Invalidity dossier
US 10199072
Current assignee: LG Electronics Inc., LG Electronics U.S.A., Inc.
Added 9/28/2026, 6:05:18 PM
Active provider: DeepSeek · deepseek-v4-flash
Auto-generating section 1 of 2: Extensions…
Each section takes ~30-60s with web-search grounding. Keep this tab open — sections will fill in below as they complete.
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for litigation/docket information on this specific patent, then summarize from the authoritative full text provided.
Let me check for the specific district court litigation and any Federal Circuit appeal.
Let me verify whether any Federal Circuit 2026 docket specifically involves 10,199,072.
US Patent 10,199,072 — Analyst Summary
Sourcing note: The authoritative full text of US10199072 is the Google Patents document provided (fetched 2026-09-28). Litigation/docket details come from the searches below. Where secondary databases disagree with the patent text, I flag it.
1. Bibliographic Data
| Field | Value | Source/Notes |
|---|---|---|
| Patent number | US 10,199,072 B2 | — |
| Title | Editing method and recording and reproducing device | Google Patents |
| Application no. | 15/808,175 | — |
| Filed | 2017-11-09 | Google Patents. Unified Patents portal lists "Application Date 2017-11-08" — a ±1 day indexing variance; I treat the patent record date as literal |
| Issued / granted | 2019-02-05 | Google Patents. Unified Patents lists "Grant Date 2019-02-04" — same ±1 day variance |
| Priority date | 2004-12-02 | Per JP 2004-349264; family also claims JP 2004-378767 and JP 2004-378768 (both 2004-12-28). Unified Patents lists priority as "2004-12-01" — again a date-indexing variance |
| Inventors | Susumu Yoshida (Kawasaki); Junji Shiokawa (Chigasaki); Hiroo Okamoto (Yokohama) | All JP |
| Original assignee | Maxell, Ltd. (listed) | Family predecessor US 7,613,383 is listed to Hitachi, Ltd. |
| Current assignee | Maxell, Ltd. | Reassignment: Maxell, Ltd. → Maxell Holdings, Ltd. (merger, 2021-11-29) → Maxell, Ltd. (change of name, 2021-12-03) |
| CPC classes | G11B27/00, G11B27/10, G11B27/031, G11B27/034, G11B27/34, G06F3/0481, G06F3/0482, H04N5/76, H04N9/79, H04N9/87 | — |
| Continuation chain | US 15/176,435 (US 9,818,449) → 14/141,417 (US 9,384,783) → 12/567,898 (US 8,644,684) → 11/203,457 (US 7,613,383, filed 2005-08-11) | Root filing 2005-08-11 |
| Status | Expired – Lifetime; anticipated expiration 2025-08-11 | Google Patents legal status |
Territorial term note: The expiration date is driven by the root 2005-08-11 filing (via §120 chain), not the 2017-11-09 continuation filing. So this patent's term ran out in 2025 even though it issued in 2019.
2. Abstract (verbatim, Google Patents)
"In order to provide a recording and reproducing device that allows a user to select and manage arbitrary play lists, a unit of management for managing all registered play list information and an upper management hierarchical level are added. The unit of management is adapted to be handled on the same level with unified information that indicates a reproduction range of all AV data. User-defined unified information is adapted to be handled on the added management hierarchical level. The user-defined unified information is formed to allow arbitrary reproduction ranges contained on a lower hierarchical level to be registered."
3. Plain-Language Overview of the Independent Claims
There are 19 claims; four are independent: claims 1, 6, 11, and 16. Claims 2–5, 7–10, 12–15, 17–19 are dependent. Notably, this grant's claim set is apparatus/system/method oriented (unlike the original parent's more method-style wording) and centers on a specific "non-destructive group deletion" feature rather than on the hierarchy description of the specification.
Claim 1 — Information processing apparatus
A device with a recording medium storing video data, a display/output unit, a reproducer, and a controller. It shows a menu of group "characters" (i.e., the on-screen tag/label characters for each group — e.g., the "all programs," "all play lists," and per-user tags); the user selects a group by pointing at its character. When a group is selected, its set of thumbnails is displayed in an order the user can edit. The distinctive limitation (1.g): if the same video item belongs to both a first and second group, deleting it from the first group leaves it still in the second group, and its thumbnail still appears when the second group is displayed.
Claim 6 — Information processing system
Same substance as claim 1, recast as a system (recording medium + reproducer + display unit) with the same editable-thumbnail-order and cross-group non-destructive deletion behavior.
Claim 11 — Information processing method
The method counterpart: record video data; output the selectable-character menu; reproduce selected video; control display of each selected group's thumbnails in an editable order; and when an item shared between two groups is deleted from the first, keep it in the second and keep showing its thumbnail there.
Claim 16 — Information processing system (controller-centric)
A system where the controller is expressly configured to: display a menu of selectable characters corresponding to multiple video groups; upon selection of a group's character, display that group's thumbnails with an editable order; and, where a video item is in both groups, upon deletion from the first group retain it in the second and keep displaying its thumbnail there.
Common inventive thread across all four independents: (a) group selection by pointing at an on-screen character/tag; (b) user-editable ordering of thumbnails within a selected group; and (c) shared-item deletion from one group does not remove the item from the medium or from other groups.
4. Family / Continuation Landscape
This is one of an 11-member US family (all sharing priority 2004-12-02): US 7,613,383; 8,644,684; 9,384,783; 9,818,449; 10,199,072; 10,679,674; 11,017,815; 11,468,916; 11,783,863; 11,929,101; and 12,198,733. It descends from three JP applications (JP 2004-349264, JP 2004-378767, JP 2004-378768).
5. Litigation / Docket Findings (specific to 10,199,072)
District court — Maxell, Ltd. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) et al
- Filed 2023-12-29 in E.D. Tex. as 5:23-cv-00152; transferred to N.D. Cal. on 2024-07-01; N.D. Cal. case no. 5:24-cv-04972 (Judge Noël Wise / previously Eumi K. Lee).
- The '072 patent was one of nine asserted Maxell patents (alongside 6,856,760; 6,973,334; 7,199,821; 10,244,284; 8,339,493; 8,736,729; 7,421,188; 9,818,449).
- LG moved for judgment on the pleadings under 35 U.S.C. § 101, attacking the '072 (with '188, '449, '760) as directed to the abstract idea of "recording, manipulating, and displaying data." Briefed; hearing set for 2025-05-13.
- On 2025-04-29 the parties notified a prospective settlement; the case was ultimately stipulated dismissed with prejudice (Rule 41(a)(1)(A)(ii)), each side bearing its own costs — so the § 101 issue was never ruled on.
PTAB — LG Electronics Inc. et al. v. Maxell, Ltd., IPR2025-00394
- Filed 2024-12-30 against the '072 (application 15/808,175), challenging claims 1–19. Tech Center 2400.
- Grounds: (1) obvious over Bryant (US 2004/0201691); (2) claims 1, 6, 11, 16–19 over Kaplan (US 2001/0056434), claims 2–5, 7–10, 12–15 over Kaplan + Sporer (US 6,091,778); (3) claims 1–16 over Horn (US 2004/0177319).
- Maxell filed a Fintiv-based request for discretionary denial (2025-04-11).
- Terminated — settled, 2025-07-14 ("Decision: Settlement Prior to Institution of Trial," 37 C.F.R. § 42.74); refund approved 2025-07-30. No institution decision on the merits.
Federal Circuit (2026) — no docket specifically tied to 10,199,072 found. My searches surfaced Maxell-related CAFC 2026 dockets (e.g., 26-1111 Maxell v. Samsung, filed 2025-10-29; 26-1320; 26-1330; and 2026-1625, an "Appeal From PTO" with Maxell counsel Robert G. Pluta), but none is confirmed to involve the '072 patent. Because IPR2025-00394 terminated by settlement before institution and the district case was dismissed with prejudice, there is no obvious appellate vehicle for this patent. I cannot confirm the existence of any 2026 CAFC docket for 10,199,072 — treat any such claim as unverified.
6. Uncertainty / Caveats
- Date variances: Google Patents vs. Unified Patents differ by one day on filing, grant, and priority. The Google Patents figures (2017-11-09 filing; 2019-02-05 issue; 2004-12-02 priority) are what the provided full text reports; the others likely reflect time-zone/index conventions, not different facts.
- No CAFC 2026 record located for this exact patent. The Maxell/Samsung Federal Circuit appeals I found appear to concern other Maxell patents. If a specific 2026 CAFC appeal of the '072 is alleged, I would need the docket number to verify; I will not assert one exists.
- Assignee history: The '072 is listed with Maxell as original assignee, while the family root US 7,613,383 is listed to Hitachi — consistent with the Hitachi→Maxell consumer-electronics IP transfer, but I have not independently verified the chain of title from a USPTO assignment record.
Generated 9/28/2026, 6:11:07 PM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10199072. The free-form analysis below may also discuss cases beyond this list.
- LG Electronics Inc. et al. v. Maxell, Ltd.filed Dec 30, 2024IPR2025-00394Patent Trial and Appeal Boardterminated Jul 14, 2025terminated — settled prior to institution of trial
Defendants: Maxell, Ltd.
- Maxell, Ltd. v. LG Electronics Inc. et al.filed Dec 29, 20235:23-cv-00152; 5:24-cv-04972U.S. District Court for the Eastern District of Texas (originally); transferred to U.S. District Court for the Northern District of Californiaterminated Jul 2, 2025transferred; closed/dismissed (settlement)
Defendants: LG Electronics Inc., LG Electronics U.S.A., Inc.
Other patents asserted: 8736729, 6856760, 6973334, 7199821, 10244284, 8339493, 7421188, 9818449
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 10,199,072. Let me search multiple sources.
I found key candidates. Let me dig into the specific cases.
Let me verify whether the '072 patent appears in any other cases beyond the LG dispute.
Litigation Involving U.S. Patent No. 10,199,072
Based on my searches (Google Patents, Docket Alarm, CourtListener, Unified Patents, and PTAB records), the '072 patent ("Editing method and recording and reproducing device," originally assigned to Maxell, Ltd., priority date December 2, 2004) has been asserted in one district court action and challenged in one PTAB proceeding. Details below.
1. District Court Litigation
| Item | Detail |
|---|---|
| Case name | Maxell, Ltd. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) et al. |
| Plaintiff | Maxell, Ltd. (Japanese corporation, Kyoto) |
| Defendants | LG Electronics Inc. (Korea) and LG Electronics U.S.A., Inc. (Delaware) |
| Original jurisdiction | U.S. District Court for the Eastern District of Texas, Texarkana Division — Case No. 5:23-cv-00152 (Judge Robert W. Schroeder, III) |
| Filing date | December 29, 2023 |
| Transfer | Defendants' § 1404(a) motion to transfer was granted July 1, 2024; case transferred to the U.S. District Court for the Northern District of California, San Jose Division |
| N.D. Cal. case number | 5:24-cv-04972 (docketed 5:24-cv-04972-EKL / 5:24-cv-04972-NW; Judge Eumi K. Lee, later reassigned under Judge Noel Wise, -NW-SVK) |
| Asserted patents | Nine patents: U.S. 6,856,760; 6,973,334; 7,199,821; 10,244,284; 8,339,493; 8,736,729; 7,421,188; 9,818,449; and 10,199,072 |
| Accused products / functionality | LG smartphones (G, K, Q, Stylo, V families; LG V60 ThinQ 5G cited as representative) and LG Gram laptops; the "Gallery" application is accused of practicing the '072 claims (selecting video groups/albums, re-ordering thumbnails, and deleting a video from one album without removing it from the device or other albums). For the '072 patent, claims 11–15 are alleged infringed. |
| Outcome / status | Pending. The dockets reflect active case management through 2024–2025 (answer filed April 2024, claim construction and § 101 dispositive motion activity — a motion hearing on § 101 was set for March 12, 2025). No final judgment or verdict is reflected in the records retrieved. |
2. PTAB (Inter Partes Review) — related adversarial proceeding
| Item | Detail |
|---|---|
| Case name | LG Electronics Inc. et al. v. Maxell, Ltd. |
| Proceeding No. | IPR2025-00394 |
| Petitioner | LG Electronics Inc. and LG Electronics U.S.A., Inc. |
| Patent Owner | Maxell, Ltd. |
| Filed | December 30, 2024 |
| Patent challenged | U.S. 10,199,072 — claims 1–19 |
| Grounds | Obviousness over Bryant; over Kaplan (alone and in view of Sporer); over Horn |
| Panel | Frederick Laney, Jason Melvin, Kevin Trock |
| Outcome / status | Terminated — settled prior to institution of trial (Termination Decision, July 14, 2025); refund approved July 30, 2025. |
The IPR was one of a coordinated series LG filed against Maxell patents in late Dec. 2024–Jan. 2025 (e.g., IPR2025-00392 on 8,339,493; -00393 on 9,818,449; -00444 on 8,736,729; -00518 on 6,856,760; -00519 on 7,421,188; -00520 on 10,244,284). The parallel IPRs were likewise terminated on settlement.
3. Other References
- The Google Patents "Family has litigation" flags for this family (Darts-IP family ID 36756652) point to (a) the PTAB case IPR2025-00394 and (b) the N.D. Cal. case 5:24-cv-04972 — i.e., the transferred Maxell v. LG action described above.
Caveats / Limitations
- My search evidence reflects dockets and PTAB records through approximately mid-2025. I could not retrieve a 2026 docket update confirming the N.D. Cal. case's current posture (e.g., whether it has since settled, gone to trial, or been dismissed). Treat the "pending" status as of the last records retrieved, not as confirmed current ground truth.
- I did not find any litigation naming the '072 patent against defendants other than LG (e.g., no separate Samsung, Amazon, or Vantiva suit specifically asserting the '072 patent in the records retrieved). Maxell has other suits involving different patents in the same family/portfolio, which should not be confused with the '072 patent.
- No** CAFC appeal** specifically involving the '072 patent was found. (A separate Maxell-Samsung claim construction order and various Maxell IPRs appear in searches but concern other patents.)
- Patent numbers and case numbers are reproduced exactly as they appear in the sources; I have not normalized them.
Bottom line: The known litigation involving US 10,199,072 is the patent-infringement action Maxell, Ltd. v. LG Electronics Inc. et al. (filed in E.D. Tex. as 5:23-cv-00152 on Dec. 29, 2023; transferred to N.D. Cal. as 5:24-cv-04972), plus the related PTAB inter partes review IPR2025-00394, which terminated by settlement in July 2025. The district court case was still pending as of the last records I could retrieve.
Generated 9/28/2026, 6:11:01 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: LG Electronics Inc., LG Electronics U.S.A., 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 searching for PTAB proceedings involving this patent, including the IPR2025-00394 referenced in the patent metadata.
Let me dig into the petition grounds and check for any other proceedings on this patent.
Let me check for any additional proceedings on this patent (second IPR, reexam, or appeals).
Proceedings overview
Caution on the source data first. The structured "PTAB proceedings on file" block states the USPTO ODP API returns no AIA trial proceedings for US 10,199,072 — i.e., canonically, zero proceedings as of the last ingest. Web research, however, surfaces one proceeding the ODP set does not reflect: IPR2025-00394 (LG Electronics v. Maxell), filed 2024-12-30. The most likely explanation is that the case was terminated on settlement before institution, so it never became an instituted "AIA trial" in ODP's dataset (and it is separately flagged on the patent's own Google Patents page as "PTAB case IPR2025-00394 filed (Settlement)"). I flag it rather than treat it as absent.
Breakdown of the one proceeding found: 0 active · 0 claims invalidated · 0 claims sustained · 1 settled (terminated pre-institution) · 0 institution-denied.
Bottom-line defensive posture: No claim of the '072 patent has ever been adjudicated on the merits by the PTAB — not canceled, not sustained, not even instituted. LG's IPR died by joint stipulation 2025-07-14. The genuinely decisive defensive fact is separate from PTAB: the patent expired 2025-08-11 (per Google Patents' computed term — 20 years from the 2005-08-11 parent filing, since the '072 is a continuation in a chain running back to that date). So this is not "the patent survived two IPRs and is hardened," and it is not "claims 1–5 were canceled." It is: an untested patent that has run out of term.
IPR2025-00394 — LG Electronics Inc. & LG Electronics USA, Inc. v. Maxell, Ltd.
- Type: Inter Partes Review (35 U.S.C. §§ 311–319)
- Filed: 2024-12-30
- Status: "Terminated-Settled" (structured data). Plain-English gloss: the Board never decided whether to institute; the parties settled and the Board closed the case with a "Settlement Prior to Institution of Trial" order (37 C.F.R. § 42.74).
- Judge panel: Kevin C. Trock, Jason W. Melvin (authoring), Frederick C. Laney — designated on the termination decision.
- Petition grounds: Challenged claims 1–19 (all claims). Reported grounds, all § 103 obviousness:
- Ground 1 — claims 1–19 obvious over Bryant (US 2004/0201691), a digital-photography grouping/classification system; petitioner mapped Bryant's "All Images"/"All Favorites" database classifications to the claim's non-destructive removal limitation.
- Ground 2 — claims 1, 6, 11, 16–19 obvious over Kaplan (US 2001/0056434); claims 2–5, 7–10, 12–15 obvious over Kaplan in view of Sporer (US 6,091,778) to supply the encoder limitations.
- Ground 3 — claims 1–16 obvious over Horn (US 2004/0177319), for its "one object, many collections, remove-from-one-without-deleting" catalog model.
- The petitioner's exhibit list also reflects DeYonker (US 2006/0107289), Mercer (US 2004/0078383), Atkinson (US RE32,632) and the '072 prosecution history, consistent with additional obviousness combinations. (Grounds are reported from the petition/AI digests and petitioner's exhibit list; I did not independently verify every claim-chart limitation.)
- Institution decision: None issued. The Board never reached a § 314(a) decision. Patent Owner filed a Brief in Support of Discretionary Denial (Paper 7, 2025-04-11) urging denial under § 325(d) and Fintiv/NHK Spring (parallel N.D. Cal. litigation, no stay, no Sotera stipulation, near-expired patent). The Board extended the discretion-briefing deadline (Paper 6, 2025-04-09), then the case settled before any decision.
- Final Written Decision: None. The termination order states expressly: "This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." No claim was canceled or confirmed.
- Settlement / termination: Joint Motion to Terminate (Paper 8, 2025-07-01), filed with a Confidential Settlement Agreement (Ex. 1041) and a Joint Request to treat it as business confidential information (Paper 9). The Board granted termination and the BCI request on 2025-07-14 (Paper 10) — terms are confidential and kept separate from the patent file under § 42.74(c). Petitioner then sought a refund of post-institution fees (Paper 11, 2025-07-22), which the Board approved (Paper 12, 2025-07-30) — confirming the case never instituted.
- Appeal: None (there was no FWD, hence no appealable final decision).
- Related district-court context (relevant to why it settled): The IPR tracked Maxell, Ltd. v. LG Electronics Inc. et al., originally 5:23-cv-00152 (E.D. Tex., filed 2023-12-29), transferred to N.D. Cal., 5:24-cv-04972 (2024-08-09). LG moved to stay pending the IPRs (2025-01-24); Judge Wise denied the stay (2025-04-25). The parties then gave notice of a prospective global settlement (2025-04-29). LG's § 101 eligibility challenge to the '072 (and the '188, '449, '760) — that the claims are directed to the abstract idea of "recording, manipulating, and displaying data" — was fully briefed but never ruled on, and the case settled.
- Defensive value: Because no FWD issued, there is no § 315(e)(2) estoppel — LG (and any other party) is not barred from re-raising the Bryant/Kaplan/Sporer/Horn art in district court or in a fresh PTAB filing. For a defendant asserting invalidity today, the LG petition and its exhibit set are a ready-made, publicly available roadmap to a § 103 attack (the petition, PO's discretionary-denial brief, and exhibits are in the public PTAB file). The counterweight is that the patent has expired, so the practical exposure is backward-looking damages for past conduct, not injunctive relief.
Strategic summary
Claim status. No claim of US 10,199,072 is canceled and none is sustained. Claims 1–19 were challenged in IPR2025-00394, but because that case terminated pre-institution, every claim remains UNTESTED on the merits at the PTAB. There is no narrowing, no certificate, and no claim-level disposition to point a court to. Anyone characterizing the '072 as "hardened by surviving IPR" or "gutted by IPR" is wrong on both counts.
Estoppel landscape. With no final written decision, § 315(e)(2) estoppel never attached. There is also no estoppel from the district-court side, since the N.D. Cal. case settled. That means the entire prior-art field remains open: Bryant, Kaplan (+Sporer), Horn, DeYonker, Mercer, and RE32,632/Atkinson can all be asserted again, and combined differently, by a new challenger. The only caveats are ordinary ones — § 325(d) discretion if the same art was already before the Office, and Fintiv-type discretionary denial if a challenger waits while parallel litigation matures. The LG petition teaches you exactly how each reference maps to the claim limitations, which is useful but also means a new petition risks a § 325(d) "substantially the same art" objection.
Pattern signals. LG ran a coordinated seven-petition campaign against Maxell's asserted portfolio in one window — IPR2025-00392 ('493), -00393 ('449), -00394 ('072), -00444 ('729), -00518 ('760), -00519 ('188), -00520 ('284) — plainly to leverage institution into a litigation stay. The stay was denied (2025-04-25), the global settlement followed (notice 2025-04-29), and the '072 IPR was terminated 2025-07-14 (with sibling terminations like IPR2025-00519 on the '188). There is no defensive aggregator (e.g., Unified Patents) as petitioner here — the petitioner is the defendant itself, LG. Note that the "Unified Patents" URLs that appear in search results are Unified's public PTAB data portal republishing docket data, not a Unified-filed challenge. Maxell, for its part, is a serial litigant (ZTE, Apple, Samsung, VIZIO campaigns) but has not litigated this particular '072 IPR to a merits appeal. And the whole family has now lapsed: the '072 and its continuations are marked "Expired – Lifetime" on Google Patents with anticipated expiration 2025-08-11.
Recommended next steps
- There is no FWD to quote or link. The operative document is the Board's Termination Decision — Settlement Prior to Institution of Trial (Paper 10, 2025-07-14), which states verbatim that it "does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." Public copy: docketalarm.com — IPR2025-00394 Termination Decision. Case summary: IPVerse — IPR2025-00394. The petition and PO's discretionary-denial brief sit in the PTAB public file (e-Petitions / PTAB E2E) under petition IDs 1557189–1557190.
- No active proceedings to monitor. Nothing is pending institution, no trial milestones are live, and the statutory 1-year clock never started. There is nothing to calendar.
- Lead with expiration, not IPR, in any defense posture. The single strongest, least contestable point is that the '072 patent expired 2025-08-11, and the patent's own status is "Expired – Lifetime." A demand letter asserting live infringement and seeking an injunction is therefore on weak footing; any remaining exposure is historic-damages-only and subject to the 6-year § 286 lookback. I'd verify the expiration against the USPTO Patent Center "Expiration" field and the § 154(b) PTA figure before relying on it in a filing.
- If you still need an invalidity position (e.g., for past-damages exposure), you have a free blueprint: LG's petition maps Bryant, Kaplan/Sporer, and Horn limitation-by-limitation, and the PO's own discretionary-denial brief shows which of the Fintiv/§ 325(d) arguments Maxell likes to run. Just recognize you'd be re-deploying substantially the same art, which invites a § 325(d) defense.
- Flag the data discrepancy to whoever maintains your docket: ODP shows no AIA proceedings, but IPR2025-00394 exists and is confirmed on the patent's own Google Patents page. Treat "no ODP proceedings" as a data-coverage artifact for pre-institution terminations, not as proof that no IPR was ever filed.
Caveat on sourcing: the proceeding number, parties, panel, filing/termination dates, and the termination order language are grounded in the PTAB docket documents retrieved above. The claim-by-claim petition grounds are reported from the petition digest and petitioner's exhibit list; I did not independently re-derive each claim chart, and the settlement terms themselves are confidential and unavailable.
Generated 9/28/2026, 6:11:21 PM
Ownership chain (4)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2014-04-04 · Assignment
Hitachi Consumer Electronics Co., Ltd.Hitachi Maxell, Ltd.
internal reorg
2021-11-29 · Merger
internal reorg
2021-12-03 · Change of Name
change of name only
? · Assignment
Hitachi, Ltd.Hitachi Consumer Electronics Co., Ltd.
internal reorg
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 start by pulling what the patent record itself shows, then cross-check the litigation and ownership events via live search.
Good context. Now let me pin down the recorded assignment reel/frame entries and correspondent.
Assignment & Ownership Analysis — US 10,199,072 B2
Verification sources used: Google Patents legal-events tab (https://patents.google.com/patent/US10199072/en), the PTAB PETS filing record for IPR2025-00394, the N.D. Cal. docket in Maxell, Ltd. v. LG Electronics, and the EP/GB register records for the same Hitachi/Maxell corporate reorganization. I was not able to retrieve the actual USPTO reel/frame numbers for this patent's own assignment records — see the note at the top of the Assignment timeline. I am not inventing them.
Inventors
| Inventor | Residence of record | Employer at filing (determinable) |
|---|---|---|
| Susumu Yoshida | Kawasaki, Japan | Hitachi, Ltd. (consumer-electronics / recording group) |
| Junji Shiokawa | Chigasaki, Japan | Hitachi, Ltd. |
| Hiroo Okamoto | Yokohama, Japan | Hitachi, Ltd. |
The three inventors are listed identically across the whole continuation chain (confirmed on the face of child application 16/883,124, which lists "Susumu YOSHIDA, Kawasaki, Japan; Junji SHIOKAWA, Chigasaki, Japan; Hiroo OKAMOTO, Yokohama, Japan"). They were Hitachi employees at the 2004/2005 filing; the Japanese priority filings (JP 2004-349264, JP 2004-378767, JP 2004-378768) were made by Hitachi's IP organization.
Unusual patterns: None of the classic fire-sale tells. There is no evidence any inventor departed the original assignee within 12 months of filing, and no inventor is named on any later assignment as an assignor (i.e., no reversion of rights to individuals). The notable structural feature is instead the serial-continuation strategy: the family is six continuations deep (11/203,457 → 12/567,898 → 14/141,417 → 15/176,435 → 15/808,175 (this patent) → 16/221,908), each re-filed roughly 3–4 years apart, which kept live claims in force until the family's 20-year term ran out. Both Google Patents and Unified Patents put the expiration at 2025-08-10/11, i.e. this patent is now expired.
Original assignee
On the face of the issued patent: Maxell, Ltd. (Kyoto, Japan) is listed as original assignee and current assignee.
Root assignee of the invention: Hitachi, Ltd. — the 2005 root application 11/203,457 issued as US 7,613,383 with Hitachi, Ltd. as assignee. All ownership moved to Maxell via the intra-group transactions in the timeline below.
- Product basis: Maxell is a genuine operating company — consumer batteries, magnetic/optical recording media, projectors, wireless charging, headphones, and (historically under the Hitachi Maxell brand) hard-disk recorders and multimedia players. Maxell's own litigation pleadings state it "continues to sell products in the mobile device market including wireless charging solutions, wireless flash drives, multimedia players, storage devices, and headphones."
- Primary line of business: consumer electronics / energy and recording media. Formerly Hitachi Maxell, Ltd.; renamed Maxell Holdings, Ltd. on 2017-10-01 under a holding-company structure, then renamed Maxell, Ltd. on 2021-10-01 when the holding structure was dissolved. Listed on the Tokyo Stock Exchange; Hitachi retains roughly a 3% stake.
- Current status: Operating, publicly listed, not in bankruptcy and not dissolved.
- Does it ship a product embodying these claims? Unclear. I found no evidence of a currently marketed Maxell device practicing the claimed editable-playlist / multi-group thumbnail UI. Maxell's enforcement of this family is licensing-and-litigation driven.
Assignment timeline
Record gap — stated plainly: The live USPTO Assignment Center / Assignment Search records for US 10,199,072 could not be retrieved with reel/frame numbers in the sources I could reach. Google Patents' legal-events panel records two post-issuance conveyances for this patent, but reports no reel/frame. Everything below marked "reel/frame not retrieved" is a real recorded event whose reel/frame I could not verify — not a fabricated number. I did recover a reel/frame for a sibling Maxell patent (US 10,129,590, reel 045142/0208) and use it only as corroboration of the correspondent pattern, clearly labeled.
2009 (executed; exact date not retrieved) / recorded n.d. — reel/frame not retrieved
- Conveyance: Assignment
- Assignor: Hitachi, Ltd.
- Assignee: Hitachi Consumer Electronics Co., Ltd.
- Correspondent: not retrieved
- Context: internal Hitachi group reorganization — Hitachi carved its consumer-electronics IP into a dedicated subsidiary.
2013–2014 (Maxell's complaint says 2013; the EP register records a deed of assignment dated 2014-04-04) / recorded n.d. — reel/frame not retrieved
- Conveyance: Assignment
- Assignor: Hitachi Consumer Electronics Co., Ltd.
- Assignee: Hitachi Maxell, Ltd.
- Correspondent: not retrieved
- Context: internal group reorganization — IP realigned to the Maxell entity ahead of Maxell's standalone listings/licensing push.
2017-11-09 (executed n.d.) / recorded n.d. — reel/frame not retrieved
- Conveyance: (new application filing, not a transfer) — this patent filed as continuation 15/808,175
- Assignor/Applicant: Maxell, Ltd.
- Assignee: Maxell, Ltd.
- Correspondent: MALUR, PC, 1800 Diagonal Road, Suite 210, Alexandria, VA 22314 (prosecution correspondent of record on the family — prosecution counsel, not assignment counsel)
- Context: continuation filed to keep the family alive; no change in ownership.
2021-11-29 (executed) / recorded 2021-11-29 — reel/frame not retrieved
- Conveyance: Merger
- Assignor: Maxell, Ltd.
- Assignee: Maxell Holdings, Ltd.
- Correspondent: not retrieved
- Context: internal restructuring — the operating subsidiary merged up into the listed holding company in connection with dissolution of the holding-company structure.
2021-12-03 (executed) / recorded 2021-12-03 — reel/frame not retrieved
- Conveyance: Change of Name
- Assignor: Maxell Holdings, Ltd.
- Assignee: Maxell, Ltd.
- Correspondent: not retrieved
- Context: change of name only — Maxell Holdings, Ltd. renamed itself Maxell, Ltd. on 2021-10-01 following the restructuring (corroborated by Maxell's own PTAB mandatory notice in IPR2021-01441: "On October 1, 2021, following a corporate restructuring, Maxell Holdings, Ltd. changed its name to Maxell, Ltd.").
Corroborating sibling record (not this patent): For US 10,129,590, the USPTO Assignment Abstract of Title shows Reel/Frame 045142/0208, received and recorded 2018-01-25, conveying interest from Hitachi Maxell, Ltd. to Maxell Holdings, Ltd., executed 2017-10-01, with correspondent Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 (Mayer Brown LLP's Chicago office). This is the same family of reorganizations that Gen-3 patent documents, and it shows assignment filing for the Maxell portfolio was handled through Mayer Brown — the same firm that represents Maxell in the LG and Vizio litigations.
Timeline diagram
timeline
title Ownership of US 10199072
2004 : Japanese priority applications filed
2005 : Root US application filed by Hitachi Ltd
2009 : IP assigned to Hitachi Consumer Electronics
2013 : IP assigned to Hitachi Maxell
2017 : Hitachi Maxell renamed Maxell Holdings
: Continuation filed as 15808175
2019 : US 10199072 granted to Maxell
2021 : Merger into Maxell Holdings
: Renamed to Maxell Ltd
2023 : Sued LG Electronics on this patent
2025 : LG case settled and IPR terminated
NPE / troll-pattern signals
Shell-entity transfer — NOT PRESENT. Every assignee in the chain is a named Hitachi/Maxell corporate entity with a real Japanese operating business and a disclosed address (1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto). No "IP / Holdings / Ventures" single-purpose Delaware or Texas LLC appears. Maxell, Ltd. is Tokyo Stock Exchange–listed.
Known asserter in the chain — NOT PRESENT (as to the named NPE lists). No chain entity matches Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant/Mosaid, Vringo, Pendrell, Round Rock, etc. Maxell does, however, appear in both the Unified Patents portal and RPX/Darts-ip litigation datasets as a high-frequency plaintiff (see signals 5 and 7).
Repeat correspondent across the chain — UNCLEAR / insufficient data for this patent. I retrieved no correspondent data on the '072-specific recordings. The one correspondent I could verify for the Maxell reorganization (sibling patent US 10,129,590, reel 045142/0208): Nadeen Nsouli, 71 South Wacker Drive, Chicago — i.e. Mayer Brown LLP. Mayer Brown is also Maxell's litigation counsel (Maxell v. Vizio: "Plaintiff law firm — Mayer Brown LLP"). I flag this as recurrence between assignment recording and litigation counsel across the Maxell portfolio, but I am explicitly not claiming recurrence within the '072 chain, because I could not read those reel records. A single appearance is not a finding; this is 1:1 firm-to-portfolio, not an NPE tell.
Cascading transfers — NOT PRESENT. Four transfers (2009, 2013/14, 2017-10-01, 2021) spanning twelve years, all intra-group. No chained LLCs; no shared registered-agent address; no <24-month cascade.
Pre-litigation transfer — NOT PRESENT. The last ownership event was 2021-12-03; the first suit naming this patent (Maxell v. LG, E.D. Tex. 5:23-cv-00152) was filed 2023-12-29 — about 25 months later, well outside the 6-month window. Ownership was also clean long before LG's IPR2025-00394 (filed 2024-12-30).
Bankruptcy fire-sale — NOT PRESENT. Neither Hitachi, Hitachi Consumer Electronics, Hitachi Maxell, Maxell Holdings, nor Maxell, Ltd. filed Chapter 7/11. No 363 sale, no court-approved patent auction.
Privateering — WEAK / UNCLEAR. This is the most substantive signal, and it is a partial yes. Hitachi, an operating company, moved this and hundreds of other consumer-electronics patents out to Hitachi Consumer Electronics (2009) and then Hitachi Maxell (2013/14) — an entity that largely monetizes rather than manufactures the accused technology — which then asserted the portfolio against Hitachi's competitors (ZTE $43.3M willful-infringement verdict; Apple settled 2021; Huawei/Lenovo settlements; LG and Samsung suits; Optoma/Coretronic projector suits). Maxell itself describes the transfer as being "to align its intellectual property with the licensing, business development, and research and development efforts of Maxell." This has the shape of privateering. But it falls short of the definition in one respect: Maxell is itself a product company and holds the patents outright — it is not asserting on Hitachi's behalf under a revenue-share. I call this a weak signal, not a confirmed one.
Defensive aggregator — NOT PRESENT. No RPX, AST, LOT, Unified Patents, or OIN entity appears anywhere in the chain. Note: the Google Patents page labels IPR2025-00394 "Petitioner: Unified Patents PTAB Data" — that is data-source attribution only; the actual petitioner is LG Electronics Inc. Maxell's patent was not neutralized by a defensive aggregator; it was neutralized by expiration (2025-08-10/11) and by settlement.
Additional litigation facts bearing on the analysis (confirmation that this chain is asserted, not warehoused):
10,199,072asserted in Maxell, Ltd. v. LG Electronics Inc., No. 5:23-cv-00152 (E.D. Tex., filed 2023-12-29), transferred to N.D. Cal. 5:24-cv-04972 (2024-08-09).- LG filed IPR2025-00394 on 2024-12-30; terminated-settled 2025-07-14; the district court case settled April 2025.
- The sibling child US 11,017,815 (same 2005 family) was one of the three patents in Maxell v. Samsung, 5:23-cv-00092 (E.D. Tex.), which produced a $111.7M jury verdict in June 2025 — again on claims tied to multi-group media management where "even if content is deleted from one category, it remains accessible through another."
Verdict
Operating-company assertion.
The chain terminates at Maxell, Ltd., a Tokyo-listed consumer-electronics manufacturer that still sells products and is suing genuine competitors (LG, Samsung, Apple, ZTE, Huawei, Optoma/Coretronic) — not at an NPE shell. The 2021 events are pure internal housekeeping (recorded 2021-11-29 Merger, then 2021-12-03 Change of Name), and the only notable correspondent evidence I could verify — Nadeen Nsouli / Mayer Brown, reel 045142/0208 on sibling patent US 10,129,590 — is operating-company portfolio counsel that doubles as Maxell's litigation firm, not an NPE recording agent.
Caveats you should carry forward: (a) I could not verify this patent's own reel/frame entries, so slot 3 (repeat correspondent) and the exact recording metadata remain unclear — pull them at https://assignmentcenter.uspto.gov/ by patent number; (b) Maxell's enforcement volume and its 2013/14 separation from Hitachi give it a weak privateering profile that a stricter reviewer might weight more heavily; and (c) the patent is now expired (~2025-08-10/11), so any future chain activity is unlikely.
Generated 9/28/2026, 6:11:30 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research this systematically. Let me start by verifying the patent and then examining its prior art citations.
Let me examine the key prior art references that relate to the core claim features (playlists, groups, thumbnails, user-specific folders).
Prior Art Analysis — US Patent 10,199,072 B2
"Editing method and recording and reproducing device"
1. Identifying the Patent (Verified)
| Field | Value |
|---|---|
| Patent number | US 10,199,072 B2 |
| Title | Editing method and recording and reproducing device |
| Application no. | 15/808,175 |
| Filing date | 2017-11-09 (continuation) |
| Publication date | 2019-02-05 |
| Earliest priority | 2004-12-02 (JP 2004-349264; plus JP 2004-378767 and JP 2004-378768, both 2004-12-28) |
| Inventors | Susumu Yoshida; Junji Shiokawa; Hiroo Okamoto |
| Original assignee | Maxell, Ltd. (originally Hitachi lineage; later Maxell Holdings/Maxell) |
| Claims | 19 (apparatus, system, and method claims) |
| Status | Expired – Lifetime (anticipated expiration 2025-08-11) |
| Litigation | Maxell, Ltd. v. Fandango Media, LLC (C.D. Cal. 2:17-cv-07534); Maxell, Ltd. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) (N.D. Cal. 5:24-cv-04972); PTAB IPR2025-00394 (Unified Patents, settlement) |
Verified via: Google Patents (https://patents.google.com/patent/[US10199072B2](/patent/US10199072B2)/en), Unified Patents portal (https://portal.unifiedpatents.com/patents/patent/10199072), and Track Docket (US 15/808,175).
Scope note / honesty flag: Because the effective priority date is 2004-12-02, § 102 art must predate that date (or be an earlier-filed U.S. application qualifying under pre-AIA § 102(e), since this family is governed by pre-AIA law). I pulled the citation list from the patent's own "References Cited" front-page data (69–71 U.S./foreign items). I was unable to run individualized verification searches on every one of the ~70 citations before hitting tool limits, so date/citation details below for the less-central items should be re-verified against the original documents. Where I did retrieve source text, I cite it.
The key claim limitations to map are those of independent claims 1, 6, 11, and 16, which share the same core:
- (a) a menu display in which a user selects a group by specifying the position of a character/tag;
- (b) thumbnails corresponding to the selected group displayed;
- (c) the order of the thumbnails is editable;
- (d) deletion-independence — deleting a video item from one group does not remove it from the other group, and its thumbnail still appears in the other group.
2. Most Relevant Prior Art (ranked by closeness to the claims)
A. JP 2000-152180 A (JP2000152180A) — the reference the patent itself concedes as conventional art
- Citation: Japanese Unexamined Patent App. JP-A-2000-152180; Applicant: Matsushita Electric Industrial Co., Ltd.
- Priority/filing: 1997-09-17; published 2000-05-30.
- Title: "Optical disk, video data editing device, computer readable recording medium recording editing program, optical disk reproducing device, computer readable recording medium recording reproduction program."
- Description: Discloses an optical-disc recording/reproducing technology in which video data is managed by play list structures that "indicate a reproduction sequence by linking portions of AV data together," with original cell information and user-defined cell information organized into management hierarchies. This is the exact structure reproduced as the FIG. 2 "conventional technique" of US 10,199,072, and it is expressly cited in the patent's Background at col. 1.
- Potential § 102 relevance: Claims 1, 11, 16 in part — it discloses play-list-based management and editing of a recording medium (the "grouping of AV data + editing" genus). However, it does not appear to disclose the added upper management hierarchical level / user-defined unified information, nor the editable-thumbnail-order or deletion-independence features, so a stand-alone § 102 anticipation of the independent claims is unlikely; it is strongest as a § 103 base.
- Source: cross-listed in EP 1 939 879 A2 citation table and the patent's own Background.
B. US 2004/0078383 A1 → US 7,043,477 B2 — [Microsoft Corp.](/litigations/by-plaintiff/Microsoft%20Corp.)
- Citation: U.S. Publ. No. US 2004/0078383 A1 (granted as US 7,043,477 B2); Assignee: Microsoft Corporation (later Microsoft Technology Licensing LLC).
- Filing: 2002-10-17 (provisional 2002-10-16); published 2004-04-22.
- Title: "Navigating media content via groups within a playlist."
- Description: Discloses a data structure that represents "multiple parallel groupings of the media files" within playlists, with a group header containing a value identifying the group and references to other groups to enable navigation; the playback/UI module displays the group description and lets a user navigate among groups. Explicitly addresses media players with limited display/input (CE devices, DVD players, car receivers) and user-created playlists ("favorites," by artist/genre/album).
- Potential § 102 relevance: Claims 1, 6, 11, 16 — this is the closest art on the "select a group → display group members → navigate/reorder" concept and on parallel groupings. It directly supports § 102/§ 103 attack on limitations (a) and (b). It does not clearly disclose a thumbnail per item with editable on-screen order, nor the deletion-independence limitation (d).
- Source: Google Patents US20040078383; Justia US 7,043,477.
C. US 2004/0068606 A1 — LG Electronics Inc.
- Citation: U.S. Publ. No. US 2004/0068606 A1; Assignee: LG Electronics Inc.
- Priority: 2002-06-19; published 2004-04-08.
- Title: "Method of temporarily deleting and restoring files recorded on a rewritable storage medium."
- Description: Discloses temporarily deleting and restoring files (and managing reproduction/deletion status) on a rewritable medium without permanently erasing the underlying recorded data — i.e., separating a management/edit deletion from physical deletion.
- Potential § 102 relevance: Claim 1 (and 5, 10, 15, 19) — highly relevant to the deletion-independence limitation (d): "removes the one video data from the first group … without deleting the one video data recorded on the recording medium." This reference is a strong candidate to combine (or anticipate if it also taught per-group membership).
- Source: listed in the patent's "Cited By / Citations" front-page table.
D. US 7,917,557 B2 — Koninklijke Philips Electronics N.V.
- Citation: U.S. Pat. No. 7,917,557 B2; Assignee: Koninklijke Philips Electronics N.V.
- Priority: 2002-09-05 (EP priority 2002-09-04); granted 2011-03-29.
- Title: "Method and devices for creating a second playlist based on a first playlist."
- Description: Discloses a second playlist created from a first playlist, where a content item present in the first playlist may be marked "not found," excluded, or deleted from the second playlist while remaining in the first (or vice-versa). Emphasizes that two playlists referencing the same underlying content are independent management entities, and that items may overlap between playlists.
- Potential § 102 relevance: Claim 1 / 6 / 16 — relevant to limitation (d) (independence of membership across two groups/playlists sharing the same content) and to "multiple playlist" management. The reference's subject matter is audio/media collection portability, so a § 103 combination would likely be needed.
- Source: Google Patents US7917557; EP 1 537 579 B1 (family).
E. US 2005/0160458 A1 — United Video Properties, Inc.
- Citation: U.S. Publ. No. US 2005/0160458 A1; Assignee: United Video Properties, Inc.
- Priority: 2004-01-21; published 2005-07-21.
- Title: "Interactive television system with custom video-on-demand menus based on personal profiles."
- Description: Discloses per-person / per-profile customized menus (folders of on-demand content) in an interactive TV system, i.e., multiple user-defined groupings of the same content.
- Potential § 102 relevance: Claims 1, 6, 16 — relevant to the specification's stated motivation ("a plurality of users … each user can manage favorite reproduction contents") and to multiple user-specific groups. Note its priority (2004-01-21) is after the patent's earliest priority (2004-12-02)? No — 2004-01-21 precedes 2004-12-02, so it qualifies. Timing should still be confirmed against the exact claim date relied upon.
F. US 8,028,038 B2 — Dryden Enterprises, LLC
- Citation: U.S. Pat. No. 8,028,038 B2; Assignee: Dryden Enterprises, LLC
- Priority: 2004-05-05; granted 2011-09-27.
- Title: "Obtaining a playlist based on user profile matching."
- Description: Discloses generating/obtaining user-specific playlists based on user profile matching, with multiple playlists per system.
- Potential § 102 relevance: Claim 1 / 6 / 16 (multiple, user-associated groups of media). Weaker on the GUI/tag and deletion-independence limitations.
G. US 2003/0063897 A1 — Samsung Electronics Co., Ltd.
- Citation: U.S. Publ. No. US 2003/0063897 A1; Assignee: [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.
- Priority: 2001-09-29; published 2003-04-03.
- Title: "Information storage medium with user defined file containing reproducing information, apparatus and method therefor."
- Description: Discloses a storage medium carrying a user-defined file containing reproduction information (user-created playback definitions) in addition to original/manufacturer-defined management.
- Potential § 102 relevance: Claims 1, 11, 16 — relevant to the "user-defined unified information" concept (user-defined grouping layer over recorded content).
3. Secondary Supporting References (relevant to specific limitations)
| Publication | Assignee / Date | Why relevant | Potentially relevant claims |
|---|---|---|---|
| US 2006/0107289 A1 | Microsoft Corp.; priority 2004-07-28 | Thumbnail generation and presentation for recorded TV programs | Claim 1/6/11/16 (thumbnail display) |
| US 2006/0120455 A1 / US 7,594,177 B2 (family) | Microsoft; 2004-12-08 | Video browsing using a cluster index | Claim 1 (grouping/browsing) |
| US 2001/0052127 A1 | LG Electronics; 2000-06-09 | "Recording medium menu supporting method" | Claims 1, 16 (menu display) |
| US 6,175,362 B1 | Samsung; 1997-07-21 | "TV GUI providing selection among various lists of TV channels" | Claim 16 (selectable character/list menu) |
| US 6,020,930 A | Sony Corp.; 1997-08-28 | Generating/displaying a broadcast program guide | Claim 1/16 (menu/selection) |
| US 6,181,870 B1 | Matsushita; 1997-09-17 | Optical disc with original and user chain information specifying part of a video object | Claims 1, 11 (user-defined chains) |
| JPH11-32301 A | Sony Corp.; 1997-07-10 | Image processing apparatus/method/recording medium | Claim 1 (editing/thumbnails) |
| US 6,243,725 B1 | Premier International, Ltd.; priority 1997-05-21 | "List building system" | Claim 16 (list building/menu) |
| US 2007/0220580 A1 | Daniel Putterman; priority 2002-03-14 | User interface for a media convergence platform | Claim 1/16 (media UI, groups) |
| US 7,512,622 B2 | Yahoo! Inc.; priority 2003-06-11 | Method and apparatus for organizing and playing data | Claims 1, 6 (organize/play) |
| US 7,257,774 B2 | Fuji Xerox Co.; priority 2002-07-30 | Filtering/viewing collaborative indexes of recorded media | Claim 1 (user-defined indexes) |
| US 8,291,444 B1 | Intel Corp.; 1999-12-30 | System for controlling use of broadcast content | Claim 1 (recording/repro of broadcast) |
| US 2002/0033897 A1 (see G) | Samsung; 2001-09-29 | user-defined playback file | Claims 1, 11, 16 |
4. Assessment — Which claims are most exposed and to what
No single cited reference appears to fully anticipate the independent claims under § 102. The distinctive combination — a top-level menu of characters/tags each mapping to a group, editable-order thumbnails within the selected group, and deletion-independence between overlapping groups — is not shown in one reference among those I retrieved. The strongest single-reference candidates are:
- US 2004/0078383 A1 (Microsoft) for the group-navigation/parallel-groupings core; and
- US 2004/0068606 A1 (LG) for the management-vs-physical deletion idea.
Neither alone appears to reach all elements.
§ 103 is the more probable invalidity theory. A combination of JP 2000-152180 (play-list/management hierarchy on an optical disc — the admitted prior art) + US 2004/0078383 A1 (parallel groups within a playlist, group headers, CE navigation) + US 2004/0068606 A1 (temporary/independent deletion) or US 7,917,557 B2 (independent overlapping playlists) maps well onto claims 1/6/11/16.
Deletion-independence limitation (claim 1, and dependent 5/10/15/19) is the differentiator most likely to survive; it is the least-clearly-taught element across the cited art, though US 2004/0068606 A1 and US 7,917,557 B2 come closest.
Family/litigation context: This family (Family ID 36756652) has been asserted (Maxell v. Fandango, Maxell v. LG), and the front page notes a PTAB petition IPR2025-00394 (Unified Patents; marked settlement) — meaning a third party already assembled an invalidity challenge. The specific art and grounds in that IPR would be the authoritative modern read on the best prior art and should be retrieved directly if available.
5. Caveats (per operating rules)
- I did not auto-correct any identifier; all numbers above are reproduced as given in the patent front-page/citation data.
- The citation list was taken from the patent's own "References Cited" table; I verified source text for the Microsoft, Philips, and Matsushita/JP-2000-152180 items but could not individually verify all ~70 citations before tool limits. Verify each citation's exact publication date and content against the primary document before relying on it for a § 102/§ 103 conclusion.
- § 102 anticipation requires every claimed element in a single reference; on the art reviewed here, that threshold is not met for the independent claims. Treat the mappings above as § 103 combination candidates unless a reference is independently confirmed to disclose all limitations.
- The patent is under pre-AIA law (effective filing 2005-08-11, priority 2004-12-02), so § 102(e)/§ 103(a) pre-AIA rules govern prior-art qualification.
Generated 9/28/2026, 6:11:19 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll analyze the obviousness of US10199072 using the prior-art citations listed on its page. Let me first verify the disclosure content of the most relevant cited references.
Obviousness Analysis — US 10,199,072 B2
"Editing method and recording and reproducing device"
Assignee: Maxell, Ltd. (originally Hitachi) · Inventors: Yoshida, Shiokawa, Okamoto
Priority: 2004‑12‑02 (JP 2004‑349264; JP 2004‑378767; JP 2004‑378768) · Filed: 2017‑11‑09 (continuation of US 15/176,435) · Granted: 2019‑02‑05 · Status: Expired – Lifetime (anticipated expiration 2025‑08‑11)
Litigation context noted on the face of the patent: N.D. Cal. case 5:24‑cv‑04972; PTAB IPR2025‑00394 (instituted/settled).
1. Framework
Because the application was filed 2005‑08‑11 and the 2017 filing is a continuation claiming the 2004‑12‑02 priority date, this is a pre‑AIA 35 U.S.C. § 103 analysis. The critical date is December 2, 2004. Prior art must therefore qualify under §§ 102(a), (b), (e), or (f) as of that date. All of the following references are cited on the face of the patent (the "Prior Art"/"Citations" section of the page) or are family members thereof.
Under Graham v. John Deere and KSR Int'l v. Teleflex, the question is whether the differences between the claims and the art would have been obvious to a PHOSITA, considering (i) the scope of the art, (ii) the differences, (iii) the level of ordinary skill, and (iv) objective indicia. Here the art is data-management structures and menu GUIs for consumer digital video recorders; the POSITA is a firmware/GUI engineer with experience in DVD/HDD recorder navigation hierarchies (the specification itself frames the invention entirely in terms of "management hierarchical levels" and OSD tags).
Claims at issue: independent claims 1 (apparatus), 6 (system), 11 (method), 16 (system), plus dependents 2–5, 7–10, 12–15, 17–19. Claims 6, 11 and 16 are substantially the same subject matter as claim 1 (differing only in statutory category and slightly stronger/permissive verbs, e.g., claim 6's "when … is deleted," claim 16's "upon deletion … the one video data continues to be included"). They rise and fall together for § 103 purposes.
2. The claim elements that need to be met
| # | Limitation (claim 1; claims 6/11/16 parallel) |
|---|---|
| A | Recording medium storing a plurality of video data |
| B | Output unit outputting a menu display in which a user selects one group among a plurality of groups by specifying the position of a character (tag) corresponding to that group |
| C | Reproducer for reading/reproducing selected video data |
| D | Controller that, on selecting the first group, displays the first group of thumbnails with editable order |
| E | Controller that, on selecting the second group, displays the second group of thumbnails with editable order |
| F | If one video data item in both groups is deleted from the first group, it remains in the second group, and its thumbnail is still displayed with the second group |
Dependents add: an encoder for input video data (2/7/12); the tag ("character") displayed in a first area (3/8/13/17); thumbnails in a distinct second area (4/9/14/18); and removal from the group without deleting the data from the medium (5/10/15/19).
3. The prior art on the face of the patent
| Ref | Date | Disclosure relevant here |
|---|---|---|
| JP‑A‑2000‑152180 (Matsushita; US 6,181,870 B1, Okada et al.) | 1997‑09‑17 / pub. 2000‑05‑30 | The reference the patent itself adopts as background: optical disc with original-type chain information and user-defined-type chain information; play lists as "user-defined PGCs" defining arbitrary reproduction sequences over parts of programs. This is the source of the patent's own FIG. 2 (original cells #1–#3, user-defined cells, program set info, play lists #1–#k). |
| US 2004/0078383 A1 (Microsoft; granted as US 7,043,477 B2) — "Navigating media content via groups within a playlist" | filed 2002‑10‑17; pub. 2004‑04‑22 | Playlists containing one or more groups; "presently available systems lack a data structure to represent multiple parallel groupings of the media files"; each defined group references its selected files; a group header identifies the group and references other groups; the interface module displays the group description to the user and the selection module navigates between groups; user-specified selection and ordering; authoring software "tracks thumbnails and playlists." |
| US 2004/0068606 A1 (LG Electronics; Kim Mi Hyun) — "Method of temporarily deleting and restoring files … on a rewritable storage medium" | filed 2002‑06‑19; pub. 2004‑04‑08 | OSD menu of play lists (FIGS. 3a/3b) from which a user selects and deletes a play list; deletion merely sets a temporary-deletion bit in the file record — the clip A/V stream is not deleted; the same clip may be referenced by a real play list and by one or more virtual play lists (FIG. 2). |
| US 7,917,557 B2 (Koninklijke Philips) — "Method and devices for creating a second playlist based on a first playlist" | priority 2002‑09‑05 | Two playlists referencing the same content; each playlist independently stores its own content identifiers/location identifiers; when an item is not found it is marked "not found" or excluded from that playlist only — membership in one list is independent of the other and of the underlying item. |
| US 2004/0078383 family / Apple EP 2 357 623 A1 — "Graphical user interface for browsing, searching and presenting media items" | US priority 2003‑04‑25; U.S. pub. US 2004/0268451 (2004‑12‑30) | Browsing UI presenting media items as rows/columns with representative (thumbnail) images, group indicators, expandable groupings, and user sorting of listed items. (Date caveat: rely on the earlier U.S. applications in this family — 10/776,652 filed 2004‑02‑10; the EP publication itself (2011) is too late to be § 102 art.) |
| US 2006/0107289 A1 (Microsoft) — "Thumbnail generation and presentation for recorded TV programs" | 2004‑07‑28 | Generating and presenting thumbnails for recorded TV programs for menu navigation. (§ 102(e) art as of its 2004‑07‑28 filing date.) |
| US 2003/0237093 A1 (Marsh) — "Electronic program guide systems and methods for handling multiple users" | 2002‑06‑19 | Multiple users on one media device, each with distinct content selections. |
| US 2005/0160458 A1 (United Video Properties) — "Interactive television system with custom VOD menus based on personal profiles" | 2004‑01‑21 | Per‑user customized menus/folders. (§ 102(e) as of filing date.) |
| US 2003/0063897 A1 (Samsung) | 2001‑09‑29 | Information storage medium with a user‑defined file containing reproducing information. |
| US 7,295,230 B2 (Takahashi) | — | Deletion moves a file to a temporary-delete folder; data remains on the medium and is restorable. |
4. Proposed combinations
Ground 1 — Primary: JP‑A‑2000‑152180 (US 6,181,870) in view of US 2004/0078383 A1 (Microsoft), further in view of US 2004/0068606 A1 (LG)
JP '180 / US 6,181,870 supplies limitations A, C, and the entire hierarchical management premise: recorded A/V, program information, user-defined cells/parts of programs, and play lists as user-defined PGCs, all navigated from an OSD menu. It does not, however, disclose the "upper management level" grouping all play lists, nor reorderable thumbnail groups — indeed, as the patent's own Background concedes, in that scheme "the sequence of a plurality of play list information pieces themselves is determined uniquely," and "it is impossible on the user's interface to alter the display sequence" (col. 1). That is the stated problem.
Microsoft '383 supplies limitations B, D, E and the structural key to F:
- It expressly represents "multiple parallel groupings" of the same media files — i.e., one media file simultaneously belonging to more than one group. This is limitation F's predicate ("one video data … included in both the first group … and the second group").
- Each group is a separately stored data structure referencing its member files, so editing one group's membership does not alter another group's membership.
- It discloses displaying a group description to the user and navigating between groups (limitation B's "character corresponding to the group" reads directly on the group description/tab).
- It discloses user‑specified ordering of items and sorting of the listed media files (limitations D and E, "editable order"), and it tracks thumbnails.
LG '606 supplies the deletion semantics of limitation F and dependent claims 5/10/15/19: deleting a play list from the OSD menu operates on the management information only (a temporary-deletion flag in the file record), leaving the clip A/V stream and clip-information files on the medium. Because FIG. 2 of LG '606 shows a clip referenced by both a real play list and a virtual play list, a POSITA would immediately understand that de-listing an item from one list leaves it available to, and displayed by, the other.
Motivation / rationale (KSR prongs):
- Same field, same problem. Both JP '180 and Microsoft '383 address navigating large numbers of stored media items on consumer devices with constrained displays and remote controls. Microsoft '383 frames its invention as solving exactly the deficiency the '072 patent identifies — the absence of "a data structure to represent multiple parallel groupings."
- Articulated, explicit motivation. Microsoft '383 states the problem in terms a POSITA in DVR design would apply verbatim to the recorder's play-list catalogue: users need parallel groupings they can reorder and re-navigate. The '072 patent's own Summary states that object.
- Predictable result / no new mechanics. Both references operate by rewriting management tables that point to unchanged A/V data. Adding a group layer that re-orders references in a table (the '072 patent itself says: "it becomes possible to sort the location information … in the play list location table 9021 and alter the sequence of displaying play lists") is the routine, expected result of combining them.
- Reasonable expectation of success. No functional incompatibility exists; the group headers of '383 map onto the "play list unified information"/"user-defined unified information" tables of the '072 patent with no change to the underlying recording, encoding or reproduction path.
Ground 2 — The thumbnail and multi-user limitations
- Thumbnails in grouped grids: Microsoft '383 ("tracks thumbnails"), US 2006/0107289 A1 (thumbnails for recorded TV programs), and the Apple GUI family (media-item rows with representative images and group indicators) each teach rendering a group of items as selectable thumbnail representations — limitations D and E.
- Per‑user folders (the specification's "mother"/"father" user-defined unified information): US 2003/0237093 A1 (multiple users on one EPG device) and US 2005/0160458 A1 (per‑profile custom menus) supply the motivation to give each user a named, independently editable grouping — the limitation "a first character corresponding to the first group … in a first area" of claims 3/8/13/17 is the tab‑row arrangement conventional in all of these GUIs.
Ground 3 — Alternative route to element F: US 7,917,557 (Philips)
Philips '557 independently teaches that two playlists may reference overlapping content and that the membership/location identifiers of each list are maintained separately — removal or non‑resolution of an entry in one list does not remove the content item itself nor affect the other list's entry. Combined with JP '180 and Microsoft '383, this provides a second, redundant rationale for the final "wherein" clause of claim 1 (and the corresponding clauses of claims 6, 11 and 16).
5. Dependent claims
| Claim | Added feature | Art meeting it |
|---|---|---|
| 2 / 7 / 12 | Encoder for input video data | LG '606 FIG. 1 (encoder 4 feeding the VDR), JP '180 recording apparatus; the '072 spec. itself shows compression/encryption path (FIG. 3) |
| 3 / 8 / 13 / 17 | Tag/character in a first area | JP '180 OSD menus; Microsoft '383 "interface module displays the group description"; Apple GUI family |
| 4 / 9 / 14 / 18 | Thumbnails in a distinct second area | Microsoft '383; US 2006/0107289; Apple GUI family |
| 5 / 10 / 15 / 19 | Remove from group without deleting the recorded data | LG '606 (temporary-deletion flag; clip retained); US 7,295,230 (temporary‑delete folder) |
The dependent claims add only conventional implementation detail and are obvious for the same reasons as the independents, with no separate motivation required.
6. Anticipated counter‑arguments and weaknesses of this analysis
- "Character corresponding to the group" is arguably indefinite/functional. The spec maps it to OSD tags (401/501/601/701). Every cited GUI reference discloses exactly such selectable group labels, so this is a construction issue, not a patentability issue.
- Microsoft '383 is audio-centric. Its claims recite "media files," but its specification expressly covers "audio, video, and image files," and its stated environment includes set‑top DVD players and video playlists. This is a weak distinction at best.
- Microsoft '383 does not explicitly describe deleting a member from one group while it survives in another. This is why Ground 1 needs LG '606 (or Philips '557). A petitioner must supply a clear motivation to add non‑destructive, group‑specific de‑listing; LG '606's OSD-driven, management‑only deletion of play lists supplies it.
- Date diligence is required. Several cited items are U.S. application publications or later EP publications. The operative prior‑art dates are: JP '180 (2000), US 6,181,870 (2001), US 2004/0078383 (2004‑04‑22), US 2004/0068606 (2004‑04‑08), US 2003/0237093 (2003‑12‑25), US 2005/0160458 (§ 102(e) at 2004‑01‑21), US 2006/0107289 (§ 102(e) at 2004‑07‑28). I have not independently verified the exact publication date of the WO/EP member of the US 7,917,557 family; before relying on it, confirm its pre‑2004‑12‑02 publication or its § 102(e) PCT date. Similarly, the Apple GUI family must be cited through its earlier U.S. applications, not the 2011 EP publication.
- Objective indicia. None are apparent here (no evidence of licensing-nexus praise, long‑felt need, or unexpected results); the commercial success of the Maxell/Hitachi recorders, if any, would need a nexus showing.
- Practical posture. Third parties have already mounted an IPR (IPR2025‑00394, terminated on settlement) and district‑court litigation, indicating the claims are considered attackable — but the settlement means no PTAB institution decision on the merits is available as guidance.
7. Conclusion
On the face of this record, claims 1–19 of US 10,199,072 B2 are likely obvious under § 103 over:
- JP‑A‑2000‑152180 / US 6,181,870 B1 (hierarchical program/play‑list management and OSD menu), in view of
- US 2004/0078383 A1 / US 7,043,477 B2 (groups within a playlist; parallel groupings of the same media file; group description displayed to the user; user‑specified ordering; thumbnails), in further view of
- US 2004/0068606 A1 (OSD‑driven deletion of a play list that leaves the underlying clip and its membership in other play lists intact), and optionally
- US 7,917,557 B2, US 2006/0107289 A1, US 2003/0237093 A1, and US 2005/0160458 A1 for the thumbnail‑grid and per‑user‑folder dependent limitations.
The motivation is explicit and twofold: (i) Microsoft '383 identifies the very deficiency — the lack of a structure for "multiple parallel groupings" and user ordering — that the '072 patent's Background attributes to JP '180, and (ii) the combination requires only re‑ordering pointers in management tables pointing at unchanged A/V data, a predictable, mechanism‑preserving change squarely within KSR's "combination of familiar elements according to known methods."
Confidence: High for the mapping of limitations A–E and for the LG '606 and Microsoft '383 citations (I verified those disclosures directly). Moderate for element F as a single-reference disclosure — it is met by the combination, not by any one reference — and moderate‑to‑low on the exact prior‑art dates of US 7,917,557 B2, US 7,295,230 B2, and the Apple GUI family, which should be confirmed against the WO/PCT and earliest U.S. filings before being relied upon in a petition.
This is a technical validity opinion, not legal advice, and is not a substitute for claim construction or a formal prior‑art search.
Generated 9/28/2026, 6:11:44 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 Maxell, Ltd.
- US 10812646US patent 10812646, titled "Portable terminal apparatus," was issued to Maxell Ltd. The inventors are Nobuo Masuoka and Yasunobu Hashimoto. The patent was filed on September 19, 2019, and issued on October 20, 2020. The abstract states: "A…
- US 10783228US patent 10783228, titled "Information processing device, application software start-up system, and application software start-up method," was filed on August 8, 2019, and issued on September 22, 2020. The current assignee is Maxell Ltd…
- US 7952645Concise Summary of US Patent 7952645 Title: Video processing apparatus and mobile terminal apparatus Assignee: Maxell Ltd (Current Assignee, as of 2018-01-25 reassignment) (Previously Hitachi Ltd and Hitachi Maxell, Ltd.) Inventors: Kozo…
- US 9191180US Patent 9,191,180: Summary and Independent Claims Overview Title: Method and device for executing HARQ in TDD-based wireless communication system Assignee: LG Electronics Inc. Inventors: Dong Youn Seo, Min Gyu Kim, Han Byul Seo, Joon Kui…
- US 9696868I'll search for information on US patent 9696868 from multiple authoritative sources, including the USPTO and CAFC dockets. I have good initial results. Now let me dig deeper into the actual claims of US9696868 and the specific CAFC docket…
- US 8170394I'll search for current information on this patent and check for any 2026 litigation activity. Let me check for CAFC 2026 docket activity and the reissue status. Let me verify whether there's any 2026 Federal Circuit activity specifically…
- US 8549109I'll search for this specific patent and related litigation records. Let me search for litigation and CAFC docket information specific to this patent. Let me check for any CAFC 2026 appellate dockets involving this patent or Maxell. Let me…
- US 10958971I'll search for authoritative information on this patent, including any 2026 CAFC docket activity. Let me search for the claims text and any 2026 appellate activity specific to the '971 patent. US Patent 10,958,971 B2 — Structured Summary…
Other patents in Media & Broadcasting (T)
- US 11924502I'll search for authoritative information on this specific patent number, including any 2026 CAFC activity. Let me check for any Federal Circuit 2026 activity and the parallel district court/ITC matters. US Patent 11,924,502 B2 — Analyst…
- US 11451860I'll search for authoritative information on US 11,451,860, including any CAFC 2026 docket activity. I found the patent record. Let me now verify litigation and CAFC activity specific to this patent number. Let me check for PTAB challenges…
- US 11223757I'll search for authoritative information on this patent number. Let me search for the litigation/docket information and USPTO records. Let me verify the PTAB case and the patent's family/priority details. Sourcing note I ran open-web…
- US 9451229B2I'll search for authoritative information on this patent number. Let me run more targeted searches for USPTO and CAFC 2026 docket activity. Let me look for the full claim set and specific Federal Circuit docket activity for this patent. US…
- US 9818449I'll search for authoritative information on this patent number, including any 2026 CAFC docket activity. Let me check for the district court case and any Federal Circuit 2026 appeal activity. US Patent 9,818,449 B2 — Summary Identifier…
- US 7421188I'll search for authoritative records on this patent, including any 2026 appellate docket activity. Let me check the litigation/appellate posture and confirm the enforcement history. Let me do one final check for any 2026 appellate…
- US 6856760I'll search for authoritative information on US patent 6856760. Let me verify the full claim set and check for any 2026 CAFC activity. US Patent 6,856,760 B2 — "Recording medium" Important scoping note: I searched for the literal…
- US 10084991I'll run a few targeted searches for this specific patent number, then summarize from the authoritative full text I already have. US Patent 10,084,991 — Analyst Summary Date of this report: I searched for this exact patent number only (no…
This patent in court (2)
2 tracked lawsuits name US 10199072.