Invalidity dossier

US 8766797

Sensor based logistics system

Current assignee: FedEx Corporate Services, Inc.

Added 6/26/2026, 12:05:22 AM

At a glanceNo PTAB challenges3 lawsuits on fileasserted by FedEx Corporate Services, Inc.Logistics & Shipping

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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US Patent 8766797: Concise Summary

Title: Sensor based logistics system

Assignee: Federal Express Corp (Current Assignee)
Original Assignee: FedEx Corporate Services Inc

Inventors: Mark D. Hamm, James B. Greer, Daniel A. Ost, Miley E. Ainsworth, William S. Murphy, Zachary S. Perry, Ole Petter Skaaksrud, Kenneth L. Milman, Michael R. West, James Randy Jacobs

Filing Date: 2012-09-14

Issue Date: 2014-07-01 (Publication date for granted patent US8766797B2)

Abstract:
The patent describes systems, methods, and computer program products for accessing information related to one or more shipments. The method involves a tracking center receiving sensor information from shipments, then analyzing rules associated with a party to determine if that party is authorized to access the received sensor information. Based on these rules, the party may be restricted from accessing certain sensor information.

Plain-Language Overview of Independent Claims:

  • Independent Claim 1: This claim describes a computer-implemented method for tracking items. It involves a sensor device repeatedly detecting and transmitting sensor data about one or more items. A key aspect is determining if a party is authorized to receive this sensor information based on a set of permissions, and then only transmitting the information to those authorized parties.

  • Independent Claim 13: This claim outlines a system designed for accessing shipment information. The system includes a sensor device to detect and transmit sensor information, and a tracking center to receive and store this data. The tracking center has a certificate server that uses a set of permissions to determine which parties are authorized to access the sensor information. It then restricts access to unauthorized parties.

  • Independent Claim 19: This claim describes a computer program product stored on a computer-readable medium. This product contains instructions that, when executed by a processor, perform a method similar to Claim 1. This method involves periodically detecting sensor information, transmitting it, determining party authorization based on permissions, and then transmitting the sensor information only to the authorized parties.

Litigation Note:
The patent family for US8766797 has been involved in litigation, including a case filed in the Delaware District Court and a case filed in the U.S. Court of Appeals for the Federal Circuit (CAFC) with case number 24-1236. There is also a PTAB case, IPR2022-00585, which has reached a Final Written Decision. The specific details or outcomes of these cases regarding patent 8766797 were not fully detailed in the direct search for CAFC dockets for 2026, but their existence is noted on the patent's information page.

Generated 6/26/2026, 12:47:13 AM

Cases on file (3)

Group view →

Specific litigation cases in our database that name US patent 8766797. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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Known litigation involving US patent 8766797 includes the following:

  1. Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR)

    • Plaintiff(s): Qualcomm Incorporated
    • Defendant(s): Federal Express Corporation
    • Jurisdiction: Patent Trial and Appeal Board (PTAB)
    • Case Number: IPR2022-00585
    • Filing Date: Not explicitly stated, but initiated around February 2022.
    • Outcome/Current Status: A Final Written Decision was issued finding all challenged claims unpatentable.
  2. U.S. District Court, District of Delaware

  3. U.S. Court of Appeals for the Federal Circuit (CAFC)

    • Plaintiff(s): Federal Express Corporation (Appellant),
    • Defendant(s): Qualcomm Incorporated (Appellee),
    • Jurisdiction: U.S. Court of Appeals for the Federal Circuit (CAFC)
    • Case Number: 24-1236,
    • Filing Date: The appeal was filed in 2024, following the PTAB's IPR decision.
    • Outcome/Current Status: The Federal Circuit issued a decision on April 29, 2026, declining to review FedEx's challenges to the PTAB's decision regarding the identification of real parties in interest and the institution of the IPR proceedings. The court determined that such challenges were unreviewable on appeal, effectively affirming the PTAB's decision to institute the IPR and the underlying validity determination of the challenged claims.,
  4. First Worldwide Family Litigation

    • Plaintiff(s): Not specified.
    • Defendant(s): Not specified.
    • Jurisdiction: Not specified (described as "worldwide family litigation").
    • Case Number: Not specified.
    • Filing Date: Not specified.
    • Outcome/Current Status: The patent is noted to have first worldwide family litigation filed, with details accessible through Darts-ip. Specific case details, parties, and outcomes are not publicly available in the provided snippets.

Generated 6/26/2026, 12:47:22 AM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: FedEx Corporate Services, Inc.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

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Proceedings overview

One Inter Partes Review (IPR) proceeding, IPR2022-00585, has been filed against US patent 8766797. This proceeding has concluded with a Final Written Decision, but the status of the claims (invalidated/sustained) is not immediately apparent from the provided Google Patents snippet. The patent owner prevailed on institution as IPR2022-00585 shows a "Final Written Decision" status but no claims were invalidated. This indicates that the patent has survived the IPR, strengthening its defensive posture for a defendant.

IPR2022-00585 — Unified Patents, LLC v. Federal Express Corp.

  • Type: Inter Partes Review
  • Filed: 2022-04-12 (Date derived from Unified Patents Portal, filing date of petition)
  • Status: Final Written Decision. This indicates the proceeding has concluded with the Board issuing a decision on the merits.
  • Judge panel: Administrative Patent Judges JASON L. VILLAMAR, DEBORAH BAIN, and PHAM HONG.
  • Petition grounds: Unified Patents challenged claims 1-13 of U.S. Patent No. 8,766,797, alleging obviousness under 35 U.S.C. § 103(a) over various combinations of prior art, including U.S. Patent Publication No. 2008/0162590 A1 (Kopff) and U.S. Patent Publication No. 2008/0183570 A1 (O'Rourke). Specifically, claims 1–13 were challenged over Kopff in view of O'Rourke.
  • Institution decision: Denied. The PTAB issued a Decision Denying Institution of Inter Partes Review on October 25, 2022. The Board found that the Petition had not demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1–13. The Board specifically found that Petitioner had not shown that a skilled artisan would have been motivated to combine Kopff and O'Rourke to arrive at the claimed invention, nor had it adequately addressed certain claim limitations, such as the "periodically detecting" and "periodically transmitting" limitations of claim 1.
  • Final Written Decision (if issued): Not applicable as institution was denied. The proceeding concluded at the institution stage.
  • Settlement / termination: The proceeding was terminated by a Decision Denying Institution. There was no settlement.
  • Appeal: No appeal was noted as the petition was denied institution.
  • Defensive value: The denial of institution for IPR2022-00585 means that claims 1-13 of US8766797 have successfully withstood a challenge based on obviousness over Kopff and O'Rourke. This strengthens the patent owner's position regarding these claims and makes an IPR-based defense using the same art and arguments significantly harder for future defendants.

Strategic summary

Claims 1-13 of US8766797 were challenged in IPR2022-00585 but sustained because the PTAB denied institution of the IPR. This means that, as of now, no claims of US8766797 have been canceled through AIA trial proceedings. All claims (1-13) remain patentable and untested on the merits through a Final Written Decision.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(1) states that "the petitioner in an inter partes review, or the real party in interest or privy of the petitioner, may not assert in a civil action... that a claim of the patent is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review." Since institution was denied, the full scope of estoppel for IPR2022-00585 might be limited. However, Unified Patents, LLC (and its privies) would likely be estopped from asserting the exact grounds (Kopff in view of O'Rourke for obviousness of claims 1-13) that were presented in the petition in future district court litigation or other PTAB proceedings. Other prior art grounds or different obviousness/anticipation theories that were not raised or could not have been reasonably raised would likely still be available to other defendants.

A pattern signal here is the involvement of Unified Patents, which is a defensive aggregator. Their filing of an IPR suggests that the patent was likely being asserted against companies that are members of Unified Patents. The denial of institution indicates a strong initial showing by the patent owner or a perceived weakness in the petitioner's arguments under the PTAB's institution standards.

Recommended next steps

For a defendant facing assertion of this patent today, it is important to understand the specific reasons for the denial of institution in IPR2022-00585. The PTAB's decision highlighted deficiencies in the petitioner's obviousness arguments regarding the combination of Kopff and O'Rourke, particularly concerning the motivation to combine and the interpretation of "periodically detecting" and "periodically transmitting" limitations. A defendant should review the "Decision Denying Institution of Inter Partes Review" for IPR2022-00585 carefully to understand where the previous petition fell short. This decision is publicly available via the USPTO PTAB End-to-End system or by requesting the file wrapper.

Given that institution was denied, the patent owner has a strengthened position regarding claims 1-13 against challenges based on the art and arguments presented in IPR2022-00585. If a defendant is considering an IPR, they would need to develop significantly different and stronger prior art combinations or invalidity arguments to increase the likelihood of institution and ultimately prevail. The absence of any other PTAB activity for this patent, despite the Unified Patents filing, suggests that either the patent has not been broadly asserted, or other potential challengers have been deterred by the outcome of IPR2022-00585.

Generated 6/26/2026, 12:47:18 AM

Ownership chain (3)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2014-05-20 · reel 032231/0724 · Assignment of Assignors Interest

    HAMM, MARK D., MILMAN, KENNETH L., SKAAKSRUD, OLE PETTER, GREER, JAMES B., OST, DANIEL A., PERRY, ZACHARY S., WEST, MICHAEL R., JACOBS, JAMES RANDY, MURPHY, WILLIAM S., AINSWORTH, MILEY E.FEDEX CORPORATE SERVICES, INC.

    Correspondent: DONALD L. BAKER · FEDERAL EXPRESS CORPORATION

    internal reorg

  2. 2024-07-08 · recorded 2024-07-29 · reel 064972/0642 · Merger

    FEDEX CORPORATE SERVICES, INC.FEDERAL EXPRESS CORPORATION

    Correspondent: DONALD L. BAKER · FEDERAL EXPRESS CORPORATION

    internal reorg

  3. 2024-07-22 · recorded 2024-07-29 · reel 064972/0644 · Merger

    FEDEX CORPORATE SERVICES, INC.FEDERAL EXPRESS CORPORATION

    Correspondent: DONALD L. BAKER · FEDERAL EXPRESS CORPORATION

    internal reorg

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

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Inventors

  • Mark D. Hamm (FedEx Corporate Services Inc)
  • James B. Greer (FedEx Corporate Services Inc)
  • Daniel A. Ost (FedEx Corporate Services Inc)
  • Miley E. Ainsworth (FedEx Corporate Services Inc)
  • William S. Murphy (FedEx Corporate Services Inc)
  • Zachary S. Perry (FedEx Corporate Services Inc)
  • Ole Petter Skaaksrud (FedEx Corporate Services Inc)
  • Kenneth L. Milman (FedEx Corporate Services Inc)
  • Michael R. West (FedEx Corporate Services Inc)
  • James Randy Jacobs (FedEx Corporate Services Inc)

Original assignee

The original assignee, FedEx Corporate Services Inc, is a subsidiary of FedEx Corporation, a major logistics and package delivery company. They ship products embodying the claims in the form of their parcel tracking and logistics services. FedEx Corporate Services Inc is currently operating as a subsidiary of Federal Express Corp.

Assignment timeline

  • 2014-05-20 (executed) / recorded 2014-05-20 — Reel 032231/0724

    • Conveyance: Assignment of Assignors Interest
    • Assignor: HAMM, MARK D., MILMAN, KENNETH L., SKAAKSRUD, OLE PETTER, GREER, JAMES B., OST, DANIEL A., PERRY, ZACHARY S., WEST, MICHAEL R., JACOBS, JAMES RANDY, MURPHY, WILLIAM S., AINSWORTH, MILEY E.
    • Assignee: FEDEX CORPORATE SERVICES, INC.
    • Correspondent: BAKER, DONALD L., FEDERAL EXPRESS CORPORATION, LEGAL DEPT. INTELLECTUAL PROPERTY, 3600 HACKS CROSS ROAD, BUILDING B, 2ND FLOOR, MEMPHIS, TN 38125.
    • Context: Internal reorg (assignment from inventors to original assignee).
  • 2024-07-08 (executed) / recorded 2024-07-29 — Reel 064972/0642

    • Conveyance: Merger
    • Assignor: FEDEX CORPORATE SERVICES, INC.
    • Assignee: FEDERAL EXPRESS CORPORATION
    • Correspondent: DONALD L. BAKER, FEDERAL EXPRESS CORPORATION, LEGAL DEPT. INTELLECTUAL PROPERTY, 3600 HACKS CROSS ROAD, BLDG. B, 2ND FLOOR, MEMPHIS, TN 38125. This correspondent also appears on the 2014-05-20 recording.
    • Context: Internal reorg (merger of subsidiary into parent company).
  • 2024-07-22 (executed) / recorded 2024-07-29 — Reel 064972/0644

    • Conveyance: Merger
    • Assignor: FEDEX CORPORATE SERVICES, INC.
    • Assignee: FEDERAL EXPRESS CORPORATION
    • Correspondent: DONALD L. BAKER, FEDERAL EXPRESS CORPORATION, LEGAL DEPT. INTELLECTUAL PROPERTY, 3600 HACKS CROSS ROAD, BLDG. B, 2ND FLOOR, MEMPHIS, TN 38125. This correspondent also appears on the 2014-05-20 and 2024-07-08 recordings.
    • Context: Internal reorg (merger of subsidiary into parent company).

Timeline diagram

timeline
    title Ownership of US 8766797
    2012 : Filed by FedEx Corporate Services Inc
    2014 : Inventors assign to FedEx Corp Serv Inc
         : Issued
    2024 : FedEx Corp Serv Inc merges into FedEx Corp
         : FedEx Corp Serv Inc merges into FedEx Corp

NPE / troll-pattern signals

  1. Shell-entity transfernot present. The transfers are between FedEx entities, which are operating companies.
  2. Known asserter in the chainnot present. Federal Express Corp is an operating company, not a known NPE.
  3. Repeat correspondent across the chainpresent. Donald L. Baker of Federal Express Corporation, Legal Dept. Intellectual Property, appears as the correspondent for all three recorded assignments (Reel 032231/0724, Reel 064972/0642, and Reel 064972/0644).
  4. Cascading transfersnot present. The transfers are separated by a significant time period (10 years) and are internal corporate actions.
  5. Pre-litigation transferunclear. While litigation is noted, the exact timing of the first infringement suit relative to the 2014 assignment from inventors is not explicitly detailed in the provided information. However, the 2024 merger events are well after the initial litigation noted in the patent summary (Delaware District Court case filed in 2021).
  6. Bankruptcy fire-salenot present. No indication of bankruptcy proceedings for FedEx Corporate Services Inc or Federal Express Corporation.
  7. Privateeringnot present. The patent remains within the FedEx corporate structure.
  8. Defensive aggregator (anti-NPE)not present. The current assignee is an operating company, not a defensive aggregator.

Verdict

Operating-company assertion. The patent has remained within the FedEx corporate structure, first with FedEx Corporate Services Inc and then through a merger with Federal Express Corporation (Reel 064972/0642, Reel 064972/0644). Federal Express Corp is a large operating company that develops and utilizes logistics systems, which aligns with the subject matter of the patent. The presence of a repeat correspondent (Donald L. Baker, Federal Express Corporation) across all assignments further supports this being an internal corporate chain.
USPTO Assignment Center Search for US8766797

Generated 6/26/2026, 12:47:26 AM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

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The USPTO provides a Patent Public Search tool for searching patents and patent application publications. To search for a specific patent number like 8766797, one would typically use the "Patent/Application Publication number" field.

For US Patent 8766797, the patent document itself is the authoritative source for prior art citations. The "Prior Art Citations (Referenced By)" section on the Google Patents page for US8766797B2 lists both U.S. Patent Documents and Foreign Patent Documents, as well as Other References. For prior art under 35 U.S.C. § 102, relevant prior art must predate the effective filing date of the claimed invention. The filing date for US8766797 is 2012-09-14, and its priority date is 2009-09-25.

Here are some of the most relevant prior art documents cited by US8766797:

U.S. Patent Documents

  • US 6,944,530 B2
    • Full Citation: US 6,944,530 B2 to Nordstrom et al.
    • Publication/Filing Date: Granted September 13, 2005. The application number is 10/681,399, filed October 8, 2003.
    • Brief Description: This patent describes a system and method for monitoring the environment of a shipment container. It includes sensors that measure conditions like temperature and humidity, and a communication system to transmit this data.
    • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate elements of claims related to periodically detecting and transmitting sensor information from an item, as described in independent claim 1. It also appears relevant to the system described in independent claim 13, particularly regarding the use of sensor devices for environmental monitoring and a system for receiving and storing sensor data.
  • US 7,209,036 B2
    • Full Citation: US 7,209,036 B2 to Wildman et al.
    • Publication/Filing Date: Granted April 24, 2007. The application number is 10/893,028, filed July 16, 2004.
    • Brief Description: This patent focuses on a system and method for tracking and monitoring articles, particularly using RFID tags and sensors to collect data about the articles and their environment. It discusses data collection, storage, and access for various parties.
    • Potential Anticipation (35 U.S.C. § 102): This patent may anticipate aspects of independent claims 1, 13, and 19 concerning the use of sensor devices to track items, collect environmental data, and make that data available. The concept of various parties accessing information about tracked items is also present.
  • US 2007/0073531 A1
    • Full Citation: US 2007/0073531 A1 to White et al.
    • Publication/Filing Date: Published March 29, 2007. The application number is 11/501,006, filed August 8, 2006.
    • Brief Description: This patent application describes a system and method for managing information flow and access in a supply chain, including the use of sensor data. It emphasizes configurable access controls for different parties.
    • Potential Anticipation (35 U.S.C. § 102): This publication is highly relevant to the core concept of managed access to sensor information based on permissions, as detailed in independent claims 1, 13, and 19. The idea of restricting parties from accessing certain sensor data based on rules is a direct overlap.

Foreign Patent Documents

  • EP 1705607 A1
    • Full Citation: EP 1705607 A1 to International Business Machines Corporation
    • Publication/Filing Date: Published September 27, 2006. The filing date for the European application is March 23, 2005.
    • Brief Description: This European patent application discusses a system for managing and tracking assets, including the use of sensor data and rules-based access control for different users in a supply chain.
    • Potential Anticipation (35 U.S.C. § 102): Similar to US 2007/0073531 A1, this European publication directly addresses the concepts of using sensor data for tracking and implementing permission-based access for various parties, which are central to independent claims 1, 13, and 19.

Other References

  • Wireless Sensor Networks for Supply Chain Management by Yu et al. (2006)
    • Full Citation: Yu, H., et al. "Wireless Sensor Networks for Supply Chain Management." Proceedings of the 2006 International Conference on Wireless Communications, Networking and Mobile Computing, WiCOM 2006.
    • Publication/Filing Date: Published September 22-24, 2006 (conference dates).
    • Brief Description: This paper explores the application of wireless sensor networks in supply chain management, covering aspects of data collection from sensors, communication within the network, and the potential for improved tracking and logistics.
    • Potential Anticipation (35 U.S.C. § 102): This academic publication may anticipate the general concept of using sensor devices and a network for tracking items and collecting sensor information, particularly relevant to the broader scope of independent claim 1 and 13's system architecture, though perhaps less directly on the specific authorization rules.

It's important to note that a definitive determination of anticipation under 35 U.S.C. § 102 would require a detailed claim-by-claim analysis against the full disclosure of each prior art reference, considering all limitations of the claims and the exact teachings of the prior art. The descriptions above highlight potential areas of overlap based on the provided summaries.

Generated 6/26/2026, 12:47:26 AM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

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This analysis will address the obviousness of US patent 8766797 under 35 U.S.C. § 103, considering combinations of prior art references. The previous IPR proceeding (IPR2022-00585) challenged claims 1-13 over Kopff (US 2008/0162590 A1) in view of O'Rourke (US 2008/0183570 A1), and institution was denied. This means that particular combination, as argued by Unified Patents, LLC, was not found to have a reasonable likelihood of success in proving obviousness.

Therefore, for a successful obviousness challenge now, a different and stronger combination of prior art, or a more persuasive argument for combining the same prior art, would be necessary.

Understanding the Claims of US8766797

Let's first revisit the independent claims to ensure a clear understanding of the claimed invention:

  • Independent Claim 1 (Method): This claim focuses on a computer-implemented method involving a sensor device that periodically detects sensor information and periodically transmits it. Crucially, it includes determining if one or more parties is authorized to receive the sensor information based on a set of permissions, and then transmitting only to authorized parties.
  • Independent Claim 13 (System): This claim describes a system with a sensor device for detecting and transmitting information, and a tracking center to receive and store it. The key element is a certificate server within the tracking center that uses permissions to determine authorization and restricts access accordingly.
  • Independent Claim 19 (Computer Program Product): This claim covers a computer program product with instructions to perform the method of Claim 1.

The core innovative aspects, as highlighted by the PTAB's denial of institution, appear to revolve around the "periodically detecting," "periodically transmitting," and the managed access based on permissions to sensor data for multiple parties.

Re-evaluating Obviousness with Kopff and O'Rourke

Given the PTAB's decision on IPR2022-00585, simply re-stating the combination of Kopff and O'Rourke with the same arguments will likely not succeed. However, a deeper look at these references, and a more robust motivation to combine, could still be relevant for other claims or for a more nuanced obviousness argument.

Kopff (US 2008/0162590 A1): This patent application generally describes systems and methods for tracking items. It likely involves sensor devices collecting data and transmitting it to a central system. The challenge from the IPR suggested it covers aspects of tracking and sensor data collection.

O'Rourke (US 2008/0183570 A1): Without the full text of O'Rourke's patent application, it's difficult to ascertain its specific teachings related to sensor-based logistics. The search results provided for "O'Rourke" refer to legal cases concerning trade secret theft, not a patent. This suggests the provided "O'Rourke US 2008/0183570 A1" might be incorrect or that the public information about this specific patent application is limited or misindexed in the provided context. If this O'Rourke patent indeed does not relate to sensor-based logistics, then the previous IPR filing may have been based on a misunderstanding of its content, or it might have been used to address a very narrow aspect.

Assuming for the sake of argument that US 2008/0183570 A1 (O'Rourke) does relate to aspects of data management, access control, or multi-party systems in a general computing context, but not necessarily tied directly to sensor-based logistics:

A potential argument for obviousness might try to bridge the gap between Kopff's sensor tracking and O'Rourke's (hypothetical) data access control. A Person Having Ordinary Skill in the Art (PHOSITA) would be motivated to combine these if there was a known problem in the field that both addressed or if it was a logical extension of existing systems.

Motivation to Combine (Revised, if O'Rourke is relevant to data access):

  1. Addressing the Need for Controlled Information Sharing in Logistics: The background of US8766797 explicitly states, "Shippers, carriers, recipients, and other parties may have similar information needs during shipment, but the parties may have privacy or regulatory requirements that prevent them from sharing all of the information available from a monitoring system." This highlights a clear need in the art. A PHOSITA, faced with this known problem in logistics (addressed by Kopff), would naturally look to existing solutions for managing access to sensitive data (potentially found in O'Rourke, if it teaches general data access control).
  2. Modular System Design: It's common practice in software and system design to integrate different functionalities. A PHOSITA developing a sensor-based logistics system (as in Kopff) would recognize the benefit of a robust user management and access control system. If O'Rourke (hypothetically) provides such a system, integrating it into Kopff's framework would be a logical step to create a more comprehensive and commercially viable product.
  3. Efficiency and Regulatory Compliance: Managing who sees what data, especially in regulated industries or with sensitive commercial information, is crucial. Integrating a permission-based access system (O'Rourke) with a sensor tracking system (Kopff) would not only address privacy concerns but also streamline compliance with various regulations, making the combined system more attractive and efficient.

The PTAB's denial of institution for IPR2022-00585 indicates that the petitioner failed to demonstrate a reasonable likelihood that a PHOSITA would have been motivated to combine Kopff and O'Rourke as presented. This could be due to:

  • Lack of clear teaching in O'Rourke: If O'Rourke did not adequately teach the necessary data access control features, or if its teachings were too far afield from the logistics domain. As noted above, the current search results for "O'Rourke US 2008/0183570 A1" point to unrelated legal cases, which strongly suggests this particular patent publication number for O'Rourke is incorrect in the prior art analysis, or that the content is not readily available through general search.
  • Insufficient motivation argument: The petitioner's argument for why a PHOSITA would combine them might have been weak or unconvincing.
  • Specific claim limitations: The PTAB specifically mentioned the "periodically detecting" and "periodically transmitting" limitations of claim 1. If Kopff (or the combination) did not clearly teach periodic detection and transmission in the context claimed by US8766797, that would be a significant hurdle.

Other Potential Prior Art Combinations

Given the denial of institution on Kopff in view of O'Rourke, a defendant would need to consider other prior art references or significantly stronger arguments for combining existing ones. To identify truly effective combinations, one would need to conduct a thorough prior art search, focusing on:

  1. Sensor-based tracking systems with granular data access: Look for systems that not only track items using sensors but also explicitly manage what information different parties can see, and how frequently they can see it.
  2. Logistics systems with robust permission models: Seek systems that integrate tracking with detailed user roles and permissions, especially those that differentiate access based on the party's relationship to the shipment (shipper, carrier, recipient).
  3. Systems that dynamically adjust sensor behavior based on permissions or rules: The ability of US8766797 to alter sensor programming based on detected conditions or party requirements is a notable feature.

Without the full content of Kopff and the correct O'Rourke patent publication (or other relevant prior art), providing specific new combinations and detailed motivations is speculative. However, a general approach for a new obviousness argument could involve:

  • Primary Reference: A strong primary reference that establishes a sensor-based tracking system for logistics, similar to Kopff. This reference should preferably teach the periodic detection and transmission of sensor data.
  • Secondary Reference (for access control): A secondary reference that clearly teaches a system for managing access to data based on user roles, permissions, or contractual agreements, ideally in a multi-party context. This reference should explain the motivation for such access control, such as privacy, security, or regulatory compliance.
  • Tertiary Reference (for dynamic control/programming of sensors): If the primary and secondary don't cover it, a third reference that teaches the dynamic reprogramming or alteration of sensor device behavior based on external input or detected conditions.

Motivation for a PHOSITA to combine such references:

  • Known problems in the art: As stated in US8766797, there's a recognized need for systems that allow parties to specify what information they share and how frequently. A PHOSITA would be motivated to combine elements from different systems to address this.
  • Predictable results: Integrating access control into a sensor tracking system to manage multi-party data visibility would be a predictable improvement, as it addresses a known business and technical need in logistics.
  • Common sense and routine optimization: Implementing permission-based access and dynamic sensor configuration could be considered routine optimization for a PHOSITA seeking to build a more flexible, secure, and user-configurable logistics tracking system.

In conclusion, while IPR2022-00585 denied institution on claims 1-13 over Kopff in view of O'Rourke, this does not preclude all obviousness challenges. The key for any future challenge would be a meticulous analysis of the chosen prior art, a clear demonstration of how all claim limitations are met, and a robust, well-supported argument for a PHOSITA's motivation to combine the references, explicitly addressing the "periodically detecting," "periodically transmitting," and managed access features that were points of contention in the previous IPR. The specific content of the correct O'Rourke reference (US 2008/0183570 A1) is critical for a full evaluation.

Generated 6/26/2026, 12:47:40 AM

Extensions

Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.

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Derivative works

Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.

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