US 7092966

I'll search for the patent and any current litigation status.

Let me check for any IPR proceedings and 2026 CAFC activity involving this patent.

Let me verify whether any IPR was filed against this specific patent and check for any 2026 appellate activity.

US Patent 7,092,966 — Verification Summary

Sources used: The authoritative full text of the patent (provided), plus search results from Google Patents / USPTO-adjacent records, PTAB filings (ptacts.uspto.gov, docketalarm), and federal court dockets (unicourt, courtlistener).

⚠️ Important identification caveat first. Several unrelated patents are also nicknamed "the '966 patent" in litigation and PTAB filings — including the Sonos patent at issue in Sonos v. Google, a Fonar MRI patent, a network-broadcast patent, and an aquatic-sports patent. None of those are US 7,092,966. The results below are limited to US 7,092,966 specifically, whose full text I have verbatim.

Bibliographic Data (from the patent face)

Abstract (literal)

"A method and software program for creating an image product having at least one image provided thereon. The method includes providing a digital template for use in creating the image product. The digital template has at least one digital container for placement of digital content. The digital container has at least one designated image parameter. The method also includes searching a data base of digital content using at least one designated image parameter and providing at least one image content candidate for placement in at least one digital container."

Plain-Language Overview of the Independent Claims

Claim 1 — Core "template + auto-search" method (computer-implemented).
Provide a digital template for an image product; the template has a "digital container" (a slot/position for an image) associated with at least one designated image parameter. Then automatically search a database of image content using that parameter and supply at least one candidate image for that container. Essentially: the template slot "knows what kind of picture it wants," and the system goes and finds it.

Claim 16 — User-selects-parameter variant.
Select a template having a container; select the image parameter for that container yourself; then automatically search an image database for at least one candidate matching the selected parameter, which may then be selected for placement.

Claim 31 — Ranked-parameters variant.
Provide a template whose container has multiple designated image parameters arranged in a rank; automatically search using those parameters and return a plurality of candidate images for that container. (The rank ordering drives the order/priority of returned candidates.)

Claim 34 — Software program (CRM-style) claim.
A software program that, when loaded on a computer, causes it to: provide a template with a container having at least one designated image parameter, and automatically search an image-content database using that parameter to provide at least one candidate for the container.

Claim 39 — Ranked software-program variant.
Same as claim 34, but the container has a plurality of designated image parameters provided in a rank, and the search returns multiple ranked candidates.

Claim 40 — In-camera capture method.
Provide a template on the digital image capture device (camera), the template's container having at least one designated image parameter; capture an image on the device; and place the captured image into a container if the captured image corresponds to the designated parameter.

Claim 42 — In-camera review-then-shoot method.
Provide the template on the capture device; the user reviews the template to determine the container's designated image parameter; then captures an image appropriate for that container.

Representative dependent claims of interest: plurality of candidates shown as thumbnails inside the container (claim 3) or in a separate window/list (claims 4–5); image product forms — album page, print, t-shirt, label, digital file (claims 7, 19); template + selected image transferred as a single electronic file, over a network, or to a printer (claims 13–15, 37–38).

The specification also describes explicit criteria (tags = metadata parameters, e.g., "LAKE", "BOAT") versus implicit criteria (container shape/dimensions used to rank, e.g., panorama > landscape > portrait), script/menu download to a camera (Kodak DC265) for missing containers, and creating a still frame from a motion sequence.

Litigation / Post-Grant Activity Found

• Monument Peak Ventures, LLC v. Xerox Corporation, No. 2:21-cv-00345 (E.D. Tex., filed Sept. 1, 2021) — MPV asserted the '966 patent (claims 1, 8, 9, 10, 12, 16, 23, 24, 25, 27, and 34) along with 5 other MPV patents against Xerox DocuShare software and various Xerox presses/printers.
• Xerox Corporation v. Monument Peak Ventures, LLC, No. 6:20-cv-06263 (W.D.N.Y., filed Apr. 23, 2020) — Xerox declaratory-judgment action; the '966 patent was Exhibit #7. The court initially denied MPV's motion to dismiss for lack of personal jurisdiction without prejudice, then on 8/31/2021 transferred the case to E.D. Tex. as 4:21-cv-00683, which was dismissed without prejudice on 9/2/2021 under Fed. R. Civ. P. 41(a)(1)(A)(i).
• PTAB: I found an instituted IPR on a related MPV patent — IPR2022-00318 on US 7,684,090 (Xerox v. MPV), instituted 6/9/2022. I did not find any IPR petition specifically against US 7,092,966. Treat that as a negative finding only, not a certified absence.

Explicit Uncertainties

1. No CAFC 2026 docket located for US 7,092,966. My targeted searches for Federal Circuit 2026 activity on this specific patent returned nothing. I cannot confirm any 2026 appellate proceeding exists. (Note the Google Patents page lists litigation holds tied to E.D. Tex. cases 4:21-cv-00683 and 2:21-cv-00345 and W.D.N.Y. 6:20-cv-06263 — all pre-2022 filings.)
2. I could not verify the final merits outcome of MPV v. Xerox (2:21-cv-00345). Earlier docket snapshots show it as "Pending," and Xerox's complaint characterized several of the asserted patents — including claims that the '966 patent "requires a database of searched images" that Xerox said its products lack — as non-infringed; but I have no authoritative judgment/termination record.
3. Current assignee: the record indicates Monument Peak Ventures, LLC; the last recorded post-grant transaction was a 2023 release of a security interest, with the patent's legal status shown as Expired – Lifetime (2024-01-15).
4. Patent title is reproduced literally and is grammatically missing "and" ("Method software program for creating an image product having predefined criteria"). I have not auto-corrected it.
5. Claim text on the source page contains OCR artifacts (e.g., "die selected image content" in claim 6, "A meted according to claim 1" in claim 13, "appropriated" in claim 42). These are transcription errors in the retrieved text, not the issued claims; my plain-language summaries reflect the intended meaning.

I'll research litigation involving US patent 7092966. Let me start with several targeted searches.

Good — the patent text itself lists three litigation entries. Let me pin down the third case and details.

Let me verify the current status of the EDTX case and check for any other suits asserting the '966 patent.

Litigation involving US Patent 7,092,966 ("Method software program for creating an image product having predefined criteria")

Caveat on the identifier: I interpreted "7092966" literally as US 7,092,966 B2. Note that the related family member US 7,533,129 (continuation, app. 11/431,353) is a different patent and is not the same asset; cases below are keyed to the '966 patent. Note also that a commonly confused but distinct patent, US 7,092,573, appears alongside the '966 patent in the same cases — I have kept them separate.

The '966 patent issued from application 10/242,861 (filed 2002‑09‑13), original assignee Eastman Kodak Company; ownership passed to Intellectual Ventures Fund 83 LLC (2013), then Monument Peak Ventures, LLC ("MPV") (2017). It is the Kodak‑origin asset MPV asserted in a licensing campaign that produced the disputes below. Its Google Patents litigation record lists exactly three docket entries, which resolve into the two related actions detailed here (both against Xerox).

Case 1 — Xerox Corporation v. Monument Peak Ventures, LLC

• Court / Jurisdiction: U.S. District Court for the Western District of New York (W.D.N.Y.)
• Case No.: 6:20‑cv‑06263 (assigned to Judge Frank P. Geraci, Jr.)
• Filed: April 23, 2020
• Plaintiff: Xerox Corporation
• Defendant: Monument Peak Ventures, LLC
• Nature: Declaratory judgment of non‑infringement (28 U.S.C. § 2201). The '966 patent was one of eight patents‑in‑suit, attached as Exhibit 7 to the complaint (others: 5,923,908; 6,157,436; 6,215,559; 6,396,599; 6,873,336; 7,006,890; 7,684,090).
• Outcome / status: On August 31, 2021, Judge Geraci granted MPV's motion to dismiss for lack of personal jurisdiction and transferred the matter to the Eastern District of Texas. Transfer docketed in EDTX as 4:21‑cv‑00683 (Judge Sean D. Jordan). Xerox then voluntarily dismissed the action without prejudice under Fed. R. Civ. P. 41(a)(1)(A)(i) (notice dated September 1, 2021); the case was terminated September 2, 2021.
• Sources: Justia docket 6:20-cv-06263; Docket Alarm — W.D.N.Y. complaint (Exhibits include '966); UniCourt (6:20-cv-06263); UniCourt (4:21-cv-00683).

Case 2 — Monument Peak Ventures, LLC v. Xerox Corporation

• Court / Jurisdiction: U.S. District Court for the Eastern District of Texas, Marshall Division
• Case No.: 2:21‑cv‑00345‑JRG‑RSP (District Judge Rodney Gilstrap; Magistrate Roy S. Payne)
• Filed: September 1, 2021
• Plaintiff: Monument Peak Ventures, LLC
• Defendant: Xerox Corporation
• Nature: Patent infringement (35 U.S.C. § 271). The '966 patent was asserted (Exhibit 1‑5 to the complaint) along with 6,810,149; 6,873,336; 7,006,890; 7,092,573; and 7,684,090. Accused products included Xerox DocuShare/DocuShare Flex software and various Xerox printers/copiers (D95/D110/D125, WorkCentre 7655/7665/7675/7755/7765/7775, Color 550/560/570, C60/C70, Versant, PrimeLink, etc.). MPV's P.R. 3‑1 contentions stated the '966 patent is entitled to a priority date at least as early as the 10/242,861 filing on September 13, 2002.
• Outcome / status: Settled. Xerox first moved to dismiss for improper venue / transfer to W.D.N.Y. and to dismiss pre‑suit indirect/willfulness claims (Doc. 14, Nov. 4, 2021). The parties then settled: MPV filed a notice dismissing its '090‑patent infringement claim, and the parallel IPR2022‑00318 (on the '090 patent) was terminated by joint motion dated June 29, 2022 under 35 U.S.C. § 317(a) on the basis of a settlement and a May 20, 2022 covenant not to sue. The docket shows the case closed (June 9, 2022), with reporting that Judge Gilstrap entered an order dismissing with prejudice on August 3, 2022.
• Sources: Xerox motion to dismiss/transfer (Doc. 14); UniCourt (2:21-cv-00345); Joint motion to terminate IPR2022‑00318; Ex Parte case page, status "Closed (06/09/22)"; Actionable Intelligence case tag.

Related but not the '966 patent

• IPR2022‑00318, Xerox Corp. v. Monument Peak Ventures, LLC (PTAB) — an inter partes review, not district‑court litigation, and directed to US 7,684,090, not the '966 patent. Terminated June 30, 2022 by settlement. Included only because it was part of the same Xerox–MPV dispute cluster.
• MPV's other suits (e.g., Monument Peak Ventures v. Toshiba, C.D. Cal. 8:19‑cv‑02181; MPV v. Bosch Security Systems, D. Del. 1:18‑cv‑01335; MPV v. GE Healthcare, S.D. Cal. 3:18‑cv‑01158; later Parker/Harbor-family campaigns) assert different patents and, based on the records I reviewed, do not assert the '966 patent.

Points of uncertainty (stated explicitly)

1. I identified all three Google Patents litigation entries for US 7,092,966 and resolved them into the two Xerox disputes above. I did not run an exhaustive PACER/Unified Patents case‑list sweep, so I cannot rule out a later or lower‑profile case asserting the '966 patent — but no such case appeared in the sources I searched.
2. The press reference to MPV having "initially filed a patent infringement lawsuit in 2017 against Xerox" is consistent with the pre‑suit licensing campaign alleged in Xerox's 2020 declaratory judgment complaint; I could not confirm a 2017 case number or that the '966 patent (versus other Kodak patents) was asserted there, so I am not reporting it as a confirmed case.
3. The precise dismissal order date for Case 2 (June 9, 2022 docket closure vs. an August 3, 2022 with‑prejudice order) comes from a secondary reporting source (Actionable Intelligence) and should be confirmed against the PACER docket if a precise date is needed.

I'll verify the structured data against live sources before writing anything.

Proceedings overview

Total AIA trial proceedings on file for US 7,092,966: zero. The USPTO Open Data Portal returns no IPR, PGR, or CBM involving this patent, and my independent searches of PTAB-related sources (PTAB E2E decision/petition text via ptacts.uspto.gov, Docket Alarm PTAB dockets, Unified Patents' PTAB portal, and the patent's own "Cited By / Families Citing" tables) surfaced no petition, institution decision, FWD, or appeal naming 7,092,966. The defensive posture this gives a defendant is therefore not "claims are canceled," but something less favorable and more interesting: the patent is untested at the PTAB, its claims are all presumptively intact, and the only reason there is no PTAB precedent is that the patent owner's monetization campaign appears to have been settled out before any of its patents reached a Final Written Decision — and, separately, the patent expired 2024-01-15, which caps the realistic exposure to past damages.

Proceedings on US 7,092,966

None — no AIA trial proceeding on file

• Type: N/A
• Filed: N/A
• Status: N/A — USPTO ODP "PTAB proceedings on file" block reports no AIA trial proceedings for this patent as of the most recent ingest; no contrary record found via web search.
• Judge panel: N/A
• Petition grounds: N/A
• Institution decision: N/A
• Final Written Decision: N/A — and note the legal consequence: because no FWD has ever issued on 7,092,966, no § 315(e)(2) estoppel has attached to anyone with respect to this patent.
• Settlement / termination: N/A (as to this patent). See the "near-miss" discussion below, which is the closest thing to relevant history.
• Appeal: None found at the Federal Circuit naming 7,092,966. No CAFC opinion referencing "7,092,966" or "7092966" surfaced.
• Defensive value: A defendant cannot point to a canceling FWD, but also faces no adverse PTAB precedent. The practical constraints are expiration (2024-01-15 per USPTO legal-events data) and the absence of any post-2024 assertion of this patent that I could verify — not claim cancellation.

Near-miss / adjacent context (flagging, not claiming)

These are different patents, and I am explicitly not importing their outcomes onto 7,092,966. They matter only as pattern evidence about how this patent owner litigates.

The 2019 Bosch IPR campaign against Monument Peak Ventures (MPV). On 2019-09-05, Robert Bosch LLC filed a coordinated set of IPRs against MPV-owned Kodak-origin patents:

Panels in the 01472/01473 cases were APJs Joni Chang, Juliet Mitchell Dirba, Melissa Haapala, and Michael Zecher (per Docket Alarm's PTAB docket). Bosch's counsel was Finnegan; MPV's was Ascenda Law Group (Tarek N. Fahmi). Every one of these terminated by settlement under 35 U.S.C. § 317 before any Final Written Decision, with the settlement agreements filed as confidential business information. Sources: https://portal.unifiedpatents.com/ptab/case/IPR2019-01475 ; https://www.docketalarm.com/cases/PTAB/IPR2019-01473/Robert_Bosch_LLC_v._MONUMENT_PEAK_VENTURES_LLC/

Related MPV-family IPRs (also not on 7,092,966): GE filed IPR2019-00993 ('910), IPR2019-01020 ('573), and IPR2019-01029 ('668) — see https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1525762](/patent/1525762)/ . Again, I found no '966 petition.

Why this matters to you: it establishes that MPV patents do attract IPRs, that this owner settles rather than litigates FWDs (so there is a shortage of PTAB precedent across the whole Kodak-era MPV portfolio), and that 7,092,966 specifically slipped through the one large coordinated campaign that targeted it.

District-court assertion record for 7,092,966 (relevant to any demand letter you receive)

Verified from court filings:

• Xerox Corp. v. Monument Peak Ventures, LLC, No. 6:20-cv-06263 (W.D.N.Y.), filed 2020-04-23 — Xerox's declaratory-judgment complaint lists 7,092,966 among eight MPV patents; Xerox pleaded that it does not infringe and that the patents "are not relevant to Xerox's business," describing MPV as a Dominion Harbor–associated assertion entity. https://www.docketalarm.com/cases/New_York_Western_District_Court/6--20-cv-06263/Xerox_Corporation_v._Monument_Peak_Ventures_LLC/docs/1.pdf
• Monument Peak Ventures, LLC v. Xerox Corp., No. 2:21-cv-00345 (E.D. Tex., Judge Gilstrap), filed 2021-09-01 — MPV affirmatively asserted 7,092,966 (along with 6,810,149, 6,873,336, 7,006,890, 7,092,573, 7,684,090).
• The structured data also links an E.D. Tex. case at 4:21-cv-00683 and cites it as family litigation. I could not confirm the parties, the asserted patents, or the outcome of that docket from available sources — treat it as unverified, and pull the PACER docket if it matters.
• Later MPV campaigns in E.D. Tex. / W.D. Tex. against Tesla (6:23-cv-00750), BLU Products (2:23-cv-00169), Kyocera (2:23-cv-00127), TCL (5:24-cv-00011), OpenText (2:25-cv-00521), Arashi Vision/Insta360 (2:25-cv-00956), Arnold & Richter (2:25-cv-01159), and Carl Zeiss (2:26-cv-00100) are on file, but I could not verify that 7,092,966 is asserted in any of them. Do not assume it is.

Strategic summary

Claim status. Every claim of 7,092,966 — independent claims 1, 16, 31, 34, 39, 40, and 42 and all dependents — is UNTESTED at the PTAB. Nothing is canceled, nothing is confirmed. The claim set is broad and largely functional/computer-implemented ("automatically searching a database of image content using said at least one designated image parameter"), which is the type of claim set that historically fares poorly in § 103 challenges — so the absence of an IPR is a strategic gap, not an endorsement of validity. On the other hand, the patent's own sibling, US 7,533,129 (continuation of the same 2002-09-13 priority filing), is likewise untested. Both are expired per USPTO term-adjustment data (7,092,966 adjusted expiration 2024-01-15), which means no prospective injunction and past-damages-only exposure for conduct before that date.

Estoppel landscape. There is no § 315(e)(1)/(2) estoppel against anyone — no petitioner ever reached an FWD on this patent. That cuts both ways for you: you are unconstrained by prior petitioner arguments, and you also have no free "off-the-shelf" validity record to borrow from the sibling Bosch cases, since those settled pre-FWD. Note that if you do file an IPR now, the one-year § 315(b) clock runs from service of a complaint alleging infringement of 7,092,966 on you or a real party in interest/privy — a parallel DJ action naming the patent counts for privity analysis in practice. IPR against an expired patent is not categorically barred (the Board applies Phillips and can still cancel claims), but the remedy is retrospective, so weigh cost against a past-damages exposure that ends 2024-01-15.

Pattern signals. No single petitioner has ever filed more than one IPR against 7,092,966 (nobody has filed one). The patent owner, MPV/Monument Peak Ventures (a Dominion Harbor–affiliated NPE, per Xerox's pleadings), settles consistently — the Bosch campaign was five settled IPRs in one afternoon — and has not pursued PTAB appeals in the proceedings I could find, so there is no MPV-v.-Board appellate track record on this portfolio. No defensive aggregator appears in the PTAB chain for this patent; the Unified Patents references in the structured data are litigation-tracking links, not Unified-filed IPRs.

Recommended next steps

• If you are a defendant today: there is no FWD to point to and no canceled claim to quote. Your invalidity case must be built fresh. Start with the primary references already in the record of the sibling MPV IPRs (Bosch's Finnegan-filed petitions on 6,654,507/6,654,506 used Toyama, Itti, and Neubauer; the GE '668 petition used Kinjo-569, Kinjo-100, and Eschbach — visible at https://ptacts.uspto.gov/ptacts/public-informations/petitions/1525762/ ), then map them onto 7,092,966's "designated image parameter"/"automatically searching a database" limitations. Also mine the '966 file history (the examiner cited 6,223,190 to Aihara, 6,508,571, 6,513,035, 6,590,586, 6,813,618, 6,408,301, 6,282,330, and 5,999,912) for admitted scope.
• Demand-letter hygiene: verify the asserted claim numbers and the accused conduct date against the 2024-01-15 expiration. Any demand premised on post-expiration conduct is meritless; any demand premised on pre-2024 conduct is a past-damages negotiation, with § 286's six-year lookback as your ceiling.
• Verify the two unconfirmed dockets before relying on them: 4:21-cv-00683 (E.D. Tex.) and whether 7,092,966 appears in any post-2022 MPV complaint. PACER/CourtListener is the right source; I could not confirm either from the data available to me.
• No PTAB activity exists on this patent — say so plainly and don't over-argue it. The absence is a modestly negative signal about the patent's exposure to challenge (IPRs cluster around well-asserted patents), but it is heavily confounded here by the 2020-08-28 global Bosch settlement and by expiration. Do not represent to a court or an adversary that 7,092,966 has "survived IPRs" or been "hardened" — it has simply never been challenged.
• Confidence flag: my no-proceedings conclusion rests on (a) the ODP structured block and (b) my own searches. If a petition was filed in the last several months, it may not yet be indexed anywhere. Confirm directly in PTAB E2E (https://ptacts.uspto.gov/ptacts/) by patent number before finalizing any opinion.

I'll research the ownership chain and litigation context before assembling the report.

Let me pin down the litigation cases and any recorded correspondent details.

US 7,092,966 B2 — Ownership & Assignment Reconstruction

"Method software program for creating an image product having predefined criteria"
Application US 10/242,861 · filed 2002-09-13 · granted 2006-08-15 · legal status: Expired – Lifetime (adjusted expiration 2024-01-15)

Sourcing note up front: The reel/frame numbers, conveyance types, and dates below come from the authoritative Google Patents legal-events record for this patent (https://patents.google.com/patent/US7092966/en), which mirrors the USPTO assignment data. The correspondent-of-record field is not exposed in that feed, and I was unable to open the Assignment Center record this session. I do not have attorney names for these recordings and will not invent them — see Signal 3.

Inventors

Unusual patterns: None detectable. This is a single-inventor, single-assignee corporate filing with the assignment executed contemporaneously with the application — the ordinary Kodak pattern. There is no evidence of inventor departure within 12 months of filing, nor any pre-issuance reassignment of inventor rights. Note that the "departing inventors precede a fire-sale" heuristic does not apply here: the eventual Kodak divestiture was driven by a corporate Chapter 11 filing 10 years later, not by inventor attrition.

Related family member: US 7,533,129 B2 — a continuation of this application, filed 2006-05-10, same inventor, same specification ("Method software program for creating an image product having predefined criteria"). It is a separate patent with its own record and is not part of the assignment chain reconstructed below.

Original assignee

Eastman Kodak Company (New Jersey corporation, 343 State Street, Rochester, NY 14650; SEC CIK 0000031235).

• Product embodying the claims: Yes, at least indirectly. The specification itself names commercial Kodak products and services as the deployment environment: Kodak's Memory Album desktop software (explicitly described in the Background as the incumbent, "tedious" prior-art workflow the invention improves), the DX3600 Easy Share Camera and Easy Share Camera Dock, the Picture Maker™ kiosk, and Kodak's PictureCD™. See the Description, "BACKGROUND OF THE INVENTION" and "DETAILED DESCRIPTION" (FIG. 2 discussion; FIG. 6 scripting discussion referencing the Kodak DC265 camera). At filing this was a genuine operating company shipping consumer imaging hardware, software, and photo-finishing services.
• Primary line of business (2002): Photographic equipment, supplies, film, digital cameras, and photofinishing/kiosk services.
• Current status: Operating, post-bankruptcy. Kodak filed Chapter 11 on 2012-01-20 in the Southern District of New York (In re Eastman Kodak Co. et al., No. 12-10202 (SDNY)) and emerged in September 2013 as a commercial-imaging and printing company after divesting its consumer digital imaging business and its patent portfolio. It did not dissolve.

Assignment timeline

Six recorded events touch this patent. All reel/frame references are from the USPTO assignment record as reflected in the Google Patents legal-events feed.

• 2002-09-13 (executed) / recorded 2002-09-13 — Reel 013302/0794

  • Conveyance: Assignment (ASSIGNMENT OF ASSIGNORS INTEREST)
  • Assignor: McIntyre, Dale F.
  • Assignee: Eastman Kodak Company, New York
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Ordinary employment assignment — inventor-to-employer, executed the same day the application was filed; establishes original ownership. No consideration or product data recorded.

• 2012-02-15 (executed, per effective-date field) / recorded 2012-02-21 — Reel 028201/0420

  • Conveyance: Security Agreement (SECURITY INTEREST)
  • Assignor: Eastman Kodak Company and Pakon, Inc.
  • Assignee: Citicorp North America, Inc., as Agent (New York)
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Securitization / collateral pledge. This is the debtor-in-possession and prepetition secured-lending structure around Kodak's Chapter 11; the patent was swept into the collateral pool roughly one month after the January 2012 bankruptcy filing. The same Citicorp agency appears on the DIP Credit Agreement dated 2012-01-20.

• 2013-02-01 (effective) / recorded 2013-02-01 — Reel 029913/0001

  • Conveyance: Release (PATENT RELEASE)
  • Assignor: Citicorp North America, Inc. and Wilmington Trust, National Association (as secured parties)
  • Assignee / benefited parties: Eastman Kodak Company and the affiliated Kodak debtor entities (Kodak Americas Ltd., Kodak Philippines Ltd., Qualex Inc., NPEC Inc., FPC Inc., Kodak Realty Inc., Kodak Imaging Network Inc., Laser-Pacific Media Corp., Creo Manufacturing America LLC, Far East Development Ltd., Pakon Inc., Kodak Aviation Leasing LLC, Kodak Portuguesa Ltd., Kodak (Near East) Inc., Kodak International Capital Co., et al.)
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Internal reorg / lien discharge. The security interest recorded at Reel 028201/0420 is being released to allow the patent to be conveyed free and clear in the bankruptcy sale ordered by the court. Effective one day after the sale closing.

• 2013-02-01 (effective) / recorded 2013-04-22 — Reel 030387/0571

  • Conveyance: Assignment (ASSIGNMENT OF INTEREST)
  • Assignor: Eastman Kodak Company
  • Assignee: Intellectual Ventures Fund 83 LLC (Delaware LLC; 7251 W Lake Mead Blvd, Ste 300, Las Vegas, NV 89128)
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Bankruptcy fire-sale. This is the execution of the Patent Sale Agreement dated 2012-12-18 between Eastman Kodak Company and Intellectual Ventures Fund 83 LLC (filed as an exhibit to Kodak's Form 8-K of 2012-12-21 and to the 2013-03-11 8-K exhibit set). ~1,100 digital-imaging patents were sold for ~$527M against an outside valuation of up to $2.6B, with the IV purchase co-funded by an RPX-organized licensee consortium (Adobe, Amazon, Apple, Facebook, FUJIFILM, Google, HTC, Huawei, Microsoft, RIM, Samsung, Shutterfly). Kodak retained a grant-back license.

• 2017-02-15 (effective) / recorded 2017-03-09 — Reel 041941/0079

  • Conveyance: Assignment (ASSIGNMENT OF INTEREST)
  • Assignor: Intellectual Ventures Fund 83 LLC
  • Assignee: Monument Peak Ventures, LLC (Texas LLC; principal place of business 200 Crescent Court, Suite 1550, Dallas, TX 75201-2095, per the Xerox DJ complaint)
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Transfer-to-asserter. This is the carve-out of the former Kodak photography portfolio to a Dominion Harbor Enterprises, LLC affiliate. Xerox's declaratory-judgment complaint states the 2017 purchase directly; Lexology and Stanford's NPE database corroborate that MPV acquired the Kodak-origin patents from IV in February 2017 and began suing in March 2018. This is the link that converts a defensive aggregation into an active monetization vehicle.

• 2023-07-28 (effective) / recorded 2023-08-15 — Reel 064599/0304

  • Conveyance: Release by Secured Party
  • Assignor / secured party: Intellectual Ventures Fund 83 LLC
  • Assignee / released party: Monument Peak Ventures, LLC
  • Correspondent: Not exposed in the source feed. Not verified.
  • Context: Clean-up of an encumbrance, not an ownership transfer. Releases whatever residual IV security interest or lien had been recorded against the MPV-held assets; MPV remains the owner. Confirms MPV still holds the asset as of mid-2023 while litigation was ongoing.

No other recorded assignments exist. There is no assignment to RPX, AST, LOT, Unified Patents, or any other defensive aggregator. There is likewise no reconveyance to Kodak or to any operating company.

Timeline diagram

timeline
    title Ownership of US 7092966
    2002 : Inventor McIntyre assigns patent to Eastman Kodak
    2012 : Kodak files Chapter 11
         : Citicorp security interest recorded
    2013 : Security interest released
         : Kodak sells imaging portfolio to IV Fund 83
    2017 : IV Fund 83 assigns patent to Monument Peak Ventures
    2018 : MPV begins asserting the Kodak portfolio
    2020 : Xerox files declaratory judgment action
    2021 : MPV sues Xerox in East Texas
    2023 : IV secured interest released
    2024 : Patent expires

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent moved from an operating company (Eastman Kodak) to a licensing-only fund and then to a Texas litigation LLC, with a documented absence of any product activity:

• Reel 030387/0571 (eff. 2013-02-01): Eastman Kodak Company → Intellectual Ventures Fund 83 LLC, a Delaware LLC whose recorded principal place of business is 7251 W Lake Mead Blvd, Ste 300, Las Vegas, NV 89128 — a commercial mailbox-suite address used across IV's fund entities (this same Las Vegas address appears as the owner address for IV Fund 83 on numerous EP family records, e.g. EP1182616, EP1076259, EP2127363).
• Reel 041941/0079 (eff. 2017-02-15): IV Fund 83 LLC → Monument Peak Ventures, LLC, a Texas LLC at 200 Crescent Court, Suite 1550, Dallas.
• Corroboration that is not name-based: Xerox's 2020 declaratory-judgment complaint (W.D.N.Y. 6:20-cv-06263) pleads at ¶2: "MPV is one of a vast array of patent assertion entities associated with Dominion Harbor Enterprises, LLC. MPV does not exist to invent new ideas, make products or provide services to consumers." Stanford's NPE Litigation Database classifies MPV as "Non Practicing Entity — Acquired patents." Unified Patents described MPV in an August 2023 PATROLL post as "an NPE and Dominion Harbor entity." That is product-absence evidence from an adverse party and two independent trackers, not inference from the name.

2. Known asserter in the chain — PRESENT (twice over).

• Intellectual Ventures Fund 83 LLC — an IV fund vehicle; Intellectual Ventures is on essentially every public NPE/PAE list and is named in this task's own list. Held the patent 2013-02-01 → 2017-02-15 (Reel 030387/0571 in, Reel 041941/0079 out).
• Monument Peak Ventures, LLC — a Dominion Harbor Enterprises affiliate, tracked as an active high-frequency plaintiff in the Stanford NPE Litigation Database (MPV v. Bosch Security 1:20-cv-00611 D.Del.; MPV v. Hasselblad 1:18-cv-00732 D.Del.; MPV v. SZ DJI 2:18-cv-02210 C.D.Cal.; MPV v. TP-Link 6:22-cv-01250 W.D.Tex.; MPV v. Tesla 6:23-cv-00750 W.D.Tex., among others) and the subject of Unified Patents PATROLL crowdsourcing contests targeting its portfolio. Current owner since 2017-02-15 / recorded 2017-03-09 (Reel 041941/0079).

3. Repeat correspondent across the chain — UNCLEAR / NOT VERIFIABLE.
This is the signal I would most want and least have. The correspondent-of-record is not present in the Google Patents legal-events feed, and I was not able to pull the Assignment Center pages this session. I therefore have no attorney or firm name recorded against Reel 013302/0794, 028201/0420, 029913/0001, 030387/0571, 041941/0079, or 064599/0304, and I decline to supply one from memory or inference. Two related but non-equivalent facts I can state from litigation rather than assignments: MPV's assertion counsel of record is Cabrach John Connor of Connor Lee & Shumaker PLLC, Austin, Texas (appearing for MPV across the Xerox, Vivint, Insta360, and Arnold & Richter matters) — but litigation counsel is not the assignment correspondent and does not satisfy this signal. Action item: pull each of the six reels at https://assignmentcenter.uspto.gov/ and capture the correspondent field; that is the highest-value open item in this reconstruction.

4. Cascading transfers — NOT PRESENT on the strict test.
The LLC-to-LLC hop (IV Fund 83 → Monument Peak Ventures, Reel 041941/0079) occurred roughly four years after the Kodak sale (Reel 030387/0571), not within 24 months. The only transfers inside a 24-month window are (a) the security interest at Reel 028201/0420 (effective 2012-02-15) and its release at Reel 029913/0001 (effective 2013-02-01) and (b) the release followed by the sale assignment two months later — and those are the mechanics of a single bankruptcy transaction, not a chain of shell hops. So: two sequential NPE-owned hops exist, but they are not compressed in time.

5. Pre-litigation transfer — NOT PRESENT on the strict six-month test.
The last ownership-changing assignment (Reel 041941/0079) is effective 2017-02-15. The first assertion activity over this portfolio followed about 13 months later (MPV's March 2018 suits against Hasselblad, GoPro, and SZ DJI), and the earliest litigation touching the '966 patent itself is Xerox's declaratory-judgment complaint filed 2020-04-23 (W.D.N.Y. 6:20-cv-06263) — roughly three years and two months after the transfer. There is therefore no assignment timed to tee up a specific suit. The campaign was a deliberate, drawn-out licensing escalation rather than a fresh-transfer-to-suit: Xerox pleads that MPV first emailed Xerox's Chief IP Counsel on 2019-04-02 and sent more than 40 communications over the following year before litigation.

6. Bankruptcy fire-sale — PRESENT.
Textbook case, and the single most consequential event in this chain:

• Kodak filed Chapter 11 on 2012-01-20 (SDNY No. 12-10202). The patent was pledged as collateral within a month (Reel 028201/0420, eff. 2012-02-15).
• Patent Sale Agreement between Eastman Kodak Company and Intellectual Ventures Fund 83 LLC, dated 2012-12-18, disclosed in Kodak's Form 8-K (event date 2012-12-18, filed 2012-12-21) and corroborated by contemporaneous BBC, Reuters/Livemint, and BVResources coverage: ~1,100 digital-imaging patents, ~$525–527M paid, against an outside estimate of up to $2.6B.
• Sale order entered by the U.S. Bankruptcy Court for the Southern District of New York; closing in February 2013, followed by the recording at Reel 030387/0571 (eff. 2013-02-01, recorded 2013-04-22).

7. Privateering — PARTIAL / UNCLEAR (directionally present).
There is a genuine privateering flavor here, but it is entangled with the bankruptcy sale rather than a standalone transfer. The IV purchase was co-funded by an RPX-organized consortium of twelve operating companies — Adobe, Amazon, Apple, Facebook, FUJIFILM, Google, HTC, Huawei, Microsoft, RIM, Samsung, and Shutterfly — each of which received license rights under the assigned patents and certain retained Kodak patents (Form 8-K, Item 8.01). The practical effect is that licensees' competitors were left outside the tent, and the residual portfolio was subsequently funneled through IV to a Dominion Harbor entity that sued non-licensees. What is not established on this record is the classic privateering element of a specific operating company directing assertion against its own competitors; the SEC-filed documents frame it as asset monetization, a court-approved sale, and a settlement vehicle (including the $5M FlashPoint settlement and the two-year standstill provisions). Marked partial rather than present.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. RPX Corporation was involved at the 2012–2013 Kodak sale, but as a consortium organizer and licensee alongside IV — it did not take title. Legal title ran Kodak → IV Fund 83 → Monument Peak Ventures, and MPV has asserted the portfolio continuously since 2018. The patent was not neutralized; it was weaponized. For completeness: the patent is now expired (adjusted expiration 2024-01-15, status "Expired – Lifetime"), which neutralizes it going forward, but by operation of term rather than by aggregation.

Verdict

NPE — high confidence

Four strong signals, each anchored in a recorded reel rather than a name: (i) shell-entity transfer — Kodak → IV Fund 83 LLC at Reel 030387/0571, then IV Fund 83 → Monument Peak Ventures, LLC at Reel 041941/0079, an entity an adverse party has pleaded in open court "does not exist to invent new ideas, make products or provide services to consumers" (Xerox DJ Compl. ¶2) and that two independent trackers classify as a non-practicing entity; (ii) known asserter — Intellectual Ventures Fund 83 (2013–2017) followed by a Dominion Harbor affiliate (2017–present), with MPV filing and prosecuting a large multi-defendant campaign; (iii) bankruptcy fire-sale — the Kodak Chapter 11 sale, Patent Sale Agreement dated 2012-12-18, ~$527M for ~1,100 patents against a $2.6B estimate, closing February 2013; and (iv) a high-volume assertion campaign on the sold portfolio beginning March 2018, with this specific patent named as one of eight patents-in-suit in Xerox's DJ action.

The two countervailing observations are that the cascading-transfer and six-month pre-litigation-transfer signals fail on their time tests (a four-year IV→MPV gap; suit three years after transfer), and that correspondent recurrence is unverified. Those are mitigating in degree, not in kind — the ownership and conduct record is independently sufficient.

Verification link (Assignment Center): https://assignmentcenter.uspto.gov/ — search patent number 7092966. The six reels to reconcile are 013302/0794, 028201/0420, 029913/0001, 030387/0571, 041941/0079, 064599/0304. Companion sources: Google Patents legal events at https://patents.google.com/patent/US7092966/en ; Kodak Form 8-K of 2012-12-18 (https://www.sec.gov/Archives/edgar/data/31235/000119312512513381/d458185d8k.htm) and the Patent Sale Agreement exhibit (https://contracts.justia.com/companies/eastman-kodak-co-6588/contract/[526228](/patent/526228)/); litigation docket 2:21-cv-00345 (E.D. Tex.) per RPX Empower (https://litigation.rpxcorp.com/litigation/txedce-[209003](/patent/209003)-monument-peak-ventures-v-xerox).

Open items / limits of this reconstruction

1. Correspondent-of-record is missing for all six recordings. The source feed does not carry it. Do not treat this report as having checked it — the associate-level task of pulling each reel from Assignment Center and capturing the correspondent attorney/firm is outstanding, and it is the key test for the "one lawyer, many shell LLCs" pattern.
2. Merger/Change-of-Name filings are absent, which is itself notable: IV Fund 83 → Monument Peak Ventures is recorded as a plain Assignment, not an internal reorg — consistent with a genuine third-party sale of assets rather than a rebranding. That argues against a "change of name only" reading and supports the shell/asserter characterization.
3. US 7,533,129 B2 (continuation, filed 2006-05-10) is a family member whose own assignment record I did not retrieve; it should be checked separately, as continuation siblings are sometimes held by different shells.
4. Case 4:21-cv-00683 (E.D. Tex.) is listed in the Google Patents litigation feed for this patent but I could not confirm the parties or the asserted patents. The confirmed MPV matters involving this patent are the Xerox DJ action (6:20-cv-06263 W.D.N.Y., filed 2020-04-23, transferred to E.D. Tex. 2021-08-31) and MPV v. Xerox (2:21-cv-00345 E.D. Tex., filed 2021-09-01, terminated 2022-06-09).
5. I have not confirmed the existence of a recorded license grant-back from Kodak's sale that would run to Kodak under Reel 030387/0571; the SEC filing describes grant-back licenses, but those are contractual, not separately recorded assignments.

I'll search for the specific patent and its cited prior art references to ground this analysis.

Let me verify the remaining cited references.

Prior-Art Analysis — US 7,092,966 B2

Patent analyzed (literal ID): US 7,092,966 B2 — "Method software program for creating an image product having predefined criteria." I interpreted the number literally and did not substitute any similar number (e.g., US 7,092,573, US 7,533,129, or the Sonos/Fonar/'966 patents are not this document).

Grounding: the prior-art list below is taken from the "Patent Citations (13)" table on the authoritative Google Patents record for this patent, cross-checked against the reference texts where retrievable. Where the specification itself discusses a reference (Aihara), I note that separately.

Analytical caveat (important): This is a cited-references exercise, not a validity opinion. All 13 references were before the examiner, and the patent issued over them — so a true §102 anticipation (a single reference disclosing every limitation of a claim as arranged) is a high bar that most of these do not meet. For most, the realistic exposure is §103 obviousness (in view of the reference, alone or combined). I flag this per reference. My per-reference §102 mapping is based on the references' abstracts/collected disclosures and the patent's own characterization; I did not obtain the full prosecution-quality text of every reference, so the §102 call-outs are stated with a confidence flag, not as certified findings.

The 13 cited references (authoritative list)

All 13 qualify as prior art relative to the 2002-09-13 priority date (the pre-2002–filed references directly; the later-published US 6,813,618 and US 2002/0019833 A1 via their earlier filing dates under pre-AIA §102(e)/(a)).

Per-reference analysis

1–3. US 5,791,692 A / US 5,957,502 A / US 6,004,061 A — "Dual sided photographic album leaf and method of making"

• Full citations: US 5,791,692 (pub. 1998-08-11), US 5,957,502 (pub. 1999-09-28), US 6,004,061 (pub. 1999-12-21); all Eastman Kodak, Manico et al.; all filed 1995-05-31. These are the three patents the specification itself cites as example album-page image products.
• Description: Physical (hard-copy) dual-sided photographic album leaf structures and their manufacture — the product the '966 template is designed to populate.
• §102 mapping: These disclose the physical album page, not a template/container/auto-search method. They are relevant only to the product-form dependent claims — claim 7 ("album page…") and claim 19 — and then only as describing the form of the output, not the method steps. No independent claim (1, 16, 31, 34, 39, 40, 42) is anticipated. Confidence: high that these are not anticipatory.

4. US 5,999,912 A — "Dynamic advertising scheduling, display, and tracking"

• Full citation: Wodarz, Dennis; filed 1996-05-01; pub. 1999-12-07.
• Description: Scheduling/tracking of advertising display; unrelated to template-driven image product creation.
• §102 mapping: No claim of the '966 patent is anticipated. Its appearance in the citation list likely relates to generic "display/scheduling" boilerplate. Marginal even under §103. Confidence: high (not anticipatory).

5. US 6,282,330 B1 — "Image processing apparatus and method" (Canon) — examiner-cited

• Full citation: Canon K.K.; filed 1997-02-19; pub. 2001-08-28.
• Description: Image processing/combining apparatus — relates to arranging/combining images into composite output (the template/compositing concept).
• §102 mapping: Potentially relevant under §103 to the layout/placement-dependent claims — claims 3, 4, 12, 20, 21 (candidate images placed at predefined container locations / thumbnail placement). I do not read it as disclosing a container with a designated image parameter that triggers an automatic database search, so claims 1, 16, 31, 34, 39 are not anticipated by it alone. Confidence: medium.

6. US 5,940,121 A — "Hybrid camera system with electronic album control" (Eastman Kodak)

• Full citation: Eastman Kodak; filed 1997-02-20; pub. 1999-08-17.
• Description: Camera system that carries album-control information so captured images are steered into an electronic album — in-camera organization a la the patent's camera-side embodiments.
• §102 mapping: Most relevant §103 reference for the in-camera claims — claims 40 and 42 (provide template/album info on the capture device; capture image; place/organize it). It supports the general concept but (per its title/scope) tracks album organization rather than a container carrying a designated image parameter matched to the captured image, so anticipation of claim 40 is a stretch. Confidence: medium-low on §102, medium on §103.

7. US 6,223,190 B1 — "Method and system for producing an internet page description file on a digital imaging device" — the closest reference

• Full citation: Flashpoint Technology, Inc.; inventors Somerstein, Rodney and Aihara, Tim Takao; filed 1998-04-13; pub. 2001-04-24. (This is the reference the specification calls "U.S. Pat. No. 6,223,190 to Aihara et al." — the number matches; the asserted assignee is Flashpoint, while the spec refers to the reference by its inventor Aihara. No contradiction in the number.)
• Description: A script is downloaded to the digital camera; the camera executes the script to prompt a sequence of captures and then generates an HTML page whose layout is defined by the script's "model." The user is guided to take a series of related pictures forming a web page.
• §102 mapping: This is the reference with the strongest §102 exposure, and the specification's background expressly distinguishes it. Mapping:
  • Claim 40 (in-camera method: template on capture device with container having a designated image parameter; capture; place image into container if it corresponds) — Aihara discloses a script/template on the camera that prompts captures for defined page slots. Potential §102 anticipation — high relevance, subject to whether the script's slots carry a designated image parameter (the spec argues they do not; the patentee distinguished Aihara on the grounds that it lacks pre-populating a template slot with ranked/searchable parameters).
  • Claim 42 (review template → capture appropriate image) — closely aligned with Aihara's prompted capture sequence. High relevance/allied.
  • Claims 41 / 43 (upload template+image as a complete file) and claims 37 / 38 (single electronic file transmitted over a network) — Aihara's HTML page describing images and downloadable/network-available file aligns. Moderate.
  • For claims 1, 16, 31, 34, 39: Aihara does not search a database using a designated parameter and return ranked candidates, so it does not anticipate those (consistent with the specification's own distinguishing argument).
• Note (from search): Aihara was also litigated as prior art in a different patent family (RPX/PTAB IPR2015-00807/-806, combined with "Creamer") — evidence the reference is recognized as strong camera-side art. That IPR does not involve the '966 patent. Confidence: high relevance on claims 40/42; the anticipation call turns on claim construction of "designated image parameter."

8. US 6,504,571 B1 — "System and methods for querying digital image archives using recorded parameters" (IBM) — examiner-cited

• Full citation: IBM; filed 1998-05-18; pub. 2003-01-07.
• Description: Querying a digital image archive using recorded parameters (metadata recorded with the image, e.g., capture parameters).
• §102 mapping: Directly on point for the "designated image parameter" + automatic database search concept underlying claims 1, 10, 16, 25, 31, 39. However, it searches an archive by recorded image parameters; it does not disclose a template container that supplies the parameter(s) that drive the search. Under a strict all-elements §102 test, the "digital container having at least one designated image parameter" limitation is missing → no anticipation of claim 1, but strong §103 material. Confidence: medium (strong §103, weak §102).

9. US 6,408,301 B1 — "Interactive image storage, indexing and retrieval system" (Eastman Kodak)

• Full citation: Patton, Ashe, Manico (Eastman Kodak); filed 1999-02-23; pub. 2002-06-18.
• Description: Store images as files with an information file of metadata; the user designates a metadata element as an "image link"; an index lets the user retrieve any image file having a selected image link. (Claim 1 quoted in the record: image file + metadata information file + interface to designate a metadata element as an image link + interactive database + index.)
• §102 mapping: Relevant to claims 1, 8, 10, 16, 23, 25, 31, 39 for the concept of a user-designated metadata parameter used to retrieve images (supports claim 8 — parameter "modified or selected by a user"). But it lacks any template/container construct and lacks the ranked-parameter container of claims 11/26/31. No independent claim is fully anticipated; strong §103 reference on the parameter-search element. Confidence: medium.

10. US 6,513,035 B1 — "Database search apparatus and method" (Fuji Photo Film) — examiner-cited

• Full citation: Tanaka, Ohta (Fuji Photo Film Co., Ltd.); filed 1999-03-24; pub. 2003-01-28.
• Description: Image database search with group keywords and grouping, displaying representative images in a thumbnail display area; includes an image+template combining unit and a template file unit for placing a representative image into a template.
• §102 mapping: Relevant to the thumbnail/candidate-display dependent claims — claims 3, 4, 5, 20, 21, 22 — and, via its template-combining unit, to claim 1/16's "container" concept. But it searches by user-entered keywords/group conditions, not by a parameter designated on a template container that prompts a search. So no §102 anticipation of an independent claim; relevant under §103. Confidence: medium.

11. US 6,590,586 B1 — "User interface for a browser based image storage and processing system" (Xerox) — examiner-cited

• Full citation: Xerox Corp.; filed 1999-10-28; pub. 2003-07-08.
• Description: Browser-based UI for image storage/processing — display and manipulation of images in a client UI.
• §102 mapping: Most relevant to the display-format dependent claims — claims 4, 5, 21, 22 (candidates in a separate window / in list form). No template-container-with-parameter search. No independent claim anticipated. Confidence: medium-low.

12. US 2002/0019833 A1 — "Data editing apparatus and method" (Hanamoto, Takashi)

• Full citation: Hanamoto, Takashi; filed 2000-08-03; pub. 2002-02-14. (Record associates a related application with Canon K.K. and inventors Kotani/Kusama/Hanamoto.)
• Description: Data-editing apparatus/method — editing of structured content (parameters/fields).
• §102 mapping: Relevant at most to claim 8 / 23 (user editing/modifying a parameter) and the general "editable template" concept. No independent claim anticipated. Confidence: low-medium.

13. US 6,813,618 B1 — "System and method for acquisition of related graphical material in a digital graphics album" (Eastman Kodak, Loui) — examiner-cited — most relevant to the desktop/search claims

• Full citation: Alexander C. Loui (Eastman Kodak); filed 2000-08-18; pub. 2004-11-02; corresponding EP 1 182 586 A2/A3.
• Description (from the record): A method of adding graphical material to a digital graphics album: specify reference material in the album → extract/prioritize search criteria (natural-language keywords, user directives) → query a graphical material database through a network connection → receive at least one resultant graphical material → user selects one for insertion into the album; if none satisfactory, a reference image is processed into image-content descriptors for a further query.
• §102 mapping: This is the closest desktop-side reference and the most substantial §102/§103 threat to the search-based independent claims:
  • Claim 16 (select template; select image parameter; automatically search a database for at least one candidate "that may be selected for placement") — Loui discloses the automatic search + candidate selection + placement, but the "criteria" come from album reference material/user directives, not from a parameter designated on a template container. → Strong §103; arguable §102 only if "container parameter" is read broadly to include any prioritized search criterion.
  • Claims 2 / 17 (plurality of candidates from which a selection is made) — Loui returns at least one resultant material and a selection step. Relevant.
  • Claims 5 / 22 (candidates as a displayed list) and claims 13/14/28/29/37/38 (single file / network transmission) — Loui's network query/return and album insertion align. Moderate.
  • Claim 8 / 23 (parameter selected/modified by user) — Loui's user directives. Relevant.
  • Claims 31/39 (ranked container parameters) — Loui prioritizes keywords, but not a container-supplied ranked parameter set. §103 only.
• Confidence: high that Loui is the most pertinent desktop-side art; medium on whether it rises to §102 anticipation, which depends on how the "template container / designated image parameter" is construed.

Synthesis — ranked relevance to §102

Bottom line: No single one of the 13 cited references discloses the full combination of the independent claims. The two references that come closest are US 6,223,190 (Aihara/Flashpoint) for the in-camera capture/review claims (40, 42) and US 6,813,618 (Loui/Kodak) for the desktop search-and-select claims (1, 16) — and each was, notably, addressed and distinguished during prosecution (Aihara expressly in the specification's background; Loui as an examiner citation). The remaining examiner citations (US 6,504,571, US 6,408,301, US 6,513,035, US 6,590,586, US 6,282,330, US 6,594,586) map mainly to dependent claims (thumbnails/lists, user-selected parameters) and are stronger §103 obviousness candidates than clean §102 anticipations.

Uncertainty statement: I retrieved full/partial text for US 6,223,190, US 6,813,618, US 6,408,301, and US 6,513,035, but was cut off before retrieving the primary texts of US 6,504,571, US 6,590,586, US 6,282,330, and US 2002/0019833 A1. For those four, my descriptions rely on their titles/abstracts and the citation record, and their §102/§103 calls above should be verified against the issued documents. This patent expired – lifetime (adjusted expiration 2024-01-15), so this analysis is explanatory rather than enforcement-driven.

I'll research the key prior-art references cited on the patent page before building the § 103 analysis. Let me run targeted searches in parallel.

Let me research the remaining cited references.

Obviousness Analysis — US 7,092,966 B2 under 35 U.S.C. § 103

Building on the prior sections: I assume the claim set, the plain-language claim summaries, and the identification of the seven independent claims (1, 16, 31, 34, 39, 40, 42) established earlier. This section does not repeat bibliographic or litigation findings. All prior-art dates below are the publication/grant dates of the references listed in the Prior Art section of the Google Patents page (the "Patent Citations (13)" and "Similar Documents" lists), which I treat as the operative prior-art universe for this task.

I. Governing law and effective date

The application was filed 2002‑09‑13 (no earlier priority claim), so pre‑AIA § 103 applies. Prior art is measured against the 2002‑09‑13 date under pre‑AIA §§ 102(a), (b), and (e). The analysis proceeds under the four Graham v. John Deere factors: (1) scope and content of the prior art; (2) differences between the prior art and the claims; (3) level of ordinary skill; and (4) secondary considerations.

An important admission within the four corners of the '966 specification should be flagged up front. The Background states:

"Templates are a much easier, albeit less creative, approach to an imaging product, but image product templates don't suggest the type of images to use, nor do they automatically search for and rank potential image candidates."

That sentence frames the exact problem the claims solve and is an applicant admission that (a) image‑product templates were known, and (b) the recognized deficiency to be cured was the absence of automatic, ranked image search tied to a template. This is powerful motivation‑to‑combine evidence. The specification also expressly treats Aihara et al. (US 6,223,190) as prior art and distinguishes it.

II. Level of ordinary skill (POSITA)

A POSITA at 2002‑09‑13 would have a bachelor's degree in CS/EE (or equivalent) and 2–4 years' experience in digital imaging software, image database/indexing, or consumer photo‑product authoring. This is a low‑to‑moderate skill level; the asserted references are all directed to this exact art and were issued to the same handful of companies (Kodak, Flashpoint, IBM, Fuji, Xerox, Canon).

III. Key claim limitations (construed)

Notably, the plain-language summaries earlier established that "designated image parameter" covers both explicit criteria (tags → metadata) and implicit criteria (container shape/dimensions driving ranking). That breadth matters, because the prior art supplies both.

IV. The prior art from the page's Prior Art section

All of the above predate 2002‑09‑13 and thus qualify under at least one of §§ 102(a)/(b)/(e). Note the EP 1 182 586 A2 publication (2002‑02‑27) is the printed‑publication counterpart of Loui and is squarely § 102(b)/(a) art.

V. Principal combinations

Combination A — Loui alone (or Loui + Aihara) → claims 1, 2, 8, 9, 10, 11, 12, 16, 31, 34, 39

Loui is the closest single reference and maps nearly element‑for‑element onto the independent claims:

• "digital template … with at least one digital container for placement of digital image content" → Loui's digital graphics album displayed on a monitor, into which graphical materials are inserted at defined positions (see Loui, "inserting the selected resultant image in the digital graphics album"; EP 1182586).
• "designated image parameter" → Loui's prioritized search keywords derived from annotations and user directive data (Loui claims 2, 5, 6, 25–29).
• "automatically searching a database of image content using [the parameter]" → Loui's "querying a graphical material database through a network connection in accordance with said prioritized keywords" and its express motivation ("a need exists in the art for an automatic way of identifying, searching and selecting digital graphical materials…").
• "providing at least one image content candidate for placement" → Loui's "receiving from said database at least one resultant graphical material" and displaying/selecting it for insertion.
• Claim 31's "plurality of designated image parameters … provided in a rank" → Loui explicitly prioritizes the keyword set ("prioritizing said keywords and said additional keywords"), i.e., a ranked plurality of parameters.
• Claim 16's user‑selected parameter → Loui's user directive data "processed … to produce additional keywords."
• Claim 8/23's "modified or selected by a user" → same user‑directive mechanism.
• Claim 9/24's "plurality of digital containers" and claim 12/27's predefined location → Loui's multi‑position album pages; Aihara's model defines a multi‑image page layout; the Manico album‑leaf patents (5,791,692 / 5,957,502 / 6,004,061) disclose predetermined image locations on a page.

Where Loui is arguably thin: its "container" criteria are not pre‑associated with a slot before the user acts the way claim 1's container "has at least one designated image parameter" implies, and Loui does not explicitly describe thumbnail candidates rendered inside the container (claims 3/20). These gaps are closed by Aihara and Fuji (below) — but they are gaps of detail, not of concept.

Combination B — Loui + Aihara (US 6,223,190) → strengthens claims 1, 2, 31, 34 and the camera claims

Aihara supplies the template‑to‑device leg that Loui lacks:

• Aihara discloses providing a script/"model" to a digital camera that defines the formatted page (the template) and prompts the user through a series of image captures, then auto‑generates the page. That is a template with predefined content locations used to direct acquisition — exactly what claims 40/42 require on the capture device.
• Aihara is admitted prior art in the '966 specification, and the specification's own distinction ("the user can't specify an image to a particular location or choose from a plurality of ranked image candidates") identifies precisely the incremental feature that Loui adds.

Combining Aihara (template/script + capture‑directed‑by‑template) with Loui (automatic ranked database search + selection/insertion) yields claim 1 in full: a template with slots, each slot associated with search criteria, and automatic ranked retrieval of candidates for the slot.

Combination C — Loui + IBM (US 6,504,571) → strengthens claim 1's "automatically searching a database of image content using [a] parameter"

IBM discloses the search engine leg in the same art: images indexed by recorded parameters, a query formulated from those parameters, and retrieval/display of the matching images (IBM's claim 9 method steps). Substituting IBM's parameter‑indexed archive for Loui's keyword search is a simple substitution of one known element for another to obtain predictable results (KSR rationale (B)).

Combination D — Loui/Aihara + Fuji (US 6,513,035) → claims 3, 4, 5, 20, 21, 22 and the "implicit criteria" (shape) concept

Fuji directly supplies the dependent‑claim features that Loui/Aihara lack:

• Thumbnail candidates displayed in a list/window (claims 4, 5, 21, 22) → Fuji's "search‑result list window" and thumbnail image display area (see US 6,513,035 and its FIG. 16/17 discussion).
• Candidate rendered in/with a template (claim 3) → Fuji's "thumbnail image is generated by combining a prescribed representative image with a template image," where the template's aspect ratio/orientation is adjusted to conform to the representative image.
• Implicit criterion — container shape driving selection/ranking → Fuji's aspect‑ratio‑conforming template is the functional analogue (and for ranking by format, the Panorama > Landscape > Portrait rule in the '966 spec is a mere design choice once Fuji's shape‑conformance is known).

Combination E — Aihara + Kodak '121 (+ Manico album‑leaf patents) → claims 40, 42 (camera‑side)

Claims 40 and 42 move the template onto the capture device and require either (40) capturing then placing an image into a matching container, or (42) reviewing the template to determine the container's designated parameter and capturing an image appropriate for it:

• Aihara: the camera executes the script to "display interactive instructions … that prompt a user to perform specific operations" and guides the user "through a series of related image captures" — this is reviewing the template's requirement, then capturing the appropriate image (claim 42), and the camera thereafter generates the page, i.e., images are associated with the template (claim 40).
• US 5,940,121 ("Hybrid camera system with electronic album control," Kodak) supplies the camera‑resident album placement/control information concept — the natural complement to Aihara's scripted capture. (Caveat: I retrieved only the title/date/assignee for '121, not its full text; its mapping is offered tentatively.)
• Claim 41/43 ("template along with said image are uploaded to a computer as a complete file") → Aihara's HTML file downloaded from the camera as a unit.

Combination F — Secondary/“teaching‑away‑free” supporting art

• US 6,408,301 (metadata "information file" + user‑designated image links → retrieval) evidences that tagging images with parameters and retrieving by them was routine Kodak practice well before 2002, supporting claim 1's "designated image parameter."
• The Photocollage/album‑construction patents (US 6,389,181; 6,399,963; 6,434,579; 6,123,362) show that automatic/assisted assembly of images into predefined page layouts was known.
• The content‑based image retrieval literature (PhotoFile; Photobook; Srihari) — cited as X‑references in the EPO search report on Loui's counterpart — shows that ranked, content‑metadata‑driven retrieval from an image database was a mature field by 1995–96. This defeats any argument that "ranked candidates" was a novel concept.

VI. Motivation to combine (the § 103 crux)

A POSITA would have been motivated to combine the above, with a reasonable expectation of success, for several independently sufficient reasons:

1. Express problem statement in the '966 background. The spec itself says templates "don't suggest the type of images to use, nor do they automatically search for and rank potential image candidates," and that manual folder‑browsing is "tedious." Loui and IBM are explicitly directed to that same deficiency — Loui: "a need exists in the art for an automatic way of identifying, searching and selecting digital graphical materials"; IBM: improving "search capabilities" of image archives. Combining template + search is the art's stated solution, not an inventive leap.

2. Same field, same problem, similar known methods (KSR (A), (C), (F)). All references are in digital imaging/photo‑product authoring; combining a known template/data‑model with a known metadata search engine is "use of a known technique to improve [a] similar device in the same way."

3. Predictable results. Substituting one parameterized image‑search mechanism (keywords: Loui/Aihara) for another (recorded parameters: IBM) or adding thumbnails/list UI (Fuji) yields nothing more than the expected combination of the references' own disclosures.

4. No teaching away. Nothing in Aihara, Loui, IBM, or Fuji disparages combining automatic search with templates. Aihara's model is expressly a template; Loui expressly inserts search results into an album. The references are complementary, not conflicting.

5. Design incentives / market forces (KSR (F)). The consumer photo‑product market (Kodak Picture Maker kiosk, Ofoto — both named in the '966 spec) incentivized reducing user effort in assembling album pages; automating image selection by template criteria is the obvious efficiency path.

VII. Claim‑by‑claim disposition (summary)

VIII. Rebuttal of likely patent‑owner arguments

• "Aihara doesn't suggest images for a specific location, nor rank candidates." Correct as to Aihara alone — which is precisely why Aihara is combined with Loui, whose whole purpose is ranked, automated candidate retrieval and insertion into an album. The '966 spec's own attack on Aihara concedes the gap Aihara alone leaves, and Loui fills it.
• "Loui's criteria come from reference material / user directives, not from the container." Claim 1 requires only that the container "ha[ve] at least one designated image parameter." Loui's album positions carry associated search criteria/keywords; the source of the criterion (pre‑set vs. user‑entered) is not a claim limitation, and claims 8/23 expressly contemplate user selection anyway. The distinction, if any, is one of arbitrary design choice.
• "Implicit criteria (container shape) is novel." Fuji's aspect‑ratio‑conforming template, plus Photobook's content‑based retrieval, negate novelty of ranking by image format/shape; the specific Panorama > Landscape > Portrait ordering is an unpatentable design choice.
• Secondary considerations. I found no evidence (and none is in the record examined) of unexpected results, skepticism, or industry praise tied to these claims. Kodak's own Memory Album and the Manico album‑leaf products predate the claims and undercut any nexus‑based commercial‑success argument.

IX. Explicit uncertainties and caveats

1. Full‑text verification was partial. I retrieved and relied on full text for Aihara (US 6,223,190), Loui (US 6,813,618 / EP 1 182 586), IBM (US 6,504,571), Fuji (US 6,513,035), and Kodak (US 6,408,301). For US 5,940,121, US 6,282,330, US 6,590,586, US 2002/0019833 A1, and the photocollage patents (US 6,389,181 / 6,399,963), I relied primarily on their titles, dates, and assignees as listed on the patent page; their element‑by‑element mappings here are provisional and should be confirmed against the reference texts before being relied on formally.
2. Date qualification (pre‑AIA § 102(e)). US 6,504,571 (granted 2003‑01‑07) and US 6,513,035 (granted 2003‑01‑28) and US 6,813,618 (granted 2004‑11‑02) issued after the 2002‑09‑13 priority date; they qualify as prior art only under pre‑AIA § 102(e) (earlier U.S. filing dates: 1998‑05‑18, 1999‑03‑24, and 2000‑08‑18 respectively). Their EP/foreign counterparts (e.g., EP 1 182 586 A2, 2002‑02‑27) are independently available as § 102(a)/(b) printed publications, which removes any § 102(e) vulnerability.
3. I did not perform a fresh prior‑art search beyond the references listed on the patent page. The page's "Cited By (45)" and "Families Citing this family (54)" lists are later art and are not prior art against the '966 patent; I did not use them as such. There may be additional § 102(b) art (e.g., commercial Kodak Memory Album software, Ofoto/Ophoto systems) that the page does not list and that I have not verified.
4. Claim‑text OCR artifacts noted earlier (e.g., "die selected image content" in claim 6; "A meted according to claim 1" in claim 13; "appropriated" in claim 42) are treated as transcription errors; my analysis uses the evident intended meaning ("the," "method," "appropriate").
5. The patent is expired (adjusted expiration 2024‑01‑15 per the page), so § 103 invalidity is now primarily of historical/defensive value unless asserted in a still‑open back‑damages window or in a family member.

Bottom line: Claims 1, 16, 31, 34, and 39 (and most dependents) are, in my assessment, obvious over Loui (US 6,813,618 / EP 1 182 586 A2), alone or in combination with Aihara (US 6,223,190), IBM (US 6,504,571), and Fuji (US 6,513,035); and claims 40 and 42 are obvious over Aihara in view of Kodak's US 5,940,121. The motivation to combine is anchored in the '966 specification's own statement of the problem and is corroborated by the references' express statements of the same need.