       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

            SPHERIX INCORPORATED,
                   Appellant

                           v.

JOSEPH MATAL, PERFORMING THE FUNCTIONS
  & DUTIES OF THE UNDER SECRETARY OF
 COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
                 OFFICE,
                 Intervenor
           ______________________

                      2016-1790
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01431.
                 ______________________

                Decided: July 25, 2017
                ______________________

   Gregory J. Gonsalves, The Gonsalves Law Firm, Falls
Church, VA, argued for appellant. Also represented by
Donald Puckett, Nelson Bumgardner PC, Fort Worth, TX.

    Nathan K. Kelley, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
2                           SPHERIX INCORPORATED   v. MATAL



intervenor. Also represented by Thomas W. Krause, Lore
A. Unt, Amy J. Nelson.
                 ______________________

    Before MOORE, O’MALLEY, and HUGHES, Circuit Judges.
O’MALLEY, Circuit Judge
    Appellant Spherix Incorporated (“Spherix”) appeals
from the final written decision of the Patent Trial and
Appeal Board (“the Board”), which concluded that claims
1-7 and 18 of U.S. Patent No. 5,581,599 (“the ’599 patent”)
are obvious and therefore unpatentable under 35 U.S.C.
§ 103.   VTech Commc’ns, Inc. v. Spherix Inc., No.
IPR2014-1431, 2016 Pat. App. LEXIS 1099 (P.T.A.B. Feb.
3, 2016) (“Final Decision”). For the reasons explained
below, we affirm.
    Spherix owns the ’599 patent, which relates to a tele-
phone system having an interactive cordless telephone
handset and an associated base station. The patent
explains that “[c]ordless telephones have proven to be
popular in domestic, business and industrial environ-
ments due to their unrestricted freedom of movement.”
’599 Patent, col. 1 ll. 12-14. It also acknowledges that
displaying and storing names and telephone numbers at
the base station was known in the art. Id. at col. 1 ll. 26-
33. According to the ’599 patent, however, cordless tele-
phone handsets did not have a full-functioning alphanu-
meric display, which meant that the handset had limited
functional capabilities. Id. at col. 1 ll. 37-42. The ’599
patent therefore sought to provide a digital data display
in the cordless handset. Id. at col. 1 ll. 50-53.
    The claims of the ’599 patent describe a method for
displaying data on the alphanumeric display of a cordless
handset in “user-interactive radio communication with an
associated base station of a cordless telephone terminal”
which is in communication with a telephone exchange.
Id. at col. 12, ll. 57-62. Representative claim 1 recites a
SPHERIX INCORPORATED   v. MATAL                          3



number of steps in the method, including, in relevant
part: (1) “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”; and (2) “enabling second
processor means at the base station for receiving the
alphanumeric data and commands, retrievably storing the
data in the first submemory of the base station and oper-
ably responding to the commands.” Id. at col. 13, ll. 1-10.
    VTech Communications, Inc. and Uniden America
Corporation (collectively, “Uniden”) filed a petition for
inter partes review (“IPR”) of the ’599 patent asserting
that claims 1-7 and 18, among others, were invalid as
obvious. At that time, the parties had already submitted
their respective claim construction arguments in a related
district court proceeding in the United States District
Court for the Northern District of Texas. In its petition
for IPR, Uniden adopted the claim constructions Spherix
submitted to the district court. Specifically, Uniden
agreed with Spherix that the terms “first processor
means,” “second processor means,” and “concurrently
transmitting the alphanumeric data and commands,”
should be construed according to their plain and ordinary
meaning. VTech Commc’ns, Inc. v. Spherix Inc., No.
IPR2014-1431, 2015 WL 981677, at *4 (P.T.A.B. Mar. 3,
2015) (“In its Petition, VTech adopts the claim construc-
tions 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.”). At that time, both parties
agreed that the processor means elements should not be
construed as means-plus-function limitations. Id.
    The Board instituted review. In its institution deci-
sion, the Board employed the petitioner’s proposed claim
construction and found a reasonable likelihood that
Uniden would prevail in challenging claims 1-7 and 18 of
the ’599 patent as obvious in light of two prior art refer-
4                            SPHERIX INCORPORATED    v. MATAL



ences: (1) U.S. Patent No. 4,924,496 (“Figa”); and (2) U.S.
Patent No. 6,349,212 (“Martensson”).
    After institution, the district court issued its claim
construction order in the related proceedings. In that
order, the district court construed the first and second
processor means as means-plus-function limitations and
identified the corresponding structure from the specifica-
tion. Spherix, Inc. v. VTech Telecomms., No. 3:13-cv-3494,
2015 WL 9311489, at *18, *22 (N.D. Tex. Mar. 19, 2015).
In its patent owner response following institution,
Spherix urged the Board to adopt the district court’s
constructions. Spherix argued that: (1) the petition was
deficient for failing to identify the specific portions of the
specification that describe the corresponding structure;
and (2) when the processor means are compared to Figa
and Martensson, it is clear that the structural limitations
are missing from the combination of the prior art refer-
ences. Uniden timely responded, and the Board held an
oral hearing where Spherix maintained that the district
court’s means-plus-function analysis should control.
    The Board issued a final written decision finding
claims 1-7 and 18 of the ’599 patent unpatentable as
obvious over the combination of Figa and Martensson.
Final Decision, 2016 Pat. App. LEXIS 1099, at *66. First,
the Board declined Spherix’s request to hold the petition
defective for failure to treat the processor means limita-
tions as means-plus-function limitations. Id. at *23-24.
The Board explained that it was reasonable for Uniden to
treat the processor means elements as non-means-plus-
function limitations when it filed the petition because
Spherix—the patent owner—had done so in the district
court proceeding. Id. at *24. The Board indicated, how-
ever, that its patentability determination with respect to
SPHERIX INCORPORATED   v. MATAL                            5



the processor means elements was the same, regardless of
which claim construction applied. Id. at *24-25. 1
    Although Uniden did not identify the specific corre-
sponding structures in its petition, Spherix’s expert
testified in the district court proceeding that “an ordinari-
ly skilled artisan nevertheless would have been able to
derive the corresponding structures from the claim lan-
guage itself, including the structural components recited
in the preamble.” Id. at *51. The Board determined that
“the corresponding structures for performing the recited
functions of the ‘processor means’ claim elements, as
construed by the District Court, are no more than combin-
ing known elements according to their established func-
tions, yielding predictable results.”          Id. at *53.
Accordingly, the Board stated that, even if it 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 cord-
less telephone system, in view of Figa and Martensson.”
Id. at *54.
    Turning to the “concurrently transmitting” limitation,
the Board expressly adopted the district court’s plain and
ordinary meaning construction. Id. at *21. Applying that
construction, and viewing Martensson as a whole, the
Board held that the “concurrently transmitting” element
was obvious. Specifically, the Board found that “the local
microprocessor and other features of the cordless handset
[of Martensson] are enabled to display the keyed alpha-
numeric data on the display screen and to transmit con-
currently the keyed alphanumeric data and commands to


    1   The Board also noted that it “discern[ed] no incon-
sistency between [its] determination of the patentability
issues in dispute here and the District Court’s claim
constructions.” Id. at *10.
6                            SPHERIX INCORPORATED   v. MATAL



the base station, as required by the claims at issue.” Id.
at *47. Finally, the Board found that the combination of
Figa and Martensson disclosed every limitation of the
claimed telephone system, and that there was ample
motivation to combine the two references. Id. at *56-58.
     Spherix timely appealed, arguing that it did not re-
ceive proper notice of the Board’s means-plus-function
claim construction and analysis. Spherix also argued that
the Board: (1) did not demonstrate that the processor
means elements are obvious because it failed to address
many components of the corresponding structure;
(2) failed in its construction of “concurrently transmit-
ting”; and (3) failed to explain why one of ordinary skill in
the art would have been motivated to combine Figa and
Martensson to achieve the claimed invention. After the
parties fully briefed the appeal, Uniden filed an unop-
posed motion to withdraw as appellee pursuant to a
settlement agreement. We granted that motion, and
notified the PTO of Uniden’s withdrawal. Spherix contin-
ued to pursue its appeal, and we held oral argument in
March 2017.
    After oral argument, we asked the PTO to intervene
to submit supplemental briefing addressing specific
questions relating to whether the Board construed the
processor means limitations as means-plus-function
limitations and, if so, whether the Board satisfied its
obligations in doing so. The PTO intervened, arguing that
the Board construed the processor means limitations as
means-plus-function limitations in the alternative. The
PTO conceded that, where the Board construes a limita-
tion as means plus function, the final written decision
must explain what aspects of the prior art teach or sug-
gest the corresponding structure and its path must be
reasonably discernable. The PTO explained that here,
however, the Board did not reach a conclusion as to
whether the processor means limitations should be con-
strued as means-plus-function limitations or as non-
SPHERIX INCORPORATED   v. MATAL                           7



means-plus-function limitations because it found that the
claims would have been obvious under either construc-
tion. According to the PTO, the Board’s explanation and
citations to the record reveal that the structures corre-
sponding to the processor means limitations would have
been obvious in light of Figa and Martensson, the level of
skill in the art, and the admissions of Spherix’s expert.
    Spherix sought and obtained leave to file a reply to
the PTO’s brief. Therein, Spherix maintained that the
Board improperly changed its claim construction and that
its obviousness decision failed to address many of the
components that comprise the structure corresponding to
the processor means.
    After careful consideration and with the benefit of
both oral argument and the parties’ supplemental brief-
ing, we conclude that substantial evidence supports the
Board’s obviousness determinations. At the outset, we
find that Spherix had adequate notice of the Board’s
alternative means-plus-function construction and analysis
because Spherix itself introduced that construction follow-
ing institution and argued that it should apply. The
Board was therefore within its discretion to conduct a
means-plus-function analysis of the processor means
claim elements. In doing so, the Board pointed to expert
testimony that one of skill in the art would have been able
to derive from the claims alone the structures for perform-
ing the corresponding functions. Final Decision, 2016
Pat. App. LEXIS 1099, at *51. And Spherix’s expert
testified that a person of skill in the art would have
known that those structures could be used to perform the
functions identified. Admittedly, the Board’s decision
could have been more detailed, and it would have been
preferable if the Board had chosen only one construction
to employ in its reasoning. We conclude, however, that
the Board sufficiently pointed to those aspects of the prior
art and expert testimony that suggest the structures
corresponding to the claimed functions. In doing so, the
8                           SPHERIX INCORPORATED   v. MATAL



Board adequately explained its findings under its alterna-
tive means-plus-function construction, which we find to be
the correct construction in this case. Substantial evidence
therefore supports the Board’s determination that the
“processor means” elements would have been obvious.
    Substantial evidence also supports the Board’s con-
clusion that Figa and Martensson render the “concurrent-
ly transmitting” element obvious.      In reaching this
conclusion, we find no error in the Board’s plain and
ordinary construction of the term “concurrently transmit-
ting alphanumeric data and commands.” And we con-
clude that substantial evidence, including unrebutted
expert testimony, supports the Board’s determination
that there was a sufficient motivation to combine Figa
and Martensson.
    We have considered Spherix’s remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, we affirm the Board’s decision.
                      AFFIRMED
