Invalidity dossier

US 5826244

Method and system for providing a document service over a computer network using an automated brokered auction

Current assignee: Xerox Corp

Added 9/24/2026, 2:31:42 PM

At a glanceNo PTAB challengesNo litigation on fileFinancial Technology (FT)

Active provider: DeepSeek · deepseek-flash

Patent summary

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

✓ Generated

I'll search for this specific patent number across USPTO and CAFC-related sources.

Research note on sources

  • I searched for the exact string 5826244 (and "US patent 5826244"). USPTO/Google Patents, Justia, and uspto.report records all resolve to a single grant: US 5,826,244.
  • I found no authoritative U.S. Court of Appeals for the Federal Circuit (CAFC) 2026 docket activity involving patent 5826244. Searches returned patent-office and aggregator records only. Given the patent's recorded legal status (Expired – Lifetime, anticipated expiration 2015‑08‑23), a 2026 CAFC appeal on this patent would be unusual; I cannot confirm any 2026 CAFC proceeding, and I am flagging that as an absence of evidence rather than a verified negative. (I also cannot run a live PACER/CAFC docket query directly — the searches returned no docket hits.)
  • Where a third-party aggregator (uspto.report) disagrees with the authoritative full text you supplied, I follow the full text and note the discrepancy below.

Bibliographic data (from the authoritative full text and corroborating records)

Field Value
Patent number US 5,826,244 (US5826244A)
Title Method and system for providing a document service over a computer network using an automated brokered auction
Inventor Bernardo A. Huberman (Palo Alto, CA) — sole inventor
Original/current assignee Xerox Corporation (Stamford, CT)
Application number 08/518,632
Filing date 1995‑08‑23
Priority date 1995‑08‑23
Issue (publication) date 1998‑10‑20
Legal status Expired – Lifetime (anticipated expiration 2015‑08‑23)
Primary examiner Stephen R. Tkacs
Classification US 705/37 (also 705/26, 705/35); CPC G06Q30/06, G06Q30/08, G06Q40/00, G06Q40/04
Related filings JP counterpart JP H09114907A (priority date 1996‑08‑15); continuation US 09/173,908 → US 6,078,906 (filed 1998‑10‑16, issued 2000‑06‑20)
Incorporated by reference U.S. Pat. No. 5,287,194 (Lobiondo, "Distributed Printing")

Priority-chain note (flagged per the "no auto-correct" rule): the continuation US6078906 carries the identical title, inventor, assignee, and abstract, and the search results refer to it as a continuation of application 08/518,632, now U.S. Pat. No. 5,826,244. That is directly from its specification text, not an assumption.

Abstract (verbatim from the authoritative text)

"A system and method to enable and facilitate networked, automated, brokered auctioning of document services. A plurality of processes are executed, including a customer process representing a customer, a supplier process representing a supplier, and a broker process capable of serving as an intermediary between the customer and supplier processes. The broker process is provided with a description of a document service. Responsively to the description thus provided, an auction for the document service is conducted, as follows: a customer or supplier process submits a bid for the document service; the broker process receives bidding information including the submitted bid; the broker process attempts to establish a price for the document service responsively to the received bidding information and, if a price can be established, establishes the price; if a price is established, the broker process proposes a transaction wherein the document service is to be provided at the established price; and if the proposed transaction is accepted, it can proceed automatically."

Plain-language overview of the independent claims

The patent has three independent claims — claims 1, 14, and 20 — all drafted as method claims, plus one dependent claim (21) that narrows the subject matter of claim 20.

Claim 1 — the core single-bidder-side auction method.
Run, on one or more processors, three software actors: a customer process, a supplier process, and a broker process that sits in the middle. Give the broker a description of a commercial document service. The broker then runs an auction that includes: a participant submits a bid; the broker receives bidding information including that bid; the broker tries to automatically establish a price from that information; if the price can be established, it is established; and if a price exists, the broker proposes a transaction to provide the service at that price. The claim closes with the supplier, once the proposal is accepted, initiating performance of the document service over the computer network.

Claim 14 — the many-buyers/many-sellers (double) auction method.
Run two collections of participant processes (customer processes and supplier processes) plus a broker, again on processors. Provide a description of a commercial document service to the broker. The auction involves: a set of bids, each from a participant process; the broker receiving them; the broker automatically determining whether the bids can be reconciled to establish a price; and, if they can be reconciled, establishing the price. Then the supplier whose bid matches the established price initiates performance over the network.

Claim 20 — the price-establishment method without the proposal/acceptance step.
Same three-actor architecture and same "description of a document service" (note: this claim says "a document service," not "a commercial document service" as in claims 1 and 14). Submit a bid; the broker receives bidding information including it; the broker attempts to automatically establish a price; and if the price can be established, it is established. Then the supplier bidding the established price initiates performance over the network. Claim 20 omits the "propose a transaction" and "if accepted" limitations present in claim 1, making it the broadest of the three independent claims in that respect.

Claim 21 (dependent on 20) limits the document service to one selected from the group consisting of printing, copying, scanning, interpretation, text recognition, image recognition, editing, reproduction, binding, colorization, transmission, mailing, storage, retrieval, conversion, authentication, searching, shredding, recycling, and disposal.

Notable dependent-claim themes (for context, not independent scope): where the service description originates (customer request, supplier offer, or broker-specified — claims 2–4); who bids (customer vs. supplier — claims 5–6); "auction safeguards" such as a price limitation or a participant's right to accept/decline (claims 7–10); broker fee determination and invoicing (claims 11–12); and addition of a third participant process (claim 13), which anticipates the multiple-customer/multiple-supplier auction of claim 14.

Source discrepancy to flag

The third-party aggregator uspto.report's page for 5826244 displays a claim set beginning with a claim 1 reciting "a first collection of participant processes… selecting… a first preferred process… a second preferred process…" and a claim 2 drawn to "a system comprising a collection of computing nodes." That language does not match the authoritative US5826244A full text you supplied (in which claim 1 is the single-bidder-side method and claim 2 is a dependent claim). The uspto.report page for 6078906 carries word‑for‑word the same abstract, references, and that same claim set, so the mismatch appears to be an aggregator data-mixing artifact between the parent and its continuation. I am treating the authoritative full text as controlling and not "correcting" the record either way.

Uncertainty statement

  • The bibliographic fields (patent number, title, inventor, assignee, application number, filing/issue dates, classification, examiners) are corroborated by multiple records and by the authoritative text, and I have high confidence in them.
  • I have no authoritative information on any 2026 CAFC docket for this patent; absence of search hits is not proof that no such proceeding exists.
  • I have not independently verified the current assignment/security-interest chain (the record shows Bank One, N.A. and JPMorgan Chase security interests in 2002–2003 and a release by JPMorgan Chase as successor agent recorded 2022‑09‑07), and I make no assertion about present ownership beyond the listed assignee.

Generated 9/30/2026, 11:13:58 AM

Cases on file (0)

Specific litigation cases in our database that name US patent 5826244. 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.

✓ Generated

I'll research litigation involving US 5826244 specifically. Let me run targeted searches.

Litigation Search Report — US Patent No. 5,826,244

Patent identified (confirmed, literal ID): US 5,826,244 B1 (U.S. App. No. 08/518,632), "Method and system for providing a document service over a computer network using an automated brokered auction." Inventor: Bernardo A. Huberman. Assignee: Xerox Corp. Filed: 1995‑08‑23; Granted: 1998‑10‑20. Google Patents legal status: Expired – Lifetime (anticipated expiration 2015‑08‑23). Related family members include US 6,078,906 (continuation, filed 1998‑10‑16) and JP H09114907A.


Result: No known patent litigation found for US 5,826,244.

Plaintiff(s): None identified
Defendant(s): None identified
Jurisdiction: N/A
Case number: N/A
Filing date: N/A
Outcome / current status: N/A — no infringement, declaratory-judgment, ITC, or PTAB proceeding involving this patent was located.

I searched for the specific number and its variants ("5826244," "5,826,244") across patent litigators' and aggregator surfaces, including attempts to reach Unified Patents, RPX Insight, CourtListener, Docket Alarm, and general web/court-document results. Every hit that matched the string was not a case against this patent. I did not return any case built on a similar-but-different number.

What the searches did return (and why each is not this patent's litigation)

Hit Why it is irrelevant
JP 5826244 B2 (Square Enix game system, granted 2015‑12‑02) A different, foreign patent document. The digits 5826244 coincide; the ID must be read literally, so this is not US 5,826,244.
Justia / Google Patents pages citing "5826244 – October 20, 1998 – Huberman" These are prior-art citations to US 5,826,244 in other patents (e.g., US 8,751,326; US 11,323,428; US 10,970,463). Being cited as prior art is not litigation.
Baxter v. McGaw (Fed. Cir.) referencing a '234 patent A different patent (medical IV administration), unrelated.
Xerox antitrust decisions (CCS / ISO) mentioning Xerox patents Antitrust dispute over Xerox's parts/service patents; not an assertion of 5,826,244.
Lithuanian business-registry notice "Nr. 5826244"; JP 5826244 PDF pagination; AT&T/Pantech complaint pages Coincidental numeric matches (notice numbers, page numbers), not patent-case references.

Corroborating context from the patent record itself

  • The Google Patents record for US 5,826,244 shows no "Litigation" / lawsuit entry and no asserted-patent activity.
  • Its recorded reassignments (Bank One, N.A. and JPMorgan Chase, as collateral agents; later releases) are secured-interest/security-agreement filings typical of Xerox corporate financing, not litigation or patent-transfer events tied to enforcement.
  • The patent expired on its 20‑year term (2015‑08‑23) and is listed Expired – Lifetime, consistent with the absence of any live infringement campaign.

Important caveats (attorney‑to‑attorney candor)

  1. Absence of evidence is not conclusive. Litigation databases I could fully query returned nothing; some targeted sources (Unified Patents litigation case‑list portal, RPX Insight, PACER) were reached only indirectly or not at all through my tooling, and PACER is not free/full‑text searchable for settlements.
  2. I did not find any district court, Federal Circuit, ITC §337, or PTAB/IPR record naming this patent, but a definitive negative would require direct queries in PACER/Docket Navigator, Westlaw Litigation Analytics, Lex Machina, and RPX/Unified portals.
  3. I did not auto-correct any identifier; note that US 5,826,244 and JP 5826244 are treated here as distinct documents, per your strict‑interpretation rule.

Bottom line: Based on the available search results, US 5,826,244 appears never to have been asserted in litigation; I found no case to report, and I decline to fabricate plaintiff/defendant/case-number data that the record does not support. If you want, I can draft the precise PACER/Docket Navigator and Unified Patents queries (by patent number and by the '906 continuation) for a certified negative‑search declaration.

Generated 9/30/2026, 11:14:09 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.

✓ Generated

I'll verify the empty canonical list against public PTAB/CAFC sources before writing.

Let me run additional targeted checks before concluding the list is empty.

One more verification pass on the aggregator/docket sources.

Proceedings overview

Total AIA trial proceedings on file for US 5,826,244: zero (0).
Breakdown by status: 0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied.

This is not a null result caused by a missing data source. The canonical structured block ("PTAB proceedings on file") states the USPTO Open Data Portal returns no AIA trial proceedings for this patent as of the most recent ingest, and my independent web searches (patent-number + IPR/PGR/CBM queries, PTAB E2E/PTAB trial-blog/Unified Patents portal checks) surfaced no IPR, PGR, or CBM petition, institution decision, Final Written Decision, or PTAB appeal for this patent. I cannot produce a "most-impactful first" proceeding list because there is nothing to rank — and I will not manufacture proceeding numbers to fill the template.

The bottom-line defensive posture is therefore the opposite of "hardened" and also the opposite of "claims canceled." It is untested but expired:

  • No AIA tribunal has ever construed, canceled, or sustained a single claim of 5826244. Claims 1–21 are all UNTESTED at the PTAB.
  • The patent is recorded Expired – Lifetime, anticipated expiration 2015-08-23. Its enforcement window has essentially run out; the practical threat model is a legacy/backlog assertion or a demand letter citing an expired patent, not a live injunction campaign.
  • Because no IPR reached an FWD, no § 315(e)(2) estoppel attaches to anyone. Every prior-art ground remains theoretically available to a defendant — a rare "clean slate" posture.

Per-proceeding detail

The required per-proceeding template (type, filed date, status, judge panel, grounds, institution decision, FWD, settlement, appeal, defensive value) is intentionally left unpopulated for US 5,826,244. Filling it would require inventing proceeding numbers, APJ panels, and claim-level dispositions. There is nothing to report.

(No proceedings — do not conflate the following)

Two identifier collisions are worth flagging, because a hurried search will hand a defendant the wrong documents:

  1. JP 5826244 B2 is a different patent. Search results return a Japanese grant numbered JP 5826244 B2, issued 2015-12-02, and its text is about a game apparatus with a card reader and invisible-ink card identification — unrelated to Huberman's document-services auction. It shares a number string with US 5,826,244 and nothing else. Do not cite it.
  2. US 5,826,244 is not the asserted patent in the Xerox/Monument Peak Ventures litigation. My searches surfaced Xerox Corp. v. Monument Peak Ventures, LLC, No. 6:20-cv-6263 (W.D.N.Y.), transferred to E.D. Tex. (2:21-cv-0345), and the related Xerox IPRs (e.g., IPR2022-00318). Those proceedings concern U.S. Pat. Nos. 7,684,090, 7,092,966, 7,006,890, 6,873,336, 6,155,??? / 6,215,559, 5,923,908, 6,396,599 — not 5,826,244. The '244 patent appears only as a cited reference in later patents (e.g., in the reference lists of US 8,751,326 and US 11,323,428). A search hit for "5826244" next to Xerox litigation activity is a citation artifact, not an assertion of the patent.

Also consistent with the previously generated section: the uspto.report aggregator page for 5826244 displays a claim set ("a first collection of participant processes… selecting… a first preferred process…") that does not match the authoritative US5826244A text supplied in this prompt, and it duplicates the same claim text onto the continuation US 6,078,906. That is an aggregator data-mixing artifact between parent and continuation; it is not evidence of a PTAB record, and I am not correcting the record in either direction.


Strategic summary

Claim status. Every claim of 5826244 is UNTESTED — none canceled, none sustained, none even instituted upon. There is no IPR-narrowed surviving-claim set to point to, because no IPR exists. The independent claims remain as issued: claim 1 (single-bidder-side auction requiring a commercial document service, automatic price establishment, proposal, and supplier initiation of performance over the network), claim 14 (the many-buyers/many-sellers reconciliation method), claim 20 (broadest — price establishment without the propose/accept steps), and dependent claim 21 (the laundry list of document services: printing, copying, scanning, …, disposal). The continuation US 6,078,906 carries the identical title, inventor, assignee, and abstract and is likewise, as far as I can determine, untested at the PTAB.

Estoppel landscape. Section 315(e)(2) estoppel is triggered by an IPR that "results in a final written decision under section 318(a)." There is no such FWD here, so no statutory estoppel bars any petitioner or privy. Practically, a defendant facing assertion is not boxed in: § 102/§ 103 art, § 112 written-description/enablement challenges, and (subject to eligibility) a CBM-style § 101 attack on the "financial product or service" aspects all remain open. Two timing realities matter more than estoppel:

  • PGR is unavailable. Post-grant review applies only to patents with an effective filing date on or after 2013-03-16; 5826244's filing/priority date is 1995-08-23, so it is categorically outside PGR.
  • CBM is both time-barred and sunset. The transitional CBM program ran 2012-09-16 through 2020-09-16, and the Board's precedential Facebook v. Skky (CBM2016-00091) line ties CBM eligibility to the claims as they existed at the institution decision. A new CBM cannot be filed today, and any CBM that could have been filed is long foreclosed. Only IPR would be procedurally available going forward — and an IPR against an expired patent is legally permissible (the Board and Federal Circuit have held expiration does not moot IPR), but the strategic incentive to spend on one is very low.

Pattern signals. No petitioner has filed once, let alone repeatedly, against this patent — there is no serial-petitioner pattern to analyze and no evidence of a defensive aggregator (Unified Patents or similar) in the chain. The patent owner (Xerox) has not pursued any PTAB appeal on this patent, and the previously generated section found no 2026 CAFC activity either. The live Xerox PTAB activity I did find is on entirely different patents in the Monument Peak Ventures dispute and the PARC/Facebook–Twitter–Snap matters. The absence of PTAB activity here is better explained by the patent's death by its own term than by its strength: an expired patent that was never the subject of a prominent assertion campaign has no reason to attract an IPR.

The honest signal. I want to be explicit that "no PTAB activity" is here an absence of evidence with a coherent explanation, not proof of invulnerability. Typically, well-asserted patents eventually draw IPRs; this patent was apparently never asserted in a campaign that would justify one. That cuts both ways: there is no FWD you can cite to kill a claim, and there is no adverse FWD to worry about if you decide an IPR is worth filing.


Recommended next steps

  1. If you hold a demand letter citing US 5,826,244, the single most powerful response is not a PTAB document — it is the expiration date. The patent's recorded legal status is Expired – Lifetime, anticipated expiration 2015-08-23 (https://patents.google.com/patent/US5826244A/en). With the term ended, there is no ongoing infringement and no prospective injunctive relief; any recovery is confined to a backward-looking damages window that is itself hemmed in by the 35 U.S.C. § 286 six-year limitation measured from the filing of the suit. For a 2026-filed case, that six-year lookback reaches only to 2020 — five years after the patent expired — so on its face little or nothing remains recoverable. Verify the expiration/assignment status independently rather than relying on my summary; the earlier section correctly declined to assert present ownership beyond the listed assignee, and the recorded security-interest chain (Bank One, N.A. 2002; JPMorgan Chase 2003; a JPMorgan release recorded 2022-09-07) should be checked for who currently holds enforcement rights.
  2. If you nonetheless want an invalidity anchor, there is no FWD to cite, so the ground has to be built from scratch. Start from the patent's own admissions: the Background acknowledges Auctions/auction theory, CommerceNet, Agorics/Sun ATM-bandwidth auctions, and the inventor's own "Spawn: A Distributed Computational Economy," IEEE Trans. Software Eng., vol. 18, no. 2 (Feb. 1992), at 103–117 — which the specification concedes was "a simulated or fictitious marketplace." The specification's own framing of the prior art as "play money" vs. real commerce is a § 101/§ 103 fault line worth developing. Also note the incorporated reference US 5,287,194 (Lobiondo, "Distributed Printing") and the cited US 5,394,324 (Clearwater, auction-based energy resource management).
  3. If you do file an IPR, note the deadlines that would govern: § 315(b) bars a petition filed more than 1 year after service of an infringement complaint on the petitioner/RPI/privy; the Board's statutory deadline to reach an FWD is 1 year from institution under § 316(a)(11) (extendable up to 6 months for good cause). Because no prior FWD exists on this patent, § 315(e)(2) estoppel would attach only to the petitioner in your own proceeding, and only after your FWD issues.
  4. Do not cite a PTAB decision for this patent, and do not cite JP 5826244 B2. Any citation purporting to be an IPR/CBM/PGR on US 5,826,244 is either fabricated or a numbering error. If you need to confirm the absence yourself, query PTAB E2E / the USPTO patent-trial proceedings search directly by application number 08/518,632 and patent number 5,826,244 — that is the authoritative check, and it returns nothing.

Uncertainty statement. I am confident there is no AIA trial record for US 5,826,244 on the sources I could reach (USPTO ODP structured data, PTAB-related web sources, aggregator portals). Absence of search hits is not a metaphysical proof that no proceeding was ever filed; I could not run a direct authenticated PACER/PTAB E2E docket query. If a proceeding exists that is not indexed in these sources, it would surface as a numbered IPR/PGR/CBM case keyed to application 08/518,632, and I would revise this section accordingly.

Generated 9/30/2026, 11:14:26 AM

Ownership chain (4)

Asserters network →

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

  1. 1995-08-23 · Assignment

    Bernardo A. HubermanXerox Corporation

  2. 2002-06-21 · recorded 2002-06-28 · Security Interest

    Xerox CorporationBank One, N.A., as Administrative Agent

    securitization

  3. ? · recorded 2003-10-31 · Security Agreement

    Xerox CorporationJPMorgan Chase Bank, as Collateral Agent

    securitization

  4. ? · recorded 2022-09-07 · Release

    JPMorgan Chase Bank, N.A., as successor-in-interest administrative agent and collateral agent to JPMorgan Chase BankXerox Corporation

    lien release

Assignment history

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

✓ Generated

I'll research the assignment record for this patent before writing.

Let me try to pin down the specific reel/frame numbers for the Xerox-chain recordings.

Assignment-chain analysis — US 5,826,244

Tooling limitation flagged up front: I could not execute an interactive query against USPTO Assignment Center (https://assignmentcenter.uspto.gov/ — the legacy equivalent is https://assignment.uspto.gov/patent/index.html). Everything below is reconstructed from (a) the Google Patents legal-events block in the authoritative full text you supplied (https://patents.google.com/patent/[US5826244A](/patent/US5826244A)/en#legalEvents), which lists assignor/assignee/conveyance/recording date but not reel/frame, and (b) public corroborating documents. I have no verified reel/frame numbers for this patent's own recordings, and I will not borrow a reel/frame from a sibling Xerox record and attribute it here. Where the full text and my searches disagree or where I lack data, I say so explicitly.


Inventors

Inventor Employer at filing (determinable?)
Bernardo A. Huberman (sole inventor) Xerox Corporation / Xerox Palo Alto Research Center (PARC), Palo Alto, CA — high confidence.
  • The patent's own background section cites the inventor's co-authored paper "Spawn: A Distributed Computational Economy," IEEE Transactions on Software Engineering, vol. 18, no. 2 (Feb. 1992), pp. 103–117 — the Spawn work was done at Xerox PARC, and the assignment of record runs from "HUBERMAN, BERNARDO A." to XEROX CORPORATION, consistent with an employee-inventor assignment.
  • No unusual departure pattern. The prompt asks whether all inventors left the original assignee within 12 months of filing — this is a single-inventor patent, and I found no evidence of any immediate departure. Huberman remained associated with Xerox PARC for roughly a decade after the 1995-08-23 filing (he is widely reported to have moved to HP Labs later, in the mid-2000s). That is a ~10-year lag, not the pre-fire-sale signature the prompt describes. Confidence: high on the 1995 Xerox/PARC affiliation; moderate on the exact HP departure year (I did not verify it to a primary source in this session).

Original assignee

Xerox Corporation (Stamford, CT at issuance; the 2022 release record still names "Xerox Corporation").

  • Primary line of business: document technology and services — copiers, printers, multifunction peripherals, production print, and document-management services. Distributed/networked document services (e.g., U.S. Pat. No. 5,287,194, Lobiondo, "Distributed Printing," incorporated by reference into this patent) were squarely inside Xerox's business.
  • Did Xerox ship a product embodying the claims? Not determinable from the record, and I lean no. The claims cover an automated brokered auction for document services; I found no evidence that Xerox commercialized an auction-based document-services marketplace practicing claim 1/14/20. The patent reads as a defensive/foundational research filing out of PARC for the method, not a product launch. Stated as absence of evidence, not a verified negative.
  • Current status: Operating as an entity. Note two structural facts that affect reading the chain: (i) in 2016–2019 Xerox went through a separation/holding-company reorganization (the BPO business was spun off as Conduent in 2017, and Xerox Holdings Corporation became the public parent with Xerox Corporation as the operating subsidiary); (ii) Xerox PARC was incorporated as a separate Xerox subsidiary ("Palo Alto Research Center Incorporated") in 2002 and was donated to SRI International in 2023. This patent is titled in Xerox Corporation, not PARC, and "Xerox Corporation" still appears as the recipient in the 2022-09-07 release — so the PARC/SRI transactions do not appear to have moved this patent. I did not verify that to a primary assignment record; treat as inference from the named parties.

Assignment timeline

Important caveat on reel/frame: the authoritative full text's legal-events block gives dates and parties but no reel/frame. I did not obtain the Assignment Center reel/frame for this patent. The two recording dates below (2002-06-28 and 2003-10-31) and the 2022-09-07 release are taken verbatim from the legal-events block; the 2022 entry is dated 2022-09-07 as recorded.

  • 1995-08-23 (executed; same date as filing) / recorded 1995-08-23 — Reel not retrieved

    • Conveyance: Assignment of assignors' interest (assignment of invention)
    • Assignor: Bernardo A. Huberman
    • Assignee: Xerox Corporation
    • Correspondent: not retrieved from the available sources (no Assignment Center correspondent data in the full text). Cannot assess recurrence.
    • Context: Standard employment invention assignment — inventor → employer, executed on the filing date. Not a fire-sale or reorg.
  • 2002-06-21 (executed) / recorded 2002-06-28 — Reel not retrieved for this patent

    • Conveyance: Security Interest ("SECURITY INTEREST (SEE DOCUMENT FOR DETAILS)")
    • Assignor: Xerox Corporation
    • Assignee: Bank One, N.A., as Administrative Agent (One Bank One Plaza, Chicago, IL 60670)
    • Correspondent: not retrieved. Cannot assess recurrence. This is a bank-side correspondent, i.e., lender's counsel perfecting a collateral schedule — the opposite of the single repeat NPE lawyer pattern the prompt targets.
    • Context: Securitization / credit-facility collateralization. Corroborated by Xerox's own filed Patent Security Agreement under the Guarantee and Security Agreement dated 2002 with Bank One, N.A. as Collateral Agent (Xerox investor-relations filings: https://investors.xerox.com/static-files/1e8b62e3-32a3-428b-83ae-d4c95485a34f). This is a lien, not a transfer of ownership.
  • 2003-10-31 (executed circa June 2003) / recorded 2003-10-31 — Reel not retrieved for this patent

    • Conveyance: Security Agreement
    • Assignor: Xerox Corporation
    • Assignee: JPMorgan Chase Bank, as Collateral Agent
    • Correspondent: not retrieved. Cannot assess recurrence.
    • Context: Refinancing / securitization. Corroborated by Xerox's filed Patent Security Agreement under the Credit Agreement dated as of June 19, 2003 with JPMorgan Chase Bank as Collateral Agent (Xerox investor-relations filings: https://xerox.gcs-web.com/static-files/505a4188-4757-4bf6-9928-5ca82ea29c63). Again a lien, not an ownership transfer — the collateral agent succeeds the earlier Bank One role.
  • 2022-09-07 (recorded) — Reel not retrieved for this patent

    • Conveyance: Release by Secured Party
    • Assignor: JPMorgan Chase Bank, N.A., as successor-in-interest administrative agent and collateral agent to JPMorgan Chase Bank
    • Assignee: Xerox Corporation
    • Correspondent: not retrieved. Cannot assess recurrence.
    • Context: Lien release — secured party discharges its collateral interest, leaving (or confirming) Xerox Corporation as owner. Largely moot: the patent had already expired 2015-08-23 (anticipated expiration per the record; status "Expired – Lifetime").

Net ownership result: apart from the original 1995 inventor→Xerox assignment, there is no recorded transfer of ownership of this patent at any point in its life. Xerox Corporation owned it from 1995 through expiration, subject to two lender liens (2002, 2003) that were released in 2022. Related non-assignment records in the file (not ownership events): the JP priority filing to JP H09114907A (1996-08-15) and the continuation US 09/173,908 → US 6,078,906 (filed 1998-10-16) — the latter is a child application, not an assignment of the parent.


Timeline diagram

timeline
    title Ownership of US 5826244
    1995 : Filed by B A Huberman
         : Assigned to Xerox Corporation
    1998 : Patent issued Oct 20
    2002 : Security interest to Bank One
    2003 : Security agreement to JPMorgan Chase
    2015 : Patent term expires
    2022 : Lien released to Xerox

NPE / troll-pattern signals

  1. Shell-entity transfer — Not present. No "IP / Patents / Licensing / Holdings / Ventures" entity ever appears as assignee. The chain is Huberman → Xerox Corporation, then two bank collateral agents (Bank One, N.A. 2002; JPMorgan Chase Bank 2003), then a release back to Xerox (2022). No single-purpose Delaware/Texas LLC, no registered-agent-service address anywhere in the record.

  2. Known asserter in the chain — Not present. None of the listed asserters (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities) appears as assignor or assignee in any recorded event. I also found no Unified Patents / RPX high-frequency-plaintiff listing naming this patent or its owner.

  3. Repeat correspondent across the chain — Unclear / not determinable. The full text's legal-events block does not carry correspondent data, and I did not retrieve it from Assignment Center. I therefore make no finding. (For what it is worth, the two lien recordings would be filed by different lender-side counsel — Bank One vs. JPMorgan Chase — which is the signature of a syndicated-credit collateral practice, not of one lawyer running a shell chain. But I could not verify the correspondent names, so this is context, not a finding.)

  4. Cascading transfers — Not present. Only four recorded events over 27 years (1995, 2002, 2003, 2022), and none of them is a chain of operating-entity → LLC → LLC transfers. The two closest-spaced events (2002 → 2003) are successive bank liens, not assignments of title.

  5. Pre-litigation transfer — Not present. I found no infringement suit naming this patent, and consequently no assignment executed within six months of a first suit. No litigation-driven ownership event exists in the record.

  6. Bankruptcy fire-sale — Not present. The 2002 and 2003 recordings track disclosed credit facilities/refinancings (the 2002 Guarantee and Security Agreement with Bank One; the June 19, 2003 Credit Agreement with JPMorgan Chase), i.e., secured lending, not a Chapter 7/11 §363 patent sale. I found no evidence of a Xerox Chapter 7/11 or of this patent being sold in bankruptcy proceedings. The 2022 release is consistent with an ordinary payoff/termination of collateral, not a distressed disposition.

  7. Privateering — Not present. There is no operating-company-to-NPE transfer, no SEC disclosure or Patent Progress/EFF coverage linking this patent to an assertion vehicle, and no NPE in the chain to assert on Xerox's behalf.

  8. Defensive aggregator (anti-NPE) — Not present. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at Xerox Corporation (2022 release) — the original operating assignee.


Verdict

Insufficient data — in the specific rubric sense of "no records, or only the original assignment."

Justification. The only ownership conveyance ever recorded is the 1995-08-23 inventor-to-Xerox assignment of interest (Huberman → Xerox Corporation); every post-issuance recording is a lien or lien release, not a title transfer — Bank One, N.A. security interest recorded 2002-06-28, JPMorgan Chase Bank security agreement recorded 2003-10-31, and the JPMorgan Chase release back to Xerox recorded 2022-09-07 — with the patent already expired on 2015-08-23 per the record. Because the chain never left the original operating assignee, there is no NPE chain to score: all eight NPE signals are "not present" (with signal 3 unresolvable for want of correspondent data), and I explicitly decline to call this "operating-company assertion" because I found no assertion suit and no evidence Xerox practiced claims 1/14/20.

Caveats on confidence. (a) I could not retrieve reel/frame numbers or correspondent names for this patent — if you need those, the interactive Assignment Center query must be run at https://assignmentcenter.uspto.gov/ (legacy: https://assignment.uspto.gov/patent/index.html); (b) my only record of the 2002/2003/2022 events is the Google Patents legal-events block, corroborated temporally by Xerox's filed Patent Security Agreements, so treat the conveyance types and dates as reliable and the reel/frame fields as open; (c) I am asserting nothing about present ownership beyond "Xerox Corporation on the face of the 2022 release record" and nothing about any 2026 CAFC activity (per the earlier section, none was found).

Verification links: Assignment Center — https://assignmentcenter.uspto.gov/ · legacy — https://assignment.uspto.gov/patent/index.html · Google Patents legal events — https://patents.google.com/patent/US5826244A/en#legalEvents

Generated 9/30/2026, 11:14:49 AM

Prior art

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

✓ Generated

I'll search for the authoritative citation record for this grant before assembling the prior-art analysis.

Let me pull the specific citation tables (patent and non-patent) for this grant.

Scope, provenance, and an important ID warning

Verified target: US 5,826,244 A (application 08/518,632, filed 1995‑08‑23, granted 1998‑10‑20, "Method and system for providing a document service over a computer network using an automated brokered auction," sole inventor Bernardo A. Huberman, assignee Xerox Corp.). Source: https://patents.google.com/patent/[US5826244A](/patent/US5826244A)/en

ID confusion to flag (no auto-correction): searching the bare string "5826244" surfaces JP5826244B2 — "Game system" (Square Enix, registered 2015‑10‑23), an entirely unrelated Japanese scroll-control grant (https://patents.google.com/patent/JP5826244B2/en). It is not the target and is disregarded here. Likewise US 08/518,632 and JP H09114907A (the Japanese counterpart, priority 1996‑08‑15) are the same family, and US 6,078,906 (Ser. No. 09/173,908) is the continuation — none of these are §102 art against 5,826,244; they are family members.

Provenance caveat (material): I was able to retrieve (a) the two U.S. patents cited inside the 5,826,244 specification text itself, and (b) the front-page "References Cited / Other Publications" list, which I obtained from the continuation US 6,078,906 PDF (https://patentimages.storage.googleapis.com/97/2a/15/3fed966f58bda8/US6078906.pdf) — that document reprints the identical reference list. I could not retrieve, within my search budget, the 5,826,244 front-page "U.S. Patent Documents" citation table itself, so I do not assert that the two patents below are the exhaustive examiner-cited set. Where I don't know a filing date, I say so rather than estimate.


A. Patent citations

A1. US 5,287,194 — Lobiondo, "Distributed Printing" — incorporated by reference

Field Value
Issue date 1994‑02‑15 (confirmed from the printed patent)
Filing date Not captured in retrieved sources (unverified)
Assignee Xerox Corp. (same as target)
§102 basis §102(b) — patented more than one year before 1995‑08‑23

Description (from the reference itself): a printshop management/scheduling routine that schedules print jobs across a network of local and remote printers. A scheduler analyzes printers on the network for capability (color, special paper, etc.) and availability, then allocates the job — splitting it among multiple printers if a single printer cannot meet the requested completion time — and informs the user where the job was allocated and when completion is expected. Its own cited art includes Freedman, US 4,839,829, an automated printing control system in which a requester terminal and a printing-facility terminal interact with a computer that develops cost information "using pricing strategies based on available printing equipment," after which the requester selects a facility and the computer authorizes proceeding.

§102 claim mapping: Anticipates none of claims 1, 14, 20. It supplies the document-service substrate (networked printing, automatic fulfillment, multi-site allocation) and even user-facing price/selection elements, but it discloses no broker process, no bid submission, and no price established from bidding information. It is §103 combination material, and its incorporated disclosure matters for §112 support, not for anticipation.

A2. US 5,394,324 — Clearwater, "Auction-Based Control System for Energy Resource Management in a Building"

Field Value
Issue date 1995‑02‑28 (freepatentsonline listing)
Filing date Not captured in retrieved sources (unverified)
Assignee Xerox Corp. (same as target); also discussed in the target's own Background
§102 basis §102(a) as of issue (1995‑02‑28, before the 1995‑08‑23 filing); also §102(e) if its filing date predates the applicant's invention date

Description (claims 1–8 of the reference): distributes conditioned air by computerized auction. Per-zone "agents"/thermostats transmit a first signal indicating one of a buy bid and a sell bid to a centralized computer (expressly recited as the "auctioning means"); the computer consummates a sale by comparing an auction price with the buy and/or sell bids, and issues second signals setting new resource fractions, which the distribution means uses. The reference notes its bidding agents are procedures within a single program and that "funny money" is used.

§102 claim mapping: Anticipates none of claims 1, 14, 20. It is the closest cited art on the auction mechanics (multi-agent bidding, both buy and sell bids, central price-matching/reconciliation, post-auction allocation signals), so it is the strongest §103 partner against claims 5–6 and the "automatically determining whether the bids can be reconciled" step of claim 14. It fails anticipation because (i) the auctioned subject matter is building air, not a document service, and (ii) the post-auction action is physical damper adjustment, not initiating performance of the document service over the computer network. Note §103(c) common-ownership disqualification does not reach it, because it is §102(a)/(e) art, not §102(f)/(g) art.


B. Non-patent citations (front-page "Other Publications" of the family; §102 basis is printed-publication)

# Full citation Date §102 basis Brief description Anticipates?
B1 Waldspurger, Hogg, Huberman, Kephart, Stornetta, "Spawn: A Distributed Computational Economy," IEEE Trans. Software Eng., vol. 18, no. 2, pp. 103–117 Feb. 1992 §102(b) Open, market-based computational economy of interacting buyer/seller processes trading slices of CPU time on heterogeneous networked workstations; auctions and price feedback. The patent itself characterizes it as a "simulated or fictitious marketplace" No — commodity is CPU time, not a document service; no document service performed over the network
B2 Hogg, "Distributed Computation as an Economic System," J. Economic Perspectives, vol. 9, no. 1, pp. 141–152 Winter 1995 (pre‑08‑23‑1995) §102(a) (not §102(b)) Survey/discussion of market-based distributed computation No
B3 Miller & Drexler, "Markets and Computation: Agoric Open Systems," in The Ecology of Computation (Huberman, ed.), pp. 133–176 1988 §102(b) "Agoric" markets as a computing resource-allocation mechanism; underpins the Agorics/Sun ATM-bandwidth auction described in the target's Background No
B4 Malone, Fikes, Grant, Howard, "Enterprise: A Market-like Task Scheduler for Distributed Computing Environments," in The Ecology of Computation, pp. 177–205 1988 §102(b) Market/contract-net style task scheduling in distributed computing — bidding for computational tasks No — not document services
B5 Gagliano, Fraser, Schaefer, "Simulation of a Market Model for Distributed Control," 21st Annual Simulation Symposium, Tampa FL, pp. 171–187 1988‑03‑16/18 §102(b) Simulated market/price-based distributed control No
B6 "The Simulation of a Distributed Control Model for Resource Allocation and the Implied Pricing," 22nd Annual Simulation Symposium, Tampa FL, pp. 81–92 1989‑03‑28/31 §102(b) Simulation of distributed resource allocation and implied pricing (authorship not fully captured in my source) No
B7 "Modeling the Cost of Resource Allocation in Distributed Control," 23rd Annual Simulation Symposium, Nashville TN, pp. 151–164 1990‑04‑23/27 §102(b) Cost modeling for distributed control (authorship not fully captured in my source) No
B8 Kurose & Simha, "A Microeconomic Approach to Optimal Resource Allocation in Distributed Computer Systems," IEEE Trans. Computers, vol. 38, no. 5, pp. 705–717 May 1989 §102(b) Microeconomic/price-based optimal allocation of CPU and bandwidth in distributed systems No
B9 "Schwarts," M. & Yemini, Y., "A Microeconomic Approach to Decentralized Optimization of Channel Access Policies in Multiaccess Networks," IEEE publication, pp. 70–77 1985 §102(b) Decentralized price-based channel-access optimization No. Spelling retained literally as printed ("Schwarts"); I make no correction
B10 Inoue & Matsumoto, "A Note on Anonymous Electronic Auction," Technical Report of the Institute of Electronics, Information and Communication Engineers, pp. 31–38 May 1995 §102(a) only if before the invention date; not §102(b) (only ~3 months pre-filing) Anonymous electronic auction protocols among network agents No — no document service
B11 Xerox Press Release, "Xerox Unveils 'Electronic Storefront' for Printers, InterDoc software uses the Internet to create new market opportunity for printers," New York 1995‑06‑27 §102(a) if before the invention date (not §102(b)); also potentially on-sale/public-use evidence Xerox InterDoc: Internet-based "electronic storefront" for printers Cannot confirm anticipation. I have the title only; I could not verify whether it discloses automated price establishment from bids. It is the most on-point document-services-over-network reference and warrants a full-text pull
B12 Verity, "Truck Lanes for the Info Highway," Business Week, pp. 112–114 1994‑04‑18 §102(b) General electronic-commerce/Internet infrastructure No
B13 Wildstrom, "In Search of the Paperless Contract," Business Week, p. 14 1994‑08‑29 §102(b) The "Technology & You" column the patent quotes for CommerceNet's morning-RFP/evening-bids/next-day-PO scenario No — describes an RFP/bid workflow, not automated broker price establishment; closest to the commercial context
B14 Gross, "Around the World—Instantaneously," Business Documents Oct. 1994 §102(b) Distributed/networked document production No
B15 CommerceNet (Menlo Park, CA; http://www.commerce.net); Agorics, Inc. (Los Altos, CA) with Sun Microsystems Laboratories — real-time ATM-bandwidth auction project c. 1994–1995 §102(a)/(b) public-use/publication, fact-dependent Non-paper artifacts of networked-bid electronic commerce and of an operating automated auction over network bandwidth No — bandwidth, not document services

C. Claim-by-claim §102 conclusion

Claim Elements that no single reference supplies Result
1 Broker process as neutral intermediary; price automatically established from bidding information for a commercial document service; proposal of a transaction at that price; supplier initiating performance of the document service over the network Not anticipated by any retrieved citation
14 Two collections of participant processes bidding; broker automatically determining whether the bids can be reconciled to a price for a commercial document service Not anticipated. Clearwater anticipates the reconciliation/comparison concept but not for a document service
20 (Broadest) broker automatically establishing a price from bidding information for a document service, supplier then initiating performance over the network Not anticipated — same gap
21 Depends on 20 (printing…disposal species) Not anticipated; Lobiondo/B11 support the printing/networked-fulfillment species only

Most likely invalidity theory on this record is §103, not §102: Clearwater 5,394,324 (multi-agent buy/sell bids, central price-matching auctioneer, post-auction allocation) + Spawn B1 or Malone B4 (distributed bidding processes over a network) + Lobiondo 5,287,194 / Xerox InterDoc B11 (networked, automatically executed document/print services). That is the combination a challenger would run, and it is why the document-service limitation in claims 1/14/20 and claim 21's Markush group carry the novelty weight.


D. Explicit uncertainties

  1. I did not retrieve the 5,826,244 front-page patent-citation table. The two U.S. patents above are those cited in the specification text; there may be additional examiner-cited U.S. patents I have not verified. Do not treat Section A as the complete examiner-cited set.
  2. Filing dates for US 5,287,194 and US 5,394,324 are unverified in my sources; their §102(e) status therefore cannot be confirmed.
  3. The 22nd and 23rd Simulation Symposium papers (B6, B7) are listed on the family front page without complete author attribution in my retrieved excerpt.
  4. Xerox InterDoc press release (B11): title verified, content not. Its disclosure of auction/bid mechanics is unknown to me.
  5. Per the previously generated section, there is no confirmed 2026 CAFC activity for this patent, and the recorded status remains Expired – Lifetime (anticipated expiration 1995‑08‑23 + 20 = 2015‑08‑23) — which is why the practical relevance of the above is historical/validity-analysis rather than enforcement.
  6. Minor internal inconsistency: the operating header states today is 2026‑09‑30 while this task states 2026‑04‑26. It does not affect any §102 calculation, which turns on the 1995‑08‑23 filing date and the pre‑1994‑08‑23 §102(b) cutoff.

Generated 9/30/2026, 11:15:05 AM

Obviousness

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

✓ Generated

I'll ground the legal framework and a few key references with targeted searches before drafting.

Obviousness Analysis — US 5,826,244 under 35 U.S.C. § 103

Patenting date note / integrity flags. This section builds directly on the Prior Art section already generated for this page and does not repeat its reference tables. Two things surfaced in this session that change the prior-art picture and are flagged as such below: (i) I was able to verify the content of the Xerox InterDoc reference (B11), which the Prior Art section listed as "title only — content not verified"; and (ii) I found that one source that looks like a Huberman prior-art volume is very likely post-filing (1996) and must not be used as § 102 art. Both are developed below. I again decline to "correct" any identifier (JP 5826244 B2 ≠ US 5,826,244; per the earlier sections).


1. Legal framework and governing law

Because the application (08/518,632) was filed 1995-08-23, this is a pre-AIA case: 35 U.S.C. § 103 (pre-AIA) governs, and the Federal Circuit's pre-KSR "teaching, suggestion, or motivation" formulations are tempered by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which applies to pre-AIA patents as well. The controlling four-factor inquiry is Graham v. John Deere Co., 383 U.S. 1 (1966): (1) scope and content of the prior art; (2) differences between the prior art and the claims; (3) level of ordinary skill; and (4) secondary considerations.

The Muniauction analogy should be central to any § 103 challenge here. In Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (https://www.courtlistener.com/opinion/[209755](/patent/209755)/muniauction-inc-v-thomson-corp/), the Federal Circuit reversed a jury and held claims to a method of conducting an auction over an electronic network obvious as a matter of law, framing the question as "whether the improvement is more than the predictable use of prior art elements according to their established functions." It held that "the modification of [the prior art system] to incorporate web browser functionality represents a combination of two well known prior art elements to a person of ordinary skill," relied on Leapfrog Enterprises v. Fisher-Price, 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("applying modern electronics to older mechanical devices has been commonplace"), and reaffirmed In re Lintner, 458 F.2d 1013, 1015 (C.C.P.A. 1972) ("claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter"). That is the doctrinal posture a challenger would occupy against 5,826,244, which issues from the same era of "put the known financial/commercial process on the network."


2. Level of ordinary skill in the art (Graham factor 3)

I would propose — and this matters because it determines what counts as a predictable combination — a hybrid/team formulation rather than a single-discipline artisan:

  • Primary artisan: a B.S. in computer science or electrical engineering (or equivalent) with ~2 years of experience in networked/client–server computing and distributed resource allocation, or a background in operations research / market-mechanism design with practical exposure to networked systems.
  • Because the claims straddle three arts (networking, auction/market design, and document services), it is fair to treat the "person of ordinary skill" as the combined knowledge of a small design team — a networking engineer, someone familiar with the auction literature the patent itself cites, and someone familiar with print-shop/reprographics workflows. KSR expressly permits combining "the knowledge of a skilled artisan," and combining familiar elements from multiple fields is precisely what KSR and Muniauction sanction.

Key consequence: at this skill level, the auction algorithms are ordinary textbook fare (the patent concedes this — see § 5), the networked document-services workflow is disclosed by the assignee's own art (Lobiondo, InterDoc), and the combination is a matter of design choice driven by articulated market forces.


3. What the claims actually require (the operative limitations)

Cross-referencing the earlier plain-language claim breakdown rather than repeating it, the limitations that carry all the weight — and therefore the ones a § 103 combination must reach — are:

# Limitation Why it is load-bearing
L1 Three actor processes (customer / supplier / broker as intermediary) executed on processors The "neutral broker process" is the architectural core
L2 Broker receives a description of a (commercial) document service This is the domain limitation; it is what distinguishes the claims from Clearwater/Spawn
L3 Automated establishment of a price from bidding information Distinguishes from manual negotiation
L4 Propose transaction / acceptance (claim 1 only; absent from claim 20) The step most weakly covered by Clearwater alone
L5 Supplier initiates performance of the document service over the computer network The second domain limitation — networked fulfillment
L6 (Claim 14) broker automatically determines whether the bids can be reconciled Maps directly onto Clearwater's buy/sell matching
L7 (Claim 21) Markush group of document services Conventional species; only "printing" has deep art

Bottom line from the earlier section, reaffirmed: no single reference anticipates. The novelty weight rests entirely on L2/L5 (document service + networked performance) and L4 (propose/accept). That is the exact posture in which § 103, not § 102, decides validity — and where KSR's "known technique in a new field" rationale is most powerful.


4. The prior-art arsenal (brief, by reference to the Prior Art section)

  • Clearwater, US 5,394,324 (https://patents.google.com/patent/US5394324) — the auction machinery: per-zone agent microprocessors transmit a signal "classified as either a buy bid or a sell bid" (col. 4, ll. 28–30, as quoted in Ex parte Jackson, https://law.onecle.com/board-of-patent-appeals/2004/fd041981005.html); the centralized computer is the "auctioning means" and "consummates a sale by matching an auction price with one of a buy bid and a sell bid," then "generates second signals when the sale is consummated." The reference expressly describes a distributed software system ("the computational agents are procedures within that program"), https://uspto.report/patent/grant/[5394324](/patent/5394324).
  • Lobiondo, US 5,287,194 ("Distributed Printing") — the networked document-service substrate: scheduler allocates print jobs across networked printers by capability/availability, automatically executes, and reports completion. Incorporated by reference into 5,826,244 itself, and § 102(b) art.
  • Freedman, US 4,839,829 (cited within Lobiondo) — requester terminal ↔ printing-facility terminal with a computer that develops cost information "using pricing strategies based on available printing equipment," after which the requester selects a facility. This is automated pricing of a document-service job, pre-dating the filing by years.
  • Spawn (Waldspurger, Hogg, Huberman, Kephart, Stornetta, IEEE Trans. Software Eng., Feb. 1992) and Malone et al., "Enterprise…" and Miller & Drexler, "Markets and Computation: Agoric Open Systems" (both in The Ecology of Computation, 1988) — networked buyer/seller processes bidding for resources; § 102(b).
  • Inoue & Matsumoto, "A Note on Anonymous Electronic Auction" (May 1995) — electronic auction protocols among network agents.
  • Business Week "Technology & You" (1994-08-29) — the CommerceNet morning-RFP / evening-bids / next-day-electronic-PO scenario, quoted by the patent's own specification.
  • Xerox InterDoc — NEWLY VERIFIED CONTENT (upgrades B11). American Printer, Oct. 1995, vol. 216 iss. 1 (retrieved from a scanned-archive dataset, not a stable public URL — flagged): Xerox's InterDoc "provides distributed print-on-demand capabilities via the Internet… allows printshops to receive and produce digital file submissions from clients by setting up an 'electronic storefront,' where clients enter job orders and other information to produce a job ticket," with preflight validation, browser-based forms (Mosaic/Netscape), and HTTP file upload. That is networked commercial document-service ordering and fulfillment — the L2/L5 substrate — without the auction.

5. The patent's own specification supplies the motivation

This is the single most important § 103 point, and it is internal to the patent:

  1. The Background concedes that "a brokered auction, in which a third-party auctioneer serves as an intermediary between customers and suppliers, can provide a way to allocate resources and set prices efficiently." That is an admission of L1 and L3 as known desirability.
  2. The Background identifies the problem in the very domain the claims cover: "both the customer and the print shops have limited information. The result is an economically inefficient market… A better way to establish prices for document services is needed." Under KSR's "design need or market pressure" rationale, a stated problem in the specification is a roadmap for the combination.
  3. The specification states that auction types "are well described in the literature on auctions and auction theory" — an admission that sealed-bid second-price, English, and Dutch auctions (and by extension reservation prices, the subject of claims 7–10) are prior art. Any argument that the auction rules are inventive is foreclosed by this sentence.
  4. The specification admits the Spawn system's limitation — "a simulated or fictitious marketplace" — and the Clearwater reference's "funny money." The patent's asserted point of novelty is therefore the use of real money/commercial transactions on a network — which its own cited Business Week/CommerceNet reference shows was already the trajectory of the field.

6. The combinations

I set out four combinations, ordered by strength, each with element mapping, KSR rationale, and reasonable expectation of success.

Combination A (primary) — Clearwater + Lobiondo (+ Freedman)

Motivation to combine — and it is unusually strong:

  • Common ownership / common problem. Clearwater and Lobiondo are both Xerox patents, and Clearwater is expressly discussed and characterized as prior art in the specification's own Background. A patentee who cites a reference as background and builds on its auction mechanism cannot then argue there was no reason to look at it.
  • Same problem class. Both references solve distributed resource allocation — Clearwater allocates conditioned air among zones via auction; Lobiondo allocates print jobs among networked printers by capability/availability. Selection of a pricing/allocation mechanism from one and a document-service fulfillment platform from the other is the classic KSR rationales (C) and (D): use of a known technique to improve a similar method in the same way, applied to a known method ready for improvement.
  • The patentee's own explicit teaching. The Background's "A better way to establish prices for document services is needed" (see § 5) plus "a brokered auction… can… set prices efficiently" is a self-supplied TSM.
  • The inventor was personally steeped in Clearwater's subject matter — the market-based building-control work is co-authored by Clearwater and Huberman (see, e.g., the KTH thesis bibliography citing "Huberman and Clearwater, 1995; Clearwater and Huberman, 1994," https://bth.diva-portal.org/smash/get/diva2:[838188](/patent/838188)/FULLTEXT01.pdf). This is relevant to (a) motivation and (b) the weakness of any "the combination was not contemplated" rebuttal.

Element mapping (claim 1):

Limitation Covered by
L1 customer/supplier/broker processes on processors Clearwater: zone agents (buy-side and sell-side) + centralized computer as neutral "auctioning means"; Lobiondo: requester terminal + facility terminals + scheduler
L2 description of a document service to the broker Lobiondo (job particulars, printer capability/availability, completion time) + Freedman (cost inputs) + InterDoc (job ticket)
L3 bid submitted / broker receives bidding information Clearwater (agents transmit bids to the central computer)
L4 automated price establishment Clearwater: computer plots buy/sell bids into supply-demand curves and matches the auction price with a bid to consummate the sale
L4 propose transaction / acceptance Conventional offer-and-acceptance; Freedman's "requester selects a facility" step; CommerceNet's electronic purchase order
L5 supplier initiates performance over the network Lobiondo (automatic networked printing) + InterDoc (HTTP file upload, print-ready files)

Gap to be argued: Clearwater consummates rather than proposes. The claim-1 "proposing a transaction" + acceptance step requires the challenger to show that inserting a customer-confirmation step into a known automated auction is an obvious design choice. I think this argument is winnable but it is the one place claim 1 is meaningfully harder than claim 20 — which is exactly the distinction the earlier section drew (claim 20 omits propose/accept).

Combination B — Clearwater + Spawn / Malone / Agoric + Lobiondo

Substitutes/spikes the auction reference with § 102(b) literature that expressly runs buyer and seller processes across a network. This is the fallback if Clearwater is successfully attacked as § 102(e)-only art (see § 8 on § 103(c)). Motivation: Spawn's own framing — "organized as a market economy composed of interacting buyers and sellers" — plus KSR rationale (F): "when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it… in the same field or a different one" (quoted approvingly in Muniauction). Expected result: applying a known network auction protocol to a known networked service market is predictable.

Combination C — Clearwater + InterDoc/American Printer + Business Week (CommerceNet)

This is the most domain-accurate combination for L2/L5: InterDoc supplies commercial, browser-based document-service ordering and fulfillment over the Internet, and the Business Week column supplies the RFP → bids → electronic purchase order commerce model. Adding Clearwater's auction engine supplies the automated price. KSR rationales (A) and (F).

Combination D — for claim 20 only (broadest claim): Clearwater + Lobiondo/InterDoc

Because claim 20 (as the earlier section established) omits the propose/accept limitations and recites "a document service" without "commercial," combination A does more than claim 20 requires. Note also In re Lintner (a claim broad enough to read on obvious subject matter is unpatentable even if it also reads on nonobvious subject matter) — claim 20's breadth hurts the patentee.


7. Claim-by-claim § 103 chart

Claim Elements not in a single reference Obviousness conclusion & rationale
1 L2/L5 domain + L4 propose/accept Obvious over Combo A/B/C. Auction machinery (Clearwater) + networked document-service fulfillment (Lobiondo/InterDoc) + conventional offer/acceptance. KSR (A),(C),(D),(F).
2–4 (source of service description: customer / supplier / broker) Origin of the job spec Obvious. Lobiondo's requester supplies particulars; Clearwater's computer can solicit offers; broker-originated jobs are a design choice.
5–6 (who bids: customer vs. supplier) Direction of bidding Obvious — nearly anticipated. Clearwater expressly discloses both buy bids and sell bids (col. 4, ll. 28–30).
7–10 (safeguards: price limitation/reservation price; right to accept/decline; choice among candidates) Reservation price & candidate selection Obvious. The spec concedes auction rules are "well described in the literature"; reservation prices are elementary auction design; offer/acceptance and "choose among the three lowest bidders" are ordinary commercial/design choices.
11–12 (broker fee compute + invoice) Brokerage fee Obvious. Conventional commission; mere automation of known bookkeeping/invoicing.
13 (third participant process) Additional bidder Obvious. More bidders ⇒ more competition; Clearwater already uses many agents/zones.
14 Two collections of processes; "reconciled" bids; commercial document service Obvious. Clearwater's centralized computer matches an auction price with buy and/or sell bids and plots demand curves — that is "automatically determining whether the bids can be reconciled." Domain limitations from Lobiondo/InterDoc.
15–19 (dependents of 14) — Obvious for the same reasons as their claim-1 counterparts.
20 (broadest) Document service + network performance only Obvious — strongest case. No propose/accept step to reach; Clearwater + Lobiondo/InterDoc.
21 (Markush: printing…disposal) Species list Obvious. Lobiondo teaches printing; the remaining members (copying, scanning, binding, mailing, storage, retrieval, format conversion, shredding, recycling, disposal) are conventional document-handling operations with no unexpected result from listing them.

8. Two doctrine points the practitioner must not miss

  1. § 103(c) (pre-AIA) and the "commonly owned" trap. Pre-AIA § 103(c) disqualifies subject matter that qualifies as prior art only under § 102(e), (f), or (g) and was commonly owned at the time the invention was made. Clearwater is Xerox-owned and may qualify under § 102(e) — so a patentee could argue disqualification. The answer is that Clearwater also qualifies under § 102(a) (it issued 1995-02-28, before the 1995-08-23 filing/invention date) [and the specification itself treats it as background art]. Because § 103(c) applies only where the reference qualifies "only" under (e)/(f)/(g), it does not reach Clearwater. Belt-and-suspenders: even if a court disagreed, Combination B substitutes Spawn/Malone/Agoric (unambiguously § 102(b), third-party publications) as the auction reference. (Note: § 103(c) could be invoked to disqualify Lobiondo as § 102(e) art, but Lobiondo is § 102(b) — issued 1994-02-15, more than a year before filing — and, independently, is incorporated by reference into the patent, so it is also a § 112/incorporated-disclosure resource.)
  2. "By others" and InterDoc. InterDoc is Xerox's own product, and the American Printer write-up is dated Oct. 1995, i.e., after the 1995-08-23 filing; the June 27, 1995 press release predates filing by only ~two months. Accordingly, InterDoc is best used as (a) evidence of the state of the art / motivation and (b) a possible applicant admission about what Xerox itself knew the field to be doing — not as clean § 102(a)/(b) art. Do not overclaim it.

9. Predictability and "obvious to try" (the strongest single argument)

KSR: "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options… If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." (Quoted and applied in Muniauction.)

Applied here:

  • The solution space was finite and known: apply a brokered auction (Clearwater; Spawn; Agoric; the auction literature the patent concedes) to a market with an acknowledged inefficiency (the patent's own Background) using existing networked document-service fulfillment (Lobiondo; InterDoc).
  • Every kinetic step was known: agents bidding (Clearwater); automated price matching / demand-curve clearing (Clearwater); offer/acceptance (contract law; CommerceNet's PO); networked print fulfillment (Lobiondo; InterDoc).
  • The patent adds no new mechanism — no new auction algorithm, no new network protocol, no new document-service capability. It adds a new commodity (document services) to a known mechanism (networked auction). Under KSR and Muniauction, that is the paradigm of obviousness.

10. Secondary considerations (Graham factor 4)

  • No objective evidence is of record. There is no litigation, no PTAB proceeding (per the prior sections), and no submitted evidence of commercial success, long-felt need, failure of others, or copying attributable to these claims. The patent expired 2015-08-23.
  • Even where a patentee could offer evidence, Muniauction sets the bar high: secondary considerations require a nexus to the scope of the claims; evidence tied to a commercial embodiment that is not coextensive with the claims "lacks the required nexus." Xerox's InterDoc may look like a commercial embodiment, but InterDoc as described in the American Printer piece is a document-ordering/fulfillment system — not an auction — so it is not coextensive with claims 1/14/20 and gives little nexus.
  • Practical point: because the patent is expired and has (per the prior sections) no assertion history, a litigant would face a thin, largely documentary § 103 record rather than a contest against accumulated objective evidence.

11. What the patentee would argue, and the rebuttals

Patentee argument Rebuttal
"The invention is in a domain where a brokered auction was 'not previously considered worthwhile or even possible.'" Self-serving characterization. The Background simultaneously concedes (a) auctions efficiently allocate resources, (b) auction theory is "well described in the literature," and (c) the problem is document-services pricing. A stated problem + a known solution class = motivation. KSR rationale (F); Muniauction.
"Clearwater/Spawn use 'play money' / a simulated economy — the claims require commercial transactions." The real-vs-simulated distinction is not a technical contribution; it is the obvious use of a known mechanism for real resources. CommerceNet/Business Week (quoted in the patent) already shows real commercial network bidding, and InterDoc shows real commercial networked document services. Also, claim 20 does not even recite "commercial," so the argument cannot save the broadest claim.
"Clearwater's agents are 'procedures within a single program' owned by one entity — not independent parties." Clearwater itself contemplates agents in each room and a distributed arrangement; Spawn/Malone/Agoric expressly run independent, networked buyer and seller processes.
"Clearwater teaches away — it says the auction 'differs from a real auction' because resources aren't transferred between operators." That passage characterizes the HVAC application; it does not disparage applying auctions to real commercial transactions. A statement of what a reference is not is not a teaching away from the claimed use.
"No reference proposes a transaction and awaits acceptance by the customer." Offer/acceptance is the ordinary mode of contracting and is described in the cited CommerceNet/Business Week scenario; adding a confirmation step to protect the customer (the patent's own rationale) is a design choice with predictable benefit.
"Secondary considerations (e.g., Xerox's market entry) show nonobviousness." No evidence of record; InterDoc is not coextensive with the claims (no auction); Muniauction requires nexus.

12. Do-not-cite list (errors that would sink a validity challenge)

  1. JP 5826244 B2 — unrelated Square Enix "Game system" (per the prior section). Not this patent.
  2. "Market-Based Control: A Paradigm for Distributed Resource Allocation" (the World-Scientific volume quoting the Clearwater "funny money" criticism and the Huberman–Clearwater building-control chapter, https://www.worldscientific.com/doi/pdf/10.1142/9789814261371_fmatter). This volume appears to be 1996 — after the 1995-08-23 filing — and is therefore likely NOT § 102 prior art. It is nonetheless useful as background/technical corroboration of the Clearwater auction mechanism. Verify the publication year before citing. (The prior-art sources in that literature line that are pre-filing are the 1988 The Ecology of Computation chapters and the 1992 Spawn paper, already in the Prior Art section.)
  3. US 2004/0024483 A1 (energy transmission bidding/offer-acceptance) — surfaced in my searches as an attractive-looking "propose a transaction, buyer declines, bids requested" disclosure. It is 2004 — a decade post-filing — and is not prior art against this patent. Do not use it.
  4. The modern KTH/BTH thesis (https://bth.diva-portal.org/smash/get/diva2:838188/FULLTEXT01.pdf) — contemporaneous irrelevant; it merely cites Clearwater & Huberman.

13. Uncertainties and confidence

  • High confidence: the legal framework (pre-AIA § 103; Graham; KSR; the Muniauction/Leapfrog/Lintner line) and the content of Clearwater's auction mechanism (independently corroborated by the reference's own text, the Google Patents claim bullets, and the BPAI Ex parte Jackson characterization).
  • Moderate confidence: the exact filing dates of US 5,287,194 and US 5,394,324 (the Prior Art section flagged these as unverified), which is why I present Combination B as a hedge against any § 102/§ 103(c) timing attack.
  • Moderate confidence / newly relevant: the InterDoc American Printer text — I verified the substance (electronic storefront, job ticket, browser/HTTP, print-ready files) but retrieved it from a scanned-archive dataset rather than a stable publisher URL, and the write-up is Oct. 1995. Treat as state-of-the-art/admission evidence, not as clean § 102 art.
  • Low confidence / flagged: the 1996 date of the Market-Based Control volume (I did not retrieve its copyright page). Do not cite it as prior art without verifying.
  • Carried forward, not re-litigated: (i) the uspto.report claim-set mismatch for 5826244 (an aggregator parent/continuation data-mixing artifact; the authoritative full text controls — per the prior sections); (ii) no 2026 CAFC activity and no PTAB record found (absence of evidence, not proof); (iii) the header date inconsistency (2026-09-30 vs. 2026-04-26) already flagged, which does not affect any § 102/§ 103 date computation because those turn on the 1995-08-23 filing date and the pre-1994-08-23 § 102(b) cutoff.

14. Bottom line

On the record assembled here, claims 1, 14, 20 and 21 — and each of dependent claims 2–13 and 15–19 — would have been obvious under pre-AIA § 103 over a combination of:

Clearwater US 5,394,324 (automated multi-agent buy/sell auction with a central auctioning computer that reconciles bids and sets a price) + Lobiondo US 5,287,194 (networked, automatically executed document/print services; incorporated by reference into the patent itself) + Freedman US 4,839,829 (automated print-job pricing) + Spawn/Malone/Agoric (1988–1992) (networked buyer/seller processes bidding for resources) — with InterDoc / CommerceNet–Business Week supplying the commercial, networked document-service ordering context and the motivation.

The motivation is supplied three times over: (1) the shared problem and shared assignee of clearwater/Lobiondo; (2) the patent's own Background conceding that auctions efficiently set prices and that "a better way to establish prices for document services is needed"; and (3) KSR's market-pressure/finite-known-options rationale, as applied to an auction-over-network patent in Muniauction. The only limitation needing real argument is claim 1's propose/accept step — and claim 20, which omits it, is the most exposed claim in the patent.

Generated 9/30/2026, 11:22:18 AM

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