- Abbott Laboratories / Abbott Diabetes Care Inc. v. Altivera LLCAll claims unpatentablePTAB · Jul 15, 2025 · IPR2024-00425 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–3, 5, 9, and 10 are unpatentable as obvious over Beck, Heller, and Lovejoy; the Board did not reach the alternative Bandy grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment. See generally PO Resp. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’307 Patent. Accord Inst. Dec. 8–9.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“both the unique sensor ID as well as the associated unique wireless device ID is contradicted, or at least unsupported, by the claim language and the Specification. We determine that this limitation does not require authentication of both the unique sensor ID and the unique wireless device ID, or otherwise require authentication using the unique wireless ID. Rather, the limitation only requires authentication of the unique sensor ID. The language and structure of the claim itself, “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” requires authentication of the unique sensor ID but not the unique wireless device ID. See Ex. 1001, 19:51–52 (emphasis added). The portion of the limitation reciting “associated with said unique wireless device ID” is linguistically an appositive modifying the “unique sensor ID.” Indeed, Patent Owner acknowledges the “plain meaning of the claim term is that the remote server authenticates the unique sensor ID and that such unique sensor ID is associated with a unique wireless device ID.” PO Resp. 18.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed constructions of any of these other claim terms or phrases. PO Resp. 24. We agree with the parties that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). And we agree with Petitioner’s uncontested identification of the recited functions and corresponding structure for these limitations for the reasons explained by Petitioner. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); id. at 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10– 11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). We adopt the uncontested constructions identified by Petitioner, as” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with Petitioner that the improvements offered by the incorporation of Heller’s teachings would have motivated one of ordinary skill in the art to combine the teachings of Beck and Heller in the manner proposed by Petitioner. Confirming Petitioner’s assertion that the combination yields improvements, Heller states that it improves the type of glucose monitor used in one of Beck’s embodiments. Beck states that its “medical device 130 includes a glucose meter” which “measure[s] blood glucose levels of blood applied to test strips.” Ex. 1007 ¶ 34. Specifically addressing such “conventional” test strip glucose monitoring, Heller states that its in vivo glucose sensor system addresses a need for continuous or automatic monitoring in a small, comfortable device. Ex. 1016, 2:1–7, 2:15–58, 3:19–25. As such, we agree that a person of ordinary skill in the art would have been motivated to combine the teachings of Beck and Heller to improve Beck’s medical device. See KSR, 550 U.S. at 401. We further agree with Petitioner that a POSITA would have been motivated to incorporate sensor implementation details described in Heller, e.g., an A/D converter and patient attachment systems, with Beck’s medical device. Pet. 44–45, 53, 55; Ex. 1003 ¶¶ 228, 234, 236–238, 259, 267, 278, which do no more than yield predictable results, e.g., converting signals or attaching a sensor to a patient. See KSR, 550 U.S. at 401 (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 20
Patent outcomesUS 7,969,307 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,969,307 - Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-01334 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 6:18–26. Petitioner argues that “an ATM is not a party to a transaction—the parties are the user and the bank, and the ATM is the mechanism through which the bank’s accounts are accessed.” Reply 5–6 (citing Ex. 1026 ¶ 13). Similarly, Petitioner argues, a file “is not a principal party to a transaction—rather the user and the provider of the file (e.g., a vendor) are the parties.” Id. at 6 (citing Ex. 1026 ¶ 13). Petitioner makes similar arguments for financial accounts, savings accounts, medical records, and insurance information. Id. (citing Ex. 1001, 6:18–26; Ex. 1026 ¶ 14). We agree with Petitioner. The specification, here, gives several examples where the application being accessed is not, itself, a party to the transaction, but rather an asset of one of the parties or the mechanism by which the parties transact.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term ‘access message’ to mean ‘a signal or notification enabling or announcing access.’” PO Resp. 7. However, Patent Owner argues that applying “access message” to Ludtke’s transaction confirmation “fails to account for the claim term ‘access to an application.’” Id. at 7–8. Rather, Patent Owner argues, a transaction confirmation “is a message announcing that a transaction has been completed.” Id. at 8. Patent Owner contends that “[t]he plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object wherein the object is the claimed application.” Id. (citing access, MERRIAM-WEBSTER DICTIONARY (available at https://www.merriam-webster.com/dictionary/access)). Here, Patent Owner appears to retreat on its agreement that “access message” can include a signal “announcing” access, and suggests that we limit “access message” to a signal “enabling” access. However, Patent Owner then returns to its agreement, stating that “[i]t would be improper to construe ‘access message’ as something other than a signal or notification enabling or announcing a user’s access to (ability to enter, communicate with, or make use of) an application.” Id.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for petitioner
“As explained above, a person of ordinary skill in the art would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent, while additional education could substitute for professional experience, and significant work experience could substitute for formal education. Mr. Carrothers claims to be “a financial services and retail leader with approximately thirty years of experience working in a variety of leadership roles in retail payments.” Ex. 2018 ¶ 1. He lists professional and consulting experience with retail payments, operational and risk management of a credit card portfolio, and payment insurance and acceptances in stores and online. Id. ¶¶ 1–5. His Curriculum Vitae (Ex. 2018, Appendix A) lists education including a Bachelor of Business Administration and a Master of Business has either the technical education or the technical experience to be a person of ordinary skill in the art. In response to Petitioner’s challenge to Mr. Carrothers’ qualifications, Patent Owner does not contend that Mr. Carrothers is at least a person of ordinary skill in the art.7 Rather, Patent Owner argues that “[t]o put the asserted portions of Ludtke in context, Mr. Carrothers provided testimony regarding the processing of credit and debit card payments with respect to online transactions based on his expertise and experience with retail payments.” Sur-reply 1. Patent Owner uses Mr. Carrothers’ testimony to support arguments regarding the timing and parties to the communications generated by Ludtke’s system, and to support arguments that the TPCH is a party to Ludtke’s transactions. PO Resp. 13–17 (citing Ex. 2018 ¶¶ 20–31). We find that Mr. Carrothers testifies on technical details regarding unpatentability, and that a declarant testifying as to such subject matter should have at least ordinary skill in the art. Thus, Mr. Carrothers’ testimony is entitled to no weight. See Kyocera, 22 F.4th at 1376–77.” slip op. at 39
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00233 · APJ David C Mckone · IPR · Final written decision
Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In short, Patent Owner points to no language in the specification limiting the claims to transactions in which the application being accessed is, itself, a party to the transaction and Petitioner points to several examples in which the application being accessed is not a party to the transaction. Thus, Patent Owner has provided no persuasive basis to depart from the plain and ordinary meaning of the claims.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Differences, if any, between claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18, 19, and 22–27 and Ludtke; reasons to modify Regarding claim limitations 1ai, 1aii, and 1aiii, Petitioner argues that Ludtke teaches persistently storing, in a user identity/account information block of the transaction device, biometric information (e.g., fingerprint, retinal scan, voice, DNA, hand profile, face recognition), a plurality of codes and other values comprising a device ID code uniquely identifying the transaction device (e.g., globally unique silicon ID (GUID), magnetic strip, bar codes), and a secret decryption value (e.g., public key infrastructure (PKI) public keys and private keys). Pet. 9–21 (citing Ex. 1005, 5:11–20, 8:63–67, 9:18–25, 10:64–67, 11:1–5, 13:27–29, 13:39–41, 14:13–21, 19:9– 14, 19:29–40, 23:11–19, 30:18–27, 37:39–45, 38:1–3, 38:9–21, 38:25–29, 38:40–61, 39:7–18, 40:5–26, Figs. 7B–7C, 27, 33; Ex. 1003 ¶¶ 73–94). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. Based on Petitioner’s evidence, we find that Ludtke teaches claim limitations 1ai, 1aii, and 1aiii. More particularly, we find that Ludtke’s fingerprint, retinal scan, etc., are “biometric data”; that Ludtke’s GUID, magnetic strip, etc., are examples of “a device ID code uniquely identifying an integrated device”; and that PKI keys are examples of “a secret decryption value.” transaction device requests and receives a fingerprint sample or other biometric data. Id. at 21–22 (citing Ex. 1005, 14:33–42, 14:40–46, 16:47– 50; Ex. 1003 ¶¶ 95–96). As to claim limitation 1c, Petitioner argues that Ludtke’s transaction device compares the fingerprint sample to stored authorized samples to determine a match. Id. at 22 (citing Ex. 1005, 14:40– 46; Ex. 1003 ¶ 97). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. We agree with Petitioner and find that Ludtke teaches claim limitations 1b and 1c.” slip op. at 23
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution
The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- BurdenDecided for patent owner
“Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,557,788 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01389 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–4 because Petitioner did not show a reasonable likelihood of establishing unpatentability under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’000 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be 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 also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party proposes construing any claim term. Pet. 6; Prelim. Resp. 36. Based on the record before us, we do not find it necessary to provide express claim constructions of any 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 7
- Skill levelSkill level board ownOther
“3 The parties do not dispute that a skilled artisan “would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services.” Pet. 6 (citing Ex. 1003 ¶ 85); Prelim. Resp. 35– 36. 4 The record does not include allegations or evidence of objective indicia of nonobviousness.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“connotes interactivity, and does not explain why a “Data Animation Effect” would be interactive.6 These aspects of Figure 53 do not appear to show interactivity. Thus, the issue is whether selecting a choice other than “Hide” for “Scroll buttons” in box 710 of Figure 53 adds to chart 840, once published, a feature that allows a user to interact with that chart via scrolling, or whether “Scroll buttons” refers to some other feature of the configuration process (such as the scroll buttons shown in Figure 53 for scrolling through the various charts in the layout). Both experts provide conclusory testimony stating how they view Figure 53. Ex. 1003 ¶ 181 (“For example, Figure 53 of Rostoker shows the ‘Configure Chart View’ toolbar, which includes multiple ‘interactive’ features, such as making the chart ‘Selectable’ (suggesting interactivity using an input device such as a mouse), including ‘Scroll buttons’ to scroll the chart, and adding ‘Data Animation[s].’”); Ex. 2001 ¶ 141 (“Schmandt relies on the ‘Configure Chart View’ toolbar of FIG. 53 of Rostoker, but he is confusing the configuration step 330 of Rostoker with the end result.”). Petitioner invites us to speculate as to the behavior of features that are depicted in Figure 53 but otherwise are not described in any meaningful detail by Rostoker. We conclude that this is insufficient to show a reasonable likelihood of prevailing.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,520,000 - Tableau Software, LLC v. Icharts LLCInstitution deniedPTAB · May 14, 2025 · IPR2024-01388 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–18 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we do not institute an inter partes review of the ’595 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe a claim “using the same claim construction standard that would be 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” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At most, Jou teaches that it was known to interact with charts in a Windows environment or a browser window. Ex. 1007 ¶ 34. But Rostoker already teaches that a user could interact with a chart, via a graphical user interface in a web browser, while configuring the chart. Ex. 1005 ¶¶ 67–75. Petitioner does not explain persuasively why a skilled artisan, per the teachings of Jou, would have made Rostoker’s published charts interactive. Mr. Schmandt’s testimony that a skilled artisan “would have been motivated to incorporate Jou’s additional ‘interactive’ features into Rostoker’s system to enable users to better visualize and explore business data,” is not supported by his citations to Jou, at least as to whether a skilled artisan would have modified Rostoker’s published charts. Ex. 1003 ¶ 259 (citing Ex. 1007 ¶¶ 8, 9). Petitioner’s argument that Flash and Java could enable interactive features, at most, show that a skilled artisan could have implemented interactive features with Rostoker’s a reason why a skilled artisan would have made these modifications. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))). Thus, we are not persuaded that Petitioner is likely to show that a skilled artisan would have incorporated Jou’s interactive features into Rostoker to make Rostoker’s published charts interactive.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“client is required for display and usage of an existing QlikView document (.qvw file). While the QlikView Server is responsible for opening, hosting, and calculating the document, the clients are required for user interaction and presenting the document and its objects.” Ex. 1009, 123. Petitioner points to no persuasive evidence that a Java or AJAX object or client executing at a web browser is a website separate from the server that serves the object or client. Mr. Schmandt makes conclusory statements to that effect, but does not state the basis for his testimony. Ex. 1003 ¶¶ 338–339. Thus, Mr. Schmandt’s testimony on this point is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and support, and is entitled to little weight.”).” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,712,595 - Tableau Software, LLC v. Icharts LLCInstitutedPTAB · May 14, 2025 · IPR2024-01387 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–16 on all grounds asserted in the Petition, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art, would have had a B.S. degree in Computer Science, Computer Engineering, or equivalent experience relating to computing, as well as two to three additional years of academic or industry experience related to web application development and data visualization services. The [person of ordinary skill in the art] would have, therefore, been familiar with client-side scripting technologies, such as JavaScript and/or ActionScript. The [person of ordinary skill in the art] would have further worked as part of a multidisciplinary team and drawn upon not only her own skill but of others on the team, e.g., to solve a given problem. Pet. 4 (citing Ex. 1003 ¶ 70). Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. 31. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’892 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in deciding whether to institute trial.” slip op. at 8
- Expert testimonyPetitioner expert creditedOther
“Mr. Schmandt testifies that a person of ordinary skill in the art “would have understood that the QlikView Manuals disclose interactive charts that retain interactivity when published or embedded . . . also because [such a person] would have known how QlikView was actively being used on different web applications,” including on an online Web Selector Tool. Ex. 1003 ¶¶ 355–359 (citing Exs. 1024–1027). On the other hand, Dr. Miller testifies that “the QlikView clients must establish and maintain a connection to the QlikView Server to display and interact with the QlikView documents given that those documents are hosted on the QlikView Server.” Ex. 2001 ¶ 216. For the purposes of institution, we find Mr. Schmandt’s testimony persuasive because it is consistent with the disclosure of the QlikView Manuals discussed above. In contrast, Dr. Miller’s testimony, like Patent QlikView server to the recited claim limitations.10” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“h) Motivation to Combine the QlikView Manuals Petitioner argues that a person of ordinary skill in the art would have been motivated to combine the QlikView Reference Manual and the QlikView Server Reference Manual because they describe the same product suite and they cross reference one another. Pet. 58 (citing Exs. 1008, 1009; Ex. 1003 ¶¶ 294, 295). Patent Owner does not specifically respond to these arguments. See Prelim. Resp. Based on our review of the current record, at this stage of the proceeding, we determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of the QlikView Manuals in the manner asserted by Petitioner, with a reasonable expectation of success.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,271,892 - PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision
Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26
Patent outcomesUS 9,427,662 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,427,662 - PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentablePTAB · Apr 24, 2025 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–16 are unpatentable as obvious over Hays; the Board also found claims 8 and 16 obvious over Hays and Choi.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). skilled artisan “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems,” but notes that a skilled artisan “may have additional education that might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” PO Resp. 2 (citing Ex. 2004 ¶ 28). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. PO Resp. 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” PO Resp. 3. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s more specific proposal because it is consistent with the level of skill evidenced in the ’056 patent and the applied prior art, but we agree with Patent Owner that this does not affect our analysis; we would reach the same conclusions under Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language itself suggests no such restrictions. Rather, all the claim language recites is video-game content that is for use in the video game. The claim language does not specify who or what must use the content or how it must be used. Thus, the claim language itself is broad and includes none of the restrictions Patent Owner would place on it.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Hays discloses that an advertiser can target particular ads at particular times, such as “air[ing] the Domino’s ad campaign” after a “game has been played for 45 minutes.” Ex. 1005 ¶ 22. Thus, an advertiser selects ads to run, and those ads become part of the pool from which the advertising matching and weighting system selects ads. See Ex. 1005 ¶ 22 (“Based on information associated with each of the available ad units (e.g., current game environment, game title genre, predicted player demographic information for current available ad unit, player geography, time of day, etc.), the advertisement server may then (through matching and optimization) distribute and deliver targeted advertisements to players’ gaming devices, where the advertisements may be integrated into the relevant game areas in real time.” (emphasis added)). Thus, we agree with Petitioner that the ad targeting described in Hays’s paragraph 22 happens before the matching and weighting system determines which ads to serve. Pet. Reply 3–4 (referring to Hays’s paragraph 22 and arguing that the “pre-selection plainly happens serve to a particular mobile device”). In other words, ads are pre-selected before they are ultimately selected by the matching and weighting system. Petitioner’s contentions and Hays’s disclosures are consistent with the ’056 patent’s written description, which states the following: The pre-selected content may be stored on a storage medium accessible by the server. Updated content may be chosen from pre-selected content based on at least one of the factors including a type of the mobile communication device, a telecommunication service, a subscription associated with the mobile communication device, and a service provider of the telecommunication service. Ex. 1001, 11:34–40. Thus, the ’056 patent discloses that content is selected from pre-selected content. Claim 9 similarly requires identifying “what preselected in-game video game content to send,” meaning that content is selected from pre-selected content. See Tr. 31:2–5 (Patent Owner’s counsel’s argument that “there must be a pre-selection of certain content that will be available from which to select once the request is received, and then the checking step is performed in the various claims here”), 31:21–23 (Patent Owner’s counsel’s argument that “[t]here must be some pre-selection of, you know, kind of narrowed down content, if you will, but then when the request comes in, you choose among that pre-selected content for the final selection”). On this record, we find that Petitioner’s contentions and Hays’s disclosure of selecting ads to serve from a pool of ads that are selected ahead of time are consistent with the written description of the ’056 patent and show how Hays teaches the pertinent claim limitations.” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“argues that Hays “is only a ‘printed publication’ under § 311(b) as of the date it became available to the public—i.e., after the June 26, 2007, priority date of the ’056 Patent,” and, therefore, that Hays is “ineligible to be prior art in an IPR.” PO Resp. 56–58. The Federal Circuit has rejected this argument, holding that a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts a permissible ground of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–16 are unpatentable under 35 U.S.C. § 103(a) on the basis of Hays, which is a prior art printed publication.” slip op. at 17
Patent outcomesUS 11,117,056 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,117,056
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.