- PTAB · Aug 19, 2025 · IPR2025-00431 · APJ Donna M Praiss · IPR · Institution
The Board instituted review of claims 1–7 and 14–17 on the petition’s grounds, finding the preliminary record showed a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute inter partes review.” slip op. at 2
Nonecites Phillips · KSR · GrahamPatents in suitUS 11,799,131 - PTAB · Aug 12, 2025 · IPR2025-00405 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–6 and 12–26 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2025). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and the evidence of record as presently developed, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- BurdenNot reached
“3. Analysis On the preliminary record, we agree with Patent Owner that Petitioner fails to demonstrate that it meets the threshold showing under 35 U.S.C. § 314(a) for institution of trial with respect to Grounds 4C, 5C, and 6C.” slip op. at 91
Nonecites Phillips · KSR · GrahamPatents in suitUS 11,769,910 - PTAB · Jul 16, 2025 · PGR2025-00012 · APJ Debra L Dennett · PGR · Institution
Instituted PGR on claims 1–3 based on five grounds; the Board found each ground met the institution threshold on the preliminary record.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). A post-grant review may also be instituted when “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” See id. § 324(b). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of claims 1–3 of the ’201 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“At this stage of the proceedings, neither Petitioner’s nor Patent Owner’s proffered definitions of the level of skill appear appropriate. Petitioner’s proposal requires as little as a bachelor’s degree in organic chemistry and two years of experience as a laboratory technician working on development of molecules with targeted biological activity, and an ambiguous “understanding” of certain processes. Patent Owner’s proposal, other the other hand, requires multiple years of both formal training and actual, practical experience in highly specialized fields that involve detection of optical or radiolabeled compounds and use of molecular imaging techniques such as PET and SPECT. For the purposes of this decision, on the record at this time, we find that a POSA would have had a Ph.D. in chemistry, biochemistry, or a comparable field or an M.D., and at least four years of experience in chemical synthesis of compounds that may be used to target biologically-significant tissues. This definition appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). The parties will have the opportunity to cross-examine Dr. Martin and Dr. VanBrocklin in this proceeding to develop a full record for us to determine the weight that each expert’s testimony should be given. We invite the parties to further brief the definition of a POSA here, and whether we should discount either experts’ testimony due to lack of qualifications.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“c) Analysis On the present record, we find that “low molecular weight” is not limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration all concerns metabolomics and metabolites, and we find no reason that even a vague definition of metabolites applies to the claimed compounds. See Ex. 1002, ¶ 102. Moreover, the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’201 patent fall outside of Patent Owner’s proposed definition is persuasive (see id., ¶ 103), as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts’” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically form about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) The Pomper reference (Ex. 1006) also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 2002, ¶ 60; Ex. 1006, ¶ 12. The table giving the molecular weight of a “selection of compounds disclosed by Pomper” (see Ex. 2002, ¶ 62) is not persuasive in defining “low molecular weight,” as it does not explain how those included were “selected” and does not include molecular weights for all of the examples.7 In addition, Patent Owner’s definition does not appear to apply to all claimed compounds.8 7 At least one of the examples (SRV73) not included in the table appears to have a molecular weight well over “about 1,500 Daltons.” 8 See, e.g., claim 113 of Ex. 1006. Patent Owner’s arguments distinguishing “low molecular weight” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The ’201 patent defines “alkyl” as “a straight (i.e., unbranched) or branched chain, acyclic or cyclic hydrocarbon group, or combination thereof” “ that has “the number of carbon atoms designated (i.e., C1–C10 means one to ten carbons, including 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 carbons)” and “[i]n particular embodiments, the term ‘alkyl’ refers to C1-20 inclusive, including 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 carbons” “unless otherwise stated.” Ex. 1001, 39:44–58. Although substituents at the R1x position in the claims are limited to “C1-6alkyl,” those at position R3x are not. Ex. 1001, Certif. Corr. Patent Owner’s representation that “Jansen I provides ‘the following definitions’ stating that ‘alkyls groups of this invention comprise from 1 to 6 carbon atoms’” is inaccurate. See Prelim. Resp. 19. In fact, Jansen I states: The term “alkyl” by itself or as part of another substituent refers to a fully saturated hydrocarbon of Formula CxH2x+1 wherein x is a number greater than or equal to 1. Generally, alkyl groups of this invention comprise from 1 to 6 carbon atoms. Alkyl groups may be linear or branched and may be substituted as indicated herein. When a subscript is used herein following a carbon atom, the subscript refers to the number of carbon atoms that the named group may contain. Ex. 1007, 22:16–23 (emphasis added). Neither the ’201 patent nor its incorporation by reference of Jansen I would have conveyed to a POSA that the “(CO)alkyl” of the substituent in the R3x position in the claims is intended to comprise from one to six carbon atoms or is limited to any particular length and size. “(C(O)alkyl,” having no number of carbon atoms designated, means” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,938,201 - Digital Global Systems, Inc. v. Deepsig Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16
- Other 314aInstitution denied discretionary otherInstitution denied
“inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,777,540 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag GmbHSome claims unpatentablePTAB · May 14, 2025 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–10 and 12–15 are unpatentable as obvious over either asserted combination; claim 11 was not shown unpatentable under either ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The only significant difference between the positions of Petitioner and Patent Owner is that Patent Owner would require that a skilled artisan have coursework or training or work experience in multimedia systems in addition to the other requirements. Otherwise, the positions of the parties are similar. Based upon this record and the qualifications on which the parties and their experts agree, we determine that a person of ordinary skill in the art to which the ’669 patent relates would have at least a Master of Science Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or a similar technical Master’s Degree; or alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or an equivalent field with two or more years of work experience in a relevant field or relevant industry experience. However, our decision on obviousness is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Accordingly, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . 4 Neither party argues lexicography or disavowal applies to any claim term. See generally Pet.; see generally PO Resp. 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))). We apply the plain and ordinary meaning to all the claim terms. To the extent it is necessary to address the meaning of any claim term in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, we address the meaning as part of our unpatentability analysis.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“[1.0] A video playback system (1), comprising The Petitioner contends that the preamble of claim 1 is not limiting. Pet. 17 (“The preamble of claim 1 is not limiting because it merely states the purpose or intended use of the alleged invention. It does not define any of the claim limitations, which are set forth fully in the body of the claim (i.e., a video playback system).”). Nonetheless, Petitioner cites both Swafford and Masumoto and shows both cited references disclose video playback systems. Id. at 17–18. Patent Owner does not dispute Petitioner’s contention that the preamble is not limiting or dispute that the cited art discloses the preamble. See generally PO Resp. We determine that the preamble is not limiting but, if it were, the cited art has been shown to teach it. [1.1] a number of playback devices (6A, 6B) to playback a video on their” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. PO Resp, 47–48. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. After considering all the arguments and evidence offered by the parties, we determine that Petitioner shows that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 11,405,669 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part
“c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27
Patent outcomesUS 10,674,340 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,674,340 - DK Crown Holdings Inc. v. Diogenes LimitedAll claims unpatentablePTAB · May 9, 2025 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–3, 5–10, 16–18, and 21–25 are unpatentable as obvious over Scott; the Board did not reach the anticipation challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “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. 23 (citing Ex. 1007 ¶ 28). Petitioner states that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1007 ¶ 28). 1 The parties have not directed us to any such objective evidence. Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33; Ex. 2007 ¶ 46. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and adopt it as our own.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Both parties’ witnesses interpret “fixed odds” to mean the odds/multiplier of the wager is fixed at the time the wager is placed. See, e.g., Ex. 1007 ¶ 160 (“the wager on a bingo game would be a ‘fixed odds single’ wager when placed because the odds of winning are fixed” (original emphasis omitted, our emphasis added)); Ex. 2007 ¶ 135 (“‘fixed odds’ in the context of a ‘fixed odds single’ [means] a wager where a bettor is offered a multiplier for wagering on a given outcome(s), and where the multiplier and therefore the potential payout are fixed at the time the bettor places their desired wager”). It necessarily follows that the payout for the wager would also be fixed at the time the wager is placed. Petitioner does not dispute Patent Owner’s interpretation that “single” means the wager is for the outcome of a single event, as opposed to, for example, a parlay wager that involves the outcomes of multiple events. See, e.g., Pet. Reply 19 (“[an ordinarily skilled artisan] would understand the term ‘fixed odds single’ to refer to a game where ‘the odds of winning are fixed, and the wager is on a single outcome’”). Accordingly, we interpret “fixed odds single” to mean a wager on the outcome of a single event in which the odds/multiplier is fixed at the time the wager is placed. The parties disagree, however, on whether bingo is a fixed odds single wagering event. Dr. Vancura testifies that bingo does not involve a fixed odds single wager because “[b]ingo does not have a ‘fixed odds’ payout — it has a ‘pot’ available to be won, which is either pre-determined by the operator . . . , or more commonly, depends on the number of cards in play wherein part of the purchase price of each card is contributed to a jackpot.” Ex. 2007 ¶ 136. Mr. Crevelt testifies that bingo does involve a fixed odds single wager because all bingo cards have the same chance of winning prior to initiation of the game. Ex. 1007 ¶ 160. Mr. Crevelt does not address meaningfully the fact that the odds of winning at bingo are a function of the number of cards in play—as the number of cards in play increases, the chances that another card first achieves “bingo” increase and the initial player’s chance of winning decreases. Nor does Petitioner explain persuasively how the disclosure of a fixed odds betting terminal in the ’779 patent supports its assertion that bingo is a fixed odds single wager. See Pet. Reply 20. Notably, a reference relied upon by Petitioner explains that fixed odds betting terminals host games other than fixed odds games. See Ex. 1058, 28 (explaining that fixed odds betting terminals “are machines on which can be played fixed odds and betting games”); see also Tr. 23:12–22 (Petitioner’s counsel agreeing that there has been some scope creep regarding fixed odds betting terminals such that they include games other than fixed odds single wagers). Thus, we agree with Patent Owner that bingo is not a fixed odds single wager.” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“However, we agree that claim 16 recites a system where multiple participants place wagers on the same wagering event. Claim 16 uses both plural and singular terms, indicating that the recited plural terms refer to a plurality of elements and the recited singular terms refer to a single element. For example, claim 16 recites “receive, by the trading engine module, a plurality of wagers on the wagering event from the plurality of input devices via the communications interface, the plurality of wagers input by a plurality of participants via the user interfaces of respective input devices from the plurality of input devices.” Ex. 1001, 54:11–16. We interpret this language to mean that a single trading engine module receives wagers on a single wagering event from a plurality of participants each using a different input device. Scott discloses “a number of players electronically connected” where one player may sell symbols to “other players.” Ex. 1006 ¶ 96. Scott also discloses various types of games, including games typically played by more than one player. See, e.g., id. ¶ 44 (disclosing “Class II” games, keno, lottery, bingo). Thus, Scott at least suggests a system where multiple participants engage in the same game. We are persuaded that it would have been obvious to use Scott’s gaming machine in a multiplayer environment. Mr. Crevelt testifies that “it is an obvious matter of common sense to take a system that can be for use by one player and put it to use for multiple players” and “if one player is able to utilize Scott’s system described above in accordance [with] claim 1, but multiple players wanted to play, common sense dictates that such systems should be reproduced for multiple players.” Ex. 1007 ¶¶ 183–184. We agree, especially given Scott’s strong suggestion that its system may be used to host multiplayer games as noted above. Patent Owner’s arguments to the contrary are unavailing, as it is not clear to us, and Patent Owner has not explained adequately, how reproducing Scott’s system for multiple players, as proposed by Petitioner, would not result in a multiplayer wagering system.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Additionally, we are persuaded that Petitioner’s obviousness rationales are supported by rational underpinning. Petitioner correctly notes that Scott discloses that its memory devices “may utilize various storage technologies to accomplish data storage and retrieval.” Ex. 1006 ¶ 53; Pet. 84 (citing same). We are persuaded by Petitioner’s arguments that, given the widespread use of databases to store data in computer systems and computerized gaming systems in particular, it would have been obvious to an ordinarily skilled artisan to store Scott’s player tracking account data as records in a database. See Pet. 84–85 (citing Ex. 1001, 8:19–26, 26:29–32; Ex. 1004 ¶¶ 5, 96; Ex. 1006 ¶ 53; Ex. 1007 ¶ 92); see also Ex. 2001 ¶ 103 (Dr. Vancura testifying that, in his experience, “player tracking systems store a player’s wagering information”). Accordingly, for the foregoing reasons, Scott and Mr. Crevelt’s testimony support Petitioner’s contentions.” slip op. at 18
Patent outcomesUS 11,200,779 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,200,779 - Cooler Master Co., Ltd. v. Asetek Danmark A/SInstitution deniedPTAB · May 8, 2025 · IPR2024-01497 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would have been obvious over Duan and Duan-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. The ’681 patent claims benefit of a May 6, 2005, filing date, which is before the effective date of the applicable AIA amendments. Ex. 1001, Code [63]. 3 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Abraham, Petitioner contends that an ordinarily skilled artisan for the ’681 patent “would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as an B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely-related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems, or in similar systems.” Pet. 17. Petitioner additionally contends a “person with less education but more relevant practical experience, depending on the nature of that experience and degree of exposure to liquid cooling systems for computer systems, could also qualify as a POSITA in the field of the ’681 patent.” Id. (citing Ex. 1005 ¶ 42). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’681 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any specific terms require construction and applies the plain meaning of all claim terms herein.” Pet. 18. Patent Owner does not address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“motivated to combine Duan and Duan-I in this manner, Petitioner argues that “given the known ‘compact trend of computer[s]’ recognized by Duan [], a POSITA would have been motivated to rotate Duan’s liquid driving module 2 (pump) counterclockwise by 90 degrees in Figure 7 to reduce the systems overall height in view of Duan-I.” Pet. 26 (citing Ex. 1007 ¶ 6; Ex. 1005 ¶ 57). Petitioner asserts that “[a]lthough modifying Duan in this fashion would require some minor reconstruction, doing so would reasonably be expected to result in success.” Id. Petitioner contends that “[t]he modification is well within a POSITA’s technical grasp, and would have predictably resulted in a modified system like the one [reproduced] below (double-sided chassis outlined in red).” Id. at 26–27. Petitioner provides the following graphical explanation, reproduced below, of how it arrives at this modified figure.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,733,681 - PTAB · May 6, 2025 · IPR2025-00187 · APJ Debra L Dennett · IPR · Institution
The Board instituted review of claims 1–17 on all petition grounds and granted Mundra and Adani’s motion to join IPR2025-00006.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–17 of the ’009 patent in IPR2025-00006 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00006, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’009 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner contends that no new grounds of unpatentability are raised in the Petition. Mot. for Joinder 3–4. Petitioner further agrees to an “understudy” role in which it will not seek additional depositions or deposition time, and “will assume the primary role only if Runergy ceases to participate in the Runergy IPR.” Id. at 1, 5–6. And, argues that “[b]ecause . . . [the] Petition presents the identical grounds for the challenged claims and the same evidence, there are no new issues 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. for Patent Owner to address” and “joinder with the Runergy IPR will not unduly burden or negatively impact the schedule in that proceeding in any way.” Id. at 5; see also id. at 6 (“briefing and discovery will be simplified because Patent Owner can maintain its current trial schedule and avoid duplicative efforts”.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4–5 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 25. And, Patent Owner does not address claim construction at this stage of the proceeding. See generally Prelim. Resp. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - PTAB · May 6, 2025 · IPR2025-00186 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–11 on all petition grounds and granted Mundra and Adani’s motion to join IPR2025-00007.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00007, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’104 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20198 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,722,104
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.