- PTAB · Oct 8, 2025 · IPR2025-00739 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Jaszlics and Rallison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 8, 13, and 20 of the ’277 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 4. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. See Ex. 1001, 2:37–41, 2:61–67, 3:21–23, 8:50–64. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Even if we were to accept Patent Owner’s unsupported contention that the location of Jaszlics’s image processor is outside of the display device, this would result in only two identified, predictable locations of the image processor. The image processor would either be located outside of the display device or inside of the display device. We are persuaded that substituting Rallison’s location of inside the display device instead of outside the display device provides sufficient reason to combine the teachings of Jaszlics and Rallison. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339–40 (Fed. Cir. 2020) (reversing the Board’s determination of lack of motivation “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and plotting locations, it would have been obvious to substitute server-side plotting for terminal-side plotting in a combination of Okubo and Konishi”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,179,277 - PTAB · Oct 8, 2025 · IPR2025-00738 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 3, and 6–8 of the ’448 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming the benefit of the filing date of an application filed before March 16, 2013, we apply pre-AIA law. 2 U.S. Patent No. 6,166,744 issued Dec. 20, 2000 (Ex. 1003). 3 Int’l Patent Appl. Pub. No. WO 2003/107039 A2 published Dec. 24, 2003 (Ex. 1008). 4 U.S. Appl. Pub. No. 2002/0163486 Al published Nov. 7, 2002 (Ex. 1009) 5 U.S. Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 6 U.S. Appl. Pub. No. 2004/0002843 A1 published Jan. 1, 2004) (Ex. 1007). combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30–32, 8:31–45, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case”).” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. . . . A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Jaszlics discloses that the “invention relates . . . to systems for combining virtual images with real-world scenes” to provide applications such as virtual reality games (Ex. 1003, 1:13–21), which is the same field as the ’448 patent’s field of “location-based games and augmented reality systems” (Ex. 1001, Title). Turning to Sofer, the purpose of the detector of Sofer is to detect the location of objects in the user’s surrounding environment (Ex. 1008, Abstract; see id. at 2, 6, 11), which is the same purpose as the detector of the ’448 patent (Ex. 1001, 15:4–5; see id. at 1:28–31, 2:5, 16:11–18, 19:54–57). Therefore, Sofer’s detector is reasonably pertinent to the particular problem of detecting the location of objects in the user’s surrounding environment. We are sufficiently persuaded that Jaszlics and Sofer are analogous to the claimed invention.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,744,448 - PTAB · Oct 8, 2025 · IPR2025-00742 · APJ Miriam L Quinn · IPR · Institution
The Board instituted review of claims 1, 6-10, 14, 17, 24-28, and 30 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“portable device 100 as “portable” even when components of that “device” are integrated in a “non-portable” device, such as a car. Examples of such portable devices are provided as wireless telephones, PDAs, laptops; handheld devices, and music players. Ex. 1009 ¶ 22; See Ex. 1001, 4:22−28 (describing a visor as a portable gaming system); 7:21−27 (listing additionally Blackberries, Personal Electronic Devices, IPODs and any other portable electronic device, to be configured as a gaming system). Taking these disclosures together, the ’243 patent does not define the degree of the “portability” of the claimed device to require that the “portable device” must be completely “free of encumbering external connections.” If “portability” can include integrating a component of the “portable device” into a “non-portable device,” then there is support for holding that the recited “portable device” could be tethered to a non-portable device.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“rotation sensors are found not to be positioned on Levesque’s display, it would have been obvious to do so in light of Ronzani because Ronzani teaches equipping the head-mounted device with external and internal sensors). Petitioner’s arguments and evidence regarding motivation to combine amount to showing that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The inquiry at this juncture is whether Petitioner has shown sufficiently that an ordinarily skilled artisan is “able to recognize, based on her background knowledge, [a technique’s] potential to improve the device and be able to apply the technique.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A reference that is in the same field of endeavor as the claimed invention is analogous art,5 and such a qualification means that one of ordinary skill in the art is presumed to have been aware of the reference and thus the refence properly may be considered if it predates the claimed invention. See Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Petitioner contends that the field of endeavor of the claims of the ’243 patent is “the field of portable user-worn devices for providing location based-entertainment.” Pet. 19−20. According to that description of the relevant field of endeavor, Petitioner argues that both Levesque and Ronzani are analogous to the ’243 patent. Id. Patent Owner appears to argue that the field of endeavor is “video games.” Prelim. Resp. 29−30. This is not the correct field of endeavor because although the claim recites a location based game system, the claims considerably focus on the head-mounted device. Indeed, for claim 1 all the structural elements claimed involve or are placed in the head-mounted device. Thus, “video games” generally is not an appropriate field of endeavor, as it is too broad and ignores the significant focus of the claims of the ’243 patent. Petitioner’s statement of the field of endeavor is, therefore, more indicative of the correct field of endeavor involved here. And as such, it is unpersuasive to argue that Ronzani does not belong to the field merely because it is not solely focused on video” slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,904,243 - PTAB · Oct 6, 2025 · IPR2025-00812 · APJ Robert L Kinder · IPR · Institution
Instituted IPR of claims 1–28 on all petitioned grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner, “no express constructions are required in this proceeding.” Pet. 4. Patent Owner “agrees that the terms of the ’728 Patent have their plain and ordinary meaning.” Prelim. Resp. 7. However, Patent Owner contends that Petitioner construes the claim language “during the driving period” to mean “throughout the driving period.” Id. at 10 (claim language found in claims 1, 13, 24, and 25). Patent Owner contends Petitioner consistently uses the term “during” rather than “throughout” in the analysis of the challenged claims. Id. Patent Owner does not provide support for any specific construction or explain why any claim construction would be necessary for resolution of this proceeding. Based on the current record, we determine the differentiation asserted by Patent Owner between the use of “during” and “throughout” does not require express interpretation as the terms “during” and “throughout” are synonymous.8 Upon review of the record, we determine that no claim terms require express construction for purposes of this Decision. 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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Dr. Michalson propose “that a person of ordinary skill in the art in this matter would have had at least a Bachelor of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 2-3 years of experience in the field of telematics systems.” Ex. 1003 ¶ 15; Pet. 2, 11. Dr. Michalson further proposes “[a] greater amount of education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’728 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the preliminary record, we conclude Petitioner has explained with supporting evidence how the combination of Callopy, Curry, and Thompson teaches or suggests claim 1, sufficiently to justify institution of review. That is, Petitioner explains how a person of ordinary skill in the art would have been motivated to supplement the risk assessment capabilities of Callopy-Curry with the well-known accident detection techniques of Thompson’s WreckWatch application to reduce vehicular accidents and casualties. For the purposes of institution, Petitioner has articulated a reasoned explanation why a POSITA would have been motivated to modify Callopy’s wireless device with Curry’s calculation techniques, and Thompson’s accident detection capabilities. The Petitioner has explained in detail that Curry contemplates the need for multi-modal operation for nuanced driving conditions, and that the incorporation of Callopy would be a natural modification that aligns with standard insurance evaluation methods. Petitioner further explains the implementation of Curry’s scoring system, which is capable of logging data and processing safety statistics, in combination with Callopy’s system leads to enhanced sensor-based driving evaluation in the determination of a driver’s risk profile for insurance purposes. Petitioner further explains in detail how Thompson’s implementation further provides motivation for Curry’s initiatives to “reduce traffic-related fatalities and injuries” and that a POSITA would seek the well-known accident detection technique of Thompson to achieve this. Petitioner identifies that the combination of Callopy, Curry, and Thompson not only can be achieved without any changes to underlying hardware, but also provides the functionality of recording sensor data relating to driving, calculating driving safety statistics, and detecting driving-related incidents. Moreover, as discussed, Petitioner has provided citations to the references along with corroborating testimony from Dr. Michalson that support its arguments for why and how a POSITA would have combined the prior art disclosures with a reasonable expectation of success. See Ex. 1003 ¶¶ 100–116.” slip op. at 34
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one of the challenged claims at issue. Pursuant to § 314, we hereby institute an inter partes review as to challenged claims 1–28 of the ’728 patent.” slip op. at 3
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,236,728 - PTAB · Sep 25, 2025 · IPR2025-00741 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1, 12, 17, and 20 of the ’493 patent on all asserted §103 grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we determine that Petitioner has shown a reasonable likelihood of prevailing on its contentions of obviousness for claim 1 of the ’559 patent and claim 1 of the ’493 patent.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,376,493 - PTAB · Sep 25, 2025 · IPR2025-00740 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR of claims 1, 12, 17, and 20 of both patents on all asserted § 103 grounds, finding a reasonable likelihood that at least one claim of each patent is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated in this Decision, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’559 patent and at least one claim of the ’493 patent are unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the instant Petitions. 37 C.F.R. § 42.108(a).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill, would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a 2 US Patent No. 6,166,744, issued Dec. 26, 2000 (Ex. 1003). 3 US Patent No. 6,369,952 B1, issued Apr. 9, 2002 (Ex. 1004). 4 WO 03/107039 A2, published Dec. 24, 2003 (Ex. 1008). 5 US Patent Application US 2002/0163486 A1, published Nov. 7, 2002 (Ex. 1009). person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. 740 Pet. 4 (citing Ex. 1002 ¶¶ 21−25); 741 Pet. 4. Patent Owner does not propose a level of ordinary skill. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“At this stage, we do not find Patent Owner’s proposed construction persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Paper 10 in the 740 IPR; and Patent Owner filed a Preliminary Sur-reply, filed as Paper 11 in the 740 IPR. Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:38−40, 2:63–3:2, 3:23–25, 6:11−13, 6:46−48, 8:48– 62, 9:23–28, 20:28−58, 22:1−4. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (740 Ex. 1001, 1:58−60), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” 740 Ex. 1001, 11:12−14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing a physical playfield with defined boundaries, or a “bounded” playfield, as well as a physical playfield with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Second, Petitioner’s explanation of its alternative theory—that Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,828,559 - PTAB · Sep 25, 2025 · IPR2025-00737 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1, 2, 4–7, 13, and 17 on all asserted grounds, finding a reasonable likelihood that Meta would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 2, 4–7, 13, and 17 of the ’476 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming priority to an application filed before March 16, 2013, we apply pre-AIA law. 2 US Patent No. 6,166,744 issued Dec. 26, 2000 (Ex. 1003). 3 Wayne Piekarski et al., “Integrating Virtual and Augmented Realities in an Outdoor Application,” Proceedings of the 2nd IEEE and ACM International Workshop on Augmented Reality (1999) (Ex. 1004). 4 US Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 5 US Patent No. 6,951,515 B2 issued Oct. 4, 2005 (Ex. 1005). 6 US Publ. No. 2004/0002843 A1 published Jan. 1, 2004 (Ex. 1007). 7 WO 01/42809 A2 published June 14, 2001 (Ex. 1008). and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5–6. Patent Owner, at this stage, does not challenge Petitioner’s definition of the level of ordinary skill. See generally, Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” Ex. 1001, 21:6– 7; 22:26–27. The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Id. at 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30– 32, 8:30–44, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:51–53), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 10:58–61. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction. Paper 10, 2 (Petitioner arguing that by describing an augmented reality system where a user can view the physical surroundings, a “bounded” physical playfield is not necessary). Further, we find unpersuasive, at this juncture, Patent Owner’s arguments related to embodiments of how the information about the playfield is captured and stored to construct the playfield and perform scaling. Prelim. Resp. 7−13. As Petitioner notes, and we agree, none of these features are recited in the independent claims. Paper 10, 2. And, to the extent there is a distinction between being “on” or “off” the “physical playfield” as Patent Owner argues, the claim language requires no such determination or detection.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“physical playfield” as properly construed. Prelim. Resp. 30. As discussed in our claim construction above, we are not persuaded that the claim term “physical playfield” is limited to a bounded physical play space. However, even under the Patent Owner’s proposed narrower construction, we are sufficiently persuaded that the combination teaches a bounded physical play space. Jaszlics discloses that its system creates virtual elements in theme parks and entertainment-oriented environments. Ex. 1003, 2:14–16, 2:67– 3:1; see id. at 18:48–55. We are sufficiently persuaded that a theme park is a bounded physical play space. In addition, Jaszlics discloses training armored vehicle crews by using both virtual vehicles and actual vehicles moving over real terrain. Ex. 1003, 1:38–60. We are sufficiently persuaded that a skilled artisan would have envisioned that such training occurs on a military base, which is bounded.8 Jaszlics further discloses that its training field includes boundary markers. Ex. 1003, Fig. 15, 10:1–9. We are sufficiently persuaded that the tank training field of Jaszlics, which has boundary markers and is located on a military base, is a bounded physical play space. Therefore, even under Patent Owner’s narrower construction, we are sufficiently persuaded that a person of ordinary skill would have recognized that a user would have played at least some of the video games provided by the combined system of Jaszlics and Piekarski in a bounded physical play space such as a theme park or a military base. slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,585,476 - Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7
- Skill levelSkill level board ownDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28
Patent outcomesUS 10,850,616 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,850,616 - PTAB · Jun 6, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds and granted LG’s motion to join the Vizio IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Vizio IPR on all challenged claims and all asserted grounds of unpatentability. Vizio IPR, Paper 12; see also Vizio IPR, Paper 1 (the “Vizio Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Vizio IPR. Compare Pet. 1–2, with Vizio Petition, 1–2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Vizio IPR. Mot. 1 (“[Petitioner] . . . relies upon the same expert declaration as relied upon in the Vizio IPR.”); Ex. 1003, 1 (cover page indicating Declaration of Henry Houh in support of the petition submitted in IPR2024-00723), 134 (signature page dated March 21, 2024). Because the grounds of unpatentability in the instant Petition are identical to those in the Vizio IPR, for the same reasons stated in our Decision to Institute in the Vizio IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Vizio IPR, Paper 12, 12–41 (analyzing challenges in the Vizio Petition).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because the “Petition is substantively identical to the petition in the Vizio IPR,” “challenging the same claims of the ’384 Patent on the same grounds while relying on the same prior art, arguments, and evidence,” and relying “upon the same expert declaration as relied upon in the Vizio IPR.” Mot. 1, 4–5. Petitioner represents that joinder will not impact the Vizio IPR schedule. Id. at 5–6. Petitioner also represents that it “explicitly agrees to take an ‘understudy’ role” and “will assume the primary role only if Vizio cease to participate in the Vizio IPR.” Id. at 6– 7.” slip op. at 11
NonePatents in suitUS 9,578,384 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00131 · APJ Robert L Kinder · IPR · Institution
The Board denied institution of IPR on claims 1–20 because a district court had entered judgment finding all challenged claims patent ineligible under § 101.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the Challenged Claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. Thus, consistent with Hulu, we deny institution of inter partes review because the District Court has entered judgment determining all Challenged Claims of the ’785 patent invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 12
Discretionary denialPatents in suitUS 10,846,785
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.