Invalidity dossier
US 7239111
Universal serial bus adapter for a mobile device
Current assignee: Fundamental Innovation Systems International LLC
Added 9/30/2026, 10:13:25 AM
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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 sources on this specific patent number, including USPTO records and any 2026 CAFC docket activity.
Let me make one more targeted search for any 2026 Federal Circuit activity involving this patent.
US Patent 7,239,111 — Analyst Summary
Number as searched: 7239111 → interpreted literally as US 7,239,111 B2. Note: this patent is frequently cited in court filings as "the '111 patent."
1. Bibliographic Data
| Field | Value |
|---|---|
| Patent number | US 7,239,111 B2 (publication US 2005/0245138 A1, Nov. 3, 2005) |
| Title | Universal Serial Bus Adapter for a Mobile Device |
| Inventors | Daniel M. Fischer (Waterloo, CA); Dan G. Radut (Waterloo, CA); Michael F. Habicher (Cambridge, CA); Quang A. Luong (Kitchener, CA); Jonathan T. Malton (Kitchener, CA) |
| Original assignee | Research In Motion Limited, Waterloo, Ontario (CA) |
| Current assignee | Fundamental Innovation Systems International LLC (recorded assignments to FISI in Dec. 2015 and Dec. 2016; BlackBerry Limited was an intermediate holder via change-of-name in 2013) |
| Application no. | 11/175,885 |
| Filing date | July 6, 2005 (filed under 37 CFR 1.47) |
| Issue date | July 3, 2007 |
| Earliest priority | March 1, 2001 (Prov. 60/273,021; also Prov. 60/330,486, Oct. 23, 2001) |
| Parent | Continuation of App. 10/087,629 (filed Mar. 1, 2002), now US 6,936,936 |
| Claims / drawings | 18 claims, 4 drawing sheets |
| Examiner / counsel | Primary Examiner Edward H. Tso; Conley Rose, P.C. (J. Robert Brown, Jr.) |
| Classifications | H01M 10/46; U.S. Cl. 320/111 (plus H01R/H02J cross-classifications on the Google Patents page) |
| Status | Expired – Lifetime; anticipated expiration 2022-03-01. Subject to a terminal disclaimer (35 U.S.C. §154(b) adjustment: 0 days). |
Source: Google Patents, https://patents.google.com/patent/[US7239111B2](/patent/US7239111B2)/en ; patent front page reproduced at the IPR2018-00276 Exhibit 1001 (https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2018-00276/...).
2. Abstract (patent's own wording)
"An adapter for providing a source of power to a mobile device through an industry standard port is provided. In accordance with one aspect of the invention, the adapter comprises a plug unit, a power converter, a primary connector, and an identification subsystem. The plug unit is operative to couple the adapter to a power socket and operative to receive energy from the power socket. The power converter is electrically coupled to the plug unit and is operable to regulate the received energy from the power socket and to output a power requirement to the mobile device. The primary connector is electrically coupled to the power converter and is operative to couple to the mobile device and to deliver the outputted power requirement to the mobile device. The identification subsystem is electrically coupled to the primary connector and is operative to provide an identification signal."
3. Technical Gist
The invention is a wall/car power adapter that delivers power to a mobile device through a standard USB port without performing USB enumeration. In standard USB, a device must complete host-initiated enumeration before drawing more than limited current. The adapter here replaces the host with a "dumb" power source and adds an identification subsystem that signals to the mobile device that the attached source is not a USB host or hub, so the device may immediately draw power (the specification gives the example of 5 unit loads, i.e., 500 mA). The identification signal is preferably a voltage (e.g., +5 V) applied to one or both USB data lines (D+/D−), compared by the mobile device against a ~2 V reference (FIG. 3, steps 210–260). The adapter may also include a plug adapter set (North American, UK, European, Australian, airplane, automobile), an auxiliary USB connector for data pass-through, and (in the FIG. 4 embodiment) a battery receptacle and charging subsystem for charging a detached battery.
4. Independent Claims — Plain Language
Claim 1 (USB adapter, apparatus): A USB adapter for powering a mobile device through a USB port, comprising four elements: (a) a plug unit that receives energy from a power socket; (b) a power converter coupled to the plug unit that regulates that energy into a power output; (c) an identification subsystem that generates an identification signal indicating to the mobile device that the power socket is not a USB host or hub; and (d) a USB connector coupled to both the power converter and the identification subsystem that carries the power output and the identification signal to the mobile device.
Claim 17 (method): A method of providing energy to a mobile device using a USB adapter having a USB connector, comprising: receiving a power input from a power socket; generating a regulated DC power output from that input; generating an identification signal indicating to the mobile device that the power socket is not a USB host or hub; providing the identification signal on one or more data pins of the USB connector; and providing the power output on one or more power pins of the USB connector.
Claim 18 (means-plus-function apparatus): A USB adapter comprising: means for receiving energy from a power socket; means for regulating that energy to generate a power output; means for generating an identification signal indicating to the mobile device that the power socket is not a USB hub or host; and means for coupling the power output and identification signal to the mobile device.
The remaining 15 claims are dependent, covering: direct plug-socket coupling (2) and enumerated socket types (3); removable plug adapters (4–5); the identification signal as a voltage on a data line (6); hard-wired voltage connection (7); a USB-controller implementation (8); a switch that connects/disconnects the power output (9–11); an auxiliary USB connector (12), data-line coupling through the identification subsystem (13) and second power output to it (14); a battery receptacle plus charging subsystem (15); and the power-converter component group — switching converter, transformer, DC source, voltage regulator, linear regulator, rectifier (16).
5. Docket / Litigation Check (USPTO and CAFC 2026)
No 2026 Federal Circuit docket or appeal involving US 7,239,111 was found in my searches, and I want to be explicit: I did not locate an authoritative CAFC 2026 entry for this patent. What the record does show is a long enforcement and PTAB history, all pre-2026:
- District court (EDTX, D. Del., N.D. Cal., S.D. Fla., N.D. Tex.) infringement suits by Fundamental Innovation Systems International LLC against multiple device makers (e.g., EDTX 2:16-cv-01424/01425, 2:17-cv-00124/00145, 2:19-cv-00048, 2:20-cv-00116/00117/00118/00119, 2:21-cv-00281/00282/00283; D. Del. 1:20-cv-00550/00551/00552, 1:21-cv-00339/00340; N.D. Cal. 3:19-cv-00638, 3:19-cv-03144; S.D. Fla. 1:20-cv-21721). One EDTX docket (2:20-cv-00116, FISI v. Aukey Technology) lists the asserted patents as 6,936,936; 7,239,111; 8,330,422; and 8,624,550.
- PTAB: IPR2018-00276 (ZTE/Samsung), IPR2018-00487 (Huawei Device), IPR2018-00495 (LG Electronics), and IPR2021-00395 (TCT Mobile / TCL Communication) — per the Unified Patents and Docket Alarm entries, all were not instituted / institution denied. The Google Patents "family has litigation" flags confirm the same set.
- Ex parte reexamination: Reexam 90/014,899 (referenced in an expert declaration discussing claims 1–18 of the '111 patent). I could not confirm a final reexam certificate outcome from the sources retrieved, so treat that specific status as uncertain.
Sources: Unified Patents litigation links embedded in Google Patents; https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2021-00395 ; https://www.docketalarm.com/search/?q=patent%3A(7239111) ; https://www.plainsite.org/dockets/42khas364/uspto-patent-trial-and-appeal-board/huawei-device-co-ltd-et-al-v-fundamental-innovation-systems-international-llc-et-al/
6. Explicit Uncertainty / Disambiguation Flags
- No verified CAFC 2026 docket found for
7239111. Absence of search results is not proof of absence; a PACER/Federal Circuit docket query would be needed to state this conclusively. My search returned a 2026 nonprecedential CAFC decision involving different patents (Centripetal/Keysight) and an unrelated 2026 UPC matter, neither of which concerns US 7,239,111. - Beware a numeric look-alike. A prior-art search report (WO1997033840A1 family listing) contains a Japanese publication JP 7239111 A (published 12-09-95, Hitachi Zosen). That is a different document with a superficially identical numeric string; it is not US 7,239,111. Per the stated rule I have not altered either identifier — they simply coincide.
- Assignee is layered. The patent's printed assignee is Research In Motion Limited; ownership passed RIM → BlackBerry Limited (change of name) → Fundamental Innovation Systems International LLC. Any current-rights statement should be verified against the USPTO Assignment records rather than the printed cover page.
- Expiry. Status is "Expired – Lifetime," with an anticipated expiration of 2022-03-01 tied to the 2001-03-01 priority date. This is consistent with enforcement commentary noting the patents had expired while litigation continued.
If you need the exact claim-by-claim text of the issued patent (as opposed to the Google Patents rendering), the front-page PDF exhibit at Exhibit-1001-US_Patent_7,239,111 (IPR2018-00276) is the cleanest authoritative copy.
Generated 9/30/2026, 10:24:30 AM
Cases on file (11)
Group view →Specific litigation cases in our database that name US patent 7239111. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Fundamental Innovation Systems International LLC v. Anker HK et al.filed Mar 5, 20211:21-cv-00339U.S. District Court, D. Del.pending
Defendants: Anker HK, Fantasia USA
- 2:20-cv-00116E.D. Tex.
Defendants: Aukey Technology Co., Ltd.
- Fundamental Innovation Systems International LLC v. Belkin Inc. et al.filed Apr 23, 20201:20-cv-00550U.S. District Court for the District of Delawaresettled
Defendants: Belkin Inc., Belkin International, Inc.
- Fundamental Innovation Systems International LLC v. Lenovo (United States), Inc. et al.filed Apr 23, 20201:20-cv-00551D. Del.resolved
Defendants: Lenovo (United States), Inc., Lenovo Holding Company, Inc.
- Untitled casefiled Apr 23, 20201:20-cv-00552D. Del.associated case; defendant not confirmed
- Fundamental Innovation Systems International LLC v. Apple, Inc.filed Feb 11, 20192:19-cv-00048; 3:19-cv-03144E.D. Tex.; transferred to N.D. Cal.terminated Oct 31, 2019dismissed
Defendants: Apple, Inc.
- Fundamental Innovation Systems International LLC v. Samsung Electronics Co., Ltd. et al.filed Feb 21, 20172:17-cv-00145E.D. Tex. (Marshall)settled
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
- Fundamental Innovation Systems International LLC v. Huawei Investment & Holding Co., Ltd. et al.filed Dec 16, 20162:16-cv-01424E.D. Tex. (Marshall)settled
Defendants: Huawei Investment & Holding Co., Ltd., Huawei Technologies Co., Ltd., Huawei Device USA, Inc., and 1 other
- Fundamental Innovation Systems International LLC v. LG Electronics Mobile Research U.S.A. LLC et al.filed Dec 16, 20162:16-cv-01425E.D. Tex. (Marshall)settled
Defendants: LG Electronics Mobile Research U.S.A. LLC, LG Electronics Alabama, Inc., LG Electronics MobileComm U.S.A. Inc., and 2 others
- 3:17-cv-01827N.D. Tex., Dallas Divisionactive
Defendants: ZTE Corp.
- 3:19-cv-00638N.D. Cal.motion to dismiss/transfer denied
Defendants: Fundamental Innovation Systems International LLC
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search litigation databases for cases specifically asserting US 7,239,111.
Let me dig into the specific cases, including the Apple and Anker suits and the earlier 2016 wave.
Let me get details on the Anker verdict, the Apple EDTX case, and the remaining 2020–2021 cases.
Bottom line
US 7,239,111 ("the '111 patent") has been asserted in a single, long-running licensing/enforcement campaign run by the current owner, Fundamental Innovation Systems International LLC ("FISI") (a Delaware-based patent-assertion entity; parent: Fundamental Innovation Systems International Holdings LLC; portfolio managed by JASPAR). FISI bought the RIM/BlackBerry USB-charging family in 2015. Every district-court case below has FISI as plaintiff (or, in one instance, as DJ defendant), and the patent appears alongside sibling family members — most often US 6,936,936, US 8,624,550, US 7,453,233, US 8,330,422 and US 7,834,586.
I found no Federal Circuit or other appellate docket for 7239111, and no 2026 court activity. The most recent substantive event I could confirm is a March 2025 Delaware jury verdict against Anker.
1. District court litigation
| # | Plaintiff | Defendant(s) | Jurisdiction / Court | Case No. | Filing date | Outcome / current status |
|---|---|---|---|---|---|---|
| 1 | FISI | [[Huawei Investment & Holding Co.](/litigations/by-defendant/Huawei%20Investment%20%26%20Holding%20Co.), Ltd.](/litigations/by-defendant/Huawei%20Investment%20%26%20Holding%20Co.%2C%20Ltd.); [Huawei Technologies Co., Ltd.](/litigations/by-plaintiff/Huawei%20Technologies%20Co.%2C%20Ltd.); Huawei Device USA, Inc.; Futurewei Technologies, Inc. | E.D. Tex. (Marshall) — Judges Gilstrap / Payne | 2:16-cv-01424 | 2016-12-16 | Consolidated with the LG action and stayed pending settlement; FISI announced licensing agreements with Huawei/LG/Samsung in 2018 |
| 2 | FISI | [LG Electronics Mobile Research U.S.A. LLC](/litigations/by-defendant/LG%20Electronics%20Mobile%20Research%20U.S.A.%20LLC); LG Electronics Alabama, Inc.; LG Electronics MobileComm U.S.A. Inc.; LG Electronics U.S.A., Inc.; LG Electronics, Inc. | E.D. Tex. (Marshall) — Judges Gilstrap / Payne | 2:16-cv-01425 | 2016-12-16 | Settled (2018); per PTAB mandatory notices the LG action was consolidated with the Huawei action |
| 3 | FISI | Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc. | E.D. Tex. (Marshall) — Judge Gilstrap / Mag. J. Roy S. Payne | 2:17-cv-00145 | 2017-02-21 | Claim-construction memorandum & order 2018-01-31 (construed "identification signal," "USB adapter," the §112 ¶6 "means" terms, etc.); settled |
| 4 | FISI | ZTE Corporation; ZTE (TX) Inc.; ZTE (USA) Inc. | N.D. Tex. (Dallas) | 3:17-cv-01827 | 2017-02-13 | Claim construction and invalidity briefing; settled/terminated (settlement of the ZTE, Huawei, LG and Samsung matters was reported in 2018) |
| 5 | FISI | Apple, Inc. | E.D. Tex. | 2:19-cv-00048 | Feb. 2019 (approx.) | Settled — listed as "(settled)" in FISI's 2021 PTAB mandatory notice |
| 6 | Apple Inc. (declaratory judgment plaintiff) | FISI | N.D. Cal. (Judge Alsup) | 3:19-cv-00638 | 2019-02 | Apple's anticipatory DJ action over 12 patents; court denied FISI's motion to dismiss/transfer (Alsup, J.) |
| 7 | FISI | Apple, Inc. | N.D. Cal. | 3:19-cv-03144 | 2019-06-06 | Filed after the DJ action; docket shows mediation referral, jury trial set Nov. 2020; settled |
| 8 | FISI | Aukey Technology Co., Ltd. | E.D. Tex. (Marshall) — Judge Gilstrap | 2:20-cv-00116 | 2020-04-23 | CLOSED. Patents asserted: 6,936,936; 7,239,111; 8,330,422; 8,624,550 |
| 9 | FISI | Belkin, Inc.; Belkin International, Inc. | D. Del. — Judge Colm F. Connolly | 1:20-cv-00550 | 2020-04-23 | AO-120 report lists 7,239,111 B2; 8,624,550 B2; 7,453,233 B2; 6,936,936 B2; 8,330,422 B2. Consol. w/ 00551 & 00552. Final disposition not confirmed |
| 10 | FISI | Lenovo (United States), Inc.; Lenovo Holding Company, Inc. | D. Del. — Judge Colm F. Connolly | 1:20-cv-00551 | 2020-04-23 | Case assigned; answer deadline extended to 2020-06-29; later resolved — the IPR2021-00395 exhibit list includes "1-20-cv-00551 … Lenovo 41 Agreed terms" |
| 11 | FISI | (Defendant not confirmed in my searches) | D. Del. — Judge Colm F. Connolly | 1:20-cv-00552 | 2020-04-23 | Filed same day as 00550/00551; associated case |
| 12 | FISI | (Defendant not confirmed) | S.D. Fla. | 1:20-cv-21721 | 2020 | Filed 2020 |
| 13 | FISI | Anker Innovations Ltd.; Fantasia Trading LLC (d/b/a AnkerDirect) | D. Del. — Judge Colm F. Connolly | 1:21-cv-00339 | 2021-03-05 | Patents: 7,239,111 B2; 8,624,550 B2; 7,453,233 B2; 6,936,936 B2. March 2025 jury verdict — Anker found to infringe FISI's USB-charger patents; damages > $13.6M (reported as ~$14M). Anker publicly stated (Nov. 2024 filing) that the litigation was still pending and that it was negotiating settlement; note all asserted patents had expired |
| 14 | FISI | (Defendant not confirmed) | D. Del. | 1:21-cv-00340 | 2021 | Filed same day as the Anker case |
| 15–17 | FISI | (Defendants not confirmed) | E.D. Tex. | 2:21-cv-00281, 2:21-cv-00282, 2:21-cv-00283 | 2021 | 2021 EDTX filings |
2. PTAB proceedings on the '111 patent
| Proceeding | Petitioner(s) | Patent | Filed | Status |
|---|---|---|---|---|
| IPR2018-00276 | ZTE (USA) Inc.; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc. | 7,239,111 | 2018-02-12 | Google Patents flags "Not Instituted – Merits." Caution: FISI's 2018-09-13 mandatory notice described 00276 as still "pending" after institution was denied in 00487 and 00495 — the proceeding was almost certainly terminated in connection with the Samsung 2018 settlement. Treat the exact disposition as uncertain |
| IPR2018-00487 | Huawei Device Co., Ltd. | 7,239,111 | 2018-01-12 (accorded 2018-02-16) | Institution denied (decision 2018-08-10) |
| IPR2018-00495 | LG Electronics, Inc.; LG Electronics Mobile Research | 7,239,111 | 2018-01-15 | Institution denied |
| IPR2021-00395 | TCT Mobile (US), Inc.; TCL Communication | 7,239,111 | 2020-12-31 | Institution denied (2021-07-06); rehearing denied (2021-08-31); refund granted (2021-10-01) |
Related but NOT on the '111 patent: IPR2018-00215 (8,232,766 — a child of the '111 application), IPR2018-00605/00606/00607 (6,936,936, all dismissed).
3. Key procedural facts worth flagging
- All '111 district-court cases are by the same NPE, FISI. There is no litigation in which the '111 patent was asserted by RIM/BlackBerry, and no case where FISI is a defendant other than Apple's N.D. Cal. DJ action (3:19-cv-00638).
- The patent expired 2022-03-01 (anticipated expiration; status "Expired – Lifetime"). Several of the later cases (e.g., Anker) proceeded to trial on pre-expiration damages only. Anker expressly disclosed that the asserted patents "均已到期" (had all expired).
- Claim construction turned heavily on the '111 claims — the Samsung 2:17-cv-00145 order construed "identification signal," "USB adapter," "USB port," and the three §112 ¶6 "means" limitations of claim 18. The Anker claim-construction order likewise addressed the '111 claims.
- Conflicting identifier to be careful about: the PTAB mandatory notice renders the Apple case as "3:19-cv-00048 (N.D. Cal.)," while Google Patents' litigation flags list a Texas Eastern 2:19-cv-00048. These may be the same matter transposed in one source, or two separate filings. Per the operating rule I have not auto-corrected either number; verify against PACER.
4. Explicit uncertainties
- I could not confirm the defendants or dispositions of E.D. Tex. 2:20-cv-00117/00118/00119, D. Del. 1:20-cv-00552, 1:21-cv-00340, E.D. Tex. 2:21-cv-00281/282/283, or S.D. Fla. 1:20-cv-21721.
- The Anker verdict is reported by Law360 as "more than $13.6 million" / "Owes $14M." I did not verify whether the '111 patent specifically was among the claims on which the jury found infringement, versus other patents in FISI's four-patent Anker complaint.
- I found no 2026 litigation, appeal, or PTAB activity concerning
7239111. Absence of search results is not proof of absence — a PACER/Federal Circuit docket query would be needed to state this conclusively. - FISI's ex parte reexamination (No. 90/014,899) referenced in an expert declaration concerns claims 1–18 of the '111 patent; its outcome remains unconfirmed.
Principal sources: Docket Alarm patent search for 7239111 (https://www.docketalarm.com/search/?q=patent:(7239111)); CourtListener and Justia dockets for 2:17-cv-00145, 1:20-cv-00550/551/552, 1:21-cv-00339, 3:17-cv-01827, 3:19-cv-00638, 3:19-cv-03144; PTAB dockets IPR2018-00276/00487/00495 and IPR2021-00395 (https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2021-00395); FISI mandatory notices filed 2018-09-13 and 2021-01-21; Law360 (March 2025 Anker verdict); Unified Patents litigation portal links embedded in Google Patents (https://patents.google.com/patent/[US7239111B2](/patent/US7239111B2)/en).
Generated 9/30/2026, 10:31:52 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Fundamental Innovation Systems International LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll investigate the discrepancy between the "no PTAB activity" block and the four IPRs flagged on the patent's own page, then dig into each proceeding.
Strong recoveries. Let me pin down the institution decisions, the odd joint-motion-to-dismiss event in IPR2018-00276, the exact claims challenged in IPR2021-00395, and whether any sibling proceedings on the '111 exist.
⚠️ Source conflict flagged up front
The structured "PTAB proceedings on file" block supplied with this prompt states that the USPTO ODP API returns no AIA trial proceedings for US 7,239,111 and that the default should be "no PTAB activity on file." That is contradicted by the record. The patent's own Google Patents page (in the authoritative full text provided above) carries four "PTAB case … filed (Not Instituted – Merits)" litigation flags, and web-verified Board papers confirm four IPR petitions on this patent. Per the operating rules I prefer the live-record results and report the four below, while noting the ODP block appears to reflect an ingest/indexing gap rather than an absence of filings. Treat "no PTAB activity" as incorrect for this patent.
Proceedings overview
Four AIA trial proceedings are on file against US 7,239,111 — all Inter Partes Review, and all four were denied institution (IPR2018-00276, -00487, -00495, and IPR2021-00395). There are zero Final Written Decisions, zero claims canceled, zero claims sustained, and zero instituted trials on this patent; there is also no apparent Federal Circuit appeal, because a denial of institution is not appealable. Bottom line for a defendant today: the '111 patent has never been tested on the merits at the PTAB. It is not "hardened" by surviving trials — it is un-fought — but the Board has now four times found petitions that attacked the "identification subsystem / identification signal" limitation insufficient. The single recurring vulnerability the Panel keeps rejecting (SE1-style D+/D− signaling art) is the ground most likely to fail again, so any new petition must overcome that specific teaching gap and the § 325(d) discretionary-denial argument that the Patent Owner has successfully relied on.
IPR2018-00276 — ZTE (USA) Inc., Samsung Electronics Co., Ltd. & [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-02-12 (notice of accord filing date 2018-04-05)
- Status: Institution Denied (Paper 17, 2018-10-01)
- Judge panel: Arthur M. Peslak (writing), Lynne E. Pettigrew, Jon B. Tornquist
- Petition grounds (from the petition itself):
- Ground 1 — Claims 1–3, 6–8, 16–18 obvious over Theobald in view of Shiga (§ 103)
- Ground 2 — Claim 15 obvious over Theobald in view of Shiga and Kfoury (§ 103)
- Ground 3 — Claims 12 and 14 obvious over Dougherty in view of Hahn and Amoni (§ 103)
- Institution decision: Denied 2018-10-01. Paper 17 at 14 denied institution as to at least two asserted grounds because of "Petitioner's failure to show that a claim limitation was present in its asserted prior art combination" (as later quoted by a sister proceeding's Patent Owner Response). No claim-level verdict exists because no trial was instituted.
- Final Written Decision: None — institution denied.
- Settlement / termination: A Joint Motion to Dismiss and Joint Request for Confidentiality were filed by the Patent Owner on 2018-07-13, and a Notice of Filing Transcript followed on 2018-07-16 — the timing is consistent with the 2018 FISI–Samsung/ZTE license resolutions reported publicly. However, the Board nonetheless issued an institution-denial decision on 2018-10-01, so the disposition of the joint motion is not clear from the sources retrieved; I cannot confirm whether it was granted, mooted, or denied. Flag as uncertain.
- Appeal: None — institution denials are non-appealable under 35 U.S.C. § 314(d).
- Defensive value: The ZTE/Samsung panel knocked out both the Theobald/Shiga and Dougherty/Hahn/Amoni theories at the threshold. If your invalidity case rests on those references, expect the Board (and later a judge reading this decision) to say they don't teach the identifying limitation. No estoppel attaches to ZTE/Samsung because no trial was instituted.
- Source: Docket Alarm docket, https://www.docketalarm.com/cases/PTAB/IPR2018-00276/ZTE_%28USA%29_Inc._v._Fundamental_Innovation_Systems_International_LLC/
IPR2018-00495 — LG Electronics, Inc. et al. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-01-15
- Status: Institution Denied (Paper 10, 2018-08-09)
- Judge panel: Arthur M. Peslak (writing), Lynne E. Pettigrew, Bryan F. Moore, Jon B. Tornquist, Christopher L. Ogden
- Petition grounds (from the petition):
- Ground 1 — Claims 1–3, 6, 8, 16, 17 unpatentable § 103(a) over Dougherty in view of DeJaco, Hahn, and Shiga
- Ground 2 — Claims 12 and 14 § 103(a) over Dougherty in view of DeJaco, Hahn, Shiga, and Amoni
- Ground 3 — Claims 7 and 18 § 103(a) over Dougherty in view of DeJaco, Hahn, Shiga, and USB 2.0
- Institution decision: Denied 2018-08-09. The panel's core reasoning, quoted in a later Patent Owner Response: "Petitioner has not shown how modified [portable device] and [the USB hub charger] would predictably handle SE1 signals in the course of normal USB communication." (Paper 10 at 15.)
- Final Written Decision: None.
- Settlement / termination: A Notice of Refund was entered 2019-07-02 (Paper 12), consistent with the parties' 2018 license resolution. Terms (if any) are confidential/not disclosed.
- Appeal: None (§ 314(d)).
- Defensive value: LG ran the same Dougherty-family art plus explicit SE1/"D+ and D− high" teachings (Shiga, Casebolt, Sonoda, Cypress, Zyskowski) and still lost at institution. This is the clearest signal that a comparably framed SE1 obviousness theory is a dead end. Because there was no institution, LG is not estopped and the art remains fair game in litigation.
- Source: Docket Alarm / petition PDF, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1545782](/patent/1545782)/
IPR2018-00487 — Huawei Device Co., Ltd. et al. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2018-01-11/12 (notice of accord filing date 2018-02-16)
- Status: Institution Denied (decision dated 2018-08-10)
- Judge panel: Christopher L. Ogden (writing), Lynne E. Pettigrew, Jon B. Tornquist
- Petition grounds: Challenged claims 1, 2, 3, 6, 7, 8, 16, 17, 18. The specific art/statutory grounds were not recoverable from the sources retrieved — I will not reconstruct them. (Note: a third-party database page lists a "Claims Instituted: 2, 3, 4, 5, 6, 7, 8, 9, 13, 14, 15, 16, 17, 18, 19, 20" field for this case, but that claim set belongs to a different patent; that field appears to be a data error and I have not relied on it.)
- Institution decision: Denied — the Board entered a "Decision Denying Institution of Inter Partes Review" on 2018-08-10.
- Final Written Decision: None.
- Settlement / termination: Not confirmed; the underlying EDTX 2:16-cv-01424 action was among the FISI cases publicly reported as licensed in 2018.
- Appeal: None (§ 314(d)).
- Defensive value: Huawei's denial, entered the day after LG's, reinforces the pattern that 2018-era obviousness combinations against the identification-signal limitation were not being instituted. No estoppel.
- Source: PlainSite docket, https://www.plainsite.org/dockets/42khas364/uspto-patent-trial-and-appeal-board/huawei-device-co-ltd-et-al-v-fundamental-innovation-systems-international-llc-et-al/
IPR2021-00395 — TCT Mobile (US), Inc.; TCT Mobile (US) Holdings, Inc.; Huizhou TCL Mobile Communication Co. Ltd.; and TCL Communication, Inc. v. Fundamental Innovation Systems International LLC
- Type: Inter Partes Review
- Filed: 2020-12-31
- Status: Institution Denied (Paper 8, 2021-07-06); Request for Rehearing denied (Paper 10, 2021-08-31)
- Judge panel: Miriam L. Quinn, Jo-Anne M. Kokoski, and Arthur M. Peslak (writing)
- Petition grounds: Obviousness centered on JP 2000-165513A to Morita (Ex. 1017) "and/or the knowledge of an ordinarily skilled artisan." The exact list of challenged claims was not confirmed from the sources retrieved — the rehearing decision refers only to "the challenged independent claims," and I will not guess the numbers.
- Institution decision: Denied 2021-07-06. The sole articulated basis: Petitioner failed to sufficiently show that Morita and/or POSITA knowledge "discloses or suggests the identification subsystem limitation" recited in the challenged independent claims (Dec. 26). The Board also found that neither the cited portion of Morita nor Dr. Baker's testimony supported Petitioner's assertion that Morita discloses a "charging-only" mode, and that the assertion "flew in the face of other portions of Morita."
- Rehearing: Denied 2021-08-31. The panel held Petitioner had not carried its burden and, notably, called one of Petitioner's characterizations of the record "absolutely false" (Paper 10 at 7). The Board also entertained the Patent Owner's § 325(d) discretionary-denial argument — that the same/substantially the same art and arguments had been presented in IPR2018-00276/-00487/-00495 and that the Examiner had already considered Gabehart during prosecution of the '111 patent.
- Final Written Decision: None.
- Settlement / termination: Not applicable; denied at institution. (The related D. Del. 1:20-cv-00552 action and others were litigated into 2022.)
- Appeal: None (§ 314(d); a rehearing denial is likewise not appealable on the merits of institution).
- Defensive value: This is the most recent and most instructive decision for a would-be petitioner. It confirms that (a) the identification-signal limitation remains the choke point, and (b) the Board will entertain § 325(d) discretionary denial given the accumulated prior-art history on this patent. Any 2026 petition must bring art that is not cumulative of Gabehart/Dougherty/Shiga/Morita and must squarely prove the "not a USB host or hub" signal generation.
- Source: Docket Alarm, https://www.docketalarm.com/cases/PTAB/IPR2021-00395/TCT_Mobile_%28US%29_Inc._v._Fundamental_Innovation_Systems_International_LLC/
Strategic summary
Canceled / sustained / untested. No claim of the '111 patent has ever been canceled or sustained by the PTAB. For a defendant, the operative category is UNTESTED: claims 1, 17, and 18 (the independents) and all dependents 2–16 remain live, unadjudicated, and expired-but-assertable only for past damages (anticipated expiration 2022-03-01). There is no canceled-claim leverage to exploit here — the four denials are defensive wins for the patent owner, not invalidation wins for the industry.
Estoppel landscape. Because no petition was ever instituted, 35 U.S.C. § 315(e)(2) estoppel did not attach to any of ZTE/Samsung, Huawei, LG, or TCT/TCL. Under Shaw Industries v. Automated Creel Systems (and the 2018 SAS change eliminating partial institution), estoppel runs from institution; a denial generates none. Practically: every prior-art ground these petitioners raised or could have raised — Theobald, Shiga, Kfoury, Dougherty, Hahn, Amoni, DeJaco, Morita, USB 2.0, Gabehart — remains available to a current defendant in district court and in a fresh IPR. The corollary risk is that a new IPR faces § 325(d): the Patent Owner has already shown it can argue these grounds are cumulative, and the IPR2021-00395 panel credited the record evidence on that point.
Pattern signals.
- Five different corporate groups (ZTE/Samsung jointly, Huawei, LG, and later TCL/TCT) petitioned; there is no repeat single petitioner and no defensive aggregator in these particular '111 proceedings (the previous analysis correctly notes Unified Patents appears in the litigation flags, and IPR2021-00395's caption shows no aggregator as petitioner — the petitioner is TCT/TCL).
- The Patent Owner (FISI) has a consistent, sophisticated PTAB defense: hammer the identification-signal limitation and layer in § 325(d) and prosecution-history (Gabehart) arguments. It has never had to defend a trial on the merits.
- No FWD ⇒ no Federal Circuit activity on the '111 patent from these proceedings. (Unrelated 2026 CAFC and UPC matters surfaced in searching are not this patent.)
One caveat to carry forward: IPR2021-00410 (TCT Mobile v. FISI) is a separate TCT proceeding on file for which an exhibit referencing the LG '111 petition was filed. I could not confirm that IPR2021-00410 itself targets the '111 patent — the retrieved exhibit is a copy of the IPR2018-00495 petition, which is also consistent with it being a § 325(d) cumulative-art exhibit in a proceeding on a sibling patent (e.g., the '586 or '550 patent). Do not assume it is a fifth '111 proceeding without pulling the IPR2021-00410 petition caption.
Recommended next steps
- If you are a defendant now facing an assertion, you are not estopped by anyone's prior IPR. The safest path is a fresh IPR, but it must (a) clear § 325(d) by using art that is not cumulative of Gabehart, Theobald, Shiga, Dougherty, Hahn, Amoni, DeJaco, or Morita, and (b) prove the "identification subsystem configured to indicate to the mobile device that the power socket is not a USB host or hub" limitation affirmatively. The Board's consistent complaint (Paper 10 at 15 in IPR2018-00495; Dec. 26 in IPR2021-00395) is that petitioners show how to signal (SE1) but not why a POSITA would modify a charger to signal at all — close that motivation gap or don't file.
- Pull the four institution decisions in full from USPTO PTAB E2E / https://ptacts.uspto.gov to confirm (i) the exact claim lists for IPR2018-00487 and IPR2021-00395, (ii) Huawei's asserted art and statutory grounds, and (iii) the disposition of ZTE/Samsung's 2018-07-13 joint motion to dismiss in IPR2018-00276. Those are the three open factual gaps in this report.
- Confirm no additional '111 proceedings exist via a PTAB E2E "Patent Number 7239111" search, and treat the ODP "no proceedings" block as unreliable for this patent.
- No trial-stage milestones apply — no proceeding is active, and no FWD deadlines are running. The only live clock to watch is in district court (past-damages exposure and any new petition's § 315(b) one-year bar from service of a complaint).
- Estoppel tracking: because no prior petitioner is estopped, if you are in privity with or acquiring art from ZTE/Samsung, Huawei, LG, or TCL, that art is unencumbered by § 315(e)(2) — but be mindful of In re: Rembrandt / printed-publication and privity nuances if you coordinate with them.
Generated 9/30/2026, 10:32:01 AM
Ownership chain (4)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2013-11-03 · Assignment
Daniel M. Fischer; Michael F. Habicher; Quang A. Luong; Jonathan T. Malton; Dan G. RadutResearch In Motion Limited
? · recorded 2013-11-03 · Change of Name
Research In Motion LimitedBlackBerry Limited
change of name only
? · recorded 2015-12-17 · Assignment
BlackBerry LimitedFundamental Innovation Systems International LLC
transfer-to-asserter
? · recorded 2016-12-01 · Assignment
BlackBerry LimitedFundamental Innovation Systems International LLC
transfer-to-asserter
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the USPTO assignment records for US 7,239,111, focusing on reel/frame numbers, execution dates, and correspondents of record.
Let me search for the specific USPTO assignment reel/frame records and correspondent details.
Let me try to locate the specific reel/frame records and correspondents via targeted searches.
I was unable to retrieve the raw reel/frame and correspondent fields before exhausting my search budget; I flag that limitation explicitly below rather than invent values. Everything else is grounded in the sources returned.
Inventors
| Inventor | Residence (per patent) | Likely employer at filing |
|---|---|---|
| Daniel M. Fischer | Waterloo, Ontario, CA | Research In Motion Limited (RIM) |
| Dan G. Radut | Waterloo, Ontario, CA | Research In Motion Limited |
| Michael F. Habicher | Cambridge, Ontario, CA | Research In Motion Limited |
| Quang A. Luong | Kitchener, Ontario, CA | Research In Motion Limited |
| Jonathan T. Malton | Kitchener, Ontario, CA | Research In Motion Limited |
All five reside in the Waterloo–Kitchener–Cambridge technology corridor, consistent with RIM's Waterloo, ON headquarters. The application is a continuation (App. 11/175,885, filed 2005-07-06) of App. 10/087,629 filed 2002-03-01, claiming priority to Prov. 60/273,021 (2001-03-01) and Prov. 60/330,486 (2001-10-23). The inventor group is the same engineering team as the parent family.
Unusual-pattern check: No evidence that any inventor departed RIM within 12 months of filing, and no inventor appears as an assignor or signatory on any later transfer (the later conveyances are entity-to-entity). This is the opposite of the "inventors bail out early" fire-sale tell — it looks like a routine corporate employee-invention assignment into a large operating-company portfolio.
Original assignee
Research In Motion Limited, Waterloo, Ontario, Canada — named on the issued patent (US 7,239,111 B2, issued 2007-07-03). RIM was a vertically integrated operating company: it designed and shipped the BlackBerry handheld line, the associated charging accessories, and the BlackBerry Enterprise Server software. The '111 family (USB charging of a mobile device via an identification signal that bypasses USB enumeration) is squarely embodied in RIM's multifunctional USB chargers and BlackBerry handsets — i.e., the assignee practiced the claims commercially.
Current status of the original assignee's successor: RIM changed its legal name to BlackBerry Limited in 2013 (recorded in this chain as a Change of Name, see below). BlackBerry Limited is an operating company today — enterprise security software, QNX/IoT — that has exited handset manufacturing (brand licensed out, then returned). It is not dissolved or in bankruptcy. Its patent portfolio, however, was monetized: the BlackBerry → FISI transaction was a cash sale to a private-equity-backed buyer, not a bankruptcy liquidation (RPX; Mondaq). RPX reports BlackBerry assigned the '111 family as part of a late-2015 transaction of ~55–200 patent assets (figures vary by source: "over 55 US assets," "158 patent assets including 56 US," "roughly 200 assets") to FISI.
Assignment timeline
⚠️ Data limitation (stated plainly, not filled with guesses): The USPTO Assignment Center / assignment.uspto.gov records for this patent were not retrievable in the searches I ran, and Google Patents' legal-events feed does not expose the reel/frame or the correspondent-of-record fields. Accordingly, I can confirm the event sequence, conveyance types, parties, and recording dates (below), but I cannot supply verified reel/frame numbers or correspondent names, and I will not fabricate them. The two FISI recordings are the ones whose reel/frame and correspondent should be pulled manually at Assignment Center — that is exactly where the repeat-player-attorney tell would surface.
Chronological recorded events (recording dates per Google Patents legal events; execution dates not shown in the retrieved data):
Executed ~2002 / recorded 2013-11-03 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest
- Assignor: Daniel M. Fischer; Michael F. Habicher; Quang A. Luong; Jonathan T. Malton; Dan G. Radut (inventors)
- Assignee: Research In Motion Limited
- Correspondent: not retrieved
- Context: routine employee-invention assignment into the operating company; notable only for the very late recording date (~11 years after the parent filing), which is common in large corporate portfolios that record employee assignments in bulk.
Recorded 2013-11-03 — Reel/Frame not retrieved
- Conveyance: Change of Name
- Assignor: Research In Motion Limited
- Assignee: BlackBerry Limited
- Correspondent: not retrieved
- Context: internal reorg / change of name only — matches BlackBerry's actual 2013 legal renaming; no change in beneficial ownership.
Recorded 2015-12-17 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest
- Assignor: BlackBerry Limited
- Assignee: Fundamental Innovation Systems International LLC (FISI)
- Correspondent: not retrieved
- Context: transfer-to-asserter / portfolio monetization — the November 2015 BlackBerry→Centerbridge/FISI deal (RPX: multi-million-dollar transaction; FISI formed in Delaware in 2015, parent Fundamental Innovation Systems International Holdings LLC).
Recorded 2016-12-01 — Reel/Frame not retrieved
- Conveyance: Assignment of Assignors' Interest
- Assignor: BlackBerry Limited
- Assignee: Fundamental Innovation Systems International LLC
- Correspondent: not retrieved
- Context: second/corrective recording to the same acquirer, executed roughly a year after the first FISI recording and days before FISI's first infringement suits (see signal 5). Whether this is a clean-up recording of the same transaction or a separate tranche cannot be determined without the reel/frame documents.
(There is no recorded conveyance out of FISI to a further NPE, aggregator, or holding entity on this patent's Google Patents event feed. The later chain is therefore two links into FISI and stops there.)
Timeline diagram
timeline
title Ownership of US 7239111
2001 : Priority provisional filed
2002 : Parent application filed
2005 : Continuation application filed
2007 : Patent issues to RIM
2013 : Inventors assign to RIM recorded
: RIM renamed BlackBerry Limited
2015 : BlackBerry assigns to FISI
2016 : Second assignment recorded to FISI
: FISI sues Samsung LG Huawei ZTE
2021 : Suit against Anker filed
2022 : Patent reaches expiry
NPE / troll-pattern signals
Shell-entity transfer — PRESENT. The patent moved from operating company BlackBerry to Fundamental Innovation Systems International LLC, a Delaware LLC formed in 2015 with no products in commerce — RPX describes FISI as "an NPE with active campaigns in the US and Europe" and notes its parent, Fundamental Innovation Systems International Holdings LLC (RPX, 2019). Supported by recording 2015-12-17 (and the companion 2016-12-01 recording). The "no products / licensing-only" element is independently corroborated (FISI engaged licensing firms TnT IP LLC, then ex-IPVALUE personnel; RPX).
Known asserter in the chain — PRESENT. FISI is a high-frequency plaintiff tracked by RPX: "roughly 20 suits since late 2016" against Apple, Aukey, BBK/OnePlus, BLU, Belkin, Huawei, Jasco, Lenovo, LG, Samsung, TCL, Coolpad, ZTE, Anker, and Cyber Power (RPX, 2021). It is not on the enumerated legacy list (Acacia/Marathon/IV/etc.), but it fits the RPX high-frequency-plaintiff category. Current assignee = FISI per the 2015/2016 recordings. Backed by Centerbridge Partners (PE, ~$1.15B AUM) per RPX.
Repeat correspondent across the chain — UNCLEAR (data not retrieved). I could not obtain the correspondent-of-record for either FISI recording, so I cannot confirm or deny a repeat recording attorney. This is the signal most likely to be positive and is the reason to pull the real reel/frame entries manually: the BlackBerry→FISI recordings' correspondent is the tell for whether the same firm runs the FISI family. Do not treat this as negative — treat it as unverified.
Cascading transfers (<24 months through chained LLCs) — WEAKLY PRESENT. Within this patent: 2013-11-03 RIM→BlackBerry (name change) → 2015-12-17 BlackBerry→FISI → 2016-12-01 BlackBerry→FISI. That is a name-change plus two recordings to the same acquirer inside ~24 months. There is no multi-LLC hop (e.g., FISI LLC → FISI Holdings LLC) shown on this patent. So the "chain of unrelated LLCs" element is absent; the rapid-transfer element is only partially satisfied. I mark it weak.
Pre-litigation transfer — PRESENT. FISI's first infringement suits in this campaign were filed December 2016 (FISI v. LG, 2:16-cv-01425; FISI v. Huawei, 2:16-cv-01424, E.D. Tex.). The second assignment to FISI is recorded 2016-12-01 — within days of those first complaints, well inside the 6-month window (RPX: campaign "began targeting mobile device manufacturers with a series of Texas lawsuits" in Dec. 2016). Strong signal; the chain was finalized immediately before assertion.
Bankruptcy fire-sale — NOT PRESENT. BlackBerry Limited was an ongoing operating company in 2015, not in Chapter 7/11. This was a negotiated cash portfolio sale to a PE-backed buyer, not a bankruptcy-court liquidation. (No Kodak/Nortel/Polaroid-style proceeding appears in the record.)
Privateering — UNCLEAR / partial. The structure is classic operating-co-to-NPE, but classic privateering implies the operating company transfers patents to an NPE that asserts on its behalf against competitors. Here BlackBerry sold outright for cash while exiting the handset hardware business, and FISI operates as a standalone profit-seeking NPE (Centerbridge-funded; its own licensing teams). RPX does not characterize FISI as a BlackBerry proxy. I therefore decline to call this privateering outright — the strategic-alignment element is not established with the sources I have.
Defensive aggregator (anti-NPE) — NOT PRESENT. The chain terminates at an asserting NPE (FISI), not at RPX, AST, LOT Network, Unified Patents, or OIN. In the inverse sense, this patent is confirmed actively weaponized, not neutralized. Note the extensive defensive response it attracted — IPR2018-00276 (ZTE/Samsung), -00487 (Huawei), -00495 (LG), IPR2021-00395 (TCT/TCL), all institution denied — plus Apple's 2019 declaratory-judgment suit (N.D. Cal. 3:19-cv-00638).
Verdict
NPE — high confidence.
Two or more strong signals are present and evidenced by the record: (i) a licensing-only Delaware LLC with no products acquired the patent from the operating company — recording 2015-12-17, assignee Fundamental Innovation Systems International LLC, corroborated by RPX's express "NPE" characterization; and (ii) a pre-litigation recording on 2016-12-01 immediately preceding FISI's first December-2016 suits. FISI is additionally a documented high-frequency plaintiff (~20 suits) funded by Centerbridge Partners. The chain stops at FISI; it was never neutralized by a defensive aggregator. The one caveat is signal 3 (repeat correspondent): the reel/frame and correspondent fields were not retrieved, so that element is unverified rather than absent — verify at the USPTO Assignment Center.
Verify the underlying records here:
- USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (also https://assignment.uspto.gov/patent/index.html), search by patent number 7239111 for the reel/frame and correspondent entries.
- Google Patents legal events — https://patents.google.com/patent/[US7239111B2](/patent/US7239111B2)/en
- RPX on FISI (assignee profile and campaign) — https://litigation.rpxcorp.com/news/65626-two-well-heeled-npes-both-holding-large-opco-portfolios-open-up-march-with-fresh-suits and https://litigation.rpxcorp.com/news/9859-apple-files-dj-against-npe-asserting-former-blackberry-patents-in-usb-charging-campaign
- Mondaq / BlackBerry–Centerbridge deal detail — https://www.mondaq.com/unitedstates/patent/[687660](/patent/687660)/fundamental-innovations-usb-charging-campaign-proceeds-in-europe
Cross-reference note: the family's Canadian counterpart is CA2374344C (RIM), and the sibling US assets in the same conveyance include US 6,936,936; 7,239,111; 7,453,233; 7,737,657; 7,834,586; 7,986,127; 8,169,187; 8,232,766; 8,624,550 — i.e., the whole USB-charging family traveled to FISI together, reinforcing that this was a portfolio-level transfer-to-asserter, not an isolated patent sale.
Generated 9/30/2026, 10:32:06 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art citations for US 7,239,111. Let me start with targeted searches.
Let me look for the patent's "References Cited" section and the IPR petitions that would list the prior art of record.
I found valuable IPR data. Now let me locate the patent's actual "References Cited" (front-page prior art) and the IPR petition exhibit lists.
Prior-Art Analysis — US 7,239,111 B2
0. Target-patent confirmation (literal ID: 7239111)
The number 7239111 resolves, in USPTO records, to a single patent — US 7,239,111 B2:
| Field | Value |
|---|---|
| Title | Universal Serial Bus Adapter for a Mobile Device |
| Application | 11/175,885 (continuation of 10/087,629 → US 6,936,936) |
| Filed / Issued | July 6, 2005 / July 3, 2007 |
| Earliest priority | March 1, 2001 (Prov. 60/273,021; + Prov. 60/330,486, Oct. 23, 2001) |
| Inventors | Fischer, Radut, Habicher, Luong, Malton |
| Original assignee | Research In Motion Ltd. → BlackBerry Ltd. → Fundamental Innovation Systems International LLC (current) |
| Status | Expired – Lifetime (anticipated expiration 2022-03-01) |
No other US patent shares this number. (See §6 for a non-US look-alike that must not be conflated.)
1. Important method / evidence caveat — read first
You asked me to "look at each patent citation" on the '111 patent. I have to be straight about a limitation:
- The complete front-page "References Cited" (U.S. Patent Documents / Foreign Patent Documents) table was not retrievable in this session. The Google Patents rendering supplied as authoritative text for this patent is truncated at the forward-citation ("Cited By") list and does not reproduce the examiner's backward-citation table. My three follow-up searches to pull the raw front page (USPTO PatentCenter / Justia / FPO) returned no usable hit before the tool step-limit was reached.
- Therefore the list below is built from the authoritative prior-art record actually on file at the USPTO — the PTAB petitions, exhibits, and institution decisions — which is the operative prior art asserted against this patent. I mark clearly what is verified vs. inferred.
I will not fabricate examiner-cited reference numbers I could not confirm.
2. The operative prior-art record against the '111 patent (verified from PTAB filings)
Four IPRs were filed against the '111 patent; all were denied institution (so none produced a final invalidity adjudication):
| Proceeding | Petitioner | Outcome |
|---|---|---|
| IPR2018-00276 | ZTE (USA) / Samsung | Institution denied Oct. 1, 2018 |
| IPR2018-00487 | Huawei Device | Not instituted |
| IPR2018-00495 | LG Electronics | Not instituted |
| IPR2021-00395 | TCT Mobile (US) / TCL | Institution denied Jul. 6, 2021; rehearing denied Aug. 31, 2021 |
Sources: Docket Alarm IPR2018-00276 / IPR2021-00395 entries; GAEFlex PTAB docket for IPR2018-00276 (exhibit lists and institution decision); PTAB briefing text hosted at ptacts.uspto.gov (IPR2021-00395 rehearing request, discussing "claims 1 and 17").
From the IPR2018-00276 exhibit list (verified):
- Ex. 1001 — U.S. Patent 7,239,111 ('111 patent) (the patent under review, not prior art)
- Ex. 1002 — File history of the '111 patent
- Ex. 1003 — U.S. Provisional Application 60/273,021 (the '021 provisional — the priority document)
From Patent Owner exhibits (prior-art / background references of record, verified):
- Ex. 2009 — U.S. 5,214,774 (Welsch)
- Ex. 2006 / 2014 — "USB Complete," J. Axelson (2nd ed.; 1999 ed. also filed)
- Ex. 2008 — Motorola Micro TAC 5200/7200 materials
- Ex. 2010 — Motorola Users and Programming Guides (Larsen)
3. Reference-by-reference analysis
Note on the primary reference: The strongest single prior-art reference in the '111 record is the Japanese publication referred to throughout the briefing as "Morita" — a USB-format charger with HUB function for a mobile videophone. It was the lead reference in the TCT Mobile petition (IPR2021-00395) and is discussed in that proceeding's rehearing papers (which address "claims 1 and 17" — the '111 patent's two independent claims). I could not verify Morita's exact JP publication number in this session, so I identify it by name/description only rather than risk printing a wrong number.
| # | Reference | Pub./Filing date | Description | Claims potentially affected under §102 |
|---|---|---|---|---|
| A | "Morita" — JP published application (USB-format charger with hub function, for a mobile videophone) | JP-family art predating 2001-03-01 priority (exact number unverified) | Mobile videophone + charger; charger has a first USB port for a host PC, a second USB port for the phone, a power-supply connection unit ("outlet"), a charging control unit, a hub control unit, and connection-switching. Supplies charging power to the phone through the USB port and passes data. | Anticipates/obviously renders 1, 3, 4, 12, 13, 14, 16, 17 — its plug-to-outlet + regulated charging through a USB connector + hub/data lines map onto the plug unit, power converter, USB connector and auxiliary-connector elements. The disputed element was the "identification subsystem / identification signal" (claims 1, 6, 9–11, 17, 18): the Board found Morita did not disclose a charging-only mode with an identification signal, and denied institution on that basis. So Morita alone is weak on the identification-signal limitation. |
| B | U.S. 5,214,774 (Welsch) | Filed 1991; issued May 25, 1993 | Battery/device connection and charging detection circuitry (Patent Owner Ex. 2009). | Background art relevant to the power-converter / charging-detection elements (claims 1, 15, 16); not a standalone §102 reference for the identification-signal claims. |
| C | "USB Complete," J. Axelson (2nd ed.) | 1999 (the 1999 ed. also filed) | Non-patent book describing the USB specification — enumeration, host/hub behavior, D+/D− line states, low/high-power ports. | §102(a)/(b) prior art as to the USB framework the claims presuppose (enumeration requirements; host/hub line-holding; 500 mA = 5 unit loads). Supports §103 obviousness against claims 1, 6, 17 rather than standing alone as anticipation. |
| D | Motorola Micro TAC 5200/7200 + Motorola User & Programming Guides (Larsen) | Pre-2001 (product/documentation art) | Prior mobile-device/charger documentation establishing the state of charger & mobile-device integration. | Secondary/background art; supports obviousness-type double-checking on claims 1, 3, 15; not a clean §102 reference against the identification-signal claims. |
| E | U.S. Provisional 60/273,021 ('021 provisional) | Filed 2001-03-01 | The priority application ("System and Method for Adapting a USB to Provide Power for Charging a Mobile Device"), incorporated by reference into the '111 patent. | Not prior art to the '111 patent (it is its own priority document; identical priority date). Listed here only because petitioners filed it as Ex. 1003 — it is a priority/§112 anchor, not a §102 reference. |
4. Why no clean §102 killer exists in the record
The record shows the asserted prior art was at best an obviousness ( §103 ) challenge, and it failed at the institution stage:
- The independent claims (1 apparatus, 17 method, 18 means-plus-function) all require an "identification signal … indicating to the mobile device that the power socket is not a USB host or hub."
- The Board (both IPR2018-00276 and IPR2021-00395) concluded the petitioner did not sufficiently show that Morita (even with a skilled artisan's knowledge) discloses or renders obvious that identification-subsystem limitation. Institution was denied, and rehearing was denied.
- Consequence: no reference in the verified record clearly anticipates claims 1, 6, 9–11, 17, or 18 under §102. The closest §102 exposure is on the power-path claims (the plug unit / power converter / USB connector architecture) via Morita, which the Board declined to reach on the merits.
5. The §102 mapping, condensed
| Claim(s) | Element at issue | Best §102 candidate | Realistic outcome |
|---|---|---|---|
| 1, 17, 18 | plug unit + power converter + USB connector + identification signal | Morita (§103 with Axelson) | No anticipation; obviousness rejected at institution |
| 2–5 | plug / plug-adapter to enumerated socket types | Morita + ordinary AC-adapter art | Anticipation plausible only for the socket-adapting sub-elements; not the claims as a whole |
| 6–8 | identification signal = voltage on data line / hard-wired / USB controller | Axelson (USB framework) + Morita | §103 candidate; not §102 |
| 9–11 | switch that connects/disconnects power output | Morita's connection-switching unit | §102/§103 candidate on the switching element only |
| 12–14 | auxiliary USB connector; data-line coupling; second power output | Morita (first/second/third USB ports, hub) | Strongest §102 overlap in the record — Morita's hub architecture maps closely |
| 15 | battery receptacle + charging subsystem | Morita charging-control unit; Welsch | §103 candidate |
| 16 | converter = switching converter/transformer/regulator/rectifier | Generic + Morita/Welsch | §102-style overlap on component genus |
6. Disambiguation / uncertainty flags
- Do not conflate with
JP 7239111 A. A WO1997033840A1 family listing shows JP 7239111 A (Hitachi Zosen, published 12-09-95) — a different document whose numeric string coincides with the US number. Per the strict rule I have not altered either identifier; they simply collide. It is not US 7,239,111 and is not prior art to it in any relevant sense. - Incomplete examiner-citation table. The full front-page "References Cited" list (examiner-cited U.S. and foreign patents) could not be retrieved this session. The references in §3 are the litigation/IPR record — the prior art that was actually asserted — not necessarily the examiner's complete list. A PatentCenter (https://patentcenter.uspto.gov) or the IPR2018-00276 Ex. 1001 PDF front page would supply the exact examiner citations.
- "Morita" publication number unverified. I have described it by name and disclosure rather than print a JP number I could not confirm. Verify against the IPR2021-00395 Petition (Paper 1) / its exhibit list.
- All four IPRs were denied institution, so nothing in this record is a merits holding of invalidity. Any "anticipates" statement above is a candidate mapping, not an adjudicated result.
- Status: the '111 patent is Expired – Lifetime (2022-03-01), consistent with enforcement commentary noting the patents had expired while litigation continued (e.g., the FISI/Anker suits).
Bottom line: For US 7,239,111, the most relevant prior art in the verified USPTO/PTAB record is the "Morita" Japanese USB-charger-with-hub publication (strongest against the auxiliary-connector/power-path dependent claims, 12–14), supported by Axelson's USB Complete and US 5,214,774 (Welsch) for the USB-specification and charging-detection backdrop. No reference in that record cleanly anticipates independent claims 1, 17, or 18 under §102 — the identification-signal limitation defeated every asserted challenge.
Generated 9/30/2026, 10:32:09 AM
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 the '111 patent — including the IPR references and related USB-charging art — before building the obviousness analysis.
Let me characterize the key references precisely (dates, assignees, disclosures) so the motivations to combine are grounded.
Obviousness Analysis — US 7,239,111 B2 under 35 U.S.C. § 103
Building on the previously generated summary (bibliographic data, claim breakdown, and litigation/PTAB posture) — not repeated here.
Tool note: my run hit the step limit mid-research, so a few reference details below (noted inline) are drawn from the located record but not independently re-verified. Where I could not confirm something, I say so.
0. Threshold: which claim version am I analyzing?
The operative text I'm treating as authoritative is the 18-claim set rendered on the supplied Google Patents page (claim 1's "identification subsystem … configured to generate an identification signal, wherein the identification signal is configured to indicate to the mobile device that the power socket is not a USB host or hub"). That "generate" language is the same version construed by the Delaware court in 2018 ("generate/generating means 'produce/producing'", '111 claims 1, 6, 8, 12, 14, per the D. Del. claim-construction opinions retrievable at ded.uscourts.gov). ⚠️ Flag: earlier IPR2018-00495 quotes a claim 1 preamble ("for providing a source of power to a mobile device") that differs slightly. The '111 was also subject to ex parte reexamination 90/014,899. Because a reexamination certificate can alter claim text, verify against the certificate before relying on any single rendering. My analysis keys off the limitation that all versions share: an identification signal that tells the mobile device the attached source is not a USB host/hub.
Governing law: application filed July 6, 2005, priority to March 1, 2001 → pre-AIA § 103(a). Prior-art status of each reference below is assessed under pre-AIA § 102(a)/(b)/(e).
1. POSITA
A POSITA here has a B.S. in EE or CS plus ~2–3 years in portable-device power/USB design, and is familiar with the USB 1.1 and USB 2.0 specifications (VBUS/GND/D+/D− topology, SE0/SE1 single-ended states, pull-up/pull-down termination, enumeration, and the 100 mA / 500 mA unit-load limits). This is materially the level the Board and the parties' experts used in the IPRs.
2. Element map — where the claim is (and isn't) vulnerable
| Claim 1 element | Vulnerability |
|---|---|
| Plug unit receiving energy from a power socket | Weak. Spec calls it "conventional"; ubiquitous in wall/car adapters. |
| Power converter regulating to a power output | Weak. Spec admits "a known element in the art." |
| USB connector carrying power output + identification signal | Weak. USB 2.0 Fig. 4-2. |
| Identification subsystem generating a signal indicating the source is not a USB host/hub | The whole case. This is the only element that carried allowance and defeated every IPR. |
Same for claim 17 (method) and claim 18 (means-plus-function) — all three rise or fall on the third element.
3. Prior-art inventory (grounded in the located record)
| Ref | Identity | Date / status | Key teaching relied on |
|---|---|---|---|
| Dougherty | US 7,360,004 B2 (Hewlett-Packard), "Powering a Notebook Across a USB Interface"; pub. US 2004/0064621 A1 | Continuation of App. 09/608,082 filed Jun. 30, 2000 → pre-AIA § 102(e) | Dock supplies power to laptop over USB power rails, up to ~2.5 A (far above the 500 mA USB limit); ramps a small voltage (3.1 V) onto the power rail to handshake/identify the laptop; USB connector 236 mates laptop connector 136; 18 V supply via voltage-ramp logic |
| Shiga | US 6,625,738 | § 102(b)/(e) | Asserts an SE1 state (both D+ and D− logic-high) — expressly "not a USB standard state" — to signal over USB without interfering with regular USB functions |
| USB 2.0 Spec. | Universal Serial Bus Specification, Rev. 2.0, Apr. 27, 2000 | Printed publication § 102(b) | § 7.1.7.3 SE0/SE1; § 7.2.1/Figs. 7-20–7-21: data line hard-wired to a voltage level through a pull-up resistor, host detects the resulting voltage as a connect condition |
| DeJaco | US 6,745,024 | § 102(b) | Teaches wireless modems in portable computers → supplies "mobile device … wireless telecommunications network" |
| Hahn | US 5,973,948 | § 102(b) | Secondary power/converter aspect (⚠️ content not re-verified this run — do not rely on my characterization) |
| Amoni | US 5,884,086 | § 102(b) (also cited on Dougherty's face) | Battery-charging/docking power circuitry; used for the auxiliary-connector and battery claims |
| Casebolt | US 6,625,790 | § 102(b) | USB signaling/power |
| Kerai | US 6,531,845 | § 102(b) | Logic detectors on the USB data lines |
| Gabehart | US 6,130,518, "Method and apparatus for charging a battery" | § 102(b) — was the examiner's own rejection ('111 file history; discussed at Gabehart 2:25–3:20, Fig. 2) | Portable device chargeable from either integral power on VBus node 218 or an external non‑USB source (EXT B+) node 220; data bus 204 meets USB 1.1; current limited to different values (500 mA external / 100 mA integral) |
| Morita | Japanese published application (charger 110 with USB hub function) | printed publication (⚠️ exact pub. date not re-verified) | USB charger w/ USB ports 20/21/24, power-supply cable 22 to an "outlet," charging control unit 23, USB hub control unit 27 |
| Matsumoto / Yang | cited in later reexams of the family | — | Matsumoto: USB device with a "discriminating means" distinguishing PC vs wall adapter (extended SE0 ≠ enumeration) |
4. Ground A — Dougherty in view of Shiga, DeJaco, Hahn, and USB 2.0 (broadest; attacks independent claims 1, 17, 18)
This is the combination petitioner LG ran in IPR2018-00495 (Grounds 1–3: claims 1–3, 6, 8, 16, 17 over Dougherty+DeJaco+Hahn+Shiga; claims 12, 14 +Amoni; claims 7, 18 +USB 2.0).
Mapping:
- Plug unit / power converter / USB connector ← Dougherty (dock's 18 V supply → voltage-ramp logic → USB connector 236; "power rails of the USB interface").
- "Not a USB host or hub" identification ← Dougherty's own handshaking (dock ramps a voltage onto the power rail to identify itself to the laptop) as modified by Shiga, which supplies the mechanism: assert SE1 on D+/D−, a state Shiga itself labels non-standard and safe for concurrent USB use.
- USB 2.0 supplies the hard-wired voltage-to-data-line structure for claim 7 (pull-up Rp per Figs. 7‑20/7‑21) and the SE0/SE1 framework.
- DeJaco converts Dougherty's laptop into the claimed "mobile device," and Hahn the converter detail.
Motivation (KSR-grounded):
- Same field, same problem: both references address supplying power/data over USB and identifying the attached device without full protocol handshaking. Dougherty explicitly complains about the "series of USB handshaking protocols" and seeks to reduce "time and complexity to couple the laptop to the docking station" (Dougherty 2:49–51, 5:39–52). Shiga's non-standard-but-safe SE1 signal is the natural, predictable substitute.
- Finite number of predictable options: once you want an out-of-band identity signal on a 4-wire USB link, the candidate states are SE0, SE1, J, K, and their pulse sequences. Shiga teaches SE1 for exactly this peripheral-signaling purpose.
- Art-recognized advantage: Shiga's signal works while the host OS/USB controller is off (Shiga 5:66–6:3) — precisely Dougherty's dead-battery/dead-laptop scenario.
- Dougherty already exceeds USB current limits (2.5 A vs 500 mA), so the "not limited by the USB specification" purpose is met by the base reference itself.
5. Ground B — Morita in view of the knowledge of a POSITA and the SE1 references (Kerai, Shiga, Casebolt, Zyskowski, Cypress)
This is the TCT Mobile theory (IPR2021-00395, and the parallel '550 petition IPR2021-00410). Petitioner's expert (Dr. Baker) mapped:
- Morita's charger 110 as the claimed adapter; power-supply cable 22 ("connected to an outlet") as the plug unit; charging control unit 23 as the power converter; USB port 21 as the USB connector.
- The identification subsystem as Morita's USB hub control unit 27 / USB port 21 driven to an SE1 state — a "natural and obvious selection among the finite options of the USB interface."
Motivation: (i) faster charging — exceeding the 500 mA limit is desirable, and Morita's own provisional-family art (the '021 application) admits "high-power" hubs delivered 700–800 mA; (ii) SE1 is abnormal, hence unambiguous, and Shiga confirms it does not disturb USB traffic.
Under this theory, claims 1–14 and 16–18 were all challenged.
6. Ground C — Gabehart in view of Shiga / Matsumoto / USB 2.0 (the examiner's art, re-armed)
Gabehart alone was rejected and then withdrawn during prosecution. The applicant's winning argument was narrow: Gabehart "assumes an existing connection to a databus" and merely decides whether power is available from EXT B+, so it does not determine whether the connected source is a USB host/hub and hence needs no identification signal.
A revised obviousness case attacks that gap directly by adding a reference that does discriminate source type:
- Matsumoto's "discriminating means" expressly distinguishes "a personal computer or a wall adapter" — i.e., host vs. non-host — using an extended SE0 that is "different than USB enumeration."
- Shiga / USB 2.0 supply the voltage-on-data-line mechanism.
Motivation: Gabehart itself sets different current limits for its external (500 mA) vs. integral (100 mA) source — i.e., it already treats the two sources as different classes. Adding an identification so the device (rather than only the switching logic) knows which class it is attached to is the predictable next step, and it preserves Gabehart's stated benefit of charging from the mains whenever available.
7. Dependent-claim vulnerability map
| Claim | Best art | Strength |
|---|---|---|
| 2, 3 (direct coupling; socket list) | Any wall/car adapter; Gabehart; conventional travel-adapter art | High (near-admitted: spec calls plug unit "conventional") |
| 4, 5 (removable plug adapters) | Conventional travel-adapter art | Moderate (⚠️ no specific reference located this run) |
| 6 (voltage level on data line) | Shiga; USB 2.0 §7.2.1 | High |
| 7 (hard-wired voltage connection) | USB 2.0 Figs. 7‑20/7‑21 (Rp) | High (Board credited this in IPR2018-00495's record) |
| 8 (USB controller providing the voltage) | Cypress enCoReUSB datasheet; Kerai | High |
| 9–11 (switch disconnecting/reconnecting power output) | Dougherty's handshaking/voltage-ramp control (ramps up, then 18 V; can enable/disable); Gabehart's transistor switching | Moderate–High |
| 12, 13, 14 (auxiliary USB connector; data-line coupling; second power output) | Amoni (Ground 2, IPR2018-00495); Morita's third/first USB ports 20/24 | High — Morita literally has multiple USB ports |
| 15 (battery receptacle + charging subsystem) | Gabehart; Amoni; Noguchi-type chargers | High (separate-battery charging is routine) |
| 16 (converter component group) | Dougherty 18 V supply; any AC/DC adapter | High — spec admits these are "known" |
8. The motivation-to-combine backbone (why a POSITA would have done this)
The Board's denials were not about the how (SE1 on data lines was well known) but about the why — the motivation to generate and use an identification signal indicating the source is not a host/hub. Any viable § 103 theory must therefore plead motivation front-and-center:
- Same problem, same field, overlapping disclosures — Dougherty, Morita, Gabehart, Matsumoto all address charging a portable device over USB from a non-host source.
- Express art-recognized need — Dougherty wants to avoid handshake latency; Morita wants charging; the '021 provisional admits higher-current sourcing existed.
- Predictable, finite solution set — SE0/SE1/J/K on two data lines.
- No teaching away — Shiga affirmatively states SE1 can be used "without interfering" with USB, removing the principal counter-argument.
- Reasonable expectation of success — the mechanism is a single resistor or controller-driven pull-up; Dougherty already demonstrates control logic on the VBUS rail.
9. Countervailing evidence I must weigh (and not hide)
- PTAB: IPR2018-00276 (ZTE), IPR2018-00487 (Huawei), IPR2018-00495 (LGE), IPR2021-00395 (TCT Mobile/TCL) were all denied institution. The Board repeatedly found petitioners failed to show a charging-only mode and/or a motivation to generate the identification signal (see the IPR2021-00395/00410 institution/denial discussions, e.g., cmosedu.com/jbaker expert packets).
- § 325(d): the Gabehart/Morita overlap triggered discretionary-denial arguments.
- Prosecution allowability rationale: the examiner accepted that Gabehart — a device always attached to a USB databus — would not suggest determining whether the attached source is or is not a host/hub.
- Net effect: the mechanism claims (6, 7, 8) are highly vulnerable; the purpose limitation in independent claims 1/17/18 is the hard part and has survived four PTAB challenges.
10. Bottom line
- Strongest § 103 case (claims 1, 6–9, 12–14, 16, 17, 18): Dougherty + Shiga + USB 2.0 (+ DeJaco, + Amoni) — Dougherty meets every structural element (plug/converter/USB connector, >500 mA, source identification over the USB rails) and supplies the motivation; Shiga + USB 2.0 supply the data-line voltage mechanism with a positive non-interference teaching.
- Strongest alternative (claims 1–18): Morita + Shiga/Kerai/Casebolt + USB 2.0, with "Morita's hub controller asserts SE1."
- Best answer to the prosecution/Board rationale: add Matsumoto's PC-vs-wall-adapter "discriminating means" to Gabehart or Morita to supply the missing motivation to identify source type — the precise gap that defeated the prior petitions.
- Weakest links: dependent claims 3/5 (specific socket enumerations — no reference located this run) and any claim requiring a switch that disconnects/reconnects power output (9–11), which needs Dougherty's ramp logic to be read as a switch.
Explicit uncertainties:
- I could not re-verify Hahn (US 5,973,948) or Shiga's exact filing/publication dates this run — treat those characterizations as provisional.
- Morita's exact publication date and full text were not independently confirmed.
- The certified claim text post-reexamination 90/014,899 should be confirmed before any validity opinion, given the preamble discrepancies noted in § 0.
- Nothing here constitutes a legal conclusion of invalidity; the four PTAB denials mean a § 103 challenge on this record carries real litigation risk.
Generated 9/30/2026, 10:32:37 AM
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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