Invalidity dossier
US 10873856B2
Printing devices supporting printing over air or printing over a wireless network
Current assignee: Flexiworld Technologies, Inc.
Added 8/29/2026, 4:46:52 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for the specific patent and any appellate docket activity.
Let me look for the claim text and any Federal Circuit activity.
Let me try to pull the actual claim language and check for any CAFC docket.
US 10,873,856 B2 — Analyst Summary
Identification (verified against the patent document itself)
| Field | Value | Source |
|---|---|---|
| Title | "Printing Devices Supporting Printing Over Air or Printing Over a Wireless Network" | Patent front page (patentimages PDF); Google Patents |
| Patent number | US 10,873,856 B2 | — |
| Application no. | 15/713,546 | Patent front page |
| Inventors | William Ho Chang (Vancouver, WA); Christina Ying Liu (San Francisco, CA) | Patent front page |
| Assignee / applicant | Flexiworld Technologies, Inc., Vancouver, WA | Patent front page |
| Filing date | Sep. 22, 2017 | Patent front page ("Filed: Sep. 22, 2017") |
| Issue / grant date | Dec. 22, 2020 | Patent front page ("Date of Patent: Dec. 22, 2020") |
| Prior publication | US 2018/0024791 A1, Jan. 25, 2018 | Patent front page |
| Examiner | Marcus T. Riley | Patent front page |
| Attorney / agent | Chernoff Vilhauer LLP | Patent front page |
| Claims / drawings | 20 claims, 14 drawing sheets | Patent front page |
| Earliest priority (claimed) | U.S. Provisional 60/245,101, filed Nov. 1, 2000 (also 60/252,682, Nov. 20, 2000; 60/262,764, Jan. 19, 2001) | Patent front page |
| Related applications | CIP of 13/710,299 (now US 9,798,516); continuation of 10/053,765 (now US 9,836,257); CIP of 09/992,413; 12/903,048 → 10/016,223 (now US 7,941,541) | Patent front page |
| Status | Expired – Fee Related; anticipated expiration Nov. 1, 2021 | Google Patents legal status |
Note on a discrepancy I will not paper over: Google Patents lists the priority date as 2000-11-01 and the anti-cipated expiration as 2021-11-01, while Unified Patents' portal lists priority/expiration as 2000-10-31 and 2021-10-31, and lists the application/grant dates as 2017-09-21 and 2020-12-21 rather than 2017-09-22 and 2020-12-22. The patent's own printed front page reads Sep. 22, 2017 filing and Dec. 22, 2020 issuance. The one-day offsets in the third-party databases are almost certainly indexing/time-zone artifacts; treat the front page as authoritative. The important substantive point that both sources agree on is that the patent's term is measured from the 2000 priority chain and it lapsed in late 2021 for failure to pay maintenance fees.
Abstract (verbatim, from the patent)
"Printing devices (or output controllers) supporting printing over air or wireless network printing or Internet printing, are herein disclosed and enabled. The printing device may include wireless communication chips or chipsets supporting part of IEEE 802.11 standards for (1) connecting to a wireless local area network (LAN) to establish communication with a client that is in the wireless LAN; (2) transmitting device information related to the printing device from the printing device to the client; and (3) receiving print data from the client over the wireless LAN for printing at the printing device. The print data is based on the device information transmitted to the client. A printer driver specific to the printing device may or may not be necessary for printing to the printing device. The printing device may require registration with a service over a network prior to providing printing services to the client."
Plain-language overview of the independent claim
I was able to verify claim 1 (a method claim directed to the printing device side). I could not independently verify which of claims 2–20 are independent — see the uncertainty note below.
Claim 1 — "A method for a printing device to wirelessly provide printing services," in plain terms:
The claim requires a printing device that (a) has wireless communication circuitry and (b) has memory/storage holding "device information" about the printer — identified as one or more of identification, language, format, duplex, color space, bit depth, or resolution information. The method then has four ordered steps:
- Join a WLAN — the printer uses its own wireless circuitry to connect to a wireless local area network, so that it can communicate with an "information apparatus" (e.g., a phone/laptop) that is a separate device on that same WLAN.
- Establish a WLAN communication link between the printer and that information apparatus, where the link is compatible, at least partly, with at least one protocol within the IEEE 802.11 standards.
- Push device information out over that link — the printer wirelessly transmits its stored device information (again, one or more of identification, language, format, duplex, color space, bit depth, or resolution info) to the information apparatus over the link from step 2.
- Receive print data over that link for printing — the print data received at the printer is in accordance, at least in part, with the device information the printer previously sent.
The two features that do the heavy lifting in the claim are the "wherein" clauses: (i) by having transmitted the device information to the information apparatus, the printer provides its printing services without the information apparatus needing to install a printer driver that is device-specific to that printer and without needing to use such an installed driver; and (ii) the printer's wireless circuitry comprises one or more chips/chipsets compatible, at least in part, with at least part of a protocol within the IEEE 802.11 wireless standards for connecting to the WLAN in step (1).
In short: the claim is drafted device-side (the printer is the actor) and centers on driverless, Wi-Fi-based printing where the printer self-advertises its device profile to a client and then receives print data conformed to that profile.
Important caveat on the claims
- The issued claim set is materially different from the published application's claim set. Pre-grant publication US 2018/0024791 A1 has a broader, differently worded claim 1 (recited "device information includes at least one of identification information, capability information, address information, status information, or attribute information") and places the no-driver language only in dependent claim 2. The issued claim 1 instead builds the enumerated information types and the no-device-specific-driver requirement directly into the independent claim, and adds the IEEE 802.11 chip/chipset limitation.
- The version of issued claim 1 I relied on is reproduced on Flexiworld's own website (flexiworld.com/patent/us-10873856/) as a "Sample Claim." Because that is the patent owner's own posting rather than the USPTO record, I flag it as high-confidence but not primary-source-verified. The patent PDF (patentimages.storage.googleapis.com/c8/08/81/19e0c3b363b28d/US10873856.pdf) is the authoritative document and should be checked directly for the full text of claims 1–20.
- The full patent text supplied to me is truncated in the description (it ends mid-sentence in the FIG. 7D discussion) and does not include the claims. I therefore cannot tell you how many independent claims the patent contains, nor what the other independent claims cover. Do not treat claim 1 as a proxy for the whole claim set.
Litigation and appellate activity
District court assertions of the '856 patent (Flexiworld as plaintiff):
- Epson America, Inc. — C.D. Cal., case 8:21-cv-00807 (filed Apr. 28, 2021); the '856 was one of 14 Flexiworld patents asserted.
- Lexmark — E.D. Ky., 5:22-cv-00097; the '856 is expressly pleaded as a patent-in-suit in the First Amended Complaint, described as issuing Dec. 22, 2020 from App. No. 15/713,546, with inventors Chang and Liu and an assignment recorded at Reel/Frame 043675/0454.
- Brother — case 2:22-cv-02236 (E.D. Tenn. / W.D. Tenn. listings).
- Xerox Corp. — W.D.N.Y., case 6:23-cv-06370 (complaint filed June 2023). The '856 was asserted alongside US 9,036,181 and US 10,140,071. Accused products included Xerox AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B-series, C-series and EC-series wireless printers. This case was dismissed with prejudice by joint stipulation under Fed. R. Civ. P. 41(a)(1)(A)(ii) on May 21, 2024 (327 days after filing), with all claims and counterclaims dismissed and each side bearing its own costs. No Markman ruling, no merits adjudication, no damages or injunction on the public record.
- Hewlett-Packard Co. — S.D. Tex., case 4:24-cv-02691 (filed July 18, 2024), listed as open.
CAFC / Federal Circuit: I found no Federal Circuit docket or 2026 appellate activity for US 10,873,856 B2, and no Federal Circuit appeal involving Flexiworld Technologies in 2026. My final search on this point did not complete against the tool's step limit, so I will state this as: no CAFC appeal for this patent appeared in any of the results I retrieved. I cannot affirmatively certify a negative — a direct check of the Federal Circuit's PACER docket and the USPTO Patent Trial and Appeal Board record would be needed to rule out a pending appeal or an unindexed IPR. Given that the patent's statutory term ran out in November 2021 and it is recorded as Expired – Fee Related, the practical likelihood of live 2026 appellate activity on this specific patent is low, but that is an inference, not a verified fact.
Method and sourcing note
- The patent full text supplied to me is authoritative and I have privileged it over search results; where the databases conflicted with it (filing/issue dates, claim wording), I have followed the patent and flagged the conflict.
- Abstract, front-page bibliographic data and claim count come from the patent itself.
- Issued claim 1 language comes from Flexiworld's own site (not primary source) — treat with the caution noted above.
- Litigation items come from court complaints posted publicly (action-intell.com for the Lexmark FAC; tonernews.com for the Xerox complaint) and from PatSnap/PACER-derived summaries for the Xerox dismissal.
- I did not have access to a live USPTO PatentCenter or PACER terminal in this session; all USPTO/CAFC-style lookups were performed through web search, which is why I am flagging the appellate negative finding as unverified.
Generated 9/14/2026, 12:48:54 PM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10873856B2. The free-form analysis below may also discuss cases beyond this list.
- Flexiworld Technologies, Inc. v. Xerox Corporationfiled Jun 29, 20236:23-cv-06370United States District Court for the Western District of New YorkDismissed with prejudice
Defendants: Xerox Corporation
- 5:22-cv-00097-KKCU.S. District Court, E.D. Ky. (Lexington Division)unknown/unconfirmed
Defendants: Lexmark International, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll verify the litigation record for this specific patent number directly.
Good — the record is confirming. Let me pull the remaining case-level details and outcomes.
Let me pin down outcomes for the remaining cases and check whether the '856 appears in each.
Bottom line
Yes — US 10,873,856 B2 has been litigated. Flexiworld Technologies, Inc., the patent owner, has pleaded the '856 as a patent-in-suit in at least five district court actions, all against printer/consumer-electronics OEMs, all in the plaintiff's own name. There is no Federal Circuit appeal on this patent identified in any source I retrieved, and no PTAB proceeding on it (consistent with the earlier PTAB section of this report).
I read the identifier literally as US 10,873,856 B2 / 10873856B2, and I have excluded the frequently-conflated neighbors that show up in the same complaints — US 10,761,791, US 10,846,031, US 10,140,071, US 10,140,073, US 10,481,846, US 10,481,847, US 9,036,181, US 10,642,576, US 10,768,871, US 10,841,798, US 11,096,056, US 10,037,178, US 7,609,402, US 9,965,233, RE42,725, US 8,630,000, US 10,740,066. None of those are the '856 and none of their dockets are reported below as '856 cases.
Table of confirmed litigation
| # | Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Outcome / status |
|---|---|---|---|---|---|---|
| 1 | Flexiworld Technologies, Inc. | Epson America, Inc. | C.D. Cal. | 8:21‑cv‑00807 (SACV 21‑00807 AB (DFMX)) | 2021‑04‑29 | Closed — settled; voluntarily dismissed; Report on Determination of an Action (Closing) entered 2022‑02‑01/02 |
| 2 | Flexiworld Technologies, Inc. | Lexmark International, Inc. | E.D. Ky. (Lexington) | 5:22‑cv‑00097 (consolidated with 5:22‑cv‑00098 etc.; Judge KKC/DCR) | 2022‑04‑15 | Closed — dismissed June 6 (year not confirmed) following a reported settlement; earlier § 287(a) marking dispute and denial of Lexmark's renewed partial motion to dismiss |
| 3 | Flexiworld Technologies, Inc. | Brother Industries (U.S.A.), Inc. | W.D. Tenn. | 2:22‑cv‑02236 | 2022‑04‑15 | Closed — consent judgment; all claims dismissed with prejudice 2023‑03‑13 across four coordinated actions (Rule 41(a)(1)(A)(ii)) |
| 4 | Flexiworld Technologies, Inc. | Xerox Corp. | W.D.N.Y. | 6:23‑cv‑06370 | 2023‑06‑29 | Closed — joint stipulated dismissal with prejudice, 2024‑05‑21 (327 days after filing); all Flexiworld claims and all Xerox counterclaims extinguished; no merits ruling |
| 5 | Flexiworld Technologies, Inc. | HP, Inc. | S.D. Tex. (Judge Charles Eskridge) | 4:24‑cv‑02691 | 2024‑07‑19 | Closed — HP's motion to dismiss denied; second amended complaint filed; claim construction reportedly went HP's way; then all claims and counterclaims voluntarily dismissed on May 27 (year not confirmed) following a reported settlement |
Case-by-case detail
1. Flexiworld v. Epson America — C.D. Cal. 8:21-cv-00807
- Filed: April 29, 2021 (AO 120 report of filing gives 4/29/2021; the PTAB recital of the family's litigation states "complaint filed April 29, 2021").
- Patents: 14 Flexiworld patents, with the '856 expressly included. Epson's answer ¶¶86–89 admits the face of the '856 "issued on December 22, 2020, from U.S. Application No. 15/713,546, which was filed on September 22, 2017," and admits an assignment of the '856 recorded at Reel/Frame 043675/0454. Epson denied infringement, validity and enforceability.
- Outcome: Settled and closed. The court entered a Report on the Determination of an Action Regarding a Patent (Closing) on 2022‑02‑01/02, and the family's own PTAB papers describe it as "settled/voluntarily dismissed February 1, 2022." No merits adjudication.
- Source: https://portal.unifiedpatents.com/litigation/California%20Central%20District%20Court/case/8:21-cv-00807 ; https://www.action-intell.com/wp-content/uploads/2021/08/Epson-answers-to-Flexiworld-lawsuit.pdf
2. Flexiworld v. Lexmark — E.D. Ky. 5:22-cv-00097
- Filed: April 15, 2022 (four complaints, consolidated for discovery and pre-trial proceedings).
- The '856 is expressly pleaded. First Amended Complaint ¶¶31–35: "The '856 Patent, entitled 'Printing Devices Supporting Printing Over Air or Printing Over A Wireless Network,' duly and legally issued on December 22, 2020, from U.S. Patent Application No. 15/713,546, filed on September 22, 2017, naming William Ho Chang and Christina Ying Liu as the inventors… An assignment of the '856 Patent from inventors Chang and Liu to Flexiworld is recorded at the United States Patent and Trademark Office ('PTO') at Reel/Frame 043675/0454." The '856 is also named in the court's list of the 15 consolidated patents-in-suit.
- Interlocutory activity worth noting: Lexmark moved to dismiss on 2022‑08‑12; Flexiworld filed four amended complaints on 2022‑08‑31; the court held Lexmark's initial motion moot and addressed a "renewed" partial motion targeting § 287(a) marking/pre-suit-damages allegations (Doc. 44). The court also declined to stay.
- Outcome: Dismissed June 6 (year not confirmed in the sources I retrieved), following a reported settlement.
- Sources: https://www.action-intell.com/wp-content/uploads/2022/09/Flexiworld-v-Lexmark-FAC-00097.pdf ; https://law.justia.com/cases/federal/district-courts/kentucky/kyedce/5:2022cv00097/98438/44/
3. Flexiworld v. Brother Industries (U.S.A.) — W.D. Tenn. 2:22-cv-02236
- Filed: April 15, 2022. The docket's Report to the Commissioner of Patents and Trademarks lists patent numbers including 9,036,181 and 10,873,856.
- Outcome: Consent judgment entered March 13, 2023, dismissing all claims with prejudice across four coordinated actions pursuant to a joint Rule 41(a)(1)(A)(ii) motion filed three days earlier. Case duration ~332 days. Terms not in the public record; no § 285 fee award.
- Flag: a PatSnap summary of the coordinated Brother resolution describes the four asserted patents as US10481846B2, US10761791B2, US7609402B2 and US10140073B2 — not the '856. The docket-level patent-number report and Google Patents' litigation link for the '856 both point to the Tennessee action, so I treat the '856 as pleaded there, but the asserted-patent set across the four Brother actions is not cleanly reconciled in the sources I retrieved.
- Sources: https://unicourt.com/case/pc-db5-flexiworld-technologies-inc-v-brother-industries-usa-inc-[1180265](/patent/1180265) ; https://www.patsnap.com/resources/blog/litigation/flexiworld-technologies-v-brothers-industries-consent-judgment-patsnap/
4. Flexiworld v. Xerox — W.D.N.Y. 6:23-cv-06370
- Filed: June 29, 2023 (one of four complaints filed that day). Asserted patents included US10140071B2 (App. 15/332,432), US9036181B2 (App. 12/764,015) and US10873856B2 (App. 15/713,546). Accused products were Xerox AltaLink, ColorQube, VersaLink, WorkCentre, Phaser, B-series, C-series and EC-series devices, via AirPrint, ConnectKey and the Print and Scan Experience App.
- Outcome: Dismissed with prejudice by joint stipulation under FRCP 41(a)(1)(A)(ii) on May 21, 2024, ~327 days after filing. All Flexiworld claims and all Xerox counterclaims were extinguished; each side bore its own costs. No Markman ruling, no merits adjudication, no damages or injunction. The with-prejudice dismissal bars reassertion of the same claims against Xerox and has res judicata effect as to Xerox only.
- Source: https://www.patsnap.com/de/resources/blog/litigation/flexiworld-v-xerox-wireless-printing-patent-dispute-dismissed-patsnap/ ; https://therecycler.com/posts/flexiworld-files-complaints-against-xerox/
5. Flexiworld v. HP, Inc. — S.D. Tex. 4:24-cv-02691
- Filed: July 19, 2024 (Complaint, Doc. 1; 20 exhibits; Judge Charles Eskridge; Magistrate Judge Christina A. Bryan selected by referral). Case number appears on the patent's own litigation record as Texas Southern District Court 4:24-cv-02691.
- Docket course: HP answered with counterclaims and moved to dismiss on 2024‑10‑07 (Docs. 22, 23, 24). Flexiworld amended on 2024‑10‑28 (Doc. 27) and answered HP's counterclaim on 2024‑10‑18 (Doc. 26). Reporting indicates HP's motion to dismiss was denied and Flexiworld filed a second amended complaint; a claim construction went HP's way at some point in the case.
- Outcome (supersedes the earlier "listed as open" entry in the prior section): the parties settled, and all claims and counterclaims were voluntarily dismissed on May 27 — the year is not confirmed in the sources I retrieved; the docket sequence (filing 2024‑07‑19, pleadings through late October 2024, then claim construction and a second amended complaint) makes 2025 or 2026 the likely year.
- Flag: I could not confirm from the retrieved material which patents were pleaded in this complaint. The '856 appears on Google Patents' litigation record for the S.D. Tex. case, which supports assertion, but the docket item descriptions I retrieved do not enumerate the patents, and the family reporting I saw ties US 10,761,791 (a different patent) to the HP action. Verify the HP complaint's patent list before treating the '856 as asserted there.
- Sources: https://services.patexia.com/lawsuits/Flexiworld-Technologies-Inc-v-HP-Inc-id-[201377](/patent/201377)/documents ; https://www.action-intell.com/tag/flexiworld-technologies-v-hp-2024/
Flexiworld campaigns where the '856 is NOT confirmed
I checked these because they are commonly returned for a Flexiworld patent-number query, but the '856 was not identified as asserted in any of them:
| Case | Court / No. | Filed | '856 status |
|---|---|---|---|
| Flexiworld v. Canon | not retrieved | 2021 | Not confirmed |
| Flexiworld v. Hisense | not retrieved | ~2022–2024 | Not confirmed — retrieved pleading addresses the '402 patent |
| Flexiworld v. Roku (series) | W.D. Tex. 6:20‑cv‑00819; 6:21‑cv‑00680; 6:21‑cv‑00767; 6:21‑cv‑00882 | 2020–2021 | Not confirmed — retrieved complaints address the '577 and '402 patents |
| Flexiworld v. Amazon et al. | W.D. Tex. | — | Not confirmed |
| Flexiworld v. LG | E.D. Tex. 2:25‑cv‑00960 | 2025 | Not confirmed — retrieved material addresses the '596, '072 and '178 patents |
| Flexiworld v. TCL | E.D. Tex. 2:26‑cv‑00229 | 2026‑03‑20 | Not confirmed — retrieved complaint analysis maps US 8,332,521, the '871 and the '798 patents, not the '856 |
I am not reporting these as '856 cases, and I would not plead them as such without pulling the complaints.
Corrections and discrepancies against the earlier sections of this report
- HP status is now stale. The prior litigation section listed HP as "open." It is closed — settled and voluntarily dismissed with all claims and counterclaims (May 27; year unconfirmed). The earlier section's "operating company / currently open" characterization should be updated.
- Three resolved cases were previously reported without outcomes. Epson (settled, closed 2022‑02‑01), Lexmark (dismissed June 6 following settlement), and Brother (consent judgment, with prejudice, 2023‑03‑13) all now have dispositions. All three were resolutions without merits adjudication — none produced a validity, infringement or claim-construction ruling on the '856.
- Epson filing date conflict (one day). The prior section said Epson was "filed Apr. 28, 2021." The AO 120 report of filing, the court-accession reporting, and the PTAB recital all say April 29, 2021. I follow the April 29 date and flag the one-day discrepancy rather than silently correcting it.
- HP filing date conflict (one day). The prior section said "filed July 18, 2024." The S.D. Tex. docket shows the complaint as Doc. 1 entered July 19, 2024 (and third-party summaries say 07/19/24). Flagged, not silently corrected.
- Party name. The prior section named the HP defendant "Hewlett-Packard Co."; the docket styles it HP, Inc.
- Brother venue. The prior section hedged between "E.D. Tenn. / W.D. Tenn. listings." The docket source I retrieved places it in the W.D. Tenn. The case number 2:22-cv-02236 is consistent with Memphis (W.D. Tenn.).
- No contradiction with the earlier PTAB section: no AIA trial has ever named the '856, and nothing I retrieved in the district court dockets changes that.
What the litigation record tells you about this patent
- Five asserted cases, five non-merits exits. Epson, Lexmark, Brother, Xerox and HP all resolved by settlement, consent judgment, or stipulated dismissal. No court has ever construed a claim of the '856, and no court or jury has ruled on its validity, enforceability or infringement. A Lexis/Westlaw-style search for an opinion construing the '856 will come up empty; that is a real finding, not a search failure on my part.
- The '856 was never the lead patent in any of these cases. It was pleaded alongside 4–15 sibling Flexiworld patents every time. That is consistent with the portfolio-wide assertion strategy the assignment section describes and means there is little patent-specific litigation history to mine.
- The one substantive ruling adjacent to the '856 is a § 287(a)/pre-suit-damages fight in the Lexmark consolidated action (Doc. 44), which turned on Flexiworld's marking allegations and the W.D. Tex. Roku ruling on licensee marking obligations — not on the '856's claims.
- The claim construction that "went HP's way" is potentially the most interesting development on this patent family, but I could not confirm whether the construed terms were '856 terms or terms of the other patents in the HP complaint. Pull the HP Markman order before relying on it.
- No appellate activity. I found no CAFC docket for the '856. I cannot affirmatively certify that negative, and the earlier sections flagged the same limitation.
Verification status and gaps
Verified (retrieved this session): Epson case number and filing date and closure; Epson's admissions as to the '856's front page and assignment reel/frame; Lexmark case number, filing date, FAC paragraphs expressly pleading the '856, and the consolidated 15-patent list; Brother docket's patent-number report including 10,873,856 and the March 13, 2023 consent-judgment dismissal; Xerox case number, filing date, patent list and May 21, 2024 with-prejudice dismissal; HP case number, filing date, judge, docket entries, and the reported settlement and May 27 voluntary dismissal.
Not verified — do not rely without a direct docket pull:
- The year of the Lexmark June 6 dismissal and the year of the HP May 27 dismissal.
- Whether the '856 was pleaded in the HP complaint (the docket items I retrieved do not enumerate the patents).
- The subject matter of the HP claim construction ruling.
- The exact asserted-patent set across the four coordinated Brother actions (tension noted above).
- Whether the '856 was asserted in Canon, Hisense, Roku, Amazon, LG or TCL — I found no confirmation, but I also cannot rule out an amended complaint adding it.
Recommended docket pulls: PACER for C.D. Cal. 8:21-cv-00807; E.D. Ky. 5:22-cv-00097; W.D. Tenn. 2:22-cv-02236; W.D.N.Y. 6:23-cv-06370; S.D. Tex. 4:24-cv-02691 — specifically the complaints' patent lists, the dismissal orders, and any Markman order in the HP case. CourtListener (https://www.courtlistener.com) and the Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/caselist) are the fastest mirrors for the docket-level summaries; the patent's own Google Patents litigation links corroborate the five-case set.
Generated 9/21/2026, 11:24:07 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Flexiworld Technologies, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by checking for any PTAB proceedings and related litigation records on this patent.
Let me dig into the two Roku IPRs in the same series to identify their target patents.
Let me verify whether any petition has ever named the '856 patent specifically, including PGRs.
PTAB Proceedings Report — U.S. Patent No. 10,873,856 B2
Patent: Printing Devices Supporting Printing Over Air or Printing Over a Wireless Network
Patent Owner: Flexiworld Technologies, Inc. (inventors: William Ho Chang; Christina Ying Liu)
Application: 15/713,546 · Filed: 2017-09-22 · Granted: 2020-12-22 · Priority: 2000-11-01
Proceedings overview
Total AIA trial proceedings naming US 10,873,856 B2 as the challenged patent: ZERO. The USPTO Open Data Portal returns no IPR, PGR, or CBM proceeding for this patent — breakdown by status is therefore N/A (0 active / 0 invalidated / 0 sustained / 0 settled / 0 institution-denied) — and my independent searches of PTAB decisions, docket aggregators, and petitioner press releases found no petition that has ever challenged the '856 claims. Bottom line for a defendant: there is no PTAB roadmap and no claim cancellations to inherit — the '856 issues clean and un-IPR'd, so you must build your own invalidity case from scratch, while noting that sibling patents in the same 2000-11-01 Flexiworld family have been repeatedly instituted against, invalidated in part, and reexamined — meaning the family's prior-art density is already publicly mapped by Roku and Unified Patents.
Everything below in the "Related proceedings" section concerns family members, not the '856; I flag that expressly so it is not mistaken for a proceeding on your patent.
Proceedings on the '856 patent
None. To be explicit: I found no petition, no proceeding number, no institution decision, no final written decision, no termination, and no appeal for US 10,873,856 B2. I am not going to manufacture a proceeding number to fill this section. Any vendor report that attributes IPR2021-00713/-00714/-00715, IPR2022-00775, IPR2022-01112, or PGR2021-00111 to the '856 is conflating Flexiworld family members (see below).
Related PTAB / post-grant activity on Flexiworld family members (context only — NOT the '856)
These matter to you only as (a) a public record of the art both petitioners used against the same specification, and (b) a read on how Flexiworld defends its portfolio.
IPR2021-00714 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent 8,989,064 B2 — sibling, not the '856)
- Type: Inter Partes Review
- Filed: 2021-04-09 (Roku IPR series effective filing date)
- Status: Final Written Decision issued — mixed: some challenged claims unpatentable
- Judge panel: APJs Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal (Dougal authored)
- Petition grounds: § 103 grounds against claims 1–10, 12, and 14–20 (challenged set); independent claims 1, 5, and 15
- Institution decision: instituted under § 314(a) on the challenged claims (Paper 18)
- Final Written Decision: entered 2022-10-21 — "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–10, 12, and 14 are unpatentable. We also determine that Petitioner has not shown by a preponderance of the evidence that claims 15–20 are unpatentable." Oral hearing held 2022-07-19.
- Defensive value (for the '064, not the '856): shows Roku successfully attacked device-discovery/controller claims of this family with § 103 combinations, and that Flexiworld successfully defended a subset (claims 15–20). The claim-by-claim win/loss split is a useful template for how the Board reads this specification's "output controller" and discovery limitations.
IPR2021-00713 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent 10,740,066 B2 — sibling)
- Type: Inter Partes Review · Filed: 2021-04-09 (same series)
- Status: Trial instituted; FWD in the October 2022 wave (Roku's press coverage of 2022-10-24 describes the Board "largely invalidat[ing] claims in a wireless communications patent" tried in the W.D. Tex. Roku/Amazon cases, which is consistent with this series, including the '064 FWD of 2022-10-21 — I did not independently confirm the exact claim-level disposition of the '066 FWD, so do not rely on it without pulling the decision).
- Grounds at issue: § 103 — Grounds 1/1A (Yamaguchi, Gu, and Garfunkel as to claim 11), 2/2A (Ikonen, Gu, Garfunkel), and 3/3A (Ikonen, Kammer, Peng) against claims 7, 8, 10, 11, 14, 15, 17, 19.
- Panel: same McMillin / Ogden / Dougal panel (July 2022 joint oral hearing record covering IPR2021-00713 and -00714).
- Notable: the panel instituted Ground 2 but found Grounds 1 and 3 insufficient at institution (Yamaguchi not prior art; Ikonen's "inquiry response" not an "advertisement of availability") — a directly reusable claim-construction/prior-art-eligibility point against the family's "broadcast/advertise availability" limitations.
IPR2021-00715 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent 10,346,114 B2 — sibling)
- Type: Inter Partes Review · Filed: 2021-04-09 (same series)
- Status: Trial instituted; oral hearing held 2022-07-20
- Grounds: § 103 — Ground 1 (Larsson, Ortiz) and Ground 2 (Larsson, Ortiz, DeMello) against claims 8, 13–16, 18; Larson = U.S. Patent 7,028,102; Ortiz = US 2002/0058499; DeMello = U.S. Patent 7,158,953
- Panel: McMillin, Ogden, Dougal
- Parallel activity: Unified Patents also filed an ex parte reexamination (90/014,721) against the '114 patent on 2021-04-13, granted 2021-05-11 on a substantial-new-question finding — same patent, two different challengers, same month.
IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc. (U.S. Patent 9,836,257 B2 — sibling)
- Type: Inter Partes Review · Filed: 2022-04-08
- Status: Final Written Decision — patent owner prevailed: determined that no challenged claims are unpatentable
- Judge panel: APJs Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal (Ogden authored)
- Petition grounds: § 103 against claims 27 and 28 (Larsson/Olgaard, Moghadam, Acharya, Griffiths, Newton OS, Chuah, and other references; expert: Immanuel Freedman, Ph.D.)
- Institution decision: instituted on claims 27 and 28 (Paper 10, 2022-11-08)
- Final Written Decision: entered 2023-11-01 — "we determine that Unified has not shown that either of the challenged claims are unpatentable on either of the grounds of the Petition"; Flexiworld's Revised Contingent Motion to Amend (Paper 31) was dismissed as moot. Oral hearing 2023-08-29.
- Settlement / termination: none — the case went to FWD.
- Appeal: no Federal Circuit appeal identified in the sources I reviewed. Unified lost, so the patent owner had nothing to appeal; I could not confirm whether Unified appealed (verify on the CAFC docket).
- Defensive value: This is the single most important data point about how this specification fares at the Board: Flexiworld beat Unified on the merits of a fully briefed § 103 challenge and did not need to amend. Do not assume this family is invalid-on-demand.
PGR2021-00111 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent 10,846,031 — sibling)
- Type: Post-Grant Review · Filed: 2021-08-24
- Status: Not instituted — merits (institution denied 2022-03-14, same day as termination)
- Panel/counsel: Petitioner counsel Perkins Coie LLP; Patent Owner counsel Nelson Bumgardner Albritton PC
- Takeaway: Roku's PGR route (used where claims arguably carry a post-2013 effective filing date) failed at the § 324(a) threshold on this family.
Other family filings worth knowing about
- Roku IPR2022-01112 — petition against U.S. Patent 10,140,073 (claims 1–20; Grounds 1a–2c), filed 2022; Roku's petition states it was concurrently filing against 9,042,811 and 9,965,233, and notes instituted reviews IPR2021-00713/-00714/-00715 (filed by Perkins Coie).
- Roku PGR petition on U.S. Patent 11,029,903 (the '903 patent) — asserted §§ 101 and 112 (written description), with Roku arguing the '903 claims are not entitled to the 2000-11-01 priority date and therefore carry a 2019 effective filing date. (The petition is on PTAB's public-information system; I did not confirm the assigned proceeding number, so I am not stating one.)
- Unified Patents ex parte reexaminations: 90/014,721 (U.S. 10,346,114, granted 2021-05-11) and 90/019,971 (U.S. RE48,066, granted 2025-06-24). Unified's Portal entries for these exist at unifiedpatents.com; the reexams are not AIA trials and generate no § 315(e) estoppel.
Strategic summary
Claim status. For US 10,873,856 B2 specifically: every claim is UNTESTED. Nothing has been canceled, nothing has been confirmed, and no claim has been construed by the Board in an AIA proceeding. By contrast, across the sibling set: claims 1–10, 12, and 14 of the '064 patent were held unpatentable (FWD 2022-10-21) while claims 15–20 survived; claims 27 and 28 of the '257 patent survived a Unified § 103 attack outright (FWD 2023-11-01); institution was denied in Roku's PGR on the '031 patent; and the '066/'114 outcomes are in the Roku win column to a degree I could not fully verify. The practical read: this family is partially vulnerable, and the vulnerability is claim-drafting-specific, not specification-wide. Because the '856 issued in 2020 off a 2017-filed continuation, its claims were drafted later than the '064/'066/'114 claims and are likely to be narrower (continuation claim-narrowing is exactly the pattern Roku exploited in its '903 PGR by attacking priority). That cuts both ways for you: narrower claims are harder to invalidate but also harder for Flexiworld to prove you infringe.
Estoppel landscape. No § 315(e)(2) estoppel runs against anyone on the '856 patent, because no IPR has ever been instituted on it. The estoppel that does exist is patent- and party-specific: Roku, Inc. (and its privies/RPIs) and Unified Patents, LLC (and its members/RPIs) are estopped in litigation on the same grounds they raised or reasonably could have raised in the instituted IPRs on the '064, '066, '114, '257, '073 and related patents — that estoppel does not transfer to your defense on the '856. Positively, no petitioner has burned any prior art against the '856, so the entire field of § 102/§ 103 art on the '856 is open to you — including, importantly, any art already tried on siblings, which you can repackage against '856 claims without any estoppel exposure (subject to the usual caution that grounds already considered by the Office may draw § 325(d) discretion). The one deadline that matters: 35 U.S.C. § 315(b) — if you have been served with a complaint asserting the '856, the one-year IPR window is running.
Pattern signals. (1) Roku is the serial petitioner against this family — IPR2021-00713, -00714, -00715, IPR2022-01112, PGR2021-00111, a PGR on the '903 patent, and companion petitions against 9,042,811 and 9,965,233, all through Perkins Coie — yet Roku never petitioned against the '856. (2) Unified Patents is the defensive aggregator in this chain, having filed IPR2022-00775 against the '257 patent and at least two ex parte reexaminations in the family ('114; RE48,066). Its presence confirms this portfolio is on the aggregator radar; its '257 loss and its reexam-first strategy confirm that Unified's members' exposure to these patents is being managed patent-by-patent, not portfolio-wide. (3) Flexiworld files and fights hard, and it is actively monetizing: the '856 has been asserted against Epson (C.D. Cal. 8:21-cv-00807, filed 2021-04-29, as one of 14 patents), Xerox (W.D.N.Y. 6:23-cv-06370, dismissed with prejudice 2024-05-21 by stipulated Rule 41(a)(1)(A)(ii) dismissal, each side bearing its own costs — no merits ruling), and appears in the other campaign dockets (E.D. Ky. 5:22-cv-00097 (Lexmark), W.D. Tenn. 2:22-cv-02236 (Brother), S.D. Tex. 4:24-cv-02691), plus a Texas Southern filing noted on the patent record. (4) No Federal Circuit appeal of any family FWD was identified in my sources — treat that as "not confirmed," not as "none exists."
One flag that may matter more than any IPR: the '856's term. The Google Patents record supplied for this patent lists legal status "Expired - Fee Related" and an anticipated expiration of 2021-11-01 — a 20-year term measured from the 2001-11-01 U.S. filing (US 10/016,223) of the priority chain, not from the 2000-11-01 provisional-date reference. (A separate maintenance-fee lapse event with an effective date of 2023-07-09 appears in the family's Google Patents legal events, but that date cannot belong to the '856 — its first 3.5-year maintenance fee was not due until 2024 — so do not attribute that lapse to this patent.) Before you build any defense, verify the '856's expiration and fee status on USPTO Patent Center/ODP. If the term in fact ran out in November 2021, then (a) there is no prospective injunction exposure and no ongoing royalty, and (b) damages are capped at pre-expiration infringement within the § 286 six-year lookback measured from the complaint — which would let you settle or try this cheaply regardless of validity. This is the highest-value, lowest-cost check available to you.
Recommended next steps
Say it out loud in your case theory: there is no PTAB activity on the '856. Zero IPRs, zero PGRs, zero CBMs, zero claim cancellations. Nothing in the file gives you a free invalidity holding, a claim-construction ruling, or another party's estoppel to ride. This is materially different from the situation on the '064, '257, '066, '114, '073, '031, and '903 siblings — make sure your file does not import a family-level IPR narrative from a vendor report.
Check the expiration/term question first. Verify maintenance-fee payment history, any patent term adjustment, and any terminal disclaimer for the '856 on USPTO Patent Center, and confirm whether the term ran from 2001-11-01 (US 10/016,223). If the patent expired 2021-11-01, plead it: it converts an infringement case into a bounded pre-2021 past-damages case.
If you elect to file an IPR, calendar § 315(b) immediately (one year from service of the first complaint asserting the '856) and expect a hostile institution environment — 2026 institution rates are roughly 30% overall and lower against NPE-held patents, with discretionary denial (Fintiv-type) accounting for the majority of denials. A '856 IPR should be filed early, with a Sotera-style stipulation to blunt discretionary denial, and with clean limitation-by-limitation mapping; overlong four-reference combinations have been failing at the threshold.
Seriously evaluate ex parte reexamination as the primary invalidating vehicle. This is the empirically tested route against this exact portfolio: Unified Patents obtained SNQ findings and ordered reexaminations on the '114 patent (90/014,721, granted 2021-05-11) and on RE48,066 (90/019,971, granted 2025-06-24). Reexam is not subject to § 315(b), does not trigger § 315(e) estoppel, and is not subject to the IPR discretionary-denial machinery — though the CRU has recently denied requests under § 325(d) where they substantially overlap with a denied IPR petition, and the newer USPTO "pre-order" procedure lets the patent owner oppose the SNQ before it is found.
Mine the public family record for art and admissions, not for a disposition. The FWDs in IPR2021-00714 (2022-10-21) and IPR2022-00775 (2023-11-01) contain the parties' and the Board's construction of the shared 2000-11-01 specification's core terms — "output controller," "advertise/broadcast availability," device discovery, and driverless output. Pull both from PTAB E2E (https://ptacts.uspto.gov/ptacts) or Docket Alarm (IPR2021-00714 FWD: https://www.docketalarm.com/cases/PTAB/IPR2021-00714/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/10-21-2022-Board/Final_Written_Decision__original-35-Final_Written_Decision__original.pdf; IPR2022-00775 FWD: https://www.docketalarm.com/cases/PTAB/IPR2022-00775/Unified_Patents_LLC_v._Flexiworld_Technologies_Inc/docs/11-01-2023-Board/Final_Written_Decision__original-41-Final_Written_Decision__Final_Written_Decision_Determining_No_Challenged_Claims_Unpatentable__Dismissing_Patent_Owners_Revised_Motion_to_Amend_35_USC_sec_318a.pdf). Also pull the '064 FWD's Related Matters section and Roku's '073 petition, which together catalog every Flexiworld patent then in suit and the art already used — a ready-made roadmap you can adapt without estoppel.
Confirm no CAFC appeal exists before finalizing your posture. Search the Federal Circuit docket and CourtListener for appeals from IPR2021-00713/00714/00715 and IPR2022-00775. I could not confirm any appeal; if one exists and is pending (particularly from the '064 FWD, where Flexiworld lost claims), the affirmance/reversal posture could change the family-wide art picture.
Confidence and verification notes: The absence of PTAB proceedings on the '856 rests on (a) the canonical ODP-derived block in your prompt and (b) my own searches; both agree. The claim-level dispositions I quote are drawn from the panels' own text for IPR2021-00714 and IPR2022-00775. I did not obtain the full FWDs for IPR2021-00713 or IPR2021-00715, the assigned proceeding number for Roku's '903 PGR, or any CAFC docket — those are flagged above where relevant and should be verified at PTAB E2E and on CourtListener before being relied on in a filing.
Generated 9/14/2026, 12:49:48 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2017-09-23 · reel 043675/0454 · Assignment
William Ho Chang and Christina Ying LiuFlexiworld Technologies, Inc.
founder-to-company assignment
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the ownership chain for this patent, starting with the recorded assignment data.
Let me verify the specific reel/frame for the '856 and check for any post-issuance transfers.
Now let me try to identify the assignment correspondent and confirm no post-issuance transfers.
I hit the tool's step ceiling before I could pull a raw USPTO Assignment Center record, so I'll be explicit below about what is primary-source-verified versus what comes from litigation pleadings. Nothing here is fabricated, and where the record is silent I say so.
Ownership & Assignment Analysis — US 10,873,856 B2
Inventors
| Inventor | Address of record (front page) | Employer at filing | Notes |
|---|---|---|---|
| William Ho Chang | Vancouver, WA | Flexiworld Technologies, Inc. (founder; named assignor) | Listed as inventor on ~43 Flexiworld U.S. patents; the founder/principal of the assignee |
| Christina Ying Liu | San Francisco, CA | Flexiworld Technologies, Inc. (named assignor) | Listed as inventor on ~31 Flexiworld U.S. patents |
Unusual patterns: None of the classic red flags. Specifically:
- No inventor attrition. Both inventors co-invent and co-assign across the entire Flexiworld family (the two are named on essentially every patent in the chain). There is no pattern of inventors departing the assignee within 12 months of filing — the inventors are the assignee's principals, and they continue to be named on Flexiworld filings through the 2010s-era continuations. Both are also the assignors on the recorded assignment (see below), so there was never a separate employee-inventor population to lose.
- Data-hygiene flag for future searches: family records show the same two people indexed under garbled name variants — "Liu Chritina Ying," "Ying Liu Christina," "Ho Chang William," and a concatenated "Liu William Ho Chang Christina" (GoodIP assignee profile). When you search Assignment Center, run all variants or you will under-count the chain.
- Both addresses of record (Vancouver, WA and San Francisco, CA) are personal/principal addresses, not the assignee's business address as reflected on the front page. This is normal for founder-inventors but does mean the inventor addresses themselves carry no assignment-recording significance.
Original assignee
Flexiworld Technologies, Inc. — named as assignee on the issued patent; address of record on the front page, Vancouver, WA. Unified Patents indexes the parent company as "Flexiworld Tech Inc."
| Question | Finding |
|---|---|
| Line of business | Self-described as an innovator/R&D firm in wireless applications and embedded solutions for short-range wireless (Wi-Fi, Bluetooth) and mobile-device markets, and in pervasive/universal digital output (the subject matter of this patent). Trade press describes it as a "wireless innovations company" (The Recycler, covering the Epson suit). |
| Did it ship a product embodying the claims? | Not verified — and I found no evidence of a Flexiworld-branded printing or wireless-output product in commerce. I am flagging this as unproven rather than disproven: I did not locate a Flexiworld product page, SEC filing, or distributor listing showing a commercial embodiment. Treat "no product" as a working assumption to verify, not an established fact. |
| Current status | Operating — not acquired, not dissolved, not in bankruptcy as far as the record shows. It is the plaintiff of record in campaigns running from 2021 through at least 2024–2025, and is asserting this patent family against printer OEMs. |
| Portfolio scale | ~46 patent applications, first publication 2001 (GoodIP). Founder-controlled. |
Assignment timeline
Recorded assignment count for the '856: one. There are no post-issuance assignments, no security interests, no licenses of record, no name-change filings, and no transfers to any LLC or aggregator. The chain terminates where it began.
- Executed date not separately confirmed (on or about 2017-09-22/23) / recorded 2017-09-23 — Reel 043675/0454
- Conveyance: Assignment — recorded as "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)"
- Assignor: William Ho Chang and Christina Ying Liu (individually and jointly)
- Assignee: Flexiworld Technologies, Inc.
- Correspondent: Not retrieved. I could not pull the correspondent-of-record field for reel 043675/0454 within this session. The front page of the patent lists Chernoff Vilhauer LLP as the attorney/agent — that is the prosecution firm of record, and it is a probable but unverified candidate for the assignment correspondent. Do not treat the front-page agent as the assignment correspondent without confirming it on Assignment Center, because the two roles are recorded in different fields and frequently diverge.
- Context: Founder-to-company assignment, executed contemporaneously with the September 22, 2017 filing (recorded the next day, September 23, 2017) — the standard "file and immediately perfect the assignment" pattern of a company whose inventors are also its founders. Not an acquisition, fire-sale, reorg, securitization, or transfer-to-asserter.
- Source / verification status: The reel/frame 043675/0454 is corroborated by two independent litigation pleadings — Epson's answer in C.D. Cal. 8:21-cv-00807 (¶89: "Epson admits that a document purporting to include an assignment of the '856 Patent from inventors Chang and Liu to Flexiworld is recorded at the USPTO at Reel/Frame 043675/0454") and the Flexiworld v. Lexmark First Amended Complaint (E.D. Ky. 5:22-cv-00097). The recording event date (2017-09-23) comes from the Google Patents legal-events block in the authoritative patent text supplied to me. I did not perform a direct Assignment Center record pull — the tool step limit ended the session first. Verify at https://assignmentcenter.uspto.gov/ (search patent number 10873856) or https://assignment.uspto.gov/patent/index.html.
Cross-patent reel/frame context (same assignor/assignee pair, different patents)
I found several sibling reel/frames in Flexiworld v. Epson and Flexiworld v. LG pleadings. These are not part of the '856's chain, but they are relevant to the correspondent-recurrence analysis — they suggest batch recording of Flexiworld's Chang/Liu assignments, which is the kind of pattern that usually indicates a single recording firm:
| Patent | Reel/Frame (as pleaded) | Source |
|---|---|---|
| '402 | 028733/0064 | Flexiworld complaint (RPX litigation document) |
| '596 | 039816/0200 | Flexiworld v. LG, E.D. Tex. 2:25-cv-00960 |
| '072 and '178 | 042385/0202 (both) | Flexiworld v. LG, E.D. Tex. 2:25-cv-00960 |
| '031 | 042385/0202 | Epson answer ¶84 (C.D. Cal. 8:21-cv-00807) |
| '856 | 043675/0454 | Epson answer ¶89; Lexmark FAC ¶1 |
| '871 | 046519/0534 | Epson answer ¶79 |
Note that a single reel (042385/0202) carries at least three different Flexiworld patents ('072, '178, '031), and the '856's reel (043675) sits between that reel and the '871's reel (046519). Reel numbers that close together, spanning multiple patents on one reel, are consistent with one recording instrument or one recording firm handling the whole batch. I could not confirm the correspondent name on any of these reels, so I am stating the inference and withholding the conclusion.
Timeline diagram
timeline
title Ownership of US 10873856B2
2000 : Earliest priority provisional filed
2001 : Priority non-provisional chain
2017 : Application 15 713 546 filed
: Assignment to Flexiworld recorded
2018 : Pre-grant publication
2020 : Patent issued
2021 : Epson suit asserts the 856
: Anticipated expiration per records
2022 : Brother suit filed
: Lexmark suit filed
2023 : Xerox suit filed
2024 : HP suit filed
NPE / troll-pattern signals
Shell-entity transfer — NOT PRESENT. The chain is a single founder-to-company assignment (reel 043675/0454, recorded 2017-09-23). There is no LLC in the chain, no "IP / Patents / Licensing / Holdings / Ventures" suffix, and no transfer away from the operating assignee. Flexiworld Technologies, Inc. — the original and current assignee — is the same entity throughout.
Known asserter in the chain — PRESENT (qualified). Flexiworld does not appear on the classic aggregation-NPE lists you asked me to compare against (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN/Mosaid, Vringo, Pendrell, Round Rock, MPHJ, Lumen View, Spangenberg entities). What is documented is that Flexiworld is a high-frequency plaintiff surfaced by a defensive aggregator: Unified Patents, LLC has filed IPR2022-00775 against Flexiworld's US 9,836,257 and ex parte reexaminations in the family (90/014,721 against US 10,346,114; 90/019,971 against RE48,066), and Roku filed a six-petition IPR/PGR series against the same family. Being a repeat Unified/Roku target is evidence the industry treats Flexiworld as an assertion entity. I am marking this present but qualified: the signal is real, but it is derived from the enforcement footprint, not from a name matching a published NPE roster. No reel/frame in the chain independently proves it.
Repeat correspondent across the chain — UNCLEAR. Within the '856's chain there is only one link, so recurrence cannot be tested: the signal is structurally inapplicable to a single-assignment chain. Across the Flexiworld family the reel/frame batching pattern (reel 042385/0202 carrying '072, '178, and '031 together) strongly suggests a single recording firm, but I could not retrieve the correspondent-of-record name for reel 043675/0454 or for reel 042385/0202, so I am not naming an attorney. This is the one signal most likely to flip with a single direct Assignment Center lookup, and it should be the first thing you pull.
Cascading transfers — NOT PRESENT. No chain of LLC-to-LLC transfers, and therefore no 24-month cascade. One assignment, executed at filing, never followed.
Pre-litigation transfer — NOT PRESENT. The assignment was executed/recorded September 2017; the first complaint naming the '856 was Flexiworld v. Epson, C.D. Cal. 8:21-cv-00807, filed April 2021 — a gap of roughly three and a half years, and the assignment predates issuance by three years. The chain was plainly not arranged to enable assertion.
Bankruptcy fire-sale — NOT PRESENT. No Chapter 7 or Chapter 11 proceeding for Flexiworld Technologies, Inc. appears in any source I reviewed. The patent was not sold out of an estate.
Privateering — NOT PRESENT. Privateering requires an operating company to transfer to an NPE that asserts on the operating company's behalf. Flexiworld is the original, founder-owned patentee asserting its own patents; there is no upstream operating company and no third-party beneficiary of the assertions. The defendants (Epson, Brother, Lexmark, Xerox, HP, Canon, LG, Roku) are competitors of no one upstream in this chain.
Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. Unified's role here is adverse (petitioner/challenger), not acquisitive — the patent remains with Flexiworld and has not been neutralized by any transfer.
Verdict
NPE — moderate confidence (one strong signal, zero corroborating chain-based signals).
The justification is deliberately narrow: it rests on enforcement behavior and the absence of a verified commercial product, not on the assignment machinery. The assignment record shows a single founder-to-company conveyance at filing (reel 043675/0454, recorded 2017-09-23) with no shell entity, no cascading LLCs, no pre-litigation transfer, no bankruptcy, and no defensive-aggregator endpoint — every transfer-based NPE signal is affirmatively absent. The only strong signal is signal 2: the current assignee is the sole and repeat asserter of this patent across at least five district court campaigns against printer OEMs (Epson 8:21-cv-00807; Brother 2:22-cv-02236; Lexmark 5:22-cv-00097; Xerox 6:23-cv-06370; HP 4:24-cv-02691), and it has been targeted as such by Unified Patents and Roku in PTAB and reexam. That places Flexiworld in the "original-owner inventor NPE" archetype — a founder-controlled R&D/licensing company asserting its own 2001-priority patents — rather than the shell-LLC aggregation archetype this framework was built to catch. If the correspondent field on reel 043675/0454 turns out to be a repeat NPE-recording attorney, this verdict escalates; if you obtain evidence of an actual Flexiworld commercial product embodying claim 1, it downgrades to operating-company assertion.
Verification link: https://assignmentcenter.uspto.gov/ (search "10873856"); mirror at https://assignment.uspto.gov/patent/index.html
Two flags carried forward from the prior sections, because they affect this analysis:
- Contradiction to resolve: the previously generated sections disagree on the term date — the summary says expiration 2021-11-01 measured from the 2000-11-01 priority reference; the PTAB section says 2021-11-01 measured from the 2001-11-01 filing of US 10/016,223, and notes the 2000-11-01 date is a provisional that does not start the 20-year clock. Unified Patents lists 2021-10-31 and lifetime renewal fees of $0. The correct rule is that the 20-year term runs from the earliest non-provisional filing in the chain, so the 2001 date is the right anchor — but the exact day and the $0 renewal-fee figure should be confirmed on Patent Center before being relied on. This matters here because a $0 lifetime renewal-fee record would be affirmative evidence that the assignee chose not to maintain the patent, which is itself a mild non-practicing signal.
- No assignments beyond the original one. Per the task's own instruction, that is a finding: with a single recorded assignment running from the inventors directly to the entity that is now asserting it, there is no ownership discontinuity to attack for § 261 standing or chain-of-title purposes, and no third-party licensor whose rights would need to be joined.
Generated 9/15/2026, 4:47:11 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search the USPTO record and citation databases for this specific patent number.
Let me pull the citation lists from the patent record itself.
Let me try to surface the front-page "References Cited" list directly.
I hit the tool step limit before I could retrieve the complete citation list, so I'm reporting exactly what I verified and exactly what I couldn't — with no fill-in.
Prior-Art / Citation Report — US 10,873,856 B2
1. The record I matched (literal number check)
Before anything else, the number you gave resolves to one record, and it is the one already analyzed:
| Field (USPTO-derived sources) | Value |
|---|---|
| Patent number | 10,873,856 B2 (grant publication 10873856) |
| Application | 15/713,546 |
| Filed | Sep. 22, 2017 |
| Granted | Dec. 22, 2020 |
| Pre-grant publication | 20180024791 (US 2018/0024791 A1), Jan. 25, 2018 |
| Inventors | William Ho Chang; Christina Ying Liu |
| Assignee | Flexiworld Technologies, Inc. (Vancouver, WA) |
| Primary Examiner | Marcus T. Riley |
| Classifications | H04W 12/08; H04W 76/10; H04W 4/80; G06F 3/12; G06K 15/02; H04N 1/00; H04N 1/32; G06Q 20/10; H04L 29/08; H04W 8/00; H04W 84/12; G10L 15/22 / 15/30; G06F 3/0481, 3/0484, 3/0488, 3/14, 3/16 |
| Listed current US class (Justia) | 380/247 "Cellular Telephone Cryptographic Authentication" |
Sources: https://uspto.report/patent/grant/10873856 ; https://patents.justia.com/patent/10873856 ; https://portal.unifiedpatents.com/patents/patent/US-10873856-B2 ; https://patents.google.com/patent/[US10873856B2](/patent/US10873856B2)/en
Flag (minor): the Justia "Current U.S. Class 380/247" entry is a classification artifact — consistent with the odd H04W12/08 (access security) primary CPC that Google shows for a printing patent. It reflects the prosecution's heavy focus on authentication/secure-job hooks, not on the printing core. Don't read technical meaning into it.
Flag (substantive, contradicts nothing in prior sections but worth stating): Unified Patents' Portal page for US-10873856-B2 renders a second title under the same record in its "related" panel — "US-10761791-B2 … Wireless Printing Devices that Provide Printing Services Over a Network Without a Need for a Client Device of the Printing Device to Use, at the Client Device, a Printer Specific Printer Driver." US 10,761,791 is a different patent (App. 15/332,432-adjacent family) that Flexiworld asserted in the HP case. If your vendor feed shows that title attached to 10873856, it is a scraping error — do not pull US 10,761,791's citations into a '856 analysis.
2. There are three different "citations" sets — do not conflate them
For a continuation in a 20-year chain, "citations" is ambiguous and the distinction changes the § 102 answer:
- References Cited (backward citations) — what the '856's own front page lists. This is what you asked for. Retrieved partially (Section 3).
- Non-patent literature cited — retrieved (Section 3B).
- References cited by citing documents (forward) — e.g. the '856 appears on the face of US 10,140,071, US 10,168,871, US 10,481,846, US 7,941,541, US 9,164,718, US 10,408,187, US 10,408,189, US 10,761,791, US 10,818,388 and the 2011/0034150, 2011/0035682, 2016/0011836 family publications. These are Flexiworld's own continuations citing the '856 — they are not prior art against the '856 and none of them can anticipate it under § 102.
I mention set 3 only so that a long list of Flexiworld patent numbers does not get mistaken for a prior-art list.
3. References Cited on the '856 — what I actually retrieved
3A. U.S. patent documents (partial — I could not complete the list before the tool limit)
Retrieved from the USPTO-mirroring record at https://uspto.report/patent/grant/10873856. I have numbers, dates and inventors as printed; I did not retrieve the titles, so I am not inventing descriptions. Dates are as printed on the record.
| Patent | Date | Inventor(s) | Patent | Date | Inventor(s) |
|---|---|---|---|---|---|
| 4,958,220 | Sep. 1990 | Alessi et al. | 5,534,449→(truncated) | — | — |
| 4,979,032 | Dec. 1990 | Alessi et al. | 5,537,517 | Jul. 1996 | Wakabayashi et al. |
| 5,129,639 | Jul. 1992 | DeHority | 5,546,079 | Aug. 1996 | Wagner |
| 5,166,809 | Nov. 1992 | Surbrook | 5,564,109 | Oct. 1996 | Snyder et al. |
| 5,220,674 | Jun. 1993 | Morgan et al. | 5,566,278 | Oct. 1996 | Patel et al. |
| 5,228,118 | Jul. 1993 | Sasaki | 5,568,595 | Oct. 1996 | Yosefi et al. |
| 5,257,097 | Oct. 1993 | Pineau et al. | 5,572,632 | Nov. 1996 | Laumeyer et al. |
| 5,270,773 | Dec. 1993 | Sklut et al. | 5,574,979 | Nov. 1996 | West |
| 5,287,194 | Feb. 1994 | Lobiondo | 5,580,177 | Dec. 1996 | Gase et al. |
| 5,303,342 | Apr. 1994 | Edge | 5,589,889 | Dec. 1996 | Kawaoka |
| 5,319,711 | Jun. 1994 | Servi | 5,596,697 | Jan. 1997 | Foster et al. |
| 5,337,258 | Aug. 1994 | Dennis | 5,604,843 | Feb. 1997 | Shaw et al. |
| 5,353,388 | Oct. 1994 | Motoyama | 5,613,123 | Mar. 1997 | Tsang et al. |
| 5,404,433 | Apr. 1995 | Hosogai | 5,613,124 | Mar. 1997 | Atkinson et al. |
| 5,412,798 | May 1995 | Garney | 5,613,191 | Mar. 1997 | Hylton et al. |
| 5,463,623 | Oct. 1995 | Grimes | 5,619,257 | Apr. 1997 | Reele et al. |
| 5,467,434 | Nov. 1995 | Hower, Jr. et al. | 5,619,649 | Apr. 1997 | Kovnat et al. |
| 5,475,507 | Dec. 1995 | Suzuki et al. | 5,625,757 | Apr. 1997 | Kageyama et al. |
| 5,479,206 | Dec. 1995 | Ueno et al. | 5,629,981 | May 1997 | Nerlikar |
| 5,485,634 | Jan. 1996 | Weiser et al. | 5,636,211 | Jun. 1997 | Newlin et al. |
| 5,487,069 | Jan. 1996 | O'Sullivan | 5,644,662 | Jul. 1997 | Vuylsteke |
| 5,490,287 | Feb. 1996 | Itoh | 5,664,243 | Sep. 1997 | (truncated) |
| 5,506,661 | Apr. 1996 | Hanzawa | … list continues, not retrieved | ||
| 5,515,480 | May 1996 | Frazier | |||
| 5,519,641 | May 1996 | Beers et al. | |||
| 5,524,185 | Jun. 1996 | Na | |||
| 5,537,107 | Jul. 1996 | Funado |
Note the shape of this list: it is overwhelmingly 1990–1997 U.S. art, i.e. the classic network-printing / page-description-language / color-management / halftoning corpus that Flexiworld carried forward in IDSs across the whole continuation chain (it matches the art cited in the '856's parents, US 7,941,541 and US 9,965,233, per the front-page "Priority claimed from" links). That is expected for a continuation and tells you the examiner's search was anchored on the 2000-era state of the art.
3B. Non-patent literature cited (retrieved from Justia)
These came through with readable text, so these I can describe accurately:
| Citation | Date | What it is |
|---|---|---|
| International Telecommunication Union, "Series T: Terminals for Telematic Services, Mixed Raster Content (MRC)," ITU-T Recommendation T.44 | Apr. 1999 (55 pp.) | The MRC standard — the layering (background / foreground / toggle or selector) scheme the '856's specification relies on for its intermediate output data. Relevant to every claim reciting rasterized output images or MRC. |
| Bluetooth Core Specification ("Specification of the Bluetooth System," v.1.0B), 1080 pp., attachments in 4 parts | Dec. 1, 1999 | The Bluetooth short-range radio standard. Relevant to claims reciting Bluetooth/short-range wireless claims and to the family's "wireless discovery" limitations. |
| Albrecht et al., "IP Services over Bluetooth: Leading the Way to a New Mobility," IEEE Proc. 24th Conference on Local Computer Networks, Lowell, MA | Oct. 1999 | Academic paper on running IP over Bluetooth — i.e. device-level networking and service/attribute exchange over a short-range wireless link. This is the closest NPL analogue to the '856's "send device information to the client over the wireless link" step. |
| USPTO Office Action, Appl. No. 15/713,546, dated Dec. 11, 2019 (24 pp.) | Dec. 11, 2019 | The '856's own first action — the rejection that shaped the issued claims. |
| USPTO Final Office Action, Appl. No. 15/713,546 | not retrieved | The second-action record. |
| USPTO Office Action, Appl. No. 10/053,765 (parent) | not retrieved | Parent prosecution. |
| Notices of Allowance, Appl. Nos. 11/929,445, 11/929,501 (earlier Flexiworld filings) | not retrieved | Family prosecution. |
| Office Action, Appl. No. 16/200,380, dated Aug. 6, 2020 (108 pp.) | Aug. 6, 2020 | A child/sibling prosecution — post-'856-filing. Not prior art; it is prosecution-history context. |
Source: https://patents.justia.com/patent/10873856
Do not treat the 15/713,546 office actions as prior art. They are listed among "References Cited" only because the applicant/attorney submitted the prosecution record in an IDS to a later child. Their real value is as an admission-and-construction file: the Dec. 11, 2019 action tells you which limitations the examiner thought were missing from the cited 1990s art, which is the fastest route to understanding what the issued claim 1 adds.
4. Most relevant prior art for claim 1 — by claim element, not by date
The issued claim 1 (device-side method; reproduced in the prior analysis section, sourced from Flexiworld's own posting) has four ordered steps plus two "wherein" clauses. Mapping citations to it:
| Claim 1 element | Best candidates in the retrieved corpus | Strength |
|---|---|---|
| Preamble / "printing device" with processing, memory, printer engine | 5,228,118 (Sasaki); 5,303,342 (Edge); 5,353,388 (Motoyama); 5,475,507 (Suzuki et al.); 5,506,661 (Hanzawa); 5,527,0773-class art | Anticipates only the generic printing-device preamble — trivially met, unhelpful alone |
| "wirelessly connecting … to the wireless local area network" | 5,487,069 (O'Sullivan, Jan. 23, 1996) — wireless LAN; 5,485,634 (Weiser et al., Jan. 16, 1996) — portable/mobile station wireless network access; 5,574,979 (West) — wireless link | Discloses a wireless LAN, but I cannot verify from the retrieval that either discloses a printing device as the WLAN station, and neither can be IEEE 802.11 as we now define it (802.11 was not even numbered until 1997, and O'Sullivan's Jan. 1996 filing predates the 1997 ratification). |
| "establish communication with an information apparatus … in the WLAN" (802.11-compatible) | 5,485,634; 5,487,069; 5,519,641 (Beers et al. — remote device communication) | Weak-to-moderate; the IEEE 802.11 chip/chipset "wherein" clause is the binding constraint, and none of the retrieved pre-1997 art is 802.11 |
| "transmit device information from the printing device to the information apparatus" (identification / capability / address / status / attribute) | 5,467,434 (Hower, Jr. et al. — printer-configuration/queue management); 5,220,674 (Morgan et al. — networked office equipment); 5,353,388 (Motoyama — printer status/management); Albrecht et al. (Oct. 1999) for the non-patent analogue | This is where the corpus bites hardest — printer-status and printer-capability transmission to a host was thoroughly known by 1993–1996. But it was known over wired LANs / serial / spooler connections, not over 802.11 |
| "receive print data … in accordance with the device information" | 5,580,177 (Gase et al., Dec. 10, 1996) — this is the classic printer/host automatic-driver-or-configuration-and-download reference in this corpus; 5,463,623 (Grimes et al.); 5,556,278 (Patel et al.); 5,568,595 (Yosefi et al.) | Most probative single U.S. reference retrieved, because automatic configuration of a host to a printer's capabilities is precisely the functional core of the "we sent the device info so you don't need a specific driver" recitation |
| "without the information apparatus needing to install a printer driver that is device-specific" | 5,580,177 (Gase et al.); 5,467,434 (Hower, Jr.) | Relevant, but the 1990s art discloses configuring/downloading a driver or remote queue management — which is arguably the opposite of driverless printing and is what Flexiworld will argue distinguishes its claim |
| IEEE 802.11 chip/chipset limitation | Nothing in the retrieved corpus | This is the limitation that carries the claim. The cited art is 1990–1997 and centers on wired/networked printing; a device-side 802.11 WLAN chipset limitation cannot be anticipated by the retrieved list |
Non-obvious but important point on descriptions I could not verify
I have number, date and inventor for the ~48 U.S. references above, but I did not retrieve their titles or text in this session. Any description I gave of what a specific one of them (e.g. 5,580,177 Gase, 5,485,634 Weiser, 5,487,069 O'Sullivan) teaches would be partly from my training knowledge, not from a source I pulled today. I have marked the ones I'm treating as load-bearing in bold, and you should pull each one's face and claims from USPTO Patent Public Search or Google Patents before it goes into a chart. I am not willing to assert a § 102 anticipation mapping against a specific one of these on date+inventor alone.
5. § 102 mapping — the honest answer
Which claims could these references anticipate? On the record I retrieved:
- Claim 1 (issued): cannot be anticipated by the retrieved corpus. The combination of (a) printing device joining a WLAN via IEEE 802.11-compatible chips/chipsets, (b) pushing its own device information over that link, and (c) receiving print data conformed to that information with no device-specific driver installed at the client — has no single-reference read in a 1990–1997 wired-network-printing corpus.
- The generic-preamble dependents (device/memory/printer-engine structure, rasterized-image, compression, MRC limitations) are the vulnerable ones under § 102. The ITU-T T.44 (Apr. 1999) and Bluetooth 1.0B (Dec. 1, 1999) citations are the strongest § 102 candidates against any dependent claim reciting MRC-encoded rasterized output or short-range wireless discovery, because those two references disclose the exact formats/link layers by name. If the '856 contains dependent claims reciting Bluetooth or MRC by name, chart those two first.
- Anticipation against the broader 2018 published claim set would be easier — that version's claim 1 recited only "at least one of identification information, capability information, address information, status information, or attribute information" and put the no-driver language in dependent claim 2. Under that wording, 5,467,434 (Hower, Jr.) and 5,353,388 (Motoyama) become materially more interesting. But that claim set is not the issued patent and cannot be asserted against, so it is only useful to show what the applicant deliberately narrowed away from.
§ 102 date mechanics you must run before relying on any of this:
- The '856 claims the Nov. 1, 2000 provisional chain (60/245,101 / 60/252,682 / 60/262,764). On that date, every reference I retrieved is § 102(b) art — printed more than one year before the priority date. That is why they were cited at all.
- But the '856 is a continuation/CIP in a chain that includes US 10/053,765 and 13/710,299 — and Flexiworld's own family has been attacked on exactly this ground: in the PGR petition against sibling US 11,029,903, Roku argued the claims were not entitled to the 2000-11-01 priority date and therefore carried a later effective filing date. If any '856 claim is held to lack § 112 written-description support in the 2000 specification (the 802.11 chipset limitation and the enumerated "duplex / color space / bit depth / resolution" device-information categories are prime candidates for new matter — 802.11-1997 existed but 802.11b/g postdate 2000, and the enumeration looks drafted to the 2017 specification), then the effective date slides forward and 1998–2017 art opens up.
- If the effective date slides, the most dangerous art is not on the '856's face at all — it is the art already litigated in the family: US 7,028,102 (Larsson), US 2002/0058499 (Ortiz), US 7,158,953 (DeMello), Ikonen, Gu, Garfunkel, Moghadam, Acharya, Griffiths, Chuah, and the "Newton OS" prior-art system — the references Roku and Unified actually briefed in IPR2021-00713/-00714/-00715 and IPR2022-00775. Note the trap: the Board in the Roku series refused to institute on Yamaguchi because it was not prior art, and declined Ground 3 because Ikonen's "inquiry response" was not an "advertisement of availability." Those two rulings are direct warnings that date-entitlement and the "advertise availability" limitation are the two places this family's cases are won and lost.
- § 102 vs § 103. Nothing on the '856's face looks like a single-reference anticipation of issued claim 1. The realistic attack on issued claim 1 is § 103 (e.g., a wireless-LAN printer reference + a printer-capability-advertisement reference + an 802.11 reference), which is a materially harder case than a § 102 anticipation. That is consistent with the two sibling FWDs: the Board invalidated claims 1–10, 12, 14 of the '064 patent on § 103 but sustained claims 15–20, and sustained claims 27–28 of the '257 patent outright against Unified.
6. Contradictions and gaps I am obliged to flag
- No contradiction found between this retrieval and the earlier sections on bibliographic data, examiner, or claim-count. Justia independently confirms filed Sep. 22, 2017 / issued Dec. 22, 2020 / 20 claims / Examiner Marcus T. Riley / Flexiworld (Vancouver, WA) — matching the front-page data in the summary section.
- One apparent contradiction, resolved in favor of the earlier analysis: a Justia snippet for publication 20180024791 reproduces a claim 1 that does recite "identification information, capability information, address information, status information, or attribute information" — i.e. the published wording. This corroborates (rather than contradicts) the earlier flag that the issued claim 1 differs by folding in the enumeration and adding the 802.11 chip/chipset "wherein" clause. The issued claim set is the only one that matters, and it must be read from the granted patent (PDF at patentimages.storage.googleapis.com/c8/08/81/19e0c3b363b28d/US10873856.pdf), not from the A1 publication.
- The list in §3A is incomplete. I retrieved roughly the first 50 U.S. references (1990 through Sep. 1997) and the tool limit cut off the remainder. The '856's citation list almost certainly continues through 1998–2000 art, and the 1998–2000 entries are the ones most likely to actually be § 102 art against the issued claims, because that is the window in which IEEE 802.11 (ratified 1997) and WLAN-capable printers first appear. I cannot state that such a reference exists on the '856's face, and I cannot state that it does not.
- I did not retrieve the examiner's applied rejections, only the cited-reference list. A cited reference is not an applied reference; many of these were IDS submissions. Distinguishing the two requires the Dec. 11, 2019 non-final and the subsequent final office action for 15/713,546.
7. Highest-value next steps
- Pull the complete "References Cited" list from the granted patent PDF and the full "Patent Citations" table on patents.google.com/patent/US10873856B2/en (the Google table carries titles and assignees, which the uspto.report list I retrieved did not). Focus on 1998–2000 entries.
- Pull the file wrapper for 15/713,546 (USPTO Patent Center → Application Data → Documents) and identify (a) the Dec. 11, 2019 non-final action, (b) the final action, and (c) the Notice of Allowance with the examiner's reasons for allowance. The reasons-for-allowance statement will name the exact limitation the examiner considered missing from this corpus — that is your real roadmap.
- Resolve the priority-date question first. If the '856 is not entitled to Nov. 1, 2000 (Roku's '903 theory), the entire 1998–2017 art field — including Larsson, Ortiz, and DeMello, which are already briefed and Board-tested — becomes available and the § 102/§ 103 calculus changes completely. If it is entitled to 2000, the effective prior-art cutoff is Nov. 1, 1999 (§ 102(a)) / Nov. 1, 1999 for § 102(b) purposes, and the retrieved 1990s corpus is all § 102(b).
- Chart the MRC and Bluetooth dependents against ITU-T T.44 (Apr. 1999) and Bluetooth 1.0B (Dec. 1, 1999) before anything else. These are the only two references I retrieved that disclose an element of the claim set by name, and they are § 102(b) art on either priority theory.
- Do not build a § 102 anticipation chart on a reference identified only by number, date and inventor. I have deliberately not done so here.
Verification status: bibliographic data, examiner, classes and the partial citation list are from USPTO-mirroring records (uspto.report, Justia, Google Patents, Unified Patents Portal); the NPL items are quoted from the Justia reference list; the family-level prior art and Board rulings referenced in §5 are from the previously generated sections of this analysis and their cited FWDs. Nothing here was retrieved from a live USPTO PatentCenter/Patent Public Search API session, and the numbered list in §3A is explicitly incomplete.
Generated 9/15/2026, 4:47:31 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll pull the prior art cited on this patent's face and the art that has actually been used against siblings in the same family, then build the § 103 combinations.
Good — I have the face-of-patent citation list starting to come through. Let me pull the full "References Cited" list and the specific art used against siblings in this family.
Let me get the full cited-references list and identify the more recent family IPR (IPR2022-01267) and its target.
Obviousness Analysis — U.S. Patent No. 10,873,856 B2 under 35 U.S.C. § 103
Patent: Printing Devices Supporting Printing Over Air or Printing Over a Wireless Network
Inventors: William Ho Chang; Christina Ying Liu · Assignee: Flexiworld Technologies, Inc.
App. No. 15/713,546 · Filed 2017-09-22 · Granted 2020-12-22 · Priority chain to 2000-11-01
Analyst date: 2026-04-26
0. Scope, governing law, and verification status (read this first)
Governing law. The '856 claims priority no later than 2000-11-01 and was filed 2017-09-22 as a continuation/CIP of applications filed 2001. There is no evidence in the record supplied to me that any claim was ever amended to shift to a post-AIA effective filing date. Accordingly I analyze under pre-AIA § 102/§ 103, where (a) § 102(e) art is available as of its earliest effective U.S. filing date (including a provisional, for subject matter supported by it), and (b) the motivation-to-combine inquiry is governed by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) — the reference need only be "reasonably pertinent to the particular problem," and predictable combinations of known elements are obvious.
What I verified in this session, and what I did not:
| Item | Status |
|---|---|
| Claim 1 text | Verified — retrieved independently from flexiworld.com/patent/us-10873856/ ("Sample Claim"). It matches the prior section's quotation. Still not primary-source verified (the patentimages PDF's claims were not retrievable as text in my results). |
| Claims 2–20 text / number of independents | NOT verified. Do not treat this analysis as covering the dependent claims. |
| Identity of references cited on the face of the '856 | Partially verified (see §3). Only the first ~60 entries of the "References Cited" list were returned; the list is very long (the family cites on the order of 800+ references). |
| Dates/titles of the IPR references (Larsson, DeMello, Ikonen, Kammer, Peng, Gu, Garfunkel, Moghadam, Acharya, Griffiths, Chuah, Olgaard) | NOT verified except Ortiz and Larsson-by-name. Characterizations are marked below. |
Contradiction flagged against the prior sections. The "PTAB challenges" section stated that no Flexiworld PTAB proceeding was found beyond IPR2021-00713/-00714/-00715, IPR2022-00775, PGR2021-00111, IPR2022-01112 and the two reexaminations. My search surfaced an additional proceeding, IPR2022-01267 (Roku, Inc. v. Flexiworld Technologies, Inc.), whose petition exhibit Ex-1003 is the Ortiz reference (US 2002/0058499 A1). IPR2022-01267 is not a proceeding on the '856 — it appears to be another Roku challenge to a family member — but it should be added to the family docket inventory and pulled from PTAB E2E before any filing. Source: https://www.docketalarm.com/cases/PTAB/IPR2022-01267/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/07-29-2022-Petitioner/Exhibit-1003-Ex_1003.pdf
The single most important analytical observation in this report. Claim 1 of the '856 does not recite the actual invention described in the specification. The specification's stated contribution is a split raster image process — the client rasterizes content into a device-independent intermediate output data (preferably MRC-encoded), and the output controller in the printer performs only the residual device-dependent RIP operations (color space conversion, halftoning, encoding for the engine). See the Definitions section of the patent: "An output controller application or component included in the output device or output system implements the remaining part of the raster image processing operations such as digital halftoning, color correction among others" and "device dependent image processing operations of a RIP such as digital halftoning and color space conversions can be implemented at an output device or an output system." None of that appears in claim 1. Claim 1 instead recites a generic architecture — Wi-Fi printer joins WLAN, sends its device info, receives print data conformed to that info, without a device-specific driver. Every element of that architecture was in the art by late 2000. That is why the claim is vulnerable in a way the specification is not.
1. Claim 1 decomposed into limitations
| # | Limitation (paraphrased from the verified text) | Limitation type |
|---|---|---|
| A | Printing device with wireless communication circuitry | Structural |
| A′ | Circuitry comprises chips/chipsets compatible, at least in part, with at least part of a protocol within IEEE 802.11 for connecting to the WLAN in (1) | Structural |
| B | Memory/storage storing device information = one or more of identification / language / format / duplex / color space / bit depth / resolution, "individually or in any combination" | Structural |
| 1 | Wirelessly connect the printer to a WLAN so it can communicate with an information apparatus that is on the WLAN (separate device) | Process |
| 2 | Establish a WLAN communication link between printer and that information apparatus, compatible at least partly with at least one IEEE 802.11 protocol | Process |
| 3 | Wirelessly transmit the device information from printer to the information apparatus over the link of (2) | Process |
| 4 | Wirelessly receive print data at the printer over the link of (2), the print data being in accordance, at least in part, with the device information transmitted in (3) | Process |
| W1 | Wherein by having transmitted the device information, the printer provides printing services without the information apparatus needing to install a device-specific printer driver, and without needing to use an installed driver | Functional / negative |
| W2 | Wherein the wireless circuitry includes chips/chipsets compatible at least in part with an IEEE 802.11 protocol | Structural (duplicative of A′) |
Two drafting features substantially weaken the claim:
- "one or more of … individually or in any combination." The device-information element is met by any single one of eight categories. Art that shows a printer reporting only its resolution, or only a supported page description language, meets B. This is not a narrow element.
- Steps (1)–(4) contain no requirement that the printer act first, unsolicitedly, or as a "push." Step (3) says only that the printer "wirelessly transmit[s]" the device information over the link. A response to a client's capability query satisfies it. This matters enormously, because the discovery/probe architecture of IPP, SLP, UPnP and SNMP all satisfy (3) as claim 1 is worded, even though they are request/response rather than broadcast.
2. The state of the art at the critical date (2000-11-01)
A person having ordinary skill in the art (PHOSITA) — a B.S. in EE or CS plus 2–3 years in network printing, print servers, or embedded device firmware — would have had at their fingertips, before Nov. 1, 2000:
| Reference / body of knowledge | Date | Relevance |
|---|---|---|
| IEEE Std 802.11-1997, and 802.11b-1999 (2.4 GHz, 11 Mbps) | 1997 / 1999 | Directly supplies A′ and limitations (1), (2). The 802.11b products wave arrived in 1999–2000. |
| Bluetooth Specification v1.0 (incl. Hardcopy Cable Replacement Profile) | July 1999 | Parallel wireless-printing transport; supplies motivation for RF-over-air printing. |
| RFC 1759, "Printer MIB v1" | 1995 | Defines standardized, machine-readable printer device information via SNMP: interpreter language family (prtInterpreterLangFamily), resolution, colorant/color-space data, output/duplex configuration. Maps essentially 1:1 onto claim 1's enumerated device-information list. |
| RFC 2566, "Internet Printing Protocol/1.0: Model and Semantics" | April 1999 | Defines the IPP printer object and its attributes — printer-uri-supported, document-format-supported, printer-resolution-supported, sides-supported (duplex), print-color-mode — and defines Get-Printer-Attributes. IPP's express design goal was driverless printing using a small set of required document formats. |
| RFC 2608 / RFC 2609, Service Location Protocol and service templates | June 1999 | Supplies discovery of printers on a LAN and retrieval of service attributes, including the service:printer: template. |
| UPnP Device Architecture 1.0 (and the UPnP printer device/service model) | June 8, 2000 | SSDP discovery + HTTP-retrieved device description documents carrying device capabilities, with a standardized printing service. Directly teaches a network appliance advertising its device information to a client that then has no need for a model-specific driver. (Flag: the Printer:1 device template was ratified later — verify the exact template date before relying on it; the Device Architecture itself predates the critical date.) |
| HP JetSend protocol (published specification; JetSend-enabled printers shipping 1999) | 1997–1999 | The canonical driverless output protocol: devices exchange "device capabilities" and then negotiate a mutually supported data representation ("e-material"), expressly eliminating the print driver. |
PCL5 / PostScript / PJL INFO CONFIG-style capability queries |
pre-1995 | A printer reporting its own model, supported PDLs, duplex and resolution over a serial/network link. |
| Network print servers with wireless LAN interfaces (HP JetDirect-class 802.11 print servers; Axis, Netgear equivalents) | ~2000 | Commercial proof that a printer could be the 802.11 station on a WLAN and receive print data over it. (Flag: verify exact HP 802.11 JetDirect release date.) |
The punchline: the claim's four process steps plus limitations A, A′, and B describe, at the architectural level, a Wi-Fi print server + a capability-query protocol + a standardized print data format. All three existed independently before the critical date, and the combination was the plainly indicated path for anyone addressing mobile/wireless printing.
3. "Prior Art" of record on this patent
3a. Verified from the face of the patent / family databases
The '856's "References Cited" list is unusually large. The following were returned verbatim (number | date | inventor), source https://uspto.report/patent/grant/10873856 and the family's Justia pages:
- US 3,629,493 Morgenfruh (12/1971); US 3,833,297 Swartz (9/1974); US 4,291,956 Vogelgesang/3M — "Graphic forming device with preview feature" (9/1981); US 4,430,? … through the 1990s.
- US 5,220,674 Morgan et al. (6/1993) — Xerox-family networked print-job distribution art. (Characterization from model knowledge — verify.)
- US 5,287,194 Lobiondo (2/1994) — title verified as "Distributed printing" (Google Patents page title for US5287194). Network-distributed printing with printer selection.
- US 5,485,634 Weiser et al. (1/1996); US 5,487,069 O'Sullivan (1/1996); US 5,490,287 Itoh (2/1996) — "Wireless Communication Device and Printing System Using the Same" (title verified via Unified Patents record).
- US 5,515,480 Frazier; US 5,519,641 Beers et al.; US 5,524,185 Na; US 5,537,107 Funado; US 5,537,517 Wakabayashi; US 5,546,079 Wagner; US 5,564,109 Snyder; US 5,566,278 Patel; US 5,568,595 Yosefi; US 5,572,632 Laumeyer; US 5,574,979 West;
- US 5,580,177 Gase et al. (12/1996); US 5,589,889 Kawaoka (12/1996); US 5,596,697 Foster; US 5,604,843 Shaw; US 5,613,123 Tsang.
- Foreign: JP H11-316658 A (1998-05-01, Ricoh Co., Ltd.) — "Printing equipment" (verified); CN 1217503 A (5/1999); CN 1488106 A (2004).
- Related-art entries surfaced on the Unified Patents record (portal.unifiedpatents.com/patents/patent/US-10873856-B2): US 6,959,339 B1, IBM (1998-11-05), "Technique for Handling a Universal Image Format on the Internet"; US 6,628,417 B1, Canon (1998-10-29), "Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System"; US 6,195,564 B1, Ericsson (1997-09-18), "Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device"; US 7,349,722 B2, Visteon (1999-05-25), "Wireless Communications System and Method"; US 2005/0114869 A1, Toshiba (1999-04-22), "Communication Device and Method Thereof"; US 6,990,548 B1, Hewlett-Packard Development Co. LP, "Methods and Arrangements for Configuring a Printer Over a Wireless Communication Link Using a Wireless Communication Device" (date unverified — if filed after 2000-11-01 it is available only as background, not as § 102 art; verify before use).
- CN 100334577 C, "System and Method for Device-to-device Pervasive Digital Output" and US 9,164,718 B2, "Output Device and Method for Output Without an Output Driver" are Flexiworld's own family documents/diverted assets, not prior art — do not cite them as art; they are useful only as admissions.
3b. Art actually deployed against sibling patents in this family (not verified as to subject matter — pull before relying)
From the family's PTAB record as reported in the prior sections and confirmed in part this session:
- Ortiz, US 2002/0058499 A1 — "Systems, Methods and Apparatuses for Brokering Data Between Wireless Devices and Data Rendering Devices." VERIFIED in this session (Ex-1003 of IPR2022-01267): App. 09/887,492, filed 2001-06-22, published 2002-05-16, non-provisional of provisional 60/214,339 filed 2000-06-27. Used by Roku with Larsson (US 7,028,102) and DeMello (US 7,158,953) in IPR2021-00715 against the '114 patent.
- Larsson, US 7,028,102 (subject matter unverified — verify date; it was found to be prior art at institution against the '114).
- DeMello, US 7,158,953 (unverified).
- Ikonen; Kammer; Peng; Gu; Garfunkel; Yamaguchi (IPR2021-00713 grounds; all unverified). Note Yamaguchi was held not to be prior art at institution — do not reuse it.
- Moghadam; Acharya; Griffiths; Chuah; "Newton OS"; Olgaard (IPR2022-00775 grounds against the '257; all unverified). The Board found Unified failed on these combinations against '257 claims 27–28.
Ortiz is the anchor. Its verified disclosure includes: data brokering between a wireless device (WD) and a data rendering device (DRD); DRDs expressly including "printers, photocopiers"; DRDs adapted for direct wireless communication with a WD utilizing IR and/or RF communication signaling; DRD selection based on WD user location and/or profile; an authorization module in the DRD; and — critically — the express statement that DRDs "can generally be considered 'undedicated' rendering devices (e.g., 'unassigned' as a resource and/or generally available and open to the acceptance and rendering of data from unfamiliar users)." That sentence is, functionally, the "wherein" clause W1: the DRD is designed to render data from unfamiliar clients without bespoke per-client setup.
4. Element-by-element mapping
| Limitation | Where it is met |
|---|---|
| A / A′ — 802.11 wireless circuitry in the printer | IEEE 802.11-1997/802.11b-1999 standards; commercial 802.11 WLAN print servers (HP JetDirect-class, ~2000); Itoh US 5,490,287 for the wireless-printing-device concept. Anticipation-adjacent on its own. |
| B — memory storing printer device information of the enumerated kinds | RFC 1759 Printer MIB (language, resolution, colorant/color space, output/duplex configuration); IPP RFC 2566 printer attributes (document-format-supported, printer-resolution-supported, sides-supported, print-color-mode); PJL/PostScript capability queries; Canon US 6,628,417 (image server/data communication). Because the claim requires only "one or more … individually," a single reported attribute suffices. |
| (1) Printer joins WLAN | 802.11 infrastructure mode; wireless print servers. |
| (2) 802.11-compatible link to the information apparatus on the WLAN | Same. |
| (3) Printer transmits device information to the information apparatus over that link | IPP Get-Printer-Attributes response; UPnP device description; SLP service-attribute retrieval; SNMP Printer MIB fetch; JetSend capability exchange; Ortiz brokering. Note the claim does not require the transmission to be unsolicited. |
| (4) Printer receives print data conformed to the device information | IPP Print-Job with negotiated document-format; PCL/PostScript selected per reported language; JetSend negotiated e-material; Bluetooth HCRP/BPP. |
| W1 — no device-specific driver needed/used | (i) IPP's and JetSend's express design goals are exactly this; (ii) Gase US 5,580,177 (printer-capability-driven automatic configuration [characterization from model knowledge — verify]); (iii) IBM US 6,959,339 "Technique for Handling a Universal Image Format on the Internet"; (iv) the '856's own admissions: the spec states that with "predefined or device independent rasterization parameters … the intermediate output data may become device independent and therefore, become universally acceptable with output devices that have been pre-configured to accept the intermediate output data," and describes uploading the output device profile to the information apparatus. |
| W2 — 802.11 chips/chipsets | Same as A′. |
5. Specific § 103 combinations, with motivation
Combination A (primary — the "wireless brokering + standardized capability/format" combination)
Ortiz US 2002/0058499 A1 (§ 102(e) art as of 2000-06-27, via provisional 60/214,339) + RFC 2566 (IPP/1.0) + IEEE 802.11 (or Itoh US 5,490,287), optionally + RFC 1759 (Printer MIB).
What each supplies. Ortiz supplies A (a printer DRD), limitation (1) in substance (a rendering device reachable by a wireless client over a network), limitation (3) (brokering/exchange of rendering-related information between the WD and the DRD before or in connection with delivery), limitation (4) (data delivered to and rendered at the DRD), and W1 in substance (DRDs deliberately "open to the acceptance and rendering of data from unfamiliar users," with an authorization module rather than a per-user driver install). RFC 2566 supplies B in detail (formalized printer attributes including document-format-supported, resolution, color mode, duplex) and supplies W1's driverless operation by design. IEEE 802.11 supplies A′ and converts Ortiz's IR/RF signaling into the claimed WLAN link.
Motivation to combine.
- Ortiz itself frames the problem the '856 claims to solve: wireless device users are "generally restricted … [by] unavailable or inconveniently located rendering … resources," and DRDs should be "made publically available and easy to locate." That is the mobile-printing problem stated in the '856's own background.
- Bandwidth and range. Ortiz contemplates IR and RF. A PHOSITA in 2000 would select an 802.11 WLAN because the print data contemplated (rasterized images) is large and 802.11b offered ~11 Mbps at range, versus IR's line-of-sight and sub-Mbps constraints. Ortiz's own disclosure of RF signaling as an alternative makes the substitution a selection among a finite number of identified, predictable solutions — the KSR test for obviousness.
- Standardization pressure. IPP/1.0 and the Printer MIB existed precisely so that a client could obtain a printer's attributes and print without vendor-specific drivers. A PHOSITA seeking to make Ortiz's brokering work across "publically available" DRDs of unknown make would naturally adopt the standardized attribute set and the standardized document formats — that is the whole point of RFC 1759/2566.
- Reasonable expectation of success. 802.11 print servers were already shipping; printers already stored and reported their capability data; IPP printers already accepted standard formats. Nothing in the combination requires a new physical result.
Combination B (the driverless "wherein" clause attacked head-on)
Gase US 5,580,177 + IPP RFC 2566 + an 802.11 WLAN printer/print-server reference (e.g., Itoh US 5,490,287 or the 802.11 standard itself).
Motivation. Gase is a printer communication/configuration reference — if you confirm (as I could not from the retrieved text) that it teaches obtaining printer capability/configuration information from a printer and configuring the host's output accordingly, then it supplies W1 almost literally as a teaching: the host adapts to the printer rather than requiring a pre-loaded model-specific driver. Combine with IPP for the network-standardized version of the same idea and with 802.11 for the wireless transport. Verify Gase's actual disclosure before building on this — it is my highest-uncertainty characterization in this report.
Combination C (standards-only combination)
IEEE 802.11b-1999 + RFC 2566 (IPP/1.0) + RFC 1759 (Printer MIB) + RFC 2608/2609 (SLP).
Motivation. Each reference is a published standard whose stated purpose is interoperability among devices of unknown manufacture. SLP discovers the printer and retrieves its service attributes; the Printer MIB and IPP supply the attribute semantics; 802.11b supplies the wireless LAN. A PHOSITA implementing "print from a wireless client to whatever printer is on this WLAN" in 2000 would combine these because they are the standards that were written to be combined. This is an unusually strong "combination of known elements for their known purposes" case under KSR.
Combination D (the "raster-image-over-air" combination, matching Ortiz's IPR use)
Ortiz + Larsson US 7,028,102 + DeMello US 7,158,953 — the exact combination Roku got instituted in IPR2021-00715 against the '114 patent.
Motivation. This trio was accepted at institution as rendering a wireless-printing claim unpatentable in this same specification family. Ortiz supplies the brokering architecture; Larsson and DeMello supply wireless rendering/print-data handling. For the '856 specifically, this combination must be augmented with 802.11-specific art (Larsson/DeMello must be read to reach the WLAN link of limitations (1)–(2)). Verify each reference's actual disclosure and dates; I could not.
Combination E (the capability-aware print-routing combination)
US 5,220,674 (Morgan/Xerox network print distribution) or US 5,287,194 (Lobiondo, "Distributed printing") + RFC 1759 Printer MIB + 802.11 WLAN + IPP.
Motivation. Both Morgan and Lobiondo (Lobiondo's title is verified) are directed to distributing print jobs over a network with printer selection based on printer capability/status. A PHOSITA selecting among networked printers must first know those printers' attributes — the motivation to transmit device information from the printer to the client flows directly from the routing problem these references solve. Moving the network from Ethernet to 802.11 is the predictable wireless extension. (Titles/disclosures for Morgan and Lobiondo beyond Lobiondo's title are from model knowledge — verify.)
Combination F (the anti-priority combination)
Any of A–E + a post-2000-11-01 reference (e.g., UPnP Printer:1 template, Bluetooth 1.1/BPP, or later 802.11-printing publications). This combination becomes available only if the priority challenge in §7 succeeds.
6. Why the two "wherein" clauses are unlikely to save claim 1
- They recite a result, not additional structure or acts. W1 states that because the printer transmitted its device information, the client does not need a device-specific driver. Under In re Swinehart, 439 F.2d 210 (CCPA 1971) and MPEP 2111.04, a recitation of what an apparatus does or an intended result does not impart patentable weight beyond the structure/acts that produce it. Here, the structure/acts that produce it are already in steps (1)–(4). If a combination makes the printer's capabilities available to the client in standardized form and the client prints using a standardized format, the absence of a device-specific driver is inherent in the combination, not a separate inventive contribution.
- "Device specific" is the only narrowing hook, and it is weak. The '856's specification concedes that the client may itself be a "device driver" ("a client application … may be implemented as … a device driver (a printer driver in case of a printer)"). So W1 cannot mean "no driver at all"; it means "no driver specific to that model." IPP and JetSend were designed from the outset to permit a single generic client to print to any conforming device. That is the negative limitation's entire content.
- The claim omits the specification's actual distinguishing feature. The split-RIP / device-independent intermediate-output-data (MRC) architecture — the thing that gave this family whatever patentable weight it has — is nowhere in claim 1. Claim 1 is thus markedly broader than the disclosure and correspondingly closer to the generic art. Note the family's own PTAB history confirms claim-drafting-specific outcomes: '064 claims 1–10, 12, 14 were held unpatentable while claims 15–20 survived; '257 claims 27–28 survived a full § 103 attack. The '856's claim 1 sits on the broad end of that spectrum.
7. The alternative (and probably cheaper) attack: priority
This is the strategy Roku ran against the sibling '903 patent (attacking entitlement to the 2000-11-01 date on § 101/§ 112 grounds). It applies here with force:
- Claim 1 was drafted in ~2010–2017 (the '856 is a continuation/CIP filed 2017 over a chain of 2001 applications). If the 2000-11-01 provisional (or the 2001-11-01 application US 10/016,223 / 2001-11-18 application US 09/992,413) does not provide written-description support for the specific 2017-vintage language of claim 1 — in particular the "chips or chipsets … compatible, at least in part, with at least part of a protocol within IEEE 802.11 wireless standards" and "one or more of identification information, language information, format information, duplex printing information, color space information, bit depth information, or resolution information, individually or in any combination" — then claim 1's effective filing date moves to 2001, and the entire 2000–2001 art field opens up (UPnP Printer template, Bluetooth 1.1/BPP, the first generation of consumer 802.11b printers, early 2001 mobile-printing applications) in addition to whatever already qualifies. Note that this cuts against the patent owner on § 112 as well.
- Conversely, this is the answer to the § 102(e) question: confirm that Ortiz's relied-upon disclosure is actually supported by provisional 60/214,339. If it is not, Ortiz's date collapses to 2001-06-22 and Ortiz becomes unusable as pre-critical-date art — but the priority shift described above would then independently make Ortiz qualify.
8. Where the claim is defensible (be honest with the client about this)
- The "printer-as-actor" framing plus the 802.11 limitation is the narrowest combination. If the prior art the client finds shows only a client polling a printer over Ethernet, or only a client-side discovery agent, a § 103 case requires an explicit 802.11 rationale. That rationale is easy to articulate but must be articulated; a bare "Wi-Fi was known" assertion invites a failed-institution outcome.
- The negative limitation does require proof. Expect the patent owner to argue that no reference teaches away from installing a driver, and that in 2000 printer vendors' business model depended on per-model drivers. That argument is factually weak in the face of IPP/JetSend, both of which were expressly aimed at eliminating drivers, but it must be rebutted with those documents quoted, not assumed.
- I have not seen claims 2–20. If a dependent claim adds, e.g., printer-initiated broadcast/discovery before any client request, service registration, MRC-encoded intermediate output data, or a specific security/payment handshake, the analysis changes materially. Pull the full claim set from the patentimages PDF before committing to any theory. Note also that the '903 PGR shows Flexiworld treats the priority date as the family's central vulnerability — expect the same fight here.
- Family-level caution. Unified lost on the '257 (FWD 2023-11-01: no challenged claim unpatentable on either ground). The Board has not been receptive to every § 103 attack on this specification. Do not assume the '064 partial-invalidation result generalizes.
9. Verification gaps and next steps (in priority order)
- Pull the full claim set (claims 1–20) from https://patentimages.storage.googleapis.com/c8/08/81/19e0c3b363b28d/[US10873856](/patent/US10873856).pdf. Nothing here substitutes for that.
- Pull the '856 file wrapper (App. 15/713,546) from USPTO Patent Center/ODP. The examiner added the 802.11 chip/chipset limitation to claim 1 relative to pre-grant publication US 2018/0024791 A1 — which strongly implies the allowance was driven by that limitation and that the examiner had art close on everything else. The examiner's rejections and the applicant's remarks are the most valuable documents in this matter, and I have not seen them.
- Verify the reference dates and disclosures for: Gase US 5,580,177; Morgan US 5,220,674; Ortiz's provisional 60/214,339 (must confirm the relied-upon subject matter is supported); Larsson US 7,028,102; DeMello US 7,158,953; HP US 6,990,548 (filed pre- or post-11/1/2000?); Canon US 6,628,417; Ericsson US 6,195,564; IBM US 6,959,339; Ricoh JP H11-316658 A. Also confirm the UPnP Printer:1 template date (the Device Architecture 1.0 of June 8, 2000 is confirmed-by-date, but the printer template may post-date the critical date).
- Pull the IPR2021-00714 and IPR2022-00775 final written decisions for the Board's construction of the shared specification's core terms (device information, output controller, discovery/advertisement), and the IPR2022-01267 petition (the previously-unlisted Roku proceeding surfaced in this session) to see whether Ortiz + Larsson + DeMello was retargeted at a different family member.
- Calendar § 315(b) (one year from service) if the client has been served on the '856, and evaluate ex parte reexamination as the primary vehicle — it was the empirically successful route against this portfolio (Unified obtained SNQ findings in 90/014,721 and 90/019,971), it carries no § 315(b) bar and no § 315(e) estoppel, and no prior art has ever been burned against the '856.
Confidence summary. The element-by-element mapping and the four claim-1 drafting weaknesses (§1) are high confidence — they follow from the claim text and the undisputed dates of RFC 1759/2566, 802.11-1997/-1999, and Bluetoth 1.0. The Ortiz disclosure is high confidence (verified verbatim this session), and its § 102(e) date of 2000-06-27 is verified from the petition exhibit, subject to the provisional-support caveat. Combinations B, D and E rest on reference characterizations I flagged as unverified and must not be briefed until the underlying documents are pulled. The '856's expiration and fee status (prior sections: "Expired – Fee Related," anticipated expiration 2021-11-01) is a separate and potentially dispositive issue that should be confirmed on Patent Center before any validity spend.
Generated 9/15/2026, 4:48:21 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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