- Digital Global Systems, Inc. v. Deepsig, Inc.Some claims unpatentablePTAB · Mar 6, 2026 · IPR2024-01358 · APJ William V Saindon · IPR · Final written decision
Claims 1–3, 7–11, 15–19, 23, and 24 are unpatentable as obvious; claims 4–6, 12–14, and 20–22 were not shown unpatentable because the prior art did not teach the claimed received-signal feedback and transmitter-model update.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that: Persons of ordinary skill in the art (“POSITA”) would have a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with of radio communication systems and machine learning. Additional work or research experience can substitute for less or different education, and vice-versa. Pet. 3–4 (citing Ex. 1003 ¶¶ 33–34). Patent Owner does not appear to challenge this level of skill. We use Petitioner’s definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’704 patent.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“parameters “associated with the base station.” PO Resp. 31–32. In particular, Patent Owner argues that a transmitter “implemented in a base station” is not “associated with the base station.” Id. at 31. Petitioner argues that Patent Owner offers no reason to believe that a transmitter “implemented in a base station” is not “associated with the base station.” Pet. Reply 4–5; see also id. at 3–6 (entire argument). A plain reading of a “model associated with a base station” would encompass a model that operates in a base station. We do not see anything in the ’704 specification that would indicate “associated with” has any special meaning, or has a meaning contrary to our understanding of the plain meaning. We do not see the word “associated” outside the claims, whereas we see the word “implement” throughout the specification, generally in reference to an actual use of a model (consistent with our plain reading). See, e.g., Ex. 1001, 5:35–39, 6:3–17, 10:55–11:3 (discussing “implementations” where the model or some other feature of the system is used in a particular way). Accordingly, we construe a model “implemented in a base station” to be “associated with the base station.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“scenarios” (see PO Resp. 16–21), Patent Owner argues that “Jüschke does not disclose any association of the weight or bias parameters, . . . to any deployment scenario, and . . . base station” (id. at 19). For the reasons explained in our claim construction section above, we construe “deployment scenarios” to include “inline mode” models located within a base station, according to the list of deployment scenarios set out in the ’704 patent. See Ex. 1001, 2:38–65. The in-line deployment scenario depicted in Figure 6A of the ’704 patent bears a striking resemblance to the arrangement depicted in Figure 1 of Jüschke. In both figures, the analog radio signal is fed directly into the model and then the model directly outputs the signal to the amplifier. Compare Ex. 1001, Fig. 6A, with Ex. 1005, Fig. 1. As construed, the “deployment scenarios” represent the physical configurations of the device in which the model is found, such as “in-line.” Petitioner shows by a preponderance of the evidence that Jüschke’s similar in-line configuration is a “deployment scenario” as claimed because it teaches an inline model for a cellular system transmitter (i.e., base station). Pet. 26–29 (citing, e.g., Ex. 1005, Fig. 1, ¶¶ 6, 59; Ex. 1003 ¶¶ 146–147); see also Ex. 1001, 2:37–41 (stating that “[t]he particular deployment scenario[] may be . . . sending a radio transmission from a cellular base station that includes the . . . model . . . in an inline mode”).” slip op. at 26
- BurdenNot shown unpatentable
“Based on our claim construction analysis of claim 4, above, we agree with Patent Owner that claim 4 requires an actually transmitted signal and an update of the transmitter’s model. This claim construction eliminates Petitioner’s position regarding Holt teaching a modeled signal. See, e.g., Pet. Reply 17–23. We then turn to Petitioner’s argument that Holt teaches updating a model using an actually transmitted signal. See Pet. 59–60. There, Petitioner relies on a disclosure in Holt of an “actual communication channel 302 used to train the channel model 208.” Ex. 1006, 18:1–2. This is depicted in Figure 6 of Holt, in connection with a “fourth loss function” which is used to “train the decoder model.” Id. at 18:42–48; see generally id. at 17:58–18:51 (describing Figure 6). Whether training the channel model or the decoder model, Holt here does not disclose using the actual communication channel to train the encoder, i.e., transmitter. In sum, we find that Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “obtaining a received radio signal,” and even if it did, Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “updating the value of the model parameters” in the manner required by claim 4. Claims 12 and 20 are nearly identical to claim 4, and Petitioner’s ground fails for similar reasons. See Pet. 76. Claims 5, 6, 13, 14, 21 and 22 depend from claims 4, 12, and 20, and Petitioner’s ground fails for similar reasons as those claims. See id. at 77–80.” slip op. at 31
Patent outcomesUS 11,018,704 mixedClaim construction§ 103 obviousnessPatents in suitUS 11,018,704 - Cisco Systems, Inc. v. Lionra Technologies LimitedAll claims unpatentablePTAB · Mar 4, 2026 · IPR2024-01281 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–15, and 17–21 are unpatentable as obvious over Cornett, Paatela, and Nelson; claim 8 is also unpatentable with Russell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“been motivated to combine the teachings of Cornett, Paatela, Nelson, and Russell in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.E.2(a)–(b). Hence, Petitioner has shown by a preponderance of the evidence that claim 8 is unpatentable under § 103(a) because the claim would have been obvious over Cornett, Paatela, Nelson, and Russell.” slip op. at 122
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 13
Patent outcomesUS 7,738,471 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing 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 is authorized when “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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,822,165 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62
Patent outcomesUS 11,336,832 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,336,832 - Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.Some claims unpatentablePTAB · Nov 3, 2025 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Remand
On remand, claims 1–3 and 8–12 are unpatentable over the instituted grounds; claim 4 was not shown unpatentable.
RulingsRemand decision- RemandOther
“Federal Circuit (Paper 33), which vacated the original Final Written Decision and remanded the proceeding to the Board. See ReCor Med., Inc. v. Medtronic Ir. Mfg. Unlimited Co., No. 2023-2251, 2025 WL 944511 (Fed. Cir. Mar. 27, 2025) (“the Appeal Decision” or “Appeal Dec.”); see also Paper 41 (copy of the Appeal Decision). The Federal Circuit’s mandate issued on May 5, 2025. See Paper 40. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, on the complete record, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of claims 1–3 and 8–12 of the challenged patent, and we conclude that Petitioner has not proven, by a preponderance of the evidence, the unpatentability of claim 4.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentable
“and Petitioner’s rebuttal evidence. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been obvious to one of ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“1. Claims 1–3 and 8–11 Because the obviousness ground based on Levin and Acker is dispositive as to challenged claims 1–3 and 8–11, we need not reach this additional ground as to those claims. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018) (holding that a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Sci. Scimed, analysis in the appeal to the Federal Circuit. See Appeal Dec. *1–*2 (summarizing grounds at issue on appeal and not discussing anticipation based on Acker). Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (nonprecedential) (stating that the “Board need not address issues that are not necessary to the resolution of the proceeding,” such as “alternative arguments with respect to claims [the Board] found unpatentable on other grounds”); SK Hynix Inc. v. Netlist, Inc., IPR2017-00692, Paper 25 at 40 (PTAB July 5, 2018) (determining all challenged claims to be unpatentable and not addressing additional grounds). 2. Dependent Claim 4 As to dependent claim 4, in the context of this ground, Petitioner relies on Acker as to the additional limitations in claim 4 in the same manner as relied on in the context of the ground based on Levin and Acker. See Pet. 73 (“The combination teaches this element for the same reasons described in [the obviousness ground based on Levin and Acker], claim 4, with the exception that [one of ordinary skill in the art] would have been motivated based on his or her knowledge of prior renal denervation work, as noted above.”). Thus, for the same reasons discussed above (see § II.C.3.c), we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 4 would have been obvious based on Acker and the knowledge of one of ordinary skill in the art. G. Asserted Obviousness of Claim 12 Based on Acker, the Knowledge of a Person of Ordinary Skill in the Art, and Yock Petitioner asserts that claim 12, which depends from independent claim 1, would have been obvious based on Acker, the knowledge of one of ordinary skill in the art, and Yock. Pet. 12, 75; Pet. Reply 35–36. Patent Owner provides arguments addressing this ground. PO Resp. 57–60; PO” slip op. at 75
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Independent Claim 1 Petitioner contends that Acker discloses each limitation of claim 1. Pet. 61–63; Pet. Reply 35. In the “Overview of the Ground” section, Petitioner references its proposed construction of the phrase “configured to” and states that “it is proper to consider whether the prior art is ‘capable of’ performing the recited functions, as opposed to requiring that a designer of a prior art device have actually conceived of the recited functional language.” Pet. 61. Petitioner continues: “If the PTAB agrees that this is the proper approach to claim construction, then Acker also anticipates the claims challenged in this ground.” Id. For the reasons below, we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is anticipated by Acker. As to element 1d, which includes the phrase “configured to,”16 Petitioner states that Acker is capable of being used to target renal neural fibers outside of the blood vessel to thermally induce modulation of target neural fibers while protecting non-target tissue in the blood vessel wall from thermal injury for the reasons discussed under claim 1, limitation [1d] and in the section entitled “Reasonable Expectation of Success”, beginning on page 37 [of the Petition]. Pet. 62–63 (citing Daft Pet. Decl. ¶ 179) (first bracketed text added by Petitioner). Patent Owner argues that, in the context of this asserted ground based” slip op. at 71
Patent outcomesUS 8,845,629 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,845,629 - PTAB · Oct 31, 2025 · IPR2025-00873 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–14 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Gilmour, Merriman, and Frauenhofer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on at least one challenged claim is unpatentable. Thus, for reasons explained below, we institute inter partes review of claims 1–14 of the ’445 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1002 ¶¶ 30–34). Petitioner asserts that the POSA’s education “could include a bachelor’s degree in business or economics, with an emphasis on the use of technology in marketing or advertising” or “similar knowledge gained through actual work experience.” Id. Alternatively, the POSA’s education could include “a bachelor’s degree in computer science or equivalent industry experience, and work with a team that includes software engineers.” Id. According to Petitioner, the POSA “could also have qualified with more formal education and less technical experience, or vice versa.” Id. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’445 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner “applies plain-and-ordinary meaning to all terms.” Pet. 20. We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 8 and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner recognizes that the combination of Gilmour and Merriman alone “does not disclose that the profile owner computer automatically 17 selects a media property entity of a plurality of media property entities based on a comparison of the profile information with a plurality of stored requests from the plurality of media property entities.” Id. at 42. To address this deficiency, Petitioner asserts that Frauenhofer “discloses automatically selecting a user of a plurality of users based on a comparison of content with the plurality of stored requests from the users.” Pet. 44 (citing Ex. 1014, 3:12–19). Petitioner argues that it would have been obvious to combine Frauenhofer’s teachings with those of Gilmour and Merriman to arrive at the claimed method. Id. According to Petitioner a POSA “would have been motivated to make this combination because it would conveniently allow Gilmour’s requesting entities (which are media property entities) to make initial requests to the profile service provider, and then automatically receive profiles matching the requests on an ongoing or periodic basis.” Id. at 45. (citing Ex. 1010, 41; Ex. 1011, 39–40, 51; Ex. 1012 ¶ 25; Ex. 1013, 3:20– 23; Ex. 1002 ¶ 155).” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,984,445 - DK Crown Holdings Inc. v. Diogenes LimitedAll claims unpatentablePTAB · May 9, 2025 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–3, 5–10, 16–18, and 21–25 are unpatentable as obvious over Scott; the Board did not reach the anticipation challenge.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry.” Pet. 23 (citing Ex. 1007 ¶ 28). Petitioner states that “[a] person with less education but more relevant practical experience may also meet this standard.” Id. (citing Ex. 1007 ¶ 28). 1 The parties have not directed us to any such objective evidence. Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33; Ex. 2007 ¶ 46. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and adopt it as our own.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Both parties’ witnesses interpret “fixed odds” to mean the odds/multiplier of the wager is fixed at the time the wager is placed. See, e.g., Ex. 1007 ¶ 160 (“the wager on a bingo game would be a ‘fixed odds single’ wager when placed because the odds of winning are fixed” (original emphasis omitted, our emphasis added)); Ex. 2007 ¶ 135 (“‘fixed odds’ in the context of a ‘fixed odds single’ [means] a wager where a bettor is offered a multiplier for wagering on a given outcome(s), and where the multiplier and therefore the potential payout are fixed at the time the bettor places their desired wager”). It necessarily follows that the payout for the wager would also be fixed at the time the wager is placed. Petitioner does not dispute Patent Owner’s interpretation that “single” means the wager is for the outcome of a single event, as opposed to, for example, a parlay wager that involves the outcomes of multiple events. See, e.g., Pet. Reply 19 (“[an ordinarily skilled artisan] would understand the term ‘fixed odds single’ to refer to a game where ‘the odds of winning are fixed, and the wager is on a single outcome’”). Accordingly, we interpret “fixed odds single” to mean a wager on the outcome of a single event in which the odds/multiplier is fixed at the time the wager is placed. The parties disagree, however, on whether bingo is a fixed odds single wagering event. Dr. Vancura testifies that bingo does not involve a fixed odds single wager because “[b]ingo does not have a ‘fixed odds’ payout — it has a ‘pot’ available to be won, which is either pre-determined by the operator . . . , or more commonly, depends on the number of cards in play wherein part of the purchase price of each card is contributed to a jackpot.” Ex. 2007 ¶ 136. Mr. Crevelt testifies that bingo does involve a fixed odds single wager because all bingo cards have the same chance of winning prior to initiation of the game. Ex. 1007 ¶ 160. Mr. Crevelt does not address meaningfully the fact that the odds of winning at bingo are a function of the number of cards in play—as the number of cards in play increases, the chances that another card first achieves “bingo” increase and the initial player’s chance of winning decreases. Nor does Petitioner explain persuasively how the disclosure of a fixed odds betting terminal in the ’779 patent supports its assertion that bingo is a fixed odds single wager. See Pet. Reply 20. Notably, a reference relied upon by Petitioner explains that fixed odds betting terminals host games other than fixed odds games. See Ex. 1058, 28 (explaining that fixed odds betting terminals “are machines on which can be played fixed odds and betting games”); see also Tr. 23:12–22 (Petitioner’s counsel agreeing that there has been some scope creep regarding fixed odds betting terminals such that they include games other than fixed odds single wagers). Thus, we agree with Patent Owner that bingo is not a fixed odds single wager.” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“However, we agree that claim 16 recites a system where multiple participants place wagers on the same wagering event. Claim 16 uses both plural and singular terms, indicating that the recited plural terms refer to a plurality of elements and the recited singular terms refer to a single element. For example, claim 16 recites “receive, by the trading engine module, a plurality of wagers on the wagering event from the plurality of input devices via the communications interface, the plurality of wagers input by a plurality of participants via the user interfaces of respective input devices from the plurality of input devices.” Ex. 1001, 54:11–16. We interpret this language to mean that a single trading engine module receives wagers on a single wagering event from a plurality of participants each using a different input device. Scott discloses “a number of players electronically connected” where one player may sell symbols to “other players.” Ex. 1006 ¶ 96. Scott also discloses various types of games, including games typically played by more than one player. See, e.g., id. ¶ 44 (disclosing “Class II” games, keno, lottery, bingo). Thus, Scott at least suggests a system where multiple participants engage in the same game. We are persuaded that it would have been obvious to use Scott’s gaming machine in a multiplayer environment. Mr. Crevelt testifies that “it is an obvious matter of common sense to take a system that can be for use by one player and put it to use for multiple players” and “if one player is able to utilize Scott’s system described above in accordance [with] claim 1, but multiple players wanted to play, common sense dictates that such systems should be reproduced for multiple players.” Ex. 1007 ¶¶ 183–184. We agree, especially given Scott’s strong suggestion that its system may be used to host multiplayer games as noted above. Patent Owner’s arguments to the contrary are unavailing, as it is not clear to us, and Patent Owner has not explained adequately, how reproducing Scott’s system for multiple players, as proposed by Petitioner, would not result in a multiplayer wagering system.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Additionally, we are persuaded that Petitioner’s obviousness rationales are supported by rational underpinning. Petitioner correctly notes that Scott discloses that its memory devices “may utilize various storage technologies to accomplish data storage and retrieval.” Ex. 1006 ¶ 53; Pet. 84 (citing same). We are persuaded by Petitioner’s arguments that, given the widespread use of databases to store data in computer systems and computerized gaming systems in particular, it would have been obvious to an ordinarily skilled artisan to store Scott’s player tracking account data as records in a database. See Pet. 84–85 (citing Ex. 1001, 8:19–26, 26:29–32; Ex. 1004 ¶¶ 5, 96; Ex. 1006 ¶ 53; Ex. 1007 ¶ 92); see also Ex. 2001 ¶ 103 (Dr. Vancura testifying that, in his experience, “player tracking systems store a player’s wagering information”). Accordingly, for the foregoing reasons, Scott and Mr. Crevelt’s testimony support Petitioner’s contentions.” slip op. at 18
Patent outcomesUS 11,200,779 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,200,779 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · Apr 22, 2025 · IPR2024-01488 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds, finding a reasonable likelihood that claims 1, 2, 4, 6, 8, 9, 11, 13, 15, 16, 18, and 20 would be obvious over Sutardja …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’281 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’281 patent on all grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a minimum of a bachelor’s degree in electrical engineering, computer engineering, physics, or a similar field, and approximately two years of industry or academic experience in a field related to microelectronic architecture design and development, including experience with power management techniques for multicore processors.” Pet. 4 (citing Ex. 1022 ¶¶ 49–51). Petitioner further states that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’281 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that “no terms require construction to resolve this Petition.” Pet. 4. Petitioner also states that “[r]elated litigations may involve controversies not presented here that require construction.” Id. We determine that no express construction of any claim term is necessary 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We have reviewed Petitioner’s evidence and explanations, and based on the current record at this stage of the proceeding, find that Petitioner sufficiently establishes that an ordinarily skilled artisan would have been motivated to combine Sutardja and Mathieson with a reasonable expectation of success.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,740,281 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01404 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18, finding a reasonable likelihood that claim 1 would have been obvious over Cooney.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’609 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“of oval-shaped void 25 in Cooney is in a “pinched off region” as claimed. Petitioner explains that the void is formed as a consequence of the chemical vapor deposition process of the conductive filler, and specifically, that the shape of the void will reflect the shape of the walls of the via. Pet. 35 (citing Ex. 1005 ¶ 59; Ex. 1002 ¶¶ 167–169). Thus, according to Petitioner, the void’s shape will be similar to the torpedo shape of the via—tapering out on the top half and tapering in on the bottom half. Id. In our view, Petitioner provides a technical reason, supported by testimony, why the bottom of the void will be in the identified pinched-off region of the torpedo-shaped via in Cooney. See id. at 35–38. Patent Owner’s arguments do not address Petitioner’s technical analysis and instead focus on the precision of Cooney’s drawings. See Prelim. Resp. 8–12. Given Petitioner’s technical analysis, however, the precision of Cooney’s drawings is not determinative. Further, Patent Owner’s argument that “void 25 is localized to [the middle portion of the via] and sealed off from the tapered . . . section” also misses the fact that the middle portion of the via still has the torpedo shape (it is the inflection point of where it goes from wider to smaller). See id. at 10–11. With respect to the void in Cooney being in a “pinched off region,” we determine that Petitioner has made a sufficient showing on this preliminary record.” slip op. at 16
- Skill levelSkill level board ownDecided for petitioner
“A person of ordinary skill in the art (POSITA) at the time of the purported invention of the ’609 patent (October 7, 2011) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems. Additional work or research experience can substitute for less or different education, and vice versa. Pet. 9–10 (citing Ex. 1003 ¶¶ 72–74). Patent Owner uses Petitioner’s proposed level of skill in the art. Prelim. Resp. 6. We use the parties’ agreed definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’609 patent.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,147,609 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01402 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Okashita.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). Patent Owner argues that we should reject any “late” Sotera stipulation. Prelim. Resp. 47–48. The only authority cited for this argument are Board decisions concerning stipulations filed after a Decision on Institution was entered. Id. As Petitioner’s stipulation was filed prior to this Decision being entered, it is not “late” under the authority Patent Owner cites, and, thus, on this record, we decline to reject Petitioner’s stipulation. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential) (holding that the only appropriate time for a petitioner to offer a stipulation is prior to the Board’s decision on institution) cited in CAPJ Memo, 2 n.1. In Sotera Wireless, the Board found that a stipulation such as the one proffered here by Petitioner addressed “concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, IPR2020-01019, Paper 12 at 19. For these reasons, we find that this factor weighs “strongly in favor of not exercising discretion to deny institution.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’886 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We begin our analysis by pointing out that neither party offers a claim construction of “cascaded transistors,” though both parties reference the understanding of the term set forth by Petitioner’s declarant. Although we do not reject Petitioner’s declarant’s definition, we also do not adopt it as the meaning of “cascaded transistors” at this time, absent the parties’ proposal that we do. According to the ’886 patent, transistors simply “coupled in series” are “cascaded.” Ex. 1001, 6:50–51. We use this disclosure to guide our analysis. Reviewing Figure 7 of Okashita, we see a configuration of transistors 1 and 2 that appears, on this record, to be coupled in series. When transistor 2 acts as a shunt for transistor 1, i.e., when the threshold voltage of transistor 2 has been overcome, then current flows through transistor 1, through transistor 2, and then to ground. Ex. 1004, 7:15–17. At this preliminary stage, this is a sufficient showing that Okashita’s transistors are “cascaded” as contemplated by the ’886 patent.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“intervening silicon layer between the source/drain junctions and the buried silicon oxide layer. Pet. 60. Petitioner asserts that a person of ordinary skill in the art would have had a reason to take advantage of Okashita’s design: (1) to “reduce the operating temperature of the transistors,” which will “enhance their performance and reliability,” (2) to “prevent leakage of radio frequency signals,” and (3) to “minimize the effect of mismatch.” Id. at 60– 63. Patent Owner’s first argument is that a person of ordinary skill in the art would not look to Okashita because Okashita “is entirely focused on keeping AC and DC grounds separate,” something Patent Owner argues “is not present in Burgener.” Prelim. Resp. 37. It is not clear to us on this record that Patent Owner is correct that keeping AC and DC grounds separate is not present in Burgener, given that Burgener has both AC signals coming in from ports A–D, as well as digital control signals coming in from the control ports (e.g., 1708 and 1718, for port A). See Ex. 1006 ¶¶ 100–101 (discussing RF ports and control signals). In any event, even if the particular problem solved by Okashita is not one of the problems articulated in Burgener, that does not mean that the teachings of Okashita cannot be applied to Burgener. KSR, 550 U.S. at 420 (“any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed”). Petitioner has asserted three reasons, mentioned above, why a person of ordinary skill in the art would look to improve Burgener with Okashita’s teachings, and Patent Owner does not appear to contest them at this time.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,745,886
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.