• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00710 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7, 9, 13, and 16–20 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 8 was not shown unpatentable under either ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicates that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction. Thus, no express construction is required.” Pet. 13 (citing Ex. 1003 ¶ 86). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

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

    “rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “and reliance on Figure 19 do not in any way explain how updating game costs by meter 502 with a new Cost_Table is relevant to a credit multiplier or even a multiplier being varied over time. Ex. 1003 ¶ 155. Considering this evidence, we determine that Petitioner and Mr. Crevelt’s reliance mainly on snippets from Schneier’s “Updating Cost Information protocol” embodiment does not sufficiently explain why or how a person of ordinary skill in the art would have understood updating game cost to encompass varying a multiplier of credits over time. We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004:158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to persuasive evidence in Schneier as to how or why a person of ordinary skill in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 8.” slip op. at 20

  Patent outcomesUS 10,825,294 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,825,294
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00709 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, 6, 8, 10, 14–18, 21–23, 25, 27, and 29 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 9 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states it “does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” PO Resp. 4. Patent Owner states further that “this [Patent Owner Response] and supporting declarations apply Petitioner’s proposed level of skill.” Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicated in the Petition that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction.[] Thus, no express construction is required.” Pet. 12–13 (citing Ex. 1003 ¶ 85). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004, 158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. Id. at 161:2–6. These explanations are unpersuasive because the testimony relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 9.” slip op. at 21

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

    “Discount Credit Pricing Structure The $0.20 discount described by Schneier for purchasing 20 credits, rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not address the idea of a time component, i.e., “over time,” as required by claim 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 18

  Patent outcomesUS 10,650,635 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,650,635
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentable
  PTAB · Oct 8, 2026 · IPR2025-00711 · APJ Linda E Horner · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 11,335,164 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 11,335,164
• Anthony Inc. v. Controltec, LLCAll claims unpatentable
  PTAB · Sep 30, 2026 · IPR2025-00636 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious: claims 8–12 over Carter; claims 1–20 over Carter and Bunch; claims 3, 9, 10, and 19 over Carter, Bunch, and King; and claims 2, 11–13, and 17 over Carter, …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “testimony that we limit the level of ordinary skill to “refrigerated display cases.” Limiting the level of skill to an engineer with experience “working with refrigerated display cases” does not relate to the technology disclosed, and the invention claimed, in the ’847 patent, which is controlling condensation and conserving energy. E.g., Ex. 1001, 2:23–27 (“The invention is proactive in preventing condensation from forming by activating frame/door heaters before the dew point temperature at frame and door surfaces is reached. Power is then cycled off at a set point above dew point to save energy.” (emphases added)). An electrical engineer with a bachelor’s degree and 2 years of experience focused on lighting systems for refrigerated display cases would have “experience working with refrigerated display cases,” and thus meet Patent Owner’s proposed level of skill. Such a person, however, would not be experienced in controlling condensation, dew point sensor positioning, and condensation algorithm design, which is the focus of the disclosed and claimed invention, and which Mr. Pollock states “materially affect performance, energy use, and reliability” in controlling condensation in a refrigerated display case. Ex. 2037 ¶ 10. We also note that Mr. Pollock’s qualifications include a “B.S. in Mechanical Engineering, . . . with focus on thermal and mechanical systems, thermodynamics, and HVAC&R (Heating, Ventilation, Air Conditioning & Refrigeration).” Ex. 2037 ¶ 3. His academic focus is consistent with our determination of the level of ordinary skill. Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’847 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’847 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We more experience will offset less academic training, as did Dr. Henze (Ex. 1003 ¶ 31). Thus, in this proceeding a person of ordinary skill would have a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of professional experience working with heating, ventilating, air conditioning, and refrigeration (HVAC&R) systems, and that more academic training will offset less experience, and more experience will offset less academic training. 2. Dr. Henze Is a Person of Ordinary Skill Patent Owner asserts that Dr. Henze is not a person of ordinary skill and thus is not qualified to provide expert testimony in this proceeding. PO Resp. 18–21 (citing Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1377 (Fed. Cir. 2022). Patent Owner’s argument requires a level of ordinary skill based on “working with refrigerated display cases,” which we have not adopted. PO Resp. 27. Based on the level of skill adopted in the previous section, we determine that Dr. Henze is qualified to provide expert testimony in this proceeding C. Claim Construction We construe each claim “using the same claim construction standard” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Whether the preamble is or is not limiting is not necessary to resolve this controversy because it would not affect the outcome of this case. We also note that it is beyond reasonable dispute that Bunch, applied with Carter against all the challenged claims, discloses display cases with glass doors. Ex. 1006, 1:14–16. Bunch also discloses that, in the display cases, “[t]o combat condensation and frost, heaters are installed in refrigerator doors and frames, which raise the temperature of the door or frame sufficiently to eliminate condensation.” Id. at 1:24–26. slip op. at 22

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992))). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). These two tests are: “(1) whether the art is from the same field of [the inventor’s] endeavor” 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.” Id.; see also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1359 (Fed. Cir. 2023) (“Importantly, ‘the scope of any field of endeavor will vary with the factual description of each invention.’ Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address. It is enough that the prior art reference falls within the relevant field of endeavor of the patent-in-suit.”) (citations omitted); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“To determine if art is analogous, we look to ‘the purposes of both the invention and the prior art.’ If a reference disclosure and the claimed invention have a same purpose, the reference relates to the same problem, which supports an obviousness rejection.” (citations omitted)); see also Nielsen Co. (US), LLC v. TVision Insights, Inc., 186 F.4th 1363, 1369–1370 (Fed. Cir. 2026) (providing a comprehensive summary and analysis of the applicable law concerning analogous art)” slip op. at 37

  Patent outcomesUS 7,421,847 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,421,847
• Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentable
  PTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision

  The Board held all challenged original claims unpatentable as obvious and denied the contingent motion to amend substitute claims 30–49.

  RulingsFinal written decision

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

    “would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner

    “7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Motion to Amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 for claims 30 and 32–49. We further find that Patent Owner has not met the statutory and regulatory requirements for proposed claim 31. Accordingly, we address below whether any of the proposed substitute claims have been shown to be unpatentable.” slip op. at 86

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

  Patent outcomesUS 8,604,678 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 8,604,678
• Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentable
  PTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision

  The Board held all challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious and granted the motion to amend for substitute claims 30–49.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the understanding of a person of ordinary skill in the art (“POSITA” or “POSA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d Relying on the declaration testimony of its expert, Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’678 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 5–6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’678 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” PO Resp. 24–25. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’678 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 10

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

    “lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41

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

    “1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22

  Patent outcomesUS 8,604,678 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 8,604,678
• Savant Technologies LLC D/B/A GE Lighting And Ledvance LLC / Savant Technologies LLC D/B/A GE Lighting, Elong International USA Inc., And Xiamen Longstar Lighting Co. Ltd v. Feit Electric Company, Inc.All claims unpatentable
  PTAB · Aug 31, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision

  The Board held all challenged original claims unpatentable as obvious and granted the contingent motion to amend for substitute claims 30 and 32–49; substitute claim 31 was denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the” slip op. at 10

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

    “lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41

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

    “1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22

  Patent outcomesUS 8,604,678 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 8,604,678
• Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentable
  PTAB · Aug 28, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 are unpatentable; substitute claims 30–49 were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21

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

    “lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success.” slip op. at 41

  • Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner

    “7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35

  Patent outcomesUS 8,604,678 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 8,604,678
• Apple Inc. / Amazon Web Services, Inc. v. Ziklag IP LLCAll claims unpatentable
  PTAB · Aug 26, 2026 · IPR2026-00047 · APJ Hung H Bui · IPR · Final written decision

  Claims 1–4, 6, 9–14, and 17 are unpatentable as obvious over Yurt and Logan; the Board denied Petitioner’s motion to strike.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the record before us, we are unpersuaded that Patent Owner’s “proposed level of skill” is appropriate in this proceeding for reasons discussed below.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “McCulloh’s qualifications are grounded upon Patent Owner’s “proposed level of skill” (which we rejected) that is “higher than Petitioner’s proposed level” (which we adopted for this proceeding) and focus on their level of skill in the late 1990s timeframe (time of the invention), but there is no time requirement on when an expert acquired the requisite level of skill in the art. Osseo Imaging, LLC v. Planmeca USA Inc., 116 F. 4th 1335, 1340–1341 (declining to add a timing requirement to the minimum qualifications necessary to offer expert testimony from the perspective of a person of ordinary skill in the art). “An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention. In practice, the fact that the expert was not a person of ordinary skill at the time of the invention may well be used during cross examination to undermine the credibility of the expert.” Id. Under Petitioner’s proposed level of skill (which we adopted), Dr. McCulloh is indeed qualified to testify in this proceeding because he has a Ph.D. in Computer Science from Carnegie Mellon University and extensive experience, including “hands-on deployment and academic research in distributed systems operating under real-world constraints” (Ex. 2009, Ex. 2010). See Ex. 2010 (CV) (BSIE, MS Comp. Sci, PhD Comp. Sci, Lieutenant 1994-1999, 10th Mountain Division (“led the army’s first tactical deployment of a distributed computing system”)); Ex. 2009 ¶¶ 6–10. Although Dr. McCulloh’s declaration does not include any searching or analysis of patent literature including Yurt or Logan as part of his analysis of the “background” state of the art, as correctly recognized by Petitioner (Pet. Reply 7–8 (citing Ex. 1017, 74:18–75:14; Ex. 2009 ¶ 3)), we are persuaded that Dr. McCulloh is qualified to address Dr. Lippman’s portrayal of the architecture disclosed in the ’128 patent, as advanced by Patent Owner. Ex. 2009, ¶¶ 3, 5–34; Ex. 2010. Dr. McCulloh does not provide testimony to refute Petitioner’s obviousness analysis based on Yurt and Logan. See Ex. 2009. Mr. Johnson is only offered to refute Petitioner’s obviousness analysis based on Yurt and Logan. Ex. 2007 ¶¶ 3, 18, 29. Under Petitioner’s proposed level of skill (which we adopted), Mr. Johnson, who is a co-inventor of the ’128 patent, is qualified to testify in this proceeding, especially, when his declaration states that (1) he is a POSITA “with more than 30 years of experience building technology-driven media and contentdistribution systems” and (2) he “was actively involved in the development and deployment of digital music and video distribution technologies” since the mid-1990’s, including “real-time and near-real-time electronic delivery of media content.” Ex. 2007 ¶¶ 9–10, 14, 16. Certainly, “[t]he inventor himself may qualify as an expert and testify what his claims would mean in the relevant art.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995).” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction needed

    “Plain Meaning of “Substantially Real Time” Instead, the plain meaning of “substantially real time” is readily apparent and understood by a person of skill (POSITA) in the art in the context of data distribution or transmission of the ’128 patent as referring to an acceptable time delay (i.e., “a fraction of real time”) between distribution center 18 and user device 12, via network 14, shown in Figures 1–2 of the ’128 patent and, as such, is consistent with the ‘128 patent’s specification and Dr. Lippman’s Declaration (Ex. 1003, ¶¶ 79, 126). Because the plain meaning of “substantially real time” as understood by a POSITA is readily apparent, there is no reason for the Board to consider Patent Owner’s clarification of “substantially real time” based solely on extrinsic evidence, i.e., counsel argument, Mr. Johnson’s declaration (Ex. 2007, ¶¶ 27, 29–30, 33, 39; Ex. 1018, 38:13–39:20) and Dr. McCulloh’s declaration (Ex. 2009, ¶ 19). For example, Patent Owner, relying upon Mr. Johnson’s testimony, clarifies the term “substantially real time” requires either (1) “playback while transmission is ongoing” (PO Resp. 30), or (2) “[a] coordinated system behavior in response to a user’s request” “in which a user request triggers coordinated operations, including locating content across distributed systems, routing that content, and initiating playback while transmission is ongoing” (PO Sur-Reply 4 (citing Ex. 1001, 2:67–3:2, 6:23–35)). However, Patent Owner’s shifting position regarding “substantially real time” is not commensurate with the plain reading of the term. Based on the plain meaning of “substantially real time,” we are persuaded by Petitioner that Yurt explicitly discloses transmitting data at least in “real time,” preferably “less than real time” or “a fraction of real time” for playback. Pet. Reply 9 (citing Ex.1005, code (57), 1:66–2:4, 4:68– 5:3 (teaching distributing “digital audio” in “less than real time” and in “a fraction of real time,” where the receiving system may “decompress in real time the requested material as it is distributed by transmission system 100”)).” slip op. at 36

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

    “teaches or renders obvious all limitations of claim 1, Petitioner also provides sufficient motivation or reasoning with a rational underpinning to combine Yurt and Logan. Specifically, Petitioner, relying on Dr. Lippman’s declaration (Ex. 1003, ¶¶ 62–73), asserts “a POSITA would have been motivated to combine Yurt with Logan for several reasons, discussed further below. Combining Logan’s usage log teachings with Yurt’s improved audio file accessibility (e.g., via popularity) to track additional user request information would have been obvious, beneficial, and predictable.” Pet. 19 (citing Ex. 1003, ¶¶ 62–72). According to Petitioner, because “Logan teaches implementation details for tracking user/usage data for billing purposes and adapting preferences ‘based on actual usage,’” “[a] POSITA would have thus been motivated to combine Yurt’s teachings (e.g., tracking information about requested items like item popularity) with Logan’s teachings (e.g., storing user data and usage information in response to user requests).” Id. at 19–20. “This would have been merely the use of a known technique (Logan’s tracking of user and usage data in response to user requests) to improve a similar method in the same way (Yurt’s tracking of information about user-requested items).” Id. at 20 (citing Ex. 1003, ¶¶ 67– 68). According to Petitioner, [T]he combination is straightforward: use Logan’s known technique for recording user data with Yurt’s existing item database teachings. See Ex. 1005, 12:28–57, 10:66–11:4; Ex. 1006, 5:33–42, 6:27–35, 8:49–58; Pet. 19–23. Since Yurt already teaches using its item database to track item popularity and request information, no modification to Yurt’s architecture is necessary. Logan merely confirms when and how to store the user information. Pet. 19–21. A POSITA would have found the combination obvious for all the reasons Dr. Lippman provided. See, e.g., Ex.1003, ¶¶ 71–72.” slip op. at 58

  Patent outcomesUS 6,182,128 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,182,128

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.