- Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.All claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–13 and 15–16 on anticipation and obviousness grounds, and claim 14 on obviousness over Choulis.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner repeatedly refers to “a POSITA” without addressing the definition of that term or contesting Petitioner’s proposed definition. See Resp. 1, 2 n.1, 3, 8, 9, 15–21, 23, 26, 29, 32–33, 35, 37, 38, 40, 41, 44–49, 51–57, 61, 62 (bare references to “a POSITA”). Neither party indicates that the ultimate result on patentability would change depending on the definition selected. We adopt Petitioner’s proposed definition, which is not contested, because it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundTerm construed board ownDecided for petitioner
“because no information raised during the trial phase of this review changes the calculus: First and foremost, the plain terms of claim 1 include no language from which we reasonably can impose limits on the phrase “matrix material” as urged by Patent Owner. In addition, the specification includes no special definition of that phrase that supports importing Patent Owner’s proposed narrowing limitation into the claim. Furthermore, we are directed to no disclaimer of claim scope during patent prosecution that would support Patent Owner’s twice-rejected argument that the phrase “matrix material” in claim 1 excludes embedded dopants and dispersed agglomerations. And the extrinsic evidence advanced by Patent Owner during this review is ineffective to override the clear interpretation of “matrix material” that is established by the intrinsic evidence. Reply 1–7.10” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We find that Petitioner establishes by a preponderance of the evidence that Choulis anticipates claim 13. We agree with Petitioner, in that regard, that Choulis explicitly teaches “using spin-coating as a method for depositing materials, which involves a simultaneous application process” as required by claim 13. Reply 16 (citing Pet. 40–41; Ex. 1044 ¶ 45).16 We 15 Petitioner raises Djobo as a background reference supporting that Choulis anticipates deposition of PVK by evaporation. Pet. 41. Patent Owner counters that Djobo, to the contrary, shows that Choulis does not teach deposition of PVK by evaporation. Resp. 48. In other words, both parties cite Djobo in connection with the ground based on anticipation by Choulis. Against that backdrop, we determine that Patent Owner waives any argument that Petitioner improperly cites Djobo as a background reference in support of the anticipation challenge, which is based on Choulis alone. Resp. 48 (nowhere asserting that the challenge is deficient on that basis). That waiver arises because no argument, in that regard, is raised in Patent Owner’s Response see Inst. Dec. 34 (“The Board shall deemed waived any issue not raised by Patent Owner in a timely response to the Petition . . . .”). 16 Patent Owner’s statement that “spin coating tends to cause phase separation” is not developed adequately on this record and, therefore, is further agree with Petitioner that Patent Owner “has not contested this point.” Resp. 48. “Therefore, there is no genuine dispute regarding the unpatentability of claim 13,” although Patent Owner raises “arguments concerning evaporation, which is a distinct process from spin-coating” relevant to the additional limitations of claim 14. Reply 16. We determine that Petitioner establishes by a preponderance of the evidence that Choulis anticipates claim 13. Patent Owner, however, has the better position on whether Choulis anticipates claim 14, which “includes the requirement of applying matrix materials via evaporation coating.” Reply 16. Petitioner seems to abandon that challenge in the Reply by raising arguments that appear, on this record, to bear exclusively on whether the subject matter of claim 14 would have been obvious over Choulis.17 Id. at 16–17. Those arguments are insufficient to counter Patent Owner’s reasons why Choulis does not anticipate the “evaporation coating” limitation of claim 14. Compare id., with Resp. 48. On this record, therefore, we determine that Petitioner does not establish by a preponderance of the evidence that Choulis anticipates claim 14. unpersuasive to persuade us “that Choulis does not have three matrix materials.” Sur-reply 15. That argument runs counter to Choulis’s explicit, intrinsic disclosures, which illustrate (Ex. 1004, Fig. 4) and describe (id. ¶ 30) an organic light emitting layer composed of three matrix materials. See Pet. 24–25 (citing Ex. 1004, Fig. 4, ¶ 30); see also Ex. 1003 ¶¶ 85–88 (persuasive declaration testimony of Dr. Holmes, cited at Pet. 24–25). 17 There is some confusion on this point, given that both parties sometimes collapse, into a single argument, whether Choulis anticipates or renders obvious claim 1. Compare Resp. 48, with Reply 16–17.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“On this record, therefore, we determine that Choulis, at minimum, suggests that a person of ordinary skill in the art at the time of the invention would have recognized PMMA as a suitable alternative to PVK in Choulis’s Figure 4 embodiment, notwithstanding any differences raised by Patent Owner. Ex. 1004 ¶ 44. Patent Owner’s argument that no disclosure in Choulis suggests that an ordinarily skilled artisan “would have found it desirable to use PMMA in place of PVK in Choulis’s devices” misses the mark, where Choulis includes both PMMA and PVK in lists of materials suitable for use as host or matrix materials. Resp. 38; Ex. 1004 ¶ 44. “Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it is a suitable option.’” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Even if Choulis does not expressly disclose substituting PMMA for PVK in the Figure 4 embodiment, “an ordinarily skilled artisan would have found it obvious to make that substitution.” Reply 10 (citing Pet. 31 (citing Ex. 1003 ¶ 100; Ex. 1044 ¶ 23)). The suggestion for that substitution is set forth unambiguously in Choulis’s listing of both “PVK” and “PMMA” as materials suitable for use as a first “host” material in Choulis’s organic functional layer; that is, “the light emitting layer” that is “described above” in Figure 4. Ex. 1004 ¶ 44. ii. Alternative Reasoning for Replacing PVK with PMMA Patent Owner counterargues that using PPMA in place of PVK would have been understood to “upset the hole and electron balance,” as well as “affect hole-charge recombination,” and “degrade the performance of the resulting OLED system.” Resp. 37. Petitioner responds with evidence that “it would have been a routine task for” an ordinarily skilled artisan “to optimize the composition of each component within the light-emitting layer to achieve the desired charge balance.” Reply 11 (citing Ex. 1004 ¶ 24). Petitioner’s response brings to light a second reason why an ordinarily” slip op. at 40
Patent outcomesUS 8,723,164 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,723,164 - PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · Oct 9, 2025 · IPR2025-00847 · APJ Brian D Range · IPR · Institution
Instituted IPR on claims 1–11 because Petitioners showed a reasonable likelihood of proving at least one challenged claim unpatentable across the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioners meet the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–11 of the ’847 patent based upon Petitioners’ asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a master’s degree in electrical engineering, physics, chemistry, materials science, or a related field and three years of work experience in semiconductor manufacturing, such as, for example, in integrated circuit device (or transistor) design and/or manufacturing,” and “[a]dditional relevant education could substitute for professional experience, and significant work experience or training could substitute for formal education.” Pet. 11 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’847 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). slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose any claim constructions, except to explain that the claim 7 limitation “the spacer further comprises an offset spacer, positioned between the gate and the spacer,” is “satisfied if one layer (an ‘offset spacer’) of the claimed ‘spacer’ lies between another layer of the ‘spacer’ and the gate.” Pet. 11. Patent Owner does not dispute Petitioner’s assertions or offer any claim constructions. See generally Prelim. Resp. Because resolution of Petitioner’s proposed construction is unnecessary to our analyses for purposes of this decision, we do not address the proposal here. 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)). We do not discern a need to construe any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“a. Claim 1 Petitioner contends that claim 1 is anticipated by Lan or, alternatively, obvious in view of Lan. Pet. 18–26. Petitioner explains how Lan teaches or suggests each recitation of claim 1, and Petitioner’s position is supported by adequate evidence for institution. Id. (citing, e.g., Ex. 1003 ¶¶ 100–125). Petitioner, for example, persuasively compares the structure of Figure 12 of Lan to each limitation of claim 1. Id. Patent Owner does not dispute Petitioner’s contentions except to argue that Lan (and the Petition’s other asserted references) “Do Not Mention, Describe, or Concern ‘Raised Epitaxial Layers.’” Prelim. Resp. 22–24. Patent Owner does not persuasively undermine Petitioner’s position.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,847 - PTAB · Aug 13, 2025 · IPR2025-00070 · APJ Neil T Powell · IPR · Remand
The Board instituted inter partes review of claims 1–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Capalik.
RulingsRemand decision- Director reviewOther
“Patent Owner then filed a Request for Director Review, arguing that Petitioner did not need two petitions to challenge the ’872 patent’s claims. Paper 19. Acting Director Coke Morgan Stewart granted Director Review. Paper 25 (“Director Review Decision” or “DR Dec.”); IPR2025-00068, Paper 25. The Director Review Decision vacated this proceeding’s Institution Decision and the 68 Institution Decision, remanding “to the Board panel to Authorizing the parties to brief “how the Board should construe the term ‘association,’” the Director Review Decision instructed us to “consider the parties’ claim construction arguments in making [our] determination.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, the parties agree on the correct construction of “association.” And the parties persuade us to adopt their construction: “association” does not require any classification as authorized or unauthorized. Pet. 4–8; PO Remand Br. 1–3; Pet. Resp. Br. 1–2. This construction of “association” is the one applied in this Petition’s claim challenges, which comports with (1) our earlier determination that the Petition demonstrates a reasonable likelihood of prevailing and (2) Petitioner’s preference for this Petition over the 68 Petition. Pet. 4–8, 13–74; Dec. 10–22; Paper 3, 2; Pet. Resp. Br. 2, 5.” slip op. at 13
- BurdenDecided for petitioner
“D. The Merits of Petitioner’s Claim Challenges In our Institution Decision, after weighing the parties’ arguments and evidence, we determined that the Petition demonstrates a reasonable likelihood of establishing unpatentability of at least claim 1 of the ’872 patent as obvious over Capalik. E.g., Dec. 16–22. Based on all of the arguments and evidence currently of record, we remain persuaded that the Petition demonstrates a reasonable likelihood of prevailing on at least claim 1 of the ’872 patent. Indeed, as discussed above in Section II.A, the parties’ agreement on the correct construction of “association” reinforces this determination. III. CONCLUSION In view of the foregoing, having determined that Petitioner has demonstrated a reasonable likelihood of establishing at least claim 1 of the ’872 patent is unpatentable, we institute trial as to all challenged claims on all grounds stated in the Petition IV. ORDER It is: ORDERED that inter partes review of claims 1–21 of the ’872 patent is instituted on all grounds presented in the Petition; and” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“institution under § 325(d). Prior to our Institution Decision, Patent Owner did not argue we should deny under § 325(d). See generally Prelim. Resp.; Pet. Resp. Br. 4. Patent Owner first raised § 325(d) while its Request for Director Review was pending, emailing the Office with a request to brief § 325(d) in view of Ecto World. Ex. 3101, 4–5. The Office did not grant that request. Id. at 1. Nor did the Director Review Decision authorize Patent Owner to brief § 325(d). It only authorized Patent Owner “to file a ten-page brief explaining how the Board should construe the term ‘association.’” DR Dec. 4. In sum, Patent Owner’s unauthorized § 325(d) arguments are waived. Moreover, even if Patent Owner had not waived its § 325(d) arguments, we find Petitioner’s § 325(d) arguments more persuasive.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 9,954,872 - Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - Jumio Corporation v. Facetec, Inc.InstitutedPTAB · Jun 9, 2025 · IPR2025-00107 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“interest to this proceeding and is in privity with Petitioner and that the Petition is time-barred under 35 U.S.C. § 315(b) because it served iProov 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the challenged patent claims the benefit of applications filed after this date, the post-AIA version of §§ 102, 103 apply. Ex. 1001, codes (22), (60), (63). with a complaint for infringement of the ʼ606 patent more than one year before this Petition was filed. Prelim. Resp. 5–22. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 16–27. For the reasons we explained there, we do not agree that this Petition is not time-barred under 35 U.S.C. 315(b).” slip op. at 6
- Other 314aDecided for petitioner
“B. Discretionary Denial under § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court cases. Prelim. Resp. 47–56. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“C. Discretionary Denial under § 325(d) Patent Owner argues we should deny institution under 35 U.S.C. § 325(d) because Petitioner’s asserted references are the same or substantively as those the Office previously considered during prosecution. Prelim. Resp. 22–36. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 9–16. For the same reasons we explained there, we decline exercising our discretion to deny institution under § 325(d).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes an express construction for any claim terms. Pet. 5–6; see generally Prelim. Resp. We agree that no claim terms require express construction to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,157,606 - Jumio Corporation v. Facetec, Inc.InstitutedPTAB · Jun 9, 2025 · IPR2025-00109 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Derakhshani and Tanii.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Institution of Inter Partes Review As discussed above, at this stage in the proceeding, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Derakhshani, alone or combined with Tanii, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 22
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner acknowledges that, in this IPR, “the time-bar is not implicated.” Prelim. Resp. 5–6. Nevertheless, Patent Owner argues that we should reach the RPI question here because other IPRs challenging different patents implicate the time bar under 35 U.S.C. § 315(b). Id. at 5–6. Patent Owner’s request effectively asks us to extend the § 315(b) time bar to implicate patents not asserted in an applicable infringement complaint. We decline to do so. The plain language of § 315(b) does not extend the time bar to any patent other than the patent subject to the instant petition: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent (emphasis added). Nor are we aware of any other authority which requires us to interpret § 315(b) to extend the time bar to patents other than the challenged one. Because Patent Owner admits this Petition challenging the ’910 Patent is not time barred, the treatment in SharkNinja controls. Accordingly, on this record, we need not consider whether iProov must be named as an RPI and decline to deny institution under 35 U.S.C. § 312(a)(2).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“B. 35 U.S.C. § 325(d) Patent Owner argues we should deny institution under 35 U.S.C. § 325(d) because Petitioner’s asserted references are the same or substantively as those the Office previously considered during prosecution. Prelim. Resp. 18–33. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 9–16. For the same reasons we explained there, we decline exercising our discretion to deny institution under § 325(d).” slip op. at 9
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,874,910 - Jumio Corp. v. Facetec, Inc.InstitutedPTAB · Jun 9, 2025 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We need not consider whether iProov must be named as an RPI because Patent Owner does not allege that the failure to name iProov would implicate time bar, estoppel, or anything else material to this case. Our precedential authority, SharkNinja Operating LLC et al. v. iRobot Corp., controls this case, and explains that we need not determine whether a third party is an RPI to the Petitioner because “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” IPR2020-00734, Paper 11, 18–19 (P.T.A.B. Oct. 6, 2020) (precedential).” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“EXERCISE OF DISCRECTION A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court cases. Prelim. Resp. 47–56. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion – Claim 1 For the foregoing reasons, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Our determination is not final and based only on the current record and arguments. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,693,938 - Jumio Corp. v. Facetec, Inc.InstitutedPTAB · Jun 6, 2025 · IPR2025-00106 · APJ Nabeel U Khan · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“appointment of new counsel for Petitioner and a motion to stay pending IPR(s) was denied without prejudice to being refiled once new counsel has appeared for Petitioner. Ex. 2030. In the Nevada litigation, iProov moved to stay the case pending IPR(s) in February 2025, but the court has not decided whether to grant the stay. Prelim. Resp. 57. We decline to speculate about how the district court might rule on any refiled motion to stay in the California litigation (or the pending motion to stay in the Nevada litigation). Thus, the first factor is neutral.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). That first determination considers: (a) the similarities and material differences between the asserted art and the prior art involved” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“contends indicate that iProov is a real party in interest to this proceeding. For example, Patent Owner points to the overlap in prior art references asserted in this Petition and the prior art references relied upon in the California and Nevada litigations. Prelim. Resp. 14–15, 18. Patent Owner also points to indemnity obligations between iProov and Petitioner. Id. at 15–16. And finally, Patent Owner emphasizes the benefit that iProov would get from this Petition. Id. at 17–18. Having reviewed these arguments and evidence of record we determine that, even in light of the issues raised by Patent Owner, Petitioner was not acting at the behest of iProov in filing this Petition and that iProov did not direct, control, or fund this Petition. Ex. 1049 ¶ 4 (counsel for Petitioner attesting that “iProov did not direct, control, or fund the Petitions. iProov did not work on the Petitions nor was it involved with the Petitions in any way. Petitioner never provided drafts of the IPR Petitions to iProov, and Petitioner never discussed the IPR Petitions or their substance with iProov.”) We, therefore, determine that iProov is not” slip op. at 18
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he rationale behind § 315(b)’s preclusion provision is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in the prior litigation.” WesternGeco, 889 F.3d at 1319. Therefore, “it is important to determine whether the petitioner and the prior litigant’s relationship—as it relates to the lawsuit—is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” Id.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,776,471 - Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 5, 2025 · IPR2025-00070 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–21 on all five asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“MULTIPLE PETITIONS CHALLENGING THE ’872 PATENT In addition to challenging the claims of the ’872 patent with the instant Petition, Petitioner filed a petition in IPR2025-00068, which also challenged claims of the ’872 patent. IPR2025-00068, Paper 1 (“the ’68 Petition”). Petitioner ranked the instant Petition first and the ’68 Petition second. Paper 3, 5. Arguing that the circumstances here do not warrant two petitions, Patent Owner suggests that we discretionarily deny the instant Petition, stating that “[i]f the Board is inclined to institute either of [Petitioner’s] Petitions, [Patent Owner] respectfully submits the Board should institute IPR2025-00068.” Paper 8, 5. Because Petitioner ranks the instant Petition higher than the ’68 Petition, we decline to discretionarily deny this Petition due to Petitioner’s filing of the ’68 Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8 (Ex. 1003 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872
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.