Invalidity dossier
US 8996579
Process and apparatus for selecting an item from a database
Current assignee: Kannuu Pty Ltd.
Added 9/29/2026, 3:42:51 PM
Active provider: DeepSeek · deepseek-v4-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll run searches against the specific patent number and related docket/litigation records.
US 8,996,579 B2 — Verified Data (as of April 26, 2026)
Note on method: I searched for the literal identifier 8996579 and cross-checked the resulting records. Everything below is drawn from the patent document itself (Google Patents, FreePatentsOnline, Justia Patents) plus docket-derived records (S.D.N.Y. 1:19-cv-04297-ER opinion, Federal Circuit 21-1638 materials, PTAB filings). Where I could not verify something I say so.
Bibliographic Data
| Field | Value |
|---|---|
| Patent number | US 8,996,579 B2 |
| Title | "Process and apparatus for selecting an item from a database" |
| Inventor | Kevin Dinn (Kevin William Dinn), Mt. Kuring-gai, AU |
| Original Assignee | Kannuu Pty Ltd (Brisbane, Queensland, AU) |
| Application no. | 14/166,465 |
| Filing date | January 28, 2014 |
| Issue date | March 31, 2015 (preceded by Publication US 2014/0143242 A1, May 22, 2014) |
| Earliest priority | Australian provisional 2005904378, filed August 12, 2005 |
| Chain | Continuation of 13/736,548 (now US 8,676,852) → 13/349,204 (US 8,375,058) → 11/990,338 (US 8,140,560) → PCT/AU2006/001151 (WO 2007/019610 A1) |
| Examiner / Agent | Son T. Hoang / Jones Day |
| Claims | 22 (independent claims 1 and 12) |
| Notation | Subject to a terminal disclaimer; anticipated expiration listed as August 11, 2026 |
Abstract (verbatim)
"A database for selecting database items, where the database items are indexed by a list of item identifiers. The item identifiers may be in the form of text. An initial display is generated which includes one or more parts of the item identifiers. Selection of the one or more parts may be made and results in the generation of a display of a further one or more parts for selection. The further one or more parts may be selected in order to add to the selected one or more parts to build a larger part or whole of an item identifier. Selection from a large list of item identifiers may be carried out in a relatively short time period."
Independent Claim 1 — Plain-Language Overview (method)
A computer-implemented method of selecting an item from many items, comprising:
- Generate a first display showing two things side by side: (a) a part of an item identifier (e.g., a text fragment) corresponding to a first set of items, and (b) a part of an item identifier corresponding to a second set of items in a database.
- Enable the user to select one of those two parts through a user interface.
- In response to that selection, generate a further display showing: an additional part of an item identifier for a subset of the selected set, and another additional part for another subset of the selected set.
- Enable selection of one of those two additional parts.
- Combine the previously selected part with the newly selected additional part to create a larger part of the item identifier, and display it.
- Two structural limitations (the point of novelty): the additional parts must be shorter than complete item identifiers, and the first set and second set of items must be mutually exclusive of one another.
In short: instead of typing letters, the user builds an index string by picking predictive fragments, where each screen presents fragments for disjoint groups of records, and the fragments are necessarily less than a whole identifier.
Independent Claim 12 — Plain-Language Overview (apparatus)
The same concept implemented as a device. The apparatus has (i) an output display, (ii) an input, and (iii) a processor configured to execute a method that: associates items with corresponding item identifiers; generates the first display with a part of an item identifier for a first set of items and a part for a second set of items in a database; enables selection of one of the two parts via the input; generates, in response, a further display with an additional part for a subset of the selected set and another additional part for another subset; enables selection of one of those two additional parts; combines the selected part with the selected additional part into a larger part of the item identifier; and displays the larger part. The same two closing limitations apply: the additional parts are shorter than complete item identifiers, and the first and second sets are mutually exclusive.
Representative Dependent Claims
- 2 — iterate the selections until item identifiers are complete.
- 3–5 — the displayed parts are chosen by predetermined criteria, including (4) frequency of selection of items associated with those parts, and (5) ranking of the parts in a tree hierarchy classification.
- 6–7 — item identifiers are text strings / words.
- 8–10 — database stored in device memory; device is a mobile telephone (9) or PDA (10).
- 11 — selections made via a joystick.
- 13–16 — apparatus counterparts to the ranking/tree criteria, including a memory storing the tree hierarchy.
- 17–22 — text strings, words, PDA, memory-stored database, mobile telephone, joystick input.
The specification describes a ranked hierarchical tree of "word sections," a "more" option when the desired fragment is not shown, and joystick D-pad mapping of up to four candidate fragments plus a press-in for "more" (FIGS. 5–9).
Litigation and Post-Grant Status (important caveats)
- The '579 patent was among five Kannuu patents asserted against Samsung Electronics in S.D.N.Y. No. 1:19-cv-04297-ER (added by First Amended Complaint, October 1, 2019).
- IPR2020-00739 (Samsung v. Kannuu, on the '579 patent) was denied institution on the merits (September 22, 2020) — consistent with the Google Patents "Not Instituted — Merits" label.
- Ex parte reexamination: Samsung requested EPR against the '852, '579, and '264 patents on May 28, 2021; the USPTO ordered EPR of the '579 on July 6, 2021; final rejection issued July 28, 2022; the PTAB affirmed on September 19, 2023; and a reexamination certificate cancelling all claims issued for the '579 on approximately June 3, 2024 (Google Patents records the FPB1 event with effective date 2024-06-03 / docketing 2024-06-11). An earlier C1 certificate effective January 25, 2024 was vacated per an erratum dated February 6, 2024.
- Federal Circuit: I found no 2026 CAFC docket entered against the '579 patent specifically. The relevant earlier appeals were 21-1638 (Kannuu v. Samsung, forum-selection-clause/PI appeal, affirmed Oct. 7, 2021, Newman dissenting) and 2022-1526 (affirmance of PTAB invalidity of the '354 and '393 patents, Oct. 11, 2023).
- One 2026 PTAB proceeding does exist in this family: IPR2026-00071, Samsung Electronics Co., Ltd. v. Kannuu Pty. Ltd., filed October 20, 2025 and instituted April 1, 2026. I could not confirm from the retrieved results which Kannuu patent that petition targets — I would not attribute it to the '579 without the petition itself.
Explicit Uncertainties
- Status conflict. Google Patents lists the '579 patent as "Active — Reinstated," but the verified reexamination record shows all claims cancelled in 2024. The Google Patents status banner appears stale and unreliable for this patent; the cancellation is the better-supported fact.
- No CAFC 2026 docket confirmed for '579. If an appeal of the '579 reexamination is pending in 2026, I did not retrieve it. I cannot confirm one exists.
- IPR2026-00071 target patent unverified (see above).
Generated 9/29/2026, 3:51:04 PM
Cases on file (1)
Group view →Specific litigation cases in our database that name US patent 8996579. The free-form analysis below may also discuss cases beyond this list.
- 2021-1638U.S. Court of Appeals for the Federal Circuitterminated Dec 21, 2021affirmed; rehearing denied; mandate issued
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 8996579. Let me run several searches.
Let me dig deeper into the PTAB proceedings and confirm which case numbers map to the '579 patent.
Let me check for any other lawsuits asserting this patent and the current case status.
Litigation Involving U.S. Patent No. 8,996,579
Patent identified literally as: US 8,996,579 B2 — "Process and Apparatus for Selecting an Item from a Database," inventor Kevin Dinn / Kevin William Dinn, assignee Kannuu Pty Ltd (Australia). Priority date 2005‑08‑12; granted 2015‑03‑31. (Note: Kannuu's own complaint mistakenly states the '579 patent was "granted March 31, 2013" — the correct grant date on the face of the patent is March 31, 2015. I am reproducing the source text rather than correcting the patent office record.)
1. District Court Litigation
Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. and [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.)
- Court / Jurisdiction: U.S. District Court for the Southern District of New York (Manhattan), Judge Edgardo Ramos
- Case No.: 1:19‑cv‑04297‑ER
- Filed: May 10, 2019
- Plaintiff: Kannuu Pty Ltd.
- Defendants: Samsung Electronics Co., Ltd. (Korea); Samsung Electronics America, Inc.
- Claims: Patent infringement (35 U.S.C. §§ 271, 281, 284, 285) and breach of a Mutual Non‑Disclosure Agreement dated April 5, 2012 (New York law; forum‑selection clause designating Manhattan).
- The '579 patent's role: The original May 10, 2019 complaint asserted only the '393, '852, '354 and '264 patents. The '579 patent was added by the First Amended Complaint filed October 1, 2019, making five patents‑in‑suit: U.S. 8,370,393; 8,676,852; 8,996,579; 9,436,354; and 9,697,264. (The '579 patent was therefore not in the original complaint.)
- Accused products: Samsung Smart TVs (4‑/5‑/6‑/7‑/8‑/9‑Series) and Samsung Blu‑ray DVD players (e.g., BD‑H8500), specifically the "Predict Next Letter" feature.
- Key rulings:
- Jan. 19, 2021 — Kannuu's motion for a preliminary injunction (to enjoin Samsung's IPRs) DENIED; Kannuu's motion for leave to supplement denied; Samsung's motion to stay GRANTED pending the IPRs on the '354 and '393 patents. See Kannuu Pty Ltd. v. Samsung Elecs. Co., No. 19 Civ. 4297 (ER), 2021 WL 195163 (S.D.N.Y. Jan. 19, 2021).
- July 29, 2025 — Judge Ramos granted Kannuu leave to file a Second Amended Complaint (adding two newly‑issued patents after all five original patents‑in‑suit were invalidated at the USPTO) and denied Samsung's motion to dismiss for lack of jurisdiction. Status conference set for August 7, 2025; the case remained pending as of the last available record.
- Outcome / current status: Still active (not dismissed, not settled on the public record). The '579 patent itself was invalidated by the USPTO in ex parte reexamination (see below), so it is no longer an asserted patent‑in‑suit; the case continued on replacement patents plus the contract claim.
2. Appellate Litigation (forum‑selection‑clause issue, not patentability)
Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc.
- Court: U.S. Court of Appeals for the Federal Circuit
- Appeal No.: 2021‑1638 (appeal from S.D.N.Y. No. 1:19‑cv‑04297‑ER)
- Filed: 2021
- Issue: Whether the NDA's forum‑selection clause barred Samsung from filing IPRs on Kannuu's patents (including the '579 patent).
- Outcome: AFFIRMED the district court — the forum‑selection clause does not encompass IPR proceedings. 15 F.4th 1101 (Fed. Cir. Oct. 7, 2021). Panel rehearing and rehearing en banc DENIED (Dec. 14, 2021); mandate issued Dec. 21, 2021.
3. Related USPTO Contested Proceedings Involving the '579 Patent
These are administrative proceedings, not "litigation" in the PACER sense, but they are adversarial and directly concern the '579 patent:
A. Samsung Electronics America, Inc. v. Kannuu Pty Ltd., IPR2020‑00739 (U.S. Patent No. 8,996,579)
- Filed: March 17, 2020 (Samsung filed five IPR petitions, IPR2020‑00736 through ‑00740, one per patent‑in‑suit)
- Outcome: Institution DENIED on September 22, 2020 (Samsung failed to show unpatentability). So the '579 patent survived the IPR. Google Patents lists this matter as "IPR2020‑00739 filed (Not Instituted ‑ Merits)"; Law360 lists the Samsung v. Kannuu IPR as "Institution Denied."
B. Ex parte reexamination of U.S. 8,996,579 ('579) — requested by Samsung
- Request filed: May 28, 2021 (Samsung requested EPR against the '852, '579 and '264 patents); USPTO ordered reexamination of the '579 on July 6, 2021.
- Final rejection of the '852 and '579 claims issued July 28, 2022.
- Reexamination certificate C1 "cancelled all claims" effective January 25, 2024; an erratum dated February 6, 2024 directed that the certificate "should be deleted, since the reexamination certificate has been vacated"; a further reexamination decision effective June 3, 2024 again cancelled all claims.
- Result: The claims of the '579 patent were cancelled. (Google Patents still shows the patent's legal status as "Active ‑ Reinstated," but the reexamination decision cancelled all claims.) This is why Kannuu had to replace the '579 patent (and the other four) with new patents in its 2025 amended complaint.
4. Other Litigation
I found no other district court case or lawsuit asserting U.S. Patent No. 8,996,579 beyond the Kannuu v. Samsung action above. I could not identify any other plaintiff, defendant, jurisdiction or case number for this specific patent. (For clarity, the Kannuu family's later/related patents — e.g., U.S. 11,573,939, U.S. 9,836,489, U.S. 9,436,354, U.S. 8,676,852, U.S. 8,370,393 — are different patents and are outside the scope of this query; the patent family as a whole is flagged as having litigation via the Darts‑ip family ID 37757227, which corresponds to the Samsung action described above.)
Caveats
- The '579 patent is one of a family of five continuations asserted together against Samsung; it was added by amendment, so some dockets and summaries that describe "Kannuu v. Samsung" refer to the case without distinguishing which of the five patents were asserted at which point.
- I could not independently verify via PACER the very latest 2025–2026 docket activity in 1:19‑cv‑04297‑ER; the most recent confirmed item is the July 29, 2025 Opinion & Order granting leave to amend and denying Samsung's motion to dismiss, with an August 7, 2025 conference.
- PTAB IPRs and ex parte reexaminations are not "litigation" in the PACER sense; they are listed separately above for completeness. The IPR on the '579 patent was denied institution, while the '579 claims were cancelled in reexamination.
Generated 9/29/2026, 3:51:06 PM
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: Kannuu Pty Ltd.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll reconcile the structured "no AIA proceedings" block against the patent record (which itself lists IPR2020-00739) and fill in the missing claim-level detail.
Let me pin down the IPR2020-00739 institution decision specifics and the panel.
Let me confirm whether there was any Federal Circuit appeal of the '579 reexamination, and lock down the reexam certificate date.
Proceedings overview
Reconciliation flag first — the structured block is wrong for this patent. The prompt's canonical "PTAB proceedings on file" block states: "The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest... the default should be 'no PTAB activity on file.'" That is contradicted by the patent's own face record (Google Patents lists "PTAB case IPR2020-00739 filed (Not Instituted - Merits)" and a legal event dated 2020‑04‑14, "AIA trial proceeding filed... TRIAL NO: IPR2020‑00739... Opponent: SAMSUNG ELECTRONICS AMERICA, INC. AND SAMSUNG ELECTRONICS CO., LTD.") and by multiple S.D.N.Y./Federal Circuit filings ("On September 22, 2020, the PTAB denied institution of review for the '264, '852, and '579 patents"). There is one AIA trial proceeding on US 8,996,579 — IPR2020‑00739 — and it was denied institution on the merits. The structured list is incomplete here; I'd treat it as unreliable for this patent (the same ODP block also does not capture the reexamination that killed the claims).
Count: one (1) AIA trial proceeding on the '579 patent. Breakdown: 0 active · 0 claims invalidated by an AIA trial · 0 claims sustained by a trial · 0 settled · 1 institution denied (on the merits). Separately — and this is the fact that actually drives a defendant's posture — the patent's claims were canceled in ex parte reexamination, which is not an AIA trial but which means the '579 has no live claims today. Bottom-line defensive posture: the IPR door on this patent is effectively closed (denied institution), but the claims are dead anyway — if a demand letter cites claims 1–22 of US 8,996,579, the demands rest on canceled claims and the case is sanction‑bait.
The claims‑invalidating event is non‑AIA, so I am including it at the top of the proceeding list (per the "claims-invalidated first" instruction) with an explicit label so it is not confused with an IPR.
Ex parte reexamination (Control No. not retrieved) — Requester: [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) (Patent Owner: Kannuu Pty Ltd.)
⚠️ Not an AIA trial proceeding — 35 U.S.C. § 302 ex parte reexamination.
- Type: Ex parte reexamination (not IPR/PGR/CBM)
- Filed: 2021‑05‑28 (Samsung's EPR request against the '852, '579, and '264 patents); USPTO ordered reexamination of the '579 on 2021‑07‑06
- Status: Reexamination certificate cancelling all claims, effective 2024‑06‑03 (docketed 2024‑06‑11). An earlier C1 certificate effective 2024‑01‑25 was vacated by erratum dated 2024‑02‑06.
- Judge panel: PTAB panel that heard Kannuu's § 134(b) appeal affirmed the examiner on 2023‑09‑19 (I did not retrieve the APJ names for the reexam appeal panel; do not assume it is the IPR panel)
- Grounds: Examiner rejections over prior art; final rejection issued 2022‑07‑28 (same day the '852's final rejection issued)
- Institution decision: N/A — reexamination is ordered by the examiner, not instituted by a panel
- Final disposition: All claims canceled. Per the S.D.N.Y. record: "the USPTO issued its reexamination certificates canceling all claims of the '852, '579, and '264 patents... on May 24, June 3, and May 31, 2024, respectively." The PTAB affirmed "the invalidity of the '852, '579, and '264 patents on September 19, 2023."
- Settlement / termination: None — contested through to certificate
- Appeal: No Federal Circuit appeal of the '579 reexamination confirmed (searched; not retrieved). Consistent with the earlier analysis, I cannot confirm a pending 2026 CAFC docket on the '579.
- Defensive value: Claim 1 and claim 12 (and dependents 2–11, 13–22) are canceled. Any infringement theory built on the '579's claims is untenable. If a plaintiff asserts this patent today, the cancellation certificate is your dispositive exhibit.
Sources: S.D.N.Y. 1:19‑cv‑04297‑ER (Doc. 131, Justia); Google Patents legal-events FPB1/ERR entries for US 8,996,579.
IPR2020‑00739 — Samsung Electronics America, Inc. v. Kannuu Pty Ltd.
- Type: Inter Partes Review (the only AIA trial on the '579 patent)
- Filed: 2020‑03‑17 (one of five Samsung petitions, IPR2020‑00736–00740, filed one per patent‑in‑suit)
- Status: "Institution Denied" / "Not Instituted – Merits" — the Board denied institution on 2020‑09‑22 on the merits (Samsung failed to show a reasonable likelihood of prevailing), not on Kannuu's forum-selection-clause theory. See IPR2020‑00739, Paper 22 (referenced as such in the companion '393 decision, IPR2020‑00738). Federal Circuit later summarized: "The Board denied institution for three patents (on the merits of failing to show unpatentability) but instituted review for the other two."
- Judge panel: Kristin L. Droesch, Minn Chung, and Jessica C. Kaiser, Administrative Patent Judges. The three sat as a panel across the entire five‑petition Samsung–Kannuu family (see the Board's 2020‑07‑14 Order in IPR2020‑00736–00740 listing all five proceedings "Before KRISTIN L. DROESCH, MINN CHUNG, and JESSICA C. KAISER"); Chung authored the panel's merits decisions in the sister proceedings.
- Petition grounds: Challenged all claims of the '579 (claims 1–22), asserting unpatentability under 35 U.S.C. §§ 102 and 103, on grounds built on four prior-art references not considered during prosecution (Samsung's expert: Declaration of Clifton Forlines, Ph.D., Ex. 1003, 2020‑03‑12). Kannuu responded with the Declaration of Ravin Balakrishnan, Ph.D., Ex. 2003 (2020‑06‑24). I did not retrieve the '579 petition's specific reference names, so I am not naming them — the '579's institution decision (Paper 22) is the authoritative source.
- Institution decision: Denied — 2020‑09‑22 (Paper 22). The panel concluded Samsung had not shown a reasonable likelihood that any challenged claim was unpatentable. Kannuu also pressed a contractual-estoppel / forum‑selection‑clause argument for discretionary denial; the Board declined to consider it ("contractual estoppel is not a defense to inter partes review"), and Kannuu's request for rehearing and Precedential Opinion Panel (POP) review was denied 2021‑01‑14 (IPR2020‑00737, Paper 42; IPR2020‑00738, Paper 40). (Note a minor source discrepancy: one S.D.N.Y. footnote attributes the rehearing request on the '852 and '579 to "Samsung," but the party briefs and the substance show it was Kannuu — flagging rather than resolving.)
- Final Written Decision: None — the trial never started. No claim-level verdict from this IPR; the '579's claims were untested in the IPR.
- Settlement / termination: N/A (no trial to terminate)
- Appeal: Denied institution is not appealable (35 U.S.C. § 314(d); In re Procter & Gamble, 749 F.3d 1376 (Fed. Cir. 2014)). There is no FWD to appeal. Kannuu's Federal Circuit appeal No. 21‑1638 arose from the district court's denial of a preliminary injunction (forum-selection-clause issue) — it named the '579 as a patent‑in‑suit but did not reach the '579's patentability and did not disturb the non‑institution. Affirmed, 15 F.4th 1101 (Fed. Cir. 2021‑10‑07), Newman, J., dissenting; rehearing and rehearing en banc denied 2021‑12‑14.
- Defensive value: For a defendant, a denied‑institution IPR is a dead end as precedent and creates no estoppel, but it also did no work — the '579 survived the IPR and was later killed in the parallel reexamination, not by the Board in an AIA trial. The practical lesson: Samsung beat this patent administratively, just through a different door.
Not on this patent — IPR2026‑00071 — Samsung Electronics Co., Ltd. v. Kannuu Pty. Ltd.
Flagging to resolve an open item from the earlier section: IPR2026‑00071 targets US 11,573,939 (the '939 patent), not the '579. Filed 2025‑10‑20; Trial Instituted (Board Institution Decision: Grant, 2026‑04‑01); Tech Center 2100, Art Unit 2169. A Director discretionary decision (referral) is docketed 2026‑02‑18. This petition does not concern US 8,996,579 and creates no estoppel, exposure, or posture for the '579. So the earlier section's question ("I could not confirm which Kannuu patent IPR2026‑00071 targets") is now answered: the '939.
Strategic summary
Claim status. Every claim of US 8,996,579 — independent claims 1 and 12 and all dependents (2–11, 13–22) — is CANCELED, via the ex parte reexamination certificate effective 2024‑06‑03. There are no SUSTAINED claims and no surviving claims. In the sole AIA trial (IPR2020‑00739), the Board never reached the merits — institution was denied 2020‑09‑22, so as a matter of PTAB-trial law the claims are UNTESTED: no FWD, no claim-level validity holding. The distinction matters if someone (wrongly) argues the IPR "cleared" or "confirmed" the claims — it did neither; it just declined to review them.
Estoppel landscape. Because IPR2020‑00739 was never instituted, 35 U.S.C. § 315(e) estoppel never attached to Samsung (or its privies) on the '579. Samsung's § 315(e)(2) estoppel from the instituted IPRs runs only to the '354 (IPR2020‑00737) and '393 (IPR2020‑00738) — different patents. Practically this is academic: with all '579 claims canceled, there is nothing left to invalidate for any defendant. Note also that reexamination-based estoppel (the § 315(e)/(§ 325(e) analog for reexam) does not apply to third-party requesters in ex parte reexam the way IPR estoppel does.
Pattern signals. Same petitioner (Samsung) filed a single IPR on this patent (2020‑03‑17), as one of a coordinated five‑petition campaign across the '264, '354, '393, '579, and '852 — no repeat/multiple IPRs on the '579 itself, no joinder, no follow‑on petitions from other challengers. Kannuu litigated the PTAB reexam appeal (affirmed 2023‑09‑19) and the Fed. Cir. 21‑1638 contract/PI appeal (lost 2021‑10‑07), but not aggressively in AIA trials on the '579 — there was nothing to appeal from a denied institution. No defensive aggregator (Unified Patents et al.) appears in the '579 chain — the challenger was the accused infringer itself (Samsung), acting in parallel with its district court defense. The Google Patents "Unified Patents" tag on the IPR2020‑00739 record is the data provider's attribution, not evidence of a Unified‑filed petition.
The one caveat to carry forward. Google Patents still displays the '579's legal status as "Active – Reinstated," and the ODP block reports no AIA activity at all — both are stale relative to the 2024 reexamination cancellation and the 2020 non‑institution. Do not let opposing counsel (or an automated docket tool) resurrect this patent on the strength of a status banner.
Recommended next steps
- If you are a defendant being asserted today: the patent has no live claims. Obtain and attach the reexamination certificate (effective 2024‑06‑03, canceling all claims) and quote its disposition; the PTAB's 2023‑09‑19 affirmance of the examiner on Kannuu's appeal supports it. This is not an FWD — there is no IPR Final Written Decision for this patent, so do not cite one; cite the reexam certificate instead. Any demand citing claims 1–22 rests on canceled claims.
- If you need the primary PTAB artifact: the operative paper is IPR2020‑00739, Paper 22 (2020‑09‑22) — the institution denial. Retrieve it through PTAB E2E / P‑TACTS (https://ptacts.uspto.gov/ptacts/) by case number IPR2020‑00739; the companion decisions (IPR2020‑00738, Paper 11, and IPR2020‑00737, Paper 42) are useful only for the FSC/estoppel reasoning, not for the '579's validity.
- If anyone asserts a related Kannuu continuation: confirm which patent before relying on this analysis — the family's newer members (e.g., US 11,573,939, subject of IPR2026‑00071, instituted 2026‑04‑01) are different patents with live proceedings and a live appellate path. The '579's clean "canceled" status does not carry over to them.
- Active‑proceeding milestones: none on the '579. The only live Kannuu AIA trial I can confirm is IPR2026‑00071 on the '939 (instituted 2026‑04‑01; statutory FWD deadline ~2027‑04‑01, subject to any extension).
- Explicit non‑findings: I found no PTAB FWD on the '579, no PGR/CBM, no settlement, no § 315(e) estoppel arising from the '579 IPR, and no confirmed CAFC appeal of the '579 reexamination. I could not retrieve the rexam control number or the '579 petition's specific prior‑art reference names; I have not invented either.
Generated 9/29/2026, 3:51:45 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2008-06-30 · recorded 2014-01-28 · reel 032066/0711 · Assignment
Dinn, Kevin WilliamKannuu Pty Ltd
internal company transfer
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 8,996,579, starting with the patent's own legal events and the USPTO Assignment Center records.
Now let me look for the correspondent of record on that assignment and any downstream transfers of the Kannuu portfolio.
Let me verify the recorded assignment details and check for litigation-funding / NPE signals.
Assignment & Ownership Analysis — US 8,996,579 B2
Method / source caveat. I was unable to open an authenticated session at https://assignmentcenter.uspto.gov/ and pull the raw assignment record for this patent. The reel/frame, conveyance, assignor, assignee and effective date below are taken from the USPTO-recorded assignment as reproduced in the patent's own legal-events record (Google Patents, which mirrors the Assignment Center feed), and corroborated against FreePatentsOnline and the printed patent front page. I could not retrieve the "correspondent of record" field for the single assignment and I say so explicitly rather than guess. Verification link: https://assignmentcenter.uspto.gov/ (query "8996579") and https://patents.google.com/patent/US8996579/en (Legal Events).
Inventors
Kevin William Dinn — sole named inventor. Address of record on the granted patent: Mt. Kuring-gai, New South Wales, AU (earlier documents in the family list "New South Wales (AU)").
Employer at filing: Kannuu Pty Ltd (determinable from the assignment itself). The recorded assignment (reel 032066/0711, effective 2008-06-30) is an "ASSIGNMENT OF ASSIGNORS INTEREST; ASSIGNOR: DINN, KEVIN WILLIAM" to KANNUU PTY LTD, and Kannuu Pty Ltd is the named applicant/assignee on the granted patent (front page: "(71) Applicant: Kannuu Pty Ltd, Brisbane, Queensland (AU)"). Dinn is the sole inventor on the entire Kannuu family, including the earlier "device interface" line where the original assignee/applicant was Besdi Pty Ltd (per Unified Patents' record for EP-1472593-A1, which lists "Original Assignee: Besdi Pty Ltd" / "Parent Company: Kannuu Pty Ltd") — i.e., he is the founder-inventor behind the Kannuu/Besdi group, not a rank-and-file employee who later left.
Unusual patterns: None observed. Single inventor; no co-inventor departures to track, and no evidence of an inventor-team exodus preceding a sale. I could not verify Dinn's current employment status or any departure date from independent sources — I flag this as unverified.
Original assignee
Kannuu Pty Ltd — Australian proprietary company limited by shares.
- Corporate identity: ACN 117717870 / ABN 83 117 178 870; registered 2006-01-03 as "N-e-ware Pty Ltd"; trading name Kannuu Pty Ltd from 2007-11-08; current registered name since 2010-11-11; HQ recorded as Brisbane, QLD 4118 (from 2012-01-04). (Source: ASIC-derived company aggregators; the snapshot data I retrieved is not live, so the current registration status is not independently confirmed as of 2026.)
- Primary line of business: software/technology development — a "search and navigation" engine ("K-Nav") for consumer media devices (smart TVs, Blu-ray players, remote controls/D-pads) and predictive text entry; a B2B technology-licensing and integration business, not a consumer-products OEM.
- Did they ship a product embodying the claims? Kannuu is a software developer with no consumer-branded hardware. Its own S.D.N.Y. complaint (1:19-cv-04297-ER) describes it as "an Australian-based start-up company" that "developed applications for a number of large media and technology companies," built demonstration/"proof-of-concept" platforms (it delivered a proof-of-concept build to Samsung Electronics Korea in 2013), and licensed its technology — Samsung's IPR discovery requests in IPR2020-00737 reference Kannuu agreements/revenue with Telstra, REEZTV, and Western Digital. So: monetization is real and product-adjacent, but there is no mass-market flagship product.
- Current status: operating / still the plaintiff of record in Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No. 1:19-cv-04297-ER (leave to amend granted July 29, 2025). Not acquired, not dissolved, and no bankruptcy identified. Important qualifier: the '579 claims themselves were cancelled in ex parte reexamination (decision effective 2024-06-03, per the FPB1 legal event), so Kannuu's ownership of this patent is now largely nominal — Kannuu replaced the cancelled patents with later-issued family members in its 2025 amended pleading. This contradicts Google Patents' stale "Active - Reinstated" banner, as flagged in the earlier summary section.
Assignment timeline
There is exactly one recorded assignment against application 14/166,465. No security agreements, mergers, change-of-name records, license recordals, or releases appear in the Google Patents legal-events feed for this application.
- 2008-06-30 (executed / effective) / recorded 2014-01-28 — Reel 032066/0711
- Conveyance: Assignment (assignment of assignors' interest)
- Assignor: Dinn, Kevin William
- Assignee: Kannuu Pty Ltd. (Australia)
- Correspondent: Not retrieved. The Assignment Center correspondent field was not returned by the sources available to me; I will not fabricate an attorney name. The patent's attorney/agent of record is Jones Day, 222 East 41st Street, New York, NY 10017 (printed on the face of US 8,996,579 as "(74) Attorney, Agent, or Firm — Jones Day," and also the correspondence address on the sibling publication US 2010/0153881), so Jones Day is the likely filer — but this is inference, not a verified record field. Because there is only one link in this chain, the "repeat correspondent" test cannot be run at all.
- Context: Internal company transfer — routine inventor-to-employer assignment. Note the timing quirk: it was executed effective 2008-06-30 (i.e., before the Aug. 2009 U.S. national-phase entry of PCT/AU2006/001151) but recorded 2014-01-28, the exact filing date of this continuation (14/166,465). That is consistent with a confirmatory/chain-of-title re-recordation filed alongside the continuation, not with any acquisition event.
Finding: No shell entity, no licensing vehicle, no downstream transferee, no aggregator, and no pre-suit assignment to a plaintiff LLC. The chain terminates at the original operating assignee.
Timeline diagram
timeline
title Ownership of US 8996579
2006 : Kannuu Pty Ltd registered in Australia
2008 : Dinn assigns rights to Kannuu
2014 : Assignment recorded reel 032066 frame 0711
: Continuation application 14 166 465 filed
2015 : US 8996579 granted
2019 : Kannuu sues Samsung in SDNY
2020 : Samsung IPR denied institution
2024 : Ex parte reexam cancels all claims
NPE / troll-pattern signals
Shell-entity transfer — Not present. The only assignment moves the patent from the human inventor to the Australian operating parent (reel 032066/0711, effective 2008-06-30). No "IP / Holdings / Licensing / Ventures" LLC, no registered-agent address, no single-member Delaware/Texas entity anywhere in the chain.
Known asserter in the chain — Not present. The sole assignee, Kannuu Pty Ltd, does not match the checked public asserter lists (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). It is the original technology developer asserting its own patents.
Repeat correspondent across the chain — Unclear / insufficient data. Only one recorded assignment exists, and its correspondent field was not retrieved. Jones Day appears as attorney of record on the patent and on sibling filings, but a single large general-practice firm (which handles both operating-company and NPE work) is not a finding — the NPE signal requires recurrence across multiple links, which the record here does not provide.
Cascading transfers — Not present. One transfer only, and ~5.7 years separate its 2014-01-28 recording from the first suit naming the patent (Oct. 1, 2019 amended complaint). No chained LLC hops, no shared addresses, no common principals to trace.
Pre-litigation transfer — Not present. Assignment effective 2008-06-30 / recorded 2014-01-28; the '579 patent was first asserted by the First Amended Complaint on 2019-10-01 — roughly five years after the recording and more than eleven years after execution. Nothing was arranged within six months of suit.
Bankruptcy fire-sale — Not present. No Kannuu insolvency identified; the company remains the registered Australian entity and the active plaintiff.
Privateering — Not present (inverse pattern). Kannuu asserts its own patents against a party it negotiated with; there is no operating-company "behind" Kannuu directing the assertion.
Defensive aggregator — Not present. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN.
One adjacent observation (not one of the eight signals, but relevant): In IPR2020-00737 (the sibling '354 patent), Samsung requested discovery of "the identities of any entities funding Kannuu's litigation against Samsung and the amounts of such funding," and Kannuu opposed the request (docketed Feb. 2021). This shows the adverse party suspected third-party litigation funding — but a discovery request is an allegation, not evidence. No funding agreement, lien, or assignment to a funder appears in this patent's assignment record. Treat as unclear / not evidentially supported.
Verdict
Operating-company assertion.
The record contains a single, routine inventor-to-employer assignment (reel 032066/0711, executed/effective 2008-06-30, recorded 2014-01-28) and no downstream shell, asserter, or aggregator transfer. The original and current owner, Kannuu Pty Ltd (ACN 117717870, registered 2006-01-03 as N-e-ware Pty Ltd), is a software developer that shipped proof-of-concept and licensed technology to Telstra/Western Digital and sued a direct competitor, Samsung, over the "Predict Next Letter" feature of its Smart TVs and Blu-ray players — textbook operating-company assertion, even though Kannuu's licensing-heavy, no-consumer-product profile sits nearer the NPE line than a traditional OEM plaintiff does.
Two caveats that cut against over-reading this verdict: (a) I could not retrieve the assignment's correspondent field or query the Assignment Center directly, so the "repeat correspondent" signal is simply untested rather than negative; and (b) the '579 claims were cancelled in ex parte reexamination (certificate effective 2024-06-03), meaning ownership of this specific patent is now largely nominal — and, given the listed anticipated expiration of 2026-08-11 has now passed, the "Active - Reinstated" status on Google Patents should be treated as stale, consistent with the conflict already flagged in the earlier summary section.
Verify at: https://assignmentcenter.uspto.gov/ (search "8996579") · https://patents.google.com/patent/US8996579/en (Legal Events)
Generated 9/29/2026, 3:52:05 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the specific prior-art citations for US 8,996,579 B2, starting with the patent record itself and the key references.
Let me dig into the reexamination grounds and the IPR petition references, plus the full citation list.
Prior-Art Analysis — US 8,996,579 B2
Target patent (interpreted literally as US 8,996,579 B2). Application 14/166,465, filed 2014-01-28, granted 2015-03-31, inventor Kevin Dinn, assignee Kannuu Pty Ltd, 22 claims (independent claims 1 and 12). I did not return results for near numbers — everything below is keyed to 8996579 / US 8,996,579 B2.
I am building on the two earlier sections and not repeating them. One discrepancy worth flagging up front, as instructed:
Cross-reference flag. The earlier litigation section records Samsung's IPR petitions as filed March 17, 2020 (per Google Patents' legal-events entry "Effective date: 20200317" and the Docket Alarm petitioner filing dated 03-17-2020). One search result (Casetext's Kannuu v. Samsung opinion) says Samsung "filed petitions for inter partes review at the Board on March 27, 2020." The March 17 date is better corroborated by the primary documents; the March 27 date appears in the judicial narration. I use March 17, 2020.
1. Method and its limits (read this before using the claim mappings)
- What I verified: the patent itself (Google Patents full text, FreePatentsOnline record, the USPTO PDF at patentimages), and its front-page citation list — "Patent Citations (105)" and "Non-Patent Citations (39)". Those two lists are authoritative and reproduced/analyzed below.
- What I could NOT do: retrieve the full text of each of the 105 references, or the ex parte reexamination record (the examiner's §102/§103 rejections, the art relied on, and the PTAB affirmance). My search budget ran out before I could pull IPR2020-00739's petition and the EPR file wrapper.
- Consequence: the per-reference "potential §102 anticipation" call-outs below are screening-level, derived from (i) each reference's title/assignee/date, (ii) the examiner's own citation markings, and (iii) my knowledge of these references. They are not substitute claim charts. A reference is only a §102 anticipator if a single reference discloses every limitation of the claim "arranged as recited" — including claim 1's two closing limitations.
The two limitations that control §102 exposure
Claim 1 (and claim 12, identically) requires that:
- the additional parts of the item identifiers are shorter than complete item identifiers; and
- the first set of items and the second set of items are mutually exclusive of one another.
Any reference that merely shows a predictive candidate list (autocomplete) will hit elements (a)–(e) but will typically fail (1) and/or (2), because conventional completion lists mix whole-word and partial-word candidates and are not organized so that simultaneously-displayed fragments map to disjoint record sets. The §102 risk is therefore concentrated on references that display partial-word "word sections" mapped to mutually exclusive subsets — which is why this patent issued over 105 citations and then died in reexamination (§103 combinations), not in IPR on the merits (institution denied).
2. The examiner-cited references (the "★" set)
Google Patents marks four references in the '579 front page with an asterisk ("cited by examiner"). These are the citations the examiner affirmatively placed of record, and they are the natural starting point for "most relevant prior art":
| Ref | Priority | Pub/Grant | Assignee / Inventor | Title | Potential §102 target claims |
|---|---|---|---|---|---|
| US5953541A | 1997-01-24 | 1999-09-14 | Tegic Communications (King, Grover, Kushler, Grunbock) | Disambiguating system for disambiguating ambiguous input sequences by displaying objects associated with the generated input sequences in the order of decreasing frequency of use | 1, 3–5, 12–15 |
| US20020151327A1 | 2000-12-22 | 2002-10-17 | David Levitt | Program selector and guide system and method | 1, 3, 6, 8, 12, 17, 20 |
| US20040163032A1 | 2002-12-17 | 2004-08-19 | Jin Guo | Ambiguity resolution for predictive text entry | 1, 3–5, 12–15 |
| US20050010605A1 | 2002-12-23 | 2005-01-13 | West Publishing Company | Information retrieval systems with database-selection aids | 1, 3, 6, 8, 12, 17, 20 |
Timing/statutory basis. All four predate the 2005-08-12 priority and the 2006-08-11 international filing:
- US5953541A and US20020151327A1 and US20040163032A1 published/granted more than one year before the 2006-08-11 international filing date → available under pre-AIA §102(b).
- US20050010605A1 (U.S. Appl. No. filed 2002-12-23, published 2005-01-13) → available under §102(b) (published 2005-01-13, i.e. before 2005-08-11) and independently under §102(e) as a U.S. application filing.
(Note: the "Cited by examiner" asterisks appear inconsistently in the Google Patents rendering — the separate "Citations (101)" tab shows additional asterisks. I treat only these four as confirmed examiner-cited and flag the rendering inconsistency rather than over-read it.)
3. Most relevant prior art — detailed profiles
Tier 1 — references that could plausibly reach the full combination of claim 1/12
1. Toshiyuki Masui, "An Efficient Text Input Method for Pen-based Computers," Proc. ACM CHI '98 (Apr. 1998) (non-patent citation, front page)
- Citation/date: Sony Computer Science Laboratory, Proc. CHI'98, April 1998; retrieved at pitecan.com/…/CHI98.pdf.
- Description: The POBox/predictive pen-input system: the user is shown a small set (typically a 3×3 grid) of predicted letter- and word-fragments, selects one, and the display is refreshed with the next set of fragments continuing the string built so far. Fragments are substrings of dictionary entries, and the user assembles a word by picking successive fragments rather than typing characters.
- §102 relevance: This is the single closest match to claim 1's architecture (fragment display → select → refreshed fragment display → concatenate). It is also the reference most likely to have driven the "shorter than complete item identifiers" and "mutually exclusive" limitations into the granted claims.
- Potential anticipation: claim 1 and claim 12 (elements a–f). Whether it discloses (g) "first set and second set mutually exclusive" depends on whether Masui's simultaneously-displayed fragments map to disjoint dictionary subsets — I could not re-read the paper within budget, so I flag this as the pivot to verify.
2. US 5,787,417 A — Microsoft, "Method and system for selection of hierarchically related information using a content-variable list"
- Priority 1993-01-28; granted 1998-07-28.
- Description: Selection of hierarchically related information via a list whose content varies with the user's prior selections — i.e., a progressive, content-adaptive list navigation.
- §102 relevance: §102(b). Directly targets the "first display → select → further display" loop. Does not, on its face, deal with text-string parts of identifiers, so it is stronger against the method's structure than against limitations (1)/(2).
- Potential anticipation: claim 1 (elements a, c, e), and claim 12 counterparts; not the closing limitations.
3. US 5,263,174 A — Symantec, "Methods for quick selection of desired items from hierarchical computer menus"
- Priority 1988-04-01; granted 1993-11-16.
- Description: Rapid navigation/selection within hierarchical menus — the ancestry of "drill-down selection from a list."
- §102 relevance: §102(b). Broad-structure art for "generate display of options → select → generate next display."
4. US 5,783,747 A / US 5,901,222 A / US 6,011,554 A / US 5,953,541 A — the Tegic/Nokia reduced-keyboard family
- US 6,011,554 A (Tegic; filed 1996-07-26; granted 2000-01-04): reduced keyboard disambiguating system; a selection list of matching words/stems is displayed, ranked by frequency of use, and the user scrolls/advances through the list; the selection list also presents "a stem of an uncompleted word."
- US 5,953,541 A (Tegic, ★): identical concept, expressly claiming display of "objects … in the order of decreasing frequency of use."
- §102 relevance: §102(b) for all. These are the strongest single-reference attacks on the ranking/frequency dependent claims.
- Potential anticipation: claims 3, 4, 5 (and 13, 14, 15) — "predetermined criteria," "frequency of selection," and "ranking … in relation to a tree hierarchy classification." The '579's ranking logic (sum of ranking values of nodes beneath; subtract ranking of already-selected nodes) is a close analogue of Tegic's frequency-ordered stems.
- Weakness: these references teach character-level or word-level disambiguation on a 12-key keyboard; they do not display multiple text fragments each mapped to a disjoint record set in the claim-1 sense.
5. US 2005/0010605 A1 — West Publishing, "Information retrieval systems with database-selection aids" (★)
- Priority 2002-12-23; published 2005-01-13.
- Description: Legal/editorial database retrieval with interactive "selection aids" that progressively narrow a database as the user picks options.
- §102 relevance: §102(b) and §102(e). Its subject matter (narrowing a structured database by selecting displayed options) maps onto claim 1's elements (a)–(e) and to claims 3/6/8.
- Potential anticipation: claim 1 (a–e); claims 3, 6, 8, 12, 13, 17, 20.
6. US 2004/0163032 A1 — Jin Guo, "Ambiguity resolution for predictive text entry" (★)
- Priority 2002-12-17; published 2004-08-19.
- Description: Predictive text entry with ranked candidate disambiguation.
- §102 relevance: §102(b). Targets claims 1, 3–5, 12–15 via the ranking/candidate-list mechanism.
7. US 2002/0151327 A1 — David Levitt, "Program selector and guide system and method" (★)
- Priority 2000-12-22; published 2002-10-17.
- Description: An interactive program-guide/selector that displays a set of selectable options and, on selection, displays further options.
- §102 relevance: §102(b). A general "select-from-displayed-options, display-next-set" reference; useful against the broadest reading of claim 1's display/selection loop, weak on the "text-string parts"/"mutually exclusive" limitations.
8. US 6,377,965 B1 — Microsoft, "Automatic word completion system for partially entered data"
- Priority 1997-11-07; granted 2002-04-23. §102(b).
- Description: Presents word-completion candidates for partial input — structurally the same "additional part … shorter than complete item identifier" idea in claim 1's closing limitation.
- Potential anticipation: claim 1 (element f) and claims 6, 7 (text strings/words); valuable in §103 combination regardless of standalone §102.
9. US 5,896,321 A — Microsoft, "Text completion system for a miniature computer"
- Priority 1997-11-14; granted 1999-04-20. §102(b). Same family of teaching as #8, aimed at small-device text entry. Targets claims 6, 8, 9/10, 17.
10. US 5,128,672 A — Apple Computer, "Dynamic predictive keyboard"
- Priority 1990-10-30; granted 1992-07-07. §102(b).
- Description: The keyboard/display adapts the presented keys to the predicted next characters — i.e., a display of predicted partial-input options that changes in response to selection.
- Potential anticipation: claim 1 (elements a–c) at a very general level; claim 3 (predetermined criteria).
11. US 6,744,423 B2 — Nokia, "Communication terminal having a predictive character editor application"
- Priority 2001-11-19; granted 2004-06-01. §102(b). Predictive editor on a mobile terminal — targets claims 8, 9, 21 (database in mobile-phone memory).
12. US 6,223,059 B1 — Nokia, "Communication terminal having a predictive editor application"
- Priority 1999-02-22; granted 2001-04-24. §102(b). Same target set as #11; also supports claims 6/7 (text strings/words).
13. US 7,836,044 B2 — Google, "Anticipated query generation and processing in a search engine"
- Priority 2004-06-22; granted 2010-11-16. Filed before the 2005-08-12 priority → available under §102(e) (U.S. application/patent).
- Description: Generating and displaying anticipated query completions as the user types; the completion list is refreshed as input evolves.
- §102 relevance: Strong on elements (a)–(e) and on "parts shorter than complete" (completions are partial strings). Weak on "mutually exclusive sets," since query-completion lists are not partitioned into disjoint record sets.
- Potential anticipation: claims 1, 3, 4, 6, 8, 12.
14. US 7,886,233 B2 and US 2006/0265668 A1 / US 2006/0265648 A1 — Nokia (Rainisto et al.), "Electronic text input involving … word completion functionality for predicting word candidates for partial word inputs"
- Priority/filing 2005-05-23 (all three); published 2006-11-23 / granted 2011-02-08. Filing predates 2005-08-12 → §102(e).
- Description: Virtual keyboard plus word-completion candidates for partial words, on a touch-sensitive screen.
- Potential anticipation: claim 1 (a–f); claims 6, 7, 17, 18; touch-screen appratus claims.
15. US 2006/0217953 A1 — Prashant Parikh, "Automatic dynamic contextual data entry completion system"
- Priority 2005-01-21; published 2006-09-28. Filed before priority → §102(e).
- Description: Context-aware completion of partially entered data — completion candidates derived from a database of prior entries.
- Potential anticipation: claims 1, 3, 4, 12, 13, 14 (frequency-based predetermined criteria). Note the same inventor's later US 8,930,181 B2 appears in this family's "Families Citing."
16. US 7,487,147 B2 — Sony Computer Entertainment, "Predictive user interface"
- Priority 2005-07-13; granted 2009-02-03. Filed before priority → §102(e). Predictive UI with candidate selection — targets claims 1, 3, 12, 13.
17. US 2007/0016862 A1 — Microth, "Input guessing systems, methods, and computer program products"
- Priority 2005-07-15; published 2007-01-18. → §102(e). Input-guessing with displayed candidates; targets claims 1, 3–5, 12–15.
18. US 2006/0294462 A1 — Avaya, "Method and apparatus for the automatic completion of composite characters"
- Priority 2005-06-28; published 2006-12-28. → §102(e). Completion of "composite" characters/fragments — structurally the "further one or more parts" of claim 1.
Tier 2 — highly relevant but weaker on the closing limitations
| Ref | Priority | Pub/Grant | Assignee | §102 basis | Notes / claim targets |
|---|---|---|---|---|---|
| US 7,543,244 B2 | 2005-03-22 | 2009-06-02 | Microsoft | §102(e) | "Most commonly used items" lists → claims 3, 4, 13, 14 |
| US 7,613,691 B2 | 2005-04-18 | 2009-11-10 | Avago | §102(e) | Soft-keyboard text entry → claims 1, 6, 8 |
| US 2006/0188330 A1 | 2004-02-20 | 2005-08-25 | Griffin (Motorola) | §102(e) | Predictive text input for mobile → claims 9, 11, 21, 22 |
| US 2006/0146028 A1 | 2004-12-30 | 2006-07-06 | Chang Ying Y | §102(e) | Candidate-list enhancement → claims 3, 4 |
| US 2007/0089070 A1 | 2003-12-09 | 2007-04-19 | BenQ Mobile | §102(b)/(e) — verify | Inputting+predicting text; §102(e) date is its actual U.S. filing, not the DE priority → confirm |
| US 7,184,386 B2 | 2001-08-28 | 2007-02-27 | Nvidia | §102(b) | Mobilising content across device classes → claims 8, 20 |
| US 6,826,566 B2 | 2002-01-14 | 2004-11-30 | Speedtrack | §102(b) | "Identifier vocabulary data access" → claims 1, 6 |
| US 2003/0182274 A1 | 2000-07-27 | 2003-09-25 | Young-June Oh | §102(b) | "Navigable search engine" → claims 1, 3 |
| WO 2002/069240 A2 | 2001-02-22 | 2002-09-06 | Moxi Digital | §102(b) | "Apparatus and method for selecting data" → claims 1, 12 |
| WO 2002/013001 A2 | 2000-08-07 | 2002-02-14 | Argo Interactive | §102(b) | "Allocation of labels to associated user input elements" → claim 11, 22 (label↔key mapping) |
| US 7,664,111 B1 | 1997-01-29 | 2010-02-23 | Philip R. Krause | §102(e) | Text reading environment → background |
| US 2002/0091690 A1 | 2000-05-18 | 2002-07-11 | Caterpillar | §102(b) | "Database system facilitating textual searching" → claims 1, 6, 8 |
| US 2002/0049795 A1 | 2000-05-15 | 2002-04-25 | Freeman A. Boyd | §102(b) | Computer-assisted text input → claims 1, 6 |
Tier 3 — applicant's own / sibling references (not §102(a)/(b) art by "others")
These are Kannuu/Dinn-family documents cited on the front page. They are not available as §102 prior art in the ordinary way (same inventive entity), but they are important for §102(e)/§103(c) analysis and for double-patenting:
| Ref | Priority | Pub | Notes |
|---|---|---|---|
| WO 2002/039244 A1 — Besdi Pty Ltd, "Device interface" | 2000-11-10 | 2002-05-16 | Dinn-family device-interface lineage |
| WO 2003/077102 A1 — Besdi Pty Ltd, "Improved device interface" | 2002-03-13 | 2003-09-18 | Ditto (cf. AU PS107202 "Improved device interface") |
| WO 2004/017188 A1 — Besdi Pty Ltd, "Small device with improved interface" | 2002-08-14 | 2004-02-26 | Ditto |
| US 2010/0010963 A1 / WO 2007/019610 A1 — Kannuu, "Process and apparatus…" | 2005-08-12 | 2010-01-14 / 2007-02-22 | The parent publication of the '579 itself |
| WO 2008/080192 A1 — Kannuu | 2007-01-03 | 2008-07-10 | Later sibling (filed after priority — not §102 art) |
| WO 2008/106729 A1 — Kannuu | 2007-03-07 | 2008-09-12 | Later sibling (filed after priority — not §102 art) |
Tier 4 — cited but not prior art (filed/published after the 2005-08-12 priority)
Flagging these explicitly so they are not miscited as §102 art:
- US 7,793,228 B2 (Apple, "Text entry with partial word display") — filed 2006-10-13.
- US 2007/0060114 A1 (Jorey Ramer, "Predictive text completion for a mobile communication facility") — filed 2005-09-14.
- US 7,443,316 B2 (Motorola, "Entering a character into an electronic device") — filed 2005-09-01.
- US 2007/0179776 A1 (Xerox, "Linguistic user interface") — filed 2006-01-27.
(Each could only become §102(e) art via an earlier provisional; I could not verify provisionals within budget.)
4. Consolidated §102 exposure map
| Claim (and 12-series counterpart) | Limitation attacked | Best single-reference §102 candidates |
|---|---|---|
| 1 / 12 (whole claim) | full combination incl. "shorter than complete" + "mutually exclusive" | Masui CHI'98 (NPL); US 2005/0010605 (West); US 5,787,417 (Microsoft) — none clearly reaches the "mutually exclusive sets" limitation on the face of the documents |
| 2 / — (iterate to completion) | loop until identifiers complete | Masui; US 6,377,965; US 7,836,044 |
| 3 / 13 (predetermined criteria) | criteria-based selection of displayed parts | US 6,011,554; US 5,953,541; US 5,128,672; US 2005/0010605 |
| 4 / 14 (frequency of selection) | frequency ranking | US 5,953,541 (★); US 6,011,554; US 7,543,244 |
| 5 / 15 (tree-hierarchy ranking) | ranked tree of fragments | US 5,953,541; US 6,011,554 — closest, but the '579's node-sum-minus-selected ranking rule is the differentiator |
| 6–7 / 17–18 (text strings/words) | identifier type | US 6,377,965; US 5,896,321; US 6,223,059; US 7,886,233 |
| 8–10 / 19–21 (memory/mobile/PDA) | hardware | US 6,744,423; US 7,886,233; US 2006/0188330 |
| 11 / 22 (joystick) | input modality | WO 2002/013001 (label-to-input mapping); US 2006/0244562 / four-way-input art |
Bottom line on §102: No reference I can identify from the front-page record is a clean, single-reference anticipator of claim 1 or claim 12 as granted, because of the two closing limitations. The strongest standalone candidates are the Masui CHI'98 paper and US 2005/0010605 A1 (West Publishing). The references that most convincingly reach individual dependent claims are the Tegic references US 5,953,541 A and US 6,011,554 A (claims 3–5 and 13–15, via frequency/ranking) and the Microsoft completion references US 6,377,965 B1 and US 5,896,321 A (claims 6–7/17–18, via "parts shorter than complete").
5. Why the reexamination, not §102, killed it
The record is consistent and worth stating plainly:
- IPR2020-00739 (Samsung v. Kannuu, on the '579) was denied institution on the merits on 2020-09-22 — i.e., Samsung's §102/§103 grounds at the PTAB did not persuade the panel. (The earlier litigation section and Google Patents agree.)
- The ex parte reexamination requested 2021-05-28 nonetheless ended in cancellation of all claims — a C1 certificate effective 2024-01-25 that was vacated by erratum 2024-02-06, then a further decision effective 2024-06-03 again cancelling all claims. A request for reexamination is §102/§103 only (no §101), and the fact that institution was denied in IPR while reexam succeeded points to different art and/or different combinations, and the lower "substantial new question of patentability" threshold — almost certainly §103 obviousness over a combination, not a single-reference §102 anticipation.
- Caveat: I could not retrieve the EPR file wrapper or the examiner's rejections within this session, so I cannot name the specific combination the examiner used. I will not attribute the cancellation to any particular reference. If the file wrapper is available, the rejection grounds would be the definitive statement of the art that mattered most.
6. Non-patent citations of note (39 listed)
The front page lists 39 NPL items. The substantive ones are:
- Masui, "An Efficient Text Input Method for Pen-based Computers," CHI'98 — discussed above; the most dangerous single reference.
- iTAP Predictive Text Input Technology Technical Paper, Lexicus/Motorola, v1.0, 2002-06-26 — multi-tap/predictive text entry; targets claims 1, 3, 6.
- How et al., "Optimizing predictive text entry for short message service on mobile phones," NUS, 2005 — targets ranking claims 4, 5/14, 15.
- Fazly, "The Use of Syntax in Word Completion Utilities," U. Toronto, 2002 — word-completion ranking; targets claims 3–5.
- "Nokia 5510 User's Guide" (2001–2002), "It's a Nokia… Game Boy Advance?" (InfoSyncWorld, 2001-10-11), "New Nokia 5510 is Entertainment Phone" (2001-10-11) — device-art for claims 8–10/19–21.
- KeyStick Text Entry System for Series 60 Mobile Phones v2.8.0 (2003) and n-e-ware.com Wayback Machine screenshots — software prior art / potential public-use art.
- Numerous foreign office actions and search reports (EPO, AU, NZ, SG, CN, JP, PCT) — prosecution history, not independent art.
7. Explicit uncertainties (per operating rules)
- I could not pull the reexamination rejections. The identity of the reference(s)/combination that cancelled the claims is unverified. I would not attribute the cancellation to Masui, to US 5,953,541, or to any other reference without the file wrapper.
- All §102 call-outs are screening-level. I retrieved titles, dates, assignees and abstracts — not full texts — for most of the 105 citations. Confirming anticipation requires element-by-element comparison against each reference, which I have not done for references 19–105.
- Two closing limitations are decisive and under-verified. Whether Masui (or West 2005/0010605) discloses "mutually exclusive" first/second sets and "shorter than complete item identifiers" is the pivot for any real §102 case; I flagged it rather than asserted it.
- §102(e) dates for foreign-priority documents are not the foreign priority dates. For US 2007/0089070 A1 (BenQ, DE priority 2003-12-09) and similar, the pre-AIA §102(e) date is the actual U.S. filing date, which I have not verified.
- Discrepancy flagged: Casetext says Samsung's IPRs were filed "March 27, 2020"; the primary docket/Google Patents records say March 17, 2020. I used the latter. The earlier litigation section and I agree on 2020-03-17.
Generated 9/29/2026, 3:52:50 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the key prior art references cited on the page to ground the § 103 analysis, and check whether the public record (IPR/ex parte reexam) discloses specific grounds.
Excellent — I found the actual IPR grounds and the reexam record. Let me dig deeper into the specific references and the reexamination rejection basis.
Obviousness Analysis — U.S. Patent No. 8,996,579 B2 under 35 U.S.C. § 103
Important framing note. I am analyzing obviousness as an analytical exercise, but the procedural record is not hypothetical: the claims of the '579 patent were cancelled in ex parte reexamination (final rejection July 28, 2022; PTAB affirmed Sept. 19, 2023; cancellation certificate effective June 3, 2024). Samsung's parallel IPR, IPR2020‑00739, was denied institution on the merits. So the answer to "are these claims obvious?" has, in the real world, already been answered "yes" by the reexamination — even though the Board declined the IPR. I flag both below and do not paper over the tension.
Also flagging one identifier discrepancy I found rather than silently correcting: Samsung's expert declaration (Ex. 2003, Balakrishnan) describes "Perlman (Ex. 1005) is U.S. Pat. Pub. No. 2002/0113825 A1," whereas the '579 page's own citation list shows US 2002/0113827 A1 (Perlman, "Apparatus and method for selecting data"). These may be two different Perlman publications or a transcription variance in the litigation papers. I treat the reference as "Perlman" generically and note the two numbers.
1. Governing standard
Because the earliest priority date is August 12, 2005, the claims are governed by pre‑AIA § 103(a). The reexamination itself applied pre‑AIA 103(a) and the Graham v. John Deere, 383 U.S. 1 (1966), factors. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), supplies the rationales: known techniques combined to yield predictable results; combination of familiar elements according to known methods; a design need or market pressure to solve a problem; and "obvious to try."
2. Level of ordinary skill
A POSITA here is a software/UI engineer with ~2–4 years' experience designing predictive text entry or menu selection for constrained devices (mobile phones, PDAs, remote controls), familiar with predictive-text systems (T9/Tegic), autocompletion, frequency-ranked candidate lists, and hierarchical/trie data structures. This level of skill is high enough that combining a predictive-text reference with a small-device input reference is the routine work of the field.
3. Key claim limitations (claims 1 and 12) requiring mapping
| # | Limitation (claim 1; claim 12 parallel) | Practical meaning |
|---|---|---|
| L1 | first display with a part of an item identifier for a first set of items and a part for a second set | ≥2 displayed fragments, each "covering" a group of DB records |
| L2 | enable selection of one of the two parts | pick a fragment |
| L3 | further display with additional part for a subset of the selected set and another additional part for another subset | after picking, show fragments that subdivide the now-selected group |
| L4 | combine selected part + additional part → larger part, and display it | concatenate fragments (build the index string) |
| L5 | additional parts shorter than complete item identifiers | fragments, not whole entries |
| L6 | first set and second set mutually exclusive | the displayed fragments map to disjoint record groups |
| Dep. 2–5 | iterate to completion; predetermined criteria; frequency; tree-hierarchy ranking | ranking/trie mechanics |
| Dep. 6–11 | text strings / words; memory; mobile phone; PDA; joystick | device context |
| Dep. 13–16, 17–22 | apparatus mirrors, incl. memory storing the tree hierarchy; joystick | — |
The heart of the asserted novelty is L1+L6 — i.e., displayed fragments are tied to disjoint sets of database items — and L3 (progressive subdivision). Neither is facially novel to a POSITA in 2005.
4. Prior-art combinations rendering the claims obvious
Ground A — Masui (POBox, CHI '98) + Krohn (US 6,593,913) [± Pu (US 7,152,213)]
Masui is a Non‑Patent Citation on the face of the '579 patent (citation #1: "An Efficient Text Input Method for Pen-based Computers," Masui, CHI '98). Its verified content:
- "text is not composed by entering characters one by one, but by selecting words from a menu of candidates created by filtering the dictionary and predicting from context."
- Touching "F" shows "the frequently used words that start with 'F' in a pulldown menu" — i.e., a displayed candidate (fragment/word) corresponds to the set of dictionary entries sharing that prefix (L1).
- Menus are frequency-ranked and dynamically re-filtered after each selection ("the words that often come after 'first' are listed in order of frequency") — L3 (progressive subdivision) and claim 4/5 ranking.
- POBox permits selection of word portions ("the user can specify only part of the spelling… 'comple'… 'cplm'") — L5 (fragments shorter than the whole).
Krohn (US 6,593,913) teaches "a method and system for selecting a displayed character using an input device" — mapping on-screen candidate selections onto a constrained input control (the small-button/limited-input context of phones and controllers).
Combination / motivation. Masui's candidate menus are presented against a pen/touch tablet; Krohn supplies the well-known technique of mapping on-screen candidates to a limited hardware input. A POSITA facing the '579 patent's own stated problem — "the buttons on this on-screen keyboard are too small… slow, error prone" — would predictably adapt Masui's frequency-ranked fragment menus to a small-button device using Krohn's mapping. Result: user picks a fragment (Masui) rather than typing letters, and the fragment maps to a group of records (Masui's dictionary filtering) that is further subdivided on the next screen (Masui's dynamic menus). That reads on L1–L6.
Ground B — Tegic (US 5,953,541 and/or US 6,011,554) + Speedtrack (US 6,826,566)
Tegic '541 (cited, with asterisk, as third-party art on the '579 page) is the "Disambiguating system … displaying objects … in the order of decreasing frequency of use." This teaches L1 (presenting candidate objects), claim 4 (frequency-of-use ranking), and iterative refinement to a unique entry — claims 2 and 4.
Speedtrack US 6,826,566 ("Identifier vocabulary data access method and system," cited on the page) teaches a Vocabulary of identifiers displayed to the user where "as the user selects presented Vocabulary terms, the portion of the Vocabulary that is presented thereafter may be constrained… such that only ItemSelectors that will yield viable (non‑null) results remain available to be selected," implemented via "a single universal … Matrix," often with "a fixed hierarchy." This maps directly to:
- L1/L3 — displayed identifiers correspond to sets of Items; each selection constrains/narrows the next presented set; and
- L6 (mutually exclusive sets) and claims 5/15 (tree‑hierarchy ranking) — selecting one branch removes those Items from the other branches, i.e., disjoint grouping.
Combination / motivation. Both references address the same problem (fast narrowing of a large candidate set on a constrained display). Combining Tegic's frequency ordering with Speedtrack's hierarchical, dynamically-constrained vocabulary yields the claimed fragment-per-disjoint-set + ranked-subdivision scheme. The motivation is a design need (reduce keystrokes; shrink the candidate list) and a predictable variation (merging two known candidate-selection schemes).
Ground C — Perlman (US 2002/0113825 A1 or 2002/0113827 A1) + Pu (US 7,152,213) + Dostie (US 2004/0021691 A1)
This is the exact four-reference/three-reference family Samsung actually asserted in IPR2020‑00739 (verified from the Balakrishnan declaration, Ex. 2003, and from the IPR2020‑00738 '393 decision, which lists the same four references):
- Perlman — "Apparatus and method for selecting data" (Moxi Digital/WO 2002/069240 family).
- Pu (US 7,152,213) — "System and method for dynamic key assignment in enhanced user interface" (assigns selectable labels to inputs — the on-screen-label↔button mapping).
- Krohn (US 6,593,913) — selecting a displayed character via an input device.
- Dostie (US 2004/0021691 A1) — directory/selection context.
Samsung's '393 grounds table (the sibling patent) illustrates the pattern that was applied family-wide, including § 103 combinations:
| Claim(s) | Basis |
|---|---|
| 1–4, 6, 7, 11, 13–16 | § 102 Perlman |
| 8–10, 12 | § 103 Perlman + Pu |
| 1–4, 6–10, 12–16 | § 102 Pu |
| 11 | § 103 Pu + Perlman |
| 1–4, 6–16 | § 103 Krohn + Pu |
| 5 | § 103 Krohn + Pu + Dostie |
Motivation. Perlman supplies presenting selectable data choices; Pu supplies dynamically assigning those choices to input keys (directly supporting independent claim 1's "user interface" selection step and apparatus claim 12's "input"); Krohn supplies physically selecting a displayed character with an input device; Dostie supplies the directory context. The rationale is combining known data-selection and key-assignment techniques to achieve a predictable interface improvement.
Caveat I must state honestly: for the '579 patent, the Board denied institution (IPR2020‑00739, Paper 22) — Samsung did not show a reasonable likelihood on these grounds for the '579 claims (whereas it did for '393). So Ground C is the petitioner's theory, not a merits holding against '579.
Ground D — Besdi/Dinn family art (WO 2003/077102 A1; WO 2004/017188 A1; AU PS107202A0) + Argo (WO 2002/013001 A1)
The '579 page lists, as art cited by/against this family:
- AU PS107202A0 / WO 2003/077102 A1 — Besdi Pty Ltd, "Improved device interface" (priority 2002‑03‑13, published 2003‑09‑18) — the applicant's own earlier work (the family tree shows "K W Dinn Holdings Pty Limited").
- WO 2004/017188 A1 — Besdi Pty Ltd, "Small device with improved interface."
- WO 2002/013001 A1 — Argo Interactive, "Allocation of labels to associated user input elements" (on-screen label-to-button mapping).
Combination / motivation. These references are squarely and presumptively analogous art — same field (device interfaces for constrained devices), and the Besdi/Dinn publications are the applicant's own earlier disclosures. If a POSITA, reading WO 2003/077102 together with Argo's label-allocation teaching, would arrive at presenting selectable on-screen fragments mapped to limited inputs, the '579 claims are obvious. Notably, these are printed publications (§ 102(a)/(b)), so the pre‑AIA § 103(c) common-ownership exception would not disqualify them even if commonly owned; they remain available as § 103 art. This is the most aggressive ground, and it is the one most likely to have underlain the reexamination.
Ground E — Microsoft US 6,377,965 + US 5,787,417 + US 5,896,321; or Sony US 7,487,147 + Apple US 5,128,672 / US 7,796,228
- US 6,377,965 (Microsoft, "Automatic word completion system for partially entered data") and US 5,896,321 (Microsoft, "Text completion system for a miniature computer") teach displaying candidate completions as the user builds a string on a small device — L3, L4, L5, and claims 6/7/17/18 (text strings/words).
- US 5,787,417 (Microsoft, "selection of hierarchically related information using a content‑variable list") teaches a display whose contents vary by hierarchy — supporting claims 5/15 (tree hierarchy).
- US 5,128,672 (Apple, "Dynamic predictive keyboard") and US 7,796,228 (Apple, "text entry with partial word display") supply frequency/predictive candidate display — claims 3–5.
- US 7,487,147 (Sony, "Predictive user interface") and US 6,591,913/6,593,913 supplies the consumer-electronics candidate-menu context.
Motivation. Combining autocompletion (Microsoft) with a hierarchically filtered, ranked candidate display (Microsoft '417 / Apple '672) to solve the same "too many entries, too few buttons" problem is a textbook KSR combination of familiar elements achieving predictable results.
5. Dependent-claim mapping (all obvious over the above)
- Claim 2 (iterate to completion): inherent in every predictive-text reference (Masui; Tegic '554; Microsoft '965).
- Claims 3–4 / 13–14 (predetermined criteria; frequency of selection): Tegic '541 ("decreasing frequency of use"); Masui (term-frequency ranking; "newly selected words are put at the top of the dictionary").
- Claims 5, 15, 16 (tree-hierarchy ranking; memory storing the tree): Speedtrack '566 (hierarchical Vocabulary / Matrix); Microsoft '417 (content-variable hierarchical list); the '579 specification's own trie is expressly a design choice.
- Claims 6–7, 17–18 (text strings / words): any predictive-text reference.
- Claims 8–10, 19–21 (on-device memory; mobile telephone; PDA): the field is defined by handheld devices — Masui (pen tablet), Krohn, Argo, Besdi/Dinn (all directed to mobile/limited devices); mere relocation of a predictive menu to a phone memory is a predictable, non-patentable design choice.
- Claims 11, 22 (joystick input): Pu's "dynamic key assignment," Krohn's "selecting a displayed character using an input device," and the Besdi/Dinn "small device … interface" references teach mapping displayed candidates to a multi-directional/limited control.
6. Synthesis — why a POSITA would combine
Each combination rests on at least one KSR rationale that is easy to articulate for this record:
- Same field / analogous art. Masui, Tegic, Microsoft, Speedtrack, Krohn, Pu, Argo, and Besdi/Dinn all concern selecting from a candidate list on a constrained device. Every reference is from the same field of endeavor — several are cited on the face of the '579 patent itself.
- The problem to be solved is the patent's own stated problem. The '579 Background criticizes multi-tap, soft-keyboards, and handwriting for being slow/error-prone on small devices. Any reference offering predictive candidate selection addresses precisely that need.
- Predictable combination of known elements. "Display ranked candidate fragments" (Masui/Tegic/Microsoft) + "map candidates to limited inputs" (Krohn/Pu/Argo) + "hierarchically constrain the candidate set to disjoint groups" (Speedtrack '566 / Microsoft '417) yields a predictable result with no unexpected behavior.
- "Obvious to try." The design space of predictive fragment menus with frequency/tree ranking on a D-pad device was finite, well-traveled, and yielded nothing more than the expected improvement in input speed.
- No credible secondary considerations are in the record I reviewed. Copying evidence was sought by Kannuu (discovery requests 1–8 re: Samsung's access to the "proof of concept build"), but the Board's denial and the reexam cancellation indicate the nexus was not established as overcoming the art.
7. Reality check: what actually happened, and the tension I must flag
- IPR2020‑00739 (Samsung v. Kannuu, '579): institution DENIED on the merits (Paper 22, Sept. 22, 2020). So the Board was not persuaded that Samsung's Perlman/Pu/Krohn/Dostie grounds rendered the '579 claims unpatentable — at the institution threshold, based on the petition as filed.
- Ex parte reexamination of the '579 (ordered July 6, 2021): final rejection July 28, 2022; PTAB affirmed Sept. 19, 2023; certificate cancelling all claims effective June 3, 2024 (an earlier C1 certificate effective Jan. 25, 2024 was vacated by erratum dated Feb. 6, 2024). The reexamination outcome is the operative fact: the claims of the '579 patent stand cancelled.
- The sibling patents received final written decisions of invalidity ('354, '393), affirmed by the Federal Circuit on October 11, 2023 (No. 2022‑1526).
The tension: the IPR denial (Ground C not instituted) does not mean the claims are nonobvious — it means Samsung's particular petition did not clear the § 314(a) threshold against the '579 claims, likely because the '579 claims recite the "mutually exclusive first/second set" and "additional parts shorter than complete item identifiers" limitations in a way the '393 claims do not, and the petition's mapping of those limitations was weaker. The later reexamination, applying the Graham/KSR framework to art that included/excluded the asserted references, invalidated all claims anyway. The two outcomes are reconcilable: different record, different burden, different references.
8. Explicit uncertainties (do not treat as established)
- The exact reference combination the examiner used to reject the '579 claims in reexamination — I did not retrieve the reexam order/final rejection identifying the applied art. My Ground D (Masui/Besdi/Dinn/Argo, all on the patent's face) is my inference of the most likely basis, not a verified citation of the rejection.
- Perlman identifier discrepancy: litigation papers say US 2002/0113825 A1; the '579 page shows US 2002/0113827 A1. I could not resolve which the petition actually used.
- Krohn's number appears on the page as US 6,593,913 (the '393 IPR decision and the page agree on 6,593,913); an early snippet showed "6,593,913"/"6,591,913" variance — the patent's own list gives 6,593,913, which I follow.
- Content of Pu (US 7,152,213), Krohn (US 6,593,913), and Dostie (US 2004/0021691) — I did not retrieve full texts, so my characterizations are from titles and the litigation's use of them; my claim mapping for Ground C is the petitioner's framing, not independently verified against the references' disclosures.
- Masui's treatment of "fragment" vs. "whole word." POBox primarily selects whole words from a menu and lets the user type a partial spelling; the "part of an item identifier" limitation (L5) is met more squarely by the type‑ahead aspect than by the pure menu‑selection aspect. A patentee could argue this gap, which is likely one reason the Board declined the '579 IPR.
Bottom line: Under KSR, the '579 claims — taken as a whole — would have been obvious to a POSITA from (i) Masui's frequency‑ranked, dictionary‑filtered candidate menus combined with Krohn/Pu/Argo's candidate‑to‑input mapping, and certainly from (ii) Speedtrack '566's hierarchically constrained, disjoint‑set identifier vocabulary combined with Tegic's frequency‑ordered candidate display. The most aggressive (and, given the family's own art, most probable reexam basis) is the Besdi/Dinn + Argo combination, which is the applicant's own field of earlier disclosure. The real‑world record bears this out: all claims were cancelled in reexamination notwithstanding the IPR denial.
Generated 9/29/2026, 3:52:33 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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