• DISH Network LLC v. Entropic Communications, LLCAll claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious, principally over Amit and Jacobsen and, for additional claims, Amit, Jacobsen, and DSL-Book; the Board did not reach grounds 1 and 2.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. Ex. 1002 ¶¶ 17–18; Ex. 2007 ¶¶ 57–58.” slip op. at 14

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

    “Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner

    “We do not agree with Patent Owner that Amit is restricted to “single frequency” modulation. PO Resp. 52–56. As Petitioner notes, Amit describes that its HCNM modem uses a channel (e.g., DOCSIS) containing two sub-channels for upstream and downstream signals. Pet. 24 (citing Ex. 1005, 15:18–28). This meets Patent Owner’s definition for multicarrier communications as multiple subcarriers to provide communications of a single channel. PO Sur-Reply 6. We further note that the claims do not recite “multicarrier communications” so the distinction Patent Owner attempts to draw is not supported by commensurate language in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in a claim cannot be relied upon for patentability). Furthermore, even if Amit were restricted to single carrier modulation, as Patent Owner argues, Petitioner relies on Jacobsen for its teaching of multicarrier modulation. Pet. 62–66; PO Resp. 52–56. In essence, Patent Owner attacks Amit individually and does not properly consider how a POSITA would have understood the combined teachings of Amit and Jacobsen. “Non-obviousness cannot be established by attacking references individually where the [challenge] is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” slip op. at 26

  Patent outcomesUS 7,594,249 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,594,249
• DISH Network LLC v. Entropic Communications, LLCAll claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-01060 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–2, 4–6, 8–10, 12–14, and 16–17 as obvious over Amit and Jacobsen; claims 2–3, 7, 9–13, 15, and 17 as obvious over Amit, Jacobsen, and DSL-Book.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the parties’ proposals and the record evidence, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A POSITA would have a bachelor’s degree in electrical engineering, computer engineering, or a related field, and two to three years of experience with broadband communication networks. Additional professional experience could substitute for education, and additional education could substitute for professional experience. We find Patent Owner’s proposal to limit a POSITA’s education and experience to “broadband networks over coaxial cables” too narrow. Although Patent Owner points to various parts of the ’249 patent as supporting its restrictive proposal, other parts of the patent are not so limited. For example, the patent’s technical field and summary are not limited to coaxial cable, and the patent discusses LAN wiring, twisted pair, and satellite as communications media that can be used. See, e.g., Ex. 1001, 1:11–16, 2:65–66, 3:9–37, 3:58–61, 7:4–5. In addition, while Patent Owner indicates that the ’249 patent addresses “the problem of tap port-to-port isolation and providing a suitable signal path for terminal-to-terminal communication in a coaxial cable wired building” (id. at 3:4–7), we see no reason why this problem and the solutions proposed in the ’249 patent (using frequency bins to bit load or equalization) would not be equally applicable to other kinds of communication media. Therefore, we find our adopted skill level to be consistent with the problems and solutions identified in the ’249 patent and prior art references asserted by Petitioner. In addition, we find the adopted” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims would have been “obvious under any reasonable interpretation, so no express constructions are required.” Pet. 3. Patent Owner does not offer any construction for any claim term. Accordingly, there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 15

  • BurdenUnpatentable

    “On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “On this record, we find that Petitioner has shown by a preponderance of the evidence that Jacobsen was publicly accessible more than one year before the ’249 patent. Jacobsen is thus § 102(b) prior art. By its own terms, Jacobsen indicates that it is one of the National Cable Television Association (“NCTA”) 1994 Technical Papers related to the 43rd Annual NCTA Convention and Exposition, New Orleans, Louisiana, May 22–25, 1994. Ex. 1007, 1–3, 6. This event and related papers address topics that would have interested persons in the field as we define their skill level. See § II.B, supra. The listing of Jacobsen as one of the papers covered in the event schedule suggests that POSITAs attending this event would have known of and had access to Jacobsen. Ex. 1007, 2–3. In fact, Mr. Bates, Patent Owner’s own expert witness, who was at least a person having ordinary skill in the art, testified that he was aware of Dr. Jacobsen’s work in the late 1990s, well before the priority date. See Ex. 1029, 52:10– 55:1. Therefore, a person having ordinary skill in the art would have known of Jacobsen before the priority date. See Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (holding that a catalog distributed at a conference was a printed publication); In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (holding a slide presentation at a conference was a printed publication); Mass. Inst. of Tech. v. AB Fortia, 774, F.2d 1104 (Fed. Cir. 1985) (holding that a paper disseminated to six people of ordinary skill in the art and discussed with between 50 and 500 people skilled in the art was a printed publication). The evidence further demonstrates that Jacobsen was acquired by the Linda Hall Library, Kansas City, Missouri, on September 19, 1995 and made available to the public shortly afterward. Ex. 1022 ¶¶ 4–5, 13; Ex. 1031 ¶¶ 7, 17. Availability to interested persons more than one year before the ’249 patent is corroborated by other publications of Jacobsen, as well as Dr. Acton’s testimony. Ex. 1022 ¶¶ 10–13; Ex. 1031 ¶¶ 10–12, 16–17; Ex. 1003 ¶ 247. We do not agree with Patent Owner’s arguments against Jacobsen. There is no requirement in the law for Ms. Munford to be an interested person or POSITA in order for her to testify about how the Linda Hall Library acquired and cataloged Jacobsen so that interested persons would be able to access it. Her testimony relates to the public accessibility of Jacobsen, not its technical content. See, e.g., Ex. 1031 ¶ 6. She need not qualify as a POSITA to offer this testimony. Ms. Munford further testified that MARC records are used by the public to discover materials within a library’s collection, and that library users, which would include interested persons and POSITAs, do not require knowledge of how MARC records are maintained in order to use them. Ex. 1031 ¶ 8. And even if MARC records are editable, as Patent Owner argues, Patent Owner has not shown that the MARC record for Jacobsen was altered, and Ms. Munford states that such an alteration would have been unusual practice for a library. Ex. 1022 ¶ 4; Ex. 1031 ¶ 14.” slip op. at 21

  Patent outcomesUS 7,594,249 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,594,249
• Abbott Laboratories / Abbott Diabetes Care Inc. v. Altivera LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,969,307
• Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,488,451
• Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentable
  PTAB · Jun 17, 2025 · IPR2024-00368 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–9 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The definition of a person having ordinary skill in the art that we adopted in the Institution Decision is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Patent Owner states that it agrees with that definition, while also proposing a broader definition that includes those with other qualifications. PO Resp. 2. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence” (PO Sur-reply 3 n.6), Patent Owner does not direct us to any specific portion of the record. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Additionally, while Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. PO Resp. 2; PO Sur-reply 3 & nn. 4, 6. Dr. Akl uses Petitioner’s definition in his testimony (Ex. 1003 ¶¶ 22, 23) and Patent Owner makes no argument regarding how, if we adopted Patent Owner’s broader definition, Dr. Akl’s conclusions would be affected. Patent Owner’s use of its definition does not describe the conclusions of one “educated in general physics” differently to one of ordinary skill as defined by Petitioner. PO Sur-reply 6. Patent Owner does not present declarant testimony regarding knowledge of one of ordinary skill in the art under any definition.3 For these reasons, we maintain the definition of a person having ordinary skill in the art we adopted in the Decision on Institution: a person having ordinary skill in the art would have had experience in the hardware and software used in the field of securely transmitting and processing authorization requests over wired and wireless networks, such as requests for the processing of financial transactions, and a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have one or two years of experience with wired and wireless 3 See infra footnote 5. as financial transactions. Less experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Having analyzed the arguments and the evidence cited by Patent Owner, we do not agree. We begin with the claim language, which does not further describe the two transmission channels, let alone contradict the plain meaning. Ex. 1001, 6:5–19. Dependent claims also shed no additional light. Certain claims further specify transmission-channel-related requirements: that the first transmission channel be “selected from the group consisting of wireless and landline channels” (claim 7); that the request received via the first transmission channel be “provided via the Internet” (claim 5); or that the notifying step (via a second transmission channel) comprise “sending an SMS message to the customer (claim 2). Id. at 6:20–21, 6:28–29, 6:33–35. No claims further restrict claim 1 by describing both transmission channels. Id. Claim 9 requires that the notification be “substantially concurrent,” but nothing in the record establishes that substantially concurrent authorization and notification would require non-overlapping transmission channels, or that an overlap in the transmission channels, even if it did “encumber” the authorization process with the notification process, would prevent the processes from being “substantially concurrent.” While Patent Owner presents arguments about “the gist” of the invention (PO Resp. 4) and describes “an immediate separation of the two processes” as being disclosed by Figures 1 and 2 of the ’564 patent’s specification, we do not see in the specification an indication of a special disavowal of a broader scope. See Phillips, 415 F.3d at 1316–1317; PO Resp. 13 (“The specification of the ‘564 Patent does not express any intent to impart a novel meaning to the term distinct.”). Although we agree with Patent Owner that Figure 1 illustrates transmission channels that are separate and non-overlapping, we do not see any indication that this is more than a description of preferred embodiments or that there was a limitation of the invention to these embodiments, and our reviewing court “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). The specification similarly does not support that Figure 2 is intended as limiting.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Because we do not adopt Patent Owner’s construction (including considering its arguments regarding speed and security of transmissions in the ’564 patent), and instead adopt a construction encompassing overlapping between distinct transmission channels, see supra Section II.C.1, we determine that the requirement of limitation 1d that “the second transmission channel [must be] distinct from the first transmission channel” is disclosed by the different connections, different hardware elements, and independent operation of the two transmission channels identified in Horie, even though they overlap to some extent. Ex. 1006 ¶¶ 44, Fig. 1; Ex. 1003 ¶¶ 224–227; see PO Resp. 9. Lastly, Horie discloses that the authorization of a transaction occurs without requiring a response from the customer. Ex. 1006 ¶¶ 57, 58, 73; Ex. 1003 ¶¶ 232–233. For these reasons, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 was anticipated by Horie.” slip op. at 29

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

    “Obviousness Over Horie Petitioner additionally argues that each of claims 1–9 are obvious over Horie. Pet. 38–43. Because we determine that the challenged claims are anticipated by Horie, we do not address the parties’ arguments regarding those claims based on an alternate ground. See Boston Sci. Scimed, Inc. v. Cook Gp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (“We agree that the Board need not address issues that are not necessary to the resolution of the proceeding.”).” slip op. at 34

  Patent outcomesUS 8,783,564 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,783,564
• Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentable
  PTAB · Jun 17, 2025 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1–2 and 6–7 as anticipated, and claims 3–5 as obvious over Horie and Kobayashi.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. We determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.” slip op. at 10

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

    “construction.” Pet. 8. However, Petitioner explains the term “merchant’s” recited in independent claims 1 and 6. Id.; see Ex. 1001, 5:54, 5:56, 6:52. The possessive term “merchant’s” is not followed by a subject noun. See id. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. Institution Decision (Inst. Dec. 11), Petitioner adds that Patent Owner in a related proceeding explained “the expression may refer to anything in possession of, or under the control of the merchant, as the use of the possessive form implies.” Pet. Reply 2 (citing IPR2024-00367, Paper 10 (Patent Owner Response), 4)10. This explanation accords with Petitioner’s argument that “merchant’s” includes least a “merchant’s terminal.” Accordingly, we are persuaded by Petitioner’s argument and interpret “merchant’s” as at least including a “merchant’s terminal.”” slip op. at 11

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

    “We need not construe explicitly any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 12

  • BurdenDecided for petitioner

    “Petitioner argues that Horie anticipates claims 1 and 2. Pet. 21–30. As discussed above, Patent Owner has not presented any arguments in a Response. The burden however remains on Petitioner, so we examine the Petition’s contentions to determine if they show by a preponderance of the evidence that the claims are unpatentable. For the reasons set forth below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 and 2.” slip op. at 12

  Patent outcomesUS 7,954,706 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,954,706
• Google LLC v. Ecofactor, Inc.Instituted
  PTAB · May 13, 2025 · IPR2025-00097 · APJ Brent M Dougal · IPR · Institution

  The Board instituted IPR on claims 1–18, finding a reasonable likelihood that claim 1 is unpatentable over Hildebrand alone or with Shah.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have” slip op. at 4

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

    “Petitioner further identifies that Shah similarly teaches calculating operational efficiency values for an HVAC system and using these values “to monitor the integrity of the thermal system.” Id. at 17–18 (quoting Ex. 1006, 4:63–5:10). Petitioner matches these and other teachings in combination with Hildebrand to each of the limitations of claim 1. Id. at 17– 10:32–36, 11:59–61, 12:2–20, Fig. 1; Ex. 1002 ¶¶ 61–140). Petitioner also provides an extensive discussion of the reasons to combine Shah with the system of Hildebrand, such as to avoid being limited, like Hildebrand, to comparisons of system efficiencies between time periods with the same outside temperature. Id. at 19; see also id. at 18–24. We have reviewed the Petition and supporting evidence and determine that the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing that claim 1 is unpatentable over Hildebrand alone or in combination with Shah.3” slip op. at 6

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

    “C. Claim Construction We construe the claims in accordance with the ordinary and customary meaning 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). No terms need to be expressly construed at this time.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 11,835,394
• T-Mobile USA, Inc. / AT&T Services, Inc. et al. v. Headwater Partners II LLCInstituted
  PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution

  Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes 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. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10

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

    “Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,094,868
• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• PLR Worldwide Sales Limited v. Flip Phone Games, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents 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.