Invalidity dossier
US 11829776
Integrated circuit device that includes a protected memory component for transmitting protected data over a communication interface
Current assignee: Flexiworld Technologies Inc
Added 9/29/2026, 11:25:35 AM
Active provider: DeepSeek · deepseek-v4-flash
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll run a few targeted searches to check for litigation/docket activity and corroborate the bibliographic data.
Search scope and results
I ran targeted queries against Google Patents, Unified Patents' litigation/PTAB portal, USPTO PTACTS document feeds, and public CAFC/docket-aggregator sources. Key finding up front:
- No CAFC 2026 docket activity referencing US 11,829,776 was found. Flexiworld Technologies, Inc. appears extensively in 2020–2022 district-court and PTAB matters (Roku, Amazon, Lexmark, Hisense, Sony, etc.), but the patents asserted in those cases are different patents (e.g., 7,609,402; 10,140,072; 10,140,073; 10,387,087; 10,768,871; 8,989,064; 10,346,114; 10,740,066; 11,029,903). The Google Patents page carries only a generic "Family has litigation" flag for Darts-ip family ID 33299904, without naming this patent as asserted. I have no authoritative 2026 CAFC record for this patent.
- Two false-positive collisions to discard: EP 11829776 is a European application number for a tournament gaming machine, and rs11829776 is a genetic marker. Neither is US 11,829,776.
Bibliographic summary — US 11,829,776 B2
| Field | Value |
|---|---|
| Title | "Integrated circuit device that includes a protected memory component for transmitting protected data over a communication interface" |
| Patent number | US 11,829,776 B2 |
| Application number | US 15/042,044 |
| Pre-grant publication | US 2016/0174068 A1 (published 2016-06-16) |
| Inventors | William Ho Chang; Vinaynathan Viswanathan |
| Assignee | Flexiworld Technologies, Inc. (original and current assignee); assignment recorded 2016-09-06 |
| Priority date (as listed) | 2002-12-12 |
| Filing date | 2016-02-11 |
| Issue/grant date | 2023-11-28 |
| Legal status (as listed) | Expired – Lifetime; adjusted expiration event 2024-09-12 |
| Claim count | 20 (3 independent: 1, 7, 15) |
Discrepancy to flag: Google Patents lists the priority date as 2002-12-12; the Unified Patents portal page for US-11829776-B2 displays a priority date of 2002-12-11 and a related-family entry of "2000-11-01." I am reporting these literally rather than reconciling them. The one-day gap is plausibly a time-zone/priority-claim artifact, but I cannot confirm the cause with authority.
Priority chain (per the "Cross-References to Related Applications" section): this application is a continuation of US 14/833,961 (filed 2015-08-24, published as US 2015/0381612 A1, now abandoned), which is a continuation of US 14/089,622 (now US 9,116,723), which is a continuation of US 12/891,594 (now US 8,595,717), which is (1) a continuation of US 10/823,513 (now US 7,805,720, claiming benefit of provisional 60/462,080, filed 2003-04-11) and (2) a continuation-in-part of US 10/734,481, filed 2003-12-12 (now US 11,467,856), claiming benefit of provisional 60/433,196, filed 2002-12-12. Family members also include US 12/890,487 (US 8,296,757, "Copy protection of software and/or data").
Abstract (verbatim)
"An integrated circuit device that includes a secure or protected memory component is herein disclosed and enabled. The integrated circuit may be a wireless communication device or a smart card or an USB device. Additionally, the integrated circuit may be part of or in a computing device or mobile device. The integrated circuit device includes a private memory section for storing protected data that is not accessible by a user at the private memory section, but is accessible by a memory controller included in the integrated circuit device. The memory controller accesses the protected data with a combination of security operations that may include cryptography. The integrated circuit device may further include a wireless component for establishing a wireless connection with wireless computing devices or readers for wirelessly transmitting the protected data accessed by the memory controller to the wireless computing devices."
Note on specification/claim mismatch (substantive, not editorial): the drawings and detailed description (FIGS. 1–8) are directed to autorun firmware embedded in a USB microcontroller and copy protection of autorun-launched installables; the wireless/secure-element disclosure appears mainly in FIGS. 9–14. The issued independent claims, however, are directed to protected-memory-plus-wireless-transmission, not autorun. The specification's own framing ("This invention relates to a system and method for utilizing storage media such as flash memory for achieving autorun...") therefore does not match the claims as issued — relevant to written-description/enablement exposure.
Independent claim overviews (plain language)
Claim 1 — Integrated circuit memory device
An IC memory device that wirelessly sends protected data it holds to a wireless computing device. It must have:
- a graphical user interface on the device itself;
- a wireless interface including a radio, for a local point-to-point radio connection (not a network/Internet connection);
- a memory controller and a memory component;
- a protected memory area holding protected data (data or software) that a user cannot access at that area, but the memory controller can;
- an internal memory area holding a program the user cannot access at that area but the controller can execute, the program supporting at least part of the controller's functionality.
The device must be configured to: establish the point-to-point radio connection; have the controller access the protected data; operate at least part of an authentication algorithm; operate at least part of an encryption operation on the data; wirelessly transmit the encrypted protected data to the wireless computing device; wirelessly receive information back from that device in response; and display that received information on the device's own GUI to the user.
Where the protection comes from (as claimed): storing the data in the protected area and requiring use of the IC device to transmit it wirelessly.
Claim 7 — Method
The same device architecture, recast as method steps, with "controller" instead of "memory controller." Differences from claim 1 worth noting:
- includes an extra step of enabling at least part of the device's operations after the point-to-point connection is established;
- the method body recites encryption but does not recite the authentication algorithm (that is added by claim 8);
- protection is attributed to protected-area storage, the encryption operation, and the wireless transmission.
Claim 15 — Wireless communication device
A wireless communication device containing an IC memory device plus a wireless component. Same hardware elements as claim 1 (GUI, radio-based wireless interface, memory controller, protected area, internal program area). Its distinguishing operation:
- the memory controller executes the program stored in the internal memory area, and that execution causes the controller to (i) access the protected data including an authentication algorithm, and (ii) encrypt the accessed data for wireless transmission;
- plus connect, enable operations, wirelessly transmit the encrypted data, wirelessly receive responsive information, and display it on the device's GUI;
- protection = protected-area storage + requiring this device for the wireless transmission.
Dependent claims (orientation)
- 3 / 10 / 18: device may be a smart card, dongle, USB memory device, or wireless communication device.
- 11: smart card form factor, with the wireless computing device being at least a reader.
- 12: device functions as a security key (the internal-area program is inaccessible to the user but executable by the controller to perform the protected-data access).
- 4 / 13: GUI-collected password, PIN, or biometric information, obtained before establishing the point-to-point connection.
- 5: discovering the wireless computing device.
- 6 / 14 / 19 / 20: a structural interface (reader, socket, port, computing device/system) over which the encrypted/protected data may also be transmitted.
- 2 / 9 / 17: protection/security characterised as storage in the protected area plus encryption/decryption plus the wireless transmission.
- 16: providing identification information associated with a device interface description to the wireless computing device.
- 8: adds the authentication-algorithm step to the method of claim 7.
Confidence and caveats
- High confidence: title, patent/application numbers, inventors, assignee, filing date (2016-02-11), issue date (2023-11-28), abstract, and claim text — all taken directly from the patent document and Google Patents.
- Moderate confidence: priority date (reported as 2002-12-12 by Google Patents vs. 2002-12-11 by Unified Patents — I cannot resolve this authoritatively), and the adjusted-expiration line (2024-09-12), which I am reporting literally rather than interpreting the terminal-disclaimer/PTA arithmetic.
- Low confidence / explicitly unknown: any 2026 CAFC docket involvement for this specific patent. My searches surfaced Flexiworld litigation only for other patents, and I found no docket, brief, or opinion explicitly identifying US 11,829,776. If this patent is being litigated, it is not reflected in the sources I could reach. Treat the absence of results as a null finding, not as proof of no litigation.
Generated 9/29/2026, 11:31:05 AM
Cases on file (0)
Specific litigation cases in our database that name US patent 11829776. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 11829776 across patent litigation databases.
Let me search more specifically for litigation involving this patent number.
Let me check the Unified Patents portal and the NPE litigation database specifically for this patent.
Litigation Involving U.S. Patent No. 11,829,776
Bottom line: Based on my searches, I could not find any litigation that specifically asserts U.S. Patent No. 11,829,776 ("the '776 patent") as a patent-in-suit. I want to state that clearly rather than present related-but-different cases as if they were litigation on this patent. No plaintiff, defendant, jurisdiction, case number, or filing date can be attributed to any case involving the '776 patent based on the evidence I retrieved.
Why I cannot confirm any '776 case
Several factors constrain the conclusion, and I flag them so you can weigh the confidence level:
The patent is recent. The '776 patent issued on November 28, 2023 (application US 15/042,044, filed Feb. 11, 2016; assignee Flexiworld Technologies, Inc.). Any suit asserting it would necessarily be post‑November 2023, and the broad Flexiworld campaigns I retrieved largely pre‑date issuance.
The Flexiworld campaigns I found assert other patents, not the '776 patent. For example:
- The Lexmark consolidated action (E.D. Ky.) expressly listed patents-in-suit including U.S. Pat. Nos. 9,036,181; 10,140,071; 10,873,856; 7,609,402; 10,140,073; 10,481,846; 10,761,791; 10,037,178; 10,768,871; 10,841,798; 11,096,056; 9,965,233; 10,642,576; 10,846,031; and RE42,725 — the '776 patent is not among them.
- The Hisense complaint (E.D. Tex.) asserted 7,609,402; 10,140,072; 10,140,073; 10,387,087; and 10,768,871.
- The Sony action (E.D. Tex., 2:23-cv-00616) asserted 9,798,516; 9,042,811; 9,836,259; and others.
- The TCL action (E.D. Tex., 2:26-cv-00229) asserts 8,332,521 and 10,768,871, among others.
The Google Patents family record is not patent-specific. The page for US 11,829,776 carries a "Family has litigation" indicator (Darts‑IP family 33299904, "First worldwide family litigation filed"). That flag reflects litigation somewhere in the Flexiworld patent family, not proof that the '776 patent itself has been asserted. It would be an error to treat that flag as identifying a case against this specific patent.
Search-tool limit reached. I was not able to complete targeted lookups on the Unified Patents litigation portal, the Stanford NPE Litigation Database, or PACER for this exact number before exhausting my search steps. So the absence of a found case is not the same as confirmed absence — it is "not found in available results."
Related Flexiworld litigation (context only — none confirmed to assert the '776 patent)
These are Flexiworld cases I located, provided only to show the litigation landscape. None of these is confirmed to involve U.S. 11,829,776:
| Case | Patents asserted (per sources) | Venue / No. | Filed | Status |
|---|---|---|---|---|
| Flexiworld v. Amazon.com | 8,332,521 et al. | W.D. Tex. 6:20-cv-00553-ADA | 2020-06-22 | Terminated 2021-08-02 |
| Flexiworld v. Roku | 8,989,064; 10,346,114; 10,740,066 | W.D. Tex. 6:20-cv-00819-ADA | 2020 | — |
| Flexiworld v. Roku | 9,965,233 | W.D. Tex. 6:21-cv-00680-ADA | 2021-06-28 | Settled/dismissed 2022-10-28 |
| Flexiworld v. Lexmark (consolidated) | 15 patents (see ¶2 above) | E.D. Ky. 5:22-cv-00097 / -00098 / -00110 | 2022-04-15/29 | Consolidated; MTD denied |
| Flexiworld v. Brother Industries | 9,965,233 | W.D. Tenn. 2:22-cv-02251 | 2022-04-21 | Dismissed 2023-03-13 |
| Flexiworld v. Hisense | 7,609,402; 10,140,072/073; 10,387,087; 10,768,871 | E.D. Tex. → N.D. Ga. 1:22-cv-04337 | 2022-06-24 | Dismissed 2023-04-07 |
| Flexiworld v. Xerox | 10,140,071; 10,873,856; 9,036,181 | W.D.N.Y. 6:23-cv-06370 / -06371 | 2023 | Dismissed with prejudice (stipulated) |
| Flexiworld v. Sony | 9,798,516; 9,042,811; 9,836,259 | E.D. Tex. 2:23-cv-00616 | 2023 | Pending (Docket Control Order; jury selection set 12/2025) |
| Flexiworld v. HP | wireless printing patents | S.D. (Cal./Tex.) | 2024 | Settled/dismissed ~May 2025 |
| Flexiworld v. Indeed | RE48,066 et al. | W.D. Tex. 1:24-cv-01254 | 2024 | Pending; RE48,066 in ex parte reexam 90/019,971 |
| Flexiworld v. LG Electronics | 6 patents (unidentified in source) | E.D. Tex. 2:25-cv-00960 | 2025-09-18 | Open |
| Flexiworld v. TCL | 8,332,521; 10,768,871 et al. | E.D. Tex. 2:26-cv-00229 | 2026-03-20 | Pending; service waived Apr. 2026 |
Notable PTAB activity (also not tied to the '776 patent): Roku v. Flexiworld IPR2021-00714 and IPR2021-00715; Roku IPR2022-01114 ('233 patent, dismissed pre-institution); IPR2023-00845 ('402 patent); and Unified Patents' ex parte reexamination of RE48,066 (request filed May 23, 2025; instituted June 24, 2025).
Recommended verification steps (given I could not complete them)
To get a definitive, patent-specific answer, the following should be checked directly for "11,829,776":
- PACER / CourtListener full-text docket search for "11,829,776" and "11829776."
- Unified Patents litigation portal (portal.unifiedpatents.com/litigation) patent lookup page for US-11829776-B2.
- Stanford NPE Litigation Database (npe.law.stanford.edu) patent page for 11829776.
- RPX Insight and Docket Alarm patent case trackers.
- USPTO Patent Trial and Appeal Board (IPR/PGR search) and PTAB/CRU reexamination records for challenges to the '776 patent.
One caveat on method: I interpreted the number literally and filtered out the close-but-different identifier EP 11829776 (an EPO application number for an unrelated IGT gaming-machine patent, priority 2010), which is a common false positive for this query.
If you'd like, I can run the specific portal lookups above in a follow-up pass and report the exact case data without the family-level noise.
Generated 9/29/2026, 11:31:04 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
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 the canonical ODP block against what web sources show.
Let me run additional targeted checks before concluding.
One more round to close out the search space.
Proceedings overview
Zero AIA trial proceedings are on file against US 11,829,776. The structured ODP block in this prompt returns an empty proceedings list, and independent web checks (PTAB petition pages, Docket Alarm PTAB dockets, Unified Patents' patent portal) surfaced no IPR, PGR, or CBM naming this patent — the only search hits for the literal string "11829776" were an unrelated human gene marker (rs11829776) and an unrelated European application number (EP 11829776, a gaming-machine case). Breakdown: 0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied. Defensive posture: no claim of the '776 patent has been tested at the PTAB, so all 20 claims stand un-cancelled and un-reviewed — but the surrounding Flexiworld family tells you the patent is a known quantity that prior challengers have had trouble beating, and the 2025 discretionary-denial regime makes a fresh petition against a 2002-priority patent materially harder to institute.
I searched specifically and repeatedly for a petition on this number; the 2022–2023 Flexiworld IPR wave (Roku and Unified Patents) targeted other Flexiworld patents, not this one. All proceedings below are therefore contextual, not proceedings on the '776 patent.
No proceedings on US 11,829,776 — what that does and doesn't mean
- No § 315(e)(2) estoppel has attached to anyone with respect to the '776 patent. Estoppel is patent-specific; the fact that Roku, Unified, and Lexmark litigated sibling patents does not bar any ground against the '776.
- No FWD, no certificate canceling claims, no Director Review, no CAFC appeal exists to cite. There is nothing on PTAB E2E for this patent number to link to.
- Caveat on completeness: absence from ODP + absence from indexed web sources is strong but not mathematically conclusive evidence of absence. The clean verification is a PTAB E2E case search filtering by patent number at https://ptacts.uspto.gov/ptacts/ — that is the Office's own record and should be the citation of record if you need one.
Related Flexiworld PTAB activity (different patents — context only)
Not proceedings on US 11,829,776. Listed because they define the challenger/owner playbook you will actually face.
| Proceeding | Petitioner v. PO | Patent | Key dates | Outcome |
|---|---|---|---|---|
| IPR2021-00714 | Roku, Inc. v. Flexiworld Technologies, Inc. | US 8,989,064 | Filed 2021-04-09; terminated 2022-10-21 (Docket Alarm) | Terminated; Docket Alarm lists status "Final Written Decision." Disposition not verified by me — treat as unconfirmed. |
| IPR2021-00715 | Roku, Inc. v. Flexiworld Technologies, Inc. | US 10,346,114 | Oral hearing 2022-07-20; panel Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal | Merits reached at hearing; final disposition not verified. |
| IPR2022-00775 | Unified Patents, LLC v. Flexiworld Technologies, Inc. | US 9,836,257 (claims 27, 28) | Filed 2022-04-08; FWD 2023-11-01 (Paper 41) | No challenged claims unpatentable — Flexiworld prevailed. Panel: Brent Dougal, Christopher Ogden, Terrence McMillin. |
| IPR2022-01114 | Roku, Inc. v. Flexiworld Technologies, Inc. | US 9,965,233 | POPR/mandatory notices 2022-07-18 | Not verified. |
| IPR2022-01267 / -01268 / -01269 | Roku, Inc. v. Flexiworld Technologies, Inc. | US 9,836,257 / 9,389,822 / 7,944,577 | Filed 2022-07-29; joint motions to terminate 2022-10-27 | Terminated by settlement (patent license agreement; terms confidential, filed under § 317(b)). |
| Ex parte reexam 90/019,971 | Unified Patents (requester) | RE48,066 | Request granted 2025-06-24 | Not an AIA trial; CRU found substantial new questions. (Unified Portal) |
The significance of IPR2022-00775: Unified attacked with Olgaard (2000-10-24) and Acharya (2000-12-22), and Flexiworld beat both by swearing behind them under pre-AIA § 102(e), proving conception at least as of 2000-10-22 through provisional-application drafts whose file-system metadata the Board credited as independent corroboration. The panel determined the drafts' metadata was "the most reliable indicator of the latest date each draft was completed." That is the single most important fact in this analysis — see the strategic summary.
Strategic summary
Claim status of US 11,829,776. All 20 claims — independent claims 1, 7, and 15 plus every dependent claim — are UNTESTED at the PTAB. None canceled, none confirmed, none amended. There is no IPR certificate to cite and no FWD language to quote. If you are a defendant, you cannot tell a judge or an adversary that any claim of this patent has been invalidated; you also cannot be told that any claim has been affirmed as patentable over art. Note also that the '776 patent issued 2023-11-28, so the PGR window (9 months from grant) closed 2024-08-28; in any event, because the application claims priority back to 2002-12-12, it is a pre-AIA first-to-invent patent and PGR was never available. IPR under §§ 102/103 on patents and printed publications is the only AIA vehicle left — and PGR-only grounds (§ 101, § 112) are off the table at the Board.
Estoppel and available grounds. Because no IPR has been filed against the '776, § 315(e)(2) estoppel binds nobody as to this patent. A defendant is free to raise any § 102/§ 103 ground it can support, including art that Roku or Unified used against sibling patents — those grounds are not estopped here. Two practical brakes: (1) if you or a privy already filed an IPR on the '776 (you did not, per the record above), estoppel is not yet triggered anyway; and (2) § 315(b)'s one-year bar runs from service of a complaint alleging infringement — if a demand letter has ripened into a served complaint more than one year ago, IPR is time-barred absent joinder, and you are confined to district court invalidity defenses.
Pattern signals. The same petitioners have run coordinated multi-patent campaigns against Flexiworld: Roku filed six-plus petitions across two rounds, and Unified Patents — a defensive aggregator — appears in the chain twice (IPR2022-00775 and the 2025 ex parte reexam of RE48,066). So this patent owner is a well-known NPE target, and its portfolio has been systematically challenged. What is striking is that the '776 patent, despite sitting in the same family (its parent applications produced US 7,805,720, US 8,295,757, US 8,595,717, US 9,116,723, and the abandoned US 2015/0381612) has never been petitioned — even though Flexiworld has asserted this family in Texas and Kentucky campaigns against Hisense, Roku, Sony, LG, and Lexmark. Two plausible readings: challengers concluded the strongest family claims sat elsewhere, or the priority-date problem (below) made the '776 a poor petition target.
The priority-date problem is the headline risk for a petitioner. The IPR2022-00775 FWD shows Flexiworld reliably proves a conception date of at least 2000-10-22 with corroborated provisional-draft metadata. The '776 patent claims priority to 2002-12-12 (provisional 60/433,196) and 2003-04-11 (provisional 60/462,080). Any § 102(e)/§ 102(a) art with an effective date after October 2000 can potentially be sworn behind. Before drafting a petition, map every reference's date against ~2000-10-22, not against the 2002/2003 filing dates.
And the 2025 PTAB regime is stacked against institution here. The February–March 2025 memoranda (rescinding the 2022 Fintiv guidance, creating a bifurcated discretionary-denial track) expressly added "settled expectations" as a discretionary factor keyed to patent age — with practitioners reporting heightened denial risk for patents in force more than about six years. A patent with a 2002 priority date is squarely inside that zone. Director Squires' October 2025 assumption of personal control over institution decisions has coincided with a sharp drop in institution rates and terse, largely unreasoned denials. The practical consequence: a petition against the '776 patent must be institution-proof on the merits from page one, because discretionary denial is a live and probably decisive risk.
One more flag, source-based and worth verifying. Google Patents' legal-status field for US 11,829,776 shows "Expired - Lifetime, expires 2024-09-12," with an "Adjusted expiration" entry of 2024-09-12 (source). I have not independently verified that against USPTO PatentCenter, and it is anomalous given the '776's 2023 grant date — it may reflect a terminal disclaimer or the family's pre-AIA 20-year term from an earlier parent. If accurate, it materially narrows the exposure: damages would stop at expiration, and any recovery is subject to the § 286 six-year lookback from suit. Have counsel pull the PatentCenter "Application Data" / term-adjustment tab before you price the case. This is exactly the kind of discrepancy that changes settlement value.
Recommended next steps
If you are a defendant being asserted on US 11,829,776:
- There is no FWD to cite. Do not build a § 315(e)(2) or collateral-estoppel argument — none exists. The absence is a signal in the other direction: well-asserted Flexiworld patents have attracted IPRs, so the fact that this one has not may mean prior challengers considered it weaker or harder to petition, not that it is overlooked.
- Confirm the term. Pull USPTO PatentCenter for US 11,829,776 and verify the expiration/adjustment status. If the patent expired 2024-09-12 as Google reports, the damages window is closed and the case is a licensing-value dispute, not an ongoing-royalty dispute.
- Run the priority-date exercise before drafting anything. Assume Flexiworld will prove conception at or before 2000-10-22 and will produce metadata-corroborated provisional drafts. Any ground resting on Olgaard-, Acharya-, or Moghadam-class art with post-October-2000 dates has already been beaten once (IPR2022-00775) and will likely be beaten again.
- Check § 315(b) immediately. One year from service of the complaint alleging infringement. If that date has passed, your IPR option is gone absent joinder to someone else's petition.
- If a petition is still viable, treat institution as the whole fight. Brief the discretionary-denial factors affirmatively in the petition itself — patent age/"settled expectations," parallel litigation posture, and Fintiv under the March 2025 framework. Do not assume a merits win gets you a trial.
- Coordination hygiene matters. Under General Plastic, an earlier petition by a joint-defense or industry-group affiliate can sink a later one. Before filing, confirm no co-defendant, supplier, or Unified Patents member has already petitioned the '776 (per the record, no one has) and document the absence of coordination.
If no PTAB activity exists, say so plainly — as here. The correct representation to a court or an adversary is: US 11,829,776 has not been the subject of any IPR, PGR, or CBM proceeding; all 20 claims stand as issued. The family context — a patent owner that won IPR2022-00775 outright on priority, settled out of the Roku IPRs, and now faces a Unified ex parte reexam on a different patent — tells you the likely shape of the fight, not its outcome.
Verification URLs: PTAB E2E case search — https://ptacts.uspto.gov/ptacts/ · Google Patents record incl. legal status — https://patents.google.com/patent/[US11829776B2](/patent/US11829776B2)/en · Unified Patents portal page for this patent — https://portal.unifiedpatents.com/patents/patent/US-11829776-B2 · IPR2022-00775 FWD as summarized — https://www.docketalarm.com/search/?q=patent%3A%289836257%29
Generated 9/29/2026, 11:31:18 AM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2016-09-06 · Assignment
CHANG, WILLIAM HO; VISWANATHAN, VINAYNATHANFlexiworld Technologies, Inc.
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record and related NPE signals before writing up.
Let me dig into the assignment specifics and litigation history.
Ownership & NPE Analysis — US 11,829,776 B2
Scope note. The full-text/family record supplied for this patent shows only one legal event touching ownership (Google Patents "Assigned to…" event, 2016-09-06). I could not retrieve the reel/frame number for this patent's assignment from the sources available to me (Google Patents' textual capture omits it, and I was unable to query the USPTO Assignment Center directly). I therefore do not invent one. Where I cite reel/frames, they are from sibling Flexiworld patents in the same family as pled in litigation documents, and I label them as such. Verify the '776 entry at: https://assignmentcenter.uspto.gov/ (search by patent number) or https://assignment.uspto.gov/patent/index.html
Inventors
| Inventor | Employer at filing (determinable?) |
|---|---|
| William Ho Chang | Flexiworld Technologies, Inc. — founder; signed USPTO papers as "President and Chief Technical Officer." Recorded mailing address Vancouver, WA. |
| Vinaynathan Viswanathan | Not determinable from the record. Appears only on the 2016-09-06 assignment alongside Chang; no address surfaced. |
Unusual patterns / notes:
- This application (15/042,044) is the only member of the family naming Viswanathan; every other family member names William Ho Chang + Christina Ying Liu. The inventor roster changed mid-chain (a CIP/continuation artifact), which is a drafting oddity worth flagging, but there is no evidence of inventor departures preceding a portfolio sale — the assignee never changed.
- No pattern of "all inventors leaving within 12 months" is observable here, because the assignee (Flexiworld) is founder-led and the lead inventor is the assignee's President/CTO.
Original assignee
Flexiworld Technologies, Inc. (a Washington corporation, Vancouver, WA) — named on the face of US 11,829,776 (continuation of 14/833,961; priority 2002-12-12).
- Primary line of business: patent holding / licensing / assertion. Flexiworld does not appear to sell any product embodying the claims. In the Lexmark litigation, Flexiworld itself pleaded it has "not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit" — i.e., a judicial admission of non-practice (Lexmark E.D. Ky. briefing, 5:22-cv-00097).
- Product embodying claims: none identified. Independent trackers (PlainPatent) describe it purely as an assignee-of-record with ~59 granted patents (2015–2023) and no commercial product footprint.
- Current status: Operating as a licensing/assertion entity (not dissolved, not acquired, not in bankruptcy). It is the current assignee of record and the named plaintiff in an ongoing multi-front assertion campaign (see below). The patent itself is Expired – Lifetime, adjusted expiration 2024-09-12.
Assignment timeline
Because there is exactly one recorded ownership instrument, the timeline is short. No post-issuance assignment, security interest, merger, or name change was recorded against this patent.
- executed on/about 2016 / recorded 2016-09-06 — Reel/Frame not exposed in accessible sources (verify at Assignment Center)
- Conveyance: Assignment (inventor → company)
- Assignor: CHANG, WILLIAM HO; VISWANATHAN, VINAYNATHAN
- Assignee: FLEXIWORLD TECHNOLOGIES, INC. (Washington corp.)
- Correspondent: not exposed in the captured record. (For context only — not an assignment correspondent — the recurring litigation counsel of record for Flexiworld across its PTAB matters is Nelson Bumgardner Conroy P.C., 3131 W. 7th Street, Suite 300, Fort Worth, TX 76107, per the 2021-10-04 Power of Attorney in PGR2021-00112 filed by William Chang; and the recurring prosecution firm on Flexiworld's issued patents is Chernoff Vilhauer LLP, with earlier prosecution by Kolisch Hartwell, P.C., Portland, OR.)
- Context: Internal/organic — inventors assigned to their own founder-controlled company. There is no acquisition, fire-sale, securitization, or asserter-transfer event in this chain.
Finding: This is the textbook "clean single-assignment" chain. The original assignee was the original applicant, remains the current assignee, and is the named plaintiff. There is no shell-entity hop to analyze.
(For cross-reference, sibling family members were recorded from Chang + Liu to Flexiworld at, e.g., Reel/Frame 028733/0064; 029112/0430; 039816/0200; 042385/0202; 043035/0229; 043675/0451–0454; 043806/0709; 044174/0659 — all pled in Epson, LG, Lexmark and Hisense complaints. Whether the '776 shares one of these reels is unverified.)
Timeline diagram
timeline
title Ownership of US 11829776
2002 : Family priority date
2003 : Parent application filed
2016 : Application 15 042 044 filed
: Assignment recorded to Flexiworld
2020 : Flexiworld sues Roku and Amazon
2021 : Flexiworld sues Epson Sony Hisense
2022 : Flexiworld sues Lexmark
2023 : Patent granted as US 11829776
2024 : Patent term expires
NPE / troll-pattern signals
Important framing: every transfer-based signal below is not present, because there is no transfer — the patent never left the original assignee. The NPE character here is of the "originating / founder-owned asserter" type, not the "acquired-shell-portfolio" type the checklist is tuned for. I say so explicitly rather than forcing the checklist.
Shell-entity transfer — NOT PRESENT. No recorded conveyance out of Flexiworld. No "IP / Holdings / Licensing" LLC transferee; no registered-agent address; assignee is a Washington corporation. The absence of this signal is not exculpatory — it simply means the asserter is the original owner rather than a downstream shell.
Known asserter in the chain — PRESENT (moderate evidence). Flexiworld is not on the enumerated lists (Acacia, Marathon, IV, Wi-LAN, etc.), but it is a high-frequency plaintiff tracked by Unified Patents (dedicated portal page for US-11829776 and dozens of Flexiworld-family patents) and by RPX Insight. Assertion campaign surfaced in the sources: Amazon & Roku (2020), Epson, Sony, Hisense (2021), Lexmark (2022), Xerox (2023), LG/LGE (2025), plus PTAB PGR2021-00111/00112 against Roku.
Repeat correspondent across the chain — NOT PRESENT (inapplicable). A single-link chain cannot exhibit recurrence. Flagged separately for completeness: the recurring litigation counsel is Nelson Bumgardner Conroy P.C. (Brent N. Bumgardner, Reg. 48,476; Robert A. Delafield II; Timothy E. Grochocinski; Charles Austin Ginnings), and recurring prosecution firm Chernoff Vilhauer LLP — but these are not assignment correspondents and do not satisfy the defined signal.
Cascading transfers — NOT PRESENT. Zero consecutive assignments, let alone chained LLCs.
Pre-litigation transfer — NOT PRESENT. The only assignment (2016) long predates the first asserted suits (2020–2021). There was no last-minute transfer to set venue or standing.
Bankruptcy fire-sale — NOT PRESENT. No insolvency; the patent term simply ran out (expired 2024-09-12).
Privateering — NOT PRESENT. Privateering requires an operating company spinning patents out to an NPE to assert on its behalf. Here the original assignee is the asserter; there is no separate operating-company backer.
Defensive aggregator — NOT PRESENT. Chain does not terminate at RPX/AST/LOT/Unified/OIN. Flexiworld is an active plaintiff, so the patent is not neutralized.
Additional concrete NPE evidence (not in your checklist, but decisive):
- Self-admitted non-practice in the Lexmark matter (patentee "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit").
- Mass notice-letter campaign ahead of suit — e.g., letters to Hisense dated 2021-10-14 and 2021-12-29, and to Xerox/Lexmark on 2021-07-23 and 2021-10-29 — the classic demand-letter-then-file sequence.
Verdict
NPE — high confidence.
The chain contains no assignment beyond the founder-to-company instrument recorded 2016-09-06, so Flexiworld is simultaneously the original assignee, current assignee, and named plaintiff — and it has judicially admitted it practices none of its asserted patents, then run a broad notice-letter-then-sue campaign against Amazon, Roku, Epson, Sony, Hisense, Lexmark, Xerox and LG. Two strong signals are independently satisfied: self-admitted non-practice and prolific, publicly tracked assertion activity (Unified Patents/RPX). The conventional shell-transfer and cascading-transfer signals are absent only because Flexiworld never sold the portfolio — this is an originating NPE, not an acquired-shell NPE. Because I could not confirm the reel/frame for the '776 assignment, verify the single-link chain at https://assignmentcenter.uspto.gov/ before relying on it.
Generated 9/29/2026, 11:31:19 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research this patent and its prior art citations. Let me run multiple searches.
Let me dig for the specific "References Cited" (patent citations) listed on the patent's front page.
US 11,829,776 B2 — Identification and Prior‑Art Analysis
Important honesty note up front: I was able to confirm the patent's identity and bibliographic data, but I was not able to retrieve the verified "References Cited" (front‑page) list of U.S. patent documents that the examiner actually cited against this specific patent (US 11,829,776). The Google Patents snapshot I fetched ends at the family/"families citing this family" tables and does not include the (56) References Cited block, and my searches did not surface the Justia/Unified Patents citation tables for this patent before I hit the tool limit. I will therefore not fabricate a citation list. Below I give (a) what is verified, and (b) the prior art that I could verify was used against related Flexiworld family patents, clearly flagged as unconfirmed for '776 itself.
1. Patent identification (interpreted literally)
| Field | Value |
|---|---|
| Patent number | US 11,829,776 B2 |
| Title | "Integrated circuit device that includes a protected memory component for transmitting protected data over a communication interface" |
| Application | 15/042,044 |
| Filing date | 2016‑02‑11 |
| Grant date | 2023‑11‑28 |
| Pre‑grant pub. | US 2016/0174068 A1 (2016‑06‑16) |
| Priority date | 2002‑12‑12 (claimed) |
| Inventors | William Ho Chang; Vinaynathan Viswanathan |
| Assignee | Flexiworld Technologies, Inc. |
| Status | Expired – Lifetime (adjusted expiration 2024‑09‑12) |
| Family ID | 33299904 |
Continuing‑application chain (per the "CROSS‑REFERENCES" text and family data): 15/042,044 → 14/833,961 (US 2015/0381612 A1, abandoned) → 14/089,622 (US 9,116,723) → 12/891,594 (US 8,595,717) → 10/823,513 (US 7,805,720) and a CIP of 10/734,481 (US 11,467,856); ultimate provisional priority 60/433,196 (2002‑12‑12) and 60/462,080 (2003‑04‑11).
2. Claim architecture (what a prior‑art reference must meet)
- Independent claims 1 (apparatus/IC memory device), 7 (method), 15 (wireless communication device with IC memory device).
- Claimed elements include: a graphical user interface on the device; a radio point‑to‑point wireless interface; a memory controller; a protected memory area (data inaccessible at the protected area to the user but accessible to the controller); an internal memory area storing a controller program; operations of authentication algorithm, encryption, wireless transmit of encrypted protected data, wirelessly receiving information back, and displaying that received information on the GUI.
- Dependent claims add device form factors (smart card, dongle, USB memory device, wireless communication device — claims 3, 10, 18), GUI‑entered authentication info such as password/PIN/biometrics (4, 13), device discovery (5), structural interface transmission (6, 14, 19, 20), and "security key" function (12).
The GUI display of the returned information, the internal (non‑user‑accessible) program memory area executed by the memory controller, and the return‑path reception + display are the features most likely to distinguish the claims from older secure‑memory/flash prior art — so a § 102 reference would need to disclose all of these in one device.
3. Prior‑art citations — status and what I could verify
I could not verify the examiner‑cited (56) references for '776 within this session. Critically, do not confuse the following with prior art:
- The Google Patents "Families Citing this family (123)" table (e.g., US 7,299,316; US 7,702,831; US 8,528,096; US 8,473,941; US 8,713,209; etc.) lists third‑party later patents that cite this family — these are forward citations, not prior art, and cannot anticipate '776 (they post‑date its 2002 priority).
- The "Patent Art (459)" list on Unified Patents similarly mixes forward/related art and is not the examiner's citation list.
What I did verify is prior art cited in PTAB proceedings against related Flexiworld patents, which may or may not overlap with the '776 citation list and which I flag as not confirmed for '776:
| Reference | Where used | Notes / potential § 102 relevance to '776 |
|---|---|---|
| U.S. 6,748,471 (Keeney) | Ex. 1004, IPR vs. US 9,965,233 | Printer/driver architecture — relevant to claim 1's install/launch-of-application aspects, not to the protected‑memory/GUI claims. Weak for '776 § 102. |
| U.S. 6,091,507 (Vatland) | Ex. 1005, IPR vs. US 9,965,233 | Network print data handling — not directed to protected memory + radio P2P; unlikely § 102. |
| U.S. 7,849,198 (Olgaard) | Ex. 1005, IPR2022‑00775 vs. US 9,836,257 | RF/device test — not on point for '776. |
| U.S. 5,917,542 (Moghadam) | Ex. 1006, IPR2022‑00775 | Data network — not on point. |
| US 2002/0080091 (Acharya) | Ex. 1007, IPR2022‑00775 | Digital content — possible § 102/§ 103 relevance only to "transmitting content to a device" language. |
| U.S. 7,136,999 (Griffiths) | Ex. 1008, IPR2022‑00775 | Content delivery — same caveat. |
| U.S. 6,285,665 (Chuah) | Ex. 1013, IPR2022‑00775 | Wireless comms — same caveat. |
Conclusion on § 102: Based on the verified evidence available to me, none of the references I could actually confirm is a clean anticipatory (single‑reference) art for independent claims 1, 7, or 15 of '776. Those claims require a combination (protected memory area + controller‑executed internal program + authentication + encryption + radio point‑to‑point transmit + GUI display of returned information) that the confirmed references do not disclose in a single device.
4. What I recommend to complete this task
To give a rigorous, per‑reference § 102 mapping for '776, retrieve the authoritative front‑page citation list from:
- USPTO Patent Center / Patent Full‑Text (PATFT) for 11,829,776 — the "References Cited" section.
- Justia page (patents.justia.com/patent/11829776) — "References Cited" and "Patent History."
- The file wrapper for application 15/042,044 — examiner citations, office actions, and any Form PTO‑892 (Notice of References Cited).
I did not obtain that specific list, so I am explicitly declining to invent § 102 anticipations for individual references I could not verify were cited against this patent.
5. Methodological caveats
- The patent's number, dates, assignee, inventors, claims, and continuation chain above are taken literally from the fetched patent text and confirmed across Google Patents, Justia, and Unified Patents.
- One search result surfaced an unrelated "EP 11829776 A" (an EPC application number for a tournament‑gaming patent) and an unrelated SNP "rs 11829776" in US 9,434,991. These are not the same identifier and were excluded, per the instruction to interpret alphanumeric IDs literally and not auto‑correct.
- The "Priority Date: 2002‑12‑11" shown on Unified Patents conflicts by one day with the "2002‑12‑12" shown everywhere else; I have used the authoritative document date (2002‑12‑12) and note the discrepancy rather than reconciling it.
Generated 9/29/2026, 11:31:02 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior-art landscape and the citation record for this patent before building the §103 analysis.
Let me pin down a few specific pre-2002 references so the combinations rest on verifiable art.
§103 Obviousness Analysis — US 11,829,776 B2
"Integrated circuit device that includes a protected memory component for transmitting protected data over a communication interface"
Flexiworld Technologies, Inc. | App. 15/042,044 (filed 2016‑02‑11) | Granted 2023‑11‑28 | Expired‑Lifetime (page states adjusted expiration 2024‑09‑12)
Source of record: https://patents.google.com/patent/US11829776/en
1. Bottom line up front
- The claims are, on their face, a classic KSR-style combination case. Every structural element of claim 1 (IC memory device + controller + partitioned protected memory + short-range radio + authentication + encryption) was separately and well known by the 2002‑12‑12 priority date, and the specification itself concedes that "USB wireless (e.g., Bluetooth, WiFi, IrDA) device[s] or 'dongle[s]'" and "Flash memories coupled with a USB interface" were already "convenient and portable storage devices."
- The single hardest limitation to meet is the GUI limitation of claim 1(l)–(n) / claim 7 / claim 15: displaying on a graphical user interface at the IC memory device itself information wirelessly received back from the peer wireless computing device. This is the limitation on which any invalidity contention should be expected to turn, and the "Prior Art" data on the Google Patents page supplies no direct reference for it.
- The largest single lever is the priority date. The page itself shows inconsistent priority data across the family (see §2.3). If the claims do not get 2002‑12‑12 benefit — plausible, because the "graphical user interface"/"internal memory area" claim architecture and the "enabling … subsequent to establishing the connection" recitations were added deep in the continuation chain (the immediate parent, 14/833,961, was abandoned) — the effective date moves to 2015‑08‑24 or 2016‑02‑11 and the §103 attack becomes trivial (wireless SD cards, display‑equipped USB drives, NFC secure elements, Bluetooth LE, etc.).
2. Scope, sources, and interpretive caveats
2.1 What the page's "Prior Art" section actually contains
Literally, the page's prior-art data is:
- Prior art keywords: "integrated circuit / wireless communication / wireless / protected / protected data."
- Prior art date (listed): 2002‑12‑12 (the earliest provisional). The page separately lists 2000‑11‑01 as the priority date for several family members.
- "Families Citing this family (123)" — these are forward citations (references that cite the Flexiworld family), with an asterisk marking examiner citations.
- Related/family applications and applications claiming priority (8).
I am using that data as instructed, but with two required warnings:
- A forward citation is not automatically §102 prior art against these claims. Most of the 123 citing references postdate 2002‑12‑12 (e.g., US 7,382,386 B1, 2004‑05‑21; US 7,711,086 B2, 2004‑12‑15; US 9,906,893 B2, 2016). They are useful as evidence of the knowledge and level of skill in the art (and as §102(e)/§102(a)(2) art only if the priority date is lost), not as §102(b) art.
- Several entries in that list are the patentee's own earlier applications with 2000‑11‑01 / 2000‑09‑05 / 2000‑11‑20 priority (US 7,099,304 B2; US 10,860,290 B2; US 10,915,296 B2; US 11,204,729 B2; US 7,318,086 B2; AU 2002243279 A1; US 2002/0097418 A1). Same-origin Flexiworld/Chang disclosures generally are not "by others" under pre‑AIA §102(a)/(e) and are not usable as prior art against this family absent a different inventive entity. Their real value is as admissions about the state of the art (see §5.4).
2.2 Statutory framework
Because App. 15/042,044 is a continuation asserting only pre‑2003 priority (and the family's petitions were litigated under pre-AIA law — the Roku petition in the same family expressly challenged claims "under pre‑AIA 35 U.S.C. § 103," https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549997](/patent/1549997)/…), the analysis below uses pre‑AIA §102/§103:
- §102(b) statutory bar: publications/patents more than one year before the 2002‑12‑12 effective filing date → critical date 2001‑12‑12.
- §102(e): U.S. patents/published applications filed before 2002‑12‑12.
- §103: as amended by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP §§2141–2145.
2.3 The priority problem (flagging it, not resolving it)
The page lists two different priority dates across the family — 2000‑11‑01 and 2002‑12‑12 — including the anomaly that "Related Parent Applications (1)" lists US 14/833,961 with priority date 2000‑11‑01, while the instant application is listed at 2002‑12‑12. Per the operating rule, I do not auto-correct these. Practically:
- Claim 1 recites a "graphical user interface" at the integrated circuit memory device and an "internal memory area" storing a program that "support[s] at least part of functionalities of the memory controller." Neither concept appears in the 2003-era autorun/wireless disclosure, which describes a USB microcontroller + flash memory with autorun firmware and (at most) an "optional external control switch 165" and an "interface or status indicator (not shown) such as an LCD." A §112 ¶1 written-description attack on the 2002‑12‑12 benefit, if successful, relocates the effective date to 2015/2016 and opens an enormous §102/§103 window.
- Any invalidity contention should be pleaded in the alternative: Grounds A (2002 priority) and Grounds B (2015/2016 priority).
3. Claim 1 element decomposition (representative claim)
| # | Limitation (claim 1) | Nature |
|---|---|---|
| 1a | IC memory device transmitting protected data to a wireless computing device | preamble |
| 1b | graphical user interface | structural |
| 1c | wireless interface with radio component; local point-to-point radio connection | structural |
| 1d–1e | memory controller; memory component | structural |
| 1f | protected memory area; data inaccessible at that area by user, accessible by controller; data or software | functional/structural |
| 1g | internal memory area storing program inaccessible by user, executable by controller | functional |
| 1h | establishing the point-to-point radio connection | method step |
| 1i | controller accesses protected data | method step |
| 1j | controller operates at least part of an authentication algorithm | method step |
| 1k | controller operates at least part of an encryption operation | method step |
| 1l | wirelessly transmits the encrypted protected data | method step |
| 1m | wirelessly receives information back, in response | method step |
| 1n | displays, on the GUI at the device, to the user, the received information | method step |
| 1o | protection = storing in protected area + "requiring use of" the device for transmission | result-oriented |
Claims 7 and 15 are the method and "wireless communication device" counterparts; claim 15 adds "executing, by the memory controller, the program" as the causal trigger and folds authentication into the access step. Independent claims 1, 7 and 15 rise or fall together on the same art.
Two claim-drafting observations that help an obviousness attack:
- "at least part of an authentication algorithm" / "at least part of an encryption operation" lets the two halves live in different components, so any reference showing any portion of authentication or crypto (e.g., a challenge-response or a link-key handshake) reads on the element.
- "requiring use of the integrated circuit memory device for … transmitting" (1o) and "protection … by storing … and by the wireless transmission" (claim 9) are result-oriented limitations that add no structural weight (MPEP §2114; In re Schreiber).
4. The art available for combination
| Ref. | Identity / date | Status (pre-AIA, 2002‑12‑12 date) | What it teaches |
|---|---|---|---|
| JP 2002‑329180 A (JPA 2001‑133294, filed 2001‑04‑27, pub. 2002‑11‑15) — "Memory card having wireless communication function and data communication method therefor" | https://jglobal.jst.go.jp/detail?JGLOBAL_ID=200903050430417803 | §102(a)/§102(e) analog; publication before 2002‑12‑12 filing, within 1 yr of it | Composite memory card with memory means (flash 4), wireless communication means (antenna 2, wireless controller 3), crypto/decryption means (crypto IC 7), and control means (multi‑I/O controller 5) that performs access control to the memory via the communication means and sets security / non-security modes; expressly motivated by "security of data input to/output from the memory." |
| US 6,324,537 B1 (Moran, M‑Systems Flash Disk Pioneers; filed 1999‑09‑30; issued 2001‑11‑27) — "Device, system and method for data access control" | https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2019-00932/…/Ex_1039.pdf | §102(b) (issued >1 yr before 2002‑12‑12) | Access-control chip that controls all access to a flash storage device; permissions; denies access absent a suitable permission; expressly suggests single chip with microprocessor + firmware, USB, and PIN identification; states goal that data remain protected even if the storage device is stolen — the exact policy rationale behind 1f/1o. |
| EP 1 085 395 A2 (Phone.Com Inc.; filed 2000‑09‑13; published 2001‑03‑21; priority US 394,655, 1999‑09‑13) — "Access control system for files on a memory card" | https://patentimages.storage.googleapis.com/2d/74/ef/7b9cc7054b9c29/EP1085395A3.pdf | §102(b) | Smart card with a file system containing a control file; control information governs whether data read from a data file is authorized — i.e., an in-card authentication/authorization gate to protected data. |
| WO 02/019073 A2 / US 2002/0044663 A1 / EP 1 362 271 A2 (Sun Microsystems; GB 0021456 priority 2000‑08‑31; PCT/US2001/025506 filed 2001‑08‑15; US pub. 2002‑04‑18) — "Portable encryption keys in a network environment" | https://patents.google.com/patent/DE60106981T2/en ; https://insight.rpxcorp.com/patent/US20020044663A1 | WO/US pub. after 2001‑12‑12 but filed before 2002‑12‑12 → §102(e) | Portable storage device, "for example a secure smart card," with storage and an access controller that "control[s] access to the storage by implementing key‑key encryption"; the host supplies a request key and receives an access key — an authentication handshake — and then sends an encrypted command to reach the secure storage portion. |
| US 2005/0055561 A1 (Böker et al.; PCT/DE02/00540 filed 2002‑02‑14; DE priority 2001‑03‑20) | https://patentimages.storage.googleapis.com/2f/fa/6e/438c40bbe41a69/US20050055561A1.pdf | §102(e) (and §102(a) if the DE priority is reached) | Data carrier with non‑volatile memory + microcontroller performing cryptographic operations; "Access to the memory is possible only via the microcontroller"; user authentication before data is stored; chip‑card form factor. |
| Bluetooth Core Specification v1.0 B (Dec. 1999); IEEE 802.11‑1999 | Used as Ex. 1006 / Ex. 1008 in the same family's PTAB challenge | §102(b) printed publications | Define (i) short-range point-to-point/piconet radio links and device discovery, and (ii) mandatory authentication (link key/pairing) and link-level encryption — the very "authentication algorithm" + "encryption operation" combination recited in 1j/1k. |
| US 2002/0058499 A1 (Ortiz), US 7,356,347 (Kammer), EP 0 756 397 A2 (Varadharajan) | Petitioner's Exhibit list, Roku's '257 petition (same family) | pre‑AIA §103 art of record in this family | Remote/portable wireless output, wireless device discovery/association, and cryptographic authentication, respectively. |
| The '776 specification's own admissions | US 11,829,776, https://patents.google.com/patent/US11829776/en | Applicant admissions / background | "USB wireless (e.g., Bluetooth, WiFi, IrDA) device or 'dongle'"; "Flash memories coupled with a USB interface hav[e] become convenient and portable storage devices"; "the firmware acts as bridge components"; "Private sections can be used to store installable data or executable software that cannot be viewed or accessed by the user"; authentication "may be a password-based mechanism or a more involved cryptographic algorithm." |
5. Grounds of rejection
GROUND I — JP 2002‑329180 A in view of Moran (US 6,324,537 B1), and further in view of the Bluetooth Core Specification v1.0 B
Covers claims 1(a)–(l), 7, 15, 2, 8, 9, 17.
- 1a–1e, 1h, 1l: JP '180 discloses a memory card (= IC memory device) having memory means and wireless communication means with an antenna and wireless controller, i.e., a radio link to a peer device. Adding a memory controller is inherent in JP '180's "multi‑I/O controller" and is exactly what Moran discloses (a single chip with a microprocessor executing firmware that controls all access).
- 1f, 1g, 1i: JP '180's controller performs access control of the memory through the communication means and sets a security/non‑security mode; Moran supplies the legal architecture the claims describe — data that is inaccessible to the user at the storage device but accessible to the access‑control chip, enforced by permissions stored in non‑volatile memory, with the express purpose that stealing the device does not expose the data. Moran also discloses the "program stored in memory and executed by the processor" structure of 1g.
- 1j: JP '180's crypto IC plus Bluetooth spec's pairing/link‑key requirement disclose an authentication algorithm; Moran's PIN/permission check discloses a second form.
- 1k–1l: JP '180 expressly discloses encryption/decryption means for data written to/read from the memory, so transmission of encrypted data is a direct reading (and the link-level encryption of the Bluetooth spec independently supplies it).
Motivation to combine (KSR, MPEP §2143): (i) same field of endeavor — portable IC memory devices and their data security; (ii) the combination is the predictable use of prior-art elements according to their established functions — JP '180 already pairs a radio with a memory card, and Moran's contribution is the known chip-level access-control technique the Office has repeatedly accepted for exactly this problem; (iii) the prior art itself supplies the reason: Moran's stated object (protect data even if the device is removed/accessed by an unauthorized user) is the same problem JP '180 states it is solving ("security of data input/output to the memory"); (iv) market demand: the '776 specification concedes that USB flash drives and wireless dongles were "convenient and portable" commodities, and a POSITA seeking to add security to a wireless memory card had only the well‑traveled options of partitioning memory plus controller-enforced permissions (Moran) and cryptographic protection (JP '180, Sun).
GROUND II — Sun WO 02/019073 A2 (US 2002/0044663 A1) in view of EP 1 085 395 A2, and further in view of US 2005/0055561 A1
Covers claims 1(f), 1(i)–(k), 12, 15, and the "security key" theory of claim 12.
- Sun discloses a portable storage device ("for example a secure smart card") with storage and an access controller that enforces key-key encryption to reach a secure storage portion, using a request-key/access-key handshake and encrypted commands — i.e., "the accessing of the protected data … includes an authentication algorithm" (claim 15) and "operating … at least part of an encryption operation" (claim 1k).
- EP 1 085 395 supplies the in-card authorization determination over a file system on a smart card (the "protected memory area" vs. ordinary files architecture of 1f/1g).
- US 2005/0055561 A1 supplies the microcontroller-only access model and user authentication (reinforcing claim 12's "security key" characterization).
- Motivation: Sun and EP '395 are both directed to the identical problem (protecting data on a portable secure IC storage device and controlling who may read it) and to the identical device class (chip/contact smart cards). A POSITA implementing a wireless-capable secure card would apply the card-side access controller and key exchange of Sun to the wireless card of Ground I as a matter of design choice and known-technique-to-improve-similar-device (KSR). The claims' "at least part of" qualifiers make the combination dispositive rather than merely suggestive.
GROUND III — Any of Grounds I/II in further view of a display-bearing portable device reference (for the GUI limitation 1b/1n)
Addresses the only genuinely contestable element. See §6.
GROUND IV (alternative, only if the 2002‑12‑12 benefit fails) — 2003–2015 art
If the effective date moves to 2015‑08‑24 / 2016‑02‑11, the following become §102(a)(1)/§102(a)(2)/§103 art and the GUI and "secure element" limitations become unremarkable:
- The page's own citing family includes US 8,528,096 B2 (STM, 2005‑10‑07) "Secure universal serial bus (USB) storage device and method" and US 9,905,893 B2 / US 10,165,612 B2 (I/O Interconnect, 2016) — a "method for making a host personal computer act as an accessory in a Bluetooth piconet" — which together describe exactly a wireless secure memory appliance pairing with a host.
- More importantly, the sibling Flexiworld publications themselves (US 2015/0381612 A1, "Integrated Circuit Device That Includes A Secure Element And A Wireless Component…") and US 11,662,918 B2 ("Wireless communication between an integrated circuit memory device and a wireless controller device," https://patents.justia.com/patent/[11662918](/patent/11662918)) describe the same secure-element architecture. These are the same family and not prior art to a continuation, but they demonstrate that the claim concepts were commercially and technically conventional by 2015, undermining any argument that the architectural choices were inventive as of that later date.
6. The pivot: limitation 1n (display, at the device, of information received back)
This is where a challenger must be candid:
- The specification support is thin. The '776 written description describes an "optional external control switch 165" and an "interface or status indicator (not shown) such as an LCD displaying text or image, lights or sound for status indication," and FIG. 14 features that are "launched in the computing device 170" — not displayed on the IC device. Claim 1's requirement that the device itself display the information wirelessly received from the wireless computing device is not plainly described in the 2002/2003 disclosure. This is simultaneously (a) a §112 argument, and (b) the reason to plead the later priority date in the alternative.
- The art of record on the page does not directly supply a display-bearing memory card or dongle. The best candidates are: (i) the contactless smart card / wireless transaction module art reproduced in the family's PTAB record, which describes a wireless device comprising "a communications interface and a contactless smart card interface" whose "controller may be a microprocessor and the user interface may include a microphone, speaker, key pad/board, micro-camera, display screen, touch screen or any other input/output device" (petition materials at https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1529525](/patent/1529525)/…) — caveat: I could not verify that reference's publication number or date from the available snippet, so it must be obtained and date-qualified before use; and (ii) general-purpose PDA/smart phone art (the '776 specification itself lists "PDA, smart phone" as host devices, and the page's Flexiworld family references include US 11,204,729 B2, "…smart devices…"), which supplies the display-with-wireless-reception concept but not the "IC memory device" form factor.
- The KSR/MPEP fallback argument (to be run even without a perfect reference): displaying status/return information from a paired device on the initiating device's own user interface is (i) a predictable design choice from a finite set of known options (LED/beeper vs. LCD/text display — both named in the specification itself), (ii) an obvious re-arrangement of parts in which each element performs its known function (MPEP §2144.04), and (iii) motivated by the recognized usability and security benefits of user-visible confirmation/result feedback (e.g., confirming a successful transfer, or displaying a one-time/authentication prompt — a benefit the specification itself claims for its FIG. 14 GUI).
- Practical recommendation: run a targeted search for pre‑2002 art on (a) display-equipped smart cards / IC cards with alphanumeric displays, (b) portable electronic devices with LCDs that receive data over infrared/Bluetooth (e.g., organizers, pagers, meter-reading terminals), and (c) battery-/display-equipped USB "security token" devices. Absent such a reference, the combination for 1n rests on the design-choice rationale, which is a defensible but weaker position.
7. Dependent-claim outcome (with the same combinations)
| Claim | Element | Assessment |
|---|---|---|
| 2, 9, 17 | protection = protected area + decryption/encryption + wireless transmission | Result-oriented restatement of 1f/1k/1l; obvious over Grounds I/II. |
| 3, 10, 18 | smart card, dongle, USB memory device, wireless communication device | All four forms are conventional; the '776 spec itself names smart card, USB memory device and wireless dongle; Sun calls its device a "secure smart card." |
| 4, 13 | obtain auth info (password, PIN, biometric) via GUI before establishing the connection | Obvious over Bluetooth pairing/PIN entry; Moran expressly discloses PIN identification; biometric authentication on smart cards was known (and appears in the family's own PTAB record discussing fingerprint/iris/voice capture and encryption of biometric data for authorization). |
| 5 | discovering the wireless computing device | Bluetooth inquiry/discovery and IEEE 802.11 scanning are core, mandatory parts of the cited standards — anticipatory-flavored disclosure. |
| 6, 14, 19, 20 | structural interface; transmit over the structural connection to a reader/computing device | Plain alternative data path; obvious in view of USB flash drives + Sun's device-reader architecture. |
| 11 | smart card + reader | Directly Sun/EP '395. |
| 12 | functions as a security key | Directly Sun (encryption-key-carrying smart card) and Moran. |
| 16 | provide device interface description | Flexiworld's own autorun/Enumeration disclosure (FIG. 3, "device interface description," "Mass Storage Class, SCSI transparent command set," "USB Bluetooth dongle") — and the specification frames that as background USB technology. |
8. Rebutting likely secondary considerations
- Family litigation / licensing. The page flags "Family has litigation" (Darts‑IP family 33299904) and the public record shows Flexiworld suits against Roku, Lexmark, Sony and others, with Microsoft as a licensee (Roku §287 briefing; https://cases.justia.com/federal/district-courts/kentucky/kyedce/5:2022cv00097/98438/44/0.pdf). Licensing and commercial success can rebut obviousness, but only with a nexus to the claimed subject matter. Here the asserted families are about wireless output/printing, not about the "GUI at the IC memory device displaying received information" element, so nexus is weak. Flexiworld's own pleadings also state it "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit," cutting against commercial-success evidence.
- PTAB outcomes are mixed and are not a legal bar. In the same family: IPR2022‑00775 ended with a Final Written Decision that no challenged claim (27, 28 of the '257 patent) was shown unpatentable (https://www.docketalarm.com/cases/PTAB/IPR2022-00775/…); in IPR2021‑00713/‑00714, institution was denied/undermined on Grounds 1 and 3, with the Board noting that "Yamaguchi is not prior art" (https://www.docketalarm.com/cases/PTAB/IPR2021-00714/…/Exhibit-2042-Patent_Owners_Demonstratives.pdf). Those outcomes turned on the specific reference dates and claim language in those cases — they do not estop a different, properly dated combination against the '776 claims.
- Copying / industry recognition. The 2002 press coverage in the record ("Flexiworld's concept is ahead of its time," The Columbian, Apr. 18, 2002) is evidence of recognition, but is directed to the wireless-output concepts, not the secure-data-transmission claims.
- On-sale/public-use caveat. The same 2002 press activity raises a possible §102(b) issue for Flexiworld (activity in 2002 relative to a 2016 filing), unless the 2002 benefit holds — another reason the priority question in §2.3 is the fulcrum of the case.
9. Recommended next steps
- Lock the effective filing date. Chart claim 1 against the 2002‑12‑12 provisional (60/433,196), 2003‑04‑11 provisional (60/462,080), 10/734,481, and 10/823,513 disclosures for "graphical user interface," "internal memory area," and "displaying … information … wirelessly received." If any limitation is unsupported, re-run all grounds with a 2015/2016 date.
- Verify and date-qualify the display reference for limitation 1n (see §6) — this is the difference between a strong and a speculative petition.
- Obtain the JP 2002‑329180 A certified translation and its family members, and confirm the US-family equivalent for §102(e) purposes.
- Deploy the specification's own admissions ("USB wireless … dongle," "Private sections … cannot be viewed or accessed by the user") as the motivation-to-combine statement rather than relying solely on the references themselves.
- Plead in the alternative: Grounds I–III at 2002‑12‑12, and Ground IV at 2015/2016.
Caveat on identifications: several identifiers above are quoted exactly as they appear in the sources retrieved (including the page's internally inconsistent priority entries and the 2002‑12‑12 / 2000‑11‑01 mix); I have not corrected any of them, and the JP/EP items should be confirmed against the official registers before being relied upon in a filing.
Generated 9/29/2026, 11:32:22 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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