- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01405 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–20 over Torii, claims 1–3, 9, 11–13, and 19 over Ide, and claims 1–7, 10–17, and 20 over Gambino with Conn, with Ding for claims 10 and 20.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“of the substrate is based on Dr. Thompson’s testimony. In his first declaration, Dr. Thompson relies on Conn’s paragraphs 31 and 35 to support the annotated version of Figure 2 in the Petition. Ex. 1003 ¶¶ 83–84. As discussed above, paragraphs 31 and 35 do not disclose that the anchor vias 14 are located in the corner of the substrate. The second annotated Figure 2 shown in Petitioner’s Reply does not appear in either of Dr. Thompson’s declarations (See Ex. 1003, Ex. 1034). It appears to be mere attorney argument not evidence. Dr. Thompson testified in his deposition that the second annotated version is based on his interpretation of Conn. Ex. 2009, 45:2–46:9. Because Dr. Thompson’s testimony is not adequately supported by the disclosure of Conn, we find that his testimony on the point of whether Conn discloses anchor vias located in the corner of the substrate is entitled to little, if any, weight. 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.”). Therefore, because Petitioner has the burden of proof, we find that Petitioner has not shown that Conn discloses this limitation.” slip op. at 27
- ExcludeMotion to exclude, deniedDenied
“J. Petitioner’s Motion to Exclude Petitioner moves to exclude Exhibits 2007 and 2008. MTE, 1. Petitioner argues that the Exhibits are in violation of FRE 401, 402, 403, and 901. Id. We do not rely on either Exhibit 2007 or 2008 in this Decision. Consequently, we deny Petitioner’s MTE as moot.” slip op. at 72
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner that the differences between the parties’ proposed levels of skill in the art are immaterial for the purposes of this Decision. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’826 patent and the prior art. Further, our determination in this case would not be affected if we were to adopt Patent Owner’s proposed level of skill in the art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 1 uses the term “comprising” which is open-ended and normally does not exclude additional, unrecited elements. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). This is in contrast to the phrase “consisting of.” See Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016) (there is an “exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements.”). The use of comprising in claim 1, thus, weighs against a construction limiting claim 1 to direct contact between the backside metal layer and the bottom surface of the semiconductor substrate. Additionally, we note that claim 1 does not recite that the backside metal layer is “directly on” or “formed on” the bottom surface or similar language that would suggest “direct contact” may be required. For these reasons, we determine that the language of claim 1 does not support Patent Owner’s proposed construction.” slip op. at 17
Patent outcomesUS 9,245,826 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,245,826 - TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution deniedPTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,089,443 - Google LLC / Cellco Partnership D/B/A Verizon Wireless et al. v. Headwater Research LLCInstitution deniedPTAB · Dec 4, 2024 · IPR2024-00944 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Rao anticipates or renders obvious claims 79 and 83.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’541 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied.” slip op. at 24
- BurdenNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the Petition (Ex. 1002 ¶¶ 189–193 (cited by Pet. 22)) and see no discussion as to what causes policies 520 to be sent to filter 322. See Ex. 2001 ¶¶ 42–43 (Mr. de la Iglesia testifying to same). Although Rao describes how agent 326 sends policies to filter 322, Rao is silent as to what causes that transmission: In some embodiments, the agent 326 indicates the priority to the filter 322 for management of network packet queues 540a- 540n to apply the indicated priorities. The agent 326 may communicate the priority of network packets to the filter 322 by any suitable means and/or mechanism such as via an application programming interface (API), such an IOCTL interface, or any other type and/or form of interface known to those ordinarily skilled in the art. Ex. 1002 ¶ 190. That is, Rao is silent as to whether filter 322 requests the policies (as Petitioner argues) or agent 326 acts on its own to send the policies (see Prelim. Resp. 3–6; Ex. 2001 ¶¶ 34–40). And without the message being sent to the filter, there is nothing for the filter to intercept.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Neither the Petition nor Dr. Wolfe’s testimony provide any discussion as to why a person having ordinary skill in the art would have modified Rao to teach the additional limitation recited in either claim 79 or 83. See Pet. 22–23; Ex. 1015 ¶¶ 252–257. This stands in contrast to other portions of the Petition where Petitioner clearly set forth both anticipation and conditional obviousness arguments, including a reason to modify Rao. See, e.g., Pet. 13–15 (arguing that Rao discloses limitation 1e or that a person having ordinary skill in the art “would . . . have been motivated” to modify Rao). Thus, although the Petition purports to argue that claims 79 and 83 are obvious,8 the Petition lacks sufficient argument setting forth the basis for such an obviousness argument. At most, there is a conclusory statement that claims 79 and 83 are obvious. See Pet. 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons.”). That is not sufficient. Where, as here, claims are alleged to be unpatentable as obvious over the prior art, Petitioner cannot make its case solely through mere conclusory statements. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Moreover, it is not our role to examine the prior art advanced by Petitioner and fill the gaps in Petitioner’s reasoning and factual assertions. Magnum Oil Tools, 829 F.3d at 1381 (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised 8 See Pet. 1 (“Rao ‘anticipates and/or renders obvious’ claims” 1, 79, and 83), 6 (“Rao anticipates most of the limitations discussed under this Ground for the reasons provided below. Rao renders these same limitations obvious for the same reasons. Rao also renders obvious the remaining limitations discussed under this Ground.”); Pet. Prelim. Reply 1 (“Rao therefore discloses or renders obvious intercepting a stack API level request by its filter requesting priorities from the agent.”). by the petitioner during an IPR.”); see also SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (U.S. 2008) (“in an inter partes review the petitioner is master of its complaint”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Because Petitioner has not offered any reason why a person having ordinary skill in the art would have made a modification to claims 79 and 83, Petitioner has not sufficiently shown that claims 79 and 83 would have been obvious. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of [the] prior art to arrive at the claimed invention.”).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,589,541 - PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - Jpmorgan Chase Bank, N.A. v. Identitii LimitedInstitution deniedPTAB · Aug 26, 2024 · IPR2024-00593 · APJ Meredith C Petravick · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We determine that the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–2 and 4–20 are unpatentable over Kennedy and Kurani-816. 2. Ground 2 — Kennedy, Kurani-816, and Yago Claim 3 depends from claim 1. We determine that Petitioner has not met its burden to show a reasonable likelihood that claim 3 would have been obvious over Kennedy, Kurani-816, and Yago. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner. We are not persuaded by Petitioner that it would have been obvious to a POSITA, based on the disclosures of Kennedy and Kurani-816, to store a digital title in memory 228 of processing server 102 for the purpose of record keeping. See Ex. 2013 ¶ 91. Kennedy discloses that processing server 102 includes a memory 228 for storing data used to perform its function, such as encryption keys, algorithms, and application programs. Ex. 1033 ¶ 46. Kennedy does not disclose memory 228 being a document store for record keeping of transaction messages or other transaction data. See id. In Kennedy, a private blockchain 206 stores data record 208 containing the transaction data. See e.g., id. ¶¶ 48–51; Fig. 2. Kurani-816 discloses digital titles that are specific to an asset and not to a particular financial transaction. Ex. 1034, 3:13–15. The digital titles are stored in a database at a digital title company and provided to the seller or buyer during a transaction. See e.g., id. at 6:34–9:7. Kurani-816 does not disclose transmitting the digital title to a financial transaction processing server, like processing server 102. Id. Thus, neither Kennedy nor Kurani-816 teaches transmitting documents pertaining to a financial transaction and a token corresponding to a financial transaction to identify the document to a first document store, as required by claim elements 1 and 6. For the reasons above, we are not persuaded by Petitioner that claim 1 would have been obvious to a POSITA over Kennedy and Kurani-816.” slip op. at 19
- Parallel petitionsNot reached
“Because we have denied institution in IPR2024-00590 and deny institution in this proceeding based on the patentability merits, we do not need to reach the issue of whether both Petitions should be instituted.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“patent applications, including one filed on August 14, 2015. Ex. 1001, code (30). Petitioner asserts that the ’413 patent is not entitled to priority to August 14, 2015 because the provisional applications do not provide written description support for certain claim terms. Pet. 6–15. Patent Owner disputes Petitioner’s assertion. Prelim. Resp. 20, n.7. As both Kennedy and Kurani-816 were filed after August 14, 2015 (see Ex. 1033, code (22); Ex. 1034, code (22)), if the ’413 patent is entitled to priority to August 14, 2015, then neither Kennedy nor Kurani-816 is available as prior art. We do not need to reach this issue because, regardless of whether Kennedy and Kurani-816 are available as prior art, Petitioner has not shown a reasonable likelihood that it would have been obvious to a POSITA to combine Kennedy and Kurani-816 as proposed by Petitioner.” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,984,413 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Aug 11, 2023 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because Scott did not show a reasonable likelihood of anticipation or obviousness for claims 1–3, 5–10, 16–18, and 21–25, including the continuous retrieval and evaluation limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The server system 12 may [determine the appropriate value of a cash out offer] at any time, such as, and without limitation, at certain discrete time points of a wagering event (e.g., halftime of a sporting event) or it may continuously evaluate the wagering event and incoming wagers and make multiple determinations in real time. Ex. 1001, 17:52–57 (emphasis added). The parties’ witnesses interpret this language in the same manner. Patent Owner’s witness, Dr. Vancura, testifies that, here, “the ’779 patent draws a distinct contrast between ‘discrete points’ (e.g., halftime or other stoppage of play) and ‘continuously’ (e.g., real time during live play and thereby extremely time-sensitive).” Ex. 2001 ¶ 48 (emphasis omitted). Petitioner’s witness, Mr. Crevelt, agrees that the ’779 patent distinguishes performing tasks continuously from doing so at discrete times. Ex. 1007 ¶¶ 122, 137. We agree with this testimony and interpret “continuously” performing a task to exclude performing that task at discrete time points.3” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Scott discloses that the “determination of a current cash value can be triggered by various events.” Ex. 1006 ¶ 36. For example, “as each individual playing card or slot symbol is revealed, a new current cash value may be calculated.” Id. ¶ 67. “Alternatively, current cash value may be determined and presented at the end of each dealing stage of a game,” such 3 We note that “continuously” was not discussed during prosecution of the application resulting in the ’779 patent. See generally Ex. 1002. as “after the initial deal, after one or more cards are held, or after one or more replacement cards are dealt” in a video poker game. Id. Thus, Scott’s retrieval of game information occurs at discrete time points. Petitioner’s contentions acknowledge such triggering events in Scott. See Pet. 39 (arguing that Scott’s value engine retrieves data “as each individual playing card or slot symbol is revealed” or “with newly presented game symbols” (emphasis omitted)). Mr. Crevelt asserts that Scott discloses “a real time and continuous evaluation and determination of the current cash value.” Ex. 1007 ¶¶ 122, 137 (citing Ex. 1006 ¶ 67). However, we do not see any such disclosure of performing tasks “continuously” in Scott. At the disclosure relied upon by Mr. Crevelt, Scott merely discusses presenting current cash values at various discrete times, namely “after each card or other game symbol is dealt to a player” or, “[a]lternatively, . . . at the end of each dealing stage of a game,” such as “after the initial deal, after one or more cards are held, or after one or more replacement cards are dealt” in a video poker game. Ex. 1006 ¶ 67. Neither Petitioner nor Mr. Crevelt explains adequately how Scott’s processor is configured to continuously retrieve data related to a status of a wagering event, recalculate wager information based on the continuously retrieved data, or continuously evaluate the recalculated wager information as recited by the challenged claims of the ’779 patent.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 21, 2023 · IPR2023-00264 · APJ Hyun J Jung · IPR · Institution
Institution denied on the merits: Petitioner failed to show a reasonable likelihood that claims 1, 2, 24, 28-30, 54-64, and 83 were unpatentable over DeWaal or DeWaal and Schugar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we do not institute an inter partes review of claims 1, 2, 24, 28– 30, 54–64, and 83 of the ’716 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that one of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry.” Pet. 12 (citing Ex. 1007 ¶ 28). Petitioner also states that “[a] person with less education but more relevant practical experience may also meet this standard” and that the “description is approximate, and a higher level of education or skill may make up for less experience, and vice-versa.” Id. (citing Ex. 1007 ¶ 28). Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art and does not propose its own level of skill. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We understand that these independent claims are written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe independent claims 1 and 83 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. We similarly construe independent claim 54 to require a system wherein the controller receives a wager “in response to input from a player desiring to participate in . . . wagering events” (and thus, before the event) and (2) the wager is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.f.; Ex. 1007 ¶¶ 114–119. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 118 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claims 1 and 83 require the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claims 1 and 83 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claims 1 and 83.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,424,716 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 21, 2023 · IPR2023-00263 · APJ Hyun J Jung · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on anticipation or obviousness of claims 1 and 8.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we do not institute an inter partes review of claims 1 and 8 of the ’516 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We understand that claim 1 is written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe claim 1 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. Petitioner does not propose an interpretation of this term. Pet. § VII.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.h; Ex. 1007 ¶¶ 134–139. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 138 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to . . . a player desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claim 1 requires the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claim 1 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner does not rely on Schugar for teaching or suggesting the limitations regarding the “wager” of claim 1 and does not provide a rationale to combine the references that addresses the “wager.” See Pet. § IX.B. For the reasons stated above in the anticipation challenge, because Petitioner does not sufficiently show that DeWaal discloses limitations regarding the “wager,” Petitioner does not show a reasonable likelihood of prevailing in its challenge that DeWaal and Schugar would have rendered obvious claims 1 and 8.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,275,516 - PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19
- Parallel petitionsDenied
“sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. 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 Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068 - PTAB · Mar 13, 2023 · IPR2022-01298 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1, 2–12, 16–18, and 38 on all petitioned grounds, finding a reasonable likelihood that claim 1 would be obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Memo states that it may be useful to compare a trial date with evidence of a median time to trial. Director’s Memo 8. The purpose of doing so is to ascertain the likelihood of the scheduled trial date actually occurring on or around that date. Id. at 8 (“Stakeholders correctly noted that scheduled trial dates are unreliable and often change[,]” and a “scheduled trial date . . . is not by itself a good indicator of [when] the district court trial will occur.”). The Director’s Memo does not state that median time-to-trial statistics are themselves a trial date, or otherwise replace consideration of a trial date under Fintiv factor 2. And, in the circumstances here, where the case was transferred from the Western District of Texas, the usefulness of the median time to trial statistics is less clear. Ultimately, though, we will not speculate on when a trial may be scheduled. Accordingly, factor 2 favors not exercising our discretion to deny institution.” slip op. at 11
- Parallel petitionsDenied
“sufficiently address all the challenged claims” of the ’648 patent. Not. 1. According to Petitioner, “Patent Owner, via an exclusive licensee,” asserted a large number of claims in co-pending litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “A” and the Petition in IPR2022-01301 as “B.” Id. at 1–2.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 1 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 1 of the ’648 patent obvious to one of ordinary skill in the art at the time of the invention. 6. Summary of Claim 1 For all the foregoing reasons, we determine that Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combined teachings of Gottschalk and Kramer.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems, virtual reality systems, and/or augmented reality systems” but that “[a]dditional education might compensate for less experience and vice-versa.” Pet. 24–25 (citing Ex. 1005 ¶¶ 48–49). For purposes of this proceeding, Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with Petitioner at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. at 6. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’648 patent and the prior art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,301,648
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.