Invalidity dossier
US 10606535
Internet based digital content services that provide content upload, content storage, content sharing, and content playlist selection; and smart devices with access to the internet based digital content services
Current assignee: Flexiworld Technologies Inc
Added 9/27/2026, 6:31:40 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for the specific patent number to ground this summary in authoritative sources.
Let me pull the abstract and claim set specifically.
Let me try to retrieve the exact claim set and abstract from additional sources.
US Patent 10,606,535 B2 — Summary
Note on scope of this report: I grounded the bibliographic data below in the Google Patents record (patents.google.com/patent/US10606535B2/en) and corroborating secondary sources (Justia, uspto.report, Stanford NPE Litigation Database). I was not able to retrieve the full verbatim claim set or the official abstract text of this specific patent from the sources available to me, so the claim discussion below is flagged accordingly. I did not find any CAFC 2026 docket activity for this patent number.
Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 10,606,535 B2 |
| Title | Internet based digital content services that provide content upload, content storage, content sharing, and content playlist selection; and smart devices with access to the internet based digital content services |
| Inventors | William Ho Chang (Vancouver, WA); Christina Ying Liu (San Francisco, CA) |
| Assignee | Flexiworld Technologies, Inc. (original and current) |
| Application no. | 15/978,076 |
| Filing date | May 11, 2018 |
| Issue (grant) date | March 31, 2020 |
| Earliest priority / prior-art date | November 20, 2000 (Google Patents "prior art date"); priority claimed from US 10/053,765 (per Google Patents timeline) |
| Earlier publication | US 2018/0260169 A1 (Sept. 13, 2018) |
| Status | Expired – Fee Related; "Anticipated expiration" listed as 2021-11-18 |
| Family | Large Flexiworld continuation family; "Family has litigation" indicator present |
Important caveat on priority: The 2000/2002 priority chain runs through numerous related Flexiworld applications (e.g., provisional 60/245,101 filed 2000-11-01; applications 09/992,413, 10/016,223, 10/053,765, etc.). Secondary databases display slightly inconsistent priority dates (2000-11-19, 2000-11-20) for sibling patents. The November 20, 2000 date is what the Google Patents record for this patent shows; treat the priority chain as complex and verify against the front page if it matters.
Abstract
I could not confirm the abstract text from an authoritative USPTO source. The abstract that appears in the Flexiworld assignee listing (Justia) and matches this patent's title reads, in substance:
"Internet based digital content services as well as mobile client devices for accessing the Internet are herein disclosed and enabled. In one example, user digital content, such as documents, audio, or video content, may be uploaded to a content server for storing. The user may share the user digital content with other client devices or users having appropriate authentication or security procedures. A user play list or rendering list may include a list of pointers or references to digital content. The stored user play list or the stored user digital content may be further edited, stored, or shared subsequently for access and rendering. The Internet services are accessible by smart devices, such as smart phones, information pads, TVs, audio output devices, and printers. The smart devices that access the Internet services may require client software for accessing the Internet service."
(Paraphrase/verbatim-blend — treat as a close summary rather than a certified quote.)
Plain-language overview of the claims
Uncertainty flag: I do not have the verbatim claim text of US 10,606,535 and therefore cannot state with confidence how many independent claims it has or reproduce them exactly. Based on the title, abstract, specification (the "pervasive output" family disclosure), and the patent's own word-frequency data on the Google Patents page (e.g., "method" 156 occurrences, "rendering," "printing," "communication," "processing," "memory"), the claims are consistent with a mixed set of method and system/apparatus claims covering:
- Content upload / storage — A server-side (Internet) service that receives user digital content (documents, audio, video) from a client device, stores it, and makes it retrievable.
- Content sharing with authentication/security — The stored content (and/or pointers to it) may be shared with other client devices or users, subject to authentication or security procedures.
- Playlist ("play list"/rendering list) selection and management — A user playlist containing pointers or references (e.g., URLs/identifiers) to digital content, which can be edited, stored, re-stored, or shared and later used for access and rendering.
- Smart-device client access —"Smart" devices (smart phones, information pads, TVs/television controllers, audio output devices, printers) that access these Internet content services, typically via client software installed on the device.
Because I could not verify the actual claim language, I advise against citing any specific independent-claim wording from this report. To get the exact claims, the authoritative sources are the USPTO PatentCenter/Patent Public Search record for application 15/978,076, or columns 44+ of the granted patent PDF (the specification appears to occupy roughly columns 1–43, with claims beginning thereafter).
Litigation / docket status
- District court: Flexiworld Technologies, Inc. v. Sony Corporation, No. 2:23-cv-00616 (E.D. Tex.) — listed in the Stanford NPE Litigation Database as involving this patent.
- CAFC 2026 dockets: I found no Federal Circuit 2026 activity for US 10,606,535 in the available search results. Sibling Flexiworld patents (e.g., 11,029,903) have been the subject of PTAB/PGR proceedings (e.g., Roku v. Flexiworld, PGR2021-00112), but no such proceeding was confirmed for the '535 patent here. Absence of a hit is not proof of absence — I've simply not located one.
Where this fits in the family
US 10,606,535 is one of many continuations issuing from the same Flexiworld "pervasive output" specification. Its near-identical sibling is US 9,971,555 ("…content upload, content storage, content sharing, content playlist selection, content editing, or content download; and smart phones, information pads, smart televisions and printers …") and US 10,346,114 ("Digital content services over the internet that transmit or stream protected digital content…"). If you need exact claim text, the sibling '555 patent (issued May 15, 2018) is a good cross-check, since its claims were drafted from the same disclosure.
Bottom line: Bibliographic facts (number, title, inventors, assignee, filing/grant dates, status, main litigation) are solid and source-grounded. The abstract is a close paraphrase, not a verified quote. The claim overview is analytical and should be verified against the official claim set before reliance.
Generated 9/27/2026, 6:44:02 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 10606535. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 10606535 specifically.
Let me dig deeper into the specific cases identified.
Let me verify whether the '535 patent appears in the newer Flexiworld complaints (TCL) and confirm the Sony case details.
Generated 9/27/2026, 6:43:51 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.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
PTAB / AIA Trial Proceedings — US 10,606,535 B2
Patent: "Internet based digital content services that provide content upload, content storage, content sharing, and content playlist selection; and smart devices with access to the internet based digital content services" — Flexiworld Technologies, Inc.; inventors William Ho Chang & Christina Ying Liu; app. 15/978,076, filed 2018-05-11; granted 2020-03-31; earliest priority 2000-11-20.
Proceedings overview
Total AIA trial proceedings on US 10,606,535: 0. The USPTO Open Data Portal (ODP) structured block returns no IPR, no PGR, and no CBM ever instituted or even filed against this patent; my independent searches (Google Patents "Family has litigation" record, Docket Alarm PTAB dockets, RPX/Justia litigation dockets, and the Stanford NPE Litigation Database entry for 10,606,535 — https://npe.law.stanford.edu/patent/10606535) surfaced no proceeding captioned against the '535 patent. Breakdown by status at the patent level: active 0 / claims invalidated 0 / claims sustained 0 / settled 0 / institution denied 0.
Bottom line for a defendant: there is no PTAB outcome on this patent to lean on — no claim has been canceled, and no estoppel exists against anyone. The '535 is, at the PTAB level, a virgin patent: all of its claims are UNTESTED. That cuts both ways — you cannot point to a Federal Circuit-affirmed invalidation, but you are also not barred by § 315(e)(2) and can file your own IPR on art of your choosing. The patent does, however, sit inside a family that has taken sustained PTAB fire with mixed results (some claims canceled, some sustained), and its Google Patents legal-status field reads "Expired - Fee Related" with an anticipated expiration of 2021-11-18 — a potentially dispositive defense worth verifying on day one (see below).
Proceedings on file
None. The canonical structured list is empty and no proceeding could be corroborated by web search. I will not invent a proceeding number to fill this section.
(Template note: because there is no {PROCEEDING_NUMBER} to report, the required per-proceeding fields — type, filing date, status, panel, grounds, institution decision, FWD, settlement, appeal, defensive value — have no content for this patent and are therefore omitted rather than fabricated.)
Family-adjacent PTAB proceedings — context only, NOT on US 10,606,535
These are different patents in the same Flexiworld continuation family. They create no estoppel and no claim-level effect for the '535, but they tell a defendant exactly how this patent owner litigates.
IPR2021-00714 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 8,989,064)
- Type: Inter Partes Review
- Filed: 2021 (Roku's companion filings IPR2021-00713, '066 patent; IPR2021-00714, '064 patent; IPR2021-00715 were filed as a set; Flexiworld's Preliminary Response is dated 2021-07-26)
- Status: Final Written Decision — some challenged claims unpatentable
- Judge panel: Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal (Dougal, opinion author)
- Petition grounds: § 103 obviousness — Grounds 1/1A/1B (Ikonen + Beck), Grounds 2/2A (Yamaguchi + Gu), Grounds 3/3A (Gu + Yamaguchi)
- Institution decision: instituted on claims 1–10, 12, and 14–20 under § 314(a) (Paper 18). Patent Owner pressed a Fintiv § 314(a) discretionary-denial theory (W.D. Tex. trial set well before FWD date) — the Board declined to exercise discretion.
- Final Written Decision: entered 2022-10-21. Verbatim holding: "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–10, 12, and 14 are unpatentable. We also determine that Petitioner has not shown by a preponderance of the evidence that claims 15–20 are unpatentable." — i.e., claims 1–10, 12, 14 CANCELED; claims 15–20 SURVIVED. (Full text: https://www.docketalarm.com/cases/PTAB/IPR2021-00714/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/10-21-2022-Board/Final_Written_Decision__original-35-Final_Written_Decision__original.pdf)
- Settlement / termination: none — decided on the merits after oral hearing on 2022-07-19.
- Appeal: a Federal Circuit appeal of this FWD is plausible but I could not confirm a CAFC docket number or disposition from the sources reviewed. Treat as unverified.
- Defensive value (for other patents): shows this petitioner pool can knock out independent claims — but also that Flexiworld successfully defended a full independent-claim set (15–20) at final written decision.
IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc. (U.S. 9,836,257)
- Type: Inter Partes Review (defensive aggregator — Unified Patents, LLC)
- Filed: 2022-04-08
- Status: Final Written Decision — no challenged claims unpatentable
- Judge panel: Brent Dougal, Christopher Ogden, Terrence McMillin
- Petition grounds: § 103 — Ground 1: claims 27–28 obvious over Olgaard in view of Moghadam; Ground 2: claims 27–28 obvious over Acharya in view of Griffiths
- Institution decision: instituted on all grounds and all challenged claims (bannerwitcoff.com/wp-content/uploads/2022/12/IPR2022-00775.pdf); the Board rejected Flexiworld's motivation-to-combine arguments on the Acharya–Griffiths ground at the preliminary stage.
- Final Written Decision: entered 2023-11-01 — Paper 41, captioned "Final Written Decision Determining No Challenged Claims Unpatentable [and] Dismissing Patent Owner's Revised Motion to Amend." That is, Unified lost: claims 27 and 28 survived. Flexiworld's revised contingent motion to amend was dismissed. Oral hearing held 2023-09-22.
- Settlement / termination: none.
- Defensive value: a cautionary data point — a well-funded aggregator using strong-art grounds still failed against this family on the merits.
IPR2022-01267 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 9,836,257)
- Type: IPR → terminated pre-institution on settlement
- Filed: 2022-07-29; Termination Decision (pre-institution, settlement) 2022-10-31; refund approved 2022-11-28. Terms confidential (settlement agreement filed with a business-confidentiality request). No institution decision on the merits.
PGR2021-00112 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 11,029,903)
- Type: Post-Grant Review (§§ 112 written description and § 101 eligibility — available because Roku argued the '903 claims were not supported by any pre-AIA parent, making PGR available).
- Filed: 2021-09-15
- Status: instituted (Board's institution decision "agreed" the claims are analogous to those invalidated in Rivera). The parties fully briefed written description (POR, Reply, Sur-reply) and § 101.
- Final Written Decision: I could not confirm the FWD outcome from the sources reviewed — do not rely on a claim-level result here. Flag for verification on PTAB E2E.
Settlement / other settlement note
Roku and Flexiworld also litigated across W.D. Tex. (6:20-cv-00819, 6:21-cv-00680, 6:21-cv-00767, 6:21-cv-00882), with companion IPRs IPR2021-00713 and IPR2021-00715; the IPR2022-01267 pre-institution settlement suggests at least a partial global resolution of the Roku dispute. None of that touches the '535.
Strategic summary
Claim status of 10,606,535: 100% UNTESTED at the PTAB. No claim of this patent has been canceled, confirmed, or construed by the Board. There is nothing to quote from an FWD about claims 1–N of the '535. Any statement that "claims X of the '535 were invalidated" would be false. By contrast, within the family, the '*064 patent lost claims 1–10, 12, 14 and kept 15–20 (IPR2021-00714, FWD 2022-10-21), and the '257 patent kept claims 27–28 (IPR2022-00775, FWD 2023-11-01). Family outcomes are not portable to the '535: each continuation has its own claim set, its own priority chain, and its own written-description exposure.
Estoppel landscape: clean slate. Because no IPR/PGR was filed against the '535, § 315(e)(2) estoppel does not attach to anyone with respect to this patent. A defendant today may file an IPR on any § 102/§ 103 ground, and there is no "reasonably could have raised" bar, no General Plastic follow-on petition problem, and no § 325(d) prosecution-history squeeze from a prior Board proceeding. Conversely, if you settle a Roku/Unified-style dispute elsewhere, watch for license language that reaches the '535 by name — that, not estoppel, is where the risk sits.
Pattern signals. (1) The petitioner pool is broad and sophisticated: Roku (multiple IPRs + a PGR), Lexmark (E.D. Ky. 5:22-cv-00097/00098/00010, with invalidity counterclaims), Hisense, Epson, and Unified Patents, LLC — a defensive aggregator — have all engaged this portfolio. Unified's presence confirms the family is on the aggregator radar; the fact that Unified lost on the merits (IPR2022-00775) is a meaningful signal of claim strength in this family. (2) Flexiworld litigates hard in both forums: it defeated Fintiv discretionary denial in IPR2021-00714 and defended claims to a favorable FWD. Expect the patent owner to contest institution aggressively. (3) Enforcement pattern: Flexiworld is a failed-startup NPE (Stanford NPE database categorizes it as "3 Failed startup") asserting against consumer-electronics and printer OEMs — Sony, Roku, Lexmark, Hisense, Epson — with willfulness/§ 285 rhetoric and pre-suit notice letters (e.g., 2021-10-14). (4) Litigation status of the '535 itself is not clean-cut: the Stanford NPE database lists 10,606,535 as asserted in Flexiworld Technologies, Inc. v. Sony Corporation, No. 2:23-cv-00616 (E.D. Tex.), but the published Sony complaint's enumerated patents-in-suit are family siblings ('259, '056, '516, '811, '871, '903, '596). I could not reconcile this discrepancy; verify the '535's actual assertion history on PACER before assuming it has been asserted. That Sony action was, in any event, dismissed with prejudice by joint stipulation with no merits ruling on validity or infringement, each side bearing its own costs (so no § 285 fee exposure flowed from it).
One more defense to check immediately. Google Patents' bibliographic record for US 10,606,535 lists legal status "Expired - Fee Related" and an anticipated expiration of 2021-11-18 (https://patents.google.com/patent/US10606535/en). If that is right — i.e., the patent term lapsed and/or maintenance fees went unpaid — then there is no prospective infringement and any assertion is limited to past damages, and further limited by the six-year lookback of 35 U.S.C. § 286 (i.e., conduct on or after 2020-09-27 only). "Expired - Fee Related" is Google's assumption, not an USPTO legal conclusion, and the anticipated-expiration figure is inconsistent with a 2020 grant date and needs to be run against the patent's face (priority/120-121 benefit chain) and the maintenance-fee record in Patent Center. This is the highest-value one-hour diligence item on this patent.
Recommended next steps
- Do not build an IPR-based defense narrative around the '535 as if it had been invalidated. There is no FWD to cite for this patent; if your demand letter or an opponent's brief implies otherwise, that is an error you can exploit — but do not replicate it.
- Confirm the expiration/maintenance-fee status in USPTO Patent Center (application 15/978,076) and against the patent's benefit chain. If the term has lapsed, move for summary judgment of no prospective infringement and cap damages at the § 286 six-year window measured from today (2026-09-27), i.e., post-2020-09-27 conduct only.
- Confirm the '535's assertion history on PACER (check 2:23-cv-00616 (E.D. Tex.) and the 2025 E.D. Tex. filings, incl. 2:25-cv-00960) to determine whether you are actually the first or a later target. Notice dates and the willfulness narrative differ materially depending on whether the '535 has been in suit before.
- If you file your own IPR/PGR, you have a clean runway — no § 315(e)(2) estoppel, no follow-on petition problem under General Plastic, and no § 325(d) issue arising from a prior Board proceeding on this patent. Reuse the family-level documentation Flexiworld generated in the Roku/Unified cases (File History of App. 10/053,765, Ex. 1002 in IPR2022-00775) as § 325(d) ammunition, and mine the written-description / § 101 attacks Roku used successfully to get PGR2021-00112 instituted against the '903 — the '535 shares the same specification architecture, so the "output system vs. information apparatus" written-description theory (and the Rivera analogy the Board credited at institution) is a live template. Note PGR is only available if the '535's claims lack pre-AIA parent support; otherwise use IPR.
- Sequence against any parallel district court case. Flexiworld successfully defeated Fintiv discretionary denial in IPR2021-00714 by emphasizing the early W.D. Tex. trial date and the parties' investment. If you are sued first, expect the same argument — and consider a Sotera-style stipulation or filing before substantial litigation investment to neutralize it.
- Verify the following before relying on them: (a) any Federal Circuit appeal and disposition of the IPR2021-00714 FWD (claimed claims 1–10, 12, 14 unpatentable; 15–20 sustained) — check CAFC docket and CourtListener; (b) the final outcome of PGR2021-00112; (c) the current owner of record and any licenses to the '535 via the USPTO Assignment database (reel/frame 042385/0202 appears in Flexiworld chain-of-title documents).
Uncertainty disclosure: No AIA trial proceeding on US 10,606,535 was found, and the ODP block reports none. Nothing herein should be read as asserting that any claim of the '535 has been canceled, confirmed, construed, or subjected to estoppel. Family-adjacent outcomes above are stated only as to the specific sibling patents identified.
Generated 9/27/2026, 6:44:22 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2001-11-18 · reel 012325/0362 · Assignment
William Ho Chang and Christina Ying LiuFlexiworld Technologies, Inc.
original assignment
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 history and ownership chain for US 10606535.
Let me look for the specific assignment record for the '535 patent.
Let me look deeper into the specific '535 patent assignment records and the Samsung agreement.
Assignment & Ownership Analysis — US 10,606,535 B2
Scope note / source limitation: I was able to retrieve Google Patents' legal-events block for the '535 patent and assignment reel/frame data that litigants have quoted into the public record for sibling patents in the same family. I was not able to pull the raw USPTO Assignment Center entry for the '535 patent itself in this session, and I did not obtain its correspondent-of-record. Where I lack a primary record I flag it explicitly rather than fill the gap. Verify any reel/frame below at the USPTO Assignment Center / assignment.uspto.gov.
Inventors
| Inventor | Residence of record | Employer at filing (determinable) |
|---|---|---|
| William Ho Chang | Vancouver, WA | Flexiworld Technologies, Inc. (co-founder) |
| Christina Ying Liu | Fremont, CA (later listed as San Francisco, CA on sibling patents) | Flexiworld Technologies, Inc. (co-founder) |
Both inventors are named on the great majority of the ~80+ US patents Flexiworld asserts as one portfolio. There is no evidence in the record I retrieved that either inventor departed Flexiworld or assigned away personal rights — the inventors and the assignee are the same two people plus the company they founded. This is the opposite of the "inventors leave within 12 months → fire-sale" pattern: the founders remained the principals of the asserting entity for two decades.
Original assignee
Flexiworld Technologies, Inc., Vancouver, WA (US) — named on the face of the patent as Applicant/Assignee, and confirmed as current assignee in Google Patents.
- Business / product: Flexiworld was founded in 2000 as a startup around "pervasive wireless" output (printers, displays, audio devices). In its own IPR briefing it describes itself as having been "voted the best early stage company in the Pacific Northwest in 2002" with a business plan ranked top-10 by the Silicon Valley Business Journal in 2002–2003. I found no evidence it ever shipped a commercial product embodying the '535 claims at scale.
- Current status: Still an existing corporate entity, now operating essentially as a patent-holding and licensing/assertion company (flexiworld.com markets its patent categories, e.g. "Digital Wallet / Payment Patents"). The Stanford NPE Litigation Database classifies the asserter as "3 Failed startup." The E.D. Ky. court in Flexiworld v. Lexmark recorded Flexiworld's own pleading that it "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit" — i.e., it is a non-practicing entity.
- Product-embodying-the-claims: No. No marking/product evidence; this is the single most important ownership fact for the verdict below.
Assignment timeline
The '535 patent sits in the large Flexiworld continuation family claiming priority to 2000‑11‑20. The chain I can substantiate is short: the inventors assigned the family to Flexiworld once, in 2001, and the patent has never left Flexiworld.
2001‑11‑18 (executed) / recorded 2001‑11‑18 — Reel 012325 / Frame 0362
- Conveyance: Assignment
- Assignor: William Ho Chang and Christina Ying Liu (named inventors)
- Assignee: Flexiworld Technologies, Inc.
- Correspondent: not retrieved — I could not confirm the recording attorney of record for this reel/frame.
- Context: original assignment of the parent application family (this reel/frame is quoted in the '114 reexamination record as the inventor→Flexiworld assignment for parent application 09/992,413; the '535 is a continuation in that same family).
Sibling-family records (for context, not the '535 itself). Litigants' pleadings quote these additional Flexiworld reel/frames, all inventor→Flexiworld or intra-family confirmations:
- '402 patent — Reel 028733 / Frame 0064
- '596 patent — Reel 039816 / Frame 0200
- '031, '072 and '178 patents — Reel 042385 / Frame 0202
- '856 patent — Reel 043675 / Frame 0454
- '871 patent — Reel 046519 / Frame 0534
- The repeated appearance of 042385/0202 across three different patents shows Flexiworld's counsel recorded family confirmations in batches — consistent with a single portfolio-management operation, though I do not have the attorney name, so I cannot call this a "repeat correspondent" finding on its own.
Post-issuance assignments of the '535 patent: none found. Google Patents' legal-events block for US 10,606,535 shows only the 2018 application-filing event ("Application filed by Flexiworld Technologies Inc.") and the 2020 grant; there is no assignment, security-interest, merger, or change-of-name event post-issuance. This means the original assignee still owns it — which is itself a finding.
Ownership complication to flag (family-level, not proven for the '535): In Flexiworld Technologies, Inc. v. Roku Inc., the court addressed a Flexiworld–Samsung Assignment Agreement. Roku argued the agreement actually conveyed the '064 and '066 patents to Samsung (which would have destroyed Flexiworld's standing to assert them); the court rejected that reading and held the '064 and '066 patents were NOT assigned to Samsung, because the agreement's transfer was limited to enumerated items (the '541 patent, the '958 application and two continuations) plus only inventions "included in a claim" of those items. Two takeaways: (1) there was a partial divestiture of select family members to Samsung (a large operating company), which is a genuine transfer out of the pure-NPE chain; and (2) standing/ownership cloud litigation over Flexiworld's continuation family is live. I have no evidence the '535 specifically was swept into the Samsung deal, and the court's narrowing construction cuts against that. Treat this as a due-diligence flag, not a recorded '535 assignment.
Timeline diagram
timeline
title Ownership of US 10606535
2000 : Flexiworld founded by Chang and Liu
2001 : Inventors assign family to Flexiworld
2018 : Continuation app filed for the family
2020 : 535 patent issues to Flexiworld
2022 : Flexiworld launches wide assertion campaign
2023 : Sony suit names the 535 patent
Litigation note: Building on the prior section — the Stanford NPE Litigation Database lists Flexiworld Technologies, Inc. v. Sony Corporation, 2:23‑cv‑00616 (E.D. Tex.) as a case involving this patent, and Flexiworld has asserted this family against Lexmark, Epson, Xerox, Hisense, Roku, Amazon, and Brother. The asserted claims target wireless printers and wireless output devices made by actual competitors of the technology, but the plaintiff itself ships nothing.
NPE / troll-pattern signals
Shell-entity transfer — NOT PRESENT. There is no chain of licensing LLCs. The patent has never moved off the original assignee, Flexiworld Technologies, Inc. (Google Patents legal events show no post-issuance assignment; Reel 012325/0362 is inventor→Flexiworld, not an operating-company-to-shell transfer). The "IP/Holdings/Ventures" shell pattern is absent.
Known asserter in the chain — PRESENT (moderate/borderline). Flexiworld is not on the classic serial-NPE lists (Acacia, Marathon, IV, Wi‑LAN, Vringo, Spangenberg, etc.), but it is in the Stanford NPE Litigation Database, asserter category "3 Failed startup" (npe.law.stanford.edu/patent/10606535), and its own court submission confirms it practices none of the patents. A non-practicing, high-volume plaintiff is the functional equivalent of an NPE; I mark this present but emphasize it is the failed-operating-company flavor, not the shell-LLC flavor.
Repeat correspondent across the chain — UNCLEAR. I could not retrieve the recording attorney for Reel 012325/0362 or any sibling reel/frame. The same reel (042385/0202) recurs across three family patents, which implies a single recording agent, but without the correspondent name I will not call this a finding. A single appearance is not a signal; a recurring named attorney would be — that data is missing here.
Cascading transfers — NOT PRESENT. No consecutive assignments through chained entities. One assignment, executed 2001, and nothing since.
Pre-litigation transfer — NOT PRESENT. The only assignment predates the first suit by ~two decades. Nothing was recorded within 6 months of the Sony filing (2:23‑cv‑00616) to "clean up" standing for this patent.
Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 sale; the patent was never sold to a third party.
Privateering — NOT PRESENT (for the '535). No SEC-filing evidence that a large operating company parked this patent with Flexiworld to assert against rivals. (Note the inverse oddity: Flexiworld sold family members to Samsung in the Roku dispute — a real operating company on the receiving end — but that is a partial sale, not privateering, and not shown to touch the '535.)
Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX / AST / LOT / Unified / OIN. The patent remains an active (currently expired-status) assertion asset with Flexiworld.
Verdict
NPE — moderate confidence.
The assignment chain itself is clean: one inventor→company assignment recorded 2001‑11‑18 at Reel 012325/0362, and no post-issuance assignment on the '535 (Google Patents legal events show only the 2018 filing and 2020 grant) — so there is no shell-entity or cascading-transfer signal. The moderate NPE call rests instead on the owner's character: Flexiworld is listed as an NPE asserter by the Stanford NPE Litigation Database ("failed startup"), and it conceded in the Lexmark litigation that it makes and sells no product practicing the patents (§287 argument, DE 33 ¶57). That is a single strong signal (present holder is a non-practicing, serial plaintiff) with no supporting assignment-churn signals — hence moderate, not high. The one substantive ownership wrinkle is the Samsung Assignment Agreement litigated in Flexiworld v. Roku, which shows Flexiworld parted with select family members but was held not to have assigned the sibling '064/ '066 patents; I found no evidence the '535 was included.
Verify at: USPTO Assignment Center (search patent 10,606,535) and assignment.uspto.gov.
Contradictions / gaps vs. prior sections
- No contradiction with the prior litigation summary; the Sony case (2:23‑cv‑00616, E.D. Tex.) is consistent across sources.
- Two honest gaps I could not close: (a) the correspondent-of-record / recording attorney for Reel 012325/0362 and for the sibling reel/frames, and (b) the specific recorded assignment entry for the '535 patent itself. If the Assignment Center returns a '535-specific reel/frame I did not surface here, the timeline should be updated with it; the chain-level conclusion (Flexiworld still owns it, no shell churn) is unlikely to change.
Generated 9/27/2026, 6:44:31 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior-art citations for US 10,606,535. Let me pull from multiple sources.
Let me retrieve the full "References Cited" list and the actual claims of the patent.
Let me try to retrieve the specific "References Cited" section from the patent's front page.
Prior-Art Analysis — US 10,606,535 B2
Step 0 — Identification (literal)
I searched for the exact number 10606535. The only record returned that matches the number as given is:
- US 10,606,535 B2 — "Internet based digital content services that provide content upload, content storage, content sharing, and content playlist selection; and smart devices with access to the internet based digital content services"
- Application 15/978,076, filed 2018‑05‑11, granted 2020‑03‑31, Flexiworld Technologies, Inc., inventors Chang & Liu.
- Google Patents lists "prior art keywords" as: digital content, client, user, output, servers.
I did not return or rely on similar numbers (e.g., 10,606,533; 11,029,903 is referenced only where it is a family/sibling cross‑reference — see flags at the end).
Step 1 — Important methodological caveat (read before the table)
Two limits materially affect the answer, and I want to state them plainly rather than paper over them:
A US patent's face does not contain a claim‑by‑claim prior‑art mapping. The "References Cited" block on the front page of US 10,606,535 is a bare list of document numbers/dates. The examiner's relevance annotations ("Relevant to Claim No.") exist only in the PTO‑892 / examiner's search report in the file wrapper of application 15/978,076, and in any international search report for a counterpart PCT. I could not retrieve the file‑wrapper PTO‑892 or the official claim set. Therefore any statement of the form "Reference X anticipates claim N" for this patent that I produce would be my analytical inference, not an examiner finding. I flag each such inference explicitly below.
I retrieved only a partial transcription of the front‑page list. US 10,606,535 is a Flexiworld continuation whose "References Cited" is unusually long (on the order of 200+ U.S. patent documents, plus foreign documents and non‑patent literature). I was able to recover a numbered/dated run of that list but not the complete list, and not brief descriptions keyed to it. I will not invent entries to fill gaps.
Because of (1) and (2), I am giving you (a) the grounded partial list I actually recovered, (b) an identification of the thematically most probative cited references with honest confidence flags, and (c) the far more probative prior art that surfaced in the related litigation/PTAB record, which is where a real validity attack on this family has actually been run.
Step 2 — Partial "References Cited" recovered from the patent record
The following run was recovered from the uspto.report record for grant 10,606,535 (dates as printed). Treat the dates as printed, and treat this as an incomplete extraction.
| No. | Patent | Date | Type / thematic tag (my characterization — see caveat) |
|---|---|---|---|
| 1 | US 5,796,727 A (Harrison et al.) | Aug 1998 | Wireless/telecom network access |
| 2 | US 5,802,314 A (Tullis et al.) | Sep 1998 | Network printing / data delivery |
| 3 | US 5,822,230 A (Kikinis et al.) | Oct 1998 | Portable computing/peripheral |
| 4 | US 5,831,664 A (Wharton et al.) | Nov 1998 | Media/telecom |
| 5 | US 5,832,191 A (Thorne) | Nov 1998 | Printer configuration |
| 6 | US 5,838,320 A (Matthews, III et al.) | Nov 1998 | — |
| 7 | US 5,838,926 A (Yamagishi) | Nov 1998 | — |
| 8 | US 5,845,078 A (Tezuka et al.) | Dec 1998 | Print/network job management |
| 9 | US 5,850,449 A (McManis) | Dec 1998 | Portable computer power/peripheral |
| 10 | US 5,852,721 A (Dillon et al.) | Dec 1998 | Network device/connection management |
| 11 | US 5,859,970 A (Pleso) | Jan 1999 | Print server / document distribution |
| 12 | US 5,862,321 A (Lamming et al.) | Jan 1999 | Document/location systems |
| 13 | US 5,862,404 A (Onaga) | Jan 1999 | Print system |
| 14 | US 5,867,633 A (Taylor, III et al.) | Feb 1999 | Printer/network |
| 15 | US 5,870,723 A (Pare, Jr. et al.) | Feb 1999 | Transaction/identity |
| 16 | US 5,880,858 A (Jin) | Mar 1999 | — |
| 17 | US 5,881,213 A (Shaw et al.) | Mar 1999 | Image/content management |
| 18 | US 5,884,140 A (Ishizaki et al.) | Mar 1999 | Print/image output |
| 19 | US 5,897,260 A (Zingher) | Apr 1999 | — |
| 20 | US 5,903,832 A (Seppanen et al.) | May 1999 | Wireless terminal/messaging |
| 21 | US 5,907,831 A (Lotvin et al.) | May 1999 | Document publishing |
| 22 | US 5,911,044 A (Lo et al.) | Jun 1999 | — |
| 23 | US 5,916,309 A (Brown et al.) | Jun 1999 | Network/device |
| 24 | US 5,917,542 A (Moghadam et al.) | Jun 1999 | Imaging/communication |
| 25 | US 5,926,104 A (Robinson) | Jul 1999 | Wireless communication |
| 26 | US 5,930,466 A (Rademacher) | Jul 1999 | Network printing |
| 27 | US 5,931,919 A (Thomas et al.) | Aug 1999 | — |
| 28 | US 5,933,498 A (Schneck et al.) | Aug 1999 | Digital-property access/distribution control |
| 29 | US 5,937,112 A (Herregods et al.) | Aug 1999 | — |
| 30 | US 5,940,843 A (Zucknovich et al.) | Aug 1999 | Document distribution |
| 31 | US 5,946,031 A (Douglas) | Aug 1999 | Digital imaging |
| 32 | US 5,946,110 A (Hu et al.) | Aug 1999 | — |
| 33 | US 5,946,458 A (Austin et al.) | Aug 1999 | Print/job processing |
| 34 | US 5,953,546 A (Okada et al.) | Sep 1999 | — |
| 35 | US 5,960,162 A (Yamamoto) | Sep 1999 | — |
| 36 | US 5,968,176 A (Nessett et al.) | Oct 1999 | Network security |
| 37 | US 5,970,473 A (Gerszberg et al.) | Oct 1999 | Network service/menu |
| 38 | US 5,974,234 A (Levine et al.) | Oct 1999 | — |
| 39 | US 5,974,401 A (Enomoto et al.) | Oct 1999 | — |
| 40 | US 5,978,560 A (Tan et al.) | Nov 1999 | Print data handling |
| 41 | US 5,983,200 A (Slotznick) | Nov 1999 | Electronic information delivery |
| 42 | US 5,987,454 A (Hobbs) | Nov 1999 | Document/information management |
| 43 | US 5,993,047 A (Novogrod et al.) | Nov 1999 | — |
| 44 | US 6,003,065 A (Yan et al.) | Dec 1999 | Network/print |
| 45 | US 6,006,265 A (Rangan et al.) | Dec 1999 | Client/server content delivery |
| 46 | US 6,009,464 A (Hamilton et al.) | Dec 1999 | Distributed object/network services |
| 47 | US 6,020,973 A | Feb 2000 | — |
Also recovered from the same family of front pages / related filings:
- Foreign: CN 1217503 A (1999‑05), CN 1488106 A (2004‑04).
- Later U.S. reference on the same face: US 6,556,313 B1 (Chang et al.), Apr 2003.
- A further block in the 3,6xx,xxx–4,7xx,xxx and 5,2xx,xxx–5,7xx,xxx ranges appears on the shared front pages of the Flexiworld family (e.g., 3,629,493; 3,833,297; 3,848,856; 4,262,301; 4,301,599; 4,340,905; 5,303,342; 5,319,711; 5,353,388; 5,412,798; 5,463,623; 5,467,443/4; 5,475,507; 5,479,206 …). I could not verify which of these sit specifically on the '535 face versus on a sibling; do not treat that block as confirmed for '535.
Honesty flag on the table: for roughly two‑thirds of the entries I do not have a reliable one‑line subject matter description, and I have deliberately left those as "—" rather than guess. The date/number pairs are grounded in the retrieved record; the thematic tags are my characterization and should be confirmed against each reference's own abstract before being quoted.
Step 3 — Which cited references are most likely to be the relevant prior art
Ranked by fit with the '535 claim themes (content upload → storage → sharing under authentication → playlist / rendering list of pointers to content → smart‑device client access across the Internet):
US 5,933,498 A — Schneck et al., "System and method for controlling access to and distribution of digital property," Aug 1999. Best thematic fit to the sharing‑with‑authentication/security theme. Inference (not an examiner finding): if any cited reference was mapped to the sharing/security claim, this is the most plausible candidate.
US 6,006,265 A — Rangan et al., Dec 1999. Client/server content delivery; fits the server‑side storage + retrieval by client architecture. Inference: potential § 102(a)/(e) candidate against an upload/store/retrieve claim, only if its disclosure reaches user‑uploaded content and pointer/playlist delivery — a proposition I have not verified.
US 5,987,454 A (Hobbs, Nov 1999) and US 5,940,843 A (Zucknovich et al., Aug 1999). Document‑management/distribution systems; plausible against content storage + reference to content limitations.
US 5,974,401 A (Enomoto et al.) / US 5,978,560 A (Tan et al.) / US 5,959,000‑series print‑data references. Plausible against the output/rendering half of the disclosure (this specification is the Flexiworld "pervasive output" text; see Step 5).
CN 1217503 A (1999). Foreign document on the face; relevance unknown to me.
But note the structural mismatch. This patent's title is about digital content services / playlists, while the specification is the 2000 "pervasive output" disclosure (FIG. 1 pervasive output system 98, client application 102 / server application 112 / output controller 104, Bluetooth/IrDA, raster image processing). The claims therefore likely blend (i) Internet content upload/storage/sharing/playlist management with (ii) rendering at a smart device. The cited references above are mostly late‑1990s printing/network/digital‑property art — which is the art the Flexiworld examiner actually had in front of them — whereas the playlist/streaming‑media art that a modern challenger would use (Eyal, Madison, etc. — see Step 5) largely post‑dates the 2000‑11‑20 priority date or was not on the face.
Step 4 — § 102 framework (so the earlier "anticipates" question is answered correctly)
- A reference anticipates under 35 U.S.C. § 102 only if a single reference discloses every element and limitation of a claim, arranged as recited (no missing element; no reliance on a second reference). Multiple references on the face being "relevant" is not an anticipation finding.
- The references cited on the '535 face are IDS‑submitted and/or examiner‑cited art; absent the PTO‑892 claim annotations, I cannot tell you which claim each was cited against.
- Because I could not retrieve the verbatim claim set, I cannot responsibly name the specific claim number a given reference "potentially anticipates." The earlier-generated summary already flagged this same gap; that flag stands and is hereby reinforced, not contradicted.
- Where the priority date is 2000‑11‑20, only art before that date (or qualifying § 102(e) art with an earlier effective filing) can be § 102 prior art. Most of the front‑page references (1971–2000) qualify on date; whether they qualify on disclosure is the open question.
Step 5 — The prior art that actually mattered (litigation / PTAB record)
This is the most probative, source‑grounded prior‑art information I found for this patent family, and it should not be omitted just because it is not on the '535 face:
- Roku, Inc. v. Flexiworld Technologies, Inc., PGR2021‑00112 (challenging US 11,029,903, a same‑family sibling with the same priority and the same "pervasive output" specification; the '535 and '903 share the 2000‑11‑20 priority chain per the Google Patents record). The petition frames the art around the "device driver problem" and the remote‑server driver execution solution.
- Roku, Inc. v. Flexiworld Technologies, Inc., IPR2021‑00714 (challenging US 8,989,064), Final Written Decision entered Oct 21, 2022: claims 1–10, 12, 14 held unpatentable; claims 15–20 upheld. The Board's description of the '064 patent confirms the shared specification (pervasive output; output controller; Bluetooth/IEEE 802.11 discovery; client application 210/205; output device 220 with output controller 230).
- In the parallel Amazon/related litigation and the Flexiworld assertion record, the Madison reference (US 2004/0083273 A1, filed 2002‑01‑18, claiming priority to provisional 60/263,058 filed 2001‑01‑18) is mapped element‑by‑element against a "providing access to digital content … receiving digital content from a client … storing the digital content on a server having a hostname … assigning a unique identifier" claim — i.e., exactly the upload/store/serve‑by‑URL/playlist architecture that the '535 title describes. Madison is a § 102(e) candidate (effective as of its provisional date) against such claims.
- Other content‑delivery/playlist art deployed in this space includes Eyal (US 2006/0112138‑family "play‑lists comprising URLs"), Angles (US 2005/0203807 family), Cassin, Huston, and Bi / Gladwin / Berman (Bi US 2002/0087996 A1; Gladwin WO 01/17142 A2; Berman US 6,502,194 B1 — used in the Black Hills Media‑type playlist‑remote‑control IPRs). These are the references a contemporary § 102/§ 103 challenge to a "playlist of pointers to content delivered to a smart device" claim would actually use. Caveat: several post‑date 2000‑11‑20 on their face and would only qualify via § 102(e)/priority‑to‑provisional chains, which must be traced individually.
Step 6 — Contradictions / uncertainty flags (explicit)
- Truncated prior section. The provided "Litigation summary" for this patent was cut off mid‑sentence; I could not build on its conclusion. Nothing in it that I could read contradicts this analysis (Sony E.D. Tex. 2:23‑cv‑00616; no CAFC 2026 activity found).
- Date inconsistency. The system context states today is 2026‑09‑27; this task states April 26, 2026. I have not reconciled these; treat dates for freshness purposes with care.
- Priority‑date inconsistency (already flagged upstream, remains open). The '535 Google Patents record shows 2000‑11‑20, while some sibling records show 2000‑11‑01. Google Patents' own family listing shows both (2000‑11‑01 for some '535 relationships and 2000‑11‑20 for the '535 entry). This matters because a § 102(e) reference's qualification turns on the exact priority date.
- Claim text still unverified. The upstream summary's warning that the verbatim claims were not retrieved is confirmed. Do not cite any claim number in this report as an examiner's finding; every claim‑level link I gave is labeled as inference.
- Partial citation list. The "References Cited" table is a partial recovery. Before it is used in any filing, it must be replaced by the complete front‑page list from the granted PDF or the PTO‑892 in the file wrapper of application 15/978,076.
To close the gaps cleanly: pull (a) the granted‑patent front page "References Cited" and (b) the PTO‑892 / examiner's search from USPTO Patent Public Search or PatentCenter for application 15/978,076 — that document contains the actual "Relevant to Claim No." columns, which is the only authoritative source for "which claim each reference was cited against."
Generated 9/27/2026, 6:44:40 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior art cited against and within this patent family to ground the § 103 analysis.
Let me pull the specific prior-art references cited in this patent and the related Flexiworld validity challenges.
Let me get the specific references cited on the face of this patent and the key streaming/playlist prior art used against the family.
Obviousness Analysis of U.S. Patent No. 10,606,535 B2 under 35 U.S.C. § 103
Analyst note on sources and confidence. I was not able to retrieve the "Prior Art" tab of the Google Patents page for US 10,606,535 in verbatim form within the tool budget for this task. What I was able to ground are: (a) the granted claim 1 text (via Flexiworld's own patent page, flexiworld.com/patent/us-10606535/), (b) the Google Patents bibliographic/priority record, and (c) the prior-art references actually deployed against this same Flexiworld specification family in PTAB proceedings and district-court invalidity contentions. Where I am using a family-level reference rather than a reference I have confirmed appears on the '535 face, I say so explicitly. I also flag the single most outcome-determinative issue below (§2) rather than papering over it.
1. The governing framework
A claim is obvious under § 103 where "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The four Graham factors are: (1) scope and content of the prior art; (2) level of ordinary skill; (3) differences between the prior art and the claims; and (4) objective indicia (secondary considerations).
Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), a combination is obvious where the prior-art elements are known, the combination is a predictable variation of known techniques, and there existed a "design incentive, market pressure, or known need" to combine — no express teaching, suggestion, or motivation is required. The Board applies this standard in IPR/PGR under 35 U.S.C. § 314(a)/§ 324(a) ("reasonable likelihood" / "more likely than not"), and district courts under clear and convincing evidence.
2. The dispositive threshold: effective priority date of the '535 claims
This is the whole ballgame, and I flag it as a high-confidence uncertainty.
- US 10,606,535 (App. 15/978,076) was filed May 11, 2018 and claims benefit through a chain to App. 10/053,765, filed January 18, 2002, which itself traces to Provisional 60/245,101, filed November 1, 2000 (the November 1, 2000 provisional date is confirmed in Flexiworld's own complaint language in the 2:25-cv-00960 docket: the '596 patent "claims priority to … U.S. Provisional Application No. 60/245,101, filed on November 1, 2000"). Google Patents separately displays a "prior art date" of 2000-11-20 for this patent.
- In the Roku v. Flexiworld PTAB litigation, Flexiworld changed its priority position mid-proceeding — shifting from an alleged January 19, 2001 provisional (60/262,764) to the November 1, 2000 provisional (60/245,101) — and Roku's expert (Bhattacharjee) argued the later claims were not entitled to the earlier provisional under § 112 (Dynamic Drinkware). See Bhattacharjee Reply Decl., IPR2021-00713, https://www.docketalarm.com/cases/PTAB/IPR2021-00713/.../Exhibit-1025...pdf.
Why this matters here: whether the '535 is prior-art-effective as of Nov. 1, 2000 or as late as Jan. 18, 2002 determines which references qualify. If the effective date is Jan. 18, 2002, then earlier Flexiworld-published applications (Chang-121, US 2002/0083121, filed Nov. 1, 2001) and other 2001 publications become § 102(e) prior art. That self-collision is not hypothetical — the petitioner in an IPR against a Flexiworld patent relied on US 2002/0083121 A1 ("Chang-121") and US 7,941,541 ("Chang '541") as prior art (PTACTS petition, USPTO). If, by contrast, the '535 is entitled to Nov. 1, 2000, several of the strongest references below fall away. Any § 103 opinion here must therefore be presented in the alternative (Grounds A/B keyed to the Jan. 18, 2002 date; Grounds C/D available even on the Nov. 1, 2000 date).
3. Level of ordinary skill in the art (POSITA)
The Board has endorsed, for this exact technology space, a POSITA with "(1) an undergraduate degree in electrical and computing engineering or a closely related field; and (2) two or more years of experience in wireless content transmission," with the caveat that "[m]ore relevant experience could compensate for less education, and vice versa." Unified Patents v. Flexiworld (IPR2022-00775 Institution Decision, '257 patent), http://bannerwitcoff.com/wp-content/uploads/2022/12/IPR2022-00775.pdf. This is the appropriate skill level for the '535 analysis.
4. The prior art available (scope and content)
Below are the references surfaced for this patent/family. I mark [Face-confirmed] where I observed the reference tied to the '535 record, and [Family-level] where it was used against the same Flexiworld specification in PTAB/DC contentions.
| # | Reference | Date | Source / status |
|---|---|---|---|
| R1 | Madison — US 2004/0083273 A1, "Method and System for Managing Digital Content, Including Streaming Media" (prov. 60/263,058) | Filed Jan. 18, 2002; prov. Jan. 18, 2001 | [Family-level] — instituted ground IPR2021-00308; teaches upload/manage/deliver streaming media "via the Internet," repository/storage server, streaming media server(s), and a playlist server that dynamically generates a redirector file (a list of URLs) for the end-user media player. |
| R2 | Wolfe | 1990s | [Family-level] — combined with Madison in IPR2021-00308; subscriber profile database + advertiser database, targeting content/ads to users. |
| R3 | Qureshey — US 6,199,076 (Audio Highway) / related Qureshey patents | filed 1997; issued Mar. 6, 2001 | [Family-level] — the Board discussed Qureshey in IPR2015-01464: server site 1104, PC 1508, networked audio device 1510; user uploads an audio file to the server site, which "makes the audio file available for playing"; playlists are created, edited (add/delete via arrows), scheduled, synchronized, and downloaded to target devices, with URLs provided in the playlist. (IPR2015-01464 Decision, https://ptabtrialblog.com/.../IPR2015-01464-Decision-Denying-Institution-20160113.pdf) |
| R4 | Ikonen, Yamaguchi, Kammer, Gu, Garfunkel, Peng | 1990s–2001 | [Family-level] — grounds in IPR2021-00713/00714/00715 (Roku v. Flexiworld); wireless output-controller discovery/advertisement, wireless print from mobile device, output-device capability exchange. (PO Demonstratives, docketalarm.com.) |
| R5 | Eyal, Angles, Chang (HotAudio) | pre-2002 | [Family-level] — instituted in IPR2021-00308; playlist compatibility with playback equipment ("additional control … to ensure that playlists were compatible with playback equipment, optimizing the equipment's performance"). |
| R6 | Flexiworld's own earlier publications/applications: US 2002/0083121 A1 ("Chang-121"), US 7,941,541 ("Chang '541") | 2001/2002 | [Family-level] — relied on by a petitioner against a Flexiworld patent (PTACTS petition, USPTO). |
| R7 | Print/scan wireless art appearing in the '535-family references-cited lists: Wolff 6,738,841; Silverbrook 6,741,871 / 6,813,039; Marggraff 6,750,978; Evans 6,690,918; Strobel 6,751,732; Buckley 6,798,530 | 1999–2004 | [Face-adjacent] — surfaced via uspto.report/patent/grant/10,606,535. Treat as reference-list evidence, not a verified examiner citation on the '535 face. |
(Per the operating rules, I have not auto-corrected any of these numbers; e.g., I do not silently "fix" US 6,741,871 or US 10,606,535.)
5. Representative claim 1, decomposed
From Flexiworld's published claim 1 (verbatim source: https://www.flexiworld.com/patent/us-10606535/), the independent method claim requires:
- (A) rendering a user's digital content at an output device, facilitated by a digital content service comprising server(s) over a network including the Internet;
- (B) a client device that is a wireless, mobile information apparatus with processor/memory plus wireless communication circuitry, a touch-sensitive screen, and an OS supporting an object/component model, running a client application;
- (C) the servers are distinct from the client device and the output device; the output device is communicatively coupled to the client device;
- (D) obtaining authentication/security information via the touch screen and wirelessly providing it to the servers;
- (E) obtaining, at the servers, output device object(s) describing device(s) including the output device;
- (F) wirelessly transmitting the user's digital content to the servers for storing; storing it there;
- (G) servers provide a pointer/reference to the stored content;
- (H) client wirelessly accesses at least part of the stored content using the pointer/reference;
- (I) obtaining an attribute containing editing information (change/modification/update/manipulation) associated with the content;
- (J) obtaining a digital content object including that attribute and information related to the pointer/reference;
- (K) servers receive message(s) including the digital content object.
Claim 1 is thus an upload → store → pointer → re-access → edit-object → render pipeline executed by a wireless mobile client against a remote multi-server content service, with touch-screen authentication.
6. Grounds of rejection
Ground A — Madison in view of Qureshey (available as of Jan. 18, 2002; the core software/service limitations)
Mapping to claim 1:
| Claim 1 element | Madison (R1) | Qureshey (R3) |
|---|---|---|
| (A), (C) distinct servers, Internet, rendering | "method and system for allowing clients to upload, manage, and deliver streaming media content … via the Internet"; repository/storage server and streaming media server; playlist server — multiple distinct servers | server site 1104 separate from devices; playlist URLs cause the media device to obtain and play media |
| (F) upload + store | "client uploads streaming media content to the repository or storage server"; content "available for [Internet] streaming" | user at PC uploads the audio file to the server site, "which then makes the audio file available for playing" |
| (G) pointer/reference | redirector file = list of URLs (e.g., mms://mediaserver.company.com/stream1.asf) |
playlist file with URLs provided to the device |
| (H) access using pointer | "the end user's media player pulls each identified stream file from the media server identified in the redirector file" | device requests the audio file using the URLs provided in the playlist |
| (I)/(J) editing attribute; content object | "manage such content"; Streams database records/metadata | user adds and deletes songs, edits the playlist, synchronizes it back to the server |
| (D) authentication | — | need for subscriber access/security (art-recognized) |
| (E) output device object | redirector file generated to be compatible with the end-user's media player (device-capability-based formatting) | playlist compatibility with playback equipment (with R5) |
| (B) wireless mobile client + touch screen | — | — |
Gap: the touch-screen mobile client, the wireless output-controller/device, and the "output device object" abstraction (B, E) are not taught by Madison/Qureshey alone. Those elements are supplied by the output-device art below.
Ground B — Madison in view of Wolfe (secondary/subordinate claims)
Where the claims recite selection/insertion of content based on user characteristics (e.g., "user play list … for access and rendering," content tailored to a user), Madison + Wolfe is the exact combination instituted in IPR2021-00308: Madison's "ad tag" specifying where an advertisement is inserted, plus Wolfe's subscriber-profile database ("age, demographic data, … musical selections previously or simultaneously made by the subscriber") and advertiser database. The Board found "an adequate reason to combine the prior art teachings with a reasonable expectation of success."
Ground C — Madison/Qureshey in view of Ikonen and/or Yamaguchi (the wireless-output limitations)
To the extent any claim requires wireless discovery of, and rendering on, a distinct output device (printers, TVs, audio output devices — the "smart devices" of the title):
- Ikonen and Yamaguchi (R4) teach wireless output-controller discovery via short-range wireless and transmission of print/output data to a discovered device — the "output device object"/"broadcast or advertisement of availability" concept discussed at length in Roku v. Flexiworld (PO Demonstratives, IPR2021-00713/00714).
- Madison/Qureshey supplies the remote Internet content service side (upload, storage, pointer, playlist, edit/sync).
- The combination is a predictable union of two known sub-systems (a networked content/playlist service + a wireless output path) — precisely the KSR "arrangement of old elements" scenario.
Ground D — Flexiworld's own earlier applications as § 102(e) prior art (self-collision)
If the '535's effective date is not earlier than its Jan. 18, 2002 filing, then Chang-121 (US 2002/0083121) and Chang '541 (US 7,941,541) — published 2002 from applications filed Nov. 1, 2001 — are § 102(e) prior art and disclose the pervasive-output architecture (information apparatus + output device object + document object + application server + content server, Fig. 1). A petitioner has already used these exact references against a Flexiworld patent (PTACTS petition). Because they share the inventors' own disclosure, they are highly probative on the "output device object" and "composite message"/"digital content object" limitations (E, J, K).
Ground E — General web/streaming-art + mobile-device art
Independent of the family: a POSITA at the relevant time knew that streamable media was requested via URLs and consumed in players (Madison, Qureshey), and that wireless handhelds uploaded/downloaded content over cellular links with authentication. To the extent the claims recite encryption, compression/decompression, scaling, color correction, or halftoning (word-frequency terms on the '535 Google Patents page: compression 14, decompression 13, correction 7), these are well-known, result-effective techniques routinely applied in content-transmission pipelines and are obvious to apply.
7. Motivation to combine (why a POSITA would combine)
Under KSR, the following rationales supply the required motivation:
- Same field, same problem, same solution type. Madison, Qureshey, and the wireless-output references all address "deliver/store/play user content from a remote server on a client-controlled output device." Combining a remote upload/store/pointer/playlist service with a wireless output path solves one identified need without changing the principal operating principle of either reference.
- Known need / market pressure. The '535 specification itself frames the problem as "pervasive output … regardless of processing power, display screen size and memory space," and motivates mobile users wanting to output full-fidelity content to nearby devices. That need was acute and well-recognized pre-2002.
- Predictable result / no new engineering. Adding a wireless output-controller module or an external print server to a legacy device was "long used" and routine (a point made in the PTAB record: internal/external print servers). There is no technological barrier overcome.
- Design incentive to preserve metadata. Qureshey's playlist-compatibilities motivation ("additional control … to ensure playlists were compatible with playback equipment") supplies a direct reason to carry device-capability information (the "output device object") alongside the content references.
- Ordinary creativity in combining. KSR expressly credits combining known elements according to known methods to yield predictable results.
8. Secondary considerations (Graham factor 4)
I found no evidence in the materials reviewed of: unexpected results, long-felt-but-unmet need, industry praise tied to a specific claim, licensing of the '535 as such, or copying. The Flexiworld "family has litigation" with Sony (2:23-cv-00616, E.D. Tex.) and other defendants (per the prior Litigation section) is relevant to commercial success/nexus only if tied to the claimed features, which is not established by what I reviewed. This factor currently weighs little either way and is a place further discovery could matter.
9. Weaknesses, counterarguments, and what would defeat the rejection
- The priority date controls which references qualify. If the '535 is entitled to Nov. 1, 2000, Madison (prov. Jan. 18, 2001) is later and drops out, leaving Qureshey (issued Mar. 6, 2001 — also possibly too late for § 102(b) if the date is Nov. 1, 2000) and the pre-2000 print art. A rejection must be pleaded in the alternative with dates/§ 102 subparagraphs for each reference. (I am not confident enough in the exact § 102 subparagraph for each reference to state them categorically; they must be checked against each reference's actual filing/publication dates.)
- Claim 1's touch-screen + "object/component model" + "output device object"/"digital content object" language is more specific than Madison's redirector-file/URL model. A challenger must show these abstractions were either disclosed (Ground D, Flexiworld's own '121/'541) or obvious hardware/software conventions.
- Patent-eligibility and written-description attacks do not substitute for § 103. Notably, the PTAB's PGR2021-00112 against sibling US 11,029,903 turned largely on § 112 written description (and § 101), not on § 103 — a reminder that the family's claims have been vulnerable on other grounds, but that a rigorous § 103 record still has to be built reference-by-reference.
- I have not verified the actual full claim set of the '535. Only claim 1's text is confirmed from Flexiworld's own publication. Every conclusion above beyond claim 1 is analytical and must be verified against the official claim set (USPTO PatentCenter/Public Search for App. 15/978,076, or columns ~44+ of the granted PDF). Do not cite specific independent-claim wording for claims other than claim 1 without verification.
10. Bottom line
- For the software/service-side limitations (Internet content upload, storage, server-provided pointer/reference, re-access by pointer, playlist/editing-object management): Madison (US 2004/0083273) alone, or Madison in view of Qureshey, discloses nearly every element; combined with Wolfe for user-tailored content, this is the combination the Board has already found sufficient to institute a § 103 ground in the same technology space.
- For the wireless-output and output-device-object limitations: Ikonen and/or Yamaguchi (or the Flexiworld family's own earlier print/output references such as Wolff, Silverbrook, Marggraff) supply them, with a strong KSR motivation (known problem, predictable combination, no new engineering).
- The strongest lever is the priority date. If the '535 cannot prove entitlement to the Nov. 1, 2000 provisional on a claim-by-claim Dynamic Drinkware basis, then (i) Madison becomes available and (ii) Flexiworld's own Chang-121 / Chang '541 become § 102(e) prior art — which, being the same inventive disclosure, would make the "output device object"/"digital content object" limitations very difficult to distinguish.
Recommended next steps before reliance: (1) obtain the verbatim '535 claim set; (2) pull the reference-by-reference § 102 dates and confirm which are § 102(a)/(b)/(e) prior art under each candidate priority date; (3) confirm whether the "Prior Art" tab of the Google Patents record lists any face citations additional to those above; and (4) map any dependent claims (encryption, compression, device-dependent output) to the known result-effective-technique art.
Generated 9/27/2026, 6:45:00 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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