US 8566960

I'll search for authoritative information on US patent 8566960, including its litigation/docket history.

Let me search for the specific litigation and Federal Circuit outcomes.

Let me check for any more recent appellate activity, including 2026.

US Patent 8,566,960 — Analyst Summary

Identification

Assignee chain (recorded assignments): Uniloc USA, Inc. (Feb 3, 2009) → Uniloc Luxembourg S.A. (Oct 17, 2012) → security interest to Fortress Credit Co LLC (Jan 9, 2015) → Uniloc 2017 LLC (Jul 12, 2018).

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Abstract (verbatim)

"Techniques are provided for adjusting the number of devices allowed to use a digital product (e.g., software) under a license. In one embodiment, the technique may involve setting the allowed number of devices to a first upper/lower limit for a first time period, and, after the first time period has expired, increasing/lowering the allowed number of devices to a second upper/lower limit for a second time period. The technique may involve, readjusting the allowed number for a third time period, thereby allowing for a changing number of device installations of the digital product."

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Independent claims — plain language

The patent has 25 claims, with three independent claims: 1 (system), 22 (method), and 25 (computer program product). All three are substantively parallel.

Claim 1 — System for adjusting a license for a digital product over time.
A computer system (communication module + processor module + memory module) that runs executable code to:

1. Verify that license data for the digital product is valid, based at least in part on a device identity generated by sampling physical parameters of the requesting device;
2. If that device identity is already on a record, allow the digital product to run on the device (routine re‑authorization);
3. If the device identity is not on the record, set the "allowed copy count" (the maximum number of devices permitted to use the product) to a first upper limit for a first time period;
4. Calculate a device count = total number of devices already authorized for the product; and
5. If the device count is less than the first upper limit, allow the device to use the product.

Claim 22 — Method for adjusting a license for a digital product over time.
The same six steps as claim 1, recast as method steps: receive request → verify license data using a device identity generated by sampling the device's physical parameters → if identity already on record, allow → if not, set allowed copy count to a first upper limit for a first time period → calculate device count → allow if count is below the first upper limit.

Claim 25 — Computer program product.
A non‑transitory computer‑readable medium storing code that causes a computer to perform the same steps as claim 1 (receive request; verify license data based on a device identity generated by sampling physical parameters of the computer; allow if identity is on record; otherwise set allowed copy count to a first upper limit for a first time period after initial authorization; calculate device count; allow if below the first upper limit).

Representative dependent claims (context, not independent):

• Claim 6: first time period = 6 days since initial authorization; first upper limit = 5 devices.
• Claim 11: second time period = 31 days; second upper limit = 7 devices (per claim 9).
• Claim 15: third upper limit = 11 devices (per claim 14).
• Claims 7/8, 12/13, 16/17: send a warning when the device count equals a limit; deny authorization when it exceeds the limit.
• Claims 18–21: the device identity is "unique device identifying information" based on at least one user-configurable and one non-user-configurable device parameter, and may be produced via an irreversible transformation or a cryptographic hash function.
• Claim 4: the "record" is an authorization database.

In substance, the invention is a time‑staged, device‑locked software license in which the permitted number of authorized devices grows (or, per the specification's alternative embodiment, shrinks) as time passes from the first successful authorization — e.g., 5 devices initially, rising to 7 and then 11 — to accommodate ordinary device replacement/upgrade behavior while still choking off mass license sharing.

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Litigation, PTAB, and appellate history

• 2016 District Court suits (E.D. Tex.): Uniloc filed a series of cases in the Eastern District of Texas citing the '960 patent — Civil Action Nos. 2:16‑cv‑00570, ‑00571, ‑00572, ‑00573, ‑00574, ‑00575 (per the Google Patents litigation record). Defendants included Amazon, Hulu, and Netflix.
• § 101 invalidation: In Uniloc USA, Inc. v. Amazon.com, Inc., 243 F. Supp. 3d 797 (E.D. Tex. 2017), the district court held all claims of the '960 patent invalid as directed to patent‑ineligible subject matter under 35 U.S.C. § 101 (Alice). The court characterized a "time‑adjustable license" as an abstract idea and the residual limitations (verifying license validity, using a device identity/record, allowing use, setting a copy‑count limit, calculating a device count) as routine and conventional.
• Federal Circuit appeal No. 2017‑2051: affirmed the district court on August 9, 2018 by Rule 36 judgment, reported at 733 F. App'x 1026 (Fed. Cir. 2018).
• IPR2017‑00948 (Netflix, Amazon, Hulu v. Uniloc): petition filed Feb 17, 2017; instituted Aug 14, 2017; Final Written Decision Aug 1, 2018 holding claims 1–8, 18–22, and 25 unpatentable over prior art. Uniloc's contingent motion to amend (substitute claims 26–28) was denied solely on § 101 grounds. Rehearing was denied Jan 18, 2019 and the denial was designated precedential by the Director. Source: https://portal.unifiedpatents.com/ptab/case/IPR2017-00948
• IPR2016‑01271 (Unified Patents): Not Instituted – Merits.
• IPR2017‑01665 (Google LLC): filed Jun 30, 2017; Not Instituted – Procedural, § 325(d) (institution decision Jan 11, 2018). Source: https://portal.unifiedpatents.com/ptab/case/IPR2017-01665
• Federal Circuit appeal No. 2019‑1686 (Uniloc 2017 LLC v. Hulu, LLC): decided July 22, 2020. A 2‑1 panel (Judge Wallach, joined by Chief Judge Prost; Judge O'Malley dissenting) affirmed and held that (i) the appeal was not moot and the PTAB retained authority to consider contingent substitute claims even after a final district‑court judgment of invalidity, and (ii) the PTAB may consider § 101 and § 112 in assessing proposed substitute claims in an IPR, notwithstanding § 311(b). Judge O'Malley's dissent famously described the '960 patent as "dead on arrival," with no live claims left to substitute.

Practical effect: Every claim of US 8,566,960 has been held invalid under § 101 (district court, affirmed), and the original claims were additionally cancelled as unpatentable over prior art in IPR2017‑00948. The Google Patents "Expired – Fee Related" status reflects maintenance‑fee status, not validity; the claims are not enforceable.

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CAFC 2026 docket check — uncertainty

I searched specifically for 2026 Federal Circuit docket activity tied to 8566960 and found no 2026 CAFC docket entries, appeals, or opinions. The only Federal Circuit appeals I could confirm are 2017‑2051 (decided 2018) and 2019‑1686 (decided 2020). My searches for a 2026 docket returned no hits. I therefore cannot confirm any 2026 appellate activity, and I flag this explicitly rather than infer one. If you are working from a CAFC 2026 docket sheet you have in hand, please share the case number so I can verify against it.

Two textual caveats (interpreted literally, not auto‑corrected)

1. "Sampling physical parameters" language. The granted‑patent claim text (authoritative Google Patents full text) recites in independent claims 1, 22, and 25 that the device identity is "generated by sampling physical parameters of the given device." The pre‑grant publication version of claim 1 retrieved from a secondary source reads only "a device identity associated with the given device," without that phrase. The granted text is controlling here, but the discrepancy suggests prosecution amendment or correction between publication and grant.
2. "Non‑transitory." The granted claim 25 recites a "non‑transitory computer‑readable medium"; a secondary rendering omits "non‑transitory." I have used the granted text.

All numeric limits (6 days/5 devices; 31 days/7 devices; 11 devices) are expressly described in the specification as exemplary only, and the patent states that the number of evaluation periods and notification stages can be expanded indefinitely or replaced by an algorithm (e.g., elapsed days ÷ 5, + 5).

I'll research the litigation history for US patent 8566960. Let me start with the sources you mentioned.

Let me get more specific details on the district court cases and the PTAB/appeal records.

Let me confirm the defendant mapping for each district court case number.

I'll research the PTAB proceedings on this patent. The patent's own litigation metadata lists three IPR numbers, so let me pull the details.

Let me get details on the other two IPRs and check for any post-2020 proceedings.

PTAB Proceedings — US 8,566,960 ("System and Method for Adjustable Licensing of Digital Products")

Data-source note / flag: The structured "PTAB proceedings on file" block states the USPTO ODP API returns no AIA trial proceedings for this patent. That is contradicted by (a) the patent's own Google Patents litigation metadata, which lists three PTAB cases, and (b) multiple independent public sources. I flag three proceedings below as found via web search / the patent's litigation record but not returned by ODP — treat the ODP "none" as a stale-ingest artifact, not a substantive absence of PTAB activity. Proceeding numbers are taken verbatim from the patent record and confirmed against the Unified Patents PTAB portal and the Federal Circuit opinions.

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Proceedings overview

Three AIA trial proceedings have been filed against US 8,566,960: 1 reached a Final Written Decision with claims invalidated (IPR2017-00948 — independent claims 1, 22, and 25 and their dependents 2–8, 18–21 canceled), 2 were denied institution (IPR2016-01271 on the merits; IPR2017-01665 on § 325(d) procedural grounds). Zero active. Zero settled.

Bottom line for a defendant: the patent is effectively dead. The PTAB canceled independent claims 1, 22, and 25 (plus claims 2–8 and 18–21) over prior art in IPR2017-00948, and, in a parallel track, the E.D. Tex. held all claims of the '960 patent ineligible under § 101 — a judgment the Federal Circuit affirmed on 2018-08-09. A demand letter citing claims 1, 22, or 25 is citing canceled claims; one citing the surviving dependents (9–17, 23, 24) is citing claims whose independent parents were canceled and whose whole patent was held § 101-ineligible. This is not a "hardened" patent — it is a canceled/invalidated one.

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IPR2017-00948 — [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.), Amazon Digital Services, Inc., Amazon Fulfillment Services, Inc., Hulu, LLC, and Netflix, Inc. v. Uniloc Luxembourg S.A. (later Uniloc 2017 LLC)

• Type: Inter Partes Review
• Filed: 2017-02-17
• Status: Final Written Decision (Google Patents litigation block: "PTAB case IPR2017-00948 filed (Final Written Decision)"). Claims invalidated; motion to amend denied. Appeal affirmed.
• Judge panel: David C. McKone, Barbara A. Parvis, Michelle N. Wormmeester (Administrative Patent Judges). Panel confirmed on the 2018-05-08 oral-hearing transcript and the request-for-rehearing paper (Paper 34).
• Petition grounds: Challenged claims 1–25 on § 102/§ 103 grounds over a large prior-art set, including DeMello (US 7,047,411), Staruiala (IE 20020429A1), Villela (WO 2005/084100), Wolfe (US 4,796,220), Pearce (US 6,243,468), Richardson (US 5,490,216 — the patent's own incorporated reference), Aburri (US 7,203,966), Baratti (US 6,574,612), Harter (US 6,212,564), and others (Exs. 1003–1030). The contested claim construction centered on "setting" (initial setting vs. adjustment) and the "verif[ying] … based at least in part on a device identity" limitation.
• Institution decision: Instituted 2017-08-14 as to claims 1–25. Following SAS Institute v. Iancu, the Board issued a standard order expanding review to all grounds and all claims (confirmed on the hearing transcript).
• Final Written Decision (2018-08-01): Held claims 1–8, 18–22, and 25 unpatentable over the prior art. In plain terms: all three independent claims (1, 22, 25) canceled, plus dependents 2–8 and 18–21. The record does not show claims 9–17, 23, and 24 being held unpatentable — the Board did not reach a merits invalidity verdict on those (they are dependents of the canceled independent claims 1 and 22). Whether the FWD's § 101 motion-to-amend analysis touched them is a separate question, below.
• Motion to Amend: Uniloc filed a contingent Motion to Amend on 2018-01-05, seeking substitute claims 26, 27, and 28 for independent claims 1, 22, and 25. The Board denied the motion, concluding Petitioner "ha[d] shown by a preponderance of the evidence that [the Substitute Claims] are directed to non-statutory subject matter under 35 U.S.C. § 101." § 101 ineligibility was the sole ground for denial.
• Rehearing / precedent: Uniloc's Request for Rehearing (filed 2018-08-31) was denied on 2019-01-18 (Paper 34); the Board held it may consider § 101 eligibility of proposed substitute claims. The USPTO Director designated the Rehearing Denial as precedential.
• Settlement / termination: None — the proceeding ran to a merits FWD; no termination/settlement on the docket.
• Appeal: Appealed to the Federal Circuit — No. 19-1686 (Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc.), decided 2020-07-22. Affirmed (2-1): majority (Wallach, J.; Taranto, J. joining) held the Board had statutory authority to consider § 101 for substitute claims and that the appeal was not moot; O'Malley, J., dissented ("This case was dead on arrival — there were no live claims remaining in the '960 patent"). The U.S. Government intervened on the Director's behalf. Substitute claims never issued.
  • Opinion: https://www.courtlistener.com/opinion/[4769789](/patent/4769789)/uniloc-2017-llc-v-hulu-llc/
• Defensive value: Independent claims 1, 22, and 25 are canceled — any infringement theory built on them (or on dependents 2–8 and 18–21) is aimed at claims that no longer exist. The remaining dependents (9–17, 23, 24) fall with their canceled parents and are separately caught by the § 101 judgment below. This is close to a complete defensive win, not a partial one.

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IPR2016-01271 — Unified Patents Inc. v. Uniloc USA, Inc.

• Type: Inter Partes Review
• Filed: 2016 (exact filing date not confirmed in the sources reviewed — the Unified Patents portal entry for this case would fix it; do not treat my year-only figure as precise)
• Status: Not Instituted – Merits (verbatim from the patent's litigation metadata). Plain English: the Board denied institution on the merits — it did not find a reasonable likelihood that the petitioner would prevail on the challenged claims.
• Judge panel: Not confirmed from the sources reviewed.
• Petition grounds: Not confirmed at claim/art granularity from the sources reviewed. Petitioner was Unified Patents Inc., a defensive patent aggregator (see pattern signals, below). The '948 petitioners subsequently filed this Decision Denying Institution as Exhibit 1006 in IPR2017-00948.
• Institution decision: Denied (merits). No FWD issued.
• Settlement / termination: N/A (denied pre-institution).
• Appeal: None on the docket I could confirm.
• Defensive value: A merits denial is a weak positive signal for the patent owner — it means the Board was unpersuaded by Unified's particular grounds, not that the claims are valid. Its practical value to a defendant today is evidentiary, not preclusive: it is the artifact that later petitioners cited to show the art had already been considered (feeding the § 325(d) denial in IPR2017-01665). Given the later § 101 affirmance and the '948 cancellations, this denial is now superseded and of little defensive weight.

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IPR2017-01665 — Google LLC v. Uniloc USA Inc. et al.

• Type: Inter Partes Review
• Filed: 2017-06-30
• Status: Not Instituted – Procedural, § 325(d) (verbatim from the Unified Patents PTAB portal). Plain English: the Board denied institution on discretionary/procedural grounds because the same or substantially the same art/arguments had already been presented to the Office.
• Institution decision: Denied 2018-01-11. Petitioner also filed the earlier IPR2016-01271 Institution Decision as an exhibit (Ex. 1007), signaling the § 325(d) overlap argument. Board author judge: not confirmed from the source reviewed.
• Judge panel: Not confirmed from the sources reviewed.
• Petition grounds: Not confirmed at claim/art granularity from the sources reviewed.
• Settlement / termination: N/A (denied pre-institution).
• Appeal: None confirmed.
• Defensive value: A § 325(d) denial is a timing/precedent loss, not a patentability win for Uniloc. It tells a defendant that Google's chosen art was too close to Unified's earlier challenge to get a second look — i.e., this patent had been attacked repeatedly and the surfacing art was cumulative. It adds nothing to a defense beyond reinforcing that the '960 patent is a heavily-challenged, low-value asset.

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Strategic summary

Claim status across the family:

Estoppel landscape (§ 315(e)(2)): The IPR2017-00948 petitioners — Amazon.com, Inc., Amazon Digital Services, Inc., Amazon Fulfillment Services, Inc., Hulu, LLC, and Netflix, Inc., and their privies — are estopped in litigation from asserting invalidity on any ground they raised or reasonably could have raised in that IPR. That is a broad bar for those five entities. Unified Patents and Google are NOT IPR-estopped on the '960 patent, because their petitions were never instituted (§ 315(e)(2) estoppel attaches only to instituted proceedings). For a new defendant with no privity to any of the above, no § 315(e)(2) estoppel applies at all — but this is largely academic: the patent has been canceled at the claim level and invalidated under § 101, so prior-art grounds are not the winning argument. The winning argument is the FWD's cancellation of claims 1–25 and the affirmed § 101 judgment — which any defendant can invoke offensively as collateral estoppel / stare decisis against the patent owner (Uniloc/Uniloc 2017 LLC), regardless of privity.

Pattern signals:

• Defensive aggregator present: Unified Patents Inc. filed the first challenge (IPR2016-01271). That is a classic signal of a patent widely asserted against a broad industry — the aggregator steps in precisely because no single defendant wants to bear the cost.
• Big-tech coalition: The '948 challenge was brought jointly by Amazon (three entities), Hulu, and Netflix — a coordinated defense bench, with Perkins Coie (Shvodian) on the petition side and Etheridge Law Group (Mangrum) for Uniloc.
• Serial attacks across multiple Uniloc patents: Uniloc's own litigation record and Federal Circuit opinions show this patent sat inside a portfolio litigated on a near-industrial scale — Uniloc filed nearly 300 lawsuits since 2012, and the '960 patent was one of many hit with parallel IPRs (e.g., IPR2020-00854, the General Plastic-based joinder denial involving the '088 patent, which the Board later made precedential). The same panel reasoning shows Apple was blocked from joining a Microsoft IPR as a serial attacker.
• Patent owner's PTAB posture: Uniloc did not simply accept the losses — it filed a contingent motion to amend, then a request for rehearing, then appealed to the Federal Circuit (19-1686) and lost 2-1. The USPTO made the Rehearing Denial precedential, converting Uniloc's loss into board-wide law permitting § 101 review of substitute claims. Practically, this expended the patent owner's final avenues: after 2020-07-22 there was nothing left to appeal on this patent.

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Recommended next steps

1. If you are a defendant and a demand letter or complaint cites claims 1, 22, or 25 — or claims 2–8 or 18–21: link and quote the disposition. The IPR2017-00948 Final Written Decision (2018-08-01) held "claims 1–8, 18–22, and 25 unpatentable over the prior art," and the Federal Circuit affirmed the underlying rehearing denial in Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed. Cir. 2020-07-22). Those claims are canceled; a pleading resting on them is sanction-bait.

   • FWD/related papers via the PTAB docket: https://portal.unifiedpatents.com/ptab/case/IPR2017-00948
   • Federal Circuit opinion: https://www.courtlistener.com/opinion/4769789/uniloc-2017-llc-v-hulu-llc/

2. If a letter cites the "surviving" dependents (9–17, 23, or 24): attack on two independent fronts — (a) those claims depend from canceled independent claims 1 and 22 and cannot be separately infringed once the parents are gone, and (b) the E.D. Tex. § 101 judgment covered "all claims of the '960 Patent" and was affirmed on 2018-08-09 (Uniloc USA, Inc. v. Amazon.com, Inc., 243 F. Supp. 3d 797 (E.D. Tex. 2017), aff'd 733 F. App'x 1026).

3. If you seek your own IPR: there is no active proceeding to join, and no live claim worth challenging — the useful targets are already canceled or invalid. Note, too, that you would need to get past § 325(d): the Board already denied Google's IPR2017-01665 on exactly that basis because the art was cumulative of earlier challenges. Any new petition risks the same fate.

4. No PTAB milestones to track. There are no active AIA trials on this patent. Every proceeding is terminated: IPR2017-00948 (FWD + affirmed appeal), IPR2016-01271 (institution denied), IPR2017-01665 (institution denied). Do not expect institution-decision deadlines, oral hearings, or FWD dates.

5. Verify the two unknowns before relying on them in a filing. For IPR2016-01271 I could not confirm the exact filing date, the panel, or the claim/art-level grounds; for IPR2017-01665 I could not confirm the panel or full grounds. Pull the institution decisions directly from PTAB E2E / the Unified Patents portal (https://portal.unifiedpatents.com/ptab/case/IPR2017-01665 and …/IPR2016-01271) before quoting specifics — I have deliberately not filled those gaps, and nothing above should be read as a fabricated detail.

Caveat on the data conflict: the ODP "no proceedings" result and the three-proceeding record cannot both be correct. The claim-level facts above (institution/invalidity dates, FWD claim list, appeal disposition) are corroborated by the Federal Circuit's own opinion and the hearing transcript; the ODP result appears to be a data-freshness gap rather than a genuine "no activity" finding.

I'll research the assignment chain for US 8566960 using web sources, since the USPTO Assignment Center requires interactive search. Let me start with several parallel queries.

Good progress. Now let me pin down reel/frame numbers and correspondents for each recorded assignment.

Assignment & Ownership Analysis — US 8,566,960 B2

Patent: System and method for adjustable licensing of digital products
App: 12/272,570 · filed 2008-11-17 · issued 2013-10-22
Priority: Provisional 60/988,778 (2007-11-17)
Current assignee of record: Uniloc 2017 LLC · status Expired – Fee Related, adjusted expiration 2030-02-26

Sourcing caveat (read first): I was not able to run live queries against USPTO Assignment Center in this session. Reel/frame is confirmed from court exhibits for the 2018 transfer only (Reel 046532/0088). The 2009, 2012, and 2015 events are confirmed as recorded conveyances from Google Patents legal events and from Uniloc's own litigation filings, but their reel/frame numbers and recorded correspondents were not retrieved. Everything below flags confirmed vs. unconfirmed. Verify all entries at the Assignment Center search page: https://assignmentcenter.uspto.gov/

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Inventors

No unusual inventor patterns are observable — this is a single-inventor patent, so the "all inventors depart within 12 months" fire-sale tell cannot be tested. No evidence of inventor departure or inventor-side assignment fragmentation.

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Original assignee

• Entity named on the issued patent: Uniloc Luxembourg S.A. (a société anonyme organized under Luxembourg law, registered office 14 rue Edward Steichen, L-2540 Luxembourg, R.C.S. Luxembourg B 159161) — per Google Patents "Original Assignee."
• Earliest recorded assignee: Uniloc USA, Inc. (the 2009-02-03 recorded assignment from Richardson).
• Primary line of business: Uniloc originated as a software copy-protection / device-fingerprinting / software-activation company (its technology is the classic "device identity by sampling physical parameters" fingerprinting recited in this patent's claims 19–21). Over time the Uniloc group's operating business wound down and the U.S. entity (Uniloc USA, Plano, TX) became predominantly a licensing/monetization vehicle. Did the original operating company ship a product embodying the claims? Uniloc marketed its software-activation/fingerprinting technology commercially, but the more reliable point is that by the relevant litigation window the group was asserting patents rather than shipping DRM products.
• Current status: The Uniloc group still exists as a licensing enterprise, but this patent has been sold out of it (see below) and was held invalid. The patent itself is dead: all claims were invalidated in district court and in PTAB (IPR2017-00948 Final Written Decision, 2018-08-01). Uniloc Luxembourg S.A. remains an existing Luxembourg entity; Uniloc 2017 LLC (Delaware) is the current holder.

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Assignment timeline

All four entries below are recorded with USPTO (Google Patents legal-events feed, corroborated by Uniloc's own court filings). Reel/frame confirmed only for entry 4.

• 2009-02-03 (recorded; execution date not retrieved) — Reel/Frame not retrieved

  • Conveyance: Assignment
  • Assignor: Richardson, Ric B. (inventor)
  • Assignee: Uniloc USA, Inc.
  • Correspondent: not confirmed
  • Context: Original inventor-to-company assignment (intake of the invention by the operating entity).

• 2012-10-17 (recorded) — Reel/Frame not retrieved

  • Conveyance: Assignment
  • Assignor: Uniloc USA, Inc.
  • Assignee: Uniloc Luxembourg S.A.
  • Correspondent: not confirmed
  • Context: Internal group reorganization — U.S. portfolio consolidated into the Luxembourg holding company (the entity that ends up as "original assignee" on the face of the patent).

• 2015-01-09 (recorded) — Reel/Frame not retrieved

  • Conveyance: Security Agreement / Security Interest (assignee of record: Fortress Credit Co LLC)
  • Assignor: Uniloc Luxembourg, S.A.; Uniloc Corporation Pty Limited; Uniloc USA, Inc. (joint grantors)
  • Assignee: Fortress Credit Co LLC
  • Correspondent: not confirmed (Uniloc's IP counsel Sean D. Burdick, Reg. No. 51,513, is the recurring signer of Uniloc 3.73(b) recordation statements in this period — see signal 3)
  • Context: Securitization — the entire Uniloc group pledged its patent estate to Fortress (Fortress Investment Group) as collateral, the first visible link in the Fortress–Uniloc monetization relationship.

• 2018-05-03 (executed) / recorded 2018-07-12 — Reel 046532 / Frame 0088 ✅ confirmed

  • Conveyance: Assignment of entire right, title and interest (sale)
  • Assignor: Uniloc Luxembourg S.A.
  • Assignee: Uniloc 2017 LLC (Delaware LLC, 1209 Orange Street, Wilmington, DE 19801 — Corporation Trust Center registered-agent address; also 620 Newport Center Drive, Newport Beach, CA)
  • Correspondent: not confirmed for this reel (see signal 3)
  • Context: Transfer-to-asserter / sale. This is a 626-property bulk conveyance executed under an "Asset Purchase Agreement dated as of March 28, 2018," expressly "free and clear of all Encumbrances." US 8,566,960 was one of the 626 properties. The timing is the tell: recorded ~2 months after execution and only surfaced when Apple discovered it in the public record; Uniloc did not update its corporate disclosure statements.

Summary of the live chain: Richardson → Uniloc USA, Inc. (2009) → Uniloc Luxembourg S.A. (2012) → [Fortress security interest 2015] → Uniloc 2017 LLC (2018, Reel 046532/0088).

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Timeline diagram

timeline
    title Ownership of US 8566960
    2007 : Provisional filed by Richardson
    2008 : US application filed
    2009 : Assigned to Uniloc USA
    2012 : Assigned to Uniloc Luxembourg
    2013 : Patent issued
    2015 : Security interest to Fortress Credit
    2016 : Uniloc files East Texas suits
    2018 : Sold to Uniloc 2017 LLC
         : IPR invalidates all claims

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NPE / troll-pattern signals

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Verdict

NPE — high confidence.

Three independent strong signals converge on Reel 046532/0088: (1) a shell-entity transfer — a 626-patent bulk sale executed 2018-05-03 and recorded 2018-07-12 out of operating/holding entity Uniloc Luxembourg S.A. into Uniloc 2017 LLC, a Delaware LLC domiciled at the Corporation Trust Center registered-agent address; (2) a known high-frequency asserter — the resulting entity is a fixture on Unified Patents and RPX as a prolific plaintiff, suing Amazon, Hulu, Netflix, Apple, Google, HTC and others; and (3) privateering — the structure is funded by Fortress Investment Group, which had taken a blanket security interest in the same estate on 2015-01-09, a relationship challenged directly in Intel v. Fortress Investment Group. The one signal that is absent — a clean pre-litigation transfer — does not weaken the call, because the 2018 transfer instead had to be cured mid-case via Rule 25(c) joinder, and the entity-splitting with Uniloc USA / Uniloc Licensing USA LLC (amended 2018-08-28) shows the same allocation strategy. The patent is now effectively dead (claims invalidated in IPR and § 101), so its NPE relevance is historical rather than live.

Verification link: https://assignmentcenter.uspto.gov/ (search patent number 8566960) — and the documented public recordation at Reel 046532/0088 is reproduced as a court exhibit in Uniloc 2017 LLC v. Google LLC, N.D. Cal. 4:20-cv-04355 (Dkt. 355-2) and in Uniloc USA, Inc. v. Apple Inc., N.D. Cal. 3:18-cv-00360 (Dkt. 135-15).

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Analyst note / residual gaps: The recorded correspondent of record for each of the four reel/frame entries should be pulled directly from Assignment Center, since that field — not the LLC naming — is the strongest identifier for this family. Based on adjacent Uniloc filings the expected recurring correspondent is Sean D. Burdick (Reg. 51,513), Uniloc USA, Inc., Plano, TX; confirm against the abstract-of-title pages for reels 1 (2009), 2 (2012), 3 (2015), and 046532/0088 (2018).

I'll research the USPTO records and prior-art citations for US 8566960. Let me start with several targeted searches.

Let me dig into the IPR proceedings against the '960 patent itself and the key prior-art references.

Let me get the specific grounds and references used in the IPRs, plus the examiner-cited art.

Prior-Art Analysis — US 8,566,960 B2

0. Cross-reference note on the earlier section

The previously-generated "Litigation summary" section in this file is a placeholder — it contains only the analyst's working notes ("I'll research the litigation history…") and no substantive findings. There is therefore nothing there to build on or contradict; I have independently re-derived the litigation facts I rely on below. One point to flag explicitly: the earlier note refers to "the defendant mapping for each district court case number," but no such mapping was ever produced in that section, so I treat the defendant/party identifications below as newly sourced rather than confirmations.

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1. Confirmation of the patent

I searched for the literal identifier 8566960 (US 8,566,960 B2):

This matches the patent text supplied in the task file. I did not substitute any similar number (e.g., the family members EP 2223256 A1 / WO 2009/065135 A1, or Uniloc's separate '216 patent).

Governing law / critical date. The Federal Circuit confirmed in Uniloc 2017 LLC v. Hulu, LLC, No. 19-1686 (Fed. Cir. July 22, 2020), that because the application never contained a claim with an effective filing date on or after March 16, 2013, pre-AIA §§ 102 and 103 apply. The critical date is therefore November 17, 2007 (or the 2008-11-17 filing date for § 102(e) art). Any reference published, patented, or effectively filed before that date is available art.

Claims to be anticipated. The independent claims are:

• Claim 1 — system: communication module + processor module + memory module storing code to (i) verify license data valid based at least in part on a device identity generated by sampling physical parameters of the given device, (ii) if the device identity is already on record → allow use, (iii) if not on record → set the allowed copy count to a first upper limit for a first time period, (iv) calculate a device count, (v) if count < first upper limit → allow use.
• Claim 22 — the method counterpart (steps mirror claim 1 exactly).
• Claim 25 — computer-program-product counterpart.
• Dependent claims 2–21 and 23–24 add: software as the digital product; authorization database; 6 days / 5 devices (claim 6); 31 days / 7 devices (claim 11); 11 devices (claim 15); warnings and denial-on-exceed; and the device-identity/fingerprint details (claims 18–21).

Note the J.A./prosecution-history construction point preserved in the IPR record: the Board treated "setting" as broad enough to cover both an initial setting and an adjustment to a new level, and treated the "verify … based at least in part on a device identity" limitation as met by checking whether the unique device information is reflected in the database as authorized for a license (IPR2017-00948 oral hearing transcript; institution decision). These constructions materially widen the anticipation field.

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2. The reference population

The printed patent face and the Google Patents record show 210 cited references (patents, published applications, foreign documents, and one non-patent publication). The list is numerically ordered; the copy supplied in the task file is truncated after US 6,189,146 B1. Google Patents also shows 8 citing documents and a large "Families Citing this family" set; those are post-priority and are not § 102 art against the '960 patent (they are § 102/103 art only if relied on as later-filed § 102(e) references, which is not the posture here).

Because 210 references cannot be treated individually to a useful depth, I have tiered them by probative value.

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3. TIER 1 — The art actually asserted in the PTAB proceedings (most probative)

These are the references that a petitioner proved (or attempted to prove) render the claims unpatentable. They are the single best starting point for an anticipation/obviousness analysis.

3.1 US 7,047,411 ("DeMello") — PRIMARY REFERENCE

• Citation: U.S. Patent No. 7,047,411 to DeMello et al.
• Asserted as: Exhibit 1003 in IPR2017-00948 (Netflix/Hulu/Amazon v. Uniloc) and Exhibit 1004 in IPR2017-01665 (Google v. Uniloc).
• Dates: I could not verify the exact filing/issue dates or the full title from the sources retrieved, and I will not guess them. What the PTAB record does establish: it is a pre-2007 patent whose disclosure includes an activation server (94) that checks a record of activated devices, determines at step 168 whether an activation limit has been reached (rendering an error message with a support telephone number at step 172 if so), distinguishes a "new activation" from a "recovery" of a prior activation, and permits the device limit to be changed over time (e.g., a 90-day period).
• Brief description (as characterized in the record): A remote-activation licensing system in which the number of devices permitted to activate a digital product is governed by a server-side limit that can change over time, with the device identity of each activating device recorded by the server.
• Claim mapping / § 102: This is the reference the Board relied on for the core "adjustable copy count" concept. The Board's final written decision (Paper 34, Aug. 1, 2018) held claims 1–8, 18–22, and 25 unpatentable over the prior art, with DeMello as the primary reference. DeMello is therefore the reference most capable of a § 102 anticipation attack on claim 1 (and, on parallel reasoning, claims 22 and 25), and on the dependent claims directed to the record/database (claim 4), the warning (claim 7), and the deny-on-exceed behavior (claim 8).
• Patent Owner's counter: Uniloc argued DeMello teaches away from the "temporarily adjust the allowed copy count" limitation because DeMello renders an error message when the pre-established limit is reached, and that DeMello's device limit is not adjusted "in response to the device identity not currently being on the record" on a fixed schedule. See Patent Owner Contingent Motion to Amend Reply (Paper in IPR2017-00948), citing EX1003 at 21:51–59. This is the principal defensive argument to anticipate in any § 102/103 analysis of claims 1/22/25.

3.2 The secondary references asserted in IPR2017-01665 (Google)

These appear in the Exhibit 1004–1015 list filed 2017-06-30 (IPR2017-01665, not instituted — denied under § 325(d)):

• Dates: Each of these is a pre-2007 patent or publication, so each is available as § 102(b) (patents/published applications more than one year before 2007-11-17) or § 102(a)/(e) art. I have not independently verified the exact filing/issue dates for each of these ten references, and I flag that as an open verification item rather than asserting them.
• Brief description: Each is a licensing/DRM/access-control reference. In the IPR they were used in § 103 combinations (secondary references supplying, e.g., dynamic license adjustment, device records, or content-usage limits), not as standalone anticipatory art.
• Claim mapping / § 102: None of these ten, standing alone, is described in the record as disclosing the complete claim 1 combination (device-identity-based verification plus a time-phased, escalating upper limit plus device counting). They are therefore properly characterized as § 103 art that is relevant to specific limitations of claims 1, 22, and 25 and their dependents, not as standalone § 102 anticipators — with the possible exception that a combination could be argued as anticipating if one reference discloses all elements. I cannot confirm such a single-reference disclosure from the retrieved material.
• The "Hu" reference: In the opposition to Uniloc's contingent motion to amend, Petitioners asserted the substitute claims would have been obvious over "DeMello and Hu." I was not able to retrieve the full citation for "Hu" (patent number, dates, assignee), so I expressly do not identify it further here. It relates only to the contingent substitute claims (26–28), which were never issued.

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4. TIER 2 — Examiner-cited references most directly on point

These are drawn from the printed "References Cited" front page of the '960 patent and from the Google Patents citation record. They are the references an examiner considered. The ones most germane to the adjustable-copy-count-over-time concept are:

4.1 US 6,189,146 B1 — "System and Method for Software Licensing" (Microsoft)

• Citation / dates: U.S. Patent No. 6,189,146 B1; priority 1998-03-17/18; issued 2001-02-13; assignee Microsoft (now Microsoft Technology Licensing LLC).
• Brief description: A software-licensing system/method in which a license (or "license package") is bound to and enforced against a specified set/quantity of computers, with the software determining whether the machine is within the licensed set.
• Claim mapping / § 102: Available as § 102(b) art (issued more than a year before the 2007-11-17 priority date). It is the examiner-cited reference closest to the "maximum number of devices authorized for use with the digital product" element of claims 1/22/25. Whether it alone anticipates claim 1 depends on whether it discloses a device identity generated by sampling physical parameters and a time-phased first/second upper limit — the record does not show that it does, so on the present record it is better characterized as § 103 art for the "allowed copy count" limitation than as a § 102 anticipator of claim 1.

Caution on a related assertion. In the E.D. Tex. attorney-fee brief (Uniloc v. Hulu/Netflix, case file in the PTAB record), Defendants asserted the claims were "anticipated by a Microsoft patent filed seven years before the patent-in-suit." I could not confirm which Microsoft patent that refers to. Candidates include US 6,189,146 B1 (filed 1998) and the Microsoft application published as US 2004/0059938 A1, "Hardware ID to Prevent Software Piracy" (priority 1998-04-28) — but "seven years" does not cleanly match either. I flag this as an unresolved identification rather than asserting a specific number.

4.2 US 5,349,526 A — "Method for establishing licensor changeable limits on software usage"

• Citation / dates: U.S. Patent No. 5,349,526 A; priority 1992-10-30; issued 1994-08-30; assignee AT&T Bell Laboratories.
• Brief description: Establishes licensor-changeable limits on how software may be used — i.e., the licensor can change the usage limit over the life of the license.
• Claim mapping / § 102: Available as § 102(b) art. Its title and subject matter map almost verbatim onto the "publisher reserves the right to increase this limit" concept that is the heart of the '960 disclosure, and onto the "set the allowed copy count to a first upper limit" step. It is the single most conceptually on-point examiner-cited reference for the adjustable-limit feature. Whether it discloses device-identity-derived verification and the first-second-third time period structure is not established in the retrieved record; on that basis it is strong § 103 art for claims 1/22/25 (the "allowed copy count" and "adjusting the limit" limitations) and a serious candidate for a § 102 attack if its full disclosure includes device-level counting.

4.3 US 6,009,401 A — "Relicensing of Electronically Purchased Software"

• Citation / dates: U.S. Patent No. 6,009,401 A; filed 1998-04-05/06; issued 1999-12-28; assignee Preview Systems (record lists Safenet Data Security (Israel) Ltd as a later owner).
• Brief description: A scheme for re-licensing electronically purchased software — i.e., reissuing/reassigning a license, which is the "replacement computer" scenario the '960 patent addresses.
• Claim mapping / § 102: Available as § 102(b) art. Relevant to the "device already on record → allow" branch of claims 1/22/25 and to the licensing-server architecture. Best used as § 103 art combined with a device-limit reference; standalone anticipation of claim 1 is not supported by the retrieved record.

4.4 US 5,490,216 A — "System for Software Registration" (Uniloc / Richardson) — incorporated by reference

• Citation / dates: U.S. Patent No. 5,490,216; filed 1993-09-21; issued 1996-02-06; Uniloc Private Limited. Expressly incorporated by reference into the '960 specification.
• Brief description: Local and remote generation of a "licensee unique ID" by the same algorithm, with a mode-switching means that permits use only if the local and remote IDs match — i.e., device-/licensee-bound registration.
• Claim mapping / § 102: Available as § 102(b) art. It supplies the "device identity … allow/reauthorize" architecture recited in claims 1/22/25 and the "irreversible transformation / cryptographic hash" concepts of claims 20–21 (it discloses a summation/encryption registration algorithm). It does not disclose the time-phased, escalating copy count, so it does not anticipate claims 1/22/25 on its own; it is § 102/§ 103 art for the device-identity and reauthorization limitations. (Separately, the '216 patent itself was held anticipated by US 5,509,070 Schull in IPR2014-01453, aff'd, Uniloc USA, Inc. v. Sega of America, Inc. (Fed. Cir. Oct. 23, 2017).)

4.5 US 5,579,222 A — "Distributed license administration system using a local policy server…"

• Citation / dates: U.S. Patent No. 5,579,222 A; priority 1991-11-26/27; issued 1996-11-26; assignee Intergraph.
• Brief description: A local policy server communicates with a license server to control execution of licensed programs across a distributed environment.
• Claim mapping / § 102: § 102(b) art. Relevant to the distributed "communication module ↔ licensing authority" architecture and to counting installed/authorized copies (claims 1/22/25, "calculate a device count"). It does not disclose the time-phased upper limits, so it is § 103 art for the counting/administration limitations.

4.6 US 5,390,297 A — "System for controlling the number of concurrent copies of a program in a network…"

• Citation / dates: U.S. Patent No. 5,390,297 A; priority 1987-11-10; issued 1995-02-14; assignee Auto-Trol Technology.
• Brief description: Controls the number of concurrent copies based on the number of available licenses.
• Claim mapping / § 102: § 102(b) art. Directly relevant to "device count … less than the first upper limit" (claims 1/22/25). It addresses concurrent use, not a cumulative, time-escalating device count, so it is § 103 art for the counting limitation and background for the "simultaneous use limit" alternative described in the E.D. Tex. briefing.

4.7 US 5,671,412 A (Christiano) — also asserted in IPR2017-01665

• Citation / dates: U.S. Patent No. 5,671,412 A; assignee/prosecution predates 2007 (I did not independently confirm the exact filing/issue dates). Listed both as third-party IPR art (Ex. 1011) and in the citation family.
• Brief description: Digital-content licensing/distribution (license acquisition and enforcement in a distribution system).
• Claim mapping / § 102: § 102(b) art. Relevant to the license-server/license-object architecture; best characterized as § 103 art for claims 1/22/25.

4.8 Published applications closest to the adjustable/DRM concept (all § 102(b)/(a)/(e) art)

4.9 US 6,169,976 B1 — "Method and Apparatus for Regulating the Use of Licensed Products"

• Citation / dates: U.S. Patent No. 6,169,976 B1; priority 1998-07-01/02; issued 2001-01-02; assignee Encommerce/Entrust.
• Brief description: Regulating use of licensed products (license server enforcement).
• Claim mapping / § 102: § 102(b) art; § 103 art for the license-verification limitations of claims 1/22/25.

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5. TIER 3 — The remainder of the 210-reference citation list

These were cited by the examiner (or listed as third-party citations) as background or as § 103 combiners. They fall into recognizable clusters. I list them by cluster rather than repeating the same analysis 100 times; each is pre-2007 and thus available as § 102(a)/§ 102(b)/§ 102(e) art.

(a) License management / multiple-copy control (most relevant to claims 1/22/25):
US 4,937,863 (DEC, Software licensing management system); US 5,260,999 (DEC, Filters in license management system); US 4,924,378 (Prime Computer, License management system and license storage key); US 5,742,879 (DEC, Method and system for managing execution of licensed programs); US 5,790,664 (Network Engineering Software, Automated system for management of licensed software); US 5,949,504 (Infologic, Licensing management system…); US 6,006,190 (Tartaroukos, …enforcing software licenses); US 6,044,471 (Z4, Method and apparatus for securing software…); US 5,737,399; US 4,932,076; US 5,204,470 (Software usage timer and counter … limited use — relevant to the time-based limit); US 6,076,017 (Palantir, copy-tracking distributed software featuring tokens…); US 5,875,564 (Charles E. Hill, Software piracy detection system).

(b) Time-limited / usage-count / rental licensing (relevant to the "first/second/third time period" structure):
US 4,593,376 (Volk, vending program cartridges … after preset time interval expires); US 4,740,890 (Software Concepts, trial period usage code and unlimited use unlocking code); US 5,019,234; US 5,495,411 (Ananda, Secure software rental system using continuous asynchronous password verification); US 5,925,127 (Microsoft, Method and system for monitoring the use of rented software); US 5,509,070 (Schull, Method for encouraging purchase of executable and non-executable software — note: this is the reference that anticipated the '216 patent in IPR2014-01453); US 6,134,659 (Sprong, Controlled usage software); US 4,740,890.

(c) Remote activation / distribution over a network (relevant to the communication-module limitation):
US 5,103,476 and US 5,222,134 (Betanet/Tau, Secure system for activating personal computer software at remote locations); US 4,658,093 (Hellman, Software distribution system); US 4,999,806 (Chernow, Software distribution system); US 5,835,911 (Fujitsu, Software distribution and maintenance system and method); US 5,956,505 (Pitney Bowes, Remote activation of software features); US 5,319,705 (IBM, multimedia access control enablement).

(d) Device binding / hardware ID / copy protection (relevant to the device-identity generation of claims 1/18–21):
US 4,593,353 (Pickholtz); US 4,683,553 (Mollier); US 4,658,093 (Hellman); US 4,562,306; US 5,021,093; US 4,791,565 (Effective Security Systems); US 4,796,220 (Pride Software, Method of controlling the copying of software); US 4,685,055; US 4,688,169 (Joshi); US 4,903,296 (IBM); US 5,083,304 (Data I/O); US 5,083,309 (Schlumberger); US 5,113,518 (Durst); US 5,191,186; US 5,253,029; US 5,222,133 (Chou); US 5,287,408 (Autodesk, serializing and validating copies of computer software); US 5,337,357 (Software Security); US 5,589,929; US 5,412,719; US 4,817,140; US 6,044,471; US 6,158,005 (Audible, Cloning protection scheme for a digital information playback device); US 6,101,606 (Wasy, System for securing protected software from unauthorized use in computer networks).

(e) Authentication / cryptographic-protocol references (background for the device identity/hash):
US 4,278,837 (Best); US 4,351,982 (Racal-Milgo, RSA public-key); US 4,712,238 (M/A-Com); US 5,210,795 (DEC, Secure user authentication from personal computer); US 5,418,854 (DEC, passwords); US 5,440,635 (AT&T, cryptographic remote authentication); US 5,666,415 (DEC); US 5,703,951 (Spyrus); US 4,982,430 (General Instrument); US 5,978,772; US 5,974,150 (Tracer Detection).

(f) Ancillary / unrelated art (cited but of low value against '960):
US 4,704,610 (Smith, Emergency vehicle warning…), US 5,414,269 (Oki, paper-detection circuit), and JP 4369068 B2 (Maspro Denkoh, Dielectric Resonator Device) are, on their titles, directed to fields unrelated to digital licensing; they appear in the citation record and should be treated as noise for § 102 purposes unless the examiner's reasons for citing them can be recovered from the file history.

(g) Foreign and non-patent documents:
AU 678985 (6/1997); DE 101 55 755 A1 (5/2003); and the non-patent publication "Technical Details on Microsoft Product Activation for Windows XP," Internet Citation XP002398930 (Aug. 13, 2001). The Microsoft Product Activation document is a printed publication under § 102(a)/(b) and is relevant to the device-identity/HWID and remote-activation-server limitations of claims 1, 18–22.

(h) "Hu" — see § 3.3 above; used only against never-issued substitute claims.

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6. Summary judgment on § 102

Bottom line: On the record retrieved, US 7,047,411 (DeMello) is the most relevant anticipatory reference, and it is the only reference the PTAB relied on to invalidate the claims of the '960 patent (FWD, Aug. 1, 2018; original claims subsequently held § 101-ineligible in E.D. Tex. and affirmed by the Federal Circuit, Aug. 9, 2018). Among examiner-cited references, US 5,349,526 (licensor-changeable usage limits) and US 6,189,146 (Microsoft software licensing) are the most directly on point to the "adjustable allowed copy count" idea, with US 5,490,216 supplying the device-identity/registration aspect that supports dependent claims 18–21.

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7. Explicit uncertainties and limitations (nothing fabricated)

1. DeMello's bibliographic data (number confirmed as 7,047,411) — I could not verify its title, inventors, assignee, or exact filing/issue dates from the retrieved sources. I described only what the PTAB petition/response quotes establish.
2. The "Hu" reference — number, dates, and title not retrievable; I therefore do not describe it.
3. Exact filing/issue dates for the ten IPR2017-01665 secondary references (Staruiala, Colosso, Baratti, Christiano, Pearce, Hughes, Wyatt, Karp, Koenen) — not verified; I confirm only that they were asserted as prior art in a 2017 petition, which implies pre-2007 availability.
4. The "Microsoft patent filed seven years before the patent-in-suit" referenced in the E.D. Tex. fee brief — not identified; candidates flagged but not asserted.
5. The complete 210-reference list — the copy supplied is truncated after US 6,189,146 B1, so references numbered above that point (e.g., US 6,2xx,xxx–7,xxx,xxx, and the remaining US 2005–2008 publications) are summarized from the Google Patents/Unified Patents citation record rather than from the full printed front page; individual § 102 analysis for those is limited to the clusters above.
6. Claim-by-claim § 102 mapping for the dependent claims 2–21 and 23–24 against each Tier-2/Tier-3 reference was not performed reference-by-reference; where I state a claim number, it reflects a limitation match, not a verified anticipation.
7. I have not auto-corrected any patent or application number. Where a number appears, it is as retrieved.

I'll ground this analysis by verifying the key prior-art references cited on the patent's face and the PTAB record.

Let me pin down the specific prior-art grounds actually applied in the IPR against this patent.

Let me identify the two references the Board actually relied on (DeMello and Staruiala) so I can cite them precisely.

Obviousness Analysis — US 8,566,960 under 35 U.S.C. § 103

Note on building on prior sections: The earlier summary recorded that IPR2017‑00948 held claims 1–8, 18–22, and 25 unpatentable over "prior art," but left the reference identities generic. This section supplies them: the Board's ground was DeMello (Ex. 1003), alone for anticipation and in combination with Staruiala (Ex. 1004) for obviousness. I also flag one correction below to the earlier summary's framing of what survived the IPR.

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1. The § 103 framework applied

Under Graham v. John Deere and KSR Int'l v. Teleflex, the questions are: (a) scope and content of the prior art; (b) differences between the prior art and the claims; (c) the level of ordinary skill; and (d) objective indicia. In IPR2017‑00948 the Board expressly recorded that "Patent Owner does not introduce objective indicia of nonobviousness" — a notable evidentiary gap, and one that carries over to any fresh challenge, since Uniloc has never marshaled secondary considerations for this patent.

Level of ordinary skill: the patent itself does not define a POSITA, and I could not confirm the Board's exact articulation from the sources retrieved. The art is squarely at the intersection of DRM/software licensing, device activation servers, and device fingerprinting. I will therefore avoid asserting a specific degree/experience profile rather than fabricate one.

What the claims actually add over the prior art. Stripped of boilerplate (communication module / processor module / memory module), independent claims 1, 22, and 25 reduce to six functional steps:

1. receive an authorization request from a given device;
2. verify license data using a device identity generated by sampling physical parameters of that device;
3. if the device identity is already on a record → allow;
4. if it is not on the record → set the "allowed copy count" to a first upper limit for a first time period;
5. calculate a device count of devices already authorized; and
6. if the count < the first upper limit → allow.

Every one of these is an automation of a commercial convention that the patent's own Background admits was already in the art: Apple's iTunes "preset number (e.g., five) of devices … per license," plus iTunes' ability to "turn off the license rights of individual devices … and therefore free up that device installation." That admission alone materially narrows the non-obviousness field.

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2. Element-by-element mapping to the primary reference (DeMello)

DeMello is the Microsoft "activation servers 94" DRM reference relied on as ground 1. I confirmed its content from the Board's final written decision and from the exhibit PDF hosted by Google Patents (US7047411.pdf).

Identifier caveat: the exhibit PDF resolves to US 7,047,411; I confirmed the number only from that PDF's filename, not from an independent bibliographic record, and I flag that rather than assert it as verified.

KSR design choices. DeMello further states the limits may "allow for additional activations as time passes—e.g., one additional activation for each 90 day period after the first 90 days, up to a limit of 10 total activations," and calls them "merely exemplary." That language maps directly onto dependent claims 5, 6, 10, 11, 14, 15: choosing 5/7/11 devices and 6/31-day windows over 5/6/10 devices and 90-day windows is, on this record, "simple and obvious design choice" — and the '960 specification itself disclaims any significance to the numbers ("purely exemplary … other numbers, data, values, or algorithms may be used").

DeMello's step 168/172 error message ("an error message is rendered at step 172, preferably including a support telephone number") reads on claims 7, 8, 12, 13, 16, 17 (warn on equaling the limit; deny on exceeding). The Board expressly so held for claim 7.

Result: DeMello alone renders claims 1–8, 18, and 22–25 obvious (and, as the Board found, anticipates 1–5, 7, 8, 18, 22, 25).

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3. Combination A — DeMello + Staruiala (claims 19–21)

The only element the primary reference arguably lacks on its face is the nature of the device identity. Staruiala (Ex. 1004, "System for obtaining unique fingerprints from computer equipment") teaches extracting a fingerprint from non-user-configurable hardware characteristics — tolerable manufacturing imperfections, differential responses to identical stimuli, propagation latency — and combining them with user-configurable information (a password), then subjecting the combination to a secure hash.

Identifier caveat: I could not independently confirm Staruiala's patent number from the sources retrieved; I will not guess it. The title, abstract text, and column citations are established from the Board's decision.

This maps onto:

• Claim 19 — user-configurable + non-user-configurable parameter (Staruiala: password + component-imperfection responses);
• Claim 20 — irreversible transformation (Staruiala's secure hash);
• Claim 21 — cryptographic hash function (same).

Motivation to combine — express and textual. Staruiala itself supplies it: its concept "can be applied to scaled down (or minimal) devices and be used in copyright protection schemes. Also it can be extended up to identify and authenticate networks … of computers or to device copyright protection schemes for software." The Board credited exactly this as the "rational underpinning." Two references in the same field, addressing the same problem (reliably identifying a device for a licensing decision), with one expressly contemplating the other's use case, is the paradigm KSR combination.

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4. Combination B — for claims 9–17, 23, 24 (the residual gap)

This is the one place the record cuts against the challenger and I want to be candid about it. The Board held claims 9–17, 23, and 24 not unpatentable over DeMello (and DeMello + Staruiala), because DeMello does not disclose setting the copy count to a second/third upper limit in response to the device identity not being on the record. The Board found DeMello "describes a transition from step 164 to 168 … without any description of how or when the limit is set," and that a schedule-driven adjustment "is as plausible as" petitioner's request-triggered reading.

This is a failure of proof on the references chosen, not a holding of non-obviousness. The gap is narrow — the timing/trigger of an admittedly-disclosed escalation — and is fillable from the patent's own cited art:

• US 5,392,297 (Auto-Trol Technology), "System for controlling the number of concurrent copies of a program in a network based on the number of available licenses," cited on the face of the '960 patent. It teaches a server that, upon a node's request to run licensed software, evaluates the available-license count and grants or denies. That supplies the request-triggered evaluation DeMello lacks.
• US 4,937,863 (Digital Equipment Corp.), "Software licensing management system," and US 5,790,664 (Network Engineering Software), "Automated system for management of licensed software" — both cited on the face — teach license-query processors that respond to an incoming licensee request by checking a license record and returning a grant/deny.
• US 5,490,216 (Uniloc Private Limited) — the patent's own incorporated-by-reference ancestor — teaches checking platform/device parameters on each boot and triggering re-registration when the platform changes, i.e., evaluating the device identity at the moment of a use request.
• US 6,009,401 (Preview Systems), "Relicensing of electronically purchased software," and US 6,044,471 (Z4 Technologies), "Method and apparatus for securing software to reduce unauthorized use," both cited on the face, teach re-issuing/limiting licenses on a per-request basis.

Motivation: DeMello's escalation is schedule-based only because DeMello had no reason to optimize when the limit is computed. Once the device identity is already being checked at request time (step 164) — which DeMello does — evaluating the applicable ceiling in the same branch is nothing more than reordering steps that produce no new technical result, and "[a] known technique … used to improve one device" is obvious where a POSITA "would recognize that it would improve similar devices in the same way" (KSR). The specification's own FIG. 2 (steps 19, 26, 34) shows precisely this request-time evaluation, confirming it was within the inventor's own conception as a mere implementation detail.

I would rate this combination as strong but not as clean as Grounds 1–2 — it requires a more explicit articulation of why the trigger timing is a design choice rather than a patentable difference, and it is the point on which a well-briefed patent owner would focus.

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5. Motivation to combine — the general case

Beyond the reference-specific rationales, four cross-cutting motivations apply:

1. Same field, same problem. Both the '960 patent and DeMello address "monitoring and adjusting software usage under a software license" / "distribut[ing] content in accordance with a digital rights management system." The Board found the fields overlap directly.
2. Shared, admitted commercial problem. The '960 Background frames the dilemma — publishers want to permit normal multi-device use without enabling wholesale sharing. DeMello frames the identical tension: allowing "legitimate uses of the activation system, while preventing abuse," so that the limit "will allow users to activate readers … with a reasonable frequency, and will resist abuse of the system by 'pirates.'"
3. Predictable result. Growing a device ceiling over time from a first authorization is a rate-limiting function; combining a rate limit with a device-identity check yields the expected two-variable outcome with no unexpected behavior.
4. No teaching away. Unlike the Hu combination pressed in the motion-to-amend opposition (where the patent owner argued DeMello's server-generated machine ID taught away from a device-generated identity), Grounds 1–2 encounter no express disclaimer or contrary teaching. Indeed, the Board found DeMello's upload of a hardware ID derived from hardware components sufficient to meet the "sampling physical parameters" limitation.

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6. Claim-by-claim summary

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7. What this means

• Independent claims 1, 22, and 25 are obvious, and were in fact held unpatentable by the Board over DeMello and DeMello+Staruiala.
• The strongest § 103 case sits on two references only; the patent's very large cited-art list (210 citations, including US 4,937,863, US 5,392,297, US 5,490,216, US 5,509,070, US 6,009,401, US 6,044,471) matters mainly as cumulative context and as a reservoir for filling the claims 9–17/23–24 gap.
• § 101 is the shorter path. All 25 claims were held ineligible by the E.D. Tex. (Uniloc USA, Inc. v. [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.), 243 F. Supp. 3d 797), affirmed by Rule 36 at 733 F. App'x 1026, and this analysis does not disturb that. The § 103 analysis above is the alternative, prior-art-based route to the same destination.

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8. Corrections and open items

1. Filling in the earlier litigation summary: the FWD's ground was DeMello, not an unnamed reference. The earlier summary's statement that claims "1–8, 18–22, and 25" were held unpatentable is confirmed; I add that claims 9–17, 23, and 24 were expressly not shown unpatentable on that ground, for the reason explained in § 4.
2. Unverified identifiers. I confirmed DeMello = US 7,047,411 only from the Google-hosted exhibit PDF filename. I could not confirm Staruiala's patent number and have deliberately not supplied one. Verify both against the PTAB record (Ex. 1003 and Ex. 1004 in IPR2017‑00948) before relying on them.
3. POSITA definition for this patent is unconfirmed from the sources retrieved; none is asserted here.
4. The "in response to" cause-and-effect limitation in claims 9/14/23/24 was emphasized by the applicant during prosecution and is the single limitation with real § 103 traction against the Board's chosen ground. It is also the limitation the patent owner deleted in proposed substitute claims 26–28 — which were then rejected under § 101 on Uniloc's own concession that it had no substantive § 101 response.