VTECH COMMUNICATIONS, INC., AND UNIDEN AMERICA..., 2015 WL 981677 (2015)
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`(cid:5)(cid:6)(cid:7)(cid:8)(cid:3)(cid:9)(cid:10)(cid:3)(cid:11)(cid:12)(cid:7)(cid:13)(cid:14)(cid:14)(cid:3)(cid:15)(cid:16)(cid:17)(cid:18)(cid:19)(cid:20)(cid:18)(cid:3)(cid:21)(cid:22)(cid:23)(cid:3)(cid:24)(cid:3)(cid:25)(cid:26)(cid:26)(cid:23)(cid:3)(cid:27)(cid:28)(cid:23)(cid:29)
`
`Patent Trial and Appeal Board
`
`Patent and Trademark Office (P.T.O.)
`
`(cid:30)(cid:21)(cid:31)(cid:32)(cid:33)(cid:3)(cid:32)(cid:34)(cid:35)(cid:35)(cid:36)(cid:37)(cid:38)(cid:32)(cid:25)(cid:21)(cid:38)(cid:34)(cid:37)(cid:39)(cid:40)(cid:3)(cid:38)(cid:37)(cid:32)(cid:23)(cid:40)(cid:3)(cid:25)(cid:37)(cid:41)(cid:3)(cid:36)(cid:37)(cid:38)(cid:41)(cid:31)(cid:37)(cid:3)(cid:25)(cid:35)(cid:31)(cid:42)(cid:38)(cid:32)(cid:25)(cid:3)(cid:32)(cid:34)(cid:42)(cid:16)(cid:34)(cid:42)(cid:25)(cid:21)(cid:38)(cid:34)(cid:37)(cid:40)(cid:3)(cid:16)(cid:31)(cid:21)(cid:38)(cid:21)(cid:38)(cid:34)(cid:37)(cid:31)(cid:42)(cid:39)(cid:40)
`(cid:43)(cid:23)
`(cid:39)(cid:33)(cid:16)(cid:31)(cid:42)(cid:38)(cid:44)(cid:3)(cid:38)(cid:37)(cid:32)(cid:34)(cid:42)(cid:16)(cid:34)(cid:42)(cid:25)(cid:21)(cid:31)(cid:41)(cid:40)(cid:3)(cid:16)(cid:25)(cid:21)(cid:31)(cid:37)(cid:21)(cid:3)(cid:34)(cid:9)(cid:37)(cid:31)(cid:42)(cid:23)
`
`Case IPR2014-01431
`Patent 5,581,599
`(cid:35)(cid:17)(cid:22)(cid:45)(cid:46)(cid:3)(cid:47)(cid:40)(cid:3)(cid:5)(cid:6)(cid:7)(cid:8)
`
`For PETITIONER:
`*1 James R. Nuttall
`John L. Abramic
`STEPTOE & JOHNSON LLP
`jnuttall@steptoe.com
`vtechipr@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 PUCKETT LLP
`steven.hartsell@skiermontpuckett.com
`spherix_team@skiermontpuckett.com
`
`Before HOWARD B. BLANKENSHIP, JONI Y. CHANG, and BEVERLY M. BUNTING
`Administrative Patent Judges
`CHANG
`Administrative Patent Judge
`
`
`
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`Petitioners 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.” In
`response, Patent Owner Spherix Incorporated (“Spherix”) filed a Preliminary Response. Paper 11, “Prelim. Resp.” We have
`
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`jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”
`
`Upon consideration of the Petition and Preliminary Response, we conclude that there is a reasonable likelihood that VTech
`would prevail in challenging claims 1-7 and 18 of the '599 patent 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 hereby authorize an inter partes review to be instituted as to claims
`1-7 and 18 of the '599 patent.
`
`
`A. Related Matter
`
`The parties indicate that the '599 patent has been asserted in Spherix Incorporated v. VTech Telecommunications, Ltd., No. 3:13-
`cv-3494-M (ND.Tex.) and Spherix Incorporated v. Uniden Corp., No. 3:13-cv-3496-M. (ND.Tex.). Pet. 58; Prelim. Resp. 2-3.
`
`
`B. The '599 Patent
`
`*2 The '599 patent discloses a telephone system having an interactive cordless telephone handset and an associated base
`station. Ex. 1001, Abstract. Figure 1 of the '599 patent is reproduced below.
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`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.
`
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 17-19 are the only independent claims. Claims 2-13 depend, either directly or indirectly,
`from claim 1. Claim 1 is illustrative of the claimed subject matter of the '599 patent, and is reproduced below:
`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;
`
`retreivably 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
`
`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, 12:56-13:23 (emphases added).
`
`
`D. Prior Art Relied Upon
`
`*3 VTech relies upon the following prior art references:
`
`Martensson
`
`Schneyer
`
`Figa
`
`Nishihara
`
`Obata
`
`US 6,349,212 B1
`
`US 5,388,150
`
`US 4,924,496
`
`US 5,561,712
`
`US 5,251,250
`
`Feb. 19, 2002
`
`Feb. 7, 1995
`
`May 8, 1990
`
`Oct. 1, 1996
`
`Oct. 5, 1993
`
`(Ex. 1002)
`
`(Ex. 1003)
`
`(Ex. 1004)
`
`(Ex. 1008)
`
`(Ex. 1010)
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`
`
`
`
`(Ex. 1015)
`Nov. 21, 1989
`US 4,882,745
`Silver
`
`
`
`
`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”). 1
`
`
`E. The Asserted Grounds of Unpatentability
`
`VTech asserts the following asserted grounds of unpatentability:
`
`References
`
`Figa in view of Martensson or
`Nishihara 2
`
`Figa in view of Martensson or Nishihara
`and Obata
`
`Martensson, alone, or in view of Figa or
`Schneyer
`
`Martensson in view of Figa or Schneyer
`and Obata
`
`Schneyer, alone, or in view of
`Martensson or Silver
`
`Schneyer in view of Martensson or Silver
`and Obata
`
`
`Basis
`
`
`§1
`
`
`
`03(a)
`
`03(a)
`
`03(a)
`
`03(a)
`
`03(a)
`
`03(a)
`
`§1
`
`
`
`§1
`
`
`
`§1
`
`
`
`§1
`
`
`
`§1
`
`
`
`Claims
`
`1-7 and 18
`
`
`8-13, 17, and 19
`
`
`1-7 and 18
`
`
`8-13, 17, and 19
`
`
`1-7 and 18
`
`
`8-13, 17, and 19
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`*4 As a first step in our analysis for determining whether to institute a review, we determine the meaning of the claims. The
`'599 patent issued from U.S. Patent Application No. 08/175,534, filed on December 30, 1993. Ex. 1001, at [22]. VTech indicates
`that the '599 patent has expired, and Spherix does not dispute this assertion. Pet. 7-10; see generally Prelim. Resp. For claims
`of an expired patent, the Board's claim interpretation analysis is similar to that at district court. See In re Rambus Inc., 694 F.3d
`42, 46 (Fed. Cir. 2012). Specifically, claim terms are 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, having taken into consideration the language of the claims,
`the specification, and the prosecution history of record. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We
`are mindful, however, that there still would be no presumption of validity, and, therefore, we will not be applying a rule of
`construction with an aim to preserve the validity of claims.
`
`In its Petition, VTech adopts the claim constructions submitted previously by Spherix in the related district court proceeding
`for several claim elements, and agrees with Spherix to give the claim terms their ordinary and customary meanings. Pet. 8-10
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`(citing Ex. 1009; Ex. 1021). VTech also does not contend, in the instant proceeding, that any of the claim elements recited in
`the challenged claims should be construed as a mean-plus-function limitation under § 112, ¶ 6. 3 Id.
`
`For purposes of this Decision, we find it necessary to construe only the claim term “service data” expressly. No other term
`requires an express construction at this time. 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).
`
`
`“service data”
`
`Claim 1 recites “testing the service data at the base station to confirm its validity.” Ex. 1001, 13:11-12. In its Preliminary
`Response, Spherix asserts that “caller [identification] information constitutes service data.” Prelim. Resp. 36.
`
`We observe that Spherix's proposed construction is consistent with the intrinsic evidence before us, including other claim
`language and the Specification. For example, claim 2, which depends directly from claim 1, 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.” Id. at 13:24-27. According to the Specification, caller identification data includes the caller's name and number, as
`well as the time and date of the call. Id. at 4:10-11. As another example, claim 13 recites “wherein the service data is captured
`between first and second ringing signals of the incoming telephone call.” Id. at 14:33-35 (emphasis added). The Specification
`discloses that the transfer of the caller identification data is received between the first and second ringing signals on the line.
`Id. at 4:11-13.
`
`*5 For the foregoing reasons, we construe the claim term “service data,” as “caller identification information” for purposes
`of this Decision, as proposed by Spherix.
`
`
`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).
`
`We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.
`
`
`C. The Level of Ordinary Skill in the Art
`
`Spherix argues that VTech does not articulate the knowledge and skill of a person with ordinary skill in the art. Prelim. Resp.
`24-25. In particular, Spherix asserts that it is impossible to conduct an obviousness analysis when the Petition is silent as to the
`knowledge and skill of a person of ordinary skill in the art. Id.
`
`We observe, however, 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. 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.
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`Furthermore, 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); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978). A person 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); Kimberly-Clark Co. v. Johnson & Johnson, 745 F.2d
`1437, 1449-54 (Fed. Cir. 1984).
`
`*6 In its Petition, VTech also explains that cordless telephone handsets, having a display screen and features for creating and
`modifying telephone directory entries from the cordless handset, were well known in the art, as evidenced by prior art at that
`time including Martensson, Nishihara, and Silver. Id. 4-5 (citing Ex. 1002; Ex. 1008; Ex. 1015). 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. Id. at 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.
`
`We are mindful that, in determining the level of ordinary skill in the art, 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.” GPAC, 57 F.3d at 1579; Custom Accessories, Inc. v.
`Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Here, in support of its contentions, VTech further directs our
`attention to a Declaration of Dr. David Lyon, who has been retained as an expert witness for the instant inter partes review of
`the '599 patent. See, e.g., Pet. 2-7 (citing Ex. 1006 ¶¶ 36-46); Ex. 1006 ¶ 1. 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.
`
`For the foregoing reasons, we are persuaded, based on the present record, 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 for purposes of this
`Decision.
`
`
`D. Obviousness - Claims 1-7 and 18
`
`As discussed above, VTech asserts several alternative grounds of unpatentability based on the prior art in the present record.
`We first focus our discussion on the ground based on the combination of Figa and Martensson.
`
`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 references renders the claims at issue obvious. Id. VTech also relies upon Dr. Lyon's
`Declaration. Ex. 1006.
`
`*7 Spherix opposes these assertions. Prelim. Resp. 51-56. In its Preliminary Response, Spherix counters that the proposed
`combination of prior art references does not describe or suggest every claim limitations. Id. Spherix also argues that VTech
`fails to articulate a rationale to combine the technical teachings disclosed in the prior art references. Id.
`
`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.
`
`Figa
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`Figa discloses an automatic 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.
`
`Figure 2 of Figa, reproduced below, illustrates a 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), which includes 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 plurality
`of cordless handsets 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 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.
`
` A
`
` cordless handset in radio communication with a base station
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`Independent claims 1 and 18 each recite “an alphanumeric display screen of a cordless handset in user-interactive radio
`communication with an associated base station.” Ex. 1001, 12:58-60, 15:27-29. Claims 2-13 also require this limitation, as
`these claims depend ultimately from claim 1. Independent claim 17 contains a similar limitation.
`
`*8 In its Petition, VTech points out that Figa discloses a telephone system with a multi-line display screen, microprocessor,
`and memory, for displaying caller identification information, including the incoming telephone number and calling party. Pet.
`44. Although Figa does not disclose a cordless handset, VTech nevertheless asserts that it would have been obvious to combine
`Figa's system with Martensson's cordless telephone handset. Pet. 45. In support of VTech's assertion, Dr. Lyon testifies that as
`“phones developed over time, features from corded phones were used in cordless phones and later in cellular phones.” Ex. 1006
`¶ 94. Dr. Lyon explains that using a cordless instead of corded phone is simply applying known technique to a known device. Id.
`
`In its Preliminary Response, Spherix argues that Figa does not disclose the aforementioned limitation, because Figa does not
`disclose a cordless handset or radio link communications between a base station and a cordless handset. Prelim. Resp. 53-54.
`Spherix also contends that VTech fails to articulate a sufficient rationale to combine Figa with Martensson. Id. at 51-52.
`
`Upon consideration of the parties' contentions and the evidence before us, we are persuaded by VTech's arguments. 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. Notably, certain features of a cordless telephone system, including
`a cordless handset in radio communication with a base station, were well known in the art, as evidenced by Martensson. Ex.
`1002, 1:14-67, 2:24-34.
`
`Martensson describes a cordless telephone system having a base station and a cordless handset capable of communicating with
`other telephones on the network via radio communication with the base station. Id. at 1:7-11.
`
`Figure 2 of Martensson is reproduced below.
`
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`Figure 2 of Martensson shows cordless handset 20a, having display 16, talk key 27, and scroll keys 17a, 17b. Id. at 6:5-11.
`Messages are transmitted by radio communication from base station 1 to handset 20a, and displayed in menu format on display
`16. Id. at 6:15-17. If the incoming call includes a Calling Line Identification signal, the system will display the incoming
`telephone number on display 16. Id. at 5:55-6:23.
`
`Based on our review of the evidence in the present record, we are persuaded by VTech's contention that it would have been
`obvious to combine Figa's system with Martensson's disclosure of a cordless handset in radio communication with a base
`station, in light of Martensson, so that the subscriber is not restricted to stay close to the base station when using the handset.
`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.”).
`
`*9 For the foregoing reasons, we determine, for purposes of this Decision, that VTech has demonstrated adequately that the
`combination of Figa and Martensson renders obvious “an alphanumeric display screen of a cordless handset in user-interactive
`radio communication with an associated base station,” as required by the claims at issue, and VTech has articulated a sufficient
`rationale to combine the technical features of Figa and Martensson.
`
`User interface
`
`Claim 1 recites “generating a set of user-interactive prompts having predetermined appearances on the display screen.” Ex.
`1001, 13:16-17. Claims 2-13, which depend ultimately from claim 1, also require this limitation.
`
`Spherix argues that this “user interface” claim limitation requires a display screen on a cordless handset. Prelim. Resp. 55-56.
`Spherix alleges that Figa does not disclose a telephone system having a cordless handset. Id.
`
`As discussed above, the combination of Figa and Martensson collectively discloses a telephone system having a cordless handset
`and a base station. Pet. 44-52. Indeed, Martensson's cordless handset has a user interface including a display and keypad. Ex.
`1002, 1:43-59. The user interface enables subscribers to dial telephone numbers, display data stored in memory, and perform
`other functions, at the cordless handset. Id. Messages are displayed in menu format, showing what options are available (e.g., 1
`MAKE CALL; 2 TRANSFER NO.; 3. RETRIEVE NO.). Id. at 6:15-39. The subscriber may select an option using the keypad.
`Id.
`
`Given the explicit disclosures of the prior art in this record, we determine that VTech has established sufficiently, for purposes
`of this Decision, that the combination of Figa and Martensson renders the aforementioned “user interface” limitation obvious.
`
`Testing the service data at the base station
`
`Independent claims 1 and 18 each recite “testing the service data at the base station to confirm its validity.” Ex. 1001, 13:11-12;
`16:1-2. Each of the other challenged claims also requires the same or similar limitation. As discussed above in the Claim
`Construction section of this Decision, we construe the claim term “service data” as caller identification information (e.g., the
`incoming telephone number or caller's name).
`
`In its Petition, VTech alleges that Figa discloses: (1) displaying caller's name and number; (2) logging incoming caller
`identification information; (3) automatically dialing telephone numbers stored in the caller identification log or directory;
`(4) editing data stored in the directory; creating directory entries from the caller identification log; and (5) comparing caller
`identification information with data stored in the directory. Pet. 44 (citing Ex. 1004, 1:55-59, 1:63-68, 2:23-28, 2:35-65). VTech
`further maintains that the combination of Figa and Martensson renders obvious all of the claim limitations of claims 1-7 and
`18, including the aforementioned “testing” limitation. Id.
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`*10 In its Preliminary Response, Spherix argues that Figa does not disclose the “testing” claim limitation in that Figa does
`not disclose a base station. Prelim. Resp. 54-55. Spherix also contends that Figa's incorporation by reference of Doughty's
`disclosure, concerning the protocol for transferring data messages, is not effective. Id.
`
`We are not persuaded by Spherix's argument that Figa does not disclose a base station. As discussed above, in one of Figa's
`preferred embodiments, the call number display system is implemented within a portable telephone console. Ex. 1004, 4:12-14.
`The telephone system, as shown in Figure 2 of Figa (reproduced previously), has console 24 (a base station) and hand receiver
`28 (a handset). VTech submits that it would have been obvious to combine Figa's system with Martensson's cordless handset.
`Pet. 45. Therefore, the combination of Figa and Martensson would have a base station and a cordless handset.
`
`We also are not persuaded by Spherix's argument that Figa fails to incorporate Doughty's disclosure concerning the protocol
`for transferring data messages. Figa discloses a telephone interface, at the base station, having various control and monitoring
`circuits that are common to ordinary touch tone telephones. Ex. 1004, 6:12-17, Fig. 3 (Sheet 3 of 3). According to Figa, the
`telephone interface includes a filter and demodulator circuit that is used for demodulating a 300 baud rate of incoming serial data
`stream using the technique of Frequency Shift Keying. Id. at 6:21-25. Data received by the filter and demodulator circuit include
`data representing the incoming telephone number. Id. at 6:25-27. As VTech points out (Pet. 47), Figa discloses that “[t]he actual
`protocol necessary for this circuit is described in U.S. Pat. No. 4,582,956 [Doughty (Ex. 1014)] and is herewith incorporated
`by reference.” Ex. 1004, 6:27-30. Therefore, Figa indicates sufficiently that the subject matter that is being incorporated by
`reference pertains to the protocol for receiving data messages, including the incoming telephone number. Ex. 1004, 6:12-30.
`
`Figure 3 of Doughty, reproduced below, depicts the format of a typical data message:
`
`
`
`MESSAGE FORMAT
`
`As shown in Figure 3 of Doughty, the last character of a typical data message is checksum character 304, which allows the
`system to test the data message and confirm its validity. Ex. 1014, 4:10-30. In addition, Figa's system utilizes the Automatic
`Number Identification service offered by the telephone company. Ex. 1004, 3:47-50. Bellcore Technical References (Exs. 1012,
`1013)--which set forth the Caller Identification standards at the time of the invention, including the protocols for data transfer--
`also discloses data message formats having a checksum character for reliable error detection. Ex. 1012, 5-6, Figs 1-2. Therefore,
`a person with ordinary skill in the art would have appreciated that Figa, which effectively incorporated the relevant disclosure
`of Doughty by reference, discloses a checksum protocol for receiving data messages, including the incoming telephone number.
`
`*11 Based on the evidence in the present record, we determine that VTech has established sufficiently, for purposes of this
`Decision, that the combination of Figa and Martensson renders obvious testing the caller identification data at the base station
`to confirm its validity, as required by the claims at issue.
`
`Concurrently transmitting alphanumeric data and commands
`
`Claim 1 recites “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.” Ex. 1001, 13:1-4. Claims 2-13 also require
`this limitation, as each of these claims depends ultimately from claim 1. Furthermore, independent claims 17 and 18 each require
`a similar claim limitation.
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`VTech's asserted ground relies upon the combination of Figa and Martensson collectively to disclose a telephone system that has
`a cordless handset and a base station. Pet. 44-52. As VTech points out (Pet. 4-6), Martensson discloses a cordless handset having
`a display and keypad. Ex. 1002, 1:43-63. The keypad has two sets of keys: (1) alphanumeric keys for dialing telephone numbers
`and entering alphanumeric data into the telephone memories; and (2) function keys for enabling predetermined functions or
`operations. Id.
`
`Spherix counters that none of the cited references, alone or in combination, discloses the claim element “concurrently
`transmitting the keyed alphanumeric data and commands [from the cordless handset] to the base station.” Prelim. Resp. 26-27.
`In particular, Spherix alleges that Figa does not disclose a cordless handset, and Martensson's cordless handset does not
`contain a keypad capable of generating alphanumeric data. Id. at 27-30. Spherix further maintains that, because the purpose
`of Martensson's invention is to replace the conventional alphanumeric keypad at the handset, Martensson teaches away from
`using a keypad to generate alphanumeric data. Id.
`
`We are not persuaded by Spherix's arguments. 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). The test for obviousness is whether the combination of references, taken as a whole, would have suggested
`the patentees' invention to a person having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`
`Furthermore, when evaluating claims for obviousness, “the prior art as a whole must be considered.” In re Hedges, 783 F.2d
`1038, 1041 (Fed. Cir. 1986). We are mindful that the “use of patents as references is not limited to what the patentees describe
`as their own inventions or to the problems with which they are concerned.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983);
`see also KSR, 550 U.S. at 420 (“The second error of the Court of Appeals lay in its assumption that a person of ordinary skill
`attempting to solve a problem will be led only to those elements of prior art designed to solve the same prob