Case: 19-1393     Document: 41    Page: 1   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.
                  ______________________

                   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 ap-
 pellee. 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 re-
 view 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 chal-
 lenges the Board’s factual findings regarding claim 6. Be-
 cause 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 exam-
      ple, 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. Associ-
     ated 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 loca-
     tion in its lookup table[,] . . . may determine an as-
     sociated 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 de-
 vice. 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 as-
     sociated 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 loca-
 tion 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 (nu-
 merical identifiers omitted). The database is maintained
 on a server and contains “jurisdictional profile[s] (e.g., ju-
 risdictionally 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 vari-
 ety of functions.” Id. ¶ 0020 (emphasis added).
      Walker describes a “method and apparatus for ena-
 bling a player to select features on a gaming device,” where
 enabled features are stored in a “database.” Walker, title,
 ¶ 0116. Walker describes various “predetermined condi-
 tions” 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 juris-
 diction 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 per-
 centages 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 alphabet-
 ical order beneath each state.
                               C
      The dispute here centers on whether the combination
 of these three references renders obvious claim 6’s limita-
 tion of determining the “game configuration” by “accessing
 a lookup table which contains an ordered list of loca-
 tions and associated game configurations.” ʼ058 patent
 col. 60 ll. 45–48 (emphasis added).
      In its IPR petition, FanDuel challenged claim 6 as ob-
 vious 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 loca-
 tions 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 pro-
 files in alphabetical order—as taught in the chart on the
 Slot Payouts Webpage—noting that “ordered lists were ex-
 tremely well-known as a way to organize information for
 many years prior to the ʼ058 patent.” J.A. 2050–51 (quot-
 ing 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 Interac-
 tive 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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 6                    FANDUEL, INC. v. INTERACTIVE GAMES LLC




      The Board instituted IPR for all the challenged claims
 on some of the asserted grounds. FanDuel, Inc. v. Interac-
 tive 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, re-
 jecting—for purposes of its institution decision only—In-
 teractive Games’s evidentiary arguments against
 accepting the Slot Payouts Webpage as prior art. Institu-
 tion 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 Pay-
 outs Webpage).
     Following institution, Interactive Games submitted a
 patent owner response. As in its preliminary response, In-
 teractive Games’s only argument specific to claim 6 was
 that claim 6 could not be obvious over any combination in-
 cluding the Slot Payouts Webpage, because it was not prior
 art. Interactive Games also submitted an expert declara-
 tion, but it did not rely on that declaration to rebut Fan-
 Duel’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 supple-
 mental papers on the initially non-instituted grounds, one
 of which challenged claim 6 as obvious over the Slot Pay-
 outs Webpage in combination with two different refer-
 ences. 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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 FANDUEL, INC. v. INTERACTIVE GAMES LLC                     7



     The Board issued a final written decision finding
 claims 1, 7–9, and 19 unpatentable but upholding the pa-
 tentability 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 conten-
 tion 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 look-
 up tables as one of many components that might carry out
 a variety of functions and does not disclose specifically us-
 ing 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 con-
 clusory FanDuel’s sole explanation that it would be an “ob-
 vious design choice” to apply the alphabetically “ordered
 list” of the Slot Payouts Webpage to organize Carter’s ju-
 risdictional profiles. Id. The Board concluded that Fan-
 Duel, again, did not offer “any reason(s) why it would have
 been beneficial to organize Carter’s database of jurisdic-
 tional profiles in alphabetical order,” given that “the Slot
 Payouts Webpage is meant for human reading and under-
 standing, not for use by a machine such as Carter’s gaming
 system.” Id. at *18. The final written decision did not dis-
 cuss the earlier debated question of whether the Slot Pay-
 outs 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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 8                    FANDUEL, INC. v. INTERACTIVE GAMES LLC




                               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 find-
 ings.
                               A
     “As formal administrative adjudications, IPRs are sub-
 ject 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 review-
 ing 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 pro-
 ceeding, 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 in-
 sufficient 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 ulti-
 mately 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] theo-
 ries” at all in this case. By finding at institution that Fan-
 Duel 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 endors-
 ing FanDuel’s arguments that Carter and Walker com-
 bined 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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 10                    FANDUEL, INC. v. INTERACTIVE GAMES LLC




 comparing this case to those in which the Board at institu-
 tion expressly adopted one claim construction and then
 adopted a materially different claim construction in its fi-
 nal written decision without giving the parties notice and
 an opportunity to respond. See, e.g., SAS Inst., Inc. v. Com-
 plementSoft, 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 insti-
 tution but the Board adopted a significantly different claim
 construction in its final written decision without any fur-
 ther 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 in-
 stitute. In its final written decision, the Board substan-
 tively analyzed the three asserted references and found
 them insufficient to render claim 6 obvious, without ad-
 dressing 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 dif-
 ferent standards of proof required to institute versus to in-
 validate permit the Board to adopt different views of the
 sufficiency of a petitioner’s asserted obviousness argu-
 ments 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 peti-
 tioner will succeed; whereas, the petitioner must ulti-
 mately prove invalidity by a preponderance of the evidence.
 Compare 35 U.S.C. § 314(a) (IPR may not be instituted un-
 less “there is a reasonable likelihood that the petitioner
 would prevail with respect to at least 1 of the claims chal-
 lenged in the petition”), with id. § 316(e) (“In an [IPR] . . . ,
 the petitioner shall have the burden of proving a proposi-
 tion of unpatentability by a preponderance of the evi-
 dence.”); 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 ul-
 timately finding that the petitioner did not provide prepon-
 derant evidence that the challenged claim was obvious.
 This happens with some frequency. Indeed, we have en-
 couraged the Board to “change its view of the merits after
 further development of the record, . . . if convinced its ini-
 tial 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 oc-
 cur 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 proceed-
 ing 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 post-
 institution 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 mer-
 its 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 argu-
 ment or evidence relevant to that change is added after in-
 stitution.
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 12                    FANDUEL, INC. v. INTERACTIVE GAMES LLC




     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 proposi-
 tion of unpatentability”); see Magnum Oil, 829 F.3d at 1375
 (stating that the petitioner bears the burden to prove un-
 patentable 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 peti-
 tioner 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 jurisdic-
 tional 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. Fan-
 Duel supported these assertions with citations to
 Dr. Kitchen’s expert opinion to the same effect and cited
 various disclosures within the references. Requiring fur-
 ther 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 ef-
 fectively 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 evi-
 dence,’ 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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 FANDUEL, INC. v. INTERACTIVE GAMES LLC                    13



 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 [obvious-
 ness] factors renders a claim or claims obvious, no burden
 shifts from the patent challenger to the patentee” upon in-
 stitution. Id. at 1376. We therefore reject FanDuel’s sug-
 gestion that the patent owner’s failure to put forth rebuttal
 evidence regarding the substance of the references’ disclo-
 sures in any way limited the Board’s ability to decide for
 itself what the references would teach or suggest to a per-
 son of skill in the art. See Rovalma, 856 F.3d at 1027 (not-
 ing that the Board is not “preclude[d] . . . from relying on
 arguments made by a party and doing its job, as adjudica-
 tor, 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 re-
 quire a patent owner to submit any response to the peti-
 tion, 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 re-
 sponse 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 is-
 sues 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 (em-
 phasis added). And a patent owner response ordinarily
 does not narrow the range of issues previously made avail-
 able 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 re-
 sponse regarding the patentability of claim 6 only argued
 that the Slot Payouts Webpage was not prior art, and be-
 cause 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, regard-
 less what aspects of that issue the patent owner and the
 Board chose to address in their respective response and in-
 itial 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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 FANDUEL, INC. v. INTERACTIVE GAMES LLC                     15



 up with its own novel theory of (non)obviousness. Cf. Si-
 rona, 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 accord-
 ance 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 re-
 spond.”). Nor did the Board resort to cherry-picking from
 unaddressed portions of the record to reject FanDuel’s pa-
 tentability challenge to claim 6. Cf. Rovalma, 856 F.3d
 at 1029 (“The Board’s procedural obligations are not satis-
 fied merely because a particular fact might be found some-
 where amidst the evidence submitted by the parties,
 without attention being called to it so as to provide ade-
 quate notice and an adequate opportunity to be heard.” (cit-
 ing 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 Fan-
 Duel 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 enti-
 tled 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 is-
 sued, 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 perti-
 nent 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 ex-
 plained 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 con-
 trary conclusion, the Board did not give appropriate defer-
 ence 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 declara-
 tion, 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 para-
 graph containing Mr. Kitchen’s opinion that look-up tables
 were very well-known, but it reasonably found that Fan-
 Duel 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 corre-
 late 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 applica-
 tion 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 al-
 low 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 receiv-
 ing 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 eas-
 ier 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 obvious-
 ness 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 fac-
 tual 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 well-
 known, there was insufficient evidence that a person of
 skill would include such lists in Carter’s jurisdictional pro-
 files. 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: 19   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 Fan-
 Duel’s procedural challenge, but I respectfully dissent from
 the majority’s affirmance of the Board’s obviousness deter-
 mination. I would hold that the Board erred when it deter-
 mined 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
Case: 19-1393    Document: 41       Page: 20   Filed: 07/29/2020




 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 “de-
 termin[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: “de-
 termining 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 loca-
 tion.” 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 dis-
 pute that both the look-up table and ordered list recited in
 claim 6 were well-known in the art. FanDuel’s expert tes-
 tified, without contradiction, that “[a] person having ordi-
 nary skill in the art would have understood that ordered
 lists were extremely well-known as a way to organize in-
 formation 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 men-
 tioned the use of look-up tables as a well-known and ge-
 neric 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 testi-
 fied 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 stor-
 ing the jurisdictional profiles. 2 J.A. 3807–09. That testi-
 mony was consistent with the specification of the ’058
 patent, which attributed no novelty at all to the use of ei-
 ther 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 ju-
 risdictional 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 juris-
 dictionally permitted gaming opportunities,” and that Fan-
 Duel had not provided an express motivation to “use a look-
 up table as the specific method for correlating location in-
 formation with jurisdictionally permitted gaming opportu-
 nities, based on Carter’s disclosure or otherwise.” Board
 Decision at 41. Second, the Board found that the Slot Pay-
 outs Webpage did not specifically disclose the use of an or-
 dered 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. Sam-
 sung 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).
Case: 19-1393    Document: 41     Page: 22    Filed: 07/29/2020




 4                    FANDUEL, INC. v. INTERACTIVE GAMES LLC




 gaming system,” and that FanDuel had not provided an ex-
 press motivation for “why it would have been beneficial to
 organize Carter’s database of jurisdictional profiles in al-
 phabetical order.” Id. at 42.
     The majority appears to agree with the Board that
 showing that look-up tables and ordered lists were well-
 known design choices was not sufficient to show a motiva-
 tion to combine. It concludes that the Board “reasonably
 identified a gap between the concept of a look-up table be-
 ing well-known and the beneficial application of that con-
 cept to Carter’s gaming system,” and “reasonably found
 that simply calling the addition of a look-up table ‘an obvi-
 ous 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 or-
 dered lists were well-known, there was insufficient evi-
 dence 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 meth-
 ods 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 per-
 son of ordinary skill in the art ‘ha[d] a good reason to pur-
 sue,’” “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 per-
 son 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 al-
 leged novelty of the . . . patent is not related to the differ-
 ences 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 con-
 cluded that FanDuel failed to show that claim 6 of the ’058
 patent would have been obvious, I would reverse the
 Board’s obviousness determination.
