Invalidity dossier
US 7911979
Time based access provisioning system and process
Current assignee: CommWorks Solutions, LLC
Added 9/8/2026, 12:00:16 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
Summary — U.S. Patent No. 7,911,979 (US7911979B2)
Note on scope: I searched USPTO/Google Patents records and CAFC 2026 dockets for the literal number 7911979 / 7,911,979. I found no CAFC 2026 docket entry specific to this patent. One search returned a March 9, 2026 Federal Circuit opinion, Implicit, LLC v. Sonos, Inc., but that case concerns U.S. Patent No. 7,391,791 — a different patent number — and is not this patent. I am not conflating the two.
Bibliographic data (from the authoritative patent record)
- Title: Time based access provisioning system and process
- Patent / publication: US7911979B2 (application US12/323,399; pre-grant publication US20090168667A1)
- Inventors: James A. Roskind; John D. Robinson
- Filing date: November 25, 2008 (this application; continuation)
- Priority date: January 13, 2003
- Issue date: March 22, 2011
- Status: Expired — Fee Related; lapsed for failure to pay maintenance fees effective March 22, 2023 (recorded April 24, 2023)
- Continuity: Continuation of US11/673,513 (issued as US7463596B2), which is a continuation of US10/961,959 (issued as US7177285B2), which is a continuation of US10/341,847 (issued as US6891807B2). Related PCT/US2004/000860 (WO2004064305A2).
- Assignee chain (chronological): Inventors → AOL LLC (2009) → Tarquin Consulting Co., LLC (2009, original assignee of record at filing) → Callahan Cellular L.L.C. (2015 merger) → Intellectual Ventures Assets 130 LLC (2019) → CommWorks Solutions, LLC (2020) → Unwired Solutions, Inc./Unwired Broadband, Inc. (2020–2022 corrective assignments/license).
- Current listed assignee (Google Patents, with its standard disclaimer): Unwired Broadband Inc. Caveat: The assignment history is complex and includes a recorded "license" later corrected to an "assignment"; I cannot verify the current owner with high confidence from the search results alone.
Abstract
"A method and apparatus is provided for the time-based provisioning of wireless devices. A network access point monitors operation of wireless devices within a service region. When provisioning logic is activated at the network access point, the access point determines if the tracked parameter (such as power on or the onset of signal transmission) of the wireless device occurs within a designated time interval from the time of the provisioning activation. If the tracked device qualifies, the network access point proceeds with provisioning the device. In one system embodiment, the network access point tracks the power on time of wireless devices. When a wireless device to be authorized is powered on, the provisioning logic at the network access point notes the power on time. The user then activates the provisioning access at the network access point, and the network access point provisions the wireless device if it is recently powered on."
Independent claims — plain-language overview (32 claims total; 4 independent)
- Claim 1 (process): A provisioning process in which provisioning logic tracks an operating parameter of a first device — specifically the device's power-on or the onset of its signal transmission — and, if that tracked event happened within a designated time interval, sends a signal to initiate provisioning of the device onto a network. In short: "qualify the device for network onboarding based on when it powered on or started transmitting."
- Claim 14 (system): The same core concept expressed as a means-plus-function system: means for tracking the power-on or transmission-onset parameter of a first device, and means for sending a signal to initiate network provisioning if the tracked parameter occurs within a selected time interval.
- Claim 19 (network access device): An access point/network access device whose access control logic tracks the first device's power-on indication or onset of signal transmission and sends a signal to initiate network provisioning if the event falls within a designated time interval, together with a transceiver configured to wirelessly communicate with the device.
- Claim 27 (computer-readable medium): A non-transitory processor-readable storage medium storing instructions that cause a network access device to perform the tracking step and the conditional provisioning-initiation step described above.
The dependent claims add typical limitations: IEEE 802.11 or Bluetooth™ device types; denial/repeated power-cycle handling; network types (intranet, LAN, WLAN, WPAN); provisioning content (setup/handshaking/encryption info); MAC-address/device-identifier collection into an access control list; user-input-activated time interval; and reverse-link transmission onset as the tracked parameter.
Patent family / litigation context (from search results)
- The patent family (ID 32711602) has been heavily litigated in district courts, largely by CommWorks Solutions, LLC / its licensee, asserting the family patents (US6891807, US7027465, US7177285, US7463596, US7911979, USRE44904) against wireless chip/device makers (e.g., MediaTek, AsusTek, D-Link, u-blox, Axon) in Texas Eastern/Western, Delaware, California Central, New York Southern, and Virginia Eastern district courts (Unified Patents litigation data via Google Patents).
- One 2025–2026 case (CommWorks Solutions v. U-blox, E.D. Va. 1:25-cv-02504) was intradistrict-transferred to the Norfolk Division on December 31, 2025, with US7911979B2 among seven asserted patents. Per the PatSnap summary, that action describes US7911979 as covering "Wi-Fi Mesh networking multi-hop relay functionality" — though I flag that characterization as a litigant-side description that does not appear verbatim in the patent's own text.
Sources
- https://patents.google.com/patent/US7911979/en
- https://patents.justia.com/patent/7911979
- https://portal.unifiedpatents.com/ (litigation records linked from Google Patents)
- https://www.patsnap.com/fr/resources/blog/litigation/commworks-solutions-v-u-blox-holding-ag-wi-fi-patent-dispute-patsnap/
- CAFC docket search (2026): only near-miss Implicit v. Sonos (U.S. Patent 7,391,791) found; no 2026 CAFC matter for 7,911,979 located.
Uncertainty disclosures: (1) I found no 2026 CAFC docket entry for this specific patent; absence in my search is not proof none exists — check the CAFC docket directly if needed. (2) Current ownership is inferred from assignment records and Google's assignee listing, which it flags as potentially inaccurate. (3) A certificate of correction was issued July 19, 2011, but its content was not reviewed.
Generated 9/8/2026, 12:02:12 PM
Cases on file (3)
Group view →Specific litigation cases in our database that name US patent 7911979. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- CommWorks Solutions, LLC v. Microchip Technology Inc.filed Feb 10, 20267:26-cv-00043W.D. Tex.pending
Defendants: Microchip Technology Inc.
- CommWorks Solutions, LLC v. VTech Holdings Ltd.filed Apr 24, 20252:25-cv-00433E.D. Tex.pending
Defendants: VTech Holdings Ltd.
Other patents asserted: 6891807, 7027465, 7177285, 7463596, RE44904
- CommWorks Solutions, LLC v. Texas Instruments Incorporatedfiled Apr 24, 20252:25-cv-00439E.D. Tex. (Judge Gilstrap)terminated Jul 15, 2025dismissed with prejudice
Defendants: Texas Instruments Incorporated
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search patent litigation databases for cases specifically asserting US 7,911,979.
I've found substantial litigation. Let me gather case-specific details for the docket numbers listed on the patent record.
Bottom line
US 7,911,979 ("Time Based Access Provisioning System and Process") has been extensively litigated — but as part of the CommWorks Solutions, LLC patent family. In essentially every case I could verify, the '979 patent was asserted together with its family siblings — U.S. Pat. Nos. 6,891,807 ('807), 7,027,465 ('465), 7,177,285 ('285), 7,463,596 ('596), and RE44,904 ('904) — and the infringement theory was usually mapped to Wi-Fi Protected Setup (WPS) functionality (and, for '465/'904, Wi-Fi Multimedia/WMM). The Google Patents record for this patent links it to roughly 37 district-court dockets; I was able to individually verify a subset below, and I have flagged the remainder as unconfirmed.
A. Cases I specifically verified as asserting US 7,911,979
| # | Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Status / outcome |
|---|---|---|---|---|---|---|
| 1 | CommWorks Solutions, LLC | RCN Telecom Services, LLC | S.D.N.Y. | 1:20-cv-07534 | 2020 | Complaint expressly asserts "U.S. Patent No. 7,911,979 ('979 Patent), entitled 'Time Based Access Provisioning System and Process.'" (Verified from the complaint PDF.) |
| 2 | CommWorks Solutions, LLC | MediaTek Inc. | E.D. Tex. | 2:24-cv-00701 | 08/27/2024 | Pending (per RPX). '979 asserted with '285/'596/'807/'465/'904; WMM/WPS chips e.g. MT7921, MT7922, MT7628. |
| 3 | CommWorks Solutions, LLC | ASUSTeK Computer Inc. | E.D. Tex. (Judge Rodney Gilstrap) | 2:24-cv-00931 | 11/14/2024 | Pending; RPX "Latest Docket Entry: 04/18/2025." Willfulness alleged based on an April 29, 2020 notice letter. |
| 4 | CommWorks Solutions, LLC | DrayTek Corporation | E.D. Tex. | 2:25-cv-00024 | 01/13/2025 | Pending at last check. Complaint includes "Exhibit C – Evidence of Use Regarding U.S. Patent No. 7,911,979"; asserts at least claim 1; accuses WPS. |
| 5 | CommWorks Solutions, LLC | AVM GmbH / AVM Corp. | E.D. Tex. (Judge Gilstrap) | 2:25-cv-00026 | 01/12–13/2025 | DISMISSED WITHOUT PREJUDICE — order entered 06/19/2025. First Amended Complaint filed 02/06/2025. Complaint included "Exhibit C – Evidence of Use Regarding U.S. Patent No. 7,911,979." |
| 6 | CommWorks Solutions, LLC | VTech Holdings Ltd. | E.D. Tex. | 2:25-cv-00433 | 04/24/2025 | Pending. Complaint attachment "Exhibit C – Evidence of Use Regarding U.S. Patent No. 7,911,979." |
| 7 | CommWorks Solutions, LLC | STMicroelectronics, Inc. | W.D. Tex. | 7:25-cv-00363 | 08/25/2025 | Pending. Complaint attachment "C. Evidence of Use Regarding U.S. Patent No. 7,911,979." |
| 8 | CommWorks Solutions, LLC | Grandstream Networks, Inc. | E.D. Tex. | 2:26-cv-00794 | 09/04 (docket year 2026) | Pending. Complaint "Exhibit C – Claim Chart for US Patent No. 7,911,979." Date flag: the complaint is stamped 09/04 in docket year 2026, which post-dates the "current date" given for this task (April 26, 2026) — see uncertainty note 3. |
| 9 | CommWorks Solutions, LLC | Microchip Technology Inc. | W.D. Tex. | 7:26-cv-00043 | 02/10/2026 | Pending (newest filing I confirmed). Five of the seven asserted patents are in the "Time Based Wireless Access Provisioning" family. |
Sources: https://www.docketalarm.com/cases/New_York_Southern_District_Court/1--20-cv-07534/Commworks_Solutions_LLC_v._RCN_Telecom_Services_LLC/docs/1.pdf · https://litigation.rpxcorp.com/litigation/txedce-[232585](/patent/232585)-commworks-solutions-v-mediatek · https://insight.rpxcorp.com/litigation/txedce-[234240](/patent/234240)-commworks-solutions-v-asustek-computer · https://ai-lab.exparte.com/case/dct/txed/2:25-cv-00024/doc/1 · https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2:25-cv-00026 · https://dockets.justia.com/docket/texas/txedce/2:2025cv00433/[237505](/patent/237505) · https://dockets.justia.com/docket/texas/txwdce/7:2025cv00363/1172860958 · https://cdn.pacermonitor.com/public/case/66648031/CommWorks_Solutions,_LLC_v_Grandstream_Networks,_Inc · https://ai-lab.exparte.com/case/dct/txwd/7:26-cv-00043/doc/analysis/1
B. Additional dockets linked to the '979 patent record that I could not individually verify
The Google Patents litigation panel for US7911979 lists these dockets as "family has litigation" cases (i.e., tied to family ID 32711602). I did not confirm which of them assert the '979 patent specifically versus only other family members — treat as leads requiring direct docket verification:
- E.D. Tex.: 2:20-cv-00158; 2:20-cv-00159; 2:20-cv-00160; 2:23-cv-00510; 4:23-cv-00086; 2:25-cv-00154; 2:25-cv-00252; 2:25-cv-00439; 2:25-cv-01257; 2:26-cv-00088
- S.D.N.Y.: 1:20-cv-07529 (companion to the verified RCN case 1:20-cv-07534)
- D. Del.: 1:21-cv-01323
- N.D. Ala.: 5:23-cv-01327
- C.D. Cal.: 2:23-cv-08048; 2:23-cv-09229; 8:24-cv-02250; 2:25-cv-02998
- W.D. Tex.: 6:21-cv-00368; 6:22-cv-00156; 6:22-cv-00806; 6:22-cv-01268; 6:23-cv-00063; 6:23-cv-00064; 6:23-cv-00065; 6:23-cv-00147; 7:25-cv-00101; 7:25-cv-00395
- E.D. Va.: 2:25-cv-00842; 1:25-cv-02504 (the u-blox action referenced in the earlier summary)
Source for the case list: https://patents.google.com/patent/US7911979/en
C. No CAFC / PTAB matter found for 7,911,979
Consistent with the earlier summary, my searches surfaced no Court of Appeals for the Federal Circuit docket and no PTAB post-grant proceeding keyed to 7,911,979. Note in particular: the March 9, 2026 Federal Circuit opinion Implicit, LLC v. Sonos, Inc. concerns U.S. Pat. No. 7,391,791 — a different number — and must not be conflated with 7,911,979. Newer 2026 filings (e.g., Microchip, Grandstream) appear to be at the district-court pleading stage, so no appeal would exist yet.
Uncertainty disclosures
- Verification depth: Rows 1–9 were confirmed against complaint text, docket summaries, or exhibit captions that name 7,911,979. The §B dockets come from Google Patents' family-level litigation data; I could not confirm each one asserts the '979 patent. Absence of a given case from §A is not evidence it does not involve '979.
- Outcome data is incomplete. Eight of the nine confirmed cases appear pending; only CommWorks v. AVM shows a disposition (voluntary dismissal without prejudice, 06/19/2025). I found no judgment, settlement, license, or appeal outcome for the others. The patent itself is Expired – Fee Related (lapsed for non-payment of maintenance fees effective 2023-03-22), which may affect remedies in the pending suits but does not by itself terminate them.
- Date inconsistency to flag: the task states a current date of April 26, 2026, yet the Grandstream docket (2:26-cv-00794) shows a 09/04/2026 filing and the system context gives 2026-09-13. I have reported the docket literally rather than reconciling the dates.
- Plaintiff/owner nuance: CommWorks Solutions, LLC is the named plaintiff in the verified suits, but the assignment record shows a later license/assignment to Unwired Solutions, Inc. / Unwired Broadband, Inc. (2020–2022 corrective filings). Which entity holds enforceable rights at the time of each suit — and thus standing — is not determinable from the records I retrieved.
- I did not retrieve the July 19, 2011 certificate of correction, so any claim-scope change it made is unaccounted for here.
Generated 9/13/2026, 12:47:47 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: CommWorks Solutions, LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured "no proceedings" default against public records before finalizing.
Let me run more targeted searches on the family and its known litigants.
Proceedings overview
Total AIA trial proceedings on file for US 7,911,979 (app. 12/323,399): 0 — zero IPRs, zero PGRs, zero CBMs. Breakdown by status is therefore: active 0 / claims invalidated 0 / claims sustained 0 / settled 0 / institution denied 0. The bottom line for a defendant is the opposite of the "hardened patent" story: there is no PTAB record at all, so all 32 claims — including independent claims 1, 14, 19, and 27 — are untested at the Board, and no claim has been canceled. Patent owner CommWorks loses no claims to estoppel; conversely, a defendant gets no free ride and must build its own invalidity record (or be the first to file).
Proceedings
None on file — canonical source
The structured "PTAB proceedings on file" block for this patent reports that the USPTO Open Data Portal (ODP) API returns no AIA trial proceedings as of the most recent ingest. I did not find any PTAB proceeding in web search either, and I am not going to manufacture a proceeding number to fill the template. Per the operating instructions for this task, the default when the structured block is empty is "no PTAB activity on file."
Because there is no {PROCEEDING_NUMBER} to populate, the per-proceeding template (type / filed / status / panel / grounds / institution / FWD / settlement / appeal / defensive value) is inapposite for this patent. I am explicitly declining to fill it with speculative entries.
What I searched, and what I found instead
| Query intent | Result |
|---|---|
| IPR / PGR / CBM on US 7,911,979 | No proceeding identified |
| Petitioner-side challenges by Unified Patents (the defensive aggregator active against this family's litigant, CommWorks Solutions, LLC) | No 7911979 IPR located |
| Post-grant challenges on the sibling family members US 6,891,807 / 7,177,285 / 7,463,596 | No IPR located in the results reviewed |
| Federal Circuit appeals from a 7911979 FWD | None — there can be no FWD appeal with no FWD |
Near-miss collision warning — do not conflate these with US 7,911,979. My searches were saturated by other patents whose numbers end in "979," none of which is this patent:
- U.S. 11,044,979 — Dyson hair-styling attachment, subject of SharkNinja's IPR2024-00993 (petition filed 2024-06-07; grounds: obviousness over Saito in view of Lindsey, plus Schepisi/Shoemaker/Nicolas for the dependent claims).
- U.S. 10,652,979 — Lynk Labs LED lighting, subject of IPR2021-01576 (Samsung).
- U.S. 9,989,979 — Team Worldwide air-mattress inflator, PGR affirmed at Team Worldwide Corp. v. Intex Recreation Corp. (Fed. Cir. 2021).
- U.S. 7,391,791 — Implicit, LLC v. Sonos, Inc. (Fed. Cir.). This is the same near-miss flagged in the previously generated Patent Summary section, and the warning stands: 7,391,791 ≠ 7,911,979.
Every one of those is a different patent, a different owner, and different art. None tells you anything about the validity posture of US 7,911,979.
Verification caveat (important). I hit tool-call limits before I could complete the full sweep I would normally run — specifically a direct PTAB E2E / Patent Trial and Appeal Board End-to-End party-and-patent-number lookup, and a direct check of the Unified Patents patent page for US-7911979-B2. My "zero proceedings" conclusion rests on (a) the ODP structured block and (b) the web searches I did complete. Absence in my search is not proof that none exists. If this patent is actually in suit against your client, confirm the zero-count directly before relying on it — see Recommended next steps.
Strategic summary
Claim status. With no PTAB proceeding on file, no claim of US 7,911,979 has been canceled, disclaimed, or held unpatentable by the Board, and no claim has been sustained against a challenge either. The entirety of the claim set is untested: independent claims 1 (process), 14 (means-plus-function system), 19 (network access device), and 27 (non-transitory processor-readable medium), plus all 28 dependent claims. There is no FWD to quote and no disposition to link. The litigation record shows CommWorks asserting the independent claims — in the Central District of California action, the complaint specifically alleges induced infringement of "claims 1, 14, and 19" of the '979 patent (Docket Alarm / CourtListener reproduction of the CommWorks complaint, https://www.docketalarm.com/cases/New_York_Southern_District_Court/1--20-cv-07534/CommWorks_Solutions_LLC_v._RCN_Telecom_Services_LLC/docs/1.pdf). That is the practical attack surface.
Estoppel landscape. 35 U.S.C. § 315(e)(2) estoppel arises only from a petitioner that obtains an instituted IPR that reaches a final written decision. With zero proceedings, no party is estopped from anything. That cuts both ways for a defendant being asserted against today: (i) no prior petitioner has burned any art, so the entire prior-art universe is still available to you in an IPR, a district-court invalidity case, or both; and (ii) if you file first and the Board institutes, you will personally be barred from re-litigating in district court any ground you raised or reasonably could have raised — so the IPR petition has to be drafted as the case you want to live with. Note also that the patent is expired (maintenance-fee lapse recorded 2023-04-24, effective 2023-03-22 per the patent record, on a 2003-01-13 priority date), which typically narrows recovery to pre-expiry infringement but does not by itself bar an IPR — the Board does institute on expired patents where a live controversy remains.
Pattern signals. There is no pattern of serial IPR filings against this patent by any petitioner, and therefore no defensive-aggregator IPR chain to piggyback on. That is somewhat surprising: this family has been asserted very widely — CommWorks Solutions actions across Texas Eastern/Western, Delaware, California Central, New York Southern, and Virginia Eastern against router/modem/chip defendants (Unified Patents litigation data surfaced via Google Patents; the current listed assignee is Unwired Broadband, Inc.). Well-asserted patents usually attract IPRs eventually. On the record I can see, this one has not. Treat that as a lead to verify, not as a settled fact.
Recommended next steps
Confirm the zero-count directly, before relying on it. The two authoritative lookups are:
- PTAB E2E / PTAB Center patent-number search (https://ptacts.uspto.gov/) — search by patent number 7911979 and by application 12/323,399;
- Unified Patents' patent page (https://portal.unifiedpatents.com/patents/patent/US-7911979-B2) — its records were the ones cited in the Google Patents litigation block.
Also pull the full prosecution file via USPTO PatentCenter for the 2011-07-19 certificate of correction (a certificate of correction was issued on this patent; its content was not reviewed in the previously generated sections and it could affect claim text — for example, claim 19 as printed contains the apparent typographic defect "designated time interval: and"). If claim language was corrected, cite the corrected text.
If you are a defendant and are considering an IPR: there is no FWD to link to and no claim to argue is already dead. Build the petition from scratch. Because the patent expired, frame the controversy carefully (ongoing pre-expiry damages exposure under the six-year lookback running to the 2023 expiry), and expect the Board to weigh whether a trial on an expired patent still has utility. If you file and are instituted, § 315(e)(2) estoppel attaches on institution-to-FWD terms, so include every ground you may ever want.
Check the siblings, not just this patent. The asserted family includes US 6,891,807, US 7,177,285, US 7,463,596, and US RE44,904 (a reissue of US 7,027,465) — all in the same priority chain (US 10/341,847, filed 2003-01-13). A PTAB win on a sibling does not cancel claims of '979, and vice versa, but sibling FWDs are the best available proxy for what the Board thinks of this specification and this claim family. I did not locate IPRs on the siblings either, but I could not finish that sweep.
If no PTAB activity exists, say so plainly in any opinion you write — and treat the absence as a signal, not a shield. It means the invalidity case is unbuilt, untested, and entirely yours to make. It also means the patent owner cannot point to any Board decision validating these claims, which is itself a useful fact in negotiation: the claims carry no PTAB provenance in either direction.
Uncertainty disclosures: (1) My searches were truncated by tool-call limits before a definitive PTAB E2E lookup; the "zero proceedings" result derives from the ODP structured block plus completed web searches, not from an exhaustive manual E2E review. (2) I found no PTAB proceeding, no FWD, and no CAFC appeal for US 7,911,979; I found no proceeding for the sibling family members either, but that search was incomplete. (3) The content of the 2011-07-19 certificate of correction on this patent was not reviewed. (4) The current owner of record is contested in the assignment chain (a recorded license later corrected to an assignment); that affects standing and who defends an IPR but not the validity posture.
Generated 9/13/2026, 12:48:01 AM
Ownership chain (8)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2009-03-12 · reel 022388/0116 · Assignment
2009-09-17 · recorded 2009-10-15 · reel 023379/0103 · Assignment
2015-08-27 · recorded 2015-12-29 · reel 037396/0647 · Merger
Tarquin Consulting Co., LLCCallahan Cellular L.L.C.
internal reorg
2019-10-30 · recorded 2019-10-31 · reel 050900/0904 · Assignment
Callahan Cellular L.L.C.Intellectual Ventures Assets 130 LLC
transfer-to-asserter
2019-11-15 · recorded 2020-01-03 · reel 051463/0026 · Assignment
Intellectual Ventures Assets 130 LLCCommWorks Solutions, LLC
transfer-to-asserter
2020-09-18 · recorded 2020-11-05 · reel 054443/0958 · License
CommWorks Solutions, LLCUnwired Solutions, Inc.
outbound license
2020-09-18 · recorded 2021-02-04 · reel 056981/0631 · Corrective Assignment
CommWorks Solutions, LLCUnwired Broadband, Inc.
correction only
2020-09-18 · recorded 2022-02-16 · reel 059907/0563 · Corrective Assignment
CommWorks Solutions, LLCUnwired Broadband, Inc.
correction only
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 start by verifying the recorded assignment data for this patent and attempting to surface the correspondent-of-record information, which the patent text itself does not contain.
Assignment Center records aren't surfacing directly through search. Let me try targeted queries on the correspondents and the asserter entities.
Assignment Record Reconstruction — U.S. Patent No. 7,911,979
Data-retrieval note (important): I could not pull the USPTO Assignment Center / assignment.uspto.gov detail pages for this patent number directly — repeated targeted searches for the reel/frame correspondents, registered-agent addresses, and attorney-of-record fields returned zero results, and my search budget was exhausted. Everything below in the "Assignment timeline" is drawn from the recorded assignment data embedded in the authoritative patent record (the "AS" legal events, each with reel/frame). Those fields — reel/frame, conveyance type, assignor, assignee, execution/recording dates — are solid. The correspondent-of-record field is not present in the data I hold, and I will not guess at attorney names. That gap is flagged explicitly where it matters.
Inventors
| Inventor | Employer at filing (determinable?) |
|---|---|
| James A. Roskind | America Online / AOL — with moderate confidence. The parent patent in this family, US 6,891,807, is recorded as assigned to America Online, Incorporated, and Roskind executed an assignment of this very application to AOL LLC (reel 022388/0116). Roskind is publicly associated with Netscape/AOL engineering. |
| John D. Robinson | Not determinable with confidence. He executed the same AOL LLC assignment (reel 022388/0116), which strongly implies AOL employment at the relevant time, but I found no independent corroboration of his role or employer. |
Unusual patterns: None of the classic red flags.
- The inventors did not appear to depart the original assignee within 12 months of the priority filing (2003-01-13) or the continuation filing (2008-11-25) in any way visible in the assignment record.
- The one timing anomaly worth noting: the inventors' assignment to AOL LLC was executed 2009-02-01 to 2009-03-12 — i.e., roughly six years after the 2003 priority date and after the 2008-11-25 continuation was filed. That looks like a late-executed confirmatory/formalizing assignment, not a fire-sale trigger. I flag it because the sequencing is odd, not because it evidences a departure pattern.
Original assignee
Google Patents lists the Original Assignee of US 7,911,979 as Tarquin Consulting Co., LLC (Delaware). This is misleading if read literally as the originating company:
- The invention originated at America Online, Incorporated — the parent family patent US 6,891,807 lists America Online, Incorporated as assignee, and the inventors assigned this application to AOL LLC in 2009 (reel 022388/0116).
- AOL's primary line of business at all relevant times was consumer internet services / online content and access (dial-up, then broadband content properties such as Netscape, AIM, MapQuest).
- Did AOL ship a product embodying these claims? I found no evidence of a commercial AOL product implementing the claimed "track power-on / signal-onset, then provision within a window" access-provisioning scheme. The claims are directed at WLAN/WPAN access-point provisioning, which was adjacent to — but not AOL's core — business. Mark as not determinable / likely no.
- Current status: AOL was spun off from Time Warner in 2009 (approximately contemporaneous with the AOL → Tarquin transfer), acquired by Verizon in 2015, and its assets passed to Yahoo Inc. after Verizon sold the AOL/Yahoo combination to Apollo Global Management in 2021. I state this at moderate confidence as general corporate history; I could not verify it against SEC filings within this session.
Note a genuine discrepancy worth recording: the patent record shows "2008-11-25 Application filed by Tarquin Consulting Co LLC," yet the inventors were not assigning to AOL until Feb–Mar 2009 and AOL did not convey to Tarquin until 2009-09-17. Either Google's applicant-field derivation is an artifact, or there is a filing-date/chain-of-title sequencing problem. I cannot resolve this from the data I hold.
Assignment timeline
Chronological, by recording date. Dates are given as executed (or effective) / recorded.
2009-02-01 → 2009-03-12 (executed) / recorded 2009-03-12 — Reel 022388/0116
- Conveyance: Assignment
- Assignor: James A. Roskind; John D. Robinson (inventors)
- Assignee: AOL LLC (Virginia)
- Correspondent: not available in the data I hold — could not retrieve.
- Context: Assignment of inventors' rights to the operating company (AOL); recorded late relative to the 2008 continuation filing.
2009-09-17 (effective) / recorded 2009-10-15 — Reel 023379/0103
- Conveyance: Assignment
- Assignor: AOL LLC
- Assignee: Tarquin Consulting Co., LLC (Delaware)
- Correspondent: not available — could not retrieve.
- Context: Transfer out of the operating company into a Delaware holding entity — first step away from an operating business.
2015-08-27 (effective) / recorded 2015-12-29 — Reel 037396/0647
- Conveyance: Merger
- Assignor: Tarquin Consulting Co., LLC
- Assignee: Callahan Cellular L.L.C. (Delaware)
- Correspondent: not available — could not retrieve.
- Context: Internal reorg / merger — Tarquin merged into Callahan Cellular; ownership survives by operation of law.
2019-10-30 (effective) / recorded 2019-10-31 — Reel 050900/0904
- Conveyance: Assignment
- Assignor: Callahan Cellular L.L.C.
- Assignee: Intellectual Ventures Assets 130 LLC (Delaware)
- Correspondent: not available — could not retrieve.
- Context: Transfer to a numbered Intellectual Ventures asset-holding vehicle.
2019-11-15 (effective) / recorded 2020-01-03 — Reel 051463/0026
- Conveyance: Assignment
- Assignor: Intellectual Ventures Assets 130 LLC
- Assignee: CommWorks Solutions, LLC (Georgia)
- Correspondent: not available — could not retrieve.
- Context: Transfer to a litigating entity — 16 days after IV acquired it. This is the asserter hand-off.
2020-09-18 (effective) / recorded 2020-11-05 — Reel 054443/0958
- Conveyance: License (as recorded)
- Assignor: CommWorks Solutions, LLC
- Assignee: Unwired Solutions, Inc. (California)
- Correspondent: not available — could not retrieve.
- Context: Outbound license to a wireless-broadband operator. Note: a later corrective filing re-characterized the nature of this conveyance (see items 7–8).
2020-09-18 (effective) / recorded 2021-02-04 — Reel 056981/0631
- Conveyance: Corrective Assignment — to correct the assignee name previously recorded at reel 054443/0958
- Assignor: CommWorks Solutions, LLC
- Assignee: Unwired Broadband, Inc. (California)
- Correspondent: not available — could not retrieve.
- Context: Correction only (Unwired Solutions → Unwired Broadband). The record text is internally inconsistent, at one point reciting "confirms the license" and elsewhere "confirms the assignment" for the same reel/frame — a real ambiguity in the recorded documents.
2020-09-18 (effective) / recorded 2022-02-16 — Reel 059907/0563
- Conveyance: Corrective Assignment — to correct the nature of conveyance previously recorded at reel 056981/0631
- Assignor: CommWorks Solutions, LLC
- Assignee: Unwired Broadband, Inc. (California)
- Correspondent: not available — could not retrieve.
- Context: Correction only — confirming the conveyance is an assignment, not a license.
Non-assignment legal events (for completeness, no ownership effect): 2011-03-02 grant (STCF); 2011-07-19 certificate of correction (contents not reviewed); 2014-08-25 and 2018-08-21 maintenance-fee payments; 2022-11-07 fee reminder; 2023-04-24 lapse for failure to pay maintenance fees (effective 2023-03-22); 2023-05-16 lapsed.
Timeline diagram
timeline
title Ownership of US 7911979
2003 : Priority date from parent filing
2008 : Continuation application filed
2009 : Inventors assign to AOL LLC
: AOL assigns to Tarquin Consulting
2011 : Patent issues
: Certificate of correction recorded
2015 : Tarquin merges into Callahan Cellular
2019 : Callahan assigns to IV Assets 130
: IV Assets 130 assigns to CommWorks
2020 : License recorded to Unwired Solutions
2021 : Corrective assignment to Unwired Broadband
2022 : Corrective assignment of conveyance type
2023 : Patent lapses for fee nonpayment
NPE / troll-pattern signals
Shell-entity transfer — PRESENT. Concrete support: reel 023379/0103 (AOL LLC → Tarquin Consulting Co., LLC, Delaware, eff. 2009-09-17) and reel 050900/0904 (Callahan Cellular L.L.C. → Intellectual Ventures Assets 130 LLC, Delaware, eff. 2019-10-30). "Intellectual Ventures Assets 130 LLC" is a serially numbered asset-holding vehicle by construction, and each of these entities holds the patent only briefly before onward transfer. Limitation on this finding: the definitive shells test — a registered-agent service address and the absence of any product — could not be confirmed because Assignment Center correspondent/address fields were not retrievable this session.
Known asserter in the chain — PRESENT. Two links hit public NPE lists: Intellectual Ventures Assets 130 LLC (an IV asset-holding entity; IV is on the comparison list supplied) at reel 050900/0904, and CommWorks Solutions, LLC at reel 051463/0026, which is an active high-frequency patent plaintiff — confirmed by my search surfacing CommWorks Solutions, LLC v. Digi International Inc., D. Minn. 0:26-cv-03949 (filed 2026). The family-wide assertion campaign against wireless device/chip makers (MediaTek, AsusTek, D-Link, u-blox, Axon) is consistent with that.
Repeat correspondent across the chain — UNKNOWN / not a finding. I could not retrieve the correspondent-of-record for any recording. The patent record I hold does not carry the correspondent field, and my searches for it returned nothing. I am not asserting a repeat-attorney pattern; I simply lack the data. This is the single highest-value gap to close by running the patent number directly through Assignment Center and opening each reel/frame's "correspondent" tab.
Cascading transfers — PRESENT. Reel 050900/0904 (recorded 2019-10-31, eff. 2019-10-30) is followed just 16 days later by reel 051463/0026 (eff. 2019-11-15) — IV vehicle in, litigant out. This sits atop the earlier chain (AOL → Tarquin 2009 → Callahan merger 2015 → IV 2019). Additionally, three separate recordings reuse the identical effective date 2020-09-18 (reels 054443/0958, 056981/0631, 059907/0563), indicating a single restructuring event dressed across multiple corrective filings.
Pre-litigation transfer — UNCLEAR. The CommWorks acquisition (eff. 2019-11-15, recorded 2020-01-03) precedes the earliest litigation entries in the record (E.D. Tex. 2:20-cv-00158 / -00159 / -00160 and S.D.N.Y. 1:20-cv-07529 / -07534), which is suggestive. But I cannot confirm that 7,911,979 specifically was asserted in those 2020 complaints, so I decline to call the 6-month trigger. This is the second key gap: pull the 2020 complaints and confirm which US7911979-family patents were pleaded.
Bankruptcy fire-sale — NOT PRESENT. No bankruptcy docket, trustee sale, or §363 conveyance appears in the record. The AOL → Tarquin transfer (2009) occurred around AOL's spin-off from Time Warner, not a Chapter 7/11. The Tarquin → Callahan event is recorded as a merger (reel 037396/0647), not a distressed sale.
Privateering — UNCLEAR. AOL's 2009 transfer to Tarquin (reel 023379/0103) is consistent with passive monetization, but I found no SEC filing, Patent Progress, or EFF coverage showing AOL directing or benefiting from assertion against competitors. Not calling it.
Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT, Unified, or OIN. It terminates at Unwired Broadband, Inc. (licensee/corrected assignee), while CommWorks Solutions, LLC — an active plaintiff — remains in the chain and is litigating in 2026. The patent has not been neutralized.
Verdict
NPE — high confidence.
Two strong signals are documented on the face of the recorded chain: a known asserter sequence (reel 050900/0904, Callahan → Intellectual Ventures Assets 130 LLC, eff. 2019-10-30, immediately followed by reel 051463/0026, IV Assets 130 → CommWorks Solutions, LLC, eff. 2019-11-15) and cascading transfers through serially-numbered holding entities (AOL → Tarquin, reel 023379/0103; Tarquin → Callahan merger, reel 037396/0647; Callahan → IV, then IV → CommWorks within 16 days). CommWorks's continuing assertion campaign (e.g., D. Minn. 0:26-cv-03949, 2026) confirms the chain ends at a litigating entity, not a defensive aggregator. Caveat tying to the earlier summary: the patent lapsed 2023-03-22 for nonpayment of maintenance fees, so any 2026 assertion can only reach past infringement — which does not affect the NPE characterization but does bound the exposure.
Verification links: search patent number 7911979 at the USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (mirror: https://assignment.uspto.gov/patent/index.html) — and open reels 022388/0116, 023379/0103, 037396/0647, 050900/0904, 051463/0026, 054443/0958, 056981/0631, 059907/0563 to capture the correspondent-of-record fields that I could not retrieve.
Two gaps I recommend closing before relying on the correspondent-pattern analysis: (i) the correspondent/attorney on each reel above, and (ii) the 2020 complaint dockets, to confirm which family patents were first asserted and whether the transfer-to-assertion interval was under six months.
Generated 9/13/2026, 12:48:32 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior-art references cited on the face of US 7,911,979 to ground each one. Let me run targeted searches on the most potentially material references first.
I have strong detail on several references. Let me research the remaining cited references, particularly the ones most likely to bear on the "time-based qualification" concept.
I hit tool-call limits mid-research, so I completed only part of the sweep. Below I mark clearly which descriptions rest on retrieved sources and which rest only on the patent's own characterization of the reference (lower confidence).
Prior-art analysis — US 7,911,979 B2 ("Time based access provisioning system and process")
0. Identification & methodology (read this first)
- Patent confirmed: US 7,911,979 B2, application 12/323,399, filed 2008-11-25, priority 2003-01-13, issued 2011-03-22, inventors Roskind & Robinson. I worked from the authoritative US patent record supplied (USPTO-sourced via Google Patents, https://patents.google.com/patent/US7911979/en). My ability to run a fresh, free-text USPTO PatentCenter/ODP lookup was truncated by tool limits; I did not substitute any similar-number patent (e.g., I did not pull 7,391,791 or 11,044,979).
- The 23 "Patent Citations" on the face of the record are the prior art universe examined below. None was imported from a different patent.
- Critical cutoff: Because '979 is a continuation in a chain reaching back to 2003-01-13, its effective prior-art date is presumptively 2003-01-13 for subject matter carried in the parent. A reference can only anticipate under §102 if its date predates that. This immediately removes two listed "citations" from the §102 analysis (§4 below).
- A certificate of correction issued 2011-07-19 (per the record; content not retrieved — flagged in the earlier sections too). Claim text used here is the text of record; note the apparent typographic defect in claim 19 ("within a designated time interval: and"). If the certificate altered any claim wording, the claim-element mapping below must be re-run against corrected text.
The elements that actually matter
Independent claim 1 requires: (a) provisioning logic; (b) tracking an operating parameter of a first device, the parameter being "a power on of the first device" or "an onset of a signal transmission"; and (c) sending a signal to initiate provisioning of the device with a network if the tracked parameter occurs within a designated time interval. Independent claims 14/19/27 recite the same three concepts (means-plus-function, access-device, and CRM forms, with claim 19/27 adding a transceiver / non-transitory medium). Dependent claims inherit element (c)'s "designated time interval," so no dependent claim can be anticipated by a reference that lacks a time-qualified provisioning trigger.
Governing honesty point: §102 anticipation requires one reference disclosing every element, including the time-interval gating of a device-side power-on/transmission-onset event. On the record I reviewed, no cited reference is a clean, single-reference §102 anticipation of claim 1. The citations are best characterized as a §102/§103 background against which the novelty lies in the time-based qualification itself. I flag the strongest candidate (Kimura) and the gaps.
1. Master table — all 23 cited patent documents
| # | Citation | Pub. / filing (or priority) | Assignee | Brief description | Potential §102 bearing on '979 |
|---|---|---|---|---|---|
| 1 | US 5,461,627 A | 1995-10-24 / prio. 1991-12-24 | Rypinski | Access protocol for a common-channel wireless network | None material; §102(a) art only as general wireless-access background |
| 2 | US 6,418,324 B1 | 2002-07-09 / filed 1995-06-01 | Padcom | Transparent wireless communication between remote device and host | None material to claims 1/14/19/27 |
| 3 | EP 0814623 A2 | 1997-12-29 / prio. 1996-06-18 | AT&T | Mobile decision methodology for accessing multiple wireless data networks | None material |
| 4 | US 6,317,594 B1 | 2001-11-13 / filed 1999-09-21 (prio. 1996-09-27) | Openwave | Detects event triggers/handoff/origination/status activity of the device and sends a message to an external system | Partial: bears on claim 1's "tracking an operating parameter" and arguably "onset of signal transmission," but it triggers data delivery, not access provisioning, and discloses no designated time interval |
| 5 | US 6,167,428 A | 2000-12-26 / prio. 1996-11-29 | Ellis | PC microprocessor firewalls for distributed processing | None material |
| 6 | US 6,359,880 B1 | 2002-03-19 / prio. 1997-03-11 | Curry | Public wireless/cordless internet gateway | None material |
| 7 | US 6,282,183 B1 | 2001-08-28 / filed 1998-06-25 (prio. 1997-06-02) | Motorola (Harris et al.) | Peer devices authorize/bond on proximity; security groups deny coupling based on ownership ID; uses polling intervals (e.g., 5 min) | Moderate: discloses authorizing/denying device coupling and rejection of unauthorized peers and stored-ID lists — bears on claims 4, 8/9 concepts — but keys on proximity/ownership, not on a power-on event within a time window |
| 8 | US 6,058,106 A | 2000-05-02 / prio. 1997-10-20 | Motorola (Cudak et al.) | Centralized peer-to-peer wireless: AP broadcasts block assignments, manages peripheral devices | Weak; access-point coordination background only |
| 9 | EP 0999672 A2 | 2000-05-10 / prio. 1998-11-06 | Nortel | Mapping packet-data functional entities in a communications network | None material |
| 10 | US 6,272,129 B1 | 2001-08-07 / prio. 1999-01-19 | 3Com | Dynamic IP allocation of wireless mobile nodes | None material |
| 11 | US 6,334,056 B1 | 2001-12-25 / prio. 1999-05-28 | Qwest | Secure gateway processing for HDML handheld devices | None material |
| 12 | EP 1081895 A1 / B1 | A1 2001-03-07 (B1 2005-07-27) / 1999-09-03 | Intel | Secure WLAN: authentication server + AP that authenticates a wireless device via an encrypted device key, operator logon, then authorizes wired-network access | Moderate: discloses AP-side authentication/provisioning of a wireless device (claims 1's "provisioning," claims 7/8 device-key exchange) — but is event/credential-triggered, not time-qualified |
| 13 | WO 01/22661 A2 (= US 7,340,612 B1, 2008-03-04) | 2001-03-29 / filed 2000-09-20 (prio. 1999-09-20 EPO) | Thomson Licensing (Straub et al.) | Device registration in a wireless home network: user enters a PIN; central controller generates/returns an authentication key; registration when the device's ID code matches the controller's stored code | Strong on provisioning concepts (claims 6, 7, 8/9): home-network registration + key transfer + ID-code match to a stored code. Gap: qualification is code/PIN-based, not time-interval-based → does not reach claim 1 element (c) |
| 14 | US 6,275,693 B1 | 2001-08-14 / prio. 1999-11-22 | Motorola (Lin, Alfano, Upp) | Provisioning proxy + provisioning center; a provisioning tunnel is established so a mobile device subscribes to services | Moderate on "provisioning," weak on timing: describes provisioning as a network-initiated tunnel with subscription; not a time-windowed power-on qualification |
| 15 | US 6,418,146 B1 | 2002-07-09 / prio. 1999-12-10 | Genesys | Integrated communication-center functionality for WAP devices | None material |
| 16 | EP 1126681 A2 | 2001-08-22 / prio. 2000-01-14 | Sun | Network portal system and methods | None material |
| 17 | JP 2001-308866 A | 2001-11-02 / filed 2000-04-25 | Iwatsu Electric | Access-point selection method / wireless LAN device | Weak; AP-selection background |
| 18 | US 2001/0048744 A1 (= EP 1 161 031) | 2001-12-06 / prio. 2000-06-01 (JP 2000-164519) | Sharp (Kimura) | AP-side authentication: MT that is "turned on or otherwise operated" sends an authentication request; AP starts an "authentication wait timer set at an arbitrary time"; admin must authorize before timeout, else authentication is rejected | Best §102 candidate — discloses the collision of a device power-on/transmission event with a time window that gates provisioning (detailed in §2) |
| 19 | EP 1191763 A2 | 2002-03-27 / prio. 2000-09-22 | Roke Manor Research | Access authentication system for a wireless environment | Moderate on access authentication generally; no power-on/time-window qualification (description below rests on the patent's own characterization — full text not retrieved) |
| 20 | EP 1225778 A2 | 2002-07-24 / prio. 2000-12-29 | Nokia | Wireless repeater using call-originator identification | None material |
| 21 | US 2003/0152235 A1 | 2003-08-14 / prio. 2002-02-14 | Cohen | Security-key distribution using key-rollover strategies for wireless networks | Qualifies as §102(e) (effective filing 2002-02-14, before '979 priority). Bears on key-material provisioning (claim 7), not the time-qualified trigger |
| 22 | US 6,891,807 B2 | 2005-05-10 / prio. 2003-01-13 | America Online (Roskind & Robinson) | "Time based wireless access provisioning" | NOT prior art — same family / same inventors / same priority (§4) |
| 23 | US 7,274,931 B2 | 2007-09-25 / prio. 2004-02-23 | Harris (Arlene J.) | Enhancing provisioning & functionality of wireless instruments | NOT prior art by date — post-dates the 2003-01-13 priority (§4) |
2. The strongest §102 references, analyzed element-by-element
A. Kimura — US 2001/0048744 A1 / EP 1 161 031 (Sharp Technical / Kimura, pub. 2001-12-06) — closest reference
Sources: https://patents.google.com/patent/US20010048744A1/en · https://uspto.report/patent/app/20010048744 · https://patentimages.storage.googleapis.com/fd/9b/3d/07433280dcae9b/EP1161031A3.pdf
What it discloses (verbatim material from the retrieved text):
- The mobile station "MT1 is turned on or otherwise operated to send to the access point device 18 an authentication request message" — i.e., a device power-on/transmission onset event is detected at the AP.
- The AP's authentication/association logic "start[s] an authentication wait timer set at an arbitrary time" and enters "a wait for authentication input."
- The administrator then "input[s] an authentication-authorizing input … before the timeout of the authentication wait timer," whereupon the AP "send[s] an authentication response message … indicating the authorized authentication to the mobile station."
- If the timer times out, authentication is rejected automatically — the device is denied association.
Claim mapping:
- Claim 1(a) "provisioning logic" → AP authentication/association processing means (Fig. 1, ref. 13). ✔
- Claim 1(b) "tracking … power on / onset of signal transmission" → detection of the MT's power-on-triggered authentication request. ✔ (arguable; the tracking is of the request arrival, not an independent power-on timestamp)
- Claim 1(c) "send a signal to initiate provisioning … if the tracked parameter occurs within a designated time interval" → the "authentication wait timer" window gating authorization, then the association response. Partly ✔ — key gap: Kimura's timer measures the administrator's response latency, whereas '979 requires the device's power-on event to fall inside the interval measured relative to activation. A defendant would argue Kimura nonetheless shows the time-boxed AP-driven qualification that is the heart of '979.
- Dependent claims potentially implicated: claim 12/13 (time interval based on user input / predetermined period following user input), claim 18/21/32 (activation input switch), and arguably claim 8 (device identified by SSID in the association request). Claim 4's "deny if outside the interval" concept is present (timeout ⇒ rejection).
Assessment: Kimura is the single most dangerous §102 reference and the natural primary reference for an obviousness attack. Whether it anticipates claim 1 turns on whether the AP's timer is deemed to "track the operating parameter … within a designated time interval." I would not call this a slam-dunk anticipation; I'd call it a very strong §102 argument and an even stronger §103 lead.
B. WO 01/22661 A2 / US 7,340,612 B1 (Thomson Licensing, pub. 2001-03-29)
Sources: https://patentimages.storage.googleapis.com/29/a0/39/5ad435d1258e49/WO2001022661A3.pdf · https://portal.unifiedpatents.com/patents/patent/US-[7340612](/patent/7340612)-B1
- Method of registering a device in a wireless home network with a central controller: the user chooses "install a new network" or "install a device," enters a PIN code, and the new device "receives an authentication key of the network for use in authenticating procedures with the central controller."
- '979's own background characterizes it as sending "an authentication key to a device for storage, when an identification code received from the device corresponds to a code stored in an access point."
Claim mapping: Discloses home-network provisioning with key material (claim 7 "encryption information"; claim 6 "wireless local area network"; claim 8 device identifier; and the access-control-list/stored-code concept of claim 9). Fatal gap: qualification is by matching a code/PIN, with no time interval tied to a power-on/transmission-onset event. It therefore cannot anticipate claim 1 or any claim depending from it. Its value is as a §103 secondary reference showing that home-network device registration and key provisioning were known.
C. Intel — EP 1081895 A1/B1 (pub. 2001-03-07)
Source: https://www.freepatentsonline.com/EP1081895.html · http://data.epo.org/gpi/EP1081895A1-Secure-wireless-local-area-network.html
- Secure WLAN with an authentication server servicing multiple APs; the AP transmits an authentication message including an access-point key, the wireless device returns an encrypted message including a device key + operator logon/password, and the AP authorizes wired-network access.
Claim mapping: Discloses AP-mediated provisioning of a wireless device based on a device identifier/key (claims 1/7/8 concepts, claim 20 access control). Again no time-window power-on qualification. Not an anticipation of claim 1.
D. Openwave — US 6,317,594 B1 (pub. 2001-11-13)
Source: https://patents.google.com/patent/US6317594 · https://insight.rpxcorp.com/patent/[US6317594B1](/patent/US6317594B1)
- The wireless network "detects trigger events related to communications with wireless subscribers" — handoff, origination, status, registration, or "other activity by the wireless subscriber" — and sends a message to an external system.
Claim mapping: Bears only on claim 1's "tracking an operating parameter" / "onset of signal transmission." It is not access provisioning and has no designated time interval; the tracked event drives content delivery, not network admission. Not an anticipation.
E. Motorola — US 6,282,183 B1 (pub. 2001-08-28)
Source: https://patentimages.storage.googleapis.com/ad/f2/9d/a25d50a86491a7/US6282183.pdf · https://FreePatentsOnline.com/[6282183](/patent/6282183).html
- Peer devices that come into proximity detect each other and "bond"; devices "can selectively bond to other devices in proximity while rejecting other peer devices based on their unique ownership identification code"; security-group programming uses polling intervals (e.g., five minutes) and can disable a device / raise an alarm when a member is missing or an unexpected device is present.
Claim mapping: Discloses authorize/deny logic and stored-ID-based admission (claims 4, 8, 9 flavor). But admission keys on proximity + ownership ID + polling, not on a power-on event falling within a designated interval. Not an anticipation of claim 1.
3. Remaining cited references (brief)
Each of the following is, on the record reviewed, background/supporting art with no element that reaches the time-qualified, power-on-triggered provisioning of claim 1: US 5,461,627 (Rypinski); US 6,418,324 (Padcom); EP 0814623 (AT&T); US 6,167,428 (Ellis); US 6,359,880 (Curry); US 6,058,106 (Motorola, Cudak — AP coordination); EP 0999672 (Nortel); US 6,272,129 (3Com); US 6,334,056 (Qwest); US 6,275,693 (Motorola, Lin — bearer-independent provisioning tunnel; provisioning concept only); US 6,418,146 (Genesys); EP 1126681 (Sun); JP 2001-308866 (Iwatsu); EP 1191763 (Roke Manor — wireless access authentication; content not retrieved, description rests on the '979 background characterization); EP 1225778 (Nokia); US 2003/0152235 (Cohen — §102(e) art for key-rollover provisioning; bears on claim 7, not the timed trigger).
Non-patent literature cited (secondary, §102(a) "printed publications"): the record lists 19 NPL items, notably Candolin, Security Issues for Wearable Computing and Bluetooth Technology (Helsinki Univ. of Technology) — relied on in '979's own background for Bluetooth security — and Aziz & Diffie, Privacy and Authentication for Wireless Local Area Networks (Sun Microsystems, 1993), plus assorted IEEE/ACM wireless-home-network papers (Fujieda, Gumalla, Lilakiatsakun, Saito, Shepherd) and two Microsoft "Wireless Provisioning Services" items (Dec. 2003). These are general secure-WLAN/Bluetooth/home-network art and do not supply the time-window power-on trigger. I did not retrieve full text of the NPL and flag that.
4. Two cited documents that are NOT prior art — flag explicitly
- US 6,891,807 B2 (America Online; Roskind & Robinson; prio. 2003-01-13) — same family. '979 is a direct continuation descendant of '807 through 11/673,513 → 10/961,959 → 10/341,847 ('807). Same inventors, same priority, same specification (see the record's continuity data: https://patents.google.com/patent/US7911979/en). A family member claiming the same priority cannot be §102 prior art against '979. It appears in the citation list only as the parent/grandparent. Do not treat it as art.
- US 7,274,931 B2 (Harris; prio. 2004-02-23). Its effective date post-dates '979's 2003-01-13 priority. It therefore supplies no §102(a)/(b) art, and it does not qualify under §102(e) (its filing is later). It is not usable as anticipating art. (Low-confidence caveat: I did not retrieve its prosecution history to confirm there is no earlier, unlisted provisional — my statement is based on the record's stated dates.)
(Note: US 2003/0152235 (Cohen) is the mirror-image case — published 2003-08-14, after the priority date, but with a 2002-02-14 priority, so it is §102(e) art. Don't confuse the two.)
5. Bottom line on novelty/§102
- No single cited reference discloses all elements of claim 1 (and hence of claims 14, 19, 27, or any dependent claim), because none combines (i) tracking a device-side power-on/transmission-onset event with (ii) an AP-side designated time interval that gates (iii) provisioning/admission.
- Closest art: Sharp/Kimura US 2001/0048744 / EP 1 161 031 (device power-on → AP authentication request → authentication wait timer → authorize-or-timeout; denial on timeout). This is the reference to lead with, and it is far more naturally an obviousness (§103) primary reference than a standalone §102 anticipation, given the "timer measures the admin's response vs. the device's power-on" distinction.
- Strong §103 secondary references: Thomson WO 01/22661/US 7,340,612 (home-network device registration + authentication-key provisioning), Intel EP 1081895 (AP-mediated device-key authentication), Motorola US 6,282,183 (authorize/deny device bonding, stored IDs) and US 6,275,693 (provisioning tunnel), Openwave US 6,317,594 (detecting device activity on the network), and Cohen US 2003/0152235 (key-rollover key provisioning).
- Practical consequence for the litigation already on file (CommWorks family suits mapped to WPS functionality, per the earlier sections): a validity attack should be built around Kimura as primary, with Thomson/Intel/Motorola as the "these steps were each known" combination references, not around a single anticipatory reference — because, on this record, none exists.
Uncertainty disclosures
- Search truncation. Tool-call limits stopped me before I could pull full text for US 6,058,106, US 6,275,693, EP 1191763, and the 19 NPL items; their descriptions rely on the '979 record's own characterizations plus general knowledge and are lower confidence. I did not complete a fresh USPTO PatentCenter/full-text run; the citation set comes from the authoritative record supplied.
- No fabrication of §102 conclusions. Where I write "potentially" or "bears on," I mean the reference touches a claim element, not that it anticipates the claim. Anticipation of any dependent claim requires all elements of its independent claim first; several references above disclose only peripheral elements.
- Certificate of correction (2011-07-19) not retrieved. If it modified claim text (e.g., the apparent claim-19 typo), the mapping in §2 must be re-run. Flagged in the earlier sections as well.
- Dates reported literally. Priority/filing/publication dates are as they appear in the record; e.g., US 7,274,931's 2004-02-23 date is the basis for excluding it as art, and I did not independently verify it.
- Sibling-family caution (consistent with earlier sections). US 6,891,807, 7,177,285, 7,463,596 and RE44,904 share the '979 specification; they are not prior art to '979 and must not be cited as such.
Sources: https://patents.google.com/patent/US7911979/en · https://patents.google.com/patent/US20010048744A1/en · https://uspto.report/patent/app/20010048744 · https://patentimages.storage.googleapis.com/fd/9b/3d/07433280dcae9b/EP1161031A3.pdf · https://patentimages.storage.googleapis.com/29/a0/39/5ad435d1258e49/WO2001022661A3.pdf · https://portal.unifiedpatents.com/patents/patent/US-7340612-B1 · https://www.freepatentsonline.com/EP1081895.html · https://patents.google.com/patent/US6317594 · https://insight.rpxcorp.com/patent/US6317594B1 · https://patentimages.storage.googleapis.com/ad/f2/9d/a25d50a86491a7/US6282183.pdf · https://FreePatentsOnline.com/6282183.html
Generated 9/13/2026, 12:49:05 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll verify the teachings of the key prior-art references cited on the patent's face before mapping them to the claims.
Let me verify two more cited references and the Bluetooth pairing-window teaching that the patent's own background acknowledges.
Obviousness Analysis — U.S. Patent No. 7,911,979 under 35 U.S.C. § 103
Note on scope: This section builds on the prior sections (Patent Summary, Litigation Summary, PTAB Challenges) and does not repeat them. It uses the prior-art references listed on the face of US7911979B2 ("the '979 patent") and analyzes them the way an invalidity contention or an IPR petition would. I verified the teachings of the four most important references by retrieving their text; where I relied only on the patent's own front-page listing or the specification's characterization, I say so.
Flagged inconsistency in a prior section (does not change this analysis). The PTAB section states that "in the Central District of California action, the complaint specifically alleges induced infringement of 'claims 1, 14, and 19' of the '979 patent," but the only citation given for that proposition is the S.D.N.Y. docket (1:20‑cv‑07534, CommWorks v. RCN), not a C.D. Cal. docket. I could not resolve which case contains the "claims 1, 14, and 19" allegation. I therefore treat "independent claims 1, 14, 19 (and by extension 27) are the asserted claims" as a lead to verify, not a settled fact — but it is the natural reading of the claim set in any event, since all four independent claims carry the same core limitation.
1. Legal frame and the critical date
The '979 patent has an earliest effective filing date of January 13, 2003 (US 10/341,847), and the application at issue (US 12/323,399) was filed November 25, 2008. Because it was filed before March 16, 2013, pre‑AIA § 102/§ 103 govern. For the claims to be invalid over printed publications, the art must either:
- predate January 13, 2002 (pre‑AIA § 102(b), measured to the earliest U.S. filing to which benefit is claimed), or
- predate January 13, 2003 (§ 102(a), or § 102(e) measured to a U.S. filing date).
1.1 A material screening point: part of the cited "prior art" is not prior art
Several items the examiner listed on the '979 face post-date the January 13, 2003 critical date and therefore cannot support either anticipation or obviousness against claims entitled to that date:
| Listed reference | Date on the record | Status vs. Jan. 13, 2003 |
|---|---|---|
| Fried, "HP Spotlights Mobile Gear," CNET | Oct. 13, 2003 | Not prior art |
| "Microsoft Announces Wireless Provisioning Services," GeekZone | Dec. 10, 2003 | Not prior art |
| "Wireless Provisioning Services Overview," The Cable Guy | Dec. 2003 | Not prior art |
| Luo et al., "Self‑Securing Ad Hoc Wireless Networks," UCLA | Jun. 13, 2003 | Not prior art — and notably cited in the '979 specification's own Background |
| Sony Ericsson HBH‑65 User Manual, Pub. LZT 1086746 R1A | Aug. 2003 | Not prior art |
| US 7,274,931 (Harris) | filed Feb. 23, 2004 | Not prior art (appears on the Google Patents citation table marked "† Cited by third party") |
That is six listed items — including two Microsoft documents that sound facially on point ("Wireless Provisioning Services") — that a defendant must not rely on. A petition or contention built on them fails at the threshold. Confirming these dates against the actual publications (not just the Google Patents table) is a required first step; I verified US 7,274,931's 2004‑02‑23 priority from its Google Patents record, and took the others from the patent front page.
Two more items fall in the narrow § 102(a)-only band (published after Jan. 13, 2002 but before Jan. 13, 2003) and may not be used as § 102(b) art:
- EP 1,225,778 A2 (Nokia) — published Jul. 24, 2002 → § 102(a) only.
- Cypher, "Painting Your Home Blue [Bluetooth]", Proc. 2002 IEEE 4th Int'l Workshop on Networked Appliances — Jan. 15–16, 2002 → § 102(a) only.
And one qualifies only as § 102(e) art (published Aug. 14, 2003, but filed Feb. 14, 2002):
- US 2003/0152235 A1 (Cohen) — § 102(e) art as of Feb. 14, 2002.
Everything else on the face of the patent is cleanly available § 102(b) art, including all four of the references that matter most.
2. The claims to be invalidated
The four independent claims are functionally identical in substance (process, means‑plus‑function system, network access device, and CRM), and each reduces to three limitations:
- Provisioning logic that tracks an operating parameter of a first device;
- where the parameter is expressly limited to (a) power‑on of the device, or (b) onset of a signal transmission of the device; and
- sending a signal to initiate provisioning of that device with a network if the tracked operating parameter occurs within a designated time interval.
Claim 19 adds a transceiver; claim 20 adds an access control list; claim 21 adds an input that marks the beginning of the interval; claim 27 adds "non‑transitory processor‑readable" framing; claim 32 adds an input switch.
Claim‑construction note carried forward from the prior sections: claim 19 as printed contains the apparent typographic defect "designated time interval: and," and a certificate of correction issued July 19, 2011 whose content has not been reviewed. If that certificate amended any claim text, the corrected text controls. This matters because the entire analysis below turns on the word "within" in "occurs within a designated time interval." See § 8.2.
3. The core reference: Kimura, US 2001/0048744 A1 (published Dec. 6, 2001; priority Jun. 1, 2000) — § 102(b)
This is the single most dangerous reference, and it is the primary reference for every combination below. Kimura's corresponding EP publication, EP 1,161,031 A2, published Dec. 5, 2001 — also § 102(b) art. Verified text (Google Patents and FreePatentsOnline, https://patents.google.com/patent/US20010048744A1/en and https://www.freepatentsonline.com/y2001/0048744.html):
- Kimura's access point device 18 comprises "radio communication processing means 12, an antenna 19," "network interface means 14," "authentication/association processing means 13," "authentication request display means 16 (notification means)," and "authentication input means 15 (input means)... accepting button or other physical human inputs."
- The device's own words for the trigger event: "The mobile station MT1 is turned on or otherwise operated to send to the access point device 18 an authentication request message 1 for initiating the authentication procedure."
- The AP's response is a timed authorization window: "the authentication/association processing means 13 start an authentication wait timer set at an arbitrary time (step 31), entering a wait for authentication input (step S32)"; and "if receive a notification... of an authentication‑authorizing input made by the network‑administering user... before the timeout of the authentication wait timer, send an authentication response message 2 indicating the authorized authentication to the mobile station MT1."
- Automatic denial outside the window: "when the authentication wait timer goes time‑out during the authentication input wait (step S32), the authentication/association processing means 13 send the authentication response message 2 that indicates the authentication rejection."
- The interval is user‑selectable: "the arbitrary time set the authentication wait timer is set at can be arbitrarily determined by the network‑administering user, as a value appropriate in terms of the time that is required from the network‑administering user recognizing the presence of an authentication‑requesting mobile station... to the user inputting an authorization."
- MAC/identifier + access control: the AP "identify the mobile station MT1 by the SSID (Service Set Identifier) in the association request message, and determine whether or not to authorize the association in accordance with a predetermined association authorization rule."
- Encryption/keying: the entire Shared Key Authentication exchange (WEP/RC4 challenge–response, Shared Secret Data, Initialization Vector) is described.
- Standards: "the association procedure defined in IEEE 802.11."
3.1 Mapping Kimura to independent claim 1
| Claim 1 limitation | Kimura disclosure |
|---|---|
| "provisioning logic" | Authentication/association processing means 13 |
| "tracking... an operating parameter of a first device... an onset of a signal transmission of the first device" | AP detects the mobile station being "turned on or otherwise operated to send... an authentication request message" — i.e., the AP observes the onset of the device's reverse‑link transmission |
| "sending a signal to initiate provisioning of the first device with a network if the tracked operating parameter occurs within a designated time interval" | AP sends "an authentication response message 2 indicating the authorized authentication" only if the user input arrives before the timeout of the "authentication wait timer set at an arbitrary time"; otherwise it sends a rejection. The timer is the "designated time interval," and the AP's signal is what initiates association/provisioning |
Kimura's own stated motivation is the '979 patent's stated problem: rogue devices "hidden physically in the area covered by the access point" getting onto a home or office WLAN "without any physical operations such as wired cable connection."
The honest gap. Kimura anchors its timer to the arrival of the authentication request and requires a user authorization inside the window, whereas the '979 claim arguably contemplates the window being opened by the user input and the device event being the thing tested. That is a difference in anchoring, not in result, and it is the classic subject matter for a § 103 combination rather than a § 102 anticipation. Two paths close it, below.
4. Combination A (my primary theory): Kimura + WO 01/22661 (Thomson), optionally + US 6,317,594
WO 01/22661 A2 (Thomson Licensing), "Method for device registration in a wireless home network," published Mar. 29, 2001 — § 102(b). Verified text: https://patents.google.com/patent/WO2001022661A2/en
- Expressly "perform[ing] automatic installation of home devices."
- Supplies exactly the motive the '979 patent claims as its advance: "For a home environment, a more automatic authentication procedure is desirable. The interface with the user should be as simple as possible."
- Teaches provisioning with key material: a DH‑negotiated Session Secret Key (SSK = HMAC‑MD5(g^xy mod n, 0)), challenge/response authentication, and an "installation phase... giving the authentication key of the network to the new MT" — i.e., the "exchange of key material" the '979 specification describes.
- Teaches identification: "a unique identification code is used within a given network," and the terminal "sends its identifier to the AP, encrypted with the just negotiated SSK."
Optional third reference — US 6,317,594 B1 (Openwave), "System and method for providing data to a wireless device upon detection of activity of the device on a wireless network," issued Nov. 13, 2001, priority Sep. 27, 1996 — § 102(b). Verified: https://patents.google.com/patent/[US6317594B1](/patent/US6317594B1)/en
- Claims a "computer program product" with "means for detecting event triggers in said wireless network, said event triggers being associated with said wireless devices" and "means for creating activity messages related to said wireless devices upon detection of said event triggers."
- Dependent claim 7: "said event triggers comprise messages associated with registration of the wireless device"; claim 8: "origination request messages"; claim 10: the message "indicates whether said wireless device is active on said wireless network."
- This is, almost verbatim, "tracking an operating parameter [power‑on/activity onset] of a first device" at the network side — and, being claimed as a computer program product with means‑plus‑function elements, it also supplies the claim 27 CRM limitation.
- Its event model even addresses the "deny repeated/long‑running activity" concept of claim 4, because events (registration, origination, handoff) recur and are individually detectable.
Why a PHOSITA would combine them. All three are in the same field (wireless LAN / wireless home‑network admission and registration), solve the same problem the '979 patent identifies (onboarding an interface‑poor device without manual MAC transcription), and the references themselves state the motivation: Thomson wants an interface that "should be as simple as possible" for the home; Kimura wants the admin to "see who is making the association before granting authorization"; Openwave wants the network to act on device activity. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP 2143, that is textbook: same field, same problem, predictable combination of known elements, and an express design incentive. Expectation of success is high because Kimura already implemented the button + timer + accept/deny loop in an IEEE 802.11 AP, and Thomson already implemented home‑network key download — the combination is a matter of telling Kimura's timer when the window opens and letting Thomson's installation phase run when it closes affirmatively.
Result. Kimura+Thomson discloses every element of claim 1; Kimura+Thomson+Openwave discloses claim 27 and strengthens the "tracking" element.
5. Combination B (independent, self‑contained): Kimura + US 6,282,183 (Motorola) + US 6,317,594
US 6,282,183 B1 (Harris et al., Motorola), "Method for authorizing couplings between devices in a capability addressable network," filed Jun. 25, 1998, issued Aug. 28, 2001 — § 102(b). Verified: https://patents.google.com/patent/[US6282183B1](/patent/US6282183B1)/en
- Directed to proximity‑based, user‑minimal authorization in a personal‑area / capability‑addressable network (the PAN environment the '979 patent's dependent claims 3/16/23/29 target via Bluetooth).
- Claim 6/claim 11: transmission occurs "when the first electronic device and the second electronic device are within about five meters of each other" — physical/spatial qualification of which devices may couple, the close analogue of temporal qualification.
- Teaches a timer inside the device (claims 12–15: "resetting an internal timer in the first peer," "a timer expired message pending as a result of the internal timer... timing out," and a "ping message... to maintain the established communications link") — i.e., time‑based control of the coupling relationship, including behavior on expiry.
- Teaches bonding driven by user interaction: "COLLECT USER INPUT DATA," "DATA FOR SELECTED APPLIANCE," "PROGRAM APPLIANCE," and "appliance personalization... personalization data 52... into certain nearby appliances" — user actuation as the gate for programming a device.
This reference supplies the second half of the obviousness story: that a PHOSITA in 2003 regarded "which devices may be admitted to a short‑range network" as a matter of qualifying a coupling by an objective, machine‑observable parameter (proximity there, elapsed time here) and doing so with user‑minimal input. Substituting elapsed time since power‑on for distance is the substitution of one known, predictable qualification metric for another to achieve the same result — a KSR "design choice" combination, supported by the patent's own admission that "the time monitoring of power on and/or start of signal transmission" was the kind of "easily monitored parameter" the art needed.
6. Combination C (single‑reference-plus-admitted-art): Kimura alone, in view of the Bluetooth pairing window the patent admits
The '979 specification's Background admits the relevant art:
- It cites Candolin, "Security Issues for Wearable Computing and Bluetooth Technology" (Oct. 23, 2000 — § 102(b)) and describes Bluetooth as "a short‑range wireless cable replacement technology enabling restricted types of ad hoc networks to be formed," whose security attempt "is too weak to be used for anything else than for personal purposes."
- It cites Shephard, "Bluetooth Wireless Technology in the Home," Electronics & Communication Engineering Journal (Oct. 2001 — § 102(b)), and Cypher, "Painting Your Home Blue" (Jan. 2002 — § 102(a)), both of which describe the Bluetooth pairing / discoverable‑mode model, in which a user must deliberately place a device into a limited‑duration, user‑initiated association mode during which the peer accepts it.
- It cites Fujieda (May 2000), Nakagawa (Dec. 1999), Saito (Aug. 2001), Gummalla (Sep. 1999), Lilakiatsakun (Oct. 2001), Murthy (Jan. 1998), Will (Jul. 1999), Zhang (Aug. 2000) and Aziz & Diffie (Jul. 1993) — all (b) art — for the propositions that home wireless networks, their access control, and their security provisioning were exhaustively developed well before 2003.
Argument. A PHOSITA reading Kimura (an AP that authorizes only during a user‑controlled, time‑limited window and auto‑rejects on timeout) in view of the Bluetooth pairing paradigm the specification itself admits (a user‑initiated, time‑limited association window) would arrive at the claimed subject matter without any inventive act. The only thing left is the decision to test the device's power‑on/transmission‑onset timestamp against the window rather than to test the user's approval timestamp against it — a choice between two instrumentalities both already in Kimura's own disclosure (Kimura's AP both "notes" the device's request and runs the "wait timer").
Caveat (stated honestly): I did not retrieve Candolin, Shephard, Cypher, or the Bluetooth specification to quote a pairing‑window disclosure, and Bluetooth's explicit timeout semantics (e.g., limited inquiry/scan durations) require verification against a pre‑Jan. 2002 source. Treat Combination C as the fallback/secondary theory and verify the quoted passages before relying on it in a petition. US 5,461,627 (Rypinski), "Access protocol for a common channel wireless network" (issued Oct. 24, 1995 — § 102(b)) is on the face of the patent but I did not verify its disclosure; an access protocol over a common channel is a plausible additional source of time‑windowed access contention, but I will not assert what it teaches.
7. Dependent‑claim chart
Each row identifies the reference(s) supplying the limitation, all of which qualify as prior art as of the dates in § 1.
| Claim | Limitation | Supporting prior art |
|---|---|---|
| 2, 15, 22, 28 | Device is IEEE 802.11 | Kimura, which performs "the Shared Key Authentication procedure defined in IEEE 802.11" and "the association procedure defined in IEEE 802.11"; EP 1,081,895 A1 (Intel) "Secure Wireless Local Area Network" (pub. Mar. 7, 2001 — § 102(b)), cited on the patent's face and described therein |
| 3, 16, 23, 29 | Device is BLUETOOTH™ | US 6,282,183 (capability‑addressable PAN; ~5‑meter coupling); Candolin, Shephard, Cypher (all cited by the applicant) |
| 4 (deny if repeated or outside interval) | Repeated event, or event before/after the interval | Kimura — automatic rejection on timer expiry, i.e., occurrence outside the window; US 6,317,594 — repeated registration/origination event triggers; US 6,282,183 — internal timer expiry handling and repeated ping maintenance. Also an applicant admission: the '979 specification states the AP "tracks the repeated powering operation, and can deny provisioning access as desired" |
| 5, 6 | Other device already on network; intranet/LAN/WLAN/WPAN | Kimura (mobile stations MT2–MT4 "have already completed the association"); WO 01/22661 (home network of registered devices); US 6,058,106 |
| 7 | Provisioning = setup / handshaking / encryption information | WO 01/22661 — DH negotiation, SSK derivation, challenge/response, "key download phase"; Kimura — WEP Shared Secret Data / IV provisioning |
| 8, 9, 17, 30 | Device identifier; MAC address into an access control list | WO 01/22661 — "unique identification code... used within a given network," MT sends its identifier; Kimura — SSID + "predetermined association authorization rule"; US 6,317,594 — "unique identifier, the mobile identity number (MIN), electronic serial number (ESN) pair... a unique network address per device" |
| 10 | Performed on a network access point | Kimura (access point device 18); EP 1,081,895 |
| 11, 26, 31 | Operating parameter is onset of a reverse link transmission | Kimura — the mobile station "is turned on or otherwise operated to send to the access point device 18 an authentication request message"; US 6,317,594 — "origination request messages" |
| 12, 13, 21, 32 | Interval based on / following user input; input switch enables provisioning | Kimura — "authentication input means 15... accepting button or other physical human inputs"; "authentication wait timer set at an arbitrary time"; the arbitrary time "can be arbitrarily determined by the network‑administering user" |
| 14, 18 | Means‑plus‑function tracking / means for activating the interval | Kimura — authentication/association processing means 13 + authentication input means 15. Under § 112(f), the corresponding structure is Kimura's AP firmware/hardware; the combination is the same as for claim 1 |
| 19, 20 | Network access device with transceiver + ACL | Kimura — radio communication processing means 12 + antenna 19 (transceiver); authorization rule (ACL analogue). WO 01/22661, US 6,282,183 (identifier/beacon address storage) |
| 24, 25 | 802.11 WLAN / WPAN | Kimura (802.11) + US 6,282,183 (personal area network) |
| 27 | Non‑transitory processor‑readable medium | US 6,317,594 claims 17–21 ("computer program product having computer readable medium with computer program logic recorded thereon... means for detecting event triggers... means for creating activity messages") |
8. Anticipated rebuttals, and where the theory is weak
A good opinion has to say where it can lose. Four points:
8.1 "No reference teaches testing the device's power‑on against an interval"
Correct as a literal matter for the verified references. The strongest verified teaching is Kimura's, and Kimura tests the user's approval against the timer, using the device's request as the notification trigger. The combination theory therefore depends on the reversal/re‑anchoring argument (start the window on the button press; test the device timestamp against it), supported by KSR's "a mere change in... the order of steps" and "design choice" rationales and by Kimura's own express statement that the timer duration is an arbitrary administrator‑selected value tied to "the time that is required from the network‑administering user recognizing the presence of an authentication‑requesting mobile station." If the patent owner can show a new or unexpected result flowing from re‑anchoring (e.g., that it enables simultaneous multi‑device onboarding, or that it uniquely defeats a neighbor's long‑running device — which is the '979 specification's stated benefit), a court could find that the re‑anchoring is more than a design choice. Counters: (i) the '979 specification asserts no data, no comparative testing, and no unexpected result — only a conclusory "more than reasonable levels of security"; (ii) the neighbor‑device benefit is inherent in Kimura's timeout‑rejection, because a device that requested authentication long before the window expired is auto‑rejected.
8.2 The certificate of correction
A certificate of correction issued July 19, 2011 and has not been reviewed in any prior section. If it amended the "within a designated time interval" language — or fixed the apparent typo in claim 19 ("designated time interval**:** and") — the analysis must be re‑run against corrected text. This is the single highest‑value document to pull (USPTO PatentCenter, application 12/323,399).
8.3 Teaching away
The closest thing to a teaching away is Kimura's pedagogy that the admin must see the requesting station before granting ("allows the network‑administering user to see who is making the association before granting authorization, instead of the automatic authorization by the access point"). If read as a deliberate preference for per‑device human approval, that cuts against automatism. Counter: Kimura's statement is a preference about how the authorization is conveyed, not a statement that automatic time‑based qualification is inoperable or inferior; and KSR requires that a reference "criticize, discredit, or otherwise discourage" the claimed solution — Kimura does not. Moreover, the '979 patent's own dependent claims 12, 13, 21 and 32 preserve a user input as the interval trigger, i.e., the patent claims a hybrid that retains user actuation — Kimura supplies exactly that input.
8.4 Secondary considerations
The prior sections record no PTAB proceedings and no FWD on this patent or its siblings, so there is no Board validation to point to. I found no evidence of commercial success, licensing‑driven nexus, unexpected results, or industry praise attributable to the time‑window feature (as opposed to the family's general assertion history — and heavy litigation is not a secondary consideration). The patent expired for fee non‑payment effective March 22, 2023 (recorded April 24, 2023), which typically narrows damages but does not defeat an IPR. Preserve the possibility that discovery reveals praise/nexus evidence; nothing in the public record I reviewed supports it.
9. Litigation posture — why this matters and one trap
The prior sections establish that the family has been asserted widely and that the infringement theory in the CommWorks cases is generally mapped to Wi‑Fi Protected Setup (WPS). Do not build an obviousness theory on WPS. WPS is a 2006–2007 standard; it post-dates the Jan. 13, 2003 critical date by years and is not § 102 prior art. WPS may explain why the accused products practice the claim, but it cannot make the claim obvious. Likewise, the 2003‑dated Microsoft "Wireless Provisioning Services" and CNET items in the patent's citation list are unusable (see § 1.1). The entire § 103 case must be built from the pre‑2002 references — which is why Kimura, Thomson, Motorola and Openwave carry the load.
Practical filing note. Because there is no prior IPR and therefore no § 315(e)(2) estoppel on anyone, the full pre‑2002 art universe is available. If a defendant filed on Combination A (Kimura + WO 01/22661, with US 6,317,594 as the CRM/§ 112 support) and were instituted, estoppel would bar later district‑court assertion of any ground it raised or reasonably could have raised — so Combination B and Combination C (and the § 102 anticipation positions on Kimura) should be pleaded in the alternative within a single petition rather than held back. The prior sections flagged this correctly; the claim chart in § 7 is drafted to be petition‑ready in that format.
10. Uncertainty disclosures
- Verified vs. unverified teachings. I retrieved and quoted the actual text of Kimura (US 2001/0048744), WO 01/22661, US 6,282,183 and US 6,317,594. I did not retrieve or quote US 5,461,627 (Rypinski), EP 1,081,895 (Intel), EP 1,191,763, or the Bluetooth NPL items (Candolin, Shephard, Cypher); where those appear above, I have relied on the patent's own front‑page listing, the specification's Background characterization, or the EPO search‑report abstract of EP 1,161,031 — not on independently read text. Any of those statements should be verified before being placed in a filing.
- Dates. The critical‑date screening in § 1.1 is only as reliable as the dates printed on the patent face and the Google Patents tables. Confirm each date against the publication itself; a mis‑dated reference in the "not prior art" bucket would be a self‑inflicted wound.
- Claim text. The July 19, 2011 certificate of correction was not reviewed in any prior section or here. The printed claim 19 contains a facial typographical defect ("designated time interval: and"). Analysis assumes the issued (uncorrected) claim text; corrected text controls if different.
- Which claims are asserted. The prior section's "claims 1, 14, and 19" allegation is attributed to a C.D. Cal. action but cites an S.D.N.Y. docket — unresolved (see the flag at the top), and relevant because the asserted claims define the attack surface. All four independent claims are nonetheless materially identical, so the analysis does not change either way.
- No PTAB/CAFC outcome to cite. Consistent with the prior sections, there is no FWD, no Board claim construction, and no appellate construction of "designated time interval." The construction assumed here (an interval within which the tracked event must fall, including the Kimura‑style wait timer) is my own, and a patent owner would argue for a narrower one requiring the interval to be anchored to the user input — which claim 13 arguably already gives them and which Combination A is designed to meet.
- Tool limit. My reference‑verification sweep was truncated; I was unable to pull full texts for the EP, JP and NPL items. The § 103 theory is strongest on the four verified references and does not depend on the unverified ones.
Generated 9/13/2026, 12:49:31 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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This patent in court (3)
3 tracked lawsuits name US 7911979.