- Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,335,164 - Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentablePTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision
Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22
- 112 supportDecided for patent owner
“Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24
Patent outcomesUS 10,514,711 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 10,514,711 - PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision
Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15
- ScopeDecided for patent owner
“not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,713,959 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37
Patent outcomesUS 11,265,404 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,265,404 - ZF North America, Inc. / ZF Active Safety US Inc. v. Stoneridge Control Devices, Inc.All claims unpatentablePTAB · Jun 12, 2024 · IPR2023-00273 · APJ Scott C Moore · IPR · Final written decision
Claims 5, 7, 8, 14–19, 24, and 25 are unpatentable under §103 over the grounds decided; the motion to exclude was denied in part and dismissed in part.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties agree that one skilled in the relevant art would have had a bachelor’s degree in a relevant engineering discipline, plus at least two years of experience with what each believes to be the relevant technology. Though Patent Owner objects to explicitly listing a bachelor’s degree in electrical engineering as a qualifying educational background, its proposed formulation includes open-ended language (i.e., “or a similar discipline”) that is broad enough to encompass electrical engineering degrees. Patent Owner also concedes that Dr. Lequesne, who has a bachelor’s degree in electrical engineering, is qualified to give testimony from the perspective of one of ordinary skill in the art. See Hrg. Tr. 36:9–21. Accordingly, it does not appear that there is a substantive dispute regarding the educational requirements that is relevant to this proceeding. As to the necessary experience, Petitioner correctly points out that “most” claims of the ’415 Patent do not recite isolators or require attenuation or damping. Pet. Reply 23. However, the challenged independent claims (claims 5, 8, 16, and 17) all recite at least an isolator with a damping coefficient, and the ’415 Patent repeatedly mentions noise attenuation as being a goal of the claimed invention. See, e.g., Ex. 1001, 1:53–55, 5:33– 56. Patent Owner’s proposal also uses the disjunctive “or,” and thus is broad one or more of vibration isolation, vibration damping, or noise attenuation. On this record, we adopt Patent Owner’s proposal, and determine that one of ordinary skill in the art to which the ’415 Patent pertains would have had a bachelor’s degree (or equivalent) in mechanical engineering, automotive engineering, or a similar discipline, and at least two years of experience with vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems. We find that this formulation is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355. We note, however, that none of the issues in this case appears to turn on differences between the parties’ proposed formulations, and that all of the findings and conclusions set forth below would have remained the same had we instead adopted Petitioner’s proposed formulation. C.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We begin our analysis of this dispute by looking at the language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In so doing, we note that Patent Owner is correct in asserting that certain claims recite a vibration isolator disposed between a sub-frame and an actuator housing. See Ex. 1001, Claims 16, 17; PO Resp. 17. Other challenged claims, however, do not contain any limitations that pertain to an actuator housing. See Ex. 1001, claims 5, 7, 8. Patent Owner’s proposed construction, thus, would incorporate new limitations pertaining to an actuator housing into at least claims 5, 7, and 8. Next, we turn to the specification. See Vitronics, 90 F.3d at 1582. In so doing, we note that it is generally improper to incorporate limitations from the specification into the claims because 35 U.S.C. § 112 “requires that the claims themselves set forth the limits of the patent grant, [and] also definitions of terms to the exact representations depicted in the embodiments.” Phillips, 415 F.3d at 1323. There are, of course, exceptions. A specification may contain a “special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). But any such special definition must “clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (quoting Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)). The specification also may “reveal an intentional disclaimer, or disavowal of claim scope by the inventor.” Phillips, 415. F.3d at 1316. But any such disclaimer “must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006). Patent Owner is correct in its assertion that the specific embodiments disclosed in the ’415 Patent specification have separate sub-frames and actuator housings. See PO Resp. 16–17 (citing Ex. 1001, 4:44–54, 6:36–54). But the specification also makes clear that the applicant intended for these embodiments not to be construed as limiting the scope of the claims. See Ex. 1001, 8:36–42 (clarifying that the disclosed embodiments “are set forth here by way of illustration but not of limitation”). Patent Owner identifies nothing in the specification that rises to level of a definition or clear and intentional disclaimer or disavowal of claim scope, and we see no such definition or disclaimer in the specification. Patent Owner’s reliance on In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017), is also misplaced. In re broadest reasonable interpretation standard—a standard that does not apply in this case. See id. at 1381–82. Moreover, the claim construction at issue in Smith was so broad that the Federal Circuit characterized it as “generic.” See id. at 1382. Here, the parties agree that the claim term sub-frame has a specific meaning: a frame for a sub-assembly. See PO Resp. 16; Pet. Reply 13; Hrg. Tr. 13:7–12. Nothing in Smith requires or suggests that under the Phillips standard, we must interpret the non-generic claim term “sub-frame” in a way that would incorporate new limitations pertaining to an actuator housing into claims that do not even mention an actuator housing.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to find Dr. Lequesne less credible based solely on his electrical engineering degree and relative level of experience with noise vibration and damping. As noted above, Patent Owner does not dispute that Dr. Lequesne is qualified to give testimony from the perspective of one of ordinary skill in the art. Petitioner asserts, and Patent Owner does not dispute, that “Dr. Lequesne has spent his 40-year career as a designer in the automotive industry, has worked on EPBA [electronic parking brake actuators and NVH [noise, vibration, and harshness].” Pet. Reply 24 (citing Ex. 1002 ¶¶ 7–9; Ex. 2007, 10:6–17, 11:21–16:3, 20:3–31:8; Ex. 1023). On this record, we find Dr. Lequesne qualified to provide expert testimony on the subject matter of the challenged claims of the ’415 Patent and asserted prior art references because he has a degree in electrical engineering, which is a “similar discipline,” and at least two years of experience with “vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems.” See supra § III.B; Ex. 1002 ¶¶ 4–12 (outlining Dr. Lequesne’s education and experience); Hrg. Tr. 36:9– 21 (Patent Owner’s counsel conceding that Dr. Lequesne is qualified to provide expert testimony). In judging the credibility of competing witnesses, we have weighed their testimony, taking into account the witnesses’ different educational qualifications and experiential backgrounds as they pertain to the ’415 Patent, as well as whether the witnesses offer corroboration for their opinions, and whether those opinions are consistent with the ’415 Patent, the prior art, and their cross-examination testimony. E.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We agree with Petitioner that Patent Owner’s purported evidence of copying, industry praise, and commercial success lacks nexus to the claimed invention. To show that the accused devices at issue, i.e., the purportedly copied, praised, and commercially successful products sold be Petitioner, are coextensive with at least one independent claim of the ’415 Patent, Patent Owner relies on the claim charts shown in Exhibit 2016. PO Resp. 62; Ex. 2005 ¶¶ 163–166. Patent Owner identifies those charts as “Exhibits A and B from Patent Owner’s Infringement Contentions, served in Stoneridge Control Devices, Inc. v. ZF North America, Inc. et al., U.S. District Court for the Eastern District of Michigan, Case No. 2:22cv10289.” Id. at viii. As such, the claim charts are apparently attorney argument summarizing Patent Owner’s allegations in the district court, not substantive evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Patent Owner’s attempt to challenged claims also constitutes an improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); PTAB Consolidated Trial Practice Guide 35–36; Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014) (informative). Moreover, Dr. Stein’s declaration lacks any explanation or analysis to support his belief that “there is a component in each of the photographed products” in the claim charts “that corresponds to each one of the claim elements,” his “overall agreement with the positions taken in the claim charts,” or his “understand[ing]” that the accused devices “in Ex. 2016 are co-extensive in scope with the ’415 Patent.” Ex. 2005 ¶¶ 163, 166. Dr. Stein’s declaration merely repeats, in conclusory fashion, that there is a nexus between the accused devices and the claimed invention, and is thus insufficient to establish a nexus. See Bosch Auto. Serv. Sol., LLC v. Matal, 878 F.3d 1027, 1037 (Fed. Cir. 2017) (“As the Board recognized, however, the Pierce declaration lacks any explanation or analysis to support his asserted ‘understand[ing]’ that these commercial reset tools are covered by, or coextensive with, the claims of the ’796 patent. The Board permissibly concluded that this conclusory testimony lacks foundation.”); In re Cree, Inc., 818 F.3d 694, 703–04 (Fed. Cir. 2016) (“We agree with the Board that Dr. Brandes’ declaration merely repeats, in conclusory fashion, that there is a nexus between the success of white LEDs and the claimed invention.”). Patent Owner has thus failed to make a sufficient showing to establish a presumption of nexus. its secondary considerations evidence is a direct result of the unique characteristics of the claimed invention. For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing copying, industry praise, and commercial success is entitled to little weight in our obviousness analysis because Patent Owner has not shown a sufficient nexus between the evidence presented and the invention claimed in any of the challenged claims. F.” slip op. at 17
Patent outcomesUS 7,021,415 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,021,415 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Sep 20, 2023 · IPR2022-00707 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner replies that the specification of the ’926 patent explicitly defines the term “gaming account”— As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s 6 Petitioner mistakenly cites Ex. 1002, 7:28–32, but the location of the material in the ’926 patent is apparent from a cursory review. Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’926 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe using the gaming account to capture spending behavior in non-gaming environments. Id. (citing Ex. 1002, 15:12–16:64). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’926 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 7:39–43. Patent Owner does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Patent Owner’s attempt to import concepts from the embodiment illustrated in Figure 8 into the meaning of “gaming account.” C. Level of Ordinary Skill” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for patent owner
“the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“At the outset, we note that Patent Owner’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.7 We also note that Patent Owner does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 7 Patent Owner acknowledged as much during the oral hearing. See Tr. 40:24–41:13. 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner challenges claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 as obvious in view of Smith. Pet. 11–49. Patent Owner does not contest Petitioner’s showing for most of the limitations recited in independent claims 1, 8, and 14 or dependent claims 2, 5, 7–10, 13–17, and 20. We address each contested limitation in the independent claims and dependent claims 4, 12, and 19 below. For all limitations that are not expressly contested by Patent Owner, we find that Petitioner’s showing is persuasive based on the arguments set forth in the Petition and the evidence cited in support of those arguments. For the reasons expressed below, we conclude that Petitioner has proven by a preponderance of evidence that Smith renders claims 1, 2, 4, 5, 7–10, 12–17, 19, and 20 unpatentable as obvious.” slip op. at 19
Patent outcomesUS 9,785,926 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,785,926 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Sep 20, 2023 · IPR2022-00706 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 1, 2, 4–10, 12–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“To prevail in its challenges to the patentability of the claims, Petitioner must establish unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Reply 2 (citing Ex. 1002, 7:39–436) (second emphasis added). As such, Petitioner argues, “that definition controls,” and Patent Owner’s proposed interpretation improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Petitioner contends that Patent Owner’s proposed interpretation improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Patent Owner may rely on Figure 8 and its description to show one objective of the ’176 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Petitioner notes that “these are examples, of how the gaming account can be used, not requirements.” Id. at 3. Indeed, as Petitioner also notes, neither Figure 8 nor the accompanying text describe” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Patent Owner does not dispute Petitioner’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28). Petitioner replies that Patent Owner’s additional qualification for the level of skill in the art is “implied and unnecessary” because “[t]he agreed-upon level of skill in the art . . . already includes ‘familiarity with gaming and financial regulations.’” Reply 1 (quoting PO Resp. 10). According to Petitioner, “a person having at least two years of experience in casino or gaming transaction facilitation necessarily becomes familiar with gaming and financial regulations during their experience implementing gaming systems into an actual casino environment.” Id. (citing Ex. 1039 ¶¶ 1–3). Both Petitioner and Patent Owner agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial regulations—whether such familiarity is implied per Petitioner or stated outright per Patent Owner. Thus, we adopt Petitioner’s definition of the level of skill in the art with Patent Owner’s additional modification of that definition. D. Mr. Crevelt’s Credibility as an Expert” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“PO Resp. 18–20. So, to the extent Patent Owner contends we should disregard Mr. Crevelt’s testimony for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. In describing his qualifications, Mr. Crevelt states that he formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”8 Id. ¶ 9. Mr. Crevelt also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. Importantly, Mr. Crevelt testifies that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s 8 Patent Owner’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. disclosure.9 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s testimony should be accorded no weight and disregarded, as Patent Owner mistakenly believes. E. Petitioner’s Contentions Relating to What an Ordinarily Skilled Artisan” slip op. at 16
Patent outcomesUS 9,466,176 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,466,176 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00696 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 6, 8–12, and 15–20 were held unpatentable as obvious over Smith; claims 1, 10, 11, 16, and 17 were also held unpatentable over Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both Everi and Sightline agree that one skilled in the art of gaming transaction facilitation would have familiarity with gaming and financial 3 Although occasionally we may focus on Sightline’s arguments, we do not shift the ultimate burden from Everi. We focus on Sightline’s arguments merely to identify issues in dispute, many if not all of which we find unpersuasive in view of the record as a whole. regulations—whether such familiarity is implied per Everi or stated outright per Sightline. Thus, we adopt Everi’s definition of the level of skill in the art with Sightline’s additional modification of that definition. C. Claim Construction” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“At the outset, we note that Sightline’s arguments relate to the weight, rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation. As stated in the “[q]ualifications” section of his declaration, Mr. Crevelt formed his opinions based on his expertise in “the field of design and operation of gaming machines and systems for the casino industry.” Ex. 1001 ¶ 3. That expertise includes knowledge of gaming regulations, as shown by his work as a “technical gaming control liaison” to the “Nevada Gaming Control Board, [which] regulates the gaming industry in Nevada, overseeing the licensing and compliance of casinos as well as manufacturers and the equipment used in gaming.”5 Id. ¶ 9. Mr. Crevelt’s declaration also refers to his experience with “regulators in New South Wales, Australia and the state of Mississippi” in analyzing various gaming devices. Id. ¶ 15. 4 Sightline acknowledged as much during the oral hearing. See Hrg. Tr. 40:16–23. 5 Sightline’s own expert, Dr. Shamos, similarly states that, “[o]ver time,” he was familiar with “the Nevada Gaming Control Board regulations,” while also acknowledging that citing those specific regulations in his declaration was unnecessary in order to offer his opinions. Ex. 1040, 32:12–34:12. Importantly, Mr. Crevelt explains in his declaration that, “[i]n formulating [his] opinions,” he relied upon his knowledge and work in the casino gaming industry (id. ¶¶ 23, 26), which, as discussed above, includes gaming regulations (id. ¶¶ 3, 9). In our view, Mr. Crevelt’s opinions intrinsically would have accounted for gaming regulations in assessing Smith’s disclosure.6 Any other view takes a blind eye to the way the casino industry operates, as Mr. Crevelt makes clear in detailing his qualifications. Thus, we reject the notion that Mr. Crevelt’s declarations should be accorded no weight and disregarded, as Sightline mistakenly believes. E. Everi’s Reliance on the “Immediately Envisage” Standard” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 8:26–30) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightline’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’708 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its description ever mentions using the gaming account to accomplish that objective. Id. at 4 (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the specification of the ’708 patent— “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26–30. Sightline does not identify any portion of the specification that evidences an express intent to limit the scope of the term “gaming account” to an account that requires the capability of being used in both gaming and non-gaming environments, and we reject Sightline’s attempt to import concepts from the embodiment of Figure 8 into the meaning of “gaming account.” D. The Credibility of Everi’s Expert” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Those disclosures, when read in the context of Figure 1, clearly support that Smith’s player account 132 holds funds for wagering by the player at a gaming establishment. As such, we find that player account 132 is a “gaming account” as properly construed—“financial account . . . that is associated with a player . . . and maintained by a casino.” To the extent Sightline’s declarant opines otherwise, we do not find that testimony credible or persuasive, as it is clearly inconsistent with Smith’s express teachings. See, e.g., Ex. 2001 ¶¶ 32–41. More persuasive is the testimony of Everi’s declarant, Mr. Crevelt, that player card account 132 is a financial account that holds funds for use by a player in wagering at a casino or other gaming establishment. See, e.g., Ex. 1001 ¶¶ 102, 106, 109, 115; Ex. 1039 ¶¶ 14–16. Also, to the extent Sightline faults Smith for not disclosing that player account 132 or player casino account 604 “are used in a non-gaming environment” of a casino (PO Resp. 31–33), we are not persuaded for the simple reason that it is premised on an improper claim construction, namely, a construction proposed by Sightline but rejected by us, as discussed above in Section II.C. Having considered the evidence of record and the parties’ arguments, we find that Smith teaches the “gaming account” limitation of claim 1. Sightline raises the same argument with respect to the “gaming account” limitation in independent claim 18 as it does for claim 1. See PO Resp. 41– 42. Thus, for the same reasons as claim 1, we find that Smith meets the “gaming account” limitation of claim 18. See Pet. 40–41.” slip op. at 18
Patent outcomesUS 8,998,708 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,998,708 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00663 · APJ Carl M Defranco · IPR · Final written decision
Claims 1, 2, 4–9, 11–17, 19, and 20 are unpatentable as obvious over Smith; claims 1 and 6 are also unpatentable as obvious over Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“during the relevant time frame “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 10 (citing Ex. 1001 ¶ 37). Sightline does not dispute Everi’s definition of the level of skill in the art, but asserts that it should also include “familiarity with gaming and financial regulations. PO Resp. 10–11 (citing Ex. 2001 ¶¶ 27–28).” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“rather than the admissibility, of Mr. Crevelt’s testimony.4 We also note that Sightline does not identify any particular gaming regulation that would have been relevant to Mr. Crevelt’s analysis of the prior art. See PO Resp. 18–20. So, to the extent Sightline contends we should disregard Mr. Crevelt’s declarations for purportedly failing to consider gaming regulations in general, we disagree. In our view, Mr. Crevelt intrinsically would have applied his general knowledge of gaming regulations in opining on how one skilled in the art would have understood the disclosures in the prior art, despite not citing to any particular regulation.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino. Pet. Reply 2 (citing Ex. 1002, 7:28–32) (second emphasis added). As such, Everi argues, “that definition controls,” and Sightline’s proposed construction improperly attempts to avoid that explicit definition by “mandat[ing] that the term ‘gaming account’ must have the capability of being used in non-gaming environments.” Id. at 2, 4, respectively. In particular, Everi contends that Sightlines’s proposed construction improperly captures “financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino,” including “a player’s Starbucks account . . . when used at Starbucks in a casino.” Id. at 2–3. And, while Sightline may rely on Figure 8 and its description to show one objective of the ’123 patent (i.e., “capturing patron spending behavior” in non-gaming environments), Everi notes that “these are mere examples, not requirements.” Id. at 3. Indeed, as Everi also notes, neither Figure 8 nor its” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Conclusion As discussed above, Everi persuasively shows that Smith teaches or suggests the disputed limitations of independent claims 1, 8, and 14, as well as those of dependent claims 4, 11, and 19. Sightline does not otherwise dispute Everi’s showing of how Smith teaches the remaining limitations of the independent claims. See PO Resp. 27–33. Nor does Sightline dispute Everi’s showing that Smith teaches the limitations of dependent claims 2, 5, 7, 9, 12, 13, 15–17, and 20. See id. at 33–34 (arguing separately only dependent claims 4, 11, and 19, while asserting that the remaining dependent claims are not obvious for the “same reasons” as claims 1, 8, and 14). Thus, we need not address the sufficiency of Everi’s showing as to any undisputed limitations. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”); see also Paper 9 at 8 (emphasizing that “any arguments not raised in the response may be deemed waived”). In any event, based on our review, we find that the record fully supports Everi’s showing that Smith teaches or suggests all the limitations of claims 1, 8, and 14, as well as all the limitations of the dependent claims 2, 4, 5, 7, 9, 11–13, 15–17, 19, and 20. See Pet. 14–47. In sum, after weighing all relevant factual findings, including the level of ordinary skill in the art, the scope and content of Smith, and any differences between Smith and the claimed invention,7 we conclude that Everi demonstrates by a preponderance of the evidence that claims 1, 2, 4, 5, 7–9, 11–17, 19, and 20 of the ’123 patent are unpatentable as obvious over Smith under 35 U.S.C. § 103(a).” slip op. at 26
Patent outcomesUS 9,196,123 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,196,123 - Everi Payments Inc. v. Sightline Payments LLCAll claims unpatentablePTAB · Aug 30, 2023 · IPR2022-00614 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 6–11, 14–20, and 22–26 are unpatentable as obvious over Smith and Sommer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person of ordinary skill in the art (a “POSA”) “would have a Bachelor’s degree in Computer Engineering or Computer Science, or an equivalent degree, with at least two years of experience in casino or gaming transaction facilitation, or related technologies.” Pet. 9 (citing Ex. 1001 ¶ 37). Patent Owner asserts that the level of skill of the ordinary artisan should additionally include “familiarity with gaming and financial regulations.” Resp. 4 (emphasis omitted).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“defines the term “gaming account,” stating, “As used herein, a gaming account can be any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Reply 2 (citing Ex. 1002, 8:26–30) (emphasis omitted). Petitioner contends that “Patent Owner’s construction improperly captures financial accounts that have nothing to do with gaming,” such as “[a]ny generic debit card account that could be used to make wagers, buy dinner or stay at a hotel in a casino.” Id. at 2. Second, Petitioner contends that even though Patent Owner’s construction uses the disjunctive “or,” Patent Owner asserts that its construction would require that a “gaming account” be usable in both gaming and non-gaming environments. According to Petitioner, Patent Owner’s construction thus improperly limits the claim term “gaming account” to an account having “the capability of being used in both a gaming and a non-gaming environment of a casino,” and does not include accounts that can be used only in a gaming environment. Id. at 3. Third, Petitioner contends “while Patent Owner cites to FIG. 8 as solving a purported problem of ‘capturing patron spending behavior,’ (Response, pp.10–11), FIG. 8 and its description is completely devoid of using the gaming account to do so.” Id. (citing Ex. 1002, 14:22–16:3). On this record, we determine that the claim term “gaming account” has the meaning explicitly set forth in the Specification: “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Ex. 1002, 8:26– 30. Patent Owner does not identify any portion of the Specification that evidences an intent to further limit the scope of the claim term “gaming account” to an account that must be usable in both gaming and non-gaming environments, and we decline the invitation to import limits from the preferred embodiment cited by Patent Owner into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). D. Overview of the Asserted References” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nothing prohibits a prior art reference from “be[ing] considered for everything it teaches by way of technology,” rather than being limited to a particular embodiment or invention. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015); see also Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc., 814 Fed. Appx. 592, 596 (Fed. Cir. 2020) (essentially same). Thus, we reject the notion that player account 132 in Figure 1 cannot be a casino-level account in the same manner as the player casino account 604 in Figure 6. The above-cited portions of Smith teach that player account 128 may be located within the gaming environment (and thus constitute the player’s casino account), and may also perform the same functions that Smith attributes to player’s casino account 604. Thus, this evidence supports the testimony of Mr. Crevelt that player account 132 and player’s casino account 604 can be the same account (see, e.g., Ex. 1001 ¶¶ 93, 111–112), and is inconsistent with the testimony of Dr. Shamos that these accounts must necessarily be separate and that player account 132 cannot be a financial account (see, e.g., Ex. 2001 ¶¶ 32–33). On the entirety of the record before us, and for the specific reasons discussed above, we find Mr. Crevelt’s testimony on the “gaming account” limitation to be more consistent with the disclosures of Smith, and more persuasive than the testimony of Dr. Shamos. See Ex. 1001 ¶¶ 93, 111–112; Ex. 1039 ¶¶ 14–16. We, thus, credit Mr. Crevelt’s testimony, and are persuaded that Smith teaches, or at least suggests, that player account 132 (which may be located within a casino) and player’s casino account 604 may be the same account. We are persuaded on this record that player account 132/player’s casino account 604 would constitute a “financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino,” i.e., a “gaming account” of the type recited in the claims.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the reasons discussed below, we find Petitioner’s contentions more persuasive. As discussed above, we have construed the claim term “gaming account” as “any type of financial account (i.e., electronic ledger) that is associated with a player, or collection of financial accounts that are associated with a player, and maintained by a casino, or at least on behalf of a casino.” Thus, as a preliminary matter, even if player account 132 and player’s casino account 604 were implemented as separate financial accounts, this fact would not preclude them from together constituting a “gaming account” of the type required by the challenged claims.” slip op. at 21
Patent outcomesUS 8,708,809 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,708,809
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.