• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “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) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11

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

    “Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentable
  PTAB · Sep 20, 2023 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Final written decision

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

  RulingsFinal written decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for patent owner

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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

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

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

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

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

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

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

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

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

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

  Patent outcomesUS 9,466,176 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,466,176
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00594 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • BurdenInstitution denied

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Prior constructionPrior construction adoptedDecided for patent owner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., an ancestor of the challenged ’819 patent that Petitioner characterizes as “shar[ing] a near-verbatim written description with the ’819 patent”). Ex. 1023 (claim construction order in cases involving Microsoft and Apple); Ex. 2003, 5 (clarification of certain claim constructions on summary judgment); Pet. 8–9. Patent Owner advocates that we adopt such prior constructions in this proceeding. Prelim. Resp. 6. Although “Petitioner does not believe express claim construction is necessary at this time,” Petitioner takes the position that its asserted prior art “renders the challenged claims obvious under the district court’s constructions.” Pet. 10. And we agree with Patent Owner that the Petition “presents extensive arguments” that apply the district court’s constructions. See Prelim. Resp. 6 (citing Pet. 9–10, 12–20, 33). We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 8–10. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1, 16, 23, and 26, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2003, 5; Prelim. Resp. 7–8. Third, we construe “interactively variable duration information,” which is recited in each of challenged independent claims 1, 23, and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 10–12.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. (citing Ex. 1002 ¶¶ 13–18). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 5–6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,606,819
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00593 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–62 were unpatentable under the asserted §103 grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 39; see also id. at 45–46 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt.” slip op. at 26

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “E. Real Parties in Interest Petitioner identifies Google LLC and YouTube, LLC as real parties in interest. Pet. 1. Patent Owner identifies Robocast, Inc., as a real party in interest. Paper 5, 2.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1102 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1123, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 22 and 46, as well as dependent claim 45, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1123, 2–13; Ex. 2107, 5; Prelim. Resp. 9. For purposes of this Decision, we accord all other terms recited in the challenged claims their plain and ordinary meaning. See Ex. 1123, 17–20, 26–29 (court adopting plain and ordinary meaning of “plurality of accessible resources,” “content,” “without requiring user input,” “in accordance with said show structure,” “providing,” and “search results”); see Prelim. Resp. 8 (Patent Owner advocating that “any additional claim language be[] accorded its plain and ordinary meaning”).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00592 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 and 63–67 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 119, 121–128. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 120. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52-55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 124, 128. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 124) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 6–7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 7 (citing Ex. 1002 ¶¶ 13–17). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Mr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Mr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1 and 63, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2007, 5; Prelim. Resp. 9. Third, we construe “interactively variable duration information,” which is recited in each of challenged claims 1, 11, 12, and 64, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 12–15.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00591 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 22–36 and 39–45 because Petitioner did not show a reasonable likelihood that the asserted obviousness grounds would succeed.

  RulingsInstitution decision

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

    “passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42–43; see also id. at 48 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). We agree with Patent Owner. In its Summary of the Invention, Shimizu describes “mak[ing] it possible to build with ease an application program illustratively causing the display of the nodes to be switched in a specific order and at predetermined intervals.” Ex. 1103, with the predetermined intervals being included in the application program, rather than the hypertext nodes. Similarly, in its Description of the Related Art, Shimizu describes “mak[ing] it possible to create an application program that may be displayed on the screen by reading, from primary or secondary storage and within a predetermined time, the node information held by the nodes that are linked sequentially starting from a particular node.” Id. at 3:12–16 (emphasis added). This passage, too, is better read as disclosing that the predetermined times are included in the application program, rather than the hypertext nodes. Neither of Petitioner’s cited passages states that the hypertext nodes include predetermined intervals/times.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Parallel petitionsNot reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1102 ¶¶ 13–18). Patent Owner, without citing evidence, contends that a skilled artisan “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems”; “would also have approximately 3–5 years of professional experience with these topics”; and “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Prelim. Resp. 5–6. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art, and which is supported by expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, we do not see a substantial difference between the parties’ proposals. Thus, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00590 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–21, 37, and 38 because Petitioner did not show a reasonable likelihood of proving obviousness on any asserted ground.

  RulingsInstitution decision

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

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 13–18).” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The Microsoft court provided reasoned constructions, which Patent Owner contends that we should adopt. Ex. 1023. See also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term Commission, that is timely made of record in the inter partes review proceeding will be considered.”). Petitioner does not allege any error in the Microsoft court’s decision or provide any alternative constructions. We adopt the Microsoft court’s constructions of “show structure of nodes” and “nodes” for purposes of this Decision. Based on the record before us, we do not find it necessary to provide express claim constructions for any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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 11

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

    “16, 5:11–14) describes the hypertext nodes as including the predetermined times or predetermined intervals (what Petitioner argues is the duration). As Patent Owner argues, “even if these ‘predetermined times’ or ‘predetermined intervals’ could be considered relevant default duration parameters, the Petition fails to prove that they would be included within Shimizu’s hypertext nodes—i.e., the putative claimed ‘nodes’ —as the governing claim construction expressly requires.” Prelim. Resp. 45; see also id. at 58–59 (“[T]he passages relied on do not provide any specifics as to how duration information would be implemented. Instead, they are merely speculative and aspirational statements, postulating only about what is ‘possible.’ . . . [I]t is not sufficient for Shimizu to simply teach a time interval between nodes. Rather, . . . the node itself must ‘include . . . the duration for which the resource’s content is to be presented by default.’ The Petition fails to provide any argument or evidence demonstrating that the described predetermined intervals are included in Shimizu’s nodes.” (quoting Ex. 1023, 16 (emphasis Patent Owner’s))).” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,155,451
• Snap Inc. v. You Map Inc.All claims unpatentable
  PTAB · Aug 31, 2023 · IPR2022-00568 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Feldman and Jackson, or Feldman, Jackson, and Rush; the contingent motion to amend is granted.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering, computer science, or a related field, plus two years’ work or research experience with location-based content delivery and/or visualization.” Pet. 5 (citing Ex. 1003 ¶¶ 19– experience and vice versa.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, testifies that he “generally agree[s]” with Petitioner’s proposed articulation, and provides substantially the same expression of the level of ordinary skill in the art. Shamos Decl. ¶¶ 30–31. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6

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

    “Although Patent Owner appears to argue that applying the preference factors to a general score does not encompass weighting the general score’s components (see, e.g., id. at 10–12; Sur-reply 13–16), this is not reflected in Patent Owner’s proposed construction (PO Resp. 12). Patent Owner’s construction provides no limitation on how the preference factors are applied to a general score. See id. To the extent Patent Owner argues that the phrase “applied to,” as recited in the claim, excludes such component-based weighting, we disagree. Rather, the record better aligns with Petitioner’s argument that “applied to” involves a linear combination of values, which could be the values of the general score’s components. See Pet. 30–31. Petitioner’s position is supported by the plain language of the claim, the ’727 patent’s discussion of weighted aggregation, and Mr. William’s testimony—all of which indicate that weighting the component scores is encompassed by claim 1. As for the plain language, the claim does not define how the factors are “applied to” the general score. Rather, the claim only recites that they are. In the context of the claim, the preference factors are applied to the general score. Patent Owner does not dispute this. PO Resp. 12. Claim 1 further recites that the customized score is based on the application of the preference factors to the general score. Ex. 1001, 23:14–27. We note that the generate the combined ranking, which is then used for the recited selection. Beyond that, the claim does not specify how the two rankings are used or how the combined ranking must be generated. Thus, under the claim’s plain language, the customized score can be used to rank the posts and is based on the general score. Id.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “adequately supported. We find that Mr. William’s declaration is adequately supported. This is not case where an expert “does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. § 42.65(a). Rather, Mr. Williams adequately supports his testimony about the second preference factor with reasoning based on Jackson’s teachings about how the social-network distance is used to weight the global score. See, e.g., Williams Decl. ¶ 133 (citing Ex. 1006, Fig. 4A, 16:23–25, 58–60). weighting criteria can be used together. Id. ¶¶ 147–149 (citing Ex. 1006, 3:57–44:22, 5:53–58, 9:54–67, 13:17–22, 17:47–67). Mr. Williams’s analysis relies on Jackson’s discussion of using multiple factors to score a post. Ex. 1006, 17:47–55, cited in Williams Decl. ¶ 147; see also Pet. 42–43; Reply 9. Mr. Williams also cites Jackson’s discussion of how social-network distance and geographic distance can be used together. Williams Decl. ¶ 147 (citing Ex. 1006, 3:57–4:22). We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144). We disagree with Patent Owner’s argument that neither Petitioner nor” slip op. at 31

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

    “We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144).” slip op. at 32

  Patent outcomesUS 10,616,727 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,616,727
• Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00696 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1, 2, 6, 8–12, and 15–20 were held unpatentable as obvious over Smith; claims 1, 10, 11, 16, and 17 were also held unpatentable over Sommer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Both Everi and Sightline agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial 3 Although occasionally we may focus on Sightline’s arguments, we do not shift the ultimate burden from Everi. We focus on Sightline’s arguments merely to identify issues in dispute, many if not all of which we find unpersuasive in view of the record as a whole. regulations—whether such familiarity is implied per Everi or stated outright per Sightline. Thus, we adopt Everi’s definition of the level of skill in the art with Sightline’s additional modification of that definition. C. Claim Construction” slip op. at 5

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “At the outset, we note that Sightline’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. As stated in the “[q]ualifications” section of his declaration, Mr. Crevelt formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”5 Id. ¶ 9. Mr. Crevelt’s declaration also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 4 Sightline acknowledged as much during the oral hearing. See Hrg. Tr. 40:16–23. 5 Sightline’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt explains in his declaration that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.6 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s declarations should be accorded no weight and disregarded, as Sightline mistakenly believes. E. Everi’s Reliance on the “Immediately Envisage” Standard” slip op. at 9

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

    “As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 8:26–30) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightline’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’708 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its description ever mentions using the gaming account to accomplish that objective. Id. at 4 (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’708 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26–30. Sightline does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Sightline’s attempt to import concepts from the embodiment of Figure 8 into the meaning of “gaming account.” D. The Credibility of Everi’s Expert” slip op. at 7

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

    “Those disclosures, when read in the context of Figure 1, clearly support that Smith’s player account 132 holds funds for wagering by the player at a gaming establishment. As such, we find that player account 132 is a “gaming account” as properly construed—“financial account . . . that is associated with a player . . . and maintained by a casino.” To the extent Sightline’s declarant opines otherwise, we do not find that testimony credible or persuasive, as it is clearly inconsistent with Smith’s express teachings. See, e.g., Ex. 2001 ¶¶ 32–41. More persuasive is the testimony of Everi’s declarant, Mr. Crevelt, that player card account 132 is a financial account that holds funds for use by a player in wagering at a casino or other gaming establishment. See, e.g., Ex. 1001 ¶¶ 102, 106, 109, 115; Ex. 1039 ¶¶ 14–16. Also, to the extent Sightline faults Smith for not disclosing that player account 132 or player casino account 604 “are used in a non-gaming environment” of a casino (PO Resp. 31–33), we are not persuaded for the simple reason that it is premised on an improper claim construction, namely, a construction proposed by Sightline but rejected by us, as discussed above in Section II.C. Having considered the evidence of record and the parties’ arguments, we find that Smith teaches the “gaming account” limitation of claim 1. Sightline raises the same argument with respect to the “gaming account” limitation in independent claim 18 as it does for claim 1. See PO Resp. 41– 42. Thus, for the same reasons as claim 1, we find that Smith meets the “gaming account” limitation of claim 18. See Pet. 40–41.” slip op. at 18

  Patent outcomesUS 8,998,708 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,998,708

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.