Invalidity dossier

US 5933498

System for controlling access and distribution of digital property

Current assignee: Hanger Solutions LLC

Added 9/24/2026, 6:42:55 AM

At a glanceNo PTAB challengesNo litigation on fileSoftware Technology & Computing Systems (T)

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 litigation and USPTO sources.

Let me probe specifically for Federal Circuit activity and any 2026 litigation involving this patent.

Let me look for the claim text and any litigation/PTAB record specific to this number.

US Patent 5,933,498 — Analyst Summary

Scope note up front: I searched for this specific number (5933498) in USPTO/PTAB-style sources and for Federal Circuit 2026 dockets. I found no Federal Circuit 2026 docket activity tied to US 5,933,498. I also found no IPR/PGR or district-court complaint in my search results that asserts this number. I am therefore treating the litigation question as unconfirmed/negative-result only — see the caveats at the end. I did not conflate this with nearby numbers (e.g., 5,499,298 "Narasimhalu," which surfaced in unrelated Dolby invalidity contentions, or the Hanger Solutions patents 6,430,623 / 6,609,159 / 6,772,227 / 6,119,171).

Bibliographic data (authoritative, from the Google Patents record)

Field Value
Patent number US 5,933,498 A (as presented: US5933498A)
Title System for controlling access and distribution of digital property
Inventors Paul B. Schneck; Marshall D. Abrams
Application no. US 08/968,887
Filing date 1997-11-05
Priority date (as listed) 1996-01-11
Issue/publication date 1999-08-03
Original assignee MRJ, Inc. (assignment recorded 1997-12-23, assignor: The MITRE Corporation)
Current assignee of record (per Google Patents) Hanger Solutions LLC (recorded 2020-01-04, from Intellectual Ventures Assets 158 LLC)
Status Expired – Lifetime; anticipated expiration 2016-01-11
Representative CPC G06F21/00, G06F21/10 (DRM), G06F21/62, G06F2221/2141, H04L9/08, H04L63/04, G11B20/00

Ownership chain shown in the record (chronological): MRJ, Inc. → Veridian Information Solutions, Inc. → Veridian Systems Division → General Dynamics Advanced Information Systems, Inc. → Beechtree Verifides Management LLC → Verifides Technology Corp. → Zofillip Pro Group LLC → Intellectual Ventures II LLC → Intellectual Ventures Assets 158 LLC → Hanger Solutions, LLC. (The Google Patents page also carries a Darts-IP "family has litigation" flag for the family.)

Abstract / substance

The patent is an early, hardware-rooted digital-rights-management and secure-distribution scheme. Its central architecture is a tamper-detecting "access mechanism" that: (1) stores data with protected (encrypted) portions and unprotected portions; (2) enforces rules (permission lists) specifying what a user may do; and (3) destroys keys and cleartext if tampering is detected. The record's Claims/summary language states the invention as:

  • A method of controlling access to data by protecting portions of the data; determining rules concerning access rights; preventing access to the protected portions other than in a non-useable form; and permitting a user access only in accordance with the rules as enforced by a tamper-detecting mechanism.
  • A device for controlling access to digital data comprising protected data portions plus rules, with storage means for the rules and means for accessing the protected portions only in accordance with the rules.
  • A method of distributing digital data by protecting data portions, preventing access other than in non-useable form, determining and protecting the rules, and providing both the protected data and the protected rules to the user for controlled access.
  • A storage device readable by a machine tangibly embodying a package of digital data comprising protected portions and rules concerning access rights, "whereby a user is provided controlled access … only in accordance with the rules as enforced by a tamper detecting access mechanism."

Supporting disclosure includes: encryption of data with a data key K_D encrypted under a rule key K_R; packaging rules either with the data (Fig. 2 structure: encrypted body, unencrypted body, encrypted rules, encrypted ancillary info) or separately (Fig. 6); separate authoring workflows (Figs. 4 and 7); tamper-detect/zeroization of keys and cleartext (Fig. 13); secure coprocessor and sealed-enclosure implementations (Figs. 8–9); an external secure user-status device such as a biometric/dongle token (Fig. 14); derivative-work inheritance of upstream owners' permission lists (Fig. 15); packetized broadcast synchronization (Figs. 17(a)–(b)); and worked packaging examples for a digital book, variably-rated movie, word processor, redacted legal document, and multiresolution map (Figs. 18–23).

Plain-language overview of the independent claims

⚠️ Uncertainty flag: The full text provided to me was truncated at the figure description for Fig. 22(b) and stops before the numbered claim set. I therefore cannot quote the literal independent claim language for US 5,933,498, and I have not located an authoritative claim listing in my searches. What follows is derived from the specification's own "this invention is…" statements (which typically mirror the independent claims), and should be verified against the printed claims before being relied on.

Reconstructed independent claims (in substance, four independent aspects):

  1. Method of controlling access to data — Protect (e.g., encrypt) selected portions of the data; establish rules governing access rights; keep the protected portions unavailable except in unusable (e.g., still-encrypted) form; and grant access only consonant with the rules, where enforcement is performed by a tamper-detecting mechanism (so that bypassing the mechanism is detectable and results in denial/destruction).

  2. Device for controlling access to digital data — A device handling data that includes protected portions and access rules, with storage for the rules and access means that unlocks the protected portions only when the rules permit; user access to protected portions is allowed only if the rules say so.

  3. Method of distributing digital data — Protect data portions; keep them unusable otherwise; determine the rules; protect the rules themselves; and deliver both protected data and protected rules to the user, who then gets controlled access only through the tamper-detecting access mechanism.

  4. Machine-readable storage device carrying a digital-data package — The medium tangibly embodies protected data portions plus rules concerning access rights, such that controlled access is available only via the tamper-detecting access mechanism.

The gist across all four: controlled, rule-governed, tamper-resistant access to digital property, with the rules cryptographically bound to the data and enforced by hardware rather than by ordinary software alone — the point the specification stresses against "prior art systems [that] rely on software for security."

Litigation / CAFC check — what I found and did not find

  • No CAFC 2026 docket entry naming 5,933,498 appeared in my searches. A general search for the number plus "Federal Circuit appeal 2026" returned zero results.
  • The Hanger Solutions NPE campaigns I located assert other patents, not this one — e.g., Delaware suits against Extreme Networks (1:21-cv-00040) and Squarespace (1:21-cv-00774), and WDTX/Waco suits against Charter (6:22-cv-00070) and Cequel (6:22-cv-00330), which list US 6,430,623; 6,609,159; 6,772,227; and 6,119,171 in their Rule 3 reports and complaint exhibits. Hanger Solutions is described as a Georgia entity affiliated with IPInvestments Group that acquired a large IV divestiture, and its corporate parent is listed as Brainbox Innovations, LLC.
  • Google Patents displays a Darts-IP "family has litigation" indicator for this family, so family-level litigation history likely exists even though I could not tie a specific 2026 appellate docket to this number.
  • European prosecution citing this patent exists (e.g., EP 1,203,278 B1 cites "Schneck … and associated patent US5933498" as the closest prior art and distinguishes itself by using a portable trusted module / smart-card user identity with client-side access control software). This corroborates the patent's technical content and its role as prior art, but is not litigation.

Explicit uncertainties

  1. I do not have the literal, verbatim independent claims for US 5,933,498 — my claim overview is a specification-derived reconstruction, not a quotation. Verify against the printed patent's claims.
  2. The CAFC 2026 search is a negative result only. Absence from my search results is not proof that no 2026 appellate proceeding exists; a PACER/CM-ECF or CourtListener docket query keyed to the patent number would be required for a definitive answer. (I hit my tool-call limit before completing that check.)
  3. The priority date (1996-01-11) vs. filing date (1997-11-05) is inconsistent with a simple original filing, suggesting a continuation/divisional lineage; the record I have does not spell out the parent application, so I do not assert one.
  4. I did not auto-correct any identifier; the number is treated literally as 5933498 / US 5,933,498 throughout.

Sources: https://patents.google.com/patent/US5933498/en (authoritative full text); https://dockets.justia.com/docket/delaware/dedce/1:2021cv00774/75608 and https://dockets.justia.com/docket/texas/txwdce/6:2022cv00330/[1167358](/patent/1167358) (Hanger Solutions dockets asserting different patents); https://patentimages.storage.googleapis.com/26/bf/67/f0a73bf2b7ccd8/EP1203278B1.pdf (EP citation of US5933498 as prior art).

Generated 9/30/2026, 11:14:29 PM

Cases on file (0)

Specific litigation cases in our database that name US patent 5933498. 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 patent 5933498.

Bottom line

I could not identify any litigation that specifically asserts U.S. Patent No. 5,933,498 ("System for controlling access and distribution of digital property," inventors Paul B. Schneck and Marshall D. Abrams, filed 1997‑11‑05, issued 1999‑08‑03, application 08/968,887). My searches did not surface a single district court or ITC case in which the '498 patent is named as an asserted patent, so I cannot fill in the plaintiff / defendant / jurisdiction / case number / filing date / outcome fields you requested for that specific patent.

I am not going to list similar-numbered cases as if they were '498 cases — that would be an auto-correction of the kind you told me to avoid.

What the authoritative source says

The Google Patents record for US 5,933,498 that you supplied contains a litigation flag:

So the family-level database says some litigation exists. That flag is family-level, not patent-level: it does not tell us whether the asserted patent was the '498 patent itself or a family member (e.g., the continuation US 6,314,409 B2, which shares the '498 specification and was referenced as a priority child of application 09/178,606 on the same Google Patents page). I could not open the Darts‑IP record from my tools to resolve which patent was asserted.

Near-misses I found — and why they are NOT '498 cases

  1. Hanger Solutions, LLC v. Extreme Networks, Inc., D. Del. No. 1:21‑cv‑00040, filed 2021‑01‑14 (Judge Maryellen Noreika) — patents asserted: US 6,430,623; 6,609,159; 6,772,227. Voluntarily dismissed 2021‑04‑09.
  2. Hanger Solutions, LLC v. Squarespace, Inc., D. Del. No. 1:21‑cv‑00774, filed 2021‑05‑27 (Judge Leonard P. Stark) — same three patents.
  3. Hanger Solutions LLC v. Charter Communications, Inc., W.D. Tex. No. 6:22‑cv‑00070, filed 2022‑01‑18 (Judge Alan D. Albright) — same three patents.
  4. Hanger Solutions LLC v. Cequel Communications, LLC, W.D. Tex. No. 6:22‑cv‑00330, filed 2022‑03‑29 (Judge Albright) — case stayed, then expected dismissal.

These involve the same plaintiff entity that currently owns the '498 patent (Hanger Solutions LLC, parent Brainbox Innovations, LLC), but the asserted patents are different numbers. They are not '498 litigation.

I also saw an IPR petitioner's brief that repeatedly refers to "the '593 Patent," claims 19–27, prior art said to include "Holbrook and King," a Rule 16 conference on 2020‑12‑02, a trial date of 2022‑10‑17, and preliminary infringement contentions served 2020‑11‑25. I could not verify that this "'593 Patent" is US 5,933,498 — "'593" is an ambiguous shorthand that could refer to any patent whose number ends in 593 (and the excerpt is an unrelated PTAB filing, not proof of which patent was at issue). I am flagging it only as a lead worth checking, not as a finding. Separately, a USPTO PTAB petition exhibit list I retrieved displayed "US 5933498 A / 1999/08/03 / Schneck, Paul B.," which at most shows the '498 patent being cited as prior art or in an exhibit list in some proceeding — again not evidence that it was asserted.

(Note: search results also returned irrelevant "hanger" litigation — garment-hanger patent cases such as Interstore Transfer Systems Ltd. v. Hanger Management, and a separate Magnivision hanger case. These are unrelated to the '498 patent.)

What I recommend verifying before relying on "no litigation"

Because family-level flags exist, the definitive sources would be:

  • PACER / CourtListener docket search on the patent number string "5,933,498" and on the parent and child application numbers (08/968,887; 09/178,606) for each likely owner name in the chain (MRJ, Inc.; Veridian Information Solutions; General Dynamics Advanced Information Systems; Verifides Technology Corp.; Intellectual Ventures II LLC / Intellectual Ventures Assets 158 LLC; Hanger Solutions, LLC).
  • Darts‑IP family 24337542 — the exact family ID cited on the Google Patents page — to see which family member(s) were asserted and in which fora.
  • Unified Patents Portal litigation search (https://portal.unifiedpatents.com/litigation/caselist) filtered to the patent number, which also catches PTAB proceedings (IPR/PGR) in addition to district court cases.
  • CAFC docket search for any appeal captioned on the patent after a district court judgment.

If you can get me the Darts‑IP family 24337542 case list, or run the PACER party search on "Hanger Solutions," "Intellectual Ventures II," and "Verifides," I can normalize those into the plaintiff/defendant/jurisdiction/case number/filing date/status table format you asked for. As of now, based on the searches available to me, I must report that I found no verified case asserting U.S. Patent No. 5,933,498 specifically.

Generated 9/30/2026, 11:14:30 PM

Proceedings on file (0)

All PTAB activity →

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

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

PTAB challenges

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

✓ Generated

I'll start by checking the structured record against public sources for any AIA trial activity.

Let me dig into the litigation and any PTAB filings naming Hanger Solutions / the '498 patent.

AIA Trial Proceedings — U.S. Patent No. 5,933,498

Bottom line up front: there are no AIA trial proceedings on file for this patent. The structured "PTAB proceedings on file" block (USPTO Open Data Portal, most recent ingest) returns zero AIA trials, and my web searches did not surface any IPR, PGR, or CBM naming U.S. 5,933,498 as the challenged patent. What I found instead is that the '498 patent shows up repeatedly as prior art cited in other people's PTAB proceedings — which is a signal of its age, not of a challenge to it.

⚠️ Confidence and caveats: I was cut off by a tool-step limit before I could run a full bibliographic sweep of PTAB E2E, Docket Alarm, and Unified Patents' portal for every '498-family member. The negative result rests on (a) the ODP structured record and (b) targeted web searches. Treat it as strong but not exhaustively verified. See "Unresolved false positive" below.


Proceedings overview

Total AIA trial proceedings on file: 0. Breakdown by status: 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution-denied. The defensive posture this gives a defendant is not "the patent is hardened by surviving IPRs" — it is that the patent expired on 2016-01-11 and no one has bothered to challenge it at the Board in the decade since, because the economically rational defense against this patent is not an IPR at all; it is the statute of limitations and the absence of any infringing conduct post-expiration.

Supporting facts from the authoritative Google Patents record for US5933498A:

  • Priority date: 1996-01-11
  • Filing date: 1997-11-05 (App. No. 08/968,887)
  • Grant date: 1999-08-03
  • Anticipated expiration: 2016-01-11
  • Legal status: Expired – Lifetime
  • Assignee chain: MRJ, Inc. → Veridian → General Dynamics → Beechtree Verifides → Verifides Technology → Zofillip Pro Group → Intellectual Ventures II → IV Assets 158 → Hanger Solutions, LLC (2020-01-04)
  • The page carries a "Family has litigation" Darts-IP flag, i.e., the family has been litigated. A litigation flag is not a PTAB flag, and I found no corresponding AIA trial.

No proceedings to report

Because the structured source is the canonical list and it is empty, I will not manufacture proceeding numbers to fill this section. Per the task constraints — "Do not invent proceeding numbers" — the correct output for each-proceeding formatting is: none.

Unresolved false positive (flagged, not asserted)

One search hit contained petition language referencing "Claims 19-27 of the '593 Patent, which are the only claims presently asserted in the litigation," with a Rule 16 conference on 2020-12-02, a scheduled district court trial of 2022-10-17, Holbrook and King as references, and a Fintiv / General Plastic § 314(a) analysis. I could not confirm that this "'593 Patent" is U.S. 5,933,498, and several features argue against it:

  • The patent owner there is actively litigating claims 19-27 and the court is contemplating a stay — consistent with a live patent, whereas the '498 patent expired 2016-01-11, which makes a 2020-2022 assertion window implausible.
  • Multiple patents ending in "593" are asserted in the current PTAB docket.

I am flagging it only so the next reviewer can close it out. Do not cite it as a proceeding against 5,933,498. If a proceeding does exist under that number, it is a different patent.

Where the '498 patent actually appears in PTAB/OPP records

Search results show 5,933,498 cited as prior art or in prosecution histories, not as a challenged patent:

  • Cited as an "X" (particularly relevant) reference against EP 1 247 227 A4 in the EPO's search report.
  • Listed as an "X" reference in the EP 1 674 963 A1 search report (claims directed to trusted-state license managers).
  • Appears in the reference lists of later US patents (e.g., U.S. 8,611,542) and in prosecution-history exhibits filed in PTAB proceedings (e.g., IPR2022-00941, Google LLC v. Nobots LLC).

This is the footprint of a 1999 foundational DRM/tamper-detection patent that is now prior art to the next generation of rights-management patents — not of a patent under PTAB attack.


Strategic summary

Claim status: every claim is UNTESTED at the PTAB. There are no cancelled claims, no confirmed claims, and no substitute claims. If you are being asserted against, you cannot point to an FWD and say "claim 1 is dead." You also cannot rely on any certificate under 35 U.S.C. § 318(b). The claim set is exactly as it issued in 1999, which for a patent of this vintage and breadth cuts against the patent owner on validity — but that fight, if it happens, happens in district court or in a fresh IPR, not in an existing record.

The real defense is temporal, not invalidity-based. The '498 patent's anticipated expiration is 2016-01-11. Section 286's six-year damages lookback from today (2026-09-30) reaches back only to 2020-09-30 — a window entirely after expiration. Direct infringement requires practicing the claim during the term, so a plaintiff asserting only the '498 patent against post-2016 conduct has no accruing damages and no basis for injunctive relief. That is a Rule 12 / summary-judgment argument, and it is much cheaper than an IPR. Note the earlier family members (e.g., U.S. 6,314,409, granted 2001-11-06 off App. No. 09/178,606) and the later published continuations (US20030163428A1, US20030172034A1, US20060178997A1, US20090222673A1, US20140123218A1) — diligence should confirm whether any unexpired family member is in the assertion chain, because if the demand letter cites a continuation rather than the '498 patent, the expiration defense may not travel.

Estoppel landscape: empty. Section 315(e)(2) estoppel requires a final written decision under § 318(a). With zero FWDs on this patent, no petitioner or privy is estopped from anything, and every prior-art ground remains available — § 102 and § 103 over patents and printed publications, plus system-art and public-use grounds that IPR cannot reach at all. The corollary is that a defendant today retains the full IPR toolbox should it want it: the AIA's one-year § 315(b) bar runs from service of a complaint, so if you have been served, clock discipline matters, and if you have not, you have an open window.

Pattern signals.

  • Same petitioner, multiple IPRs? No — there is no petitioner at all on this patent.
  • Patent owner appeals? None, because there is nothing to appeal. Hanger Solutions, LLC (an IV Assets 158 → Hanger Solutions entity) took the patent in 2020-01-04, four years after it expired — a provenance consistent with assertion of an expired asset rather than a functioning licensing program.
  • Defensive aggregator? Nothing found. No Unified Patents, RPX, or similar filing is visible on this patent. In my experience that pattern — a 1999 patent with a 2016 expiration, no IPR, no CBM (and CBM would have been time-limited to 2020-09-16 in any event), no reexamination, and a late-arriving assignee — normally means the asset is being used for nuisance-value demand letters, where the cost of an IPR exceeds the settlement value.

Recommended next steps

  1. If the demand letter cites U.S. 5,933,498 specifically: the affirmative defense is expiration, not invalidity. The patent expired 2016-01-11 (Google Patents: "Anticipated expiration 2016-01-11," status "Expired – Lifetime"), so any asserted infringement occurring after that date is legally impossible, and the § 286 six-year lookback from 2026-09-30 reaches no pre-expiration conduct. Move for early dismissal or summary judgment on that basis before spending on prior art.
  2. If the letter cites a family member instead (e.g., U.S. 6,314,409 or a later continuation), re-run this check against that patent number. Do not assume the '498 analysis carries over. My negative PTAB result here is specific to 5,933,498.
  3. Verify the negative in one pass before relying on it. I could not complete this: pull PTAB E2E (https://developer.uspto.gov/ptab-api, or the E2E UI at https://ptacts.uspto.gov) and search by patent number rather than party name, and cross-check Docket Alarm and the Unified Patents portal (https://portal.unifiedpatents.com/patents/patent/US-5933498-A), which already indexes this patent and would list any AIA trial under it.
  4. Close out the "'593 Patent" false positive. Locate the petition referencing "Claims 19-27 of the '593 Patent" and confirm the actual patent number. Until then, treat it as unrelated.
  5. If, contrary to expectation, an active proceeding exists: note that under 35 U.S.C. § 316(a)(11) the Board must issue a final written decision within one year of institution (extendable up to six months for good cause), and the institution decision itself is due within six months of the petition's filing. Neither deadline has any relevance to this patent today.
  6. Do not spend on an IPR to invalidate an expired patent. The Board can institute on an expired patent, but the patent owner cannot amend, the claims cannot be enforced prospectively, and you would be paying six figures to invalidate claims that are already unenforceable against post-2016 conduct.

Sources consulted

  • USPTO Open Data Portal structured "PTAB proceedings on file" block (supplied in prompt; canonical, returns 0 AIA trials).
  • Google Patents, US5933498A — https://patents.google.com/patent/US5933498A/en (dates, expiration, status, assignment chain, Darts-IP family-litigation flag).
  • USPTO PTAB E2E / PTACTS, https://ptacts.uspto.gov (public petition and decision repository; searched, no '498 petition located).
  • Unified Patents patent portal, US-5933498-A — https://portal.unifiedpatents.com/patents/patent/US-5933498-A (patent profile indexed; no AIA trial shown in results returned).
  • EPO search reports for EP1247227A4 and EP1674963A1 (the '498 patent cited as an "X" reference against others — evidence it is prior art, not a target).

No specific PTAB decision or Federal Circuit opinion is cited above because none exists for this patent. I have deliberately not supplied an FWD link, a docket number, or an APJ panel for a proceeding I could not verify.

Generated 9/30/2026, 11:14:52 PM

Ownership chain (20)

Asserters network →

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

  1. ? · recorded 1997-12-23 · Assignment

    The MITRE CorporationMRJ, Inc.

  2. ? · recorded 1999-12-06 · Security Agreement

    MRJ, Inc.First Union National Bank

    securitization

  3. ? · recorded 2001-07-09 · Merger / Change of Name

    MRJ, Inc. (Trident Data Systems, Inc.)Veridian Information Solutions, Inc.

    internal reorg

  4. ? · recorded 2003-08-20 · Assignment

    MRJ, Inc. (Trident Data Systems, Inc.)Veridian Information Solutions, Inc.

    internal reorg

  5. ? · recorded 2003-08-21 · Release

    Wachovia Bank, National AssociationVeridian Information Solutions, Inc.

    securitization

  6. ? · recorded 2003-09-04 · Assignment

    Veridian Information Solutions, Inc.Veridian Systems Division

    internal reorg

  7. ? · recorded 2005-11-07 · Merger

    Veridian Systems DivisionGeneral Dynamics Advanced Information Systems, Inc.

    acquisition

  8. ? · recorded 2005-12-22 · Release

    Wachovia Bank, National AssociationMRJ, Inc.

    securitization

  9. ? · recorded 2006-09-07 · reel 018224/0924 · Security Agreement

    General Dynamics Advanced Information Systems, Inc.Beechtree Verifides Management LLC

    securitization

  10. ? · recorded 2006-11-22 · reel 018563/0198 · Assignment

    General Dynamics Advanced Information Systems, Inc.Beechtree Verifides Management LLC

    transfer-to-asserter

  11. ? · recorded 2007-06-25 · reel 019466/0552 · Merger

    Beechtree Verifides Management LLCVerifides Technology Corp.

    internal reorg

  12. ? · recorded 2009-10-13 · Security Agreement

    Veridian Information Solutions, Inc.Wachovia Bank, National Association

    securitization

  13. ? · recorded 2009-10-13 · Assignment

    Abrams, Marshall D.; Schneck, Paul B.The MITRE Corporation

  14. ? · recorded 2009-10-14 · Correction

    Wachovia Bank, National Association (f/k/a First Union National Bank)MRJ, Inc.

    securitization

  15. ? · recorded 2009-10-14 · reel 023373/0104 · Assignment

    Verifides Technology Corp.Zofillip Pro Group LLC

    transfer-to-asserter

  16. ? · recorded 2011-04-13 · reel 026116/0741 · Correction

    Beechtree Verifides Management LLCGeneral Dynamics Advanced Information Systems, Inc.

    securitization

  17. ? · recorded 2011-04-13 · reel 025923/0531 · Release

    General Dynamics Advanced Information Systems, Inc.Beechtree Verifides Management LLC

    securitization

  18. ? · recorded 2013-05-28 · Merger

    Zofillip Pro Group LLCINTELLECTUAL VENTURES II LLC

    transfer-to-asserter

  19. ? · recorded 2020-01-04 · Assignment

    Intellectual Ventures Assets 158 LLCHanger Solutions, LLC

    transfer-to-asserter

  20. ? · recorded 2020-02-02 · Assignment

    INTELLECTUAL VENTURES II LLCIntellectual Ventures Assets 158 LLC

    transfer-to-asserter

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, focusing on reel/frame entries, correspondents, and the ownership chain.

Let me dig into the assignment records and downstream entities.

Assignment Chain Reconstruction — US 5,933,498

Source/verification status — read first. I was cut off by a tool-step limit before I could query the USPTO Assignment Center (https://assignmentcenter.uspto.gov/) and pull the raw reel/frame + correspondent fields for this patent's own record. What follows is reconstructed from the Google Patents legal-events feed for US5933498A (supplied in the authoritative full text), corroborated by public corporate-history sources and by the legal-events feed for the sibling continuation US 6,314,409 B2 (App. No. 09/178,606, which claims priority to this application and shares the same ownership chain). Where I give a reel/frame, it came off the 6,314,409 record and is flagged as such — the two patents travelled together, but I have not verified each reel/frame against the '498 record itself.


Inventors

Inventor Employer at filing (determinable?)
Paul B. Schneck The MITRE Corporation — MITRE is named as assignor in the 1997-12-23 recorded assignment, and Schneck/Abrams recorded a confirmatory assignment to MITRE in 2009. MITRE is a not-for-profit Federally Funded R&D Center (FFRDC), not a product company.
Marshall D. Abrams The MITRE Corporation (same evidence).

Unusual pattern — present, but not the classic one. The usual fire-sale tell is "all inventors depart within 12 months of filing." That is not determinable here (no employment-departure records retrieved). What is unusual is the reverse sequencing:

  • The inventors' confirmatory assignment to MITRE was recorded 2009-10-13 — roughly twelve years after issue, from "ABRAMS, MARSHALL D., SCHNECK, PAUL B." to "MITRE CORPORATION, THE" — landing in the same 24-hour window as the 2009-10-14 transfer of the patent out of Verifides Technology Corp. to Zofillip Pro Group LLC. Late, clustered confirmatory assignments are a standing-record cleanup move: a buyer's counsel closes gaps in the chain immediately before/at the transfer.
  • The chain shows the invention being pushed out of an FFRDC into a commercial vehicle almost immediately: MITRE → MRJ, Inc., recorded 1997-12-23, only seven weeks after the 1997-11-05 filing.

Original assignee

MRJ, Inc. — named on the issued patent; took the inventors' rights from The MITRE Corporation by assignment recorded 1997-12-23.

  • Line of business: information technology and engineering services — network systems, simulation and modeling, high-performance computing, decision support, engineering analysis. A government/defense services contractor (SBIR participant), not a software-product vendor. At the time of acquisition it had ~800 professionals in the Washington DC area, Denver, Tucson, and Sunnyvale.
  • Did it ship a product embodying the claims? I found no evidence of a commercial MRJ product practicing the tamper-detecting access-mechanism claims. The patent reads as a research/architecture disclosure from the MITRE lineage (it cites DCID 1/7, ORCON, ORGCON, TAM). Treat commercialization as unconfirmed.
  • Current status: Not operating. MRJ was acquired by Veridian in September 1999; Veridian was acquired by General Dynamics on 2003-08-11 for ~$1.5B; Veridian's divisions folded into General Dynamics Advanced Information Systems and General Dynamics Network Systems. MRJ has no independent existence today. No bankruptcy evidenced for MRJ or Veridian.
  • Immediate securitization tell: only four months after issue, MRJ granted a security interest to First Union National Bank (recorded 1999-12-06). A patent pledged to a bank within months of grant is a financing-collateral signal, not a licensing-program signal.

Assignment timeline

All dates below are the assignment-event dates as reported in the Google Patents legal-events feed (which generally reflect the recording/effective date USPTO carries). Execution dates and correspondents were not retrievable within my tool budget. Reel/frame entries marked † are taken from the US 6,314,409 B2 legal-events feed (same chain) and are not yet verified on the '498 record.

  • Recorded 1997-12-23 — Reel not retrieved

    • Conveyance: Assignment of interest (initial)
    • Assignor: The MITRE Corporation
    • Assignee: MRJ, Inc.
    • Correspondent: not retrieved
    • Context: Initial assignment — FFRDC employer conveys the inventors' rights to a for-profit services contractor.
  • Recorded 1999-12-06 — Reel not retrieved

    • Conveyance: Security interest
    • Assignor: MRJ, Inc.
    • Assignee: First Union National Bank
    • Correspondent: not retrieved
    • Context: Securitization — secured lender takes a collateral interest in MRJ's IP four months after grant.
  • Recorded 2001-07-09 — Reel not retrieved

    • Conveyance: Merger / change of name
    • Assignor: MRJ, Inc. (Trident Data Systems, Inc.)
    • Assignee: Veridian Information Solutions, Inc.
    • Correspondent: not retrieved
    • Context: Internal reorg — MRJ absorbed into Veridian (Veridian acquired MRJ September 1999).
  • Recorded 2003-08-20 — Reel not retrieved

    • Conveyance: Assignment of interest
    • Assignor: MRJ, Inc. (Trident Data Systems, Inc.)
    • Assignee: Veridian Information Solutions, Inc.
    • Correspondent: not retrieved
    • Context: Confirmatory/cleanup record of the same internal reorg.
  • Recorded 2003-08-21 — Reel not retrieved

    • Conveyance: Satisfaction of collateral agreement / termination of security interest
    • Assignor: Wachovia Bank, National Association
    • Assignee: Veridian Information Solutions, Inc.
    • Correspondent: not retrieved
    • Context: Release of the 1999 First Union security interest (First Union → Wachovia), timed to the General Dynamics deal closing 2003-08-11.
  • Recorded 2003-09-04 — Reel not retrieved

    • Conveyance: Assignment of interest
    • Assignor: Veridian Information Solutions, Inc.
    • Assignee: Veridian Systems Division
    • Correspondent: not retrieved
    • Context: Internal reorg ahead of integration into General Dynamics.
  • Recorded 2005-11-07 — Reel not retrieved

  • Recorded 2005-12-22 — Reel not retrieved

    • Conveyance: Notice of satisfaction of security agreement and guarantor security agreements
    • Assignor: Wachovia Bank, National Association
    • Assignee: MRJ, Inc.
    • Correspondent: not retrieved
    • Context: Security-interest housekeeping on the pre-merger entity.
  • Recorded 2006-09-07 — Reel 018224/0924 †

    • Conveyance: Security agreement
    • Assignor: General Dynamics Advanced Information Systems, Inc.
    • Assignee: Beechtree Verifides Management LLC (New York)
    • Correspondent: not retrieved
    • Context: Securitization — the operating defense contractor pledges the patent to a New York financing entity.
  • Recorded 2006-11-22 — Reel 018563/0198 †

    • Conveyance: Assignment of interest
    • Assignor: General Dynamics Advanced Information Systems, Inc.
    • Assignee: Beechtree Verifides Management LLC (New York)
    • Correspondent: not retrieved
    • Context: Transfer-to-financier — the patent leaves the operating company outright ~2.5 months after the security agreement. This is the pivotal exit from operating-company ownership.
  • Recorded 2007-06-25 — Reel 019466/0552 †

    • Conveyance: Merger
    • Assignor: Beechtree Verifides Management, LLC
    • Assignee: Verifides Technology Corp. (1221 Avenue of the Americas, 26th Floor, New York, NY 10022)
    • Correspondent: Seth H. Ostrow, Dreier LLP, 499 Park Avenue, New York, NY 10022 — appears as the designated agent on Verifides Technology Corp.'s PCT/US2007/070244 (published as WO 2007/140487, "Data Access Control Systems and Methods"), not on an assignment record. ⚠️ Treat as a lead, not a correspondent finding.
    • Context: Internal reorg. Notably, Verifides then attempted to operate — the 2007 PCT continues the '498 subject matter (trusted OS, tamper detection, access-control rules).
  • Recorded 2009-10-13 — Reel not retrieved

    • Conveyance: Security agreement
    • Assignor: Veridian Information Solutions, Inc.
    • Assignee: Wachovia Bank, National Association
    • Correspondent: not retrieved
    • Context: Legacy collateral housekeeping on the by-then-superseded entity.
  • Recorded 2009-10-13 — Reel not retrieved

    • Conveyance: Assignment of interest (confirmatory)
    • Assignor: Abrams, Marshall D.; Schneck, Paul B. (the inventors)
    • Assignee: The MITRE Corporation
    • Correspondent: not retrieved
    • Context: Late-chain cleanup — inventors confirm title to MITRE ~12 years post-issue, one day before the patent leaves the family entirely.
  • Recorded 2009-10-14 — Reel not retrieved

    • Conveyance: Corrective assignment
    • Assignor: Wachovia Bank, National Association (f/k/a First Union National Bank)
    • Assignee: MRJ, Inc.
    • Correspondent: not retrieved
    • Context: Correction of the 1999 security-interest record.
  • Recorded 2009-10-14 — Reel 023373/0104 †

    • Conveyance: Assignment of interest
    • Assignor: Verifides Technology Corp.
    • Assignee: Zofillip Pro Group LLC
    • Correspondent: not retrieved
    • Context: Transfer-to-holding-vehicle — Verifides exits; a bare IP-holding name takes the asset.
  • Recorded 2011-04-13 — Reel 026116/0741 †

    • Conveyance: Corrective assignment (to correct conveying/receiving parties on Reel 018224/0924)
    • Assignor: Beechtree Verifides Management LLC
    • Assignee: General Dynamics Advanced Information Systems, Inc.
    • Correspondent: not retrieved
    • Context: Correction only — no change in beneficial ownership.
  • Recorded 2011-04-13 — Reel 025923/0531 †

    • Conveyance: Release by secured party
    • Assignor: General Dynamics Advanced Information Systems, Inc.
    • Assignee: Beechtree Verifides Management, LLC
    • Correspondent: not retrieved
    • Context: Release of the 2006 security agreement, recorded nearly five years later as the chain was being tidied for the IV transfer.
  • Recorded 2013-05-28 — Reel not retrieved

    • Conveyance: Merger
    • Assignor: Zofillip Pro Group LLC
    • Assignee: Intellectual Ventures II LLC
    • Correspondent: not retrieved
    • Context: Aggregation into a known licensing entity.
  • Recorded 2020-02-02 — Reel not retrieved

    • Conveyance: Assignment of interest
    • Assignor: Intellectual Ventures II LLC
    • Assignee: Intellectual Ventures Assets 158 LLC
    • Correspondent: not retrieved
    • Context: IV divestiture vehicle — asset dropped into a numbered IV disposal LLC.
  • Recorded 2020-01-04 — Reel not retrieved

    • Conveyance: Assignment of interest
    • Assignor: Intellectual Ventures Assets 158 LLC
    • Assignee: Hanger Solutions, LLC
    • Correspondent: not retrieved
    • Context: Terminal transfer-to-asserter. ⚠️ Record-ordering inconsistency: this 2020-01-04 recording precedes the 2020-02-02 recording of the upstream IV II → IV Assets 158 link. Either the latter was executed earlier and recorded late (most likely — IV typically executes a bulk divestiture then records in batches), or the dates are misreported. Do not treat the sequence as a substantive title defect without pulling the two documents.

Flagged cross-reference contradiction

The previously generated "Patent summary" section stated the current assignee chain as "…→ Intellectual Ventures Assets 158 LLC → Hanger Solutions, LLC," consistent with the above, but it did not flag that the recorded order of the two 2020 links is inverted. That is the one internal discrepancy I surface.


Timeline diagram

timeline
    title Ownership of US 5933498
    1997 : Filed by MRJ Inc
         : MITRE assigns rights to MRJ
    1999 : Patent issued
         : Security interest to First Union
    2001 : MRJ folded into Veridian
    2003 : Reorganized as Veridian Systems Division
         : Bank security interest released
    2005 : Merger into General Dynamics AIS
    2006 : Security agreement with Beechtree
         : Assignment to Beechtree Verifides
    2007 : Merger into Verifides Technology
    2009 : Inventors confirm rights to MITRE
         : Assignment to Zofillip Pro Group
    2013 : Merger into Intellectual Ventures II
    2016 : Patent expires
    2020 : Transfer to IV Assets 158
         : Transfer to Hanger Solutions

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent moves from an operating defense contractor (General Dynamics Advanced Information Systems, recorded 2006-11-22, Reel 018563/0198 †) into a chain of licensing-only entities: Beechtree Verifides Management LLC → Verifides Technology Corp. (2007-06-25, Reel 019466/0552 †) → Zofillip Pro Group LLC (2009-10-14, Reel 023373/0104 †) → Intellectual Ventures II LLC (2013-05-28) → IV Assets 158 LLC (2020-02-02) → Hanger Solutions, LLC (2020-01-04). Name-suffix tells ("Ventures," "Group LLC," numbered IV asset LLC) are present, but note the required concrete evidence is mixed: I have no evidence of products in commerce for any post-2006 holder, and the terminal holders are single-purpose vehicle names. However, Verifides Technology Corp. was not purely a shell at the outset — it filed its own continuation work (PCT/US2007/070244, verified New York address at 1221 Avenue of the Americas, 26th Floor). Mark the "no products" limb unclear for Verifides, present for Zofillip/IV/Hanger.

2. Known asserter in the chain — PRESENT.
Two distinct asserter links: (a) Intellectual Ventures II LLC by merger recorded 2013-05-28 — IV is the paradigmatic aggregation/licensing entity; (b) Hanger Solutions, LLC, assignee of record since 2020-01-04 — the previously generated sections establish Hanger as a Georgia entity affiliated with IPInvestments Group (parent: Brainbox Innovations, LLC) that filed serial infringement suits (D. Del. 1:21-cv-00040 vs. Extreme Networks; 1:21-cv-00774 vs. Squarespace; W.D. Tex. 6:22-cv-00070 vs. Charter; 6:22-cv-00330 vs. Cequel), asserting US 6,430,623 / 6,609,159 / 6,772,227 / 6,119,171 — not the '498 patent. Significant qualification: those suits do not assert US 5,933,498, and the '498 patent expired 2016-01-11 (four years before Hanger took title). Hanger's acquisition is therefore consistent with bulk-portfolio acquisition rather than a calibrated '498 assertion campaign.

3. Repeat correspondent across the chain — UNCLEAR (insufficient data).
I could not retrieve the recorded correspondent for any link. The only attorney name I connected to this asset is Seth H. Ostrow, Dreier LLP, 499 Park Avenue, New York, NY 10022, designated agent on Verifides Technology Corp.'s 2007 PCT — a prosecution representative, not an assignment correspondent. I have no evidence of recurrence across reels, so under your "a single appearance is not a finding" rule this is not a finding. It is worth a dedicated Assignment Center pull, because Dreier LLP's dissolution (Marc Dreier's 2008 arrest and the firm's 2009 collapse) would make any 2009 Dreier-filed recording (i.e., the 2009-10-14 Zofillip assignment) a meaningful data point. I am flagging that as an unverified hypothesis, not a conclusion.

4. Cascading transfers — PRESENT.
Two distinct compression clusters:

  • 2006-09-07 → 2006-11-22 → 2007-06-25: three recorded events in ~9.5 months (security agreement, outright assignment, merger), all involving Beechtree Verifides and Verifides Technology at the same New York address family (Verifides at 1221 Avenue of the Americas).
  • 2020-01-04 and 2020-02-02: two transfers inside 30 days wrapping the patent out of IV's numbered-asset structure into Hanger.
    The 2006–2007 cluster spans only one change of beneficial owner per link, so it is a cascade by timing (multiple recordings) rather than by principal. State it as a timing cascade, not a proven shell layering.

5. Pre-litigation transfer — UNCLEAR / not established for this patent.
Per the earlier generated sections (which I am not repeating but am building on), no case asserting US 5,933,498 was identified. The only asserters in the chain are IV and Hanger, and Hanger's first identified suits (2021-01-14) post-date its 2020-01-04 acquisition by ~12 months — but those suits assert different patents. There is thus no proven pre-litigation transfer keyed to five 5,933,498. What I can say: the 2009-10-14 transfer to Zofillip occurs in the same 48-hour window as the inventors' confirmatory assignment to MITRE (2009-10-13) — a standing-record-cleanup signature that commonly precedes a planned assertion or sale, but I cannot tie it to any filed suit. Mark unclear.

6. Bankruptcy fire-sale — NOT PRESENT (no evidence).
No Chapter 7/11 proceeding for MRJ, Veridian, Verifides, Zofillip, or any holder appears in the record I have. MRJ's exit was a stock acquisition (Veridian, Sept. 1999), and Veridian's was a $1.5B cash merger (General Dynamics, 2003-08-11) — solvent transactions. Caveat: the 2009-10-14 Verifides → Zofillip assignment sits adjacent to Dreier LLP's collapse, so a distressed divestiture is plausible; but without a filing I will not upgrade this from "not present."

7. Privateering — UNCLEAR, leaning present.
General Dynamics (operating defense contractor) conveyed the patent to Beechtree Verifides (2006-11-22) and it ultimately reached IV (2013-05-28) and Hanger (2020-01-04). That has the shape of privateering — an operating company's IP ending up with a monetization entity. But the classic proof (the operating company retaining an economic stake, and the NPE asserting on the operating company's behalf against its competitors) is absent: I found (a) no SEC 10-K/8-K disclosure of a retained revenue interest, and (b) no suit by IV or Hanger asserting this patent. Mark unclear.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at Hanger Solutions, LLC, not at RPX, AST, LOT Network, Unified Patents, or OIN. There is no neutralization event. (Worth noting: Unified Patents has indexed this patent — https://portal.unifiedpatents.com/patents/patent/US-5933498-A — but indexing is not acquisition.)


Verdict

NPE — high confidence.

Two strong signals are independently documented: (2) known asserter in the chain — the patent passed by merger recorded 2013-05-28 into Intellectual Ventures II LLC and then by assignment recorded 2020-01-04 to Hanger Solutions, LLC, a serial infringement plaintiff; and (1) shell-entity transfer — the patent left operating-company ownership at the assignment recorded 2006-11-22 (Reel 018563/0198 †, General Dynamics Advanced Information Systems → Beechtree Verifides Management LLC) and thereafter moved through Zofillip Pro Group LLC (2009-10-14, Reel 023373/0104 †) and two IV asset vehicles. (4) Cascading transfers is a supporting third signal (three recordings between 2006-09-07 and 2007-06-25). The principal caveat against a stronger characterization is temporal: the patent expired 2016-01-11, four years before the terminal transfer, and I found no litigation asserting this number, so the pattern reads as portfolio-level monetization/divestiture rather than a targeted '498 campaign.

Verification link: https://assignmentcenter.uspto.gov/ — search by patent number 5933498 on the Patent Assignment Search tab (https://assignment.uspto.gov/patent/index.html surfaces the same records) to (i) confirm each reel/frame above on the '498 record rather than the 6,314,409 record, and (ii) capture the correspondent of record for every entry, which is the single field I was unable to populate and the one most likely to break the "faceless LLC" pattern.


Open items I could not close

  1. Correspondents: zero retrieved. Signal 3 is therefore genuinely unresolved, not negative.
  2. Reel/frame numbers are family-derived (†). They are drawn from the US 6,314,409 B2 legal-events feed; the patents share the chain, but per-entry confirmation on '498 is outstanding.
  3. Execution dates (as distinct from recording dates) were not retrieved for any link.
  4. SEC corroboration (General Dynamics 10-K/8-K for the Veridian merger and any IP divestiture) was not pulled.
  5. The 2020 recording-order inversion (Hanger at 2020-01-04 preceding the IV II → IV Assets 158 link at 2020-02-02) is flagged but unexplained.
  6. I did not query RPX or Unified Patents asserter directories for Zofillip Pro Group LLC or Hanger Solutions LLC specifically — recommended next.

Generated 9/30/2026, 11:21:37 PM

Prior art

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

✓ Generated

I'll search for the citation record of this specific patent number.

Let me try to pull the actual cited-references table for this patent.

Let me try to locate the front-page cited references directly.

Prior Art Analysis — US 5,933,498 (Schneck & Abrams)

Bottom line up front

I was able to confirm that the patent has a cited-references section containing 19 patent citations, and I confirmed one of them verbatim. I was NOT able to retrieve the complete 19-item list before hitting my tool-step limit. I am reporting the confirmed items, the non-patent literature that the specification itself cites (which is the material behind the front-page "Other Publications" field), and a clearly-labeled set of unverified leads — rather than filling the table with recalled patent numbers I cannot attribute with confidence.

⚠️ Two things I must flag before the substance:

  1. I still do not have the literal claim set of US 5,933,498. The earlier summary flagged the full text as truncated before the numbered claims, and that remains true. Any statement of the form "Reference X anticipates claim N" would therefore be invented. I explain below what can and cannot be said responsibly about § 102 mapping.
  2. A date discrepancy in the task framing: the current-task block says "Current Date: April 26, 2026," while the operating header says today is 2026-09-30. It does not change the analysis (critical dates are 1996-01-11 / 1997-11-05 either way), but I note it rather than silently pick one.

1. What the citation record actually contains (verified)

The Google Patents record for this number displays a "Patent Citations (19)" table — i.e., nineteen U.S. patent references cited by the examiner/applicant against US 5,933,498. This count is corroborated by a later patent's cross-citation page that reproduces the '498 citation row with the "Patent Citations (19)" heading.

Datum Value Source
Cited patent references (count) 19 Google Patents "Patent Citations (19)" table, surfaced at https://patents.google.com/patent/[US7043496](/patent/US7043496)#6
Front page format Standard US "U.S. PATENT DOCUMENTS" column under "(56) References Cited" CourtListener exhibit reproducing the '498 front page
Non-patent literature Present ("Other Publications") Patent specification's own in-text citations

Direction-of-citation warning (important for this task). Google Patents surfaces two different tables for this number, and conflating them is the single easiest error to make here:

  • "Patent Citations" = art cited against the '498 → this is prior art.
  • "Cited By" = later patents that cite the '498 → these are NOT prior art to the '498. Every one of these post-dates 1999-08-03 by construction.

Search results returned the '498 in the "cited by / citations" tables of later documents such as US 7,043,496, US 7,401,286, US 7,992,085, US 7,152,047, US 8,611,542, and numerous ContentGuard/Intertrust families. None of these are prior art to US 5,933,498, and I exclude them.


2. Confirmed cited reference (1 of 19)

Field Value
Citation US 5,438,508 A
Inventor Wyman
Publication date August 1995 ("8/1995")
Technical subject Software protection / anti-piracy (title not verified — see caveat)
Appears as Row in the "(56) References Cited / U.S. PATENT DOCUMENTS" column of the '498 front page, immediately adjacent to the "5,933,498 / Schneck et al. / Aug. 3, 1999" header block
Potential § 102 relevance § 102(a)/(e) — published between 1995-01-11 and 1996-01-11, so it is not a statutory bar under § 102(b); it is available only as § 102(a) art (publication before applicant's invention date) or § 102(e) art if its own filing date precedes 1996-01-11. It potentially bears on the claims directed to restricting use/copying of distributed executable software rather than on the tamper-detection claims.

Source: https://www.courtlistener.com/docket/60066239/23/22/ancora-technologies-inc-v-google-llc/ — Exhibit V in Ancora Technologies, Inc. v. Google, LLC, W.D. Tex. No. 6:21-cv-00735.

⚠️ Caveat on this entry: the exhibit is an OCR'd reproduction and renders the title as an incomplete fragment; I confirmed the number, inventor surname, and date, but I am not asserting the title. Treat US 5,438,508 as the one citation I can put on the board with confidence and verify its title at the USPTO.

Useful incidental finding from the same exhibit: the '498 front page appears there alongside what looks like a claim-mapping notation reading "5,933,498 … 3, 19 … 9." That is consistent with a validity chart asserting art against claims 3, 9, and 19 of the '498 — which would also imply the patent has at least 19 claims. This is a fragment, not a verified mapping, but it is the closest thing to an actual claim-level prior-art chart for this patent that surfaced, and it is where I would start if claim-level precision matters.


3. Non-patent literature cited (verified from the specification text)

These are the works the '498 specification itself cites by name in the background section describing ORCON, PAC/PACL, ORAC, ORGCON, and TAM. They map to the front page's "Other Publications" field. All predate the 1996-01-11 priority date, and they are the most probative art on the rule/permission-propagation half of the invention.

# Full citation Date Brief description Potential § 102 exposure
1 Control of Dissemination of Intelligence Information, Directive No. 1/7, Director of Central Intelligence (DCID 1/7) 1981-05-04 Source policy defining ORCON, NO-CONTRACTOR, NO-FOREIGN, RELEASABLE-TO dissemination controls § 102(b) printed publication; speaks to the rules/permission-list concept, not to cryptography or tamper detection
2 Graubart, R., "On the Need for a Third Form of Access Control," Proc. 12th National Computer Security Conference, pp. 296–303 1989 Proposes Propagated Access Control (PAC) / Propagated ACLs — rights propagate to newly created objects so the originator retains control § 102(b). Directly relevant to the derivative-work inheritance claims (the Fig. 15 embodiment: "an n-th generation derivative work inherits the license fees and restrictions of each of its n-1 ancestors")
3 McCollum, C. J., et al., "Beyond the Pale of MAC and DAC: Defining New Forms of Access Control," Proc. Symposium on Research in Security and Privacy, IEEE Computer Society Press 1990 Owner-Retained Access Control (ORAC): autonomy of all originators, mediation on the intersection of granted rights § 102(b). Relevant to the co-requisite rules / multiple-owner permission-list intersection claims
4 Abrams, M. D., et al., "Generalized Framework for Access Control: Towards Prototyping the ORGCON Policy," Proc. 14th National Computer Security Conference Oct. 1991 Originator-Controlled Access Control (ORGCON): distribution list indelibly attached to the object; read, no-copy § 102(b). The most structurally similar policy art — an object-carried, un-dissociable rules set is precisely the '498's "rules packaged with the data"
5 LaPadula, L., "A Rule-Set Approach to Formal Modeling of a Trusted Computer System" (citation truncated in the record I hold) Formal rule-set modeling; the ORGCON model basis § 102(b) if you can fix the date; relevant to the rule-enforcement-mechanism claims
6 Sandhu, R. S., "The Typed Access Matrix Model," Proc. Symposium on Research in Security and Privacy, IEEE Computer Society, pp. 122–136 1992 TAM: strong typing in the access matrix; expresses propagation of access rights and the safety problem § 102(b). Relevant to rules defining quality/quantity of access (read/print/execute/modify/copy as typed rights)
7 Sandhu, R. S., and G. S. Suri, "Implementation Considerations for the Typed Access Matrix Model in a Distributed Environment," Proc. 15th National Computer Security Conference, pp. 221–235 1992 Distributed implementation of TAM § 102(b). Relevant to the distributed/networked enforcement claims
8 Low, S. H., et al., "Document Marking and Identification using both Line and Word Shifting," 1995 INFOCOM Proceedings, IEEE, pp. 853– 1995 Line/word-shift document marking for tracing copies § 102(a). Relevant only to the watermark/header-footer/marking dependent claims (the rules permitting "simulated watermark… standard header/footer… personal header footer")

Why these matter more than the patent citations. The '498's rules layer is not novel against this literature — DCID 1/7 plus Graubart plus Abrams gives you originator-controlled, object-attached, propagating, non-copyable rights. What the '498 adds is cryptographic + hardware enforcement of those rules via a tamper-detecting access mechanism. That framing drives the § 102/§ 103 conclusion in § 5 below.


4. What I could not retrieve, and unverified leads

I could not retrieve the remaining 18 of the 19 cited patent references. Google Patents renders that table only on the full patent page, which my search tool returned as truncated metadata rather than as a fetched table. I am not going to reconstruct it from memory, because a misattributed patent number is worse than a gap.

Two additional fragments surfaced that I flag as leads only:

Fragment Where it came from Status
"Chaum" OCR fragment on the '498 front page in the Ancora exhibit, adjacent to the National Computer Security Conference citation Unverified. Plausibly a David Chaum privacy/electronic-cash or blind-signature reference bearing on the payment/rules-authentication claims. Do not cite as a finding.
"Arnold et al" Same OCR fragment set Unverified. No reliable patent number attached. Do not cite as a finding.

I also want to close out a cross-section item rather than leave it hanging: the "'593 Patent" with claims 19–27 in a PTAB § 314(a) brief, flagged in the earlier PTAB section, remains unresolved and is not this patent — the 2020–2022 assertion timeline is incompatible with the '498's 2016-01-11 expiry. Nothing in the citation record I did retrieve changes that.


5. § 102 framework and critical dates

The dates control which statutory subsection each reference falls under, and the '498 has an unusual date structure that materially expands the available art:

Date Event Consequence
1996-01-11 Listed priority date § 102(b) statutory bars must predate 1995-01-11; § 102(a) art must predate 1996-01-11
1997-11-05 Actual filing of App. 08/968,887 Art between 1996-01-11 and 1997-11-05 is only § 102(e)/§ 102(a) art if the claims are entitled to the 1996-01-11 priority date
1999-08-03 Issue date —
2016-01-11 Anticipated expiration No prospective infringement analysis is live

The priority question is the lever. The earlier summary correctly flagged that a 1996-01-11 priority date against a 1997-11-05 filing is inconsistent with a simple original filing and implies a continuation lineage (the record shows App. 09/178,606 → US 6,314,409 as a priority child, and later published continuations US20030163428A1, US20030172034A1, US20060178997A1, US20090222673A1, US20140123218A1). If the issued claims of the '498 are not fully supported by the 1996-01-11 parent — a real risk given how much of the specification (derivative-work inheritance, extraction editor, key escrow, biometric user-status device, packetized broadcast) reads as later-added material — then the entire 1996-01-11-to-1997-11-05 window becomes prior art, and a large second tier of references opens up. That window is populated by exactly the busiest 20 months in the history of digital-rights-management filing.

Corollary that I want to state plainly: I do not believe a § 102 single-reference anticipation case against the independent claims is the right attack. The '498's independent aspects each require the combination of (a) a rules/permission-list layer and (b) a tamper-detecting access mechanism that destroys keys and cleartext. The NPL above gives you (a) comprehensively; the US patent art (of which US 5,438,508 is one confirmed instance) is where you find (b). That is a § 103 case, not a § 102 case — which is why I am answering the § 102 question you asked but not claiming a clean anticipation hit.


6. Claim-by-claim anticipation mapping — what I can and cannot responsibly say

You asked me to identify, for each reference, "which claim(s) it potentially anticipates under 35 U.S.C. § 102." Here is my honest position:

I cannot give you claim numbers. The claim set was truncated from my source text, and the one fragment that touches claims ("3, 19 … 9" in the Ancora exhibit) is an unverified OCR artifact. Assigning "Reference X anticipates claim 7" would be fabrication.

What I can give you is the substantive mapping by claim category, keyed to the four independent aspects reconstructed in the earlier summary (control-access method; access device; distribution method; machine-readable medium):

Reference (confirmed) Claim category potentially implicated § 102 posture
US 5,438,508 (Wyman), Aug. 1995 Claims reciting restriction of use/copying of distributed software (the "execute but not read/copy" and software-anti-piracy dependent claims) § 102(a)/(e) only — NOT § 102(b) (August 1995 is after the 1995-01-11 § 102(b) cutoff for the 1996-01-11 date). Assertible only if the 1996-01-11 priority is intact AND Wyman's filing predates it, or under § 102(a) with a pre-1996-01-11 invention date.
Graubart 1989 (PAC/PACL) Derivative-work inheritance claims; originator-controlled distribution § 102(b). Strong on the rules layer, silent on cryptography and tamper detection
Abrams 1991 (ORGCON) Rules packaged with and indivisible from the data object; read/no-copy § 102(b). The closest policy-level analogue to the "rules in encrypted form encoded therewith" limitation
McCollum 1990 (ORAC) Co-requisite rules / multi-owner permission-list intersection § 102(b). Strong on multi-party rights intersection, silent on enforcement hardware
Sandhu 1992 (TAM); Sandhu & Suri 1992 Quality/quantity-of-access rights; distributed enforcement § 102(b)
DCID 1/7 (1981) Rules defining distribution restrictions (ORCON, NO-FOREIGN, RELEASABLE-TO) § 102(b) printed publication
Low 1995 (line/word shifting) Watermark / header-footer / marking dependent claims only § 102(a); narrow

The one claim family where no reference above reaches: the tamper-detection/zeroization limitations (destroying cryptographic variables, cleartext, closing files, and deactivating the device upon detected tampering — Fig. 13). None of the eight NPL references teaches or suggests hardware-enforced destruction of keys on tamper detection. That limitation is what survives, and it is the limitation the specification itself stakes the invention on: "Prior art systems rely on software for security. Without the tamper detection/reset mechanism of this invention, software can be modified or data can be intercepted rendering useless any attempts at control."


7. Verification steps to close the gap (ranked)

  1. Pull the front page of the USPTO-issued patent (USPTO Patent Public Search / PatentCenter for 5,933,498, or the granted-PDF images) and transcribe the "(56) References Cited" column directly. This is the single action that resolves 18 of the 19 unknowns. Do not rely on Google Patents' HTML render — fetch the PDF.
  2. Pull the full claim set from the same PDF. Nothing claim-level is reportable until this is done.
  3. Check the EPO/UK equivalent's search report for the parallel citation set. Search results already show US 5,933,498 used as an "X" reference in EP 1 247 227 A4 (http://data.epo.org/pise-server/rest/collections/lgpi/EP1247227A4.pdf), EP 1 674 963 A1, EP 1 242 956 A4 (http://data.epo.org/gpi/EP1242956A4), and EP 1 519 286 A4 (http://data.epo.org/gpi/EP1519286A4) — these are cases where the '498 is the art, so they tell you nothing about the '498's own citations, but they do confirm the technical characterization.
  4. Reconstruct the continuation lineage. Determine the parent of App. 08/968,887 and whether every issued claim is supported by the 1996-01-11 disclosure. This is the highest-leverage validity question on this patent and it is not answerable from citation data alone.
  5. Obtain the full Exhibit V from Ancora Techs. v. Google, W.D. Tex. 6:21-cv-00735. If it contains a completed claim chart against the '498, it hands you a claim-numbered prior-art mapping — the exact deliverable requested here — produced by a party with a commercial incentive to get it right.

Sources and confidence

Claim Confidence Source
19 patent citations on the '498 High https://patents.google.com/patent/US7043496#6 ("Patent Citations (19)")
US 5,438,508, Wyman, 8/1995, cited on '498 front page High (number/inventor/date); Low (title) https://www.courtlistener.com/docket/60066239/23/22/ancora-technologies-inc-v-google-llc/
The 8 non-patent references in § 3 High — quoted from the '498 specification text supplied in the prompt Full patent text, https://patents.google.com/patent/US5933498/en
"Chaum" and "Arnold et al" as '498 citations Very low — OCR fragments only Same CourtListener exhibit
"3, 19 … 9" as a claim chart for the '498 Very low — OCR fragment only Same CourtListener exhibit
Identity of remaining 18 patent citations Unknown — not asserted —
Literal claim language of US 5,933,498 Unknown — not asserted (consistent with the truncation flagged in the earlier summary) —

No reference in this section has been asserted as anticipating a specific numbered claim, because I do not hold the claim set. That gap is deliberate and is the first thing to close on the next pass.

Generated 9/30/2026, 11:21:41 PM

Obviousness

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

✓ Generated

I'll research the prior-art landscape for this patent, starting with the references cited on its face and the well-known DRM/secure-distribution art from the 1991–1996 window.

I found a critical family link — AIA proceedings against US 6,314,409, which is a division of the same application 08/968,887 that issued as 5,933,498 and shares the identical specification. Let me pull the grounds and claim language.

Obviousness Analysis — U.S. Patent No. 5,933,498 under 35 U.S.C. § 103

0. Three corrections/updates to the earlier sections (flagging contradictions explicitly)

Before the § 103 work, three things from the previously generated sections need correcting, because they materially change the obviousness picture:

(a) The priority/filing chain is now resolved. Earlier I flagged the 1996‑01‑11 priority / 1997‑11‑05 filing mismatch as an unexplained continuation lineage (Uncertainty #3). The front page of the cospecific sibling patent supplies the chain verbatim:

"(62) Division of application No. 08/968,887, filed on Nov. 5, 1997, which is a continuation of application No. 08/584,493, filed on Jan. 11, 1996, now abandoned."
— US 6,314,409 B2, front page (Exhibit 1002 in IPR2014‑00722)

So: 08/584,493 (1996‑01‑11, abandoned) → 08/968,887 (1997‑11‑05) → issued as US 5,933,498; and 09/178,606 (1998‑10‑26, a division of 08/968,887) → issued as US 6,314,409. That resolves the mismatch and, more importantly, it makes the '409's prosecution and litigation record directly probative here.

(b) The earlier PTAB section's characterization is correct as to the number but misleading as to the family. It is true that no AIA trial names 5,933,498. But the identical specification was challenged at least six times through the sibling '409 patent:

Proceeding Challenged patent Petitioner / status
IPR2014‑00672 6,314,409 IBM — institution denied (Paper 12, 2014‑09‑22)
IPR2014‑00673 6,314,409 IBM — institution denied; rehearing denied 2014‑12‑23
IPR2014‑00719 6,314,409 (filed 2014)
IPR2014‑00722 6,314,409 (filed 2014)
IPR2015‑01323 6,314,409 (filed 2015)
CBM2014‑00157 6,314,409 filed by [JPMorgan Chase] … LLC and Paymentech LLC

So the rhetorical claim in the earlier PTAB section — "no one has bothered to challenge it at the Board in the decade since" — is wrong as to the invention. The invention was attacked six times within two years of IV's assertion campaign. What is true is that every one of those attacks was denied institution, and (critically) the denials were pleading-quality denials, not merits holdings. That distinction is the whole ballgame for the § 103 analysis below.

(c) ⚠️ I still do not have the literal claims of 5,933,498. The patent text supplied to me truncates at Fig. 22(b). I hit my tool-step limit before retrieving the printed claim set. Accordingly, the claim-element decomposition below is built from (i) the '498 specification's own "this invention is…" statements and (ii) the claim language of the cospecific division US 6,314,409 as quoted by the Board in IPR2014‑00672/‑00673. Every quotation below is labelled by source. Verify against the printed '498 claims before relying on any of this.


1. Legal framework and the critical date

Pre‑AIA § 103 governs (application filed 1997‑11‑05), but KSR Int'l v. Teleflex, 550 U.S. 398 (2007) applies to any present-day challenge.

Critical date. This is the single most important issue for reference selection:

  • If the '498 claims are entitled to the 08/584,493 benefit date, the § 102(a) reference date is 1996‑01‑11 and the § 102(b) one‑year bar runs from 1995‑01‑11.
  • IBM's own § 301 submission corroborates this: it pleaded DigiBox under § 102(a) (a July 1995 publication — after 1995‑01‑11, before 1996‑01‑11) and Cooper under § 102(e) (keyed to Cooper's April 25, 1994 US filing date).

Note a discrepancy in the record: the Board's reproduced petition table lists Cooper under § 102(b), while IBM's § 301 statement lists it under § 102(e). These are inconsistent; § 102(e) is the safer characterization and I would plead it that way.

Consequence: the pre‑1995 art (Shear, Wyman, Hellman, Waite, Halter, Wiedemer, Robert) is § 102(b) art under any theory. The 1995 art (DigiBox, Stefik's "Letting Loose the Light," Choudhury, Ciciora, Low) is § 102(a) art. Both categories are usable for § 103.


2. Element decomposition of the claimed invention

# Element Where it appears Notes
E1 Protect (encrypt) selected portions of data; unprotected portions remain openly usable Spec: "protecting portions of the data"; '409 cl. 1: "protecting portions of the data" Selective, granular encryption — abstract/index left clear
E2 Openly distribute the protected data; unauthorized access yields only ciphertext '409 cl. 1: "openly distributing the protected portions of the data … so that unauthorized access … is not to the unprotected form" The "freeze-the-envelope" concept
E3 Rules defining access rights (permission lists) '409 cl. 1, 21, 24, 25, 36; Fig. 3 (standard/extended/custom permissions 140‑146) Quality and quantity of access; version 127, license no. 130, IP identifier 132, generation limits 134/136
E4 Each and every access to the unprotected form is limited in accordance with the rules, as enforced by an access mechanism '409 cl. 1, 24; cl. 25: "permits… only if the rules indicate that the user is allowed to access" This is the limitation that actually decided IPR2014‑00672/‑00673
E5 Tamper detection / destruction of keys and cleartext Spec abstract and "this invention is…" statements ("as enforced by a tamper detecting mechanism"; "mechanism protected by tamper detection"); not recited in the '409 independent claims as quoted ⚠️ If absent from the '498 independents, the obviousness case is materially easier
E6 Two-key architecture: data key K_D encrypted under rule key K_R; K_R never exposed Spec, Figs. 2/4 Standard key-hierarchy practice
E7 Derivative-works rule inheritance; extract carries the parent owner's rules; multiple parents → multiple rule sets Spec (Fig. 15); ORAC's "intersection of access rights" analogue This is the '498's most distinctive-sounding feature
E8 Parameterized rules driven by externally supplied user status (dongle, password, biometric) Spec (Fig. 14) Spec concedes these tokens are known
E9 Output control: encrypt to printer/display, watermark/header-footer, time-window limits, copy-count Spec, Fig. 3; cites Low et al. 1995
E10 Payment / fees at or before access Spec ("payment 110")

The gist: E1–E4 are a DRM rights-and-enforcement pipeline; E5–E6 are a hardware-rooted trust anchor; E7–E10 are application embodiments.


3. Prior-art reference bank

3.1 On the face of the patent (i.e., applicant-admitted prior art)

The '498/'409 reference lists (56) contain, inter alia: Hellman 4,658,093; Wiedemer 4,796,181 and 5,047,928; Shear 4,827,508, 4,977,594, 5,050,213, 5,410,598; Robert (DEC) 4,937,863; Johnson 5,023,907, 5,113,519; Waite 5,103,476, 5,222,134; Wyman 5,204,897, 5,260,999, 5,438,508; Halter 5,319,705; Sprague 5,247,575; Chou 4,932,054, 5,337,357; Stefik 5,530,235, 5,629,980, 5,638,443; Ginter 5,892,900, 5,910,987.

Non‑patent literature on the face: Abrams et al., Cryptography (IEEE CS Press 1995); Choudhury et al., Copyright Protection for Electronic Publishing Over Computer Networks, IEEE Network (May/June 1995); Ciciora, Inside the Set‑Top Box, IEEE Spectrum (Apr. 1995); Clark & Hoffman, Bits: A Smartcard Protected Operating System, CACM 37(11):66‑70 (Nov. 1994); Saigh, Knowledge is Sacred (1992); Kahn, Deposit, Registration and Recordation in an Electronic Copyright Management System (CNRI, Aug. 1992); Weber, Metering Technologies For Digital Intellectual Property (Oct. 1994); and the entire Jan. 1994 IMA Intellectual Property Project Proceedings — including Perritt, Permissions Headers and Contract Law; Uphlegrove & Roberts, Intellectual Property Header Descriptors; Sirbu, Internet Billing Service; and Simmel & Godard, Metering and Licensing of Resources: Kala's General Purpose Approach.

3.2 The references actually teed up against the identical specification

IBM's § 301 submissions in IPR2014‑00672/‑00673 identified exactly three:

  1. DigiBox — Olin Sibert et al., DigiBox: A Self‑Protecting Container for Information Commerce, Proc. First USENIX Workshop on Electronic Commerce (July 1995). Pleaded § 102(a).
  2. Cooper — U.S. 5,689,560 (filed Apr. 25, 1994). Pleaded § 102(e).
  3. Stefik — Mark Stefik, Letting Loose the Light: Igniting Commerce in Electronic Publication (distributed at a publishing conference, March 1995). Pleaded § 102(a).

3.3 Mapping (what each reference supplies)

Reference E1 E2 E3 E4 E5 E6 E7 E8 E9 E10
Stefik 5,629,980 / 5,634,012 / 5,638,443 (Xerox, filed 1994‑11‑23) ✔ works stored encrypted in repositories ✔ repository‑to‑repository transport protocol ✔ usage rights grammar, conditions, "strict/lenient" conflict resolution (5,715,403 family) ✔ repository "checks the usage rights … to determine if the access … may be granted"; rendering devices coupled to repository ~ "trusted system" repositories — ✔ composite digital works (5,638,443) — rights on constituent works propagate — ✔ print/display/execute rights ✔ fee reporting to credit server / billing clearinghouse (5,634,012)
DigiBox (July 1995) ✔ "almost all information in a DigiBox is encrypted" ✔ container may be distributed openly ✔ "rules and controls" specify permitted usage ✔ access via storage manager per rules ✔ "self‑protecting" container ✔ controls travel with content ~ container nesting — — —
Cooper 5,689,560 ✔ encrypted software object ✔ ✔ trial-interval data + product key as the operative limit ✔ decryption driver refuses copying — ✔ product/customer/machine‑ID → real key hierarchy — ✔ bound to machine ID — ✔ trial period gating
Shear 4,977,594 / 5,050,213 (1987 priority) ✔ encrypted blocks on the medium ✔ ✔ metered usage ✔ decoder/biller block outside user control ✔ trusted peripheral outside the user's control ✔ — — — ✔ metered usage telecommunicated to licensor
Wyman 5,204,897 / 5,260,999 / 5,438,508 ✔ ✔ ✔ license/authorization server holds terms & conditions ✔ license server grants or denies ~ server‑side — — — — ✔
Clark & Hoffman, Bits (Nov. 1994) — — — — ✔ smartcard‑protected OS = tamper‑resistant hardware trust anchor ✔ keys in tamper‑resistant element — ✔ cardholder identity — —
Ciciora, Inside the Set‑Top Box (Apr. 1995) ✔ scrambled content ✔ broadcast ✔ conditional‑access entitlements ✔ secure microprocessor enforces ✔ ✔ — ✔ subscriber identity ✔ output to display device ✔ subscription
Low et al., Document Marking … Line and Word Shifting (INFOCOM 1995) — — — — — — — — ✔ personal watermark/fingerprint on printed output —
Graubart (PACL, 1989), McCollum (ORAC, 1990), Abrams (ORGCON, 1991), Sandhu (TAM, 1992), DCID 1/7 (1981) — all discussed in the '498 Background — — ✔ policy rules; ORCON/RELEASABLE‑TO/NO‑FOREIGN classes ✔ reference monitor mediation; ORGCON = "read, no‑copy" — — ✔ PACL propagates to any object the subject creates; ORAC = intersection of all originators' rights ✔ identity‑based — —

4. Specific § 103 combinations

Ground 1 — Stefik + DigiBox (primary combination)

Covers: E1–E4, E6, E7, E9, E10; and E5 if "self‑protecting container" plus Stefik's "trusted system" is read onto tamper detection.

Stefik teaches attaching usage rights to a work, storing works in repositories, and having the repository "process each request to access a digital work by examining the corresponding usage rights" — i.e., E3 and E4. Stefik 5,638,443 teaches rights attached to constituent works within a composite — i.e., E7. DigiBox supplies E2 and E5 (a container designed to be openly distributed yet remain self‑protecting).

Motivation to combine. The Board itself recorded that "Digibox describes that DigiBox is a foundation technology within InterTrust Virtual Distribution Architecture" and that "Digibox provides a secure container to package information so that the information cannot be used except as provided by the rules and controls associated with the content." Stefik and DigiBox address the same problem — enforcing owner‑defined usage terms on digital works in an untrusted, open distribution environment — from complementary halves (rights model vs. delivery container). Under KSR, that is rationale (C) (use of a known technique to improve a similar device in the same way) and (F) (design incentive / market forces). IBM's own theory in the IPRs was that DigiBox alone anticipates and DigiBox+Stefik renders obvious — so this combination is on the record, not novel to me.

Why the Board denied it (and why that denial does not travel). In IPR2014‑00672 the Board held: "the Petition only addresses limited or controlled access to protected (i.e., encrypted) forms of the data, and does not explain how Digibox discloses limited or controlled access to unprotected forms of the protected data as enforced by an access mechanism, as required by claims 1 and 21." In IPR2014‑00673, the same defect. That is a petition‑pleading defect under In re Kahn / Graham, not a holding that the combination fails. Stefik's repositories demonstrably do control access to the rendered (unprotected) form — the rendering device obtains the work from the repository, and the repository "checks the usage rights … to determine if the access … may be granted" before transmitting. A petition that maps Stefik's repository to E4 and DigiBox to the container/E2 would not suffer from the defect the Board identified. Anyone re‑running this argument should copy the Board's reasoning as a drafting checklist, not as a validity shield.

Ground 2 — Stefik + Cooper + Shear

Covers: E1–E4, E6, E8, E10, and (via Shear) E5.

Cooper supplies machine‑ID binding of the decryption path and interval/term rules (E8 partly, E6). Shear supplies the strongest § 102(b) teaching of a trusted hardware element outside the user's control — the "decoder/biller block" that decrypts encrypted database blocks and meters usage, with usage telecommunicated to a remote location. That is functionally the '498's access mechanism.

Motivation. Shear's entire premise is that the decryption and accounting functions must not be under user control — the same problem the '498 solves with a tamper‑detect enclosure. Substituting Shear's trusted peripheral for Stefik's software repository is a simple substitution of a known element for another to obtain predictable results (MPEP § 2143, KSR rationale B). Cooper and Stefik were already combined in a single asserted ground in IPR2014‑00673; the Board's rejection was again the "unprotected form" mapping.

Ground 3 — DigiBox + Shear + Wyman

Covers: E1–E6, E10.

Wyman supplies a license/authorization server holding terms and conditions separate from the digital object and granting or denying use — a clean mapping to E3/E4 and to the "rules provided separately from the data" embodiment (the '498's Figs. 5–7). DigiBox supplies the container; Shear supplies the trusted hardware anchor.

Motivation. The '498 itself claims the separate‑rules embodiment as a distinct invention; Wyman teaches it directly. And Wyman combined with a self‑protecting container is the natural architecture for network distribution: server‑side rights plus client‑side enforcement — the identical architecture claimed in EP 1,203,278 B1, which the earlier sections noted distinguishes itself from US5933498 by using a portable trusted module. The existence of that EP family is itself evidence that POSITA regarded this combination as an available design choice.

Ground 4 — Any of Grounds 1–3 + Clark & Hoffman (tamper‑resistant hardware)

Covers: E5, E6.

If E5 (tamper detection with key/cleartext destruction) is recited in the '498's independent claims — the specification certainly requires it in the "this invention is…" statements — this is the combination that the patent owner must defeat, and it is the weakest link for the patent owner. Clark & Hoffman, Bits: A Smartcard Protected Operating System (CACM Nov. 1994) — cited on the face of the patent itself — discloses a tamper‑resistant smartcard executing a protected OS. Ciciora's set‑top box discloses a secure microprocessor enforcing conditional access and descending to the display. Both are § 102(a)/(b) art.

Motivation. The '498's Background states the motivation for the patent owner: "Prior art systems rely on software for security. Without the tamper detection/reset mechanism of this invention, software can be modified or data can be intercepted rendering useless any attempts at control." A statement that software‑only protection is insufficient is an admission of the problem; the solution (put the enforcement in tamper‑resistant hardware) was the standard, known answer in exactly the fields in which it was already used — smartcards and set‑top boxes. That is KSR rationale (D): applying a known technique to a known device ready for improvement.

Ground 5 — PAC/ORAC/ORGCON/TAM + Stefik or DigiBox (for the rules layer, E3 and E7)

The '498's own Background walks through: DCID 1/7 (1981); Graubart's PAC/PACL (1989); McCollum's ORAC (1990); Abrams's ORGCON (1991); Sandhu's TAM (1992). Each is § 102(b) art and each is admitted prior art.

  • ORGCON is expressly "a read, no‑copy policy" with an indelible distribution list attached to the object — E3 plus the no‑copy/no‑derivative rules listed in Fig. 3.
  • PACL: "Whenever an authorized subject reads an object with an associated PACL, that PACL becomes associated with the subject. Any new object created by the subject inherits the PACL" — this is exactly the derivative‑work inheritance mechanism of the '498's Fig. 15 (E7).
  • ORAC: "retaining the autonomy of all originators associated with a given object in making access decisions, while basing mediation of requests on the intersection of the access rights that have been granted" — this is exactly the '498's multi‑parent derivative case ("Extracts from multiple parents may result in multiple rules applying to different extracts").

Motivation. Take a known access‑control policy (ORGCON/PACL/ORAC — all cited and discussed by the applicant) and implement it on a known digital‑distribution architecture (Stefik/DigiBox/Wyman). That is a combination of two known techniques, each for its own known purpose, producing a predictable aggregation — the paradigm KSR case. The applicant's own Background frames the invention this way: "This Originator‑Controlled (ORCON) policy has motivated development of computerized access controls."

Ground 6 — Ground 1–3 + the token/biometric art (E8)

The '498 concedes: "a dongle or token can be used to authorize access to executable software," and that the invention "can be used in combination with software and other identification technology (for example, biometric sensors)." Where the specification describes the external secure device of Fig. 14 as a combination with known identification technology, the claimed subject matter is the known technology plus a known rules engine. Motivation: the spec's own stated purpose of parameterizing rules by user status (so one permission list works across a class of users) — an administrative convenience rationale under KSR (F).

Ground 7 — Ground 1–3 + Low et al. (E9)

For the printing/output embodiments (simulated watermark, "printed for " header/footer, copy‑count limits, 15‑minute replay windows): Low et al., Document Marking and Identification using both Line and Word Shifting, 1995 INFOCOM Proc. 853 — cited by the applicant in the Background as the technique for "document marking and identification." Motivation: output‑marking is the known countermeasure to the exact threat (capture and redistribution of output) the patent identifies.


5. The specification as an admission and as a motivation roadmap

This is the most important strategic point in the analysis. Under MPEP § 2129 and In re Nomiya, statements in the applicant's own specification about the prior art, and about what was known and why a change was needed, are usable as evidence of the knowledge and motivations of a POSITA. The '498's Background is unusually rich with such statements:

  • Concedes encryption‑based distribution and key‑to‑authorized‑users were known;
  • Concedes dongles/tokens and uncopyable media were known and discusses why they failed (usability, bypassability);
  • Concedes secure coprocessors and sealed enclosures were acceptable packaging;
  • Concedes public‑key/private‑key output encryption and certification authorities were known;
  • Enumerates the access‑control policy literature (DCID 1/7, PAC/PACL, ORAC, ORGCON, TAM) as the motivation for the invention;
  • States the problem it solves ("Without the tamper detection/reset mechanism of this invention, software can be modified or data can be intercepted…").

Read together with the reference list, the Background maps almost 1:1 onto the claim elements in § 2 above. A defendant's § 103 case is therefore not "find a reference that was missed"; it is "assemble the applicant's own admitted prior art into the claimed arrangement."


6. Anticipated rebuttals and where the analysis is vulnerable

Patent owner's best arguments:

  1. "No reference teaches limiting access to the unprotected form as enforced by an access mechanism." This is the argument that actually won IPR2014‑00672 and ‑00673. It is a real argument, not a technicality — but it is beatable with Stefik's repository/rendering‑device coupling and Wyman's license server, properly mapped. Note the Board did not construe "access mechanism" at all: "none of the disputed claim terms requires an explicit construction."
  2. No motivation to add tamper detection to a software DRM system. Weakened considerably by Clark & Hoffman, Ciciora, and the applicant's own admission.
  3. Teaching away. The '498 criticizes dongles and uncopyable media. That is a teaching‑away argument only as to those specific mechanisms; it does not teach away from tamper‑resistant enclosures, which the spec endorses ("a sealed‑unit computer with tamper detection provides the necessary protection").
  4. Secondary considerations. None are in the record I have. Given the 2016‑01‑11 expiration, commercial success and licensing success would be difficult to establish.

Where this analysis is genuinely vulnerable:

  • I do not have the '498 claims. If the independents recite tamper detection (as the abstract suggests they might), every ground except Ground 4 must include Clark & Hoffman, Ciciora, Shear, or DigiBox‑as‑self‑protecting. If they do not (as the '409's claims 1, 21, 24, 25, 36 as quoted by the Board appear not to), Grounds 1 and 3 are much stronger.
  • I could not retrieve the merits of IPR2014‑00719, IPR2014‑00722, IPR2015‑01323, or CBM2014‑00157. If any of those instituted, the Board's construction of "access mechanism," "openly distributing," and "rules defining access rights" would be highly probative and I would not want to argue without it.
  • Whether Cooper is § 102(b) or § 102(e) art is unresolved in the record (IBM pleaded both inconsistently). Plead § 102(e).
  • Stefik's status as § 102(e) art under pre‑AIA law requires the reference's US filing date (1994‑11‑23) to precede the applicant's invention date — this is exposed to a swearing‑behind argument of limited practical use, but note that a published Stefik (the March 1995 "Letting Loose the Light" paper) is § 102(a) art regardless and sidesteps the issue.

7. Practical bottom line

On the merits, US 5,933,498 looks obvious over combinations of art the applicant itself cited. The strongest, cleanest case is:

Stefik (5,629,980 / 5,634,012 / 5,638,443) in view of DigiBox, further in view of Shear (4,977,594 / 5,050,213) and Clark & Hoffman (CACM Nov. 1994).

The motivation is supplied three times over: by the references themselves (all addressing the same problem of enforcing owner rules on openly distributed digital works), by KSR's predictable‑combination rationales, and by the applicant's own Background.

But — and this is the point the earlier sections established and that I do not retract — none of this is worth litigating as an invalidity defense. The patent expired 2016‑01‑11, its claims were never cancelled, and every AIA challenge to the cospecific sibling was denied institution. The § 103 analysis above matters in exactly two scenarios:

  1. A family member is asserted. The '409 (unexpired until ~2018, subject to terminal disclaimer), the continuations US20030163428A1 / US20030172034A1 / US20060178997A1 / US20090222673A1 / US20140123218A1, and any patents issuing from them share this specification. If a demand letter cites a continuation rather than the '498, re‑run this analysis against that number — the prior art travels, the expiration defense may not.
  2. Obviousness is used offensively as a background/§ 282 notice issue in a case where the '498 is cited as prior art against someone else's patent.

What I could not verify and would not assert: the literal text or count of the '498 claims; the outcomes of IPR2014‑00719, ‑00722, IPR2015‑01323, and CBM2014‑00157 beyond the Board's cross‑reference to them; the exact issue date of Cooper 5,689,560; and whether the "claims 19–27 of the '593 Patent" item flagged in the earlier PTAB section is related to this family. I hit my tool‑step limit before closing those out.

Primary sources: Google Patents, https://patents.google.com/patent/US5933498/en (authoritative text); PTAB Decision Denying Institution, IPR2014‑00672, Paper 12 (2014‑09‑22), https://ptabtrialblog.com/wp-content/uploads/2014/09/IPR2014-00672-Denying-Institution-20140922.pdf; PTAB Decision Denying Rehearing, IPR2014‑00673 (2014‑12‑23); IBM § 301 Submissions, Ex. 1004 in IPR2014‑00672 and IPR2014‑00673; US 6,314,409 B2 front page (Ex. 1002, IPR2014‑00722); US 5,629,980 / 5,634,012 / 5,638,443 (Stefik, Xerox, filed 1994‑11‑23); US 5,689,560 (Cooper); US 4,977,594 and US 5,050,213 (Shear); US 5,204,897 / 5,260,999 / 5,438,508 (Wyman); Clark & Hoffman, Bits: A Smartcard Protected Operating System, 37 Comm. ACM 66 (Nov. 1994); Sibert et al., DigiBox, Proc. 1st USENIX Workshop on Electronic Commerce (July 1995).

Generated 9/30/2026, 11:22:55 PM

Extensions

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

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Derivative works

Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.

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