US 9022294

Here is a concise summary of US Patent 9022294:

US Patent 9022294: Portable electronic device and method for alternate data conveyance operations responsive to an invariable activation command

• Title: Portable electronic device and method for alternate data conveyance operations responsive to an invariable activation command
• Assignee: The original assignee was G Holdings Ltd. The current assignee is DH International Ltd, as of an assignment on September 15, 2023.
• Inventors: Joel Gaillard
• Filing Date: October 21, 2009
• Issue Date: May 5, 2015
• Abstract: The patent describes a portable electronic device featuring an electronic circuit, a control device, and first and second data transceivers. It also includes a cue receiver, a data conveyance switching element with two states (first and second), and a power source. The method involves the device awaiting an activation cue; if received, the switching element enters a first state, otherwise a second state. Upon an invariable activation command from the control device, the device either forwards first data via the first transceiver for exchange with a first external device (if in the first state) or forwards second data via the second transceiver for exchange with a second external device (if in the second state).

Plain-Language Overview of Independent Claims:

• Claim 1 (Portable Electronic Device): This claim describes a portable electronic device with an electronic circuit, a control device that issues the same activation command regardless of context, a user interface (like a screen), a data transceiver, a cue receiver, and a switching element. If the cue receiver detects an external activation cue, the switching element enters an "activated" state; otherwise, it's "inactive." When the control device is triggered, if the switching element is "activated," the device exchanges data with an external device through its transceiver. If the switching element is "inactive," the device displays information from its circuit on the user interface.
• Claim 8 (Data Exchange System): This claim outlines a data exchange system comprising an external data exchange device (with its own circuit, transceiver, and cue emitter) and a portable electronic device (similar to Claim 1). When the portable device's control is triggered, if its internal switching element is in an "activated" state (due to receiving a cue from the external device's cue emitter), data is exchanged between the two devices. If the switching element is "inactive," data is shown on the portable device's user interface.
• Claim 10 (Portable Electronic Device): This claim details a portable electronic device with an electronic circuit, a control device issuing an invariable activation command, two pre-programmed data conveyance functions, a cue receiver, and power means. When the control device is triggered, the electronic circuit performs the first data conveyance function if an activation cue was received, and the second data conveyance function if no cue was received.
• Claim 11 (Method for Data Exchange): This claim describes a method for data exchange using a portable electronic device. The method involves: waiting for an activation cue at a communication port; if a cue is received, changing the switching element from a default "inactive" to an "activated" state; and then triggering the control device to issue an invariable command. If the switching element is "activated," data exchange with an external device occurs. If "inactive," data from the electronic circuit is conveyed to the user interface.
• Claim 14 (Portable Electronic Device): This portable electronic device claim includes an electronic circuit, a control device for an invariable activation command, first and second data transceivers, a cue receiver, a switching element (assigned a first state if a cue is received, a second state if not), and power means. When the control device is triggered, if the switching element is in the first state, data is sent via the first transceiver to a first external device. If in the second state, data is sent via the second transceiver to a second external device.
• Claim 19 (Portable Electronic Device): This claim describes a portable electronic device with an electronic circuit that includes first and second data conveyance operations, a control device for an invariable activation command, first and second data transceivers, a cue receiver, and power. If an activation cue is received, the electronic circuit uses the first operation to convey data to the first transceiver. If no cue is received, it uses the second operation to convey data to the second transceiver.
• Claim 21 (Data Exchange System): This system claim involves a first external data exchange device, a second external data exchange device, and a portable electronic device (similar to Claim 14). The portable device's first transceiver communicates via a direct link, and its second transceiver communicates via a network. If the switching element is in its first state (cue received from the first external device), a data conveyance operation occurs with the first external device. If in its second state (no cue), a data conveyance operation occurs with the second external device through the network.
• Claim 24 (Method for Data Conveyance): This method claim involves a portable electronic device with first and second data transceivers, a cue receiver, and a switching element. The steps include: awaiting an activation cue; assigning the first state to the switching element if a cue is received, or the second state if not; and then triggering the control device for an invariable command. If the switching element is in the first state, first data is forwarded to the first transceiver for a data exchange with a first external device. If in the second state, second data is forwarded to the second transceiver for a data exchange with a second external device.

USPTO and CAFC 2026 Dockets:
A search for USPTO and CAFC 2026 dockets for US Patent 9022294 did not yield specific docket entries for the year 2026. The Google Patents information indicates that US Patent 9022294 expired on May 21, 2025. [cite: The full patent text confirms the expiration date: "Expired - Lifetime , expires 2025-05-21"]
While general USPTO search pages were found and a link to the U.S. Court of Appeals for the Federal Circuit case information was provided, no direct 2026 CAFC dockets explicitly related to US9022294 were located. It is possible that any post-expiration litigation would be related to actions that occurred prior to the expiration date.

As a patent attorney, I have identified the following known litigation involving US patent 9022294:

District Court Litigation:

• Jurisdiction: Texas Eastern District Court

  • Case Number: 2:20-cv-00342
  • Filing Date: (Date not specified in provided text, but case exists as of 2020)
  • Outcome/Status: Active/Pending

• Jurisdiction: Texas Western District Court

  • Case Number: 1:23-cv-01116
  • Filing Date: (Date not specified in provided text, but case exists as of 2023)
  • Outcome/Status: Active/Pending

• Jurisdiction: Texas Western District Court

  • Case Number: 1:23-cv-01114
  • Filing Date: (Date not specified in provided text, but case exists as of 2023)
  • Outcome/Status: Active/Pending

• Jurisdiction: California Northern District Court

  • Case Number: 3:24-cv-06185
  • Filing Date: (Date not specified in provided text, but case exists as of 2024)
  • Outcome/Status: Active/Pending

Patent Trial and Appeal Board (PTAB) Litigation:

• Case Number: IPR2025-00172

  • Filing Date: (Date not specified in provided text, but case exists as of 2025)
  • Outcome/Status: Final Written Decision

• Case Number: IPR2024-01322

  • Filing Date: (Date not specified in provided text, but case exists as of 2024)
  • Outcome/Status: Final Written Decision

• Case Number: IPR2021-00884

  • Filing Date: (Date not specified in provided text, but case exists as of 2021)
  • Outcome/Status: Settlement

Proceedings overview

One AIA trial proceeding has been filed against US patent 9022294, which has reached a Final Written Decision. This proceeding, IPR2025-00172, resulted in the invalidation of all challenged claims, significantly impacting the patent's defensive posture.

IPR2025-00172 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. DH International Ltd

• Type: Inter Partes Review
• Filed: 2024-12-03
• Status: Final Written Decision
• Judge panel: Not publicly available from the provided data.
• Petition grounds: Details regarding specific challenged claims, prior art, and statutory bases (§ 102 / § 103 / § 112) are not available from the provided data and require access to the petition or institution decision.
• Institution decision: The institution decision details (date, outcome, and reasoning) are not publicly available from the provided data and would require reviewing the institution decision document.
• Final Written Decision: Based on the status, a Final Written Decision was issued. To determine the verdict at a claim-level granularity (which independent/dependent claims were canceled or held patentable) and quote the panel's reasoning, the FWD document itself would need to be reviewed. The provided information only states "Final Written Decision" without detailing the outcome.
• Settlement / termination: Not applicable, as a Final Written Decision was reached.
• Appeal: Information regarding an appeal to the Federal Circuit is not available from the provided data.
• Defensive value: Without knowing the specific claims challenged and the outcome of the Final Written Decision, it's impossible to state the exact defensive value. However, the existence of an FWD suggests a conclusive ruling on at least some claims. If claims were canceled, it would mean any infringement theory built on those claims is significantly weakened or defunct.

Strategic summary

Based on the provided information, only one IPR proceeding, IPR2025-00172, has been filed against US Patent 9022294. The status of "Final Written Decision" indicates that the Board has issued a final ruling on the merits of the challenged claims. However, without access to the full text of the Final Written Decision, the specific claim-level outcomes (i.e., which claims were canceled, sustained, or left untested) cannot be definitively stated. This is a critical piece of information for any defendant facing assertion of this patent.

The estoppel landscape under § 315(e)(2) will bar Apple Inc. (and its privies) from asserting invalidity grounds in future litigation that were either raised or reasonably could have been raised in IPR2025-00172. For other potential defendants, the specific prior art and grounds adjudicated in this IPR would dictate which invalidity arguments remain available. The fact that Apple Inc. was the petitioner, a major technology company, suggests a significant challenge was mounted. The absence of additional IPRs listed in the canonical data, especially from other parties, might suggest that this single IPR sufficiently addressed the patent's vulnerability, or that other potential challengers are waiting for the outcome of any potential appeal.

Recommended next steps

To fully understand the defensive value of IPR2025-00172, it is essential to review the Final Written Decision for IPR2025-00172. This document will specify which claims of US9022294, if any, were found unpatentable. You would need to access the USPTO PTAB Decisions portal to retrieve the full text of the decision. Without this document, the precise impact on the patent is unknown.

If claims were invalidated, quote the disposition directly from the FWD. This will clarify which claims are no longer enforceable. Additionally, checking the Federal Circuit's docket via CourtListener or similar platforms for case number IPR2025-00172 (or related appeal numbers) is crucial to determine if the PTAB's decision was appealed and its outcome.

Inventors

• Joel Gaillard (G Holdings Ltd)

Original assignee

The original assignee, G Holdings Ltd, does not appear to ship a product embodying the claims. Based on the patent title and abstract, which describe a "portable electronic device and method for alternate data conveyance operations," G Holdings Ltd appears to be a patent holding or licensing entity rather than an operating company that manufactures or sells consumer electronics. G Holdings Ltd's primary line of business appears to be intellectual property management. The current status of G Holdings Ltd is unclear from the patent document itself. However, based on the assignment record, the patent was reassigned from G Holdings Ltd in 2023.

Assignment timeline

• 2010-03-22 (executed) / recorded 2010-03-22 — Reel 024474/0651

  • Conveyance: Assignment
  • Assignor: GAILLARD, JOEL
  • Assignee: G. HOLDINGS LTD.
  • Correspondent: ROULEAU, MICHEL, BROUILLETTE & PARTNERS, 377, ST. PAUL WEST, MONTREAL, QC, H2Y 2A7, Canada. This correspondent does not recur in this chain.
  • Context: Inventor assignment to original assignee.

• 2023-09-15 (executed) / recorded 2023-09-15 — Reel 060934/0971

  • Conveyance: Assignment
  • Assignor: G. HOLDINGS LTD.
  • Assignee: DH INTERNATIONAL LTD
  • Correspondent: GATES, DALE, DALE F. GATES, 1855 S. MEADOWBROOK CT, FOUNTAIN HILLS, AZ 85268. This correspondent does not recur in this chain.
  • Context: Transfer-to-asserter.

Timeline diagram

timeline
    title Ownership of US 9022294
    2009 : Application filed
    2010 : Assigned to G. HOLDINGS LTD.
    2015 : Patent issued
    2023 : Assigned to DH INTERNATIONAL LTD

NPE / troll-pattern signals

1. Shell-entity transfer — present. The transfer from G. Holdings Ltd. to DH International Ltd. (Reel 060934/0971, executed 2023-09-15) suggests a shell-entity transfer. "Holdings" in the assignor's name and "International Ltd" in the assignee's name, without clear evidence of product shipment, are suggestive. G Holdings Ltd is the original assignee and does not appear to ship products. DH International Ltd. is likely a licensing-only entity.

2. Known asserter in the chain — unclear. Neither G. Holdings Ltd. nor DH International Ltd. immediately match the provided list of high-frequency NPE plaintiffs. While DH International Ltd. has the characteristics of a potential NPE (based on the name), without further information from RPX or Unified Patents, it cannot be confirmed as a known asserter.

3. Repeat correspondent across the chain — not present. The correspondent for the first assignment is ROULEAU, MICHEL (BROUILLETTE & PARTNERS). The correspondent for the second assignment is GATES, DALE (DALE F. GATES). There is no recurrence of the same correspondent.

4. Cascading transfers — not present. There are only two recorded assignments, executed in 2010 and 2023, which are not consecutive transfers through chained LLCs in a short timeframe.

5. Pre-litigation transfer — unclear. While the Google Patents "Family has litigation" section shows several cases filed, including in 2020, 2021, 2023, 2024, and 2025, the assignment to DH INTERNATIONAL LTD occurred in September 2023. There is a case filed in Texas Western District Court (1:23-cv-01114) and another (1:23-cv-01116) in Texas Western District Court which appear to have been filed in 2023, which may be close to the assignment date, but the exact filing dates in relation to the assignment execution date of 2023-09-15 would need to be pinpointed to confirm if it was within 6 months. Without precise dates, it remains unclear.

6. Bankruptcy fire-sale — not present. There is no indication from the assignment records or Google Patents that the original assignee, G Holdings Ltd, filed for bankruptcy.

7. Privateering — unclear. There is no information in the provided patent text or public records to suggest privateering, which would typically involve an operating company transferring a patent to an NPE to assert on its behalf.

8. Defensive aggregator (anti-NPE) — not present. The chain does not end at a known defensive aggregator.

Verdict

NPE — moderate confidence

The transfer from G. Holdings Ltd. to DH International Ltd. (Reel 060934/0971, executed 2023-09-15) is a strong signal of a shell-entity transfer, as the names suggest non-operating entities. Additionally, the presence of multiple litigation events in the "Family has litigation" section of Google Patents, with cases filed around or after the 2023 assignment, further supports the likelihood of assertion by DH International Ltd.

USPTO Assignment Center search page: https://assignmentcenter.uspto.gov/

The USPTO provides several tools for patent searching, including Patent Public Search, Patent Application Full-Text and Image Database (AppFT), and the Patent Full-Text and Image Database (PatFT). For issued patents, the PatFT database houses full text from 1976 to the present and TIFF images from 1790 to the present.

To search for US patent 9022294, the number should be entered as "9022294" in the Patent Public Search or PatFT databases, omitting commas and spaces and excluding leading zeros if the number were shorter than 7 digits. US patent 9022294 is a 7-digit utility patent.

Upon review of US Patent 9022294 B2, the following prior art references are cited within the patent document. Please note that determining which specific claims are potentially anticipated requires a detailed claim analysis and comparison that is beyond the scope of this response. The information provided below focuses on the general relevance of each cited patent as prior art.

Most Relevant Prior Art for US Patent 9022294:

1. US7628333B2 - "Portable electronic device and method for alternate data conveyance operations responsive to an invariable activation command"

• Full Citation: US7628333B2 (also listed as US 10/552,912)
• Publication/Filing Date: Priority date: 2003-04-14 (from PCT/IB2003/001523). Publication date: 2009-12-08 (for US7628333B2). The application leading to US9022294B2 claims priority from US10/552,912, which entered national phase from PCT/IB2003/001523.
• Brief Description: This patent describes a portable electronic device with an electronic circuit, a control device issuing an invariable activation command, a user interface, a data transceiver, a cue receiver, a switching element, and power means. Depending on whether an activation cue is received, the device either initiates a data exchange with an external device or conveys data to the user interface.
• Potential Anticipation: This patent is a direct continuation-in-part of the application that matured into US7628333B2. Therefore, it is highly likely that many, if not all, of the independent claims (Claims 1, 10, 16, 21, and 28) and their dependent claims in US9022294B2 could be directly anticipated or rendered obvious by US7628333B2, as US9022294B2 builds upon and extends the concepts disclosed in US7628333B2.

2. US20100038436A1 - "Portable electronic device and method for alternate data conveyance operations responsive to an invariable activation command"

• Full Citation: US20100038436A1
• Publication/Filing Date: Publication date: 2010-02-18. This is an earlier publication of the same application (US12/603,085) that later granted as US9022294B2.
• Brief Description: This patent application describes essentially the same invention as US9022294B2, detailing a portable electronic device capable of alternate data conveyance operations based on an invariable activation command and the presence or absence of an external activation cue. It includes an electronic circuit, control device, user interface, data transceiver(s), cue receiver, and a switching element.
• Potential Anticipation: As this is the application publication for the same patent, its content would be largely identical to the granted patent. Therefore, it would serve as prior art as of its publication date for any claims in US9022294B2 that were not fully supported by earlier priority dates. It would not typically "anticipate" its own granted patent in the traditional sense, but rather establish the earliest public disclosure date for the invention claimed therein.

These two references are particularly relevant because US9022294B2 explicitly states that it is a continuation-in-part of the application that resulted in US7628333B2 and that US20100038436A1 is another version of the same application. This indicates a strong relationship and likely overlap in the disclosed subject matter.

Obviousness Analysis of US9022294 Under 35 U.S.C. § 103

This analysis identifies combinations of prior art references that would render the claims of US patent 9022294 obvious to a person having ordinary skill in the art (PHOSITA) as of the patent's priority date of April 14, 2003. The analysis relies on the prior art landscape as described within the patent itself and the general knowledge implied by the "Prior art keywords" provided: "data," "electronic circuit," "transceiver," "cue," and "switching element."

Identification of Prior Art References

For the purpose of this obviousness analysis, the following conceptual prior art references are constructed based on the background discussion and general technical knowledge available to a PHOSITA prior to April 2003:

• Primary Reference (PR): A portable electronic identification card (e.g., a smart card or similar device) equipped with an electronic circuit capable of storing and processing data, an in-built display screen for communicating information to the user, and user input mechanisms (such as buttons or a keypad). This type of device is explicitly described in the background of US9022294 as prior art that "necessitate[s] multiple controls thereon to accomplish different functions of the card." [cite: The "BACKGROUND OF THE INVENTION" section, paragraph "Some prior art identification cards..."] Such a device would be capable of displaying internal data from its memory upon user interaction.
• Secondary Reference 1 (SR1): A system comprising a portable electronic device (e.g., a smart card, RFID tag, or similar contactless device) that includes a transceiver for wirelessly communicating with an external data exchange device (e.g., a card reader, payment terminal, or RFID reader). This communication is initiated or enabled upon the portable device receiving an "activation cue" from the external device, such as a radio frequency field or a specific data transmission. The patent notes that "Electronic identification devices are widely used by banks, credit companies, stores, to allow automated monetary transactions" and mentions the use of "contact or contactless link, for example an infrared or radio wave communication link" for transceivers [cite: Detailed Description of the Embodiments, paragraph "The communication link..."]. RFID and contactless smart card technologies, involving cues and transceivers, were known prior to 2003.
• Secondary Reference 2 (SR2): The general knowledge of a PHOSITA in the fields of user interface design, embedded systems, and control logic. This includes the widespread understanding that:
  • Simplifying user interfaces (e.g., reducing the number of input controls) enhances user convenience.
  • Electronic circuits often incorporate logical switching elements (either in hardware or as programmed software instructions) to implement conditional behavior based on various inputs, including sensor data or external signals. US9022294 itself states that a "switching element 44b can be a series of instructions programmed onto the microchip" [cite: Detailed Description of the Embodiments, paragraph "In an embodiment wherein electronic circuit 14 comprises a microchip..."].

Motivation to Combine and Obviousness

A PHOSITA, seeking to improve the user experience and functionality of the portable electronic identification card described in PR, would be motivated to combine the features of PR, SR1, and SR2, leading to the subject matter of US9022294.

The patent itself identifies a problem with existing devices (PR): they "necessitate multiple controls thereon to accomplish different functions." [cite: The "BACKGROUND OF THE INVENTION" section, paragraph "Some prior art identification cards..."] A PHOSITA would recognize this as a clear drawback and would be motivated to simplify the user interface to make the device more intuitive and efficient.

The PHOSITA would consider the capabilities of SR1, where external devices emit activation cues to initiate communication with portable electronic devices. This concept of using environmental context (the presence of an external cue) to trigger a specific mode of operation would be known.

To address the "multiple controls" problem of PR, a PHOSITA would combine these concepts as follows:

1. Integrating External Communication with PR: The PHOSITA would integrate a transceiver and cue receiver from SR1 into the PR, allowing the portable electronic device to engage in external data exchange (e.g., for monetary transactions or identification, as described in SR1 and the patent's background) in addition to its internal display functions. This is a straightforward enhancement to a portable electronic card.
2. Simplifying User Input with an Invariable Activation Command (PR + SR2): To overcome the need for "multiple controls" in PR, the PHOSITA would streamline the user input to a single, invariable activation command (e.g., a single button press or biometric scan, as suggested for the control device 12 in US9022294 [cite: Detailed Description of the Embodiments, paragraph "Control device 12 can be any suitable device..."]). This design choice is motivated by the desire for user convenience and a simpler interface (SR2).
3. Implementing Contextual Switching Logic (SR1 + SR2): To enable alternate functions with a single invariable command, the PHOSITA would incorporate a logical switching element (SR2) into the electronic circuit. This switching element would be configured to detect whether an activation cue (from SR1) has been received.
   • If an activation cue is detected by the cue receiver (SR1), the switching element would transition to an "activated state."
   • If no activation cue is detected, the switching element would remain in a "default inactive state."
   • This conditional logic, based on external context, is a routine engineering decision for managing different operational modes. The patent itself describes the switching element as a "series of instructions programmed onto the microchip" or a "decisional logical circuit," [cite: Detailed Description of the Embodiments, paragraph "In an embodiment wherein electronic circuit 14 comprises a microchip...", and paragraph "Alternately, switching element 44b can comprise..."] both of which fall under SR2.
4. Directing Alternate Data Conveyance (PR + SR1 + SR2): Upon the user issuing the invariable activation command (from the simplified control device), the electronic circuit, under the direction of the switching element, would perform one of two alternate data conveyance operations:
   • If the switching element is in the "activated state" (cue received), it would initiate a data exchange with the external data exchange device via the transceiver (combining SR1's external communication with PR's base device).
   • If the switching element is in the "inactive state" (no cue received), it would convey data from the electronic circuit to the internal user interface device (display screen) for communicating information to the user (as already performed by PR).

This combination directly renders the key features of claims, such as independent claim 1 and method claim 14, obvious. For instance, claim 1 specifies "a control device operatively linked to said electronic circuit, with an invariable activation command being issued when said control device is triggered," and "a data conveyance switching element operatively linked to said electronic circuit, said switching element being in an activated state upon an activation cue having been received by said cue receiver, and being in an inactive state when no activation cue was received by said cue receiver" [cite: Claim 1]. These elements, when combined, would directly lead to the "wherein" clauses describing the alternate data conveyance operations.

The motivation for this combination is evident: to improve user convenience and simplify the interaction with portable electronic devices that offer multiple functionalities, by replacing complex, multiple controls with a single, context-aware input. The PHOSITA would readily understand that using an external cue to automatically determine the operational mode for an invariable user command provides a more streamlined and efficient user experience for common applications like payments or identification, as discussed in the patent's own examples.