US 9798516

I'll search for litigation and docket information on this specific patent, then compile the summary.

US Patent 9,798,516 — Summary

Note on sourcing: I was able to retrieve the patent document itself, USPTO-based databases (uspto.report, Google Patents), the Stanford NPE Litigation Database entry for 9798516, and district-court docket records. I could not find any Court of Appeals for the Federal Circuit docket from 2026 involving this patent; I searched specifically and found none. If a CAFC proceeding exists, it is not surfacing in the accessible sources — I am flagging that as an uncertainty rather than asserting none exists.

Bibliographic data

Litigation. The Stanford NPE Litigation Database lists exactly one case involving 9798516: Flexiworld Technologies, Inc. v. Sony Corporation, No. 2:23-cv-00616 (E.D. Tex.). That case was dismissed with prejudice by joint stipulation on May 29, 2025 (each party bearing its own costs), with no merits ruling. In that suit Flexiworld asserted seven patents, including 9798516, against Sony TVs, PlayStation consoles, Xperia phones and audio products. A later Flexiworld case, Flexiworld Technologies, Inc. v. TCL Electronics Holdings Ltd., No. 2:2026-cv-00229 (E.D. Tex., filed March 20, 2026, assigned to Judge Rodney Gilstrap), is active, but the complaint analysis I retrieved discusses the '521, '798 and '871 patents rather than 9798516 — so I cannot confirm from the retrieved record that 9798516 is asserted there.

Abstract (verbatim)

Smart Phones that support wireless printing of e-mails to a printer in a wireless local area network (WLAN) is disclosed and enabled. The new Smart Phone includes a touch sensitive screen, an operating system, an e-mail application, and a wireless communication unit supporting a protocol within IEEE 802.11 for WLAN communication. To print an email in an inbox of the email application, the smart phone provides a print item on the touch sensitive screen and also a list of one or more printers detected to be available in the WLAN on the touch sensitive screen, subsequent to the user having selected the print item and a selected printer from the list, a print job related to the email is transmitted to the selected printer over the WLAN. Additionally, the smart phone further supports voice activated commands, such as printing or replying to emails received at the Smart Phone.

Plain-language overview of the independent claims

The patent has three independent claims — 1, 8 and 15 — all directed to the same real-world scenario: a user reading an email on a touch-screen phone and printing it to a nearby Wi-Fi printer without first installing that printer's driver. Claim 1 is an apparatus claim, claim 8 a method claim, and claim 15 a computer-readable-medium claim.

Claim 1 — the smart phone itself (apparatus).
The claim recites a mobile, wireless "smart phone" that supports both a touch-sensitive screen interface and voice-activated commands. Structurally it must have: a touch screen, a microphone, a speaker, an embedded processor, memory/storage holding an operating system plus email application software, and a wireless unit with an RF controller and antenna operating over a protocol within the IEEE 802.11 standards for WLAN. When the software runs, the phone must perform an ordered sequence: (1) establish a WLAN connection to printers; (2) show an "inbox item" containing emails; (3) display an email; (4) show a print item on the touch screen; (5) receive the user's touch selection of that print item; (6) subsequent to that selection, show a list of available printers on the WLAN for user selection; (7) receive the user's printer selection; and (8) transmit a print job for the displayed email over the WLAN to the selected printer. The claim also requires, as a separate structural/functional element, a delete item or function control on the touch screen for deleting the displayed email. The claim's key timing hook is step (6) following step (5) — the printer list appears only after the print command.

Claim 8 — the smart phone method.
Same device context (touch screen, microphone, speaker, processor, WLAN radio, OS + email software, plus voice-activated commands). The method steps are: (1) receiving an email; (2) displaying it; (3) establishing a WLAN connection; (4) automatically detecting printers available on the WLAN; (5) presenting a list of detected printers for touch selection; (6) receiving the printer selection; (7) providing a print item/function control; (8) receiving touch selection of it; and (9) transmitting the print job to the selected printer in response. The claim additionally requires a reply item/icon/function control on the touch screen for replying to the displayed email. Note the ordering difference from claim 1: here the printer is detected and selected before the print item is selected.

Claim 15 — non-transitory computer-readable recording medium.
A CRM storing a program that, when executed by the smart phone's processor, performs a smart-phone method for printing and replying to email. Steps: (1) establish a WLAN connection within IEEE 802.11; (2) display a list of printers available for printing; (3) receive the user's selected printer; (4) provide an inbox with emails; (5) display an email; (6) provide a print item/icon/function control; (7) receive its selection; and (8) transmit the print job over the WLAN to the selected printer. As with claim 1, printer selection precedes print-command selection here.

Notable dependent claims. Claim 2 (and its analogues, 11) recites that printing does not require a device-specific printer driver installed on the phone. Claim 3 (and 19) ties the printer list to wireless device discovery. Claims 4 and 21/22 cover receiving printer attributes (including supported languages/formats, duplex, color space, bit depth, resolution) from the selected printer and formatting print data accordingly. Claims 5, 12 and 16 add the reply item; claim 12 additionally specifies a delete icon or the word "delete." Claims 6, 13 and 20 add authentication/security information for the WLAN connection. Claims 7, 18 cover on-screen number-of-copies display and adjustment. Claims 14 and 23 cover voice-activated interaction (including voice requests to delete or reply to an email). Claims 24 and 25 specify that the print item is a GUI element comprising a printer icon, a function control, or the word "print."

Technical backdrop (from the specification)

The specification frames the invention as "pervasive output" — letting a mobile information apparatus output digital content to virtually any output device without pre-installing a device-dependent driver. The described architecture pairs an output manager on the information apparatus with an output controller at the printer. The two negotiate, and the output controller uploads device-dependent components (color tables, halftoning tables, resolution, bit depth, compression/encoding algorithms, etc.) so the phone can generate print data for that printer. The process flow is discovery → service negotiation (with optional authentication and payment) → synchronization/upload → print job processing → output at the printer engine. WLAN technologies expressly contemplated include IEEE 802.11, Bluetooth, HomeRF, HiperLAN2 and IrDA.

Prior-art / continuity context

The patent is a continuation in a large Flexiworld family (Family ID 22925285) descending from the Nov. 1, 2000 priority date, with dozens of related continuations including US 9,383,956; US 10,162,596; US 10,168,871; US 10,137,078; US 10,400,472; and others. One search result showed US 9,383,956 (a sibling with a nearly identical "smart phones… voice activated commands for managing or replying to E-mails" title) listed with Mattel, Inc. as assignee in a Google Patents table. I cannot verify that from an authoritative source and it may be a database indexing artifact; the recorded assignee for 9798516 itself is Flexiworld Technologies, Inc. Flagging this as an unresolved inconsistency rather than a conclusion.

Explicit uncertainties

1. No CAFC 2026 docket located for 9798516. I searched for Federal Circuit activity tied to Flexiworld and to the number and found none. Absence of a result in my searches is not proof of absence.
2. Whether 9798516 is asserted in the pending 2026 TCL case is unconfirmed. The complaint analysis I retrieved frames the TCL allegations around other Flexiworld patents.
3. Expiration date conflict: Google Patents says "expires 2022-06-01" while uspto.report's legal-events log shows lapse for nonpayment effective 2022-11-27. The precise date is uncertain.
4. Provisional priority: the parent-case text of 9798516 recites provisional 60/245,101 (Nov. 1, 2000), while the applicant's "other references" list several additional provisional numbers (60/224,701, 60/227,878, 60/243,654, 60/208,967, 60/220,047, 60/239,320). The exact provisional set relied on is best confirmed against USPTO PatentCenter.

I'll research litigation involving US patent 9798516 through multiple searches.

Let me dig deeper on additional cases, including recent 2025 actions and the Flexiworld portfolio litigation history.

Let me verify additional Flexiworld enforcement campaigns and check whether 9798516 was asserted in them.

Litigation Report — U.S. Patent No. 9,798,516 ("Smart phones that support wireless printing of emails over air to a wireless printer in a wireless local area network")

Patent identification (as verified, not corrected):

• U.S. Patent No. 9,798,516 B2, application No. 13/710,299, filed December 10, 2012, granted October 24, 2017
• Inventors: William Ho Chang; Christina Ying Liu
• Original assignee / current assignee: Flexiworld Technologies, Inc. (Oregon)
• Priority date listed: November 1, 2000; Google Patents shows legal status "Expired – Fee Related," with a lapse-for-nonpayment event recorded

1. Cases where 9,798,516 is confirmed asserted

Sources:

• PACER Monitor docket, Flexiworld Technologies, Inc. v. Sony Corporation, 2:23-cv-00616 (E.D. Tex.): https://www.pacermonitor.com/public/case/51750256/Flexiworld_Technologies,_Inc_v_Sony_Corporation
• Stanford NPE Litigation Database, patent 9,798,516 ("Cases Involving this patent" lists only Flexiworld Technologies, Inc. v. Sony Corporation, 2:23-cv-00616, E.D. Tex.): https://npe.law.stanford.edu/patent/9798516
• PatSnap litigation summary quoting the dismissal order verbatim: https://www.patsnap.com/fr/resources/blog/litigation/flexiworld-technologies-v-sony-corp-wireless-output-smart-device-patents-patsnap/
• RPX Empower docket overview: https://litigation.rpxcorp.com/litigation/txedce-[226846](/patent/226846)-flexiworld-technologies-v-sony
• Google Patents family litigation link (Texas Eastern District Court, case 2:23-cv-00616): https://patents.google.com/patent/US9798516/en

2. Related Flexiworld enforcement activity in which 9,798,516 does NOT appear

These matter because they are frequently conflated with the '516 patent. On the record available, 9,798,516 was not asserted in any of them:

• Flexiworld Technologies, Inc. v. LG Electronics, Inc. et al., No. 2:25-cv-00960 (E.D. Tex., filed September 18, 2025; Judge Gilstrap). Six patents asserted: US 9,042,811; 9,836,259; 9,965,233; 10,140,072; 10,162,596; 10,037,178. Accused: LG smart TVs, soundbars, TV remotes and the LG ThinQ app. Status: open; summons executed 9/23/2025. 9,798,516 is not among the six patents. (Sources: Ex Parte complaint analysis https://ai-lab.exparte.com/case/dct/txed/2:25-cv-00960/doc/analysis/1 ; PACER Monitor https://cdn.pacermonitor.com/public/case/60211877/Flexiworld_Technologies,_Inc_v_LG_ELECTRONICS,_INC_et_al)
• Flexiworld Technologies, Inc. v. Hisense Co., Ltd. et al., Nos. 2:22-cv-00225, 2:22-cv-00227, 2:22-cv-00228 (E.D. Tex., filed June 24, 2022; transferred to N.D. Ga. and re-docketed as 1:22-cv-04337, 1:22-cv-04338, 1:22-cv-04371). Asserted families included US 7,609,402; 10,140,072; 10,140,073; 10,387,087; 10,768,871; 9,904,281/2,8??; 9,836,259; 9,965,233; 10,037,178; 10,162,596; 9,906,510; 9,836,649. Venue transferred by agreed motion (order 10/11/2022); assigned to Judge Steven D. Grimberg. 9,798,516 is not listed among the asserted patents in any of the three Hisense complaints. (Sources: Dockets.Justia https://dockets.justia.com/docket/georgia/gandce/1:2022cv04338/[308816](/patent/308816) ; Ex Parte complaint analysis https://ai-lab.exparte.com/case/dct/gand/1:22-cv-04338/doc/analysis/1 ; Lexology/Georgia IP Litigation https://www.lexology.com/library/detail.aspx?g=855d7813-4b97-4928-af92-50035fd61aba)
• Flexiworld Technologies, Inc. v. Lexmark International, Inc., Civil Action 5:22-97-KKC (E.D. Ky.), opinion entered March 20, 2023 (motions to dismiss and to phase discovery denied; marking/§ 287 issues addressed). Flexiworld asserted Patents-in-Suit in that case, but I could not verify whether 9,798,516 was among them; the Stanford per-patent record for 9,798,516 does not list the Lexmark case. Treat this as unconfirmed, not as a confirmed '516 case. (Source: https://g.casetext.com/case/flexiworld-techs-v-lexmark-intl)
• Flexiworld v. Indeed (patents on data mining/matching; per Gibson Dunn counsel bio, all four patents held ineligible and dismissed with prejudice by Judge Albright in the W.D. Tex.). These were not '516-line wireless-output patents. Unverified as to a '516 connection and not a confirmed '516 case. (Source: https://www.gibsondunn.com/lawyer/cai-wendy-w/)

3. Bottom line

• One confirmed litigation involving U.S. Patent No. 9,798,516: Flexiworld Technologies, Inc. v. Sony Corporation, No. 2:23-cv-00616, E.D. Tex., filed December 19, 2023 — dismissed with prejudice on May 29, 2025 following a settlement stay, with no merits ruling.
• No appellate (CAFC) proceeding involving 9,798,516 was found; the district case never reached judgment.
• No ITC Section 337 investigation involving 9,798,516 was found.
• No declaratory-judgment action specifically targeting 9,798,516 was found.

Caveats and verification limits (please read before relying on this):

1. I hit a tool-call ceiling before completing verification of the Lexmark and Indeed dockets, and before pulling the Unified Patents case list at https://portal.unifiedpatents.com/litigation/caselist directly. Those gaps are flagged above as unconfirmed.
2. PACER/RECAP dockets for 2025–2026 filings update continuously; newly filed complaints between the last docket snapshot and today (April 26, 2026) would not appear here.
3. The Stanford NPE database is NPE-focused and may not capture every non-NPE-framed or foreign filing.
4. Flexiworld's earlier campaigns (e.g., against Ricoh, Canon, Samsung, Epson, Xerox, NEC, Mattel, cited in the '516 specification/background and in press coverage) predate the October 24, 2017 grant of 9,798,516 and therefore cannot have asserted it.

Recommended next steps for a litigation opinion or clearance analysis: pull the PACER dockets for 2:23-cv-00616 (E.D. Tex.), 2:25-cv-00960 (E.D. Tex.), and 5:22-97-KKC (E.D. Ky.); confirm the asserted-patent lists from the complaints/exhibits rather than secondary databases; and run a current assignee/reassignment check on 13/710,299, since the '516 patent's recorded legal status includes a failure-to-pay-maintenance-fee lapse, which affects any ongoing assertion or damages theory.

Proceedings overview

Zero AIA trial proceedings on file for US 9,798,516. The canonical structured list in my prompt — the USPTO Open Data Portal (ODP) PTAB ingest — returns no IPR, no PGR, and no CBM naming this patent, and I could not surface any proceeding the ODP might have missed: repeated web searches for the patent number in combination with "IPR," "inter partes review," "petition," "institution decision," and "Patent Trial and Appeal Board" produced no '516 proceeding, no petition number, and no Board paper of any kind. Breaking that zero down: 0 active, 0 claims invalidated, 0 claims sustained, 0 settled, 0 institution denied.

Bottom-line defensive posture — and this is the single most important thing in this memo — the relevant posture is not the PTAB record, it is the patent's maintenance-fee status. Every claim (1–25) of 9,798,516 is untested at the Board; no petitioner has ever challenged it. But the patent's registered legal status is "Expired – Fee Related," with a lapse-for-nonpayment event recorded (the two sources conflict on the date — Google Patents shows adjusted expiration 2022-06-01; uspto.report's legal-events log shows lapse effective 2022-11-27; treat the precise date as unconfirmed, per the earlier sections of this analysis). If the patent is in fact lapsed and not revived, a demand letter citing it is worth far less than the face of the document suggests, and no defendant should be paying a settlement premium for a patent whose enforceable term may already have run. That status must be verified in USPTO PatentCenter before you rely on it, because revival of an unintentionally lapsed patent under 37 C.F.R. § 1.378 is routine and cheap, and Flexiworld has every incentive to revive if it intends to keep asserting the '516 patent (as it did assert it in Flexiworld v. Sony, 2:23-cv-00616 (E.D. Tex.), dismissed with prejudice 2025-05-29).

So the honest one-liner is: the '516 patent has no PTAB track record at all — no claims canceled, no prior art tested, no estoppel to exploit, and no institution decision to point to. Your leverage is the fee lapse and the priority-date/antedating problem described below, not an IPR record.

Proceedings on US 9,798,516

None. There is no proceeding to report. I am deliberately not creating a section header for a proceeding I cannot source. Two verification notes:

• I searched the patent number against PTAB-facing queries and against Flexiworld's full known PTAB docket trail. Every Flexiworld AIA proceeding I could locate names a different patent — see the adjacent-proceedings appendix below. None names 9,798,516.
• Absence of a proceeding is a positive signal for the patent owner, not the defendant, with one caveat. Well-asserted patents usually attract IPRs. The '516 patent was asserted only against Sony (2023), and that case settled and dismissed before any IPR was filed. The caveat is that the reason no IPR exists may be that the patent lapsed in 2022 and was not worth attacking — which is the opposite kind of good news for you.

Adjacent proceedings — NOT on 9,798,516, but highly relevant to any defense strategy

These are proceedings on sibling patents in the same Flexiworld family (same inventors William Ho Chang and Christina Ying Liu, same November 2000 priority lineage). They matter because they establish how the PTAB has actually treated Flexiworld's shared priority story — which is the same story the '516 patent would have to rely on. None of these is an IPR/PGR/CBM of 9,798,516, and none of them creates § 315(e)(2) estoppel as to 9,798,516.

IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review
• Patent: U.S. Patent No. 9,836,257 B2 (a '516 family sibling — "method of transferring digital content from a mobile wireless information apparatus such as a smart phone … to a wireless output device associated with a television by short range wireless communication")
• Filed: 2022-04-08 (Petition, Paper 1). Petitioner counsel: Jordan M. Rossen and Roshan Mansinghani, Unified Patents, LLC (in-house).
• Status: Terminated by Final Written Decision adverse to the petitioner. Claims challenged: 27 and 28 (claim 28 depends from 27). Disposition, verbatim from the FWD caption (Paper 41, 2023-11-01): "Final Written Decision Determining No Challenged Claims Unpatentable Dismissing Patent Owner's Revised Motion to Amend."
• Judge panel: Administrative Patent Judges Terrence W. McMillin, Christopher L. Ogden, and Brent M. Dougal (per Patexia's report of the panel and the FWD caption, which reads "Before TERRENCE W. McMILLIN, CHRISTOPHER L. OGDEN, and BRENT M. [Dougal]").
• Petition grounds: two obviousness grounds, both under pre-AIA 35 U.S.C. § 103(a) — Ground 1: claims 27–28 obvious over Olgaard (U.S. Pat. No. 7,849,198) in view of Moghadam (U.S. Pat. No. 5,917,542); Ground 2: claims 27–28 obvious over Acharya (U.S. Pub. 2002/0080091) in view of Griffiths (U.S. Pat. No. 7,136,999). No § 112 grounds.
• Institution decision: Instituted on all challenged claims (2022-11-08, per Unified's own case note: "On November 8, 2022, the Patent Trial and Appeal Board (PTAB) instituted trial on all challenged claims in an IPR filed by Unified against U.S. Patent 9,836,257"). The Board rejected Flexiworld's § 314(a) Fintiv argument and its attempt to knock out Acharya as not being a "distinct device."
• Final Written Decision: 2023-11-01 — no challenged claim held unpatentable. The Board's conclusion, verbatim: "we determine that Unified has not shown that either of the challenged claims are unpatentable on either of the grounds of the Petition. We also dismiss Flexiworld's Contingent Revised Motion to Amend (Paper 31) as moot." The dispositive issue was priority/antedating, not claim construction: because pre-AIA § 103(a) applied (priority before the 2013-03-16 AIA transition), the Board had to decide whether Olgaard (dated 2000-10-24) and Acharya (dated 2000-12-22) qualified as prior art under pre-AIA § 102(e). Flexiworld "swore behind" them. The Board credited draft provisional applications whose file metadata showed last modification on 2000-10-22, together with inventor William Ho Chang's declaration, and held that metadata generated automatically by the operating system was independent corroboration — rejecting Unified's argument that inventor-controlled evidence could not corroborate. The Board found conception before 2000-10-24 and Unified failed to carry its burden by a preponderance.
• Settlement / termination: none — decided on the merits.
• Appeal: I found no Federal Circuit appeal of IPR2022-00775. Unified did not appear to appeal; note that Unified would have had to weigh the estoppel and business-model consequences of appealing a loss. (Unverified beyond the absence of any located CAFC docket — flag as uncertain.)
• Defensive value: This is a warning, not a weapon. It is the best available evidence of Flexiworld's playbook and it worked: Flexiworld defeated a well-funded defensive aggregator by antedating the art with October-2000 provisional-draft metadata. Any invalidity theory against the '516 patent that depends on post-October-2000 art faces the same wall — and the '516 patent's stated priority is even earlier in form (2000-11-01 provisional), so pre-AIA § 102(e)/§ 103(a) will apply and Flexiworld will run the identical "swear behind" defense.

IPR2022-01267 / IPR2022-01268 / IPR2022-01269 — Roku, Inc. v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review (three parallel petitions)
• Patents: '257 (U.S. 9,836,257 — IPR2022-01267), '822 (U.S. 9,389,822 — IPR2022-01268), '577 (U.S. 7,944,577 — IPR2022-01269). Not the '516 patent.
• Filed: 2022-07-29, while Flexiworld Technologies, Inc. v. Roku, Inc., No. 6:21-cv-00767-ADA (W.D. Tex.) was pending.
• Status: Terminated by settlement before institution. On 2022-10-21 the parties executed a Patent License Agreement; on 2022-10-27 Flexiworld filed a joint motion to terminate IPR2022-01267 under 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74, stating that the Agreement "completely resolves all pending controversies between Roku and Flexiworld" concerning the '257 patent, that the parties were concurrently dismissing the Roku litigation with prejudice, and that the Agreement was to be treated as business confidential under § 317(b). The same joint motions were filed in IPR2022-01268 and IPR2022-01269. Flexiworld's preliminary responses in the three proceedings were due 2022-12-08.
• Judge panel: not reached / not publicly identified for these three (no institution decision issued).
• Petition grounds: not adjudicated. (For context, Roku's parallel IPR2021-00713 and IPR2021-00714 demonstratives on the '066 and '064 patents show Roku running Yamaguchi + Gu, Ikonen + Gu, and Ikonen + Kammer combinations and litigating a priority dispute — but those are different patents and I have not verified their dispositions, so do not treat them as established.)
• Settlement / termination: 2022-10 — confidential license agreement, docketed termination motions in all three proceedings.
• Appeal: none (no FWD).
• Defensive value: No estoppel is created, because § 315(e) estoppel attaches only after a final written decision under § 318(a), and these proceedings died at the preliminary-response stage. The durable legacy is a license running to Roku (and, depending on its scope, potentially to Roku-licensed TV brands such as TCL, Hisense and Philips — verify the license scope before assuming any exhaustion defense; the terms are confidential).

IPR2021-00713 / IPR2021-00714 — Roku, Inc. v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review
• Patents: U.S. 10,740,066 (IPR2021-00713) and U.S. 8,989,064 (IPR2021-00714). Not the '516 patent.
• Filed: 2021 (Flexiworld's Preliminary Response in IPR2021-00714 was filed 2021-07-26).
• Status: Reached oral hearing on 2022-07-19 (Petitioner Roku's demonstratives, Exhibit 1037), so at least one of these was instituted. Separate district case: Flexiworld Techs. Inc. v. Roku, Inc., No. 6:20-cv-00819-ADA (W.D. Tex.) (asserting the '064, '114 and '066 patents). I could not verify the final dispositions of IPR2021-00713 or IPR2021-00714 — do not assume either outcome.
• Petition grounds (as argued at hearing): challenges to priority; Grounds 1/1A Yamaguchi + Gu (and Garfunkel); Grounds 2/2A Ikonen + Gu; Grounds 3/3A Ikonen + Kammer (and Peng); disputed issues included the "advertising"/announcement element and whether a claim covered systems with two output devices.
• Defensive value: illustrates that Flexiworld's portfolio is broad enough that each patent must be attacked separately, and that Roku's multi-front IPR campaign on the siblings did not touch the '516 patent.

IPR2023-00845 (U.S. 7,609,402) and IPR2023-00846 (U.S. 9,965,233) — Lexmark International, Inc. v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review (two proceedings). Neither is the '516 patent.
• Filed: petitions dated on or about 2023-05-11. Petitioner: Lexmark International, Inc. (declared sole real party in interest; affiliated with Apex Swiss Holdings SARL / Ninerstar Corporation). Petitioner counsel: Babak Tehranchi, Amy Simpson, Fareid Asphahani.
• Grounds (as pleaded in the '402 petition): Ground 1 — claims 13–21, 33–37 obvious over Yamaguchi, Kammer and Moore; Ground 2 — claim 21 obvious over Yamaguchi, Kammer, Moore and Davis; Ground 3 — claims 1–7, 9–21, 23–37 obvious over Yamaguchi, Kammer and Kemp; plus a further ground. The petition framed the '402 patent as combining "well-worn" wireless printing, distributed print processing, and rudimentary authentication.
• Status: Unverified. I reached my tool-call ceiling before pulling the institution decisions and any FWDs in these two proceedings. Treat their status as unknown; do not represent them as instituted, denied, or decided.
• Related context the Lexmark petition supplies: the '402 patent was then being asserted by Flexiworld in Epson America (C.D. Cal., 8:21-cv-00807), Brother Industries (USA) (W.D. Tenn., 2:22-cv-02237), Lexmark (E.D. Ky., 5:22-cv-00098), and Hisense (E.D. Tex. 2:22-cv-00227, transferred to N.D. Ga. 1:22-cv-04338).
• Defensive value: confirms that Lexmark, not Unified and not Roku, was the printer-side challenger, and confirms the Yamaguchi/Kammer art family that Flexiworld's opponents keep returning to. That art family is a candidate for a '516 challenge — but only if it predates October/November 2000 (see the antedating problem above).

Ex parte reexaminations (not AIA trials, but part of the same defensive pattern)

• Ex parte reexam 90/014,721 on U.S. Pat. No. 10,346,114 ('114 patent, asserted against Roku), filed by Unified Patents; on 2022-05-23 the USPTO issued a final rejection of claims 8–14. Source: Unified's own case note (https://www.unifiedpatents.com/insights/2022/7/5/flexiworld-114-patent-successfully-challenged). This is not a '516 proceeding and does not affect '516 claims.
• Ex parte reexam against U.S. Pat. RE48,066, filed by Unified on 2025-05-23 (the '066 patent relates to internet-based transactional systems/data mining and was asserted against Indeed). Source: https://www.unifiedpatents.com/insights (News & Views). Not a '516 proceeding.

Strategic summary

Claim status of 9,798,516: all 25 claims are UNTESTED at the PTAB. There are no canceled claims — not claim 1, not claim 8, not claim 15, and none of the dependents. There are no sustained claims ex rel. the Board either, because there has never been a Board decision on this patent. If you are a plaintiff, do not represent to a court or an adversary that the '516 patent "has survived IPR" — it has never been in one. If you are a defendant, there is no FWD to cite, no claim-cancellation order to hand the other side, and no adverse claim-construction or priority ruling on this specific patent. The asserted claim set you must plan around is 1–25 in full (independent claims 1, 8 and 15, with the dependent claims noted in the earlier section of this analysis).

Estoppel landscape: effectively empty, in both directions. No proceeding on 9,798,516 has ever produced a § 318(a) final written decision, so 35 U.S.C. § 315(e)(2) estops no one from raising any invalidity ground against the '516 claims in district court or at the ITC. The three Roku IPRs on the sibling '257/'822/'577 patents were terminated pre-institution by joint motion under § 317, and the settlement-driven terminations produce no estoppel and no claim-level adjudication. Practically, that means the entire prior-art field is still available to you against the '516 patent — including art the Board already saw against siblings, which you can repackage with the differences in claim language (the '516 claims' touch-screen "print item," the post-selection printer list of claim 1, the "delete item," and the "reply" item of claims 5/8/12). The limiting constraint is not estoppel; it is date. Because the '516 patent claims a priority date of 2000-11-01, and because the Board in IPR2022-00775 credited a documented conception date of on or before 2000-10-22 for the sibling claims, you need prior art that predates roughly October 2000, or a solid § 102(e)/§ 102(a)-(b) theory that survives a swear-behind. Post-2000 art such as Acharya (2000-12-22) is exactly what killed Unified's case.

Pattern signals. (a) Multiple-petitioner pressure yes, multiple-petition-on-one-patent no. Unified Patents (a defensive aggregator — Kevin Jakel's declaration was filed to establish sole-RPI status) attacked the '257 and '114 patents; Roku, Inc. attacked the '257/'822/'577 and '064/'066 patents; Lexmark attacked the '402 and '233 patents. The campaign is portfolio-wide and skips the '516 patent entirely. (b) Flexiworld defends aggressively and wins on dates. It litigated IPR2022-00775 to a merits FWD and won, with inventor testimony plus OS file metadata as corroboration. (c) Flexiworld settles readily to end risk — Roku (2022 license + dismissal with prejudice + termination of three IPRs), Sony (dismissal with prejudice 2025-05-29, each side bearing its own costs). (d) Defensive aggregator in the chain: yes — Unified Patents, LLC, via IPR2022-00775 and two ex parte reexaminations. Whether Unified has ever considered the '516 patent is not public.

Recommended next steps

1. Order the patent's fee status first — before anything else. Pull USPTO PatentCenter for application 13/710,299 and confirm (i) whether maintenance fees are current, (ii) the exact lapse date, and (iii) whether any petition to revive under 37 C.F.R. § 1.378 has been filed or granted. The earlier section of this analysis flags that Google Patents says "expires 2022-06-01" while uspto.report shows lapse effective 2022-11-27; resolve that conflict against the authoritative source. If the patent is lapsed and unrevived, the correct response to a demand letter citing claim 1, 8 or 15 is a standing/enforceability challenge, not an IPR. If it has been revived, treat the revival as reinstating the full claim set prospectively.
2. Confirm the current district-court exposure. The only confirmed assertion of the '516 patent is Flexiworld Technologies, Inc. v. Sony Corporation, No. 2:23-cv-00616 (E.D. Tex.), dismissed with prejudice 2025-05-29 with no merits ruling (per the earlier litigation section; PACER docket via Pacific Monitor/PACER Monitor: https://www.pacermonitor.com/public/case/51750256/Flexiworld_Technologies,_Inc_v_Sony_Corporation). Separately, confirm whether the '516 patent is actually asserted in Flexiworld Technologies, Inc. v. TCL Electronics Holdings Ltd., No. 2:2026-cv-00229 (E.D. Tex., filed 2026-03-20, Judge Gilstrap) — the earlier section could not confirm it from the retrieved complaint analysis, which discusses the '521, '798 and '871 patents. If it is asserted there, the § 315(b) one-year clock runs from service on your client, and an IPR petition would need to be on file within that year.
3. If you decide to file, budget for the antedating fight. Build the petition around art dated before October 2000, and pre-emptively attack the corroboration theory the Board accepted in IPR2022-00775 (inventor-controlled provisional drafts + automatic OS metadata). Consider whether the '516 patent's own chain of continuing applications creates any § 112 written-description / priority exposure for specific limitations — the '516 claims recite touch-screen and voice-command elements that must find support at the 2000-11-01 priority date, and a § 112 or priority attack does not depend on the art's filing date at all. Coordinate with the General Plastic factors if you or a privy have already filed a petition on a related Flexiworld patent.
4. Get the primary documents, not the secondary databases. For any FWD or institution decision you intend to cite, pull it from USPTO PTAB E2E (https://ptacts.uspto.gov/ptacts/) or PTAB Center / USPTO Patent Public Search, and cross-check on CourtListener (https://www.courtlistener.com/) for any Federal Circuit appeal. For the adjacent proceedings I discuss above, the specific documents I actually verified are: the IPR2022-00775 Final Written Decision (Paper 41, 2023-11-01, "Determining No Challenged Claims Unpatentable Dismissing Patent Owner's Revised Motion to Amend," 35 U.S.C. § 318(a)) and the IPR2022-01267 joint motion to terminate (2022-10-27), both retrievable through Docket Alarm's IPR2022-00775 and IPR2022-01267 case folders; and the IPR2022-00775 institution decision reproduced at http://bannerwitcoff.com/wp-content/uploads/2022/12/IPR2022-00775.pdf.
5. Verify the two proceedings I could not close out. IPR2021-00713/IPR2021-00714 (Roku, '066/'064) and IPR2023-00845/IPR2023-00846 (Lexmark, '402/'233) are flagged above as unverified as to disposition because I hit a tool-call ceiling. Their outcomes do not change the fact that no '516 proceeding exists, but the institution/FWD reasoning in those cases is the best available forecasting material for how a future '516 panel might treat Flexiworld's priority and antedating arguments.
6. If you are the patent owner: the absence of PTAB history is an asset — there is no estoppel, no cancellation, and no adverse claim construction. The fee lapse is the liability. Cure it, and be prepared for a Fintiv/General Plastic fight if you re-assert, given the extensive Flexiworld IPR trail on the sibling patents.

Uncertainties I am expressly flagging, per the operating rules: (i) the ODP-structured list shows no AIA proceedings, and my searches corroborate that, but a search that finds nothing is not proof that nothing exists — a recently filed, unindexed petition would not have surfaced; (ii) I did not directly query the Unified Patents litigation/PTAB portal case list at https://portal.unifiedpatents.com/litigation/caselist, which is the most likely place a '516 challenge would be catalogued; (iii) the Federal Circuit docket check is negative but incomplete for the same reason; and (iv) the dissolution of the exact maintenance-fee lapse date remains unresolved between sources and must be settled in PatentCenter.

I'll research the assignment record for this patent, starting with USPTO Assignment Center records and the recorded reel/frame.

Tool-call ceiling reached — noting scope honestly

I exhausted my search budget before I could load a live page from the USPTO Assignment Center. Everything below is either (a) confirmed from the patent's own front-page/Google Patents legal-events record, (b) confirmed from primary litigation documents (complaints filed by Flexiworld that recite its own chain of title), or (c) explicitly flagged as not retrieved. I have not inferred or invented any reel/frame number.

Inventors

Unusual-pattern check — inventor departure / fire-sale precursor: not present, but one item to verify.
The inventors are the founders/principals of the assignee, not employees who left. There is no "all inventors departed within 12 months of filing" pattern — the same two inventors appear on the Nov 2000 priority filing and on every continuation through 2019, which is characteristic of a founder-invented portfolio.

One ownership-risk flag worth independent verification (not a conclusion): the earliest priority date is November 1, 2000, while one source places Flexiworld's founding in 2001. Chang's biography places him at Sharp Laboratories immediately before founding Flexiworld, and Sharp Laboratories of America is located in Camas, WA — adjacent to Chang's recorded Vancouver, WA address. If any part of the inventive work was made while Chang was still a Sharp employee, a prior-employer invention-assignment obligation could be a chain-of-title cloud. I did not find any recorded assignment, license, or release from Sharp to Flexiworld, and I did not find any challenge to title in the litigation record. Treat this as a diligence item, not a finding.

Original assignee

Flexiworld Technologies, Inc. — original and current assignee of record (Google Patents lists it as both "Original Assignee" and "Current Assignee"; assignment recorded 2013-02-20).

• Primary line of business: "pervasive output" / wireless output software and embedded solutions for short-range wireless (Bluetooth, Wi-Fi, IrDA) and mobile-device markets. Public positioning (Chinese-language press coverage of the 2021 Canon suit) describes Flexiworld as a pioneer provider of wireless application and embedded solutions for the mobile-device market, with 30+ patent applications.
• Did it ship a product embodying the claims? Not established. The company marketed wireless-output software/embedded solutions and claims partnerships with mobile phone makers, carriers, and Asian chip companies (per Chang's bio exhibit). I found no evidence of a commercially shipped, claim-embodying product in the marketplace, and the only public "product" trace in recent years is litigation. The claims as issued (a touch-screen phone printing an email over an IEEE 802.11 WLAN to a discovered printer without a device-specific driver) are today embodied by third-party smartphones and printers, not by a Flexiworld product.
• Current status: failed startup. The Stanford NPE Litigation Database classifies Flexiworld's asserter category for this patent as "Failed startup" (https://npe.law.stanford.edu/patent/[9798516](/patent/9798516)). No evidence of current operations, product sales, or bankruptcy filing was retrieved. The company remains an active serial plaintiff: Amazon (2020), Canon (2021), Hisense (2022), Sony (2023 — the only confirmed '516 suit), LG (2025), and a 2026 TCL action reported in the prior section.
• Patent status: Google Patents shows "Expired – Fee Related" (adjusted expiration 2022-06-01; uspto.report records a failure-to-pay lapse effective 2022-11-27). This is a maintenance-fee lapse by the owner, not an ownership change — but it materially affects any current assertion theory.

Assignment timeline

Recorded ownership events for application 13/710,299 / US 9,798,516:

• Recorded 2013-02-20 (execution date not retrieved; Google Patents exposes only the 2013-02-20 record date) — Reel/Frame NOT RETRIEVED ⚠️
  • Conveyance: Assignment — recorded as "ASSIGNMENT OF ASSIGNOR'S INTEREST (SEE DOCUMENT FOR DETAILS)"
  • Assignor: CHANG, WILLIAM HO; LIU, CHRISTINA YING
  • Assignee: FLEXIWORLD TECHNOLOGIES, INC.
  • Correspondent: NOT RETRIEVED ⚠️ — I could not load the Assignment Center record, so no correspondent attorney or firm of record is asserted here. Stating one would be fabrication. (For contrast, the prosecution firm of record on the issued patent is Kolisch Hartwell, P.C. — that is a bibliographic agent field, not the assignment correspondent, and I am not conflating the two.)
  • Context: internal / founder-to-company housekeeping. The two inventors assigned the 2012-filed continuation to their own company. This is not an arm's-length transfer, not a fire-sale, not a securitization.

That is the only ownership event I can evidence for this patent. Google Patents' legal-events timeline for US 9,798,516 shows, in full: 2012-12-10 application filed by Flexiworld; 2012-12-10 priority to 13/710,299; 2013-02-20 assignment recorded to Flexiworld; 2013-04-25 pre-grant publication; 2017-10-24 grant; 2022-06-01 adjusted expiration. No security agreement, merger, change of name, license, release, correction, or further assignment appears.

Family-context reel/frames I did verify (belong to OTHER Flexiworld patents — not to 9798516): Flexiworld's own complaints recite assignment recordations for sibling members of the same priority family:

• US 7,609,402 — assignment from Chang and Liu to Flexiworld at Reel/Frame 028733/0064
• US 10,140,072 and US 10,037,178 — Reel/Frame 042385/0202
• US 10,162,596 — Reel/Frame 039816/0200
  (Source: Flexiworld complaint recitals reproduced in RPX Insight litigation document 15143102 and in the Ex Parte complaint analysis for Flexiworld v. LG Electronics, 2:25-cv-00960.)

These are cited only to show that Flexiworld's chain of title runs inventor → Flexiworld on every family member, with no intervening entity. Do not attribute any of these reel/frames to 13/710,299.

⚠️ Flagged contradiction in the source set

Secondary source uspto.report lists US 9,383,956 (the '516's sibling, app. 13/710,295) as "currently assigned to Mattel, Inc.," while the same record states the grantee listed on the patent is Flexiworld Technologies, Inc. This is inconsistent with the Flexiworld-assigns-to-nobody pattern visible across the whole family and with Flexiworld's continued assertion of family members. I could not resolve it (my verification searches returned nothing before the tool ceiling). It is plausibly a secondary-database indexing artifact — but if a real Mattel recordation exists on a Flexiworld patent, the most likely conveyances would be a settlement-related license or covenant from Flexiworld's earlier litigation campaign (Mattel has been a Flexiworld defendant), not an ownership transfer. Unresolved — verify by reel/frame before relying on it.

If Assignment Center in fact shows no records beyond the 2013-02-20 entry, that is itself the finding: the original assignee still owns the patent. That is what the corroborating evidence indicates.

Timeline diagram

timeline
    title Ownership of US 9798516
    2000 : Earliest priority date 1 Nov
    2012 : Application 13710299 filed
    2013 : Assignment recorded to Flexiworld
    2017 : Patent issues 24 Oct
    2023 : First and only suit on 516 vs Sony
    2025 : Sony case dismissed with prejudice
    2026 : Flexiworld sues TCL on family

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT

No licensing-only entity appears anywhere in the chain. There is no "IP / Patents / Licensing / Holdings / Ventures" assignee, no registered-agent address, and no single-purpose LLC. The only recorded transfer is 2013-02-20, inventors Chang and Liu → FLEXIWORLD TECHNOLOGIES, INC., the same company named as original assignee on the face of the patent. Attribution in the file history runs to the operating company, not away from it.

2. Known asserter in the chain — PRESENT

The current assignee is itself the serial asserter. Flexiworld Technologies, Inc. appears in the Stanford NPE Litigation Database for this patent with asserter category "Failed startup" (https://npe.law.stanford.edu/patent/9798516), and is the plaintiff in the confirmed 2:23-cv-00616 Sony action plus the reported 2020 Amazon, 2021 Canon, 2022 Hisense, 2025 LG (2:25-cv-00960) and 2026 TCL actions. Precision point: Flexiworld does not match the classic enumerated NPE lists (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). Its NPE status derives from being a failed operating company monetizing its own portfolio, not from a roll-up.

3. Repeat correspondent across the chain — UNCLEAR

The Assignment Center record — the one field that would settle this — could not be retrieved, so no correspondent name or firm is asserted. With a single recorded assignment in the chain, the "recurrence" test would in any event have nothing to recur across; the useful comparison would be whether the same correspondent recurs across Flexiworld's ~30 family recordations. That comparison was not possible within my tool budget. Kolisch Hartwell, P.C. appears as the prosecution agent of record, which is a different field and is not evidence of an assignment-correspondent pattern.

4. Cascading transfers — NOT PRESENT

One recorded ownership event in twenty-four years. No chained LLCs, no sub-24-month sequence, no shared correspondent addresses because there is no sequence at all.

5. Pre-litigation transfer — NOT PRESENT

The assignment is recorded 2013-02-20; the first suit naming US 9,798,516 is filed 2023-12-19 (Flexiworld v. Sony, 2:23-cv-00616) — roughly 10 years and 10 months later. There was no late-stage transfer to set venue or manufacture a clean standing record; Flexiworld pleaded ownership directly off the inventor assignment in its own name.

6. Bankruptcy fire-sale — NOT PRESENT

No bankruptcy docket, trustee sale, or §363 sale involving Flexiworld or this patent was found. The company is characterized as a failed startup, but it retains its patents and is still asserting them — the opposite of a Kodak/Nortel-style liquidation.

7. Privateering — NOT PRESENT

The classic privateering pattern (large operating company transfers to an NPE that asserts on its behalf against competitors) is absent. Here the small entity asserts in its own name against large operating companies (Sony, LG, Canon, Amazon, TCL). No corporate transferor exists to hide behind an NPE — Flexiworld is the assertion vehicle.

8. Defensive aggregator — NOT PRESENT

The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at the original assignee, which remains the plaintiff of record. The patent has not been neutralized.

Verdict

NPE — moderate confidence

Under the stated rubric only one enumerated strong signal is unambiguously present — signal 2, known asserter in the chain: Flexiworld Technologies, Inc. owns the patent and is the plaintiff in repeated suits, and this patent appears in the Stanford NPE Litigation Database with asserter category "Failed startup" (https://npe.law.stanford.edu/patent/9798516); the "moderate" rather than "high" call is driven specifically by the fact that the shell-entity transfer signal is absent — the chain is the single clean 2013-02-20 inventor-to-company assignment, with no "IP Holdings" LLC, no cascading transfers, and no pre-litigation transfer (assignment 2013-02-20 versus first '516 suit 2023-12-19). Substantively the NPE characterization is strong — a failed startup with no evidenced product revenue running serial campaigns from 2020 through 2026 — and if you count "no products in commerce plus six-plus assertion campaigns" as a second strong signal, this moves to high confidence; I am recording moderate because that is what the rubric's thresholds support on the retrieved evidence.

Not "operating-company assertion" (the current assignee does not ship products embodying the claims) and not "defensive / non-asserting" (nothing in the chain points to RPX, AST, LOT, Unified, or OIN).

Verify at: https://assignmentcenter.uspto.gov/ (or https://assignment.uspto.gov/patent/index.html) — search 9798516 or application 13/710,299, then open the 2013-02-20 record to capture the reel/frame, the execution date, and the correspondent of record that I could not retrieve. While there, pull the family recordations at 028733/0064, 042385/0202, and 039816/0200 and check whether one correspondent recurs across them — that single cross-check would resolve signal 3, the one signal left genuinely open.

I'll research the cited prior art for US 9,798,516. Let me start with several targeted searches.

I have useful context. Now let me try to retrieve the patent's own front-page "References Cited" list.

Let me pull the front-page reference lists from multiple databases.

Prior-Art Analysis — U.S. Patent No. 9,798,516 B2

Important sourcing note up front. The copy of US 9,798,516 provided to me (Google Patents HTML) has had the front-page citation tables stripped out — the fetched text jumps from the abstract/description straight into the classification list with no "References Cited" block. I therefore retrieved the front-page reference list from uspto.report (https://uspto.report/patent/grant/9,798,516) and Justia Patents (https://patents.justia.com/patent/9798516), both of which reproduce USPTO front-page reference data for this exact patent number. I did not substitute data from similarly-numbered patents. Where search results returned citation tables for other patents (US 9,164,718; US 10,481,846; US 11,283,942; US 10,740,066), I have flagged those separately and not treated them as the '516 list. I also hit a tool-step ceiling and could not complete retrieval of (a) the full front page in one document, (b) foreign patent documents, (c) the non-patent-literature list, or (d) filing dates for most references. Those gaps are marked explicitly below rather than filled in by inference.

1. The legal framework that governs this analysis

This matters more than the raw list, because it determines which cited references can even be § 102 art against the '516 claims.

Flagged inconsistency (carried forward, not resolved): the previous sections state priority as November 1, 2000; the Unified Patents page for US-9798516-B2 lists 2000-10-31. Separately, a Google Patents "Related US Applications" table labels 13/710,299 a "Continuation-In-Part" of the '516 family, whereas the earlier summary describes a straight continuation chain (10/016,223 → 12/903,048 → 13/710,299). If any '516 claim contains matter new to the CIP, that claim would not be entitled to the 2000/2001 date at all and the § 102(b)/§ 102(e) calculus shifts forward — which would materially change the analysis below. This must be resolved against the '516 specification and the parent's disclosure before any invalidity opinion is relied upon.

2. Cited U.S. patent references appearing on the 9,798,516 front page

The front page lists a large block of U.S. patents. Below is the set I was able to retrieve from the '516-specific records. Column notes: "Issued" = the date printed in the front-page table. "Filing/priority" is given only where I retrieved it; a superscript ˢ means the date came from a sibling patent's citation table (US 9,164,718) rather than from a '516-specific record, and should be verified. "Description" is given only where I actually retrieved a title; "—" means I could not retrieve a title and I am not guessing.

2.1 References with retrieved titles/descriptions (the substantive candidates)

2.2 Remaining US patent references on the '516 front page (titles not retrieved)

Note on what these are and are not. All of these issue before the '516 filing and most before the ~Oct/Nov 1999 § 102(b) critical date, so they are facially § 102(b) art. Practically, however, they are cited as background for the general environment of the invention (halftoning, color management, print-job queuing, peripherals, hand-held computing, e-mail) rather than for the specific combination claimed. I could not retrieve a title, abstract, or specification for any of them, and I am not supplying descriptions from memory. Treat the "relevance" column as advisory and verify each against the reference itself.

3. References I saw in a sibling's citation table but could NOT confirm appear on the '516 front page

These are frequently cited in this family and several are the most on-point art conceptually, so they belong in any diligence file — but I am listing them separately because my retrieval surfaced them from US 9,164,718's and US 10,481,846's tables, not from a '516-specific record. Do not treat these as '516-cited references without checking the '516 front page.

4. The references that are actually asserted against this family — and why they matter more than the front page

The front page of an IDS-heavy continuation rarely contains the art that decides validity. For this family, the operative § 102 art has come from third parties:

Source: IPR2022-00775, Paper 41 (Nov. 1, 2023), as reported at https://www.mondaq.com/Article/[1408774](/patent/1408774) and https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/. Also https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1548112](/patent/1548112)/download-documents (Petition/POR discussing the '903 claims and Rivera).

Bottom line for § 102 purposes: the Olgaard/Acharya result means that any reference in the Oct. 2000–2001 window — which is where most of the later-issued front-page references sit — is presumptively antedatable by Flexiworld using the same corroborated conception/diligence record, provided the same evidence (the provisional draft metadata and inventor declaration accepted in IPR2022-00775) is available and the '516 claims are supported by the October/November 2000 disclosure. That is the single most important prior-art fact about this patent.

5. Claim-by-claim § 102 assessment of the retrieved art

I want to be blunt here: no retrieved reference anticipates claim 1, claim 8, or claim 15, and I do not think any of them is even close. Anticipation requires every element in a single reference, and the independent claims require a specific combination that did not exist in a single pre-2000 reference:

• a mobile smart phone (handset form factor, microphone + speaker for voice calls);
• a touch-sensitive screen interface and, separately, voice-activated command support;
• an operating system plus e-mail application software with an inbox item;
• a radio-frequency WLAN unit compliant with IEEE 802.11;
• the ordered GUI interaction — claim 1: print item selected first, printer list only then presented; claim 8: automatic printer detection then print-item selection; claim 15: printer list/selection presented before the print item;
• plus a distinct delete item (claim 1), a reply item (claim 8/16), or both print-and-reply functionality (claim 15).

Where the retrieved art can plausibly bear on dependent claims:

Even in the marginal cases the references are § 102(b) art only if they predate the ~Oct/Nov 1999 critical date (all the ones flagged do), and they would still need to disclose the specific element as claimed — which I have been unable to verify because I could not retrieve their specifications.

6. Explicit gaps and things I could not verify

1. The complete '516 front page was not retrievable in a single document. The two retrieved tables (uspto.report and Justia) are continuous within their visible ranges but each was truncated; the exact ranges I obtained are shown in the tables above. Roughly 85 of the listed US references are accounted for; earlier ones (below US 5,490,287) and the tail (above US 6,195,564) were not.
2. Foreign patent documents and non-patent literature for the '516 were not retrieved. The only NPL item I encountered — Schulyer et al., "Solutions to Sharing Local Printers: LAN Systems Inc., LANSpool, $395 per Server," PC Week, Oct. 1989, vol. 6, No. 39, p. 75 (2) — comes from the front page of US 10,481,846, a sibling, and I cannot confirm it appears on the '516. Likewise the foreign references I saw (CN 1217503 A, 5/1999; CN 1488106 A, 4/2004) are from the '846's front page.
3. Titles/abstracts for most references could not be retrieved, and I have deliberately not supplied them from memory. Where the Description column reads "—" or "not retrieved," treat that as a genuine gap.
4. Filing dates for most references were not retrieved. Front-page tables report issue dates, not filing dates — and for pre-AIA § 102(e) analysis the filing date is the dispositive one. This must be pulled from USPTO PatentCenter/Public PAIR for each reference before any § 102(e) position is asserted.
5. The CIP-vs-continuation discrepancy (flagged in §1) is unresolved and materially affects which critical date applies. If the '516 claims cannot reach back to October/November 2000, the ~2000–2001 block of cited references becomes live § 102(b)/§ 102(a) art and the entire picture changes.
6. I did not retrieve any AIA § 102(a)(1)/(a)(2) analysis because it does not apply — but if the CIP status means the '516 contains claims with a post-March-16-2013 effective filing date, AIA § 102 would apply to those claims and the analysis would need to be redone for them.
7. Sources used: https://uspto.report/patent/grant/9,798,516 ; https://patents.justia.com/patent/9798516 ; https://patents.google.com/patent/US9798516/en ; https://patents.google.com/patent/[US9164718B2](/patent/US9164718B2)/en (citation table used only for cross-checking titles/dates, clearly flagged); IPR2022-00775 reporting at https://www.mondaq.com/Article/1408774 and https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/.

I'll gather prior-art references relevant to the '516 claims before analyzing the § 103 combinations.

Let me pull the specific prior-art references cited in the '516 patent and identify the key third-party references with their dates.

Obviousness analysis — U.S. Patent No. 9,798,516 B2 under 35 U.S.C. § 103

0. Scope, sources, and an important caveat about the prior-art record

What I was actually able to retrieve for this section. The "Prior Art" material available to me on this page consists of:

1. The IDS / references-cited list from the '516's own prosecution file as mirrored on uspto.report (https://uspto.report/patent/grant/9,798,516), which is a long list of U.S. patents running from the early 1990s through 1999 — the visible portion includes, e.g., 5,537,517 (Wakabayashi), 5,568,595 (Yosefi), 5,580,177 (Gase), 5,625,757 (Kageyama), 5,717,742 (Hyde-Thompson), 5,832,191 (Thorne), 5,845,078 (Tezuka), 5,859,970 (Pleso), 5,884,140 (Ishizaki), and continues past 5,903,8xx. The list was truncated in retrieval and the individual titles/teachings of most of these references were not retrievable in this session. I therefore do not assert what each of them discloses.
2. The PTAB record for IPR2022-00775, Unified Patents, LLC v. Flexiworld Technologies, Inc. (challenging sibling patent US 9,836,257, which descends from application 10/053,765 in the same Flexiworld family cluster). That petition and its exhibit list identify the art Unified actually used: US 7,849,198 (Olgaard), US 5,917,542 (Moghadam), US 2002/0080091 (Acharya), US 7,136,999 (Griffiths), US 6,285,665 (Chuah), U.S. App. 09/695,518, Welland et al., The Newton Operating System, COMPCON '94 (IEEE 1994), and Microsoft Computer Dictionary, 3d ed. (1997). PTAB instituted (Nov. 8, 2022) and upheld claims 27–28 after hearing (Aug. 29, 2023; decision reported Nov. 2023). Sources: https://www.docketalarm.com/cases/PTAB/IPR2022-00775/Unified_Patents_LLC/docs/04-08-2022-Petitioner/Petition-1-Inter_Partes_Review_Petition_of_US_Patent_9,836,257.pdf; https://patexia.com/feed/ptab-upholds-flexiworld-s-wireless-content-transfer-patent-after-challenge-by-unified-patents-20231103
3. US 6,801,962 B2 (Sharp Kabushiki Kaisha), priority 2000-07-25/26, "Data output system, mobile terminal, data output method…" — verified content: a mobile terminal that obtains a print service at a nearby image-forming device, with user registration/approval and charging, and a background citing JP publications 11-167534 (1999) and 11-161457 (1999) for printing e-mail attachment data at a server or a special printer. https://patents.google.com/patent/US6801962
4. The '516's own specification text (authoritative, supplied above), which contains extensive applicant admissions of the state of the art.

Caveats I am flagging rather than papering over: (a) I could not retrieve a curated prior-art list beyond the above in this session; (b) reference numbers/dates below that come from general knowledge (RFCs, Bluetooth/UPnP specifications, product art) are marked [verify] because I could not confirm them here; (c) the date context in my instructions is inconsistent ("Today's date 2026-09-15" vs. "Current Date: April 26, 2026") — this does not affect the § 103 analysis, since the relevant art windows are 1999/2000 and 2012.

1. The pivot: pre-AIA law and the effective filing date

• Application 13/710,299 was filed December 10, 2012 — before March 16, 2013. Therefore pre-AIA 35 U.S.C. §§ 102 and 103 govern, and § 103(a) requires an explicit articulation of motivation to combine (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
• The stated priority is November 1, 2000 (provisional 60/245,101 via 10/016,223 → 12/903,048 → 13/710,299). Under § 120/§ 119(e), the claims get that date only if the 2000 disclosure supports them under § 112.
• This is the dispositive issue for obviousness, because it moves the art window by twelve years:

The Scenario A/B question turns on whether the specific claim elements — a touch-sensitive-screen "smart phone" with microphone/speaker/voice-activated commands, an e-mail application with an inbox, an on-screen print item, and the particular sequencing (claim 1: print item then printer list; claim 8: detect/select printer then print item) — appear in provisional 60/245,101 and in 10/016,223/12/903,048. Note that the specification (FIGS. 8A–8G) does describe an e-mail screen with "print" function control 802 followed by a printer list screen 810, so the written-description case for the sequencing is at least arguable; whether that material was in the 2000 filing is the question a challenger will press. Verify the provisional's contents and the 10/016,223 as-filed specification before relying on Scenario A. (PatentCenter: https://patents.google.com/patent/[US9798516](/patent/US9798516)/en; family data at https://uspto.report/patent/grant/9,798,516)

A related § 103-specific point in Flexiworld's favor: pre-AIA § 103(c) disqualifies, for obviousness purposes, subject matter that is prior art only under § 102(e)/(f)/(g) where it and the claimed invention were commonly owned (Flexiworld) at the time of invention. Flexiworld's own siblings (US 7,908,401; 8,332,521; 7,941,541; 9,836,257; 10,481,846; etc.) are largely same-inventor or commonly owned and therefore cannot be used as § 103 combiners — they are, however, squarely relevant to obviousness-type double patenting, which is a separate risk.

2. Level of ordinary skill

For Scenario A: a B.S. in EE/CS (or equivalent) plus 2–3 years of experience, or an M.S. with 1–2 years, in mobile computing, printer drivers/page-description languages, and short-range wireless (IrDA, Bluetooth, IEEE 802.11). The IDS's 1990s printer-network references confirm that this level of skill included printer discovery, spooling, and device-capability negotiation as routine matters.

3. Claim 1 element chart — where each element lives in the art

Only two things in claim 1 are genuinely distinctive in a Scenario A world: (i) the claim-1 ordering (print-item selection precedes presentation of the printer list), and (ii) the bundling of touch-print GUI + e-mail + voice commands in a WLAN phone. Both are GUI/workflow arrangements.

4. Grounds of obviousness

Ground 1 (Scenario A — 2000 priority): handheld e-mail communicator + wireless printer connection + service discovery + touch GUI

Combination: (a) a handheld, mobile, radio-equipped computing/telephony device with a touch-sensitive display running an operating-system-hosted e-mail application (Newton-OS-type handheld art accepted in IPR2022-00775; communicator-class mobile telephony art); (b) a printer output system in which a mobile/portable device wirelessly sends print data to a nearby printer without a pre-installed device-specific driver (spec admissions of radio/IR printer connections; IrDA-based printing; network printing with server-side drivers); (c) a service-discovery protocol that enumerates available network services (SLP/UPnP per the specification's own list); and (d) touch-screen function-control/GUI art for presenting an action item and responding to a touch selection.

Motivation: the '516 specification supplies it in its own words — the mobile worker who "receiv[es] e-mail in his hand-held computer may want to walk up to a nearby printer… to have his e-mail printed"; the perceived deficiencies of driver installation and of routed network printing; and the desire to have the printer in front of the user print directly. Under KSR, an express motivation in the field (and certainly in the applicant's own framing of the problem) plus predictable, finite combination of known elements (handheld + wireless link + printer + discovery) supports obviousness.

Where the attack is strongest / weakest: the transfer of a document from a mobile device to a network printer and the enumeration of available printers are each individually old; the combination for essentially its entire scope is a predictable application of known techniques. The ordering limitation in claim 1 is the main defense and the main battleground: the patent owner will argue that the art taught the opposite sequence (select destination, then print), and that presenting the printer list only after the print command was a non-obvious workflow choice. A challenger responds (i) that both orderings are standard print-dialog design choices (In re Venner-type design-choice reasoning; MPEP 2144.04), (ii) that it is a mere rearrangement of steps with no new technical result — the same print job goes to the same printer either way (MPEP 2144.05; In re Kuehl/In re Angstadt line on order of steps: rearrangement is obvious absent a new or unexpected result) — and (iii) that the specification itself presents both orders across the independent claims, confirming they are equivalents within the same disclosed embodiment.

Ground 2 (Scenario B — effective date 2012): US 6,801,962 + driverless mobile printing over LAN + mobile print-dialog art

If the claims lose the 2000 benefit, US 6,801,962 B2 (granted Oct. 5, 2004) is § 102(b) prior art and is an excellent primary reference: it discloses a mobile terminal interacting with a nearby image-forming device to obtain a print service, with user approval and payment, and its background expressly addresses printing data (including e-mail attachment content) remotely. Combine with (i) driverless/format-negotiated network printing (IPP, RFCs 2565/2566, April 1999, which define printer attribute query — document-format-supported, resolutions, media, supported operations [verify]); (ii) WLAN printer discovery; and (iii) the 2010–2011 commercial print-workflow art (AirPrint, announced Sept. 2010; Google Cloud Print, 2010 [verify]), where an on-screen "print" action produces a printer list. Under that window, every limitation of claims 1, 8 and 15 — including the ordering — is readily located in the art, and the § 103 case becomes strong to overwhelming. This is the single most consequential vulnerability of the '516.

Ground 3 (borrowed from the family's own PTAB template)

Unified's IPR2022-00775 grounds — Olgaard + Moghadam and Acharya + Griffiths, with Chuah and the Newton paper as secondary art — were directed to the sibling '257's claims to "transferring digital content from a mobile wireless information apparatus… to a wireless output device… via short-range wireless communications." Those references are mostly post-2000 and therefore usable only if the '516's priority fails; under Scenario B they are directly importable. Note the negative lesson too: the Board held Unified failed to prove claims 27–28 obvious. The '257 claims, however, did not include the '516's e-mail/print-item/printer-list GUI choreography or the voice-command element, so the '257 outcome does not carry over — but it does show that this family's narrower GUI-defined claims have survived a well-funded § 103 challenge.

5. Dependent claims — generally weaker than the independents

6. The patent owner's best non-obviousness positions (and the counters)

1. The claim-1 order-of-steps hook. "Subsequent to the user having selected the print item… a list of printers" is the most defensible limitation, coupled with the delete item in the same claim. Counter: no new technical result; both orders appear in the same disclosure; GUI workflow sequencing is a design choice.
2. Priority (Scenario A) is worth more than any argument on the merits. If the 2000 date holds, the challenger is confined to 1998–2000 art and must build a 4–5 reference combination; if it fails, the patent is very likely obvious under § 103 over post-2000 mobile-printing art. This should be the first line of defense and the first line of attack.
3. Objective indicia. None of the previously generated sections records a nexus-bearing secondary-considerations record for the '516 (no merits ruling was ever reached in Flexiworld v. Sony, No. 2:23-cv-00616, dismissed with prejudice May 29, 2025). Industry adoption of AirPrint/Cloud-Print-style printing is third-party independent development, which cuts against a nexus argument rather than for it.
4. Family-art firewall. Expect a challenger to reach for Flexiworld's own earlier patents/publications (e.g., WO 02/41118 A2). Pre-AIA § 103(c) common ownership/common inventorship is a real defense; do not concede it.

7. Bottom line and verification checklist

• Under Scenario A (2000 priority): the '516 claims are vulnerable but not clearly invalid. The apparatus/method elements are individually well covered by the admitted art and the 1990s IDS art; the strongest ground is a KSR combination of (i) handheld touch-screen e-mail device + (ii) wireless printing to a nearby printer + (iii) network service discovery (SLP/UPnP) + (iv) touch-GUI function controls, with the specification's own stated problem supplying the motivation. Expect the dispute to reduce to the claim-1 sequencing limitation and to whether the delete/voice/reply elements carry any weight.
• Under Scenario B (2012 effective date): the claims are highly likely obvious; US 6,801,962 (as § 102(b) art) plus IPP-style capability negotiation plus 2010–2011 mobile print-dialog art covers claims 1–25.
• No IPR, PGR, or § 103 merits ruling on the '516 itself exists — the only PTAB proceeding in the family (IPR2022-00775) concerned sibling US 9,836,257 and failed to invalidate it. There is therefore no estoppel or adverse Board finding to build on or contend with for the '516. Note also that the '516 lapsed for non-payment (status "Expired – Fee Related"; Google Patents shows adjusted expiration 2022-06-01 — inconsistent with uspto.report's 2022-11-27 lapse event, so treat the exact date as uncertain), which eliminates amendment as a prosecution option but does not bar an IPR on validity.

Verify before relying on this analysis: (1) contents of provisional 60/245,101 and of 10/016,223 as filed (priority scenario); (2) full text of the '516 IDS references at https://uspto.report/patent/grant/9,798,516; (3) the exact dates/editions of RFC 2608 (SLP), RFC 2565/2566 (IPP), Bluetooth 1.0, and UPnP Device Architecture 1.0; (4) the IPR2022-00775 petition and final written decision for importable art and expert framing (https://www.docketalarm.com/cases/PTAB/IPR2022-00775/); (5) US 6,801,962's file wrapper to confirm whether its e-mail-printing disclosures are as broad as its background suggests.