- Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentablePTAB · Jan 16, 2026 · IPR2022-00597 · APJ Jeffrey S Smith · IPR · Remand
Claims 1–4 and 6 are unpatentable under §103 over both listed prior art combinations; Lemay Web teaches the claimed style under the Federal Circuit’s construction.
RulingsRemand decision- RemandOther
“As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11
- Strike new argumentNew argument consideredDecided for petitioner
“We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8
Patent outcomesUS 7,594,168 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,594,168 - Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentablePTAB · Jan 16, 2026 · IPR2021-01226 · APJ Jeffrey S Smith · IPR · Remand
Claims 1–4 and 6 are unpatentable under § 103 over the asserted combinations because the prior art teaches the limitations under the proper construction of “style.”
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91. Contrary to Patent Owner’s contention, the testimony of GoDaddy’s expert further supports our finding that the style settings in the HTML file of Lemay Web are applied to the multiple image objects that make up the animation. Patent Owner does not identify anything else from the district court trial connected to the “style” issue raised by the Federal Circuit. We conclude that the jury verdict does not change our decision here. IV. CONCLUSION” slip op. at 18
Patent outcomesUS 7,594,168 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,594,168 - Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentablePTAB · Jan 8, 2026 · IPR2024-01091 · APJ Jameson Lee · IPR · Final written decision
Claims 30 and 62 are unpatentable over the respective Kim and Burrough combinations; claims 1, 32, 34, and 64 were not shown unpatentable because the cited gestures lacked a common starting point.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“gesture” must refer back to the same gesture reflects the plain meaning of the claim language. In each independent claim, the structure and usage of the language in dispute are the same. Only one gesture detection is recited, and there is no language reasonably indicating repetition or reiteration of detection for any reason at any time. Patent Owner’s position that to meet “the gesture” recitations, prior art “gestures” must all share a common starting point also makes sense and is appropriate. The same gesture must start from the same starting point or else it is not the same gesture. Specifying the understanding this way avoids treating two similar gestures as the same gesture, if they have different starting points. For instance, two taps may be the same in every way, except for their starting points. They are not the same gesture in the context of these claims.” slip op. at 19
- Expert testimonyOther
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11
- BurdenNot shown unpatentable
“Neither the tap-and-hold gesture in the bottom path of Kim’s Figure 7 nor the “long press input” and “long press event” of Kim such as that shown in Kim’s Figure 5 is the double-tap gesture Petitioner relies on to satisfy limitation [1.f]. Neither has been shown to have a common starting point with the double tap. Thus, Petitioner’s showing is inadequate. Limitation [1.i] recites: [1.i] when the magnitude of the duration of the gesture being detected on the touch screen on the object is greater than a second magnitude threshold, perform another operation. Pet. v. Petitioner explains: Kim teaches or renders [1.i] obvious. APPLE-1003, ¶62. Kim further describes “another operation” that is performed when the magnitude of the duration of the gesture is greater than a second magnitude threshold—specifically, a minimum threshold to be deemed an intentional touch. Specifically, Kim explains that, “[i]f detecting a user gesture, namely, if receiving an input event from a user through the touch screen, the mobile device determines the type of an input event.” APPLE-1004, [0053]. Kim states that, “[i]f an interrupt is not a request for the activation of the zoom mode as the result of determination in step 205, the mobile device can perform some action in connection with an interrupt (step 207),” shown in Figure 2a below. APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶63. [Figure 2A of Kim is a flow diagram of a method for a touch-based control in a zoom mode (Ex. 1004 ¶ 20)] Kim additionally explains that if the mobile device determines that a detected user gesture does not correspond to any particular input event, “the mobile device disregards the received input event.” APPLE-1004, [0053]. Based on Kim’s disclosure of “disregarding” a received input, a POSITA would have understood that, for the detected interrupt (step 203) to be sufficient to cause the mobile device to “perform other action” (step 207), a magnitude greater than a minimum threshold value (e.g., the minimum threshold of an intentional user input) is relied upon, or rendered obvious, by Kim. APPLE-1004, FIG. 2a; APPLE-1003, ¶64. Thus, when the magnitude of the gesture is greater than a second magnitude threshold, the device “performs other action” (e.g., display requested menu). APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶64. A POSITA would have understood that such an interrupt would be caused by a gesture that is longer in duration than the second threshold (as necessary to avoid the gesture from being disregarded), shorter than the duration necessary for a long press threshold, and a different gesture than a double tap gesture. APPLE-1003, ¶64. Pet. 24–26. As explained by Petitioner, the interrupt gesture relied on by” slip op. at 40
Patent outcomesUS 10,936,114 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,936,114 - Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentablePTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27
Patent outcomesUS 10,656,755 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,656,755 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Dec 31, 2025 · IPR2024-01085 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 were not shown unpatentable under either § 103 ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 9. We continue to adopt Petitioner’s stated level of ordinary skill in the art.5 C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 4. We agree with the parties that no express construction of any claim term is necessary. D.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner (PO Resp. 13) that when Ording refers to user interfaces that are “intuitive and transparent,” “transparent” in that context does not mean optically transparent but something readily understandable, like the preceding word “intuitive.” That makes more sense in context. Patent Owner’s expert, Dr. Mahon, explains that Ording’s paragraph 28, where the phrase “intuitive and transparent” is found, is not concerned with optical transparency, but with increasing user satisfaction with portable devices by offering multifunctional operations on user interfaces based on finger input. Ex. 2012 ¶ 54. Neither Petitioner nor Dr. Cockburn explains why “transparent” in that context should mean optically transparent. We credit the testimony of Dr. Mahon, and reproduce paragraph 28 of Ording below: The various applications that may be executed on the device may use at least one common physical user interface device, such as the touch screen. One or more functions of the touch screen as well as corresponding information displayed on the device may be adjusted and/or varied from one application to the next and/or within a respective application. In this way, a common physical architecture (such as the touch screen) of the device may support the variety of applications with user interfaces that are intuitive and transparent. Ex. 1006 ¶ 28. We credit Dr. Mahon’s testimony that “Ording is addressing [in paragraph 28] user interfaces that are user-friendly and intuitive to navigate and operate.” Ex. 2012 ¶ 55.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The Zlider widget already is the least intrusive in the form as disclosed in the Ramos Paper/Ramos Video, placed off to the side of image content, not above and overlapping with image content. Petitioner’s semitransparency solution is for a self-created problem that otherwise does not exist, i.e., blocking the image by placing the Zlider widget directly over image content in Ording’s device. This is not reasoning with rational underpinning for making the Zlider widget partially semitransparent. Even assuming that the Zlider widget is properly placed directly over a camera image, making the Zlider widget semitransparent does not solve the intrusion problem, because the image and the Zlider widget may obscure each other, as shown in these illustrations provided by Patent Owner: [The illustrations show interference between a semitransparent Zlider widget and an underlying image] In its Reply, Petitioner asserts that it would have been well within the skill level of one of ordinary skill in the art to make adjustments to address a problem caused by such obscuring, such as by making the Zlider widget more visible as shown below: [The illustration shows one way Petitioner asserts one of ordinary skill in the art may apply to solve the obscuring issue (Reply 5–6)] Petitioner’s argument is misplaced. Although there may be graphic display techniques one of ordinary skill in the art may adopt to reduce the visibility problem if the Zlider widget were moved to directly above the image content as Petitioner proposes, that does not cure the problem of lacking a reasonable motivation to place the Zlider widget of the Ramos Paper/Ramos Video directly over image content. Still, there is the least obscuring and the least intrusion with the Zlider widget remaining where it is shown to be in the Ramos Paper/Ramos Video, side-by-side relative to the image content. It is irrational to make a modification that creates a problem, solely on the basis that a solution may be available to reduce the severity of the problem. Indeed, such a strained rationale shows that hindsight has played a part on Petitioner’s contention that a person of ordinary skill in the art would have put the Zlider widget over content as required by the claims.” slip op. at 30
Patent outcomesUS 10,649,580 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,649,580 - PTAB · Dec 19, 2025 · IPR2025-01078 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–22, and 24–30, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1011, 5:18–21. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’371 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “a person having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronic gaming technology.” Pet. 10 (citing Ex. 1003 ¶¶ 22–26). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not dispute this level of skill. See Prelim. Resp. 13–14 (“Evolution does not set forth an alternative level of skill for a person of ordinary skill in the art”). For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’371 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “a first selected position . . . to have an increased payout . . . greater than a first non-selected payout.” See Pet. 25–27, 30, 35, 36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a payout that does not receive the Prog bonus. Pet. 35–36 (“had the first selected position not been randomly selected, the player would only be eligible for the basic payout”). Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,756,371 - PTAB · Dec 17, 2025 · IPR2025-01072 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–3, 5–11, 13–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that Kido anticipates claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” Sur-reply 2. We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1001, 5:16–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’014 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 32–36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Id. at 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,011,014 - PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,629,024 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden “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 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Expert testimonyOther
“unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,265,353
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.