• Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgment
  PTAB · Sep 8, 2025 · IPR2025-00001 · APJ Norman H Beamer · IPR · Adverse judgment

  Adverse judgment was entered against Patent Owner on claims 1–20 after statutory disclaimer; the proceedings were terminated.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2

  None
  Patents in suitUS 11,386,024
• Disney Media & Entertainment Distribution LLC v. Digital Media Technology Holdings, LLCAll claims unpatentable
  PTAB · Aug 25, 2025 · IPR2024-00736 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1, 4–7, and 9 are unpatentable as obvious over Garfinkle and Kosten; claim 11 is unpatentable as obvious over Garfinkle, Kosten, and Allen.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedPetitioner expert discountedGranted

    “Our reviewing court has held that if a declarant fails to qualify as a person of ordinary skill in the art, then that person’s testimony regarding the knowledge or motivations of one of ordinary skill in the art is irrelevant as a matter of law. Kyocera Senco Indus. Tools Inc. v. International Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Mr. Daniels’ declaration consists of an analysis of the cited prior art in comparison to the challenged claims and a discussion of whether there would have been a 2 The motion does not seek to exclude the declaration of the named inventor of the ’725 patent, Nick Stiliadis. See Ex. 2109 (Stiliadis Declaration). motivation to combine the prior art. Ex. 2121 ¶¶ 4–20. Mr. Tulchin’s declaration addresses claim construction issues. Ex. 2131 ¶¶ 5–35. Each declarant, therefore, addresses issues that must be considered from the vantage point of a POSITA at the time of the invention, meaning a person with the level of ordinary skill defined in Section II.E.1 above. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (obviousness). If Mr. Daniels and Mr. Tulchin do not qualify as POSITAs, as Petitioner alleges, then their opinion testimony is inadmissible under Federal Rules of Evidence 702 (Testimony by Expert Witnesses). We find that there is insufficient evidence in the record to establish that Mr. Daniels qualifies as a POSITA in relation to the ’725 patent. Mr. Daniels has an undergraduate degree in engineering physics in addition to a law degree. Ex. 2121 ¶ 2. His declaration, however, does not establish that he also has “one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” See Section II.E.1 above. Mr. Daniels characterizes his non-legal work experience as follows: The rest of my professional career has been spent working in my own companies in the research, development and prototyping/commercialization of a number of different technologies, principally including fishing rod technology, digital video file transport, storage and processing, LED-based light-emitting tapes, drone control systems, wearable medical related electronic devices and breath-based diagnostic devices. Ex. 2121 ¶ 3; see also Ex. 1023, 99 (Daniels Deposition) (describing work on “a suite of interactive television innovations,” including “the first working pause button”). None of the projects identified appears to relate to “marketing and distribution of multimedia material over a computer network.” Patent Owner argues that Mr. Daniels “was involved (at the time of the filing of the application which matured into the ’725 patent) in making inventions, that dealt with interactive television, video pause buttons and video file provision over the Internet.” Sur-Reply Br. 6. However, neither Mr. Daniels’ declaration nor his deposition testimony assert that he ever worked on “video file provision over the Internet,” let alone that he did so for one year or more. See Ex. 2121 ¶ 3; Ex. 1023, 98–100. We find that the evidence in the record is not sufficient for us to conclude that Mr. Daniels qualifies as one of ordinary skill in the art. We further find a lack of evidence establishing that Mr. Tulchin qualifies” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted the following definition of the level of skill for one of ordinary skill in the art: “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” Dec. 9. Patent Owner’s proposed definition differs from the Board’s only in that it adds a Bachelor of Science in engineering physics to the list of degrees that one of ordinary skill in the art might possess. See id. We view engineering physics as being related to the fields of electrical engineering, computer engineering, and computer science. Accordingly, following a review of the full record, we view Patent Owner’s proposed definition in its Response as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

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

    “When interpreting the meaning of a claim, “we 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., 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)). Patent Owner has, briefly, proposed six claim terms for construction: exhibition; exhibitor; broadcast exhibitor; distribution; marketing; and storing. PO Resp. 10. The Petition states that “[t]o resolve the grounds presented herein, Petitioner does not believe that any term requires explicit construction.” Pet. 12. We see no reason why “exhibition” and “exhibitor” should be understood as having a meaning as narrow as Patent Owner proposes. “Exhibition” and “exhibitor” encompass more than just a showing by “one in the exhibition business” because the specification of the ’725 patent identifies certain “exhibitors” that are not “in the exhibition business”: e.g., a high school, libraries, and other non-profit organizations. Ex. 1001, 12:38–41 (“schools, libraries, and other non-profit organizations”), Fig. 1 (“high school”). The plain and ordinary meaning of “exhibitors” is at least broad enough to encompass the types of exhibitors identified in the specification: movie theaters, television stations, satellite television operators, cable television operators, and non-profit organizations such as high schools. Ex. 1001, 4:20–22, Fig. 1. We further determine that some of these exhibitor types, including at least satellite and cable television operators, are “broadcast exhibitors.” Moreover, we find that the plain and ordinary meaning of the term “distribution” is not so narrow as to be limited to “the business of marketing films and providing copies to venues,” as Patent Owner proposes. See PO Resp. 10 (emphasis added). The claimed invention is a “method of marketing and distributing multimedia,” which is not limited to films. We agree with Petitioner that the term is at least broad enough to encompass distribution of any type of multimedia to any type of exhibitor contemplated in the specification. See Ex. 1001, 1:20–25 (multimedia types); Reply Br. 6. Similarly, the plain and ordinary meanings of “marketing” and “storing” are not limited to Patent Owner’s specific examples: interesting individuals in seeing a film and saving to non-volatile storage, respectively. See PO Resp. 10; Tr. at 57:3–7. The invention is directed to marketing and distributing multimedia, not just films, Ex. 1001, 16:21, and while the Specification refers to storing multimedia on “hard drives,” id. at 4:35–37, 4:44–52, there is nothing in the Specification, claims, or prosecution history that would limit storage only to hard drives or other non-volatile storage. The intrinsic evidence suggests that the proper construction of each” slip op. at 14

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

    “Petitioner contends that a person of ordinary skill in the art would have been motivated to use Garfinkle’s video distribution system to implement Kosten’s distribution method to achieve the improvements described therein, such as: access to a large number of video products and advertising materials available at a centralized location (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), improved advertising capabilities (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), and improved distribution processes resulting in lower shipping and handling costs and labor intensity, improved security against piracy, wider and more flexible distribution capabilities, cost reductions for movie theaters, increased control over time and locations of exhibitions by studios and distributors, an ability to scale up or down distribution based on success in theaters, and an ability to track and monitor sales and marketing data (Ex-1007, 52, 54). Pet. 14 (citing Dystar Textilfarben v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) (A motivation to combine exists when the “improvement” results in a product or process that is “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)). Petitioner further asserts that such a person would have had a reasonable expectation of success in achieving the objective of efficient content distribution through the proposed combination of Garfinkle and Kosten with no change in their respective functions because: (1) both are “from the same field and address the same well-known issues”; and (2) both references purport to achieve this objective in similar and predictable ways, “such as using the well-known teachings of digitizing content, correlating multimedia and associated advertising materials, and connecting multiple user sites to the central station through a public communications system.” Id. at 13, 16–17 (internal citations omitted) (citing Ex. 1005, 2:58–3:5, 3:32–49, 4:37–39; Ex. 1007, 54); Ex. 1002 ¶ 68. Patent Owner contends that there would have been no motivation to combine Kosten and Garfinkle because each represents a “complete solution[] to different file transport modes, Kosten involving simple file transmission to a theater and billboards, and Garfinkle involving file transmission to a [video-on-demand] user. Neither has a problem which is addressed by the other.” PO Resp. 33. Petitioner argues, however, and we agree, that “(1) a known technique can provide motivation to combine and (2) a known technique does not need to improve upon the primary reference—it just must be a ‘suitable option.’” Reply Br. 21 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023)). Thus, it does not matter that Kosten and Garfinkle each represent a complete and functional solution to digitally transporting media files. If the references in the combination address a known problem, such as issues with multimedia distribution, see Pet. 13–14, and the proposed combination is a suitable solution, then there would have been a motivation to combine the two references. Moreover, Petitioner persuasively argues that by combining Kosten and Garfinkle, one of ordinary skill in the art would have been able to achieve benefits such as lower shipping and handling costs, improved security against piracy, wider and more flexible distribution capabilities, an ability to more easily scale distribution up or down as needed, among other benefits. Pet. 14. We find that these benefits would have provided a sufficient motivation to combine Garfinkle’s technical implementation of a distribution process for large multimedia files with Kosten’s proposed business application, “beaming” films directly to theaters via satellite. Patent Owner’s arguments to the contrary are without merit.” slip op. at 21

  Patent outcomesUS 7,574,725 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,574,725
• Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co., Ltd.All claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00509 · APJ Michael J Strauss · IPR · Final written decision

  Claims 1–4 and 6–19 are unpatentable as obvious over Throughtek-2012 and the Lorex Video; claims 1–3, 6, 10, 12–14, 17, and 18 are also unpatentable under two other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Bims, Petitioner proposes that a person of ordinary skill in the art at the time of the ’842 patent would have been a person having a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies. Pet. 11 (citing Ex. 1001 ¶¶ 15–16). Patent Owner does not provide any proposed qualifications for a person of ordinary skill in the art. 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). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7

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

    “Petitioner asserts “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 11 (citing Ex. 1001 ¶ 55; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. §42.100). Patent Owner presents no proposed claim constructions. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 8

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  Patent outcomesUS RE47,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
• Visa Inc. v. Cortex MCP, Inc.Some claims unpatentable
  PTAB · Jul 29, 2025 · IPR2024-00490 · APJ Russell E Cass · IPR · Final written decision

  Claims 1, 3–8, and 10–16 are unpatentable over Oborne or Oborne and Purves; claims 2, 9, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 74–79). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Inst. Dec. 15. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Inst. Dec. 11.” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We have considered Petitioner’s arguments and Dr. Shamos’s testimony in light of Oborne’s disclosure, but find Patent Owner’s arguments and Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See, Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that, contrary to Petitioner’s position, “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for the second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. See Pet. 34–35; Ex. 1005 ¶ 228. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of “device fingerprinting” is limited, and does not describe how it would be implemented for a user with two devices. See PO Resp. 41–42. Therefore, Dr. Shamos’s cited Declaration testimony is “conclusory, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We recognize the application of “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. However, we “must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (emphases added) (internal quotations omitted). Although Stafford discloses that the key signatures may be copied from the display or delivered to the user via email, Petitioner does not expand upon whether the user would also copy the image from the display, whether the image would be provided via email as well, or provide any other explanation other than that the image credential would be provided with the scannable key signatures. Ex. 1012 ¶¶ 97, 99; Pet. 60. Although a credential image would presumably need to be retrieved or generated in some manner, and associated with the key signatures in some manner, Petitioner also does not sufficiently explain how this would work in the proposed combination, or how the user would transmit the scannable key signature to the recipient. Although proof of physical or bodily incorporation is not required, a satisfactory explanation of “how the combination of the . . . references [is] supposed to work” is necessary to support “a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (finding no error where the Board required petitioner to explain how a person of ordinary skill in the art would have implemented petitioner’s proposed substitution). Petitioner fails to provide “a clear, evidence-supported account of the contemplated workings” of the proposed combination of Stafford and Purves. See Personal Web, 848 F.3d at 994.” slip op. at 62

  Patent outcomesUS 11,329,973 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,329,973
• Visa Inc. v. Cortex MCP, Inc.Some claims unpatentable
  PTAB · Jul 29, 2025 · IPR2024-00489 · APJ Russell E Cass · IPR · Final written decision

  Claims 1, 3–9, 11–18, and 20 are unpatentable over the stated obviousness grounds; claims 2, 10, 19, and 21 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 76–81). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’859 patent and the asserted prior art of record.” slip op. at 8

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

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 11. We also explained that we did not need to determine for purposes of institution whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” Id. We also determined that Petitioner had made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” Id. at 11, 24–27.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of the credential.” Inst. Dec. 13. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 12

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

    “3. Other Terms The parties do not propose constructions for any other claim terms, and we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 13

  Patent outcomesUS 10,749,859 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,749,859
• Visa, Inc. v. Cortex MCP, Inc.No claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Petition did not establish the claimed second OVER file over Oborne or a sufficient basis to combine Stafford and Purves.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 9–13 (referring to the ’854 patent Specification, the language of claim 1, and Dr. Shamos’s testimony). However, we did not determine whether an “OVER file” included “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file,” because it was not necessary for purposes of Institution. Id. Moreover, we determined that Petitioner had made a sufficient showing that Oborne’s tokens qualified as “OVER files.” Id. at 11, 24–31. Patent Owner argues that no construction is required, but, regardless, “the claims may be confirmed under the Board’s construction.” PO Resp. 11; Sur-reply 1. Petitioner also does not dispute our preliminary construction. Reply 1. In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Reply 1–2 (citing PO Resp. 49–50). “For example,” Petitioner asserts, “verification in subsequent claim elements involves the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things, as PO’s expert admits.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “In its Response, Patent Owner stated that it “agrees in substance with the Board’s construction” of this term, and clarified its understanding of that construction as requiring that “the issuing agency has verified the ‘virtual representation’ (and not the ‘credential’) to be ‘a first official representation of the original credential.’” PO Resp. 11–12. In its Reply, Petitioner points to Patent Owner’s reliance on an example in the ’854 patent Specification involving the checking of a driver’s license identification number against a DMV database to show verification of information in an OVER File generation request. Reply 2 (citing PO Resp. 14–16; Ex. 1002, 6:35–39, 6:54–65). Based on this portion of the Patent Owner Response, as well as portions of Dr. Malek’s deposition, Petitioner argues that Patent Owner “admits that a virtual representation of the credential may be ‘verified by an issuing agency’ by checking credential data against an issuing agency database.” Id. (citing Ex. 1047, 37:24–41:1, 41:2–22). In its Sur-reply, Patent Owner argues that Petitioner misinterprets its discussion of the DMV example, and contends that what Patent Owner was actually arguing based on that example is that the “credential” (the “OVER file”) is verified, not that “credential data” is verified. PO Sur-reply 1–3. After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of a credential.” Inst. Dec. 15–16. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “agrees with [Petitioner’s proposed] definition of the level of ordinary skill in the art.” PO Resp. 10 (citing Ex. 2009 ¶¶ 37–41). In the Institution Decision, we found Petitioner’s proposed level of ordinary skill in the art to be reasonable and consistent with the problems and solutions disclosed in the prior art of record. Inst. Dec. 8. Given that Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, we continue to apply Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Although we agree with Petitioner that Oborne teaches that “‘device fingerprinting may be utilized’ to provide ‘additional security’ for use of Oborne’s tokens,” Pet. 34 (citing Ex. 1011 ¶ 26 (emphasis added)), we do not agree with Petitioner’s arguments related to “device fingerprinting.” Petitioner also relies on testimony from Dr. Shamos to support its position. However, Dr. Shamos’s cited testimony in paragraph 239 merely repeats what is stated in the Petition, does not provide citation to any other evidence of record, and does not provide any further explanation as to why one of ordinary skill would have been motivated to use device fingerprinting to tie a given token to a given device such that the token for the second device would be invalid in the first device. Ex. 1005 ¶ 239. Dr. Shamos refers to Oborne’s disclosures on “digital fingerprinting” and a client’s MAC address in the token data structure. Id. (citing Ex. 1011 ¶¶ 26, 47). We have considered Petitioner’s arguments in light of Oborne’s disclosure, but find Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for a second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. Id. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of” slip op. at 24

  Patent outcomesUS 9,954,854 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,954,854
• Visa, Inc. v. Cortex MCP, Inc.Some claims unpatentable
  PTAB · Jul 21, 2025 · IPR2024-00486 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 3–6, 8–18, and 21–33 are unpatentable as obvious; claims 2, 7, 19, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 89–94). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of these fields.” Id. We adopted this proposed level of skill for the Institution Decision. See Dec. 6– 7. Patent Owner agrees with this definition of the level of ordinary skill in the art. PO Resp. 8 (citing Ex. 2009 ¶¶ 37–41). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’531 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Dec. 9. We also explained that we did not need to determine whether the term “OVER file” 8 necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file” for purposes of institution. Id. We also determined that Petitioner had made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” Id. at 10, 23–27. In its Response, Patent Owner states that no construction of “OVER file” is required and that “the claims may be confirmed under the Board’s construction.” PO Resp. 9 (citing Ex. 2009 ¶¶ 43, 46–48). In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Pet. Reply 1–2 (citing PO Resp. 54). “For example,” Petitioner asserts, “verification in subsequent claim elements involves a scan associated with the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Dec. 9.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner has provided sufficient articulated reasoning to support the rationale for the combination of Oborne and Purves for the teaching of the limitation “requesting the credential.” As Petitioner points out (Pet. Reply 15), in the discussion of claim 23, the Petition refers to claim 22, which requires “generat[ion] of the credential.” IPR487, Pet. 37; see also Ex. 1005 ¶ 301. That discussion explains that a person of ordinary skill in the art would be motivated to combine Oborne and Purves because “the teachings of Purves would be recognized as useful to add new credentials to the digital wallet of Oborne’s PPT apparatus (for example, where a user had not yet added any credentials, or where adding further credentials were desired).” IPR487, Pet. 35 (citing Ex. 1005 ¶ 295). Dr. Shamos testifies that the credential that Purves teaches is a new gift card or reloadable prepaid card. Ex. 1005 ¶ 294 (citing Ex. 1013 ¶ 83). The Petition explains that a person of skill “would generate the new credential,” as Purves teaches that a customer may obtain a new gift card or prepaid card. IPR487, Pet. 37 (citing Ex. 1013 ¶ 83). Dr. Shamos testifies that “when the processor determines that no matching credential is stored” “a new credential would be generated because “the purpose of Oborne’s tokens is to represent a credential” and “by generating the new credential, the user becomes able to benefit from 9 We note that Patent Owner does not assert that there would be any security concerns with the combination of Oborne and Purves under this ground, which is based on the Purves’ embodiment concerning requests for a gift card or prepaid card credential. See PO Resp. 48–50. 49 Oborne’s tokenization system, and if the credential was already stored, there would be no reason to generate it, since it would already exist.” Ex. 1005 ¶ 298. For claim 23, which “requests the credential from the issuing agency,” Dr. Shamos further testifies that “when new credentials were generated upon user request, such as the gift and prepaid cards taught by Purves. . ., it would be natural for the issuer to store such new credentials, at least until they were sent to the recipient, and more practically for as long as they remained valid, so that the issuer’s system would confirm their existence and validity.” Id. ¶ 304. Patent Owner does not present any arguments challenging the sufficiency of Petitioner’s showing as to claim 22. As explained for claim 22, Petitioner relies upon Purves to teach the generation of a credential like a gift card or reloadable prepaid card, which would be useful to have as a credential in Oborne, and Patent Owner does not dispute this rationale. IPR487, Pet. 35; see generally PO Resp. As Petitioner also explains, a user would want to store credentials like a gift card or reloadable prepaid card in Oborne’s PPT, at least until they were sent to the recipient, “and more practically for as long as they remained valid, so that the issuer’s systems could confirm their existence.” IPR487, Pet. 38. As Dr. Shamos testifies, this is taught by Purves’ disclosure of retrieving the user’s “payment account information from the payment account issuer,” with user’s consent, and the issuer responding with information for data for establishing a virtual wallet including a “payment account in a virtual wallet.” See Ex. 1005 ¶ 301 (citing Ex. 1013 ¶¶ 83, 107–108 (“The user may then indicate that they desire to add a new payment account to their virtual wallet”)). Accordingly, 50” slip op. at 49

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We also find Dr. Malek’s testimony on this point more persuasive than Dr. Shamos’s testimony. See Ex. 2009 ¶¶ 165–170; Ex. 1048 ¶¶ 35–39; 72 Pet. Reply 27–28 (citing Ex. 1048 ¶¶ 55–60). For example, Dr. Shamos testifies that the combination’s use of obscured credential images would not “have risked exposure of the key signatures themselves since the image does not depict or otherwise convey the key signatures.” Ex. 1048 ¶ 37. However, although Petitioner fails to sufficiently explain the proposed combination, as discussed above, presumably there is some relationship between the credential image and the key signatures, since the proposed combination purportedly allows for the user to identify items that were previously selected for release, in order to provide the relevant key signatures to the recipient. Pet. 62–63; Ex. 1005 ¶ 367; Ex. 1048 ¶ 33. In contrast, Dr. Malek testifies, and we agree, that providing an unencrypted image of a credit card, for example, would inform potential attackers of the payload of the credential that is being attempted to be securely transmitted which is a security vulnerability. Ex. 2009 ¶ 169. Although Dr. Shamos testifies that Purves teaches associating wallet items with obscured or representative images and that such representative images were routinely used in virtual wallets, Ex. 1048 ¶¶ 35, 38 (citing Ex. 1013 ¶ 85), we do not find this persuasive in the context of the proposed combination with Stafford’s system for securely storing, transmitting, and authenticating credential information relating to an entity, with use of key signatures. Ex. 2009 ¶ 160; Ex. 1012 ¶ 2. Accordingly, Petitioner’s generic reasons for the proposed combination, coupled with Petitioner’s lack of specificity as to the proposed combination, leads us to determine that Petitioner’s reasons explaining why a person of ordinary skill in the art would have combined Stafford and 73 Purves are not persuasive in light of the teachings of those references and the testimonial evidence provided by Dr. Shamos, as discussed above. Further, as also discussed, the prior art fails to teach an “OVER engine” as claimed. Therefore, Petitioner has not established by a preponderance of the evidence that the claims 1, 15, and 21 are unpatentable over Stafford and Purves. We determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 3–5, 7–14, 16, 18–20, 22–26, and 28–33, which depend from claims 1, 15, and 21, are unpatentable over Stafford and Purves. Further, we have reviewed Petitioner’s showing for the obviousness of claims 2, 6, 17, and 27 over Stafford, Purves, and Neafsey (Pet. 79–81), and the argument and evidence presented fail to remedy the deficiencies of the associated independent claims. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 2, 6, 17, and 27, are unpatentable over Stafford, Purves, and Neafsey.” slip op. at 72

  Patent outcomesUS 9,251,531 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,251,531
• 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
• Apple Inc. v. THL Holding Company, LLCAll claims unpatentable
  PTAB · Jul 3, 2025 · IPR2024-00398 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious: claims 1, 4, 7, and 8 over Kalliola and Vauclair; claims 2, 3, and 6 with Kalayjian; claim 5 with Turunen; and claim 9 with Trimble.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with the qualifications proposed by Petitioner: “this description reasonably represents the level of ordinary skill necessary to understand and implement the teachings of the ’680 Patent, as well as the prior art cited in this proceeding.” PO Resp. 13–14 (citing Ex. 2002 ¶ 22). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’680 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner proposes that, based on Patent Owner’s proposed construction in the parallel litigation, we construe “pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Pet. 6 (quoting Ex. 1009, 15–168). In Response, Patent Owner adopts Petitioner’s interpretation of this term. PO Resp. 14. We adopt the parties’ proposed construction for this term. We determine that we need not construe any other 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)).” slip op. at 15

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

    “Second, Petitioner demonstrates that the combination of Kalliola and Vauclair teaches claim limitations 1(d)(iv) and 1(d)(v). As discussed and cited to above, the Petition identifies that, with Kalliola’s touch screen as the claimed “touch screen,” Kalliola’s processor presents a graphical user interface via its touch screen as set forth for limitation 1(c) and 1(d)(ii), and Kalliola’s processor operates in conjunction with its graphical user interface to perform claimed steps as set forth for limitation 1(d)(iii). See Pet. 20–29. We agree that the assertions are supported by Kalliola’s disclosure of a touch screen with a graphical user interface presented thereon, where “tactile elements” “allow the user . . . to enter data . . . into the device.” See Ex. 1004 ¶¶ 26, 40, 42, 44, 51, 71, Figs. 3, 5. Petitioner also asserts, and we agree, that Kalliola teaches the use of Bluetooth-enabled emitters in remote devices that communicate with its wireless communication device with a signal emitter. Pet. 29–31 (citing Ex. 104 ¶¶ 9, 71, 73–75, 77, 107, Fig. 5). Petitioner contends, and we agree, that Vauclair provides additional specificity regarding the pairing process between two devices with its disclosures of a pairing process between devices using protocols that include Bluetooth, wherein a user can select a pairing option from a menu on a display. Id. at 31–32 (citing Ex. 1005 ¶¶ 22, 24, 28, 30, 34–36, 49, Fig. 1; Ex. 1003 ¶¶ 164–167). Petitioner argues, and we agree, that it would have been obvious to a person of ordinary skill in the art to configure Kalliola to use its processor to present “a pairing menu to enable a user to initiate a Bluetooth pairing process between the WCD and the signal emitter by selecting a pairing option via the WCD’s touchscreen,” with Vauclair teaching at least the selection of a pairing option presented on its display, because the presented pairing menu on Kalliola’s touch screen would allow the user to pair the WCD with the user’s personal item signal emitters and would also allow the devices to recognize each other on subsequent connections. Id. at 34–35 (citing Ex. 1003 ¶ 172); see also Ex. 1005 ¶¶ 30, 36. Consequently, we also agree with Petitioner’s assertion that it would have been obvious to a person of skill of ordinary skill in the art that Kalliola’s graphical user interface on its touch screen would have generated signals corresponding to the user’s inputs at least to carry out designated functions, like the initiation of a pairing process, and “the signals generated by the GUI from interaction at the touchscreen would be sent to the WCD’s processor so that the processor can interpret the user’s inputs and take the appropriate action.” Pet. 35; see also Pet. Reply 2–7. Petitioner also asserts, and we agree, that generating processor signals in response to a user indication was a known mechanism for wireless devices, as were Bluetooth pairing and corresponding pairing menus, and there would be no change to the respective functions of Kalliola’s’ wireless communication devices and Vauclair’s pairing menu. Pet. 36 (citing Ex. 1003 ¶ 175). The Petition argues, and we agree, that because Bluetooth pairing and pairing menus were conventional prior to time of the invention, there would have been a reasonable expectation of success configuring Kalliola’s wireless communication device. Id. (citing Ex. 1003 ¶ 176); see also Ex. 1003 ¶¶ 71–75 (Dr. Buehrer providing evidence on Bluetooth-connected devices and associated pairing). Accordingly, we determine that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, a reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(iv). As to limitation 1(d)(v), we also agree with Petitioner that in response to a generation of a pairing signal as discussed in limitation 1(d)(iv), Vauclair discloses that wireless transceivers communicate a series of RF signals back and forth to pair the devices. Pet. 37–38. Petitioner asserts, and we agree, that, in combination, it would have been obvious to configure Kalliola’s Bluetooth transceiver with Vauclair’s teachings for the communication of RF signals to pair devices. Id. at 39. Petitioner contends, and we agree, that a person of ordinary skill in the art would have understood that Kalliola teaches that its wireless communication device performs Bluetooth communications with signal emitters, with the user selecting a desired signal emitter for locating objects, and that this pairing would also allow two Bluetooth devices to recognize each other on subsequent connections. Id. (Ex. 1003 ¶ 184). Petitioner asserts, and we agree, that applying Vauclair’s known technique of communicating RF signals to pair devices would improve Kalliola’s wireless communication device and yield the predictable result of Bluetooth-paired devices. Id. We also agree with Petitioner’s argument that this pairing was an understood and conventional feature of Bluetooth mobile communication devices, so there was a reasonable expectation of success in the combination. Id. at 40 (citing Ex. 1003 ¶ 186); see also Ex. 1003 ¶¶ 71–72 (Dr. Buehrer providing evidence on Bluetooth-connected devices). Accordingly, we find that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(v).” slip op. at 40

  • Strike new argumentNew argument consideredDecided for petitioner

    “Ex. 1003 ¶ 172. The Petition also asserts that, in the combination, there would be no change to the respective functions of either Kalliola’s WCD or Vauclair’s pairing menu. Pet. 36. Thus, the Petition relies on Kalliola’s processor, and its touchscreen, and graphical user interface with Vauclair’s teachings for the pairing menu displayed, wherein pairing signals are generated by Kalliola’s graphical user interface by interaction with the screen. As we discuss further below, Petitioner includes assertions that Vauclair itself teaches that the pairing signal is generated by its graphical user interface. See id. at 33, 37. The Petition, however, also relies on the combination of Kalliola and Vauclair to teach generating a pairing signal by Kalliola’s graphical user interface by interaction with its screen, as discussed above. Id. at 35. Accordingly, it is not necessary to reach the issue of whether Vauclair alone teaches that its graphical user interface generates the pairing signal. Additionally, we do not find that Petitioner’s further arguments in its Reply concerning interaction with Kalliola’s wireless communication device through its graphical user interface were impermissibly presented in view of the Petition’s specific assertions on the teachings of the combination of Kalliola and Vauclair, as discussed above, and its reliance on user interaction with Kalliola’s graphical user interface for the teaching of generating the pairing signal. See 37 C.F.R. § 42.23(b).” slip op. at 39

  Patent outcomesUS 11,265,680 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,265,680

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