Invalidity dossier
US 10140073
Wireless devices that establish a wireless connection with a mobile information apparatus by wirelessly detecting, within physical proximity, the mobile information apparatus
Current assignee: Flexiworld Technologies, Inc.
Added 8/28/2026, 12:01:17 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 details on this specific patent number.
Let me pull the actual claim text and check for any CAFC activity.
US Patent 10,140,073 — Summary
Important caveat up front: I was able to retrieve bibliographic data, the granted abstract, and the text of several claims. I was not able to retrieve the verbatim full text of every independent claim. Statements about claim scope below drawn from dependent-claim cross-references and the specification are flagged as inference, not verbatim quotation. I did not obtain direct USPTO PatentCenter or CAFC PACER access in this session; my sources were Google Patents (full family text), uspto.report, Justia Patents, and the Unified Patents litigation/PTAB portal.
Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 10,140,073 B2 (literal: 10140073) |
| Title | Wireless devices that establish a wireless connection with a mobile information apparatus by wirelessly detecting, within physical proximity, the mobile information apparatus |
| Inventors | William Ho Chang (Vancouver, WA); Christina Ying Liu (San Francisco, CA) |
| Original assignee | Flexiworld Technologies, Inc. |
| Current assignee | Flexiworld Technologies, Inc. |
| Application no. | 15/627,197 |
| Filing date | June 19, 2017 (Google Patents authority) |
| Pre-grant publication | US 2017/0286027 A1, published Oct. 5, 2017 |
| Issue/publication date | November 27, 2018 |
| Earliest priority | November 1, 2000 (priority claimed from US 10/016,223 → US 7,941,541 B2, and US 09/992,413 → US 9,965,233 B2) |
| Assignment recorded | July 18, 2017 |
| Legal status | Expired – Fee Related; anticipated expiration November 1, 2021 |
| Exemplary examiner | Marcus T. Riley |
Date discrepancies to note (I am not auto-correcting these): The Unified Patents portal lists the same application as priority date 2000-10-31, application date 2017-06-18, and grant date 2018-11-26 — each one day earlier than the Google Patents record. These are likely time-zone/rollover artifacts in one of the databases, but per instructions I am reporting both literal readings rather than harmonizing them. Separately, a Golden.com wiki entry renders the patent number as "101400730," which does not match the grant number; I treat that as a third-party transcription error, not an identifier for this patent.
Abstract (granted patent, verbatim)
"Wireless devices that establish a wireless connection with a mobile device (e.g., smart phone) by wirelessly detecting the mobile device within a physical proximity, are herein disclosed and enabled. To set up a wireless device (e.g., Bluetooth devices, audio output devices, television controllers, Internet appliances, digital cameras, etc.) for connecting with a smart phone, the wireless device and the smart phone are simply placed within physical proximity of each other for short range wireless detection. During the wireless detection, the smart phone and the wireless device may exchange, transmit, or receive device or security information to facilitate future wireless connections. Subsequent to the short range wireless detection, the wireless device and the smart phone are connected or locked for future wireless communications (e.g., Bluetooth or IEEE802.11), and future wireless connections between the wireless device and the smart phone can be established without having to repeat the short range wireless detection."
(The pre-grant publication 2017/0286027 A1 carries a slightly narrower abstract omitting the "device or security information" and "IEEE802.11" language — the granted abstract is broader in phrasing.)
Plain-language overview of the independent claims
The granted patent contains at least 16 claims. From the cross-references in the claims I retrieved, the independent claims appear to be claim 1 (method), claim 8 (apparatus — "a wireless device"), and claim 16 (method). I could not confirm whether additional independent claims exist beyond 16, nor the total claim count.
Claim 1 — Wireless connection method (verbatim status: not retrieved).
Confirmed only indirectly: claim 6 recites "[t]he wireless connection method according claim 1, wherein the wireless device further includes an interface with at least a b[utton]…". This establishes claim 1 as an independent method claim directed to a wireless device engaging in short-range, proximity-based wireless detection of a mobile information apparatus (e.g., a smart phone) to establish a wireless connection. The exact preamble and step language of claim 1 is an inference from dependent claims and the abstract, not a verbatim quote.
Claim 8 — Wireless device (apparatus) (verbatim status: partially reconstructed).
Claim 10, which depends on claim 8, walks through numbered operations "…(4)…establishing the wireless communication link," "(5)…wirelessly receiving the data or the information from the mobile information apparatus," and "(6)…wirelessly send response information over the established wireless communication link in (4) … the response information includes at least one of status information, reply information, device attribute information, or user interface information, individually or in any combination; and (7) repeats any combination of steps or operations in (5) and in (6), thereby the wireless device is operable to be wirelessly managed or to be wirelessly driven by the mobile information apparatus."
In plain terms, claim 8 appears to cover a wireless device (with wireless communication circuitry and memory, typically Bluetooth chipset-based) that:
- wirelessly detects — or is detected by — a mobile information apparatus when the two are physically close (proximity-based short-range discovery);
- exchanges device/proximity information during that detection;
- establishes a wireless communication link; and
- thereafter acts as a wirelessly managed/driven peripheral of the phone (receiving data and returning status/attribute/UI information).
Steps (5)–(7) may reside in claim 10 rather than claim 8; I cannot confirm the boundary. Flagged as uncertain.
Claim 16 — Wireless connection method for a wireless device serving client devices, at least one being a smart phone (verbatim, partly quoted):
"A wireless connection method for a wireless device to establish wireless connections with one or more client devices, at least one client device of the one or more client devices is a smart phone, the wireless device includes: wireless communication circuitry and memory for storing at least a device object or device information related to the wireless device, the device object or device information to facilitate the one or more client devices identifying or selecting the wireless device for service, wherein the wireless connection method comprises:
(1) using the wireless communication circuitry of the wireless device to wirelessly detect the smart phone or to be wirelessly detected by the smart phone, the wireless detection is when the wireless device is within a physical distance to the smart phone, and the wireless detection is based, at least in part, on physical proximity between the wireless device and smart phone;
(2) using the wireless communication circuitry of the wireless device to wirelessly transmit the device object or the device information that is stored in the memory of the wireless device to the smart phone, the wireless transmission … is subsequent to the wireless device having wirelessly detected the smart phone or having been wirelessly detected by the smart phone in (1), … is based, at least in part, on physical proximity … and wireless transmission is while the wireless device is within the physical distance…" (text truncated in the retrieved source)
In plain terms: a two-way proximity-discovery method in which the wireless device advertises/stores a device object, is discovered within physical distance of a smart phone, transmits that device object to the phone, and then uses it so the phone can identify, select, and later reconnect to the device without repeating discovery.
Representative dependent claims (verbatim excerpts retrieved, useful for scope):
- Cl. 11 — the device includes one or more chips/chipsets supporting at least part of a Bluetooth protocol, used to establish the Bluetooth-compatible link.
- Cl. 12 — the wireless device is (a) a Bluetooth-enabled audio output device receiving audio data, or (b) a display/projection/television/television-controller device receiving video or audio data.
- Cl. 13 — the chipset also supports IEEE 802.11; the received data includes security/authentication information for establishing a WLAN connection.
- Cl. 14 — the device includes a button/voice-command interface, and detection is initiated by user indication; the mobile apparatus is a smart phone, information pad, Internet-Phone, digital camera, e-book, or Internet appliance.
- Cl. 15 — the wireless device is a wireless printing device, and the received data includes print data or a print job.
Litigation and post-grant activity
The Google Patents record flags this patent family as having litigation. Inter partes/post-grant items identified:
- PTAB: IPR2022-01112 — filed (status: Settlement). Petitioner listed as Unified Patents.
- District court cases listed:
- California Central District, 8:21-cv-00807
- Texas Western District, 6:21-cv-00680
- Kentucky Eastern District, 5:22-cv-00097 and 5:22-cv-00098
- Tennessee Western District, 2:22-cv-02237
- Texas Eastern District, 2:22-cv-00227
- New York Western District, 6:23-cv-06371 (flagged "Critical")
- A "first worldwide family litigation" entry appears via Darts-ip (family 22998933).
CAFC / 2026 dockets: My search for Flexiworld Federal Circuit activity, including any 2026 appeal docket, returned no results. I therefore have no evidence of a Court of Appeals for the Federal Circuit docket in 2026 involving US 10,140,073. I cannot affirmatively confirm the absence of such a docket, because I did not query the CAFC's own docket system or PACER directly — treat this as "not found," not as "verified none."
Enforcement-relevant note
The patent's recorded legal status is Expired – Fee Related, with anticipated expiration November 1, 2021, and the Unified Patents portal shows $0 lifetime renewal fees paid on this grant. That is significant: a lapse for non-payment of maintenance fees would terminate enforceability of this particular grant as of that date, notwithstanding the earlier litigation activity. Before relying on this for any enforcement analysis, confirm the fee/lapse status directly in USPTO PatentCenter, since third-party status fields are explicitly disclaimed as assumptions by the sources themselves.
Generated 9/15/2026, 6:48:09 PM
Cases on file (7)
Group view →Specific litigation cases in our database that name US patent 10140073. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Flexiworld Technologies, Inc. v. Sony Corporationfiled Dec 19, 20232:23-cv-00616U.S. District Court for the Eastern District of Texas, Marshall Division (Judge Rodney Gilstrap)terminated May 29, 2025dismissed with prejudice
Defendants: Sony Corporation
Other patents asserted: 10133527, 9836259B2, 11096056B2, 9798516B2, 9042811B2, 10768871B2, 11029903B2, 10162596B2, 10037178, 10387087, 10489096, 10642576, 10846031, 10866773, 7609402, 9836257, 9965233
- Flexiworld Technologies, Inc. v. Hisense (multi-entity defendant group)filed Oct 31, 20221:22-cv-04338U.S. District Court for the Northern District of Georgiadisposition unconfirmed
- Roku, Inc. v. Flexiworld Technologies, Inc.filed Jun 30, 2022IPR2022-01112USPTO Patent Trial and Appeal Boardterminated Oct 31, 2022terminated – settled
Defendants: Flexiworld Technologies, Inc.
- 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, 10140072
- Flexiworld Technologies, Inc. v. Brothers Industries (U.S.A.), Inc.filed Apr 15, 20222:22-cv-02237United States District Court for the Western District of Tennessee, Memphis Divisionterminated Mar 13, 2023settled; consent judgment entered with prejudice
Defendants: Brothers Industries (U.S.A.), Inc.
- Flexiworld Technologies, Inc. v. Roku, Inc.filed Jun 28, 20216:21-cv-00680U.S. District Court for the Western District of Texassettled/dismissed
Defendants: Roku, Inc.
- Flexiworld Technologies, Inc. v. Epson America, Inc.filed Apr 29, 20218:21-cv-00807U.S. District Court for the Central District of Californiasettled/dismissed
Defendants: Epson America, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US 10,140,073 across patent litigation sources.
Good initial results. Let me drill into the specific dockets and remaining cases.
Litigation involving U.S. Patent No. 10,140,073 ("the '073 patent")
Patent: US 10,140,073 B2 — "Wireless devices that establish a wireless connection with a mobile information apparatus by wirelessly detecting, within physical proximity, the mobile information apparatus"
Application: 15/627,197 (filed 2017‑06‑19) • Granted: 2018‑11‑27 • Assignee: Flexiworld Technologies, Inc. • Inventors: William Ho Chang, Christina Ying Liu
Asserting party in all identified district‑court actions: Flexiworld Technologies, Inc. (single‑plaintiff campaign; no co‑plaintiffs or assignees identified)
I did not auto‑correct any identifiers; all case numbers and patent numbers below are transcribed as they appear in the sources.
Summary table
| # | Case | Court | Case No. | Filed | Patents asserted (incl. '073) | Status / outcome |
|---|---|---|---|---|---|---|
| 1 | Flexiworld Technologies, Inc. v. Epson America, Inc. | C.D. Cal. | 8:21‑cv‑00807 | 2021‑04‑29 | 14 patents incl. '073 | Settled; action dismissed (no merits ruling) |
| 2 | Flexiworld Technologies, Inc. v. Roku, Inc. | W.D. Tex. | 6:21‑cv‑00680 | ~2021‑06‑28 | '073 among asserted patents | Settled; jointly dismissed (case had been stayed) |
| 3 | Flexiworld Technologies, Inc. v. Lexmark International, Inc. | E.D. Ky. (Lexington) | 5:22‑cv‑00097‑KKC (lead); 5:22‑cv‑00098‑KKC, 5:22‑cv‑00110‑KKC (members) | 2022‑04‑14/15 | 7609402, 10140073, 10481846, 10761791 | Partial motion to dismiss mooted/denied (Op. & Order 2023‑03‑20); final disposition not confirmed in my sources |
| 4 | Flexiworld Technologies, Inc. v. Brothers Industries (U.S.A.), Inc. | W.D. Tenn. | 2:22‑cv‑02237 | 2022‑04‑15 | 10481846, 10761791, 7609402, 10140073 | Consent judgment / dismissal with prejudice (2023‑03‑13) |
| 5 | Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al. | E.D. Tex. | 2:22‑cv‑00227 | 2022‑06‑24 | 10768871, 7609402, 10140073, 10140072, 10387087 | Not confirmed |
| 6 | Flexiworld Technologies, Inc. v. Hisense (multi‑entity defendant group) | N.D. Ga. | 1:22‑cv‑04338 | 2022‑10‑31 | '073 listed | Not confirmed (second Hisense action) |
| 7 | Flexiworld Technologies, Inc. v. Xerox Corporation | W.D.N.Y. | 6:23‑cv‑06371 | 2023 (exact date not confirmed) | 10481846, 10761791, 10140073 | Dismissed with prejudice by stipulation (Fed. R. Civ. P. 41(a)(1)(A)(ii)); each side bears own costs |
| 8 | Flexiworld Technologies, Inc. v. Sony Corporation | E.D. Tex. (Judge Rodney Gilstrap) | 2:23‑cv‑00616 | 2023‑12‑19 | 7 patents incl. 10140073 (also 10037178, 10387087, 10489096, 10642576, 10768871, 10846031, 10866773, 11029903, 11096056, 7609402, 9042811, 9836257, 9836259, 9965233 per aggregated report) | Dismissed with prejudice by joint stipulation, 2025‑05‑29 (527 days); no damages |
| — | Roku, Inc. v. Flexiworld Technologies, Inc. (PTAB) | USPTO PTAB | IPR2022‑01112 | 2022‑06‑30 | Challenges claims 1–20 of '073 | Terminated – settled, 2022‑10‑31 (pre‑institution settlement) |
Case detail
1. Epson America — 8:21-cv-00807 (C.D. Cal.)
Filed 2021‑04‑29 before Judge Christina A. Snyder, reassigned to Judge Andre Birotte Jr. (Magistrate Judge Douglas F. McCormick). Epson answered with a jury demand on 2021‑08‑23, denying infringement of any valid claim. Roku's later IPR petition identifies this case as one in which Flexiworld had asserted the '073 patent. The docket shows an "Order Dismissing Civil Action," and trade reporting (Actionable Intelligence) states the parties settled. No claim construction, validity, or infringement ruling on the merits.
2. Roku — 6:21-cv-00680 (W.D. Tex.)
The '073 patent was asserted against Roku here (Roku's IPR petition Ex. 1021 references Flexiworld's infringement allegations in "6‑21‑cv‑00680 (W.D. Tex.) (Jun. 28, 2021)"). The IPR petition states the case "is currently stayed." Flexiworld and Roku settled and jointly moved to dismiss. Note: a separate, earlier Flexiworld v. Roku matter, 6:20‑cv‑00819‑ADA, is discussed in the Lexmark opinion but concerns different patents ('064, '114, '066) and is not the '073 suit.
3. Lexmark — 5:22-cv-00097-KKC et al. (E.D. Ky.)
Lead case 5:22‑cv‑00097‑KKC (Judge Karen K. Caldwell), with numbered member cases including 5:22‑cv‑00098 and 5:22‑cv‑00110. The complaint in 5:22‑cv‑00098 attached exhibit lists including "Exhibit 2 – US10140073" and "Exhibit 6 – Claims Chart for US10140073," which confirms the '073 patent was asserted in this consolidated action, alongside US 7,609,402, US 10,481,846, and US 10,761,791. On 2022‑08‑12 Lexmark moved to dismiss; Flexiworld filed four amended complaints on 2022‑08‑31. In the 2023‑03‑20 Opinion and Order (Doc. 44), the court held the initial motion moot and addressed Lexmark's renewed partial motion directed at Flexiworld's § 287(a) marking allegations. I could not confirm the ultimate disposition of this case from the sources available to me — I am not asserting a settlement or judgment that I have not verified.
4. Brothers Industries (U.S.A.), Inc. — 2:22-cv-02237 (W.D. Tenn.)
Filed 2022‑04‑15. Four patents asserted: US 10,481,846; US 10,761,791; US 7,609,402; and US 10,140,073. Per PACER‑derived reporting, the court entered an order on 2023‑03‑13 dismissing all claims with prejudice across four coordinated actions pursuant to a joint Rule 41(a)(1)(A)(ii) motion — reported as a consent judgment. No validity or infringement determination.
5. Hisense Co., Ltd. et al. — 2:22-cv-00227 (E.D. Tex.)
Filed 2022‑06‑24. The IPR petition and IP Watchdog's filing roundup both list the '073 patent among the asserted patents (with US 10,768,871, US 7,609,402, US 10,140,072, US 10,387,087). The defendant group includes numerous Hisense entities (Hisense USA, Hisense Visual Technology, Hisense International (HK), Qingdao Hisense Electronics Industry Holdings, Guiyang Hisense Electronics, et al.). Outcome not confirmed.
6. Hisense — 1:22-cv-04338 (N.D. Ga.)
Listed in the Stanford NPE Litigation Database as a case involving patent 10140073, filed 2022‑10‑31 against a large Hisense entity group. Outcome not confirmed. This appears to be a second, separate Hisense assertion from the E.D. Tex. action.
7. Xerox Corporation — 6:23-cv-06371 (W.D.N.Y.)
Three patents: US 10,481,846; US 10,761,791; US 10,140,073. Accused products included Xerox AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B, C and EC series printers plus the Xerox Print and Scan Experience, Xerox Print Service Plug‑in for Android, and Xerox Workplace apps. Infringement contentions on the '073 patent mapped to at least claim 8 (the printer wirelessly detecting the mobile device by physical proximity, transmitting device information, receiving a connection request, establishing a wireless link, and receiving print data). The stipulated dismissal order reads:
"Pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), Plaintiff Flexiworld Technologies, Inc. ("Flexiworld") and Defendant Xerox Corporation ("Xerox"), by and through their undersigned counsel, hereby stipulate and agree to dismiss with prejudice all pending claims and counterclaims in these actions... Each party is to bear its own costs, expenses, and attorneys' fees."
The '073 claims were never construed in this action. I was unable to confirm the precise complaint filing date within 2023.
8. Sony Corporation — 2:23-cv-00616 (E.D. Tex.)
Filed 2023‑12‑19, assigned to Judge Rodney Gilstrap. Sony was served 2024‑01‑17; a First Amended Complaint was filed in 2024; a Docket Control Order set a Markman hearing for 2025‑06‑11 and trial for 2025‑11‑03. The case instead ended by Joint Stipulation to Dismiss with Prejudice accepted by the court, reported as 2025‑05‑29 — the order dismissing "all pending claims and counterclaims," with each party bearing its own costs and expenses. Accused products spanned Sony Bravia XR TVs, HT/XE/XG/XP/XV/XB/RA audio, LSPX projectors, LinkBuds/WF/WH/MDR/NB/NS headphones, PlayStation consoles, and Xperia phones. Aggregated litigation reports list many patents in this campaign; the '073 patent appears in the asserted set.
PTAB — Roku, Inc. v. Flexiworld Technologies, Inc., IPR2022-01112
Filed 2022‑06‑30 against claims 1–20 of US 10,140,073 (application 15/627,197, Tech Center 2600). Petitioner: Roku, Inc. Patent Owner: Flexiworld Technologies, Inc. Terminated – Settled on 2022‑10‑31 (termination decision prior to institution, "pre‑DI settlement"), with the settlement agreement treated as business confidential. Prior art cited in the petition included US 6,850,979 (Saulpaugh), US 6,717,801 (Castell), US 6,604,140 (Beck), US 9,021,012 (Putzolu), US 7,028,102 (Larsson), US 6,643,650 (Slaughter), and several 60/2xx,xxx provisional applications. Important correction to the Google Patents litigation block: that page lists "Petitioner: Unified Patents" for IPR2022‑01112; the PTAB documents identify Roku, Inc. as petitioner, and Unified Patents is the database source of the litigation record, not the petitioner.
Caveats and data-quality notes
- No litigation to report? No — litigation is extensively reported. Flexiworld has asserted the '073 patent in at least eight U.S. district‑court actions and one PTAB proceeding.
- No merits rulings exist on the '073 patent. Every identified case resolved by settlement or stipulated dismissal with prejudice (the Lexmark action being the only one with a substantive written opinion, and that opinion addressed § 287(a) marking/pre‑suit damages, not infringement or validity of the '073 claims). The claims remain unconstrued.
- Source coverage is incomplete. Google Patents' litigation block for this patent lists eight proceedings; the Stanford NPE Litigation Database lists only two cases for patent 10140073 (Flexiworld v. Sony, 2:23‑cv‑00616; and Flexiworld v. Hisense, 1:22‑cv‑04338). Neither list is complete, so additional actions may exist.
- Unconfirmed items (flagged rather than asserted): the exact complaint date in 6:23-cv-06371 (Xerox); the final disposition of the Lexmark action; and the disposition of the two Hisense actions.
- Unverified lead, excluded from the table: third‑party reporting indicates Flexiworld also sued Canon for patent infringement in the same period. I found no confirmation that US 10,140,073 was asserted in that case, so I have not listed it.
- Prosecution/status anomaly worth noting: the Google Patents record shows an "Anticipated expiration" of 2021‑11‑01 and legal status "Expired – Fee Related" for a patent granted 2018‑11‑27. That is inconsistent with the 2018 grant and is most likely an artifact of the 2000‑10‑31/2000‑11‑01 priority date. This is a status‑data issue, not litigation, but it bears on any enforcement analysis. I cannot confirm the true expiration date from the sources I reviewed.
Key sources
- Google Patents, US10140073B2 (litigation links): https://patents.google.com/patent/US10140073/en
- Unified Patents litigation records: https://portal.unifiedpatents.com/litigation/Kentucky%20Eastern%20District%20Court/case/5:22-cv-00098 ; https://portal.unifiedpatents.com/litigation/California%20Central%20District%20Court/case/8:21-cv-00807 ; https://portal.unifiedpatents.com/patents/patent/US-10140073-B2
- PTAB petition, Roku v. Flexiworld, IPR2022-01112: https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549802](/patent/1549802)/download-documents (Paper: Petition for Inter Partes Review of U.S. Patent No. 10,140,073)
- IPR2022-01112 docket/status: https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2022-01112
- Flexiworld Techs. v. Lexmark Int'l, No. 5:22-cv-00097 (E.D. Ky. Mar. 20, 2023) (Doc. 44): https://law.justia.com/cases/federal/district-courts/kentucky/kyedce/5:2022cv00097/98438/44/
- RPX Empower docket for 5:22-cv-00097: https://litigation.rpxcorp.com/litigation/kyedce-98438-flexiworld-technologies-v-lexmark-international
- Flexiworld v. Sony, 2:23-cv-00616 (PACER Monitor): https://www.pacermonitor.com/public/case/51750256/Flexiworld_Technologies,_Inc_v_Sony_Corporation
- Stanford NPE Litigation Database, patent 10140073: https://npe.law.stanford.edu/patent/10140073
- IP Watchdog, Patent Filings Roundup (July 1, 2022) — 2:22-cv-00227: https://ipwatchdog.com/2022/07/01/patent-filings-roundup-centripetal-sees-iprs-microsoft-engineer-sues-seven-waco/
- Actionable Intelligence, "Flexiworld and Epson Settle Wireless Patent Dispute": https://www.action-intell.com/tag/flexiworld-technologies-v-epson-america-2021/
- PatSnap litigation analyses for 6:23-cv-06371 (Xerox), 2:22-cv-02237 (Brothers), 2:23-cv-00616 (Sony)
Generated 9/15/2026, 6:48:26 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.
I'll start by verifying the one proceeding flagged in the patent's litigation history and checking for any others.
Confirmed one proceeding. Now I'll pull claim-level detail on the petition and check for any other challenges to this specific patent.
PTAB Proceedings on File — U.S. Patent No. 10,140,073
Sourcing note / discrepancy flag. The structured ODP block supplied for this patent returns no AIA trial proceedings. That is a partial miss: the USPTO's open-data feed appears not to have surfaced (or has since dropped) a terminated pre-institution IPR that is confirmed on file. Google Patents' own litigation section for US10140073 lists "PTAB case IPR2022-01112 filed (Settlement)." I independently confirmed the proceeding, its petitioner, its panel, its petition grounds, and its termination through the PTAB docket record and the Board's termination decision. One further caution: the Google Patents entry attributes that line to "Unified Patents PTAB Data" — that is a data-source label, not the petitioner. Roku, Inc. filed IPR2022-01112. Unified Patents filed a different IPR on a different patent in this family (IPR2022-00775, U.S. 9,836,257). Do not conflate them.
Proceedings overview
Total AIA trial proceedings against US 10,140,073: one (1) — IPR2022-01112 (Terminated-Settled, settled pre-institution on 2022-10-31); zero claims invalidated, zero claims sustained, zero claims ever instituted, zero FWDs, zero Federal Circuit appeals. Bottom line for a defendant: this patent is not "hardened" by a PTAB win, and it is not "gutted" by a PTAB loss — it is completely untested at the Board. No claim of the '073 patent has ever been construed by the PTAB or by any district court, and because Roku's petition died before institution, no § 315(e) estoppel attaches to anyone. That cuts both ways: Flexiworld cannot say the claims survived scrutiny, but you cannot point to a cancellation either. The single most important defensive facts are (a) Roku's full petition — claims 1–20, six pre-AIA § 103 grounds, with named references — is a public record you can reuse, and (b) the '073 patent appears to have expired on or about 2021-11-01 per its stated priority chain, which would confine any assertion to past damages.
IPR2022-01112 — Roku, Inc. v. Flexiworld Technologies, Inc.
- Type: Inter Partes Review (35 U.S.C. §§ 311–319). Not a PGR, not a CBM.
- Filed: 2022-06-30 (petition accorded a filing date by Board Notice dated 2022-08-04).
- Status:
Terminated-Settled(Google Patents renders it as "IPR2022-01112 filed (Settlement)"). Plain English: settled out before the Board ever decided whether to institute. No merits determination was ever reached. - Judge panel: David C. McKone, Terrence W. McMillin, and Christopher L. Ogden, Administrative Patent Judges; Judge Ogden authored the termination decision. (Tech Center 2600, Art Unit 2677.)
- Petition grounds: Claims 1–20 — the entire patent (three independent claims: 1, 8, and 16). All grounds were pre-AIA 35 U.S.C. § 103 obviousness (the '073 patent carries a 2000-11-01 priority claim, well before the AIA's 2013-03-16 transition). The petition characterized claims 1, 8, and 16 as "known device discovery mechanisms that enable remote service calls, e.g., a cell phone detecting and using a remote printer," and framed the grounds as "Grounds 1a–2c" (six grounds). References relied on in the petition's exhibit table:
- U.S. 6,850,979 (Saulpaugh) — filed 2000-08-31
- U.S. 6,717,801 (Castell) — filed 2000-09-29
- U.S. 6,604,140 (Beck) — filed 1999-09-23
- U.S. 9,021,012 (Putzolu) — filed 1999-10-13
- U.S. 7,028,102 (Larsson) — filed 2000-08-15
- U.S. 6,643,650 (Slaughter)
- Provisional applications 60/209,525; 60/209,140; 60/209,430; 60/208,011; 60/202,975, plus continuity data for 60/245,101, 60/252,682 and 60/262,764 (all filed as EX1006–EX1018; these are the priority-chain references a petitioner must antedate, exactly the fight that later sank Unified in the sibling '257 IPR)
- Declaration of Dr. Saber (EX1003); Claim Listing (EX1004)
- Public-record exhibits on the parallel litigation, including "Patent Owner Infringement Allegations" (EX1021), the W.D. Tex. case status and docket reports for 6:21-cv-00680 (EX1022, EX1023), the Texas W.D. standing order (EX1024), and the AIA Interim Procedure (EX1025) — i.e., the petition expressly litigated § 314(a)/Fintiv-style discretionary-denial risk.
- Petition PDF: https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549802](/patent/1549802)/download-documents?artifactId=TYovNp64wheHFKjOAezUZy-jXyfOYxB4_kCyeDjQgh1HGLWSZ5u3-Rw
- Institution decision: None. Not instituted, not denied on the merits — never decided. The parties settled before a Decision on Institution issued. Do not let anyone characterize this as an institution denial or as a "survived challenge" outcome; both are wrong.
- Final Written Decision: None issued. There is no claim-level verdict on US 10,140,073. I did not find any FWD, and no claim of this patent has been canceled or held patentable by the Board.
- Settlement / termination: Joint Motion to Terminate filed 2022-10-27 (Paper 8, filed by Patent Owner with Petitioner's concurrence), accompanied by a Settlement and Patent License Agreement (Ex. 2001) and a Joint Request to Keep Separate (Paper 9). The Board granted termination on 2022-10-31 and ordered the agreement treated as business confidential information under 37 C.F.R. § 42.74(c), keeping it separate from the file. The settlement terms — including any license, payment, or covenant — are confidential and not in the public record. The panel's stated basis, verbatim: "The Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding… We have not yet determined whether to institute trial in these proceedings." Termination decision (issued jointly for IPR2022-01112/01113/01114): https://www.docketalarm.com/cases/PTAB/IPR2022-01113/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/10-31-2022-Board/Termination_Decision__Pre_DI_settlement-10-Termination_Decision__Pre_DI_settlement.pdf — also on PTAB E2E at https://ptacts.uspto.gov/ptabweb/
- Appeal: None. No Federal Circuit appeal — there was no appealable final written decision. Petitioner's post-termination paper trail is limited to a Request for Refund filed 2022-11-21, with the Board's refund approved 2022-11-28 (further confirmation that the case ended before the institution decision the fee was paid for).
- Defensive value: Zero estoppel, but a free, fully-drafted roadmap. Because IPR2022-01112 ended pre-institution, § 315(e)(2) estoppel never attached — neither to Roku nor to any privy — so Roku (or anyone else) is not barred from asserting the Saulpaugh/Castell/Beck/Putzolu/Larsson/Slaughter combinations in your case. Conversely, you can lift Roku's ground structure, expert declaration, and priority-chain analysis directly from the public petition file. The practical significance: Flexiworld has asserted this patent broadly (Roku, Hisense, Lexmark, Brother, Epson, Sony, Xerox) and has shown a consistent willingness to settle IPRs rather than litigate them to a merits ruling — treat settlement pressure, not claim survival, as the established pattern.
Strategic summary
Claim status: everything is UNTESTED. Independent claims 1, 8, and 16 and dependent claims 2–7, 9–15, and 17–20 have not been canceled, have not been confirmed, and have not been construed. No court has issued a Markman ruling on the '073 patent — the Xerox action (6:23-cv-06371, W.D.N.Y.) ended in a bilateral Rule 41(a)(1)(A)(ii) dismissal with prejudice, and the Roku action (6:21-cv-00680, W.D. Tex.) was stayed during the IPR. So there is no narrowing construction to work with and no invalidity holding to cite. Anyone telling you the patent is either "hardened" or "dead" is not reading the docket.
Estoppel landscape. With no institution and no FWD, there is no § 315(e)(2) estoppel against Roku or its privies, and no § 315(e)(1) estoppel at the Office. Grounds Roku raised or reasonably could have raised in IPR2022-01112 — pre-AIA § 103 over Saulpaugh, Castell, Beck, Putzolu, Larsson, Slaughter — remain available to a new petitioner, subject to that petitioner's own § 315(b) one-year clock from service of an infringement complaint, and subject to § 325(d) discretionary risk if the art duplicates what the examiner already considered (watch this closely — the petition's own priority-chain exhibits show the real fight here is pre-AIA § 102(e) antedating and "swearing behind", not the references themselves).
Pattern signals. Three matter for you:
- Same petitioner, multiple patents — then one global settlement. Roku filed a coordinated cluster against the Flexiworld family on 2022-06-30: IPR2022-01112 ('073), IPR2022-01113 (U.S. 9,042,811), and IPR2022-01114 (U.S. 9,965,233) — all three terminated on the same day, 2022-10-31, under the same panel (McKone, McMillin, Ogden) and a single joint termination decision. Roku's earlier PGR2021-00111 (U.S. 10,846,031) was denied institution on 2022-03-14, and PGR2021-00112 (U.S. 10,489,096) terminated on the same 2022-10-31 settlement date. That is a wholesale Roku–Flexiworld resolution, not a claim-specific outcome.
- A defensive aggregator is in the chain — just not on this patent. Unified Patents, LLC filed IPR2022-00775 against U.S. 9,836,257 (a sibling patent asserted against Roku). That one went the distance: oral hearing 2023-08-29; Final Written Decision 2023-11-01 determining no challenged claims unpatentable and dismissing Patent Owner's revised motion to amend (panel: McMillin, Ogden, Dougal). Flexiworld won on corroborated pre-October-2000 conception/reduction-to-practice — the Board credited draft-provisional file metadata as independent corroboration of conception predating the § 102(e) references. That is the single most important read-across for you: the '257 and '073 patents share the same Flexiworld priority story, the same inventor, the same provisional chain, and the same defense bar. Expect a well-prepared § 102(e) antedating/"swear-behind" case, backed by Cooklev-type expert testimony, if you petition on the '073 patent.
- No aggressive PTAB appellate posture is visible. I found no Flexiworld Federal Circuit appeals from any PTAB FWD on the '073 patent (there is nothing to appeal). Flexiworld's demonstrated preference in IPRs is to settle pre-institution (Roku cluster; Lexmark's IPR2023-00846 on U.S. 9,965,233,
Terminated-Settled2024-01-26) and to win on priority when forced to a decision (IPR2022-00775).
Flag to verify before you rely on it — apparent expiration. Both the Google Patents record and Unified's patent page state an anticipated expiration of 2021-10-31/2021-11-01 for the '073 patent (20 years from the 2000-11-01/2001-11-01 priority chain), and Google Patents reports legal status "Expired – Fee Related." If accurate, the '073 patent expired before Flexiworld filed its 2022–2023 campaigns, which would mean: no prospective injunction, no ongoing royalties, and damages capped to past infringement within the 35 U.S.C. § 286 six-year lookback. I have not verified this against the patent's full term calculation (any PTA, terminal disclaimer, or maintenance-fee lapse), and the two sources disagree by one day. Confirm in PatentCenter before making it a centerpiece of a defense — but it is the highest-leverage fact I surfaced that is not already in your demand-letter response.
Recommended next steps
- No claim of US 10,140,073 has ever been canceled. Do not build a defense that assumes otherwise, and do not accept a plaintiff's characterization that the Roku IPR "cleared" or "was defeated by" these claims — it was terminated pre-institution on 2022-10-31 by joint motion, with the settlement kept business-confidential under 37 C.F.R. § 42.74(c). Cite the Board's own words: "We have not yet determined whether to institute trial in these proceedings."
- Pull the public petition and reuse it. Roku's IPR2022-01112 petition (claims 1–20, pre-AIA § 103, Grounds 1a–2c) and the Saulpaugh / Castell / Beck / Putzolu / Larsson / Slaughter reference set are the best-vetted starting point available, and no estoppel blocks them. Download the petition and exhibit list from PTAB E2E: https://ptacts.uspto.gov/ptabweb/ (petition artifact: https://ptacts.uspto.gov/ptacts/public-informations/petitions/1549802/download-documents?artifactId=TYovNp64wheHFKjOAezUZy-jXyfOYxB4_kCyeDjQgh1HGLWSZ5u3-Rw).
- Verify term/expiration first. If the '073 patent expired on or about 2021-11-01, reframe the entire matter as a past-damages-only dispute and scrutinize the § 286 date line in any damages theory. Check PatentCenter for maintenance-fee status, any PTA, and any terminal disclaimer.
- § 315(b) clock discipline. There is no active proceeding on this patent, so no trial-stage milestones exist (no institution deadline, no hearing date, no statutory 1-year FWD deadline is running). The controlling deadline is yours: one year from service of the complaint naming the '073 patent. If you are outside that window, an IPR is unavailable and you are in district court on §§ 101/102/103/112 with the Roku art as the invalidity core.
- Watch for follow-on filings. Flexiworld has settled IPRs pre-institution on this family repeatedly and continues to add defendants across districts. A new petition against the '073 patent (from any of the existing defendants' supply chain) would be the first merits test this patent has ever faced — treat its institution decision, if one comes, as a material change in posture, and re-run this analysis then.
Generated 9/15/2026, 6:48:40 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 2017-07-18 · Assignment
CHANG, WILLIAM HO; LIU, CHRISTINA YINGFlexiworld Technologies, Inc.
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 chain for this patent. Let me start with several targeted searches.
Key lead: a Flexiworld–Samsung assignment dispute. Let me dig into that and the specific reel/frame records.
Now let me pin down the specific reel/frame records and Flexiworld's corporate/litigation posture.
Assignment & Ownership Analysis — US 10,140,073 B2
Sourcing caveat, stated up front. I could not reach assignmentcenter.uspto.gov or assignment.uspto.gov directly in this session, and my searches did not return an assignment-record page keyed to patent 10,140,073. Everything below marked recorded comes from secondary indices of the same reel/frame corpus (Google Patents legal events, litigation complaints that plead reel/frame, RPX litigation documents, CourtListener RECAP filings, and Unified Patents' patent pages). The reel/frame number for this patent's own assignment chain was not retrieved. I have not invented one. Where I report reel/frame values, they belong to sibling patents in the same family and are labelled as such — they are circumstantial, not dispositive, for US 10,140,073.
Inventors
| Inventor | Recorded location | Employer at filing (2017 continuation) |
|---|---|---|
| William Ho Chang | Vancouver, WA | Flexiworld Technologies, Inc. (co-founder/principal) |
| Christina Ying Liu | San Francisco, CA | Flexiworld Technologies, Inc. (co-founder/principal) |
Both names appear as the assignors on essentially every recorded assignment in the Flexiworld family — including the 2017-07-18 assignment to Flexiworld Technologies, Inc. — and both are named as the source of title in Flexiworld's infringement complaints (e.g. "an assignment of the '402 Patent from inventors Chang and Liu to Flexiworld" at Reel/Frame 028733/0064, per RPX's litigation-document index).
Unusual-pattern check: no departure pattern. This is the inverse of the classic fire-sale tell (all inventors resigning within 12 months of filing). Chang and Liu are the sellers in the 2013 outbound assignment to Samsung and the assignors of the 2017 assignment, i.e. they stayed with the entity for ~17 years after the 2001 priority filing. Their addresses are home-office style (Vancouver WA; San Francisco CA) rather than a corporate campus, which is consistent with founder-inventors operating a small licensing company, not with a mass-inventor corporate R&D lab.
Original assignee
Flexiworld Technologies, Inc. (listed on the face of the issued patent; original assignee per Google Patents).
- Line of business. Wireless/pervasive digital output software — the 2000–2002 specification describes a universal-output client and output controller architecture designed to let mobile devices print/display without device-specific drivers. Later filings extend into mobile payment, voice-command output, and short-range wireless discovery.
- Product embodying the claims. I could not verify a commercial product. Flexiworld operates a live website (
flexiworld.com/patent/) that is organized as a patent-catalogue — patents sorted by target market ("Smart Phone/Tablet," "Smart Watch," "Projector"), with "Pending Patents" tables. That is a licensing-marketplace artifact, not a product catalogue. PlainPatent/PatentsView data shows 59 granted US patents, 2015–2023, with a −31% five-year filing velocity and an average of 24.6 claims/patent. No SEC 10-K/8-K exists to cross-check, because Flexiworld is private. - Current status. Operating, not dissolved and not in bankruptcy on any record I found. It is an active asserting entity: an RPX campaign note (Feb 11, 2021) describes "the litigation campaign that it began last year with a June suit against Amazon and a September suit against Roku, all in the Western District of Texas," later adding Canon (6:21-cv-00143).
- Name-variance flag. The earliest family members are cited to assignee "Flexiworld, Inc." (e.g. US 7,609,402; US 7,318,086), while later ones read "Flexiworld Technologies, Inc." Whether that reflects a recorded Change of Name conveyance or merely inconsistent assignee-field population across databases is unresolved — I could not read the reel. If a Change-of-Name or Merger conveyance exists, it would show on the reel for those early patents, not necessarily for '073.
Assignment timeline
For US 10,140,073 itself, only one assignment is documented:
- Executed date: not retrieved / recorded 2017-07-18 — Reel/Frame: NOT RETRIEVED
- Conveyance: Assignment
- Assignor: CHANG, WILLIAM HO; LIU, CHRISTINA YING (individually)
- Assignee: FLEXIWORLD TECHNOLOGIES, INC.
- Correspondent: not retrieved. The only Flexiworld-side attorney I could identify by name is Peter D. Sabido (signature "/Peter D. Sabido/", Reg. No. redacted in the copy I saw), who on 2017-09-13 signed an Information Disclosure Statement in Serial No. 10/053,765, attorney docket FXT315, Art Unit 2677, Examiner Marcus T. Riley — the same examiner and art unit as US 10,140,073. This places him on the Flexiworld prosecution team in the same period as the assignment recording, but I did not verify him as the assignment correspondent of record, so I do not count it as a repeat-correspondent finding. The "FXT" docket prefix is consistent across the family and is the best available repeat-player marker.
- Context: inventor-to-company assignment — the standard title-clearing step taken at issuance/continuation filing. It is not an arm's-length acquisition.
Corporate/contractual events affecting the family (documented, but not recorded against this patent number):
- Executed 2013 / recorded 2013-03-13 — Reel/Frame: not retrieved (Patentpia transaction record; "latest transaction recording date 20130313")
- Conveyance: Assignment
- Assignor: Flexiworld Technologies / Assignee: Samsung Electronics Co.
- Subject matter: U.S. Application 13/103,958 (issued as US 9,164,718) and, per the agreement, US 7,941,541 plus one continuation, one divisional, and one second continuation application.
- Context: outbound sale to an operating company (Samsung) — the opposite of the usual NPE-transfer direction.
- Why this matters to '073: Google Patents records US 10,140,073 as claiming priority from US 10/016,223, filed 2001-11-01, linked to US 7,941,541 — i.e. the parent patent that Flexiworld sold to Samsung. Whether the '073 continuation falls inside the Samsung "Assigned Patent Rights" is exactly the question litigated in Flexiworld Techs. v. Roku, No. 6:20-cv-00819-ADA (W.D. Tex.), Dkt. 198, June 6, 2022. Judge Albright held that §1.1.1 "specifically assigns four items … and nothing more," that the general "rights related thereto or arising thereunder" language is limited to inventions "included in a claim," and that the '064 and '066 patents were not assigned to Samsung — Flexiworld is sole owner and has standing. That reasoning, if applied, protects '073 as well. But '073 was not one of the patents adjudicated, and I found no recorded assignment of '073 to Samsung. Treat the Samsung cloud as material but adjudicated-away for sibling patents.
Sibling reel/frame values gathered as corroboration (NOT this patent): '402 → 028733/0064; '072 and '178 → 042385/0202 (both pleaded identically, which I flag as either a family-wide recording or a pleading transcription artifact); '596 → 039816/0200. All are pleaded in Flexiworld complaints, most recently in Tx. E.D. 2:25-cv-00960. The values are in the 0398xx–0423xx range, i.e. recorded 2019–2021, meaning Flexiworld was still papering title on family members well after issuance — a title-maintenance hygiene pattern consistent with a licensing program.
Bottom line for this section: there is no shell-entity transfer, no security agreement, no merger, and no change of name recorded against US 10,140,073 on any index I could reach. The single recorded link is inventors → Flexiworld.
Timeline diagram
timeline
title Ownership of US 10140073
2000 : Priority date 1 November
2001 : Parent application filed
2013 : Flexiworld sells 541 patent to Samsung
2016 : Continuation chain prosecuted
2017 : Continuation filed as app 15627197
: Inventors assign rights to Flexiworld
2018 : Patent issues as US 10140073
2020 : First Flexiworld campaign suits filed
2022 : Roku standing challenge denied
: Court confirms Flexiworld sole owner
2022 : Unified Patents IPR filed then settled
2023 : Reported lapse for unpaid fees
NPE / troll-pattern signals
| # | Signal | Call | Supporting evidence |
|---|---|---|---|
| 1 | Shell-entity transfer | Not present | The only assignment of record is inventors → Flexiworld Technologies, Inc. (recorded 2017-07-18). Flexiworld is the inventors' own company, not a purpose-built LLC; no "IP/Holdings/Ventures" successor appears anywhere. No registered-agent-service assignee address found. |
| 2 | Known asserter in the chain | Present (partial) | Flexiworld is not on the legacy enumerated lists (Acacia, Marathon, IV, IPNav, Wi-LAN/Mosaid, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation, Spangenberg). It is a documented high-frequency plaintiff: RPX (Feb 11, 2021) covers an ongoing campaign; Unified Patents filed IPR2022-01112 (settled) against this family — Unified's business model is challenging NPE-asserted patents, which is third-party market corroboration. Asserted patents include 10,768,871; 7,609,402; 10,140,073; 10,140,072; 10,387,087 (Flexiworld v. Hisense, Tx. E.D. 2:22-cv-00227). |
| 3 | Repeat correspondent across the chain | Unclear | Only one assignment link exists for this patent, so recurrence within the chain is structurally impossible to establish. Peter D. Sabido appears on Flexiworld prosecution papers (Serial 10/053,765, docket FXT315, 2017-09-13) alongside the same examiner/art unit as '073, but I did not confirm him as assignment correspondent. One appearance is not a finding. |
| 4 | Cascading transfers | Not present | No chained LLC transfers in <24 months. One assignment link, 2017. |
| 5 | Pre-litigation transfer | Not present | Recording 2017-07-18 precedes the first campaign suits (June 2020 Amazon; Sept 2020 Roku) by ~3 years — far outside the 6-month window. The only transfer adjacent to assertion runs the other way in time: the 2013 Samsung outbound. |
| 6 | Bankruptcy fire-sale | Not present | No Chapter 7/11 record for Flexiworld Technologies, Inc. located. Flexiworld is a seller in the 2013 Samsung deal, not a distressed debtor. |
| 7 | Privateering | Not present | The 2013 direction is one-way outbound to a large operating company (Samsung) — an outright sale, not an operating company supplying an NPE to sue its competitors. Note the sale created a standing dispute (Roku argued Samsung was owner/co-owner of other family patents); Flexiworld prevailed. |
| 8 | Defensive aggregator | Not present | Chain does not terminate at RPX, AST, LOT, or OIN. Unified Patents' involvement is an IPR challenge (adverse), not an acquisition. |
Verdict
NPE — moderate confidence.
The assignment record itself is unusually clean: a single link, inventors Chang and Liu to Flexiworld Technologies, Inc., recorded 2017-07-18, with no LLC chain, no security interest, no bankruptcy, and no defensive-aggregator terminus — so the classic reel/frame NPE tells are absent. What drives the verdict instead is the assertion posture, which is corroborated by third parties rather than inferred from the name: RPX documents an ongoing Western District of Texas campaign across a ~70-member family asserting overlapping patent sets against Amazon, Roku, Canon, and Hisense, and Unified Patents filed IPR2022-01112 against this family — the single strongest external indicator that the market classifies Flexiworld as an NPE-style asserter. I stop short of high confidence because (a) Flexiworld is the original assignee and the inventors' own company, not a transferee shell, and (b) I could not verify the absence of a current product embodying the claims.
Two conflicts to carry forward:
- Termination vs. assertion. The earlier section records this grant as Expired – Fee Related, anticipated expiration 2021-11-01, $0 lifetime renewal fees, while the same patent was pleaded in Tx. E.D. 2:22-cv-00227 (Feb 2022) and appears in the litigation list through N.Y.W.D. 6:23-cv-06371 (2023). A lapsed patent cannot be asserted for post-lapse infringement, so at least one of these records is wrong. Note also that the "2021-11-01" figure looks like a 20-years-from-priority computation, which is not how US terms work for a continuation filed 2017-06-19 — I regard the expiry date as suspect. Verify the maintenance-fee status in PatentCenter before relying on enforceability.
- Ownership cloud from the prior section's scope. The earlier section described Flexiworld as unambiguous owner. The Roku order (Dkt. 198, W.D. Tex., June 6, 2022) shows ownership of this family was actively contested on standing grounds via the Samsung agreement, and that Flexiworld needed extrinsic evidence (a Letter of Intent, Samsung's 10 years of silence) to win. For US 10,140,073 specifically, the risk is unadjudicated — it claims priority to US 10/016,223 / US 7,941,541, one of the four items Flexiworld concededly sold to Samsung.
Verify against: USPTO Assignment Center and assignment.uspto.gov patent search — search patent number 10140073, then re-run for 7941541 and application 13/103958 to capture the 2013-03-13 Samsung recording whose reel/frame I could not retrieve.
Generated 9/15/2026, 6:49:05 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search for the specific patent and its cited prior art references.
Let me dig into the specific cited references from the patent's front page and USPTO records.
Let me try to pull the front-page "References Cited" list directly.
Provenance note before the analysis (read this first)
I could not retrieve the definitive front‑page "References Cited" (U.S. Patent Documents) list for US 10,140,073 from a USPTO‑authoritative source in this session. Google Patents' patents.google.com/patent/US10140073B2 page returned only CPC/classifier and description‑tag data in the search snippets, not the citation tables. I did not obtain PatentCenter or the granted‑patent PDF front page.
What follows is therefore built from the best available secondary source — the Unified Patents portal's "Patent Art" list for US‑10140073‑B2 — which I must flag as not equivalent to the examiner's References Cited list. That portal list (548 items) mixes (a) ancestor‑application citations, (b) forward citations ("cited by"), and (c) same‑family continuations. I have separated those categories below rather than presenting the list as the patent's own prior‑art citations.
Three specific flags:
- Contradiction check with the prior section: no contradiction found — examiner (Riley, Marcus T.), priority (2000‑10‑31/2000‑11‑01), app no. 15/627,197, and the abstract all match the previously generated section.
- The Unified snippet rendered one row as "US‑9164718‑B2 / 2000‑10‑31 / [Samsung Electronics Co Ltd](/litigations/by-plaintiff/Samsung%20Electronics%20Co%20Ltd) / Output Device and Method for Output Without an Output Driver." That assignee/date/title combination looks internally inconsistent (that title belongs to the Flexiworld family). I report it literally as retrieved and flag it as likely scraper field‑misalignment. Do not rely on it without verification.
- A Golden.com wiki entry renders this patent's number as "101400730" — per the standing instruction I do not auto‑correct it, but it does not match the grant number 10140073 and should be treated as a third‑party transcription error.
1. The § 102 framing that controls this whole exercise
US 10,140,073 claims priority to 2000‑11‑01 (Google) / 2000‑10‑31 (Unified) via US 10/016,223 (→ US 7,941,541) and US 09/992,413 (→ US 9,965,233). It therefore lives under pre‑AIA 35 U.S.C. § 102 (AIA first‑inventor‑to‑file provisions apply only to applications filed on/after 2013‑03‑16 for claims with no pre‑AIA priority).
Two consequences that materially shrink the prior‑art universe:
- § 102(a)/(b) art must predate ~2000‑11‑01. Anything published or patented after that date cannot anticipate claims entitled to the 2000 priority. Several entries in the retrieved list (e.g., the 2000‑09‑25 AMD patent) sit on the knife‑edge and require date confirmation.
- § 102(e) art must have been filed before the applicant's invention date, not merely before the 2017 filing date of the continuation. A 2017‑filed continuation does not open the door to 2001–2016 prior art.
This is why the family survived reexamination‑style challenges: the examiner's field of search was confined to roughly pre‑2001 Bluetooth/short‑range discovery and pervasive‑output art.
2. Candidate references retrieved (with per‑reference analysis)
Dates are given exactly as retrieved. Where a date is likely a filing date rather than a publication date, I say so. Where I cannot confirm the reference is actually on the patent's References Cited list, I say so.
| # | Citation (as retrieved) | Date (as retrieved) | Category |
|---|---|---|---|
| A | US 6,195,564 B1 — Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device | 1997‑09‑18 | Candidate cited art |
| B | US 6,628,417 B1 (Canon Inc.) — Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System | 1998‑10‑29 | Candidate cited art |
| C | JP H11‑316658 A (Ricoh Co. Ltd.) — Printing Equipment | 1998‑05‑01 (likely filing) | Foreign cited art |
| D | US 7,239,346 B1 — System and Architecture that Supports a Multi‑function Semiconductor Device Between Networks and Portable Wireless Communications Products | 1999‑10‑17 | Candidate cited art |
| E | US 6,958,414 B1 (Advanced Micro Devices) — Portable Internet Browser Device with Cordless Phone Module and Method of Operation | 2000‑09‑25 | Candidate cited art |
| F | EP 0 691 619 B1 — System for Accessing and Distributing Electronic Documents | 1994‑06‑26 | Candidate cited art |
| G | US 4,291,956 A (3M Co.) — Graphic Forming Device with Preview Feature | 1979‑12‑16 | Background art |
| H | US 5,475,507 A (Fujitsu Ltd.) — Color Image Processing Method and Apparatus … Automatically Detects a Contour of an Object in an Image | 1992‑10‑13 | Background art |
| I | US 6,069,707 A (Portalis Ltd.) — System for Reproducing a Physical Color Image | (publication ~2000) | Background art |
| J | US 6,215,494 B1 (Hanger Solutions LLC) — Method and System for Centering Image Objects | (publication ~2001) | Background art |
| K | US 6,801,692 B2 (KDDI Corp.) — Optical Coupling Structure | 2001‑02‑05 | Post‑priority — not § 102(a)/(b) art |
Per‑reference analysis
A. US 6,195,564 B1 — "Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device" (1997‑09‑18)
The most structurally on‑point reference for the patent's core concept: automatic, non‑user‑initiated establishment of a wireless link between two wireless entities. Potentially relevant to claims 1, 8, and 16 on the "establish a wireless connection" element. However, its disclosure is modem‑to‑host link setup, not proximity‑gated discovery of a mobile information apparatus, and it does not appear to disclose the stored device object / device information transmitted to permit later reconnection without repeating discovery — the specific hook of claim 16 as reconstructed in the prior section. Anticipation is doubtful; § 103 obviousness is the realistic attack vector.
B. US 6,628,417 B1 (Canon) — "Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System" (1998‑10‑29)
Discloses a data communication apparatus / image server serving image data to requesting devices. Potentially relevant to claim 15 (wireless device is a wireless printing device; received data includes print data or a print job) and to the claim‑10 "response information … status information, reply information, device attribute information" element, since network image servers commonly return status/attribute data. It does not disclose proximity‑based wireless detection, so it cannot anticipate claims 1/8/16 read as a whole; it is best characterized as art against the output‑side dependent claims.
C. JP H11‑316658 A (Ricoh) — "Printing Equipment" (1998‑05‑01, likely the filing date)
Japanese laid‑open printing‑equipment disclosure. Potentially relevant to claim 15 and to the specification's pervasive‑printing background. Note: for pre‑AIA § 102(a)/(b), the operative date is the Japanese laid‑open publication date, which I could not confirm. Under pre‑AIA § 102(e), a Japanese application is not § 102(e) art at all (that provision reaches only U.S. patents and U.S. published applications). Verify the laid‑open date before treating this as § 102(b) art.
D. US 7,239,346 B1 — "System and Architecture that Supports a Multi‑function Semiconductor Device Between Networks and Portable Wireless Communications Products" (1999‑10‑17)
Discloses a multi‑function semiconductor device bridging networks and portable wireless products. Potentially relevant to claims 11 and 13 (wireless device includes one or more chips/chipsets supporting at least part of a Bluetooth protocol; chipset also supports IEEE 802.11). It addresses multi‑standard silicon but not proximity detection, so it will not anticipate claims 11/13 as written unless those claims are construed to read on any multi‑radio chipset — a construction argument, not anticipation.
E. US 6,958,414 B1 (AMD) — "Portable Internet Browser Device with Cordless Phone Module and Method of Operation" (2000‑09‑25)
Closest art for the information‑apparatus side. Potentially relevant to claim 14, which recites the mobile apparatus being "a smart phone, information pad, Internet‑Phone, digital camera, e‑book, or Internet appliance" — this reference discloses a portable Internet browser device with a cordless module, i.e., the Internet‑appliance/information‑pad species. Date is ~5 weeks before the 2000‑11‑01 priority date, so it is § 102(a)/(b) art only if the November 2000 priority is confirmed and the applicant cannot swear behind it. Under § 102(a) (pre‑AIA), it would be art only as to the applicant's actual invention date, and the applicant could attempt to swear behind under Rule 131. Handle with care.
F. EP 0 691 619 B1 — "System for Accessing and Distributing Electronic Documents" (1994‑06‑26)
Well before priority. Addresses document access/distribution — the "content" side of the specification. Relevant to the preamble/shared elements of claims 1, 8, 16 (content to be output), but discloses nothing about short‑range proximity detection or wireless chipset architecture. No independent claim would be anticipated; useful only as § 103 secondary art.
G–J. US 4,291,956 A (3M), US 5,475,507 A (Fujitsu), US 6,069,707 A (Portalis), US 6,215,494 B1 (Hanger Solutions)
These are image‑processing / RIP‑layer references (preview generation, contour detection, color image reproduction, image centering) that map to the unclaimed specification material on rasterization, halftoning, color space conversion, and MRC encoding. They are not directed to claims 1, 8, or 16 and should not be characterized as anticipating claims. At most they are background art for the joint‑RIP concept. Note in particular that US 6,215,494 B1 (Hanger Solutions) has a publication date at or after the 2000 priority and appears to be a forward citation rather than cited art.
K. US 6,801,692 B2 (KDDI) — "Optical Coupling Structure" (2001‑02‑05)
Filed after the priority date and directed to an optical coupling structure. This cannot be § 102 prior art against claims entitled to 2000‑11‑01 priority. Its presence in the retrieved list reinforces my suspicion that the list is a mixed art graph, not the References Cited table.
3. References in the retrieved list that are family members, not prior art
Critical to not mischaracterize these:
- CN 100334577 C — "System and Method for Device‑to‑device Pervasive Digital Output." This is the Chinese counterpart of the Flexiworld family (it appears as the family node linking US 10,140,073 and US 10,037,178 on Google Patents). Not prior art — same family, same inventors.
- US 2002/0097418 A1 — "Raster Image Processor and Processing Method for Universal Data Output," date shown 2001‑01‑18. This is Flexiworld's own published application (the pre‑grant publication from the 2001‑01‑18 filing). It cannot be § 102(a)/(b) art (post‑priority) and, because it shares inventors and priority, it cannot be § 102(e) art against these claims either.
- US 8,169,649 B2 — "Mobile Device Methods for Enabling Pervasive Wireless Digital Media" — Flexiworld family.
- US 9,164,718 B2 — shown in the list with the Flexiworld title "Output Device and Method for Output Without an Output Driver" but with assignee "Samsung Electronics Co Ltd." Unresolved — verify. If it is a Flexiworld family member it is not prior art; if it is genuinely a third‑party Samsung patent with a 2000‑10‑31 priority, it would be extremely material and would need a full § 102(e) analysis.
4. Anticipation mapping summary (§ 102)
| Claim (per prior section) | Most relevant retrieved art | § 102 anticipation? |
|---|---|---|
| Cl. 1 (method; proximity discovery → wireless connection) | US 6,195,564 B1; US 6,958,414 B1 | Unlikely to anticipate. No reference found disclosing proximity‑gated detection plus the full claim‑1 step sequence. Requires verbatim claim 1, which was not retrieved in the prior section. |
| Cl. 6 (interface with button) | none identified | No. |
| Cl. 8 (wireless device apparatus) | US 6,195,564 B1; US 7,239,346 B1 | Unlikely. Structural overlap only; proximity limitation unmet. |
| Cl. 10 (status/reply/attribute/UI response info) | US 6,628,417 B1 | Partial element coverage only — no full anticipation. |
| Cl. 11 / Cl. 13 (Bluetooth chipset; + IEEE 802.11) | US 7,239,346 B1 | No anticipation; § 103 candidate. |
| Cl. 12 (audio output device; display/TV/projector) | none identified | No. |
| Cl. 14 (button/voice interface; apparatus types incl. Internet appliance) | US 6,958,414 B1 | Closest, but not clean. Date is 5 weeks pre‑priority and swearing‑behind is available. |
| Cl. 15 (wireless printing device; print data/job) | US 6,628,417 B1; JP H11‑316658 A | No anticipation; each lacks the proximity‑detection step. |
| Cl. 16 (two‑way proximity discovery; device object transmission) | US 6,195,564 B1 | No. The "device object stored in wireless device memory and transmitted to the smart phone to enable later identification/selection/reconnection" element is not disclosed. |
Bottom line on anticipation: on the evidence retrieved, no single reference appears to anticipate any independent claim. The realistic challenge framing is § 103 (e.g., US 6,195,564 B1 or US 6,958,414 B1 in view of US 6,628,417 B1 and/or US 7,239,346 B1), not § 102. That is consistent with the litigation posture: IPR2022‑01112 (Unified Patents, petitioner) ended in settlement, so no PTAB institution decision or invalidity finding exists for this patent, and per the PatSnap summary of Flexiworld v. Xerox, the claims of US 10,140,073 B2 "remain unconstrued by a court."
5. What you must verify before relying on this
- Pull the actual front‑page "References Cited" from USPTO PatentCenter or the granted‑patent PDF. My list is a secondary aggregation and is not the examiner's citation list. Nothing here should be cited as "the references cited in US 10,140,073" without that check.
- Confirm the November 2000 priority date and any intervening continuation chain, since every § 102 date conclusion above turns on it.
- Confirm the publication (not filing) dates for JP H11‑316658 A and US 6,069,707 A.
- Resolve the US 9,164,718 B2 assignee/date anomaly.
- Confirm the lapse status. The prior section notes Expired‑Fee‑Related with anticipated expiration 2021‑11‑01 and $0 lifetime renewal fees on this grant (vs. $7,400 lifetime family fees). If the lapse is confirmed in PatentCenter, the § 102 analysis above is academic for enforcement purposes — though it remains relevant to the validity of sibling family members that did not lapse, which are the ones actually being asserted (e.g., in Flexiworld v. Sony, E.D. Tex. 2:23‑cv‑00616, per the Stanford NPE database and PatentPia, the asserted set includes 10037178, 10387087, 10489096, 10642576, 9836257, 9836259, 9965233, 7609402, 9042811, 11029903, 11096056, 10768871, 10846031, 10866773 — and 10140073).
Generated 9/15/2026, 6:49:00 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground this analysis in the actual prior-art references of record for this patent, since the fetched text was truncated before the citations section.
Let me pull the actual references-of-record and any IPR petition art, since those are the authoritative prior-art sections for this patent.
The IPR petition exhibits give me the actual prior-art set. Let me characterize each reference and find the petition's grounds.
Obviousness Analysis — US 10,140,073 B2 under 35 U.S.C. § 103
0. Source basis and confidence statement
The prior art I rely on here is the prior art of record for this patent, which in this case is not the truncated front page but the petition exhibit set in IPR2022-01112. I retrieved the exhibit list and a portion of the petition's substantive claim-by-claim argument. What I verified vs. did not:
| Item | Status |
|---|---|
| IPR2022-01112 filed June 30, 2022; Terminated–Settled Oct. 31, 2022; Tech Center 2600, Art Unit 2677; Judges Ogden, McKone, McMillin | Verified (PTAB docket) |
| Petition exhibits EX1005–EX1015 naming the prior-art references | Verified (exhibit titles) |
| Petition's ground "Beck in view of Putzolu" (Ground 2a) and its element mapping for a subset of limitations | Verified (partial petition text) |
| Full grounds table, remaining grounds, and whether every claim was challenged | Not retrieved — inferential |
| Reference dates (filing/priority) for Beck, Saulpaugh, Slaughter, Castell, Larsson, Putzolu | Not verified in this session |
Contradiction with the earlier section, flagged: the earlier summary reported the petitioner of IPR2022-01112 as "Unified Patents." The PTAB docket and GreyB both name the petitioner as Roku, Inc. The Google Patents field reflects Unified Patents, which is the data provider for that portal, not the petitioner. I resolve this in favor of the docket (Roku, Inc. v. Flexiworld Technologies, Inc.) and note the Google Patents attribute is a provider artifact. (PTAB docket, GreyB IPverse)
Procedural significance for a § 103 analysis: the proceeding was terminated pre-institution on settlement. No institution decision, no final written decision, no Board claim construction, and no estoppel. PatSnap likewise reports that in Flexiworld v. Xerox the three asserted patents (including this one) ended in a stipulated dismissal with prejudice with no Markman ruling, no invalidity determination, and no infringement finding — so the claims "remain unconstrued by a court." Any obviousness conclusion below is therefore mine, not a tribunal's. (PatSnap)
1. Legal framework and the threshold date question
Pre-AIA § 103 governs only if the claims are actually entitled to the November 1, 2000 priority date carried by the family. That is the single most consequential issue in this analysis, because:
- If the 2000 date holds, prior art must predate Nov. 1, 2000 (or Nov. 1, 1999 for pre-AIA § 102(b)), which confines the art to Bluetooth 1.0-era, IrDA, Jini, and late-1990s service-discovery work.
- If the chain fails — application 15/627,197 was filed June 19, 2017, and the intervening applications are 09/992,413 (2001-11-18) and 10/016,223 (2001-11-01) — then AIA § 102/103 applies and essentially the entire mobile-pairing art of 2001–2017 (including 802.11b and later Bluetooth versions) becomes available.
The petitioner's exhibit list confirms it litigated exactly this: EX1016 (App 60245101 Continuity Data), EX1017 (App 60252682 Continuity Data), EX1018 (App 60262764 Continuity Data), plus EX1006–EX1010 (provisionals 60/209,525; 60/209,140; 60/209,430; 60/208,011; 60/202,975) and EX1019 (File History 09/992,198). That is a written-description/priority-continuity attack built to knock out the 2000 date. Note the structural oddity that the granted claims themselves are the giveaway of a § 112 continuity problem: claim 16's own body recites the abstract-level "device object or device information" generic — a formulation typical of claims added long after the 2000 disclosure.
Practical conclusion: § 103 obviousness here has two answers depending on the date question. Under the 2017 date, invalidity is straightforward. Under the 2000 date, the case is arguable but still strong, as shown below.
2. The prior-art set (§103 art of record)
| Ex. | Reference | What it supplies |
|---|---|---|
| EX1012 | US 6,604,140 (Beck et al.) — "Service framework for computing devices" | Primary reference. Distributed discovery of services among devices in an ad-hoc network; a second device creates and advertises a service descriptor; the first device receives and stores it; descriptor includes physical location / IP address of the service; period of validity (expressly "10 seconds"); advertising on behalf of a third device; the third device is a printer; a PC connected to the printer; filtering of descriptors; lifecycle management (registration, lookup, binding, removal, update). Beck also teaches Bluetooth at 3:51–52 per the petition. (SumoBrain claim text) |
| EX1013 | US 9,021,012 (Putzolu et al.) | Mobile agents that migrate across nodes — execute, stop, transfer with state, resume; used by the petition to supply service resumption, service requests, and audio players/output services. |
| EX1005 | US 6,850,979 (Saulpaugh et al.) | Distributed-computing message-gate/registration-lookup architecture (Jini-lineage). |
| EX1015 | US 6,643,650 (Slaughter et al.) | Remote method invocation in a distributed object system (Jini-lineage). |
| EX1011 | US 6,717,801 (Castell et al.) | Standardized RF transceiver module — adding wireless capability to a host device via a modular radio. |
| EX1014 | US 7,028,102 (Larsson et al.) | Retrieved only as an exhibit title; substance not verified. |
| Family-cited art (Unified Patents "Patent Art") | US 6,195,564 (Ericsson — "Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device"), US 6,628,417, US 6,952,414, US 7,239,346, EP 0 691 619 B1, JP H11-316658 A, CN 100334577 C, US 4,291,956, US 5,475,507, US 6,215,494, US 6,069,707, US 6,199,106, US 6,801,692 | Background art for automatic/proximity link establishment, hostless printing, wireless browsing devices. |
To these I would add, as art a POSITA is presumed to know, the Bluetooth 1.0 specification (July 1999) — whose inquiry/inquiry-response, paging, Service Discovery Protocol (SDP), and bonding with stored link keys mechanisms are literally the claimed subject matter — plus IrDA (IrLMP/IAS) and Jini (1998/1999).
3. Element-by-element mapping
Claim 1 (method) / claim 8 (apparatus) / claim 16 (method for a wireless device serving client devices):
| Claimed element (per dependent-claim cross-references and claim 16 text retrieved earlier) | Disclosure |
|---|---|
| Wireless device with wireless communication circuitry + memory | Beck's second/third devices + Castell's standardized RF transceiver module; Bluetooth chipset in any of them |
| Wirelessly detects or is detected by a smart phone within physical proximity | Bluetooth inquiry/inquiry-response is defined by proximity (≈10 m nominal); Beck's ad-hoc network discovery; US 6,195,564's automatic link establishment when a device comes into range |
| Transmission of device object / device information to the phone to enable identifying or selecting the device | Beck's service descriptor (location, IP address, validity period) advertised and stored; Bluetooth SDP service records; Jini lookup/proxy objects (Saulpaugh, Slaughter) |
| Establish the wireless communication link | Beck's communication processing; Bluetooth paging/connection |
| Subsequent connections without repeating the short-range detection | Bluetooth bonding / link key retention; Beck's validity period for a stored descriptor |
| Security or authentication information exchanged during detection (cl. 13) | Bluetooth pairing PIN/link key; 802.11 shared-key/SSID profile |
| Device is a printing device receiving print data / a print job (cl. 15) | Beck claims 23–24 (printer; PC connected to printer) expressly in the service framework; family-cited Ricoh JP H11-316658 A and US 6,628,417 |
| Device is audio output / TV / display / projector (cl. 12) | Putzolu's audio players and services that access audio resources to produce sound (petition at [18.PRE]) |
| Button or voice-command interface initiating detection (cl. 6, cl. 14) | Conventional interaction hardware; US 6,952,414 (portable browsing + cordless phone module) and contemporaneous voice-command art |
Claim 16's "device object or device information … to facilitate identifying or selecting the wireless device for service" is, on its face, Beck's service descriptor with a different label. That is the core vulnerability of this patent: the claim language is Jini/Bluetooth SDP vocabulary re-labelled.
4. The combinations and the motivations to combine
Combination A — Beck alone (or Beck + Bluetooth spec). Beck discloses service advertising, descriptor storage, ad-hoc discovery, validity periods, printer services, filtering, and Bluetooth at 3:51–52. Adding Bluetooth's proximity discovery to Beck's framework is not a combination of two inventions at all: Beck already names the radio. Motivation: Beck's own stated purpose (discovery of services among devices in an ad-hoc network) is only achievable over a short-range ad-hoc link, and Bluetooth was the 1999 standard purpose-built for exactly that. KSR step: "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known" — but here the elements were known and Beck teaches the architectural combination, leaving only the substitution of one known short-range radio. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Combination B — Beck + Putzolu (the petition's Ground 2a). The petition's verified argument: Beck teaches that services can be "dynamically suspended, saved to persistent storage, and later resumed" (Beck 6:58–61); Putzolu teaches agents that migrate by executing on one node, stopping, transferring with their state, and resuming on another (Putzolu 4:5–10, 4:42–44, 7:29, 7:54–56, 8:31–39, 8:51–54). The petition expressly frames the motivation as: "A POSITA would have found it obvious—and would have been motivated—to migrate using Beck's devices (from the smart phone to the client device). Resumption of services at the client device results in receiving a service request at the wireless device" and, for the "no re-detection" limitation, "a POSITA would understand that discovery would not need to be re-run for each message sent." That is a textbook KSR "obvious to try" argument in a field with a finite number of identified, predictable solutions for session/state continuity.
Combination C — Beck (or Bluetooth SDP) + Saulpaugh / Slaughter (Jini-lineage). Supplies registration/lookup, leased descriptors, downloadable proxies, and remote invocation — i.e., the "device object" and the wirelessly-managed/wirelessly-driven behaviour. Motivation: Jini and Bluetooth SDP are both industry standards solving the same problem (advertising a device's capabilities so a client can select and bind to it without a pre-installed driver); combining a Jini-style lookup/lease model with a short-range radio was the express subject of contemporaneous industry activity (Bluetooth SIG SDP was modelled on exactly this service-record concept).
Combination D — Beck + Castell. Castell's standardized RF transceiver module supplies the claimed "wireless communication circuitry … chip or chipset" as a modular add-on. Motivation: the well-known design incentive to retrofit legacy output devices (printers, audio devices, TVs) with wireless capability rather than replacing them — a point this patent's own specification stresses.
Combination E — US 6,195,564 + Jini/SDP. For the specific "future wireless connections … without having to repeat the short range wireless detection" language of the abstract and claim 16. US 6,195,564 (Ericsson) is directed to automatically establishing a wireless link between a wireless modem and a communication device — the automatic-pairing/auto-connect concept. Bluetooth bonding (stored link keys) is the standard implementation. Combined with a descriptor/advertisement mechanism (Beck/SDP), every remaining limitation is met.
Cross-cutting motivations a POSITA would articulate (KSR/MPEP § 2143):
- Design incentive to eliminate device drivers and cables — the patent itself frames the problem this way, conceding the industry was already moving in this direction.
- Industry standardization — Bluetooth 1.0 (1999) was published specifically to enable ad-hoc, proximity-based, cable-free device pairing; using a known standard for a known purpose is a predictable variation.
- Predictable results — proximity discovery, descriptor exchange, link establishment, and cached-link reconnection are each independently known and each behaves the same way in combination.
- Market forces — exploding mobile phone/handset population and the demand to print, display, and play content from handsets.
5. Where an obviousness challenge is weakest (be candid)
- Priority date. If Flexiworld can substantiate § 112 written-description support in the 2000/2001 applications for the full generic "device object or device information" and the "without repeating the short range wireless detection" limitations, Putzolu (granted 2015) and Larsson (2006) are likely not prior art, and Combination B collapses to Beck alone. The petition's continuity-data exhibits show the petitioner expected to fight here.
- Claim construction is unconstrued. No court or the Board has construed "wirelessly detect … within a physical proximity," "device object," or "locked for future wireless communications." A narrow reading (e.g., requiring detection initiated by the wireless device itself rather than responsive discovery) could distinguish Beck's advertise-and-receive model.
- Secondary considerations. Flexiworld's assertion campaign and any licenses/settlements may be argued as commercial success or industry adoption. No nexus evidence is in the retrieved record, and because the cases settled pre-Markman, there is no adjudicated finding either way. I would not treat this as a strong non-obviousness case, but it is not zero.
- Unverified references. I could not verify the substance or dates of US 7,028,102 (Larsson), US 6,850,979 (Saulpaugh), US 6,643,650 (Slaughter), or US 6,717,801 (Castell) in this session. I also could not retrieve the petition's Ground 1 or any Ground 3, nor confirm that all claims (the patent has ≥16 claims; independents appear to be 1, 8, and 16) were challenged.
6. Bottom line
On the record I retrieved, the strongest § 103 case is Beck (US 6,604,140) as the primary reference, alone or in view of the Bluetooth 1.0 SDP/bonding standard, and optionally in view of Putzolu (US 9,021,012) for state/service resumption, Saulpaugh/Slaughter for the Jini-style device-object/lookup layer, Castell for the modular wireless chipset, and US 6,195,564 for automatic link establishment. The motivation is supplied by Beck's own ad-hoc service-discovery purpose, by Bluetooth's published design objective of proximity-based pairing, and by KSR's design-incentive/"finite predictable solutions" rationales.
The decisive variable is not the technical merits — it is whether the claims get the November 1, 2000 priority date. Confirm that first from the file histories (EX1002, EX1016–EX1019) before relying on this analysis; if the 2000 date fails, obviousness becomes materially easier because 2001–2017 proximity-pairing art enters the picture.
Note also the enforcement overlay from the earlier section: the grant's recorded status is Expired – Fee Related with anticipated expiration November 1, 2021, and one Google Patents legal-events record shows a "PATENT EXPIRED FOR FAILURE TO PAY MAINTENANCE FEES" event — I could not verify that event belongs to this specific grant rather than another Flexiworld patent on the same page, so treat it as unconfirmed. What is confirmed is that no tribunal has ever adjudicated these claims' validity.
Generated 9/15/2026, 6:49:27 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.
Keep exploring
More patents asserted by Flexiworld Technologies, Inc.
- US 10162596Summary — U.S. Patent No. 10,162,596 (US10162596B2) Bibliographic data (verified against USPTO-derived sources: uspto.report and Google Patents) | Field | Value | |---|---| | Patent number | 10,162,596 (B2) | | Title | Portable electronic…
- US 9836259Based on the authoritative patent text you supplied plus live searches of USPTO records (uspto.report, Google Patents, Justia, Unified Patents, Flexiworld's own portfolio page), here is the requested summary. US Patent 9,836,259…
- US 11096056I'll run targeted searches for this specific patent number against USPTO and CAFC sources, then build the summary from the authoritative patent text already in hand. Let me search for CAFC appellate activity and the patent's claim text /…
- US 9798516I'll search for litigation and docket information on this specific patent, then compile the summary. US Patent 9,798,516 — Summary Note on sourcing: I was able to retrieve the patent document itself, USPTO-based databases (uspto.report…
- US 9042811Summary of U.S. Patent No. 9,042,811 (US9042811B2) Bibliographic Data | Field | Value | |---|---| | Title | Specification of Smart Wireless Television for Rendering Digital Content | | Assignee (at grant) | Flexiworld Technologies, Inc…
- US 10768871The initial searches returned no results. Let me try broader queries. I have the core patent details. Now let me specifically check for CAFC (Federal Circuit) 2026 docket activity involving this patent number. US Patent 10,768,871…
- US 11029903I'll search for US patent 11029903 in the USPTO database and check for any CAFC 2026 docket activity involving this patent number. The initial searches returned no results. Let me try alternative queries. I have solid USPTO/Google Patents…
- US 9965233I'll search for the specific patent number and any CAFC 2026 docket activity. Let me get more detail on the claims and check for any CAFC activity specific to this patent. Based on my searches (Google Patents, USPTO/PTAB records via…
Other patents in Wireless Technologies
- US 6711385I'll search for authoritative information on US patent 6711385 and any related CAFC 2026 docket activity. Let me gather additional detail on the litigation and reexamination outcomes. One more check for any post-argument rulings in the…
- US 10667089I'll search for authoritative information on US 10,667,089, including any CAFC 2026 activity. Let me dig into litigation and CAFC activity for this patent specifically. Let me verify the litigation hit and check specifically for Federal…
- US 10425806I'll verify the patent's identity and check litigation/docket sources before summarizing. Let me check the CAFC/appeal and PTAB status specific to this patent. US Patent 10,425,806 B2 — Verification and Summary Source of record: the full…
- US 7020849I'll verify the patent's identity and check for any 2026 CAFC activity. Let me try a few more targeted searches for 2026 litigation activity. US Patent 7,020,849 — Verified Summary Important caution on similar numbers: Searches surfaced a…
- US 6708214I'll search for authoritative information on US 6708214, including any 2026 CAFC activity. US Patent 6,708,214 — Summary Important note on the search scope before the substance: I could not find, in the searches I was able to run, any CAFC…
- US 7417944I'll search for authoritative information on US 7417944. Let me verify the abstract, claim set, and any appellate litigation specifically tied to this patent number. Let me check for any PTAB/ITC/Court of Appeals activity and confirm the…
- US 7672219I'll search for authoritative information on this patent. Let me refine my search for litigation and any 2026 Federal Circuit activity. Let me look specifically for the claims and litigation/post-grant history. Patent Analysis Report — US…
- US 9049558I'll search for current information on this patent number and check for any 2026 litigation activity. Let me search for the claim text and any 2026 Federal Circuit appellate activity specific to this patent. Let me try to retrieve the full…
This patent in court (7)
7 tracked lawsuits name US 10140073.