• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00710 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7, 9, 13, and 16–20 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 8 was not shown unpatentable under either ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicates that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction. Thus, no express construction is required.” Pet. 13 (citing Ex. 1003 ¶ 86). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “and reliance on Figure 19 do not in any way explain how updating game costs by meter 502 with a new Cost_Table is relevant to a credit multiplier or even a multiplier being varied over time. Ex. 1003 ¶ 155. Considering this evidence, we determine that Petitioner and Mr. Crevelt’s reliance mainly on snippets from Schneier’s “Updating Cost Information protocol” embodiment does not sufficiently explain why or how a person of ordinary skill in the art would have understood updating game cost to encompass varying a multiplier of credits over time. We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004:158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to persuasive evidence in Schneier as to how or why a person of ordinary skill in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 8.” slip op. at 20

  Patent outcomesUS 10,825,294 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,825,294
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00709 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, 6, 8, 10, 14–18, 21–23, 25, 27, and 29 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 9 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states it “does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” PO Resp. 4. Patent Owner states further that “this [Patent Owner Response] and supporting declarations apply Petitioner’s proposed level of skill.” Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicated in the Petition that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction.[] Thus, no express construction is required.” Pet. 12–13 (citing Ex. 1003 ¶ 85). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004, 158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. Id. at 161:2–6. These explanations are unpersuasive because the testimony relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 9.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Discount Credit Pricing Structure The $0.20 discount described by Schneier for purchasing 20 credits, rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not address the idea of a time component, i.e., “over time,” as required by claim 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 18

  Patent outcomesUS 10,650,635 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,650,635
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentable
  PTAB · Oct 8, 2026 · IPR2025-00711 · APJ Linda E Horner · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 are unpatentable as obvious over Kelly, Kelly and Paulsen, or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art There is no evidentiary dispute about the level of ordinary skill in the art.7 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 12 (citing Ex. 1003 ¶¶ 100–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’164 patent Specification and the asserted prior art references, based on our review of the record.” slip op. at 10

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

    “Petitioner argues that it is not necessary for the Board to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that “[t]he Board need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Resp. 8–9. Patent Owner notes, however that “it has relied on the plain meaning of ‘frequency of play’ in Claim 7.” Id. at 9. We agree that no explicit claim construction is necessary for this decision because, even were we to adopt Patent Owner’s proffered plain meaning of “frequency of play,” Petitioner has demonstrated that the prior art renders obvious this claim limitation. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Patent Owner does not contest Petitioner’s showing that Kelly renders obvious the subject matter of claims 1, 2, 4–6, 11–13, 15, 19, 23, 24, and 29. Resp., passim; Tr. 50:4–13.8 We have reviewed Petitioner’s arguments and 8 Patent Owner argued in its Preliminary Response that Kelly does not disclose limitations [1.c.iii] and [1.c.v]. Prelim. Resp. 10–12. In our Institution Decision, we did not find these contentions persuasive based on the initial record. Dec. 20–24. Patent Owner has not presented these or any other arguments contesting Ground 1 as to claim 1 in its Response. Resp., the evidence and, based on that analysis, we find that Petitioner has shown by a preponderance of evidence that Kelly renders obvious the subject matter recited in these claims.” slip op. at 17

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

    “and Paulsen render obvious claims 2 and 4. Pet. 36–40. Petitioner submits that to the extent Kelly’s player account is not player’s club information or information on non-cash amounts, a person having ordinary skill in the art would have been motivated to implement these features based on the teachings of Paulsen. Id. Specifically, Petitioner asserts that Paulsen teaches player tracking cards and player tracking programs including player tracking points. Id. at 38–40 (citing Ex. 1007 ¶¶ 8, 9, 49). Petitioner argues that a person having ordinary skill in the art would have been led to add these features to Kelly’s system to provide a more detailed view of tracking play, which would allow for rewarding patronage and engagement. Id. at 36–37, 39–40 (citing Ex. 1003 ¶ 264; Ex. 1007 ¶ 10). Paulsen discloses a “gaming machine bonusing method utilizing a player tracking card.” Ex. 1007, code (54). Paulsen discloses that player tracking programs and player tracking cards were used in the art to provide rewards, or “comps,” to players based on the player’s level of patronage (e.g., to the player’s playing frequency and/or total amount of game plays at a given casino). Id. ¶ 8. These rewards were intended to maintain a player’s interest in additional game play during a visit and provide loyalty incentives to players. Id. at ¶ 9.” slip op. at 29

  Patent outcomesUS 11,335,164 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 11,335,164
• Anthony Inc. v. Controltec, LLCAll claims unpatentable
  PTAB · Sep 30, 2026 · IPR2025-00636 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious: claims 8–12 over Carter; claims 1–20 over Carter and Bunch; claims 3, 9, 10, and 19 over Carter, Bunch, and King; and claims 2, 11–13, and 17 over Carter, …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “testimony that we limit the level of ordinary skill to “refrigerated display cases.” Limiting the level of skill to an engineer with experience “working with refrigerated display cases” does not relate to the technology disclosed, and the invention claimed, in the ’847 patent, which is controlling condensation and conserving energy. E.g., Ex. 1001, 2:23–27 (“The invention is proactive in preventing condensation from forming by activating frame/door heaters before the dew point temperature at frame and door surfaces is reached. Power is then cycled off at a set point above dew point to save energy.” (emphases added)). An electrical engineer with a bachelor’s degree and 2 years of experience focused on lighting systems for refrigerated display cases would have “experience working with refrigerated display cases,” and thus meet Patent Owner’s proposed level of skill. Such a person, however, would not be experienced in controlling condensation, dew point sensor positioning, and condensation algorithm design, which is the focus of the disclosed and claimed invention, and which Mr. Pollock states “materially affect performance, energy use, and reliability” in controlling condensation in a refrigerated display case. Ex. 2037 ¶ 10. We also note that Mr. Pollock’s qualifications include a “B.S. in Mechanical Engineering, . . . with focus on thermal and mechanical systems, thermodynamics, and HVAC&R (Heating, Ventilation, Air Conditioning & Refrigeration).” Ex. 2037 ¶ 3. His academic focus is consistent with our determination of the level of ordinary skill. Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’847 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’847 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We more experience will offset less academic training, as did Dr. Henze (Ex. 1003 ¶ 31). Thus, in this proceeding a person of ordinary skill would have a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of professional experience working with heating, ventilating, air conditioning, and refrigeration (HVAC&R) systems, and that more academic training will offset less experience, and more experience will offset less academic training. 2. Dr. Henze Is a Person of Ordinary Skill Patent Owner asserts that Dr. Henze is not a person of ordinary skill and thus is not qualified to provide expert testimony in this proceeding. PO Resp. 18–21 (citing Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1377 (Fed. Cir. 2022). Patent Owner’s argument requires a level of ordinary skill based on “working with refrigerated display cases,” which we have not adopted. PO Resp. 27. Based on the level of skill adopted in the previous section, we determine that Dr. Henze is qualified to provide expert testimony in this proceeding C. Claim Construction We construe each claim “using the same claim construction standard” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Whether the preamble is or is not limiting is not necessary to resolve this controversy because it would not affect the outcome of this case. We also note that it is beyond reasonable dispute that Bunch, applied with Carter against all the challenged claims, discloses display cases with glass doors. Ex. 1006, 1:14–16. Bunch also discloses that, in the display cases, “[t]o combat condensation and frost, heaters are installed in refrigerator doors and frames, which raise the temperature of the door or frame sufficiently to eliminate condensation.” Id. at 1:24–26. slip op. at 22

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992))). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). These two tests are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1359 (Fed. Cir. 2023) (“Importantly, ‘the scope of any field of endeavor will vary with the factual description of each invention.’ Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address. It is enough that the prior art reference falls within the relevant field of endeavor of the patent-in-suit.”) (citations omitted); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“To determine if art is analogous, we look to ‘the purposes of both the invention and the prior art.’ If a reference disclosure and the claimed invention have a same purpose, the reference relates to the same problem, which supports an obviousness rejection.” (citations omitted)); see also Nielsen Co. (US), LLC v. TVision Insights, Inc., 186 F.4th 1363, 1369–1370 (Fed. Cir. 2026) (providing a comprehensive summary and analysis of the applicable law concerning analogous art)” slip op. at 37

  Patent outcomesUS 7,421,847 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,421,847
• Apple Inc. / Amazon Web Services, Inc. v. Ziklag IP LLCAll claims unpatentable
  PTAB · Aug 26, 2026 · IPR2026-00047 · APJ Hung H Bui · IPR · Final written decision

  Claims 1–4, 6, 9–14, and 17 are unpatentable as obvious over Yurt and Logan; the Board denied Petitioner’s motion to strike.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the record before us, we are unpersuaded that Patent Owner’s “proposed level of skill” is appropriate in this proceeding for reasons discussed below.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “McCulloh’s qualifications are grounded upon Patent Owner’s “proposed level of skill” (which we rejected) that is “higher than Petitioner’s proposed level” (which we adopted for this proceeding) and focus on their level of skill in the late 1990s timeframe (time of the invention), but there is no time requirement on when an expert acquired the requisite level of skill in the art. Osseo Imaging, LLC v. Planmeca USA Inc., 116 F. 4th 1335, 1340–1341 (declining to add a timing requirement to the minimum qualifications necessary to offer expert testimony from the perspective of a person of ordinary skill in the art). “An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention. In practice, the fact that the expert was not a person of ordinary skill at the time of the invention may well be used during cross examination to undermine the credibility of the expert.” Id. Under Petitioner’s proposed level of skill (which we adopted), Dr. McCulloh is indeed qualified to testify in this proceeding because he has a Ph.D. in Computer Science from Carnegie Mellon University and extensive experience, including “hands-on deployment and academic research in distributed systems operating under real-world constraints” (Ex. 2009, Ex. 2010). See Ex. 2010 (CV) (BSIE, MS Comp. Sci, PhD Comp. Sci, Lieutenant 1994-1999, 10th Mountain Division (“led the army’s first tactical deployment of a distributed computing system”)); Ex. 2009 ¶¶ 6–10. Although Dr. McCulloh’s declaration does not include any searching or analysis of patent literature including Yurt or Logan as part of his analysis of the “background” state of the art, as correctly recognized by Petitioner (Pet. Reply 7–8 (citing Ex. 1017, 74:18–75:14; Ex. 2009 ¶ 3)), we are persuaded that Dr. McCulloh is qualified to address Dr. Lippman’s portrayal of the architecture disclosed in the ’128 patent, as advanced by Patent Owner. Ex. 2009, ¶¶ 3, 5–34; Ex. 2010. Dr. McCulloh does not provide testimony to refute Petitioner’s obviousness analysis based on Yurt and Logan. See Ex. 2009. Mr. Johnson is only offered to refute Petitioner’s obviousness analysis based on Yurt and Logan. Ex. 2007 ¶¶ 3, 18, 29. Under Petitioner’s proposed level of skill (which we adopted), Mr. Johnson, who is a co-inventor of the ’128 patent, is qualified to testify in this proceeding, especially, when his declaration states that (1) he is a POSITA “with more than 30 years of experience building technology-driven media and contentdistribution systems” and (2) he “was actively involved in the development and deployment of digital music and video distribution technologies” since the mid-1990’s, including “real-time and near-real-time electronic delivery of media content.” Ex. 2007 ¶¶ 9–10, 14, 16. Certainly, “[t]he inventor himself may qualify as an expert and testify what his claims would mean in the relevant art.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995).” slip op. at 17

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

    “Plain Meaning of “Substantially Real Time” Instead, the plain meaning of “substantially real time” is readily apparent and understood by a person of skill (POSITA) in the art in the context of data distribution or transmission of the ’128 patent as referring to an acceptable time delay (i.e., “a fraction of real time”) between distribution center 18 and user device 12, via network 14, shown in Figures 1–2 of the ’128 patent and, as such, is consistent with the ‘128 patent’s specification and Dr. Lippman’s Declaration (Ex. 1003, ¶¶ 79, 126). Because the plain meaning of “substantially real time” as understood by a POSITA is readily apparent, there is no reason for the Board to consider Patent Owner’s clarification of “substantially real time” based solely on extrinsic evidence, i.e., counsel argument, Mr. Johnson’s declaration (Ex. 2007, ¶¶ 27, 29–30, 33, 39; Ex. 1018, 38:13–39:20) and Dr. McCulloh’s declaration (Ex. 2009, ¶ 19). For example, Patent Owner, relying upon Mr. Johnson’s testimony, clarifies the term “substantially real time” requires either (1) “playback while transmission is ongoing” (PO Resp. 30), or (2) “[a] coordinated system behavior in response to a user’s request” “in which a user request triggers coordinated operations, including locating content across distributed systems, routing that content, and initiating playback while transmission is ongoing” (PO Sur-Reply 4 (citing Ex. 1001, 2:67–3:2, 6:23–35)). However, Patent Owner’s shifting position regarding “substantially real time” is not commensurate with the plain reading of the term. Based on the plain meaning of “substantially real time,” we are persuaded by Petitioner that Yurt explicitly discloses transmitting data at least in “real time,” preferably “less than real time” or “a fraction of real time” for playback. Pet. Reply 9 (citing Ex.1005, code (57), 1:66–2:4, 4:68– 5:3 (teaching distributing “digital audio” in “less than real time” and in “a fraction of real time,” where the receiving system may “decompress in real time the requested material as it is distributed by transmission system 100”)).” slip op. at 36

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

    “teaches or renders obvious all limitations of claim 1, Petitioner also provides sufficient motivation or reasoning with a rational underpinning to combine Yurt and Logan. Specifically, Petitioner, relying on Dr. Lippman’s declaration (Ex. 1003, ¶¶ 62–73), asserts “a POSITA would have been motivated to combine Yurt with Logan for several reasons, discussed further below. Combining Logan’s usage log teachings with Yurt’s improved audio file accessibility (e.g., via popularity) to track additional user request information would have been obvious, beneficial, and predictable.” Pet. 19 (citing Ex. 1003, ¶¶ 62–72). According to Petitioner, because “Logan teaches implementation details for tracking user/usage data for billing purposes and adapting preferences ‘based on actual usage,’” “[a] POSITA would have thus been motivated to combine Yurt’s teachings (e.g., tracking information about requested items like item popularity) with Logan’s teachings (e.g., storing user data and usage information in response to user requests).” Id. at 19–20. “This would have been merely the use of a known technique (Logan’s tracking of user and usage data in response to user requests) to improve a similar method in the same way (Yurt’s tracking of information about user-requested items).” Id. at 20 (citing Ex. 1003, ¶¶ 67– 68). According to Petitioner, [T]he combination is straightforward: use Logan’s known technique for recording user data with Yurt’s existing item database teachings. See Ex. 1005, 12:28–57, 10:66–11:4; Ex. 1006, 5:33–42, 6:27–35, 8:49–58; Pet. 19–23. Since Yurt already teaches using its item database to track item popularity and request information, no modification to Yurt’s architecture is necessary. Logan merely confirms when and how to store the user information. Pet. 19–21. A POSITA would have found the combination obvious for all the reasons Dr. Lippman provided. See, e.g., Ex.1003, ¶¶ 71–72.” slip op. at 58

  Patent outcomesUS 6,182,128 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,182,128
• Apple Inc. / Amazon Web Services, Inc. v. Ziklag IP LLCAll claims unpatentable
  PTAB · Aug 26, 2026 · IPR2025-00700 · APJ Hung H Bui · IPR · Final written decision

  Claims 1–4, 6, 9–14, and 17 are unpatentable as obvious over Yurt and Logan; Petitioner’s motion to strike is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the record before us, we are unpersuaded that Patent Owner’s “proposed level of skill” is appropriate in this proceeding for reasons discussed below.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Under Petitioner’s proposed level of skill (which we adopted), Dr. McCulloh is indeed qualified to testify in this proceeding because he has a Ph.D. in Computer Science from Carnegie Mellon University and extensive experience, including “hands-on deployment and academic research in distributed systems operating under real-world constraints” (Ex. 2009, Ex. 2010). See Ex. 2010 (CV) (BSIE, MS Comp. Sci, PhD Comp. Sci, Lieutenant 1994-1999, 10th Mountain Division (“led the army’s first tactical deployment of a distributed computing system”)); Ex. 2009 ¶¶ 6–10. Although Dr. McCulloh’s declaration does not include any searching or analysis of patent literature including Yurt or Logan as part of his analysis of the “background” state of the art, as correctly recognized by Petitioner (Pet. Reply 7–8 (citing Ex. 1017, 74:18–75:14; Ex. 2009 ¶ 3)), we are persuaded that Dr. McCulloh is qualified to address Dr. Lippman’s portrayal of the architecture disclosed in the ’128 patent, as advanced by Patent Owner. Ex. 2009, ¶¶ 3, 5–34; Ex. 2010. Dr. McCulloh does not provide testimony to refute Petitioner’s obviousness analysis based on Yurt and Logan. See Ex. 2009. Mr. Johnson is only offered to refute Petitioner’s obviousness analysis based on Yurt and Logan. Ex. 2007 ¶¶ 3, 18, 29. Under Petitioner’s proposed level of skill (which we adopted), Mr. Johnson, who is a co-inventor of the ’128 patent, is qualified to testify in this proceeding, especially, when his declaration states that (1) he is a POSITA “with more than 30 years of experience building technology-driven media and contentdistribution systems” and (2) he “was actively involved in the development and deployment of digital music and video distribution technologies” since the mid-1990’s, including “real-time and near-real-time electronic delivery of media content.” Ex. 2007 ¶¶ 9–10, 14, 16. Certainly, “[t]he inventor himself may qualify as an expert and testify what his claims would mean in the relevant art.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995). The fact that Johnson is a co-inventor is not in and of itself sufficient to discredit his testimony. “That an expert may have a bias or self-interest towards a party on whose behalf he or she is offering testimony, without more, generally does not require disqualifying the expert so long as the expert appears to be providing an objective analysis. Bias goes to the weight of the testimony, not necessarily its admissibility.” Apple, Inc. v. Motorola, Inc., 757 F. 3d 1286, 1321–22 (Fed. Cir. 2014). Nevertheless, the Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner

    “Based on the record before us, we determine that neither Patent Owner’s proposed clarification nor an express construction of “substantially real time” is necessary for our proceeding. Plain Meaning of “Substantially Real Time” Instead, the plain meaning of “substantially real time” is readily apparent and understood by a person of skill (POSITA) in the art in the context of data distribution or transmission of the ’128 patent as referring to an acceptable time delay (i.e., “a fraction of real time”) between distribution center 18 and user device 12, via network 14, shown in Figures 1–2 of the ’128 patent and, as such, is consistent with the ‘128 patent’s specification and Dr. Lippman’s Declaration (Ex. 1003, ¶¶ 79, 126). Because the plain meaning of “substantially real time” as understood by a POSITA is readily apparent, there is no reason for the Board to consider Patent Owner’s clarification of “substantially real time” based solely on extrinsic evidence, i.e., counsel argument, Mr. Johnson’s declaration (Ex. 2007, ¶¶ 27, 29–30, 33, 39; Ex. 1018, 38:13–39:20) and Dr. McCulloh’s declaration (Ex. 2009, ¶ 19). For example, Patent Owner, relying upon Mr. Johnson’s testimony, clarifies the term “substantially real time” requires either (1) “playback while transmission is ongoing” (PO Resp. 30), or (2) “[a] coordinated system behavior in response to a user’s request” “in which a user request triggers coordinated operations, including locating content across distributed systems, routing that content, and initiating playback while transmission is ongoing” (PO Sur-Reply 4 (citing Ex. 1001, 2:67–3:2, 6:23–35)). However, Patent Owner’s shifting position regarding “substantially real time” is not commensurate with the plain reading of the term.” slip op. at 36

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Conclusion as to Claim 1 Petitioner has shown that (1) Yurt and Logan teach or suggest all the limitation of claim 1 and (2) reasons sufficiently existed with a rational underpinning to support the combination of Yurt and Logan.” slip op. at 63

  Patent outcomesUS 6,182,128 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,182,128
• Anthony Inc. v. Controltec, LLCAll claims unpatentable
  PTAB · Aug 25, 2026 · IPR2025-00559 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the five asserted grounds based on Carter, Beatenbough, King, Gatling, and Kotani.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find unpersuasive Mr. Pollock’s testimony that we limit the level of ordinary skill to “refrigerated display cases” because defining the level of skill as an engineer with experience “working with refrigerated display cases” does not relate to the technology disclosed and claimed in the ’181 patent, which is controlling condensation and conserving energy. E.g., Ex. 1001, 2:17–21 (“The invention is proactive in preventing condensation temperature at frame and door surfaces is reached. Power is then cycled off at a set point above dew point to save energy.” (emphases added)). An electrical engineer with a bachelor’s degree and 2 years of experience focused on lighting systems for refrigerated display cases would have “experience working with refrigerated display cases,” and thus meet Patent Owner’s proposed level of skill. Such a person, however, would not be experienced in controlling condensation, dew point sensor positioning, and condensation algorithm design, which is the focus of the disclosed and claimed invention, and which Mr. Pollock states “materially affect performance, energy use, and reliability” in controlling condensation in a refrigerated display case. Ex. 2014 ¶ 11. We also note that Mr. Pollock’s qualifications are a “B.S. in Mechanical Engineering, cum laude, from Drexel University (1998), with focus on thermal and mechanical systems, thermodynamics, and HVAC&R (Heating, Ventilation, Air Conditioning & Refrigeration).” Ex. 2014 ¶ 3. Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’181 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We modify it to state that more academic training will offset less experience, and more experience will offset less academic training, as did Dr. Henze (Ex. 1003 ¶ 31). Thus, in this proceeding a person of ordinary skill would have a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of professional experience working with heating, ventilating, air conditioning, and refrigeration” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “The fundamental role of expert testimony is that “the expert’s scientific, technical, or other specialized knowledge will help the trier of fact [here, the Board] to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702(a). The testimony must be “based on sufficient facts or data” (id. at 702(b)); must be “the product of reliable principles and methods” (id. at 702(c)); and must reflect “a reliable application of the principles and methods to the facts of the case” (id. at 702(d)). We determine, based on the record before us, that Dr. Henze’s Declaration testimony meets these requirements. He provides, as required, the facts and data to support his testimony. Indeed, Federal Rule of Evidence 702 and the Code of Federal Regulations require him to do so. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Expert testimony that “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” or that “does not cite to any additional supporting evidence or provide any technical reasoning to support” the testimony is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (Precedential) (emphasis added).” slip op. at 31

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

    “The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, whether the preamble is or is not limiting is not argued by Petitioner. Moreover, whether the preamble is or is not limiting is not necessary to resolve this controversy because it would not affect the outcome of this case. 2. “Adapted for” Patent Owner asserts that the term “adapted for” in independent claims 1 and 8 has its “plain and ordinary meaning.” Id. at 14. Patent Owner does not, however, provide us with a specific identification of what is the “plain and ordinary” meaning. Petitioner does not address a specific construction for this term. Thus, it is not in controversy and we need not specifically construe this term. slip op. at 21

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “only when it is analogous to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992))). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). These two tests are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1359 (Fed. Cir. 2023) (“Importantly, ‘the scope of any field of endeavor will vary with the factual description of each invention.’ Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address. It is enough that the prior art reference falls within the relevant field of endeavor of the patent-in-suit.”) (citations omitted); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“To determine if art is analogous, we look to ‘the purposes of both the invention and the prior art.’ If a reference disclosure and the claimed invention have a same purpose, the reference” slip op. at 42

  Patent outcomesUS 7,207,181 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,207,181
• Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Aug 20, 2026 · IPR2025-00343 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–6 and 8–13 were not shown unpatentable because Petitioner did not establish a reason to combine Bucknell’s multiplexing techniques with Eckert.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See generally PO Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’138 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. a subset of radio bearers Petitioner points out that in IPR2022-01127 the Board “preliminarily determined that a subset of the plurality of radio bearers” means “less than all of the plurality of radio bearers.” Pet 12 (citing Ex. 1019, 18–19). Petitioner explains that, in the present proceeding, it has applied “the prior art in accordance with that construction; however, in view of the asserted grounds, no claim term requires express construction to find the Challenged Claims unpatentable.” Id. (citing Nidec 868 F.3d 1017). Patent Owner neither disputes the prior construction of “a subset of radio bearers,” nor offers additional constructions. See generally PO Resp. To the extent necessary, and in accordance with our prior determination, we construe “a subset of the plurality of radio bearers” to mean “less than all of the plurality of radio bearers.”” slip op. at 13

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

    “bears pointing out that the specification of the ’138 patent appears to explain what “a single allocation” means: If there are multiple QoS requirements within a single 3GPP PDP context, a single physical allocation of radio resources may be made to the UE. In this manner, a single PDP context implies a single CCTrCh. This single physical allocation of radio resources provided to a UE is shared amongst a number of services, in proportion to their respective QoS requirements, for example in proportion to the signalled weight values (Stier). Ex. 1001, 9:36–43 (emphasis added). Petitioner’s expert, Dr. Ding, explains that the “abbreviation CCTrCh was understood in the art to refer to a transport channel known as the Coded Composite Transport Channel.” Ex. 1003 ¶ 88. Dr. Ding testifies that Eckert teaches selecting data for uplink within a determined TTI and scheduling the uplink transmission on a transport channel, E-DCH, where scheduling of the E-DCH in a UE is controlled by a base station. Eckert, [0012] (“[A] new dedicated transport channel called Enhanced Dedicated Channel (E-DCH) has been introduced for this purpose. The fundamental characteristics of this new transport channel include . . . scheduling controlled by the base station, also called NodeB in UMTS…” Id. ¶ 90. In addition to Eckert disclosing a single transport channel E-DCH, Petitioner argues that Eckert discloses using a “finite quantum of physical resources” where “[t]he ’138 patent disclosure parallels Eckert, with both the E-DCH and CCTrCH transport channels relating to a UMTS uplink, employing spreading codes in code division multiple access (CDMA), and Reply 6 (citing Ex. 1005, ¶¶ 3, 8, 15, 23; Ex. 1071 ¶¶ 17–20; Ex. 1011 ¶¶ 6, 51). We do not need to specifically interpret this claim phrase because there is no actual dispute as to the meaning of the claim language itself and because, ultimately, the construction of this phrase plays no part in our Decision.” slip op. at 15

  • BurdenNot shown unpatentable

    “D. Ground 1: Claims 1–4 and 8–11 – Alleged Obviousness over Eckert in view of Bucknell and Lohr-1 On the complete record now before us, Petitioner has not established a preponderance of evidence that claims 1–4 and 8–11 would have been obvious over Eckert, Bucknell, and Lohr-1. For the reasons explained below we determine that Petitioner has failed to show why a person of ordinary skill in the art would have modified Eckert in view of Bucknell in the manner claimed. We focus our analysis below on claim 1, and more specifically on those limitations for which the combination of Eckert and Bucknell is asserted. 1. Limitations [1.0]–[1.2] and the combination of Eckert and Bucknell The combination of Eckert and Bucknell is essential to each of Petitioner’s asserted grounds in this proceeding. Pet. 13. At the outset, we address this issue because our determination that Petitioner has failed to show why a person of ordinary skill in the art would have combined Eckert and Bucknell is dispositive as to all grounds.” slip op. at 20

  Patent outcomesUS 10,292,138 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,292,138

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.