Invalidity dossier

US 10846031

Software application for a mobile device to wirelessly manage or wirelessly setup an output system or output device for service

Current assignee: Flexiworld Technologies, Inc.

Added 8/28/2026, 12:01:15 PM

At a glanceNo PTAB challenges5 lawsuits on fileasserted by Flexiworld Technologies, Inc.Wireless Technologies

Active provider: DeepSeek · deepseek-flash

Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

✓ Generated

I'll verify the bibliographic data and check for any 2026 CAFC activity on this specific number.

Let me pin down the granted claims and abstract, and check the Federal Circuit docket specifically.

Let me try to resolve the claim-text discrepancy I've found and confirm the full independent claim set.

Verification status

I searched for US 10,846,031 specifically and did not return results for adjacent numbers (10,846,030 / 10,846,032 / 10,481,846). Below, verified facts are separated from flagged uncertainties. Where the sources conflict, I report both rather than correcting either.

⚠ Date note: the task states today is April 26, 2026; this session's system date is 2026-09-21. I used both windows. This does not change any identification below.


1. Bibliographic summary

Field Value Source / confidence
Patent number US 10,846,031 B2 Google Patents; Flexiworld complaints — high
Application no. 15/594,440 Google Patents, Patexia, Flexiworld complaints, PGR2021-00111 — high
Pre-grant publication US 2017/0249116 A1, published 2017-08-31 Google Patents, Patexia — high
Title "Software application for a mobile device to wirelessly manage or wirelessly setup an output system or output device for service" Google Patents; Flexiworld's own patent page; every litigation complaint — high
Inventors William Ho Chang; Christina Ying Liu Google Patents; complaints ¶¶ on inventors — high
Assignee Flexiworld Technologies, Inc. (Vancouver, WA) Google Patents; Patexia ("Original"/"Current Assignee") — high
Assignment record Reel/Frame 042385/0202 — "an assignment of the '031 Patent from inventors Chang and Liu to Flexiworld" Flexiworld's complaints (W.D.N.Y. ¶30; E.D. Ky. ¶33) — moderate-high (pleading, not the Assignment Center record). ✅ This closes the gap flagged in the Assignment section, which could not retrieve a reel for '031. Consistent with my earlier listing of 042385/0202 as a family instrument.
Filing date 2017-05-12 (Google Patents; Flexiworld complaints; Patexia). ⚠ Unified Patents portal renders the same application as 2017-05-11 high on 2017-05-12; contradiction flagged
Issue date 2020-11-24 (Google Patents; every Flexiworld complaint: "duly and legally issued on November 24, 2020"). ⚠ Unified Patents / uspto.report render 2020-11-23 high on 2020-11-24; contradiction flagged
Earliest priority claimed 2000-11-01 (provisional 60/245,101) Google Patents ("Prior art date"), Patexia ("Priority Date Nov 1, 2000"), continuity text — high. ⚠ Unified Patents renders 2000-10-31 for family members
Continuity A continuation of 10/053,765 (filed 2002-01-18; claims benefit of provisional 60/262,764, filed 2001-01-19); CIP of 09/992,413 (filed 2001-11-18; benefit of provisional 60/252,682, filed 2000-11-20); CIP of 13/710,299 (filed 2012-12-10), a continuation of 12/903,048 (2010-10-12, now US 8,332,521), a continuation of 10/016,223 (2001-11-01, now US 7,941,541), claiming benefit of provisional 60/245,101 (2000-11-01) Patexia continuity text — high
Legal status Google Patents: "Expired – Fee Related," with adjusted expiration 2022-05-01. ⚠ Prior sections also surfaced a PTA of 36 months and a 37 CFR 1.362 non-payment expiry transaction dated 12/30/2024 (rendered on a different family member's page). Cannot reconcile these — treat status as unverified pending a PatentCenter check low
PTAB PGR2021-00111, Roku v. Flexiworld, filed 2021-08-24, Not Instituted – Merits, decision 2022-03-14 (§ 324) Unified Patents portal — high

2. Abstract

⚠ Two conflicting abstracts are in circulation, and I could not retrieve the granted front-page abstract itself (the authoritative Google Patents text supplied for this analysis does not include the abstract section).

  • Patexia (for US 2017/0249116 / 10,846,031) — "Software and software applications for mobile devices to wirelessly manage or wirelessly setup an output system or output device are herein disclosed and enabled. Examples of mobile devices include smart phones and information pads having a touch sensitive screen. To set up an output system, the software running at the mobile information apparatus: wirelessly discovers the output system that is within physical proximity to the mobile information apparatus; receives selection of an item related to the wirelessly discovered output system via the touch sensitive screen; establishes a wireless communication link between the mobile information apparatus and the output system; and wirelessly transmits, via the established wireless communication link, security information or authentication information to the output system for setting up the output system for service over a network. The software may further facilitate management of settings of the output system and may further wirelessly drive or control the output system."

  • Flexiworld's own patent page (flexiworld.com/patent/us-10846031) shows a different abstract: "Output systems (e.g., television controllers, audio output devices, display devices) for accessing digital content from a service provided by one or more servers over the Internet are herein disclosed and enabled…" — this is directed to television/audio-controller digital-content playback, i.e., the subject matter of the sibling US 11,029,903 / 11,096,056 family, not the mobile-setup subject matter of the '031 title and claims.

Assessment: I treat the Patexia text as the more likely correct abstract, because it matches the title, the claim set, and the specification's setup/credentialing emphasis. I cannot rule out that the patentee's own page reproduces the actual granted abstract and that Patexia carries the pre-grant-publication text. Do not treat either as authoritative without the face of the patent. Confirming on PatentCenter is a one-minute check.


3. Independent claims (plain language)

Patexia identifies claims 1, 8, and 14 as the independent claims. Corroboration: Flexiworld's Lexmark complaint asserts claim 14 of the '031 (contrast with its claims 1 and 8 allegations for other patents); the PGR2021-00111 Patent Owner's exhibit list contains "Comparison of 10,846,031 Patent Claim 1 to 10,489,096 Patent Claim 1," confirming claim 1's centrality. ⚠ I could not verify the total claim count or rule out additional independent claims (e.g., a claim 15+); the prior sections flagged the same gap.

Claim 1 — "setting up" the output system (a non-transitory CRM storing mobile-device software)
Plain-language steps: (1) the mobile phone/tablet wirelessly discovers the output system, the discovery being based "at least in part" on physical proximity between them; (2) the phone displays an icon/UI item for the discovered output system on its touch screen; (3) the phone receives the user's selection of that icon via the touch screen; (4) the phone establishes a wireless link to that output system — the link being either a direct short-range wireless link or a WLAN link — the establishment being triggered by the selection; and (5) the phone wirelessly transmits security/authentication information over that link, in order either (a) to let the phone access services provided by the output system, or (b) to let the output system access a service operated over a network — see the conflict flagged in §4. The software may be pre-installed or downloadable from a server.

Claim 8 — "wirelessly managing" an output system to establish an output service
Same touch-screen/proximity architecture, but with the discovery phrased as discovering one or more wireless devices that include the output system, based on short-range or local wireless communication; the phone then wirelessly receives device information from the discovered output system, displays a UI item related to that received device information, receives the user's selection, then establishes the link (short-range or WLAN), and then transmits security/authentication information to the output system — in this claim the transmission is expressly to facilitate the output system establishing an output service.

Claim 14 — "wirelessly managing or wirelessly driving" an output device
Here the counterparty is the output device itself (not an "output system"), with the device including wireless circuitry and being distinct from the phone. The phone: (1) proximity-discovers the output device; (2) displays a UI item related to the discovered device; (3) establishes a short-range-direct or WLAN link; and (4) wirelessly manages or drives the output device, which in turn comprises (5) sending first information or a query to the output device and (6) receiving second information or a response back from it. Note this claim requires no credential/security step — a materially different and narrower-in-that-respect limitation set than claims 1 and 8.

Common architecture across all three: a "non-transitory computer readable storage medium" storing software executable at a mobile information apparatus having (i) a touch-sensitive screen interface, (ii) memory, (iii) one or more processors, and (iv) one or more wireless communication units including one or more radio frequency link controllers. The claims are CRM/software claims, not apparatus or method claims — relevant to the § 101 posture (see §5).


4. ⚠ Material discrepancy: two different texts are circulating for claim 1

This is a genuine conflict I will not resolve by fiat:

  • Patexia's claim 1 ends with steps (4) establish the link → (5) transmit security/authentication information "…to facilitate, at least in part, the output system device to access the service operated, at least partly, over the network."
  • Flexiworld's own website "Sample Claim 1" instead has (4) provide security/authentication information "…to facilitate, at least in part, the mobile information apparatus to access services provided by the output system," and (5) establish the link based on the selection, with access to the output system's services contingent on having provided the credentials — i.e., the step order is reversed and the beneficiary of the credentialing is different.

These are not the same claim. The most likely explanation is that Patexia reproduces the pre-grant publication (2017/0249116) claim set, which was then amended during prosecution to the granted text (or vice versa). This matters directly to any § 102/§ 103 or § 112 analysis: the two versions recite different orderings and different parties for the credential step, and one includes a "contingent access" limitation the other lacks. Do not build a claim chart on either text until the granted claims are pulled from PatentCenter / the patent PDF. This also means the "element mapping" in the previously generated Obviousness section should be treated as provisional.


5. CAFC / 2026 appellate check

Finding: no Federal Circuit docket or appeal concerning US 10,846,031 was found. Specifically:

  • No CAFC docket tied to patent number 10,846,031, and no 2026 Federal Circuit activity in Flexiworld Technologies, Inc. v. [any party] on this patent.
  • This is structurally expected for the PTAB track: PGR2021-00111 was denied institution, and an institution denial is non-appealable under 35 U.S.C. § 324(e); only a final written decision is appealable under § 319. There is therefore no appealable PTAB decision on this patent.
  • ⚠ Two 2026 appellate items I encountered are UNRELATED and must not be misattributed to this patent: (i) Supreme Court Application No. 26A60, Genuine Enabling Technology LLC, Petitioner (filed July 2026) — a § 112(f) equivalents/certiorari matter about a Nintendo-asserted patent, not Flexiworld and not the '031; (ii) a July 25, 2026 AIPPI item, "Genuine Enabling Tech. v. Sony (Fed. Cir. 2026)" — same unrelated matter. The shared "Sony" name is a coincidence trap; Genuine Enabling Technology LLC is a different party from Flexiworld Technologies, Inc. and Sony Corporation.
  • ⚠ As before, this is absence of evidence, not a definitive negative; a CAFC docket query by party name would be required to conclusively exclude a pending appeal in a companion case.

6. Enforcement touchpoints (incremental to the prior Litigation/PTAB sections)

Two items in the search results upgrade previously "unverified" entries and add one new merits-type contention:

  • Epson / C.D. Cal. 8:21-cv-00807 — '031 assertion now corroborated. The Recycler names the 14 asserted patents and expressly lists "10,846,031 ('the '031 Patent')" among them (alongside '402, '000, '181, '178, '071, '073, '846, '847, '576, '066, '791, '871, '856). This moves Epson from "reported but unverified" to party-level corroborated — though it still does not establish which claims were charted.
  • Xerox / W.D.N.Y. 6:23-cv-06373 — '031 assertion corroborated. The Recycler (Issue 370, Sept. 2023) lists the '031 among the patents in Flexiworld's four Xerox complaints, asserted against AirPrint, ConnectKey, and the Print and Scan Experience App — consistent with the earlier section's finding of dismissal with prejudice by joint stipulation.
  • Lexmark / E.D. Ky. — first merits-type invalidity contention on the '031 located. Lexmark's counterclaim contended that each claim of the '576, '031, and '725 patents is directed to the abstract idea of "transmitting output data" (per Flexiworld's amended complaint response, ¶ 123), and Flexiworld pleaded in response that the '031 claims "are not directed to an abstract idea" (¶ 122). This is a § 101 contention, not a § 102/§ 103 ruling, but it is the first party-articulated invalidity theory on this patent I have located, and it is worth noting that the '031's claims 1/8/14 are framed as computer-readable-medium/software claims — the claim format most exposed to Alice step-one framing.

7. Contradictions / open items flagged against the prior sections

  1. Filing date: 2017-05-12 (Google Patents, Patexia, all Flexiworld complaints) vs. 2017-05-11 (Unified Patents portal). Unresolved.
  2. Issue date: 2020-11-24 (Google Patents; every complaint, verbatim "issued on November 24, 2020") vs. 2020-11-23 (Unified Patents / uspto.report). Unresolved; the pleading language favors 2020-11-24.
  3. Priority date: 2000-11-01 (Google, Patexia, continuity) vs. 2000-10-31 (Unified Patents family pages). Unresolved; the 60/245,101 provisional filing date and the complaints favor 2000-11-01.
  4. Legal status/expiration: "Expired – Fee Related / adjusted expiration 2022-05-01" (Google) vs. a 37 CFR 1.362 non-payment expiry transaction dated 12/30/2024 with a 36-month PTA. The 2022-05-01 figure is not reconcilable with either the 2020 grant or a 2024 lapse. Treat as unresolved.
  5. Abstract: two mutually inconsistent abstracts in circulation (§2). Unresolved.
  6. Claim 1 text: two mutually inconsistent versions in circulation (§4). Unresolved and material.
  7. ✅ Resolved since the prior sections: the assignment reel/frame for the '031 is 042385/0202 per Flexiworld's own pleadings — the gap the Assignment section explicitly could not close. Note this does not supply the execution date or the correspondent of record, which remain unretrieved.
  8. ✅ Resolved since the prior sections: the PGR2021-00111 docket confirms the exhibit numbering (Exs. 1001–1013 petitioner; Exs. 2001–2006 patent owner) and the § 324 merits denial on 2022-03-14 — no contradiction with prior sections. The "author judge" field on the Unified portal is blank/garbled, so the panel composition (Dougal / Moore / Ogden) remains single-sourced as previously flagged.

8. What I still cannot state authoritatively

  • The granted claim set (total claim count; exact granted text of claims 1, 8, 14; any further independents). This is the single highest-value missing item and it gates all prior § 102/§ 103 work.
  • The granted abstract.
  • The execution date of the 2017 assignment and the correspondent of record on reel/frame 042385/0202.
  • The substance of PGR2021-00111 Exs. 1002–1013 (the asserted art) and the institution decision's reasoning on the merits.
  • The legal status / maintenance-fee history, which is currently three-way inconsistent.
  • Confirmation of which claims of the '031 were charted in Epson, Xerox, Sony, or TCL.

Fastest closing steps: (1) PatentCenter for 15/594,440 — grant document (claims + abstract + front-page citations) and the maintenance-fee/status tab; (2) the '031 patent PDF itself as attached to any complaint (e.g., Exhibit 3 to the E.D. Ky. Lexmark amended complaint, Exhibit 2 to the W.D.N.Y. Xerox complaint) — that PDF will settle the claim-text conflict in §4 immediately; (3) PTAB E2E for the PGR2021-00111 petition and the 2022-03-14 decision. Supply me the granted claim set and I can re-run the limitation-by-limitation charts against the correct text.

Generated 9/21/2026, 11:23:20 PM

Cases on file (5)

Group view →

Specific litigation cases in our database that name US patent 10846031. The free-form analysis below may also discuss cases beyond this list.

Lawsuits filed per year

2021: 2 cases2'212022: 1 case'222023: 2 cases'23
Cases asserting US 10846031, by filing year.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll search litigation databases and dockets for this specific patent number.

Let me verify which specific cases actually assert the '031 patent and get current statuses.

Let me verify the remaining cases (LG, HP, Epson, Lexmark, TCL) and check for any CAFC appeals.

Litigation Involving U.S. Patent No. 10,846,031 ("the '031 patent")

Scope note: I searched Unified Patents' PTAB/litigation portal, the Stanford NPE Litigation Database, Justia Dockets, PACER Monitor, Ex Parte litigation analytics, PatSnap Eureka, and industry press. Below, I separate what I could verify from what is reported but unverified. I did not return results for similar patent numbers (e.g., 10,846,032 / 10,846,030).

One date discrepancy to flag: your instruction states the current date is April 26, 2026, while the system date I am operating under is 2026-09-16. Search results include items dated after April 2026 (e.g., a Sept. 4, 2026 Korean press item), so I have used both where relevant. This does not affect any case identification below.

Continuity note: The prior section reported the PTAB matter, the Xerox W.D.N.Y. case, the Sony E.D. Tex. case, and the Texas Western / California Central / Kentucky Eastern docket numbers. Those are consistent with what follows. The one new item relative to the prior section is the TCL Electronics case (2:26-cv-00229), which is now confirmed by docket records.


1. Cases in which the '031 patent is affirmatively confirmed as asserted

# Case Parties Jurisdiction Case No. Filed Status / Outcome
1 Flexiworld Technologies, Inc. v. Roku, Inc. Flexiworld (P) v. Roku, Inc. (D) W.D. Tex. (Waco Div.), Judge Alan D. Albright 6:21-cv-00767-ADA July 27, 2021 (Unified Patents lists 2021-07-26) Closed — settled in 2022 (per Patexia). The '031 was one of four patents asserted: U.S. 7,944,577; 9,389,822; 9,836,257; and 10,846,031. Roku filed a motion for partial dismissal for lack of standing (Nov. 5, 2021) directed at the '577, '257 and '031 patents, plus a motion to transfer (Oct. 20, 2021); no merits ruling.
2 Flexiworld Technologies, Inc. v. Sony Corporation Flexiworld (P) v. Sony (D) E.D. Tex. 2:23-cv-00616 Dec. 19, 2023 Pending / outcome not verified. The '031 is one of ~15 asserted Flexiworld patents (with 10,037,178; 10,140,073; 10,387,087; 10,489,096; 10,642,576; 10,768,871; 10,866,773; 11,029,903; 11,096,056; 7,609,402; 9,042,811; 9,836,257; 9,836,259; 9,965,233). I found no termination or judgment.
3 Flexiworld Technologies, Inc. v. Xerox Corporation Flexiworld (P) v. Xerox Corp. (D) W.D.N.Y. 6:23-cv-06373 (related: 6:23-cv-06371, filed 2023-06-28) Complaints filed June 29, 2023 Dismissed with prejudice by joint stipulation under Fed. R. Civ. P. 41(a)(1)(A)(ii) — "all pending claims and counterclaims," each party bearing its own costs and fees (no § 285 exceptional-case finding). The '031 was one of four patents asserted alongside U.S. 10,481,847; 10,642,576; and RE42,725. Asserted against Xerox's AirPrint, ConnectKey, and Print & Scan Experience App features (per The Recycler).
4 Flexiworld Technologies, Inc. v. TCL Electronics Holdings Ltd. et al. Flexiworld (P) v. TCL Electronics Holdings Ltd.; TCL Industries Holdings Co., Ltd.; TCL Technology Group Corp. (D) E.D. Tex. (Marshall Div.), Judge Rodney Gilstrap 2:26-cv-00229 March 20, 2026 Pending (earliest stage). Waivers of service returned April 13, 2026; notices of appearance by Flexiworld counsel (Grochocinski, Ginnings, Trusty) April 9, 2026 and by defense counsel (Geiszler) April 16, 2026. ⚠ My review of the complaint analysis showed independent claims of U.S. 8,332,521, 10,768,871 and 10,841,798 being charted; the '031 appears in the Google Patents litigation record for this case, but I could not independently confirm the '031 claim numbers charted. Accused products: TCL smart TVs, soundbars/speakers, headphones, and phones.

2. Cases where the '031 assertion is reported but NOT independently verified

# Case Parties Jurisdiction Case No. Filed Status Caveat
5 Flexiworld Technologies, Inc. v. Epson America, Inc. Flexiworld (P) v. Epson America (D) C.D. Cal. 8:21-cv-00807 April 28, 2021 Closed (per Unified Patents related-case listing) Listed on the '031 patent's Google Patents "litigation" entries, but ⚠ that field is family-level, so it may reflect sibling patents (e.g., '178, '871, '798) rather than the '031 specifically.
6 Flexiworld Technologies, Inc. v. Lexmark International, Inc. Flexiworld (P) v. Lexmark (D) E.D. Ky. 5:22-cv-00110 (companion filings 5:22-cv-00097 and 5:22-cv-00098, filed Apr. 13–14, 2022) 2022 5:22-cv-00098 listed open; 5:22-cv-00097 listed closed Same ⚠ family-level caveat; I could not confirm which of these Kentucky dockets asserts the '031.

3. Related PTAB / post-grant proceeding (not district-court litigation)

  • PGR2021-00111 — Roku, Inc. v. Flexiworld Technologies Inc.
    • Patent challenged: 10,846,031 (Appl. No. 15/594,440)
    • Petitioner: Roku, Inc.; Petitioner's counsel: Perkins Coie LLP; Patent Owner's counsel: Nelson Bumgardner Albritton PC
    • Petition filed: Aug. 24, 2021
    • Patent Owner Preliminary Response: Dec. 17, 2021 (with Ex. 2001, Declaration of Todor Cooklev, Ph.D., and Ex. 2006, "Comparison of 10,846,031 Patent Claim 1 to 10,489,096 Patent Claim 1")
    • Institution DENIED on the merits, March 14, 2022 (35 U.S.C. § 324)
    • Refund requested Apr. 13, 2022; refund approved Apr. 18, 2022
    • Source: https://portal.unifiedpatents.com/ptab/case/PGR2021-00111

4. Cases I checked and EXCLUDE (to prevent misattribution)

  • Flexiworld Technologies, Inc. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) and LG Electronics U.S.A., Inc., E.D. Tex. (Marshall), 2:25-cv-00960, filed Sept. 18, 2025 — the '031 is NOT asserted. The complaint expressly identifies six asserted patents: U.S. 9,042,811; 9,836,259; 9,965,233; 10,140,072; 10,162,596; and 10,037,178. Accused products: LG TVs, soundbars, TV remotes, and ThinQ-type apps. Status: open. Flexiworld alleges it served a patent notice on LG around October 2021 and seeks enhanced damages for willfulness. This case may be confused with the '031 because Flexiworld's complaints are near-identical in boilerplate; do not attribute it to the '031.
  • Flexiworld Technologies, Inc. v. HP, Inc., S.D. Tex. (Houston Div.), 4:24-cv-02691, filed July 19, 2024 (Judge Charles Eskridge) — I did not verify whether the '031 is among the patents asserted. HP answered and counterclaimed (Oct. 7, 2024) and moved to dismiss for failure to state a claim; Flexiworld filed an amended complaint Oct. 28, 2024. Do not list the '031 here without further verification.
  • Flexiworld v. [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.) et al., W.D. Wash. 2:21-cv-01055 (filed Aug. 2, 2021; earlier related case 6:20-cv-00553), and the ancillary subpoena matter 2:25-mc-00018 involving non-party Mopria Alliance, Inc. (Mopria's motion to quash, transferred from N.D. Cal. 4:25-mc-80055-KAW; dismissed without prejudice Apr. 22, 2025) — the '031 is not confirmed as asserted.
  • Flexiworld v. Canon Solutions America, Inc. / Canon Inc., W.D. Tex. 6:21-cv-00143 (Feb. 10, 2021) and 1:21-cv-00066 (Jan. 20, 2021) — '031 not confirmed.
  • Flexiworld v. Brother International Corp., W.D. Tenn. 2:22-cv-02237 (Apr. 14, 2022) — '031 not confirmed.

5. CAFC / Federal Circuit activity

No Federal Circuit appeal concerning U.S. 10,846,031 was found. I searched for CAFC activity tied to this patent number and returned no docket. Note: because PGR2021-00111 was denied institution, it generated no appealable final written decision — so an appeal of that proceeding is not possible. ⚠ This is an absence of evidence in the sources searched, not a definitive negative; a PACER/CAFC docket query by party name (Flexiworld Technologies, Inc.) would be required to conclusively rule out a pending appeal in a related case.


6. Summary of the '031 enforcement picture

The '031 patent has been asserted by Flexiworld in four identified cases — Roku (W.D. Tex. 6:21-cv-00767, settled 2022), Sony (E.D. Tex. 2:23-cv-00616, pending/unverified), Xerox (W.D.N.Y. 6:23-cv-06373, dismissed with prejudice by stipulation), and TCL (E.D. Tex. 2:26-cv-00229, filed 2026-03-20, pending) — plus two reported-but-unverified cases (Epson, C.D. Cal. 8:21-cv-00807; Lexmark, E.D. Ky. 5:22-cv-00110 and companions). It has survived one PGR challenge (PGR2021-00111, institution denied on the merits, Mar. 14, 2022), which is the only merits-type adjudication touching this patent that I could verify. No case has produced a merits ruling on validity or infringement of the '031, and I found no CAFC appeal.

Generated 9/16/2026, 12:45:44 AM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Flexiworld Technologies, Inc.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll reconcile the structured ODP block (which reports no AIA trials) against web sources, and hunt for any additional proceedings, claim-level outcomes, panels, and appeals.

Now let me pin down whether any other petitioner (Roku, Lexmark, Unified) challenged the '031 patent, and get the PGR denial reasoning.

Proceedings overview

Flagged contradiction up front. The structured "PTAB proceedings on file" block (USPTO ODP) reports no AIA trial proceedings for US 10,846,031. Web sources show that is incomplete: at least one PGR exists on this patent — PGR2021-00111, Roku, Inc. v. Flexiworld Technologies, Inc., documented on Unified Patents' PTAB portal, on Docket Alarm, and admitted on the record in the parallel W.D. Tex. case (Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767, Joint Status Report dated 2021-10-25: "PGR 2021-00111 involving U.S Patent No. 10,846,031 was filed on August 24, 2021"). Per the operating rules I prefer the search results over the structured feed where they conflict, and I treat the ODP block as a coverage gap rather than as proof of no activity. If the canonical feed must be honored as-is, the answer would be "zero proceedings," which I do not believe is correct.

Bottom line on the one proceeding that does exist: exactly one (1) AIA trial has ever been filed on the '031 patent — a post-grant review, not an IPR — filed at the end of the PGR window by Roku and denied institution on the merits on 2022-03-14. Breakdown: 0 active, 0 claims invalidated, 0 claims sustained in a trial, 0 settled, 1 institution denied.

Defensive posture: this is not the "patent survived two IPRs and is hardened" scenario, and it is not the "claims canceled" scenario either. It is the rare clean-slate posture: no claim of the '031 patent has ever been adjudicated on the merits at the PTAB, so no claim is canceled and no claim is confirmed; the Board has never construed a term of this patent in a trial; and because a denial of institution is not a final written decision, no § 325(e)/§ 315(e) estoppel has attached to Roku or anyone else. A defendant today faces a patent with a 100% PTAB denial record against the only petitioner who ever tried — but a defendant also gets no free invalidity ruling and must build its own challenge from scratch.


PGR2021-00111 — Roku, Inc. v. Flexiworld Technologies, Inc.

  • Type: Post-Grant Review (PGR)
  • Filed: 2021-08-24 (petition filed; Notice of Filing Date accorded 2021-09-17)
  • Status (verbatim from structured/source data): "Not Instituted - Merits" — plain English: the Board denied the petition on the merits (it did not decline for reasons of discretion such as § 325(d) or Fintiv); the panel was not persuaded that the more-likely-than-not PGR standard was met. Terminated 2022-03-14.
  • Judge panel: Brent M. Dougal, Bryan Moore, and Christopher Ogden (as reported by Docket Alarm; no "author judge" is shown in the Unified portal record — ⚠ panel composition is single-sourced and I could not confirm it against a PTAB paper).
  • Petition grounds: ⚠ Not verified. The public docket shows the petition challenged the '031 patent and lists exhibits 1001–1013 (Ex. 1001 = the '031 patent; Ex. 1002 filed in multiple parts). The specific challenged claims, the statutory basis (§ 101 / § 102 / § 103 / § 112), and the named references are not available in the sources I could retrieve and I will not fill them in by inference. One soft signal: Patent Owner's preliminary-response exhibits include "Patent Prosecution History for U.S. Patent No. 10,489,096" and "Comparison of 10,846,031 Patent Claim 1 to 10,489,096 Patent Claim 1," which suggests a priority/§ 102 dispute over a related Flexiworld-family patent ('096) — flagged as inference only, not established.
  • Institution decision: Denied, 2022-03-14, under 35 U.S.C. § 324 ("Institution Decision: Denying Institution of Post-Grant Review 35 U.S.C. sec. 324"). ⚠ I do not have the panel's verbatim reasoning; the docket confirms the disposition and statutory basis only. Because the denial is labeled "Not Instituted - Merits," it was not a discretionary denial. Petitioner filed a Request for Refund on 2022-04-13, consistent with a full denial.
  • Final Written Decision: None. The proceeding was never instituted, so there is no FWD, no claim-level verdict, and no claim construction on the record. No independent or dependent claim of the '031 patent has ever been canceled or confirmed by the Board.
  • Settlement / termination: The PGR terminated by the institution denial itself on 2022-03-14, not by settlement. Separately, the parallel district court case was settled — Flexiworld v. Roku, No. 6:21-cv-00767 (W.D. Tex.), filed 2021-07-27, resolved by settlement in 2022 (reported in contemporaneous coverage of the related IPR2022-00775 proceeding). Settlement terms are confidential. Note Roku had also filed a motion for partial dismissal for lack of standing directed at three patents including the '031 (ECF 15, filed 2021-11-05).
  • Appeal: None, and none legally available. An institution denial is non-appealable under 35 U.S.C. § 324(e); only a final written decision is appealable under § 319. Consistent with that, I found no CAFC docket tied to this patent and no CAFC activity in 2026 (though, as noted in the prior section, that is absence of evidence rather than a definitive negative for the patent's other litigations).
  • Defensive value: Low-to-moderate, and purely procedural. The denial gives a defendant no invalidating ruling to cite and no claim-level admissions to build on. Its real value is (a) a non-estoppel clean slate — Roku is not estopped, and neither is anyone else, so the grounds Roku raised (and the references it used, Exs. 1001–1013) remain fully available; and (b) a roadmap: the petition and the Patent Owner preliminary response (including the Cooklev declaration, Ex. 2001) are public and show exactly where Flexiworld mounted its priority/"swear-behind" defense — the same squeeze play that later worked for Flexiworld and against Unified in IPR2022-00775 (see below). A defendant should also note the asymmetry: PGR carries a higher institution burden (more likely than not) and broader grounds, and the denial does not bar a later IPR by a different petitioner.

Distinguish — related Flexiworld proceedings that are NOT about this patent (do not cite these as outcomes for the '031 patent):


Strategic summary

Claim status on the '031 patent: everything is UNTESTED. No claim — independent or dependent — has been canceled, held unpatentable, or confirmed at the PTAB, because the only petition ever filed never cleared institution. Practically, that means a defendant cannot point to any PTAB disposition on claim 1 or any other claim. There is also no Board claim construction to borrow for a § 112 or indefiniteness argument, and no PTAB priority ruling for this patent — the conception-date victory Flexiworld won in IPR2022-00775 concerned claims 27 and 28 of the '257 patent, not the '031, and is persuasive rather than binding here. The one thing a defendant can take from IPR2022-00775 is the template of Flexiworld's defense: it litigates priority aggressively with draft-provisional metadata and inventor-plus-corroboration showings, and one panel credited it under the rule of reason. Expect the same playbook on the '031, whose claims carry the same 2000-11-01 priority claim — so any § 102(e)/§ 102(a)(2) reference dated after roughly mid/late-October 2000 should be treated as contestable, and a defendant should plan to litigate conception and diligence, not just anticipation on the face of the reference.

Estoppel landscape: essentially empty — which cuts both ways. Because no FWD ever issued on the '031 patent, § 315(e)(2) estoppel never attached to Roku (or to anyone), and the institution denial is non-appealable under § 324(e). So the grounds and references Roku assembled in 2021 (Exs. 1001–1013) remain available to Roku and to every other defendant. Conversely, a defendant who does file and loses at FWD will be estopped on everything it raised or reasonably could have raised, and with a priority date in 2000 the prior-art universe is deep — so the estoppel cost of an IPR is high and the challenge should be packaged comprehensively in one petition. Two further timing cautions: a PGR is now impossible (it was only available within nine months of the 2020-11-24 grant, and Roku used that window); any new challenge must be an IPR, limited to patents and printed publications under §§ 102/103, and § 315(b)'s one-year bar from service of the complaint runs from the defendant's own service date (for the Sony case, 2:23-cv-00616, filed 2023-12-19, the window is long gone; for any newly served defendant, the clock starts on service).

Pattern signals. (1) The same petitioner did not file multiple proceedings on this patent — Roku filed one PGR against the '031 and never followed with an IPR, choosing instead to fight the rest of the family at the PTAB ('066, '064, '233) and to take a standing-based dismissal motion and then a settlement in W.D. Tex. (2) No defensive aggregator is in the chain for this patent — Unified Patents, the 3,000-member aggregator, challenged Flexiworld repeatedly ('257 via IPR2022-00775; '114 via ex parte reexam) but never filed against the '031; the only '031 petitioner was Roku itself, a direct litigation adversary using its own counsel (Perkins Coie). (3) Flexiworld is aggressive and effective at the PTAB — it has repeatedly defeated institution and won a full FWD with expert-heavy priority proof, represented by Nelson Bumgardner Albritton/Conroy; a copycat petition will likely meet the same treatment. (4) The '031 is now asserted broadly but late — the patent issued 2020-11-24 and appears in the Sony E.D. Tex. suit (2023-12-19) and the Xerox W.D.N.Y. suits (2023-06-29), yet no AIA trial has followed those assertions, which is itself telling about the perceived cost/benefit of attacking this particular patent.


Recommended next steps

  • Do not rely on a PTAB win that does not exist. There is no FWD and no canceled claim on the '031 patent to cite in a motion to dismiss, a § 101 motion, or a stay motion; the only positive artifact is the 2022-03-14 § 324 denial in PGR2021-00111 (https://portal.unifiedpatents.com/ptab/case/PGR2021-00111). Frame it correctly: a merits denial of institution, non-appealable under § 324(e), carrying no preclusive effect and no estoppel.
  • Mine the public PGR papers immediately. The petition (Exs. 1001–1013) and the Patent Owner preliminary response (Exs. 2001–2006, including the Cooklev declaration) are the cheapest available prior-art and infringement-position intelligence on this patent. Use them to identify which references nearly got Roku past the PGR threshold, then improve on them (additional § 103 combinations, better claim-charting of the touchscreen icon-selection and proximity-discovery limitations, and careful PGR-to-IPR ground conversion, since PGR permitted § 101/§ 112 theories that an IPR cannot raise).
  • Plan the IPR as a one-shot, comprehensive petition. With no estoppel yet in place, the first petitioner captures the cleanest rules (no Fintiv-style discretionary denial argument from a PGR record; no § 325(d) "same art already before the Office" exposure on the '031 because the PGR was never instituted) — but the § 315(e)(2) cost is complete estoppel on all grounds raised or reasonably raisable. Watch the § 315(b) one-year deadline from your own service date, and consider joinder to any future instituted proceeding rather than a duplicative standalone petition.
  • Make priority the center of the case, not an afterthought. IPR2022-00775 shows Flexiworld will swear behind post-2000-10-24 references using draft-provisional metadata and corroborating declarations, and that a panel can credit that evidence under the rule of reason. Assume the '031 will get the same treatment and either (a) select art with pre-October 2000 dates, or (b) pre-emptively attack the corroboration record on this specific patent rather than absorbing the priority fight on reply.
  • If a proceeding is filed, track the statutory clock. PTAB must decide institution within three months of the preliminary response (~six months post-filing); if instituted, FWD is due within 12 months of institution (extendable up to six months for good cause). Monitor https://ptacts.uspto.gov/ (PTAB E2E / Patent Trial and Appeal Board Center) for papers and CourtListener for any eventual Federal Circuit appeal — though note that on the current record, this patent has produced no appealable PTAB decision at all.

Generated 9/16/2026, 12:45:55 AM

Ownership chain (1)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. ? · recorded 2017-05-15 · Assignment

    CHANG, WILLIAM HO; LIU, CHRISTINA YINGFlexiworld Technologies, Inc.

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment record and ownership chain for US 10,846,031.

I have the family context. Now let me pin down the specific assignment reel/frame and Flexiworld's corporate history.

Assignment & Ownership Analysis — U.S. Patent No. 10,846,031

Verification note up front (read before using): I could not open the USPTO Assignment Center detail page (https://assignmentcenter.uspto.gov/) for this patent in this session, so I do not have the reel/frame number, the execution date, or the correspondent of record for the conveyance from the inventors. What I can confirm is that exactly one conveyance appears in the record: the 2017 inventor-to-Flexiworld assignment, surfaced in Google Patents' legal events and described by Flexiworld itself in its infringement complaints as "an assignment … from inventors Chang and Liu to Flexiworld" recorded at the PTO. I will not invent a reel/frame. Where I state a reel/frame below, it belongs to a different Flexiworld family member and is labelled as such.

Contradiction flags vs. the previously generated section:

  • Earlier section: grant/publication 2020-11-24 (Google). Unified Patents and uspto.report render the same grant as 2020-11-23. Minor, unresolved.
  • Earlier section: priority 2000-11-01 (Google). Unified Patents' page for US 10,846,031 renders 2000-10-31. Internal family dates (provisional 60/245,101 filed 2000-11-01) favor 2000-11-01.
  • Earlier section correctly found no CAFC docket. I also found none — but I did find a 2026 district-court complaint (2:26-cv-00229, E.D. Tex.) listed as family litigation on Google Patents. That is a trial-court event, not an appeal.

Inventors

Inventor Recorded address Employer at filing Notes
William Ho Chang Vancouver, WA Flexiworld Technologies, Inc. Sole founder/moving force; named on 88+ U.S. patents per trade press and on essentially the entire Flexiworld family (2001–2021 filings). Appears as assignor on every inventor-assignment to Flexiworld.
Christina Ying Liu San Francisco, CA Flexiworld Technologies, Inc. Co-inventor on the entire family; 65+ U.S. patents reported. Appears as assignor alongside Chang on every inventor-assignment to Flexiworld.

Pattern assessment: This is not the "all inventors departed within 12 months" pattern that precedes a portfolio fire-sale. Both inventors are continuingly named on Flexiworld continuations filed as late as 2020–2021 (e.g., US 11,204,729, filed 2020-03-31; US 11,029,903), and no third-party inventor was ever added to the family. The portfolio is effectively a two-person founder portfolio, and both assignors are the same two individuals across ~20 years of filings. That is consistent with a founder-controlled entity that never built a broad R&D organization — a fact relevant to the NPE analysis below, not to an abandonment/fire-sale finding.


Original assignee

Flexiworld Technologies, Inc. — HQ Vancouver, Washington (founded in Portland, Oregon, in 2001 by William Ho Chang per contemporaneous Portland Business Journal coverage that Flexiworld itself filed as Exhibits 2002/2003 in PGR2021-00111).

  • Line of business: Described in trade coverage as a software company developing mobile-device applications, including remote/wireless printing software. No evidence of a currently shipping commercial product was found.
  • Did it ship a product embodying the claims? Unverified and doubtful. Its corporate website's news section terminates in October 2005 and the copyright footer reads 2005–2006; the only live updates are patent listings. Voicebot.ai, covering the 2020 Amazon suit, bluntly asked "A Patent Holding Company?" and noted "a scan of LinkedIn doesn't list any current employees." Flexiworld filed the 2001–2003 Portland Business Journal articles about itself as patent-owner exhibits in its own PGR — i.e., the strongest "we were a real company" evidence it could muster is ~20-year-old press clippings.
  • Current status: Operating as a patent licensing/assertion entity. No record of acquisition, merger, dissolution, or bankruptcy was found. It is the current assignee of record for US 10,846,031 and for the family (Unified Patents lists "Current Assignee: Flexiworld Tech Inc" / "Parent Company: Flexiworld Tech Inc" for family members such as US 10,140,071 and US 10,873,856).
  • Related-entity note (not part of this patent's chain): Several family members whose priority traces to 2002-12-11 are recorded to Flexijet Technologies, Inc. (e.g., US 8,296,757; US 9,116,723; US 10,303,411; US 10,261,739). The '031 patent is not assigned to Flexijet. Whether Flexijet is a subsidiary, predecessor, or an abandoned parallel vehicle is unverified.

Assignment timeline

The Assignment Center record for this patent contains one conveyance. There is no post-issuance assignment, no security agreement, no release, and no change of name. That is the finding.

  • Execution date: not verified (Google Patents renders only the recording event) / recorded 2017-05-15 — Reel not verified (⚠ could not retrieve; do not cite a reel/frame for '031 without checking Assignment Center)
    • Conveyance: Assignment of Assignor's Interest ("ASSIGNMENT OF ASSIGNOR'S INTEREST," per Google Patents legal events; described in Flexiworld's complaints as an assignment "from inventors Chang and Liu to Flexiworld")
    • Assignor: CHANG, WILLIAM HO; LIU, CHRISTINA YING
    • Assignee: FLEXIWORLD TECHNOLOGIES, INC. (Vancouver, WA)
    • Correspondent: ⚠ Not retrieved. Related Flexiworld family records show the same correspondent recurring, but I cannot attribute it to this reel. For context only: the attorney/agent of record on the face of the family patents is Chernoff Vilhauer LLP (Portland, OR), and the patent-owner's litigation/PGR counsel is Nelson Bumgardner Albritton PC. Repeat-correspondent flag: cannot be assessed because the correspondent field was not retrieved.
    • Context: Routine inventor-to-employer assignment executed around the filing date (application 15/594,440 filed 2017-05-12; recorded 2017-05-15 — a 3-day gap, the classic in-house recordation cadence). This is a founder assignment into the operating company, not a sale, transfer-to-asserter, or securitization.

For calibration on the missing reel/frame — sibling inventor-to-Flexiworld assignments in the same family are recorded at, e.g., Reel/Frame 028733/0064 (US 7,609,402), Reel/Frame 039816/0200 (US 10,162,596), and Reel/Frame 042385/0202 (US 10,037,178 and US 10,140,072 — one instrument covering multiple properties). These are cited only to show that Flexiworld systematically recorded inventor assignments and that the same reel was reused across properties. I have no basis to assign any of these to US 10,846,031.


Timeline diagram

timeline
    title Ownership of US 10846031
    2000 : Priority date claimed Nov 1
    2001 : Parent applications filed
    2017 : Application 15594440 filed
         : Inventors assign rights to Flexiworld
         : Assignment recorded May 15
    2020 : Patent issues as US 10846031
    2021 : Flexiworld sues Amazon and Epson
         : Roku files PGR2021-00111
    2022 : PGR institution denied on the merits
    2023 : Flexiworld sues Sony in E D Texas
    2026 : New Texas complaint filed

NPE / troll-pattern signals

  1. Shell-entity transfer — NOT PRESENT. No conveyance out of Flexiworld exists in the record. The patent has never moved to an "IP / Holdings / Licensing / Ventures" LLC. Caveat: the absence of a transfer is not exculpatory here — Flexiworld is the asserting vehicle itself, so no shell was needed (see signal 2).

  2. Known asserter in the chain — PRESENT (strong). The assignee of record is Flexiworld Technologies, Inc., which is classified as an NPE by two independent third-party databases:

    • Unified Patents entity-type field for the Patent Owner in PGR2021-00111 reads "NPE (Small Company)" (https://portal.unifiedpatents.com/[ptab](/ptab)/case/PGR2021-00111).
    • Stanford NPE Litigation Database entry for patent 10846031 carries the asserter category "3 Failed startup" (https://npe.law.stanford.edu/patent/10846031).
    • Flexiworld is a high-frequency plaintiff: it asserted the '031 patent against Epson (C.D. Cal., ~14–15 patents incl. '031, 2021), Sony (2:23-cv-00616, E.D. Tex., 2023-12-19, 15 patents incl. '031), and appears in cases at Tex. W.D. 6:21-cv-00767, C.D. Cal. 8:21-cv-00807, Ky. E.D. 5:22-cv-00110, N.Y. W.D. 6:23-cv-06373, and E.D. Tex. 2:26-cv-00229. Amazon was sued in 2020 on a ten-patent subset of the family.
  3. Repeat correspondent across the chain — UNCLEAR / NOT ASSESSABLE. There is only one link, and I could not retrieve its correspondent field. I am explicitly declining to infer from the prosecution firm (Chernoff Vilhauer LLP) or litigation firm (Nelson Bumgardner Albritton PC), because a single firm doing routine prosecution or contingent-fee enforcement is not a finding.

  4. Cascading transfers — NOT PRESENT. No chained LLC transfers; no consecutive assignments at all after 2017.

  5. Pre-litigation transfer — NOT PRESENT. The only assignment is dated 2017, roughly 4 years before the earliest '031 assertion (Epson, 2021) and 6 years before Sony (2023). The chain was not arranged on the eve of suit; standing has been with Flexiworld since filing.

  6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 record for Flexiworld was found, and no assignment to a bankruptcy estate or a purchaser in a §363 sale.

  7. Privateering — NOT PRESENT (but adjacent facts exist). Flexiworld is not an operating company transferring to an NPE to assert on its behalf against competitors; it asserts in its own name. However, note that two family members issued to Samsung Electronics (US 9,164,718; US 10,108,394) and one to Samsung (US 9,015,329) per Unified Patents' assignee data — evidence that parts of this portfolio have historically been monetized by transfer to large operating companies, although US 10,846,031 was not among them. Treat as contextual, not a signal on this patent.

  8. Defensive aggregator (anti-NPE) — NOT PRESENT. The chain terminates at Flexiworld; RPX/AST/LOT/Unified/OIN do not appear as assignees. The patent is not neutralized. (Unified Patents appears only as the data source and as a defensive challenger — Roku's PGR, filed 2021-08-24, was denied institution on the merits on 2022-03-14 under 35 U.S.C. § 324, which left all claims intact.)


Verdict

NPE — moderate confidence.

Justification: The assignment chain itself is short and clean — a single founder-assignment from Chang and Liu to Flexiworld Technologies, Inc., recorded 2017-05-15 — with no shell-entity transfer, no cascading LLCs, and no pre-litigation assignment, so four of the eight enumerated signals are affirmatively absent. The verdict rests on one strong signal: Flexiworld, the current and only assignee, is classified as an NPE by two independent trackers (Unified Patents' "NPE (Small Company)" entity type in PGR2021-00111; Stanford NPE Litigation Database "Failed startup" category for patent 10846031 at https://npe.law.stanford.edu/patent/10846031) and is a serial plaintiff that asserted this exact patent against Epson, Sony, and others. Supporting weak indicators — a corporate website frozen since ~2005–2006, no LinkedIn-listed employees, and no identified product in commerce — push the call toward the high end, but Signal 2 is the only enumerated signal unambiguously present, which under the rubric yields moderate rather than high confidence. The single most important gap is the correspondent of record on the 2017 assignment, which I could not retrieve; obtaining it (and the reel/frame) is the one step that could move this to high confidence or reveal a same-attorney pattern across the Flexiworld/Flexijet entities.

Verify directly at:

Generated 9/16/2026, 12:46:09 AM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll search for the patent and its cited references.

Scope note before the analysis

I ran targeted searches against the sources that index this specific patent (Google Patents, USPTO/PatentCenter mirrors, uspto.report, Unified Patents PTAB portal, Docket Alarm). Two constraints materially limit what follows, and I am flagging them rather than papering over them:

  1. The '031 front-page citation list is enormous — Google Patents reports "Patent Citations (650)" for US10846031B2 (https://patents.google.com/patent/[US10481847B2](/patent/US10481847B2)/en#30, cross-citing 15/594,440 → US10846031B2). I was able to retrieve only a partial, truncated slice of that list. I could not retrieve the non-patent-literature citations, the foreign citations, or the complete U.S. list.
  2. The formal claim set is still unverified (per the previously generated section, only claim 1 text was obtainable). A § 102 anticipation mapping can therefore only be run against claim 1. I will not invent mappings for claims I cannot read.

Where a statement is an inference rather than a retrieved fact, I mark it ⚠.


Part 1 — Confirmation that this is the right patent

Field Value Source
Publication number US10846031B2 Google Patents
Application number 15/594,440; pub. US20170249116A1 Google Patents
Title "Software application for a mobile device to wirelessly manage or wirelessly setup an output system or output device for service" Google Patents
Inventors William Ho Chang; Christina Ying Liu Google Patents / Docket Alarm
Assignee Flexiworld Technologies, Inc. (assignment recorded 2017-05-15) Google Patents
Grant date 2020-11-24 Google Patents
PTAB PGR2021-00111 (Roku v. Flexiworld), filed 2021-08-24, Not Instituted – Merits, decision 2022-03-14 https://portal.unifiedpatents.com/ptab/case/PGR2021-00111

Flagged contradiction: the earlier generated section lists the "adjusted expiration" as 2022-05-01. A lapse for failure to pay maintenance fees, effective 2025-03-30, appears in the legal-events block of one of my search hits — but that block was rendered on the page for a different family member (US20190361617A1 / US10963169), not on the '031 page. I therefore cannot attribute the 2025-03-30 lapse to '031, and I cannot corroborate 2022-05-01 either. Legal status for '031 should be treated as unverified pending a PatentCenter check.


Part 2 — Prior-art citations for US10846031 (what I could actually retrieve)

2A. Verified structural fact

US10846031B2 carries 650 patent citations on its face. This is typical of the Flexiworld portfolio: these continuations were prosecuted with very large IDS submissions, so the citation list is a broad disclosure-of-record dump, not a curated set of anticipatory art.

2B. Partial list of cited U.S. patents (truncated retrieval)

The following were retrieved from the "References Cited" table of the '031 record as indexed at https://uspto.report/patent/grant/[10,846,031](/patent/10846031). The list is alphabetically/numerically ordered by patent number and was truncated mid-list at ~US5537xxx. It is a partial slice only.

Citation Publication date Inventor (as listed)
US4262301 Apr. 1981 Erlichman
US4266863 May 1981 Hollingsworth et al.
US4291956 Sep. 1981 Vogelgesang
US4291957 Sep. 1981 Hollingsworth
US4301599 Nov. 1981 Leay
US4335955 Jun. 1982 Lopata
US4340905 Jul. 1982 Balding
US4360264 Nov. 1982 Baker et al.
US4417792 Nov. 1983 Martin
US4428001 Jan. 1984 Yamamura et al.
US4431282 Feb. 1984 Martin
US4435059 Feb. 1984 Gerber
US4495490 Jan. 1985 Hopper et al.
US4539585 Sep. 1985 Spackova et al.
US4541010 Sep. 1985 Alston
US4553835 Nov. 1985 Morgan, Jr.
US4580880 Apr. 1986 Watson
US4602280 Apr. 1986 Maloomian
US4603330 Jul. 1986 Horne et al.
US4758881 Jul. 1988 Laspada
US4956665 Sep. 1990 Niles
US4958220 Sep. 1990 Alessi et al.
US4979032 Dec. 1990 Alessi et al.
US5048057 Sep. 1991 Saleh et al.
US5129639 Jul. 1992 DeHority
US5166809 Nov. 1992 Surbrook
US5220674 Jun. 1993 Morgan et al.
US5228118 Jul. 1993 Sasaki
US5257097 Oct. 1993 Pineau et al.
US5270773 Dec. 1993 Sklut et al.
US5287194 Feb. 1994 Lobiondo
US5303342 Apr. 1994 Edge
US5319711 Jun. 1994 Servi
US5337258 Aug. 1994 Dennis
US5353388 Oct. 1994 Motoyama
US5404433 Apr. 1995 Hosogai
US5412798 May 1995 Gamey
US5463623 Oct. 1995 Grimes et al.
US5467434 Nov. 1995 Hower, Jr. et al.
US5475507 Dec. 1995 Suzuki et al.
US5479206 Dec. 1995 Ueno et al.
US5485634 Jan. 1996 Weiser et al.
US5487069 Jan. 1996 O'Sullivan et al.
US5490287 Feb. 1996 Itoh et al.
US5506661 Apr. 1996 Hanzawa
US5515480 May 1996 Frazier
US5519641 May 1996 Beers et al.
US5524185 Jun. 1996 Na
US5537xxx… — (list truncated mid-entry)

Honest limitation: I did not independently verify the bibliographic details (inventor, date) of each entry against a second source, and I did not verify that every entry in this slice belongs to the "U.S. Patent Documents" (cited) table rather than a "Referenced By"/classification list. Treat the table as retrieved-as-displayed, not as examiner-verified.

2C. Brief descriptions

For the great majority of the entries above I do not have a verified title or abstract in hand, and I will not fabricate one. The entries cluster in recognizable art areas that are consistent with the '031 disclosure: imaging/camera apparatus, hard-copy reproduction, printer controllers and network printer sharing, image data formats/color processing, and short-range radio data links. That clustering is an observation from titles I could partially see in the retrieval, ⚠ not a verified categorization of all 650 citations.

Two entries I can describe with reasonable confidence from general knowledge, flagged as such:

  • US5467434 (Hower, Jr. et al., Nov. 1995) — printer job-option conflict resolution / driver-side print-option selection (Xerox). ⚠ general-knowledge description.
  • US5485634 (Weiser et al., Jan. 1996) — device control/arbitration among proximate devices within a "cell" (Xerox PARC). ⚠ general-knowledge description.

Neither of these has anything to do with over-the-air discovery of a printer by a mobile device touchscreen app, and both dramatically pre-date Bluetooth-enabled mobile devices.


Part 3 — § 102 anticipation analysis

3A. The legal frame (this matters a lot here)

US10846031B2 claims priority to 2000-11-01 (Google Patents "Prior art date"), with external-priority claims to US10/016,223 (filed 2001-11-01) and US09/992,413 (filed 2001-11-18). ⚠ Note the internal oddity: the asserted priority date (2000-11-01) precedes both external-priority filings; the earlier generated section flagged the same. Do not auto-correct — I am reporting it as listed.

Because the effective filing date is pre-AIA (before 2013-03-16), pre-AIA 35 U.S.C. § 102 governs. Against a 2000-11-01 priority date:

  • References published more than one year before that date (i.e., before ~1999-11-01) are § 102(b) art — the entire 1981–1996 block in §2B qualifies. But § 102(b) status only makes a reference available; it says nothing about whether it discloses the claim.
  • References between 1999-11 and 2000-11 are § 102(a) art (requiring "by others"/knowledge-or-use analysis).
  • Post-2000 references can only be § 102(e) art (U.S. patents/applications by another, effective as of their filing date).

3B. Anticipation mapping

I cannot substantiate that any cited reference anticipates claim 1. On the retrieved evidence, none of the 1981–1996 references discloses the conjunctive set of claim 1 limitations:

Claim 1 limitation Why the retrieved 1981–1996 art does not appear to meet it
Software at a mobile information apparatus with touch-sensitive screen The cited block pre-dates commercial touchscreen mobile apparatuses; the touchscreen-GUI citations (G06F3/0488 class) are UI-generic.
Wireless discovery of the output system based at least in part on physical proximity Short-range/proximity-based discovery (Bluetooth-class) did not exist in this art. US5487069 (O'Sullivan, 1996) is a spread-spectrum radio data link, not a proximity discovery mechanism.
Display of a selectable icon for the discovered output system on the touchscreen, and receipt of a user selection No retrieved reference discloses this.
Wireless provision of security/authentication information to the output system No retrieved reference discloses mobile-endpoint credential provisioning to a peer output device.
Direct short-range wireless link or WLAN link established based on the selection US5487069 / US5519641 address radio or network data transport, not user-selected, discovery-triggered link establishment.
Access to services over that link, contingent on the security information Not disclosed in the retrieved block.

Basis for that conclusion: claim 1 as retrieved is a tightly conjunctive workflow claim; the retrieved cited references are single-element background art (printer sharing, color/imaging, radio data links). Each such reference could at most be a § 103 backdrop in combination, and I have not seen any combination theory that would reach claim 1. This is a negative finding from partial evidence, not a clearance opinion.

3C. The genuinely probative prior art in this family — and its limits

The art that actually mattered to this patent family was asserted in PTAB, not cited on the '031 face:

PGR2021-00111 (the '031 itself), Roku Inc. v. Flexiworld Technologies Inc.

  • Petition filed 2021-08-24; 13 petitioner exhibits (Exs. 1001–1013); institution denied on the merits 2022-03-14 under 35 U.S.C. § 324. https://portal.unifiedpatents.com/ptab/case/PGR2021-00111
  • I could not retrieve the substance of Exs. 1002–1013 (the asserted art or a declaration). The Unified Patents docket lists exhibit numbers only, with no titles. ⚠ Do not assume these mirror the exhibits used against sibling patents.
  • Legal significance for your § 102/§ 103 question: the Board did not find the petitioner more likely than not to prevail, so none of the '031 claims were cancelled. That is the closest thing to an adjudicated invalidity outcome for this patent.

Sibling-patent PTAB art (IPR2021-00713 and IPR2021-00714, on US10,740,066 and US8,989,064)
The Patent Owner's demonstratives list the instituted grounds:

Ground Claims Reference(s)
1 7*, 8, 10 Yamaguchi, Gu
1A 11 Yamaguchi, Gu, Garfunkel
2 7*, 8, 10 Ikonen, Gu
2A 11 Ikonen, Gu, Garfunkel
3 14*, 15, 17 Ikonen, Kammer
3A 19 Ikonen, Kammer, Peng

Source: Ex. 2042, Patent Owner's Demonstratives, https://www.docketalarm.com/cases/PTAB/IPR2021-00714/Roku_Inc._v._Flexiworld_Technologies_Inc/

Explicit caveat: these grounds are for US10,740,066 and US8,989,064, not for US10846031. They are instructive about what a challenger treats as the closest art to the Flexiworld "wireless output controller discovery/broadcast" concept (notably the Ikonen and Yamaguchi references, and Gu for wireless device architecture), but they are not citations of record in '031, and mapping them onto '031 claim 1 would require their actual publication dates and disclosures — which I do not have in hand. Note also that the Patent Owner's own demonstratives state the Board correctly found Yamaguchi not to be prior art for Ground 1, which is a caution about that reference's date.


Part 4 — What I could not establish, and how to close the gap

Not established:

  • The complete 650-entry citation list for '031, including non-patent literature and foreign references.
  • Titles/abstracts for the retrieved cited references (needed for any real § 102 chart).
  • The content of PGR2021-00111 Exs. 1002–1013.
  • Whether any cited reference is a § 102(e) reference against the 2000-11-01 priority date.
  • Full claim set (previously flagged; still unresolved).

To close it (in priority order):

  1. USPTO Patent Center, application 15/594,440 → "References Cited" / "IDS" tab for the complete, examiner-signed citation list. This is the only fully authoritative list.
  2. PTAB PGR2021-00111 petition and institution decision PDFs (available via the Unified Patents portal link above and the PTAB E2E / docketalarm mirror) → gives the asserted grounds, the claim-construction positions, and Roku's own identification of the closest art.
  3. Google Patents "Patent Citations" tab for US10846031B2 → the 650 entries, sortable, with dates; useful for identifying the small subset actually relevant to wireless discovery rather than to the imaging/RIP subject matter.

If you can supply the PGR2021-00111 petition PDF or the PatentCenter citation list, I can produce the per-reference chart with full citation, date, description, and a limitation-by-limitation § 102 analysis against claim 1 (and against the remaining claims once their text is confirmed).

Generated 9/16/2026, 12:45:57 AM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll research the prior art actually cited on the US10846031 Google Patents page and the PGR2021-00111 grounds, since the truncated fetch in my earlier sections omitted the Prior Art section.

Now let me identify the specific prior-art references used against Flexiworld's related patents, and the PGR2021-00111 grounds.

Let me try to retrieve the PGR2021-00111 petition and institution decision, and identify the specific references.

Obviousness Analysis — U.S. Patent No. 10,846,031 under 35 U.S.C. § 103

Preliminary note on the prior art I was able to recover

The instruction was to use the Prior Art section of the Google Patents page for US 10,846,031. Three things must be stated up front, because they bound the confidence of everything below:

  1. The "References Cited" section of that page is enormous and was not fully retrievable. The granted-patent front page (as mirrored at uspto.report and in the grant PDF) lists well over 200 U.S. patent references running from US 3,629,493 (1971) through the late 1990s (e.g., US 5,485,634 Weiser et al.; US 5,487,069 O'Sullivan et al.; US 5,519,641 Beers et al.; US 5,580,177 Gase et al.; US 5,625,757 Kageyama et al.; US 5,627,981 Nerlikar; US 5,719,688 …), plus a large block of foreign (principally Japanese) references and an IDS trail spanning at least eight separate IDS filings between 2017 and 2020 (see the Docket Alarm prosecution timeline for 15/594,440). I recovered a partial list; I did not recover the full list or the foreign/NPL portions. ⚠ Do not treat the reference list below as exhaustive.
  2. The most probative § 103 evidence for this patent is not on the Google Patents page at all — it is in the Roku/Flexiworld and Unified/Flexiworld PTAB record, where petitioner-asserted combinations were adjudicated on sibling patents that share this specification (the '031 is a continuation/CIP of the same 2000–2002 family as U.S. 10,740,066, 8,989,064, 9,836,257, 7,944,577, 9,389,822). Those grounds are the best available proxy for how the '031 claims would be attacked.
  3. No § 103 holding on the '031 itself exists. Roku's PGR2021-00111 was denied institution on the merits on 2022-03-14 (35 U.S.C. § 324), and the public docket indicates the petition was directed to PGR-type grounds (its standing showing implies a post-3/16/2013 effective filing date for at least one claim), not to an adjudicated obviousness case.

I. The threshold issue that dominates any § 103 analysis: effective filing date

Claim 1 of the '031 recites: (E1) wireless discovery of the output system based at least in part on physical proximity; (E2) display of a UI item/icon on a touch-sensitive screen; (E3) user selection via the touch screen; (E4) wireless provision of security/authentication information to the output system to facilitate access to its services; (E5) establishment of a direct short-range wireless link or a WLAN link, the establishment being based on the selection; and (E6) accessing the services over that link contingent on having provided the security/authentication information.

The face of the patent claims priority to 2000-11-01, via provisional 60/245,101 → US 10/016,223 (filed 2001-11-01). If that priority holds for claim 1, the operative law is pre-AIA § 103(a) and the prior-art universe is limited to art before Nov. 1, 2000 (subject to § 102(e) references and to Flexiworld's antedation evidence).

But Roku's PGR was available at all only if at least one '031 claim has an effective filing date on or after March 16, 2013 — which means the petition necessarily took the position that the claims lack written-description support in the 2000–2002 applications and are therefore entitled only to the May 12, 2017 filing date of 15/594,440. Two consequences follow:

  • Scenario A (priority sustained): art must pre-date Nov. 1, 2000 (or be antedated); the closest art is late-1990s wireless-printing and device-discovery art.
  • Scenario B (2017 effective date): the field between 2001 and 2017 becomes fair game — Bluetooth pairing/SDP, UPnP and Bonjour discovery, DLNA, Wi-Fi Direct, Wi-Fi Protected Setup (PIN/PBC push-button credential transfer), AirPrint-style driverless printing, NFC tap-to-pair, and QR/credential-provisioning setup flows. Under Scenario B, claim 1 is squarely obvious, as discussed in Ground 6.

Note the tension with Flexiworld's win in Unified Patents v. Flexiworld, IPR2022-00775 (Paper 41, Nov. 1, 2023), where the Board found claims 27–28 of the '257 patent were not unpatentable because Flexiworld corroborated a conception date of October 22, 2000 (before the Olgaard Oct. 24, 2000 and Acharya Dec. 22, 2000 references) using provisional-draft metadata. That antedation showing was claim-specific and tied to the '101 provisional drafts (source: https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/). It does not automatically carry over to '031 claim 1, whose specific combination (touch-screen icon selection + credentialed service access + short-range/WLAN link) must itself be supported by those 2000 drafts. This is where a § 103 challenge should be fought first.


II. Level of ordinary skill

Roku's expert (Prof. Samrat Bhattacharjee) proposed, for the sibling '903 patent: a bachelor's degree in computer science/computer engineering or similar, plus about two years of software-development experience, with familiarity with well-known networking technologies (PGR petition, 15/696,989, § IV.D). Flexiworld's expert is Dr. Todor Cooklev. Either definition is a low bar that strongly favors obviousness of a claim built from the standard building blocks of mobile OS UI + short-range radio + service discovery + credential exchange.


III. Combinations that render claim 1 obvious

Ground 1 — Yamaguchi + Gu (+ Garfunkel)

These are exactly the references Roku asserted against sibling claim 7 of U.S. 10,740,066 in IPR2021-00713 (Grounds 1/1A; see Petitioner's and Patent Owner's demonstratives, Exs. 1037 and 2042, at https://www.docketalarm.com/cases/PTAB/IPR2021-00713/).

  • Yamaguchi supplies a mobile/information apparatus wirelessly locating and outputting to a selected output device, including proximity-based device identification (E1) and output-device selection (E2/E3).
  • Gu supplies the discovery/UPnP-style service model by which a client device discovers a device on a network, selects it from a presented list, and is authenticated before being granted access to that device's services (E4/E6) — the classic UPnP "control point ↔ device/service" architecture.
  • Garfunkel (Ground 1A) supplies the display-side complement (a device selection/display interface), used for the display/selection element (E2/E3).

Motivation: Both references are in the same field (wireless output from a portable information apparatus) and address the same recognized problem — letting a user output without locating/installing a device-specific driver. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), permits combination where each element performs its known function and the combination yields no more than expected: UPnP discovery/authentication is a predictable add-on to a wireless-output flow because UPnP was designed for exactly that plug-and-play purpose. Interoperability standards themselves supply the motivation (Bluetooth GAP/SDP, UPnP).

Caveat (important): In IPR2021-00713 the Board found Ground 1 insufficient because Yamaguchi was not shown to be prior art (Patent Owner's Demonstratives, summarizing the Institution Decision). Yamaguchi's date sits between Nov. 1, 2000 and Jan. 19, 2001 (per Bhattacharjee's reply declaration: "Yamaguchi pre-dates" the Jan. 19, 2001 provisional 60/262,764, and Flexiworld later shifted to Nov. 1, 2000). The same attack vector therefore fails on the '031 if the Nov. 1, 2000 priority holds, and works only if the claims drop to the 2017 date.

Ground 2 — Ikonen + Gu ← the strongest, best-supported ground

This was Roku's Ground 2/2A in IPR2021-00713, and the Board instituted on it; the Board's final written decision largely invalidated claims of the challenged Roku-litigated Flexiworld patent as obvious over prior art (Law360, "Roku Gets PTAB To Trim Wireless Communications Patent," Oct. 24, 2022).

  • Ikonen (Nokia-side art) discloses short-range wireless device inquiry/discovery and response — a client device issuing an inquiry, receiving responses, and presenting discovered devices for user selection, i.e., E1/E2/E3.
  • Gu supplies the service model: discovered device → selection → service authentication/authorization → access to that device's advertised capability (E4/E6), plus the network (WLAN) link (E5).

Motivation: Both are directed to short-range wireless device/service discovery between a portable device and a peripheral. Combining an inquiry/discovery mechanism with a standards-based service-discovery-and-authentication layer is the predictable use of each according to its established function. Flexiworld's only serious counter in the IPRs was that UPnP's known security weaknesses (no authentication of control points) would discourage a POSA from using it — an argument that cuts against Flexiworld, because it is precisely why a POSA would add the claimed security/authentication information step (E4) to the discovery flow, which is exactly what claim 1 recites.

Ground 3 — Ikonen + Kammer (+ Peng)

Grounds 3/3A in IPR2021-00713. Kammer supplies device-availability announcement/response behavior; Peng was used for the additional device-side limitations of claim 19. For '031 claim 1, the relevant teaching is Kammer's inquiry-response/availability model feeding the discovery-and-selection steps (E1–E3), combined with Ikonen's short-range link and Gu/Kammer credential handling.

Motivation: same as Ground 2. Caveat: the Board found Ground 3 insufficient only because Kammer's inquiry response was not an "advertisement" of availability under the '066 claim language (a construction-driven failure). Claim 1 of the '031 does not contain an "advertising/broadcasting availability" limitation — it requires only discovery "based at least in part on physical proximity." That removes the exact limitation that defeated Ground 3, which makes this combination stronger against the '031 than it was against the '066.

Ground 4 — Olgaard + Moghadam (or Acharya + Griffiths)

These are the references Unified asserted against the sibling '257 patent in IPR2022-00775: Grounds based on "Olgaard in view of Moghadam" and "Acharya in view of Griffiths," with Olgaard dated Oct. 24, 2000 and Acharya dated Dec. 22, 2000 (PTAB Litigation Blog, Nov. 2023, link above).

  • Olgaard/Acharya supply mobile-device-to-output-device short-range wireless transfer of digital content (E1, E5).
  • Moghadam/Griffiths supply the network/service and selection/credentialing layer (E4, E6).

Motivation: same field, same problem, complementary teachings, no reference disparages the other. The only reason this ground failed in IPR2022-00775 was antedation of the claims by Flexiworld's Oct. 22, 2000 conception showing — i.e., it failed on prior-art status, not on merits. If '031 claim 1 cannot be antedated (see § I), this ground becomes live, and its Oct. 2000 reference dates are earlier than the '031's asserted Nov. 1, 2000 priority.

Ground 5 — Art of record on the '031's own face

The patent's own References Cited list contains the classic building blocks, including US 5,580,177 (Gase et al.), which I believe is directed to a wireless printing system (⚠ title verified only to my recollection, not to the fetched text) and a large body of 1970s–1990s printing/imaging/network references. A combination of Gase (wireless output link to a printer) with (a) the well-known Bluetooth/IEEE 802.11 short-range link and device-discovery art cited in the patent's own specification (the specification concedes: "A wireless connection is also possible by using, for example, radio communication or infrared communication"), (b) standard touch-screen icon selection GUI practice for handheld devices, which the specification treats as routine, and (c) conventional pairing/credential exchange (PIN-based Bluetooth pairing, WEP/WPA), covers every element of claim 1.

Motivation (the strongest of all, because it comes from the patent itself): The '031 specification's Background expressly frames the problem — mobile users must install device-specific drivers for each output device, mobile devices have limited memory/processing power, and users want to "simply walk up to an output device … and easily output a digital document without having to install or pre-install a particular output device driver." That is a textbook articulation of the problem to be solved, which under KSR supplies the motivation to combine known elements (short-range/wireless link + discovery + on-screen selection + credentials) into the claimed arrangement.

Ground 6 — If the claims are entitled only to the May 12, 2017 filing date

Then the art explodes: UPnP/Bonjour/SLP discovery; DLNA; Wi-Fi Direct and Wi-Fi Protected Setup (PIN/PBC push-button credential provisioning); Bluetooth SSP; NFC tap-to-pair; Apple AirPrint-style driverless setup; and the setup flows described in the Roku reply declaration's exhibits (Roku SoundBridge Technical Specifications; Philips Streamium SL300i Leaflet; DIAL: Discovery And Launch Protocol Specification v2.2.1; Roku ECP developer documentation). The Cited-By list on the '031's Google Patents page likewise shows how crowded this space became (e.g., US 11,074,615 / US 11,238,499 / US 11,310,614, Proxicom/Proctor proximity- and wireless-identifier-based transaction work, with 2008 and 2011 priority dates falling before 2017).

Under Scenario B the analysis is nearly one-directional: "physically-proximate discovery → icon on touch screen → tap → send credentials → short-range or WLAN link → use the service" is the canonical, documented setup flow of the 2010s smart-device ecosystem, and claim 1 adds nothing beyond it. Expect a § 101 overlay as well — Roku pressed exactly that argument in the sibling '903 PGR ("directed to the abstract idea of obtaining content for output").


IV. Anticipated rebuttals and how they fare

Flexiworld argument Assessment
Antedation / priority to Nov. 1, 2000 Potent, and it worked in IPR2022-00775 on the '257 claims. But it requires corroborated conception of this claim's limitations (touch screen, icon selection, credential provisioning, short-range/WLAN link, proximity discovery) before each reference's date. Focus discovery on the metadata-stamped provisional drafts and on whether they disclose the credential/service-authentication element (E4/E6).
"Physical proximity" is a narrow limitation Likely the main claim-construction battleground. If construed as loosely as "within wireless range," the limitation adds nothing; if construed to require a specific proximity-detection technique (e.g., NFC tap, RSSI ranging), more work is needed to map the art.
"Direct short range wireless communication link or a wireless local area network communication link" This is a purely alternative limitation (Bluetooth-class or Wi-Fi). Because claim 1 recites the disjunctive, a combination teaching either suffices — a significant weakness for patentability.
Teaching away / security concerns about UPnP Failed in the IPRs; also self-defeating, since claim 1's credential step (E4) is the very remedy for poor UPnP authentication.
Secondary considerations No evidence of record tying any commercial success or industry praise to claim 1's specific combination (no nexus). Flexiworld's own litigation narrative emphasizes commercial praise (Portland Business Journal articles, exhibits 2002–2003) rather than objective indicia with nexus.

V. Bottom line

  • The combination most likely to invalidate claim 1 is Ikonen + Gu (and its Garfunkel/Kammer/Peng variants). It is the only combination a PTAB panel has actually credited in this family (instituted and ultimately sustained against the sibling claims of U.S. 10,740,066 per Law360, Oct. 24, 2022), and the '031's claim 1 omits the "advertising/broadcasting availability" limitation that saved sibling claims — making the '031 an easier target than the '066.
  • Yamaguchi-based grounds carry a prior-art-status defect that the Board already identified; they are usable only if the claims cannot hold the Nov. 1, 2000 date.
  • The whole analysis turns on the effective filing date. If the '031 claims are limited to May 12, 2017 — which is the position the PGR petition's standing argument necessarily presupposes — claim 1 is obvious many times over (Wi-Fi Direct/WPS, Bonjour/UPnP/DLNA/AirPrint, NFC pairing), and a § 103(a) rejection would be routine.
  • Confidence levels: high on the legal framework and element mapping; high on the identity and date character of the Roku/Unified references (Yamaguchi, Gu, Garfunkel, Ikonen, Kammer, Peng, Olgaard, Moghadam, Acharya, Griffiths) as names and roles; low-to-moderate on exact publication numbers for those references — I could not retrieve them within my search budget, and I will not guess at them. The full "References Cited"/foreign/NPL list on the Google Patents page remains unrecovered (⚠).

VI. Discrepancies flagged against the previously generated sections

  1. Priority date: Google Patents and the family record say 2000-11-01 (provisional 60/245,101). The Unified Patents portal page for publication US20170249116A1 lists the priority date as 2000-10-31. These are inconsistent; I did not resolve which is correct, and under the strict rule I have not "corrected" either.
  2. Application filing date: Google Patents/library data say 2017-05-12; the Unified Patents portal entry for the same application (15/594,440) says 2017-05-11.
  3. Expiration: the earlier section reported "Expired – Fee Related … adjusted expiration 2022-05-01." The prosecution record shows a PTA of 36 months and a status of "Patent Expired Due to NonPayment of Maintenance Fees Under 37 CFR 1.362" with an "Expire Patent" transaction dated 12/30/2024. The 2022-05-01 figure and the 2024-12-30 expiration are difficult to reconcile from public sources; flagged, unresolved.
  4. No contradiction found with the prior section's claim-1 paraphrase or with the PGR2021-00111 denial date (2022-03-14) — both are confirmed by the sources retrieved here.

Generated 9/16/2026, 12:46:42 AM

Extensions

Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.

✓ Generated

I'll research this patent's term mechanics, continuity chain, and family directly against the sources that index US 10,846,031 / application 15/594,440.

Good — I have the claim-number and party confirmations. Now let me pull the continuity/related-application data and the term data specifically.

I have strong signals. Let me now verify the PTA figure and the '031's own continuity statement on the grant face.

Patent Term, Continuity & Family Analysis — U.S. Patent No. 10,846,031

Scope of this section: PTA, PTE, continuations, divisionals, family members, and expiration. This builds on the earlier sections (bibliographic, litigation, PTAB, assignment, prior art, obviousness) and does not repeat them.

Session date note (as in prior sections): the task states today is April 26, 2026; the session clock reads 2026-09-29. Both are used; neither affects any identification below.

Search discipline: I searched for patent number 10846031 and application 15/594,440. I did not return results for adjacent numbers 10,846,030 / 10,846,032. ⚠ Note one deliberate non-trap: US 10,481,846 appeared repeatedly in my results — that is a different patent in the same family (a sibling asserted alongside the '031), not a mistyped variant of 10,846,031, and it is treated as its own property below.


1. Verification status of each requested item

Item requested Status Basis
PTA amount in days ⚠ Derived, not read — ≈ 181 days Arithmetic reconciliation of the "adjusted expiration 2022-05-01" line in the authoritative Google Patents fetch against the statutory term base (below). I could not retrieve the front-page "(*) Notice … adjusted under 35 U.S.C. 154(b) by ___ days" field.
PTE ✅ None, and none legally available Statutory eligibility (see §3) — high confidence
Continuation applications ✅ Present — the '031 is itself a continuation; chain reported but the '031's own (63) statement not directly read Sibling front page (US 10,481,846, same chain) + Patexia continuity text in the prior section
Divisional applications ✅ None found in this chain Negative finding from searches
Related family members ✅ Substantially enumerated Litigation complaints, Epson's Answer, the Lexmark consolidated-order footnote, Google Patents family table
Projected expiration ⚠ ≈ 2022-05-01 (already past) — with a documented three-way conflict on status Google Patents "Adjusted expiration" + "Expired – Fee Related"
Terminal disclaimer ⚠ Not verified — could shorten the term Not retrieved
Maintenance-fee history ⚠ Conflicted Google "Expired – Fee Related" vs. a 37 CFR 1.362 transaction dated 12/30/2024 (per prior sections, rendered on a different family member's page)

2. Patent Term Adjustment (PTA) — 35 U.S.C. § 154(b)

2A. The statutory term base (this is the load-bearing fact)

Term under 35 U.S.C. § 154(a)(2) runs 20 years from the filing date of the earliest U.S. application to which benefit is claimed under §§ 120, 121, 365(c), or 386(c). A provisional benefit claim under § 119(e) does not set the term base. This matters enormously here, because the '031's priority date (2000-11-01) is not its term base.

The chain, verified off the front page of a sibling in the identical chain — US 10,481,846 — reads verbatim:

"(63) Continuation-in-part of application No. 13/710,299, filed on Dec. 10, 2012, now Pat. No. 9,798,516, (Continued) … which is a continuation of application No. 12/903,048, filed on Oct. 12, 2010, now Pat. No. 8,332,521, which is a continuation of application No. 10/053,765, filed on Jan. 18, 2002, now Pat. No. 9,836,257, which is a continuation-in-part of application No. 09/992,413, filed on Nov. 18, 2001, now Pat. No. 9,965,233, which is a continuation of application No. 10/016,223, filed on Nov. 1, 2001, now Pat. [7,941,541]"
— https://patentimages.storage.googleapis.com/9e/bb/be/ca7ed29850efcc/US10481846.pdf

Therefore:

Date Role Counts toward the 20-year term?
2000-11-01 — provisional 60/245,101 Priority date ❌ No (§ 119(e) benefit does not set term)
2001-11-01 — application 10/016,223 (now US 7,941,541) Earliest § 120 non-provisional ✅ Yes — term base
2001-11-18 — 09/992,413 (now US 9,965,233) Intermediate (downstream)
2001-11-20 — provisional 60/252,682 Priority ❌ No
2002-01-18 — 10/053,765 (now US 9,836,257) Intermediate (downstream)
2010-10-12 — 12/903,048 (now US 8,332,521) Intermediate (downstream)
2012-12-10 — 13/710,299 (now US 9,798,516) Immediate parent (downstream)
2017-05-12 — 15/594,440 → US 10,846,031 The patent —
2020-11-24 Grant —

Unadjusted statutory expiry = 2001-11-01 + 20 years = 2021-11-01.

2B. The PTA figure

The authoritative Google Patents fetch included the line "2022-05-01 Adjusted expiration." Working backwards:

2021-11-01  (statutory expiry, 20 yrs from 10/016,223)
+  181 days
= 2022-05-01  ✅ matches the fetched "Adjusted expiration"

So PTA ≈ 181 days (≈ 5 months 28 days; ~5.9 months).

Independent sanity check on 181 days — it fits the record perfectly. Application 15/594,440 was filed 2017-05-12 and issued 2020-11-24, a pendency of 1,292 days ≈ 3.54 years. The B-clock begins three years after the actual filing date (2017-05-12 + 3 yrs = 2020-05-12); from 2020-05-12 to 2020-11-24 is 196 days. A net PTA of 181 days is therefore consistent with roughly 196 days of B-delay less ~15 days of applicant delay / overlap reduction, with little or no A-delay. This is a coherent, plausible PTA computation for this prosecution.

⚠ What I did not do: I did not read the front-page notice line, and I did not read the Issue Notification's PTA determination. 181 days is a derivation, not a retrieved number. Treat it as high-confidence-probable, not verified.

2C. ⚠ Conflict with the prior sections: the "36 months" figure

A prior section reported a PTA of 36 months (≈ 1,095 days) and a 37 CFR 1.362 expiry transaction dated 12/30/2024. These do not reconcile with each other or with the fetched adjusted expiration:

Hypothesis PTA Resulting expiry
Derived from Google's "adjusted expiration 2022-05-01" ≈ 181 days 2022-05-01
"36-month PTA" as reported in a prior section ≈ 1,095 days ≈ 2024-11-01

I cannot make these agree, and I will not auto-correct either. Three candidate explanations, offered as hypotheses only:

  • the "36 months" figure belongs to a different family member (the prior section itself noted the 1.362 transaction was rendered on another member's page);
  • "36 months" was a mis-transcription of the 3-year B-clock threshold, not a PTA award;
  • Google's computed adjusted expiration is wrong.

⚠ Note in passing: an expiry of ≈ 2024-11-01 would sit almost exactly on the 3.5-year maintenance-fee grace-period deadline (2024-11-24) — which is suspiciously coincident with the 12/30/2024 1.362 transaction. That coincidence is worth checking, not assuming. See §7.

2D. PTA adjustment / reconsideration history

I found no request for reconsideration of PTA under 37 CFR 1.705, no Wyeth-type recalculation, and no PTA litigation for the '031 (contrast Californiaa v. Vidal / Supernus, which surfaced in my searches but concern unrelated patents). ⚠ Absence of evidence, not a verified negative.


3. Patent Term Extension (PTE) — 35 U.S.C. § 156

Finding: no PTE exists, and none is legally available.

PTE under § 156 applies only where the patent claims a product, a method of using a product, or a method of manufacturing a product that was subject to a regulatory review period before commercial marketing — i.e., FDA-regulated drugs, biologics, medical devices, food additives, and color additives. The '031 claims a non-transitory computer-readable storage medium storing software for a mobile information apparatus to wirelessly discover, set up, and manage an output system. There is no FDA-regulated product in that claim scope. Confidence: high. No § 156 extension will appear on the front page, and § 156(d)(1)'s 60-day filing window is irrelevant here.


4. Continuation applications

The '031 is itself a continuation-type filing, not an original. Application 15/594,440 was filed 2017-05-12, issued 2020-11-24, and claims benefit of the chain in §2A.

⚠ Material caveat about the '031's own continuity statement. Prior sections, drawing on Patexia, expressed the '031's chain in a form that is internally ambiguous — variously describing 15/594,440 as "a continuation of 10/053,765," a "CIP of 09/992,413," and a "CIP of 13/710,299." Normal practice is a single immediate parent. I could not read the '031's own (63) paragraph. What I can say with high confidence:

  • The chain as stated is the same chain the USPTO printed on sibling US 10,481,846 (§2A), which is a CIP of 13/710,299;
  • 13/710,299 (now US 9,798,516), filed 2012-12-10, is the most likely immediate parent;
  • every one of 13/710,299 → 12/903,048 → 10/053,765 → 09/992,413 → 10/016,223 is a U.S. non-provisional, so each of these is a continuation / continuation-in-part chain link, not a divisional.

Why this matters: because the term base is 2001-11-01, and the patent did not issue until 2020-11-24, the '031 spent ~3 years of its 20-year term in prosecution post-issuance-eligible, and the grant date (2020-11-24) fell less than 12 months before the unadjusted statutory expiry (2021-11-01). Even with ~181 days of PTA, this patent's post-grant, in-force life was roughly 17 months (2020-11-24 → 2022-05-01) — see §6.


5. Divisional applications

Finding: no divisional application identified anywhere in the '031's benefit chain.

  • No 35 U.S.C. § 121 divisional appears in the (63) chain reproduced in §2A.
  • No restriction requirement → divisional event surfaced in any search.
  • 15/594,440 is identified consistently as a continuation (not a divisional) across every source.

Why divisionals matter to term, and why the negative finding is safe here: a § 121 divisional still gets a 20-year term measured from the parent's filing date — the same rule the Pfizer v. Lee discussion in my search results states ("when a divisional application results in a patent, its twenty year term is measured from the filing date of the parent"). So even if an unlisted divisional existed, it would not change the '031's own term. The practical consequence of the negative finding is instead § 121's safe-harbor: absent a divisional, there is no § 121 protection against the '031's own parent/child disclosures being used as prior art against it — a point that feeds directly into the § 102/§ 103 analysis in the prior sections. Note also that § 121 safe harbor is unavailable to a CIP, and this chain is a CIP chain.

⚠ Absence of evidence, not a verified negative.


6. Projected / actual expiration — the bottom line

Measure Date Basis
Earliest priority date 2000-11-01 provisional 60/245,101
Term base (earliest § 120 non-provisional) 2001-11-01 10/016,223 → US 7,941,541
Grant 2020-11-24 Google Patents; every Flexiworld complaint verbatim
Unadjusted statutory expiry 2021-11-01 § 154(a)(2)
PTA (derived) ≈ 181 days reconciliation of "2022-05-01 adjusted expiration"
Adjusted / projected expiration 2022-05-01 Google Patents: "Adjusted expiration 2022-05-01"
Terminal disclaimer (if any) ⚠ unverified could shorten to an earlier-expiring family member
Post-grant in-force life ≈ 17 months 2020-11-24 → 2022-05-01

6A. The practical consequence, stated plainly

If the adjusted expiration is 2022-05-01, then this patent expired roughly four years before today's stated date (April 26, 2026). Downstream effects:

  • No infringement is possible after 2022-05-01. Damages exposure is confined to acts before expiry and within the 35 U.S.C. § 286 six-year lookback from each complaint.
  • The enforcement timeline splits: Epson (C.D. Cal. 8:21-cv-00807, 2021), Roku (W.D. Tex. 6:21-cv-00767, 2021), Lexmark (E.D. Ky., 2022) were filed in term; Sony (E.D. Tex. 2:23-cv-00616, 2023), Xerox (W.D.N.Y. 6:23-cv-06373, 2023) and TCL (E.D. Tex. 2:26-cv-00229, 2026) were filed after the derived expiry, so those counts on the '031 could only ever reach back damages — never an injunction and never post-expiry royalties.
  • This is a plausible partial explanation for the observable pattern noted in the PTAB section — Roku settling in 2022, and no AIA trial ever filed against the '031 after the 2021 PGR window. A defendant weighing the cost of an IPR against a patent with ~17 months of remaining life has an obvious reason to stand down. Offered as inference, not fact.
  • It also matters to the § 101 posture: the Lexmark abstract-idea contention (prior section §6) and any Alice motion are now largely academic for prospective relief — the money question is back damages on a patent whose term has run.

6B. Confidence statement on the date

Moderate-high on 2022-05-01, because (i) the figure appears in the authoritative Google Patents fetch supplied for this analysis; (ii) it reconciles exactly to a 2001-11-01 term base plus a PTA in the ~180-day range; and (iii) that PTA magnitude is independently corroborated by the 196-day B-delay implied by the 2017-05-12 → 2020-11-24 pendency. It is not "verified," because I never read the front-page § 154(b) notice. The competing "36 months / 2024" data point in the prior sections remains unreconciled (§2C).


7. Maintenance fees, legal status, and the unresolved conflict

Maintenance fees under 35 U.S.C. § 41(b) are due 3.5, 7.5, and 11.5 years from grant:

Fee Due (3.5 yrs from 2020-11-24) § 41(c) grace end Record
1st (3.5 yr) 2024-05-24 2024-11-24 ⚠ Not verified
2nd (7.5 yr) 2028-05-24 2028-11-24 ⚠ Not verified
3rd (11.5 yr) 2032-05-24 2032-11-24 ⚠ Not verified

What the record shows: Google Patents reports the legal status as "Expired – Fee Related" with adjusted expiration 2022-05-01 (authoritative fetch). Prior sections separately surfaced a "Patent Expired Due to NonPayment of Maintenance Fees Under 37 CFR 1.362" transaction dated 12/30/2024, but flagged that it was rendered on a different family member's page.

⚠ Two observations that are hypotheses, not findings:

  1. A 37 CFR 1.362 "Expire Patent" transaction dated 2024-12-30 falls ~5 weeks after the 1st-maintenance-fee grace period ended (2024-11-24) — which is exactly what a first-maintenance-fee lapse looks like. That is a strong circumstantial fit for the '031 itself.
  2. But if the term genuinely ended 2022-05-01, the 3.5-year fee would not have been "needed" to keep it in force, which makes the "Expired – Fee Related" label harder to interpret. The two data points can coexist (a term-limited patent plus a stale fee record) or one may be misattributed.

I will not resolve this by fiat. It is a one-minute PatentCenter check: Maintenance Fees tab for 15/594,440.


8. Related family members

8A. Direct ancestry of the '031 (the term-relevant chain)

App. No. Filed Now Relationship
60/245,101 2000-11-01 — Provisional (priority date only)
10/016,223 2001-11-01 US 7,941,541 Earliest § 120 app — sets the 20-yr term base
09/992,413 2001-11-18 US 9,965,233 Continuation of 10/016,223
60/252,682 2000-11-20 — Provisional
10/053,765 2002-01-18 US 9,836,257 CIP of 09/992,413
12/903,048 2010-10-12 US 8,332,521 Continuation of 10/053,765
13/710,299 2012-12-10 US 9,798,516 Continuation of 12/903,048
60/262,764 2001-01-19 — Provisional
15/594,440 2017-05-12 US 10,846,031 Continuation-type filing (immediate parent 13/710,299)

⚠ Flagged inconsistency carried forward: the prior section's Patexia-derived text listed the '031 as simultaneously a "continuation of 10/053,765," a "CIP of 09/992,413," and a "CIP of 13/710,299." Only one immediate parent is possible. Unreconciled; the '031's own (63) paragraph is the fix.

8B. Siblings in the family asserted alongside the '031

Consolidating the Epson Answer (which lists all fourteen Epson-asserted patents verbatim) with the Lexmark consolidated-order footnote (fifteen patents) and the Sony complaint:

US 7,609,402 · 8,630,000 · 9,036,181 · 9,042,811 · 9,389,822 · 9,836,257 · 9,836,259 · 9,965,233 · 10,037,178 · 10,140,071 · 10,140,072 · 10,140,073 · 10,162,596 · 10,481,846 · 10,481,847 · 10,642,576 · 10,740,066 · 10,761,791 · 10,768,871 · 10,841,798 · 10,846,031 · 10,873,856 · 11,029,903 · 11,096,056 · RE42,725

Sources: https://www.action-intell.com/wp-content/uploads/2021/08/Epson-answers-to-Flexiworld-lawsuit.pdf ; https://cases.justia.com/federal/district-courts/kentucky/kyedce/5:2022cv00097/98438/44/0.pdf

Family size: Google Patents' family table (rendered on a family member page) shows "Family Applications Before (10)" and "Family Applications After (24)" for this family, consistent with ~35 U.S. family members. ⚠ I did not retrieve the full 35-row table, and "Before/After" is a Google ordering heuristic, not a verified continuity listing.

8C. Children of the '031

Finding: no application was found claiming benefit of 15/594,440. On the evidence retrieved, the '031 appears to be a leaf in the family tree — noted because it is relevant to whether the '031's disclosure is carried forward by a later, longer-lived family member (it is not, on this record).

⚠ Negative finding from searches; verify on PatentCenter's "Continuity Data" tab.

8D. Adjacent-but-separate vehicles (do not merge)

  • Flexijet Technologies, Inc. — a different Flexiworld-linked assignee for family members whose priority traces to 2002-12-11 (e.g., US 8,296,757; 9,116,723; 10,303,411; 10,261,739). The '031 is not assigned to Flexijet. ⚠ Relationship unresolved.
  • Foreign counterparts: I found no PCT/EP/JP counterpart claiming priority to the '031's chain. ⚠ Not verified.

9. Contradictions flagged against the prior sections

# Item Prior section This section Status
1 PTA "PTA of 36 months" ≈ 181 days derived ⚠ Unreconciled — the single most consequential conflict in this section
2 Expiration "adjusted expiration 2022-05-01" (Google) Consistent: 2001-11-01 + ~181 d = 2022-05-01 ✅ Internally consistent; base date newly identified
3 Term base Priority date given as 2000-11-01, with no separate term base identified Term base is 2001-11-01 (10/016,223), not the provisional date ✅ New finding — resolves why the patent expires only ~17 months post-grant
4 Legal status Three-way conflict (2022-05-01 vs. 1.362 @ 12/30/2024) Both remain live; 12/30/2024 fits the 1st-fee grace end (2024-11-24) ⚠ Still unresolved
5 Immediate parent of '031 Listed as 10/053,765 and 09/992,413 and 13/710,299 Most likely 13/710,299 ⚠ Unresolved
6 Filing date / issue date / priority date 2017-05-12 vs 2017-05-11; 2020-11-24 vs 2020-11-23; 2000-11-01 vs 2000-10-31 No new evidence ⚠ Carried forward unchanged

Also noted: the prior Litigation section's observation that Flexiworld's TCL complaint (2:26-cv-00229) charted other patents is consistent with a patent whose '031 term had already run — but that is inference, and the '031 does appear in the Google Patents litigation record for that case.


10. What I still cannot state authoritatively

  1. The front-page PTA notice line ("…adjusted under 35 U.S.C. 154(b) by ___ days") — the single highest-value missing item for this section.
  2. Whether any terminal disclaimer was filed, and whether any family member expires earlier than 2022-05-01 (a TD would pull the '031's term to that date).
  3. The '031's own (63) continuity paragraph.
  4. The maintenance-fee record for 15/594,440 (paid / unpaid / 1.362 transaction / petition to revive).
  5. Whether the Issue Notification PTA determination was ever contested under 37 CFR 1.705.
  6. Children of 15/594,440 and any foreign counterparts.

Fastest closing steps (in order):

  1. USPTO PatentCenter → application 15/594,440 → Patent Term Adjustment field on the grant, Continuity Data tab, and Maintenance Fees tab. This closes items 1, 3, 4 and resolves contradiction #1 (the 181 vs. 1,095-day conflict) outright.
  2. The '031 patent PDF as attached to any complaint — e.g., Exhibit 3 to the E.D. Ky. Lexmark complaint, Exhibit 2 to the W.D.N.Y. Xerox complaint, or Exhibit 3 to the E.D. Ky. 5:22-cv-00110 docket (visible at https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1553926](/patent/1553926)/download-documents). The face of the patent carries both the § 154(b) notice line and the (63) continuity paragraph.
  3. USPTO Patent Assignment Search for any terminal disclaimer record (TDS/PTA and TD recordings appear in the assignment database).

If you supply the front page of the '031 (or the PatentCenter PTA field), I can replace the derived ≈181 days / 2022-05-01 with a verified figure and re-run the expiry table — and, if a terminal disclaimer surfaces, re-derive the true expiration date, which could be earlier than 2022-05-01 and would further compress the already short damages window identified in §6A.

Generated 9/29/2026, 9:54:56 AM

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