- PTAB · Oct 11, 2023 · IPR2023-00830 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds and granted T-Mobile’s motion to join the CommScope IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenged claims and all asserted grounds of unpatentability. CommScope IPR, Paper 18 (institution decision); see also CommScope IPR, Paper 1 (the “CommScope petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the CommScope IPR. Compare Pet. 3, with CommScope petition, 4; see also Mot. 1 (asserting that “[t]his Petition and supporting declaration are substantively identical to the petition and declaration submitted in the CommScope IPR”; “Petitioner here asserts that the same claims are obvious over the same prior art based on the same arguments presented by the same expert as in the CommScope IPR”). As indicated, Petitioner also relies on the same declarant as in the CommScope IPR. Mot. 1; compare Ex. 1003 (Declaration of Anthony Acampora, Ph.D.) with CommScope IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 18, 19–41 (analyzing challenges in the CommScope petition).” slip op. at 7
- 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, as set forth above, the Petition is substantially identical to the CommScope petition, contains the same grounds based on the same evidence, and relies on the same declaration of Anthony Acampora, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner represents that joinder will not impact the CommScope IPR schedule. Id. at 5. Petitioner also represents that it “agrees to take an ‘understudy’ role in the joined proceeding, so long as CommScope remains an active party.” Id.” slip op. at 8
NonePatents in suitUS 10,334,499 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Sep 20, 2023 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner replies that the specification of the ’926 patent explicitly defines the term “gaming account”— As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s 6 Petitioner mistakenly cites Ex. 1002, 7:28–32, but the location of the material in the ’926 patent is apparent from a cursory review. Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’926 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe using the gaming account to capture spending behavior in non-gaming environments. Id. (citing Ex. 1002, 15:12–16:64). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’926 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 7:39–43. Patent Owner does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Patent Owner’s attempt to import concepts from the embodiment illustrated in Figure 8 into the meaning of “gaming account.” C. Level of Ordinary Skill” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for patent owner
“the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At the outset, we note that Patent Owner’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.7 We also note that Patent Owner does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 7 Patent Owner acknowledged as much during the oral hearing. See Tr. 40:24–41:13. 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner challenges claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 as obvious in view of Smith. Pet. 11–49. Patent Owner does not contest Petitioner’s showing for most of the limitations recited in independent claims 1, 8, and 14 or dependent claims 2, 5, 7–10, 13–17, and 20. We address each contested limitation in the independent claims and dependent claims 4, 12, and 19 below. For all limitations that are not expressly contested by Patent Owner, we find that Petitioner’s showing is persuasive based on the arguments set forth in the Petition and the evidence cited in support of those arguments. For the reasons expressed below, we conclude that Petitioner has proven by a preponderance of evidence that Smith renders claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 unpatentable as obvious.” slip op. at 19
Patent outcomesUS 9,785,926 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Sep 20, 2023 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“To prevail in its challenges to the patentability of the claims, Petitioner must establish unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’176 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16
Patent outcomesUS 9,466,176 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00696 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 6, 8–12, and 15–20 were held unpatentable as obvious over Smith; claims 1, 10, 11, 16, and 17 were also held unpatentable over Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both Everi and Sightline agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial 3 Although occasionally we may focus on Sightline’s arguments, we do not shift the ultimate burden from Everi. We focus on Sightline’s arguments merely to identify issues in dispute, many if not all of which we find unpersuasive in view of the record as a whole. regulations—whether such familiarity is implied per Everi or stated outright per Sightline. Thus, we adopt Everi’s definition of the level of skill in the art with Sightline’s additional modification of that definition. C. Claim Construction” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“At the outset, we note that Sightline’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. As stated in the “[q]ualifications” section of his declaration, Mr. Crevelt formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”5 Id. ¶ 9. Mr. Crevelt’s declaration also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 4 Sightline acknowledged as much during the oral hearing. See Hrg. Tr. 40:16–23. 5 Sightline’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt explains in his declaration that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.6 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s declarations should be accorded no weight and disregarded, as Sightline mistakenly believes. E. Everi’s Reliance on the “Immediately Envisage” Standard” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 8:26–30) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightline’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’708 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its description ever mentions using the gaming account to accomplish that objective. Id. at 4 (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’708 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26–30. Sightline does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Sightline’s attempt to import concepts from the embodiment of Figure 8 into the meaning of “gaming account.” D. The Credibility of Everi’s Expert” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Those disclosures, when read in the context of Figure 1, clearly support that Smith’s player account 132 holds funds for wagering by the player at a gaming establishment. As such, we find that player account 132 is a “gaming account” as properly construed—“financial account . . . that is associated with a player . . . and maintained by a casino.” To the extent Sightline’s declarant opines otherwise, we do not find that testimony credible or persuasive, as it is clearly inconsistent with Smith’s express teachings. See, e.g., Ex. 2001 ¶¶ 32–41. More persuasive is the testimony of Everi’s declarant, Mr. Crevelt, that player card account 132 is a financial account that holds funds for use by a player in wagering at a casino or other gaming establishment. See, e.g., Ex. 1001 ¶¶ 102, 106, 109, 115; Ex. 1039 ¶¶ 14–16. Also, to the extent Sightline faults Smith for not disclosing that player account 132 or player casino account 604 “are used in a non-gaming environment” of a casino (PO Resp. 31–33), we are not persuaded for the simple reason that it is premised on an improper claim construction, namely, a construction proposed by Sightline but rejected by us, as discussed above in Section II.C. Having considered the evidence of record and the parties’ arguments, we find that Smith teaches the “gaming account” limitation of claim 1. Sightline raises the same argument with respect to the “gaming account” limitation in independent claim 18 as it does for claim 1. See PO Resp. 41– 42. Thus, for the same reasons as claim 1, we find that Smith meets the “gaming account” limitation of claim 18. See Pet. 40–41.” slip op. at 18
Patent outcomesUS 8,998,708 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,998,708 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00663 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 4–9, 11–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Sightline does not dispute Everi’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28).” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 7:28–32) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightlines’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’123 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion As discussed above, Everi persuasively shows that Smith teaches or suggests the disputed limitations of independent claims 1, 8, and 14, as well as those of dependent claims 4, 11, and 19. Sightline does not otherwise dispute Everi’s showing of how Smith teaches the remaining limitations of the independent claims. See PO Resp. 27–33. Nor does Sightline dispute Everi’s showing that Smith teaches the limitations of dependent claims 2, 5, 7, 9, 12, 13, 15–17, and 20. See id. at 33–34 (arguing separately only dependent claims 4, 11, and 19, while asserting that the remaining dependent claims are not obvious for the “same reasons” as claims 1, 8, and 14). Thus, we need not address the sufficiency of Everi’s showing as to any undisputed limitations. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”); see also Paper 9 at 8 (emphasizing that “any arguments not raised in the response may be deemed waived”). In any event, based on our review, we find that the record fully supports Everi’s showing that Smith teaches or suggests all the limitations of claims 1, 8, and 14, as well as all the limitations of the dependent claims 2, 4, 5, 7, 9, 11–13, 15–17, 19, and 20. See Pet. 14–47. In sum, after weighing all relevant factual findings, including the level of ordinary skill in the art, the scope and content of Smith, and any differences between Smith and the claimed invention,7 we conclude that Everi demonstrates by a preponderance of the evidence that claims 1, 2, 4, 5, 7–9, 11–17, 19, and 20 of the ’123 patent are unpatentable as obvious over Smith under 35 U.S.C. § 103(a).” slip op. at 26
Patent outcomesUS 9,196,123 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00614 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 6–11, 14–20, and 22–26 are unpatentable as obvious over Smith and Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person of ordinary skill in the art (a “POSA”) “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner asserts that the level of skill of the ordinary artisan should additionally include “familiarity with gaming and financial regulations.” Resp. 4 (emphasis omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“defines the term “gaming account,” stating, “As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Reply 2 (citing Ex. 1002, 8:26–30) (emphasis omitted). Petitioner contends that “Patent Owner’s construction improperly captures financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino.” Id. at 2. Second, Petitioner contends that even though Patent Owner’s construction uses the disjunctive “or,” Patent Owner asserts that its construction would require that a “gaming account” be usable in both gaming and non-gaming environments. According to Petitioner, Patent Owner’s construction thus improperly limits the claim term “gaming account” to an account having “the capability of being used in both a gaming and a non-gaming environment of a casino,” and does not include accounts that can be used only in a gaming environment. Id. at 3. Third, Petitioner contends “while Patent Owner cites to FIG. 8 as solving a purported problem of ‘capturing patron spending behavior,’ (Response, pp.10–11), FIG. 8 and its description is completely devoid of using the gaming account to do so.” Id. (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the Specification: “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26– 30. Patent Owner does not identify any portion of the Specification that evidences an intent to further limit the scope of the claim term “gaming account” to an account that must be usable in both gaming and non-gaming environments, and we decline the invitation to import limits from the preferred embodiment cited by Patent Owner into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). D. Overview of the Asserted References” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nothing prohibits a prior art reference from “be[ing] considered for everything it teaches by way of technology,” rather than being limited to a particular embodiment or invention. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015); see also Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc., 814 Fed. Appx. 592, 596 (Fed. Cir. 2020) (essentially same). Thus, we reject the notion that player account 132 in Figure 1 cannot be a casino-level account in the same manner as the player casino account 604 in Figure 6. The above-cited portions of Smith teach that player account 128 may be located within the gaming environment (and thus constitute the player’s casino account), and may also perform the same functions that Smith attributes to player’s casino account 604. Thus, this evidence supports the testimony of Mr. Crevelt that player account 132 and player’s casino account 604 can be the same account (see, e.g., Ex. 1001 ¶¶ 93, 111–112), and is inconsistent with the testimony of Dr. Shamos that these accounts must necessarily be separate and that player account 132 cannot be a financial account (see, e.g., Ex. 2001 ¶¶ 32–33). On the entirety of the record before us, and for the specific reasons discussed above, we find Mr. Crevelt’s testimony on the “gaming account” limitation to be more consistent with the disclosures of Smith, and more persuasive than the testimony of Dr. Shamos. See Ex. 1001 ¶¶ 93, 111–112; Ex. 1039 ¶¶ 14–16. We, thus, credit Mr. Crevelt’s testimony, and are persuaded that Smith teaches, or at least suggests, that player account 132 (which may be located within a casino) and player’s casino account 604 may be the same account. We are persuaded on this record that player account 132/player’s casino account 604 would constitute a “financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino,” i.e., a “gaming account” of the type recited in the claims.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the reasons discussed below, we find Petitioner’s contentions more persuasive. As discussed above, we have construed the claim term “gaming account” as “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Thus, as a preliminary matter, even if player account 132 and player’s casino account 604 were implemented as separate financial accounts, this fact would not preclude them from together constituting a “gaming account” of the type required by the challenged claims.” slip op. at 21
Patent outcomesUS 8,708,809 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809 - PTAB · Aug 14, 2023 · IPR2023-00818 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–19 on all petitioned grounds and granted AT&T’s motion to join the Ericsson IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4–5. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it “will maintain only an ‘understudy’ role in the proceeding, if joined.” Id. at 6.” slip op. at 8
NonePatents in suitUS 10,334,499 - PTAB · Jul 21, 2023 · IPR2023-00466 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 7–9, 11, 15, 17, 18, 20, and 21 on all asserted grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in wireless communications networks and engineering, including some knowledge of or experience with distributed antenna systems. An individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years). Pet. 19 (citing Ex. 1003 (Declaration of Dr. Anthony Acampora) ¶ 24). Patent Owner proposes substantially the same level of skill, but does not require the industry experience in wireless communications networks and engineering to include “some knowledge of or experience with [distributed antenna systems].” Prelim. Resp. 8–9 (citing Ex. 2001 (Declaration of Dr. Daniel Foty) ¶ 13); Ex. 1025, 9–10). For purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. Our decision would not be different if we adopted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On the present record and for the purpose of this Decision, we agree with Petitioner that the proper construction of “communications unit” encompasses multiple DRUs or antenna units. Although Patent Owner is correct that not every embodiment needs to be reflected in every claim, and indeed, some embodiments may not appear in any claim, we do not agree that there is evidence supporting Patent Owner’s argument that the construction of “communications unit” should be narrowed to the embodiment requiring only one DRU/antenna. The cited claims do not indicate that multiple units may not transmit at the sets of frequencies recited. Additionally, although Patent Owner cites claim 16 as requiring that each communications unit is a single DRU, if that were a correct reading of claim 16, it is not clear what the claim recitation would add, as it would not narrow the prior recitation of a “communications unit” from claim 15. Such interpretations are disfavored. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (refusing to adopt a claim construction that would render a claim limitation meaningless); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that “claims are interpreted claim 16 uses the inclusive “comprises” in its recitations, which is an open-ended term and does not exclude the possibility of other DRUs in a communication unit. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“Additionally, with respect to claim 20, Petitioner argues that “the first frequency band” and “the second frequency band” recited in claim 20 lack antecedent bases and are indefinite. Pet. 42, 64. This issue was addressed in the Eastern District of Texas cases claim construction order that construed “the first frequency band and the second frequency band” as “the first frequency range and the second frequency range.” Ex. 1037, 19–20. For the purposes of this Decision, we agree with and adopt the reasoning and this determination is preliminary and for the purposes of this Decision; the parties may address it further in future briefing in accordance with our rules.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,197,358 - PTAB · Jun 30, 2023 · IPR2023-00646 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 1–12 over all petition grounds and granted AT&T’s motion to join IPR2022-01212, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any 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 ’338 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner also represents that joinder will not impact the Ericsson IPR schedule. See, e.g., Mot. 6 (“[A]llowing [Petitioner] to assume an understudy role to Ericsson, will also have little, if any, impact on the Ericsson IPR because no new grounds will be added, the schedule will not be affected, no additional briefing or discovery will be required, and no additional burdens will be placed on Patent Owner.”).” slip op. at 10
NonePatents in suitUS 8,682,338 - Intuit Inc. v. Samesurf, Inc.InstitutedPTAB · Jun 28, 2023 · IPR2023-00342 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that claims 1 and 10 would be obvious over Lebrun and Wang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyDecided for patent owner
“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.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Patent Owner is correct that Dr. Lieberman’s CV on its face does not include two years in a position titled as software developer, web-based developer, or the like. See generally Ex. 1004. Dr. Lieberman, however, has a degree in “Informatique” from the University of Paris VI (Sorbonne), as Patent Owner acknowledges (Prelim. Resp. 34), and this degree is in addition to Dr. Lieberman’s Bachelor of Science degree from the Massachusetts Institute of Technology (MIT). Ex. 1004, 12–13. This University of Paris VI (Sorbonne) degree is additional education beyond the required bachelor’s degree and could have substituted for some amount of professional experience, as we note in our determination of the level of ordinary skill for this institution decision in Section II.A. slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“creation message to the group-surfing server 140 to create a group-surfing session (Ex. 1005, 32:9–11), a second web client 110 can “add itself to the session” by sending “a session-join message 151 to the group surfing server 140” (id. at 33:2–3). The session creation message sent by second web client, which corresponds to the recited guest device, is sufficient to teach or suggest detecting an activation associated with the synchronized browsing session at this preliminary juncture. Lebrun differs from the detecting limitation in that it does not expressly describe that the session creation message is sent by activating a hyperlink. However, Wang’s description of a second client device joining a group session via the myURL address is sufficient at this preliminary stage to address the deficiency in Lebrun. On this preliminary record, Petitioner’s showing of a rationale to combine Lebrun and Wang is also sufficient for purposes of institution. Specifically, the proffered reasoning that utilizing Wang’s designated URL address to activate a session join invitation would enable Lebrun’s group-surfing server to coordinate and manage the group-surfing session and further Lebrun’s goal of providing improved group access to web sites (see Pet. 25), is sufficient at this early stage. Patent Owner does not address Petitioner’s showing as to this limitation. See generally Prelim. Resp.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,591
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.