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

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

  RulingsFinal written decision

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

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

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

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

  • Expert testimonyPetitioner expert creditedDecided for patent owner

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• DBR Finance, Inc. v. Rugged Cross Hunting Blinds, LLCNo claims unpatentable
  PTAB · May 29, 2025 · IPR2024-00291 · APJ Cynthia L Murphy · IPR · Final written decision

  The Board held claims 1–19 not unpatentable because Petitioner did not prove the proposed Whybrew–Strength combinations disclosed the claimed mesh panels with spaced holes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We question, therefore, whether someone having an education in textile engineering or physics, but no experience in the field of hunting blinds, would be consistent with the level of skill portrayed by the ’535 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that Petitioner’s expert’s experience, education, and qualifications are rooted in textiles, fibers and physics, and sophisticated subjects related thereto. See Ex. 1007 ¶¶ 14–20. But his deposition revealed that he has little or no experience in the field of hunting blinds. See Ex. 2038, 8–14.5 5 The same might be said of Patent Owner’s expert. See Ex. 2031, ¶¶ 6–7; Ex. 1023, 16. However, our obviousness analysis leaned lightly, if at all, on her declarations and testimony.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “1. Mesh Material In the Petition, Petitioner asks that “the term ‘mesh material’” be interpreted in accordance with “a plain and ordinary usage.” Pet. 25. Per Petitioner, the “plain and ordinary” meaning of the term “mesh material” is “a woven material of open texture with spaced holes therein.” Id. Per Petitioner, “[o]ther typical terms used to describe a mesh-like material” are “a screen material, or a netting material, which are believed to be synonyms.” Id. Patent Owner does not dispute that a mesh material would have an open texture with spaced holes therein. See PO Resp. 18. We find that Petitioner’s proposed construction aligns with the ’535 Patent’s specification. See Ex. 1001. The drawings in the ’535 Patent depict the mesh material 26 as having an array of uniformly spaced circular holes forming a net-like structure (see id., Fig. 1A, 1B, 4, 9) or an array of uniformly spaced rectangular openings (see id. Fig. 8) forming a screen-like structure. The embodiments of the mesh material 26 listed in the ’535 Patent (e.g., a mesh banner material, scrims, a network of fibers, etc.) are materials having net-like or screen-like structures. See id. at 6:47–7:28.6” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Our construction aligns with the claim language; Petitioner’s proposed construction does not. See Ex. 1001, 10:4–19. The independent challenged claims set forth “one or more panels of mesh material” and then set forth “said one or more panels comprising: a first side with a camouflage pattern; and a second side with a dark color coating.” Id. at 10:4–11. The recited “said one or more panels” corresponds to the previously recited “one or more panels of mesh material,” not panels comprising a material that was only a “mesh” prior to printing/coating. See id. Also, the independent challenged claims set forth that “the one or more panels of the mesh material define an outer surface of the camouflage structure.” See id. at 10:18–19, 1:23–24 (emphasis added). And the panel(s) defining a hunting blind’s outer surface would include the dark color coating. Our construction aligns with the ’535 Patent’s specification; Petitioner’s proposed construction does not. See Ex. 1001. The ’535 Patent repeatedly describes the relevant panel material in the hunting blind (i.e., post printing/coating) as a mesh material. See id., Abst., 1:19–5:34, 6:47–7:28, 9:16–54, Figs. 1A, 1B, 9. The ’535 Patent expressly describes and depicts the mesh material 26 as including the camouflage pattern and the dark-color coating. See id. at 1:52–56, 3:24–25, 3:31–33, Figs. 1A, 1B. The ’535 Patent says that “panels” of this coated mesh material 26 “are used to form” a hunting blind. Id. at 3:22–26. The ’535 Patent says that “[m]esh material is presented for a hunting blind with a camouflage pattern printed on a first side and a second side with a color coating.” Id. at Abst. The ’535 Patent says that “mesh material of interwoven fabric is provided for a hunting blind including a camouflage pattern printed on a first side and a second side with a dark color coating.” Id. at 1:19–22; see also id. at 1:44–49. Our construction aligns with the ’535 Patent’s prosecution history; Petitioner’s proposed construction does not. See Ex. 1006. As mentioned above, throughout prosecution of the ’535 Patent, the same prior art material was mapped to the claimed panel(s) of mesh material. See Ex. 1006, 64–72, 122–106. The mapped-to prior art mesh material was described during prosecution as an “interwoven fabric” with “a pattern” printed on a first side and “a dark color coating” on a second side. Ex. 1006, 64; see also id. at 122. And the mapped-to prior art mesh material (i.e., which included not only the interwoven fabric but also the printed pattern and the dark color coating) had a “net-like structure” with an array of uniformly spaced “net holes” that are “not closed.” Ex. 2021, 4:1–5, see also id. at 2:58–3:6, 4:34–45, Figs. 1, 2a. Thus, we understand that claimed panel(s) of mesh material must have” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “However, Patent Owner does not bear the burden of proving Strength’s camouflage material 10 does not have holes. Rather, Petitioner bears the burden of proving that Strength’s camouflage material 10 does have holes. And Petitioner’s arguments that undermine Patent Owner’s position that Strength’s camouflage material 10 does not have holes, concurrently undermine Petitioner’s position that Strength’s camouflage material 10 does have holes. Per Petitioner, “Strength is silent on whether visible holes exist in the fabric” (Pet. Reply 8) and “the Strength reference doesn’t discuss anything about holes” (Tr. 14). Petitioner’s expert testified that it was his “understanding that Strength is silent” on “whether or not there are holes.” Ex. 2038, 44. Petitioner contends that Strength’s silence about the presence/ absence of holes hinders Patent Owner from proving that Strength’s camouflage material 10 does not have holes. See Pet. Reply 8. We agree. But this same silence likewise hinders Petitioner from proving that Strength’s camouflage material 10 does have holes.” slip op. at 35

  Patent outcomesUS 11,399,535 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,399,535
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

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

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “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).5 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. 5 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). 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 ’135 patent and the prior art of record. See Inst. Dec. 14; 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). 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 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00996 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, and 18 were not shown unpatentable as obvious over Pisanich or the PSO Manual because neither adequately taught the claimed QIE module.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner’s asserted level of ordinary skill in the art mirrors Petitioner’s except that Patent Owner contends that “a general knowledge of advertising and virtual reality . . . do not specifically apply to the ‘165 Patent.” PO Resp. 5. The ’165 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’165 patent describes in one embodiment “a method of integrating holographic images into a virtual thematic environment using a computerized system” and “that the computer system of the present invention provides product placement in a virtual thematic environment.” Id. at 3:32–33, 40–45. Although virtual reality and advertising are not claim elements in this case and do not play a specific role in our analysis below, because the ’165 patent specifically contemplates the integration of advertising and virtual environments we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Prior constructionPrior construction adoptedNo construction neededDecided for patent owner

    “Having considered the complete record now before us, and where both parties have deferred to the District Court’s constructions, there is no actual dispute as to the meaning of any specific claim terms in this proceeding and we determine that no express additional claim construction is necessary for any particular claim term. Like the parties, for purposes of this Decision we adopt, and where appropriate refer to, the District Court’s claim constructions and also to Patent Owner’s additional interpretations of “client” and “server.” We note that neither “software layer” nor “types,” as set forth in the District Court’s construction of the QIE module is recited in the claims of the ’165 patent. To the extent necessary, we address the terms “types,” “software layer,” “client,” and “server” in our analysis below in the context of the claims and written description of the ’165 patent. See, e.g., Ex. 1001, 12:34–37 (The ’165 patent describing that “[i]n a client-server environment, at least one client and at least one server are each connected to a network such as a Local Area Network (LAN), Wide Area Network (WAN), and/or the Internet, over a communication link.”). We make another observation regarding the claimed “quantum imaging environment (QIE) module” referenced as 202/211 in Figure 2 of the ’165 patent. A QIE is discussed throughout the specification as relating to both a “QIE engine” and a “(QIE) module.” Id. at 6:6, 16:47. Apart from the broad description that QIE 202/211 is a software layer, and includes “an interpreter” which “allows developers to develop objects and applications from the interpreter,” and that the “interpreter [] will take all of the rich content, interpret the information into objects to be manipulated and accessed via any device and place these objects or information in the the software architecture of the QIE itself and how it actually handles, manipulates, or converts information or content into specific formats. Id. at 15:55–59.7 Apart from adopting the District Court’s claim constructions, we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to 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

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

    “In summary, we find that Pisanich discloses to a person of ordinary skill in the art a computer game system that incorporates real world data into multiple games, and even games with different themes, but not a QIE for accomplishing these tasks for different devices. Ex. 1004 ¶ 17. We find insufficient evidence by Petitioner and Mr. Crane that a person of ordinary skill in the art, considering Pisanich, would have understood that multiple games included multiple games on different devices as required by the District Court’s claim construction of a “QIE module”—that is “a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices for use within the virtual thematic environment.” Ex. 1009, 4–7 (emphasis added). Independent Claim 18 Independent claim 18 recites the same limitation of “providing a quantum imaging environment (QIE) module in one of the client or the server system” as in claim 1[b]. Consequently, our analysis of the corresponding limitations of claim 1[b] applies also to claim 18. For the reasons given for claim 1, we find that Petitioner has failed to show by a preponderance of the evidence that claim 18 would have been obvious over Pisanich.” slip op. at 36

  Patent outcomesUS 10,991,165 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,991,165
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10

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

    “Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19

  Patent outcomesUS 10,846,941 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,846,941
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Apple Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 30, 2023 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 8. In proposing a different level of ordinary skill in the art, Patent Owner does not explain why its proposed skill level is more appropriate.12 PO Resp. 16. In addition, the parties’ proposed definitions are materially similar. 12 Petitioner does not address the level of ordinary skill in the art in its Reply. definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 10

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

    “We determine that we need not expressly construe “movement sensor” to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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, 200 F.3d at 803 (Fed. Cir. 1999)). To the extent the parties raise claim construction issues in addressing the asserted grounds, we address such issues below.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Also, the Petition merely states that “Ono supports instances where the user stops the step-counting mode operation using switch S2 after the processor detects that” the target distance or the target number of steps has been reached and notifies the user by generating an alarm sound. Pet. 53 (emphasis added). In this case, supporting the notion of the user stopping the step-counting mode operation in response to the alarm is not the same as teaching or suggesting the notion to one of ordinary skill in the art. The possibility that a user could stop the step-counting operation in response the alarm is insufficient to render claims 1 and 20 obvious to one of ordinary skill in the art. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s reliance on the Hewlett-Packard and Unwired Planet cases (Pet. 56) is unavailing, as the facts in those cases are distinguishable from the facts of the present proceeding. Namely, both of those cases involved prior art references that disclosed operations that satisfied a claimed feature some, but not all, of the time. Hewlett-Packard, 340 F.3d at 1326; Unwired Planet, 841 F.3d at 1002. Here, Ono does not disclose the user stopping the step-counting mode operation in response to the alarm even some of the time. In view of the above, we determine, based on the full record, that the combination of Ono and Hutchings does not disclose limitations [1f] or [20f]. Accordingly, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claims 1 and 20 are unpatentable over the combination of Ono and Hutchings.” slip op. at 28

  • BurdenNot shown unpatentable

    “We have determined incorporated Grounds 1, 2, 3A, 3B, and 4, as well as Ground 5A, deficient for the reasons discussed above. Furthermore, to the extent Petitioner contends that any of these combinations somehow adds something to supplement or strengthen the patentability analysis of the incorporated grounds, we note that neither the Petition nor Dr. Kenny provides sufficient particularity to support such a position. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Accordingly, we are not persuaded on the complete record before us that Petitioner has demonstrated, by a preponderance of the evidence, that: (1) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman (Ground 5B); (2) claims 1–5, 8–11, 20, 25, 30, 31, 36, 39–42, 45–47, 49, and 61–65 are unpatentable over the combination of Ono, Hutchings, Amano, and Conlan (Ground 6A); (3) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Amano, Conlan, and Hickman (Ground 6B); (4) claims 1, 3–5, 8–11, 20, 25, 30, 36, 39–42, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Amano, and Kaufman (Ground 7); (5) claims 1–5, 8, 10, 20, 25, 30, 31, 39, 41, 42, 45–47, 49, 61–65, 144, and 147 are unpatentable over the combination of Ono, Hutchings, Conlan, and Kaufman (Ground 8A); and (6) claims 48, 50, and 51 are unpatentable over the combination of Ono, Hutchings, Conlan, Kaufman, and Hickman (Ground 8B).” slip op. at 36

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,059,576
• Rideco Inc. v. Via Transportation, Inc.No claims unpatentable
  PTAB · Aug 17, 2023 · IPR2022-00740 · APJ Michael L Woods · IPR · Final written decision

  Petitioner failed to prove claims 1–13, 15, and 17–20 unpatentable under the asserted obviousness grounds, chiefly because Lambert did not teach system-selected virtual bus stops.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the parties’ arguments and evidence of record, we adopt Petitioner’s asserted level of ordinary skill. We find that Petitioner’s level of skill is consistent with the problems identified and solutions provided in the ’411 patent and the prior art. In particular, we agree with Petitioner that the relevant field of art is not limited to the backend artificial intelligence components in a ride-sharing system, as Patent Owner contends. See Pet. Reply 6–7; see also PO Resp. 20–23. We disagree with Patent Owner’s assertions that the ’411 patent is directed towards a complex artificial intelligence system far beyond the scope of traditional navigation systems. See PO Resp. 20–23. Neither Patent Owner nor its expert, Dr. Jacquillat, cites to the patent to explain why the art of the ’411 patent is limited to artificial intelligence components in determining the relevant skill in the art. See id.; see also Ex. 2022 ¶¶ 41–51. As Patent Owner acknowledges, the ’411 patent makes no reference to “artificial intelligence” directly, and Patent Owner instead relies upon declarant testimony to argue that the patent is directed towards an advancement in artificial intelligence. PO Sur-reply 11. Patent Owner claims that “programming a computer to make decisions in the place of humans is a form of artificial intelligence.” Id. Regardless, we need not determine the precise definition of artificial intelligence to determine the relevant skill in the art for a patent that never even uses the term. We agree with Petitioner that a skilled artisan with an understanding of computer programming and navigation systems, as well as two to four years of experience in location-based systems, would understand the “computer-implemented transportation system” of the ’411 patent. In summary, we find that the relevant level of ordinary skill in the art “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37).” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Additionally, we find that Mr. Andrews’s background would qualify him as a person of ordinary skill in the art even if we adopted Patent Owner’s proposed level of ordinary skill in the art. Under Patent Owner’s proposal, a person of ordinary skill in the art would have a “degree in computer science, operations research, industrial engineering, applied mathematics, or a related field with at least two years of experience with optimization modeling, large scale optimization algorithms, or artificial intelligence solutions in the context of ride-sharing systems.” PO Resp. 30 (emphasis added). The record demonstrates that Mr. Andrews meets these qualifications. Mr. Andrews possesses a Bachelor of Science degree in Electrical Engineering and a Master of Science degree in Electronic Engineering, which we find to be in a “related field.” Ex. 1003 ¶ 6. Additionally, Mr. Andrews has significantly more than two years of experience in the fields Patent Owner suggests are relevant as evidenced by, for example, Mr. Andrews’s testimony that he has experience in “locationbased systems,” and “work[ing] in database dispatch systems for fleet management.” Ex. 2023, 44:2–9; 44:15–19. This experience demonstrates that Mr. Andrews had at least two years of experience in “optimization modeling.” The parties agree, however, that Mr. Andrews does not have experience working with ride-sharing systems. Nevertheless, Patent Owner’s definition includes artisans who lack that particular experience. Specifically, Patent Owner’s definition provides that: A person with an advanced degree (a master’s or Ph.D.) in computer science, operations research, industrial engineering, applied mathematics or a related field and a focus on data science, artificial intelligence or operations research would also have been an ordinary artisan in the field of the ’411 patent even if that person lacked two years of specific experience with ride-sharing systems. PO Resp. 20 (emphases added). In other words, even if the first prong of Patent Owner’s definition requires the expert’s experience to be “in the context of ride-sharing systems,” Mr. Andrews would nevertheless satisfy the qualifications of a POSITA under the second prong, which does not require experience with “ride-sharing systems.” See id. This Decision does not turn on the differences between the parties’ characterization of a skilled artisan.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The parties are in agreement. Despite the parties’ briefing on this term, the parties do not dispute the construction of “virtual bus stops.” Absent any controversy, we adopt the parties agreed-upon construction of the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))). Specifically, we adopt the parties’ construction that “virtual bus stops” means “pickup and dropoff locations selected by the ride-sharing system itself.” Compare PO Resp. 23, with Pet. Reply 4. We further adopt the parties’ construction that the system need not use artificial intelligence—whatever that may mean—to select the virtual bus stops. Compare PO Sur-reply 5, with Pet. Reply 4; see also supra § III.A (“[W]e need not determine the precise definition of artificial intelligence to determine the relevant skill in the art pertaining to a patent that never even uses the term.”).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “performs actions (see, e.g., Ex. 1004, 2:49–52; 2:63–67, 3:19–20, 3:34–35), we decline to infer from Lambert’s single sentence (id. at 4:17–23) that Lambert’s server is also programmed to perform the step of “dynamically selecting pickup and dropoff locations” (i.e., virtual bus stops). In other words, if Lambert’s server was programmed to select pickup and dropoff locations, as Petitioner would have us believe, we find that Lambert’s disclosure would have stated so. It does not.” slip op. at 39

  Patent outcomesUS 10,197,411 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,197,411

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.