United States Court of Appeals 

for the Federal Circuit ______________________

FANDUEL, INC.,

Appellant

v.

INTERACTIVE GAMES LLC,

Appellee

______________________

2019-1393

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

01491.

______________________

Decided: July 29, 2020

______________________

ERIC ALLAN BURESH, Erise IP, P.A., Overland Park, 

KS, argued for appellant. Also represented by MEGAN 

JOANNA REDMOND. 

 JAMES R. BARNEY, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, argued for appellee. Also represented by SCOTT A. ALLEN, JOSHUA 

GOLDBERG, ROBERT SHAFFER. 

 ______________________

Before DYK, MOORE, and HUGHES, Circuit Judges.

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2 FANDUEL, INC. v. INTERACTIVE GAMES LLC

Opinion for the court filed by Circuit Judge HUGHES.

Opinion concurring in part and dissenting in part filed by

Circuit Judge DYK.

HUGHES, Circuit Judge.

This is a patent case involving a system for remote 

gambling. FanDuel, Inc., appeals the final written decision 

of the Patent Trial and Appeal Board in an inter partes review of claims 1, 6–9, and 19 of U.S. Patent No. 8,771,058, 

which found unpatentable all challenged claims except 

claim 6. FanDuel, Inc. v. Interactive Games LLC, 

No. IPR2017-01491, 2018 WL 6112966 (P.T.A.B. Nov. 20, 

2018) (Board Decision). The Board found that FanDuel, as 

petitioner, had failed to prove that claim 6 was obvious in 

view of the asserted prior art. On appeal, FanDuel argues 

that the Board violated the Administrative Procedure Act 

by basing this finding on obviousness issues that the patent 

owner did not raise in its responses. FanDuel also challenges the Board’s factual findings regarding claim 6. Because the Board complied with the APA and its obviousness 

findings are supported by substantial evidence, we affirm.

I

A

Appellee Interactive Games LLC owns the ʼ058 patent, 

which describes a gaming system wherein a gaming service 

provider—such as a casino—wirelessly communicates with 

users’ mobile devices, allowing them to gamble remotely.

The gaming system stores rules to determine the “game 

configuration” based on the location of a user’s “mobile 

gaming device.” ʼ058 patent col. 6 ll. 16–19, col. 12 

ll. 15–17. The specification explains that the gaming system 

associates different gaming configurations with different 

locations by using a “lookup table” that

may include an ordered list of locations. For example, locations may be listed from East to West, in 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 3

alphabetical order, or in any other fashion. Associated with each location may be one or more game 

configurations. The [casino’s gaming system] may 

receive an indication from a mobile gaming device 

that the mobile gaming device has moved to a new 

location. . . . [and, after] look[ing] up the new location in its lookup table[,] . . . may determine an associated game configuration. . . . [that is then 

transmitted] to the mobile gaming device.

ʼ058 patent col. 12 ll. 18–28. Independent claim 1, which 

is not at issue in this appeal, generally describes altering a 

user’s “game outcome” based on the gaming configuration 

associated with the location of the user’s mobile gaming device. Id. col. 60 ll. 1–28.

Claim 6, which depends from claim 1, describes the 

gaming system’s use of the look-up table when associating 

game configurations with locations:

6. The method of [claim] 1, in which determining 

the first game configuration includes:

accessing a lookup table which contains an 

ordered list of locations and associated game 

configurations;

finding within the lookup table the first location; 

and

determining that the first game configuration is associated with the first location.

Id. col. 60 ll. 45–51 (emphasis added).

B

FanDuel petitioned for inter partes review (IPR) of the

ʼ058 patent on several grounds of obviousness. As relevant 

to this appeal, FanDuel challenged claim 6’s validity based 

on the combination of three references: U.S. Patent App. 

Pub. 2002/0147049 (Carter); U.S. Patent App. 

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4 FANDUEL, INC. v. INTERACTIVE GAMES LLC

Pub. 2004/0005919 (Walker); and an archived copy of a

webpage (the Slot Payouts Webpage).

Carter describes a “location[-]based mobile wagering 

system” “capable of determining a gambler[’]s location and, 

thereby restrict[ing] access to the gaming controller based 

on the gambling laws where the gambler is located.” 

Carter, title, ¶ 0010. To perform this function, Carter’s 

system uses a “database” that may “contain distinct location information correlative to the physical location of [a] 

gaming unit and the gaming opportunities permitted in the 

jurisdiction in which the unit is located.” Id. ¶ 0031 (numerical identifiers omitted). The database is maintained 

on a server and contains “jurisdictional profile[s] (e.g., jurisdictionally permitted gaming opportunities).” Id.

¶¶ 0012, 0037. Carter states that this system “may employ 

various integrated circuit (IC) components,” such as

“memory elements, processing elements, logic elements, 

look-up tables, and the like, which may carry out a variety of functions.” Id. ¶ 0020 (emphasis added).

Walker describes a “method and apparatus for enabling a player to select features on a gaming device,” where 

enabled features are stored in a “database.” Walker, title, 

¶ 0116. Walker describes various “predetermined conditions” that can be required for enabling certain features. 

Id. ¶¶ 0107, 0124–0125, 0269–0289. One example Walker 

gives of a predetermined condition is the “location or jurisdiction of a casino (e.g., a feature may be disabled within a 

first geographic region, such as the state of Nevada, but 

enabled within a second geographic region, such as an 

American Indian reservation in the state of Arizona).” Id. 

¶ 0284; see also id. ¶ 0264 (adjusting features based on a 

player’s location within a casino).

Finally, the Slot Payouts Webpage is an archived copy 

of a webpage titled “Slot Payouts by Casino / City / State.” 

J.A. 3623. The webpage displays a chart of slot payout percentages for casinos and cities around the United States. 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 5

The chart is organized alphabetically by state, with the 

various cities, regions, and casinos appearing in alphabetical order beneath each state.

C

The dispute here centers on whether the combination 

of these three references renders obvious claim 6’s limitation of determining the “game configuration” by “accessing 

a lookup table which contains an ordered list of locations and associated game configurations.” ʼ058 patent

col. 60 ll. 45–48 (emphasis added).

In its IPR petition, FanDuel challenged claim 6 as obvious over Carter, Walker, and the Slot Payouts Webpage. 

Specifically, FanDuel argued that (1) Carter, either alone 

or in combination with Walker, teaches a look-up table of 

locations and associated game configurations, and (2) it 

would have been obvious to “store Carter’s jurisdictional 

profiles in a look-up table including an ordered list of locations and associated jurisdictional information.” 

J.A. 2050–51. Relying on the opinion of its expert, 

Mr. Kitchen, FanDuel asserted that it would have been “an 

obvious design choice” to store Carter’s jurisdictional profiles in alphabetical order—as taught in the chart on the 

Slot Payouts Webpage—noting that “ordered lists were extremely well-known as a way to organize information for 

many years prior to the ʼ058 patent.” J.A. 2050–51 (quoting Ex. 1011 ¶¶ 117–18 (Declaration of Mr. Garry 

Kitchen)).

In its preliminary patent owner response, Interactive 

Games argued against instituting as to claim 6 for the 

same reasons that it argued against instituting as to its 

parent claim 1. J.A. 2133. But the only argument Interactive Games put forth defending the validity of claim 6’s 

unique “lookup table” and “ordered list” limitations was 

that the Slot Payouts Webpage did not qualify as prior art 

to the ʼ058 patent. J.A. 2133–42.

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The Board instituted IPR for all the challenged claims 

on some of the asserted grounds. FanDuel, Inc. v. Interactive Games LLC, No. IPR2017-01491, 2017 WL 6206134, 

at *1 (P.T.A.B. Nov. 22, 2017) (Institution Decision). The 

Board found enough evidence to institute as to claim 6, rejecting—for purposes of its institution decision only—Interactive Games’s evidentiary arguments against 

accepting the Slot Payouts Webpage as prior art. Institution Decision at *9–11 (finding that FanDuel demonstrated 

“a reasonable likelihood of prevailing” on its challenge that 

claim 6 was obvious over Carter, Walker, and the Slot Payouts Webpage).

Following institution, Interactive Games submitted a 

patent owner response. As in its preliminary response, Interactive Games’s only argument specific to claim 6 was 

that claim 6 could not be obvious over any combination including the Slot Payouts Webpage, because it was not prior 

art. Interactive Games also submitted an expert declaration, but it did not rely on that declaration to rebut FanDuel’s arguments and evidence specific to claim 6. 

FanDuel then filed a reply. As to the obviousness of 

claim 6, FanDuel’s reply argued exclusively that the Board 

should maintain its institution decision view that the Slot 

Payouts Webpage is prior art.1

1 After FanDuel filed its reply, the Board modified 

its institution decision to comply with SAS Inst., Inc. v. 

Iancu, 138 S. Ct. 1348 (2018). The parties filed supplemental papers on the initially non-instituted grounds, one 

of which challenged claim 6 as obvious over the Slot Payouts Webpage in combination with two different references. In its final written decision, the Board concluded 

that FanDuel did not establish the unpatentability of 

claim 6 on this additional ground, Board Decision at *20, 

and FanDuel has not appealed that determination.

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The Board issued a final written decision finding 

claims 1, 7–9, and 19 unpatentable but upholding the patentability of claim 6. Board Decision at *1. The Board

found that FanDuel failed to prove claim 6 obvious in view 

of Carter, Walker, and the Slot Payouts Webpage. Board 

Decision at *18.

In rejecting FanDuel’s obviousness challenge to

claim 6, the Board first disagreed with FanDuel’s contention that Carter discloses “jurisdictional profiles being 

stored in a database employing look-up tables.” Id. at *17. 

In the Board’s view, Carter only generally references lookup tables as one of many components that might carry out 

a variety of functions and does not disclose specifically using a look-up table to correlate location information with 

jurisdictionally permitted gaming opportunities, as recited 

in claim 6. Id. (citing Carter ¶¶ 0020, 0031). And FanDuel 

had not explained why it would have been obvious to use a 

look-up table for this specific function. Id.

As to motivation to combine, the Board rejected as conclusory FanDuel’s sole explanation that it would be an “obvious design choice” to apply the alphabetically “ordered 

list” of the Slot Payouts Webpage to organize Carter’s jurisdictional profiles. Id. The Board concluded that FanDuel, again, did not offer “any reason(s) why it would have 

been beneficial to organize Carter’s database of jurisdictional profiles in alphabetical order,” given that “the Slot 

Payouts Webpage is meant for human reading and understanding, not for use by a machine such as Carter’s gaming 

system.” Id. at *18. The final written decision did not discuss the earlier debated question of whether the Slot Payouts Webpage qualified as prior art.

FanDuel appeals. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141(c).

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II

We begin with FanDuel’s procedural challenge that the 

Board violated the Administrative Procedure Act (APA). 

We then address the challenge to the Board’s factual findings.

A

“As formal administrative adjudications, IPRs are subject to the APA.” Hamilton Beach Brands, Inc. v. f’real 

Foods, LLC, 908 F.3d 1328, 1338 (Fed. Cir. 2018) (citing 

Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1298, 1301 

(Fed. Cir. 2016)). The APA requires that we, as the reviewing court, “hold unlawful and set aside agency action . . .

not in accordance with law [or] . . . without observance of 

procedure required by law.” 5 U.S.C. § 706(2). We review

de novo whether the Board’s procedures satisfy the APA. 

Sirona Dental Sys. GmbH v. Institut Straumann AG, 

892 F.3d 1349, 1352 (Fed. Cir. 2018).

To comply with the APA in an IPR proceeding, the 

Board must “timely inform[]” the parties of “the matters of 

fact and law asserted,” 5 U.S.C. § 554(b)(3); it must give the 

parties an opportunity to submit facts and arguments for 

consideration, id. § 554(c); and it must permit each party 

to present oral and documentary evidence in support of its 

case or defense, as well as rebuttal evidence, id. § 556(d). 

See Hamilton Beach Brands, 908 F.3d at 1338; Rovalma, 

S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 

1029 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 

805 F.3d 1064, 1080 (Fed. Cir. 2015). “Pursuant to these 

provisions, the Board may not change theories midstream 

without giving the parties reasonable notice of its change.” 

Hamilton Beach Brands, 908 F.3d at 1338 (citing Belden, 

805 F.3d at 1080 (interpreting § 554(b)(3) in the context of 

IPR proceedings)).

FanDuel argues that the Board violated this maxim by 

adopting in its final written decision a “new theory”—that 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 9

the combination of Walker, Carter, and the Slot Payouts 

Webpage failed to disclose jurisdictional profiles stored in 

a database employing look-up tables including an ordered 

list—which the patent owner never raised during the proceeding, having only contested the prior art status of the 

Slot Payouts Webpage. Appellant’s Br. 4. Because the 

Board found sufficient evidence to institute, and there was 

no further record development on the claim 6 limitations

the Board addressed in its final written decision—with the 

parties exclusively focusing on whether the Slot Payouts 

Webpage qualified as prior art—FanDuel asserts that it 

was entitled to notice and an opportunity to respond before 

the Board rejected its obviousness challenge based on insufficient disclosure in the asserted references.

“The critical question for compliance with the APA and 

due process is whether [the appellant] received ‘adequate 

notice of the issues that would be considered, and ultimately resolved, at that hearing.’” Genzyme Therapeutic 

Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 

1367 (Fed. Cir. 2016) (quoting Pub. Serv. Comm’n of Ky. v. 

FERC, 397 F.3d 1004, 1012 (D.C. Cir. 2005) (Roberts, J.)). 

See also Nike, Inc. v. Adidas AG, 955 F.3d 45, 54 (Fed. Cir. 

2020). FanDuel’s argument that it lacked notice that the 

Board might address and reject the obviousness arguments 

made in FanDuel’s own petition strains credulity.

Initially, we fail to see how the Board “change[d] theories” at all in this case. By finding at institution that FanDuel had a reasonable likelihood of succeeding in its 

obviousness challenge to claim 6, despite one reference’s 

contested prior art status, the Board was not adopting a 

position on the ultimate import of the three references. 

The Board said nothing in its institution decision endorsing FanDuel’s arguments that Carter and Walker combined to teach a look-up table, or that it would have been 

obvious to organize that look-up table as an ordered list

such that later rejecting these arguments would have been 

a change in theory. We therefore see little benefit in 

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comparing this case to those in which the Board at institution expressly adopted one claim construction and then 

adopted a materially different claim construction in its final written decision without giving the parties notice and 

an opportunity to respond. See, e.g., SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1346, 1351 (Fed. Cir. 

2016) (identifying an APA violation where parties did not 

dispute the claim construction the Board adopted at institution but the Board adopted a significantly different claim 

construction in its final written decision without any further discussion or briefing), rev’d on other grounds, SAS 

Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018).

At institution, the Board focused its decision on the 

prior art status issue and—without discussion—found the 

three references asserted against claim 6 sufficient to institute. In its final written decision, the Board substantively analyzed the three asserted references and found 

them insufficient to render claim 6 obvious, without addressing whether the Slot Payouts Webpage was prior art.

To the extent the Board changed theories by doing so, 

the Board was not required to first notify the parties in this 

case for two somewhat overlapping reasons. First, the different standards of proof required to institute versus to invalidate permit the Board to adopt different views of the 

sufficiency of a petitioner’s asserted obviousness arguments in its initial versus final decisions without first 

alerting the parties to that possibility. At institution, the 

Board need only find a reasonable likelihood that a petitioner will succeed; whereas, the petitioner must ultimately prove invalidity by a preponderance of the evidence. 

Compare 35 U.S.C. § 314(a) (IPR may not be instituted unless “there is a reasonable likelihood that the petitioner 

would prevail with respect to at least 1 of the claims challenged in the petition”), with id. § 316(e) (“In an [IPR] . . . , 

the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”); see In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 11

1364, 1376 (Fed. Cir. 2016) (“[T]he decision to institute and 

the final written decision are ‘two very different analyses,’

and each applies a ‘qualitatively different standard.’”

(quoting TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 

(Fed. Cir. 2016))).

There is nothing inherently inconsistent about the 

Board instituting IPR on obviousness grounds and then ultimately finding that the petitioner did not provide preponderant evidence that the challenged claim was obvious. 

This happens with some frequency. Indeed, we have encouraged the Board to “change its view of the merits after 

further development of the record, . . . if convinced its initial inclinations were wrong.” TriVascular, 812 F.3d at

1068; see Magnum Oil, 829 F.3d at 1377 (“[T]he Board has 

an obligation to assess the question anew after trial based 

on the totality of the record.”). FanDuel does not argue that 

the Board is bound by its institution decision findings, but 

it contends, based on this statement from Trivascular, that 

some further record development on a given issue must occur post-institution in order for the Board to change its 

view.

TriVascular cannot be read so narrowly. For one thing, 

the court in TriVascular was not reviewing an IPR proceeding that lacked record development. After institution in 

that case, both parties submitted expert reports regarding 

the petitioner’s obviousness challenge. TriVascular, 812 

F.3d at 1060. Our statements regarding the added benefits 

the Board might gain from a fully developed record postinstitution simply reflected the circumstances of that case. 

See id. at 1068 (explaining that at institution the Board is 

considering matters “preliminarily without the benefit of a 

full record” and remains “free to change its view of the merits after further development of the record”). We did not 

thereby announce a condition precedent that the Board can 

only change its view of the record when additional argument or evidence relevant to that change is added after institution.

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But the main reason to reject FanDuel’s interpretation 

of TriVascular dovetails with our second overall reason for 

rejecting FanDuel’s APA challenge: that the burden of 

proving invalidity in an IPR remains on the petitioner 

throughout the proceeding. 35 U.S.C. § 316(e) (stating that 

“the petitioner shall have the burden of proving a proposition of unpatentability”); see Magnum Oil, 829 F.3d at 1375 

(stating that the petitioner bears the burden to prove unpatentable the challenged claims); see also Worlds Inc. v. 

Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)

(“[B]ecause the IPR petitioner is the party seeking an order 

from the Board, § 556(d) [of the APA] requires the petitioner to bear the burden of persuasion.”).

Here, FanDuel specifically asserted in its petition that, 

as to claim 6, it would have been obvious to “include

Walker’s location-specific features in Carter’s jurisdictional profiles,” and to “store Carter’s jurisdictional profiles 

in a look-up table including an ordered list of locations and 

associated jurisdictional information.” J.A. 2049–51. FanDuel supported these assertions with citations to 

Dr. Kitchen’s expert opinion to the same effect and cited

various disclosures within the references. Requiring further post-institution record development on whether these 

references indeed rendered claim 6 obvious in order for the 

Board to reach that question in its final decision would effectively and impermissibly shift the burden to the patent 

owner to defend its claim’s patentability. See Magnum Oil, 

829 F.3d at 1376 (“[I]t is inappropriate to shift the burden 

to the patentee after institution to prove that the patent is 

patentable.”); Dynamic Drinkware, LLC v. Nat’l Graphics, 

Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“In an inter 

partes review, the burden of persuasion is on the petitioner 

to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to 

the patentee.”).

In Magnum Oil, we soundly rejected the idea of shifting 

even the burden of production from the petitioner to the 

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patent owner once the Board institutes an IPR where “the 

patentee’s position is that the patent challenger failed to 

meet its burden of proving obviousness.” 829 F.3d at 

1375–76. “Where, as here, the only question presented is 

whether due consideration of the four Graham [obviousness] factors renders a claim or claims obvious, no burden 

shifts from the patent challenger to the patentee” upon institution. Id. at 1376. We therefore reject FanDuel’s suggestion that the patent owner’s failure to put forth rebuttal 

evidence regarding the substance of the references’ disclosures in any way limited the Board’s ability to decide for 

itself what the references would teach or suggest to a person of skill in the art. See Rovalma, 856 F.3d at 1027 (noting that the Board is not “preclude[d] . . . from relying on 

arguments made by a party and doing its job, as adjudicator, of drawing its own inferences and conclusions from 

those arguments”).

Further confirming that the burden cannot shift to the 

patentee post institution, the IPR regulations do not require a patent owner to submit any response to the petition, either before or after institution. 37 C.F.R. 

§§ 42.107(a) (pre-institution, “[t]he patent owner may file a 

preliminary response to the petition” (emphasis added)),

42.120(a) (post-institution, “[a] patent owner may file a response to the petition” (emphasis added)); Magnum Oil, 

829 F.3d at 1376 n.1 (“[T]he patent owner is not required 

to use its opportunity under the regulations to file a patent 

owner response . . . .”); see also E.I. DuPont de Nemours & 

Co. v. Synvina C.V., 904 F.3d 996, 1008 (Fed. Cir. 2018)

(“[A] patentee technically has no ‘burden’ to do anything to 

defend the validity of its patent other than hold the patent 

challenger to its own burden of persuasion . . . .”).

FanDuel ignores these fundamental principles when it 

argues that the Board erred by deciding obviousness issues 

not “raised” at any time by the patent owner, Interactive 

Games. Appellant’s Br. 5. As we have just discussed, a 

patent owner carries no obligation to raise any objection to 

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14 FANDUEL, INC. v. INTERACTIVE GAMES LLC

the petitioner’s challenges at all. E.I. DuPont, 904 F.3d

at 1008; Magnum Oil, 829 F.3d at 1376 n.1. Thus, a patent 

owner’s response, alone, does not define the universe of issues the Board may address in its final written decision. 

Rather, in an IPR, “the petitioner’s contentions . . . define 

the scope of the litigation all the way from institution 

through to conclusion.” SAS Inst., 138 S. Ct. at 1357 (emphasis added). And a patent owner response ordinarily 

does not narrow the range of issues previously made available to the Board in the petition. But see, e.g., SAS Inst., 

825 F.3d at 1351 (where the patent owner response did not 

contest the Board’s institution decision claim construction, 

the Board violated the APA by adopting in its final written 

decision a materially different claim construction without 

giving the parties an opportunity to present arguments 

based on that claim construction).

FanDuel argues that because the patent owner’s response regarding the patentability of claim 6 only argued 

that the Slot Payouts Webpage was not prior art, and because that was the only issue specific to claim 6 that the 

Board addressed in its institution decision, the prior art 

status of claim 6 “was the sole issue . . . throughout the IPR 

proceeding and trial.” Appellant’s Br. 4. That is not so. In 

fact, the “sole issue” throughout the Board proceedings was 

whether FanDuel proved its theory as to how Carter, 

Walker, and the Slot Payouts Webpage combined to make 

claim 6 obvious. This central question remained, regardless what aspects of that issue the patent owner and the 

Board chose to address in their respective response and initial decision. From the moment FanDuel filed its petition, 

it was on notice that the Board would decide whether those 

references taught what FanDuel claimed they taught. 

That is exactly what the Board ultimately did. No APA 

violation results from such a course.

The Board’s actions in this case do not raise the types 

of concerns that have led us to identify APA violations in 

previous cases. For instance, the Board here did not come 

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up with its own novel theory of (non)obviousness. Cf. Sirona, 892 F.3d at 1356 (holding that it would be improper 

“for the Board to deviate from the grounds in the petition 

and raise its own obviousness theory”). Rather, in accordance with the APA, it assessed the sufficiency of the very 

obviousness theory FanDuel asserted in its petition. See

Magnum Oil, 829 F.3d at 1381 (“[T]he Board must base its 

decision on arguments that were advanced by a party, and 

to which the opposing party was given a chance to respond.”). Nor did the Board resort to cherry-picking from 

unaddressed portions of the record to reject FanDuel’s patentability challenge to claim 6. Cf. Rovalma, 856 F.3d

at 1029 (“The Board’s procedural obligations are not satisfied merely because a particular fact might be found somewhere amidst the evidence submitted by the parties, 

without attention being called to it so as to provide adequate notice and an adequate opportunity to be heard.” (citing In re NuVasive, Inc., 841 F.3d 966, 971 (Fed. Cir.

2016))). It relied on precisely those portions of the three 

asserted references on which FanDuel’s petition relied.

The Board’s purported new theory in this case was 

merely an assessment of the arguments and evidence FanDuel put forth in its petition. The APA does not require 

the Board to alert a petitioner that it may find the asserted 

theory of obviousness lacking in evidence before it actually 

does so in a final written decision. Nor is a petitioner entitled to a pre-decision opportunity to disagree with the 

Board’s assessment of its arguments. The time to disagree 

with that assessment comes after the final decision has issued, in a request for Board rehearing or an appeal to this 

court.

B

We turn now to FanDuel’s challenge to the substance 

of the Board’s final written decision. “Whether a claimed 

invention would have been obvious is a question of law, 

based on factual determinations regarding the scope and 

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16 FANDUEL, INC. v. INTERACTIVE GAMES LLC

content of the prior art, differences between the prior art 

and claims at issue, the level of ordinary skill in the pertinent art, [and] the motivations to modify or combine prior 

art . . . .” Belden, 805 F.3d at 1073. We review the Board’s 

legal decisions de novo and its factual determinations for 

substantial evidence. Id. Substantial evidence “means 

such relevant evidence as a reasonable mind might accept 

as adequate to support a conclusion.” Consol. Edison Co. 

v. N.L.R.B., 305 U.S. 197, 217 (1938).

FanDuel argues that substantial evidence does not 

support the decision to sustain the patentability of claim 6.

Particularly, FanDuel contends that Carter explicitly 

teaches the general use of look-up tables and that, as explained by Mr. Kitchen, a person of ordinary skill in the art 

at the time of the invention would have understood that 

this use of look-up tables would apply to Carter’s gaming 

configurations. FanDuel argues that in reaching the contrary conclusion, the Board did not give appropriate deference to Mr. Kitchen’s unrebutted opinion and 

impermissibly ignored his explanation that ordered lists 

were extremely well-known methods of organization long 

before the ʼ058 patent.

We are not persuaded. The Board properly considered 

the record in its entirety, including Mr. Kitchen’s declaration, before finding that FanDuel had not met its burden. 

Board Decision at *16–18. As FanDuel acknowledges,

Carter only teaches the general use of look-up tables. The 

Board’s final written decision repeatedly cites the paragraph containing Mr. Kitchen’s opinion that look-up tables 

were very well-known, but it reasonably found that FanDuel had not provided sufficient evidence for why a person 

of skill would be motivated to add a look-up table (such as 

the chart included on the Slot Payouts Webpage) to correlate location information with game configurations. The 

Board reasonably identified a gap between the concept of a 

look-up table being well-known and the beneficial application of that concept to Carter’s gaming system. It 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 17

substantiated that evidentiary gap by noting that it was 

unclear how a machine-based, automated gaming system 

like Carter’s would benefit from an alphabetized look-up 

table like the Slot Payouts Webpage chart designed to allow a human reader to locate information of interest. See

Board Decision at *18. And it reasonably found that simply 

calling the addition of a look-up table “an obvious design 

choice” did not fill that gap. Thus, substantial evidence 

supports the Board’s rejection of FanDuel’s obviousness 

challenge to claim 6 of the ʼ058 patent.

Finally, there is no merit to FanDuel’s suggestion that 

the Board was somehow obligated to defer to Mr. Kitchen’s 

expert opinion of claim 6’s unpatentability just because the 

patent owner in this case did not supply opposing expert 

guidance. As mentioned in discussing the APA challenge, 

it is the Board’s duty to independently assess the strength 

of a petitioner’s argument and evidence. Rovalma, 

856 F.3d at 1027. While the Board may appreciate receiving expert opinion from both sides to help it do so, no expert 

submissions are required. See Belden, 805 F.3d at 1079 

(Fed. Cir. 2015) (“No rule requires . . . an expert guiding 

the Board as to how it should read prior art.”); VirnetX Inc. 

v. Apple Inc., 665 F. App’x 880, 884–85, 889 (Fed. Cir. 2016)

(interpreting Belden as holding that the “PTAB may make 

factual findings absent expert testimony”). Indeed, “Board 

members, because of expertise, may more often find it easier to understand and soundly explain the teachings and 

suggestions of prior art without expert assistance.” Belden, 

805 F.3d at 1079.

Certainly, the Board cannot “simply reach conclusions 

based on its own understanding or experience—or on its 

assessment of what would be basic knowledge or common

sense.” In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)

(reversing the Board’s affirmance of an examiner’s obviousness rejection where the Board failed to identify “concrete 

evidence in the record” supporting its findings). And what 

the Board can find without an expert depends on the prior 

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18 FANDUEL, INC. v. INTERACTIVE GAMES LLC

art involved in the case. Synopsys, Inc. v. Mentor Graphics 

Corp., 814 F.3d 1309, 1320 (Fed. Cir. 2016). But in every 

case, it remains the Board’s essential function to make factual findings based on its view of the record. Here, the 

Board found as a factual matter that, even with 

Mr. Kitchen’s explanation that ordered lists were wellknown, there was insufficient evidence that a person of 

skill would include such lists in Carter’s jurisdictional profiles. The Board explained its reasons for disagreeing with 

Mr. Kitchen’s opinion, pointing to specific passages in 

Carter that detracted from his position. There was no need 

for the Board to rely on an expert to corroborate its reading

of the asserted disclosures.

III

We have considered FanDuel’s remaining arguments 

and find them unpersuasive. For the foregoing reasons, we 

affirm the Board’s final written decision.

AFFIRMED

Case: 19-1393 Document: 41 Page: 18 Filed: 07/29/2020
United States Court of Appeals 

for the Federal Circuit ______________________

FANDUEL, INC.,

Appellant

v.

INTERACTIVE GAMES LLC,

Appellee

______________________

2019-1393

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

01491.

______________________

DYK, Circuit Judge, concurring in part and dissenting in 

part.

I join Part II-A of the majority opinion rejecting FanDuel’s procedural challenge, but I respectfully dissent from 

the majority’s affirmance of the Board’s obviousness determination. I would hold that the Board erred when it determined that FanDuel failed to show that claim 6 of the ’058 

patent would have been obvious because the Board used an 

incorrect standard for obviousness.

I

The ’058 patent is directed to systems and methods for 

remote gambling wherein the “game configuration,” i.e.,

game rules, is based on the location of the user’s “mobile 

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2 FANDUEL, INC. v. INTERACTIVE GAMES LLC

gaming device.” ’058 patent col. 6 ll. 16–19, col. 12 ll.15–

17. Claim 1 recites that the remote gambling system “determin[es] a first location of a mobile gaming device[ and] 

determin[es] a first game configuration associated with the 

first location.” Id. col. 60 ll. 3–5. This claim has been held 

unpatentable. The only claim at issue is claim 6, which 

depends on claim 1, and adds the following limitation: “determining the first game configuration includes: accessing 

a lookup table which contains an ordered list of locations 

and associated game configurations; finding within the 

lookup table the first location; and determining that the 

first game configuration is associated with the first location.” Id. col. 60 ll. 45–51. The question before the Board 

was whether this limitation distinguished claim 6 from 

claim 1 for purposes of obviousness.

II

Before the Board, there appears to have been no dispute that both the look-up table and ordered list recited in 

claim 6 were well-known in the art. FanDuel’s expert testified, without contradiction, that “[a] person having ordinary skill in the art would have understood that ordered 

lists were extremely well-known as a way to organize information for many years prior to the ’058 Patent,” as were 

look-up tables, which were in use as early as 1979. 

J.A. 3807 & n.3. The prior art patent (Carter) relied on by 

the Board to hold unpatentable claim 1 specifically mentioned the use of look-up tables as a well-known and generic element. Carter at ¶ 20 (“[T]he present invention 

may employ . . . look-up tables[] . . . which may carry out a 

variety of functions . . . .”). The patentee did not dispute 

that look-up tables and ordered lists were well-known.1 

1 See Maj. Op. at 5 (noting that “the only argument 

Interactive Games put forth [before the Board] defending 

the validity of claim 6’s unique ‘lookup table’ and ‘ordered 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 3

That look-up tables and ordered lists were well-known also 

appears not to be disputed by the Board or the majority. 

See Maj. Op. at 16. Furthermore, FanDuel’s expert testified without contradiction that a person of ordinary skill in 

the art would have recognized that Carter’s jurisdictional 

profiles would be implemented using a look-up table, and 

that an ordered list was an “obvious design choice” for storing the jurisdictional profiles.2 J.A. 3807–09. That testimony was consistent with the specification of the ’058 

patent, which attributed no novelty at all to the use of either a look-up table or an ordered list. See ’058 patent 

col. 51 ll. 63–67; id. at col. 12 ll. 18–20.

III

Despite this evidence, the Board found that claim 6 was 

not shown to be obvious under an impermissibly rigid view 

of the prior art requiring a specific motivation to combine 

look-up tables and ordered lists to implement Carter’s jurisdictional profiles. First, the Board found that Carter did 

not “disclose that a look-up table, specifically, provides the 

correlation between the location information and the jurisdictionally permitted gaming opportunities,” and that FanDuel had not provided an express motivation to “use a lookup table as the specific method for correlating location information with jurisdictionally permitted gaming opportunities, based on Carter’s disclosure or otherwise.” Board 

Decision at 41. Second, the Board found that the Slot Payouts Webpage did not specifically disclose the use of an ordered list of locations for “use by a machine such as Carter’s 

list’ limitations was that the Slot Payouts Webpage did not 

qualify as prior art to the ’058 patent” (emphasis added)).

2 See Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., 757 F. App’x 974, 979–80 (Fed. Cir. 2019) 

(noting that, while a factfinder has “wide leeway to assess 

evidence and credibility,” it must “have some reasonable 

basis” for rejecting uncontroverted expert testimony).

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4 FANDUEL, INC. v. INTERACTIVE GAMES LLC

gaming system,” and that FanDuel had not provided an express motivation for “why it would have been beneficial to 

organize Carter’s database of jurisdictional profiles in alphabetical order.” Id. at 42.

The majority appears to agree with the Board that 

showing that look-up tables and ordered lists were wellknown design choices was not sufficient to show a motivation to combine. It concludes that the Board “reasonably 

identified a gap between the concept of a look-up table being well-known and the beneficial application of that concept to Carter’s gaming system,” and “reasonably found 

that simply calling the addition of a look-up table ‘an obvious design choice’ did not fill that gap.” Maj. Op. at 16–17. 

Similarly, the majority holds that the Board reasonably 

found that, “even with Mr. Kitchen’s explanation that ordered lists were well-known, there was insufficient evidence that a person of skill would include such lists in 

Carter’s jurisdictional profiles.” Id. at 18.

The Board’s view of what was required is simply wrong. 

KSR requires an “expansive and flexible approach.” KSR 

Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). “The 

combination of familiar elements according to known methods is likely to be obvious when it does no more than yield 

predictable results.” Id. at 416. We have repeatedly

acknowledged this aspect of KSR. See Uber Techs., Inc. v. 

X One, Inc., 957 F.3d 1334, 1338 (Fed. Cir. 2020); CRFD 

Rsch., Inc. v. Matal, 876 F.3d 1330, 1347 (Fed. Cir. 2017); 

Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 

2010). In Uber, we explained that, when the record shows 

“‘a finite number of identified, predictable solutions’ to a 

design need that existed at the relevant time, which a person of ordinary skill in the art ‘ha[d] a good reason to pursue,’” “common sense” can supply a motivation to combine. 

Uber, 957 F.3d at 1339–40 (alteration in original) (quoting 

KSR, 550 U.S. at 421). In CRFD, we explained that “a person of ordinary skill [provided] with a simple design choice”

to address a problem is presumed to “‘ha[ve] a good reason 

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FANDUEL, INC. v. INTERACTIVE GAMES LLC 5

to pursue the known options within his or her technical 

grasp.’” CRFD, 876 F.3d at 1347 (quoting KSR, 550 U.S. 

at 421).

Obviousness is particularly apparent where “the alleged novelty of the . . . patent is not related to the differences between” “‘a finite number of identified, predictable 

solutions,’” identified in the prior art. Uber, 957 F.3d at 

1339 (quoting KSR, 550 U.S. at 421). Because the use of a 

look-up table and an ordered list was only one of a number 

of finite, “predictable solutions,” it would have been obvious 

to “us[e] a technique that was known to one of ordinary 

skill in the art.” Id. at 1340. The Board erred by requiring 

FanDuel to supply a specific motivation to use a look-up 

table and ordered list in this particular context when that 

choice would have been a simple alternative design choice

to a skilled artisan.

Because, as a matter of law, the Board incorrectly concluded that FanDuel failed to show that claim 6 of the ’058 

patent would have been obvious, I would reverse the 

Board’s obviousness determination.

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