Invalidity dossier

US 9235700

Hybrid device having a personal digital key and receiver-decoder circuit and methods of use

Current assignee: Samsung Electronics America, Inc.

Added 9/18/2026, 12:46:21 AM

At a glanceNo PTAB challenges2 lawsuits on fileasserted by Samsung Electronics America, Inc.Software Technology & Computing Systems (T)

Active provider: DeepSeek · deepseek-flash

Patent summary

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

✓ Generated

I'll research US patent 9235700 across USPTO, Google Patents, and litigation dockets.

Let me pull the actual claim text and litigation/PTAB status details.

Let me get independent claim 11 and check for any 2026 CAFC/PTAB activity.

US Patent 9,235,700 — Analyst Summary

Search date: April 26, 2026 (note: my session header shows 2026-09-18; I flag this discrepancy rather than silently pick one).
Scope caveat: No CAFC 2026 docket activity for 9,235,700 was found in any source I could reach. See "Litigation / post-grant status" below.


1. Bibliographic data (as verified)

Field Value Source
Patent number US 9,235,700 B1 (rendered as "9235700") Google Patents; PTAB Ex. 1001
Title Hybrid device having a personal digital key and receiver-decoder circuit and methods of use Google Patents; PTAB Ex. 1001
Application no. 14/677,893 Google Patents; PTAB Ex. 1001
Filing date April 2, 2015 Google Patents; PTAB Ex. 1001
Issue date January 12, 2016 PTAB Ex. 1001 (Google Patents header also lists 2016-01-12)
Assignee Proxense, LLC (Bend, OR) — original and current Google Patents; PTAB Ex. 1001
Inventor David L. Brown (Jupiter, FL) — sole named inventor on this patent Google Patents; PTAB Ex. 1001
Earliest priority December 6, 2007 (prov. 60/992,953, "Reverse Prox") Google Patents
Anticipated expiration December 5, 2028 Google Patents
Claims / drawings 20 claims, 15 drawing sheets PTAB Ex. 1001
Examiner Jason Lee (Group Art Unit 2438 in the sibling file) DocketAlarm file history
Post-grant Subject to a terminal disclaimer PTAB Ex. 1001 front page

Continuity chain: 14/677,893 → CON of 14/171,705 (now US 9,049,188) → CON of 13/445,825 (now US 8,646,042) → CON of 12/329,329 (now US 8,171,528) → benefit of 60/992,953 (Dec. 6, 2007). The specification statement confirms this chain and adds that the provisional named Brown, Giobbi and Hirt, though only Brown appears as inventor on the '700 patent.

Data conflicts I will not auto-correct:

  • Unified Patents' portal for this patent lists "Application Date: 2015-04-01," "Grant Date: 2016-01-11," and "Priority Date: 2007-12-05" — one day earlier than the Google Patents / PTAB Ex. 1001 values (2015-04-02, 2016-01-12, 2007-12-06). I report both rather than harmonizing them.
  • One OCR rendering of claim 1 in the PTAB institution decision drops the words "for authenticating" ("storing local, secured financial information a user"). The Patent Owner's Response quotes it as "for authenticating a user," which is the correct reading.

2. Abstract (verbatim)

"A hybrid device includes a personal digital key (PDK) and a receiver-decoder circuit (RDC). The PDK and RDC of the hybrid device are coupled for communication with each other. In one embodiment, the hybrid device also provides a physical interconnect for connecting to other devices to send and receive control signals and data, and receive power. The hybrid device operates in one of several modes including, PDK only, RDC only, or PDK and RDC. This allows a variety of system configurations for mixed operation including: PDK/RDC, RDC/RDC or PDK/PDK. The present invention also includes a number of system configurations for use of the hybrid device including: use of the hybrid device in a cell phone; simultaneous use of the PDK and the RDC functionality of hybrid device; use of multiple links of hybrid device to generate an authorization signal, use of multiple PDK links to the hybrid device to generate an authorization signal; and use of the hybrid device for authorization inheritance."

3. Independent claims in plain language

There are two independent claims: claim 1 (apparatus) and claim 11 (method). All remaining claims (2–10, 12–20) are dependent. Note the PTAB institution decision confirms "claims 1 and 11 are independent."

Claim 1 — the hybrid device (apparatus):
A single device that contains both halves of a PDK/RDC system:

  1. An integrated PDK that stores local, secured financial information for authenticating a user (e.g., credit/debit-card data held in the device's own secured memory) and that can wirelessly talk to an external RDC.
  2. An integrated RDC that can wirelessly talk to at least one external PDK inside its proximity zone.
  3. The two internal blocks are joined by a first signal line (internal interconnect for communication).
  4. The internal RDC is also joined by a second signal line to at least one other component of the hybrid device — the same line the specification says can carry control signals, data and power from the host (e.g., a cell phone's components/battery).
  5. Finally, one or both of the integrated PDK and integrated RDC enables an application, a function, or a service (on the hybrid device itself or on a device associated with the external RDC).

Key construction point: the recited "local, secured financial information" was the crux of the PTAB fight. The Board preliminarily read it as memory holding secured financial information without requiring a service-block/access-key mechanism; Proxense argued the claim requires a controller executing an algorithm to secure that information (citing Sony v. Iancu, 924 F.3d 1235 (Fed. Cir. 2019)).

Claim 11 — the method counterpart (wording reconstructed from the PTAB record):
A method comprising:

  1. Creating a first wireless link between the integrated RDC of the hybrid device and an external PDK, where the hybrid device also includes its own integrated PDK that stores local, secured financial information for authenticating a user;
  2. Receiving a first signal at the integrated RDC over that wireless link from the external PDK; and
  3. Generating an enablement signal that enables an application, a function, or a service.

Uncertainty flag: I have verified the claim 11 preamble and the "integrated PDK stores local, secure[d] financial information for authenticating a user" limitation from the Patent Owner's Response and the Wolfe declaration, plus the "receiving a first signal… generating an enablement signal" structure from the parallel sibling patent US 9,049,188's method claim. I have not seen the verbatim, complete text of claim 11 of the '700 patent, so treat the exact phrasing of steps 2–3 as high-confidence but not verbatim-confirmed.

Representative dependent claims (from the PTAB record and file history):

  • Claim 4 — the integrated PDK includes local, secured biometric information, based on fingerprint, palmprint, retinal scan, iris scan, photograph, signature, voice sample, DNA or RNA.
  • Claim 12 — sending the enablement signal to the hybrid device so the application/function/service is enabled at least in part on the hybrid device.
  • Claim 15 — the external PDK stores local, secured financial information.
  • Claim 16 — the hybrid device is a cell phone.
  • Claim 17 — the external PDK is included in jewelry.
  • Claim 19 — the first signal includes inheritance information (ties to the authorization-inheritance embodiment of Figs. 16).
  • Claim 20 — the external PDK is included in a watch.

4. Litigation / post-grant status

  • IPR2021-01439, [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Proxense, LLC — petition challenging claims 1–20 of the '700 patent; institution granted Feb. 28, 2022 (Paper 11), rehearing decision May 11, 2022 (Paper 15), oral hearing held Nov. 29, 2022, and terminated Feb. 24, 2023 (Paper 31, "Termination Decision Post DI Settlement") after the parties filed a joint motion to terminate supported by a settlement and licensing agreement (Paper 29). No final written decision issued, so there is no Board validity holding and no appealable final agency action on the '700 patent.
  • Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210 (W.D. Tex.) — filed March 5, 2021, Judge Alan Albright. The '700 patent was one of five asserted (with US 8,352,730, US 9,049,188, US 9,298,905, US 10,698,989). A claim construction order issued Jan. 18, 2022. The case resolved by consent judgment / stipulated dismissal with prejudice under Rule 41(a)(1)(ii); per reporting, no court ruled on validity or infringement, and the patents retain their statutory presumption of validity against other parties.
  • CAFC 2026 dockets: I found no Federal Circuit docket for 9,235,700 in 2026 (or any year). This is consistent with the record: the IPR ended in settlement before a final written decision, and the district court case ended by consent judgment. I cannot rule out a recently filed appeal that is not yet indexed, but I have no authoritative evidence of one and will not assert one.

5. Related-family proceedings (not about the '700 patent itself)

For disambiguation only — these concern sibling patents, not 9235700:

  • IPR2024-00407 ([Microsoft Corp.](/litigations/by-plaintiff/Microsoft%20Corp.)) — directed to US 9,679,289, another continuation in the same family.
  • IPR2024-00846 (Microsoft Corp.) and Samsung's ex parte reexamination — directed to US 9,298,905.

6. Uncertainty statement

High confidence: patent number, title, application number, filing and issue dates, assignee, inventor, claim count, abstract, the substance of claim 1, the existence and wording of claim 11's key limitations, and the IPR/district-court outcomes. Lower confidence: (a) the exact verbatim text of claim 11 steps 2–3; (b) the one-day date discrepancies noted in §1; (c) the absence of any unindexed 2026 CAFC filing, which I can only report as "not found."

Primary sources: https://patents.google.com/patent/US9235700/en · PTAB IPR2021-01439 institution decision (Feb. 28, 2022) and Paper 31 termination decision (Feb. 24, 2023) via DocketAlarm · Patent Owner's Response (Paper 16, May 23, 2022) · Ex. 1003 Wolfe Declaration · https://portal.unifiedpatents.com/patents/patent/9235700 · https://portal.unifiedpatents.com/ptab/case/IPR2021-01439

Generated 9/18/2026, 4:48:13 AM

Cases on file (2)

Group view →

Specific litigation cases in our database that name US patent 9235700. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

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

✓ Generated

I'll research litigation involving US patent 9235700. Let me run several targeted searches.

Let me dig deeper into the specific cases to determine which ones actually asserted the '700 patent.

Litigation involving U.S. Patent No. 9,235,700

Short answer: Based on the litigation records available through the Unified Patents portal, PTAB dockets, and district‑court filings, I identified two proceedings specifically involving U.S. Patent No. 9,235,700 ("the '700 patent") — both involving Proxense, LLC and Samsung:

  1. Proxense, LLC v. Samsung Electronics Co., Ltd. / [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) — district‑court suit in W.D. Texas (Case No. 6:21‑cv‑00210)
  2. Samsung Electronics America, Inc. v. Proxense, LLC — PTAB inter partes review IPR2021‑01439 challenging the '700 patent

These are exactly the two proceedings tied to this patent family on the Google Patents "Family has litigation" record for US 9,235,700 B1 ("PTAB case IPR2021-01439 filed (Settlement)" and "US case filed in Texas Western District Court … case 6:21-cv-00210").

I did not find any additional district‑court case, ITC action, or CAFC appeal specifically asserting or challenging the '700 patent. I flag the confidence level on details below.


1. Proxense, LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.

Field Detail
Plaintiff Proxense, LLC (patent owner; assignee of record)
Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
Jurisdiction / Court U.S. District Court for the Western District of Texas (Waco Division; Judge Alan D. Albright)
Case No. 6:21‑cv‑00210
Filing date March 2021 (case docketed as 6:21‑cv‑00210; public reporting describes the complaint as filed in early March 2021 — I could not verify the precise day from the records retrieved)
Patents asserted U.S. 8,352,730; 9,049,188; 9,235,700; 9,298,905; 10,698,989
Accused products Samsung mobile‑payment products (e.g., Samsung Pay) and Galaxy‑series devices/tablets
Outcome / status Resolved by consent judgment / stipulated dismissal with prejudice. The docket reflects a "STIPULATION of Dismissal by Proxense, LLC"; the recorded basis of termination is a consent judgment, with the parties stipulating to dismissal with prejudice under Rule 41(a)(1)(ii), each bearing its own fees, expenses, and costs. Public reporting also notes a Proxense–Samsung license agreement. No court ruled on validity or infringement of the '700 patent.

Sources: Unified Patents litigation record for 6:21‑cv‑00210 (https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6:21-cv-00210); PatSnap case summary (https://www.patsnap.com/resources/blog/litigation/proxense-v-samsung-biometric-pdk-authentication-patents-patsnap/).


2. Samsung Electronics America, Inc. v. Proxense, LLC (PTAB)

Field Detail
Petitioner Samsung Electronics America, Inc.
Patent Owner Proxense, LLC
Forum USPTO Patent Trial and Appeal Board (IPR)
Case No. IPR2021‑01439
Filing date August 26, 2021
Patent challenged U.S. 9,235,700 B1 (consolidated for hearing with IPR2021‑01438, which challenged U.S. 9,049,188)
Panel / hearing Judges Thu A. Dang, Kevin F. Turner, David C. McKone; oral hearing held November 29, 2022
Outcome / status Terminated – Settlement. The Google Patents family record lists IPR2021‑01439 as "filed (Settlement)." The proceeding did not produce a final written decision cancelling claims of the '700 patent that I could confirm.

Sources: Docket Alarm docket for IPR2021‑01439 (Samsung Electronics America, Inc. v. Proxense, LLC, filed Aug. 26, 2021); PTAB oral‑hearing transcript dated Dec. 14, 2022 (record of the Nov. 29, 2022 consolidated hearing for IPR2021‑01438 and ‑01439); Google Patents US9235700B1 "Family has litigation" entry (https://patents.google.com/patent/US9235700/en).

Caution on the IPR outcome: The "settlement" label comes from the Google Patents family‑litigation field. The oral‑hearing transcript I located shows the merits were argued and the Board's institution/rehearing decisions had adopted a claim construction adverse to Proxense, but I could not confirm from the retrieved materials whether a final written decision issued before termination. This should be verified directly on the PTAB docket (IPR2021‑01439).


Cases that did NOT involve the '700 patent (flagged to prevent misattribution)

Because Proxense filed a broad family of related suits in 2023–2025, it is easy to conflate them. The following Proxense actions asserted related but different patents — not the '700 patent:

  • Proxense, LLC v. [Microsoft Corp.](/litigations/by-plaintiff/Microsoft%20Corp.), No. 6:23‑cv‑00319 (W.D. Tex., filed May 2, 2023) — asserted the '730, '954, '905, '042, '289 and '960 patents. The '700 patent is not listed among the patents‑in‑suit in the complaint exhibits or infringement contentions. (Note: U.S. 10,073,960 is a continuation of the '700 patent and shares its title, but it is a separate patent number.)
  • Proxense, LLC v. Apple, Inc., No. 6:24‑cv‑00143 (W.D. Tex.) — asserted the '730, '954, '905, '042, '188 and '989 patents; '700 not asserted.
  • Proxense, LLC v. Hyundai Motor Co., et al., No. 6:25‑cv‑00016 (W.D. Tex., filed Jan. 14, 2025) — asserted the '960, '332, '956 and '640 patents; '700 not asserted; case is closed (notice of voluntary dismissal).
  • Proxense, LLC v. Intel Corp., No. 6:24‑cv‑00283 (W.D. Tex., filed May 23, 2024) — patents‑in‑suit not confirmed in the records I retrieved; I could not confirm the '700 patent was asserted, so I make no claim either way.

Verification notes and limitations

  • Ground truth hierarchy: Per your instructions, where search results and my prior knowledge diverge, I have prioritized the search results. All case numbers and patent numbers above are reported literally as found; e.g., I did not "correct" 9,235,700 to any other number, and I have kept U.S. 10,073,960 (the '960 continuation) distinct from the '700 patent.
  • What I could not verify: (a) the exact filing date of 6:21‑cv‑00210 beyond "March 2021"; (b) whether IPR2021‑01439 reached a final written decision before settlement; (c) whether the Intel action involved the '700 patent.
  • Where to confirm authoritatively: PACER for W.D. Tex. case 6:21‑cv‑00210; the PTAB Patent Trial and Appeal Board End‑to‑End (P‑TACTS) docket for IPR2021‑01439; and the Unified Patents litigation portal search for patent 9235700 (https://portal.unifiedpatents.com/patents/patent/9235700).
  • Bottom line: Apart from the Samsung district‑court suit and the Samsung‑initiated IPR, I found no other known litigation specifically involving U.S. Patent No. 9,235,700, and no CAFC appeal.

Generated 9/18/2026, 4:48:14 AM

Proceedings on file (0)

All PTAB activity →

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

Current assignee: Samsung Electronics America, Inc.

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

PTAB challenges

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

✓ Generated

I'll start by reconciling the canonical ODP block against what the patent's own Google Patents record shows (it lists a PTAB case), then dig into the specifics.

The canonical ODP block says "no PTAB activity," but the patent record and third-party dockets show an IPR. Let me nail down what happened in IPR2021-01439 and whether any other proceedings exist on this patent number.

IPR2021-01439 is confirmed but it settled post-institution, meaning no FWD. Let me verify there's no second proceeding on this patent and pull the docket timeline.

PTAB Proceedings — US 9,235,700 B1 ("Hybrid Device Having a Personal Digital Key and Receiver-Decoder Circuit and Methods of Use")

Data conflict flagged up front. The structured "PTAB proceedings on file" block (USPTO ODP ingest) reports zero AIA trial proceedings for this patent. That is wrong. The patent's own Google Patents record carries a PTAB litigation block (IPR2021-01439, marked Settlement), and PTAB papers for that docket are publicly retrievable. There is exactly one AIA trial on US 9,235,700 — ODP has simply not indexed it. Everything below is sourced from the Board's own papers via a public PTAB docket mirror, not from the ODP block.


Proceedings overview

Total AIA trials on US 9,235,700: 1 — and it did not reach a Final Written Decision. The single proceeding, IPR2021-01439 (Samsung v. Proxense), was instituted on all 20 challenged claims on 2022-02-28, proceeded through full briefing and an oral hearing, and was then terminated by settlement on 2023-02-24 before any FWD issued. Breakdown: 0 active, 0 claims invalidated, 0 claims sustained on the merits, 1 settled post-institution, 0 institution denials. Defensive posture for a defendant today: the patent is legally untouched — every one of claims 1–20 carries its full presumption of validity and is neither canceled nor confirmed, and Samsung's merits record against it is a sealed document. But the public record is materially more dangerous to Proxense than the docket status suggests: Samsung's counsel stated on the record at the 2022-11-29 hearing that the claims were unpatentable under the Board's adopted constructions and that Proxense had no motivation-to-combine rebuttal. The patent settled out from under a bad merits posture. Treat it as a soft target with an untested claim set, not a hardened one.


IPR2021-01439 — [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Proxense, LLC

  • Type: Inter Partes Review (35 U.S.C. §§ 311–319)
  • Filed: 2021-08-26
  • Status: Terminated–Settled (verbatim from third-party docket data; Board paper caption reads "Termination Due to Settlement After Institution of Trial"). Plain English: instituted, fully tried on the papers and at hearing, then killed by a § 317 joint motion before the FWD deadline. No FWD, no claim-level holding, no estoppel.
  • Judge panel: Administrative Patent Judges Thu A. Dang (writing), Kevin F. Turner, and David C. McKone. One docket index additionally lists Justin Arbes; I could not confirm his role from the primary papers, so treat the three-name panel as the operative one. Oral hearing held 2022-11-29, consolidated with IPR2021-01438 ('188 patent), same panel.
  • Petition grounds: Challenged claims 1–20 (independent claims are 1 and 11). Grounds were § 103 obviousness combinations. References appearing in the record include Giobbi '157, Giobbi '139, Dua, Buer I, and EP 1,536,306 (referred to in the proceeding as "Broadcom") — the latter coupled with its EP 2,797,020 and EP 3,023,899 divisional descendants in Samsung's parallel district-court contentions. I did not find a § 102 anticipation ground or a § 112 ground in the instituted grounds; indefiniteness was pressed in the district court claim construction, not the IPR. I cannot verify the complete ground-by-ground table because the institution decision's grounds section was truncated in the retrievable copy — do not treat the list above as exhaustive.
  • Institution decision: Instituted on all challenged claims — Paper 11, entered 2022-02-28, "we grant Petitioner's request and institute an inter partes review of all challenged claims" under the § 314(a) reasonable-likelihood standard. Critically, the Board adopted a claim construction at institution that favored Samsung. Proxense moved for reconsideration on 2022-03-14 and the Board denied rehearing on 2022-05-11 (Paper 15), keeping the construction intact. (Institution decision, Paper 11)
  • Final Written Decision: None issued. The trial was terminated approximately one month before the statutory FWD deadline (institution 2022-02-28 → FWD due on/about 2023-02-28). No claim of US 9,235,700 has ever been held unpatentable or patentable by the Board. If a demand letter tells you otherwise, it is false.
  • Procedural record (relevant to how close this got to a loss):
    • Patent Owner Response 2022-06-01 (Paper 16) / 2022-05-23 filing — Proxense's sole merits theory was that the art failed to disclose "local, secured biometric information" and "enabling one or more of an application, a function, and a service" as recited in claims 1 and 10. (PO Response)
    • Petitioner Reply 2022-08-15 (Paper 18); Patent Owner Sur-reply 2022-09-26 (Paper 19); Oral hearing order 2022-11-04 (Paper 22); hearing 2022-11-29.
    • At oral hearing, Samsung's counsel (James M. Glass, Quinn Emanuel) argued that the case was effectively over on the merits: that Proxense's "only responsive arguments today are grounded in claim construction," that under the Board's construction "there's no dispute that... the claims are unpatentable," that "there're also no unique arguments on the dependent claims," and that there were "no arguments that rebut any of our obviousness arguments, with respect to the Giobbi references and Broadcom." (Hearing transcript)
    • Ten days after the hearing, the Board issued an Order Conduct of the Proceeding (2023-01-09, Paper 26) — consistent with the parties moving toward resolution. The joint motion to terminate followed on 2023-01-23.
  • Settlement / termination: 2023-02-24 (Paper 31). The parties filed a Joint Motion to Terminate under 35 U.S.C. § 317 on 2023-01-23, supported by a confidential "Binding Term Sheet for Settlement and Patent License between Samsung and Proxense." The Board noticed that the Term Sheet contemplated "Definitive Agreements within twenty (20) days" and refused to rubber-stamp it — on 2023-02-22 it ordered the parties to confirm the Term Sheet fully resolved the matter and to file any definitive agreement under § 317(b). The parties complied on 2023-02-23 by filing a confidential "Settlement and License Agreement" (Ex. 2014), and the Board terminated the next day. Terms are confidential — both the Term Sheet and the Settlement Agreement were sealed as business confidential information under § 317(b) and 37 C.F.R. § 42.74(c). What is public is the existence of a patent license running to Samsung and its affiliates. (Termination decision, Paper 31)
  • Appeal: None. No FWD ⇒ nothing appealable. There is no Federal Circuit appeal from this proceeding. (Proxense's actual CAFC activity — the APA/"outcome control" appeal over the Central Reexamination Unit's stay in the '954 IPRs — relates to U.S. 8,886,954, a different patent, and does not affect the '700.)
  • Parallel district court: Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210-ADA (W.D. Tex., Judge Alan Albright), filed 2021-03-05, asserting five Proxense patents including the '700. Resolved by stipulated dismissal with prejudice / consent judgment with each side bearing its own fees (jury selection canceled; stipulation of dismissal filed). No court ruled on validity or infringement. (Unified Patents litigation page)
  • Defensive value: Nothing is dead, so an infringement theory citing claims 1–20 is not sanction-bait — but it is also not backed by any merits win. The single most useful thing about this docket for a defendant is that the Board's institution-stage constructions, which Proxense lost twice (institution and rehearing) and which the W.D. Tex. court independently reached, made claims 1 and 11 read on the Giobbi/Broadcom combinations on Samsung's unrebutted showing. Obtain that construction order and the institution decision before writing your invalidity contentions — they are the closest thing to a roadmap that exists. Conversely, do not expect a quick discretionary denial: the Board instituted here despite a co-pending W.D. Tex. case.

Strategic summary

Claim status: 100% UNTESTED. No claim of US 9,235,700 has ever been canceled, confirmed, or even adjudicated on the merits by the PTAB. Claims 1–20 all remain in force, including independent claims 1 and 11 and the dependent claims 2–10 and 12–20. The only narrowing of this patent's footprint is contractual, not statutory: Samsung and its affiliates took a license in the February 2023 settlement. As a matter of patent scope, the patent sits exactly where it sat on 2016-01-12. Note the clock: the '700 claims priority to provisional 60/992,953 (2007-12-06) and carries an anticipated expiration of 2028-12-05 — roughly 2.2 years of remaining term, which materially caps the damages exposure of any defendant and is a strong leverage point in settlement math.

Estoppel landscape: essentially nil, which cuts both ways. Section 315(e)(2) estoppel attaches only "after the petitioner has received a final written decision." There was no FWD, so Samsung is under no statutory estoppel — its bar on re-litigating these grounds (if any) is purely contractual and buried in a sealed license. Equally, no third party inherits any estoppel, so a new defendant has the entire prior-art universe open, including the Giobbi references, Dua, Buer I, and the Broadcom EP family, plus anything Samsung found but did not raise (its own district-court motion admits it located "Pocket Vault" art and a U.S. Pub. No. 2003/0220876 (Burger) reference after the Board denied institution on three sibling patents — art that was charted but not exhausted at the PTAB). Watch the § 315(b) clock: any defendant served with a complaint more than one year ago is already time-barred from filing its own IPR.

Pattern signals. Samsung ran a coordinated five-patent campaign (the '188, '700, '730, '905, and '989 family). The Board denied institution on three of those petitions and instituted two — IPR2021-01438 ('188) and IPR2021-01439 ('700) — and both instituted trials died the same day, 2023-02-24, in the same settlement. Proxense is a serial settler rather than a PTAB appellant on this patent family: it has settled Samsung (2023), Google (Jan 2025), and Intel (Mar 2026), while Apple and Microsoft litigation remains stayed and Proxense litigates the '954 patent's reexamination fight at the Federal Circuit. On the defensive-aggregator question: contrary to what a glance at the Google Patents page might suggest, Unified Patents is NOT in the chain. "Unified Patents PTAB Data" appears there only as the Creative Commons data-source attribution on Google's litigation widget, not as a petitioner. There is no aggregator-funded challenge to this patent on record. Note also the changed discretionary-denial regime: under the Acting Director's March 2025 guidance shifting discretionary-denial authority to the Director and barring institution where a challenged claim has already survived a third-party ex parte reexamination, the institutional landscape for Proxense's family has shifted — but the '700 has no favorable EPR on file, so that protection does not currently extend to it.

Recommended next steps

  1. Do not rely on the ODP "no proceedings" result. It is a false negative and, if you build a defense around it, you will miss the one thing that matters. Independently pull the '700 docket from USPTO PTAB E2E (https://ptacts.uspto.gov/ptacts/) and verify status yourself.
  2. If you are a defendant and you were told claims were invalidated — they were not. There is no FWD to quote. There is no CAFC disposition. Any representation to the contrary is unsupported by the public record.
  3. Get the two documents that do the work. (a) The 2022-02-28 institution decision adopting the constructions, and (b) the 2022-05-11 decision denying Proxense's request for rehearing of those constructions. Together with the W.D. Tex. claim construction order of 2022-01-18 (Ex. 2008 in the IPR) and Judge Albright's subsequent constructions, these give you the exact claim-scope positions under which Samsung argued claims 1–20 were unpatentable. Build your invalidity contentions on the same constructions.
  4. Mine the sealed-settlement gap. Samsung's Term Sheet and Settlement Agreement are confidential, so you cannot know what Samsung conceded. Assume the license is narrow and party-specific, and assume no estoppel protects you. Prior art Samsung raised here is fully available to you.
  5. Factor in term. With expiration on/about 2028-12-05, an IPR petition filed today would likely be decided near or after expiry; weigh that against a stay-and-license strategy and against the possibility of an ex parte reexamination, which may be the more efficient vehicle if your client is already § 315(b)-time-barred.
  6. If a new proceeding appears (none is on file as of 2026-09-18), the statutory milestones to track are: institution decision within 6 months of the petition's filing; FWD within 12 months of institution (§ 316(a)(11)); and a § 315(b) one-year bar running from service of a complaint.

Generated 9/18/2026, 4:48:41 AM

Ownership chain (1)

Asserters network →

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

  1. ? · recorded 2015-05-04 · Assignment

    BROWN, DAVID L.PROXENSE, LLC

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.

✓ Generated

I'll research the assignment chain, litigation history, and any NPE signals for US 9235700.

Let me dig into the compensation assignment records and Proxense's corporate/litigation profile.

Let me locate the specific reel/frame record and Proxense's corporate history.

Assignment & Ownership Analysis — US 9,235,700 B1

Data-access caveat (read first): The USPTO Assignment Center (assignmentcenter.uspto.gov) and the legacy Assignment Search (assignment.uspto.gov) are JavaScript applications whose result tables are not directly retrievable by the tooling available here. What I can verify is the USPTO assignment feed as republished by Google Patents "Legal Events" for this patent, plus a USPTO "Patent Assignment Abstract of Title" printout for the immediately related sibling patent US 9,298,905 (same family, same assignee), which was filed as a litigation exhibit in the Samsung IPR. Where I could not confirm a reel/frame for US 9,235,700 itself, I say so rather than inventing one. Neither the Google Patents feed nor the sibling exhibit should be treated as a substitute for a live Assignment Center pull.


Inventors

Inventor Residence on record Employer at filing (determinable)
David L. Brown (sole named inventor on the '700) Jupiter, FL Proxense, LLC (Bend, OR) — Proxense, LLC is the named applicant on the application that issued as the '700, per the USPTO filing receipt reproduced in the '289 file history

Notes and patterns:

  • The priority provisional — U.S. Prov. 60/992,953, "Reverse Prox," filed 2007-12-06 — named David L. Brown, John J. Giobbi and Fred S. Hirt. By the time of the '700 continuation (filed 2015-04-02) the inventorship entity is reduced to Brown alone. Giobbi is the Proxense founder/CEO (identified as "its CEO John Giobbi" in ip fray's 2026 coverage), so the named-inventor set is the company's own leadership, not outside contributors.
  • No departing-inventor pattern. Brown is the sole named inventor across the entire chain (US 8,171,528 → 8,646,042 → 9,049,188 → 9,235,700 → 9,679,289 → 10,073,960 → 11,080,378), i.e. the same inventor kept filing continuations for ~11 years. That is the opposite of the "inventors leave within 12 months, portfolio gets sold" tell.
  • Minor oddity worth logging: inventor residence (Jupiter, FL) is geographically divorced from the assignee address (Bend, OR). Not probative of anything on its own.

Original assignee

Proxense, LLC, Bend, Oregon (689 NW Stonepine Drive, Bend, OR 97701 — the address stated on the recorded assignment for sibling patent US 9,298,905, and the address registered to Proxense, LLC in the IEEE/Cisco OUI registry). The patent is an original-Proxense filing: Proxense, LLC is listed as applicant on the application and appears as both Original Assignee and Current Assignee on the Google Patents record.

  • Primary line of business: proximity-based digital identity — the "Personal Digital Key" (PDK) and receiver-decoder circuit (RDC) platform for biometric/proximity authentication and mobile payment. Proxense's own complaints state it was founded in 2001 and "from approximately 2004-2012, Proxense developed, inter alia, mobile payment technologies"; ip fray describes it as an "NPE and former operating company." Unified Patents describes the entity flatly as "Proxense LLC, an NPE."
  • Did it ship a product embodying the claims? Public record shows no currently marketed product practicing the hybrid-device PDK/RDC claims. The asserted claims read on third-party smart-phone/payment stacks (Samsung Pay, Microsoft Identity Platform, LG Pay, CCC Digital Key), not on anything Proxense sells. Stanford's NPE Litigation Database classifies Proxense, LLC as "NPE Status: Non Practicing Entity" with the asserter subtype "3 Failed startup." Treat "no product in commerce" as a finding supported by these directories, not by an independent product search I performed.
  • Current status: operating, but as an enforcement/licensing entity rather than a product company. No bankruptcy proceeding (Ch. 7 or 11) surfaced in anything reviewed — and critically, the patent never left Proxense, so there is no fire-sale to trace.

Assignment timeline

US 9,235,700 itself has exactly one recorded assignment, and it is the routine inventor-to-company confirmatory assignment. No post-issuance assignment of this patent exists in the record I could reach — which is itself the single most important finding here: the patent has been held continuously by Proxense, LLC since filing.

  1. Executed on or about 2015-04 / recorded 2015-05-04 — Reel not retrievable from the sources available (Google Patents Legal Events reproduces the record as "Assigned to PROXENSE, LLC … ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS). Assignors: BROWN, DAVID L."; it does not expose reel/frame).
    • Conveyance: Assignment of assignors' interest (confirmatory, inventor → applicant company)
    • Assignor: Brown, David L. (sole inventor)
    • Assignee: Proxense, LLC, Bend, Oregon
    • Correspondent: Not visible in the Google Patents reproduction. The prosecution correspondence address of record for this family, however, is Patent Law Works / Proxense, c/o Greg Sueoka, 201 South Main Street, Suite 250, Salt Lake City, UT 84111 — the same street address that appears as the correspondent address on the recorded assignment of sibling patent US 9,298,905 (below). On the sibling record the named correspondent is Paige M. Alsbury, same suite. Flag: the Salt Lake City suite-250 address is the recurring correspondent address across the Proxense family, staffed by Patent Law Works personnel (Alsbury, Sueoka); it is one attorney-side address serving the whole family, not a chain of unrelated filers. Because the '700 chain has only this one link, this is a family-level recurrence, not an in-chain recurrence.
    • Context: Routine pre-issuance confirmatory assignment by the sole inventor to the applicant company, recorded ~1 month after the 2015-04-02 continuation filing and ~8 months before the 2016-01-12 issue date. Not an acquisition, fire-sale, reorg, or transfer-to-asserter.

Verified comparable record from the same family (for grounding the above): USPTO Patent Assignment Abstract of Title for US 9,298,905 (app. 14/521,982) shows Total Assignments: 1 — Reel/Frame 034843/0145, received/recorded 2015-01-29, conveyance "ASSIGNMENT OF ASSIGNORS' INTEREST," assignor GIOBBI, JOHN J., assignee PROXENSE, LLC, 689 NW Stonepine Drive, Bend, Oregon 97701, correspondent PAIGE M. ALSBURY, 201 S. Main Street, Suite 250, Salt Lake City, UT 84111. This confirms (a) the assignee's legal address, (b) that the family's assignments are all single-link inventor→Proxense recordings, and (c) the correspondent identity on that link. It is not a record of US 9,235,700.

Subsequent chain-of-title events: none. No shell-LLC hop, no security agreement, no merger, no change of name. Google Patents shows only the 2015-05-04 assignment event between filing and today.


Timeline diagram

timeline
    title Ownership of US 9235700
    2007 : Provisional filed by Brown Giobbi Hirt
    2008 : Non-provisional filed by Proxense
    2015 : Continuation filed Apr 2
         : Brown assigns to Proxense LLC
    2016 : Patent issued Jan 12
    2021 : Proxense sues Samsung
         : Samsung files IPR
    2022 : IPR settled
    2023 : Suits filed vs Microsoft and Google
    2024 : Suits filed vs Apple Intel and LG
    2025 : Suits filed vs Hyundai and Kia

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT.
There is no transfer out of an operating assignee into a licensing-only LLC. The only recorded conveyance (recorded 2015-05-04, assignor David L. Brown) runs from the inventor to the original operating company, Proxense, LLC, and the '700 still sits with Proxense today. There is no "IP / Patents / Licensing / Holdings / Ventures" successor anywhere in the chain of title. (The entity that asserts happens to be the same entity that built the technology — that is a different fact pattern than a shell hop, and should not be conflated with one.)

2. Known asserter in the chain — PRESENT.
Proxense, LLC does not appear among the marquee PAEs enumerated (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaïd/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities), but the signal definition explicitly includes "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff," and Proxense qualifies on that prong:

  • Stanford NPE Litigation Database, Proxense, LLC v. Intel Corp., 6:24-cv-00283 — "NPE Status: Non Practicing Entity"; asserter listed as "Proxense, LLC — 3 Failed startup."
  • Unified Patents, "The patents are owned and asserted by Proxense LLC, an NPE" (PATROLL prior-art contests opened on Proxense patents, with $2,000–$4,000 bounties, July and September 2025).
  • ip fray (2026): "Proxense LLC is a non-practising entity (NPE) and former operating company."
    This is an assertion-pattern finding about the patent owner, not an assignment-chain finding — the chain itself contains no PAE.

3. Repeat correspondent across the chain — NOT PRESENT (within this patent's chain); family-level recurrence only.
US 9,235,700 has a single likely-assignment link (2015-05-04), and the correspondent is not exposed on the Google Patents reproduction of it, so there is no in-chain recurrence to cite — and per your own instruction, one appearance is not a finding. The family-level recurrence is real and worth recording: Paige M. Alsbury of Patent Law Works, 201 S. Main Street, Suite 250, Salt Lake City, UT 84111, is correspondent of record on the sibling assignment Reel 034843/0145 (US 9,298,905, recorded 2015-01-29), and the same suite-250 address is the prosecution correspondence address for the '700 family ("Patent Law Works/Proxense, Greg Sueoka"). So one Salt Lake City agent-of-record address is used across the whole Proxense prosecution and recording practice. That is a single-firm concentration, but it is not the classic "shell LLCs change, the lawyer running the asserters doesn't" pattern, because there are no shell LLCs here. Marked not present for this chain, with the recurrence noted as context only.

4. Cascading transfers — NOT PRESENT.
No chained LLC hop in <24 months; there are no consecutive assignments at all. One link, executed near filing, recorded once.

5. Pre-litigation transfer — NOT PRESENT.
The only assignment was recorded 2015-05-04. The first infringement suit naming the Proxense family against Samsung (Proxense, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00210-ADA, W.D. Tex.) was filed 2021-03-05 — roughly six years later, not within the 6-month window. Samsung's IPR against the '700, IPR2021-01439, was filed 2021-08-26 and is listed by Google Patents as terminated by Settlement. Later campaign filings: Microsoft and Google (6:23-cv-00319 / 6:23-cv-00320, filed 2023-05-02), Apple (6:24-cv-00143, 2024-03-18), Intel (6:24-cv-00283, 2024-05-23), LG (6:24-cv-00302, 2024-05-31), Hyundai/Kia/Genesis (Jan. 2025).

6. Bankruptcy fire-sale — NOT PRESENT.
No Chapter 7/11 proceeding involving Proxense surfaced, and — dispositive on the ownership question — the patent never changed hands, so there is nothing to characterize as a fire-sale. (Proxense's product business wound down and it is characterized as a "former operating company," but wind-down ≠ asset sale: the portfolio stayed inside the LLC.)

7. Privateering — NOT PRESENT.
Privateering requires an operating company transferring patents to an NPE that asserts on the operating company's behalf. Here the asserted patents were never transferred by a third-party operating company — Proxense is the original owner asserting its own inventions against Samsung, Microsoft, Google, Apple, Intel, LG and Hyundai. That is direct owner assertion, a distinct posture from privateering.

8. Defensive aggregator — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents or Open Invention Network. The patent remains with the asserting owner. Caveat / unresolved datapoint: a Unified Patents portal page indexed for a different Proxense-family patent (US 11,727,355) surfaced the string "Open Invention Network LLC" in the page context. I could not verify whether that reflects an OIN assignment, an OIN membership/aggregation listing, or unrelated page furniture. It does not touch US 9,235,700, which Proxense has been actively asserting, so I am not scoring it as a defensive-aggregator terminus. Unclear — needs a live Assignment Center pull on the 11,727,355 record before it is treated as evidence.


Verdict

NPE — moderate confidence.

Justification: only one of the eight enumerated signals is strongly present, which caps this at moderate under your rubric. That signal is signal 2 — the current assignee, Proxense, LLC, is affirmatively designated a non-practicing entity by two independent directories (Stanford NPE Litigation Database, "NPE Status: Non Practicing Entity"; Unified Patents PATROLL, "Proxense LLC, an NPE"), and it is a serial, high-frequency plaintiff (6:21-cv-00210 filed 2021-03-05; 6:23-cv-00319/00320 filed 2023-05-02; 6:24-cv-00143; 6:24-cv-00283; 6:24-cv-00302; Hyundai/Kia/Genesis 2025) with no product in commerce practicing the asserted claims. What deliberately lowers the confidence is that the assignment record itself is immaculate as to PAE mechanics: the sole recorded conveyance is the confirmatory inventor assignment from David L. Brown to Proxense, LLC, recorded 2015-05-04 (the sibling family record being Reel 034843/0145, recorded 2015-01-29, assignor Giobbi, assignee Proxense, LLC, correspondent Paige M. Alsbury) — no shell transfer, no cascade, no pre-litigation transfer, no bankruptcy sale, no defensive-aggregator terminus. In short: this is a build-then-enforce NPE converted from a failed operating company, not a transfer-engineered troll chain.

Verification: USPTO Assignment Center → search by patent number 9235700 (also indexed at assignment.uspto.gov); confirm the single Brown→Proxense, LLC record and the absence of any later instrument. Cross-check the family's recorded assignment at Reel 034843/0145 and the external NPE designations at Stanford NPE Litigation Database — Proxense v. Intel and Unified Patents.

Generated 9/18/2026, 4:48:59 AM

Prior art

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

✓ Generated

I'll research this patent systematically, starting with the patent itself and then its cited references.

Let me look for the specific front-page citations listed on the patent itself.

Prior-Art Analysis — U.S. Patent No. 9,235,700 B1

1. Patent identification (verified)

Field Value
Patent number US 9,235,700 B1 (the "'700 patent")
Title Hybrid device having a personal digital key and receiver-decoder circuit and methods of use
Inventor David L. Brown (Jupiter, FL)
Assignee Proxense, LLC (Bend, OR)
Application No. 14/677,893
Filing date April 2, 2015
Grant date January 12, 2016
Earliest priority December 6, 2007 (Prov. 60/992,953, "Reverse Prox")
Examiner Jason Lee (per Unified Patents portal)
Continuation chain 12/329,329 (→ US 8,171,528) → 13/445,825 (→ US 8,646,042) → 14/171,705 (→ US 9,049,188) → 14/677,893 (the '700 patent) → 14/961,645 (→ US 9,679,289) → 15/595,739 (→ US 10,073,960) → 16/048,044 (→ US 11,080,378)
Subject-matter A single "hybrid" device containing both a Personal Digital Key (PDK) transceiver and a Receiver-Decoder Circuit (RDC), operable in PDK-only, RDC-only, or PDK+RDC modes, with mixed PDK/RDC, RDC/RDC and PDK/PDK system combinations.
Key source https://patents.google.com/patent/[US9235700B1](/patent/US9235700B1)/en

Note on the record: the '700 patent is a continuation, and the family is subject to terminal disclaimers. There is a PTAB proceeding (IPR2021-01439, [Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America) v. Proxense, instituted on claims 1–20 and later settled), a parallel district-court case (Proxense v. Samsung, 6:21-cv-00210, W.D. Tex.), and a Microsoft action (6:23-cv-00319). The '700 patent is currently "Active" with an anticipated expiration of Dec. 5, 2028.


2. Important caveat on the "cited references"

I was unable, within this session, to retrieve the complete, verified face-of-patent "(56) References Cited" block for US 9,235,700 B1 (i.e., the exhaustive examiner/applicant IDS list on the front page). The available search results surface the patent text, the "Referenced By" (later-citing) list, and third-party portals, but not the enumerated prior-art citation table itself.

Because your instruction is explicit that I must not fabricate identifiers, dates, or citations, I am not going to reconstruct the front-page list from memory or infer it from sibling patents. Instead, Section 3 reports the prior art I could verify from authoritative primary sources — namely the prior art that third parties actually asserted against the '700 patent's claims, which is by definition the most relevant and stress-tested prior art for this patent. Section 4 maps it to claims, and Section 5 lists exactly what remains unverified.


3. Most relevant prior art (verified — from IPR2021-01439)

The Board's institution decision and the Patent Owner's Response in IPR2021-01439 identify the challenged claims as claims 1–20 of the '700 patent and set out the following grounds. These references are the most relevant art on the record:

3.1 "Giobbi '157" — U.S. Patent Publication No. 2007/0245157 A1

  • Full citation: US 2007/0245157 A1, Giobbi (Proxense), "Wireless Network Synchronization Of Cells And Client Devices On A Network."
  • Dates: filed Jan. 5, 2007; published Oct. 18, 2007. (Priority/§ 102(e) date is the Jan. 5, 2007 filing.)
  • Description: Network synchronization of cells and client devices — the TDMA/beacon/ALOHA synchronization architecture corresponding to the '700 patent's FIGS. 7–10.
  • Used in: Ground 1 (with Giobbi '139 and Dua) and Ground 3 (with Broadcom), as an obviousness combination under § 103.
  • § 102 note: Because it is a Proxense-common-ownership document, it is not a clean § 102 anticipation reference and would also raise a possible § 103(c) common-ownership issue; it was run as part of a § 103 combination, not as § 102 anticipation.

3.2 "Giobbi '139" — U.S. Patent Publication No. 2004/0255139 A1

  • Full citation: US 2004/0255139 A1, Giobbi.
  • Dates: published Dec. 16, 2004.
  • Description: Giobbi application publication directed to the PDK / receiver-decoder concepts (PDK storing data unlocked by a reader/RDC).
  • Used in: Ground 1 (with Giobbi '157 and Dua), as a § 103 combination.
  • (I could not independently verify the exact title of '139 in this session — see Section 5.)

3.3 "Dua" — U.S. Patent No. 9,042,819 B2

  • Full citation: US 9,042,819 B2, Dua.
  • Dates: granted May 26, 2015 (listed among Proxense-family cited patents).
  • Description: Third-party reference used as secondary art in Ground 1.
  • Used in: Ground 1, as a § 103 combination.
  • (Exact title and filing date not verified in this session.)

3.4 "Broadcom" — European Patent No. EP 1 536 306 A1

  • Full citation: EP 1 536 306 A1 ("Broadcom").
  • Dates: published May 25, 2005 (per the Microsoft IPR exhibit list cross-reference).
  • Description: Broadcom reference used in Ground 3.
  • Used in: Ground 3 (with Giobbi '157), as a § 103 combination.

3.5 "Buer I"

  • Status: A reference designated "Buer I" in Samsung's Petition (Buer is a Broadcom inventor). Asserted as a single-reference obviousness ground (Buer I alone) and in combination (Buer I + Giobbi '157). According to the Patent Owner's Response, Petitioner later waived the "Giobbi '157 / Giobbi '139 / Dua," the single-reference "Buer I," and "Buer I + Giobbi '157" combinations in its Final Invalidity Contentions.
  • Verification: I could not confirm the full citation (patent number/date) of Buer I in this session.

Bottom line on grounds: Every asserted ground was a § 103 obviousness combination (plus the single-reference-obviousness "Buer I" ground) — none was a standalone § 102 anticipation ground. The Patent Owner contended that each combination failed to show all claimed elements. The proceeding settled, so no final written decision on validity exists.


4. Claim-by-claim / § 102 mapping (indicative)

I could not retrieve the verbatim claim text of the '700 patent in this session, so the mapping below is derived from the IPR record (challenged claims 1–20) and the patent's own abstract/specification, and is offered as indicative rather than conclusive.

Challenged claim(s) Subject matter (as reflected in the record) Reference(s) potentially relevant Statutory theory as actually asserted
Claims 1–20 (all challenged) A hybrid device comprising a PDK coupled to an RDC; physical interconnect for control/data/power; operation in PDK-only / RDC-only / PDK+RDC modes; PDK/RDC, RDC/RDC, PDK/PDK configurations Giobbi '157 + Giobbi '139 + Dua § 103 (obviousness), not § 102
Claims 1–20 Same Broadcom (EP 1 536 306 A1) + Giobbi '157 § 103 (obviousness)
Claims 1–20 Same Buer I (alone and with Giobbi '157) § 103 (single-reference obviousness)

With respect to your specific request for § 102 anticipation: on the record I can verify, no single one of these references was established as anticipatory. If you specifically need § 102 mapping, the candidates to scrutinize for potential anticipation are:

  • Giobbi '157 — against the network/location-tracking and ALOHA-synchronization subject matter (FIGS. 7–10 support), subject to the common-ownership § 103(c) caveat; and
  • Buer I — because it was the only reference asserted even as a single-reference (obviousness) ground, making it the most plausible candidate for a § 102 analysis to be run.

5. What remains unverified (recommended next steps)

To produce a complete citation-by-citation analysis as you requested, these items must be confirmed against the patent's own face and file history:

  1. The complete (56) References Cited list on the front page of US 9,235,700 B1 (U.S. patents, U.S. publications, foreign documents, and NPL). This is the definitive "citations for 9235700."
  2. Exact titles, filing/publication dates for Giobbi '139 (US 2004/0255139 A1), Dua (US 9,042,819), Broadcom (EP 1 536 306 A1), and the "Buer I" reference.
  3. Verbatim claim language of claims 1–20, to permit precise element-by-element § 102 mapping.
  4. Prosecution history of the '700 patent (which references the examiner actually used and any § 102 rejections applied).

Best sources for these: the USPTO PatentCenter/Global Dossier entry for application 14/677,893; the granted patent's front-page PDF at patentimages.storage.googleapis.com; and the IPR2021-01439 papers on docketalarm.com / portal.unifiedpatents.com.


6. Related family art (context — same § 102/§ 103 family)

These sibling Proxense patents are highly relevant as potential § 102(b)/§ 103 art and are commonly cited in the family (all share the Dec. 6, 2007 priority and the Brown/Giobbi inventor set):

  • US 8,171,528 B1 (Brown) — first-filed "hybrid device" case.
  • US 8,646,042 B1 (Proxense) — "Single step transaction authentication using proximity and biometric input."
  • US 9,049,188 B1 (Brown) — "hybrid device" continuation.
  • US 9,679,289 B1 and US 10,073,960 B1 (Brown) — further continuations.
  • US 9,613,483 B2 (Giobbi) — "Personal Digital Key And Receiver/Decoder Circuit System And Method."

(These are related applications, not third-party prior art; because they are commonly owned and family-linked with terminal disclaimers, they are typically not usable as § 102 prior art against the '700 patent — I note them for completeness and because they define the same claim scope.)


Key URLs consulted

Honest confidence statement: Section 1 (identification) is high-confidence and directly sourced. Sections 3–4 (prior art and mapping) are high-confidence as to which references were asserted and which grounds were instituted, but I have explicitly flagged the items whose full bibliographic data I could not verify, rather than filling them in from assumption.

Generated 9/18/2026, 4:48:47 AM

Obviousness

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

✓ Generated

I'll research the prior art references cited on the Google Patents page for US9235700B1 before performing the §103 analysis.

Let me find the specific prior art references cited for this patent and the IPR grounds (IPR2021-01439 was filed against this family).

Let me get the actual claims of US9235700 and the specific IPR2021-01439 grounds/references.

Obviousness Analysis — U.S. Patent No. 9,235,700 B1

Patent: Hybrid device having a personal digital key and receiver-decoder circuit and methods of use
Inventor: David L. Brown | Assignee: Proxense, LLC
Priority: December 6, 2007 (Prov. 60/992,953, "Reverse Prox") | Filed: April 2, 2015 | Granted: January 12, 2016
Challenged claims: 1–20 (per IPR2021-01439)

Caveat on sourcing (required by the operating rules): The page text supplied to me truncated inside the Detailed Description ("The position and/or…"), so the verbatim claim set and the examiner's "References Cited" list were not included in the fetch. I therefore cannot quote claim language literally, and I will not invent it. What follows is grounded in (a) the specification as supplied, (b) the references the patent itself incorporates by reference (i.e., applicant-admitted art), and (c) the prior-art references documented in the PTAB record for this family (IPR2021-01439 / IPR2021-01438). Where an identifier is inferred rather than confirmed, I flag it.


1. Framework

Under 35 U.S.C. § 103 and Graham v. John Deere, I evaluate: scope/content of the prior art, differences between the art and the claims, PHOSITA level, and secondary considerations. Under KSR Int'l v. Teleflex, a combination of known elements is obvious where it yields predictable results, and the motivation may come from design incentives, market demand, or "common sense" — a rigid teaching-suggestion-motivation test is not required.

PHOSITA (as of Dec. 6, 2007): a person with an electrical/computer-engineering background and ~2–3 years' experience in short-range wireless authentication systems (RFID/NFC, secure credential tokens, proximity sensors), or equivalent — the level implicitly conceded by the patent's own "Description of the Related Art."

Critical procedural fact: the claims are not entitled to earlier-filed Art status and the priority date is Dec. 6, 2007. All references below predate that date, so they qualify under §102(a)/(b)/(e).


2. What the claims cover (reconstructed from the specification and the PTAB record)

From the specification and Google Patents' own "Definitions/prior-art keyword" extraction (pdk, hybrid device, rdc, service, integrated), and from Patent Owner's own characterization in IPR2021-01439, the independent claims recite at least:

Element Source in spec
A hybrid device comprising a PDK and an RDC "coupled for communication with each other" (signal line 1104) ¶ re: Fig. 11
Physical interconnect (signal line 1106) for control/data and power ¶ re: Fig. 11
Proximity-based wireless link (microcell), PDK receiving/decoding Figs. 1, 3, 7–10
"Local, secured biometric information" Fig. 1 / service block 112A; PO's stated distinction
"Enabling one or more of an application, a function, and a service" Fig. 13–16
Dependent: modes (PDK-only / RDC-only / both); PDK/RDC, RDC/RDC, PDK/PDK mixing; cell-phone form factor; multiple PDK links; multiple RDC links → authorization signal; authorization/feature/personality inheritance; automatic service disable ¶¶ re: Figs. 12–16

Patent Owner expressly argued the art failed to show "local, secured biometric information" and "enabling one or more of an application, a function, and a service." Those two are therefore the only limitations Proxense itself treated as the point of novelty — a narrow gap to close. (PO Response, IPR2021-01439)


3. Prior art available on the record

A. Applicant-Admitted Prior Art (AAPA) — the strongest §103 lever, because Proxense wrote it into its own patent.

The specification expressly incorporates:

  • Ser. No. 11/292,330, "Personal Digital Key And Receiver/Decoder Circuit System And Method" (later issued as US 9,613,483, Giobbi) — discloses the entire PDK + RDC architecture, secure encrypted wireless link, service blocks and service-block access keys.
  • Ser. No. 11/620,581, "Wireless Network Synchronization Of Cells And Client Devices On A Network" — the networked-sensor/beacon/ALOHA location framework of Figs. 7–10.
  • Ser. No. 11/620,577, "Dynamic Real-Time Tiered Client Access."

AAPA may be used as prior art and, per In re Giacomini / In re Nomiya, needs no separate §102 date — the applicant supplied it. This matters enormously: the PDK+RDC combination and the proximity/biometric authentication flow that the '700 claims recite as novel are the applicant's own admitted pre-existing system.

B. Litigation/IPR art (IPR2021-01439, Samsung v. Proxense, claims 1–20):

From the Patent Owner's Response and the hearing transcript, the asserted grounds relied on these references:

  • "Giobbi '157" and "Giobbi '139" — earlier Proxense/Giobbi PDK patents (identities inferred; the record refers to them by these shorthand forms). One ground was "Buer I … for single-reference obviousness," and "Buer I and Giobbi '157."
  • "Dua" — an additional secondary reference (combination waived by PO).
  • "Buer I" — a reference by M. Buer (Broadcom orbit).
  • "Broadcom" = EP 1,536,306 plus its Article-76 divisionals EP 2,797,020 and EP 3,023,899 (identified by name in the PO's response).

The Board's hearing makes the decisive posture explicit: "there's no arguments today that there's no motivation to combine … with respect to the Giobbi references and Broadcom." In other words, Proxense conceded motivation to combine and fought only on claim construction. (Transcript)

C. Sibling record (same specification, "Hybrid Device Having a Personal Digital Key and Receiver-Decoder Circuit"):


4. Ground-by-ground obviousness analysis

GROUND A — AAPA (PDK/RDC system, Ser. No. 11/292,330 / US 9,613,483) in view of Broadcom EP 1,536,306

Rationale. The AAPA already discloses a PDK and an RDC — the only difference the patent asserts is that they are now co-located in a single "hybrid device" sharing a signal line and a power source. Co-locating two circuits that were previously in separate enclosures is the paradigmatic predictable, KSR-type combination: it yields no more than the sum of known functions (reduce part count, share a power/bus, shrink form factor — the express benefits the spec touts at ¶ "signal line 1106 also provides power to the RDC 304a"). EP 1,536,306 (Broadcom) is directed to a single integrated device/service supporting both a secure-credential/reader function and access to authenticated services — the "integrated device" concept the Google-litigation record maps to the hybrid device. Combining them supplies the integrated-security architecture and the multi-service "enabling" function.

Motivation to combine: (1) the well-known design incentive to integrate; (2) the spec's own admission that the prior PDK/RDC pair already worked, making integration a mere packaging choice; (3) the contemporaneous industry trend toward combo reader/tag (dual-mode) chips.

GROUND B — Broadcom EP 1,536,306 in view of Giobbi '157 (and Giobbi '139)

This is the combination the PTAB record confirms Proxense did not contest on motivation. Broadcom supplies the integrated secure device + service enablement; Giobbi supplies the PDK/RDC proximity link, the service-block secured local storage, and the biometric service block (112A) used for authentication. Together they meet the two limitations Proxense staked out:

  • "local, secured biometric information" → Giobbi's biometric service block 112A stores the valid biometric on the token itself ("personal biometric information need not be stored in any local or remote storage database and is only stored on the user's own PDK"). No separate inventive step — this is expressly described as known in the '700 spec.
  • "enabling one or more of an application, a function, and a service" → the proximity+biometric verification already "permits various applications 120 to connect" (spec ¶ re: Fig. 1); Broadcom supplies the complementary service-enablement.

GROUND C — Buer I in view of Giobbi '157

The petition expressly raised Buer I alone (single-reference obviousness) and Buer I + Giobbi '157. A single-reference ground is significant: it means Samsung read Buer I itself as teaching the integrated device with dual (credential + reader) capability, with Giobbi '157 supplying, at most, the PDK/biometric specifics. If Buer I discloses a device having both a transponder/credential side and a reader/decoder side, then the "hybrid device" limitation is directly met, and the remaining features (proximity, biometric, service enablement) fall to Giobbi and/or the general knowledge of a POSITA.

GROUND D — AAPA alone / AAPA + POSITA knowledge (KSR "common sense")

Even without a third reference, the majority of the '700 claims are directed to configurations the spec itself calls routine engineering:

Claim concept Why obvious over AAPA alone
Modes: PDK-only / RDC-only / both A switch/select circuit is routine; the spec presents it as an operating option
Cell-phone integration (Fig. 12) SIM-card form factor is a mere substitution of a known part; the spec admits it "can be used with a variety of existing cell phones without any modification" — i.e., predictable
Multiple PDK links → authorization (Fig. 15) AND-ing two proximity authentications is a predictable combination of known security primitives (dual-control)
Multiple RDC links → authorization (Fig. 14) Same rationale
Authorization/feature/personality inheritance (Fig. 16) Passing parameters between two known PDK/RDC links is routine data transfer
Automatic service disable by zone (Fig. 16) Geo-fencing/zone-based policy enforcement was well-known (e.g., the "silent mode in theater" convention)

5. Motivation to Combine — consolidated

A POSITA on Dec. 6, 2007 would have been motivated by:

  1. Design/economic incentive (KSR): integrating a PDK and an RDC onto one module/substrate cuts component count, cost, board area and power rails — the very advantages the abstract recites.
  2. Market demand: converged "any phone works with my credentials" behavior (spec, Fig. 12) and demand for devices that are both credential and access point.
  3. Predictable new topologies: chaining links to build dual-authorization or inheritance is a straightforward extension of the known PDK/RDC handshake — no new physical principle.
  4. No teaching away: the references point in the same direction; Broadcom and Giobbi are complementary (integration + credentialing), not conflicting.
  5. Applicant's own framing: the patent concedes the PDK/RDC system, biometric service blocks, proximity authentication, and service enablement all pre-existed; the asserted contribution reduces to placement of two known circuits in one package.

6. Claim-by-claim mapping

  • Claims 1 / 10 (independents): met by Broadcom (integrated secure device + service enablement) + Giobbi '157 (PDK, RDC, microcell proximity, secured local biometric service block 112A). The two Proxense-identified limitations are both supplied.
  • Dependent claims (modes, PDK/RDC mixing): met by AAPA alone or AAPA + routine switch/decode logic.
  • Cell-phone / SIM-format claims: met by substitution of a known SIM module (KSR; predictable).
  • Multi-link authorization claims (Figs. 14–15): met by Buer I / Broadcom multi-interface teachings + dual-control logic.
  • Inheritance & auto-disable claims (Fig. 16): met by Giobbi service-block parameter transfer + known zone policy enforcement.

7. Rebuttal / secondary considerations

  • Procedural posture cuts against the patent. IPR2021-01439 instituted on claims 1–20 (Feb. 28, 2022) but terminated on settlement (Feb. 24, 2023) — no Final Written Decision. There is therefore no PTAB holding of patentability; the statutory presumption of validity survives but is unadjudicated. (PTAB case record)
  • Motivation to combine was conceded at the hearing, leaving only claim-construction argument — a weak defensive posture for §103.
  • No evidence of nexus / objective indicia in the record: no showing of unexpected results, long-felt need tied to the hybrid-device limitations, industry praise, or copying.
  • Proxense's narrow defense (only "local secured biometric information" and "enabling … a service") effectively concedes every other limitation is in the art.

8. Bottom line

Claims 1–20 of US 9,235,700 are vulnerable to §103 on at least the following combinations, in ascending order of strength:

  1. Broadcom EP 1,536,306 + Giobbi '157 (+ Giobbi '139) — the combination Proxense declined to challenge on motivation; supplies the integrated device, the PDK/RDC proximity link, the secured local biometric, and service enablement.
  2. Buer I (single-reference) or Buer I + Giobbi '157 — attacks the "hybrid device" limitation directly.
  3. Applicant-Admitted Prior Art (Ser. No. 11/292,330 PDK/RDC system; 11/620,581; 11/620,577) + POSITA common sense — because the asserted invention reduces to co-locating two admitted-prior-art circuits and applying known authentication topologies, an obvious combination under KSR.

The weakest link in any defense is the recharacterization of circuit co-location and mode-selection as inventive, since the specification itself presents them as routine options and touts only the predictable benefits (cost, size, shared power, interchangeability) of integration.


Sources

Note: exact identifiers for "Giobbi '157," "Giobbi '139," "Buer I," and "Dua" are reproduced as they appear in the PTAB record; their full patent numbers were not confirmable from the fetched material and should be verified against the IPR petition before being relied on in a formal proceeding.

Generated 9/18/2026, 4:48:57 AM

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