Invalidity dossier
US 6768999
Current assignee: Mirror Worlds, LLC
Added 9/30/2026, 9:45:11 PM
Active provider: DeepSeek · deepseek-v4-flash
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll verify the patent record and check for any 2026 CAFC activity.
Let me check for any 2026 litigation activity and verify the patent's current status.
Let me do a final targeted check on litigation status and docket activity.
Verification note on the search
I ran targeted searches against patent records and Federal Circuit docket material for the literal string 6768999 / 6,768,999. Two things worth stating up front:
- I found no 2026 Court of Appeals for the Federal Circuit docket activity naming U.S. Patent No. 6,768,999. The most recent appellate activity I could trace for this patent family is the 2024 Mirror Worlds v. Meta Platforms appeal (Fed. Cir. No. 22-1600, decided Dec. 4, 2024), and I could not confirm that '999 was among the patents asserted there — treat that as unverified.
- A large fraction of "Mirror Worlds" results returned by search concern the sibling patents 6,006,227, 6,638,313, and 6,725,427 — not 6,768,999. I have deliberately excluded those from the identification below and flag them only where they bear on '999's history.
My primary source is the authoritative full text supplied in the prompt (Google Patents, https://patents.google.com/patent/[US6768999](/patent/US6768999)/en, fetched 2026-09-30).
1. Identification — US 6,768,999 B2
| Field | Value (as recorded) |
|---|---|
| Patent number | US 6,768,999 B2 |
| Title | "Enterprise, stream-based, information management system" |
| Application number | US 09/892,258 |
| Filing date | 2001-06-26 |
| Issue/publication date | 2004-07-27 |
| Earliest priority date | 1996-06-28 (claimed from US 08/673,255) |
| Inventors | Randy Prager; Peter Sparago |
| Original assignee | Mirror Worlds Technologies LLC |
| Listed current assignees | Recognition Interface Inc.; Mirror Worlds Technologies LLC |
| Status | Expired – Lifetime; adjusted expiration 2017-09-28 |
| Classification | G06F16/93 (document management systems); G06F16/30; Y10S707/99931, /99941, /99943 |
| Claims | 1 claim total (one independent claim) — no dependent claims |
| Publication (pre-grant) | US 2002/0055946 A1 (2002-05-09) |
Family / continuity (per the record): The '999 is a continuation-in-part of US 09/398,611 (filed 1999-09-17, now US 6,638,313), which is itself a continuation of US 08/673,255 (filed 1996-06-28, now US 6,006,227). It also claims benefit of provisional applications 60/240,480 (2000-10-13) and 60/274,575 (2001-03-09). Related child applications include US 10/455,607 (pub. US 2004/0139396 A1) and US 11/528,070 (now US 7,865,538).
Prosecution/ownership chain (from the reassignment record): Mirror Worlds Technologies, Inc. → Recognition Interface, Inc./LLC → Plainfield Specialty Holdings I Inc. → Mirror Worlds, LLC → Mirror Worlds Technologies, LLC. A 2009 filing in the E.D. Tex. case confirms that Mirror Worlds Technologies, Inc. sold its rights in the '999 (along with the '227, '313 and '427) to Recognition Interface, Inc. in or around June 2004, and that Plainfield Specialty Holdings I purchased them in Dec. 2007 and assigned them to Mirror Worlds, LLC in March 2008.
2. Abstract (verbatim)
"Disclosed is a computer program product and method that operate an enterprise information system of at least one server and a number or personal computers communicating with each other and with the server. The program product and method create object models that have a consistent structure from and about information assets that are of diverse types and come from diverse software, and display browse cards about the information assets in a time-ordered stream, together with glance views related to the document object models. The glance views are displayed essentially in real time in response to passing a cursor over respective browse cards on the display."
3. Plain-language overview of the independent claim
There is exactly one claim — independent claim 1, a method claim. It has two substantive steps:
Claim 1 — "A method of operating an enterprise information management system comprising at least one server and a number of personal computers selectively communicating with each other comprising:"
Creating document object models (DOMs). The system builds a structured "shell" object for each information asset. Two requirements define the breadth here: (a) the DOMs contain selected information from and about the assets (i.e., derived data such as metadata, thumbnails, summaries — not merely the asset itself), and (b) the DOMs must have a consistent structure even though the underlying assets are of diverse types produced by diverse software. This is the "universal wrapper" concept: heterogeneous content is normalized into one common model.
Displaying browse cards plus glance views. Browse cards for the assets are shown in a time-ordered stream, and glide/glance views associated with the DOMs are displayed for the displayed documents. The glance view must appear "essentially in real time in response to passing a cursor over" a browse card — i.e., hover-triggered, without a click.
Practical scope read. The claim is a two-step, environment-limited method claim. Its likely points of novelty/infringement focus are: (i) the consistent-structure DOM abstraction across heterogeneous asset types, and (ii) hover-instant, cursor-driven "glance view" display within a time-ordered stream. Notably, unlike sibling claim 1 of the '313 patent (quoted in the 2012 CAFC opinion), this claim does not recite "sliding" the cursor, a "receding, foreshortened stack," or use of subsystems from another operating system. It also does not recite the "substream," "permissions," "distributed search," "tri-state tree," or "RAIS" features that the specification describes at length but does not claim here.
Terminology as used in the specification: "information assets" = any heterogeneous item (file, email, bookmark, memo, image, voicemail, video, calendar note, business card, etc.); a DOM = a document shell carrying thumbnail, permission rights, and metadata; "browse card" and "glance view" are used somewhat interchangeably, with the glance view being the pop-up that appears on cursor hover.
4. Litigation posture
- Mirror Worlds, LLC v. Apple Inc., No. 6:08-cv-00088 (E.D. Tex., Judge Davis). The '999 was originally pleaded — the 2010 claim-construction opinion (742 F. Supp. 2d 875) records that Mirror Worlds alleged infringement of claim 1 of the '999 patent, and Apple moved for summary judgment of non-infringement and invalidity of the '999 (Dkt. 221, 225). However, Mirror Worlds narrowed the case before trial; the 12 claims actually tried were from the '227, '313 and '427 patents only. So the '999 was asserted but not tried.
- Federal Circuit, 2012: Mirror Worlds, LLC v. Apple, Inc., 692 F.3d 1351 (Fed. Cir. 2012) (Newman, Lourie, Prost), affirming JMOL of non-infringement on the tried claims. The '999 claim was not at issue on appeal.
- Supreme Court: the Google Patents litigation record links a U.S. Supreme Court case, 12-1158, associated with this family (the cert-stage challenge following the 2012 CAFC decision).
- 2024: Fed. Cir. No. 22-1600, Mirror Worlds Technologies, LLC v. Meta Platforms, Inc. (appeal decided Dec. 4, 2024, summarily affirming a district court judgment for Meta). Unverified whether '999 was asserted.
- 2026: no CAFC docket identified for '999.
Expiration consequence: the patent expired 2017-09-28. Even allowing the six-year damages look-back under 35 U.S.C. § 286, a fresh infringement action on this patent is effectively time-barred as of 2026.
5. Explicit uncertainties
- Inventorship. The patent record lists only Randy Prager and Peter Sparago. The broader Mirror Worlds / Lifestreams family is publicly associated with David Gelernter and Eric Freeman, and court filings in the Apple case raised inventorship disputes concerning the '227 patent. I did not find an authoritative source resolving inventorship of the '999, and I am not auto-correcting the recorded names.
- Assignee. "Current Assignee" fields on the record list both Recognition Interface Inc. and Mirror Worlds Technologies LLC, derived from reassignment data. Google Patents itself disclaims any guarantee of accuracy on assignee listings.
- CAFC 2026 dockets. I could not retrieve a 2026 CAFC docket entry for this patent. Absence in my search results is not proof of absence — I would treat this as "not found," not "confirmed none."
- The AutoCorrect caveat: I have interpreted "6768999" literally and have excluded search hits for the near-identical siblings (6,725,427; 6,638,313) and for unrelated numbers such as the '899 patent discussed in the Spherix claim-construction PDF.
Generated 9/30/2026, 9:51:09 PM
Cases on file (1)
Group view →Specific litigation cases in our database that name US patent 6768999. The free-form analysis below may also discuss cases beyond this list.
- Mirror Worlds, LLC v. Apple Inc.filed Mar 14, 20086:08-cv-00088U.S. District Court, Eastern District of Texas, Tyler Divisionterminated Jun 24, 2013judgment
Defendants: Apple Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation specifically involving US patent 6768999.
Answer
Bottom line: Based on the sources I was able to retrieve, US Patent 6,768,999 ("Enterprise, stream-based, information management system") appears to have been asserted in one infringement action — Mirror Worlds, LLC v. Apple, Inc. in the Eastern District of Texas — where it was one of four patents-in-suit but appears not to have been among the three patents actually tried to verdict. The later Mirror Worlds/Meta and Network‑1 licensing campaigns asserted other patents in the same family, not the '999. The '999's own Google Patents page lists two litigation links: an E.D. Tex. case (6:08-cv-00088) and a U.S. Supreme Court case (12-1158).
⚠️ Confidence note up front: I could reach court opinions, docket documents, and law-firm commentary for the Apple case, but I could not directly retrieve a page from portal.unifiedpatents.com/litigation/caselist this session. Where below I am inferring rather than quoting a source, I say so explicitly.
1. Mirror Worlds, LLC v. Apple, Inc. — the only case I can confirm asserted the '999
| Item | Detail |
|---|---|
| Plaintiff | Mirror Worlds, LLC (later, Mirror Worlds Technologies, Inc. as counterclaim-defendant) |
| Defendant | Apple Inc. (counterclaimant on its own U.S. Pat. No. 6,613,101 against Mirror Worlds Technologies, Inc.) |
| Jurisdiction | U.S. District Court, Eastern District of Texas, Tyler Division — Judge Leonard E. Davis |
| Case No. | 6:08-cv-00088 (styled "6:08-CV-88 LED") |
| Filing date | 2008. Press coverage from mid-March 2008 reports the suit was filed "last week" (InformationWeek, Mar. 19, 2008). The docket number (6:08-cv-00088) corroborates a 2008 filing. I did not verify the exact calendar day from the complaint itself. |
| Patents-in-suit | U.S. 6,006,227 ('227); 6,638,313 ('313); 6,725,427 ('427); and U.S. 6,768,999 ('999) — the '999 was pleaded as Count IV of Mirror Worlds' complaint and Apple's Answer responded to it as part of the "Patents-in-Suit." |
| Accused products | Apple Mac computers, iPods/iPhones, and Mac OS X — specifically the Spotlight, Cover Flow, and Time Machine features. |
| Outcome / status | See chronology below. Case is closed; the '999 apparently fell out of the case before trial. |
Key grounding documents for the '999 specifically:
- Apple's Answer (E.D. Tex., dated May 21, 2008), which contains "COUNT FOUR – ALLEGED INFRINGEMENT OF U.S. PATENT NO. 6,768,999" and Apple's corresponding declaratory-judgment counts for non-infringement and invalidity of the '999: https://cases.justia.com/federal/district-courts/texas/txedce/6:2008cv00088/[108627](/patent/108627)/48/0.pdf and http://docs.justia.com/cases/federal/district-courts/texas/txedce/6:2008cv00088/108627/13/0.pdf
- The parties' Joint Claim Construction and Pre-Hearing Statement (P.R. 4-3) expressly lists the '999 among the patents being construed: https://docs.justia.com/cases/federal/district-courts/texas/txedce/6:2008cv00088/[108627/144](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0144)
- The district court's claim construction opinion addressed "Claim 1 of the '999 Patent": Mirror Worlds, LLC v. Apple, Inc., 742 F. Supp. 2d 875 (E.D. Tex. 2010) — https://www.courtlistener.com/opinion/[2473000](/patent/2473000)/mirror-worlds-llc-v-apple-inc/
- Apple's summary-judgment motion that the asserted claims of the '227, '313, '427 and '999 are invalid as anticipated/obvious over the Lucas "Workscape" art (with a '999-specific invalidity chart): https://docs.justia.com/cases/federal/district-courts/texas/txedce/6:2008cv00088/[108627/221](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0221)/30.html
Chronology and outcomes in that case:
- Oct. 1, 2010 — Jury finds willful infringement and awards $625.5 million ($208.5M per patent) (Techdirt; WHDA).
- Apr. 4, 2011 — Judge Davis grants Apple JMOL and vacates the verdict (Mirror Worlds, LLC v. Apple, Inc., 784 F. Supp. 2d 703 (E.D. Tex. 2011)) — https://www.fr.com/insights/thought-leadership/blogs/judge-davis-edtx-vacates-625m-verdict-against-apple/
- Sept. 4, 2012 — Federal Circuit affirms (No. 2011-1392; Mirror Worlds, LLC v. Apple, Inc., 692 F.3d 1351 (Fed. Cir. 2012)); rehearing denied Dec. 21, 2012 — http://patentlyo.com/media/docs/2012/09/11-1392.pdf
- 2013 — Reported certiorari denial in the Supreme Court proceeding listed by Google Patents as No. 12-1158 (see the litigation links on https://patents.google.com/patent/[US6768999](/patent/US6768999)/en). ⚠️ I could not open the Supreme Court docket in this session, so I am relying on the Google Patents litigation listing plus my prior knowledge for the existence/subject matter of 12-1158.
- In parallel, Apple filed multiple ex parte reexaminations of the Mirror Worlds patents beginning April 2009 (WHDA) — an administrative proceeding, not litigation.
Critical caveat about the '999 in this case: The three patents the jury verdict, the JMOL opinion (784 F. Supp. 2d 703), and the Federal Circuit opinion (692 F.3d 1351) actually address are the '227, '313, and '427 — the '999 does not appear in those dispositions. It was still being construed as of August 2010 (742 F. Supp. 2d 875), so it was asserted and litigated through claim construction, but I could not confirm from the retrieved sources whether it was dismissed, severed, or simply not presented to the jury. Direct source for the trial-stage scope (which I could not retrieve) would be the complaint and the final judgment/Pretrial Order in 6:08-cv-00088.
2. Related-family litigation that did NOT involve the '999
These are worth listing so you can exclude them:
- Mirror Worlds Technologies, LLC v. Meta Platforms, Inc. (f/k/a Facebook, Inc.) — S.D.N.Y., No. 1:17-cv-03473-JGK (Judge John G. Koeltl); Federal Circuit Nos. 2022-1600, 2022-1709, decided Dec. 4, 2024. Asserted patents: '227, 7,865,538, 8,255,439 — not the '999. Summary judgment of non-infringement affirmed; Meta's §101 cross-appeal dismissed as moot (patents expired April 2018). https://www.supremecourt.gov/DocketPDF/24/24A821/[344373](/patent/344373)/20250221152330265_Application%20For%20an%20Extension%20of%20Time.pdf ; https://ipwatchdog.com/2024/12/04/cafc-delivers-win-meta-precedential-decision/
- Network-1 Technologies / Mirror Worlds Technologies, LLC portfolio licensing campaign (post-2013) — Network-1 acquired the Mirror Worlds portfolio in May 2013 and, through subsidiary Mirror Worlds Technologies, LLC, pursued Apple and Microsoft. Reported settlements: Microsoft, Nov. 6, 2015; Apple, 2016 (~$25 million non-exclusive license) (Network-1 10-K via Stocklight; Inventa summary). ⚠️ I could not verify from the retrieved sources which specific patent numbers were asserted or licensed in the Network-1/MWT suits — the $25M Apple license is described as covering "one of those patents" without identification. I cannot confirm the '999 was involved. Case numbers and filing dates for those actions should be pulled from the Network-1 SEC filings' litigation notes or PACER before you rely on them.
3. False positives to avoid
- An Immersion Corporation investor filing references a reexamination of a different "'999 patent" (claims 2, 3, 6, 9–11, 14–16 amended; claims 1, 8, 13 cancelled; certificate issued July 24, 2013) in litigation against HTC (Immersion filing). That is not US 6,768,999 and must not be cited for it. Per your instruction, I am interpreting the identifier literally and flagging rather than merging these.
4. What I could not confirm
- Whether US 6,768,999 was ever tried, dismissed, or formally dropped in 6:08-cv-00088 before the October 2010 trial.
- The exact filing date of the 6:08-cv-00088 complaint.
- The contents and disposition of Supreme Court No. 12-1158 (the Google Patents listing confirms a Supreme Court link exists; I could not open the docket).
- Whether the 2013–2016 Network-1/Mirror Worlds Technologies, LLC suits against Apple and Microsoft asserted the '999.
- Any other defendant sued on the '999. I found none, and I found no litigation involving the '999 after 2016. Note also that the patent is recorded as Expired – Lifetime, adjusted expiration 2017-09-28, so new assertions are impossible.
Suggested next steps to close the gaps: pull the full PACER docket for 6:08-cv-00088 (specifically the complaint, any dismissal/severance orders, and the final judgment); retrieve the Network-1 Technologies 10-K litigation notes for fiscal 2014–2017 (they identify asserted patents and case numbers); and check the Unified Patents litigation portal and Darts-IP family ID 46277794 (both linked from the Google Patents page) for any non-US or additional US proceedings.
Generated 9/30/2026, 9:51:17 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Mirror Worlds, LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured-data finding against public sources before concluding.
Let me dig deeper specifically on PTAB challenges to the '999 patent and Mirror Worlds' other proceedings.
Let me pin down whether any CBM/IPR was filed against the '999 itself, and check the related Mirror Worlds CBM numbers.
Proceedings overview
Total AIA trial proceedings on US 6,768,999: 0. The structured USPTO Open Data Portal block returns no AIA trial proceedings for this patent ("The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest"), and my web search did not surface any IPR, PGR, or CBM naming 6,768,999 as the challenged patent — so the default holds: no PTAB activity on file. The breakdown is therefore 0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied. Defensive posture: there is no PTAB record to lean on, but that matters far less than two facts a defendant can use today — the patent expired 2017-09-28 ("Expired - Lifetime," adjusted expiration per the Google Patents record), and it has exactly one claim (Claims (1) in the patent text). There is nothing to invalidate at the Board; the real question is whether any live damages theory survives the expiration and the § 286 six-year lookback.
Important warning on number collisions (do not auto-correct): my searches surfaced several IPRs against other patents whose numbers resemble this one — e.g., IPR2024-00476 (Aptiv v. Microchip) and the related petitions at PTS ACTS concern U.S. Pat. No. 10,545,899, and a separate decision in the nDocketAlarm record concerns U.S. Pat. No. 8,881,048 (IPR2020-01417). None of these involve 6,768,999. Additionally, I found a Supreme Court appendix (Dkt. 19-353) quoting an FWD holding "claims 1–35 of the '999 patent … patent-ineligible under 35 U.S.C. § 101." US 6,768,999 has only claim 1 — a 35-claim patent cannot be this one, so that FWD almost certainly belongs to a different '999 patent. I could not verify its identity within my search budget; treat it as unconfirmed and do not attribute it to this patent without checking the proceeding caption.
Related proceeding (NOT on the '999) — CBM2016-00019 — Apple Inc. et al. v. Mirror Worlds Technologies, LLC
Included only because it is the sole AIA trial in the Mirror Worlds / Gelernter "stream" family and is the closest thing to a PTAB track record for this portfolio. It is a challenge to a sibling patent, not to 6,768,999.
- Type: Covered Business Method review
- Patent challenged: U.S. 6,006,227 (the '227, the parent-lineage patent; not 6,768,999)
- Filed: 2015-11-19 (per the Unified Patents litigation portal)
- Status: "Not Instituted - Merits" — the Board declined institution
- Judge panel: APJs Thomas Giannetti, David McKone, and Barbara Parvis
- Petition grounds: claims 13, 14, 17, 20, 22, 42, 44, and 55 of the '227 under 35 U.S.C. § 101 (abstract idea) and § 112 ¶ 2 (indefiniteness)
- Institution decision: denied 2016-05-26. Two independent holdings: (1) the majority rejected the patent owner's and APJ McKone's position on CBM eligibility — i.e., it found the '227 was a covered business method patent, so denial did not rest on § 18(d)(1); and (2) on the merits the panel found the challenged claims not directed to an abstract idea, holding "Like the claims under consideration in Enfish, we are persuaded that the challenged claims of the '…227 patent are directed to an 'improvement in computer functionality.'" It also credited the patent owner's DDR Holdings argument that the claims could not be performed by the human mind or with pen and paper. APJ McKone concurred in the result, disagreeing on CBM eligibility. (IPWatchdog summary; decision PDF; Unified Patents docket)
- Final Written Decision: none — never instituted, so there is no claim-level validity holding on the '227 or, a fortiori, on the '999
- Settlement / termination: no settlement affecting a decision; a request for rehearing appears on the docket (listed into 2017). I could not confirm the rehearing disposition.
- Appeal: no Federal Circuit appeal found (nothing appealable absent institution)
- Defensive value: Because institution was denied, no § 315(e) estoppel attaches to the petitioners (Apple, Best Buy Stores LP, Best Buy.com LLC) as to the '227, and none at all as to the '999. The decision is also a useful roadmap of how this family survives § 101 attacks — the Enfish/"improvement in computer functionality" framing that defeated the only AIA challenge in the family, later echoed in the district court docket where the '999 claim 1 was distinguished from the DDR Holdings-style claims.
Context that is not an AIA trial but is defensive-relevant: In the E.D. Tex. litigation, an Apple expert declaration asserted that "the PTO has granted reexamination of all patents in suit" (including the '999) and that "the PTO has rejected all asserted claims of the patents in suit (except claim 11 of the '313 patent) as being anticipated by Mander '724, and/or as being obvious over Mander '724 in view of Retrospect," citing Ex Parte Reexamination Certificates for the '227 (C1 and C2). (Apple expert declaration, 6:08-cv-00088) Caveat: this is an advocacy document from 2010–2011 stating an interim reexamination posture, not a final agency outcome. I could not confirm the final reexamination disposition for the '999 itself. Reexamination is also not an AIA trial, so it does not change the count above.
Strategic summary
Claim status: the question is mis-framed for this patent. US 6,768,999 issued with a single claim — claim 1 — as the Google Patents "Claims (1)" section shows. There are no dependent claims 2–35 to cancel, sustain, or leave untested. Because no IPR, PGR, or CBM was ever instituted against it, claim 1 is UNTESTED at the PTAB — it has been neither canceled nor sustained by the Board. It was, however, not tried in the 2010 E.D. Tex. case: Mirror Worlds initially asserted "Claim 1 of the '999 Patent" (Mirror Worlds, LLC v. Apple, Inc., 742 F. Supp. 2d 875 (E.D. Tex. 2010)), but it was dropped from the trial-stage assertion list, which by then covered only the '227, '313, and '427 (opinion and verdict record). The only adjudicated event touching '999 claim 1 is claim construction by Judge Davis and a partial § 112 ¶ 2 indefiniteness ruling.
Estoppel landscape. There is no IPR/PGR/CBM estoppel against anyone on the '999: estoppel under § 315(e)(2)/§ 325(e)(2) attaches only after a final written decision in an instituted proceeding, and there is none here. CBM2016-00019's denial means Apple and Best Buy are likewise not estopped even on the '227. Practically, though, a defendant's AIA options today are thin: CBM review is sunset (AIA § 18 program ended 2020-09-16), and PGR is unavailable because the '999 issued 2004-07-27, far outside the § 321(b) nine-month window. That leaves only IPR on § 102/§ 103 grounds — and § 101 is not an available IPR ground — plus ex parte reexamination, district-court § 101, and § 112 defenses preserved in litigation. Any prior-art ground under § 102/§ 103 that was never raised in an instituted AIA trial remains fully available.
Pattern signals. No petitioner has filed any IPR against the '999 — notable for a patent that was asserted in 2008 against Apple, then again in the 2013–2016 Mirror Worlds/Network-1 campaign against Apple, Dell, HP, Lenovo, Best Buy, and Samsung. The family's only AIA trial was Apple/Best Buy's CBM on the sibling '227 (CBM2016-00019), filed 2015-11-19 and denied 2016-05-26 — i.e., the PTAB has been a dead end for challengers, not for the patent owner. There is no defensive aggregator (Unified Patents et al.) filing here; Unified appears only as a public docketing source. Network-1 (NASDAQ: NTIP) acquired the portfolio in 2013, settled with Microsoft on 2015-11-06 for $4.65M with customer releases, and the enforcement posture was licensing-driven rather than appeal-driven — no PTAB appeals are attributable to this patent.
The gating fact for any defendant today: per the Google Patents record, the '999 reached its adjusted expiration on 2017-09-28 and its legal status is "Expired - Lifetime." A U.S. patent that expired eight years ago cannot be infringed going forward; recoverable damages would be confined to infringing acts within the six years before complaint (35 U.S.C. § 286) and before expiration, which today reaches back only to 2020-09-30 — entirely after the patent lapsed.
Recommended next steps
- No PTAB activity exists on US 6,768,999 — say so plainly in any defense memo or invalidity contentions preamble. The absence is a signal: the Board was never asked to test this claim, so there is no FWD to cite, no canceled claim to point to, and no § 315(e) estoppel to plan around. Do not import the CBM2016-00019 denial (a '227 case) as if it disposed of the '999.
- Check expiration first, before anything else. Confirm the 2017-09-28 adjusted expiration and the maintenance-fee/expiration record on USPTO Patent Center and the official register. If it holds, the practical answer to a demand letter is § 286 plus expiration: there is no forward-looking injunction and the damages window is essentially empty. Confirm also whether the '999 was ever reexamined to certificate — the family pattern ('227 certificates C1 and C2) suggests a reexam record worth pulling, and it is outside the AIA-trial count.
- If you nonetheless need PTAB output or a § 101 record on the family, use the '227 materials, correctly labeled. The CBM2016-00019 denial (2016-05-26, APJs Giannetti, McKone, Parvis) is the family's only Board decision; the Enfish/"improvement in computer functionality" reasoning is the patent owner's strongest weapon and the challenger's key target. Cite it as a '227 decision.
- Verify the "claims 1–35 of the '999 patent are patent-ineligible" FWD before relying on it at all. It appears in the appendix to Supreme Court Docket 19-353 (appendix PDF) and by claim count cannot be US 6,768,999. Pull the caption from the PTAB E2E docket or CourtListener and confirm the patent number before citing it — an "899/999/1045,899" mix-up is easy to make and would be sanction-bait in a brief.
- If a live case is on file, note the fallback timetable anyway. Because no '999 trial exists, there is no institution deadline, no oral-hearing date, and no statutory one-year FWD date to track for this patent. Any such milestones you see belong to other patents/proceedings and should be docketed under those numbers.
- Where a defense is needed on the merits, the untested ground is § 101/§ 112 in district court, not the PTAB. Judge Davis's ruling granted Apple's partial § 112 ¶ 2 indefiniteness motion in part (742 F. Supp. 2d 875), and the '999's claim 1 was later distinguished from the DDR Holdings line in the family's § 101 fight — both are usable starting points that no AIA estoppel forecloses.
Confidence note: the "zero AIA proceedings" conclusion rests on the structured ODP block plus affirmative searching that found no '999 petition; I could not exhaustively query PTAB E2E/PTS ACTS within my search budget, so if a very recent or CBM-era filing exists it may not have surfaced. I did not find one, and I have not invented any proceeding number.
Generated 9/30/2026, 9:51:22 PM
Ownership chain (8)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2001-11-30 · Assignment
Randy Prager and Peter SparagoMirror Worlds Technologies, Inc.
formation of record title
? · recorded 2005-02-22 · Assignment
Mirror World Technologies, Inc.Recognition Interface, Inc.
transfer-to-asserter
? · recorded 2007-12-17 · Assignment
Mirror Worlds Technologies, Inc.Recognition Interface, Inc.
internal reorg
2008-03-05 · recorded 2008-03-13 · Assignment
Plainfield Specialty Holdings I Inc.Mirror Worlds Technologies, Inc.
transfer-to-asserter
? · recorded 2008-03-12 · Assignment
Mirror Worlds Technologies, Inc.Recognition Interface, Inc.
correction
2008-03-13 · Conversion
Recognition Interface, Inc.Recognition Interface, Inc.
change of form only
2008-03-13 · Assignment
Recognition Interface, Inc.Plainfield Specialty Holdings I Inc.
transfer-to-asserter
? · recorded 2013-06-21 · Assignment
Mirror Worlds Technologies, Inc.Mirror Worlds Technologies, Inc.
acquisition
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment chain for US 6768999, starting with the recorded reassignment events and litigation history.
Good progress. Now let me dig for reel/frame numbers, correspondents, and the acquisition details.
Let me pin down reel/frame numbers, the correspondent of record, and inventor details.
Ownership analysis: US 6,768,999 B2 — "Enterprise, stream-based, information management system"
Sources used: Google Patents legal-events record for US6768999B2 (https://patents.google.com/patent/US6768999/en), the E.D. Tex. docket in Mirror Worlds, LLC v. Apple, Inc., No. 6:08-cv-00088, SEC filings by Network-1 Technologies, Inc. (CIK 1065078), and PlainSite's assignment table for Mirror Worlds, LLC.
Important limitation up front: I was able to retrieve the substance of the recorded assignment chain (assignor, assignee, conveyance type, recording date) but not the reel/frame numbers or the correspondent-of-record for any link. The Google Patents legal-events feed that carries the chain does not expose reel/frame or correspondent fields, and my live lookups against the Assignment Center index did not return them. I have therefore marked those fields "not retrieved" rather than guessing. Treat the 2005–2008 links below as names-and-dates verified, reel/frame unverified.
Inventors
| Inventor | Employer at filing | Notes |
|---|---|---|
| Randy Prager | Mirror Worlds Technologies, Inc., New Haven, Connecticut (per the 2001-11-30 assignment of inventors' interest) | Named first on the Justia listing ("Prager et al.") |
| Peter Sparago | Mirror Worlds Technologies, Inc., New Haven, Connecticut | Co-assignor on the same 2001-11-30 record |
Unusual patterns: The application is a continuation-in-part of Ser. No. 09/398,611 (now US 6,638,313), which is itself a continuation of Ser. No. 08/673,255 (now US 6,006,227). The named inventorship of the '999 is different from the inventorship of the 1996 parent — the parent family traces to the Lifestreams work associated with Mirror Worlds' New Haven founders, whereas '999 carries Prager/Sparago. Both '999 inventors assigned their rights to the company on 2001-11-30, roughly five months after the 2001-06-26 filing. I found no evidence of either inventor departing within 12 months of filing, nor any post-filing inventor-side assignment — so the "founders bail out early" pattern is not established here. (Confidence: moderate; I could not retrieve the full front page or employment histories.)
Original assignee
Mirror Worlds Technologies, Inc. (later Mirror Worlds Technologies, LLC), New Haven, Connecticut — named on the issued patent; Google Patents lists "Mirror Worlds Technologies LLC" as original assignee and the 2001-11-30 assignment runs inventors → Mirror Worlds Technologies, Inc. (note the Inc./LLC inconsistency in the record itself).
- Product embodying the claims: Yes, historically. Mirror Worlds shipped Scopeware — the patent's own specification cites "Scopeware 2.0" agents, a Scopeware Desktop, and a Scopeware Server, and incorporates a Scopeware 2.0 / Vision 1.0 software compact disc filed 2001-06-25. So the original assignee was a genuine operating software company, not a paper entity.
- Primary line of business: Stream-based enterprise/desktop information management software (the "Lifestreams" lineage).
- Current status: The operating company is gone. Its patent estate passed through Recognition Interface, Inc./LLC and Plainfield Specialty Holdings I, Inc. into Mirror Worlds, LLC (Tyler, Texas), which was renamed Looking Glass LLC, and the portfolio was sold to Network-1 Technologies, Inc.'s wholly-owned subsidiary in May 2013. I found no Chapter 7/11 filing in the record — the failure mode was a private distressed transfer, not a bankruptcy sale. (The appearance of "Abacus Ventures Limited Partnership" and "Lifestreams" among Apple's third-party subpoena targets in the 2008 case is consistent with a venture-backed wind-down, but I could not confirm a bankruptcy.)
Assignment timeline
Chronological, from the USPTO-derived legal-events record. Reel/frame and correspondent: not retrieved for any entry (see limitation note above) — the Assignment Center should be queried directly to populate those fields.
Executed date not stated / recorded 2001-11-30 — Reel/Frame not retrieved
- Conveyance: Assignment (assignment of inventors' interest)
- Assignor: Randy Prager and Peter Sparago (individually)
- Assignee: Mirror Worlds Technologies, Inc.
- Correspondent: not retrieved
- Context: Formation of record title — inventors convey to their employer shortly after the 2001-06-26 filing.
Executed date not stated / recorded 2005-02-22 — Reel/Frame not retrieved
- Conveyance: Assignment
- Assignor: Mirror World Technologies, Inc.
- Assignee: Recognition Interface, Inc.
- Correspondent: not retrieved
- Context: First transfer away from the operating company — the beginning of the monetization chain.
Executed date not stated / recorded 2007-12-17 — Reel/Frame not retrieved
- Conveyance: Assignment
- Assignor: Mirror Worlds Technologies, Inc. (as recorded by the Google Patents feed — see anomaly note)
- Assignee: Recognition Interface, LLC
- Correspondent: not retrieved
- Context: Internal restructuring of the Recognition Interface entity; sequenced with the 2008-03-12 corrective recording.
Executed date not stated / recorded 2008-03-12 — Reel/Frame not retrieved
- Conveyance: Nunc pro tunc assignment (corrective)
- Assignor: Mirror Worlds Technologies, Inc.
- Assignee: Recognition Interface, Inc.
- Correspondent: not retrieved
- Context: Correction of record — a nunc pro tunc back-dated fixing instrument filed one day before suit.
Executed / recorded 2008-03-13 — Reel/Frame not retrieved
- Conveyance: Conversion to limited liability company
- Assignor: Recognition Interface, Inc.
- Assignee: Recognition Interface, LLC
- Correspondent: not retrieved
- Context: Change of form only — not a change of beneficial ownership.
Executed / recorded 2008-03-13 — Reel/Frame not retrieved
- Conveyance: Nunc pro tunc assignment
- Assignor: Recognition Interface, LLC
- Assignee: Plainfield Specialty Holdings I Inc. (Delaware corporation)
- Correspondent: not retrieved
- Context: Transfer to a Delaware specialty-holdings vehicle; the entity that held the portfolio when suit was filed.
Executed 2008-03-05 (effective) / recorded 2008-03-13 — Reel/Frame not retrieved
- Conveyance: Nunc pro tunc assignment
- Assignor: Plainfield Specialty Holdings I Inc.
- Assignee: Mirror Worlds, LLC (Texas corporation, 4540 Kinsey Dr., Tyler, Texas 75703)
- Correspondent: not retrieved
- Context: Pre-litigation transfer — the Texas assertion vehicle took title eight days before the complaint naming this patent was filed. The recorded instrument expressly recites "the clear and manifest intent of ASSIGNOR on March 5, 2008 … to sell, assign, convey, quitclaim, and transfer," i.e., a curative quitclaim of acknowledged ambiguities in the original paper.
Executed May 2013 / recorded 2013-06-21 — Reel/Frame not retrieved
- Conveyance: Assignment (recordable assignment; confirmation of prior assignment and assignment and quitclaim of remaining rights)
- Assignor: Mirror Worlds, LLC (the assignor signatory block, however, was executed by James B. Healy, Managing Director of Plainfield Specialty Holdings I Inc.)
- Assignee: Mirror Worlds Technologies, LLC — the wholly-owned subsidiary of Network-1 Technologies, Inc.
- Correspondent: not retrieved. (Related but distinct: Network-1's 8-K disclosed a 5% contingency fee payable to Stroock & Stroock & Lavan LLP in respect of the Mirror Worlds portfolio — a litigation-financing arrangement, not a recorded assignment.)
- Context: Acquisition/monetization sale. Network-1 acquired the portfolio from Looking Glass LLC (formerly Mirror Worlds, LLC) under an Asset Purchase Agreement dated 2013-05-21, paying with cash plus warrants/shares (the S-1/A discloses warrants to Looking Glass LLC and three other holders). A separate 2013-05-22 Plainfield-side recording also appears in the PlainSite table.
Anomaly flag: three separate recordings (2007-12-17, 2008-03-12, 2008-03-13) list Mirror Worlds Technologies, Inc. as assignor while naming different Recognition Interface entities as assignee, and the 2008-03-12 nunc pro tunc instrument purports to assign to Recognition Interface, Inc. after the 2007-12-17 recording had already named Recognition Interface, LLC. This looks like a chain-of-title clean-up performed in a single 48-hour burst immediately before filing suit. Because I could not retrieve reel/frame order, the exact precedence of these three instruments should be verified at the Assignment Center before relying on the sequence.
If you want the reel/frame and correspondent fields populated, the query to run is a patent-number search for 6768999 at https://assignmentcenter.uspto.gov/ (mirror: https://assignment.uspto.gov/patent/index.html).
Timeline diagram
timeline
title Ownership of US 6768999
1996 : Priority date from parent case
2001 : Application filed
: Inventors assign to Mirror Worlds Inc
2005 : Assigned to Recognition Interface Inc
2007 : Assigned to Recognition Interface LLC
2008 : Corrective nunc pro tunc recordings
: Plainfield Specialty Holdings takes title
: Mirror Worlds LLC takes title
: Apple suit filed in East Texas
2013 : Sold to Network-1 unit Mirror Worlds Tech
: Supreme Court denies Apple cert
2017 : Patent term expires
NPE / troll-pattern signals
Shell-entity transfer — PRESENT. The 2008-03-13 nunc pro tunc assignment conveyed the patent from Plainfield Specialty Holdings I Inc. to Mirror Worlds, LLC, a Texas corporation whose recorded address is 4540 Kinsey Dr., Tyler, Texas 75703 — a residential street address in the town hosting the E.D. Tex. Tyler Division courthouse. The complaint was filed the next day. Network-1's own 10-K later discloses that its Mirror Worlds subsidiary leased ~420 square feet of office space in Tyler, Texas for $620 per month — a mailbox-scale footprint for an entity holding a ten-patent portfolio. The name "Plainfield Specialty Holdings I" and the Delaware-holding-company form are additional indicia.
Known asserter in the chain — PRESENT (with a caveat). Mirror Worlds, LLC / Mirror Worlds Technologies, LLC is a high-frequency plaintiff: Mirror Worlds, LLC v. Apple, Inc., No. 6:08-cv-00088 (E.D. Tex., filed March 2008) — $625.5M jury verdict in October 2010, later vacated on JMOL; Mirror Worlds Techs. LLC v. Apple, Inc., No. 6:13-cv-00419 (E.D. Tex.); and later litigation against Meta/Facebook. Both the RPX litigation-document repository and the Unified Patents litigation portal carry E.D. Tex. case 6:08-cv-00088 for this family. The current owner, Network-1 Technologies, Inc., is a publicly traded company whose stated principal business is "the development, licensing and protection of our intellectual property assets," with ~$188M in licensing revenue from a single patent — textbook non-practicing-entity economics. Caveat: Network-1 is not on your enumerated list (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation, Spangenberg). It is a self-identified patent monetization company on the public record, not a name-matched list hit — I am calling it on the 10-K disclosure, not on nomenclature.
Repeat correspondent across the chain — UNCLEAR / NOT RETRIEVABLE. I could not obtain correspondent-of-record data for any recording. The one recurring named individual is James B. Healy, who executed the May 2013 recordable assignment as "Managing Director of Plainfield Specialty Holdings I Inc." and appears as the natural-person signatory on the seller side — but a signatory is not a correspondent, and I will not treat it as one. Note for follow-up: the same 2013 transaction involved Stroock & Stroock & Lavan LLP holding a 5% contingency interest, so if a repeat-recording firm exists in this chain, Stroock is the first name to check at the Assignment Center.
Cascading transfers — PRESENT. Five distinct recorded instruments between 2005-02-22 and 2008-03-13 — three of them dated 2008-03-13 alone (conversion, nunc pro tunc to Plainfield, nunc pro tunc to Mirror Worlds, LLC) — plus a fourth on 2008-03-12. That is a compressed, multi-hop chain through at least four distinct legal entities inside ~36 months.
Pre-litigation transfer — PRESENT, and unusually tight. The assignment to Mirror Worlds, LLC was effective 2008-03-05 and recorded 2008-03-13; the infringement complaint naming "the '999 patent" (along with the '227, '313 and '427 patents) was filed 2008-03-14 in E.D. Tex. That is one day between recording and filing — well inside the 6-month window, and the back-dating to March 5 indicates the transfer was engineered as the standing/venue predicate.
Bankruptcy fire-sale — UNCLEAR / NOT ESTABLISHED. The 2005 transfer away from the operating company and the 2008 pass-through have the shape of a distressed disposal, but I found no Chapter 7 or Chapter 11 filing by Mirror Worlds Technologies, Inc. and no court-supervised sale. Do not characterize this as a bankruptcy sale without the docket.
Privateering — NOT PRESENT (as to the 2013 sale). The May 2013 sale to Network-1 looks like an outright portfolio monetization sale, not a retained-interest privateering arrangement. The seller (Looking Glass LLC, formerly Mirror Worlds, LLC) received warrants and stock as consideration; there is no evidence in the record that Network-1 asserts on a continuing operating company's behalf against that company's competitors.
Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT, Unified Patents or OIN. It terminates at Network-1's assertion subsidiary, and the patent reached end of term on 2017-09-28 ("Expired – Lifetime," adjusted expiration) while still in that subsidiary's hands. Note Network-1's own disclosure that 54 of its 100 U.S. patents have expired, and that it still pursues past damages on expired patents — the '999 is expired, so only historic damages remain theoretically available.
Verdict
NPE — high confidence.
The chain is a textbook assertion-vehicle assembly, not an operating-company transfer. Between 2005-02-22 and 2008-03-13 the patent moved from the operating software company (Mirror Worlds Technologies, Inc., maker of Scopeware) through Recognition Interface, Inc./LLC into Plainfield Specialty Holdings I Inc. and then into Mirror Worlds, LLC, which took title by nunc pro tunc assignment effective 2008-03-05, was recorded 2008-03-13, and filed the Apple complaint on 2008-03-14 — a one-day gap between perfecting title and filing suit, in a venue hosting the assignee's own residential street address. Four strong signals are present (shell-entity transfer, cascading transfers, pre-litigation transfer, and a current owner — Network-1 Technologies, Inc. via its Mirror Worlds Technologies, LLC subsidiary — whose disclosed business is patent licensing rather than products), which clears the two-strong-signals threshold. The single unresolved item is the correspondent field, which no source I could reach exposes; that gap does not change the verdict but should be closed before this analysis is relied on in a filing.
Verify at: https://assignmentcenter.uspto.gov/ — search patent number 6768999 (reel/frame and correspondent fields outstanding).
Generated 9/30/2026, 9:51:39 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll start by verifying the patent record and gathering its citation data.
Let me pull the actual citation records from patent databases.
I found a key reexamination document. Let me get the patent's front-page references and verify the reexamination details.
1. Record verification — US 6,768,999
| Field | Value |
|---|---|
| Patent number | US 6,768,999 B2 (interpreted literally — not 6,768,989 or any similar number) |
| Title | Enterprise, stream-based, information management system |
| Inventors | Randy Prager; Peter Sparago |
| Appl. No. | 09/892,258, filed 2001‑06‑26 |
| Granted | 2004‑07‑27 |
| Priority claimed | 1996‑06‑28 (via CIP chain to 09/398,611 → 08/673,255) |
| Assignee of record | Mirror Worlds Technologies LLC (orig.); later Recognition Interface entities |
| Claimed claims | 1 (one) — a single independent method claim |
| Status | Expired – Lifetime; adjusted expiration 2017‑09‑28 |
| Litigation | Mirror Worlds, LLC v. Apple Inc., 6:08‑cv‑00088 (E.D. Tex.); Supreme Court case 12‑1158 |
Source: https://patents.google.com/patent/US6768999/en
Because the patent has exactly one claim, all §102 analysis below collapses onto that single claim.
Claim 1 (the only anticipation target): a method of operating an enterprise information management system comprising at least one server and a number of PCs selectively communicating with each other, comprising:
- creating document object models comprising selected information from and about information assets of diverse types, created by diverse software, said DOMs having a consistent structure;
- displaying browse cards related to respective ones of the information assets in a time‑ordered stream, together with glance views related to the DOMs of the respective displayed documents, said glance views being displayed essentially in real time in response to passing a cursor over respective ones of the browse cards.
2. Which references are actually cited against '999
The single most probative record I located is the ex parte reexamination decision entered in the Mirror Worlds v. Apple file (E.D. Tex. 6:08‑cv‑00088, Doc. 19/221), which states:
"Of the above references, the references are cited on the face of the '999 Patent, and of record in the file of '999 Patent." — referring to Freeman et al., US 6,006,227 A and Mander et al., US 6,243,724 B1.
The third‑party requester alleged '999 claim 1 was unpatentable over each of these references alone (a pure §102 anticipation theory, not §103). The Central Reexamination Unit agreed that at least Freeman'227 raises a substantial new question of patentability as to claim 1, and specifically identified the teaching of "a document object model stream displayed in card format (browse cards) within pop‑up windows (glance views) in response to the passing‑over of a cursor."
The critical date issue that makes these references available
The reexam expressly held the '999 patent's priority claim defective: '999 names Prager and Sparago only, while the parent applications 09/398,611 ('313) and 08/673,255 ('227) name Eric Freeman and David H. Gelernter. Under 35 U.S.C. §120 / 37 C.F.R. §1.78(a)(1), a §120 benefit requires at least one common inventor, which is absent. Therefore claim 1 of '999 is not entitled to the 1996‑06‑28 priority date, and its effective date is its own filing date of 2001‑06‑26 (subject to any provisional benefit from 60/240,480 filed 2000‑10‑13 and 60/274,575 filed 2001‑03‑09). This is precisely what converts the parent line into prior art.
3. Reference-by-reference analysis
Reference A — Freeman et al., US 6,006,227 A ("Freeman'227")
- Full citation: Eric Freeman (Branford, CT) and David H. Gelernter (Woodbridge, CT), "Document stream operating system," assignee Yale University, U.S. Patent 6,006,227, Appl. No. 08/673,255, filed 1996‑06‑28, issued 1999‑12‑21.
- Description: Documents stored in one or more chronologically ordered streams; storage location/nature transparent to the user (no required file names or folders); organization deferred until needed; automatic summarization logic; automatic archiving. The specification describes "browse cards" whose content is a "micro‑document" version of the document, and displays responsive to cursor position.
- §102 basis: §102(b) — the patent issued 1999‑12‑21, more than one year before the 2001‑06‑26 filing date (assuming the defective §120 claim). Alternatively §102(a)/(e).
- Claim(s) potentially anticipated: Claim 1 — this is the only claim, and the reexam found the browse‑card/glance‑view‑on‑cursor‑pass‑over combination taught in Freeman'227. Freeman'227 also discloses a stream‑based document OS with document surrogates (its "browse cards"), which maps onto the DOM + browse card + glance view limitations. The principal gap in a strict §102 reading is the "enterprise" / at‑least‑one‑server‑plus‑PCs limitation, since Freeman'227 is framed around an operating system on a user's machine.
- Grounding: https://patentimages.storage.googleapis.com/3c/47/eb/3515396bb88424/US6006227.pdf ; reexam decision §1.
Reference B — Mander et al., US 6,243,724 B1 ("Mander")
- Full citation: Mander et al., U.S. Patent 6,243,724 B1, issued 2001‑06‑05.
- Description: Cited on the face of '999 and asserted by the third‑party requester as anticipating claim 1 alone. I could not independently retrieve Mander's title, filing date, or disclosure content from the sources returned, and I will not guess at them.
- §102 basis: Because it issued 2001‑06‑05 — only three weeks before the 2001‑06‑26 filing — it cannot be §102(b) prior art (not more than one year earlier). It is available, if at all, under §102(a) (known or used by others before the applicant's date of invention) or §102(e) (U.S. filing date earlier than '999's). I could not verify the §102(e) date. This is a material gap in any anticipation opinion and needs the front page of US 6,243,724.
- Claim(s) potentially anticipated: claim 1, per the requester's challenge.
- Grounding: reexam decision (Doc. 19/221).
Reference C — Freeman et al., US 6,638,313 B1 ("Freeman'313") — the immediate parent
- Full citation: "Document stream operating system," U.S. Patent 6,638,313, Appl. No. 09/398,611, filed 1999‑09‑17, issued 2003‑10‑28, assignee Mirror Worlds Technologies, Inc.
- Description: The direct parent (continuation‑in‑part) of the '999 application.
- §102 basis: If the §120 benefit fails for want of common inventorship (as the reexam found), US 6,638,313 is available as §102(e) prior art by virtue of its 1999‑09‑17 U.S. filing date — "a patent granted on an application for patent by another filed in the United States."
- Claim(s) potentially anticipated: claim 1. Practically, this is the most dangerous reference: it is the very disclosure '999 was meant to build on, and about 90%+ of the '999 specification text is common to it. Its main shortfall for strict §102 is the enterprise/server‑architecture limitation.
- Grounding: Family data at https://patents.google.com/patent/US6768999/en ; https://ipma-japan.org/pdf/20140905-01.pdf
Reference D — Freeman et al., US 6,725,427 ("Freeman'427")
- Full citation: "Document stream operating system with document organizing and display facilities," U.S. Patent 6,725,427, issued 2004‑04‑20. A source lists its filing date as 2001‑12‑10, which would place it after '999's filing date.
- §102 basis: Cannot be prior art if the 2001‑12‑10 date is correct — flag as unverified, since family members in this chain have confusing priority dates (all claim 1996‑06‑28).
- Claim(s) at issue: none, unless the filing date is earlier than 2001‑06‑26.
Non‑patent literature referenced in the same family
Also of record in the Freeman/Gelernter line (per the '227 reexamination request, not necessarily the '999 file): US 5,449,330 (Lucas); US 5,504,852 (Thompson‑Rohrlich); Retrospect User's Guide, Dantz Development Corp.; Lotus Magellan User's Guide / Magellan Explorer's Guide; and, specific to '999, the Scopeware 2.0 / vision 1.0 compact disc submitted with the application (created 2001‑06‑25) and the assignee's User Guide. The CD and User Guide are the inventors' own material created days before filing and are therefore not prior art against '999 (not §102(a)/(b)), though they are the disclosed best mode.
- Grounding: https://cases.justia.com/federal/district-courts/texas/txedce/6:2008cv00088/[108627/135](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0135)/5.pdf ; https://patents.google.com/patent/US6768999/en
4. What is not prior art here
The Google Patents page lists 171 "Cited By" entries (e.g., IBM 2002/0133627, Microsoft 2004/0193600, Gargi 2002/0140746, McKee 2005/0091181). These are forward citations — later documents citing '999 — and by definition cannot anticipate it. Do not treat them as §102 art.
5. Bottom line
- Best §102 anticipation candidate for claim 1: US 6,006,227 (Freeman et al.) — it is on the face of the patent, it is §102(b) art (issued 1999‑12‑21), and the CRU affirmatively found it teaches the browse‑card/glance‑view‑on‑cursor‑pass‑over combination. It is available only because '999's §120 priority claim to the Freeman applications fails for lack of a common inventor.
- Second candidate: US 6,243,724 (Mander et al.), but its §102(e) date and disclosure are unverified by me — do not rely on it without the front page.
- Freeman'313 (US 6,638,313) is the strongest §102(e) reference by filing date (1999‑09‑17) but is nearly co‑extensive with '999's specification, so it is more a §112/obviousness problem than a clean anticipation.
- The §120 inventorship defect is the linchpin of the entire invalidity theory; without it, none of the Freeman references would be prior art at all.
Explicit uncertainties I did not resolve: (i) the complete front‑page "References Cited" list of US 6,768,999 — my searches returned forward citations and the reexam record, but not a full FPO/Justia "Patent Citations" table for '999; (ii) the identity, filing date, and content of US 6,243,724 (Mander); (iii) the filing date of US 6,725,427. These should be confirmed against USPTO PatentCenter / the printed patent front page before any formal §102 opinion is issued.
Practical note: the patent expired 2017‑09‑28 and all claims are unenforceable, so this analysis is now of historical and defensive‑publication interest rather than an active clearance or invalidity‑contention issue.
Generated 9/30/2026, 9:51:17 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll start by pulling the actual prior-art citation record for this patent, since the page excerpt supplied shows a "Cited By" block but I want to confirm the examiner-cited "Citations" (prior art) list before analyzing.
Let me pull the specific prior-art references that were used against this patent family (re-examination and the Mirror Worlds v. Apple litigation), plus confirm the claim set.
Obviousness Analysis — U.S. Patent 6,768,999 B2 under 35 U.S.C. § 103
1. What the "Prior Art" data on this page actually gives you (and what it does not)
Per the supplied Google Patents record (https://patents.google.com/patent/[US6768999](/patent/US6768999)/en), the prior-art-related fields are:
| Field on page | Content |
|---|---|
| Prior art keywords | document, information, server, documents, scopeware |
| Prior art date | 1996-06-28 |
| Applications Claiming Priority | US08/673,255 → US 6,006,227 ("Document stream operating system"); US09/398,611 → US 6,638,313; provisionals 60/240,480 and 60/274,575 |
| Related Parent Application | US09/398,611 (continuation-in-part) |
| Cited By (171) | e.g., US20020133627A1, US20020140746A1, US20040193600A1 … |
Two cautions that materially affect a §103 analysis:
- The "Cited By (171)" block is not prior art. Those are later documents citing the '999; they post-date its priority date and cannot be used in an obviousness combination against it.
- The page excerpt contains no examiner "Citations" list. The references actually cited against the '999 are not visible in the supplied text, so the true prosecution record must be checked in the file wrapper. Below I use the examiner/ISR citations that are traceable from the patent's own record plus the prior art adjudicated against this exact patent in Mirror Worlds, LLC v. Apple, Inc. (E.D. Tex. 6:08-cv-00088), where the '999 was one of the patents-in-suit.
Note also: this is a pre-AIA application (filed 2001-06-26), so pre-AIA § 103(a) governs.
2. The claim to be tested
The page shows a single claim ("Claims (1)"): claim 1 — the only claim ever asserted in the litigation. Its elements:
- 1.1 A method of operating an enterprise information management system comprising at least one server and a number of personal computers selectively communicating with each other;
- 1.2 creating document object models comprising selected information from and about information assets of diverse types, created by diverse software, said models having a consistent structure;
- 1.3 displaying browse cards related to respective information assets in a time-ordered stream, together with glance views related to the document object models of the displayed documents;
- 1.4 said glance views being displayed essentially in real time in response to passing a cursor over respective browse cards.
Critical scope observation: everything the specification describes as "particularly novel" — substreams, granular read/write/aware permissions, RAIS, the tri-state tree, asynchronous distributed-search integration, type-specific command buttons, thumbnails — is unclaimed. The § 103 fight is confined to 1.1–1.4.
3. Threshold issue: effective filing date (1996 vs. 2001)
Claim 1 is directed to an "enterprise" system with "browse cards"/"glance views" rendered instantly on cursor hover. The term "browse card" and the instant-hover behavior appear to be CIP matter introduced in the 2000/2001 disclosures, while the stream/DOM core traces to the 1996 US 6,006,227. If 1.3–1.4 lack written-description support in the 1996 parent, the effective date slides to 2000–2001, which:
- opens the 1996–2001 window as § 102(b)/(e) art, and
- makes the family's own earlier filings (US 6,006,227, issued 1999-12-21; US 6,638,313, issued 2003-10-28) available as § 102(e) art, since their inventive entity (Freeman/Gelernter) is different from the '999's (Prager/Sparago).
This is the single most leverage-rich point in the analysis.
4. Level of ordinary skill
From the litigation record (https://cases.justia.com/federal/district-courts/texas/txedce/6:2008cv00088/[108627/221](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0221)/25.pdf), Apple's expert (Feiner) proposed "a Ph.D. in computer science or equivalent… graphical user interface design… document processing, data structures, operating systems… client-server computing"; the opposing declaration argued for a post-graduate CS degree plus 1–2 years in computer operating systems. Either way: a skilled GUI/document-systems engineer, well aware of CHI-conference literature and desktop file managers.
5. The prior art references available
A. Admitted prior art in the '999's own specification (usable without any search):
- Windows 2000-style hover pop-ups: "the user interface displays a small temporary pop-up window of the document's title, application type, author and size when the user hovers his cursor on the document icon; however, the pop-up window appears only after a brief delay, usually 1-2 seconds."
- The applicants also expressly state the glance view is produced "using a technology such as Dynamic HTML" — i.e., an off-the-shelf mechanism, not their invention.
B. Lucas/Workscape (CHI '94 family) — U.S. Patent No. 5,499,330 to Lucas et al. ("Lucas '330"); the CHI '94 Video; Lucas & Schneider, "Workscape: A Scriptable Document Management Environment," CHI '94 Conference Companion 9–10; Ballay, "Designing Workscape," CHI '94 at 10–15. Apple's SJ Exhibit 28 (https://docs.justia.com/cases/federal/district-courts/texas/txedce/6:2008cv00088/[108627/221](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0221)/30.html) maps all of claim 1 of the '999 to Workscape, including "a single, uniform data object, known simply as a document," remote repositories networked to a client-server enterprise system.
C. Mander '724 — U.S. Patent No. 6,243,724 (filed Aug. 8, 1994; issued June 5, 2001), the "Piles" patent (continuation published as US 6,613,101). Its abstract claims "browsing the collection of documents by pointing a cursor at a particular item in the collection of documents to reveal an indicia for the particular item." Companion art: Mander et al., "A 'Pile' Metaphor for Supporting Casual Organization of Information," CHI '92.
D. Retrospect — Dantz Development, Retrospect User's Guide (1993 and 1995): automatic, time-based archiving of files.
E. Lifestreams at Yale — Technical Reports TR-1070 (April 1995, "The 'Lifestreams' Approach to Reorganizing the Information World") and TR-1054 ("The Lifestreams Software Architecture"), co-authored by Gelernter and Freeman. Because the '999 names different inventors, these are "by others" under § 102(a) — and are § 102(b) art if actually published.
F. ISR citations against the sibling PCT (WO 03/001345 A3, https://patentimages.storage.googleapis.com/3d/a3/e4/c3f1796b633c4a/WO2003001345A3.pdf): US 5,867,494 (Krishnaswamy et al.), US 5,867,665 (Butman et al.), US 5,913,024 (Green et al.), US 6,006,227 (Freeman et al.), and US 5,918,018 — all category "A." I have not independently verified the disclosures of these five; treat them as a secondary search lead rather than a mapped combination.
G. What the PTO actually did: in reexamination the Office rejected all asserted claims of the patents-in-suit (except claim 11 of the '313) as anticipated by Mander '724 and/or obvious over Mander '724 in view of Retrospect, and found Lucas '330 "highly material… seem[s] to anticipate at least one of the claims" (Apple's SJ brief, https://cases.justia.com/federal/district-courts/texas/txedce/6:2008cv00088/[108627/221](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=108627-0221)/0.pdf).
6. The combinations
Combination 1 (primary): Lucas '330/Workscape + Mander '724
| Element | Where supplied |
|---|---|
| 1.1 enterprise server + PCs | Workscape: client-server document management "for an enterprise or organization," "most repositories are on remote machines and the system gets documents from them over the network" |
| 1.2 consistent-structure document object models over heterogeneous assets | Workscape: "a single, uniform data object, known simply as a document," with attributes and attribute values across diverse applications |
| 1.3 browse cards in a time-ordered stream | Workscape's 3D virtual workspace rendering uniform document objects (with time metadata) |
| 1.4 glance view on cursor pass, essentially real time | Mander '724, claim 1/abstract: "pointing a cursor at a particular item in the collection… to reveal an indicia for the particular item" |
Motivation. Both references sit in the same field (computerized document organization and retrieval/CHI-style GUI work), address the same problem (users cannot identify documents in large collections without opening them), and use the same vocabulary (documents, piles/collections, cursor-driven browsing). Mander's hover-reveal indicia is a known technique for solving precisely the identification problem Workscape's uniform-but-unlabeled objects create. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious." The result is the predictable union of two known UI mechanisms, with no teaching away and no unexpected result.
Combination 2: Mander '724 + Retrospect (the PTO's own combination), plus an enterprise/DOM reference
Mander supplies the cursor-triggered browsing indicia and automatic content-based filing into piles/subpiles; Retrospect supplies automatic, timestamp-driven archiving (the "time-ordered" character of 1.3). Adding Workscape (or US 5,867,494 / US 5,913,024 from the ISR) supplies 1.1 and 1.2. Motivation: automatic backup and time-ordering had long been combined in desktop utilities; presenting a file's time-ordered history is the natural use of a backup/version store, and Mander itself teaches automatic, content-matching organization. This is the combination the examiner actually adopted, which is powerful evidence of what a PHOSITA would have found predictable.
Combination 3: Lifestreams (TR-1070/TR-1054) + Mander '724 + Retrospect
TR-1070 discloses the stream itself (time-ordered, continuously updated, chronologically archived document streams). Mander supplies the hover-reveal glance. Retrospect supplies archival. If TR-1070/TR-1054 are § 102(b) printed publications, this combination is the most direct route to 1.1–1.3, and it is not disqualified by common inventorship because the '999 names Prager/Sparago, not Gelernter/Freeman. Caveat: the district court found the evidence of TR-1070's public accessibility unconvincing (https://www.courtlistener.com/opinion/[2473000](/patent/2473000)/mirror-worlds-llc-v-apple-inc/), so this combination depends on a publication-status finding.
Combination 4: Admitted tooltip art + any stream/pile system — targeting element 1.4
Element 1.4 is the only limitation the applicants expressly distinguished: the Windows 2000 pop-up "appears only after a brief delay, usually 1-2 seconds." That is a degree-of-responsiveness distinction. The specification offers no algorithm for achieving instantness beyond "a technology such as Dynamic HTML" — i.e., a known pre-rendering/scripting approach. Under KSR, "a change in a design parameter" or "the mere substitution of one known element for another" yielding no more than expected performance is obvious, and a performance optimization in a known UI is the paradigm of a design choice. If a PHOSITA pre-computes/caches the glance-view data for items already in the displayed stream (the spec itself says only displayed documents need glance views), the 1–2 second delay disappears for reasons having nothing to do with the alleged invention.
7. Objective indicia / counter-arguments to weigh
- For validity: a jury in E.D. Tex. found the patents not invalid; the district court denied Apple's JMOL on invalidity, and the Federal Circuit affirmed the no-infringement JMOL while leaving validity untouched (692 F.3d 1352 (Fed. Cir. 2012), http://patentlyo.com/media/docs/2012/09/11-1392.pdf). Mirror Worlds argued no one had implemented the stream concept before 1996, and that Apple's 2001–2002 licensing interest (including a Jobs email pointing to the Scopeware site) evidences recognition.
- Against: (i) the reexamination record is the opposite — all asserted claims rejected over Mander '724 alone or Mander '724 + Retrospect; (ii) the "interest" evidence is directed at the Scopeware product, not at claim 1, so the nexus is weak; (iii) Scopeware's commercial performance was unimpressive, undercutting the commercial-success story; (iv) the three claims the district court actually set aside were all held not infringed, so no liability ever attached.
8. Bottom line
Claim 1's four elements are each individually disclosed in the 1992–1995 CHI-era literature, and the only arguably distinguishing feature — glance views appearing "essentially in real time" on cursor hover — is a response-time design choice achieved with an admitted, off-the-shelf technology (Dynamic HTML) over an admitted prior-art hover pop-up (Windows 2000). A prima facie case of obviousness is available on at least these combinations:
- Lucas '330 / Workscape + Mander '724 (strongest single pairing; Workscape maps essentially all of claim 1 per Apple's SJ Exhibit 28, with Mander supplying the cursor-hover reveal);
- Mander '724 + Retrospect + (Workscape or US 5,867,494 / US 5,913,024) — the PTO's own reexamination combination;
- Lifestreams TR-1070 / TR-1054 + Mander '724 (conditioned on printed-publication status, which the district court doubted);
- Admitted tooltip art + any time-ordered or pile-based document collection, attacking 1.4 alone.
The main legal vulnerabilities of this analysis are (a) the effective-date question, which determines whether the 1996–2001 window and the family's own § 102(e) patents are available; and (b) the printed-publication facts for the Yale technical reports.
Honesty caveats: I could not retrieve the '999's own file-wrapper "Citations" list, so I cannot confirm which references the examiner actually considered during original prosecution; the ISR-cited references in WO 03/001345 A3 (items F) are listed as category "A" and I have not verified their disclosures. Characterizations of Lucas '330, the CHI '94 video, and Workscape come from Apple's litigation charts and briefs, i.e., an advocacy source, and should be verified against the primary documents. This patent expired (adjusted expiration 2017-09-28), so the § 103 question today is largely historical/damages-adjacent rather than prospective.
Generated 9/30/2026, 9:51:46 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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