US 8364806

I'll search for authoritative details on US patent 8364806, including any 2026 CAFC activity.

Let me check for litigation involving this specific patent and locate the independent claims.

Let me find the actual claim text for US8364806.

Summary: US Patent No. 8,364,806 B2

I searched for this specific number. Below I separate what the authoritative patent record (Google Patents full text supplied in my working context, USPTO/PTAB records, and litigation dockets) establishes from what I could not confirm. I did not auto-correct the number; all identifiers are reproduced literally.

Bibliographic data

Note on ownership: the assignment history in the record shows the patent passing through NTT DOCOMO (security interests, 2015 and 2017) and Gate Worldwide Holdings LLC (2018 assignment of interest), with a later quitclaim back to Nomadix, Inc. (2019). Google Patents nevertheless lists the current assignee as Gate Worldwide Holdings LLC. If ownership is legally material, verify against the USPTO Assignment database rather than relying on either label.

Abstract

Per the patent record: "Systems and methods for managing and providing content and services on a network system. Aspects of the invention include location-based determination of network content and services that may be provided to client computers. Other aspects of the invention include authorization and authentication components that determine access rights of client computers. Additional aspects include systems and methods for redirecting client computers to different network content. The disclosed systems and methods may be used in numerous network system applications."

Technology overview

The patent is a continuation in the Nomadix gateway-device family. It describes a gateway that sits between client computers (e.g., hotel-room, airport, or multi-dwelling-unit ports) and external networks/online services, and that transparently authenticates, authorizes, and accounts for (AAA) users without requiring any reconfiguration or client-side software on the user's machine. Key concepts: identifying a source by attribute (MAC address, user ID, VLAN tag/circuit ID, physical location such as a hotel room), looking up a source profile in an external database (RADIUS/LDAP), determining access rights per destination/content type per packet, and redirecting the browser to a portal or login page by responding "as if" it were the requested external server (Home Page Redirect / Stack Address Translation, with connection-handshake spoofing). Location-based content and service differentiation (e.g., different baud rate or homepage for a penthouse vs. a standard room) is also described. It depends on earlier applications including Ser. Nos. 09/458,569 (now US 6,636,894), 09/458,602, and 09/693,060 (now US 7,194,554).

Independent claims — plain language

I could not retrieve the complete, verbatim claim set for the '806 patent in this session, so the following is based on (a) the patent's own "aspects of the invention" summary and (b) the petitioner's claim chart filed in IPR2016-00092. Treat the exact wording as not fully verified:

1. System claim directed to redirection of a user device. A "system for performing redirection of a user device attempting to communicate through a network," comprising a network access management system (processor + communications port) that sends connection handshake completion data to the user device in response to a connection request aimed at a first, external device — where the handshake data is configured to appear to come from that external device, and the management system need not communicate with the external device. (Claim-chart preamble and first limitation for "Claims 1–20" of the '806 patent.)

2. Method claim for managing network access of a client computer. Receiving data packet(s) containing a request for network content from an external server; determining authorization rights of the client (based on a user profile from a profile database); if not entitled, producing a redirection response that (i) causes the client to request content at a different network location and (ii) is configured to indicate to the client that the redirection response originated from the external server; and transmitting that redirection response to the client.

3. Location-based content claim set. Receiving a request for content from a client and producing/transmitting alternate content based in part on a physical location identifier (e.g., hotel room, suite, office, airport terminal, airplane, building, multi-unit residence, retail outlet) received in association with the request, where the alternate content differs from the requested content.

Additional dependent claims (per the PTAB claim chart, claims 1–20 are at issue) address the network access management system, the communications port, and related handshake/redirection limitations. I do not have verified verbatim text for every independent claim (e.g., whether there is a separate independent method claim, and its exact language), so please confirm against the granted claim set.

Litigation and PTAB posture

• PTAB: IPR2016-00092, Hospitality Core Services LLC v. Nomadix, Inc. (Patent No. 8,364,806). Petition filed Oct. 27, 2015; institution May 5, 2016; terminated by settlement July 27, 2016. The petition challenged claims 1–20 against references including Slemmer (US 6,226,677), Vu (US 5,623,601), Applegate (US 6,321,336), Birrell (US 5,805,803), Cohen (US 6,389,462), Brendel (US 6,182,139), and the ATCOM/INFO IPORT white papers.
• District court: Nomadix, Inc. v. Hospitality Core Services LLC d/b/a Blueprint RF, No. 2:14-cv-08256 (C.D. Cal.). The '806 patent was one of the asserted patents (along with the '894, '399, '246, '266, '269, and '690 patents). A related complaint (No. 2:14-cv-08255) dated Oct. 24, 2014 also lists the '806 patent.

CAFC 2026 docket check — no matching case found

I searched for Federal Circuit 2026 activity tied to 8,364,806 and found none. The CAFC 2026 materials my searches surfaced (e.g., Spero v. Mercedes-Benz USA, Nos. 2025-1306/1307/1473; VLSI v. Intel) concern entirely different patents and parties. I did not identify any 2026 Federal Circuit appeal, oral argument, or decision involving US 8,364,806. Because the patent is expired and the sole known PTAB challenge settled in 2016, the absence of a 2026 appeal is consistent with the record — but I cannot affirmatively prove a negative, so treat "no 2026 CAFC docket" as an absence of evidence rather than a certified clearance.

Explicit uncertainties

• Full claim set: I did not obtain the complete verbatim independent claim text; the above is reconstructed from the specification's summary and a PTAB claim chart and should be verified against the granted claims.
• Assignee: Sources conflict between "Gate Worldwide Holdings LLC" (Google Patents/Unified Patents listings) and the recorded reassignment history (Nomadix, Inc.). Verify with USPTO Assignment records.
• Priority/expiration: The record lists Dec. 8, 1998 as the earliest priority date (one related-family entry shows Dec. 7, 1998), and an anticipated expiration of Dec. 8, 2019; both are designated as assumptions in the source data, not legal conclusions.

I'll research litigation involving US patent 8,364,806 using the sources you specified.

Let me dig into the specific district court cases and the Nomadix enforcement campaign.

Let me check the RPX patent-specific case list and other Nomadix enforcement actions that may have asserted the '806 patent.

Known Litigation Involving U.S. Patent No. 8,364,806

Short answer: Based on my search of the litigation databases you pointed me to (Unified Patents portal, Darts‑IP family litigation link, RPX Empower, and PACER/Justia dockets), U.S. Patent No. 8,364,806 ("the '806 patent") was asserted in one district‑court action and was the subject of one PTAB inter partes review. Both involved Nomadix, Inc. and Hospitality Core Services LLC d/b/a Blueprint RF.

1. District Court Litigation

Nomadix, Inc. v. Hospitality Core Services LLC, d/b/a Blueprint RF

Relationship of the '806 patent to this case. The '806 patent was one of seven Nomadix patents asserted in the complaint:

• U.S. 6,636,894 (the '894 patent)
• U.S. 6,868,399 (the '399 patent)
• U.S. 8,156,246 (the '246 patent)
• U.S. 8,266,266 (the '266 patent)
• U.S. 8,266,269 (the '269 patent)
• U.S. 8,364,806 (the '806 patent)
• U.S. 8,788,690 (the '690 patent)

The court's Jan. 27, 2016 summary‑judgment order expressly lists the '806 patent among the "captive portal patents" whose validity was challenged and among the patents "presently at issue." (Case No. CV 14‑08256 DDP (VBKx), Order re Motions for Summary Judgment, Dkt. 142, at 2.)

Key rulings:

• April 3, 2015 – Order on Motions to Dismiss (Dkt. 47): The court declined, at the pleading stage, to invalidate the '399 and '690 patents under 35 U.S.C. § 101 and held that Nomadix's induced‑infringement pleadings under § 271(b) were sufficient. The '806 patent was among the patents discussed in the related motion‑to‑dismiss/inequitable‑conduct briefing (Dkt. 69).
• January 27, 2016 – Order re Motions for Summary Judgment (Dkt. 142): The court granted Nomadix's motion for summary judgment of infringement of the '246 patent; denied Blueprint's cross‑motion for summary judgment of non‑infringement; denied Blueprint's motion for partial summary judgment of invalidity under 35 U.S.C. § 112 and double patenting; and denied Blueprint's motion for partial summary judgment of invalidity under 35 U.S.C. §§ 102 and 103. (Note: the infringement SJ was on the '246 patent; the '806 patent was among those as to which Blueprint's invalidity challenges were rejected.)
• June 28, 2016 – Joint Stipulation to Dismiss under Fed. R. Civ. P. 41(a)(1)(A)(ii) and 41(c), with a "Report on the Determination of an Action Regarding a Patent or Trademark (Closing)" entered June 30, 2016. Some docket trackers (e.g., ExParte) show the case as "Closed (01/27/16)."

Outcome characterization: The record shows the case ended by stipulated dismissal following Nomadix's favorable summary‑judgment rulings — consistent with a negotiated resolution (the patent‑bar press at the time described Nomadix as having "prevailed"). I could not verify the specific financial or license terms of any settlement from the available public records, so I do not represent that a particular settlement amount or license was entered.

Sources: RPX Empower docket (litigation.rpxcorp.com/litigation/cacdce-602501-nomadix-inc-v-hospitality-core-services-llc); Unified Patents litigation link (portal.unifiedpatents.com/litigation/California%20Central%20District%20Court/case/2%3A14-cv-08256); Justia Dockets/Opinions (law.justia.com/cases/federal/district-courts/california/cacdce/2:2014cv08256/602501/); IPWatchdog, "Nomadix prevails in patent infringement suit over Internet networking for hospitality industry" (Feb. 26, 2016).

2. PTAB Proceeding (administrative, not district‑court litigation)

Hospitality Core Services, LLC v. Nomadix, Inc.

This IPR was filed in parallel with the district‑court case. Blueprint RF/Hospitality Core Services filed a coordinated set of IPR petitions against the patents‑in‑suit; the sibling proceedings were:

• IPR2016‑00052 — U.S. 6,636,894
• IPR2016‑00073 — U.S. 8,156,246
• IPR2016‑00077 — U.S. 8,266,266
• IPR2016‑00081 — U.S. 8,266,269
• IPR2016‑00092 — U.S. 8,364,806

Patent Owner's Mandatory Notices in the related IPR2016‑00081 expressly identify IPR2016‑00092 as the proceeding directed to the '806 patent.

Sources: Unified Patents PTAB portal (portal.unifiedpatents.com/ptab/case/IPR2016-00092); Google Patents "Family has litigation" entry for US8364806B2; Nomadix's Mandatory Notices in IPR2016‑00081 (37 C.F.R. § 42.8).

3. Cases I Checked Where the '806 Patent Does Not Appear to Have Been Asserted

Nomadix's broader enforcement campaign produced several other suits, but on the records I retrieved the '806 patent was not among the asserted patents in those actions (they asserted the '894 patent and various other members of the family):

• Nomadix, Inc. v. Second Rule LLC, 2:07‑cv‑01946 (C.D. Cal.)
• Nomadix, Inc. v. Hewlett‑Packard Co. et al., 2:09‑cv‑08441 (C.D. Cal.)
• Nomadix, Inc. v. SolutionInc Technologies Ltd., 2:10‑cv‑00381 (C.D. Cal.)
• iBAHN General Holdings Corp. v. Nomadix, Inc., 2:11‑cv‑02604 (C.D. Cal.), and Nomadix, Inc. v. iBAHN General Holdings Corp., 2:14‑cv‑00322 (C.D. Cal.)
• IP3 Networks, Inc. v. Nomadix, Inc., 04‑cv‑01485 (S.D. Cal.)
• Nomadix, Inc. v. Guest‑Tek Interactive Entertainment Ltd., 2:19‑cv‑04980 (C.D. Cal.) (license/forum‑selection dispute; appeal at No. 20‑55439), and Nomadix, Inc. v. Guest‑Tek Interactive Entertainment Ltd. (2016 breach‑of‑license action)
• Nomadix, Inc. v. SIA Mikrotīkls et al., 2:19‑cv‑10202 (C.D. Cal.) — asserted U.S. 7,194,554; 6,636,894; 8,156,246; 7,554,995; and 7,088,727 (the '806 patent is not listed on the AO‑120 form).

I flag these because I could not positively confirm every docket line‑by‑line; if you need a definitive negative, the AO‑120 reports and each complaint's patent list should be checked directly via PACER.

4. Ownership / Standing Context (relevant to the litigation)

The '806 patent issued from Application No. 13/566,904 (filed Aug. 3, 2012), claiming priority to Dec. 8, 1998, to inventors Joel E. Short, Florence C. I. Pagan, and Josh J. Goldstein. According to the Google Patents assignment history and the court's related‑case records:

• Original assignee: Nomadix, Inc.
• Sept. 30, 2015 — security interest recorded to NTT DOCOMO, INC. (Assignor: Nomadix, Inc.)
• Jan. 23, 2018 — assignment of interest to GATE WORLDWIDE HOLDINGS LLC (Assignee); NTT DOCOMO's security interest also assigned to Gate Worldwide Holdings
• Nov. 22, 2019 — quitclaim by Gate Worldwide Holdings LLC back to Nomadix, Inc.
• Google Patents lists the current assignee as Gate Worldwide Holdings LLC and the patent status as Expired – Fee Related, with anticipated expiration Dec. 8, 2019.

Note: Nomadix's 2014 C.D. Cal. filings identify DOCOMO interTouch (parent) and NTT DOCOMO (parent of DOCOMO interTouch) as its corporate parents.

5. Caveats and Limits of This Search

1. Search scope. I relied on publicly available litigation aggregators (Unified Patents, RPX Empower, Darts‑IP family link, Justia, CourtListener/UniCourt) plus the Google Patents "litigation" annotations. I did not pull raw PACER dockets for every Nomadix case, so a case that asserted the '806 patent but in which the patent was dropped before an AO‑120 update could theoretically have escaped my search.
2. "Litigation" vs. PTAB. The PTAB proceeding (IPR2016‑00092) is a contested administrative trial, not Article III litigation; I have listed it separately for completeness because it is the other principal contested proceeding involving the '806 patent.
3. Settlement terms. I could not verify the specific terms (amounts, license scope) of the Blueprint RF resolution; I only confirmed that the case was terminated by stipulated dismissal and that the PTAB proceeding was terminated on settlement.
4. One identified identifier discrepancy to note. Some search hits refer to the accused product's summary‑judgment ruling using the '246 patent designation; the '806 patent was not the patent on which the summary‑judgment of infringement was granted. Take care when citing the "Nomadix prevailed" rulings to attribute them to the correct patent.

If you want, I can next attempt to pull the actual PACER docket sheets for 2:14‑cv‑08256 and the AO‑120 forms for the other Nomadix cases to produce a definitive, patent‑by‑patent assertion matrix.

I'll start by searching for PTAB proceedings on this patent, since the structured block points to a possible IPR2016-00092 that ODP may not have indexed.

Let me dig into the termination decision and check for any other proceedings tied to this patent or its family.

Let me verify whether any other petitions (later IPRs, CBM, or a second petitioner) were ever filed against this patent, and confirm no appeal exists.

PTAB / AIA Trial Proceedings — US Patent 8,364,806

Data-source note up front: The structured "PTAB proceedings on file" block states the USPTO ODP API returns no AIA trial proceedings for 8,364,806 as of the most recent ingest. Web searching surfaced exactly one AIA trial that the ODP feed did not carry: IPR2016-00092. I found no second petition (no later IPR, PGR, or CBM) against the '806 patent itself, and no Federal Circuit appeal of any '806 PTAB decision. Everything below is grounded in the institution decision, the termination judgment, and the parties' filings; where I could not confirm something, I say so.

Proceedings overview

There is one (1) AIA trial proceeding on file against US 8,364,806: IPR2016-00092, Hospitality Core Services LLC d/b/a Blueprint RF v. Nomadix, Inc. It was instituted in part (2016-05-05), then terminated by settlement before any Final Written Decision (2016-07-27). Status breakdown: active: 0 · claims invalidated: 0 · claims sustained: 0 · settled: 1 · institution denied: 0.

Bottom line for a defendant today: the patent was never adjudicated on the merits at the PTAB. No claim of the '806 patent has been canceled, and no claim has been sustained — claims 1–20 are untested in an AIA trial. The single IPR was a companion piece to the Nomadix v. Hospitality Core Services district-court case (C.D. Cal. 2:14-cv-08256), settled globally in mid-2016. The defensive posture is therefore neutral-to-hardened: there is no PTAB kill shot to lean on, but there is also no § 315(e) estoppel running against anyone, because estoppel requires a final written decision — and none ever issued. The more consequential defensive fact may be that the patent's term has run (see Strategic summary).

IPR2016-00092 — Hospitality Core Services LLC (d/b/a Blueprint RF) v. Nomadix, Inc.

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2015-10-27
• Status: Settlement (structured data). Plain English: the Board instituted the trial, then granted a joint motion to terminate and entered judgment without a final written decision, after the parties settled the parallel district-court case. No claims were canceled or confirmed.
• Judge panel: Administrative Patent Judges Howard B. Blankenship (writing), Glenn J. Perry, and Trevor M. Jefferson. (Same panel sat on the four companion Nomadix IPRs.)
• Petition grounds: Petitioner challenged claims 1–20 under §§ 102 and/or 103, pleading:
  • Slemmer (US 6,226,677 B1) — § 102(e), claims 1–20;
  • Slemmer + Vu (US 5,623,601) — § 103(a), claims 1–20;
  • Slemmer + IPORT + Applegate (US 6,321,336 B1) — § 103(a), claims 1–20.
    Supporting exhibits included the ATCOM/INFO IPORT v2.x and IPORT Central Office white papers (Nov. 1998) and the Declaration of Keith Olson, the former lead ATCOM software programmer who built IPORT's redirection and property-management-system integration.
• Institution decision: Partially instituted — 2016-05-05. The Board found a reasonable likelihood of prevailing (§ 314(a)) on only one ground: claims 1–20 as obvious under § 103(a) over Slemmer + Vu. It did not institute on the Slemmer-only § 102(e) ground or on the Slemmer + IPORT + Applegate § 103(a) combination. Panel framing of the invention: "a gateway that is able to redirect a user from a requested network resource to an alternate resource" — e.g., a hotel guest's web-page request being redirected to a portal page.
  • Institution decision (PDF): https://www.docketalarm.com/cases/PTAB/IPR2016-00092/Inter_Partes_Review_of_U.S._Pat._8364806/docs/05-05-2016-Board/Decision_Granting_Institution-8-Decision_to_Institute_Inter_Partes_Review.pdf
• Final Written Decision: None. No FWD ever issued on the '806 patent. Because trial terminated before a merits decision, there is no claim-level verdict to report — no independent claim canceled, no dependent claim canceled, no claim held patentable. Patent Owner had not yet filed a Patent Owner Response when termination was sought.
• Settlement / termination: On 2016-06-28 the parties filed an authorized Joint Motion to Terminate and a Joint Request to treat the settlement agreement as business confidential (37 C.F.R. § 42.74(c)). The Board granted both on 2016-07-27, entering Judgment — Termination Pursuant to Settlement and keeping the agreement separate from the patent files. The settlement resolved the related district-court action Nomadix, Inc. v. Hospitality Core Services LLC, No. 14-cv-08256 (C.D. Cal.); contemporaneous reporting indicated Nomadix agreed to dismiss all claims and Blueprint RF agreed to a royalty-bearing license. The specific financial terms are confidential (the agreement was filed under seal and I have not seen it).
  • Termination judgment (PDF, covers IPR2016-00077 / -00081 / -00092): https://www.docketalarm.com/cases/PTAB/IPR2016-00081/Inter_Partes_Review_of_U.S._Pat._8266269/docs/07-27-2016-Board/Termination___Settlement_After_Institution-18-Judgment___Termination_Pursuant_to_Settlement.pdf
• Appeal: None. With no FWD, there was nothing to appeal to the Federal Circuit, and no CAFC docket number exists for this proceeding.
• Defensive value: Because trial ended in settlement without an FWD, IPR2016-00092 is not an invalidity anchor for a defendant — but it also creates no estoppel. The one thing a defendant can mine from it is the institution-stage record: the Board's 2016-05-05 decision accepted Slemmer in view of Vu as a reasonably likely § 103(a) combination over claims 1–20, which is a vetted starting point for a fresh obviousness theory, together with the Olson declaration and the November 1998 IPORT white papers as prior-art evidence.

Strategic summary

Claim status — CANCELED vs. SUSTAINED vs. UNTESTED. For US 8,364,806: canceled = none; sustained = none; untested = claims 1–20 (all of them). No AIA trial ever reached a final written decision on this patent, so every claim stands as issued and unadjudicated at the PTAB. Any patentability statement about the '806 claims at the Board level would be fabricated; the honest answer is that the claims remain legally intact but PTAB-untested.

Estoppel landscape. § 315(e)(2) estoppel attaches only to "a petitioner … that results in a final written decision." Here the Board instituted and then terminated on settlement, so no § 315(e) estoppel runs against Hospitality Core Services/Blueprint RF or its privies, and a defendant cannot point to a prior FWD to shut down a claim or ground. The practical constraints on a current defendant are therefore contractual/common-interest, not statutory: if you are in privity with Blueprint RF and bound by its 2016 confidential settlement, that agreement (not the IPR statute) may restrict what you can assert. All prior-art grounds remain available in principle — Slemmer (US 6,226,677), Vu (US 5,623,601), Applegate (US 6,321,336), Birrell (US 5,805,803), and the ATCOM/INFO IPORT white papers — subject only to ordinary § 325(d) discretion, since the Board already saw (and partly declined to institute on) some of them. Note the Board declined institution on Slemmer-alone § 102(e) and on Slemmer + IPORT + Applegate § 103(a); a later petitioner reusing exactly those framings should expect a § 325(d) fight.

Pattern signals. This was a coordinated five-patent campaign, not a one-off: Blueprint RF filed IPRs against five Nomadix patents — the '894 (IPR2016-00052), the '246 (IPR2016-00073), the '266 (IPR2016-00077), the '269 (IPR2016-00081), and the '806 (IPR2016-00092) — all in late 2015, all instituted, and all terminated together by the single July 2016 settlement. The petitioner was a direct competitor (a hospitality-ISP "large operating company"), not a defensive aggregator; the "Unified Patents" name in the family data is only the neutral host of the PTAB dataset, not a party. Separately, Guest-Tek Interactive Entertainment later mounted its own IPR challenges to Nomadix patents (2017–2018), some of which the PTAB denied on 2018-06-29, and Nomadix pursued a parallel license/forum-selection fight (9th Cir. No. 20-55439). I could not confirm from the available results that any Guest-Tek petition targeted the '806 patent specifically, so I do not represent that it did. Nomadix (and its successors/assignees under the DOCOMO → Gate Worldwide Holdings → Nomadix chain of title) has been an active patent enforcer but does not appear to have taken a PTAB merits loss on this patent.

Term/expiry observation. Public family data for US 8,364,806 shows a priority date of 1998-12-08, a 2012 continuation filing, issuance on 2013-01-29, and an anticipated expiration of 2019-12-08, with current legal status "Expired – Fee Related." If that is correct, the '806 patent's enforceable term has lapsed — which can matter far more to a defendant than the unsettled IPR. I flag this as a public-register status, not a legal conclusion; confirm the term and any lapse/revival against the USPTO Patent Center record before relying on it.

Recommended next steps

• There is no FWD to quote. If you are a defendant, do not assert that any claim of the '806 patent "was canceled" — it wasn't. The only public PTAB merits-adjacent document is the 2016-05-05 institution decision (linked above), which instituted solely on Slemmer + Vu, § 103(a), claims 1–20, and expressly declined the other two grounds. That decision is a roadmap, not a judgment.
• Check your privity. Statutory estoppel is absent (no FWD), but if you are a Blueprint RF successor, affiliate, customer, or co-defendant bound by the 2016 confidentiality agreement, your freedom to re-run the Slemmer/Slemmer-Vu/Slemmer-IPORT-Applegate theories may be contractually, not statutorily, constrained. Get the sealed agreement if you can.
• No live PTAB milestones to track. There is no active proceeding on 8,364,806 — no institution deadline, no oral hearing, no one-year FWD clock running. If a new petitioner wants to file, the § 315(b) one-year bar runs from service of a complaint asserting the patent, and IPR eligibility/§ 325(d) discretion (given the 2016 institution record) will be the early battleground.
• Lead with the term. Before building an invalidity case, verify the expiry/lapse status of the '806 patent on USPTO Patent Center. If the term has run, your defense may be about unenforceability of an expired patent and past damages only, which changes the calculus entirely.
• Cross-check the family. The same Nomadix portal-redirect family ('894, '246, '266, '269, '690, and the later '748 / '243 / '935 continuations) has its own PTAB history. Because the '806 IPR settled on the eve of the merits, the useful PTAB precedent for attacking these claims may sit in the companion proceedings — review those before assuming the Board's views on the shared "proxy handshake / proxy redirect" limitations.

Caveat on sourcing: the structured ODP block reported no AIA trials for this patent; IPR2016-00092 was surfaced only via web search (Unified Patents PTAB portal, Docket Alarm, the Board's own decisions). Treat the ODP feed here as incomplete, not as evidence of absence.

I'll research the assignment record for US 8364806 from multiple sources before building the report.

US 8364806 B2 — Ownership & Assignment Reconstruction

Patent: US 8,364,806 B2 — Systems and methods for providing content and services on a network system
App. No.: 13/566,904 · Filed: 2012-08-03 · Granted: 2013-01-29 · Priority: 1998-12-08

Data-integrity note (read first). I could retrieve the conveyance chain (below) from Google Patents legal events embedded in the authoritative patent text, but I could not retrieve the USPTO Assignment Center reel/frame numbers, execution dates, or the correspondent of record for each entry through live search — Assignment Center returned no indexed copy I could verify. I will not invent them. Where the record is silent, I say so. Reel/frame must be confirmed directly at the USPTO Assignment Center (search by patent number 8364806) before any of this is used in a brief or diligence memo.

Inventors

• All three are named as inventors on the face of the patent; the application's continuation-in-part lineage traces to Nomadix's 1998–1999 filings.
• Pattern note: In Nomadix, Inc. v. SIA Mikrotikls (C.D. Cal. 2:19-cv-10202), Nomadix describes its founders as Dr. Leonard Kleinrock and Dr. Joel Short. Kleinrock is not a named inventor on this patent — a common feature where founders serve as company figureheads and engineers/employees are the actual named inventors. No evidence of inventors departing within 12 months of filing is available in the sources retrieved.

Original assignee

Nomadix, Inc. (original assignee on the issued patent).

• Product? Yes. Nomadix's own "Product Patent Listing" expressly lists US 8,364,806 among the patents that "may be covered by" its AG 2000 / AG 2100 / AG 2300 / AG 2400 / AG 3000 / AG 3100 / AG 5000 / AG 5000 Metro / AG 5500 / AG 5600 / AG 5800 / AG 5900 / NWCG / NITO 500 / NITO 1500 / USG II / HSG / USG gateway products. → This is an operating company with a shipping product reading on the claims.
• Line of business: Network gateway hardware/software for public-access Internet (hotels, airports, MDUs) — the "nomadic router"/transparent network-access category the spec claims to pioneer.
• Status: Operating. Corporate chain per the 2019 complaint's Local Rule 7.1 disclosure: Gate Worldwide Holdings LLC → GWHSPV, LLC → Nomadix, Inc. Earlier, an affiliate relationship existed with DOCOMO InterTouch (NTT DOCOMO group), consistent with the 2015 security interest below.

Assignment timeline

The following conveyances are recorded against US 8,364,806 (source: Google Patents legal-events/assignments for US8364806B2). Execution dates and reel/frame not retrieved — flagged per entry.

• Recorded 2015-09-30 — Reel not retrieved/frame not retrieved

  • Conveyance: Security Interest (SECURITY INTEREST — "see document for details")
  • Assignor: NOMADIX, INC.
  • Assignee: NTT DOCOMO, INC.
  • Correspondent: not retrieved
  • Context: Securitization / secured financing — Nomadix's NTT DOCOMO-affiliated backer taking a patent collateral lien (consistent with the DOCOMO InterTouch ownership period).

• Recorded 2017-08-29 — Reel not retrieved/frame not retrieved

  • Conveyance: Modification to Patent Security Agreement
  • Assignor: NOMADIX, INC.
  • Assignee: NTT DOCOMO, INC.
  • Correspondent: not retrieved
  • Context: Continuation/amendment of the 2015 secured financing — a distress-adjacent sign the lien was being renegotiated, not retired.

• Recorded 2018-01-23 — Reel not retrieved/frame not retrieved

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: NOMADIX, INC.
  • Assignee: GATE WORLDWIDE HOLDINGS LLC
  • Correspondent: not retrieved
  • Context: Acquisition — Nomadix's assets/equity brought under Gate Worldwide Holdings (the parent now identified in litigation disclosures as ultimate parent of Nomadix via GWHSPV, LLC).

• Recorded 2018-01-23 (same day) — Reel not retrieved/frame not retrieved

  • Conveyance: Assignment of Patent Security Agreement
  • Assignor: NTT DOCOMO, INC.
  • Assignee: GATE WORLDWIDE HOLDINGS LLC
  • Correspondent: not retrieved
  • Context: Transfer of the DOCOMO security interest as part of the same acquisition — the incoming owner both bought the asset and stepped into the secured-lien position.

• Recorded 2019-03-20 — Reel not retrieved/frame not retrieved

  • Conveyance: Security Interest
  • Assignor: NOMADIX, INC.
  • Assignee: KNOBBE, MARTENS, OLSON & BEAR, LLP
  • Correspondent: not retrieved (note: Knobbe Martens is simultaneously Nomadix's litigation counsel — Douglas G. Muehlhauser and Mark Lezama appear as Nomadix counsel in the 2019 C.D. Cal. complaints)
  • Context: Financial-distress tell — a law firm recorded a security interest over the patent portfolio, typically to collateralize unpaid legal fees.

• Recorded 2019-05-28 — Reel not retrieved/frame not retrieved

  • Conveyance: Release by Secured Party
  • Assignor: KNOBBE, MARTENS, OLSON & BEAR, LLP
  • Assignee: NOMADIX, INC.
  • Correspondent: not retrieved
  • Context: Lien cleared — the fee security interest was released roughly two months later.

• Recorded 2019-11-22 — Reel not retrieved/frame not retrieved

  • Conveyance: Quitclaim
  • Assignor: GATE WORLDWIDE HOLDINGS LLC
  • Assignee: NOMADIX, INC.
  • Correspondent: not retrieved
  • Context: Pre-litigation transfer — ownership quitclaimed back down to the operating entity 10 days before Nomadix filed its infringement complaint against SIA MikroTikls (filed 2019-12-02). Classic standing/venue cleanup.

Conflict to flag: Google Patents still lists the "Current Assignee" as Gate Worldwide Holdings LLC, but the last chronological record is a 2019-11-22 quitclaim to Nomadix, Inc. The two are inconsistent on their face; the operative record (last-executed assignment) points to Nomadix, and Nomadix is the named plaintiff in the 2019–2024 litigation. Verify the current-of-record owner at Assignment Center before relying on either name.

Timeline diagram

timeline
    title Ownership of US 8364806
    1998 : Priority date
    2012 : Application filed
    2013 : Granted to Nomadix Inc
    2015 : Security interest to NTT DOCOMO
    2017 : Security agreement modified
    2018 : Assigned to Gate Worldwide Holdings
         : DOCOMO security interest transferred
    2019 : Knobbe Martens security interest
         : Release by Knobbe Martens
         : Quitclaim back to Nomadix
         : Nomadix sues SIA Mikrotikls

NPE / troll-pattern signals

1. Shell-entity transfer — unclear. The patent moved from operating Nomadix to Gate Worldwide Holdings LLC (recorded 2018-01-23) and the litigation disclosure exposes a GWHSPV, LLC intermediate — "SPV" naming is suggestive of a portfolio-holding vehicle. But the chain then quitclaims back to Nomadix (2019-11-22), and Nomadix still lists products covered by this patent. No registered-agent address or single-member-LLC evidence was retrievable. Not a clean finding.

2. Known asserter in the chain — not present. Neither the current nor any prior assignee (Nomadix, Gate Worldwide Holdings, NTT DOCOMO, Knobbe Martens) matches the enumerated NPE lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, etc.). No Unified Patents / RPX high-frequency-plaintiff designation surfaced for Nomadix in the sources retrieved.

3. Repeat correspondent across the chain — unclear (unverifiable). Reel/frame correspondents were not retrievable, so recurrence cannot be established. However, one concrete recurrence is visible in the public record outside Assignment Center: Knobbe, Martens, Olson & Bear, LLP appears both as Nomadix's litigation counsel of record (Muehlhauser, Lezama) in the 2019 and 2016 C.D. Cal. actions and as a secured party on the 2019-03-20 security interest. A single law-firm name spanning both roles is noteworthy but, per the rules, is not by itself an NPE finding.

4. Cascading transfers — not present. Only one same-day pair (two 2018-01-23 records) and no chain of unrelated LLCs within 24 months. The transfers run down the corporate family (holding co → operating co), not across serial shell LLCs.

5. Pre-litigation transfer — present. The 2019-11-22 quitclaim (Gate Worldwide Holdings → Nomadix) lands ~10 days before the 2019-12-02 filing in Nomadix, Inc. v. SIA Mikrotikls (2:19-cv-10202), and just ahead of amending pleadings in Nomadix v. Guest-Tek (2:16-cv-08033), where Gate Worldwide Holdings moved to substitute as plaintiff and then withdrew (docket 193). Strong evidence the chain was arranged to firm up standing.

6. Bankruptcy fire-sale — not present. No Chapter 7/11 proceeding or court-supervised sale appears in the retrieved record. Distress markers exist (the 2019 law-firm lien) but not a bankruptcy conveyance.

7. Privateering — unclear. NTT DOCOMO initially took only a security interest (2015, modified 2017), then assigned that security agreement to Gate Worldwide Holdings in 2018 — a secured-lender exit, not an operating company deputizing an NPE against competitors. No SEC filing or Patent Progress/EFF coverage confirming a privateering arrangement was retrievable.

8. Defensive aggregator — not present. Chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN.

Verdict

Operating-company assertion (with NPE-adjacent caveats).

Justification: The chain begins and ends with Nomadix, Inc., an operating company whose own Product Patent Listing states US 8,364,806 covers its AG/HSG/USG gateway line, and Nomadix is the plaintiff suing competitor defendants (SIA MikroTikls, HP, Guest-Tek) — the textbook operating-company profile. The NPE-adjacent markers are real but do not satisfy the NPE definition: the 2019-11-22 quitclaim back to Nomadix just 10 days before the 2019-12-02 infringement filing is a standing/venue cleanup rather than a transfer to a non-practicing licensor, and the 2019-03-20 Knobbe Martens security interest evidences financial strain, not a licensing-only business model. The Gate Worldwide Holdings LLC / GWHSPV, LLC holding structure (2018-01-23 records) warrants continued monitoring, but the asserter remains a product-shipping company.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent number 8364806) · Google Patents — https://patents.google.com/patent/US8364806/en

Open items I could not close (do not treat as negative findings): exact reel/frame and execution dates for all seven conveyances; the correspondent of record for each recording; and whether GWHSPV, LLC is the current-of-record owner versus Gate Worldwide Holdings LLC.

I'll research US Patent 8364806 and its prior art citations. Let me search the USPTO and related patent databases.

Let me get the specific "References Cited" section (US patent citations, foreign citations, and other publications) for US 8364806.

Let me look at the specific citation lists on patent database mirrors.

Note on scope and tool limits

Before the analysis, an important disclosure: within this session my searches of the USPTO/Google Patents pages for US 8,364,806 B2 returned the patent's specification and bibliographic data in full, but the "Patent Citations" / "References Cited" table was truncated before I could read every entry with its issue date and examiner classification. The most complete citation list I could retrieve came from a PubChem patent mirror of the same document, and even that list cut off mid-row (at US-5941947-A). I therefore give you (1) a verified citation list as far as it was retrievable, (2) a claim framework, and (3) a §102 mapping for the references whose subject matter I can identify with reasonable confidence, explicitly flagging uncertainty where I have it rather than fabricating dates or contents.

I did not conflate 8364806 with the near-miss numbers my searches surfaced — e.g., US 8,361,026 and US 8,361,029 (unrelated auto-injector patents) — as the strict rule requires.

1. Patent under review (identity confirmed)

Related family members claiming the same 1998 priority and cited in the record: US 6,636,894 (Redirection Application, Ser. No. 09/458,569), US 8,713,641 (Ser. No. 09/458,602), US 7,194,554 (Ser. No. 09/693,060), and the gateway-device application Ser. No. 08/816,174.

2. Claim framework I mapped the art against

The operative independent claim language reproduced in the file is a network-access-management method, comprising:

1. receiving data packet(s) from a client computer with a request for network content from an external server;
2. determining authorization rights of the client computer based on a user profile selected from a user profile database;
3. producing, when rights are lacking, a redirection response causing the client to request content at a different location, where the redirection response is configured to indicate to the client that it originated from the external server (i.e., transparent/spoofed redirection); and
4. transmitting that redirection response to the client.

The specification also discloses location-based content (physical-location identifier from an intermediary network device such as a hotel room) and AAA functions. So the three claim axes to test are: (A) transparent redirection, (B) profile/AAA-based authorization, and (C) location-based content/authorization.

3. References cited (retrieved list)

The cited U.S. patent documents on the '806 face, as far as retrievable:

US-5802310-A, US-5802320-A, US-5802502-A, US-5802047-A, US-5802454-A, US-5805803-A, US-5806043-A, US-5809415-A, US-5812776-A, US-5812786-A, US-5812531-A, US-5812819-A, US-5815664-A, US-5818845-A, US-5822526-A, US-5825772-A, US-5832229-A, US-5835727-A, US-5835720-A, US-5835724-A, US-5835061-A, US-5835725-A, US-5841769-A, US-5845070-A, US-5844973-A, US-5848233-A, US-5852812-A, US-5854901-A, US-5856974-A, US-5859971-A, US-5862328-A, US-5862325-A, US-5862345-A, US-5864683-A, US-5864610-A, US-5881234-A, US-5884035-A, US-5889958-A, US-5889470-A, US-5893077-A, US-5894321-A, US-5894479-A, US-5901287-A, US-5903732-A, US-5909441-A, US-5909549-A, US-5910954-A, US-5915093-A, US-5915119-A, US-5918018-A, US-5916302-A, US-5918016-A, US-5920699-A, US-5922049-A, US-5923853-A, US-5930255-A, US-5931917-A, US-5936542-A, US-5938726-A, US-5940394-A, US-5941988-A, US-5941947-A (list truncated here).

Foreign patent documents cited: EP-0924913-A1; EP-0889418-A3.

Non-patent literature cited (from the shared family record): Aboba et al., Review of Roaming Implementations, RFC 2194 (Sep. 1997); Aceves, Wireless Internet Gateways (WINGS), IEEE MILCOM '97 (Nov. 1997); Arar, Prepaid Internet Access Cards: Instant ISP, PC World (Jul. 14, 1997); Ascend Communications and ATCOM/INFO Announce Development Alliance, Business Wire (Jun. 22, 1999); Agrawal, SWAN: A Mobile Multimedia Wireless Network, IEEE Personal Communications (Apr. 1996); Airamo, Virtual Private Networks, Tik-110.501 Seminar (Nov. 28, 1997); Alexander, Active Bridging, U. Penn. Tech. Report MS-CIS-97-02 (Jan. 1997); Alonso, Database system issues in nomadic computing, ACM SIGMOD (1993).

Critical temporal point: Because the '806 patent carries a 1998-12-08 priority date, only references published/issued before that date (or qualifying under pre-AIA §102(e) as earlier-filed U.S. applications) can anticipate. Several publications in the broader family citation list are dated 1999–2005 and thus are §102(e)/§103 art only — they cannot be §102(a)/(b) anticipatory art for this patent.

4. Most relevant prior art and §102 mapping

Below, "potentially anticipates" reflects a subject-matter match to the three claim axes; I flag confidence because I could not individually re-verify every reference's full text in this session.

① US 5,835,061 A — "Method and apparatus for geographic-based communications service" (Stewart; Wayport)

• Issue date: Nov. 10, 1998 (pre-dates the 1998-12-08 priority).
• Description: geographic-based communications service delivering location-aware information/services to a mobile user based on the user's physical location (e.g., in a hotel, airport, or other venue).
• Potential §102 relevance: the location-based content/services aspect (axis C) — a physical-location-based selection of content is the core of this reference. Strong candidate with respect to the "location-based content determination" claims.
• Confidence: High on subject matter; the specific claim-element mapping would require the claim text.

② US 5,812,776 A — Gifford (Open Market) — redirecting a client to a different page

• Issue date: Sep. 22, 1998 (pre-dates priority).
• Description: mapping a client-requested identifier (e.g., a telephone number) to a different resource (URL) and returning that other resource in a redirect command.
• Potential §102 relevance: the transparent redirection function (axis A) — a server returning a redirection to a substitute network location. Directly germane to claim 1's "redirection response" element.
• Confidence: Moderate–High (title/subject matter; verify the exact redirect mechanism).

③ US 5,862,325 A — Reed et al. (distributed/interpersonal computing architecture)

• Issue date: Jan. 19, 1999 — after the 1998-12-08 priority.
• Potential §102 relevance: if relied on, it would function only as §102(e) art (earlier-filed, later-issued); not a §102(a)/(b) anticipation. Include with caution.

④ US 5,864,683 A — "System for securing inbound and outbound data packet flow in a computer network" (packet firewall)

• Issue date: Jan. 26, 1999 (just after priority; verify filing date).
• Potential §102 relevance: packet filtering / access-control at a network interface — relevant to authorization enforcement (axis B) but generally not to transparent redirection.

⑤ US 5,889,958 A — "Network access control system and process"

• Issue/date: I could not confirm in-session.
• Potential §102 relevance: access control based on user/device identity — pertinent background for profile/AAA authorization (axis B).

⑥ US 5,852,812 A — "Billing system for a network service" (Microsoft)

• Potential §102 relevance: accounting/billing for network use built on user account records — background for the AAA/accounting aspect, though the '806 claims are directed to authorization + redirection, not billing per se.

⑦ US 5,802,502 A — electronic transaction/authorization system

• Potential §102 relevance: transaction authorization based on stored account data — general AAA background, weak on the redirection/location elements.

⑧ US 5,832,320 A — "System for packet filtering of data packets at a computer network interface"; and US 5,848,233 A — "Method and apparatus for dynamic packet filter assignment"

• Potential §102 relevance: dynamic per-source filtering = authorization enforcement (axis B); background rather than anticipatory of the redirection+location combination.

⑨ US 5,812,819 A — "Remote initialization of a network host"

• Potential §102 relevance: relates to host auto-configuration on a foreign network (the Nomadix "transparent access" theme), but the '806 independent claim is about content/authorization/redirection, so this is at most §103-supporting background.

⑩ Non-patent literature — the RFC 2194 roaming review, WINGS, SWAN, Prepaid Internet Access Cards, and the Ascend/ATCOM alliance materials are the closest NPL to the "transparent access + prepaid/billing + roaming" theme. Note the Ascend/ATCOM item is dated Jun. 22, 1999 — after the priority date — so it cannot be §102 anticipation; it is relevant only to later-filed family continuations.

5. Bottom line

• The strongest anticipatory candidates for US 8,364,806's core axes, based on subject matter and being pre-1998-12-08, are US 5,835,061 (location-based services → axis C) and US 5,812,776 (redirect to a different resource → axis A).
• US 5,850,?/US 5,889,958/US 5,802,320/US 5,848,233/US 5,852,812 speak to profile-based access control and billing (axis B) but do not by themselves appear to combine all elements of the independent claim (request from client → profile-based rights determination → server-spoofed redirection response → transmission).
• References dated 1999 or later in the family citation lists are not §102(a)/(b) art for this patent and should be treated as §102(e)/§103 material only.

Caveats you should carry forward

1. I could not verify the complete, dated citation table for the '806 patent in this session (both the Google Patents and PubChem fetches truncated). The list above is partial; a definitive §102 chart requires the full "References Cited" table straight from USPTO PatentCenter/Global Dossier for application 13/566,904.
2. Anticipation under §102 requires every element of a claim in a single reference; my mapping is a relevance screen, not a completed element-by-element chart. For the issued claims, pull the actual granted claim set (claim 1 and its dependents) and map each limitation.
3. Where I could not confirm a reference's exact issue date or content (e.g., US 5,889,958; US 5,802,502), I have said so rather than assert a date.

If you want, I can next produce a limitation-by-limitation §102 matrix for claim 1 against US 5,835,061 and US 5,812,776 once you confirm the exact granted claim text you want analyzed.

Sources: Google Patents record and specification for US 8,364,806 B2 (https://patents.google.com/patent/US8364806/en); PubChem patent mirror citation list (https://pubchem.ncbi.nlm.nih.gov/patent/US-8364806-B2); Justia family citation and NPL list (https://patents.justia.com/patent/[8606917](/patent/8606917)); Unified Patents family/litigation data (https://portal.unifiedpatents.com/patents/patent/US-8364806-B2).

I'll pull what I can on the cited prior art before analyzing.

Good — I found the actual prior-art set used against this patent in IPR2016-00092. Let me confirm the claim text and the reference details.

Obviousness Analysis — U.S. Patent No. 8,364,806 B2

Patent: US 8,364,806 B2, "Systems and methods for providing content and services on a network system"
Inventors: Joel E. Short, Florence C. I. Pagan, Josh J. Goldstein
Assignee (as listed): Nomadix, Inc. → later Gate Worldwide Holdings LLC
Appl. No.: 13/566,904, filed 2012-08-03; granted 2013-01-29
Status: Expired – Fee Related (anticipated expiration 2019-12-08)
Source of record: https://patents.google.com/patent/US8364806/en

0. Note on the prior-art record used

The fetched Google Patents page supplies only the front-page prior-art metadata — prior-art keywords (network, user, access, subscriber, computer), a listed prior-art date of 1998-12-08, the priority/continuation-in-part chain (US 09/458,569, 09/458,602, 09/693,060; provisional 60/161,093 "Location-Based Identification and Authorization for use With a Gateway Device"; Ser. No. 08/816,174), and litigation/PTAB data — but not the full "References Cited" list. To build a defensible §103 record I therefore supplemented with the actual prior-art set that the parties put at issue for this exact patent in IPR2016-00092, Hospitality Core Services LLC v. Nomadix, Inc. (filed 2015-10-27; instituted 2016-05-05; terminated 2016-07-27 on settlement), plus the parallel district-court invalidity record in Nomadix v. Hospitality Core Services, No. 2:14-cv-08256 (C.D. Cal.). Where I cannot verify a reference's content, I say so rather than characterize it.

1. The claim at issue

The '806 was challenged as claims 1–20. Independent claim 1 is a system claim, per the Petitioner's claim chart (Ex. 1043):

"A system for performing redirection of a user device attempting to communicate through a network, comprising:
[a] the network access management system configured to send connection handshake completion data to a user device in response to a connection request from the user device directed to a first device that is external to the network access management system, the connection handshake completion data configured to appear to be from the first device …;
[b] the network access management system further including a redirection data generation module configured to generate response data customized for the incoming request for access to the first device, the response data including content different from content requested by the incoming request, the response data including a redirection message configured to cause the user device to initiate a request for content from a second device, the response data being customized for the incoming request at least in part by appearing to be from the first device, wherein the response data appears to be from the first device at least in part by including a source address corresponding to the first device in a header of the response data; and
[c] the network access management system further configured to send a response to the incoming request for access to the first device, the response comprising the generated response data."
(Ex. 1043)

The specification's own summary states the method counterpart — receiving a request for content, determining authorization rights from a user profile database, and, if not entitled, "producing … a redirection response configured to cause the client computer to initiate a request for network content at a network location different from the request … the redirection response configured to indicate to the computer that the redirection response originated from the external server."

The conceptual core is therefore a "spoofed-origin" captive portal: an in-path gateway completes the TCP handshake as if it were the requested web server, then returns a redirect whose packet header carries the requested server's source address, so an unconfigured client browser accepts the response and jumps to a portal/login page.

Effective filing date. The '806 is the last of a continuation chain from applications filed 1999-12-08 and 2000-10-20. In the C.D. Cal. litigation Nomadix represented that the family patents "have always been set to expire on the same day: December 8, 2019" (20 years from a 1999-12-08 filing). Google's "1998-12-08" prior-art date appears to correspond to an earlier provisional. This matters: if the effective date is 1999-12-08, then Slemmer (below) is squarely §102(e) art; even on the earlier 1998-12-08 reading, Slemmer's provisional 60/109,878 (filed 1998-11-25) precedes it. Either way Slemmer qualifies, which is consistent with the Board instituting on Slemmer under §102(e).

POSITA. A person having ordinary skill would be a designer/engineer of network access systems with a CS/EE background and ~2 years' experience with TCP/IP, HTTP, DHCP/DNS, and proxy/firewall devices — the level both parties effectively assumed.

2. Prior-art references on the '806 record

3. Grounds of obviousness and element mapping

Ground A — Slemmer + Vu (§103(a)), the combination the Board actually instituted

Why a POSITA would combine. Both references address the same problem in the same field — controlling Internet access from an unmanaged private network (a hotel/MDU LAN) — and both are the kind of gateway/firewall elements a designer would expect to co-locate. Vu's gateway supplies the natural enforcement point and the security rationale (an untrusted, constantly-changing guest population must be authenticated and policed at the boundary), while Slemmer supplies the mechanism for making that enforcement invisible to an unconfigured browser. The combination is a predictable use of known elements according to known methods, yielding no more than the expected result (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415–21 (2007)) — and the Board found a reasonable likelihood of success on precisely this ground.

Ground B — Slemmer + IPORT (Exs. 1007/1008) + Applegate (§103(a))

This was Petitioner's Ground 3, aimed at claim constructions in which the redirection server is remote from the local gateway. IPORT's Central Office configuration expressly puts the gateway at the hotel and the redirection server in a shared server farm reached over T1/Internet; Applegate supplies the generic proxy notion that a rule side effect can redirect the destination address to an alternate machine.

Motivation. Serving dozens of properties from one redirection/portal server is the classic cost-and-administration scaling choice — the same rationale the '806 specification itself gives for putting the source-profile database external to the gateway ("administering and maintaining one consolidated database … is easier than multiple smaller databases"). A POSITA optimizing a hotel-gateway deployment would predictably centralize an identical function. IPORT is also the strongest single reference against the "appear to be from" limitation because, as a contemporaneous ATCOM engineer attested, the gateway's handshake packets and the redirect server's reply both carried the original destination address in the source/sender field for the express purpose of getting the client's protocol stack to accept them.

Ground C — Slemmer (or Slemmer+Vu) + Felten, Web Spoofing (§103(a))

If Slemmer's "responds as if it were the web server" were read as not literally reaching source-address insertion, Felten (Feb. 1997) independently documents that deliberately presenting one server's identity in place of another was a known technique with known uses at the relevant time. The motivation is supplied directly by Slemmer's stated need to have the client accept redirect content it did not ask for — precisely the problem server-identity spoofing solves (and for which RFC 1945 redirects had no mechanism when the client had not yet accepted the connection).

Ground D — for the dependent claims (2–20)

Slemmer's own claims (25–27) recite the hotel/apartment-network context, login information, and advertising information; RFC 2139 supplies per-user accounting start/stop; Freund supplies policy-by-destination-address; Applegate supplies rule-driven redirection. Because I could not verify the disclosures of Birrell, Stockwell, Bowker, Brendel, and Cohen, I do not assert a mapping for the remaining dependent limitations; those would need the actual Office Action/Petition text for the specific dependent claim.

4. Motivations to combine — the KSR framework applied

1. Same field, same problem. Slemmer, IPORT, Vu, Applegate and Freund all concern controlling a user's Internet access through an intermediary device on a private LAN. That is the '806's field; §103 permits combination of references "from the same field of endeavor."
2. Addressing a known, identified need. Slemmer's own background frames the problem: guests/tenants arrive with machines configured for a different network, and the operator wants (a) no client reconfiguration and (b) an opportunity to present non-requested content (login/advertising) before permitting access. Every element of claim 1 is a direct response to that stated need.
3. Predictable results / no change in principle of operation. Adding Vu's gateway or relocating the redirection function to a central office does not alter how the client-side spoofed redirect works; the pieces interoperate with "no significant change" to the content path.
4. Design incentives and market forces. The '806 specification itself recites the commercial drivers — advertising on a portal page, hotel-room-based free/discounted access, per-room bandwidth tiering, credit-card and e-wallet signup. Those incentives existed identically in the Nov. 1998 IPORT white papers and in Slemmer's assigned context (LodgeNet). KSR allows these "design incentives and market forces" to supply the reason to combine.
5. A finite set of identified, predictable solutions. Transparent interception at a gateway + redirect to a portal was, by late 1998, the standard architecture for hotel/MDU/airport access; "if a technique has been used to improve one device, and a person of ordinary skill … would recognize that it would improve similar devices in the same way, using the technique is obvious."
6. Reasonable expectation of success, evidenced here not just by argument but by an actual commercial embodiment predating the critical date (ATCOM/IPORT, Nov. 1998).

5. Weaknesses in the §103 case (counter-analysis)

A fair analyst must record the countervailing points:

• Motivation-to-combine must be articulated, not assumed. Nomadix attacked the Slemmer+Vu ground as a "three-sentence obviousness analysis" that was "conclusory." Federal Circuit law is unforgiving here: Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); In re Nuvasive, 842 F.3d 1124; Personal Web Techs. v. Apple, 848 F.3d 987; TQ Delta v. 2Wire, 942 F.3d 1352. A combination resting on "these are all network devices" will fail; the reasons in §4 must be tied to specific claim limitations.
• §102(e) date is contested. Nomadix argued the '806 issued after the examiner considered Slemmer (in the related '246 case and again in the '806), and that Slemmer does not disclose the connection-handshake and response-data limitations at all — attacking the Petitioner's inherency theory as both contrary to Slemmer's express disclosure and unsupported technologically.
• IPORT's prior-art status was disputed (public accessibility/date of the white papers).
• Prosecution history cuts the other way. The applicant was allowed over Slemmer, IPORT and Applegate by Examiner Won — weak evidence of non-obviousness, but not nothing.
• Common-ownership bar. Any combination built on the Short '694 (the incorporated "Redirection Application") is barred as a §103 reference by pre-AIA §103(c). Blueprint's invalidity theory that the '806 claims are "obvious variations" of sibling patents is an obviousness-type double-patenting theory, not §103 over third-party art, and the district court rejected the record as undeveloped.
• No merits adjudication exists. The IPR settled on 2016-07-27 after institution, so there is no final written decision; and on 2016-01-27 the district court denied Blueprint's §§102/103 summary-judgment motion for failure to make a claim-by-claim Graham showing, expressly declining to reach the merits. That cuts both ways: the '806 has not been held invalid, nor has it been cleared.
• Hindsight caution. KSR itself warns of "the distortion caused by hindsight bias." The strongest defense is that the spoofed-source-address handshake (element [a]) is a specific, non-obvious implementation detail — but IPORT's contemporaneous Nov. 1998 documentation of exactly that technique substantially blunts it.

6. Conclusion

On this record the claims are, in my assessment, more likely than not obvious under §103(a):

1. Slemmer (US 6,226,677) in view of Vu (US 5,623,601) — the combination the PTAB actually instituted on claims 1–20 (institution decision, 2016-05-05). Slemmer discloses the forced proxy, the "as if it were the web server" handshake behavior, the HTTP redirect message, and the different-from-requested content; Vu supplies the in-path secure gateway as the interception/enforcement point. Motivation: same field, same known problem, predictable combination of known elements, with market pressure for a captive portal.
2. Slemmer in view of the ATCOM/IPORT white papers (Nov. 1998) and Applegate (US 6,321,336) — strongest against the "appear to be from the first device … source address corresponding to the first device in a header" limitation, because IPORT documents placing the original destination address in the sender field of both the handshake and the redirect packet, and supports the remote-redirection-server (central office) configuration. Motivation: centralizing redirection across many sites for cost and administration.
3. Slemmer in view of Felten, Web Spoofing (Feb. 1997) — supplies the server-identity-misrepresentation teaching and an independent motivation (getting the client stack to accept unsolicited redirect content).

Confidence levels. High that Slemmer+Vu was a legally sufficient §103 ground for institution (documented Board decision). Moderate-to-high on the merits of Ground B. Lower and requiring verification: the dependent claims 2–20 (I could not verify five of the listed secondary references), and the precise §102(e)/priority date of Slemmer, which depends on whether the '806's effective date is 1999-12-08 or 1998-12-08.

Caveats on data. The Google Patents page as fetched did not contain the full "References Cited" section, so the reference list above is reconstructed from the IPR2016-00092 exhibit list and the parallel litigation record rather than from the patent's own front page. I have flagged every reference whose disclosure I could not verify. Note also the discrepancies in the record itself: Google lists the prior-art date as 1998-12-08 while the family's 20-year expiry (2019-12-08) implies a 1999-12-08 effective filing; and the '806 is now shown as Expired – Fee Related rather than lapsed-by-litigation.

Primary sources

• US 8,364,806 B2 — https://patents.google.com/patent/US8364806/en
• IPR2016-00092 docket and exhibit list — https://portal.unifiedpatents.com/ptab/case/IPR2016-00092
• Board Decision Granting Institution, 2016-05-05 — https://www.docketalarm.com/cases/PTAB/IPR2016-00092/Inter_Partes_Review_of_U.S._Pat._8364806/docs/05-05-2016-Board/Decision_Granting_Institution-8-Decision_to_Institute_Inter_Partes_Review.pdf
• Patent Owner Preliminary Response, 2016-02-10 — https://www.docketalarm.com/cases/PTAB/IPR2016-00092/Inter_Partes_Review_of_U.S._Pat._8364806/docs/02-10-2016-Patent_Owner/Preliminary_Response-6-Patent_Owners_Preliminary_Response_to_Petition_for_Inter_Partes_Review.pdf
• Petitioner's claim chart, Ex. 1043 — https://www.docketalarm.com/cases/PTAB/IPR2016-00092/Inter_Partes_Review_of_U.S._Pat._8364806/docs/10-27-2015-Petitioner/Exhibit-1043-Claim_Chart_for_806_Patent.pdf
• Slemmer, US 6,226,677 B1 — https://patents.google.com/patent/[US6226677B1](/patent/US6226677B1)
• Peckham Declaration (IPORT handshake/spoofing), Ex. 1042 in IPR2016-00081 — https://www.docketalarm.com/cases/PTAB/IPR2016-00081/Inter_Partes_Review_of_U.S._Pat._8266269/docs/10-27-2015-Petitioner/Exhibit-1042-Declaration_of_William_Peckham.pdf
• C.D. Cal. summary-judgment order, 2016-01-27 (denying §§102/103 motion) — https://cases.justia.com/federal/district-courts/california/cacdce/2:2014cv08256/[602501/142](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=602501-0142)/0.pdf