- Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Jan 3, 2025 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 10, 11, 25, 27, and 30 are unpatentable under § 103 over Grotmol, Grotmol and Hickman, or Grotmol and Hoffman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 5; PO Resp. 9. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D–II.F.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner’s arguments are unavailing. Grotmol teaches that a user may train a robot to learn “simple” and “complex” tasks. Ex. 1005, 24:17– 23. The evidence of record indicates that a person of ordinary skill in the art would have known to use different trainers “to train behaviors involving different levels of complexity in order to take advantage of the varying skills and knowledge of trainers.” Ex. 1003 ¶ 341. Thus, based on Grotmol’s teaching that a robot can learn both simple and complex tasks, a person of ordinary skill in the art would have had a specific reason for different users to train Grotmol’s robot for different behaviors, namely, to benefit from the users’ varying skills and knowledge. Pet. 25; Ex. 1003 ¶ 341; Ex. 1005, 24:17–23. Grotmol also teaches that a user may train a robot “using a gamepad (or other input device . . . ).” Ex. 1005, 26:9–13; see id. at 33:18–21. The evidence of record indicates that “switching users would be as simple as handing off a gamepad or other remote device used for controlling the robot from one user to another.” Ex. 1010 ¶ 73. Neither Patent Owner nor its declarant, Dr. Eli Saber, explains specifically why handing Grotmol’s gamepad to a different user would have created “complexities of combining the mixed knowledge into a single knowledgebase” or required “identifying each user to store particular learned operations and preferences in portions of the knowledgebase for user-specific autonomous operations.” See PO Resp. 14–15; PO Sur-reply 9; Ex. 2007 ¶¶ 128–130. Thus, based on Grotmol’s teaching of using a gamepad to train a robot, it would have been simple and straightforward for different users to train Grotmol’s robot for different behaviors. Ex. 1005, 26:9–13, 33:18–21; Ex. 1010 ¶ 73.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“4. Reason to Combine Petitioner asserts that a person of ordinary skill in the art would have had reason to combine the cited teachings of Grotmol and Hickman. Pet. 27–30 (citing Ex. 1003 ¶¶ 159–166). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine Grotmol and Hickman so that Grotmol’s robots share training sets using Hickman’s shared robot knowledgebase. Id. at 30; Ex. 1003 ¶ 166. Doing so would have been obvious because Grotmol teaches sharing training sets between robots, and Hickman’s shared robot knowledgebase would facilitate wider and faster sharing of Grotmol’s training sets. Pet. 27–29; Ex. 1003 ¶¶ 160–161, 164; Ex. 1005, 33:27–32; Ex. 1007, 1:38–41, 5:41–46, 11:31–41. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Hickman’s shared robot knowledgebase with Grotmol’s robot because Hickman’s shared robot knowledgebase would “not interfere” with Grotmol’s robot. Pet. 30; Ex. 1003 ¶ 166.” slip op. at 24
Patent outcomesUS 11,055,583 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentablePTAB · Dec 12, 2024 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Final written decision
Claims 3, 6–8, and 10–18 are unpatentable; cancellation of claims 4, 5, and 9 is granted, and proposed substitute claims 21–29 are unpatentable.
RulingsFinal written decision- Expert testimonyOther
“Accordingly, we maintain our determination at the institution stage” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“f) Conclusion—Proposed Substitute Claim 21 For the reasons given, we determine that Petitioner demonstrates by a” slip op. at 111
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“g) Conclusion—Disclaimed Claim 1 For the reasons given above and the reasons presented by Petitioner,” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“4. Claim 6 Claim 6 depends from claim 3 and recites the following:” slip op. at 73
Patent outcomesUS 11,238,344 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,238,344 - Google LLC v. Nobots LLCAll claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Final written decision
Claims 3–9, 11, and 13–20 are unpatentable under §103 over the asserted prior-art combinations; claims 1, 2, 10, and 12 were disclaimed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“d) Analysis Having considered the parties’ respective positions, we conclude that Petitioner’s view as to meaning of “not denying access” is more consistent with the ’885 patent, and the record at hand, than Patent Owner’s view. In that respect, we agree that “not denying access” is “broader” than “granting access” and encompasses other possible acts in which access is not denied,” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that it is unnecessary to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 15–16. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground. Inst. Dec. 18–19.” slip op. at 39
Patent outcomesUS 10,423,885 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,423,885 - Qualcomm Incorporated v. Fedex Corporate Services, Inc.All claims unpatentablePTAB · Oct 6, 2023 · IPR2022-00585 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–33 are unpatentable as obvious: claims 1–3, 12–14, and 23–25 over Lau; claims 1–10, 12–21, and 23–32 over Lau and Buford; and claims 1, 2, 11–13, 22–24, and 33 over Ainsworth.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityOther
“FedEx filed a motion to terminate the proceeding on the ground that Qualcomm had failed to accurately identify all real parties in interest. Paper 58. We separately denied that motion (Paper 72), and this decision does not further address the issues raised in that motion.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Relying on Dr. Olivier’s testimony, Qualcomm argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least two years of experience in design, development and/or testing of hardware and software used in sensor-based networks for monitoring items, or the equivalent.” Pet. 8 (citing Ex. 1003 ¶ 23).6 Qualcomm also contends that “additional education [may] substitute[e] for experience and vice versa.” Pet. 9 (citing Ex. 1003 ¶ 23). FedEx and Dr. Mahon essentially agree with Qualcomm’s articulation of the level of ordinary skill as expressed above. See PO Resp. 30 n.2; Ex. 2201 ¶ 47. Because Qualcomm’s uncontroverted articulation of the level of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 8. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Mahon agrees. Ex. 2201 ¶ 47. ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’797 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:21–2:29 (“Technical Field” and “Background” sections of the ’797 patent, describing background knowledge about methods for tracking packages using sensor devices including radio frequency identification (RFID) systems).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Qualcomm’s interpretation of the prosecution history. Although Zhou teaches collecting only a subset of sensor data that it could have collected, it reports all data it collects. Thus, the evidence does not suggest that Zhou discloses or teaches “reporting the received sensor information to the party at a level of specificity that is less than the level of specificity of sensor information collected by a sensor.” Ex. 1001, 25:13–16. Thus, the applicant’s amendment distinguished Zhou for reasons other than what FedEx suggests, and the prosecution history does not suggest that a person of ordinary skill in the art would have understood the phrase “reporting . . . at a level of specificity” to exclude reporting a specific subset of the collected information.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Having considered the arguments and evidence of record, we find more persuasive Qualcomm’s argument that its proposed, relatively minor modification of Lau—which simply involves incorporating Buford’s validator 401 and rule maker 304 as part of Lau’s tracking server 114 and tracking database 116—would not fundamentally change Lau’s system. We agree that the access-control concepts on which Qualcomm relies from Buford would be generally applicable in both push and pull architectures. And such a modification would have been within the ordinary skill in the art at the time of the claimed invention. FedEx also argues that Qualcomm has failed to assert a sufficient obviousness rationale because it “does not articulate what Lau lacks that Buford adds.” PO Resp. 56 (citing Ex. 2201 ¶¶ 151–154; Nokia of Am. Corp. v. Oyster Optics, LLC, IPR2017-02146, Paper 40 at 46–47, 49 (PTAB Feb. 13, 2019); Cisco Sys., Inc. v K.Mizra LLC, IPR2021-00593, Paper 41 at 34 (PTAB Sept. 19, 2022); Apple Inc. v. Masimo Corp., IPR2020-01524, Paper 29 at 47 (PTAB Apr. 29, 2022). We disagree that Qualcomm is required to make such a showing. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). For the above reasons, we find persuasive Qualcomm’s argument that” slip op. at 22
Patent outcomesUS 8,766,797 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,766,797 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc v. Power2b Inc.All claims unpatentablePTAB · Jul 13, 2023 · IPR2022-00334 · APJ Barbara A Parvis · IPR · Final written decision
Claims 6–9 are unpatentable as obvious over Bird and Ishii; the Board did not reach the Geaghan and Ishii ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 32, 53–63). In our Decision on Institution, we adopted Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we declined to adopt “at least” as that language is vague and open-ended. Dec. on Inst. 14. Patent Owner proposes a different definition for one of ordinary skill in the art, but does not specifically address any deficiencies in Petitioner’s proposed definition. Resp. 20. Because Petitioner’s definition of the level of skill in the art (excluding “at least”) is consistent with the ’994 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“construction, i.e., that “an ‘input area’ is an area for input, regardless of any relationship that ‘input area’ may or may not have with a ‘display.’” Reply 2. In its opening post-hearing brief, Petitioner argues “the only issue is whether the Ishii prior art has photosensors positioned outside its ‘input area.’” Pet. Open. Br. 6. Patent Owner argues that Petitioner applies an interpretation “to create a new ‘input area’ limited to a specific portion of Ishii’s integrated display” and that interpretation is incorrect. Resp. 32. We determine that Petitioner’s Reply construction is sufficient for purposes of this Final Written Decision, and we now turn to the parties’ dispute over whether “input area” must include a display. See Realtime Data, 912 F.3d at 1375 (“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., 200 F.3d at 803)).” slip op. at 19
- Strike new argumentNew argument disregardedDecided for petitioner
“obtained from Wikipedia, which Patent Owner provides for the first time by linking to the definition in its Sur-reply. Id. at 32. Such a link constitutes new evidence, which is not allowed for a Sur-reply. See CTPG 73 (“The surreply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”). Based on our review of the complete record now before us, we are” slip op. at 49
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We also credit and give significant weight to the testimony of Dr. Bederson that one of ordinary skill in the art “would have understood that Ishii’s photosensors (red) are at the end of each optical waveguides (orange) and the optical waveguides define the extent of the input area,” as we find his testimony consistent with Ishii’s teachings. Compare Ex. 1002 ¶¶ 92, with Ex. 1010 ¶¶ 45, 51, 78, 79, Fig. 9. We also credit and give significant weight to the Dr. Bederson’s testimony that Ishii’s photosensors “are thus positioned both ‘at least partially circumscribing and immediately proximate’ and ‘outside’ the input area.” Id.” slip op. at 38
Patent outcomesUS 8,816,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,816,994 - Zynga Inc. v. IgtAll claims unpatentablePTAB · Jun 30, 2023 · IPR2022-00368 · APJ Barbara A Parvis · IPR · Final written decision
Claims 24–37 are unpatentable under § 103: claims 24, 28, 31, and 35 over Cordero alone or with Skeen; the remaining claims over Cordero and Skeen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA would have had at least a bachelor’s degree in computer science or a related field with at least two years of professional experience in the fields of networking and network-based systems or applications, such as client-server and web-based systems, in the context of gaming or an equivalent level of skill, knowledge, and experience. (Ex. 1003, ¶ 16). Additional relevant work experience may substitute for the educational background, and additional relevant educational experience may substitute for the work experience. (Id., ¶¶ 16– 17). Pet. 23. Patent Owner adopts Petitioner’s level of skill for purposes of this proceeding. Resp. 24. Based on the complete record now before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Here, Petitioner argues that “node” should be construed as “a device that is connected as part of a computer network.” Pet. 16. In its Response, Patent Owner states that it “adopts this construction for purposes of this IPR.” See Resp. 23–24. Petitioner’s construction was adopted by the district court and is consistent with the ’212 patent, which states that “[a] node is a device that is connected as part of a computer network.” Ex. 2004, 2; Ex. 1001, 14:49–50. On this record, we construe the term “node” in the same manner as the district court.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We need not expressly construe any other terms of the ’212 patent in order to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“consideration of the parties’ arguments and evidence, we agree with Petitioner’s contentions and we credit and give significant weight to the testimony of Dr. Chatterjee (see, e.g., Ex. 1003 ¶¶ 267–286) over the testimony of Dr. Wills (Ex. 2012 ¶¶ 105–126) because Petitioner’s contentions and Dr. Chatterjee’s testimony are consistent with the evidence of record. Contrary to Patent Owner’s argument that we “should reject the Petition’s motivation arguments because Cordero and Skeen teach inapposite solutions to problems that arise in networked computing systems” (Resp. 29–35) and Dr. Wills’s testimony regarding the same (Ex. 2012 ¶¶ 105–126), Cordero explains that its system allows for the use of and is applicable to “various … communication protocols.” Ex. 1004, code (57); see also id. ¶ 13 (describing “rapid” software development in which “the software developer” need not be considered with “which communication protocol will be utilized”), ¶ 24 (describing that Cordero “is directed to multi-player computer game, system and development method that facilitate multi-player game play between and among various hardware platforms employing various operating systems and communication protocols.”). Patent Owner provides various detailed arguments in support of its position (Resp. 29–35), but as Petitioner argues persuasively in its Reply (Reply 5– 13) and as discussed further herein, Patent Owner’s arguments and Dr. Wills’s testimony are not consistent with the teachings of Cordero and Skeen and fail to address the teachings of Cordero and Skeen as a whole, from the perspective of an ordinarily skilled artisan.” slip op. at 16
Patent outcomesUS 8,266,212 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,212 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc v. Power2b Inc.All claims unpatentablePTAB · Jun 15, 2023 · IPR2022-00300 · APJ John D Hamann · IPR · Final written decision
Claims 1–20 and 22 are unpatentable: claims 1, 2, 9, 10, 12, 13, 16, 18–20, and 22 over Bird and Ishii; claims 3–8, 11, and 15 over Bird, Ishii, and Geva; claims 14 and 17 …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“5. Summary We conclude that “input area” means an area for input, regardless of any relationship that input area may or may not have with a display.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“B. Combining Bird and Ishii with Geva For the reasons that follow, we find that Petitioner has established a” slip op. at 55
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“preponderance of the evidence that (i) claims 1, 2, 9, 10, 12, 13, 16, 18–20, and 22 are unpatentable over Bird and Ishii; (ii) claims 3–8, 11, and 15 are unpatentable over Bird, Ishii, and Geva; and (iii) claims 14 and 17 are unpatentable over Bird, Ishii, and Kameyama. Claim(s) 35 U.S.C. § Reference(s) Claims Claims Not /Basis Shown Shown Unpatentable Unpatentable” slip op. at 72
- BurdenNot reached
“Accordingly, we do not reach these remaining grounds. Cf. In re Gleave, 560 F.3d at 1338 (not reaching other grounds of unpatentability after affirming the anticipation ground); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (determining once a dispositive issue is decided, there is no need to decide other issues).” slip op. at 72
Patent outcomesUS 7,952,570 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,952,570 - Zynga Inc. v. IgtAll claims unpatentablePTAB · Jun 8, 2023 · IPR2022-00199 · APJ Scott A Daniels · IPR · Final written decision
Claims 28–29, 31–33, 47–50, 84–86, 90–92, and 99–100 are unpatentable as obvious over Goldberg and Olden; claims 49–50 are also obvious over Goldberg, Olden, and D’Souza.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Apart from providing the more detailed level of skill in its Petition, Petitioner does not expressly dispute Patent Owner’s asserted level ordinary skill in the art. See generally Pet. Reply. And, despite the Background of the Invention in the ’089 patent being replete with references to casinos and casino gaming, we appreciate that the ’089 patent may intend to include gaming activities not associated with any particular casino. A review of the Background and Summary of the Invention in the ’089 patent explains for example that a “desire within the gaming industry is to electronically download gaming software from one or more remote locations to a gaming machine.” Ex. 1001, 4:1–3. The ’089 patent further describes that such a gaming machine “may be a portable gaming device such as but not limited to a cell phone, a personal digital assistant, and a wireless game player.” Id. at 13:18–21. Given the information in the Background and Summary of the Invention as expressed in the ’089 patent, and because there is no express dispute as to Patent Owner’s suggested level of ordinary skill in the art, and where our Decision does not turn on one definition or the other, we correct and rely this definition in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“In our Institution Decision we adopted the constructions in the parallel district court proceeding, as proposed for this proceeding by Patent Owner. Inst. Dec. 21–22. These claim constructions are set forth in the table below.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“For the reasons below, we find Petitioner’s combination to be supported by sufficient reasoning and evidentiary underpinnings such that a person of ordinary skill in the art would have been motivated to combine Goldberg and Olden, at least because Olden expressly describes that its user entitlement and authorization system is intended to be integrated with web-based and non-web based applications and content that require “a security architecture to enable network authentication and to provide secure access control.” Ex. 1005, 1:35–36. Goldberg discloses just such a web-based application for games of chance, such as blackjack. See, e.g., Ex. 1004, 4:47–50 (Goldberg describing “using an Internet embodiment as an exemplary embodiment of the present invention, a gaming web site may be provided wherein players may access the interactive gaming capabilities of the present invention”).” slip op. at 42
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“game of chance.” Ex. 1003 ¶ 81. Mr. Crane points to additional disclosure in the ’089 patent, incorporated by reference from U.S. Patent No. 7,931,533 to LeMay, (Ex. 1013), testifying that “LeMay further confirms that a POSITA would understand that ‘gaming software’ includes ‘different game presentation software modules to change the look and feel of the game.’” Id. ¶ 85 (quoting Ex. 1013, Abstract). Based on this evidence, Mr. Crane explains persuasively that “[i]t was well known in the art as of the filing of the ’089 patent that ‘look and feel’ are primarily elements of a game’s user interface (‘UI’) or presentation.” Id. Given that the game’s UI is provided on the gaming machine so the player can interact, i.e., play the game, as a software component that provides a “look and feel” to the game, it is reasonably understood from the ’089 patent that a game UI is a software component, and consequently falls within the plain meaning of “gaming software.” See Ex. 1001, 10:63–64 (The ’089 patent describes that “[t]he gaming software may comprise one or more gaming software components.”) Because we determine, based on the ’089 patent itself, that the plain and ordinary meaning of “gaming software” encompasses game presentation software components including UI software, for the additional reasons that follow we do not find that Petitioner has mischaracterized Goldberg, and find persuasive Petitioner’s arguments and evidence that Goldberg teaches transferring of “gaming software,” e.g., a UI, in the form of CGI scripts and HTML files transferred to client nodes 318.” slip op. at 30
Patent outcomesUS 7,168,089 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,168,089 - Zynga Inc. v. IgtAll claims unpatentablePTAB · Jun 6, 2023 · IPR2022-00200 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–6, 8–14, and 16–18 are unpatentable as obvious over Aristocrat; the Board did not reach the Aristocrat–Boushy ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Inst. Dec. 15–16. Patent Owner argues that “[t]his definition should be revised to exclude reference to ‘track[ing] player information’ because it infuses within the definition a hindsight bias toward the claimed subject matter.” PO Resp. 13. Petitioner did not substantively respond to Patent Owner’s revised definition. See generally Pet. Reply. A review of the Background of the Invention in the ’064 patent explains for example that “for a variety of reasons, there is a need for systems and methods to provide information to (or otherwise communicate with) players at game machines.” Ex. 1001, 2:53–55. The primary obviousness reference, Aristocrat, describes a gaming system where “an animated character is periodically displayed to communicate information to the player, the character being arranged to appear super imposed over any game screen currently displayed at the time the character is displayed.” Ex. 1004, 2:17–21. The secondary obviousness reference, Boushy, explains that “all casinos have implemented some form of customer tracking to identify and reward their valuable customers.” Ex. 1005, 1:12–14. The prior it was known to track player betting information and to deliver a message or some type of information, such as an incentive or reward, to the player. See Ex. 1005 (Boushy describing, for example, that “each casino has its own system that tracks betting data on the casino’s customers.”). To the extent that our initial definition included a subtopic arguably corresponding to an element of the claims, e.g., “[a] gaming system comprising . . . at least one processor to . . . track information,” we agree that the definition need not specifically describe a claimed subtopic that can be appropriately addressed within the scope and content of the prior art. Ex. 1001, 75:29–40. As noted above, Petitioner does not expressly contest Patent Owner’s modification to the level of ordinary skill in the art. Given the background of the invention as expressed in the ’064 patent, we are persuaded that the level of ordinary skill in the art is as follows: [a] POSITA in the technology field of the ’064 patent would have had a bachelor’s degree in computer science or a similar discipline and 2 years of professional programming experience in the gaming software industry. This POSITA would be aware of and generally knowledgeable about casino gaming systems as of the priority date for the ’064 patent, including the networks connecting various casino gaming machines and the manner in which casino gaming machines provide information to (or otherwise communicate with) players at game machines.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Claim 1 recites for limitation (c) that “a message trigger condition occurs in association with the identified player,” and for limitation (d), “the message trigger condition occurs in association with the identified player.” Ex. 1001 75:42–52 (emphasis added). Considering initially the claim language, there is no express relative time dependency as to when the first and second messages occur, nor is there any temporal limitation in the claims as to when the same condition occurs. The claim language only recites that the “message trigger condition occurs,” not that the two potential trigger conditions occur at the same time. As Petitioner points out, claim limitations 1(c) and 1(d), which both begin with “if” are independent limitations, and “the message trigger condition,” in limitation 1(d) is not required to occur at the same time as “a message trigger condition” in limitation (c). Claim 1 just requires the same “condition, e.g., the end of game condition” to occur when both conditional limitations are met. In fact, the two conditional “if” clauses are not required to both occur. For example, if only a “first set of information” is tracked, and “a message trigger condition occurs” only the “determined first message” is output to the player. Id. at 75:49–57. Read in context, the “if” clauses are not dependent on one another, and either or both can occur, irrespective of the other conditional limitation. Turning to the specification, we find examples of trigger conditions described as Boolean expressions including: (player_tracking_card_inserted) (ii) (time_of_day>6 pm) AND (empty_hotel_rooms>30) AND NOT (player_staying_at_hotel) (iii) (help_button_pressed=TRUE) (iv) (free_money_hotline_phone_on_hook=FALSE) Id. at 50:41–47. For instance, trigger condition (ii) can be satisfied essentially any time later than 6 p.m., e.g., 7 p.m. or 9 p.m. And, Patent Owner does not persuasively direct us to any disclosure in the specification that states that the trigger condition must be the same occurrence of a particular trigger condition to output two different messages. So, considering the specification and the plain meaning of claim 1 the same message trigger condition for limitation (c) can, for instance, be satisfied at 6:01 p.m., and for limitation (d) at 7 p.m..” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“In our Institution Decision, because the claims do not specify how a message conveys information to a player, we turned to the specification of the ’064 patent to better understand what the content of a “message” would patent describing that “a message may be any information that may be output to a player using an output device on a game machine. Messages may be output in a variety of different forms, including text, audio, video, and images.” Ex. 1001, 24:15–18. We acknowledge that there are examples in the ’064 written description that describe textual, i.e. written communications. See id. at 24:34–36 (“Examples of gaming-related messages include: (i) messages relating to events on the game machine (e.g., ‘‘You just won 100 coins!’)”).” Patent Owner does not, however, point to anything in the ’064 patent which precludes messages that convey information without words, or that suggests or shows disavowal of non-textual messages. See Phillips, 415 F.3d at 1316 (“In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”). Indeed, the ’064 patent describes “[f]or example, messages timed and targeted to make a player aware of opportunities available to him maybe presented using a humorous animated character.” Ex. 1001, 3:36–39. Apart from this, Patent Owner states that “the issue is moot because the patentability grounds identified in this Petition apply even when the Board applies its construction of ‘message.’” PO Resp. 13. Accordingly, we do not modify our preliminary claim construction, and determine on the complete record before us that a “message” encompasses “any communication, in any form, intended to be presented to a player or other party” including presentation in a combination “of different forms, including text, audio, video, and images.”” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Petitioner’s motivation to combine the alternative embodiments and messages disclosed in Aristocrat persuasive. We appreciate that not all examples and embodiments disclosed in Aristocrat and identified by Petitioner have been applied to the elements in the claimed invention. Mr. Crane, however, identifies certain disclosures in Aristocrat to support his testimony and Petitioner’s reasoning explaining why “a POSITA would have found it obvious to combine various embodiments of Aristocrat.” Ex. 1003 ¶ 160. Mr. Crane testifies that because Aristocrat teaches a software program for implementing the gaming system, “different ways of delivering messages represent design choices; they are not the results of some technical limitations or system requirements.” Id. ¶ 161. Mr. Crane points out, persuasively, that “Aristocrat itself discloses that ‘it is within the capabilities of the noninventive worker in the art to introduce the methodology [of the embodiments] on any standard microprocessor-based gaming machine or gaming console by means of appropriate programming.’” Id. (citing Ex. 1004, 15:7–11). Based on the complete record now before us, we find that informational messages implemented based on tracked player information are not so unique such that a person of ordinary skill in the art could not have effectively provided various desired messages based on certain tracked player information. We understand Petitioner’s point to be that a variety of messages, including those in the tables above, as well as others, could result from specific information tracking and trigger events. Mr. Crane summarizes, explaining persuasively that a person of ordinary skill in the art “would have recognized that combining these embodiments increases the increases entertainment value for the player. Combining different embodiments and increasing message variety help increase the player’s interest in the game.” Id. ¶ 162, see also KSR, 550 U.S. at 417, (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”). Considering both parties arguments and evidence, we are persuaded that Petitioner has fulfilled its obligations under 37 C.F.R. § 42.104(b) to show were each element of the claim is found in Aristocrat.” slip op. at 27
Patent outcomesUS 8,795,064 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,795,064 - Zynga Inc. v. IgtAll claims unpatentablePTAB · Jun 6, 2023 · IPR2022-00223 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–37 are unpatentable as obvious: claims 1–32 over Sparks and Wiltshire combinations, and claims 33–37 over Sparks, Wiltshire, Joshi, and Schneier.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision to Institute trial, we determined that A person of ordinary skill in the art (“POSITA”) of the technology described in the ’473 patent would have a bachelor’s degree in computer science, or a related field and two years of experience in system development in developing distributed computer systems, including networked gaming systems. . . . This POSITA would be aware of and generally knowledgeable about networked gaming systems at the time the application that led to the ’473 patent was filed, including the networks connecting various components of video game systems and the communications between the elements of the system. Inst. Dec. 17–18. Patent Owner does not dispute this level of skill. PO Resp. 12–13.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We are not persuaded of any error in Petitioner’s reasoning supporting the combination of Sparks and Wiltshire. Notably, Patent Owner’s arguments are largely unsupported by the record. Patent Owner cites to its expert declaration, but much of Dr. Wills’ testimony on this issue is merely his opinion without persuasive supporting evidence beyond inconclusive passages from Sparks and Wiltshire. See Ex. 2020 ¶¶ 70–92, 108. For example, Dr. Wills testifies that “Sparks and Wiltshire do not independently provide teachings that would have guided a POSITA at the time of the ’473 patent to combine the two references.” Id. ¶ 70. There is no legal requirement that the reason to combine be predicated on a specific “teaching” in the references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”) Dr. Wills testifies that “Wiltshire indicates that its system is not intended for playing real-time online multiplayer games, such as Doom.” Ex. 2020 ¶ 82 (citing Ex. 1005, 1:26–43. A plain reading of Wiltshire appears to contradict Dr. Wills. Wiltshire states explicitly that in addition to casino-type games “[t]he terms ‘game’ and ‘gaming,’ as used herein, include . . . video based games such as Doom, Pong, Packman, Myst; soccer, rugby; arcade type games.” Ex. 1005, 1:26–41.” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At bottom, the Parties do not argue for an express construction of any claim term, and our analysis does not turn on such a construction, so we purposes of this Decision. See Vivid, 200 F.3d at 803.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“bias because Petitioner articulates reasons to combine that are supported by the record and rooted in the capabilities of Sparks’ and Wiltshire’s systems, not the ‘473 patent Specification. See, e.g., Pet. 28–29, 64–65 (citing Ex. 1003 ¶¶ 355–362); Pet. Reply 2–12. For example, Petitioner contends that “Wiltshire discloses popular games that users of Sparks would want to play,” Pet. Reply 2 (citing Pet. 65; Ex. 1003 ¶ 356), and that the “player matching of Sparks improves player retention” and engagement, id. (citing Pet. 65; Ex. 1003, ¶ 357). We are persuaded by Petitioner and its expert, Dr. Chatterjee, that game popularity and player engagement/retention are important considerations that would have motivated one of ordinary skill in the art developing networked gaming systems to combine the cited teachings of Sparks and Wiltshire. We are persuaded that a skilled artisan would have understood the importance of adding popular games—such as Wiltshire’s casino games—to Sparks’ multiplayer game system because it keeps current players interested and engaged and attracts more players with an interest in those newly added games. See Pet. 65; Ex. 1003 ¶¶ 13, 356; see also Ex. 1004, 1:26–43 (explaining that “[t]he terms “game” and “gaming” . . . game facsimiles . . . such as . . . keno, bingo, . . . blackjack, . . . poker, . . . slot machines, [and] video poker machines”), 1:44–46 (“Physical embodiments of various games from the past have been reimplemented into microcomputer-based video gaming stations during the last 20 years.”); Ex. 1009, 1:16–30 (discussing popularity of casino gaming machines such as slot machines and video poker); Ex. 1019, 1 (“Video poker is one of the most visited sections of casinos around the world”). A skilled artisan would also have understood that modifying Wiltshire’s teachings to include Sparks’ player statistics capabilities—for example, to track and cater to player preferences or match players of similar skill—would result in a gaming system with improved player experience, players who are more engaged, and a higher level of player retention. See, Pet. 65; Ex. 1003 ¶ 357; see also Ex. 1004, 1:47–49 (“There exists a need for a system wherein players are only matched against other players according to their skill levels.”), 3:56– 4:3, 5:17–52, 6:18–33, 6:55–61. In sum, Petitioner has articulated multiple reasons to combine Sparks and Wiltshire, supported by the record, which Patent Owner does not persuasively rebut. For at least these reasons, we disagree with Patent Owner that “Petitioner fails to support its contention that ‘a POSITA would have been motivated to combine Sparks’ game system architecture with the gaming teachings of Wiltshire.’” PO Resp. 16.” slip op. at 36
Patent outcomesUS 7,303,473 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,303,473
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.