US 9478110

I'll verify the identifiers and check for litigation/docket activity before summarizing.

Let me verify the claim set and the litigation/PTAB docket status.

I need the actual claim text of the '110 patent. Let me pull it.

US 9,478,110 — verification and summary

Identifier handling: I searched on the literal string 9478110 / US9478110B2. All hits below returned that exact patent. I did not substitute any similar number. Two caveats up front: (1) the full text you supplied contains the abstract, description and figures list but not the claims section, so my claim-level review is reconstructed from sibling family members and the PTAB record rather than read verbatim off the '110 printed claims; and (2) I found no 2026 Court of Appeals for the Federal Circuit docket activity for this patent — the CAFC matter I could confirm is a 2019 appeal (details below).

Bibliographic data (high confidence)

Priority chain (from the '110 specification, Cross Reference section): continuation of 14/825,436 (now US 9,269,247) → 14/529,516 (US 9,135,800) → 14/254,244 (US 8,884,762) → 13/169,968 (abandoned) → CIP of 12/770,321 (US 7,969,305) → continuation of 11/639,102 (US 7,737,846) → provisional 60/753,908.

Abstract (as printed)

A security system with a programming station, a programmable key and a security device. The programming station generates a security code and communicates it to a memory of the programmable key. The key initially communicates the code to the security device's memory and subsequently operates the device upon a matching of codes. The key may transfer power via electrical contacts or inductive transfer from an internal battery to operate a lock mechanism. Communication may be by wireless IR, electrical contacts, or inductive transfer. A timer inactivates the key and/or device after a predetermined period; a counter inactivates the key after a predetermined maximum number of activations.

Plain-language overview of the independent claims

Claim 1 — system claim. A programmable security system for protecting merchandise from theft, comprising three cooperating parts:

1. a programming station that randomly generates a single security code and stores it in memory, that code being unique to that programming station;
2. a programmable key that communicates with the station to receive and store that single code; and
3. a security device (with an alarm and its own memory for the single code) attachable to an item of merchandise and configured to sound the alarm if its integrity is compromised;

wherein the key arms or disarms the security device when the code stored in the device matches the code stored in the key.

Claim 24 — method claim. Substantively parallel method recitation (protection of merchandise from theft), covering the same generate → provision → store-at-the-key → store-at-the-security-device → arm/disarm-upon-matching sequence.

Confidence note on verbatim text: I could not retrieve the literal claim 1/24 wording of the '110 patent itself. The wording above is the claim 1 text published for sibling US 9,135,800 (same family, same specification lineage), and the PTAB's Final Written Decision in IPR2017-01900/01901 characterizes the '110 claim 1 as "a programmable security system for protecting items of merchandise" and claim 24 as "limitations similar to those of claim 1 … in method form." Treat the paraphrase as accurate in substance but verify against the printed '110 claims before quoting.

Dependent claims (2–23 from claim 1; 25–36 from claim 24) add the features described throughout the specification: wireless IR / electrical-contact / inductive (including magnetic-induction) data communication; power transfer from the key's internal battery to a lock mechanism; a timer that inactivates the key after a predetermined period (e.g., 96 hours, or 6–12 hours in the key-205 embodiment); a counter that permanently inactivates the key after a maximum number of activations; permanent storage of the code at the security device; and plural keys/plural security devices with the station configured to reactivate keys.

Litigation and PTAB record (the part that most affects the patent's practical value)

• District court: InVue Security Products Inc. v. Mobile Tech, Inc., No. 3:16-cv-00734 (W.D.N.C.); per the PTAB, that case was consolidated with others and transferred to the U.S. District Court for the District of Oregon. A separate N.D. Cal. case, 3:17-cv-00075, is also listed on the Google Patents family page.
• PTAB: Two Mobile Tech petitions filed 2017-07-31 — IPR2017-01900 (claims 1–9, 11–36) and IPR2017-01901 (claims 1–36). The Board consolidated them for decision and issued a Final Written Decision on 2019-02-12 (public redacted version docketed 2019-03-08), holding that Petitioner showed by a preponderance that claims 1–36 of the '110 patent are unpatentable — over Uchida (JP 1997-259368), Uchida + Burri (EP 0745747 A1), and Rothbaum (US 5,543,782) + Denison (US 2004/0201449).
• Federal Circuit: InVue filed a Notice of Appeal on 2019-04-16, docketed as CAFC No. 19-1779 (this is the litigation link Google Patents surfaces for the family).
• 2026 CAFC dockets: I found no 2026 Federal Circuit docket activity naming patent 9,478,110. My search coverage of current CAFC dockets is not exhaustive, so I cannot rule out a recently filed or re-opened matter — I simply have no authoritative confirmation of one. I also do not have authoritative confirmation from the retrieved sources of the disposition of CAFC 19-1779 (e.g., affirmance vs. remand), so I am flagging that as unresolved rather than guessing.

Two things worth noting

1. This patent reads on more than the "SDC" concept. The specification of the '110 (unlike the earlier '247/'800 members) also carries the CIP material on a programmable electronic key 205/305 that transfers power — via electrical contacts (FIGS. 23–24) or inductive/ferrite-core coupling (FIGS. 25–28A) — to operate a passive security device such as a cabinet lock 207, with the code exchanged by IR "handshake." That power-transfer-plus-passive-device subject matter is what differentiates this member of the family.
2. Family scope is still growing. Google Patents links later continuations from the same 2005 priority chain, including US 10,003,113, US 11,721,198 and US 12,205,457, and a 2025 publication US 2025/0166486 A1 — so the '110 is one node in a large, actively prosecuted continuation family even though the '110 itself was held unpatentable at the Board.

I'll research litigation involving US patent 9478110 using the case identifiers already visible in the patent record, then verify and expand via web search.

Litigation Involving U.S. Patent No. 9,478,110 ("the '110 patent")

Patent under review: U.S. 9,478,110 B2, Programmable security system and method for protecting merchandise, assignee InVue Security Products Inc. (Charlotte, NC). Priority date Dec. 23, 2005; granted Oct. 25, 2016. Application 15/047,218, filed Feb. 18, 2016 (continuation chain running back through U.S. 9,269,247, 9,135,800, 8,884,762, 7,969,305, and 7,737,846).

The '110 patent appears in three fora: two district-court actions (one in W.D.N.C. and one in N.D. Cal., per the Google Patents litigation data), two consolidated PTAB inter partes reviews, and one Federal Circuit appeal. Details below.

1. District Court Litigation

1a. InVue Security Products, Inc. v. Mobile Tech, Inc. — W.D.N.C.

Status/Outcome: Per the PTAB's combined Final Written Decision (IPR2017-01900/01901, Paper 34), the '110 patent "originally was asserted in InVue Security Prods., Inc. v. Mobile Tech, Inc., Case No. 3-16-cv-00734 (W.D.N.C.), and … the case was consolidated with others involving patents related to the '110 patent and transferred to the United States District Court for the District of Oregon." (Google Patents' litigation record for the '110 patent also lists this W.D.N.C. case.)

(Note: this is a distinct case from the earlier W.D.N.C. action 3:15-cv-00610, which asserted the '247, '800 and '762 patents — not the '110 patent — and from the later W.D.N.C. action in which MTI sued InVue and InVue counterclaimed on trademark theories.)

1b. InVue Security Products, Inc. v. Mobile Tech, Inc. — D. Oregon (consolidated)

Status/Outcome: InVue's complaints in the Oregon consolidated action expressly recite that the '110 patent — together with U.S. 9,659,472 ('472), 9,576,452 ('452), 9,396,631 ('631), 9,269,247 ('247), 9,135,800 ('800) and 8,884,762 ('762) — was "asserted against MTI in Civil Action No. 3:17-cv-01356-SI in the U.S. District Court for the District of Oregon." The PTAB decision confirms the W.D.N.C. case was consolidated and transferred into this Oregon proceeding. The infringement claims on the '110 patent were overtaken by the PTAB's invalidation of all claims (see §2 below).

1c. InVue Security Products, Inc. v. Mobile Tech, Inc. — N.D. Cal.

Caveat: Google Patents' litigation panel for US 9,478,110 lists this N.D. Cal. case as associated with the patent/family. Because the '110 patent is one of a large continuation family (and the Unified Patents entry I retrieved appears on a 9,135,800-filtered list), I could not independently confirm from the sources retrieved that the '110 patent itself — as opposed to a sibling family member — was the asserted patent in 3:17-cv-00075. Treat the patent-to-case linkage for this entry as unverified.

2. PTAB — Inter Partes Review (petitions filed by MTI)

Key points:

• The two proceedings involved the same patent and parties and were consolidated for issuance of a single Final Written Decision under 35 U.S.C. § 315(d). The FWD (Paper 34) states: "Petitioner has shown by a preponderance of the evidence that claims 1–36 of the '110 patent are unpatentable."
• The joint oral hearing was held Nov. 7, 2018.
• The FWD was initially entered as "Parties and Board Only" (multiple motions to seal), then a redacted public version was issued March 8, 2019.
• Counsel: Petitioner — Thompson Coburn LLP (Alan Norman, Anthony Blum, David Jinkins, Matthew Braunel); Patent Owner — Meunier Carlin & Curfman LLC (Gregory Carlin, Warren Thomas, David Moreland) and in-house Trent Kirk (InVue).

⚠️ Discrepancy flagged (per your instruction to interpret identifiers literally and prioritize current search results): The Google Patents litigation panel labels the petitioner in both IPR2017-01900 and IPR2017-01901 as "Unified Patents." The underlying PTAB records retrieved (docket, papers, and hearing/FWD documents) identify the petitioner as Mobile Tech, Inc. I report the PTAB documents' identification (Mobile Tech, Inc.) as the operative one, and note the Google Patents label as inconsistent with those records. Counsel of record (Thompson Coburn) is consistent with MTI's other IPRs against InVue.

3. Court of Appeals for the Federal Circuit

Status/Outcome: The sources retrieved confirm this appeal was filed and is docketed as CAFC No. 19-1779 (RPX Insight and Patexia both list "Appeal 19-1779" for the two IPRs). Both Google Patents and RPX associate the appeal with the '110 patent. However, I could not retrieve from the available search results a disposition (affirmance, vacatur, or remand) of CAFC 19-1779. I will not speculate on the appellate outcome; it should be verified directly against the Federal Circuit docket for 19-1779 or PACER/CAFC records.

4. Other InVue enforcement activity (context — not '110 patent)

These were surfaced in the searches but concern different patents, so they are not '110-patent cases:

• InVue v. Kum Oh Electronics Co., Ltd. — D.S.C./W.D.N.C. (2013), asserting U.S. 7,737,843 ('843), a related programmable-alarm-module patent (filed Aug. 14, 2013).
• InVue Security Products Inc. v. Vanguard Products Group, Inc. — M.D. Fla., Case No. 8:18-cv-02548, filed Oct. 16, 2018 (patents asserted not confirmed as '110).
• InVue v. Mobile Tech, Inc., D. Or. 3:19-cv-00407 — asserts U.S. 9,830,787 and 10,055,954 ("Merchandise security system including retractable alarming power cord"), not the '110 patent.
• Various MTI-v-InVue IPRs on sibling patents: IPR2016-00892, -00895, -00896, -00898, -00899, -01241, -01915, IPR2017-00344, -00345, IPR2018-00481, -01138, and PGR2018-00004 (all different patents).

Summary table

Bottom line: The '110 patent's principal known litigation is the InVue v. Mobile Tech dispute (W.D.N.C. 3:16-cv-00734, later consolidated into D. Or. 3:17-cv-01356-SI), the related N.D. Cal. 3:17-cv-00075 action, the consolidated PTAB IPRs 2017-01900/01901 in which all claims 1–36 were held unpatentable, and the resulting CAFC appeal 19-1779.

Verification gaps (stated explicitly rather than guessed)

1. I could not confirm the disposition of CAFC 19-1779.
2. The patent-to-case linkage for N.D. Cal. 3:17-cv-00075 is not independently confirmed for the '110 patent specifically.
3. Google Patents names "Unified Patents" as PTAB petitioner, which conflicts with the PTAB records naming Mobile Tech, Inc. — I have reported both.
4. Southern District of New York Docket No. 13-cv-03926 (InVue v. Kum Oh) asserts the '843 patent, not '110 — included only to distinguish it.

I'll start by researching the two PTAB proceedings the patent's own front page references, plus the Federal Circuit appeal.

Strong leads. Now let me pin down the Federal Circuit disposition and claim-level detail from the FWD.

PTAB Proceedings — US 9,478,110 B2 ("Programmable security system and method for protecting merchandise," InVue Security Products Inc.)

⚠️ Data-source conflict — flagged up front. The structured "PTAB proceedings on file" block supplied with this task states that the USPTO ODP API returns no AIA trial proceedings for this patent. That appears to be a stale/incomplete ingest. The patent's own front page (Google Patents, fetched 2026-09-30) carries two PTAB entries for this patent — IPR2017-01900 and IPR2017-01901, each marked "(Final Written Decision)" — and both are independently confirmed in PTAB docket records (RPX Insight, Docket Alarm, Patexia) and in the FWD itself. I am therefore reporting two proceedings, not zero, and treating the ODP "no activity" result as unreliable for this patent.

Proceedings overview

Two AIA trials on file — both Inter Partes Reviews, both filed by Mobile Tech, Inc. (a direct competitor, not a defensive aggregator), both instituted, both resolved in the petitioner's favor with a combined Final Written Decision holding all 36 claims of the '110 patent unpatentable; the patent owner's appeal was taken to the Federal Circuit (19-1779).

• Active: 0
• Claims invalidated: 2 of 2 (all of claims 1–36 across both proceedings)
• Claims sustained: 0
• Settled: 0 — both went to a merits FWD
• Institution denied: 0 (IPR2017-01900 was partially instituted in the sense that claim 10 was not instituted in that case, but the parallel IPR2017-01901 instituted all claims 1–36)

Bottom line for a defendant: this patent has no live claims. The PTAB cancelled claims 1–36 in their entirety on 2019-02-12. If a demand letter or complaint asserts US 9,478,110, the assertion is effectively dead on arrival — there is nothing left to infringe. The real defensive work today is checking whether the plaintiff is actually asserting a later continuation in the same InVue family (e.g., US 11,017,556; US 11,763,664; US 12,205,457; US 12,431,005), because those are different patents that MTI's IPRs did not reach.

IPR2017-01901 — Mobile Tech, Inc. v. InVue Security Products Inc.

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2017-07-31
• Status: Final Written Decision — All Claims Unpatentable (PTAB docket status "FWD Entered"; case terminated 2019-02-12)
• Judge panel: Stacey G. White (opinion author), Justin T. Arbes, Daniel J. Galligan. (RPX lists the panel head as "Daniel John Galligan +3"; the three-APJ composition above is what Patexia and the FWD caption reflect.)
• Petition grounds: All 36 claims challenged. § 103(a) obviousness over Uchida (JP Published Patent Application 1997-259368); § 103 over Uchida + Burri (EP 0745747 A1); and § 103(a) over Rothbaum (U.S. 5,543,782) + Denison (U.S. Pub. 2004/0201449).
• Institution decision: Instituted 2018-02-13 on all claims 1–36 (Paper 13).
• Final Written Decision: Paper 34, entered 2019-02-12 (71 pages); public redacted version docketed as Paper 38 on 2019-03-08. The Board consolidated IPR2017-01900 and IPR2017-01901 for a single decision under § 315(d) and held: "we determine that Petitioner has shown by a preponderance of the evidence that claims 1-36 of the '110 patent are unpatentable." Combined oral hearing held 2018-11-07.
• Settlement / termination: None. A contested merits decision; the parties litigated real-party-in-interest and evidentiary disputes through to FWD.
• Appeal: Yes. InVue filed its Notice of Appeal on 2019-04-16, docketed at the Federal Circuit as 19-1779 (filed 2019-04-17). Issues on appeal, per InVue's notice: (i) the Board's denial of InVue's request to dismiss for MTI's alleged failure to comply with §§ 312(a)(2) and 315 (real-party-in-interest / privity); and (ii) the obviousness determinations over Uchida, Uchida+Burri, and Rothbaum+Denison. I could not verify the disposition of 19-1779 with high confidence — the last docket activity I located is 2019-09-09 and no opinion text surfaced. I am not going to fabricate an outcome. Note, however, that in InVue's parallel appeals on sibling patents the Federal Circuit issued Rule 36 affirmances on 2019-03-08 (Nos. 2018-1236/-1238/-1239/-1304 and 2018-1889/-1898), which is the pattern this family has drawn.
• Defensive value: Every claim of the patent was cancelled here. There is no claim left to assert; a plaintiff citing '110 is citing a dead patent.

IPR2017-01900 — Mobile Tech, Inc. v. InVue Security Products Inc.

• Type: Inter Partes Review
• Filed: 2017-07-31
• Status: Final Written Decision — All Claims Unpatentable
• Judge panel: Same panel — Stacey G. White (author), Justin T. Arbes, Daniel J. Galligan
• Petition grounds: Same three grounds as IPR2017-01901 (Uchida; Uchida + Burri; Rothbaum + Denison). All 36 claims were challenged in the petition; the Board instituted on claims 1–9 and 11–36 — claim 10 was not instituted in this proceeding (Paper 13, 2018-02-13). Claim 10 was nonetheless adjudicated because it was instituted in the parallel IPR2017-01901.
• Institution decision: Partially instituted 2018-02-13 (claim 10 not instituted here).
• Final Written Decision: Paper 34, 2019-02-12, issued jointly with IPR2017-01901. Claim-level mapping as stated in the decision and in InVue's Notice of Appeal:
  • Claims 1–7, 9, 11–17, 19–24, and 26–36 — unpatentable under § 103(a) as obvious over Uchida
  • Claims 8, 18, and 25 — unpatentable under § 103 over Uchida + Burri
  • Claims 1–17 and 19–36 — unpatentable under § 103(a) as obvious over Rothbaum + Denison (this is the ground that reaches claim 10)
  • Net: all of claims 1–36 unpatentable.
  • Representative reasoning quoted from the FWD on the Rothbaum/Denison ground: "We find that Denison's laptop includes a circuit for generating codes and, as discussed above, these codes are unique because they are generated randomly… we determine that Petitioner has shown by a preponderance of the evidence that dependent claims 14, 16, 17, 19, 26, and 34 would have been obvious over Rothbaum and Denison." On the "switch" claims (e.g., claim 15 depending from claim 14; claims 28 and 29 depending from claim 27, which depends from claim 24): "We agree that it would have been obvious to use a mechanical computer part, such as a keyboard button or mouse button, to actuate the laptop's logic control circuit thereby causing the generation of a unique security code…" The panel expressly distinguished its contrary finding in IPR2016-01915 (a sibling patent), where the claim required an "ON/OFF switch … activated by a 'mechanical key'" and the petitioner had failed to identify the corresponding structure.
• Settlement / termination: None — contested to FWD.
• Appeal: Same 19-1779 appeal, which consolidated review of both IPRs (InVue's notice of appeal is captioned in "Cases IPR2017-01900 and IPR2017-01901").
• Defensive value: Belt-and-suspenders to IPR2017-01901 — the same claims fell on overlapping grounds, so even if one ground were vacated on appeal, the others independently support unpatentability. For a defendant, the two proceedings together mean there is no plausible route to revive '110's claims.

Procedural note surfaced in the FWD and worth knowing for estoppel purposes: InVue moved to dismiss on real-party-in-interest grounds, arguing that MTI Holdings, LLC / ITM, MTI Buyer, Inc., MTI Intermediate, Inc., Mobile Tech Holdings, Inc. (MTHI), and Vestar funded and controlled the IPRs. The Board rejected that challenge, finding the record did not demonstrate the requisite degree of funding or control ("we do not agree that the record demonstrates a degree of funding or control with respect to the instant proceedings indicative of a real party-in-interest"). That finding matters for who is stamped with § 315(e)(2) estoppel. The FWD also records that MTI had filed IPR/PGR petitions on related patents in IPR2016-00892, -00895, -00896, -00898, -00899, -01241, -01915, IPR2017-00344, -00345, IPR2018-00481, -01138, and PGR2018-00004, and that the '110 patent was originally asserted in InVue v. Mobile Tech, No. 3:16-cv-00734 (W.D.N.C.), consolidated and transferred to the District of Oregon.

Strategic summary

Claim status of US 9,478,110 — CANCELED. All 36 claims were held unpatentable. There are no surviving claims, no dependent claims held patentable, and no claims left untested: the FWD's ground-by-ground mapping covers 1–36 exhaustively (Uchida for the bulk; Uchida+Burri for claims 8, 18, 25; Rothbaum+Denison for claims 1–17 and 19–36, which picks up claim 10 that IPR2017-01900 did not institute). If a demand letter or complaint asserts '110 specifically, the response is that the patent is unenforceable for lack of claims — verify the certificate of cancellation in PTAB E2E (https://ptacts.uspto.gov/ptacts/) and attach the FWD.

Estoppel landscape. Under § 315(e)(2), Mobile Tech, Inc. — and any party later shown to be its privy or real party in interest — is estopped in district court from raising any ground it raised or reasonably could have raised in these two IPRs, which sweeps in Uchida, Uchida + Burri, and Rothbaum + Denison, plus any art a skilled searcher could reasonably have paired with those references. The Board declined to hold MTHI/ITM/Vestar to be RPIs, so estoppel does not automatically extend to those entities on this record. Critically for a different defendant now being asserted against: § 315(e)(2) is party-specific — you are not estopped. You may run the same Uchida/Rothbaum/Denison art yourself, and you may run new art MTI never used. You get the FWD's reasoning as a roadmap (highly persuasive, and a serious § 282/§ 103 weapon in a district court case), but it is not binding on a court that was not a party to the IPR. In practice this rarely matters on '110 itself because there is nothing left to invalidate — the estoppel question is only live if you are asserting these grounds against the continuation patents.

Pattern signals. (1) Same petitioner, many patents: MTI filed at least a dozen IPR/PGR petitions against InVue's merchandise-security portfolio (listed in the FWD), and the 2017 filings here were the second wave after the 2016 wave (IPR2016-00892/-00895/-00896/-00898/-00899). (2) No defensive aggregator: despite the "Unified Patents" label sometimes attached to InVue PTAB data in aggregator databases, the petitioner on '110 is Mobile Tech, Inc., a competitor in retail merchandise security — this is a commercial rival with live district-court litigation (W.D.N.C. 3:16-cv-00734, later consolidated to D. Or.), not an NPE-defense fund. (3) Patent owner litigates appeals aggressively: InVue appealed multiple adverse FWDs in this family (e.g., IPR2016-01241 on the '846 patent, notice of appeal filed 2018-02-20; and 19-1779 here), though its appeals have largely resolved as Rule 36 affirmances. (4) Continuation strategy: InVue has kept this family alive by prosecuting continuations (US 9,576,452; 9,659,472; 10,013,867; 10,003,113; 10,403,122; 10,602,266; 11,017,556; 11,721,198; 11,763,664; 12,205,457; 12,431,005), so an invalidation of '110 does not neutralize the portfolio — it just moves the target.

Recommended next steps

1. If you are a defendant and the patent asserted is US 9,478,110: the claims are cancelled. Pull and attach the Final Written Decision — public redacted version (Paper 38, filed 2019-03-08) at:
   https://www.docketalarm.com/cases/PTAB/IPR2017-01901/Inter_Partes_Review_of_U.S._Pat._9478110/docs/03-08-2019-Board/Notice-38-Final_Written_DecisionREDACTED.pdf
   Quote the disposition verbatim: "we determine that Petitioner has shown by a preponderance of the evidence that claims 1-36 of the '110 patent are unpatentable." Confirm the certificate of cancellation in PTAB E2E (https://ptacts.uspto.gov/ptacts/) before filing anything.
2. Confirm what patent is actually being asserted. If the demand cites a later continuation sharing the '110 disclosure (e.g., US 11,017,556 / 11,763,664 / 12,205,457), the '110 FWD is persuasive but not binding, and IPR estoppel does not help you. Build your invalidity case by importing the FWD's Uchida / Rothbaum+Denison reasoning (same specification, so the same claim-construction positions are portable) and supplement with new art.
3. Verify the appeal disposition of 19-1779 before relying on finality. I could not confirm the Federal Circuit's disposition. Check the CAFC docket (https://dockets.justia.com/docket/circuit-courts/cafc/19-1779) and CourtListener for the mandate. Given that the Board's decision rests on three independent grounds covering the claim set, a reversal would have to knock out all three — a low-probability outcome and a useful argument for settlement posture regardless.
4. Calendar check — nothing to calendar. There are no pending trial-stage milestones: no institution deadline, no oral hearing, and no FWD due date remains. Both trials terminated 2019-02-12.
5. Do not expect a new IPR to rescue you on '110. There is no reason to file one — the claims are already gone, and any new petition on '110 would be an estoppel/waste problem. Spend the budget on the asserted continuation instead.
6. Note the "no PTAB activity" ODP result is wrong here, and treat ODP "AIA trial" tiles as unreliable for this family absent corroboration. The patent's own front-page litigation section and the PTAB dockets are the better source.

Caveat on one citation artifact: a Google Patents reference-strings entry cites the decision as "Final Written Decision of Inter Partes Review of U.S. Pat. No. 9,748,110, dated Feb. 12, 2019, 71 pages (IPR2017-01900 and IPR2017-01901)." The correct number is 9,478,110; the "9,748,110" string appears to be a transcription error in that document's reference list. I note it rather than silently correcting it.

I'll start by pulling what I can from public sources on this patent's ownership record.

Let me dig into the litigation and ownership records for InVue.

Now let me pin down the actual recorded assignment records for this patent.

Ownership analysis — US 9,478,110 B2

Access note (read first). I was unable to complete a live query of the USPTO Assignment Center / Assignment Search within this session, so I could not extract reel/frame numbers, execution dates, or correspondent fields for US 9,478,110. Everything below is limited to (a) the authoritative patent text supplied, (b) Google Patents legal events / litigation links on the patent page, and (c) third-party records surfaced by search. Where I have no verified record, I say so rather than infer. Verification links are in the Verdict section.

Inventors

Grounding: the sibling PCT application in this family, PCT/US2006/048515 (published as WO2007/075738 A3, "Programming Station For A Security System For Protecting Merchandise"), names applicant InVue Security Products, Inc., 15015 Lancaster Highway, Charlotte, NC 28277, and names inventors Scott, Fawcett and Marsilio with those residential addresses. The '110 patent itself is assigned on its face to InVue Security Products Inc.

Unusual-pattern check: No evidence of any inventor departing the assignee within 12 months of filing, and no evidence of a founder-inventor exodus preceding a sale. The single-inventor concentration concern does not apply. I have no data on inventor employment after 2006 and will not speculate. Note that three of the five named inventors (Fawcett, Grant and Belden) recur across InVue's merchandise-security portfolio for two decades, which is a retention pattern, the opposite of the fire-sale tell.

Original assignee

InVue Security Products Inc., Charlotte, North Carolina (facility addresses of record: 15015 Lancaster Highway; later 9201 Baybrook Lane).

• Line of business: Design and manufacture of retail merchandise protection and access-control hardware — alarm modules / display stands ("POD" series, incl. Series 950, 1000 and 2000), recoilers, tether and cable alarms, locking displays, garment tags, mechanical and programmable electronic keys, programming stations and charging stations. This is precisely the subject matter of the '110 claims.
• Product-embodying-claims: Yes. InVue's own complaints describe it and Mobile Tech, Inc. ("MTI") as competitors "in the manufacture and sale of retail merchandise security systems," and InVue sought "lost sales revenue caused by MTI's sales of the Accused Products" — i.e., InVue ships commercial product reading on this family. See https://cases.justia.com/federal/district-courts/oregon/ordce/3:2019cv00407/144145/37/0.pdf.
• Current status: Operating. Acquired by ASSA ABLOY AB (publ) on 2025-01-24 (co. release: https://invue.com/resource-center/news/assa-abloy-acquires-invue). Reported ~260 employees; 2024 sales ≈ US$165M; described as accretive to EPS. Not dissolved, not in bankruptcy, not an NPE holding vehicle. Google Patents still lists "Current Assignee: InVue Security Products Inc." because the ASSA ABLOY deal was a corporate/share acquisition rather than a recorded patent-by-patent assignment.

Assignment timeline

Finding: I retrieved no reel/frame record of any assignment executed on, or recorded against, US 9,478,110. Google Patents' legal-events stream for the patent (https://patents.google.com/patent/US9478110/en) shows only: priority claim from US 11/639,102 (2006-12-14); "2016-02-18 Application filed by InVue Security Products Inc"; publication (2016-06-09); grant (2016-10-25). There is no assignment/change-of-ownership event in that stream, and no post-issuance assignee change. Because the applicant of record was already InVue at filing, the inventors' rights were conveyed to InVue before or at filing (the family traces to 2006), and no subsequent assignment of this patent has been recorded that I could verify.

Consequently the chronological list is:

• (none verified) — no recorded assignment of US 9,478,110 evidenced by any source I could reach. Under USPTO practice this is the expected state where the original assignee still owns the patent.

Context record that is not an assignment of this patent (flagged so it is not miscounted): USPTO Patent Assignment 48572/419, executed 2014-05-15 / 2014-05-20, recorded 2019-03-12 — Assignment of Assignors Interest, assignors Grant, Jeffrey A.; Taylor, Gary A.; Schultz, Robert; Fawcett, Christopher J.; McKinney, Larry T.; Burmeister, Kirk, II; Sankey, James K. → assignee InVue Security Products Inc., 15015 Lancaster Highway, Charlotte, NC 28277. This covers application 16/274,538 ("Alarming Cables, Assemblies, And Systems"), not the '110 patent, and is included only because it exposes InVue's correspondent of record practice.

• Correspondent on 48572/419: InVue Security Products Inc., 9201 Baybrook Lane, Charlotte, NC 28277 — i.e., InVue self-records, using in-house correspondence (Trent A. Kirk, InVue in-house counsel, is the correspondence address on InVue applications as well). No outside recording agent.
• Outside prosecution firm of record on this family's 2006-era filings: Joseph A. Sebolt, Sand & Sebolt, Aegis Tower Suite 1100, 4940 Munson Street NW, Canton, OH 44718 (named as agent on WO2007/075738 A3). This is a traditional prosecution shop, not a known NPE recording agent.
• Litigation counsel observed (not assignment correspondents): Meunier Carlin & Curfman LLC (Atlanta) and Moore & Van Allen PLLC (Charlotte) for InVue; Thompson Coburn LLP for MTI.

Timeline diagram

timeline
    title Ownership of US 9478110
    2005 : Priority provisional filed
    2006 : Family app filed by InVue
    2016 : Continuation filed by InVue
         : Patent issued 25 Oct 2016
         : InVue sued Mobile Tech
    2017 : Mobile Tech filed two IPR petitions
    2019 : PTAB invalidated all claims
         : CAFC appeal 19-1779
    2025 : InVue acquired by ASSA ABLOY

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT. No transfer of the '110 patent to any "IP / Patents / Licensing / Holdings / Ventures" entity. Chain holder before and after 2016 is InVue Security Products Inc., an operating manufacturer (Google Patents legal events; ASSA ABLOY release 2025-01-24). The only 2025 event is a parent-level acquisition by an industrial buyer, not a transfer to a licensing LLC, and no single-purpose Delaware/Texas LLC appears.

2. Known asserter in the chain — NOT PRESENT. Neither InVue nor ASSA ABLOY appears on NPE rosters (Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant/Mosaid, Vringo, Pendrell, Round Rock, Spangenberg entities, etc.). The inverse is true: this patent family was asserted by InVue as a manufacturer against a competitor — InVue Sec. Prods. Inc. v. Mobile Tech, Inc., W.D.N.C. 3:16-cv-00734 and N.D. Cal. 3:17-cv-00075 (per the litigation links on the Google Patents page), plus InVue's parallel W.D.N.C. actions on sibling patents '762/'800/'247. Claimed relief was lost sales and an injunction under §283 — classic competitor litigation.

3. Repeat correspondent across the chain — NOT PRESENT / UNCLEAR. No assignment correspondents exist to compare, because no assignment of this patent was located. For completeness: the only recurring pattern is InVue self-recording with in-house correspondence (record 48572/419), and Sand & Sebolt for 2006-era prosecution. Neither name appears on Unified Patents / RPX / Patent Progress NPE-assertion correspondent lists that I surfaced. Not a finding.

4. Cascading transfers — NOT PRESENT. Zero recorded transfers, therefore no chain of LLCs and no shared correspondent addresses. A related (non-NPE) pattern is worth noting neutrally: this patent sits in a very large InVue continuation family (the specification recites the chain 15/047,218 ← 14/825,436 ← 14/529,516 ← 14/254,244 ← 13/169,968 ← 12/770,321 ← 11/639,102, and the '110 page itself is cited as the child of US 11/639,102). That is standard portfolio breadth-building by an operating company, not an NPE tell.

5. Pre-litigation transfer — NOT PRESENT. The '110 patent issued 2016-10-25 and was asserted by its owner of record, InVue, with no intervening assignment. No owner-change was needed to create standing or seat venue; InVue is a North Carolina company that sued in North Carolina (and one action was later transferred out of California on the defendant's motion in the related case, W.D.N.C. 3:18-cv-00052).

6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 of InVue or any prior owner is evidenced. The 2025 event is a going-concern trade sale to ASSA ABLOY with positive EBIT and accretive-EPS language — the opposite of a distressed patent sale.

7. Privateering — NOT PRESENT. InVue did not hand the patent to an NPE to assert on its behalf. It sued in its own name, with its own products, against a direct competitor (MTI), exactly the operating-company model.

8. Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT, Unified Patents or OIN. Note the distinction: RPX Insight's page for IPR2017-01900 (https://insight.rpxcorp.com/ptab/7461-mobile-tech-v-invue-security-products-incorporated-ipr-of-110) exists because Mobile Tech — not a defensive aggregator — filed the petition against InVue. RPX is only the reporter here, not a transferee.

Additional neutral fact materially affecting the asset (not an NPE signal): the '110 patent is a dead asset. Mobile Tech filed IPR2017-01900 and IPR2017-01901 on 2017-07-31; both reached Final Written Decisions on 2019-03-08 with all claims unpatentable (RPX Insight), appealed as CAFC 19-1779. Google Patents now shows legal status "Expired – Fee Related" with anticipated expiration 2026-12-14.

Verdict

Operating-company assertion.

Justification: the named assignee on the issued patent and the continuing owner is InVue Security Products Inc., a Charlotte-based manufacturer of the very merchandise-security hardware the claims cover (alarm modules, programmable keys, programming stations), which sued direct competitor Mobile Tech, Inc. on this family in W.D.N.C. 3:16-cv-00734 and N.D. Cal. 3:17-cv-00075 seeking lost sales and an injunction. No security-interest, licensing-LLC, shell, bankruptcy or defensive-aggregator assignment appears anywhere in the record I could retrieve, and the 2025 change of control (ASSA ABLOY, 2025-01-24) is an operating-buyer acquisition, not a transfer-to-asserter. Caveat: because I could not pull reel/frame entries from the Assignment Center in this session, the absence of recorded assignments is based on the patent's Google Patents legal-events stream and third-party records, not a direct USPTO query — please confirm at the links below.

Verification links:

• USPTO Assignment Center (search patent 9478110): https://assignmentcenter.uspto.gov/
• USPTO Assignment Search by patent number: https://assignment.uspto.gov/patent/index.html#/patent/search/result?q=%229478110%22
• Google Patents legal events for the patent: https://patents.google.com/patent/US9478110/en
• InVue v. MTI (competitor litigation): https://cases.justia.com/federal/district-courts/oregon/ordce/3:2019cv00407/[144145](/patent/144145)/37/0.pdf
• IPR2017-01900 record: https://insight.rpxcorp.com/[ptab](/ptab)/7461-mobile-tech-v-invue-security-products-incorporated-[ipr](/resources/cost-of-inter-partes-review)-of-110
• ASSA ABLOY / InVue transaction: https://invue.com/resource-center/news/assa-abloy-acquires-invue

One open item to close the file: confirm directly in the Assignment Center whether an inventors→InVue assignment was recorded against application 15/047,218 / patent 9,478,110 (I found only the sibling recording 48572/419), and capture its reel/frame and correspondent. That is the single gap preventing a fully reel/frame-cited chain.

I'll research US Patent 9,478,110 and its cited prior art. Let me run several searches.

Let me get the specific citation tables for this patent.

Let me look for the actual "References Cited" section on the patent face.

US 9,478,110 B2 — Programmable Security System and Method for Protecting Merchandise

Bibliographic identification (from the authoritative patent text):

• Patent No.: US 9,478,110 B2; App. No. US 15/047,218; filed 2016‑02‑18; granted 2016‑10‑25
• Title: Programmable security system and method for protecting merchandise
• Inventors: Christopher J. Fawcett; Jeffrey A. Grant; Dennis D. Belden, Jr.; Ronald M. Marsilio; Ian R. Scott
• Assignee: InVue Security Products Inc.
• Priority: 2005‑12‑23 (via U.S. Provisional 60/753,908 → 11/639,102 → 12/770,321 → 13/169,968 → 14/254,244 → 14/529,516 → 14/825,436)
• Status: Expired – Fee Related; anticipated expiration 2026‑12‑14

Claim structure: Two independent claims — claim 1 (system) and claim 24 (method) — plus dependent claims 2–23 and 25–36.

Important caveat on sources

I was able to confirm the prior‑art references that were actually applied against US 9,478,110, but I was not able to retrieve the patent's full front‑page "(56) References Cited" list verbatim in this session (the Google Patents citation table did not render in the retrieved text, and the free‑full‑text source query was cut off by a tool limit). What follows is grounded in the PTAB Final Written Decision in IPR2017‑01900 / IPR2017‑01901 and the related CAFC appeal record, which identify the references precisely. If you need the raw front‑page citation list, it should be pulled directly from the USPTO PatentCenter/Global Dossier record for 15/047,218 — I have flagged this rather than guessing at entries.

Primary prior art applied against the '110 patent

All four references below were applied by the PTAB under 35 U.S.C. § 103(a) (obviousness) — not § 102 anticipation. I note that distinction explicitly because the question asked which claims each reference "potentially anticipates under § 102"; as a matter of record, the Board's holding was obviousness, and the § 102 framing below is my own analytic read of where the references would most plausibly map, not the Board's holding.

1. U.S. Patent No. 5,543,782 — Rothbaum et al. ("Rothbaum")

• Citation: U.S. Patent No. 5,543,782 to Rothbaum et al.
• Dates: Filed 1994; issued August 6, 1996 (I am confident on the 1996 issue year; I did not independently re‑verify the exact day in this session).
• Assignee/field: Se‑Kure Controls‑type merchandise security. Per the Board: a retail/hotel theft‑prevention alarm system; Fig. 1 depicts a "twelve jack security system 10 … which can protect twelve items of merchandise"; sensor 24 attached to article 22; item cord 28 to alarm circuitry in housing 12; alarm horn 126 sounds until key switch 38 is turned from ON to SET.
• Disclosure relevant to the '110 claims: merchandise alarm module with attachment cord/sense loop and alarm; key‑switch arming/disarming.
• Claims implicated: Applied in Ground 3 against claims 1–17 and 19–36 combined with Denison. Rothbaum supplies the merchandise‑security/alarm/sense‑loop substrate; it does not alone disclose the programmed unique security code.

2. U.S. Patent Application Publication No. 2004/0201449 A1 — Denison et al. ("Denison")

• Citation: U.S. Patent Pub. No. 2004/0201449 A1 to Denison et al.
• Publication date: October 14, 2004 (pre‑dates the 2005‑12‑23 priority date by ~14 months).
• Disclosure: Vending‑machine electronic locks and electronic keys; access controlled by a match between codes stored in the electronic key and the electronic lock. Fig. 17 describes field‑programming the lock via an external computing device 426 whose memory holds "access code or codes"; database 436 may "contain programs for computing new access codes and generating control parameters," and codes may be generated randomly or as a function of time. Fig. 9/¶23, 60–61 describe programming operational limits into a key (e.g., keys limited to certain hours, rendered inactive outside work hours).
• Claims implicated: Ground 3, claims 1–17 and 19–36 (with Rothbaum). The Board specifically relied on Denison for: a circuit generating unique/random codes; changing the security code; and key time limits.
• Dependent‑claim notes from the Decision: claims 14, 16, 17, 19, 26, 34 held obvious over Rothbaum + Denison (Denison's laptop = code‑generating logic control circuit; laptop keyboard/trackpad button as the actuating "switch" for claims 15 and 27–29).

3. Japanese Published Patent Application No. 1997‑259368 — Uchida ("Uchida")

• Citation: Japanese Published Patent Application No. 1997‑259368 to Uchida.
• Publication date: 1997 (Heisei 9). Pre‑dates the priority date.
• Disclosure: Theft‑prevention (EAS‑type) tags with an encryption code; Fig. 7 shows the encryption code as the last four digits of a "reset code"; abstract states the purpose is "providing theft prevention tags for which a different reset code can be set for each store." A microcomputer 10 and a "remote control key (TRK)" installed at a cash register in the store; components kept in the store safe; system expressly distinguishes adjacent‑store operation as the problem to be solved.
• Claims implicated: Ground 1 — claims 1–7, 9, 11–17, 19–24 and 26–36; Ground 2 (with Burri) — claims 8, 18 and 25. The Board accepted that Uchida teaches programming in a retail store, a per‑store unique/not‑person‑chosen code (random generation being obvious), and store‑specific deactivation.

4. European Published Patent Application No. 0745747 A1 — Burri ("Burri")

• Citation: European Published Patent Application No. 0745747 A1 to Burri.
• Publication date: 1996 (I did not re‑verify the precise day in this session).
• Role: Secondary reference combined with Uchida for the subject matter of claims 8, 18 and 25. I do not have a verified substantive description of Burri's disclosure from the retrieved sources and will not fabricate one.

PTAB / CAFC outcome (material to any prior‑art analysis)

• IPR2017‑01900 and IPR2017‑01901, Petitioner Mobile Tech, Inc. v. InVue; filed 2017‑07‑31; instituted 2018‑02‑13; Final Written Decision 2019‑03‑08.
• Result: "claims 1‑36 of the '110 patent are unpatentable" — i.e., all claims. Grounds:
  1. Uchida — § 103(a): claims 1‑7, 9, 11‑17, 19‑24, 26‑36
  2. Uchida + Burri — § 103: claims 8, 18, 25
  3. Rothbaum + Denison — § 103(a): claims 1‑17, 19‑36
• InVue noticed an appeal to the CAFC (Case No. 19‑1779, filed 2019‑04‑16).
• Decision document: https://www.docketalarm.com/cases/PTAB/IPR2017-01901/Inter_Partes_Review_of_U.S._Pat._9478110/docs/03-08-2019-Board/Notice-38-Final_Written_DecisionREDACTED.pdf
• PTAB portal: https://portal.unifiedpatents.com/ptab/case/IPR2017-01900 and https://portal.unifiedpatents.com/ptab/case/IPR2017-01901

Forward citations (patents citing the '110 patent) — for completeness

Not prior art to the '110 patent, but they appear in its citation graph and corroborate its field:

• US 5,155,684 (Electronic article surveillance) — cites US 9,478,110
• US 5,942,978 (Wireless transmitter key for EAS tag detacher unit) — cites US 9,478,110
• US 5,955,951 (Combined article surveillance and product identification system) — cites US 9,478,110
• Same‑family continuations also listing 2005‑12‑23 priority: US 9,396,631; US 10,600,313; US 8,884,762; US 7,969,305; US 9,269,247; US 8,890,691; US 10,403,122; US 9,171,441; US 9,135,800.

Bottom line

• The four references that matter for US 9,478,110 are Rothbaum (US 5,543,782), Denison (US 2004/0201449 A1), Uchida (JP 1997‑259368), and Burri (EP 0745747 A1).
• Under the Board's actual holding, every claim 1–36 was held unpatentable as obvious under § 103 — so on the PTAB record there is no surviving claim and therefore no live § 102 anticipation question. My § 102 mapping above (which independent claims 1 and 24 each reference would implicate) is analytic, not the Board's basis.
• If you specifically need the patent's own front‑page "References Cited" list (which may include additional U.S. patents not reached in the IPR), that should be pulled directly from USPTO PatentCenter for application 15/047,218; I could not verify that list in this session and have not invented entries for it.

I'll verify the prior-art references before building the § 103 analysis.

Obviousness analysis — US 9,478,110 B2 under 35 U.S.C. § 103

0. What I used as the "prior art" input, and what I could not verify

I want to be explicit about the evidentiary basis, because it affects how much weight you should give each ground below.

• The fetched Google Patents text you supplied contains no prior-art citation list. The only "prior art" field on the page is the keyword block — "key, security, programmable, security device, unique" — which is an auto-generated keyword index, not a reference list. So I could not work from a "Prior Art" citation table on this page; I worked from (a) the prior-art references identified in the previously generated section (the PTAB ground from IPR2017‑01900/01901), and (b) whatever I could independently confirm in this session.
• Verified in this session: US 2004/0201449 A1 → Denison et al., published 2004‑10‑14, issued as US 7,821,395 B2 ("Vending Machines With Field-Programmable Locks," App. 10/838,449, filed 2004‑05‑04, CIP of 10/329,626 now US 6,900,720, prov. 60/344,221 filed 2001‑12‑27, Micro Enhanced Technology, Inc.) — https://patentimages.storage.googleapis.com/1a/47/1f/7c9b94d4e522c5/US7821395.pdf
• Verified: EP 0 745 747 A1, "A data transfer system and a demodulator therefor," published 11/1996 — https://patents.google.com/patent/EP0745747A1/en. Disclosure: short-range contactless data transfer, "reader"/"tag" pairing, "primary and secondary energy transceivers comprise electromagnetic coils," energy transferred from reader to tag to power a passive tag, tag returns coded data, tag data "recoded so that it will be different the next time," and demodulation of "encrypted messages." The previously generated section attributes this document to "Burri"; I could not verify the inventor/assignee name in this session, so I refer to it by number only.
• Verified as cited: "U.S. Patent No. 5,543,782 to Rothbaum et al." — confirmed as an actual reference used by the Board, quoted in a Federal Circuit notice of appeal in IPR2018‑00481: "claims 1–35 of U.S. Patent No. 9,576,452 … are unpatentable under 35 U.S.C. § 103(a) as obvious over U.S. Patent No. 5,543,782 to Rothbaum et al. ('Rothbaum') and U.S. Patent Application Publication No. 2004/0201449 to Denison et al. ('Denison')." (https://insight.rpxcorp.com/federal_circuit/[776549](/patent/776549)/rpx-ptab/IPR2018-00481/IPR2018_00481__20190917__Notice_of_Appeal_a73cbdf4c63b06b1118af75423c3c1c0.pdf). I could not retrieve Rothbaum's title, filing data or abstract, so my characterization of its disclosure is inferred from how the Board used it against a sibling InVue patent, not from the document itself. Flag that.
• Verified: US 7,373,352 B2 (Roatis, Denison et al., "Electronic Key-Control and Management System for Vending Machines," filed 2004‑12‑13) — https://patentimages.storage.googleapis.com/13/83/a3/f74c2259934c31/US7373352.pdf. Abstract: "uses a computer and database to limit operation and parameters of electronic keys, customize the key limits, refresh keys, and collect, store and sort a host of data." This is a 2004‑filed Micro Enhanced Technology reference and is not the same inventive entity as the '110, so it is clean art.
• NOT verified in this session: the identity, Japanese publication number and content of the reference the earlier section calls "Uchida (JP 1997‑259368)." Two searches returned nothing. I treat the number and attribution as unconfirmed, and I have written Ground A so that it stands or falls on the Uchida characterization being correct.
• Two date/consistency flags. (1) The page you supplied states the fetch timestamp as 2026‑09‑30 while the task header says current date 2026‑04‑26; my analysis of § 103 does not depend on the date, but the discrepancy exists. (2) Google Patents lists the '110 as "Expired – Fee Related" and "Anticipated expiration 2026‑12‑14." Those are hard to reconcile for an annuity-based lapse of a patent whose term runs to 2026; I treat the legal-status field as unreliable and note it rather than resolving it.

Also, per the operating rules: the '110's claims were held unpatentable by the Board, so the analysis below is written as a validity/reasoning exercise (useful for the surviving continuation family — US 11,721,198, US 12,205,457, US 2025/0166486 A1) rather than as live litigation advice.

1. Claim scope being tested

From the earlier section (and cross-checked against the IPR claim ranges): 36 claims, independent claim 1 (system) and claim 24 (method, parallel). Claim 1 in substance recites:

Dependents 2–23 / 25–36 add: wireless IR vs. electrical-contact vs. inductive (incl. magnetic-induction) data communication; power transfer from the key's internal battery to a lock mechanism; a timer invalidating the key after a predetermined period (96 h; 6–12 h in key 205); a counter permanently inactivating the key after N activations; permanent SDC storage at the security device; a "handshake"/authentication exchange; plural keys and plural security devices; a "master key" vs. "employee key" hierarchy; and the passive-device/charging-station features of the key‑205/305 embodiments (FIGS. 23–28A).

Governing law. The '110 was filed 2016‑02‑18 but is a straight continuation claiming back through 11/639,102 (2006‑12‑14) to provisional 60/753,908 (2005‑12‑23). For the original-disclosure claims, the effective filing date is 2005‑12‑23 — pre‑AIA § 103(a) and pre‑AIA §§ 102(a)/(b)/(e). For the power-transfer/inductive/key‑205‑305 dependent claims, the first support is the CIP 13/169,968 filed 2011‑06‑27 — still pre‑AIA (AIA § 102/103 applies only to applications with a claim ever having an EFD on/after 2013‑03‑16; nothing in this chain appears to reach that). Confidence: high on the two candidate priority dates, moderate on the AIA/pre‑AIA conclusion, since I have not inspected whether any claim was ever presented with 2016-only new matter.

The critical art-status trap. The '110's own specification incorporates US 7,737,843 (programmable alarm module), US 7,737,844 (programming station) and US 7,737,845 by reference, and the programming-station and alarm-module structure claim elements are substantively described in those documents. Those patents are not usable § 103 art against the '110: they share the same inventive entity (Fawcett, Grant, Belden, Marsilio, Scott) and assignee, so they are not "by another" under pre‑AIA § 102(e)/(f), and their Dec. 14, 2006 filing is in any event after the '110's 2005‑12‑23 priority date for the original claims. A rigorous § 103 ground therefore has to reach for third-party art (Rothbaum, Denison, EP 0 745 747, Roatis) — which is exactly what the Board did. That distinction matters if you are re-litigating or prosecuting a continuation.

2. Ground A — Uchida (JP 1997‑259368) alone, or in view of the knowledge of an artisan

(Conditioned on the Uchida characterization from the earlier section being accurate; I could not verify it.)

The Board's first ground held claims unpatentable over Uchida alone. For that to work, Uchida must disclose in a single reference a programmable key programmed with a code and then used to program and/or operate a merchandise security device — i.e., the same "teach the device the code, then match codes to operate it" sequence the '110 claims.

• 1a/1d — the security-device-plus-alarm element is the least technically demanding part of the claim; alarm modules with sense loops are the ordinary subject matter of the retail EAS/merchandise-protection field (the '110's own Background describes them as conventional). A Japanese merchandise-security reference of 1997 vintage would be expected to show this.
• 1b/1c/1e — the inventive weight of claim 1 sits in the code distribution architecture: a station that generates the code, a portable key that receives it, and a device that learns it and thereafter responds to a match. If Uchida discloses that architecture, claim 1 fails directly under § 102 as anticipatory, and a fortiori under § 103.

My candor assessment: because I could not verify Uchida's content, I cannot responsibly reconstruct the element-by-element mapping the Board used. Treat Ground A as the strongest ground (the Board's FWD found all 36 claims unpatentable, and at least one ground must have reached every claim) but as one I have not personally verified in this session.

3. Ground B — Uchida in view of EP 0 745 747 A1

The earlier section records that the Board used Uchida + Burri (EP 0 745 747 A1) for a subset of claims. This is a narrow, tightly motivated two-reference combination directed at the contactless/inductive communication and power-transfer dependent claims, and it is the ground I can support independently because I verified EP 0 745 747 A1's disclosure:

Motivation to combine (KSR‑style): both references are in the same field (short-range, coded, powered credential authorizing access to a protected object); the substitution is of one known communication/power-transfer technique for another that the art already used for exactly the same purpose; the results are predictable (removal of exposed contacts, no battery in the passive device — the very rationale the '110 specification gives for its key‑305 embodiment); and EP 0 745 747 is 1996 art, i.e. nine years before the provisional.

4. Ground C — Rothbaum in view of Denison (the ground that actually matters)

This is the combination the Board used for the principal ground, and the same pair was used to invalidate sibling US 9,576,452 (IPR2018‑00481, quoted above). It is the ground I would lead with.

4.1 Content of Denison (US 2004/0201449 A1 → US 7,821,395 B2, verified)

Denison's abstract and description, verbatim from the printed patent I retrieved:

"A vending machine uses a field-programmable electronic lock that learns a key code from a corresponding electronic key, a hand-held program unit, or an external computing device via wireless communications. In one mode, the electronic lock has a learning process activation device … In another mode, the electronic lock is programmed in the field without first opening the vending machine. A program command and access control data including a new access code are transmitted wirelessly from a hand-held program unit or the like. Alternatively, an external computing device is used to program the electronic lock … and an electronic key is then used to open the electronic lock."

That single disclosure supplies, in one reference:

• a station-like programming unit that generates/transmits an access code (element 1b),
• a portable credential (electronic key) that receives and holds the code and later operates the lock (1c, 1e),
• a lock (security device) that "learns" the key code and stores it in its own memory, and thereafter operates only with a matching key (1d, 1e), and
• an explicit field-reprogramming/refresh model (relevant to the timer/refresh dependents), all over wireless communication.

4.2 Content of Rothbaum (US 5,543,782)

I could not retrieve this document, so I state only what is verified: it is a U.S. patent to "Rothbaum et al." that the Board treated as a primary reference on a programmable/coded electronic lock system, sufficient with Denison to invalidate claims 1–35 of the InVue sibling '452 patent. In the Board's ground it supplies the lock/credential structural and code-comparison subject matter that Denison alone does not, and/or the alarm/security-device half of the claim.

4.3 Element mapping — claim 1

4.4 Element mapping — the substantive dependents

5. Motivation-to-combine rationale, stated in the terms the Board and the Federal Circuit expect

1. Same field, same problem. All of Rothbaum, Denison, Roatis and EP 0 745 747 address the identical problem statement the '110 gives in its Background: portable keys are stolen and reused against like devices; a key from site A works at site B. The '110 does not identify a new problem; it proposes a code-distribution and expiry architecture for a known one.
2. Predictable results / known techniques. Every added element is a known technique applied to a known device type to obtain its known benefit: wireless in place of wired; induction in place of contacts; a timer to bound key life; a counter to bound battery drain. KSR, int'l Co. v. Teleflex, 550 U.S. 398 (2007).
3. Design incentives explicit in the references. Roatis '352 states its own object — "limit operation and parameters of electronic keys, customize the key limits, refresh keys." That is a stated motivation, which is the strongest form of the teaching–suggestion–motivation showing.
4. The '110's own specification supplies the motivations. The Background and Summary recite the reasons for randomization, per-store uniqueness, the 96‑hour timeout, the counter, and the near‑end‑of‑life signaling. Under KSR, applicant-stated objectives in the specification are legitimate evidence of what a skilled artisan would have been motivated to do.
5. No teaching away. Nothing in Denison, Rothbaum, Roatis or EP 0 745 747 disparages combining a code-learning lock with an alarm module, or a rekeyable credential with an expiring credential. The cited art is cumulative, not contradictory. (Caveat: I have not read Rothbaum or the Uchida reference, so I cannot rule out a teaching-away passage in those two.)
6. Reasonable expectation of success. All elements are implemented with then-conventional microcontrollers, IR transceivers, coils/ferrite cores and electromechanical locks; no new physics or unproven technology is required.

6. Arguments a patent owner would raise — and how they fare

• "Different fields: vending-machine locks vs. retail merchandise alarm modules." Weak. The problem of uncontrolled duplication and use of access credentials is field-independent, and retail Anti-Theft/EAS and vending access control are both "merchandise protection" systems; KSR permits combination where the references address the same problem. The Federal Circuit's affirmance line in the Mobile Tech/InVue dispute (the '452 IPR) relied on precisely this pair.
• "The '110 claims random generation unique to the station; Denison just 'learns' a code." This is the strongest available distinction, but it is a design-choice argument: the '110's Background supplies the motivation (per-store uniqueness) and randomization is a textbook technique for defeating code prediction/duplication. Expect the Board to treat it as an obviousness-bridging detail, as it apparently did.
• "Claim 1 requires an alarm, and the locks art has no alarm." Surmountable by combination with merchandise-security alarms (the '110's Background treats these as conventional). It is the kind of element a primary reference need not itself teach.
• Objective indicia (long-felt need, commercial success, copying). No probative evidence appears in the record summarized here, and any commercial-success argument needs a nexus to the claimed subject matter. Because the '110's claims are broad (essentially the SDC architecture plus an alarm), the nexus burden is high, and a long-felt-need argument is undercut both by the age of the references (5,543,782 = 1996; EP 0 745 747 = 1996; Denison = 2004) and by the admission in the specification that these were known devices.

7. Bottom line

• Most likely explicit ground: Rothbaum + Denison, with EP 0 745 747 A1 and Roatis US 7,373,352 supplying the inductive/contactless power transfer, the refresh/timeout, and the key-counter/management elements. This is the pairing the Board used against the '110 (per the earlier section) and against the InVue sibling US 9,576,452 (verified in IPR2018‑00481).
• Secondary explicit ground: Uchida (JP 1997‑259368), alone, or with EP 0 745 747 A1 — the ground the Board used for at least part of the claims; I could not independently verify this reference.
• Result of record: all claims 1–36 were held unpatentable in the consolidated IPR2017‑01900/01901 Final Written Decision (2019‑02‑12), appeal docketed CAFC No. 19‑1779 (2019‑04‑16). I could not confirm the disposition of that appeal, so I do not assert that a certificate cancelling claims 1–36 has issued.
• Why this matters beyond the '110: the family survived via narrower continuations (US 11,721,198; US 12,205,457; US 2025/0166486 A1). If you are assessing those, the § 103 pressure points are the same, which is a strong argument for reading the surviving claims as deliberately directed to the charging-station timeout/deactivation and inductive power-transfer-to-passive-lock combinations rather than to the bare SDC architecture.

Explicit uncertainty list: (i) the verbatim wording of '110 claims 1 and 24 (reconstructed from the sibling '800 patent and the IPR characterization, not read off the printed '110); (ii) the identity and content of Uchida; (iii) the title and disclosure of Rothbaum beyond the citation quoted in the CAFC notice of appeal; (iv) the attribution of EP 0 745 747 A1 to "Burri"; (v) the internal reasoning of the FWD (I have its holding and reference list from the earlier section, not the opinion text); (vi) the disposition of CAFC 19‑1779.