• Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentable
  PTAB · Oct 8, 2026 · IPR2025-00711 · APJ Linda E Horner · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 are unpatentable as obvious over Kelly, Kelly and Paulsen, or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art There is no evidentiary dispute about the level of ordinary skill in the art.7 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 12 (citing Ex. 1003 ¶¶ 100–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’164 patent Specification and the asserted prior art references, based on our review of the record.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner argues that it is not necessary for the Board to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that “[t]he Board need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Resp. 8–9. Patent Owner notes, however that “it has relied on the plain meaning of ‘frequency of play’ in Claim 7.” Id. at 9. We agree that no explicit claim construction is necessary for this decision because, even were we to adopt Patent Owner’s proffered plain meaning of “frequency of play,” Petitioner has demonstrated that the prior art renders obvious this claim limitation. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Patent Owner does not contest Petitioner’s showing that Kelly renders obvious the subject matter of claims 1, 2, 4–6, 11–13, 15, 19, 23, 24, and 29. Resp., passim; Tr. 50:4–13.8 We have reviewed Petitioner’s arguments and 8 Patent Owner argued in its Preliminary Response that Kelly does not disclose limitations [1.c.iii] and [1.c.v]. Prelim. Resp. 10–12. In our Institution Decision, we did not find these contentions persuasive based on the initial record. Dec. 20–24. Patent Owner has not presented these or any other arguments contesting Ground 1 as to claim 1 in its Response. Resp., the evidence and, based on that analysis, we find that Petitioner has shown by a preponderance of evidence that Kelly renders obvious the subject matter recited in these claims.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “and Paulsen render obvious claims 2 and 4. Pet. 36–40. Petitioner submits that to the extent Kelly’s player account is not player’s club information or information on non-cash amounts, a person having ordinary skill in the art would have been motivated to implement these features based on the teachings of Paulsen. Id. Specifically, Petitioner asserts that Paulsen teaches player tracking cards and player tracking programs including player tracking points. Id. at 38–40 (citing Ex. 1007 ¶¶ 8, 9, 49). Petitioner argues that a person having ordinary skill in the art would have been led to add these features to Kelly’s system to provide a more detailed view of tracking play, which would allow for rewarding patronage and engagement. Id. at 36–37, 39–40 (citing Ex. 1003 ¶ 264; Ex. 1007 ¶ 10). Paulsen discloses a “gaming machine bonusing method utilizing a player tracking card.” Ex. 1007, code (54). Paulsen discloses that player tracking programs and player tracking cards were used in the art to provide rewards, or “comps,” to players based on the player’s level of patronage (e.g., to the player’s playing frequency and/or total amount of game plays at a given casino). Id. ¶ 8. These rewards were intended to maintain a player’s interest in additional game play during a visit and provide loyalty incentives to players. Id. at ¶ 9.” slip op. at 29

  Patent outcomesUS 11,335,164 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 11,335,164
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37

  Patent outcomesUS 11,265,404 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Intuit Inc. v. Samesurf, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63

  Patent outcomesUS 9,185,145 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,185,145
• ZF North America, Inc. / ZF Active Safety US Inc. v. Stoneridge Control Devices, Inc.All claims unpatentable
  PTAB · Jun 12, 2024 · IPR2023-00273 · APJ Scott C Moore · IPR · Final written decision

  Claims 5, 7, 8, 14–19, 24, and 25 are unpatentable under §103 over the grounds decided; the motion to exclude was denied in part and dismissed in part.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties agree that one skilled in the relevant art would have had a bachelor’s degree in a relevant engineering discipline, plus at least two years of experience with what each believes to be the relevant technology. Though Patent Owner objects to explicitly listing a bachelor’s degree in electrical engineering as a qualifying educational background, its proposed formulation includes open-ended language (i.e., “or a similar discipline”) that is broad enough to encompass electrical engineering degrees. Patent Owner also concedes that Dr. Lequesne, who has a bachelor’s degree in electrical engineering, is qualified to give testimony from the perspective of one of ordinary skill in the art. See Hrg. Tr. 36:9–21. Accordingly, it does not appear that there is a substantive dispute regarding the educational requirements that is relevant to this proceeding. As to the necessary experience, Petitioner correctly points out that “most” claims of the ’415 Patent do not recite isolators or require attenuation or damping. Pet. Reply 23. However, the challenged independent claims (claims 5, 8, 16, and 17) all recite at least an isolator with a damping coefficient, and the ’415 Patent repeatedly mentions noise attenuation as being a goal of the claimed invention. See, e.g., Ex. 1001, 1:53–55, 5:33– 56. Patent Owner’s proposal also uses the disjunctive “or,” and thus is broad one or more of vibration isolation, vibration damping, or noise attenuation. On this record, we adopt Patent Owner’s proposal, and determine that one of ordinary skill in the art to which the ’415 Patent pertains would have had a bachelor’s degree (or equivalent) in mechanical engineering, automotive engineering, or a similar discipline, and at least two years of experience with vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems. We find that this formulation is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355. We note, however, that none of the issues in this case appears to turn on differences between the parties’ proposed formulations, and that all of the findings and conclusions set forth below would have remained the same had we instead adopted Petitioner’s proposed formulation. C.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “We begin our analysis of this dispute by looking at the language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In so doing, we note that Patent Owner is correct in asserting that certain claims recite a vibration isolator disposed between a sub-frame and an actuator housing. See Ex. 1001, Claims 16, 17; PO Resp. 17. Other challenged claims, however, do not contain any limitations that pertain to an actuator housing. See Ex. 1001, claims 5, 7, 8. Patent Owner’s proposed construction, thus, would incorporate new limitations pertaining to an actuator housing into at least claims 5, 7, and 8. Next, we turn to the specification. See Vitronics, 90 F.3d at 1582. In so doing, we note that it is generally improper to incorporate limitations from the specification into the claims because 35 U.S.C. § 112 “requires that the claims themselves set forth the limits of the patent grant, [and] also definitions of terms to the exact representations depicted in the embodiments.” Phillips, 415 F.3d at 1323. There are, of course, exceptions. A specification may contain a “special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). But any such special definition must “clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (quoting Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)). The specification also may “reveal an intentional disclaimer, or disavowal of claim scope by the inventor.” Phillips, 415. F.3d at 1316. But any such disclaimer “must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006). Patent Owner is correct in its assertion that the specific embodiments disclosed in the ’415 Patent specification have separate sub-frames and actuator housings. See PO Resp. 16–17 (citing Ex. 1001, 4:44–54, 6:36–54). But the specification also makes clear that the applicant intended for these embodiments not to be construed as limiting the scope of the claims. See Ex. 1001, 8:36–42 (clarifying that the disclosed embodiments “are set forth here by way of illustration but not of limitation”). Patent Owner identifies nothing in the specification that rises to level of a definition or clear and intentional disclaimer or disavowal of claim scope, and we see no such definition or disclaimer in the specification. Patent Owner’s reliance on In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017), is also misplaced. In re broadest reasonable interpretation standard—a standard that does not apply in this case. See id. at 1381–82. Moreover, the claim construction at issue in Smith was so broad that the Federal Circuit characterized it as “generic.” See id. at 1382. Here, the parties agree that the claim term sub-frame has a specific meaning: a frame for a sub-assembly. See PO Resp. 16; Pet. Reply 13; Hrg. Tr. 13:7–12. Nothing in Smith requires or suggests that under the Phillips standard, we must interpret the non-generic claim term “sub-frame” in a way that would incorporate new limitations pertaining to an actuator housing into claims that do not even mention an actuator housing.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We decline to find Dr. Lequesne less credible based solely on his electrical engineering degree and relative level of experience with noise vibration and damping. As noted above, Patent Owner does not dispute that Dr. Lequesne is qualified to give testimony from the perspective of one of ordinary skill in the art. Petitioner asserts, and Patent Owner does not dispute, that “Dr. Lequesne has spent his 40-year career as a designer in the automotive industry, has worked on EPBA [electronic parking brake actuators and NVH [noise, vibration, and harshness].” Pet. Reply 24 (citing Ex. 1002 ¶¶ 7–9; Ex. 2007, 10:6–17, 11:21–16:3, 20:3–31:8; Ex. 1023). On this record, we find Dr. Lequesne qualified to provide expert testimony on the subject matter of the challenged claims of the ’415 Patent and asserted prior art references because he has a degree in electrical engineering, which is a “similar discipline,” and at least two years of experience with “vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems.” See supra § III.B; Ex. 1002 ¶¶ 4–12 (outlining Dr. Lequesne’s education and experience); Hrg. Tr. 36:9– 21 (Patent Owner’s counsel conceding that Dr. Lequesne is qualified to provide expert testimony). In judging the credibility of competing witnesses, we have weighed their testimony, taking into account the witnesses’ different educational qualifications and experiential backgrounds as they pertain to the ’415 Patent, as well as whether the witnesses offer corroboration for their opinions, and whether those opinions are consistent with the ’415 Patent, the prior art, and their cross-examination testimony. E.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We agree with Petitioner that Patent Owner’s purported evidence of copying, industry praise, and commercial success lacks nexus to the claimed invention. To show that the accused devices at issue, i.e., the purportedly copied, praised, and commercially successful products sold be Petitioner, are coextensive with at least one independent claim of the ’415 Patent, Patent Owner relies on the claim charts shown in Exhibit 2016. PO Resp. 62; Ex. 2005 ¶¶ 163–166. Patent Owner identifies those charts as “Exhibits A and B from Patent Owner’s Infringement Contentions, served in Stoneridge Control Devices, Inc. v. ZF North America, Inc. et al., U.S. District Court for the Eastern District of Michigan, Case No. 2:22cv10289.” Id. at viii. As such, the claim charts are apparently attorney argument summarizing Patent Owner’s allegations in the district court, not substantive evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Patent Owner’s attempt to challenged claims also constitutes an improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); PTAB Consolidated Trial Practice Guide 35–36; Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014) (informative). Moreover, Dr. Stein’s declaration lacks any explanation or analysis to support his belief that “there is a component in each of the photographed products” in the claim charts “that corresponds to each one of the claim elements,” his “overall agreement with the positions taken in the claim charts,” or his “understand[ing]” that the accused devices “in Ex. 2016 are co-extensive in scope with the ’415 Patent.” Ex. 2005 ¶¶ 163, 166. Dr. Stein’s declaration merely repeats, in conclusory fashion, that there is a nexus between the accused devices and the claimed invention, and is thus insufficient to establish a nexus. See Bosch Auto. Serv. Sol., LLC v. Matal, 878 F.3d 1027, 1037 (Fed. Cir. 2017) (“As the Board recognized, however, the Pierce declaration lacks any explanation or analysis to support his asserted ‘understand[ing]’ that these commercial reset tools are covered by, or coextensive with, the claims of the ’796 patent. The Board permissibly concluded that this conclusory testimony lacks foundation.”); In re Cree, Inc., 818 F.3d 694, 703–04 (Fed. Cir. 2016) (“We agree with the Board that Dr. Brandes’ declaration merely repeats, in conclusory fashion, that there is a nexus between the success of white LEDs and the claimed invention.”). Patent Owner has thus failed to make a sufficient showing to establish a presumption of nexus. its secondary considerations evidence is a direct result of the unique characteristics of the claimed invention. For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing copying, industry praise, and commercial success is entitled to little weight in our obviousness analysis because Patent Owner has not shown a sufficient nexus between the evidence presented and the invention claimed in any of the challenged claims. F.” slip op. at 17

  Patent outcomesUS 7,021,415 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,021,415
• T-Mobile USA v. Dali Wireless, Inc.All claims unpatentable
  PTAB · Mar 5, 2024 · IPR2023-00830 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 are anticipated by Wu; claims 6, 7, 12, and 17 are obvious over Wu and Sabat-552.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “packetize” or “packetizing” as recited in claims 2, 9, and 14. PO Resp. 19– 20; Pet. Reply 5–6. Patent Owner argues that we should construe “packetize” to mean “create data packets that include destination information.” PO Resp. 19–20. Patent Owner argues that this is consistent with how the Board previously interpreted this claim term in the 00571 IPR. PO Resp. 19 (citing Ex. 1017). We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 22

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1016. Thus, issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1014. 2. Collateral Estoppel With Respect to the 00571 IPR We find and determine that the final written decision in the 00571 IPR, and the Federal Circuit’s CommScope decision affirming that decision, satisfies the conditions for applying collateral estoppel because the 00571 discloses materially the same claim limitations7 challenged here, and Patent Owner had full representation throughout the proceedings. Setting aside the factors of issue preclusion for a moment, our reviewing court’s affirmance of our final written decision in CommScope is persuasive authority that supports our prior construction of “packetizing” and Petitioner’s showing that Wu teaches the disputed packetizing limitations under that construction. In addition, issue preclusion prevents Patent Owner from re-litigating the issue of whether Wu teaches materially the same disputed limitation. See Pet. Reply 24; Ex. 1017, 31–34 (final written decision determining obviousness of claims 9, 10, 14, and 16 of the ’473 patent over Wu and Sabat-426); Ex. 1072, 5 (summarizing the final written decision regarding the packetizing limitations), 10–16 (finding no error in the determinations regarding the packetizing limitations).” slip op. at 12

  Patent outcomesUS 10,334,499 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,499
• T-Mobile USA v. Dali Wireless, Inc.All claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01293 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–5, 8–11, 13–16, 18, and 19 as anticipated by and obvious over Wu; claims 6, 7, 12, and 17 as obvious over Wu and Sabat-552.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have a bachelor’s degree in electrical engineering (or equivalent field) with 2–3 years of work experience in wireless communications.” Pet. 21 (citing Ex. 1003 ¶¶ 20–22). Patent Owner argues that one of ordinary skill in the art “would have an educational background in electrical engineering and experience in the design of wireless communication systems,” and “[m]ore particularly, a POSA would be a person with a bachelor’s degree in electrical engineering (or a similar technical degree or equivalent work experience) and at least 3 years of experience working with wireless communication systems.” PO Resp. 13. We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 20–21. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “a . . . set of radio resources” encompasses user payload data packaged in or combined with RF carrier channels. We further conclude that “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 22

  Patent outcomesUS 10,334,499 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,499
• AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentable
  PTAB · Mar 5, 2024 · IPR2023-00818 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institution of inter partes review of claims 1–19 (“the challenged claims”) of U.S. Patent No. 10,334,499 B2 (Ex. 1001, “the ’499 patent”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Ericsson filed a Preliminary Reply (Paper 9). We determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and therefore we instituted this proceeding on March 9, 2023, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”). We granted a request in IPR2023-00831 by AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC to be joined as a Petitioner in this proceeding. Paper 19. After a joint request of Patent Owner and Ericsson, we terminated the proceeding as to Ericsson, leaving AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (“Petitioner”) as the lead (and sole) petitioner in this proceeding. Papers 16, 17, 20.” slip op. at 2

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1004. Thus issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1005.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units. As Petitioner argues, there does not appear to be any indication in the specification and other intrinsic evidence that “digital representation” should be given more than its ordinary meaning, or that an underlying construction of “radio resources” would not be applied to this claim term, which explicitly includes “radio resources.” Pet. Reply 9–10 (citing Ex. 1001, representation” in the specification of the ’499 patent). Our construction is further supported by the language of the claims, which requires that each “set of radio resources” is “for transmission at an antenna of the first remote unit.” Ex. 1001, 14:17–19, 14:22–24, 15:3–5, 15:8–10, 16:6–8, 16:11–13. With respect to the “digital representation” of “set[s] of radio resources,” the specification of the ’499 patent describes that in the downlink (base station to DRU antenna) path for data, RF signals received at the DAU from base station(s), are down-converted, digitized, and further processed resulting in “independently serialized, parallel data streams” that are delivered to DRUs. Ex. 1001, 4:63–5:12. Petitioner contends that this description of delivery of a digitized version of an RF signal to DRUs describes the sending/transmission of a digital representation of the radio. Pet. 9–10. While Patent Owner appears to argue that a “digital representation” of a radio resource would be only an “identifier” of, e.g., an RF carrier (PO Resp. 18), this does not appear to be supported by the specification or the cited testimony of Dr. Chrissan. We do not see a reason to relate “digital representation of . . . a set of radio resources” in the claims to the description in the ’499 patent specification of the remote configuration of DRU parameter settings via the DAU, including detecting or determining radio resources assigned to a DRU and configuring the DRU, turning on and off individual carriers transmitted and received by a DRU. PO Resp. 16–18 (citing Ex. 1001, 4:50–62, 6:31–44, 7:44–50, 12:15–39, 12:58–13:2). No cited portion of the specification describes these signals sent from a DAU to control a DRU as digital representations of a set of radio resources. While Patent Owner cites, in support, Dr. Chrissan’s declaration, Dr. Chrissan does” slip op. at 16

  Patent outcomesUS 10,334,499 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,499
• AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentable
  PTAB · Mar 5, 2024 · IPR2022-01419 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner

    “When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 8–9. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19

  Patent outcomesUS 10,334,499 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,334,499
• Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentable
  PTAB · Sep 20, 2023 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Petitioner replies that the specification of the ’926 patent explicitly defines the term “gaming account”— As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s 6 Petitioner mistakenly cites Ex. 1002, 7:28–32, but the location of the material in the ’926 patent is apparent from a cursory review. Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’926 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe using the gaming account to capture spending behavior in non-gaming environments. Id. (citing Ex. 1002, 15:12–16:64). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’926 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 7:39–43. Patent Owner does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Patent Owner’s attempt to import concepts from the embodiment illustrated in Figure 8 into the meaning of “gaming account.” C. Level of Ordinary Skill” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “At the outset, we note that Patent Owner’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.7 We also note that Patent Owner does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 7 Patent Owner acknowledged as much during the oral hearing. See Tr. 40:24–41:13. 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Petitioner challenges claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 as obvious in view of Smith. Pet. 11–49. Patent Owner does not contest Petitioner’s showing for most of the limitations recited in independent claims 1, 8, and 14 or dependent claims 2, 5, 7–10, 13–17, and 20. We address each contested limitation in the independent claims and dependent claims 4, 12, and 19 below. For all limitations that are not expressly contested by Patent Owner, we find that Petitioner’s showing is persuasive based on the arguments set forth in the Petition and the evidence cited in support of those arguments. For the reasons expressed below, we conclude that Petitioner has proven by a preponderance of evidence that Smith renders claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 unpatentable as obvious.” slip op. at 19

  Patent outcomesUS 9,785,926 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,785,926
• Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentable
  PTAB · Sep 20, 2023 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “To prevail in its challenges to the patentability of the claims, Petitioner must establish unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’176 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16

  Patent outcomesUS 9,466,176 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,466,176

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.