Invalidity dossier
US 7050861
Controlling a destination terminal from an originating terminal
Current assignee: Vonage Holdings Corp.
Added 9/28/2026, 10:32:26 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent and any current litigation.
Let me check for the specific litigation history tied to this patent's family and any 2026 docket activity.
Let me do one more targeted check for any post-2007 or 2026 challenges specific to this patent.
US 7,050,861 B1 — Analyst Summary
Sources used: the authoritative full text of the patent (Google Patents, fetched 2026-09-28), the published claim set (Justia), the USPTO/Google assignment-and-legal-status record, and the District of Delaware docket report (case 1:07-cv-00507). Where I could not confirm something, I flag it explicitly.
1. Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 7,050,861 B1 (interpreted literally — this is not 8,050,861, 7,050,821, or 9,665,705) |
| Title | Controlling a Destination Terminal from an Originating Terminal |
| Application no. | 09/606,053 |
| Filing date | June 28, 2000 |
| Priority date | December 22, 1999 (provisionals 60/171,777 and 60/171,801, both filed Dec. 22, 1999 — the application is stated to be the non‑provisional filing of those two provisionals) |
| Issue / publication date | May 23, 2006 |
| Inventors | Eric Lauzon (Crowthorne), Bryan J. Miller (Cookham), Michael O'Doherty (London) |
| Original assignee | Nortel Networks Limited (St. Laurent); Google Patents lists the original assignee as "Nortel Networks Ltd" and the assignment record as "NORTEL NETWORKS LIMITED" |
| Current assignee (per Google Patents) | RPX Clearinghouse LLC |
| Examiner / agent | Primary Examiner Anthony Knight; Assistant Examiner Ronald D. Hartman, Jr.; attorney Barnes & Thornburg LLP |
| Legal status | Expired – Fee Related; adjusted expiration 2023-05-16 (i.e., lapsed for non‑payment of maintenance fees) |
| Classifications | H04L65/1069, H04L65/1101, H04L65/1104 (SIP), H04L65/1066, H04L67/125 |
| Family | EP 1 111 875 B1; DE 600 220 00 T2; CA 2 329 395 C |
Assignment chain (from the assignment record): Nortel Networks Limited → Rockstar Bidco, LP (Oct. 28, 2011) → Rockstar Consortium US LP (Mar. 10, 2014) → RPX Clearinghouse LLC (Feb. 9, 2015). A JPMorgan Chase security agreement (2016) was released in 2018; a Jefferies security interest (2018) was released in 2020.
2. Abstract (paraphrased, faithful to the text)
A caller associates computer software code with one or more signalling-protocol messages so that, when the messages are received at a destination processor, the code is executed. The messages may be "improved SIP protocol" messages with incorporated Java code (applets or mobile agents). By choosing different code to associate with the messages, the caller can control the destination terminal — e.g., to display the caller's identity, to modify destination-terminal behaviour according to call priority, to take the destination terminal's configuration into account, and to let a user adjust that configuration remotely. All control is subject to security/access restrictions on the destination side.
3. Plain-language overview of the independent claims
Justia's published claim set lists 13 claims (1–13), containing two independent claims. (Uncertainty note: I am relying on the published claim listing; the two independent claims below are clear and consistent with the specification, but I cannot rule out a truncation in the third-party listing. The patent's own claim set should be treated as authoritative.)
Claim 1 — Method of remotely controlling a destination terminal (independent).
A three-step method in which the destination terminal has an associated signalling-protocol client and processor:
- Store computer software code in at least one signalling-protocol message (note: "storing… in," not merely "associating with" — this is the version that issued, reflecting a somewhat narrower framing than the application's original "associating" language);
- Send that message from the originating terminal to the destination terminal; and
- Execute the code on the destination terminal's processor so that the originating terminal controls the destination terminal.
In plain terms: the caller literally ships executable code inside the call-signalling message, and the callee's machine runs it, giving the caller remote control over the callee's phone/terminal features.
Claim 12 — Destination terminal (independent).
An apparatus claim covering a destination terminal comprising (i) a signalling-protocol client that receives signalling-protocol messages sent from an originating terminal, and (ii) a processor that accesses any computer software code stored in received signalling-protocol messages and executes it such that the destination terminal is controlled.
Representative dependent claims (for context, not independent): claim 2 (security means activated before executing the code); claim 3–4 (code accesses and displays caller-identity information); claim 5 (call priority information); claim 6 (detect an engaged destination terminal and clear it to accept the incoming call); claim 7–8 (access destination configuration and control the terminal based on it); claim 9 (modify terminating-service configuration); claim 10 (route the call to voice mail); claim 11 (SIP message with Java byte code, Java applets, or mobile autonomous software agents); claim 13 (destination terminal storing security information checked before executing the code).
Note that subject matter described in the specification (an originating terminal claim, a signal claim, and a method of displaying caller identity at the destination terminal) does not appear as an independent claim in the published US claim set — those aspects are largely captured in the summary of the invention and may correspond to family members (e.g., CA 2 329 395 C).
4. Litigation and post-grant activity — what I could and could not confirm
Confirmed District Court activity (not 2026):
- Vonage Holdings Corp. v. Nortel Networks Inc. and Nortel Networks Ltd., D. Del. Case No. 1:07-cv-00507 (filed Aug. 17, 2007). This is a declaratory-judgment action in which Vonage sought a declaration that three Nortel patents were invalid/void/unenforceable — US 6,091,808, US 6,445,695 B1, and US 7,050,861 B1. The USPTO "Report on the Filing … of an Action Regarding a Patent" (Form AO 120, Doc. 4, dated Aug. 20, 2007) lists US 7,050,861 B1, holder Nortel Networks Limited, patent date 5/23/06. Nortel filed a counterclaim (Dec. 2007) asserting the patents against Vonage. This case pre-dates the patent's 2011 transfer to Rockstar and its 2015 transfer to RPX Clearinghouse, and appears to have been resolved/superseded by the Nortel bankruptcy proceedings.
- Google Patents' "Family has litigation" flag links to the same Delaware case and to a Darts-IP family record (family 36423932).
On the requested "CAFC 2026 docket" search:
- I found no evidence of any Federal Circuit (CAFC) 2026 docket activity involving US 7,050,861. Searches of Federal Circuit 2026 materials returned only unrelated matters — e.g., Woodway USA v. LifeCORE Fitness (Fed. Cir. No. 25-1431, non-motorized treadmill patents), ASSA ABLOY AB v. CPC Patent Technologies (Nos. 25-1078/1079/1080, US 9,665,705 and 9,269,208), and CAO Lighting / Wolfspeed matters. None involve 7,050,861.
- Caution on look-alike numbers: Several 2026 IPR/Federal Circuit hits concern US 9,665,705 B2 (CPC Patent Technologies; biometric access) and the App‑Store-related '705 patent, and there are IPR2022-01006 documents referencing a "705 patent." These are different patents from US 7,050,861 and should not be conflated.
- No PTAB (IPR/PGR/CBM) proceeding for US 7,050,861 surfaced in my searches.
Given that the patent expired for failure to pay maintenance fees with an adjusted expiration of May 16, 2023, and is held by RPX Clearinghouse LLC (a defensive aggregator that, by its public statements and litigation record, does not assert the patents it acquires), the absence of any live 2026 litigation or appeal is consistent with the record — but I state it as a search result, not as a guarantee of nonexistence.
5. Confidence and caveats
- High confidence: title, application number, filing date, issue date, inventors, original assignee, priority provisionals, abstract subject matter, the two independent claims, and the Delaware 2007 litigation.
- Medium confidence: the exact total claim count (13, per a third-party listing) and the precise set of dependent claims; the primary source (the patent's own claims) should be consulted to confirm.
- Explicit uncertainty: I have no authoritative confirmation of any 2026 Federal Circuit docket for US 7,050,861, and I did not have live access to USPTO PatentCenter/CAFC PACER to confirm current docket status. The "$16,213,000" approximate-value figure that appears on a third-party patent-leaderboard site is an unverified algorithmic estimate, not an official valuation.
If you want, I can next pull the exact granted claim set from the patent PDF (to settle the claim-count question) or trace the EP 1 111 875 B1 / CA 2 329 395 C counterparts for corresponding independent claims.
Generated 9/28/2026, 10:41:06 PM
Cases on file (3)
Group view →Specific litigation cases in our database that name US patent 7050861. The free-form analysis below may also discuss cases beyond this list.
- Vonage Holdings Corp. v. Nortel Networks Inc. et al.filed Aug 17, 20071:07-cv-00507U.S. District Court for the District of Delaware, Wilmington, New Castle Countysettled and dismissed without prejudice
Defendants: Nortel Networks Inc., Nortel Networks Ltd.
- Vonage Holding Inc. v. Nortel Networks Inc. et al.filed Aug 17, 20071:07-cv-00507-GMSU.S. District Court for the District of Delawarenot confirmed
Defendants: Nortel Networks Inc., Nortel Networks Ltd.
Other patents asserted: 5991389, 6091808, 6445695, 6823370, 7035390, 6934279, 6337858, 6798786, 6799210
- 4:04-cv-00548-YU.S. District Court for the Northern District of Texas, Fort Worth Divisiondismissed without prejudice
Defendants: SBC Internet Services, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 7050861, starting with the litigation leads already embedded in the patent record.
Litigation Involving U.S. Patent No. 7,050,861
Bottom line: My searches identified one US litigation that squarely names U.S. Patent No. 7,050,861 — the Delaware declaratory-judgment / counterclaim action between Vonage and Nortel. I found no evidence that the '861 patent was asserted in any of the later Rockstar Consortium campaigns (which involved different Nortel patents). Details below.
Case 1 — Vonage Holdings Corp. v. Nortel Networks Inc. and Nortel Networks Ltd.
| Field | Detail |
|---|---|
| Plaintiff (DJ action) | Vonage Holdings Corp. |
| Defendants (DJ action) | Nortel Networks Inc.; Nortel Networks Ltd. |
| Counterclaim-Plaintiff | Nortel Networks Inc. / Nortel Networks Ltd. |
| Counterclaim-Defendant | Vonage Holdings Corp. |
| Jurisdiction | U.S. District Court for the District of Delaware |
| Case No. | 1:07-cv-00507 (assigned to Judge Gregory M. Sleet; docketed as 1:07-cv-00507-GMS) |
| Filed | August 17, 2007 |
| Cause of action | 28 U.S.C. § 2201 — Declaratory Judgment (patents invalid, void and/or unenforceable) |
| Outcome / Status | Settled; stipulated dismissal without prejudice under Fed. R. Civ. P. 41(a) per a Patent Settlement Agreement (dismissal papers dated March 2008). Case closed. |
How '861 fits in:
- The Rule 11/§ 1116 "Report on the Filing or Determination of an Action Regarding a Patent" (Docket No. 4, filed 08/20/2007) lists exactly three patents, including US 7,050,861 B1, issued 5/23/2006, holder Nortel Networks Limited, alongside U.S. 6,091,808 and U.S. 6,445,695. (https://id.scribd.com/doc/[2728916](/patent/2728916)/ ; dockets entry at https://dockets.justia.com/docket/delaware/dedce/1:2007cv00507/38754)
- Nortel answered on December 14, 2007 and counterclaimed for infringement, ultimately asserting twelve Nortel patents against Vonage; press coverage noted Nortel sought damages and an injunction. (https://www.zdnet.com/article/nortel-sues-vonage-for-patent-infringement/ ; https://www.rttnews.com/[442287](/patent/442287)/)
- The later Patent Settlement Agreement between Vonage Holdings Corp. and Nortel Networks Inc. lists "U.S. Patent No. 7,050,861 B1" in "Exhibit A – Nortel Patents," confirming '861 was folded into the global resolution. (https://www.lawinsider.com/contracts/k7QoDLngLIn)
Consistency with the patent record: The Google Patents page for US7050861B1 itself carries the "Family has litigation" flags pointing to the Unified Patents Delaware entry for case 1:07-cv-00507 and a Darts-IP "first worldwide family litigation" record — both of which correspond to this Vonage/Nortel action, not to any Rockstar case.
What I checked and did NOT find
- Rockstar Consortium / Constellation / Spherix campaigns (2013–2014). The post-bankruptcy enforcement actions against Google (E.D. Tex. No. 2:13-cv-00893), Asus/HTC/Huawei/LG/Pantech/Samsung/ZTE (No. 2:13-cv-00894), and the cable/MSO suits (incl. Constellation Techs. v. Time Warner Cable, No. 2:13-cv-01079) turned on different Nortel patents (e.g., the '551, '973, '649, '389, '048, '879, '917, '299 families). I found no reference to '861 being asserted in those cases. This is a negative finding based on the sources retrieved — I cannot rule out a complaint referencing it that did not surface.
- Nortel's licensing/enforcement targets. In the Nortel bankruptcy allocation proceedings, internal Nortel documents reference licensing/enforcement targets involving "patent Nos. 6091808, 7050861" (Bankr. D. Del. No. 09-10138, Doc. 13551, at 59 n.223), indicating '861 was part of Nortel's pre-sale monetization program. These are licensing-target records, not a filed lawsuit.
Caveats on identifiers and completeness
- I have interpreted all identifiers literally as given (US 7,050,861 / US7050861B1; application 09/606,053; case 1:07-cv-00507).
- The Delaware case is cited in different places as "07-507," "07CV507," and "1:07-cv-00507"; these are the same case.
- Some sources describe the stockholder/entity captions slightly differently (e.g., the dismissal stipulation mentions "Central Telephone Company of Texas"), which reflects related/consolidated settlement documents rather than a separate '861 suit.
- This list is based on what my searches surfaced (Google Patents litigation links, Darts-IP/Unified Patents flags, Justia/CourtListener dockets, Law Insider settlement documents, and contemporaneous press). It may not be exhaustive; a full PACER docket review of 1:07-cv-00507 and a current Unified Patents litigation-portal query for "7050861" would be the definitive confirmation.
If you want, I can next pull the specific docket entries in 1:07-cv-00507 to pin down the exact count(s) and claim(s) of '861 that Nortel asserted, and the precise date of the dismissal order.
Generated 9/28/2026, 10:41:00 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: Vonage Holdings Corp.
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 "no PTAB activity" default against public sources before drafting.
Let me run additional targeted searches to be thorough before concluding "no PTAB activity."
One more check on the litigation chain and any appellate activity, since the task needs defendant-facing context.
PTAB Proceedings on US 7,050,861 — Defendant-Facing Assessment
Canonical source check: The structured "PTAB proceedings on file" block (USPTO Open Data Portal) returns no AIA trial proceedings for US 7,050,861. I ran independent web searches for IPR/PGR/CBM activity naming the patent, the patent number (with and without commas), the title ("Controlling a destination terminal from an originating terminal"), and the petitioner-side names (Nortel, Rockstar, RPX, Unified Patents) before concluding. Nothing surfaced. The default therefore holds: no PTAB activity on file. Everything below is framed around that zero-state, plus the adjacent record a defendant actually needs.
Proceedings overview
Total AIA trial proceedings on file: 0 — 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution denials. No IPR, no PGR, no CBM. No Final Written Decisions, and consequently no Federal Circuit appeals from any PTAB proceeding.
The bottom line for a defendant is not "the patent is hardened by surviving IPRs" — it is that the PTAB has never touched claims 1–13, so no claim has been canceled and no claim has been validated either. The patent carries a clean but completely untested PTAB record. The genuinely decisive fact sits outside the PTAB entirely: per the structured data, the patent's adjusted expiration is 2023-05-16 and its legal status is "Expired - Fee Related." As of today (2026-09-28), the asserted instrument is expired, which caps any current demand at past damages inside the 35 U.S.C. § 286 six-year lookback rather than an ongoing royalty or injunction theory. A zero-PTAB patent of 1999 priority that expired for fee non-payment is a materially different risk profile from a live, IPR-tested patent.
Proceedings
There are no proceedings to enumerate. The per-proceeding template (petitioner, judge panel, grounds, institution decision, FWD, settlement, appeal) has no entries to populate, and I will not generate placeholder proceeding numbers — the instruction not to invent them is absolute, and doing so would be the single most damaging error in a defendant-facing memo.
For completeness, here is what the adjacent record does show, and why it is not PTAB activity:
(no AIA trial proceeding) — closest adjacent activity
- District court litigation (not PTAB): Google Patents reports a US case filed in the Delaware District Court, cross-referenced to case number 1:07-cv-00507 via Unified Patents' litigation dataset. The underlying AO 120 Report on the Filing of an Action (District of Delaware, docket 07cv507, document 4, filed 2007-08-20) lists Vonage Holding Inc. as plaintiff and Nortel Networks Inc. / Nortel Networks Ltd. as defendants, with US 7,050,861 B1 (patent date 5/23/06) among the patents placed at issue alongside US 6,091,808 and US 6,445,695. Note the posture: the plaintiff is Vonage and the patent holder is Nortel, which is consistent with a declaratory-judgment action rather than a Nortel infringement suit — but the AO 120 form does not itself state the cause of action, so treat the "DJ vs. infringement" characterization as an inference, not a finding. Link: https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1%3A07-cv-00507
- First worldwide family litigation: Google Patents also flags a Darts-IP "first worldwide family litigation filed" event for family 36423932, i.e., the EP/CA family members (EP1111875B1, CA2329395C, DE60022000T2). This is foreign family litigation metadata, not a US PTAB filing.
- No ex parte reexamination or other post-grant review surfaced in any of my searches for this patent.
- Patent owner / petitioner identity notes: the patent has passed through Nortel Networks Ltd → Rockstar Bidco, LP (2011-10-28) → Rockstar Consortium US LP (2014-03-10) → RPX Clearinghouse LLC (2015-02-09). So the party that would have been the Patent Owner in any IPR is a defensive-aggregator affiliate, not a litigating NPE — one plausible reason the PTAB docket here is empty.
Strategic summary
Claim status: all untested. No claim of US 7,050,861 has been canceled, narrowed, or confirmed by the PTAB — claims 1–13 stand exactly as granted on 2006-05-23. For precision: independent claim 1 is the method claim; claims 2–11 depend from claim 1; independent claim 12 is the destination-terminal apparatus claim; claim 13 depends from claim 12. Because no IPR or PGR reached an FWD, there is no claim-level disposition to quote and no narrowed claim set to work around. A defendant cannot say "claims 1–5 are dead"; it can say only that no adjudicative body has yet construed or invalidated any of them in a post-grant forum.
Estoppel landscape: empty, and that is good news for a defendant. Section 315(e)(2) estoppel attaches only after a petitioner has obtained an instituted IPR/PGR that reaches a final written decision. With no institution and no FWD, no petitioner — and no privy or real party in interest — is estopped from anything. Every prior-art ground, including art that would have been raised in a hypothetical IPR, remains fully available in an IPR, in a district court, or in any other forum. There is no estoppel trap and no "should have raised it" exposure created by this patent's history. The corollary is that there is also no patent-owner estoppel from a prior proceeding to hold anyone to — the slate is genuinely blank on both sides.
Pattern signals: none of the usual red flags, which is itself the signal. No petitioner has filed even one IPR here, let alone multiple; there is no serial-petitioner pattern; the patent owner has never appeared before the PTAB on this patent and therefore has no PTAB-appeal aggressiveness to gauge; and there is no Unified Patents filing against it. The custody chain, however, is notable: this patent ended up in RPX Clearinghouse LLC, whose business model is defensive aggregation and defensive-consortium licensing rather than assertion. Combined with the fee-related expiration and the 1999 priority date, the normal heuristic — well-asserted patents eventually attract IPRs — has to be inverted here: this one appears never to have attracted sustained assertion, which is consistent with the empty PTAB docket. The 2007 Delaware activity (Vonage, on the same family) is the only known US assertion-adjacent event, and it is nearly two decades old.
Recommended next steps
- There is no Final Written Decision to link or quote. I will not manufacture one. The appropriate citation to a demand-letter recipient is the structured legal-status data itself — "Expired - Fee Related," adjusted expiration 2023-05-16 — not a PTAB disposition.
- There are no active proceedings, so there are no PTAB trial milestones to calendar (no institution-decision deadline, no oral hearing, no § 316(a)(11) one-year FWD deadline running against anyone). Confirm this independently on USPTO PTAB E2E (https://ptacts.uspto.gov/ptabweb) and the PTAB Decisions library before relying on it, and re-check CourtListener's Federal Circuit docket for any appeal referencing 7,050,861 — my search for CAFC activity returned no results, but a null result from a web search is weaker evidence than a direct docket query.
- Lead with expiration, not validity. The controlling defense is temporal: an expired patent supports only past damages within § 286's six-year window measured from the complaint, and any demand premised on post-2023-05-16 conduct fails at the threshold. Check whether the asserted claims' remaining life overlapped the accused product's conduct at all.
- If an IPR is contemplated anyway, two gates apply. (1) It is a pre-AIA patent (effective filing 1999-12-22 / 2000-06-28), so PGR is categorically unavailable — only IPR (and historically CBM, whose transitional window closed on 2020-09-16) was ever open. (2) § 315(b) bars an IPR petition filed more than one year after service of a complaint alleging infringement of this patent — diarize the service date immediately, because that clock, not the merits, is the usual killer on a patent this old.
- Verify with primary sources before filing anything. The absence of PTAB activity is the conclusion here, and I'm flagging the limits of it: I found no proceedings, but I did not query the PTAB E2E API directly, and a recently filed petition may not yet appear in secondary search indexes or in the ODP ingest.
Confidence and caveats. High confidence that no IPR/PGR/CBM reached an FWD or was even filed on this patent, and high confidence in the assignment chain, expiration data, and claim structure (all from the authoritative patent text and the structured block). Lower confidence on the precise nature of the 2007 Delaware action — the AO 120 form supports a Vonage-filed action with Nortel's patents at issue, but does not state whether it was a DJ, a counterclaim, or a transfer — and I have not independently confirmed its disposition. Treat that litigation paragraph as a research lead rather than an established outcome.
Generated 9/28/2026, 10:41:10 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 2000-09-12 · Assignment
Michael O'Doherty; Bryan J. Miller; Eric LauzonNortel Networks Corporation
? · recorded 2011-10-28 · Assignment
Nortel Networks CorporationRockstar Bidco, LP
bankruptcy
? · recorded 2014-03-10 · Assignment
Rockstar Bidco, LPRockstar Consortium US LP
transfer-to-asserter
2015-01-28 · recorded 2015-02-09 · Assignment
Rockstar Consortium US LP; Rockstar Consortium LLC; Bockstar Technologies LLC; Constellation Technologies LLC; MobileStar Technologies LLC; NetStar Technologies LLCRPX Clearinghouse LLC
defensive aggregation
? · recorded 2016-03-09 · Security Agreement
RPX Clearinghouse LLC and RPX CorporationJPMORGAN CHASE BANK, N.A., AS COLLATERAL AGENT
securitization
? · recorded 2018-01-02 · reel 038041/0001 · Release
JPMORGAN CHASE BANK, N.A., AS COLLATERAL AGENTRPX Corporation; RPX Clearinghouse LLC
securitization
? · recorded 2018-06-29 · Security Interest
RPX Clearinghouse LLCJEFFERIES FINANCE LLC
securitization
? · recorded 2020-10-26 · Release by Secured Party
JEFFERIES FINANCE LLCRPX Clearinghouse LLC
securitization
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 gather corroborating details before reconstructing the chain.
Good corroboration. Let me check the assignment-record layer (correspondents, reel/frame) and the RPX/Rockstar transfer mechanics.
US 7050861 — Ownership Chain Reconstruction
Patent: US 7,050,861 B1 — "Controlling a destination terminal from an originating terminal"
App. No.: 09/606,053 (non-provisional of provisionals 60/171,777 and 60/171,801, both filed 1999-12-22)
Filed: 2000-06-28 · Issued: 2006-05-23 · Status: Expired – Fee Related (adjusted expiration 2023-05-16)
Sourcing note / limitation. The USPTO Assignment Center (
https://assignmentcenter.uspto.gov/) and the legacy Assignment Search (https://assignment.uspto.gov/patent/index.html) are JavaScript-gated search applications; I could not retrieve the raw assignment abstracts (reel/frame, execution date, correspondent of record) for most links in this chain. Where a reel/frame is not shown below, I did not have it and have not invented one. The chain below is reconstructed from the Google Patents legal-events record (authoritative text supplied), corroborated against the RPX SEC filings, the Nortel bankruptcy allocation record, and the recorded 2015 Rockstar→RPX assignment document itself. Signal 3 (repeat correspondent) is therefore reported as not verifiable rather than scored.
Inventors
| Inventor | Residence at filing | Employer at filing | Notes |
|---|---|---|---|
| Eric Lauzon | Crowthorne, United Kingdom | Nortel Networks (UK-based engineering staff) | Co-inventor of record; assigned rights to Nortel Networks Limited |
| Bryan J Miller | Cookham, United Kingdom | Nortel Networks | Prolific Nortel inventor (13 US grants attributed to him at Nortel Networks Limited) |
| Michael O'Doherty | London, United Kingdom | Nortel Networks | Co-inventor of record |
Unusual patterns: None of the classic fire-sale precursor is present. All three inventors are UK-resident and all assigned to the Canadian parent, Nortel Networks Limited, by assignment recorded 2000-09-12 (Google Patents legal events: "ASSIGNMENT OF ASSIGNORS INTEREST," assignors O'Doherty, Miller, Lauzon). There is no evidence in the record I reviewed of inventors departing the assignee within 12 months of filing — the patent stayed with Nortel for roughly eleven years (2000 → 2011). The trigger for the transfer was corporate insolvency, not inventor attrition.
Original assignee
Nortel Networks Limited (St. Laurent, Quebec, Canada) — the named assignee on the face of the issued patent; the assignment of inventors' interest was recorded 2000-09-12.
- Line of business: Global telecommunications and data-networking equipment manufacturer (wireline carrier switching, wireless/4G infrastructure, enterprise/IPT telephony, optical). Chief IP Officer John Veschi was recruited by Nortel Networks Inc. on 2008-07-28 specifically to build an IP licensing/enforcement business line.
- Product embodiment: Not established. The claims are directed to executing code carried in signalling-protocol messages at the destination terminal (see claims 1, 11–13 — SIP messages carrying Java byte code/applets/mobile agents). This is an aspirational architecture patent from the 1999–2000 SIP era; the record I reviewed shows Nortel monetizing it by licensing/enforcement, not by pointing to a shipping product practising all claims. In Nortel's own pre-petition licensing programme,
7050861appears in a Nov-2008-era enforcement target list (Bankr. D. Del. 09-10138, Doc. 13551 at 59 n.223: "TR50518 (involving patent Nos. 6091808, 7050861)"). - Status: Bankrupt / wound down. Nortel filed for creditor protection in January 2009 (Nortel Networks Inc. Chapter 11, Bankr. D. Del. No. 09-10138); its businesses and then its patent portfolio were sold off; the patent portfolio sale closed in 2011. The Nortel estate has been in wind-down/allocation litigation for years. The original assignee no longer owns the patent and no longer operates.
Corroborating litigation on this patent (pre-bankruptcy, while Nortel still owned it): Vonage Holdings Corp. v. Nortel Networks Inc. et al, No. 1:07-cv-00507-GMS (D. Del., filed 2007-08-17) — Vonage declaratory-judgment action; the AO-120 report names US 7,050,861 with holder "Nortel Networks Limited." Nortel counterclaimed for infringement of a parallel set of VoIP patents. This is the only litigation naming this patent that I could document.
Assignment timeline
1999-12-22 — Priority provisionals 60/171,777 and 60/171,801 filed (not an assignment; chain anchor).
2000-09-12 / recorded 2000-09-12 — Reel/frame not retrieved
- Conveyance: Assignment of assignors' interest
- Assignor: Michael O'Doherty; Bryan J. Miller; Eric Lauzon (individual inventors)
- Assignee: Nortel Networks Limited
- Correspondent: not retrieved (search endpoint gated); the prosecution attorney of record is Barnes & Thornburg LLP — a prosecution fact, not an assignment correspondent
- Context: Original inventor-to-corporate assignment (routine; no fire-sale inference)
2011-10-28 / recorded 2011-10-28 (per Google Patents legal events) — Reel/frame not retrieved
- Conveyance: Assignment (bankruptcy Asset Sale Agreement dated 2011-06-30; U.S./Canadian courts approved 2011-07-11)
- Assignor: Nortel Networks Limited
- Assignee: Rockstar Bidco, LP (Delaware LP; consortium of Apple, Microsoft, RIM/BlackBerry, Ericsson, Sony, EMC)
- Correspondent: not retrieved
- Context: Bankruptcy sale — $4.5B auction purchase of ~6,000 Nortel patent assets; a distressed-estate asset sale into a purpose-built consortium SPV
2014-03-10 / recorded 2014-03-10 (per Google Patents legal events) — Reel/frame not retrieved
- Conveyance: Assignment
- Assignor: Rockstar Bidco, LP
- Assignee: Rockstar Consortium US LP (Delaware LP; general partner Rockstar Consortium LLC)
- Correspondent: not retrieved
- Context: Internal reorg and operating-to-asserter transfer — bulk of the portfolio moved from the bid-consortium SPV to the licensing/assertion entity; the RPX Empower database logged the start of Bidco→Rockstar Consortium US LP recordations in February 2013, with this patent's recordation appearing in 2014
2015-02-09 / recorded 2015-02-09 (assignment executed 2015-01-28; closing announced 2015-02-03) — Reel/frame not retrieved
- Conveyance: Assignment (Asset Purchase Agreement dated 2014-12-22)
- Assignors (joint, "Sellers"): Rockstar Consortium US LP; Rockstar Consortium LLC; Bockstar Technologies LLC; Constellation Technologies LLC; MobileStar Technologies LLC; NetStar Technologies LLC
- Assignee: RPX Clearinghouse LLC (Delaware LLC; principal place of business One Market Plaza, Steuart Tower, Suite 800, San Francisco, CA 94105)
- Correspondent: not retrieved. Signatories on the recorded assignment were Martin Roberts (RPX Clearinghouse LLC) and BJ Watrous (Rockstar Consortium US LP); Ned Segal signed for RPX Corporation — these are party officers, not the filing correspondent, and I make no correspondent-inference from them.
- Context: Transfer to defensive aggregator — $900M clearinghouse purchase; >30-company licensee syndicate including Cisco and Google; eight Rockstar litigations dismissed
2016-03-09 / recorded 2016-03-09 — Reel/frame not retrieved
- Conveyance: Security Agreement (collateral agent grant)
- Assignor: RPX Clearinghouse LLC and RPX Corporation
- Assignee: JPMorgan Chase Bank, N.A., as Collateral Agent
- Correspondent: not retrieved
- Context: Securitization / secured financing — lien against the RPX patent assets, not a change of ownership
2018-01-02 / recorded 2018-01-02 — Reel 038041 / Frame 0001 (the only reel/frame visible in the source I could access)
- Conveyance: Release
- Assignor: JPMorgan Chase Bank, N.A. (as collateral agent)
- Assignee: RPX Corporation; RPX Clearinghouse LLC
- Correspondent: not retrieved
- Context: Release of security interest — lien discharged (REEL 038041/FRAME 0001 per Google Patents legal events)
2018-06-29 / recorded 2018-06-29 — Reel/frame not retrieved
- Conveyance: Security Interest
- Assignor: RPX Clearinghouse LLC
- Assignee: Jefferies Finance LLC
- Correspondent: not retrieved
- Context: Securitization / refinancing — replacement secured lender; not a title transfer
2020-10-26 / recorded 2020-10-26 — Reel/frame not retrieved
- Conveyance: Release by Secured Party
- Assignor: Jefferies Finance LLC
- Assignee: RPX Clearinghouse LLC
- Correspondent: not retrieved
- Context: Release — Jefferies lien discharged; RPX retains ownership
2023-05-16 — Not an assignment: adjusted expiration / "Expired – Fee Related" legal-status event. No further ownership change recorded.
Net present title: RPX Clearinghouse LLC (wholly owned subsidiary of RPX Corporation), subject to no recorded outstanding security interest after the 2020-10-26 release.
(Foreign counterparts EP1111875B1, DE60022000T2 and CA2329395C appear in the record only as priority/claim-of-priority entries from Dec-2000 family filings — they are not assignment events.)
Timeline diagram
timeline
title Ownership of US 7050861
1999 : Priority provisionals filed Dec 22
2000 : Non provisional application filed Jun 28
: Inventors assign to Nortel Networks Limited
2006 : Patent US 7050861 issues
2007 : Vonage declaratory judgment filed
2009 : Nortel files for creditor protection
2011 : Nortel portfolio sold to Rockstar Bidco
: Assignment recorded to Rockstar Bidco
2013 : Recordations begin to Rockstar Consortium LP
2014 : Rockstar agrees to sell portfolio to RPX
: Assignment recorded to Rockstar Consortium LP
2015 : Assignment recorded to RPX Clearinghouse
2016 : Security agreement with JPMorgan Chase
2018 : JPMorgan security interest released
: Security interest granted to Jefferies Finance
2020 : Jefferies security interest released
2023 : Adjusted patent term expiration
NPE / troll-pattern signals
Shell-entity transfer — PRESENT. Nortel Networks Limited (operating telecom OEM) → Rockstar Bidco, LP, a Delaware LP incorporated in 2011 for the sole purpose of holding the auctioned Nortel assets (recorded 2011-10-28), → Rockstar Consortium US LP, a Delaware LP whose only stated business was licensing/enforcing the portfolio (2014-03-10 recordation; recordations to the LP began Feb-2013 per RPX Empower). The AAI's 2014 letter to the DOJ describes Rockstar Consortium as "a PAE" with "no source of revenue except for its patents." Note the counterparties: the 2015 seller set includes four additional single-purpose Delaware LLCs — Bockstar Technologies LLC, Constellation Technologies LLC, MobileStar Technologies LLC, NetStar Technologies LLC. Concrete evidence, not naming inference: the transfer instrument itself (APA dated 2014-12-22) recites these as asset-holding Sellers distinct from the operating parents.
Known asserter in the chain — PRESENT (mid-chain), NOT PRESENT at termination. Rockstar Consortium US LP is a documented high-frequency plaintiff/privateer: it filed eight infringement suits on 2013-10-31, including Rockstar Consortium US LP v. Google Inc., No. 2:13-cv-00893 (E.D. Tex.), against Google, Asustek, HTC, Huawei, LG, Pantech, Samsung and ZTE. It is not on the Acacia/Marathon/IV/Wi-LAN/Conversant/Vringo/Pendrell/Innovatio/MPHJ/Lumen View/Round Rock list, but it is squarely within "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff." Caveat: US 7,050,861 is not among the patents Rockstar actually asserted in Oct-2013 — its asserted set was the "associative search engine" family. So the asserter signal attaches to the entity, not to an assertion of this patent. No known assertion of
7050861by Rockstar or by any subsequent owner. The current assignee, RPX Clearinghouse LLC, is a defensive aggregator that has publicly pledged not to assert.Repeat correspondent across the chain — UNVERIFIED (not scored). I could not retrieve the recorded correspondent for any link, because the Assignment Center and legacy Assignment Search interfaces are JavaScript-gated and did not return assignment abstracts to me. The only party-officer names I can evidence are from the 2015 instrument (Martin Roberts / RPX; BJ Watrous / Rockstar; Ned Segal / RPX), and officers are not correspondents. I am not asserting a repeat-correspondent finding without the reel/frame correspondent fields. This is the single most valuable field to pull manually at Assignment Center (search by patent number, then open each abstract's "Correspondent" line) — it is the one signal I could not close.
Cascading transfers — PRESENT. Three title transfers in under ~40 months (2011-10-28 → 2014-03-10 → 2015-02-09), with Rockstar Bidco → Rockstar Consortium US LP → RPX Clearinghouse spanning roughly 16 months (<24 months). The 2015 link is a six-party joint assignment (Rockstar LP, Rockstar LLC, Bockstar, Constellation, MobileStar, NetStar → RPX Clearinghouse LLC) — the hallmark of a portfolio carved across parallel single-purpose vehicles and re-consolidated for sale.
Pre-litigation transfer — NOT PRESENT. No infringement suit naming
7050861is documented after any of the transfers; the only case naming it is the 2007-08-17 Vonage declaratory-judgment action, filed ~4 years before the 2011 Rockstar transfer, while Nortel still owned it. There is no assignment within 6 months of a suit on this patent.Bankruptcy fire-sale — PRESENT. North America's largest patent bankruptcy: Nortel's 2009 filing, the 2011-06-30 Asset Sale Agreement, court approval 2011-07-11, and recordation to Rockstar Bidco LP 2011-10-28. (Nuance: this was a premium auction — $4.5B against Google's $900M stalking-horse — so the "fire-sale price" characterization does not hold; the mechanism is nonetheless a bankruptcy estate sale.)
Privateering — PRESENT. Textbook fact pattern: Apple, Microsoft, RIM/BlackBerry, Ericsson, Sony and EMC jointly bought the portfolio through Rockstar Bidco, then moved the bulk to Rockstar Consortium US LP, which sued Google and Android OEMs on 2013-10-31 while the parents retained licenses and avoided counterclaims. The American Antitrust Institute's 2014 DOJ letter calls this a "privateering" arrangement and urges reopening the investigation; Ars Technica described Rockstar as "the ultimate 'patent privateer.'"
Defensive aggregator (anti-NPE) — PRESENT (terminal). The chain ends at RPX Clearinghouse LLC (assignment executed 2015-01-28, recorded 2015-02-09), a wholly owned subsidiary of RPX Corporation, funded by a syndicate of 30+ companies including Cisco and Google, with the assets licensed on FRAND terms and a public no-assertion posture. As a direct result, eight Rockstar litigations against 16 companies were dismissed on closing (2015-02-03). Inverse signal: this patent has been neutralized. Subsequent recorded events (2016-03-09 JPMorgan security agreement; Reel 038041/Frame 0001 release 2018-01-02; 2018-06-29 Jefferies security interest; 2020-10-26 release by secured party) are financing/lien events on the RPX holding, not title changes — the patent never left RPX, and it expired 2023-05-16.
Verdict
Defensive / non-asserting — the chain terminates at a defensive aggregator.
Justification: Title passed Nortel Networks Limited → Rockstar Bidco, LP (2011-10-28) → Rockstar Consortium US LP (2014-03-10) → RPX Clearinghouse LLC (executed 2015-01-28, recorded 2015-02-09) and has not moved since; every post-2015 recordation is a lien or lien release on RPX's holding, evidenced by Reel 038041/Frame 0001 (release, 2018-01-02) and the 2020-10-26 release by secured party. RPX Clearinghouse is a canonical anti-NPE buyer with a no-assertion pledge, the 2015 purchase dismissed eight Rockstar suits, and the patent has since expired (2023-05-16) — so it cannot be asserted today by anyone. Important caveat for the file: the mid-chain segment independently satisfies the NPE test — shell-entity transfers into purpose-built Delaware LPs plus a documented privateering arrangement in which Rockstar Consortium US LP (a PAE with no products) sued Google and Android OEMs on 2013-10-31. If the question is "has this patent ever been weaponized through an NPE-style structure," the answer is yes (Rockstar); if the question is "who owns it and will it be asserted," the answer is RPX Clearinghouse and no.
Verification: Assignment Center search by patent number — https://assignmentcenter.uspto.gov/ (records also mirrored at https://assignment.uspto.gov/patent/index.html). Legal-events view: https://patents.google.com/patent/US7050861/en. Open item to close: pull the correspondent of record on each abstract (the 2011-10-28, 2014-03-10 and 2015-02-09 recordings in particular) to test signal 3 — I could not retrieve these fields and have not guessed at them.
Generated 9/28/2026, 10:41:44 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US Patent 7050861 and its cited prior art references.
Let me search for the specific prior art references cited in this patent and its family members.
Let me get the specific citations list for this patent.
Analysis: US Patent 7,050,861 B1 — Prior Art Assessment
⚠️ Critical methodological caveat (read first)
I was unable to retrieve the actual "References Cited" / front-page citation list for US 7,050,861 B1. The authoritative full text of the patent you supplied does not include the (56) References Cited section, and my searches did not surface that specific list. Under your strict "do not fabricate" rule, I will not invent citation entries, dates, or § 102 mappings for this patent. Below I separate what is verified from what is unverified/inferential.
1. Patent identification (VERIFIED — from supplied authoritative text)
| Field | Value |
|---|---|
| Publication number | US 7,050,861 B1 (interpreted literally as given) |
| Title | Controlling a destination terminal from an originating terminal |
| Application number | US 09/606,053 |
| Filing date | 2000-06-28 |
| Priority date | 1999-12-22 |
| Grant/publication date | 2006-05-23 |
| Inventors | Eric Lauzon; Bryan J. Miller; Michael O'Doherty |
| Original assignee | Nortel Networks Ltd |
| Current assignee (listed) | RPX Clearinghouse LLC |
| Status | Expired – Fee Related; adjusted expiration 2023-05-16 |
| Related provisionals | US 60/171,777 and US 60/171,801, both filed Dec. 22, 1999 |
| Related parent application | US Ser. No. 09/520,853, filed 7 Mar 2000 (Nortel ref. 11790 ID) — described in the patent as "an improved Session Initiation Protocol (SIP)" |
| Family members flagged | EP 1111875 A2/B1; DE 60022000 T2; CA 2329395 C |
| Source | https://patents.google.com/patent/US7050861/en |
Scope of the disclosed invention (for § 102 framing): the patent claims (i) a method of remotely controlling a destination terminal by associating computer software code with at least one signalling protocol message, sending it, and executing that code on a processor at the destination terminal; (ii) a corresponding originating terminal; (iii) a corresponding destination terminal; (iv) a signal comprising signalling protocol messages associated with computer software code; and (v) a method of displaying caller-identity information via a dynamically updated database. Embodiments emphasize improved SIP messages carrying Java applets / Java mobile agents, with an API and security manager at the receiving host.
2. What I did verify regarding cited material
2a. Related-family citation material (VERIFIED as belonging to the sibling/parent-family document, NOT necessarily to US 7,050,861's own face):
The related Nortel patent US 7,743,149 B1 — "SIP messages carrying executable computer software code" (the improved-SIP work described in the US 7,050,861 specification as the repeated "Appendix A" material) lists the following U.S. patent citations, and notably cites US 7,050,861 itself as an entry in its list:
- US 5,423,042 — Jalili et al. — Jun. 6, 1995
- US 6,003,082 — Gampper et al. — Dec. 14, 1999
- US 6,014,688 — Venkatraman et al. — Jan. 11, 2000
- US 6,125,366 — Bernstein et al. — Sep. 26, 2000
- US 6,175,868 — Lavian et al. — Jan. 16, 2001
- US 6,282,193 — Hluchyj et al. — Aug. 28, 2001
- US 6,393,497 — Arnold et al. — May 21, 2002
- US 6,421,674 — Yoakum et al. — Jul. 16, 2002
- US 6,434,143 — Donovan — Aug. 13, 2002
- US 6,438,555 — Orton — Aug. 20, 2002
- US 6,446,070 — Arnold et al. — Sep. 3, 2002
- US 6,446,111 — Lowery — Sep. 3, 2002
- US 6,487,607 — Wollrath et al. — Nov. 26, 2002
- US 6,567,399 — Schuster et al. — May 20, 2003
- US 6,636,965 — Beyda et al. — Oct. 21, 2003
- US 6,816,579 — Donovan et al. — Nov. 9, 2004
- US 7,010,727 — Stucker — Mar. 7, 2006
- US 7,050,661 — Lyons — May 23, 2006
- US 7,050,861 — Lauzon et al. — May 23, 2006 (the patent at issue, listed as a same-family reference)
Non-patent literature cited in the related family document:
- Handley et al., "SIP: Session Initiation Protocol," IETF RFC 2543, Mar. 1999
- Byttner (Kristensen) et al., "The SIP Servlet API," Internet Draft, Sep. 1999
- Caruso et al., "ChaiTime: a system for rapid creation of portable next-generation telephony services using third-party software components," Mar. 26–27, 1999, pp. 22–31
- Bill Venners, "Under the Hood: The architecture of aglets," JavaWorld, Apr. 1997
- Kaukonen, Sauvola & Ojala, "Agent based conferencing using mobile IP-telephony," IEEE 3rd Workshop on Multimedia Signal Processing, Sep. 13–15, 1999, pp. 593–598 (XP002160273)
- Rosenberg, Lennox & Schulzrinne, "Programming Internet telephony services," IEEE Network, vol. 13, no. 3, May–Jun. 1999, pp. 42–49 (XP002160274)
- Kiniry & Zimmermann, "A hands-on look at Java mobile agents," IEEE Internet Computing, vol. 1, no. 4, Jul.–Aug. 1997, pp. 21–30 (XP002160275)
- "A Beginner's Guide to URLs," http://archive.ncsa.uiuc.edu/
Important: These are the citations of the related/sibling US 7,743,149 document, not verified as the (56) list printed on US 7,050,861's own face. Given that both arose from the same Nortel improved-SIP work, overlap is plausible but I have not verified it and cannot assert it as US 7,050,861's citation list.
2b. Forward citation (VERIFIED, for context only — not prior art against the patent):
- Justia's page for US D765,122 lists "7,050,861 — May 23, 2006 — Lauzon et al." among its Referenced Cited entries. This is a later document citing US 7,050,861; it is not § 102 prior art against it.
- CN 101507211 B (Microsoft, "client-controlled dynamic call forwarding") cites "US 7050861 B1, 2006.05.23" among its references — again a forward citation.
- RU 2,499,359 C2 (Microsoft) likewise lists "US 7050861 B1, 23.05.2006" in its cited-documents list — forward citation.
3. § 102 anticipation analysis
Because I could not obtain the verified (56) prior-art citation list for US 7,050,861, I cannot reliably state which specific cited references "potentially anticipate" which specific claims under 35 U.S.C. § 102. Any per-reference, per-claim § 102 mapping I produced now would be constructed rather than grounded, and that would violate the no-fabrication rule.
What I can offer as reasoned, clearly-labeled inference (not verified findings):
- An anticipating § 102 reference would have to disclose all elements: (a) associating executable computer software code with a signalling-protocol message, (b) sending that message to a destination terminal, and (c) executing the code on a processor associated with the destination terminal so the originating terminal controls it. The patent's own examination history presumably relied on such a combination.
- The most relevant art-type in this field — and the strongest § 102 candidates conceptually — would be documents teaching mobile/executable code delivered via a signalling or session protocol. Likely candidate classes from the retrieved reference pool include:
- The Handley et al. RFC 2543 SIP baseline (would only be anticipatory if it taught code embedding — a SIP RFC would ordinarily go to § 103/§ 102(a) as background, not full anticipation of the code-carrying claims).
- The Kristensen "SIP Servlet API" and Rosenberg "Programming Internet telephony services" papers — both concern third-party/programmable telephony services on SIP; these are the class of references a § 102(a)/§ 103 rejection could plausibly rest on for the "control the destination terminal via programmed signalling" concepts.
- Kiniry & Zimmermann "Java mobile agents" and Venners "aglets" — these concern self-migrating Java code, potentially relevant to the mobile-agent claims.
- U.S. patents such as US 6,434,143 (Donovan) and US 6,816,579 (Donovan et al.) — Internet telephony / call-handling art — plausible § 102/§ 103 relevance to the call-handling embodiments (voice-mail routing, priority handling), but their date and content relative to the Dec. 22, 1999 priority date would require verification.
- US 6,446,111 (Lowery) — URL/data-object delivery — potentially relevant to the "URL pointing to stored code" alternative.
- I cannot confirm dates, art categories (pre-AIA § 102(a)/(b)/(e)), or element-by-element correspondence for any of these without the actual front-page citations and reference texts.
4. Recommendations to close the gap (needed for a defensible § 102 opinion)
- Pull the official (56) "References Cited" list from the USPTO PatentCenter / Patent Full-Text (PATFT/PatFT) record for US 09/606,053 (file wrapper) — the Google Patents page reproduced in your prompt did not expose this section.
- Pull the EP 1111875 and CA 2329395 search reports, which will show the EPO/CA examiners' X/Y-categorized references for the same invention — these typically map directly to § 102 "anticipatory" (X) vs. § 103 (Y) references and are the single best proxy for the U.S. § 102 analysis.
- Confirm whether the applicable law is pre-AIA (priority 1999-12-22; filed 2000-06-28 → pre-AIA applies), so § 102 bars use the pre-AIA (a)/(b)/(e) framework and § 102(g) is available.
- For each retrieved reference, do the element-by-element chart against the specific claims (including the originating-terminal, destination-terminal, signal, and database-method claims) before asserting anticipation.
5. Sources consulted
- Supplied authoritative full text: https://patents.google.com/patent/US7050861/en
- Family: https://patents.google.com/patent/EP1111875A2/en ; https://patents.google.com/patent/CA2329395C
- Related/sibling citation list ("SIP messages carrying executable computer software code"): https://www.freepatentsonline.com/[7743149](/patent/7743149).html and https://patents.justia.com/patent/7743149
- Forward citations (context only): https://patents.justia.com/patent/D765122 ; CN 101507211 B; RU 2,499,359 C2
Bottom line: The patent is confidently identified as US 7,050,861 B1 (Nortel/Lauzon et al.), but I could not verify its specific prior-art citation list, so I decline to fabricate per-reference § 102 anticipation assignments. The related-family reference pool above is the best available lead, and the EP 1111875 / CA 2329395 search reports should be pulled to complete a rigorous § 102 analysis.
Generated 9/28/2026, 10:41:08 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the prior art landscape for US 7050861 before constructing the obviousness analysis.
Obviousness Analysis — US 7050861 B1 ("Controlling a destination terminal from an originating terminal")
0. Important scope caveat (read first)
You asked me to "use the results from the Prior Art section of this page." As fetched for US7050861B1, the page's Prior Art block contains only metadata, not a reference list:
- Prior art keywords: sip, computer software, software code, destination terminal, terminal
- Prior art date: 1999-12-22
There is no "Patent Citations" / "References Cited" table included in the text I was given, and my searches did not return a reliable, retrievable list of the 58 examiner-cited references. Under your strict rule I will not invent citation numbers. Where I name a reference, it is either (a) expressly identified in the patent's own text, or (b) a widely-known contemporaneous work identified as such and flagged for verification. I also note that the full issued claim set is not in the fetched text — my claim decomposition uses the claim language quoted verbatim in the "Summary of the Invention" and the abstract. Treat claim numbering as approximate.
The prior art I can ground on from the page itself:
| Ref | Source | Date | Status |
|---|---|---|---|
| A — TDM/CLID system with database of terminal→user identity (Fig. 1) and access-node-stored static name info | Applicant's own "Description of the Prior Art," US7050861 | pre-1999 | Applicant-admitted prior art (§102(a)/(b)) |
| B — RFC 2543, SIP: Session Initiation Protocol | Expressly cited in spec ("Request for comments (RFC) 2543…"; "section 6.28 of the SIP RFC") | March 1999 | Prior art |
| C — Venners, "Under the Hood: The architecture of aglets," JavaWorld, April 1997 | Expressly incorporated by reference in spec | April 1997 | Prior art |
| D — U.S. App. Ser. No. 09/520,853 (Nortel, "improved SIP"), filed 7 Mar 2000 | Referenced in spec / Appendix A | 2000-03-07 | Not 102(e) prior art if the 1999-12-22 provisional priority holds (filed after priority date); same-family/common-ownership |
| E — Provisional U.S. Apps. 60/171,777 and 60/171,801 | Related applications | Dec. 22, 1999 | Applicant's own priority documents, not prior art |
Key timing point: Ref D (09/520,853) is later than this patent's 1999-12-22 priority date. It therefore cannot be used as §102/§103 art against claims entitled to that priority date, and because it is commonly owned/incorporated-by-reference it is best treated as background, not a §103 reference. Any obviousness rejection must rest on A, B, C (and equivalents known in the art), not on the Applicant's own co-pending application. I flag this because a careless analysis would lean on 09/520,853 — that would be reversible error.
1. Person Having Ordinary Skill in the Art (POSITA)
A POSITA at the Dec. 1999 priority date would have: (i) a bachelor's in EE/CS or equivalent; (ii) 2–4 years in packet telephony/signaling; (iii) working familiarity with RFC 2543 SIP, H.323, RTP, VoIP gateways; (iv) familiarity with Java applets / mobile agents and MIME multipart message bodies; and (v) working knowledge of PSTN features (CLID/ANI, call waiting, call drop, CFNA, voicemail, "block-the-blocker"). This is a mature, cross-disciplinary skill set — the combination of signaling and downloadable code was squarely within ordinary skill.
2. Claim decomposition (from the quoted claim language)
- Claim 1 (method): (a) associate computer software code with ≥1 signaling protocol message; (b) send that message originating→destination; (c) execute the code on the destination's processor so the originating terminal controls the destination terminal.
- Claim (originating terminal): input to access code + processor to associate code with messages + output to route messages to destination.
- Claim (destination terminal): signaling client to receive messages + processor to access associated code + processor to execute code so destination is controlled.
- Claim (signal): a signal comprising signaling protocol message(s) associated with computer software code.
- Claim (identity display): database of terminal→caller identity; initiate call; originating terminal forwards caller-identity info to and updates the database; destination retrieves identity from database and displays it.
3. Combination grounds
Ground 1 — Claim 1 (method): B (RFC 2543 SIP) in view of C (Java applet / mobile-agent distribution)
- B teaches (a)+(b): SIP is a text-based, extensible peer-to-peer signaling protocol; RFC 2543 defines request methods (INVITE, ACK, BYE, REGISTER…) and an entity header with a Content-Type field, plus a message body capable of carrying MIME multipart payloads — the spec itself relies on exactly these fields ("content type field … multipart/mixed"). SIP also defines
Require/Proxy-Requireand unsupported-extension error handling (status 420) — the mechanism the patent reuses. - C teaches (c): applets/aglets are code that suspends, transports, and executes on a receiving host, i.e., code delivered in a message and run on the recipient's machine. This is the "execute on the destination processor" step.
- Why combine: RFC 2543's own design philosophy is extensibility and reuse of MIME/email constructs; a POSITA seeking new SIP services would naturally place payloads (including code) in the already-defined body rather than invent a new transport. Sending executable content in a message was a known technique ("active networks," Telescript/Aglets class of work) applied to the same problem of remotely configuring a receiving node. Result is predictable — code in the body, execute on receipt — and requires no change to the transport below SIP.
Ground 2 — Claim (signal): B + C, optionally in view of active-network / code-in-message art
A "signal comprising signaling protocol messages associated with computer software code" is the direct union of (i) SIP's message = signal, and (ii) code associated with a message (C). The only arguable novelty is the carrier medium. If the signal is claimed as a transitory propagated signal, note In re Nuijten (Fed. Cir. 2007) holds transitory signals are not §101 statutory subject matter — a validity issue independent of §103; if claimed functionally/manufacture-embedded, it's a Beauregard-style article whose obviousness follows from Ground 1.
Ground 3 — Claim (identity display): A (TDM CLID/name database) in view of B (SIP) and the spec's own admitted architecture
- A already teaches the core idea: a database mapping terminal→user name, consulted at call setup to display the caller's name at the called terminal (Fig. 1), and a second variant storing that mapping at the access node.
- The only delta in the claim is dynamic updating of the database so identity follows the person, not the terminal. The spec itself frames the problem as one of stale/static records in the A-type systems.
- Why combine: A POSITA addressing the expressly recognized mobility flaw in A would, as a matter of routine engineering, add a registration/update step — the same update paradigm SIP already provides via REGISTER/contact binding in B, and the same dynamic-directory paradigm used in PSTN LIDB/ANI databases for number portability. Motivation is the solved problem (correct identity when users roam or share terminals); expectation of success is high; no teaching away.
Ground 4 — Dependent features (priority handling, clearing an in-progress call, voicemail redirection, "block-the-blocker" override): B + C in view of conventional PSTN feature art
The patent's own dependent-feature discussions (Figs. 5–7) map almost one-to-one onto pre-existing PSTN features, so these are the weakest claims:
- Priority / preferential treatment: CLID-based priority ring (distinctive ringing), priority call waiting, "VIP" screening lists — all conventional.
- Clearing an "in-progress" call: the telephony analog of call waiting / call drop / operator intrusion / switch-hook flash; the only new wrinkle is remote, authenticated dropping. Password-authenticated override of a call or service was routine (calling-card PINs, voicemail PINs, remote call-forwarding activation via DTMF + PIN).
- Direct-to-voicemail: CFNA (call forward no answer) / direct voicemail deposit / "leave a message without ringing" were standard.
- Overriding "block-the-blocker": a specific instance of authenticated override of a stored service setting — again routine.
- Why combine: Each is a known functional objective implemented by a known mechanism. KSR: "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." Swapping the trigger for these PSTN features from in-band DTMF/PIN to a code-bearing SIP message is the predictable application of Ground 1's mechanism to Ground 4's features.
Ground 5 — Claim (remote reconfiguration of one's own terminal)
"User dials his own terminal and adjusts terminating services (rings-before-voicemail, etc.)." This is remote feature administration via authenticated signaling — already done by remote call-forwarding/PIN menus — implemented with the Ground 1 mechanism. Obvious.
4. Motivation-to-combine rationales (MPEP 2143 / KSR)
- Same field of endeavor and same problem — all reference categories (PSTN features, SIP, code-in-message) address call control and call presentation at a terminating device.
- Known technique to improve similar devices — code association with a message applied to SIP's already-extensible body.
- Predictable results — body-carried code executed on receipt; feature behavior unchanged, only the trigger/transport changes.
- Design need / market pressure — the spec's own motivation: static CLID, inability to clear a busy line in emergencies, inability to respect the callee's configuration.
- No teaching away — nothing in A/B/C discourages downloadable code in signaling messages; RFC 2543 explicitly anticipates extensions.
- Obvious to try — the limited number of predictable solutions (embed code vs. URL reference) is itself recited as interchangeable in claim 1's "any suitable manner" description.
5. Rebuttal / secondary considerations to test
- Security concern (caller should not have absolute control; destination enforces security/access restrictions). This cuts toward obviousness, not against: the patent's own default is destination-side control, so the claim's "control" is bounded by pre-existing policy — a conventional configuration, not an inventive safeguard.
- Claimed advantage ("identity correct even if caller uses different terminals") is a result of the dynamic-update step, which is the obvious fix to A's admitted static-record problem.
- Narrowing to escape art: the strongest non-obviousness argument is a provisional-priority / 102(e) date fight over Ref D — but as shown in §0, that argument helps the Applicant, not the challenger. A challenger must therefore prove every element from A + B + C + conventional-feature art.
6. Bottom line
| Claim group | Strongest §103 ground | Confidence |
|---|---|---|
| Method / originating terminal / destination terminal (core code-in-SIP-message + remote execution) | B (RFC 2543) + C (Java applet/aglet agent) | High |
| Signal claim | B + C (plus §101 caveat under Nuijten) | High on §103 |
| Dynamic identity database | A + B + registration/LIDB practice | High |
| Priority, call-drop, voicemail, override, remote reconfig | B + C + conventional PSTN feature art | High |
Caveats I want on the record: (1) I could not retrieve the examiner-cited reference list — any real rejection should be run against the actual 58 front-page citations, which I have not verified; (2) the analysis uses the claim language quoted in the Summary/Abstract, not the full issued claims; (3) U.S. App. Ser. No. 09/520,853 (filed 2000-03-07) is not usable as §103 prior art against claims entitled to the 1999-12-22 priority date and should be treated as background only. Verify all dates and the citation list against the official USPTO file before relying on this for a rejection or validity opinion.
Sources: https://patents.google.com/patent/US7050861/en (spec text, RFC 2543 reference, Appendix A / aglets article, related applications); family/litigation data as listed on the same page (EP1111875B1, DE60022000T2, CA2329395C; Delaware District Court case 1:07-cv-00507).
Generated 9/28/2026, 10:41:23 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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3 tracked lawsuits name US 7050861.