VTech Communications Inc v. Spherix Inc

1. Case Identification

• Case #: IPR2014-01431
• Patent #: 5,581,599
• Filed: September 4, 2014
• Petitioner(s): VTech Communications, Inc., and Uniden America Corporation
• Patent Owner(s): Spherix Incorporated
• Challenged Claims: 1-13 and 17-19

2. Patent Overview

• Title: Cordless Telephone Terminal
• Brief Description: The ’599 patent discloses a cordless telephone system featuring a base station with memory and a handset with an alphanumeric display and keypad. The invention centers on methods allowing a user to access, process, and edit data—such as caller identification (CID) information and a phone directory—stored in the base station memory using the cordless handset.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 18 are obvious over Martensson in view of Figa or Schneyer.

• Prior Art Relied Upon: Martensson (Patent 6,349,212), Figa (Patent 4,924,496), and Schneyer (Patent 5,388,150).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Martensson disclosed the core elements of the challenged claims: a cordless telephone system with a base station, a handset with a display, and memory in the base station for storing a telephone directory. Martensson further taught using the handset to enter, display, and manage alphanumeric data stored in the base station's memory. However, Martensson only briefly mentioned receiving Calling Line Identification (CLI) signals. Figa and Schneyer were presented as teaching the well-known, conventional feature of storing incoming CID data in a memory log within a telephone's base station.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of Figa or Schneyer with Martensson to make a simple, predictable improvement. Adding a CID log, a common and desirable feature in telephony at the time, to Martensson’s cordless phone system represented the predictable use of prior art elements according to their established functions. Petitioner contended the references were all from the same class of products (telephones), providing a strong motivation for combination.
  • Expectation of Success: A POSITA would have a high expectation of success in this combination, as it involved integrating a standard, well-understood feature (a CID log) into a conventional cordless phone architecture to achieve a predictable result.

Ground 2: Claims 8-13, 17, and 19 are obvious over Martensson in view of Figa or Schneyer and Obata.

• Prior Art Relied Upon: Martensson (Patent 6,349,212), Figa (Patent 4,924,496), Schneyer (Patent 5,388,150), and Obata (Patent 5,251,250).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination asserted in Ground 1. Petitioner argued that claims 8-13, 17, and 19 added the functionality of comparing an incoming caller's number with numbers stored in the phone directory and, upon finding a match, overwriting the transmitted CID name with the personalized name stored in the directory. While the combination of Martensson and Figa/Schneyer provided the base system with CID and directory logs, Obata was cited for explicitly disclosing this comparison and overwrite functionality.
  • Motivation to Combine: A POSITA would be motivated to add the teachings of Obata to the system of Ground 1 to improve its functionality. This addition would provide a known benefit: displaying a more useful, user-customized name for recognized incoming callers instead of the network-provided CID name. This was a logical next step in enhancing the user experience of a CID-enabled phone.
  • Expectation of Success: The integration was straightforward, as Obata’s method for comparing and overwriting data was a known software-based feature that could be predictably implemented in the microprocessor-controlled system taught by Martensson.

Ground 3: Claims 1-7 and 18 are obvious over Schneyer in view of Martensson or Silver.

• Prior Art Relied Upon: Schneyer (Patent 5,388,150), Martensson (Patent 6,349,212), and Silver (Patent 4,882,745).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented an alternative primary reference, arguing that Schneyer alone taught most of the claimed features, including a telephone system with a display, CID data handling, a call log, and a directory. Schneyer also disclosed revising directory entries and making calls from stored numbers. Petitioner acknowledged that Schneyer did not explicitly disclose a cordless handset with a display but argued that Schneyer expressly stated its invention could incorporate a "normal handset" or "headset." To the extent this was insufficient, Martensson and Silver were cited for clearly disclosing cordless handsets with integrated displays and keypads for user interaction.
  • Motivation to Combine: A POSITA would have been motivated to combine the advanced call-management features of Schneyer with the cordless handset technology of Martensson or Silver. This would be a simple and commercially desirable addition to improve Schneyer’s system by untethering the user interface from the base station, a clear trend in telephone technology at the time.
  • Expectation of Success: Combining a known cordless handset with a known base station's feature set was a routine design choice in the field and would have yielded a predictable and successful result.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 8-13, 17, and 19 over Schneyer in view of Martensson or Silver and Obata; claims 1-7 and 18 over Figa in view of Martensson or Nishihara; and claims 8-13, 17 and 19 over Figa in view of Martensson or Nishihara and Obata, all relying on similar combination rationales.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 and 17-19 of Patent 5,581,599 as unpatentable under 35 U.S.C. §103.