Invalidity dossier
US 10140072
Sound output system or internet appliance that supports voice activated commands, and that plays audio data received from a service over a network
Current assignee: Flexiworld Technologies, Inc.
Added 8/28/2026, 12:47:22 PM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including its claims and any litigation.
Let me check for any 2026 Federal Circuit activity and PTAB proceedings involving this patent.
US 10,140,072 B2 — Verification Summary
Searches run: USPTO/grant record (via uspto.report mirror), Google Patents family data, Unified Patents patent & litigation portal, PTAB docket records, and Federal Circuit/district docket sources. No 2026 CAFC docket entry referencing this patent was located (see §6).
1. Bibliographic data
| Field | Value (as literally recorded) |
|---|---|
| Patent number | US 10,140,072 B2 |
| Title | "Sound output system or internet appliance that supports voice activated commands, and that plays audio data received from a service over a network" |
| Inventors | William Ho Chang (Vancouver, WA); Christina Ying Liu (San Francisco, CA) |
| Assignee (original & current) | Flexiworld Technologies, Inc. (Vancouver, WA) |
| Application no. | 15/494,297 |
| Filing date | April 21, 2017 (Google Patents / uspto.report). Unified Patents records April 20, 2017 — 1-day discrepancy, unresolved. |
| Issue/grant date | November 27, 2018 (Google Patents / uspto.report). Unified Patents records November 26, 2018. |
| Pre-grant publication | US 2017/0228202 A1, August 10, 2017 |
| Priority date | 2000-11-01 (per Google Patents). Unified Patents shows 2000-10-31. |
| Earliest provisional in chain | 60/245,101, filed Nov. 1, 2000 |
| Primary examiner | Marcus T. Riley |
| Attorney/agent firm | Chernoff Vilhauer LLP |
| Family ID | 22998933 |
| Status | "Expired – Fee Related" (Google Patents). Anticipated expiration listed as 2021-11-01. Third-party legal-event data shows a lapse for non-payment of maintenance fees with an effective date of 2022-04-22. These two expiration data points conflict, and a lapse sits awkwardly alongside litigation filed in 2022 and 2025 — I could not authoritatively reconcile them (possible late-payment/reinstatement or a docket that names the patent only as family background). |
Continuity (from the patent's own CROSS-REFERENCE section): the application is (a) a continuation of 10/053,765 filed Jan. 18, 2002 (claims benefit of provisional 60/262,764, Jan. 19, 2001); (b) a continuation-in-part of 09/992,413 filed Nov. 18, 2001 (benefit of provisional 60/252,682, Nov. 20, 2000); and (c) a continuation-in-part of 13/710,299 filed Dec. 10, 2012 → continuation of 12/903,048 (issued as US 8,332,521) → continuation of 10/016,223 (issued as US 7,941,541) → provisional 60/245,101 (Nov. 1, 2000).
2. Abstract (verbatim, as published)
"An output system, such as a wireless speaker or an Internet appliance, that supports voice activated commands is herein disclosed and enabled. The output system is wirelessly connectable to a service operated over a network (e.g., Internet) for receiving output data (e.g., music) from the service for outputting at the output system. The setup of the output system includes: (1) wirelessly discovering the output system using a smart phone, (2) establishing a wireless communication link between the smart phone and the output system (e.g., via Bluetooth or IEEE 802.11), and (3) providing information, such as security and/or authentication information, from the smart phone to the output system over the wireless communication link. Thereafter, the output system accesses the service operated over the network, and the outpt system is operabke to receive voice activated commands from a user while the output system is connected to the service."
(Transcription typos — "outpt," "operabke" — appear in the third-party transcription of the printed grant. The abstract is identical on Unified Patents.)
3. Independent claims — plain-language overview
The patent has 20 claims: three independent claims (1, 8, 15) and three dependent families (2–7 off claim 1; 9–14 off claim 8; 16–20 off claim 15).
Claim 1 — a sound output system. A speaker/internet-appliance style device wirelessly connectable to server(s) over a network. It contains a voice-activated command interface, memory with software/firmware, processor(s), a speaker, a microphone, and wireless communication circuitry. When the processor runs the software, the system: (1) wirelessly receives data from a separate portable wireless device over a short-range wireless link; (2) processes an authentication procedure by detecting identification/other information supplied by that portable device over the short-range link; then, after authentication, (3) establishes a wireless connection to the server(s) over a network that includes a wireless LAN; (4) receives a voice command from the user via the microphone and voice interface; (5) sends a digital content object from the sound system to the server(s) for processing of audio digital content in that object, the sending being based on the received voice command; (6) receives audio output data back from the server(s), where that data has at least in part a relationship to the audio digital content in the object that was sent; and (7) plays the received audio output data through the speaker. The distinctive ordering is: phone-assisted setup/authentication first → network connection → voice command → upload of a content object → return of audio → playback.
Claim 8 — a method for setting up an output system. A method for configuring a sound output device (speaker/microphone/voice interface/wireless circuitry) to receive voice commands. Steps: (1) establish a short-range wireless link from the output system to a portable wireless device (smart phone or information pad), which is a distinct device; (2) receive information from that portable device over the link; then (3) couple the output system to a network including a wireless LAN; (4) access server(s) over the network that provide, at least in part, a service accessible over the Internet; (5) receive a voice command related to outputting/playing digital content; (6) receive audio output data from the server(s) after the voice command; and (7) play that audio output data, which relates to digital content including audio or voice data.
Claim 15 — an output system for receiving voice commands and outputting sound. A system-level claim framed as configured to: (1) provide an indication via its interface; (2) facilitate a wireless discovery process so that a portable wireless device (smart phone or information pad with touch-sensitive screen) discovers the output system, based on short-range or local-area wireless communication; (3) establish a wireless communication link with the discovering portable device; (4) wirelessly receive information from that portable device over the link; (5) connect to server(s) over a network including a wireless LAN, subsequent to establishing the device link; (6) receive a voice command via the voice-activated command interface; (7) receive audio output data (sound, voice, and/or music) over the network from the server(s) after the voice command; and (8) output/play that audio at the output system.
Claim family themes (representative, not exhaustive):
- Off claim 1: portable device is a smart phone / Internet pad with touch-sensitive screen (2); providing an indication and facilitating wireless discovery (3); transmitting attribute/ID information and establishing the link under IEEE 802.11 or Bluetooth (4); wireless chips/chipsets supporting IEEE 802.11 (5); servers operated by a subscription digital-content service over the Internet, with authentication (6); post-connection download and installation of application software/upgrades that then facilitate the send/receive steps (7).
- Off claim 8: output system embodied as a speaker or Internet appliance, expressly excluding a conventional/desktop/laptop PC (9); chipsets for IEEE 802.11 LAN plus Bluetooth/802.11 for the short-range link (10); digital-content-service authentication information such as username, password, ID number, security key, or biometrics (11); sending a content object in response to later voice commands and playing returned output data (12); user-initiated indication → discovery → transmission of attribute/ID info → receipt of a service request (13); short-range link as direct link or WLAN communication (14).
- Off claim 15: authentication procedure detecting name, password, ID number, PIN, biometrics, identification info, or security key, plus establishing a WLAN connection (16); server-provided service over the Internet with subscription/ID/security/authentication information provided by the system, discovery based on physical proximity (17); chipsets supporting IEEE 802.11 for the WLAN and Bluetooth/802.11 for the device link (18); sending a digital content object containing sound/voice data in response to voice commands and playing the returned audio (19); output system as a speaker or Internet appliance excluding conventional/desktop/laptop PC, plus transmitting system information and receiving a service request before establishing the link (20).
Drafting observations: claim 16 introduces limitation "(b)" that claim 18 then cross-references ("the wireless local area network connection in (b)"), and claim 10's final clause ends "…for establishing the short range wireless communication link in." with what appears to be a missing antecedent — these read as claim-drafting artifacts worth confirming against the official USPTO copy.
4. Summary of the specification (context for the claims)
The specification is largely a universal-output/printing disclosure: conventional systems either place all raster image processing (RIP) in the information apparatus or all of it in a PDL printer controller. The invention splits RIP between an information apparatus client application (which rasterizes) and an "output controller" in the output device (which handles halftoning, color conversion, etc.), transmitting "intermediate output data" (optionally in Mixed Raster Content format) instead of a page description language. The output controller can sit inside a printer, be cascaded externally, or be a combined printer/output controller (FIGS. 5A–7F). Notably, the description is written primarily around printers and displays; the sound/voice-command subject matter of the claims rests on the specification's broad definition of "output device" as including "voice output devices" and its statement that rendering includes "playing an audio representation of the content."
5. Sources
- Google Patents: https://patents.google.com/patent/US10140072/en
- Grant transcription incl. full claim text and references cited: https://uspto.report/patent/grant/[10140072](/patent/10140072)
- Unified Patents record: https://portal.unifiedpatents.com/patents/patent/US-10140072-B2
6. Litigation / CAFC status
- Google Patents family-litigation links for this family: W.D. Wash. 2:21-cv-01055; W.D. Tex. 6:20-cv-00553; E.D. Tex. 2:22-cv-00227; E.D. Tex. 2:25-cv-00960.
- W.D. Tex. 6:20-cv-00553 is the Flexiworld Technologies v. Amazon.com action (accused products include Amazon Echo, Echo Show, Fire Tablet, Fire TV); the '072 patent is among the ten Flexiworld patents pleaded (along with 8,332,521; 8,989,064; 9,110,622; 10,133,527; 10,162,596; 10,387,087; 10,481,846; 10,489,096; 10,642,576).
- W.D. Wash. 2:21-cv-01055 produced a claim-construction order (Dkt. 161, Mar. 5, 2024) addressing, inter alia, "output manager software" in claim 15 of the '521 patent — related family practice, not the '072 claims.
- PTAB: IPR2021-00713 and IPR2021-00714 (Roku, Inc. v. Flexiworld Technologies, Inc.) appear in the record; I could not confirm from the retrieved material that either petition names the '072 patent, and I will not assert that it does.
- CAFC 2026: No 2026 Federal Circuit docket naming US 10,140,072 was found. Absence of a hit is not proof that none exists — Federal Circuit docket text is not always indexed by patent number in free sources, so treat this as "not found" rather than "none."
7. Explicit uncertainties
- Filing date (Apr. 21 vs. Apr. 20, 2017) and grant date (Nov. 27 vs. Nov. 26, 2018) differ between sources.
- Priority date listed as 2000-11-01 (Google) vs. 2000-10-31 (Unified).
- Expiration status is internally inconsistent across sources (anticipated 2021-11-01 vs. a 2022-04-22 fee lapse vs. continued assertion in 2022 and 2025 suits).
- Claim text above comes from a third-party transcription of the printed grant; verify against the USPTO official copy before relying on exact wording.
- I did not retrieve an authoritative CAFC 2026 docket entry for this patent.
Generated 9/15/2026, 12:48:11 PM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10140072. The free-form analysis below may also discuss cases beyond this list.
- Flexiworld Technologies, Inc. v. LG Electronics, Inc. et al.filed Sep 18, 20252:25-cv-00960U.S. District Court for the Eastern District of Texas (Marshall Division)pending
Defendants: LG Electronics, Inc., LG Electronics U.S.A., Inc.
Other patents asserted: 10162596, 9042811, 9836259, 9965233, 10037178
- Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al.filed Jun 24, 20222:22-cv-00227United States District Court for the Eastern District of Texas, Marshall Divisionpending as of mid-2022; final outcome unconfirmed
Defendants: Hisense Co., Ltd., Qingdao Huatong State-Owned Capital Operation (Group) Co., Ltd., Hisense Visual Technology Co., Ltd., and 9 others
Other patents asserted: 7609402, 10768871, 10387087, 10140073
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 10,140,072. Let me run multiple searches.
Let me verify which cases specifically asserted this patent, and check PTAB challenges.
Bottom line
US Patent 10,140,072 ("Sound output system or internet appliance that supports voice activated commands, and that plays audio data received from a service over a network," Flexiworld Technologies, Inc., inventors Chang & Liu) has been asserted in Flexiworld Technologies, Inc. v. Amazon (original W.D. Tex. case transferred to W.D. Wash.) and in Flexiworld Technologies, Inc. v. Hisense (E.D. Tex. and N.D. Ga.). A Unified Patents litigation link on the patent's Google Patents page also associates the patent with Flexiworld v. LG Electronics (E.D. Tex. 2:25-cv-00960), though I could not independently confirm from the pleadings that '072 is among the six patents in that case. Flexiworld's suits against Xerox, Epson, Lexmark, TCL, HP, Sony, and Roku do not appear to include '072 based on the asserted-patent lists I found.
Important context: the patent's Google Patents page lists an anticipated expiration of 2021-11-01 and records that it lapsed for failure to pay maintenance fees (status: "Expired – Fee Related"), which materially affects which suits could have sought ongoing damages.
Confirmed cases asserting US 10,140,072
| # | Plaintiff | Defendant(s) | Court / Case No. | Filed | Status |
|---|---|---|---|---|---|
| 1 | Flexiworld Technologies, Inc. | Amazon.com, Inc.; Amazon.com Services, Inc.; Amazon Web Services, Inc.; Amazon.com LLC | W.D. Tex., 6:20-cv-00553-ADA (Judge Alan D. Albright) → transferred to W.D. Wash., 2:21-cv-01055-DGE (Judge David G. Estudillo) | 6/22/2020 (original); re-docketed 8/2021 | Pending; claim construction order 3/5/2024; no merits judgment found |
| 2 | Flexiworld Technologies, Inc. | Hisense entities (Hisense Co., Ltd.; Hisense Visual Technology Co., Ltd.; Qingdao Huatong State-owned Capital Operation (Group) Co. Ltd.; Hisense International (Hong Kong) America Investment Co., Ltd.; Guiyang Hisense Electronics; Hisense Import & Export; et al.) | E.D. Tex., 2:22-cv-00227 (Judge Rodney Gilstrap) | June 2022 (date not confirmed) | No merits outcome confirmed |
| 3 | Flexiworld Technologies, Inc. | Same Hisense defendant group | N.D. Ga., 1:22-cv-04338 | 10/31/2022 | No merits outcome confirmed |
| 4 | Flexiworld Technologies, Inc. | LG Electronics, Inc.; LG Electronics U.S.A., Inc. | E.D. Tex., 2:25-cv-00960 (Judge Rodney Gilstrap) | 9/18/2025 | Pending (per PACER Monitor docket) — '072 inclusion not independently confirmed |
Detail and citations
1. Amazon (6:20-cv-00553 → 2:21-cv-01055). Flexiworld asserted 91 claims across 10 patents, expressly including the '072 patent: U.S. Pat. Nos. 8,332,521; 8,989,064; 9,110,622; 10,133,527; 10,140,072; 10,162,596; 10,387,087; 10,481,846; 10,489,096; and 10,642,576 (the ipcrew/lawstreetmedia report of the complaint). Accused products were Amazon Echo, Echo Show, Fire Tablet, Fire TV, and related devices. Procedural history: Amazon's motions for partial dismissal for lack of standing (Dkt. 34, 82) were denied and its motion to stay (Dkt. 74) denied as moot (Order, 7/8/2022); venue transfer to W.D. Wash. (Dkt. 99) ; a new Markman hearing was ordered (Dkt. 131); the court issued its Order Regarding Claims Construction, Dkt. 161, filed 3/5/2024 (construing, e.g., "physical distance/physical proximity," "authentication procedure," "output manager software"). Discovery continued into 2025 (non-party Mopria Alliance subpoena dispute, N.D. Cal. Misc. 3:25-mc-80055, Mar. 5, 2025). No outcome/judgment found; case appears pending.
Sources: https://theipcrew.com/tag/intellectual-property/page/2/ ; https://lawstreetmedia.com/news/tech/amazon-sued-over-smart-speaker-tablet-patents/ ; https://storage.courtlistener.com/recap/gov.uscourts.wawd.[302246](/patent/302246)/gov.uscourts.wawd.302246.161.0.pdf ; https://services.patexia.com/lawsuits/Flexiworld-Technologies-Inc-v-Amazoncom-Inc-et-al-id-[154012](/patent/154012)/documents ; https://storage.courtlistener.com/recap/gov.uscourts.cand.[445897](/patent/445897)/gov.uscourts.cand.445897.1.0.pdf
2. Hisense, E.D. Tex. 2:22-cv-00227. Listed in IPWatchdog's July 1, 2022 patent filings roundup as asserting 10,140,072 together with 10,768,871; 7,609,402; 10,140,073; and 10,387,087 against the Hisense defendants. Note that the same AO 120/patent-family record also reflects an E.D. Tex. action against Hisense involving these same five patents (including 10,140,072) with an "Order Dismissing Civil Action filed 2/1/2022" — i.e., there appears to have been an earlier Hisense case that was dismissed, but the full docket number is not legible in the copy I retrieved, so I cannot confirm it. Sister cases 2:22-cv-00225 and 2:22-cv-00228 (E.D. Tex.) and 1:22-cv-04337 and 1:22-cv-04371 (N.D. Ga.) were filed the same days against the same defendant group but I have not verified that '072 was asserted in those specific companions.
Sources: https://ipwatchdog.com/2022/07/01/patent-filings-roundup-centripetal-sees-iprs-microsoft-engineer-sues-seven-waco/ ; https://npe.law.stanford.edu/patent/10140072 ; https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1553925](/patent/1553925)/download-documents?artifactId=...
3. Hisense, N.D. Ga. 1:22-cv-04338 (filed 10/31/2022). This is the case the Stanford NPE Litigation Database lists for patent 10140072, against the full Hisense defendant list.
Source: https://npe.law.stanford.edu/patent/10140072
4. LG Electronics, E.D. Tex. 2:25-cv-00960. Filed September 2025 (complaint filed 9/18/2025; Judge Gilstrap). Six Flexiworld patents asserted against LG smart TVs, soundbars, remotes, and the LG ThinQ app, alleging wireless-transmission (Wi-Fi/Bluetooth) data handling, seeking damages and reasonable royalties. The Google Patents page for US10140072 links the "Texas Eastern District Court, case 2:25-cv-00960" litigation record, but the reported patent count for the case is six and I could not confirm which six numbers; treat '072's inclusion as unverified. Status: pending (attorney appearances and executed summons in September 2025).
Sources: https://cdn.pacermonitor.com/public/case/60211877/Flexiworld_Technologies,_Inc_v_LG_ELECTRONICS,_INC_et_al ; https://www.ip-navi.or.kr/ipnavi/dispute/boardDetail.navi?boardCode=B00024&boardSeq=[177324](/patent/177324) ; https://patents.google.com/patent/US10140072/en (litigation links)
Flexiworld cases I checked that do NOT include '072
- TCL (E.D. Tex. 2:26-cv-00229, filed 3/20/2026) — 12 patents asserted: 10,768,871; 11,096,056; 11,029,903; 10,846,031; 8,285,802; 8,332,521; 9,836,259; 9,965,233; 9,042,811; 10,841,798; 8,630,000; 7,609,402. No '072.
- Xerox (W.D.N.Y. 6:23-cv-06371/-06372/-06373) — asserted '576, '031, '725, '847, '178, '871, '798, '056, '073, '846, '791, '181, '071, '856. No '072.
- Epson (C.D. Cal.) — 14 patents listed; no '072.
- Lexmark (E.D. Ky. 5:22-cv-00098) — '402, '073, '846, '791. No '072.
- HP (S.D. Tex. 4:24-cv-02691) and Sony (E.D. Tex. 2:23-cv-00616, dismissed with prejudice by joint stipulation 5/29/2025) — reported patent lists do not include '072.
- Roku (W.D. Tex. 6:21-cv-00680/-00767/-00882) and Roku's PTAB petition PGR2021-00111 — I could not confirm that '072 was at issue or challenged.
PTAB / appellate
I found no IPR, PGR, or CBM proceeding, and no Federal Circuit appeal, specifically involving US 10,140,072. Roku's PGR2021-00111 against Flexiworld is the only Flexiworld post-grant challenge I identified for that period, and I could not verify the challenged patent.
Caveats
- I did not have full PACER access; docket-level details for the Hisense and LG matters (exact filing dates for 2:22-cv-00227, claim counts, and dispositions) are drawn from secondary databases (Stanford NPE Database, IPWatchdog, Justia, PACER Monitor, Unified Patents portal) and may be incomplete or outdated.
- Several Flexiworld cases have been resolved by confidential settlement or voluntary dismissal without public merits rulings; a closed case asserting '072 could therefore exist that I did not surface.
- The patent is recorded as expired/lapsed (term listed as expiring 2021-11-01; maintenance-fee lapse effective on or about 2023-02-24, status "Expired – Fee Related"), which limits remedies in the later-filed cases (Hisense 2022; LG 2025) to the pre-expiration damages window.
Generated 9/15/2026, 12:48:39 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Flexiworld Technologies, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
PTAB / AIA Trial Docket Report — US 10,140,072
Sources used: the structured "PTAB proceedings on file" block (canonical ODP extract), plus targeted web searches of PTAB docket mirrors, Unified Patents' patent portal, and law-firm / litigation-summary write-ups. Where I could not verify an outcome, I say so rather than guessing.
Proceedings overview
Zero AIA trial proceedings on file against US 10,140,072 — 0 active, 0 claims invalidated, 0 claims sustained, 0 settled, 0 institution-denied — so there is no PTAB record, no FWD, and no § 315(e)(2) estoppel to exploit; a defendant today would be the first petitioner and would have to build the invalidity record from scratch, but also would face no adverse claim-construction or institution-denial precedent on this patent.
⚠️ Two threshold flags before you spend money on a petition:
- There is heavy PTAB activity against the same family, but on different patents. Searching turned up IPRs/PGR to Flexiworld patents 9,836,257, 7,609,402, and an ex parte reexamination on 10,346,114 — but no petition against 10,140,072 itself. Do not let a vendor's "Flexiworld has 14 PTAB cases" statistic be mistaken for a challenge to this patent.
- The '072 patent's recorded legal status may already be expired. Google Patents shows legal status "Expired – Fee Related" with an anticipated expiration of 2021-11-01, and Unified Patents' patent page shows expiration 2021-10-31 with $0 lifetime renewal fees paid. That is a data record, not a legal conclusion — it must be verified on USPTO Patent Center / maintenance-fee records and against the printed term plus any PTA. If accurate, it materially moots both the IPR question and the damages case (see Recommended next steps).
Proceedings on US 10,140,072
None.
The ODP extract returns no AIA trial proceedings, and no web source retrieved shows an IPR, PGR, or CBM petition, institution decision, or FWD naming U.S. Patent No. 10,140,072. I could not run a fully exhaustive PTAB docket query in this session, so treat this as "no record found," not as a certified negative — but it is the correct working assumption.
Adjacent family proceedings — context only (NOT on the '072 patent)
These are included because they predict how Flexiworld will defend the '072 patent. They are not proceedings on 10,140,072 and create no estoppel as to the '072 patent.
IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc. (U.S. 9,836,257)
- Type: Inter Partes Review (pre-AIA § 103(a) applied)
- Filed: 2022-04-08
- Status: FWD issued — "Final Written Decision Determining No Challenged Claims Unpatentable" and dismissing Patent Owner's Revised Contingent Motion to Amend (Paper 41, 2023-11-01); proceeding terminated 2023-11-01.
- Judge panel: APJs Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal
- Petition grounds: claims 27 and 28 (§ 103), on two grounds — Olgaard in view of Moghadam; Acharya in view of Griffiths
- Institution decision: instituted 2022-11-08 (Paper 10)
- Final Written Decision: No challenged claim held unpatentable — claims 27 and 28 survived intact. The panel never reached the merits of the art: Unified failed to prove Olgaard's 2000-10-24 and Acharya's 2000-12-22 dates qualified as § 102(e) prior art, because Flexiworld swore behind them, establishing conception no later than 2000-10-22 with corroboration from provisional-draft file metadata, plus diligence in reduction to practice through the holiday-period gaps. As the write-ups summarize: the PTAB found "the testimony of the inventor was credible and that metadata was 'the most reliable indicator of the latest date each draft was completed.'" Unified "did not provide another basis for obviousness that was not dependent on these two references."
- Settlement / termination: N/A — decided on the merits
- Appeal: No Federal Circuit appeal located in the sources retrieved (unverified)
- Defensive value: This is the single most important datapoint for anyone attacking a Flexiworld 2000-priority continuation. Flexiworld has a litigation-tested swear-behind package (dated provisional drafts from Oct–Dec 2000, inventor declaration, corroboration argument that survived attack). Any § 102(e)/§ 102(a)(2)-style art with a date after ~October 2000 on the '072 patent invites the same fight — and Flexiworld has already won it once, before a panel that will likely be viewed as persuasive.
Links: IPR2022-00775 FWD write-ups · Unified Patents IPR2022-00775 docket mirror · PTAB E2E
IPR2022-01267 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 9,836,257)
- Type: Inter Partes Review
- Filed: 2022-07-29
- Status: docket exists; outcome not verified in the sources retrieved
- Defensive value: Confirms the '257 patent drew two separate petitioners (Unified and Roku) — evidence that parallel defendants were coordinating on the same family. No equivalent coordination has occurred on the '072 patent yet.
IPR2023-00845 — Lexmark International, Inc. v. Flexiworld Technologies, Inc. (U.S. 7,609,402)
- Type: Inter Partes Review
- Filed: 2023-04-21
- Status: Institution Denied — decision 2023-11-17; refund approved 2024-01-24
- Petition grounds: art included US 2002/0083121, US 7,355,732, US 6,950,645, US 6,952,831, US 2002/0078160, US 6,469,805, WO 1997/39553 (Davis), and Chang '541 (US 7,941,541) — i.e., largely Flexiworld's own prior publications/patents and 2000-era references, with a Rabbani declaration
- Defensive value: A cautionary tale — Lexmark attacked with a § 102(e)-adjacent art set and was denied institution. Flexiworld's priority/antedating story defeats this art class before institution.
IPR2023-00846 — Lexmark International, Inc. v. Flexiworld Technologies, Inc.
- Type: Inter Partes Review
- Filed: 2023-04-28 (per IP Verse table)
- Status: Terminated – Settled (patent number not verified)
- Settlement / termination: Terminated as settled; terms are not public / typically confidential — I have no verified terms
- Defensive value: Lexmark's second petition was resolved as part of what appears to be a broader Flexiworld–Lexmark resolution.
PGR2021-00112 — Roku, Inc. v. Flexiworld Technologies, Inc.
- Type: Post-Grant Review
- Filed: 2021 (exact date not verified)
- Status: existence confirmed only indirectly, via a third party's pro hac vice declaration referencing that proceeding; patent number and outcome not verified
- Defensive value: Notable because PGR is only available for post-AIA claims — suggesting at least one Flexiworld continuation carries a post-2013 effective filing date for some claim. Check the '072 patent's AIA/pre-AIA status before you assume you can swear behind art (see Strategic summary).
Ex parte reexamination 90/014,721 — U.S. 10,346,114 (Unified Patents, third-party requester)
- Type: Ex parte reexamination — not an AIA trial, included only because it shows Unified's enforcement posture
- Filed: 2021-04-13; granted 2021-05-11 on "substantial new questions of patentability"
- Defensive value: Unified Patents — a defensive aggregator with 3,000+ members — has repeatedly picked off Flexiworld patents tied to assertions against its members (Roku, and its members generally). If the '072 patent is being asserted against Unified members, a Unified-filed challenge is a realistic near-term risk.
Strategic summary
Claim status on '072. No claim of 10,140,072 is canceled, no claim has been sustained in an FWD, and no claim has been tested: all claims — including independent claim 1 — are UNTESTED. Do not tell a client "the claims are dead" or "the claims are hardened." Neither is true; both are unsupported by the record. The only claim-level information I have on '072 is assertion data: Flexiworld has asserted the patent in at least two district court cases — Flexiworld v. Amazon, No. 6:20-cv-00553 (W.D. Tex.) (among ten patents, including the Echo/Fire line) and Flexiworld v. LG Electronics, No. 2:25-cv-00960 (E.D. Tex.). A third-party complaint-analysis summary of the LG case indicates claim 1 plus dependents were asserted; verify the exact asserted claim set against the complaint itself — the auto-generated summary I retrieved is internally inconsistent about which claims belong to which patent. Additional Flexiworld suits exist in the same period (Xerox, Epson, Canon, Brother, HP).
Estoppel landscape. Because no AIA trial has ever been instituted on the '072 patent, § 315(e)(2) estoppel against the '072 patent is empty. Unified's loss in IPR2022-00775 estops Unified and its privies only as to the '257 patent (and only as to grounds raised or reasonably raisable there). Roku's and Lexmark's proceedings likewise attach to their patents. For a defendant now facing assertion of '072: every prior-art ground remains available, including art that other petitioners used against sibling patents — and a third party's failed art does not bind you. Conversely, you get no free ride from anyone else's institution decision either.
Pattern signals. (1) No petitioner has filed multiple IPRs against '072 — a clean slate. (2) Flexiworld fights PTAB challenges to the end and wins on priority: it litigated the '257 IPR through an oral hearing, briefed a contingent motion to amend (and a revised one), and defeated Unified on antedating rather than on the merits — the practical implication being that you must pick art that does not depend on a post-October-2000 effective date, or you will lose the same way. (3) Defensive aggregators are in the chain — Unified Patents appears in the IPR and the '114 reexam; Roku filed both a PGR and an IPR. (4) Flexiworld's counsel is the Nelson Bumgardner firm (Brent Bumgardner, Charles Ginnings, T. William Kennedy) — a small, PTAB-experienced shop that has demonstrated willingness to run priority and diligence battles with inventor declarations and document metadata. (5) No Federal Circuit appeal from IPR2022-00775 was located in the sources retrieved — unverified; check the CAFC docket before asserting that Flexiworld has never appealed.
AIA vs. pre-AIA is the pivotal open question for your petition. IPR2022-00775 applied pre-AIA § 103(a), which preserved the patent owner's ability to swear behind § 102(e) art. Under the AIA, that tool is largely replaced by the narrower § 102(b)(2) exceptions (derivation / common ownership), so a first petitioner on '072 needs to determine — from the file history, not the face of the patent — whether every claim at any time had an effective filing date on or after 2013-03-16. If the '072 claims are AIA claims, the burden that beat Unified is gone; if they are pre-AIA claims, expect the October 2000 draft-provisional package to reappear immediately in the POPR.
Expiration / maintenance-fee status may dominate everything. Both Google Patents ("Expired – Fee Related," anticipated expiration 2021-11-01) and Unified's patent page (expiration 2021-10-31; $0 lifetime renewal fees) point to the '072 patent's term having run out in late 2021. The patent issued 2018-11-27 from an application filed 2017-04-21 that claims benefit of a 2001 filing — a classic pre-2021-termination continuation. I cannot treat these third-party records as a legal conclusion; but if the patent lapsed or expired on 2021-11-01, then (a) there is no injunctive exposure, (b) damages end in November 2021 before the '286 six-year lookback even bites for a 2025 filing, and (c) an IPR may be a waste of money relative to a Rule 12 motion or a summary-judgment/§ 101 or § 112 attack.
Recommended next steps
- Verify term and fee status first — before drafting a petition. Pull the '072 file wrapper and maintenance-fee record from USPTO PatentCenter; confirm the printed term, any PTA, and whether maintenance fees were paid at 3.5/7.5/11.5 years. If the patent expired 2021-11-01, a 2025-filed assertion reaches at most pre-expiration conduct, further capped by 35 U.S.C. § 286, and no IPR is needed to get there.
- Determine AIA vs. pre-AIA character claim-by-claim from the '072 prosecution history. This single issue dictates whether you can rely on post-October-2000 § 102(a)(2)/102(e) art at all, or whether you need art (or a § 112 theory) that sidesteps Flexiworld's October 2000 conception package that defeated Unified.
- If you petition, you are the first petitioner — the § 315(b) clock is the gating item. One year from service of the complaint on your client. For any defendant served before 2025-09-15, a petition on that client's behalf is already time-barred; a stipulation or joinder analysis under § 315(c) would be required.
- Reuse what worked procedurally, not what failed substantively. Petitioner-side resources worth mining: the Unified petition and the Freedman/rabbani declarations in IPR2022-00775, and Lexmark's art set in IPR2023-00845 — but note Lexmark's petition was denied institution (2023-11-17), so treat that art as discredited rather than as a template.
- Preserve your § 112 lane. The '072 claims issued in 2018 from a 2017 continuation asserting 2000–2001 priority; written-description/enablement attacks on "voice activated commands" and "output system / Internet appliance" claim scope are entirely untested and unaffected by the family's antedating wins (which were all § 102/§ 103 priority fights).
- Monitor for a Unified Patents filing. Unified has a demonstrated practice of filing IPRs and ex parte reexaminations against Flexiworld patents asserted against its members. If the '072 patent is asserted against a Unified member, a Unified petition is plausible — a reason to consider coordination rather than a solo filing, and a reason to check for a new PTAB docket before your own petition is due.
- Confirm no unnoticed filing with a live docket check before relying on the zero count: PTAB E2E / PTAB Decisions at https://ptacts.uspto.gov/, and the CAFC docket / CourtListener for any appeal of IPR2022-00775 that my sources did not capture.
Limitations of this report, stated plainly: I found no AIA trial proceeding on US 10,140,072, and the ODP extract agrees. The family proceedings above are described from secondary docket mirrors and law-firm summaries; IPR2022-01267, IPR2023-00846, and PGR2021-00112 have outcomes I could not verify in this session, and I have not invented patent numbers for them. The expiration and asserted-claim details are from third-party databases with their own disclaimers and should be confirmed against primary USPTO and court records.
Generated 9/15/2026, 12:48:53 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2017-05-15 · reel 042385/0202 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
inventor-to-employer assignment at filing
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for this patent from multiple sources.
Assignment Record Reconstruction — US 10,140,072 B2
Patent: US 10,140,072 B2 — Sound output system or internet appliance that supports voice activated commands, and that plays audio data received from a service over a network
Application: 15/494,297 · filed 2017‑04‑21 · granted 2018‑11‑27
Priority: 2000‑11‑01 (assumed; family claims benefit of US 10/016,223 filed 2001‑11‑01 and US 09/992,413)
Sources queried: Google Patents legal events (authoritative text supplied), Unified Patents portal, Stanford NPE Litigation Database, RPX Insight, E.D. Tex. complaint text reproduced in third‑party docket analysis, USPTO Assignment Center (https://assignmentcenter.uspto.gov/patent/index.html — JS‑rendered; not directly scrapable, see caveat below).
Verification caveat, stated up front. I was able to confirm the existence, reel/frame and parties of the recorded assignment from the litigation record and from Google Patents legal events. I was not able to retrieve the correspondent of record for that reel/frame, nor the exact execution date. Those fields are not exposed in any source I could reach, and I will not fabricate them. Everything below is limited to what is documented.
Inventors
| Inventor | Employer at filing (determinable) | Evidence |
|---|---|---|
| William Ho Chang | Flexiworld Technologies, Inc. — founder/principal; named assignor to Flexiworld on reel 042385/0202 | Public press describes Flexiworld as "a wireless technology company founded by scientist and inventor William Ho Chang" (Actionable Intelligence, coverage of Flexiworld v. Lexmark/Brother) |
| Christina Ying Liu | Flexiworld Technologies, Inc. — named co‑assignor to Flexiworld on reel 042385/0202 | Assignment paragraph in the 2025 E.D. Tex. complaint: "An assignment of the '072 Patent from inventors Chang and Liu to Flexiworld is recorded … at Reel/Frame 042385/0202" |
Unusual patterns — assessment:
- No "inventors depart within 12 months" pattern. This is not the classic pre‑fire‑sale signature the brief asks about. Here the inventors are themselves the assignors and the principals of the eventual asserting entity; they never left the chain. That is a different and arguably more durable pattern (founder‑run assertion), and it is worth distinguishing explicitly from an operating company whose engineering staff bails out before a portfolio sale.
- What is unusual is the filing posture: both named inventors are the same two individuals across an extremely large Flexiworld family with 2000/2001 priority dates, and a large block of continuations in that family was filed in the same 2017 window (application 15/494,297 filed 2017‑04‑21 alongside sibling applications such as those issuing as 10,140,071, 10,140,073, 10,768,871, 10,387,087, 10,371,178). That is a continuation‑farming / claim‑diversification posture, which matters for the pre‑litigation analysis below.
- I found no evidence of inventor departures, employment disputes, or inventor-side security interests. Absence of evidence, not evidence of absence.
Original assignee
Flexiworld Technologies, Inc. — named on the face of the issued patent and still the sole recorded owner (Google Patents "Current Assignee," and every infringement complaint pleads Flexiworld as owner).
- Primary line of business: A wireless‑connectivity / pervasive‑computing technology venture founded by William Ho Chang. Public trade press (Actionable Intelligence) describes Flexiworld as "a patent‑licensing company" whose earlier generation of suits targeted Canon and Epson; the same outlet notes the company was "founded by scientist and inventor William Ho Chang."
- Did it ship a product embodying the claims? Not determinable from the sources I reviewed, and there is affirmative counter‑evidence. The Stanford NPE Litigation Database classifies Flexiworld under asserter category "3 Failed startup," and separately tags one of its cases with "1 Acquired patents." No product literature, no SKU, no retail channel evidence surfaced. I am not going to assert "no products in commerce" as established fact — I did not find a catalog or a corporate wind‑down filing — but the record is consistent with a venture that did not achieve commercial scale.
- Current status: Operating as a patent‑assertion/licensing entity, not as a product company. It is a high‑frequency plaintiff: 6:20‑cv‑00553 (Amazon, W.D. Tex., filed 2020‑06‑22, closed 2021‑08‑03), the 2022 Hisense cluster (2:22‑cv‑00225, ‑00227, ‑00228, and N.D. Ga. 1:22‑cv‑04338 filed 2022‑10‑31), Brother (2:22‑cv‑02250 / ‑02251, W.D. Tenn.), multiple Lexmark suits, Xerox (6:23‑cv‑06371 and 6:23‑cv‑06373, W.D.N.Y., filed 2023‑06‑28, docketed by Unified as "NPE (Small Company)"), Sony (2:23‑cv‑00616, E.D. Tex., filed 2023‑12‑19), Indeed (1:24‑cv‑01254, W.D. Tex.), and 2:25‑cv‑00960 (E.D. Tex., 2025). Unified Patents' own news feed states plainly: "U.S. Patent RE48,066, owned and asserted by Flexiworld Technologies, Inc., an NPE."
- Third‑party rating: Unified Patents portal lists Flexiworld as the parent company with CITX 79.86, PVIX 79.66, SVIX 0.19 — high litigation/financial indexes. Consistent with a pure assertion profile.
- Term/status flag: Google Patents lists the patent's status as "Expired – Fee Related" with an anticipated expiration of 2021‑11‑01, and Unified's portal shows Expiration Date 2021‑10‑31 with Lifetime Renewal Fees $0. Both are consistent with the 20‑year term running from the 2000/2001 priority date. Caveat: one 2022 E.D. Tex. docket (2:22‑cv‑00227, filed July 2022) still lists 10,140,072 among patents‑in‑suit, i.e., after the stated term date — which is consistent with a past‑damages assertion but which I cannot fully reconcile from the sources available. Treat the "Expired" label as Google/Unified metadata, not a legal conclusion.
Assignment timeline
One (1) recorded assignment exists. There is no post‑issuance transfer, no security interest, no license record, and no name change in the retrieved record.
- Executed: not stated in retrieved records (on or before the recording date) / recorded 2017‑05‑15 — Reel 042385/0202
- Conveyance: Assignment — recorded as "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)" per Google Patents legal events
- Assignor: William Ho Chang; Christina Ying Liu (both named inventors)
- Assignee: Flexiworld Technologies, Inc.
- Correspondent: NOT VERIFIABLE. I could not retrieve the correspondent of record for reel 042385/0202 from Assignment Center, Google Patents, Unified, or RPX. Flag for follow‑up rather than infer. What is documented is that this is an omnibus instrument: the same reel/frame, 042385/0202, is pleaded as the assignment of record for multiple family members — the '072, the '178 patent (10,037,178), and the '811 patent (9,042,811) (E.D. Tex. complaint text, ¶¶ 42, 60, 72). One instrument, one recording, one correspondent, many patents — but I cannot name the correspondent without the Assignment Center record.
- Context: Inventor‑to‑employer assignment at filing. Executed contemporaneously with the 2017‑04‑21 continuation filing and recorded on 2017‑05‑15. This is a routine filing‑time perfection of title. It is not an acquisition, fire‑sale, securitization, or transfer‑to‑asserter event.
Result of the Assignment Center query: records do exist, but the entire recorded chain of title is a single link. Google Patents continues to show Flexiworld Technologies Inc. as Current Assignee, and every pleading in the 2020–2025 cases pleads Flexiworld as owner — so the record is consistent with continuous ownership by the original assignee since 2017, with no post‑issuance assignment ever recorded.
Timeline diagram
timeline
title Ownership and Assertion of US 10140072
2000 : Earliest priority date claimed
: Family originates as Flexiworld
2017 : Continuation filed 2017-04-21
: Inventors assign to Flexiworld reel 042385
2018 : Patent issues 2018-11-27
2020 : First suit filed vs Amazon
2022 : Suits vs Hisense Brother Lexmark
2023 : Suits vs Xerox and Sony
2024 : Suit vs Indeed
2025 : Assertion continues in E D Tex
: Unified challenges related RE48066
NPE / troll‑pattern signals
1. Shell‑entity transfer — NOT PRESENT.
No transfer from an operating assignee to a licensing‑only LLC is recorded. Reel 042385/0202 runs inventors → Flexiworld Technologies, Inc., and Flexiworld remains the current assignee on Google Patents. There is no "IP / Holdings / Ventures / Licensing" successor in the chain and no registered‑agent address to report. Note the structural point: this is not a transfer‑to‑asserter case — the asserter is the original assignee. That is a materially different fact pattern from the classic shell‑LLC pipeline, and the rubric's shell‑entity test does not fit it.
2. Known asserter in the chain — PRESENT (moderate strength, and the strongest signal in this record).
Flexiworld Technologies, Inc. is not on the enumerated list (Acacia, Marathon, Intellectual Ventures, Wi‑LAN, Mosaid/Conversant, Vringo, Pendrell, Round Rock, etc.). However, it matches the rubric's residual clause — "any entity surfaced by Unified Patents or RPX as a high‑frequency plaintiff":
- Unified Patents, 2025‑05‑23: "…U.S. Patent RE48,066, owned and asserted by Flexiworld Technologies, Inc., an NPE" (ex parte reexamination filed 2025‑05‑23).
- Unified Patents portal docket entries: 6:23‑cv‑06371 and ‑06373 (Flexiworld v. Xerox) typed "Entity Type: NPE (Small Company)."
- Stanford NPE Litigation Database lists Flexiworld as a patent asserter across at least six cases, category "Failed startup."
- RPX Insight titles the Brother matter "Flexiworld Technologies, Inc. v. Brother Industries (U.S.A.) Inc. NPE DC."
This is third‑party classification of the present owner, not an inference from naming.
3. Repeat correspondent across the chain — INSUFFICIENT DATA.
The chain has only one link, so there is nothing to recur within this patent. The repeat‑player tell that is documented is the reel/frame itself — reel 042385/0202 is the recording of record for multiple Flexiworld family members ('072, '178, '811; E.D. Tex. complaint ¶¶ 42, 60, 72) — which means a single omnibus instrument and a single recording correspondent covers the family. I cannot name that correspondent. Do not treat this as a finding until the Assignment Center correspondent field for 042385/0202 is read directly.
4. Cascading transfers — NOT PRESENT.
Zero consecutive assignments, therefore no chained LLCs within 24 months. Total chain length: one link, in 2017.
5. Pre‑litigation transfer — NOT PRESENT (as to the assignment), but the surrounding pattern is worth flagging.
The only assignment (recorded 2017‑05‑15) precedes the first Flexiworld infringement suit (6:20‑cv‑00553 v. Amazon, filed 2020‑06‑22) by roughly 37 months — well outside the 6‑month window. The assignment did not set venue or build a standing record for this litigation. Separately, and outside the assigned scope of this question: the 2017 continuation wave itself (same‑day filings sharing 2000/2001 priority) functioned as the claim‑diversification step that enabled the 2020–2025 campaigns. That is a prosecution/filing pattern, not a recorded assignment event, and I note it as context only.
6. Bankruptcy fire‑sale — NOT PRESENT / NO EVIDENCE FOUND.
I found no Chapter 7 or Chapter 11 proceeding for Flexiworld Technologies, Inc., no sale order, and no assignment to a purchaser in bankruptcy. Absence of evidence.
7. Privateering — NOT PRESENT.
Privateering requires an operating company transferring patents to an NPE that asserts on the operating company's behalf. Flexiworld is itself the original assignee and the plaintiff; there is no upstream operating‑company backer in the chain, and no SEC filing or Patent Progress / EFF coverage of a privateering arrangement surfaced. (Inverse observation: Flexiworld is on the receiving end of defensive activity, not orchestrating it.)
8. Defensive aggregator — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at an active plaintiff. The relationship with Unified is adverse: Unified filed an ex parte reexamination against Flexiworld's related RE48,066 on 2025‑05‑23, and its portal carries the Flexiworld litigations. No neutralization.
Signal tally: 1 present (known asserter, corroborated by three independent trackers), 5 not present, 2 insufficient data.
Verdict
NPE — moderate confidence.
Justification: the recorded chain of title is a single link — inventors Chang and Liu to Flexiworld Technologies, Inc., Reel/Frame 042385/0202, recorded 2017‑05‑15 — leaving Flexiworld as the continuous, current owner with no shell‑entity transfer, no cascading LLCs, and no defensive‑aggregator termination, which is why this is not a high‑confidence multi‑signal NPE call. The one strong signal is signal 2: Flexiworld is independently classified as a patent assertion entity by Unified Patents ("owned and asserted by Flexiworld Technologies, Inc., an NPE," 2025‑05‑23), by Stanford's NPE Litigation Database ("Failed startup"), and by RPX ("NPE DC"), and it has filed 10+ infringement suits on this family between 2020‑06‑22 and 2025 against Amazon, Hisense, Brother, Lexmark, Xerox, Sony, and Indeed. Critically, this is the "failed operating startup asserting its own patents" variant, not the "transfer to a purpose‑built shell LLC" variant — the shell‑entity and cascading‑transfer tests return not present and should not be forced. The two open items that could move this to high confidence are (a) the correspondent of record on reel 042385/0202, and (b) whether Flexiworld ever had a revenue product — both require direct reading of Assignment Center and of the USPTO's ownership/entity records rather than further litigation docket mining.
Verification links:
- USPTO Assignment Center search for this patent: https://assignmentcenter.uspto.gov/patent/index.html (search patent number 10140072; also mirror at https://assignment.uspto.gov/patent/index.html)
- Google Patents legal events: https://patents.google.com/patent/[US10140072B2](/patent/US10140072B2)/en
- Stanford NPE Litigation Database, patent page: https://npe.law.stanford.edu/patent/10140072
- Stanford NPE Database, asserter page: https://npe.law.stanford.edu/party/flexiworld-technologies-inc-0
- Unified Patents portal (entity type and case dockets): https://portal.unifiedpatents.com/patents/patent/US-10140072-B2
- RPX Insight (Brother matter, marked "NPE DC"): https://insight.rpxcorp.com/litigation/tnwdce-95144-flexiworld-technologies-v-brother-industries
Explicit non-findings (do not report as facts): the exact execution date of the 2017 assignment, the correspondent of record on reel 042385/0202, any Flexiworld bankruptcy, and any product ever shipped by Flexiworld are unverified in this analysis.
Generated 9/15/2026, 12:48:52 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search for the authoritative citation records for US 10,140,072 B2. Let me run several targeted searches in parallel.
Let me search directly for the '072 patent's own citation lists.
Scope and a necessary limitation up front
I ran the searches for the specific number 10140072 / US 10,140,072 B2 (only that number — no near neighbours were substituted). Two things must be stated before any §102 analysis, because they govern how much of the answer can be grounded:
- The authoritative "References Cited" / "Patent Citations" section of US 10,140,072 B2 was not retrievable in this session. The full patent text supplied in this task is truncated inside the description (it cuts off at FIG. 7E / the output-controller discussion) and therefore contains no citation table at all. The previously-generated summary cites
https://uspto.report/patent/grant/10140072as containing "full claim text and references cited," but my retrieval attempts for that page's citation table returned nothing usable (one query returned an empty result set; the follow-up queries were cut off by a step limit). That is a live gap, and it is a partial contradiction of the earlier section's sourcing claim — flagging it explicitly. - What I did retrieve is a 543-item "Patent Art" panel attached to the Unified Patents record for US‑10140072‑B2. That panel is a similarity/related-art aggregation, not the examiner's citation list. Mixing the two would be a fabrication risk, so I label every item below with its source and reliability.
Bottom line: I cannot responsibly give you "each patent citation for 10140072" as a verified examiner-cited list. Below is (a) the reference material I could actually retrieve, correctly attributed, and (b) a §102 analysis of that material against claims 1, 8 and 15, with the analytical caveats that matter.
1. Verified bibliographic anchors (from the record)
| Field | Value (as literally recorded) |
|---|---|
| Patent | US 10,140,072 B2 (US10140072B2) |
| Application | 15/494,297; filed 2017-04-21 (Google Patents) / 2017-04-20 (Unified Patents) |
| Granted | 2018-11-27 (Google) / 2018-11-26 (Unified) |
| Priority | 2000-11-01 (Google) / 2000-10-31 (Unified) |
| Examiner | Riley, Marcus T. |
| CPC | G06F3/12x, G06F3/16x, G10L15/22, G10L15/30, G06K15/02, H04W12/06, H04N1/00x, H04L67/x |
| "Prior art keywords" (Google field) | output system; output; wireless communication; data; communication circuitry |
Source: https://patents.google.com/patent/US10140072/en · https://portal.unifiedpatents.com/patents/patent/US-10140072-B2
New data point on the expiration question flagged in the earlier section: Unified Patents lists "Expiration Date: 2021-10-31," "Lifetime Renewal Fees: $0," and "Lifetime Family Renewal Fees: $7,400." A lifetime renewal total of $0 on this patent is consistent with the fee-lapse theory (no maintenance fees ever paid) and is therefore in tension with continued assertion of the '072 in the 2025 E.D. Tex. 2:25-cv-00960 docket. This does not resolve the inconsistency; it adds a third, more specific datum on the "lapsed" side. Still unresolved.
2. The reference material actually retrieved
All items below come from the "Patent Art" panel at https://portal.unifiedpatents.com/patents/patent/US-10140072-B2 (a similarity panel, not the citation record). Dates are as literally displayed. Treat as leads requiring verification, not as the §102 citation list.
| Reference | Date shown | Assignee shown | Title / subject |
|---|---|---|---|
| US 6,195,564 B1 | 1997-09-18 | Ericsson Inc | Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device |
| US 6,801,692 B2 | 2001-02-05 | KDDI Corp | Optical Coupling Structure |
| US 9,164,718 B2 | 2000-10-31 | listed as "[Samsung Electronics Co Ltd](/litigations/by-plaintiff/Samsung%20Electronics%20Co%20Ltd)" | Output Device and Method for Output Without an Output Driver |
| US 6,628,417 B1 | 1998-10-29 | Canon Inc | Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System |
| CN 100334577 C | — | Fuyi Technology Co Ltd | System and Method for Device-to-device Pervasive Digital Output |
| US 2002/0097418 A1 | 2001-01-18 | — | Raster Image Processor and Processing Method for Universal Data Output |
| US 4,291,956 A | 1979-12-16 | 3M Co | Graphic Forming Device with Preview Feature |
| US 5,475,507 A | 1992-10-13 | Fujitsu Ltd | Color Image Processing Method and Apparatus… |
| US 6,952,414 B1 | 2000-09-25 | Advanced Micro Devices | Portable Internet Browser Device with Cordless Phone Module |
| US 7,239,346 B1 | 1999-10-17 | — | System and Architecture that Supports a Multi-function Semiconductor Device Between Networks and Portable Wireless Communications Products |
| US 8,169,649 B2 | — | — | Mobile Device Methods for Enabling Pervasive Wireless Digital Media |
| US 6,215,494 B1 | 1997-12-17 | Hanger Solutions LLC | Method and System for Centering Image Objects |
| US 6,069,707 A | 1996-09-19 | Portalis Ltd | System for Reproducing a Physical Color Image |
| EP 0691619 B1 | 1994-06-26 | — | System for Accessing and Distributing Electronic Documents |
| US 6,199,106 B1 | 1996-04-18 | Juno Online Services | Electronic Mail System with Advertising |
| US 7,929,950 B1 | 1996-12-15 | — | (truncated in source snippet) |
Two metadata cautions: (i) the panel is truncated at 543 items, so this is a fragment; (ii) US 9,164,718 B2 is attributed in the snippet to "Samsung Electronics Co Ltd," which conflicts with its appearance elsewhere in Flexiworld family material. I am not resolving that — I flag it as probable source-side metadata error and do not rely on the assignee field.
Also relevant, retrieved separately: the 77-member family list for the '072 (Unified) includes US 2002/0097418 A1, US 2017/0228202 A1, US 10,140,071 B2, US 10,140,073 B2, US 10,133,527 B2, US 10,387,087 B2, US 10,481,846 B2, US 10,481,847 B2, US 10,761,791 B2, US 10,768,871 B2, US 10,841,798 B2, US 10,846,031 B2, US 10,873,856 B2, US 9,836,259 B2, US 9,836,257 B2, US 9,841,935 B2, US 9,169,718-lineage documents, US 8,169,649 B2, and CN 100334577 C. These are family members / sibling continuations, which normally are not §102 prior art against the '072 (same inventors, common ownership) — but several of them appear in the similarity panel, which is one more reason the panel is not a citation list.
3. §102 analysis against claims 1, 8 and 15
Threshold issue — this determines which §102 applies, and it is unresolved. The '072 as issued claims (i) a sound output system with a voice-activated command interface, microphone and speaker; (ii) a separate portable wireless device (smart phone / internet pad) that performs discovery and supplies authentication information over a short-range link; (iii) a later connection to server(s) over a network including a wireless LAN; and (iv) a voice command → upload a digital content object to the server → return audio output data → playback loop. As the earlier section correctly observes, the specification is a printing/RIP-splitting disclosure and reaches sound only through the generic "output device … voice output devices" definition and "playing an audio representation of the content." If that specific server-mediated voice-command-and-upload loop is not described in the 2000–2002 priority documents, claims 1/8/15 are entitled only to the 2017-04-21 filing date for §102 purposes — which (a) makes the application AIA §102 (not pre-AIA §102(a)/(b)/(e)) the operative provision, and (b) makes the entire 2001–2017 corpus available as §102(a)(1)/(a)(2) art. I cannot settle the priority question from the materials in hand, and it should be the first task in any invalidity or validity analysis.
With that caveat:
US 6,195,564 B1 (Ericsson, 1997-09-18) — "Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device." Discloses automatic establishment of a wireless link between two devices. Maps to claim 8 step (1) and claim 1 limitation (1) ("establishing a wireless communication link … with a portable wireless device"), and arguably claim 15 (3). Does not disclose voice-activated command interface, microphone, audio playback, server-side content-object processing, or WLAN-to-Internet-service coupling. Anticipation of claim 1, 8 or 15 alone? No. Realistic role: §103 secondary reference on the "establishing a wireless link" element.
US 6,628,417 B1 (Canon, 1998-10-29) — "Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System." Image-server architecture with a data communication apparatus. Touches the claim 1 limitation (3) / claim 15 (5) concept of a networked server providing output service. No voice interface, no audio output, no portable-device-supplied authentication. Anticipation: no; §103 candidate only.
US 9,164,718 B2 (2000-10-31) — "Output Device and Method for Output Without an Output Driver." This document shares the same 2000-10-31 priority date as the '072 and appears in the Flexiworld family list. Under §102 it is presumptively not prior art (common inventive entity / family member). Its presence in the panel is a family artefact, not an examiner citation. Do not use as anticipating art absent evidence it is a different inventive entity.
US 6,952,414 B1 (AMD, 2000-09-25) — "Portable Internet Browser Device with Cordless Phone Module and Method of Operation." This is the most structurally interesting item on the list for claim 15, whose portable device is expressly a "smart phone or information pad with a touch-sensitive screen." A portable internet-browser device with a cordless phone module is a plausible §102(a) or §103 reference against the portable-device half of claims 1, 8, 15 and against dependent claim 2 (portable device is a smart phone/internet pad with touch screen) and claim 9/20's "internet appliance" framing. It does not disclose the output-system half (voice-activated command interface, microphone, speaker playback of server-returned audio). Anticipation of the independents: no.
US 7,239,346 B1 (1999-10-17) — "System and Architecture that Supports a Multi-function Semiconductor Device Between Networks and Portable Wireless Communications Products." Bears on claim 5/10/18-type limitations (one or more wireless communication chips or chipsets supporting IEEE 802.11 / Bluetooth) and on the dual-radio architecture of claims 10 and 18 (802.11 for the WLAN plus Bluetooth-or-802.11 for the short-range link). A credible §102 reference for the chipset limitations and a §103 reference generally. Not an anticipator of 1/8/15.
US 8,169,649 B2 — "Mobile Device Methods for Enabling Pervasive Wireless Digital Media" and CN 100334577 C — "System and Method for Device-to-device Pervasive Digital Output" (Fuyi Technology). Both are pervasive-digital-output documents; the latter's title tracks the '072's specification language ("pervasive … digital output") closely enough to suggest a family/PCT counterpart. Treat as family/related, not verified prior art.
US 4,291,956 A (3M, 1979), US 5,475,507 A (Fujitsu, 1992), US 6,215,494 B1 (1997), US 6,069,707 A (1996), US 6,801,692 B2 (KDDI, 2001), US 6,199,106 B1 (Juno, 1996), US 7,929,950 B1 (1996), EP 0691619 B1 (1994). These map to the raster/RIP/color/image/document-distribution backbone of the specification (rasterization, color space conversion, halftoning, document distribution, email advertising) rather than to claims 1/8/15. They are plausible citations against the RIP-splitting subject matter that pervades the description but is essentially absent from the issued claims. For the voice/audio claims: no §102 relevance.
US 2002/0097418 A1 (2001-01-18) — "Raster Image Processor and Processing Method for Universal Data Output." Flexiworld family publication. Not prior art; relevant only as a priority/continuity anchor.
4. Direct answer to the question as posed
- Which single reference anticipates claim 1, 8 or 15? On the retrieved material, none. Each independent claim requires the full ordered combination — portable-device-assisted discovery/authentication → WLAN connection to a server → voice command → transmission of a digital content object to the server → receipt of audio output data → playback through the speaker. Every retrieved reference is missing at least the voice-activated-command-via-microphone element and the server-side content-object round trip. §102 anticipation requires disclosure of every limitation arranged as in the claim, so anything short of that is an obviousness argument, not anticipation.
- Which claim(s) could a reference plausibly anticipate or render obvious? The realistic targets are the dependent claims: claim 2 / claim 15's portable-device recitations (US 6,952,414 B1); claims 5, 10, 18 (chipsets/chipsetsets for IEEE 802.11 and Bluetooth) (US 7,239,346 B1); claim 4's Bluetooth-or-802.11 link (US 6,195,564 B1). Indepenent claims 1, 8, 15 face §103 exposure from combinations, not §102.
- §102 subsection: pre-AIA §102(a)/(b)/(e) if all claims hold 2000–2002 priority; AIA §102(a)(1)/(a)(2) if the voice-command claims get only the 2017-04-21 date. This is the single most consequential open question and it changes the entire prior-art corpus.
5. What is still missing, and how to close it
To complete the task as specified — full citation, publication/filing date, description, and per-claim §102 mapping for each reference of record — the following must be pulled directly:
- The "References Cited" table on the face of the printed grant (USPTO PatentCenter / Patent Full-Text,
patftor the PDF athttps://patents.google.com/patent/US10140072/en→ "Citations" tab). Include both the U.S. Patent Documents, Foreign Patent Documents, and Other Publications / Non-Patent Literature sub-tables — the NPL is frequently where voice-command and wireless-service art sits in this family. - The examiner's Form 892 / IDS contents in the file wrapper for 15/494,297, which distinguishes examiner-cited art from applicant-submitted art — materially different for §102 vs §103 framing.
- The prosecution-history record of the parent 10/053,765 / 09/992,413 applications, to test the written-description support for the voice-command-and-upload limitations and thereby fix the effective filing date.
I will not fill this gap with plausible-looking references; doing so would be fabrication. The list in §2 is what the record actually returned, and it is explicitly a similarity panel rather than a citation list.
Generated 9/15/2026, 12:49:04 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll verify the key references from the Prior Art section before building the §103 analysis.
Key references confirmed. Let me check two more from the panel and probe whether any additional voice/audio art is verifiable.
Obviousness Analysis — US 10,140,072 B2 under 35 U.S.C. § 103
Scope note. This analysis is built on the references retrieved in the Prior Art section of this record. I carry forward that section's two governing caveats verbatim: (1) the reference set came from a 543-item "Patent Art" similarity panel on the Unified Patents page for US-10140072-B2, not from the examiner's "References Cited" table, and (2) the printed grant's citation table was never successfully retrieved. Nothing below should be read as "the examiner cited these." Everything below is a § 103 argument a petitioner could make from this corpus — and where the corpus cannot carry a limitation, I say so rather than filling the gap.
1. The legal frame, and why the priority question controls everything
Governing provision is unresolved and dispositive. IPR2022-00775 (Unified v. Flexiworld, on sibling US 9,836,257) applied pre-AIA § 103(a) and Flexiworld defeated it by swearing behind two § 102(e) references — establishing conception no later than 2000-10-22 with corroboration, plus diligence. See https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/. That matters far more than it first appears:
- Under pre-AIA § 103(a), Flexiworld can antedate any reference whose § 102(e) date post-dates its 2000-10-22 conception. It cannot antedate references with a § 102(e) date before ~2000-10-22.
- Under AIA § 102(a)(2)/§ 103, the swear-behind tool collapses to the narrow § 102(b)(2) exceptions (derivation, prior public disclosure, common ownership), so Art would be available on the reference's own filing date regardless of Flexiworld's Oct-2000 drafts.
Two of the three strongest references in this panel sit on the safe side of 2000-10-22:
| Reference | US filing date | § 102(e) date | Swear-behind-proof? |
|---|---|---|---|
| US 7,239,346 B1 (Priddy) | 1999-10-18 | 1999-10-18 | Yes — predates 2000-10-22 |
| US 6,952,414 B1 (AMD/Willig) | 2000-09-26 | 2000-09-26 | Yes — predates 2000-10-22 |
| US 6,195,564 B1 (Ericsson) | 1997-09-19 | 1997-09-19 | Yes; and PCT WO 99/16280 published 1999-04-01, before the 1999-11-01 § 102(b) critical date |
(Sources: https://insight.rpxcorp.com/patent/[US7239346B1](/patent/US7239346B1) ; https://portal.unifiedpatents.com/patents/patent/US-[6952414](/patent/6952414)-B1 ; https://portal.unifiedpatents.com/patents/patent/US-[6195564](/patent/6195564)-B1 ; https://patents.google.com/patent/AU748111B2)
This is the single most important § 103 finding in this analysis. A petitioner who builds on 1999–2000-filed art does not have to win the antedating fight that beat Unified. A petitioner who builds on 2001+ art will lose the same way. Every combination below is therefore deliberately built on pre-October-2000 filings.
Ordinary skill level. For a 2000–2001 priority date, a POSITA would be a person with a bachelor's degree in electrical engineering, computer engineering, or computer science and roughly 2–4 years of experience in wireless networking, embedded/handheld device design, or network service architecture, or equivalent work experience. That person knew IEEE 802.11b and Bluetooth were both emerging in the 2.4 GHz ISM band, knew handheld devices were converging browser + radio + audio input/output, and knew that network-delivered media required authentication and a server-side content store.
No reference anticipates claims 1, 8, or 15. § 102 requires every limitation arranged as claimed. None of the retrieved references discloses the full ordered chain — portable-device-assisted discovery/authentication → WLAN connection to server → voice command → transmission of a digital content object to the server → audio output data returned → playback through the output system's speaker. This is an obviousness case, not an anticipation case.
2. Reference-by-reference: what each actually teaches
US 7,239,346 B1 — Priddy, filed 1999-10-18, issued 2007-07-03
The most under-appreciated reference in the panel. It is nominally an imaging module, but its written description repeatedly and explicitly recites the non-imaging limitations at issue:
- "voice activated commands": "the functions and capabilities of the device may be activated via the use of physical buttons on a keypad, electronic buttons or menus on a display screen, automatic data sensing, or voice activated commands, as deemed suitable or as may be available with the host product." (https://patents.google.com/patent/US7239346)
- Authentication before remote service access: "remote activation or initiation of functions on computer peripherals, distant servers, or consumer appliances, preferably in a secure manner, whereby only authenticated individuals can execute such functions… a unique digital security/authentication code, such as an electronic or digital signature, or a digital token… transmitted along with a resource locator address to a remote server computer to provide the user with access to certain application software, data or remote control of a remote device… achieved after the user's identity is authenticated or an access code or personal identification code is identified."
- Biometrics as the authentication credential (claims 11, 16): "biometric verification/authentication as a gate for accessing and subsequently authorizing transmission of personal data"; claim 15 claims a "sensor responsive to a biometric attribute" and "a processor… for verifying the biometric attribute."
- Integrated wireless chipset (claims 5, 10, 18): claim 1 recites a single integrated circuit containing "means for providing a wireless communication including an antenna, a transmitter, a receiver, a wireless communication protocol and an Internet browser" — literally a wireless chip/chipset with a browser stack.
- Physical proximity / local-area reception: "receive television or other digital image broadcasts from… corporate or private wide-area and local-area networks, or the Internet" and "a remote location, which may be physically distant or proximate to the user."
US 6,952,414 B1 — Willig / AMD, filed 2000-09-26, issued 2005-10-04
- A portable access device (PAD) with an LCD touch screen interface, a touch-screen software keyboard, an RF transceiver communicating with a base station coupled to an IP network, an Internet browser, microphone 140, and speaker 150. (https://patents.google.com/patent/[US6952414B1](/patent/US6952414B1))
- Expressly compares itself against "a conventional personal computer" and against a "Geode™ WebPAD™ system from National Semiconductor" — i.e., it teaches the internet-appliance / internet pad class that claims 2, 9, 15, and 20 recite, as distinct from a conventional PC.
- Teaches link establishment triggered by a detected condition (separation of modules) and a special-purpose packet sent to the base station to establish the connection — relevant to claims 3, 13, and 20's "providing an indication / facilitating discovery."
US 6,195,564 B1 — Croft et al. / Ericsson, filed 1997-09-19, granted 2001-02-26 (PCT WO 99/16280 published 1999-04-01)
- Automatic establishment of a short-range wireless link between a portable computer and a wireless phone/modem, symmetric standby monitoring, paging, and message transfer over the short-range link plus a second link to a data network.
- The link is "preferably implemented using radio frequency signals in the 2.4 GHz range." (https://patents.google.com/patent/AU748111B2) That is the band both IEEE 802.11b and Bluetooth occupy — directly probative of claims 4, 5, 10, 14, and 18.
- The PTAB's own IPR2022-00775 panel treated this family of "wireless link + network access" art as pre-2000 and as § 102(e)-dated; the antedating loss there was about specific later references, not about this class.
US 6,628,417 B1 — Canon
Data communication apparatus + image server + image system. Server-mediated output service architecture; the panel's best (weak) hook for the "server(s) that provide at least in part a service" limitation. No voice, no audio.
US 6,199,106 B1 (Juno), EP 0691619 B1, US 7,929,950 B1, US 6,215,494 B1, US 6,069,707 A, US 4,291,956 A, US 5,475,507 A, US 6,801,692 B2
Document distribution, e-mail-with-advertising, raster/color/halftone and image-centering art. These map to the RIP-splitting backbone of the specification, not to the issued claims. Marginal § 103 value; useful only for claim-drafting context or to show the field was crowded.
Excluded as Flexiworld's own work (not § 102/§ 103 art)
- US 8,169,649 B2 — "Mobile device methods for enabling pervasive wireless digital media," inventors Chang & Liu, assignee Flexiworld Technologies, Inc., filed 2009-10-19, priority 2001-01-19. (https://insight.rpxcorp.com/patent/[US8169649B2](/patent/US8169649B2) ; https://www.flexiworld.com/patent/us-[8169649](/patent/8169649)/) Same inventive entity and same assignee → excluded under pre-AIA § 103(c) / AIA § 102(b)(2)(C).
- US 2002/0097418 A1 — Flexiworld's own family publication. Same exclusion.
- CN 100334577 C and US 9,164,718 B2 — identity/ownership unresolved in this record (the panel attributed '718 to "Samsung Electronics" while it appears on Flexiworld family lists; the CN reference could not be verified before this session's tool limit). Do not use either as art until ownership and dates are confirmed from primary records.
3. The combinations
Combination I — Primary case against claim 8 (and the portable-device half of claims 1 / 15)
US 7,239,346 B1 + US 6,952,414 B1 + US 6,195,564 B1
| Claim 8 step | 7,239,346 | 6,952,414 | 6,195,564 |
|---|---|---|---|
| (1) short-range wireless link from output system to a distinct portable wireless device (smart phone / information pad) | module incorporated into "cellular/satellite telephones, wireless empowered Personal Digital Assistants (PDA), portable computers"; wireless protocol + antenna | PAD with RF transceiver ↔ base station; touch screen | wireless link between portable computer and wireless phone; 2.4 GHz |
| (2) receive information (authentication) from the portable device over the link | digital security/authentication code, digital signature/token, biometric, access code/PIN, encrypted transmission, sent with a resource locator to a remote server | — | message transfer over the link |
| (3) couple the output system to a network including a wireless LAN | wireless interface protocols for "the Internet and other networked computer systems"; WLAN/WAN/LAN reception | base station "connected by wireline to the public switched telephone network or to a proprietary local area network (LAN)"; IP network | second link to a data network |
| (4) access server(s) providing a service accessible over the Internet | "access to certain application software, data or remote control" at "a remote server computer" | IP-network / browser access | Internet service provider |
| (5) receive a voice command | "voice activated commands" (express) | — | — |
| (6) receive audio output data from the server after the voice command | image/audio capture + remote storage/forwarding; audio-visual IF | VoIP voice data to/from base station; "video and audio signals" | — |
| (7) play the audio | — | speaker 150 | — |
Motivation to combine (KSR / MPEP 2143 rationales 1, 2, 4, 6, 7):
- Explicit teaching in the references themselves. Priddy states its object is to "overcom[e] the[se] deficiencies… and provide users of wireless telecommunications technology an enhanced utility and functionality without diminishing or altering the original capabilities of the host portable two-way communication device," and lists suitable hosts as including PDAs and portable computers. That is a textual invitation to combine the module with any handheld host.
- Same field, same problem. All three address the same problem: a portable device needing authenticated, transparent wireless access to networked content and services. See In re Keller / In re Merck — combination is proper where references are in the same field of endeavor and the combination does no more than the parts do separately.
- Predictable result. Combining a browser-equipped handheld (6,952,414), an integrated wireless-communication-plus-browser chipset with authentication (7,239,346), and automated short-range link setup (6,195,564) yields nothing more than the expected sum: a handheld that automatically connects and authenticates to a network. KSR, 550 U.S. 398, 416–17 (2007).
- Design incentive / trend. The pervasive-computing and mobile-Internet design trend, plus the references' own stated concern about hardware redundancy across web-enabled devices (6,952,414, Background), supplies a market and engineering incentive to consolidate these functions.
Combination II — Primary case against claims 1 and 15 (the output-system half)
US 6,952,414 B1 + US 7,239,346 B1 + US 6,195,564 B1 + US 6,628,417 B1 (with a network media-service reference — see § 4 gap analysis)
By substituting 6,952,414's PAD/base-station architecture as the near-side and treating the base-station-to-server path as the server coupling, the combination reaches: voice-activated command interface (7,239,346), microphone and speaker (6,952,414's microphone 140 / speaker 150), wireless discovery and link establishment (6,195,564's paging + 6,952,414's detection-triggered packet), authentication (7,239,346), and server-side service access (6,628,417).
Additional rationale — use of a known technique to improve a similar device in the same way (MPEP 2143 rationale 3). Priddy's device and Willig's PAD are both handheld wireless terminals with audio transducers; applying Priddy's authentication/voice-activation teachings to Willig's PAD is the straightforward substitution of one known input/security element for another, with a predictable result. KSR; In re Fout.
Combination III — Dependent-claim mapping (the likely battleground)
| Claim(s) | Limitation | Best reference | Strength |
|---|---|---|---|
| 2, 9, 15, 20 | portable device is smart phone / internet pad with touch screen; output system is speaker or internet appliance, not a conventional/desktop/laptop PC | 6,952,414 (PAD, LCD touch screen, expressly distinguished from "a conventional personal computer"); 6,195,564 (portable computer + wireless phone) | Strong |
| 3, 13, 20 | indication / user-initiated discovery; discovery based on physical proximity | 6,195,564 (link established when devices "move in and out of range"); 6,952,414 (separation-detection triggers connection packet); 7,239,346 ("physically distant or proximate") | Moderate |
| 4, 14 | Bluetooth or IEEE 802.11 short-range link | 6,195,564 (2.4 GHz RF link) + POSITA knowledge that 802.11b and Bluetooth operate in 2.4 GHz | Moderate — needs the POSITA-knowledge bridge |
| 5, 10, 18 | wireless communication chips/chipsets supporting IEEE 802.11 (+ Bluetooth) | 7,239,346 claim 1 — single integrated circuit with antenna, transmitter, receiver, wireless communication protocol and an Internet browser | Strong |
| 6, 11, 16, 17 | authentication: username, password, ID number, PIN, biometrics, security key; subscription/ID/security info; authentication procedure | 7,239,346 — PIN/access code, biometric verification, digital signature/token, "authenticated individuals" | Strong |
| 12, 19 | send a content object in response to voice command; receive returned audio | 7,239,346 (capture + wireless transmit of a digital object to a remote location) + 6,952,414 (voice/audio IP packets) | Weak-to-moderate |
| 13, 17 | service over the Internet with subscription/ID/security info provided by the system; physical proximity discovery | 6,628,417 (server-mediated output service) + 7,239,346 (resource locator + authenticated access) | Weak |
| 7 | downloading/installing application software or upgrades after connecting | No verified reference in this corpus | Not supported |
4. Where the § 103 case breaks down — stated plainly
- The "voice command → upload a digital content object → server returns audio → playback" loop is not disclosed as an integrated sequence by any verified reference. 7,239,346 mentions voice-activated commands in a single permissive sentence; 6,952,414 has voice data (VoIP) and a speaker but no voice command; neither has a server processing an uploaded content object and returning audio output data. This sequence is the heart of claims 1(4)–(7), 8(5)–(7), and 15(6)–(8). Making this obvious requires either (a) a network media/music service reference plus a voice-recognition-front-end reference — neither of which is in the retrieved panel — or (b) a strong "obvious to try" argument resting on general POSITA knowledge as of 2000, which is weaker footing.
- The "sound output system" as a stand-alone appliance (speaker + microphone + voice interface + wireless circuitry, separate from the phone) is not squarely disclosed. 6,952,414's microphoned device is a handheld PAD/phone, not a speaker appliance. Substituting the appliance for the handheld changes the architecture the claims require — the portable device must remain a separate device in claims 1(1) and 8(1).
- US 8,169,649 B2 looks like a perfect anticipating reference and is not available. It discloses smart phone / information pad, wireless discovery, wireless connection to output devices incl. televisions and media players, security-key authentication, and encoded/compressed digital content transfer — but it is Chang & Liu's own Flexiworld patent (priority 2001-01-19). It is statutorily excluded from the § 103 case by common inventorship/ownership. Any petitioner who puts it in a chart hands Flexiworld a dispositive motion.
- The claim-16 "(b)" antecedent-basis defect and claim 10's truncated final clause (flagged in the earlier claim overview) are § 112 issues, not § 103 issues, and do not help an obviousness case — but they are worth keeping in a separate lane, since the § 112/written-description lane on "voice activated commands" and "output system / Internet appliance" scope remains entirely untested (per the PTAB section, no AIA trial has ever been instituted on '072).
- The examiner allowed these claims. Marcus T. Riley's allowance means whatever was of record was overcome. Without the Form 892 and the "References Cited" table, we cannot know whether the panel's references were ever before him — and a § 103 argument over references the examiner already considered must be materially stronger than "these references exist."
5. Secondary considerations and objective evidence
- No secondary considerations are established on this record. There is no evidence of commercial success of a Flexiworld product embodying the claims (the assignment section found Flexiworld classified as a "Failed startup" by Stanford's NPE database and identifies no product in commerce), no evidence of long-felt unmet need beyond the specification's own generic statements, and no copying evidence. Nexus would be very hard to establish in any event given the absence of a product.
- Flexiworld's own specification is usable as an admission of what the art already contained. It characterizes conventional output devices, drivers, RIP operations, PDL controllers, and wireless/wired interfaces in detail, and expressly states that "Output devices may include… audio output devices" and that rendering includes "playing an audio representation of the content." That framing is available to a petitioner as evidence of the POSITA's baseline knowledge at the relevant time.
6. Bottom line
| Question | Answer |
|---|---|
| Does any retrieved reference anticipate claims 1, 8, or 15? | No. No reference discloses the complete ordered voice-command → content-object-upload → server-returned-audio → playback chain. |
| Are the claims obvious over the retrieved corpus? | Yes, for the portable-device-assisted setup, discovery, authentication, and wireless-chipset limitations (Combinations I and III), with moderate confidence, using US 7,239,346 + US 6,952,414 + US 6,195,564 — all three of which have pre-2000-10-22 § 102(e) dates and therefore cannot be defeated by Flexiworld's proven swearing-behind package. |
| Are the claims obvious as to the output-system/voice/service core? | Not established on this record. Combination II is incomplete; it requires art in the network media service and voice-recognition lanes that the retrieved panel does not contain. This gap is the single largest risk to any § 103 case built from these results. |
| What is the threshold task? | Determine, claim by claim, from the '072 file history, whether the claims are pre-AIA or AIA. That determination selects (a) whether the 2000-10-22 swear-behind package applies, and (b) whether post-2001 art is even usable. It should be resolved before any petition or invalidity contention is drafted. |
| Does expiration moot this? | It reduces but does not eliminate the need. Both Google Patents ("Expired – Fee Related," anticipated 2021-11-01) and Unified (expiration 2021-10-31, $0 lifetime renewal fees) point to a term that ran out in late 2021. The Amazon case was filed 2020-06-22 and the Hisense cluster in 2022 — so a § 103 analysis still governs the pre-expiration damages window. It is much less useful against the 2025 LG assertion. Confirming this on USPTO PatentCenter maintenance-fee records is the cheapest, highest-value next step in the whole file. |
Caveat on sources for this section. US 7,239,346, US 6,952,414 and US 6,195,564 were verified this session against the patent PDFs and Google Patents / RPX / Unified records linked above. US 6,628,417 was verified only as to bibliographic identity and subject matter (https://portal.unifiedpatents.com/patents/patent/US-6628417-B1) — I did not verify a specific server-architecture passage, so its mapping to claim 8(4)/15(5) is a lead, not a citation. CN 100334577 C and US 9,164,718 B2 remain unverified as to content, dates, and ownership and I do not rely on either. No reference number in this analysis was substituted, corrected, or normalized.
Generated 9/21/2026, 1:57:43 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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This patent in court (2)
2 tracked lawsuits name US 10140072.