- PTAB · Nov 13, 2025 · IPR2025-00805 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“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.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“C. Patent Owner’s Arguments Under 35 U.S.C. § 325(d) In the Preliminary Response, Patent Owner contends that Petitioner’s unpatentability arguments presented in this proceeding were previously considered by the USPTO. See Prelim. Resp. 31–33. In her decision referring this matter to the Board, then-Acting Director Stewart rejected that argument. See Paper 20 at 2–3 (discussing why “Petitioner provides persuasive reasoning, supported by evidence, that discretionary denial under 35 U.S.C. § 325(d) is not appropriate”); see also Prelim. Resp. 31–33 (referring to and citing Patent Owner’s Discretionary Denial Brief (Paper 8)). We need not and do not address this issue further.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. As to the inclusion of physics in Petitioner’s definition, Dr. Singhose (a professor of mechanical engineering) testifies as to why undergraduate mechanical engineering degree holders would have the requisite knowledge here, but does not testify that undergraduate physics degree holders would not. See Singhose Decl. ¶¶ 2, 27, 28. In addition, Patent Owner and Dr. Singhose require “a four-year degree in mechanical engineering or a closely related field,” but fail to identify what fields are “closely related.” See Prelim. Resp. 11; Singhose Decl. ¶ 27. Based on the Morse Declaration, we are persuaded at this stage that a hypothetical undergraduate physics degree holder would have adequate knowledge for one of ordinary skill in the art of the invention here. See Morse Decl. ¶ 31. As to the requisite years of experience proposed in the definitions— three for Petitioner versus “at least one” for Patent Owner—we note that Patent Owner’s definition is broader than, but includes, Petitioner’s definition. Moreover, for both the inclusion of physics and the years of experience issues, Patent Owner acknowledges that the arguments in the Preliminary Response “are not impacted based on which definition is applied.” Prelim. Resp. 12 (citing Singhose Decl. ¶¶ 30–34). Further, Patent Owner does not argue at this stage that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner does not propose express constructions for any claim terms. Pet. 12. Patent Owner also does not propose any express constructions. See Prelim. Resp. 12. On the current record, we need not construe explicitly any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). As discussed below, however, the parties dispute the meaning of “gaseous fuel.” We address this issue below in the analysis of the challenge to claims 1–3, 5–9, and 18 based on Nakafushi and Olmr.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,393,034 - PTAB · Nov 3, 2025 · IPR2025-00827 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–5, 7–14, 16–19, 22–26, and 28–32, finding a reasonable likelihood that Renisch anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have considered Patent Owner’s arguments, but, on this record, are not persuaded. We recognize that Dr. Sonka provides a different opinion than Petitioner and Dr. Rosen. Dr. Sonka testifies that in his opinion “the distinctions between Renisch and claim 1 go beyond terminology.” Ex. 2014 ¶ 79. At this stage, in the absence of a full record, we need not record, it appears that Renisch discloses the elements of limitation [1(c)] at paragraphs 26–31, where it discloses obtaining a scanned 3D image of a fuller anatomy, i.e., a segmentation map, and then using a segmentation unit (76) to define the boundaries of anatomical structures of interest within that fuller anatomy, i.e., creating a plurality of segmentation masks, using a library, models, clustering, edge detection, region growing, neural networks, and/or an atlas of normal anatomical structures, and then identifying hot spots of interest within those anatomical structures of interest, and identifying organs with lesions and those without. Ex. 1005 ¶¶ 26–31. Based on the record before us and the specific disclosures in Renisch, as discussed in this Decision, we determine that Petitioner has met the “reasonable likelihood” standard necessary to institute an inter partes review proceeding. Although we address only Ground A and claims 1 and 10 herein for the purposes of institution, as noted above, we will address all asserted grounds and challenged claims in any final decision.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not perceive a need to construe any claim limitation at this time. This, however, does not preclude the parties from arguing proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that any disputed claim construction, in general, should be addressed at trial and, if so, should be addressed clearly in a designated section of briefing rather than relegated to arguments on the merits of patentability. Claim construction, if necessary, will be determined at the close of the evidentiary record and after any hearing. slip op. at 15
- BurdenDecided for petitioner
“Compliance with the Particularity Requirements of 35 U.S.C. § 312(a)(3) Patent Owner asserts that the Petition fails to meet the particularity requirements of 35 U.S.C. § 312(a)(3). Prelim. Resp. 18–26. According to Patent Owner, “Petitioner’s excessive internal cross-referencing impermissibly forces the Board and Patent Owner to piece together scattered portions of the Petition (and exhibits).” Id. at 26. Patent Owner concludes that “the Petition fails to adequately map the references to the claim elements with particularity.” Id. We disagree. Using claims 1 and 10 as an example, Petitioner asserts: Claim 10 recites a “system for automatically processing 3D images” that is substantively identical to the “method for automatically processing 3D images” recited in claim 1, addressed above. Whereas claim 1 (the method claim) recites a series of steps, each performed “by a processor,” claim 10 (the system claim) recites a “processor” with stored instructions that perform the same steps recited in claim 1. Similarly, dependent claims 11–14, 16, and 26 are substantively identical to dependent claims 2–5, 7, and 19. Pet. 41–42. Claims 1 and 10 contain similar elements and limitations. Petitioner’s reference, for example, in the Petition’s analysis of claim 10, back to the analysis of claim 1 concerning nearly identical elements and limitations (id. at 42) is a matter of efficiency and is sufficiently clear for us to determine the basis for Petitioner’s challenges. We determine that the Petition does not violate the statutory requirement for particularity.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have considered Patent Owner’s arguments, but, on this record, are not persuaded. We recognize that Dr. Sonka provides a different opinion than Petitioner and Dr. Rosen. Dr. Sonka testifies that in his opinion “the distinctions between Renisch and claim 1 go beyond terminology.” Ex. 2014 ¶ 79. At this stage, in the absence of a full record, we need not record, it appears that Renisch discloses the elements of limitation [1(c)] at paragraphs 26–31, where it discloses obtaining a scanned 3D image of a fuller anatomy, i.e., a segmentation map, and then using a segmentation unit (76) to define the boundaries of anatomical structures of interest within that fuller anatomy, i.e., creating a plurality of segmentation masks, using a library, models, clustering, edge detection, region growing, neural networks, and/or an atlas of normal anatomical structures, and then identifying hot spots of interest within those anatomical structures of interest, and identifying organs with lesions and those without. Ex. 1005 ¶¶ 26–31. Based on the record before us and the specific disclosures in Renisch, as discussed in this Decision, we determine that Petitioner has met the “reasonable likelihood” standard necessary to institute an inter partes review proceeding. Although we address only Ground A and claims 1 and 10 herein for the purposes of institution, as noted above, we will address all asserted grounds and challenged claims in any final decision.” slip op. at 20
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 11,941,817 - Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution deniedPTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution
The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c) Summary We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)). C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,433,296 - PTAB · Oct 16, 2025 · IPR2025-00710 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–9, 13, and 16–20 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[w]hile Patent Owner disagrees with the proposed level of skill, under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” Prelim. Resp. 5. Patent Owner does not, at this point, propose a different level of skill. Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with our review and understanding of the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction At this early stage of the proceeding, no claim terms are disputed and neither party offers any particular construction for any claim term. Pet. 13; Prelim. Resp. 5. Having considered both parties arguments and evidence in light of the challenged claims, at this stage, we are not apprised of any reason to explicitly construe any claim term for purposes of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Considering first the motivation to combine, we find Petitioner’s reasoning sufficiently persuasive for purposes of institution. Petitioner argues that Okita’s “pseudo values” are just like Schneier’s credits and “[b]ecause the pseudo-values can be exchanged for virtual money that can be used in other tournaments, arcades, or the like, ‘a game can be provided that generates tension for the player due to the fact that the virtual money is earned or is confiscated based on the game results.’” Pet. 51 (quoting Ex. 1009 ¶ 9). Petitioner’s declarant, Mr. Crevelt, further testifies that Okita’s “[r]ewards programs are a routine feature of games because players are encouraged to play more to accumulate points or other pseudo-values to exchange for prizes or other items . . . [t]he virtual money conversion functionality would have opened up more game play options and more items to purchase.” Ex. 1003 ¶ 187. Based on the record before us, Petitioner has shown sufficiently for purposes of institution that the use of Okita’s pseudo-values and broad player’s interest and engagement with the video game.” slip op. at 16
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,825,294 - PTAB · Oct 16, 2025 · IPR2025-00709 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6, 8–10, 14–18, 21–23, 25, 27, and 29 based on reasonable likelihood of obviousness over Schneier and over Schneier with Okita.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that “[w]hile Patent Owner disagrees with the proposed level of skill, under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” Prelim. Resp. 5. Patent Owner does not, at this point, propose a different level of skill. Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with our review and understanding of the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction At this early stage of the proceeding, no claim terms are disputed and neither party offers any particular construction for any claim term. Pet. 12– 13; Prelim. Resp. 5. Having considered both parties arguments and evidence in light of the challenged claims, at this stage, we are not apprised of any reason to expressly construe any claim term for purposes of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,650,635 - PTAB · Oct 16, 2025 · IPR2025-00776 · APJ John G New · IPR · Institution
Instituted review of claims 9, 11, 32–58, 60–62, and 64–67 on all remaining petition grounds, after finding a reasonable likelihood that claim 9 is unpatentable over Thomas and Faucette.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 9, 11, 32–58, 60–62, and 64–67 of the ’802 patent is unpatentable, and we on the Grounds set forth in the Petition.” slip op. at 2
- Settled expectationsOther
“Patent Owner also filed a Request with the Acting Director of the USPTO seeking discretionary denial of institution of inter partes review (Paper 6, the “Request”). Petitioner subsequently filed a brief opposing Patent Owner’s Request (Paper 8). On September 3, 2025, the Acting Director denied Patent Owner’s Request for discretionary denial of institution of inter partes review and referred the case to the panel for an institution decision on the merits (Paper 11).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill would have an M.D. or a Ph.D. degree in virology, immunology, and vaccinology, and at least 3 years of experience in one or more of the research, design, development, and testing of antiviral vaccines. Pet. 17. Petitioner asserts that a person of ordinary skill may be part of a multidisciplinary team having such experience. Id. (citing Ex. 1002 ¶ 81). Patent Owner does not dispute the level of skill asserted by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party requests construction of any claim terms. Petitioner asserts that all claim terms should be given their ordinary and customary meaning, and Patent Owner does not disagree. See Pet. 17. Accordingly, we find, for the purposes of this Decision, that no terms of the challenged claims requires construction beyond the ordinary and customary meaning of the terms, as understood by a person of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312–13; see also Vivid Techs., Inc. v. construes claims only to the extent necessary to resolve a dispute).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,730,802 - Activision Blizzard, Inc. v. Milestone Entertainment, LLCInstitution deniedPTAB · Oct 16, 2025 · IPR2025-00713 · APJ Linda E Horner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Kelly, alone or with Paulsen, renders any challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition.” slip op. at 2
- BurdenNot shown unpatentable
“We agree with Patent Owner that Petitioner has failed to provide adequate evidence and analysis to show that Kelly discloses storing the identified user input in Kelly’s system. For instance, the portion of Kelly relied upon in the Petition describes how user input provides a particular game command to game processor 12, and game processor 12 interprets and uses this input to influence game states and game events. Ex. 1005, 10:12– 15. The portion of Kelly makes no mention of storing the user input. Petitioner also cites generally to other portions of Kelly with insufficient explanation of their relevance. Pet. 22; Ex. 1003 ¶ 136 (citing 1:44–46, 9:62–66, 46:32–37, 46:49–52). These cited passages describe generally that a computer, on which games are played, includes a video screen and buttons, and that user input is provided to a game unit to influence game events and/or provide particular game commands to the computer. Ex. 1005, 1:44–46, 9:62–66, 46:32–37, 46:49–52. Petitioner fails to sufficiently show how any of these passages describes storing user input, such as button presses, in Kelly’s system.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.6 Based on the testimony of Mr. Crevelt, 6 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 16 (citing Ex. 1003 ¶¶ 102–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’607 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11
Nonecites Phillips · GrahamPatents in suitUS 11,501,607 - PTAB · Oct 16, 2025 · IPR2025-00711 · APJ Linda E Horner · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 based on a reasonable likelihood of success on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we grant the Petition and institute an inter partes review of claims 1, 2, 4–7, 9, 11‒13, 15, 19, 23, 24, and 29 of the ’164 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is not necessary for us to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that we “need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Prelim. Resp. 9. At this stage of the proceeding, we do not need to expressly construe any claim terms to determine whether Petitioner showed a reasonable likelihood of prevailing as to its challenge of at least one challenged claim.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Kelly discloses that game processor 12 implements the functions of game unit 10 during a game process and includes several input and output functions (Ex. 1005, 9:15–18), including: The game processor controls the game apparatus by receiving inputs from a player, from other game apparatuses, from a server (described below), from a progressive bonus apparatus, and from other sources. The game processor also controls output signals to update the game process when appropriate. In addition, the game processor controls the redemption system of the present invention by calculating when prizes are awarded, calculating and updating prize lists and prize costs, and other functions, as described below. Ex. 1005, 9:18–27. As to the redemption system, Kelly discloses prize table 480 that is displayed to the operator. Ex. 1005, 34:64–65, Fig. 9a. In one embodiment, the operator can adjust prize characteristics for the game unit and any linked game units. Id. at 35:1–2. Kelly also discloses an alternative embodiment, however, in which selection of a specific prize from the table 480 can be based on random and/or statistical determination. Id. at 36:48–49. In this alternative embodiment, “random determination of whether a particular prize is to be awarded is also modified by statistical information to create a ‘best fit’ of prizes awarded according to the operator’s desired odds.” Id. at 36:63–66. awarded every 8,000 games, so if it is randomly determined that a third video console is to be awarded within, for example, the 3000th game, then a different prize, e.g., the next most valuable prize, can be awarded so that the desired odds are better met. Id. at 37:1–9. Thus, we find Petitioner has set forth sufficient evidence to show a reasonable likelihood that Kelly’s game processor can modify the variable parameters of the prizing structure to meet the mandated parameters of the desired odds, as called for in limitation [1.c.v].” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“To remove Walker as prior art under §§ 102(a) and 102(e), Patent Owner must show either it reduced the invention to practice prior to Walker’s effective date, or that it invented prior to Walker’s effective date. In the case of the latter, Patent Owner must demonstrate conception prior to May 1, 2003, and reasonably continuous diligence throughout the entire critical period, which begins just prior to the Walker’s effective date and ends on the date of the invention’s actual or constructive reduction to practice. Patent Owner provides evidence purporting to show that it conceived of the invention prior to May 1, 2003. Patent Owner has not asserted that this evidence demonstrates actual reduction to practice, nor do we have sufficient evidence at this stage to make that determination. Further, Patent Owner’s earliest possible constructive reduction to practice (September 1, 2004) does not pre-date Walker’s effective date. Thus, at this stage, Patent Owner would need to show it invented prior to Walker’s effective date through evidence of conception and reasonable diligence to remove Walker as prior art. At this stage of the proceeding, without Patent Owner’s evidence of diligence, Patent Owner has not provided sufficient evidence to show that Petitioner fails to show a reasonable likelihood of prevailing in establishing that Walker is prior art. This issue of whether Walker is prior art to the ’164 patent will benefit from further development of the record during the trial proceeding.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,335,164 - PTAB · Oct 16, 2025 · IPR2025-00712 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 on all asserted grounds, finding a reasonable likelihood of prevailing on claim 1 over Walker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2025). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’279 patent on all grounds asserted in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedOther
“application filed November 12, 2021, that asserts the benefit of a series of applications, the earliest of which was filed September 2, 2003. Ex. 1001, codes (22), (45), (60). Petitioner asserts that the Challenged Claims of the ’279 patent “are entitled to an effective filing date of no earlier than September 2, 2003,” consistent with the date of the earliest application identified by the ’279 patent.9 See Pet. 6. For purposes of our analysis on the current record, in this Decision we apply September 2, 2003, as the priority date of the Challenged Claims.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“independent claim 1. Pet. 32–63. Petitioner relies on the testimony of Mr. Crevelt in support of its contentions with respect to claim 1. Ex. 1003 ¶¶ 234–286. Further, according to Petitioner, “[n]o findings regarding motivation to combine or reasonable expectation of success are necessary with a single reference ground,” but Walker “teaches that the features of the embodiments are options that can be combined.” Pet. 42 n.6 (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1372–73 (Fed. Cir. 2019). At this stage, Patent Owner does not contest Petitioner’s proffered assertions about the” slip op. at 20
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,393,279 - PTAB · Oct 16, 2025 · IPR2025-00708 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 are unpatentable over Walker and Schneier.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2025). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’336 patent on all grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.8 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art 7 Petitioner states that it is not aware of secondary considerations that affect the obviousness arguments it presents. Pet. 66. Patent Owner has not offered objective evidence of nonobviousness at this stage of the proceeding. 8 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. Resp. 8. Thus, Patent Owner does not present evidence or arguments in its Preliminary Response related to the level of ordinary skill in the art. competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is not necessary for us to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 14–15. Patent Owner similarly submits that we “need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Prelim. Resp. 8. At this stage of the proceeding, we do not need to expressly construe any claim terms to determine whether Petitioner showed a reasonable likelihood of prevailing as to its challenge of at least one challenged claim.” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedOther
“an application filed September 20, 2010, that asserts the benefit of an application filed September 2, 2003. Ex. 1001, codes (22), (45), (54), (62). Petitioner asserts that the Challenged Claims of the ’336 patent “are entitled to an effective filing date of no earlier than September 2, 2003,” consistent with the date of the earliest application identified by the ’336 patent.9 See Pet. 7. For purposes of our analysis on the current record, in this Decision we apply September 2, 2003, as the priority date of the Challenged Claims. Walker was filed on May 1, 2003, and refers back to a provisional application filed on May 6, 2002, but Walker was not published until January 1, 2004. Ex. 1006, codes (22), (43), (60). Thus, Petitioner fails to show on the current record how, under pre–AIA 35 U.S.C. § 102(a), Walker discloses an invention that was described in a printed publication in this country before the invention thereof by the Patent Owner, because Walker was published after the applied priority date of the Challenged Claims of the’336 patent.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,529,336
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.