known
systems is a cordless handset having a display and keypad for dialing
telephone numbers, displaying data stored in memory, and performing other
functions. Id. at 1:43–50.
First submemory and second submemory
The preambles of claims 1 and 18 recite “wherein said base station
comprises a memory device, and wherein said memory device comprises
first and second submemories.” Ex. 1001, 12:62–4, 15:31–33 (emphasis
added). As discussed above, these preambles are entitled to patentable
weight. Claims 1 and 18, in the body, further recite “retrievably storing the
[alphanumeric] data in a first submemory of the base station,” and
“retrievably storing the valid [service] data in a second submemory of the
base station.” Id. at 13:7–8, 13–14, 15:41–42, 16:3–4 (emphases added).
By virtue of their dependency, each of challenged claims 2–6 also requires
these “submemory” limitations.
Spherix argues that neither VTech’s Petition nor Dr. Lyon’s
Declaration discusses a “first submemory” and a “second submemory.” PO
Resp. 40–41. Spherix also alleges that “Martensson does not disclose
separate submemories in the base station for storing information in logically
distinct portions of the memory.” Id. (emphasis added). Spherix further
submits that Figa does not disclose “a cordless telephone base station with
memories.” Id. (emphasis added).
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Spherix’s arguments are unavailing. At the outset, Spherix overlooks
VTech’s explanations as how the combination of Figa and Martensson
discloses every limitation of the claims, and VTech’s claim charts that point
out the specific portions of Figa, Martensson, and Dr. Lyon’s Declaration as
support. Pet. 2–7, 45–52 (citing Ex. 1002, Ex. 1004, Ex. 1006). To the
extent that Spherix requires the prior art or Dr. Lyon’s testimony to use the
exact terminology as the claim language, an obviousness analysis is not an
ipsissimis verbis test. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009). Rather, a prima facie case of obviousness is established when the
prior art itself would appear to have suggested the claimed subject matter to
an artisan. In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
Spherix’s argument that “Martensson does not disclose separate
submemories in the base station for storing information in logically distinct
portions of the memory” is misplaced. PO Resp. 40–41 (emphasis added).
As discussed above, we decline to adopt Spherix’s proposed claim
constructions for the claim terms “first submemory” and “second
submemory” that improperly import an extraneous feature into the claims—
namely, “a logically distinct portion of a physical memory.” See Renishaw,
158 F.3d at 1249. Rather, these claim terms are given their ordinary and
customary meaning as would be understood by a person with ordinary skill
in the art, in that the term “submemory” means “a portion of the memory.”
Applying the proper claim construction, we determine that VTech has
shown by a preponderance of the evidence that Figa in view of Martensson
renders the “submemory” limitations obvious. Notably, Martensson
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describes a telephone system having a base station and a cordless handset.
Ex. 1002, 1:7–11. The system allows the user at the cordless handset to
select a service from a predetermined set of services, including storing or
retrieving a telephone number in or from a memory. Id. at 2:66–3:6; 6:5–59.
Martensson discloses several ways in which users can enter a
telephone number into a memory and retrieve the number from the memory.
In particular, Martensson discloses: (1) a cordless handset having a
conventional user interface—a display and keypad that includes a set of
alphanumeric keys and a set of function and menu keys (id. at 1:43–67);
(2) a cordless handset having a voice-activated dialing function (id. at 4:12–
5:21); and (3) a cordless handset having a display and keypad that allows the
user to select the desired number and commands through menu options (id.
at 6:5–51, Fig. 2). It is reasonably clear from Martensson’s disclosure that
features of one embodiment are combinable with features in another
embodiment. Id. at 2:18–22, 6:52–59. For example, Martensson discloses a
cordless handset having both the conventional user interface and the voice-
activated dialing function (id. at 2:18–22), and a cordless handset that
accepts a combination of spoken commands and menu selected options (id.
at 6:54–59).
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Figure 2 of Martensson is reproduced below.

Figure 2 of Martensson depicts cordless handset 20a, having display
16, talk key 27, and scroll keys 17a, 17b. Id. at 6:5–11. Messages and
instructions are transmitted by radio communication between cordless
handset 20a and base station 1 in the form of a private branch exchange. Id.
at 3:41–48; 6:15–17, 44–51.
To place a call, the user presses talk key 27 at handset 20a, and then
base station 1 returns a message to handset 20a, which causes display 16 to
show what options are available in a menu format—“1. MAKE CALL;
2. TRANSFER NO.; 3. RETRIEVE NO.” Id. at 6:24–30. If the user
selects MAKE CALL, base station 1 returns a message, causing display 16
to show a list of all the names and/or telephone numbers and/or locations
stored in the associated memory portion of base station memory 15. Id. at
6:32–36. When the user selects an option using scroll keys 17a, 17b, and
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confirms the selection by depressing talk key 27, an instruction will be
generated by the local microprocessor and relayed to base station 1, which
will respond accordingly and perform the requested service. Id. at 6:24–51.
Base station 1 also directs incoming calls to the respective handset.
Id. at 5:50–52. If the incoming call includes a Calling Line Identification
signal identifying the caller, base station 1 generates an announcement of the
call and transmits the message to handset 20a. Id. at 5:55–60. Then, a
message is displayed in menu format on display 16. Id. at 6:15–17. The
user can move cursor 13 to point to a particular option by depressing scroll
keys 17a, 17b, and select the desired option by depressing talk button 27
when cursor 13 is pointed at the appropriate option. Id. at 6:15–22.
Memory 15 may “have portions associated respectively with each of
the other handsets 2b, 2c . . . 2n, and thus constituting a remote telephone
directory for each handset.” Id. at 5:6–21. Additionally, Dr. Franzon
acknowledges that “[t]echniques for partitioning a single physical memory
into separate registers for different types of data or functions would have
been well known to a POSITA in December 1993.” Ex. 2010 ¶ 66.
Given the evidence before us, we determine that an ordinarily skilled
artisan would have recognized that Martensson discloses storing telephone
numbers, telephone directories, messages, instructions, and other data in
respective portions or submemories of a memory device at the base station
in a manner that they are retrievable—i.e., disclosing a base station that has
a “memory device comprises first and second submemories,” and is capable
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of “retrievably storing the [alphanumeric] data in a first submemory of the
base station,” as required by claims 1–7 and 18.
In addition, Spherix’s argument that Figa does not disclose a cordless
telephone base station with memories is without merit. PO Resp. 40–41.
Spherix’s argument is premised that Figa’s handset is not cordless.
Attacking the references individually does not undermine VTech’s showing
of obviousness, as VTech’s asserted ground is based upon the combination
of Figa and Martensson. See In re Keller, 642 F.2d 413, 426 (CCPA 1981).
As VTech points out, Figa discloses a telephone system with a display
screen, microprocessor, and memory, for displaying caller identification
information. Pet. 2–4, 44; Ex. 1004, 1:50–3:12, Figs. 2, 3. Also, VTech
asserts that it would have been obvious to combine Figa’s system with
Martensson’s cordless telephone. Pet. 45. Indeed, the evidence in this
record shows that an ordinarily skilled artisan would have readily
appreciated the advantages of substituting a cordless handset for a corded
handset. Ex. 1001, 1:12–14 (“Cordless telephones have proven to be
popular in domestic, business and industrial environments due to their
unrestricted freedom of movement.”); Ex. 1002, 1:64–67 (“Both displays
and keypads [on the telephone handset itself] have certainly gained universal
acceptance in the cordless telephone industry and indeed there is a high level
of commonality of the keypad for telephone applications generally.”).
Therefore, the combination of Figa and Martensson discloses a telephone
system having a cordless handset and a base station. Pet. 44–52.
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Spherix’s arguments also fail to consider Figa as a whole. See In re
Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (noting that when evaluating
claims for obviousness, “the prior art as a whole must be considered.”); In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting that a
reference “must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole”).
Notably, Figa discloses a portable telephone console (base station)
that receives caller information, logs incoming and outgoing calls, stores a
directory of names and telephone numbers, and has the capability to search,
add to, delete from, or edit the directory. Ex. 1004, 3:53–64, Fig. 2.
Figure 3 (sheet 1 of 3) of Figa is reproduced below:

As shown in Figure 3 (sheet 1 of 3), Figa’s base station comprises
control and timing circuit 42, memory 46, address and data buses, and
system I/O circuit 49. Circuit 42 includes microprocessor 44, which controls
system 10 by executing instructions that are stored in memory 46. Ex. 1004,
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5:12–26. Memory 46 utilizes programmable read-only memory (PROM) 54
for storing program code and random access memory (RAM) 56 for storing
telephone log and directory data. Id. In a preferred embodiment PROM 54
consists of 24 Kbytes of memory area and RAM 56 is an 8-K static RAM.
Id. With this RAM capacity, it is possible to store approximately 40
directory entries (at 51 bytes each) and 80 log entries (at 26 bytes each). Id.
Additionally, as we previously discussed in the Decision on Institution, Figa
discloses receiving data messages that include the incoming telephone
numbers and checksum data, and testing the service data at the base station
to confirm its validity. Dec. 18–21; Ex. 1004, 3:47–50, 4:12–14, 6:12–30,
Figs. 2–3; Ex 1012, 5–6, Figs. 1–2; Ex. 1013; Ex. 1014, 4:10–30, Fig. 3. In
that light, one with ordinary skill in the art would have recognized that Figa
discloses storing telephone log and directory data, including incoming data
messages and valid service data, in respective portions or submemories of a
memory device at the base station in a manner that they are retrievable—i.e.,
disclosing a base station that has a “memory device comprises first and
second submemories,” and is capable of “retrievably storing the valid
[service] data in a second submemory of the base station,” as required by
claims 1–7 and 18.
For the foregoing reasons, we determine that VTech has demonstrated
by a preponderance of the evidence that the combination of Figa and
Martensson renders obvious the aforementioned “first submemory” and
“second submemory” limitations as required by claims 1–7, and 18. We
also note that, even if we were to adopt Spherix’s claim constructions,
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requiring “submemory” to mean a logically distinct portion of a physical
memory (PO Resp. 24–25), the combination of Figa and Martensson would
still render these claim limitations obvious because, during
cross-examination, Dr. Franzon implies that storing two lists in one memory
device necessarily means that those lists have to be logically separate, and
further explains that logically separate, “in the view of the person of
ordinary skill in the art, is to treat those two lists as . . . not being one joint
list, . . . because you have got to find the information again.” Ex. 1024,
108:3–25.
As to other structural features recited in the preambles of claims 1 and
18, we also determine that VTech has demonstrated by a preponderance of
the evidence that combination of Figa and Martensson discloses those
structural features. See, e.g., Pet. 2–7, 44–45; Ex. 1002, 1:43–63, 3:40–4:4,
6:5–59, Fig. 2; Ex. 1004, 4:12–19, 5:12–26, Figs. 2, 3.
Concurrently transmitting alphanumeric data and commands
In its Patent Owner Response, Spherix contends that the combination
of Figa and Martensson does not disclose the “concurrently transmitting”
limitation—namely, “concurrently transmitting the [keyed] alphanumeric
data and commands to the base station,” as recited in claims 1 and 18. PO
Resp. 36–39. In that regard, Spherix advances several arguments. Id.
First, Spherix argues that the Petition and supporting evidence are
silent as to whether the prior art references disclose that limitation. PO
Resp. 38. We are not persuaded by that argument because Spherix again
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overlooks VTech’s explanations and claim charts set forth in the Petition
(Pet. 2–7, 44–52), and improperly requires the Petition, prior art, and
Dr. Lyon’s testimony to use the exact terminology as the claim language.
See Gleave, 560 F.3d at 1334.
Second, Spherix argues that the “concurrently transmitting” limitation
is “intrinsic to the way in which the disclosed ‘predialing’ embodiment is
expressed in the claims,” and it is “also essential to the way in which handset
battery life is optimized in the system architecture disclosed in the ’599
Patent.” PO Resp. 36–37. However, nothing in the claims requires us to
read the “predialing” embodiment or the handset battery life disclosure from
the Specification into the claims. See Deere & Co. v. Bush Hog, LLC, 703
F.3d 1349, 1354 (Fed. Cir. 2012) (explaining that one must not import
limitations from the specification that are not part of the claim).
Third, Spherix argues that Martensson does not disclose the
“concurrently transmitting” limitation because Martensson’s handset has no
alphanumeric keys, and does “not generate alphanumeric data from key
presses at all.” PO Resp. 36–39. According to Spherix, there is no express
disclosure that the alphanumeric data is transmitted from the handset to the
base station, and Martensson already stored the data at the base station. Id.
at 39. Spherix further contends that Martensson specifically discloses that
the alphanumeric data and commands are not concurrently transmitted. Id.
at 38–39 (citing Ex. 1002, 4:65–5:5; Ex. 2010 ¶ 86).
Spherix’s arguments are unavailing. As the initial matter, the
arguments are not commensurate with the scope of the claims. See In re
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Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not
appearing in the claims cannot be relied upon for patentability). Spherix
attempts to limit the claim term “keyed alphanumeric data” narrowly to
require the alphanumeric data to be the specific telephone number being
dialed and to be generated by a key pad that has an individual key for each
digits of 0–9. Nothing in the claims requires such a key pad, much less
generating alphanumeric data or telephone number by pressing a separate
key for each digit, as Spherix essentially alleges. PO Resp. 36–38. Rather,
claim 1 recites “generating predetermined command and alphanumeric data
from selected ones of key operations at the handset.” Ex. 1001, 12:65–67
(emphasis added).
As discussed above, Martensson discloses a cordless handset, having
a display and keypad that enables a user to generate predetermined
commands and alphanumeric data from selected key operations by utilizing
the display, talk key, and scroll keys. Ex. 1002, 6:5–51, Fig. 2. In
particular, to place a call, the user presses the talk key to establish the
communication between the handset and the base station. Id. at 6:24–27.
The base station then returns a message to the handset, which causes the
display to show the available options. Id. at 6:27–30. The user points to the
desired option using the scroll keys, and confirms the selection by
depressing the talk key. Id. at 6:31–32. If the user selects the option of
making a call, the base station returns another message, displaying a list of
the names/telephone numbers/locations stored in the memory. Id. at 6:32–
36. When the user selects the desired telephone number using the scroll
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keys and confirms the selection by depressing the talk key, an instruction is
generated by the local microprocessor at the handset and relayed by radio
communication to the base station. Id. at 6:37–51. Viewing Martensson as
a whole, we are persuaded that the local microprocessor and other features
of the cordless handset are enabled to display the keyed alphanumeric data
on the display screen and to transmit concurrently the keyed alphanumeric
data and commands to the base station, as required by the claims at issue.
Even if the claim language was to require a traditional numeric
keypad to generate the “keyed alphanumeric data” as Spherix essentially
alleges, such a feature was well known in the art, as described in
Martensson. Ex. 1002, 1:43–63. Martensson discloses a keypad that
comprises: a set of alphanumeric keys that includes a key for each of the
digits 0–9, and a set of function and menu keys. Id. Therefore, viewing
Martensson as a whole, we are not persuaded by Spherix’s argument that
Martensson’s handset does not have alphanumeric keys or it does not
generate alphanumeric data from pressing the keys.
Nor are we persuaded by Spherix’s contention that Martensson
already stored the alphanumeric data at the base station. PO Resp. 39.
Again, Spherix’s contention is not commensurate with the scope of the
claims. See Self, 671 F.2d at 1348. To the extent that Spherix is interpreting
the claim language to require the alphanumeric data to be pre-dialed
immediately before the transmission, such interpretation would import
improperly an extraneous feature into the claims. See Renishaw, 158 F.3d at
1249. As noted by the district court in its Claim Construction Order, the
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Specification of the ’599 patent “does not state that each time an
alphanumeric data is keyed, it is concurrently transmitted.” Ex. 2012, 25;
Ex. 1001, 9:2–28 (the displayed number is not transmitted to the base station
until the users strikes the command key to dial the number). Importantly, as
discussed above, the telephone numbers were entered or generated by the
user at the handset. Ex. 1002, 2:66–3:20 (the predetermined set of services
includes remote dialing and storing or retrieving a telephone number in or
from a memory); 5:17–21 (“[M]emory 15 may also have portions associated
respectively with each of the other handsets . . . and thus constituting a
remote telephone directory for each handset.” (emphasis added).).
Also, Spherix’s contention that Martensson discloses that the
alphanumeric data and commands are not concurrently transmitted is
without merit. PO Resp. 38–39 (citing Ex. 1002, 4:65–5:5; Ex. 2010 ¶ 86).
Spherix’s contention and supporting expert testimony are based improperly
on the premise that Martensson’s data are “being transmitted one data
element at a time.” Ex. 2010 ¶ 86 (citing Ex. 1002, 4:65–5:5 (“As each digit
is recognized by the voice recognition device 12 in the PBX 1 . . .”)
(emphasis added by Dr. Franzon). The passage of Martensson relied upon
by Dr. Franzon is silent as to how the alphanumeric data are being
transmitted to the base station, but instead merely discloses how the voice
recognition device recognizes the telephone number at the base station.
Ex. 1002, 4:65–5:5. In fact, as discussed above, Martensson discloses that
the selected telephone number and commands are transmitted concurrently
as an instruction generated by the local microprocessor, from the cordless
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handset to the base station when the user selects the desired telephone
number and confirms the selection by depressing the talk key. Id. at 6:5–51
(“Also, when a menu option is chosen and confirmed by actuation of the
handset key 27 an appropriate instruction will be generated by the handset
under control of a local microprocessor and relayed by radio communication
to the PBX 1 which will respond accordingly and remotely perform the
requested service on behalf of the handset 20a.”), Fig. 2.
For the foregoing reasons, we determine that VTech has demonstrated
by a preponderance of the evidence that the combination of Figa and
Martensson renders obvious the aforementioned “concurrently transmitting”
claim limitation, as required by claims 1–7 and 18.
First processor means and second processor means
Spherix argues that VTech fails to map the claim elements “first
processor means” and “second processor means” to the prior art. PO Resp.
39–40. As support, Dr. Franzon testifies that none of the references
discloses the specific structural components that are required by “first
processor means” and “second processor means,” as construed by the
District Court. Ex. 2010 ¶¶ 80, 84, 95.
We are not persuaded by Spherix’s argument and supporting expert
testimony. As we discussed above, it was reasonable for VTech to treat
these claims elements as non-means-plus-function limitations at the time of
filing the Petition. Although VTech did not identify specifically the
corresponding structures in its Petition, as Dr. Franzon testified in the district
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court proceeding, an ordinarily skilled artisan nevertheless would have been
able to derive the corresponding structures from the claim language itself,
including the structural components recited in the preamble. Ex. 1022 ¶¶ 30,
45. Dr. Franzon also indicated that an artisan would have understood that
“such a cordless telephone would necessarily consist of a handset and a base
station, each consisting of a processor, a modem, a keypad and a memory
(among other hardware components).” Id. In its Petition, VTech explains
how the combination of Figa and Martensson discloses every limitation of
the claims, and points out the specific portions of Figa, Martensson, and
Dr. Lyon’s Declaration as support. See, e.g., Pet. 2–7, 45–52; Ex. 1006,
¶¶ 89–98. Based on VTech’s explanations and supporting evidence, it
would have been reasonably clear to an ordinarily skilled artisan that the
combination of Figa and Martensson discloses the “processor means” claim
elements, as construed by the District Court.
Significantly, neither Spherix’s argument nor Dr. Franzon’s testimony
identifies a single feature of the corresponding structures that is not known
in the art or is not disclosed in the prior art of record. PO Resp. 39–40;
Ex. 2010 ¶¶ 80, 84, 95. In fact, Dr. Franzon testified in the district court
proceeding that a person having ordinary skill in the art would have
understood how to program the cordless handset processor and the base
station processor to perform each of the recited functions; and, in its off-the-
shelf state, each processor “would be configured to send and receive both
commands and data with a host of peripheral devices such as keypads,
modems, display devices, and storage.” Ex. 1022 ¶¶ 30–32, 45–47.
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Moreover, as discussed above, the combination of Figa and Martensson
discloses: (1) a cordless handset that includes a local microprocessor,
display, keypad, transceiver, two-way communication system, and memory,
“for displaying keyed alphanumeric data on the screen and concurrently
transmitting the alphanumeric data and commands to the base station,” as
required by claims 1 and 18; and (2) a base station that includes a processor,
transceiver, data buses, two-way communication system, and memory, “for
receiving the alphanumeric data and commands, retrievably storing the data
in a first submemory of the base station and operably responding to the
commands,” as required by claims 1 and 18. See, e.g., Ex. 1002, 1:43–63,
3:49–4:4, 4:34–21, 6:5–59, Fig. 2; Ex. 1004, 4:12–19, 5:12–26, Figs. 2, 3.
In short, the corresponding structures for performing the recited
functions of the “processor means” claim elements, as construed by the
District Court, are no more than combining known elements according to
their established functions, yielding predictable results. See KSR, 550 U.S.
at 417 (noting that the predictable use of prior art elements according to their
established functions is obvious). Therefore, even if we were to adopt the
District Court’s claim constructions for the “processor means” elements in
the instant inter partes review, it would have been obvious to one with
ordinary skill in the art to utilize such processor means in a cordless
telephone system, in view of Figa and Martensson.
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Rationale to combine Figa and Martensson
Spherix contends that VTech fails to provide reasoning with rational
underpinning to combine Figa and Martensson. PO Resp. 32–35. In that
regard, Spherix advances several arguments. Id.
First, Spherix argues that VTech fails to explain why one with
ordinary skill in the art “would have been motivated to combine Figa and
Martensson to solve the technical problem addressed by the ’599 patent.”
PO Resp. 32–35. 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 Reasearch, Ltd. v. Apotex Inc., 687 F.3d, 1362, 1369 (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. Mayland 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
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supported by testimony of an expert witness regarding knowledge of a
person of skill in the art at the time of invention).
Here, as Dr. Lyon testifies, cordless phones were invented in the late
1960’s and 1970’s, and, at the time of the invention, cordless phones with
handsets that included microprocessors and displays were well known.
Ex. 1006 ¶ 43. Indeed, according to the ’599 patent, at the time of the
invention, “[c]ordless telephones have proven to be popular in domestic,
business and industrial environments due to their unrestricted freedom of
movement.” Ex. 1001, 1:12–19. Additionally, a cordless handset that has a
display and keypad was well known in the art and gained universal
acceptance in the cordless telephone industry, as evidenced by Martensson.
Ex. 1002, 1:14–67, 2:24–34, 6:5–59, Fig. 2. Given the evidence regarding
the various advantages of a cordless handset, we are persuaded by VTech’s
contention that it would have been obvious to an ordinarily skilled artisan, in
view of Martensson, to use a cordless handset with Figa’s telephone system,
providing the convenience and advantages of a cordless handset—e.g.,
unrestricted freedom of movement and not limited by the length of a cord.
See KSR, 550 U.S. at 417 (“[I]f 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.”).
Second, Spherix argues that VTech provides “just one argument in
support of combining Figa and Martensson – that the references are both
directed to ‘caller ID,’” and that the Board in the Decision on Institution
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articulated its own rationale to combine the prior art teachings. PO Resp.
33–34. Spherix’s argument, however, narrowly focuses on one aspect of the
reasons articulated by VTech for combining Figa and Martensson, and also
characterizes the Decision on Institution incorrectly.
VTech’s Petition and supporting evidence articulate at least five
reasons to combine the prior art teachings—e.g., “[i]mproving Figa by
making the simple addition of a cordless handset” and “[u]sing Figa’s
disclosure in a cordless phone as the industry moved from corded to cordless
phones.” Reply 21 (citing Pet. 14, 29–30, 44–45). Furthermore, Dr. Lyon
testifies that “[a]s phones developed over time, features from corded phones
were used in cordless phones and later in cellular phones.” Ex. 1006 ¶ 94.
Spherix does not address all of the reasons articulated by VTech for
using a cordless handset in Figa’s telephone system. PO Resp. 33–34.
Instead, Spherix focuses on one aspect of VTech’s explanation regarding the
advantages of implementing caller identification capabilities and telephone
directories in telephone systems (Pet. 2–3). PO Resp. 33–34. In its Patent
Owner Response, Spherix acknowledges that engineers in the industry at the
time of the invention were tasked with expanding cordless phone technology
to include corded phone functionality, which confirms that an ordinarily
skilled artisan would have readily appreciated the convenience and
advantages of a cordless telephone handset. Id. at 6–7.
Contrary to Spherix’s characterization that the Board entered its own
rationale to combine, we determined in the Decision on Institution that
VTech explains sufficiently how the combination of Figa and Martensson
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discloses every limitation of the claims, and that VTech’s reasons to
combine the prior art teachings are supported by the evidence in the record,
including the prior art disclosures that describe various advantages of using a
cordless handset. See Dec. 12–26; Ex. 1001, 1:12–19; Ex. 1002, 1:14–67.
Third, Spherix, based on Dr. Franzon’s testimony, argues that an
ordinarily skilled artisan would not have been motivated to combine Figa
and Martensson “due to Martensson’s negative drain on handset battery
life.” PO Resp. 36. Dr. Franzon’s testimony, however, is premised
improperly upon his own conjecture that “Martensson would have a
significant impact on the battery life of the handset because they require a
longer radio connection between the handset and base station as compared to
a ‘predialing’ embodiment as shown in the ’599 Patent.” Ex. 2010 ¶ 92.
Dr. Franzon does not explain with sufficient specificity why Martensson
would have a “significant impact” on the battery life of the handset.
Dr. Franzon’s testimony narrowly focuses on Martensson’s voice
recognition disclosure and ignores other teachings of Martensson. See, e.g.,
Ex. 1002, 6:5–51, Fig. 2. The passage of Martensson relied upon by
Dr. Franzon’s testimony, in fact, is silent as to how the alphanumeric data
are being transmitted to the base station, the battery life of a handset, and the
length of the radio communication; that passage of Martensson merely
discloses how the voice recognition device recognizes the telephone number
at the base station. Id. at 4:62–5:5. Additionally, the Specification of the
’599 patent, at most, describes a generic battery and a conventional means
for charging the battery. Ex. 1001, 3:1–5 (“Although not appearing in
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FIG. 1, it will be understood that an electrical connection for battery
charging is established in a conventional manner by means of corresponding
mating electrical contacts in the handset 13 and the cradle 14.”).
Dr. Franzon does not explain why an ordinarily skilled artisan would not
have been able to charge Martensson’s cordless handset using a
conventional means.
Finally, Spherix argues that Martensson would not enable an artisan to
overcome the technical challenges of implementing the relevant
functionality of Figa in a cordless phone system. PO Resp. 34–35 (citing
Ex. 2010 ¶¶ 89–92). Spherix also alleges that Martensson teaches away
from the suggested combination because Martensson’s invention is directed
toward eliminating the alphanumeric keys on the cordless handset. Id.
Spherix’s argument, however, does not identify in particularity what
the technical challenges are. PO Resp. 34–35; Ex. 2010 ¶¶ 89–92. In fact,
the Specification of the ’599 patent acknowledges that cordless telephones
are popular in various environments, and telephones having displays and
directories are quite common. Ex. 1001, 1:12-36. The Specification only
identifies a single problem in connection with a cordless handset not having
an all-function display. Id. at 1:37–46. But, a cordless handset having such
a display and a keypad for entering data and performing other functions is a
well-known feature at the time of the invention. Ex. 1002, 1:42–67, 6:5–59.
Also Spherix’s arguments again fail to consider Martensson as a
whole, in light of the general knowledge of an ordinarily skilled artisan. See
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
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2009) (The obviousness analysis may include “recourse to logic, judgment,
and common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.”). “A
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 re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012). 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 1355,
1362 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
1359, 1365 (Fed. Cir. 2015).
Viewing Martensson as a whole in light of the general knowledge of
an artisan, we are not persuaded by Spherix’s argument that Martensson
teaches away from using a keypad for generating alphanumeric data. See In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (noting that disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure of non-preferred embodiments.). 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).
Spherix’s argument focuses solely on Martensson’s voice-recognition
disclosure, and ignores all other teachings of Martensson. See Merck & Co.,
Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll
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disclosures of the prior art, including unpreferred embodiments, must be
considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). In
fact, Martensson specifically discloses that using a keypad for generating
alphanumeric data was well known at the time of the invention. Ex. 1002,
1:43–63. Martensson also indicates that “[b]oth displays and keypads have
certainly gained universal acceptance in the cordless telephone industry and
indeed there is a high level of commonality of the keypad for telephone
applications generally.” Id. at 1:64–67. More importantly, Martensson
discloses a cordless handset, having both voice-recognition capability and
manual dialing keypad. Id. at 2:19–22; 6:52–57. Therefore, we do not
discern that Martensson criticizes, discredits, or otherwise discourages using
a keypad for generating alphanumeric data.
Viewing the evidence in this entire record, we observe that Spherix
does not provide sufficient or credible evidence that explains why utilizing a
cordless handset in a telephone system, such as the one disclosed in Figa,
would be “uniquely challenging” or otherwise beyond the level of an
ordinary skilled artisan, in light of Martensson. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418) (finding that Leapfrog failed to present evidence that the
inclusion a “reader” into the device as issue was “uniquely challenging”).
Based on the foregoing, we determine that VTech has articulated reasoning
with rational underpinnings for combining Figa with Martensson.
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Conclusion on Obviousness
For the reasons discussed above, we determine that VTech has
demonstrated by a preponderance of the evidence that claims 1–7 and 18 of
the ’599 patent are unpatentable under § 103(a) over the combination of Figa
and Martensson.
E. Motion to Exclude Evidence
Spherix filed a Motion to Exclude Evidence, seeking to
exclude a portion of the deposition transcript of Dr. Franzon (Ex. 1024,
124:17–125:8) and four paragraphs of the Declaration of Dr. Lyon (Ex. 1025
¶¶ 4, 8, 9, 10), because the evidence purportedly exceeds the proper scope of
a reply under 37 C.F.R. § 42.23(b). Paper 35 (“Mot.”), 1–3.
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 16, 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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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 1–7 and 18 of the ’599 patent
are unpatentable under § 103(a) over the combination of Figa and
Martensson.
IV. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 1–7 and 18 of the ’599 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.

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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