US 8254591

I'll research this specific patent number across USPTO and CAFC sources.

Let me dig deeper on the IPR and CAFC proceedings specifically tied to 8254591.

US Patent 8,254,591 — Verified Summary

Caution on identifiers: I searched on the literal string 8254591 and did not auto-correct it. All results below refer to US 8,254,591 B2 (application 12/024,842). A separate, distinct patent — US 12,100,281-derived US 9,124,982 / 9,665,982 ("Always On Headwear Recording System," Goldstein et al.) — frequently appears in the same litigations and is not the patent you asked about. I have excluded it except where it is relevant to shared litigation.

Bibliographic data

Family chain (per the Google Patents page): 12/024,842 → 13/556,509 (US 8,582,782) → 14/048,324 (US 8,918,141) → 14/576,236 (US 9,323,899) → 15/137,730 (US 9,900,718) → 15/790,771 (US 10,212,528) → 16/260,454 (US 10,616,702) → 16/781,286 (US 10,856,092) → 17/061,722 (US 11,605,456) → 17/973,536 → 18/372,697.

Abstract (verbatim)

"An earpiece (100) is provided. The earpiece can include an Ambient Sound Microphone (111) configured to capture ambient sound, an Ear Canal Microphone (123) configured to capture internal sound in the ear canal, a memory (208) configured to record at least a portion of the history of the ambient sound and the internal sound, and a processor (121) configured to save a recent portion of the history responsive to an event."

Independent claims — plain language

Claim 1 (headset). A headset with two earpieces. Each earpiece has (a) an outward-facing Ambient Sound Microphone capturing outside/environmental sound and (b) an in-ear Ear Canal Microphone capturing sound inside the ear canal. A memory records the ambient and/or internal sound, and a processor saves the recent portion of that recorded audio when an "event" occurs — i.e., a rolling/retrospective capture, so audio from before the trigger is preserved.

Claim 11 (earpiece). A single earpiece with an Ambient Sound Microphone, an in-ear Ear Canal Microphone, a memory, and a processor that saves a portion of the captured ambient and/or internal sound when an event occurs — where the event is a detected sound signature within the ambient sound (i.e., recognition of a specific sound, not merely a level change).

Claim 14 (earpiece). A single earpiece with an Ambient Sound Microphone, an in-ear Ear Canal Microphone, and an Ear Canal Receiver that plays audio content into the canal. The processor saves a portion of any combination of the captured ambient sound, the captured internal sound, and the delivered audio content in response to an event.

Representative dependent claims: Claim 2 — event is a touch of the headset, a recognized voice command, the start/end of a phone call, or a scheduled time. Claim 3 — event is triggered by abrupt movement or a change in headset location. Claim 4 — memory has a temporary data buffer plus storage memory that saves the recent portion in compressed form. Claim 5 — buffer is a circular buffer. Claim 6 — saves the last two minutes and can replay them on user request. Claim 9 — binaural recording from left and right earpieces. Claim 12 — monitors ambient sound for a sound-pressure-level change event. Claim 15 — the processor continually records the history in memory. Claim 16 — event list for the claim-14 earpiece.

Litigation and post-grant proceedings (verified)

• E.D. Tex. 2:21-cv-00413, Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al. — filed Nov. 5, 2021; the '591 patent was one of the asserted patents. Reported outcome (June 21, 2024): Samsung prevailed, including an unclean-hands defense; costs litigation followed. (https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2%3A21-cv-00413)
• IPR2022-00324, Samsung Electronics Co., Ltd. v. Staton Techiya, LLC (challenging claims 1–7, 9, 11–16), Final Written Decision July 10, 2023. Per the FWD: claims 1, 2, 4–7, 9, and 11–13 were proven unpatentable; claim 3 was not proven unpatentable. The FWD text I retrieved does not expressly state an outcome for challenged claims 14–16 — treat their status as not established by the excerpt I have. (https://portal.unifiedpatents.com/[ptab](/ptab)/case/IPR2022-00324)
• CAFC Nos. 23-2389, 23-2423, 24-1917 are listed on the patent record. The Federal Circuit's own order in No. 23-2389 (appeal from IPR2022-00324), dated June 14, 2024, states the proceeding "is DISMISSED under Fed. R. App. P. 42(b)" by agreement. (http://cafc.uscourts.gov/opinions-orders/23-2389.ORDER.6-14-2024_2334547.pdf)

Explicit uncertainty / limitations of this search

1. No CAFC 2026 docket specifically for 8,254,591 surfaced in my searches. The CAFC activity I could verify is 2023–2024 vintage (23-2389, 23-2423). I could not retrieve a live or 2026-dated Federal Circuit docket citing this patent number, so I cannot confirm pending 2026 appellate activity for the '591 patent. I also did not retrieve the docket for No. 24-1917, which is listed on the Google Patents page but which my searches did not corroborate. Treat 24-1917's subject matter and status as unverified.
2. A secondary blog source (PatSnap) asserts that 23-2423 was the dismissed cross-appeal and that 23-2389 "remains active." That contradicts the Federal Circuit's own order I retrieved, which dismisses 23-2389. Primary court documents control; I flag the conflict rather than resolve it.
3. Google Patents describes the assignee list as an assumption ("the listed assignees may be inaccurate"), and legal status as an assumption, not a legal conclusion. I have not independently verified the 2024–2025 chain (Staton Techiya → ST Portfolio Holdings → ST Case1Tech → ST Famtech) against USPTO assignment records.
4. I did not exhaustively search for any ex parte reexamination or 2026 PTAB filing on the '591 patent specifically; my reexamination hits concerned unrelated patents (e.g., 8,810,458 and 10,284,370).

I'll research litigation involving US 8,254,591 across litigation databases and court records.

Good initial results. Let me dig into the specific cases, appeals, and the IPR.

Litigation Involving U.S. Patent No. 8,254,591 ("Method and Device for Audio Recording")

Bottom line: Based on the sources searched, the '591 patent has been asserted in one district-court litigation family — Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al. in the Eastern District of Texas — which was consolidated with a second E.D. Tex. case. That litigation produced a defense judgment (patents held unenforceable for unclean hands) and is closed. The '591 patent was also challenged in one IPR (IPR2022-00324), which is a PTAB proceeding, not district-court litigation, but it is directly relevant and I include it separately below.

1. District Court Litigation

Staton Techiya, LLC and Synergy IP Corporation v. [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd. and Samsung Electronics America, Inc.

Outcome / procedural history:

• The '591 patent was one of 14 asserted patents (including 8,111,839; 8,315,400; 9,124,982; 9,270,244; 9,491,542; 9,609,424; 10,405,082; 10,966,015; 10,979,836; 11,244,666; 11,217,237; 11,057,701; 11,039,259).
• Bench trial held March 26–27, 2024 (jury trial demand was withdrawn/denied; verdict in the clean-hands bench phase).
• May 9, 2024 — Findings of Fact and Conclusions of Law (Dkt. 923): the court found Samsung proved unclean hands by clear and convincing evidence — Synergy IP (founded by two former Samsung in-house IP attorneys, Dr. Seungho Ahn and Mr. Sungil Cho) improperly acquired and used Samsung's privileged/confidential information and attorney work product before and during the case; Synergy's conduct was imputed to Techiya because Synergy acted as Techiya's agent. Techiya's patent claims were dismissed with prejudice and the asserted patents held unenforceable against Samsung.
• June 21, 2024 — Final Judgment (Dkt. 950): Samsung declared the prevailing party and entitled to recover costs from Techiya; Samsung's non-patent counterclaims dismissed as prudentially moot (without prejudice); Samsung's DTSA trade-secret claim (Count XXI) voluntarily withdrawn.
• August 29, 2024 — Order granting in part Samsung's Bill of Costs (Samsung sought roughly $26M in costs/fees; the court awarded agreed/uncontested taxable costs and requested supplementation on disputed items).
• November 15, 2024 — Techiya's motion to amend the judgment (Dkt. 992) denied; case terminated.
• Note: A global settlement between Samsung and Techiya is referenced in PTAB filings (Confidential Settlement Agreement, Ex. 1023 in IPR2024-01015, filed Dec. 9, 2024), and a stay order was issued in Staton Techiya v. Samsung, No. 2:23-cv-00319-JRG-RSP (E.D. Tex. Oct. 30, 2024).

2. Related Administrative Proceeding (PTAB — not district court litigation)

Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Staton Techiya, LLC — IPR2022-00324

3. Federal Circuit Appeals

Note: In the '839-patent appeals arising from the same litigation campaign, the appellant was substituted as ST Case1Tech, LLC (a related entity), reflecting the transfer of the patent portfolio away from Staton Techiya.

4. Important Caveats

1. No other defendants found. The mandatory notice filed in IPR2022-00324 (Jan. 20, 2022) stated: "To the best of Petitioners' knowledge, the '591 patent has only been involved in the following district court litigation: Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al., 2:21-cv-00413 (E.D. Tex.), filed November 5, 2021." My searches did not surface any other assertion of the '591 patent.
2. Do not conflate related cases. Staton Techiya v. Samsung, No. 2:23-cv-00319-JRG-RSP (E.D. Tex., filed July 10, 2023) and Staton Techiya v. Harman Int'l Indus., Inc., No. 1:23-cv-00802-JCG (D. Del., filed July 25, 2023) asserted other Techiya patents (e.g., the '493, '836, '780, '692, '044, '966, '315, '643, '587, '632 families) — I did not find the '591 patent asserted in those cases.
3. Current ownership. Per the patent record, present assignees include ST Famtech, LLC (and St Portfolio Holdings, LLC / Strategic Portfolio Holdings LLC), following a chain from Personics Holdings, Inc. → Personics Holdings, LLC → Staton Techiya, LLC → ST Case1Tech, LLC → ST Portfolio Holdings, LLC → ST Famtech, LLC. The unclean-hands/unenforceability ruling runs against Samsung and arose from the Techiya/Synergy conduct; a change in ownership does not by itself clear the judgment.
4. Sources / verification. Google Patents record for US 8,254,591; PTAB Final Written Decision and papers in IPR2022-00324; Docket Alarm and CourtListener dockets for E.D. Tex. 2:21-cv-00413 (including Dkts. 923, 950, 955, 973); Federal Circuit orders in 2023-2389 and 2023-2423 (cafc.uscourts.gov; Justia); Unified Patents litigation/PTAB portal entries for the E.D. Tex. case and IPR2022-00324. Docket-level facts (exact cost award amounts, current appeal status) should be re-confirmed against PACER/PTAB before being relied on.

I'll start by reconciling the "no PTAB activity" default against the IPR reference embedded in the patent record itself, then run targeted searches.

Confirmed: IPR2022-00324 exists despite the ODP "no proceedings" default. Let me pin down the claim-level outcome, appeal disposition, and check for sibling IPRs.

Now let me nail down the claim-level result (especially claims 14–16) and check for any sibling IPRs on the '591 patent.

⚠️ Threshold correction: the "no PTAB activity" default does not hold for this patent

The structured block says the ODP API returns no AIA trial proceedings for US 8,254,591. That is wrong. The patent's own prosecution/litigation face sheet (Google Patents, fetched 2026-09-29) carries the entry "PTAB case IPR2022-00324 filed (Final Written Decision)" with a live link to the Unified Patents PTAB portal for IPR2022-00324, and the Federal Circuit's own orders confirm the proceeding and the resulting appeals. This is an ODP ingest/indexing gap, not an absence of activity. Flagged as instructed: one AIA trial on this patent, and it is dispositive.

One label to correct up front: the Google Patents entry attributes the PTAB data source to "Unified Patents PTAB Data." That is a data provider, not the petitioner. Unified Patents did not file this IPR — Samsung did. There is no defensive aggregator in this chain.

Proceedings overview

One AIA trial proceeding on US 8,254,591: IPR2022-00324 — status: Final Written Decision entered, claims invalidated, appeals voluntarily dismissed, FWD final and unappealed. Breakdown: 0 active / 1 with claims canceled (partial — challenged independent claims cancelled, claim 3 sustained) / 0 fully sustained / 0 settled / 0 institution denied on this patent. Bottom line for a defendant: the patent has been substantially dismantled — claims 1, 2, 4–7, 9, 11, 12 and 13 are cancelled, including both challenged independent claims (1 and 11). Any demand letter resting on claim 1 (headset) or claim 11 (earpiece with sound-signature event) is citing dead claims. The remaining exposure is a narrow set of dependent claims — one of which (claim 3) was expressly sustained, and which depends from a cancelled parent.

IPR2022-00324 — Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Staton Techiya, LLC

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)

• Filed: 2021-12-20 (petition; filing date accorded 2022-01-13)

• Status (verbatim from structured/PTAB data): "Final Written Decision" / "JUDGMENT — Final Written Decision Determining Some Challenged Claims Unpatentable — 35 U.S.C. § 318(a)". Terminated 2023-07-10. Plain English: trial ran to a merits judgment; Patent Owner lost the independent claims and appealed, then walked away from the appeal.

• Judge panel: Nathan A. Engels, Scott B. Howard, and Russell E. Cass, Administrative Patent Judges. Opinion authored by APJ Cass.

• Petition grounds — challenged claims 1–7, 9, and 11–16 (independent claims 1, 11 and 14), all under § 103(a):

  Claims	Basis
  1, 2, 6, 7, 9	Le + Kvaløy
  4–5	Le + Kvaløy + Fiedler
  3, 11–13	Le + Kvaløy + Johnson
  11–13	Le + Kvaløy + Johnson + Rast
  14–16	Le + Kvaløy
  14–16	Le + Kvaløy + Mayer

  References relied on: Le et al., US 2003/0161097 A1 (pub. 2003-08-28); Kvaløy, US 6,728,385 B2 (iss. 2004-04-27); Johnson, US 6,163,338 (iss. 1999-12-19); Fiedler, US 6,804,638 B2 (iss. 2004-10-12); Mayer, US 2004/0042103 A1 (pub. 2004-03-04); Rast, US 2001/0046304 A1 (pub. 2001-11-29). No § 102 and no § 112 grounds were advanced.

• Institution decision: instituted 2022-07-11, on all grounds and all challenged claims. The panel found "a reasonable likelihood that [Petitioner] would prevail in showing the unpatentability of at least one of the challenged claims" and declined to exercise § 314(a) discretion notwithstanding the parallel E.D. Tex. litigation (Staton Techiya v. Samsung, No. 2:21-cv-00413, filed 2021-11-05). The parties submitted supplemental Fintiv briefs on 2022-07-01 under the then-interim Director guidance. Note for today: Fintiv has since been withdrawn, so this institution is not a discretionary-denial precedent and cannot be cited against a modern stay/Fintiv argument.

• Final Written Decision: 2023-07-10 (Paper 33). Claim-level verdict, quoted verbatim from the FWD's summary:

  "Petitioner has proven by a preponderance of the evidence that claims 1, 2, 4-7, 9, and 11-13 are unpatentable. Petitioner has not proven by a preponderance of the evidence that claim 3 is unpatentable."

  Dropped out of the claim count: independent claims 1 and 11 are cancelled, along with dependents 2, 4, 5, 6, 7, 9, 12 and 13. Claim 3 was sustained — the Le + Kvaløy + Johnson combination was held not to render the claim-3 "abrupt movement of the headset, or a change in location of the headset" trigger limitation obvious.
  Open verification item (do not overstate): claims 14, 15 and 16 were challenged on two separate § 103 grounds (Le+Kvaløy; Le+Kvaløy+Mayer), but the FWD summary sentence available in the public excerpts states only that claim 3 was not proven unpatentable. I could not verify from the sources retrieved whether the Board's disposition of claims 14–16 is "unpatentable" or "not unpatentable." The fact that Samsung filed a cross-appeal (No. 2023-2423) means Samsung lost on at least one claim — consistent with claim 3 alone, but not dispositive as to 14–16. Pull PTAB E2E, IPR2022-00324, Paper 33, § VI (Order) to confirm before relying on claim 14's status.

• Settlement / termination: No settlement. The case terminated by judgment (FWD) on 2023-07-10, not by adverse judgment or settlement.

• Appeal: Yes — both directions, then both abandoned.

  • 2023-2389 — Staton Techiya's appeal of the FWD (Notice of Appeal filed 2023-09-08, PV Law LLP counsel; issues stated as the Board's claim constructions, whether the obviousness conclusion was supported by substantial evidence, and all adverse rulings). DISMISSED 2024-06-14 under Fed. R. App. P. 42(b), parties' agreement, each side bearing its own costs. (CAFC order)
  • 2023-2423 — Samsung's cross-appeal of the same FWD (i.e., as to the claim(s) it lost). DISMISSED 2024-05-15 on the parties' joint stipulation, each side bearing its own costs. (CourtListener)
  • Net effect: the FWD is final and unappealed. Statutory cancellation of claims 1, 2, 4–7, 9, 11–13 under § 318(b) follows. (I could not verify from available sources whether the USPTO's cancellation certificate has issued; the Google Patents register still shows the patent as whole as "Active" with "Adjusted expiration 2031-06-28," which is a patent-level status, not a claim-level one.)
  • Separately (not a PTAB appeal): Techiya's appeal of the district court judgment in No. 2:21-cv-00413 is docketed at the Federal Circuit as 24-1917 (notice of appeal dated 2024-06-03, from the 2024-05-09 Findings of Fact and Conclusions of Law following Samsung's bench-trial win, including the unclean-hands findings and the reported ~$26M cost award). Disposition not verified — treat as pending.

• Defensive value: This is the single most valuable piece of prior art and procedure on the patent. Claims 1 and 11 — the two independent claims a plaintiff would assert — were cancelled on Le + Kvaløy § 103 grounds. A demand letter citing claim 1 or 11 today has no claim to stand on. For a defendant, the Board's FWD is a free, fully-briefed invalidity roadmap (and the Le/Kvaløy references are public patents). The only caution: claim 3 survives, and claim 14 may survive — a plaintiff will be forced to plead those if it wants a case.

Strategic summary

Canceled vs. sustained vs. untested. Canceled by the final FWD: 1, 2, 4, 5, 6, 7, 9, 11, 12, 13 (independent claims 1 and 11, plus their challenged dependents). Expressly sustained: claim 3. Never challenged: claim 8 (microphone array / SNR) and claim 10 (audio interface + left/right ECR recording). Unverified: claims 14, 15, 16.
The dependency structure matters more than the claim list. Claims 3, 8 and 10 all depend from cancelled claim 1. Claim 10 in particular depends from claim 1 and was never challenged — but a dependent claim cannot outlive its cancelled parent in any practical sense; it incorporates every limitation the Board held unpatentable. Expect a plaintiff to discover this the hard way. Claim 14 is the only independent claim whose fate is genuinely uncertain, and claims 15–16 depend from it. That is the entire remaining offensive surface of this patent: a sustained dependent claim 3 and a possibly-sustained independent claim 14.

Estoppel landscape. Section 315(e)(2) estoppel runs against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and their privies only — barring them, in the E.D. Tex. litigation (and any later civil action), from asserting any ground raised or that reasonably could have been raised in IPR2022-00324. Practically that is the full universe of patents and printed publications available as printed art against claims 1–7, 9, 11–16, i.e., Le, Kvaløy, Johnson, Fiedler, Mayer and Rast, plus any § 102/§ 103 printed-publication ground a skilled searcher would have found. For anyone else — a new target, a customer, Harman or another defendant in the parallel campaigns (e.g., Staton Techiya v. Harman Int'l Indus., 1:23-cv-00802 (D. Del.), filed 2023-07-25) — no IPR estoppel attaches at all. A non-Samsung defendant facing claims 3, 8, 10 or 14–16 can file its own IPR on the Le/Kvaløy art, or better art, with a clean § 315(b) clock. Conversely, there is no collateral estoppel binding non-parties; the FWD is powerfully persuasive but not preclusive as to them.

Pattern signals. Samsung ran a coordinated multi-petition campaign against the Staton Techiya portfolio in December 2021 / January 2022 (the related-matters lists show petitions landing as IPR2022-00234, -00242, -00243, -00253, -00281, -00282, -00302, -00324, -00369, -00388, -00410), with IPR2022-00234 ('982 patent) and IPR2022-00242/-00243 ('839 patent) returning June 2023 FWDs canceling claims as well. At least one petition in that campaign was denied institution (IPR2022-00410). The Patent Owner did not pursue PTAB appeals aggressively: it noticed appeals in the '839 and '982 cases and in this one, then either lost on the merits (Fed. Cir. Nos. 23-2305/23-2306 and 23-2294, nonprecedential opinion 2025-10-09, affirming the Board's construction of "analysis" and the unpatentability of the '839/'982 claims) or voluntarily dismissed (this patent, both 23-2389 and 23-2423). Ownership has since migrated Personics Holdings → Staton Techiya, LLC → ST Portfolio Holdings, LLC → ST Case1Tech, LLC → ST Famtech, LLC (2025-02-25), with Staton-family security interests and a "Strategic Portfolio Holdings LLC" listed as current assignee — i.e., the patent sits in a shell-entity portfolio, but the entity asserting it has now lost on the merits in both venues and abandoned its PTAB appeal on this patent. No defensive aggregator (Unified Patents, RPX, etc.) filed or joined any petition here; the Unified Patents link in Google Patents is purely a database citation.

Recommended next steps

1. If you are a defendant and your demand letter cites claims 1, 2, 4, 5, 6, 7, 9, 11, 12 or 13 — you have no case to answer. Those claims were held unpatentable in the 2023-07-10 Final Written Decision in IPR2022-00324 ("claims 1, 2, 4-7, 9, and 11-13 are unpatentable"), and the FWD is final: Staton Techiya's appeal 23-2389 was dismissed 2024-06-14 and Samsung's cross-appeal 23-2423 was dismissed 2024-05-15. Pull the decision at PTAB E2E, IPR2022-00324, Paper 33 (docket mirror: Docket Alarm; case summary: RPX). Confirm the § 318(b) cancellation certificate status before you put "cancelled" in a brief — the register currently shows the patent, taken as a whole, as Active.
2. First action item: get the FWD's full § VI order. Before you take a position on claims 14–16, verify whether the Board held them unpatentable. The publicly retrievable summary sentence addresses only claim 3. Do not let opposing counsel tell you claim 14 survived — or that it died — without Paper 33 in hand.
3. Treat claim 3 as the live front, and attack the dependency. Claim 3 was sustained on Le+Kvaløy+Johnson, but it depends from cancelled claim 1 and recites only the additional "abrupt movement / change in location of the headset" trigger. That is a narrow claim; if it is asserted, the right moves are (a) an invalidity position on the movement/location limitation specifically, (b) a § 112/enforceability look at a dependent claim whose parent has been cancelled, and (c) a real-world infringement analysis — the narrow trigger limitation is easy to design around. Note the same parent-death problem infects claims 8 and 10, which were never challenged.
4. No estoppel against you (unless you are Samsung or its privy). If you are a new or non-Samsung defendant, you are free to petition on the Le/Kvaløy/Fiedler/Johnson/Mayer/Rast art or better art. Mind the § 315(b) one-year bar from service of an infringement complaint — that deadline, not the merits, is your real risk.
5. No pending PTAB milestones to track. There is no active AIA trial on this patent: IPR2022-00324 terminated 2023-07-10 and its appeals were dismissed in May–June 2024. The only live appellate matter in the family is the district-court appeal at the Federal Circuit, docketed 24-1917, from the 2024-05-09 E.D. Tex. judgment — monitor it for anything that could upset the underlying merits findings, but it does not reopen the cancelled claims.
6. Correct the record internally. Any docketing system that mirrors the USPTO ODP "no proceedings" result for US 8,254,591 is materially inaccurate and will cause a bad decision (e.g., treating this patent as "hardened"). Load IPR2022-00324, Fed. Cir. 23-2389, 23-2423 and 24-1917 into the patent's litigation history now.

I'll start by pulling what's verifiable from the assignment records and cross-referencing the parties involved.

Good detail emerging. Let me pin down the specific assignment records and reel/frame data.

Assignment & Ownership Analysis — US 8,254,591 B2

Patent: US 8,254,591 B2 — "Method and device for audio recording"
App: 12/024,842 · filed 2008-02-01 · priority 2007-02-01 (Prov. 60/887,800) · issued 2012-08-28 · expires 2031-06-28 (adjusted)

Sourcing note up front. The USPTO Assignment Center abstract of title (assignmentcenter.uspto.gov / assignment.uspto.gov) was not retrievable live in this session — I could not pull the reel/frame, correspondent, or execution-date fields directly. The chronology below is reconstructed from the patent's own Google Patents legal-events record (which mirrors USPTO recordation entries, with dates but generally without reel/frame), cross-referenced against assignment text and 37 C.F.R. §3.73(c) chain-of-title statements filed in sibling family patents and quoted in PTAB and district-court exhibits. Two reel/frame values are recoverable from this patent's own record because a corrective assignment cross-references them. Everything else is marked as unverified rather than guessed.

Inventors

Notes: all three executed an assignment to Personics Holdings, Inc. recorded 2008-04-21, roughly 2.5 months after filing — an ordinary employee/inventor assignment, not a red flag. A second, confirmatory assignment of the same three inventors to Personics Holdings Inc. was recorded 2011-01-28. I found no evidence of all inventors departing within 12 months of filing; Goldstein continued prosecuting related applications years later (he appears as first-named inventor on a 2020-era application handled under customer no. 150139).

Related family members name additional inventors — John P. Keady (Fairfax Station, VA) and Jason McIntosh (Sugar Hill, GA) — but neither is an inventor on the '591 patent, so they are outside this analysis.

Original assignee

Personics Holdings, Inc. (later converted to Personics Holdings, LLC), Delray Beach, FL.

• Line of business: in-ear "personal sound" R&D — an in-the-ear earpiece platform (ambient-sound microphone + ear-canal microphone + ear-canal receiver) aimed at hearing protection, situational awareness, and audio forensics. The patent itself claims earpieces/headsets with exactly those transducers.
• Did they ship a product embodying the claims? Unclear / evidence points to licensing rather than product sales. The company's own trial exhibit (Dkt. 916-3 in E.D. Tex. 2:21-cv-00413, a "PERSONICS LABS" business slide) describes the model as "Focus on core competency: R&D / Patent innovative technologies / License and/or sell IP (see Dolby)," and a restructuring note "Focus on monetization through license/sale." That is a licensing narrative, not a product narrative. I did not find evidence of a shipped commercial Personics product implementing the '591 claims, and I do not want to assert one either way.
• Current status: the operating entity no longer exists as an owner. Its IP was pledged as loan collateral (2013, 2014), then conveyed away in 2017; the LLC entity appears only as an assignor in the chain.

Assignment timeline

All dates below are recordation dates as surfaced in the patent's legal-events record unless noted. Reel/frame is given only where actually documented.

1. Recorded 2008-04-21 — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: Steven Wayne Goldstein; John Usher; Marc Andre Boillot
• Assignee: Personics Holdings, Inc.
• Correspondent: not retrieved (Assignment Center abstract not accessible this session)
• Context: inventors' initial assignment to the employer/formation-era acquisition.

2. Recorded 2011-01-28 — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: Usher; Boillot; Goldstein
• Assignee: Personics Holdings Inc.
• Correspondent: not retrieved
• Context: confirmatory re-recordation of the same inventor assignment (no change in beneficial ownership).

3. Recorded 2013-04-19 — Reel/frame: not shown in source

• Conveyance: Security Agreement
• Assignor: Personics Holdings, Inc.
• Assignee: Staton Family Investments, Ltd.
• Correspondent: not retrieved
• Context: securitization — the patent is pledged as collateral for financing; the first appearance of the Staton creditor family.

4. Recorded 2014-02-08 — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: Personics Holdings, Inc.
• Assignee: Personics Holdings, LLC
• Correspondent: not retrieved
• Context: internal reorg / entity conversion (Inc. → LLC); ownership stays within the Personics group.

5. Recorded 2014-11-05 — Reel/frame: not shown in source (appears twice, duplicate recordation)

• Conveyance: Security Interest
• Assignor: Personics Holdings, LLC
• Assignee: DM Staton Family Limited Partnership (as assignee of Maria B. Staton)
• Correspondent: not retrieved
• Context: securitization — a second security interest, this time in favor of the Staton family LP as successor to the original Staton creditor.

6. Recorded 2017-06-26 — Reel 042992 / Frame 0493 (value confirmed via the corrective assignment recorded against this patent)

• Conveyance: Assignment of assignors' interest
• Assignor: Personics Holdings, Inc.; Personics Holdings, LLC
• Assignee: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd.
• Correspondent: not retrieved
• Context: enforcement of the security interest — the distressed operating company's IP is conveyed to the secured creditor. The assignee's own later filing states it acquired "all of Staton's intellectual property that was previously owned by Personics Holdings, LLC and/or Personics Holdings, Inc."

7. Recorded 2017-06-26 — Reel 042992 / Frame 0524 (value confirmed via this patent's corrective assignment)

• Conveyance: Assignment of assignors' interest
• Assignor: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd.
• Assignee: Staton Techiya, LLC (Delaware LLC, formed June 2017, address of record 16193 Bridlewood Circle, Delray Beach, FL 33445)
• Correspondent: not retrieved
• Context: transfer-to-asserter — a purpose-built licensing/assertion vehicle receiving the entire portfolio one month after it was formed.

8. Recorded 2017-08-01 — Reel/frame: correction to 042992/0524

• Conveyance: Corrective Assignment (to correct the assignor's name)
• Assignor: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd.
• Assignee: Staton Techiya, LLC
• Correspondent: not retrieved
• Context: change of name only — scrivener's correction, no ownership change.

9. Recorded 2017-08-01 — Reel/frame: correction to 042992/0493

• Conveyance: Corrective Assignment (to correct the assignee's name)
• Assignor: Personics Holdings, Inc.; Personics Holdings, LLC
• Assignee: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd.
• Correspondent: not retrieved
• Context: change of name only.

Related-family data point (not verified as applying to the '591 record): §3.73(c) chain-of-title statements filed in sibling family patents (e.g., 13/917,079 and 8,150,044) list a further DM Staton Family LP → Staton Techiya, LLC conveyance at Reel 043393 / Frame 0001. I flag this as a likely additional Staton→Techiya recordation but cannot confirm it covers the '591 patent specifically.

10. Recorded 2024-06-21 — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: Staton Techiya, LLC
• Assignee: ST Portfolio Holdings, LLC
• Correspondent: not retrieved
• Context: cascading transfer / internal reorg of the Techiya holding structure.

11. Recorded 2024-06-21 (same day) — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: ST Portfolio Holdings, LLC
• Assignee: ST Case1Tech, LLC
• Correspondent: not retrieved
• Context: cascading transfer — second hop within 24 hours.

12. Recorded 2025-02-25 — Reel/frame: not shown in source

• Conveyance: Assignment of assignors' interest
• Assignor: ST Case1Tech, LLC
• Assignee: ST Famtech, LLC
• Correspondent: not retrieved
• Context: cascading transfer — third hop in roughly eight months; current-record assignee.

Current assignee of record (per Google Patents legal events): St Famtech LLC, with Strategic Portfolio Holdings LLC also listed. Note the naming variance between "ST Portfolio Holdings, LLC" (recordation events) and "Strategic Portfolio Holdings LLC" (current-assignee field) — I could not resolve whether these are the same entity or two entities in the same family, and I am not treating them as identical.

Timeline diagram

timeline
    title Ownership of US 8254591
    2007 : Provisional filed
    2008 : Filed by Personics Holdings Inc
    2012 : Patent issued
    2013 : Security agreement to Staton Family Investments
    2014 : Personics Holdings Inc to Personics Holdings LLC
         : Security interest to DM Staton Family LP
    2017 : DM Staton Family LP to Staton Techiya LLC
         : Staton Techiya LLC formed
    2021 : Suit filed v Samsung in EDTX
    2022 : Samsung IPR filed
    2023 : PTAB finds claims unpatentable
    2024 : Transfer to ST Portfolio Holdings
         : Transfer to ST Case1Tech
    2025 : Transfer to ST Famtech

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent moved out of the operating company in a two-step sequence on the same recordation date: Personics Holdings, Inc./LLC → DM Staton Family Limited Partnership (Reel 042992/0493) and immediately DM Staton Family LP → Staton Techiya, LLC (Reel 042992/0524), both recorded 2017-06-26. Staton Techiya is a Delaware LLC at a residential-style address (16193 Bridlewood Circle, Delray Beach, FL 33445), while its predecessor Staton LP used a commercial office address (6800 Broken Sound Parkway, Suite 200, Boca Raton, FL 33487). Its own IP Assignment Agreement (Dkt. 469-3, E.D. Tex. 2:21-cv-00413) recites a blanket conveyance of "all Staton's intellectual property," including "all claims and causes of action… including all rights to and claims for damages… and injunctive and other legal and equitable relief for past, present, and future infringement" — a classic monetization vehicle charter. The 2024–25 cascade into ST Portfolio Holdings / ST Case1Tech / ST Famtech continues the pattern. Strong.

2. Known asserter in the chain — PRESENT.
Staton Techiya, LLC is the patent owner of record on the PTAB docket for IPR2022-00324 and the named plaintiff in the E.D. Tex. assertion campaign. Its co-plaintiff, Synergy IP Corporation, is classified by Unified Patents directly as "NPE (Patent Assertion Entity)" at the case page for 2:21-cv-00413. The chain does not contain any of the legacy directory names (Acacia, Marathon, IV, Wi-LAN, Conversant, Pendrell, etc.), so this is a Unified/RPX-surfaced asserter rather than a classic-listicle match. Strong.

3. Repeat correspondent across the chain — UNCLEAR (not verified).
I could not retrieve correspondent-of-record data for any link in this chain; the Assignment Center abstract was not accessible in this session and neither Google Patents legal events nor the litigation/PTAB excerpts I reviewed reproduce the correspondent fields for the '591 recordations. I have no evidentiary basis to call this signal either way, and I decline to guess. For transparency on one adjacent-but-different data point: a 2020-era Goldstein-owned application carried filer "Peter Allen Chiabotti / Angela Martin" under customer no. 150139 — that is prosecution correspondence on a different application, not a recording correspondent on this chain, so it is a lead only, not a finding.

4. Cascading transfers — PRESENT.
Two cascades. (a) The 2017 sequence: Personics Holdings → DM Staton Family LP → Staton Techiya LLC, both legs recorded the same day (2017-06-26), then each corrected on the same day (2017-08-01) — the synchronous corrective filings are themselves a tell of a single coordinated recording. (b) The 2024–25 sequence: Staton Techiya → ST Portfolio Holdings (2024-06-21) → ST Case1Tech (2024-06-21, same day) → ST Famtech (2025-02-25) — three hops through chained LLCs in eight months. Strong.

5. Pre-litigation transfer — NOT PRESENT (with a caveat).
The first infringement suit naming this patent, Staton Techiya, LLC and Synergy IP Corp. v. [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) et al., 2:21-cv-00413 (E.D. Tex.), was filed November 2021. Staton Techiya took title to the portfolio in June 2017 (Reel 042992/0524) — roughly 4.5 years before suit, well outside the six-month window. Caveat: the entity itself was formed in June 2017, one month after the Personics collateral transfer, and the patent owner's own filing in the case concedes Techiya "did not have any ownership in the patents-in-suit until June 21, 2017, and October 8, 2018." The assertion vehicle's creation is assertion-adjacent, but the recordation of this patent is not a within-six-months pre-suit transfer. The 2024–25 ST-family transfers are post-judgment, and their timing relative to the CAFC appeals (23-2389, 23-2423, 24-1917) is worth watching.

6. Bankruptcy fire-sale — UNCLEAR.
I found no Chapter 7 or Chapter 11 filing by Personics Holdings in the sources reviewed. However, the record shows a genuine distress pattern: the IP was pledged under a Security Agreement recorded 2013-04-19 to Staton Family Investments, Ltd., then subjected to a Security Interest recorded 2014-11-05 in favor of DM Staton Family Limited Partnership (as assignee of Maria B. Staton), and finally conveyed to the secured party in June 2017. That is lender-collateral enforcement in substance, even without a bankruptcy docket. Because I cannot confirm an insolvency proceeding, this stays "unclear" rather than "present."

7. Privateering — NOT PRESENT.
Nothing in the record shows an operating company transferring to an NPE to assert on the transferor's behalf against competitors. Personics was a small R&D shop, not a competitor of Samsung. (Separately notable, but a different phenomenon: Synergy IP Corp., the co-plaintiff and exclusive licensee, was founded June 2020 by Dr. Seung-Ho Ahn, Samsung Electronics' former head of its IP Center — reported by ETNews and Money Today. That is an insider-knowledge/assertion-business pattern, not privateering.)

8. Defensive aggregator — NOT PRESENT.
The chain terminates at ST Famtech, LLC, a private holding entity. There is no RPX, AST, LOT Network, Unified Patents, or OIN entity anywhere in the chain. The patent has not been neutralized defensively.

Litigation / validity overlay (context for the chain):

• Asserted in E.D. Tex. 2:21-cv-00413 (Nov 2021) and in the 2023 follow-ons (2:23-cv-00319, E.D. Tex.; 1:23-cv-00802, D. Del.).
• IPR2022-00324 (Samsung v. Staton Techiya), filed 2021-12-20, instituted 2022-07-11, Final Written Decision 2023-07-10 holding claims 1, 2, 4–7, 9, and 11–16 unpatentable; Patent Owner notice of appeal 2023-09-08 (CAFC Nos. 23-2389, 23-2423; later 24-1917).
• The district court ultimately found the asserted patents unenforceable against Samsung, entered judgment for Samsung, and awarded costs — which is likely the reason for the 2024–25 reshuffling of the holding entities.

Verdict

NPE — high confidence.

Two strong signals are affirmatively documented in the chain itself: (i) shell-entity transfer — the IP left the operating company via a same-day two-leg conveyance, Reel 042992/0493 and Reel 042992/0524, recorded 2017-06-26, landing in Staton Techiya, LLC, a Delaware LLC formed one month earlier at a residential address with blanket "all claims and causes of action" language; and (ii) known asserter — Staton Techiya is the patent owner in IPR2022-00324 and a plaintiff in 2:21-cv-00413, with co-plaintiff Synergy IP Corp. classified as an NPE by Unified Patents. A third signal, cascading transfers, is present via the 2024-06-21 / 2024-06-21 / 2025-02-25 sequence through ST Portfolio Holdings → ST Case1Tech → ST Famtech. The '591 claims were held unpatentable in the Samsung IPR, and the case ended with a finding of unenforceability — consistent with a monetization vehicle whose asset base was impaired and then re-papered.

Not an operating-company assertion: no commercial product implementing the claims was identified, and the owner's own exhibit describes licensing/selling IP as the business. Not defensively aggregated: no RPX/AST/LOT/Unified/OIN entity in the chain.

Two explicit gaps I could not close: (1) reel/frame and correspondent fields for links 1–5 and 10–12, and (2) whether "ST Portfolio Holdings, LLC" and "Strategic Portfolio Holdings LLC" are one entity or two. Verify both at the USPTO Assignment Center before relying on them:

• https://assignmentcenter.uspto.gov/ (search patent number 8254591)
• https://assignment.uspto.gov/patent/index.html (same underlying records)

I'll research the specific prior-art citations for US 8,254,591. Let me run several targeted searches.

Let me try to retrieve the actual citation list and the IPR's prior-art references.

Let me pull the patent's front-page citation list and the IPR's ground-by-claim mapping.

Prior Art Analysis — US 8,254,591 B2 ("Method and device for audio recording")

Scope note first (important, because it changes the answer): You asked me to work from the patent citations listed on US 8,254,591 itself (the front-page "(56) References Cited" section). I was not able to retrieve that examiner-cited list. What the authoritative Google Patents text you supplied includes is the full claim set, abstract, and description — but the "(56) References Cited" block and the "Other Publications" block are not in that text, and my searches did not surface a copy of the '591 front page's citation list.

What I did surface — and it is a primary-source, claim-specific record — is the prior art that was actually litigated against this exact patent: *IPR2022-00324, Samsung Electronics Co., Ltd. v. Staton Techiya, LLC.* The Final Written Decision expressly identifies the references the petitioner relied on. Those are reproduced and analyzed below. I flag clearly where I am inferring versus citing.

Also, a literal-identifier caution up front: one search hit returned "AU-A- 8254591" in a 1992 PCT family table (WO1992018080A1). That is an Australian application number, not US Patent 8,254,591, and it is unrelated. Another hit (a Chinese-language search report) cites "US 8254591 B2, 28 August 2012," which is the US patent. I have kept these separate and have not auto-corrected any identifier.

1. Confirmation of the target document

This matches the previously generated section, so no contradiction to flag there.

2. Most relevant prior art — verified from the IPR record (primary source)

The Final Written Decision in IPR2022-00324 states: "In this proceeding, Petitioner relies upon the following references:" and lists six references. The petition challenged claims 1–7, 9, and 11–16. The FWD outcome: claims 1, 2, 4–7, 9, and 11–13 were proven unpatentable; claim 3 was not proven unpatentable; the excerpt I retrieved does not state an outcome for claims 14–16. (Source: FWD excerpt via RPX/PTAB and Docket Alarm, https://portal.unifiedpatents.com/ptab/case/IPR2022-00324.)

Dates: the issue/publication dates above are taken verbatim from the FWD text. All six predate the 2007-02-01 priority date, so all are § 102(a)/102(b) art as of the '591 filing. I did not independently verify each reference's filing date, assignee, or abstract in this session.

On "which claim(s) it potentially anticipates under § 102": I must be precise here rather than give you a clean anticipation table. The IPR was an obviousness proceeding. The FWD's own legal framework section quotes 35 U.S.C. § 103 and KSR Int'l Co. v. Teleflex Inc., and frames the analysis as "a combination of prior art elements." So, based on what I retrieved, these references were used in § 103 combinations, not as standalone § 102 anticipatory references. I could not retrieve the grounds table (the FWD references a table mapping "Claim(s) Challenged" to "35 U.S.C. [§]"), nor the specific pairing of references per ground, so I cannot responsibly state which single reference anticipates which claim. Presenting a per-claim § 102 mapping would be fabrication. The honest statement is: the six references collectively were found to disclose/suggest the limitations of claims 1, 2, 4–7, 9, and 11–13.

Evidence of multiple grounds: the Declaration of Dr. Les Atlas (Ex. 1002) contains a heading "Ground 4B" and a section "OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES," confirming that the petition was organized into numbered, multi-part grounds (i.e., combinations), not single-reference anticipation.

3. District-court prior art — flagged as NOT this patent

The E.D. Tex. invalidity contentions (CourtListener, Staton Techiya, LLC v. Samsung Electronics, 2:21-cv-00413) cite Goldstein (US 8,150,044), Usher (US 2015/0215701), Keady (US 8,522,916), Bailey (US 7,280,849), and Rothschild (US 8,594,341). Those paragraphs, however, address the '082 patent and '015 patent — not the '591. Do not attribute them to '591.

Likewise, the April 20, 2022 Samsung stipulation letter lists a long roster (Alberth, Allen, Alves, Armstrong, Bailey, Baskerville, Couper, Fiedler, Furst, Goldstein, Hall, Ichimura, Johnson, Kvaløy, Keady, Killion, Kurki, Lagassey, Langhart, Le, Lee, Mayer, Mejia, Olwal, Park, Rast, Rosenberg, Rothschild, Ryan, Simon) — but that roster covers all IPR petitions against all patents-in-suit, not the '591 alone. Only Le, Kvaloy, Johnson, Fiedler, Mayer, and Rast are confirmed as the '591-specific art by the FWD.

4. Explicit uncertainties (do not over-read this answer)

1. The '591 patent's own examiner-cited (56) reference list was not retrieved. There may be additional references of record (e.g., the 22-dB noise-reduction / ASM+ECM earplug art) that I have not seen. My answer covers the litigated art, not the prosecution art.
2. No per-claim § 102 mapping is possible from my sources, because the operative challenge was § 103 and I could not obtain the grounds table. Anything more specific would be invented.
3. Claims 14–16 outcome is not established by the excerpt I have (the FWD excerpt states outcomes only for claims 1–7, 9, 11–13, and 3).
4. Descriptions of the six references are minimal. I deliberately did not paraphrase their contents, because I did not open the documents and will not guess at subject matter. If you need functional descriptions and an element-by-element claim chart, I would need to open Exs. 1005, 1006, 1008, 1009, 1010, 1011 and the FWD grounds table.
5. Date discrepancy noted (not a patent issue): the task states the current date as April 26, 2026, while the system date is 2026-09-29. It does not affect the analysis, which relies on the patent record as authoritative.

Recommended next step if you want a full § 102 analysis: pull the '591 front page "(56) References Cited" list from the USPTO PatentCenter/Patent Public Search PDF (https://patents.google.com/patent/US8254591/en → "Download PDF"), then compare it against the six IPR references above. That will give you both the examiner-cited art and the litigated art in one place.

I'll research the specific prior-art grounds that have already been litigated against this patent, since the Google Patents page itself does not reproduce a prior-art citation list.

Now let me get the substantive reasoning from the Final Written Decision and the district-court invalidity contentions.

Let me characterize the individual references precisely so the combination rationales are grounded.

Obviousness Analysis — U.S. Patent No. 8,254,591 under 35 U.S.C. § 103

0. Note on the prior-art record I am using (and one correction to the earlier section)

The instruction to "use the results from the Prior Art section of this page" cannot be satisfied literally. The Google Patents page as fetched contains, under "Prior art keywords," only five terms — sound; earpiece; ambient sound; processor; memory — and no list of prior-art citations (no "References Cited/Cited By" entries were captured in the fetched text). I therefore ground this § 103 analysis in the prior art actually of record against the '591 patent, which is verifiable from primary sources:

Source: Samsung's Petition grounds and the PTAB's Final Written Decision in IPR2022-00324, Samsung Electronics Co., Ltd. v. Staton Techiya, LLC (FWD July 10, 2023) (https://insight.rpxcorp.com/federal_circuit/[1320176](/patent/1320176)/rpx-ptab/IPR2022-00324/For_Filing_IPR2022_00324_591_patent_PO_s_Notice_of_Appeal_170651763.pdf), and Petitioners' Oral Hearing Demonstratives, Ex. 1042 (https://www.docketalarm.com/cases/PTAB/IPR2022-00324/Samsung_Electronics_Co._Ltd._v._Staton_Techiya_LLC/docs/04-04-2023-Petitioner/Exhibit-1042-Ex1042___Petitioners_Oral_Hearing_Exhibits.pdf).

Correction to the previously generated section. That section flagged the outcome for claims 14–16 as "not established" because the FWD excerpt then available omitted them. The JUDGMENT clause of the FWD resolves this: the Board "ORDERED that claims 1, 2, 4-7, 9, and 11-16 of the '591 patent have been proven by a preponderance of the evidence to be unpatentable; and FURTHER ORDERED that claim 3 of the '591 patent has not been proven by a preponderance of the evidence to be unpatentable." So claims 14–16 were held unpatentable; only claim 3 survived. (Minor internal inconsistency to flag: some FWD narrative passages discuss "claims 11–13" under Ground 3A/3B; the JUDGMENT controls and covers 11–16.) The earlier section's uncertainty on 14–16 should be treated as resolved, not pending.

Also flagging a date inconsistency in the task prompt: the task states "Current Date: April 26, 2026," whereas the system date and the fetched-page timestamp are 2026-09-29. Nothing in this analysis turns on the difference, but the record date should be reconciled.

1. Governing framework

Because the application was filed Feb. 1, 2008, with a Feb. 1, 2007 priority date (provisional 60/887,800), pre-AIA § 103(a) governs. Each of Le (2003), Kvaløy (2004), Johnson (2000), Fiedler (2004), Mayer (2004) and Rast (2001) published more than one year before Feb. 1, 2007 and is therefore § 102(b) prior art — the strongest possible status, requiring no priority/102(e) analysis.

The analysis tracks the Graham v. John Deere factors: (1) scope and content of the prior art; (2) differences between the prior art and the claims; (3) level of ordinary skill; (4) secondary considerations. A § 103 conclusion must rest on an articulated reason with a rational underpinning to combine (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007); In re Kahn, 441 F.3d 977 (Fed. Cir. 2006)), including predictable variation, design incentives, and the knowledge/interests of a person of ordinary skill.

Level of ordinary skill. The Board's verbatim POSITA paragraph is not in the text I retrieved, so I do not quote it. The record's expert (Dr. Les Atlas, Ex. 1002) grounded his opinions in "acoustics, signal processing, electronic design, design of electronic earpieces such as hearing aids and cochlear implants," and Patent Owner did not dispute the qualification. The POSITA is thus best characterized as having a degree in electrical/computer engineering or acoustics (or equivalent) plus several years' experience designing earpieces/hearing instruments and buffered audio capture systems. I flag the exact POSITA formulation as unverified.

Claim construction. The Board treated the preamble question without deciding it, stating it analyzed the merits "even if the preamble is considered to be limiting" (Ex. 1002 structure at § XII), and framed claim 1 as illustrative. Two constructions matter to obviousness: (i) whether limitation 14[e][ii] ("save a portion of at least one of ... sound, ... sound, and ... content") is read disjunctively — Petitioner argued it in the alternative and the Board accepted that the Le–Kvaløy combination meets it by "teach[ing] recording audio from either the inner microphone or the outer microphone"; and (ii) the parallel district court's construction of "a processor ... the processor" in the '591 case (E.D. Tex. 2:21-cv-00413, Dkt. 562, at 3), which Samsung argued Techiya's expert contradicted.

2. Claim-level obviousness mapping (grounds of record)

Ground 1 — Le in view of Kvaløy → claims 1, 2, 6, 7, 9 (all held unpatentable)

What the references teach:

• Le discloses recording audio detected by a microphone into a "continuously scrolling buffer" that retains audio "for some predetermined period of time, such as 30 seconds or one minute," and, on a triggering event, saving the buffer contents "from before the event ... for later recall." Le has both an environmental microphone 38 and a personal microphone 36.
• Kvaløy supplies the earpiece form factor with an inner (ear-canal) microphone, which is why the Board found the Le–Kvaløy combination "teaches recording audio from either the inner microphone or the outer microphone."

Why a POSITA would combine (motivation): Per Dr. Atlas (Ex. 1002 §§ B.1–B.2, "A person having ordinary skill in the art would have understood that Kvaløy complements Le's teachings"), both references are in the same field of endeavor — personal/buffered audio capture in wearable audio devices — and Kvaløy supplies precisely the element Le lacks (an in-ear microphone capturing internal sound). The combination is a predictable use of prior-art elements according to their established functions (KSR), with no change in principle of operation. Patent Owner's counter — that the combination was "not sufficiently defined" and lacked a reasonable expectation of success — was rejected by the Board as directed to unclaimed implementation details and as unsupported given the paucity of implementation detail in the '591 specification itself.

Limitation mapping: claim 1 (left/right earpieces each with ASM + ECM; memory; processor saving a recent portion responsive to an event) — Le's pre-event buffer + Kvaløy's dual-microphone earpiece; claim 2 (touch, voice command, call start/end, scheduled time) — Le's triggering mechanisms; claim 6 (last two minutes, audible playback on user request) — Le's "30 seconds or one minute" retention plus playback; claim 7 (internal sound = ambient sound, speech, or audio content) — inherent in an occluded-canal microphone picking up residual ambient, user speech, and delivered content; claim 9 (binaural recording) — running Le's capture on both earpieces of the Kvaløy-type device.

Ground 2 — Le + Kvaløy + Fiedler → claims 4, 5 (both held unpatentable)

• Fiedler (US 6,804,638, "Device and method for selective recall and preservation of events prior to decision to record the events," Recent Memory Inc.) discloses an acquisition buffer on a finite recording medium in which "current events in place of earlier events are then recorded," with preservation of "the most recent events recorded in the acquisition buffer upon the detection of one or more predetermined events," including by "reserving a portion of the record of events from being overwritten" or transferring to a "predetermined permanent location." Fiedler expressly applies this to "the recording [of] telephone conversations."
• This maps directly onto claim 4 (data buffer temporarily capturing sound + storage memory saving the recent portion in a compressed data format responsive to a processor directive) and claim 5 (the buffer being a circular buffer storing "at a current time point to a previous time point"). The motivation is straightforward and recognized in the field: Fiedler is the canonical teaching of the exact buffer architecture (finite acquisition buffer, overwrite, preservation of the pre-trigger window), and adding it to Le–Kvaløy is a combination of references addressing the same problem (retrospective capture of pre-event audio) with an expected, predictable result. Patent Owner's arguments on claims 4–5 were, in the Board's words, a retread of the claim 1[c]/1[e][ii]/4 arguments, and were rejected.

Ground 3A / 3B — Le + Kvaløy + Johnson (± Rast) → claims 3, 11–13 (claims 11–13 unpatentable; claim 3 not proven)

• Johnson (US 6,163,338) is squarely on point: "capture and recording of unpredictable realtime events," "a device that record[s] actual sound or video footage of the few seconds just before and/or after an unexpected event, such as a collision," where "the recording device may be advantageously triggered by the event itself, and create an audio recording of some desired window of time surrounding the event." Johnson "uses a small circular buffer or memory," and "once an accident is detected by the accelerometer, multiple frames of data immediately before and immediately after the accident are recorded."
• Motivation (grounded in the FWD): "[O]ne of ordinary skill would have been motivated to combine Johnson's teaching that it would be advantageous to trigger recording based on the event itself, and that this would be particularly advantageous in situations where the user may not have the ability to issue a voice command." That is a classic KSR-compliant rationale: a known technique (event-triggered, pre-event buffering) applied to a known device (Le–Kvaløy earpiece) to yield the predictable improvement of hands-free, automatic capture.
• Claims 11–13: claim 11 requires the event to be a "detected sound signature within the ambient sound." The Board found Petitioner's evidence sufficient as to claim 11, and Ground 3B (adding Rast) succeeded as well — the Board expressly concluded "claims 11–13 would have been obvious based on the combination of Le, Kvaløy, Johnson, and Rast." Claim 12 (SPL-change event) follows from Johnson/Fiedler-style triggered recording plus the Le/Kvaløy ambient microphone; claim 13 (conversation, voice mail, or audio recording) follows from Le and Fiedler's explicit telephone-conversation recording.

Why claim 3 failed (important, and instructive). Claim 3 requires the processor to "trigger[] the event responsive to detecting an abrupt movement of the headset, or a change in location of the headset." Patent Owner's Preliminary Response argued the Le–Kvaløy–Johnson combination "would not 'detect' an abrupt movement of the headset, or a change in location of the headset" (POPR §§ C.2–C.3, https://www.docketalarm.com/cases/PTAB/IPR2022-00324/.../Preliminary_Response-8-Patent_Owners_Preliminary_Response.pdf). Johnson's accelerometer is described as installed in a motor vehicle and detecting a vehicle collision — not movement of a worn headset — so the mapping to claim 3 required an extra inferential step the Board was unwilling to take on that record. The Board ultimately found claim 3 not proven unpatentable.

3. Claims the Board never reached: 8 and 10

Claims 8 and 10 were not among the challenged claims (the Petition challenged 1–7, 9, 11–16). A complete § 103 assessment must therefore supply the analysis independently:

• Claim 8 (the two earpieces "constitute a microphone array" and the processor "increases a signal to noise ratio of audio content ... with respect to the ambient sound using the microphone array"). Two-microphone arrays in hearing instruments and headsets for SNR improvement were textbook prior art well before 2007 (delay-and-sum/adaptive beamforming in binaural hearing aids), and Kvaløy-type earpieces place the transducers at the requisite separation. A POSITA would have been motivated to use the two spaced microphones already present as an array (a mere predictable use of a known technique to improve an existing device, KSR). However, I have not verified a specific asserted reference for claim 8 in this family's record, and I therefore flag this as my analysis rather than a documented finding.
• Claim 10 (audio interface delivering audio content through left/right ECRs; memory records a history of the audio content with the residual sound and internal sound). This is met by the Le–Kvaløy combination (left/right ECR delivery + in-canal capture) plus Mayer (US 2004/0042103), which the FWD shows Petitioner relied upon "to store both phone conversations and sounds in the environment," and by Fiedler, which expressly discloses "applications to the recording of telephone conversations." The motivation is the same as in Ground 2/4A: capturing everything audible at the ear — delivered content plus residual/internal sound — which is precisely the claimed "history."

4. Additional § 103 combinations (my analysis, beyond the IPR record)

1. Fiedler + Kvaløy (alone in view of the knowledge of a POSITA). Fiedler already discloses the acquisition buffer, the overwrite/preserve mechanism, and telephone-conversation recording; Kvaløy supplies the dual-microphone occluded earpiece. This two-reference combination reaches claim 1 (and claims 4, 5, 13) without Le, and is a strong alternative ground.
2. Fiedler + Kvaløy for claim 3. Claim 3 is the one claim the Board left standing, and the failure was a mapping failure, not a teaching-away. Fiedler expressly lists, as a known trigger class, "In a security system, audio and/or video recording activated on detection of movement," and its claimed subject matter includes a wrist band or bracelet fastener (Fiedler claim 19) — i.e., a body-worn recorder whose motion is the sensed quantity. Combined with a headset-mounted accelerometer or with the '591-specification-style analysis of inter-ear sound-level differences (FWD discussion of ASMs 403/404 and accelerometers 599 in the '591 spec's FIG. 8), this would supply "abrupt movement of the headset" as a trigger. This is a reasoned extension; no tribunal has so held on this record, and the KSR rationale would need to be that motion-triggering a body-worn buffer is a predictable variant of a known trigger.
3. Johnson + Kvaløy (without Le). Johnson alone supplies the circular-buffer/pre-event architecture and the event-itself trigger; adding the Kvaløy earpiece yields claim 1's structural elements and, with Rast-type sound-signature detection, claim 11.
4. Parallel § 112 theory (not § 103): Samsung's invalidity contentions also attacked claim 11's "wherein the event is a detected sound signature within the ambient sound" for lack of written description/enablement (E.D. Tex. 2:21-cv-00413, Dkt. 28, ¶ 11). If that were sustained, claim 11 would fall on § 112 grounds regardless of § 103.

5. Secondary considerations

No evidence of nexus appears in the record. Samsung's reply in the district court (Dkt. 562) moved to strike Techiya's expert's "copying" opinions, arguing Techiya could show only an "obvious nexus" that was neither relied upon nor tied to the claims — i.e., a failure of the requisite presumption of nexus. Where a "strong prima facie obviousness showing exists, even relevant secondary considerations supported by substantial evidence may not dislodge [the] obviousness conclusion" (Leapfrog Enters. v. Fisher-Price, 485 F.3d 1157, 1162 (Fed. Cir. 2007)). Here, the Board's FWD supplies that prima facie case for fifteen of sixteen claims.

6. Bottom line

Under pre-AIA § 103(a), and taking the IPR2022-00324 record as authoritative:

• Claims 1, 2, 4, 5, 6, 7, 9, 11, 12, 13 are obvious over Le + Kvaløy + Fiedler + Johnson (± Rast) — held unpatentable by the Board.
• Claims 14, 15, 16 are obvious over Le + Kvaløy (Ground 4B), and alternatively over Le + Kvaløy + Mayer (Ground 4A) — also held unpatentable (correcting the earlier section's open item).
• Claim 3 was not proven obvious on the Johnson-based mapping; my view is that a Fiedler-based motion-trigger rationale is the more promising route to it, though that ground has never been adjudicated.
• Claims 8 and 10 were never adjudicated; claim 8 in particular remains dependent on art not documented in this record, and I flag my treatment of it as analysis rather than verified finding.

Procedural consequence: the FWD held 15 of 16 claims unpatentable, Patent Owner appealed (No. 23-2389), and the Federal Circuit dismissed that appeal by agreement on June 14, 2024 (http://cafc.uscourts.gov/opinions-orders/23-2389.ORDER.6-14-2024_2334547.pdf), so the FWD stands unreviewed. Note the tension with Google Patents still displaying the '591 patent as "Active" — cancellation of claims via certificate, if issued, is not reflected in the page I fetched. I have not verified cancellation-certificate status, and consistent with the page's own disclaimer, its legal-status field is an assumption, not a legal conclusion.