- PTAB · Oct 8, 2025 · IPR2025-00738 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . 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). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 3, and 6–8 of the ’448 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming the benefit of the filing date of an application filed before March 16, 2013, we apply pre-AIA law. 2 U.S. Patent No. 6,166,744 issued Dec. 20, 2000 (Ex. 1003). 3 Int’l Patent Appl. Pub. No. WO 2003/107039 A2 published Dec. 24, 2003 (Ex. 1008). 4 U.S. Appl. Pub. No. 2002/0163486 Al published Nov. 7, 2002 (Ex. 1009) 5 U.S. Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 6 U.S. Appl. Pub. No. 2004/0002843 A1 published Jan. 1, 2004) (Ex. 1007). combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30–32, 8:31–45, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case”).” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. . . . A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Jaszlics discloses that the “invention relates . . . to systems for combining virtual images with real-world scenes” to provide applications such as virtual reality games (Ex. 1003, 1:13–21), which is the same field as the ’448 patent’s field of “location-based games and augmented reality systems” (Ex. 1001, Title). Turning to Sofer, the purpose of the detector of Sofer is to detect the location of objects in the user’s surrounding environment (Ex. 1008, Abstract; see id. at 2, 6, 11), which is the same purpose as the detector of the ’448 patent (Ex. 1001, 15:4–5; see id. at 1:28–31, 2:5, 16:11–18, 19:54–57). Therefore, Sofer’s detector is reasonably pertinent to the particular problem of detecting the location of objects in the user’s surrounding environment. We are sufficiently persuaded that Jaszlics and Sofer are analogous to the claimed invention.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,744,448 - PTAB · Oct 8, 2025 · IPR2025-00742 · APJ Miriam L Quinn · IPR · Institution
The Board instituted review of claims 1, 6-10, 14, 17, 24-28, and 30 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“portable device 100 as “portable” even when components of that “device” are integrated in a “non-portable” device, such as a car. Examples of such portable devices are provided as wireless telephones, PDAs, laptops; handheld devices, and music players. Ex. 1009 ¶ 22; See Ex. 1001, 4:22−28 (describing a visor as a portable gaming system); 7:21−27 (listing additionally Blackberries, Personal Electronic Devices, IPODs and any other portable electronic device, to be configured as a gaming system). Taking these disclosures together, the ’243 patent does not define the degree of the “portability” of the claimed device to require that the “portable device” must be completely “free of encumbering external connections.” If “portability” can include integrating a component of the “portable device” into a “non-portable device,” then there is support for holding that the recited “portable device” could be tethered to a non-portable device.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“rotation sensors are found not to be positioned on Levesque’s display, it would have been obvious to do so in light of Ronzani because Ronzani teaches equipping the head-mounted device with external and internal sensors). Petitioner’s arguments and evidence regarding motivation to combine amount to showing that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The inquiry at this juncture is whether Petitioner has shown sufficiently that an ordinarily skilled artisan is “able to recognize, based on her background knowledge, [a technique’s] potential to improve the device and be able to apply the technique.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A reference that is in the same field of endeavor as the claimed invention is analogous art,5 and such a qualification means that one of ordinary skill in the art is presumed to have been aware of the reference and thus the refence properly may be considered if it predates the claimed invention. See Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Petitioner contends that the field of endeavor of the claims of the ’243 patent is “the field of portable user-worn devices for providing location based-entertainment.” Pet. 19−20. According to that description of the relevant field of endeavor, Petitioner argues that both Levesque and Ronzani are analogous to the ’243 patent. Id. Patent Owner appears to argue that the field of endeavor is “video games.” Prelim. Resp. 29−30. This is not the correct field of endeavor because although the claim recites a location based game system, the claims considerably focus on the head-mounted device. Indeed, for claim 1 all the structural elements claimed involve or are placed in the head-mounted device. Thus, “video games” generally is not an appropriate field of endeavor, as it is too broad and ignores the significant focus of the claims of the ’243 patent. Petitioner’s statement of the field of endeavor is, therefore, more indicative of the correct field of endeavor involved here. And as such, it is unpersuasive to argue that Ronzani does not belong to the field merely because it is not solely focused on video” slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,904,243 - Alliance Laundry Systems, LLC v. Payrange LLCInstitution deniedPTAB · Oct 1, 2025 · IPR2025-00573 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 7 or 11 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’772 patent. Accordingly, we do not institute an inter partes review of claims 7 and 11 of the ’772 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person having ordinary skill in the art (“POSA”) pertaining to the ’772 patent “would have had an educational background of, engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 19–20; Ex. 1003 ¶¶ 20–26. “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’772 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms expressly to determine whether or not to institute a trial. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,481,772 - PTAB · Sep 25, 2025 · IPR2025-00741 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1, 12, 17, and 20 of the ’493 patent on all asserted §103 grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we determine that Petitioner has shown a reasonable likelihood of prevailing on its contentions of obviousness for claim 1 of the ’559 patent and claim 1 of the ’493 patent.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,376,493 - PTAB · Sep 25, 2025 · IPR2025-00740 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR of claims 1, 12, 17, and 20 of both patents on all asserted § 103 grounds, finding a reasonable likelihood that at least one claim of each patent is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated in this Decision, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’559 patent and at least one claim of the ’493 patent are unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the instant Petitions. 37 C.F.R. § 42.108(a).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill, would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a 2 US Patent No. 6,166,744, issued Dec. 26, 2000 (Ex. 1003). 3 US Patent No. 6,369,952 B1, issued Apr. 9, 2002 (Ex. 1004). 4 WO 03/107039 A2, published Dec. 24, 2003 (Ex. 1008). 5 US Patent Application US 2002/0163486 A1, published Nov. 7, 2002 (Ex. 1009). person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. 740 Pet. 4 (citing Ex. 1002 ¶¶ 21−25); 741 Pet. 4. Patent Owner does not propose a level of ordinary skill. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“At this stage, we do not find Patent Owner’s proposed construction persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Paper 10 in the 740 IPR; and Patent Owner filed a Preliminary Sur-reply, filed as Paper 11 in the 740 IPR. Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:38−40, 2:63–3:2, 3:23–25, 6:11−13, 6:46−48, 8:48– 62, 9:23–28, 20:28−58, 22:1−4. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (740 Ex. 1001, 1:58−60), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” 740 Ex. 1001, 11:12−14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing a physical playfield with defined boundaries, or a “bounded” playfield, as well as a physical playfield with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Second, Petitioner’s explanation of its alternative theory—that Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,828,559 - PTAB · Sep 25, 2025 · IPR2025-00737 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1, 2, 4–7, 13, and 17 on all asserted grounds, finding a reasonable likelihood that Meta would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . 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). Upon consideration of the Petition and the Preliminary Response, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 2, 4–7, 13, and 17 of the ’476 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming priority to an application filed before March 16, 2013, we apply pre-AIA law. 2 US Patent No. 6,166,744 issued Dec. 26, 2000 (Ex. 1003). 3 Wayne Piekarski et al., “Integrating Virtual and Augmented Realities in an Outdoor Application,” Proceedings of the 2nd IEEE and ACM International Workshop on Augmented Reality (1999) (Ex. 1004). 4 US Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 5 US Patent No. 6,951,515 B2 issued Oct. 4, 2005 (Ex. 1005). 6 US Publ. No. 2004/0002843 A1 published Jan. 1, 2004 (Ex. 1007). 7 WO 01/42809 A2 published June 14, 2001 (Ex. 1008). and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5–6. Patent Owner, at this stage, does not challenge Petitioner’s definition of the level of ordinary skill. See generally, Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” Ex. 1001, 21:6– 7; 22:26–27. The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Id. at 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30– 32, 8:30–44, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:51–53), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 10:58–61. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction. Paper 10, 2 (Petitioner arguing that by describing an augmented reality system where a user can view the physical surroundings, a “bounded” physical playfield is not necessary). Further, we find unpersuasive, at this juncture, Patent Owner’s arguments related to embodiments of how the information about the playfield is captured and stored to construct the playfield and perform scaling. Prelim. Resp. 7−13. As Petitioner notes, and we agree, none of these features are recited in the independent claims. Paper 10, 2. And, to the extent there is a distinction between being “on” or “off” the “physical playfield” as Patent Owner argues, the claim language requires no such determination or detection.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“physical playfield” as properly construed. Prelim. Resp. 30. As discussed in our claim construction above, we are not persuaded that the claim term “physical playfield” is limited to a bounded physical play space. However, even under the Patent Owner’s proposed narrower construction, we are sufficiently persuaded that the combination teaches a bounded physical play space. Jaszlics discloses that its system creates virtual elements in theme parks and entertainment-oriented environments. Ex. 1003, 2:14–16, 2:67– 3:1; see id. at 18:48–55. We are sufficiently persuaded that a theme park is a bounded physical play space. In addition, Jaszlics discloses training armored vehicle crews by using both virtual vehicles and actual vehicles moving over real terrain. Ex. 1003, 1:38–60. We are sufficiently persuaded that a skilled artisan would have envisioned that such training occurs on a military base, which is bounded.8 Jaszlics further discloses that its training field includes boundary markers. Ex. 1003, Fig. 15, 10:1–9. We are sufficiently persuaded that the tank training field of Jaszlics, which has boundary markers and is located on a military base, is a bounded physical play space. Therefore, even under Patent Owner’s narrower construction, we are sufficiently persuaded that a person of ordinary skill would have recognized that a user would have played at least some of the video games provided by the combined system of Jaszlics and Piekarski in a bounded physical play space such as a theme park or a military base. slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,585,476 - PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the Preliminary Response “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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Sep 9, 2025 · PGR2025-00023 · APJ Michael J Fitzpatrick · PGR · Institution
Instituted PGR on claims 1–9 because the Board found it more likely than not that at least one challenged claim is unpatentable over the ’629 publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review requires that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or that “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(a)–(b). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Accordingly, we grant the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person of ordinary skill in the art (“POSITA”) would have a Ph.D. degree in biological, chemical or biochemical engineering, molecular biology, or biochemistry and at least two years of experience in the field of utilizing or assessing horseshoe crab zymogen proteins (lysate, purified native and/or recombinantly produced) for endotoxin detection and quantitation. More education could substitute for experience to a certain extent, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶48–49). Patent Owner does not dispute Petitioner’s description of a POSITA in its Preliminary Response. Prelim. Resp. 10. 1 In addition to other changes to Title 35, the AIA introduced amendments to 35 U.S.C. § 102. Because Patent Owner concedes that the ’725 application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013” (Ex. 1022), the AIA version of § 102 applies to the ’109 patent. AIA § 3(n)(1)(B); Ex. 1001, 1:11–14 (claiming priority to the ’725 application). 2 US 2019/0241629 A1, published August 8, 2019 (“the ’629 publication” (Ex. 1015)). At this stage, we find Petitioner’s description of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction of any claim term. See Pet. 22–23; Prelim. Resp. 10. We determine that no express claim construction is necessary based on the present record.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“To show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23– 24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in which a POSA would have understood the prior art, or what a POSA would have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description.” slip op. at 12
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,959,109 - PTAB · Sep 9, 2025 · IPR2025-00440 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR of claim 21 on both asserted § 103 grounds, finding a reasonable likelihood that claim 21 is obvious over Mizumura with the ’498 PCT and over Mizumura with McClymont.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine Petitioner has demonstrated a reasonable likelihood that the challenged claim of the ’318 patent is unpatentable. Accordingly, we institute an inter partes review of the challenged claim on each of the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Nevertheless, we determine that the contrary evidence Petitioner has cited suffices to establish a reasonable likelihood of success at this preliminary stage of the proceeding. In this regard, we also note Dr. Jain’s testimony — currently unrebutted — that an ordinarily skilled artisan would have known, based on Tokunaga’s sequence comparisons of Factor C proteins, that “certain sequence differences between [Limulus polyphemus] and Tachypleus tridentatus were non-conservative (i.e., potentially giving rise to changes in function in terms of enzymatic activity of Factor C).” Ex. 1002 ¶ 94 (citing Ex. 1022, 157). We likewise note Dr. Jain’s testimony that such artisan would have recognized Tokunaga’s conclusion, regarding “immunological and biochemical properties” of Factor C proteins of the two different horseshoe crab species, to be “based on only gross biophysical-biochemical properties” that are not “granular enough” to predict functional properties such as residual activity in presence of specific ions. Ex. 1002 ¶ 100.” slip op. at 22
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledOther
“submitted in a different proceeding and in a different forum, and our rules contemplate objections to admissibility only after institution. See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”); also compare Fed. R. Evid. 801(c) (defining hearsay as a statement, not made at the current trial or hearing, “offer[ed] in evidence to prove the truth of the matter asserted”), with Fed. R. Evid. 801(d)(2) (excluding from hearsay statement offered against an opposing party where statement was made by “a person whom the party authorized to make a statement on the subject” or by a “party’s agent or employee on a matter within the scope of that relationship and while it existed”). Nevertheless, as discussed above, Petitioner has provided contrary evidence, including statements from Patent Owner’s patent application, suggesting that, “due to the various differences and diversity of biomolecules depending on the genus and species of the horseshoe crab,” it had not been possible “to accurately determine the full-length sequence structure, expression, and function of [Limulus] proteins and genes using conventional methods” more than 20 years after complete gene and amino sequences from two Tachypleus horseshoe crab species had been reported. Pet. 35 (citing, e.g., Ex. 1005 ¶¶ 12–17). Thus, even if we were to take the Frohman Declaration into account, we find that Petitioner has established a reasonable likelihood 28 of success that the ’767 application disclosures did not enable an ordinarily skilled artisan to make and use the invention of the challenged claim without undue experimentation. Furthermore, assuming that the disclosures in ’767 application would have enabled an ordinarily skilled artisan to express recombinant Limulus polyphemus Factor C protein in HEK293, we find Petitioner has established, sufficient for purposes of institution, that the disclosures do not enable an ordinarily skilled artisan to make such a protein exhibiting the “full scope” of the claimed residual activity, without undue experimentation. Patent Owner cites to disclosures in the ’767 application that (1) describe how to produce recombinant Factor C in HEK293 cells and measure residual activity, (2) suggest “Factor C expressed in mammalian cells can have low susceptibility to activity inhibition by ions,” and (3) provide examples where residual activity met the required minimum. Prelim. Resp. 26–27, 32–34. Nevertheless, whether an ordinarily skilled artisan would have been able to make, based on these disclosures and without undue experimentation, a recombinant Factor C protein having residual activity encompassed by claim 21 but higher — even significantly higher — than that achieved in the example, is a fact intensive issue that would benefit from further development during trial.15 See, e.g., In re” slip op. at 28
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’767 application does not provide adequate written description support for claim 21 of the ’318 patent and that, accordingly, Mizumura, the ’498 PCT, and McClymont qualify as prior art to the challenged claim.” slip op. at 19
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,236,318 - Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentablePTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
Patent outcomesUS 8,291,243 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,291,243
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.