Spherix Incorporated v. Matal
703 F. App'x 982
| Fed. Cir. | 2017Background
- Spherix owns U.S. Patent No. 5,581,599, claiming a cordless telephone system with an alphanumeric handset display and processor elements that interact with a base station.
- Uniden (VTech) petitioned for inter partes review (IPR) challenging claims 1–7 and 18 as obvious over prior art Figa and Martensson, adopting claim constructions Spherix had used in district court (treating processor elements as ordinary-language, not means-plus-function).
- The Board instituted IPR under the petitioner’s constructions, later issued a final decision finding the challenged claims obvious over Figa and Martensson, and analyzed the processor elements both as non-means-plus-function and alternatively as means-plus-function.
- After institution, the district court construed the processor elements as means-plus-function and identified corresponding structure in the specification; Spherix urged the Board to adopt that construction and argued the petition was deficient for not identifying corresponding structure.
- The Board concluded that the processor structures were essentially combinations of known elements performing their established functions (predictable results), that Martensson disclosed the ‘‘concurrently transmitting’’ limitation, and that there was motivation to combine Figa and Martensson; it thus found claims unpatentable as obvious.
- On appeal, Spherix argued lack of notice of the Board’s means-plus-function analysis and asserted the Board failed to identify or analyze many components of the corresponding structure; the PTO intervened arguing the Board’s alternative analysis satisfied its obligations. The Federal Circuit affirmed.
Issues
| Issue | Spherix’s Argument | Uniden/PTO Argument | Held |
|---|---|---|---|
| Whether Spherix received adequate notice that the Board would apply a means-plus-function construction to the "processor means" terms | Board changed construction after institution; Spherix lacked notice and was prejudiced | Spherix itself had adopted the means-plus-function construction post-institution in district-court briefing; Board acted within discretion | Adequate notice existed; Board may analyze alternative constructions because Spherix introduced that construction |
| Whether the Board satisfied its obligation to identify corresponding structure and explain how prior art discloses it under means-plus-function rules | Board failed to address many components of the claimed corresponding structure; its explanation was insufficient | Board cited expert testimony and prior-art disclosures showing a skilled artisan could derive the structures; alternative analysis supported obviousness | Substantial evidence supports the Board’s identification/analysis; Board adequately pointed to prior art and expert testimony |
| Construction and application of the "concurrently transmitting" limitation | Term requires a narrower construction; Board erred in its application | Plain and ordinary meaning applies; Martensson as a whole discloses concurrent display and transmission | Board’s plain-meaning construction and finding of disclosure in Martensson upheld |
| Motivation to combine Figa and Martensson to reach claimed invention | Board did not adequately explain why a skilled artisan would combine the references | There was ample motivation and unrebutted expert testimony supporting combination | Substantial evidence supports a motivation to combine; obviousness affirmed |
Key Cases Cited
- Williamson v. Citrix Sys., 792 F.3d 1339 (Fed. Cir. 2015) (principles governing means-plus-function claim construction and requirement to identify corresponding structure)