Invalidity dossier

US 9818449

Current assignee: LG Electronics Inc., LG Electronics U.S.A., Inc.

Added 9/28/2026, 6:05:17 PM

At a glanceNo PTAB challenges2 lawsuits on fileasserted by LG Electronics Inc. +1Media & Broadcasting (T)

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Patent summary

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

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US Patent 9,818,449 B2 — Summary

Identifier note (literal interpretation): Searches for the bare string "9818449" return several unrelated records — WO‑9818449‑A1 ("Methods of preventing breast cancer," Eli Lilly), GB9818449A (fly trap), and a Georgia corporate filing control number. None of those are the patent in question. The results below are for the US patent number 9,818,449 ("449 patent") only.


1. Bibliographic data

Field Value
Patent number US 9,818,449 B2
Title Editing method and recording and reproducing device
Application no. US 15/176,435
Application filed 2016‑06‑08
Publication (grant) date 2017‑11‑14 (pre‑grant pub. US20170025156A1, 2017‑01‑26)
Earliest priority 2004‑12‑02 (JP 2004‑349264); also JP 2004‑378767 and JP 2004‑378768, both 2004‑12‑28
Inventors Susumu Yoshida (Kawasaki), Junji Shiokawa (Chigasaki), Hiroo Okamoto (Yokohama)
Original assignee Hitachi Maxell, Ltd. (assignment from Hitachi, Ltd. recorded 2017‑01‑09)
Current assignee Maxell, Ltd. (via Hitachi Maxell → Maxell, Ltd. → Maxell Holdings → Maxell, Ltd.)
Status Expired – Fee Related; anticipated expiration 2025‑08‑11
Claims 16 total (4 independent: 1, 5, 9, 13)
Classifications G11B27/00, G11B27/02, G11B27/031, G11B27/034, G11B27/10, G11B27/102, G11B27/34, G06F3/048, G06F3/0482, H04N5/76, H04N9/79, H04N9/87

This is a continuation: 15/176,435 ← 14/141,417 (US 9,384,783) ← 12/567,898 (US 8,644,684) ← 11/203,457 (US 7,613,383, filed 2005‑08‑11). The family later produced US 10,199,072; 10,679,674; 11,017,815; 11,468,916; 11,783,863; 11,929,101; and 12,198,733.

2. Abstract (verbatim)

"In order to provide a recording and reproducing device that allows a user to select and manage arbitrary play lists, a unit of management for managing all registered play list information and an upper management hierarchical level are added. The unit of management is adapted to be handled on the same level with unified information that indicates a reproduction range of all AV data. User-defined unified information is adapted to be handled on the added management hierarchical level. The user-defined unified information is formed to allow arbitrary reproduction ranges contained on a lower hierarchical level to be registered."

3. Plain-language overview of the independent claims

Note: the granted claims emphasize group/menu behaviour and cross‑group deletion, which is narrower and differently focused than the specification's "management level 1/2/3 unified information" architecture described above.

  • Claim 1 — Apparatus. A recording/reproducing device with (a) a recording unit that records video information on a medium, (b) an output unit that shows a menu in which the user picks one group of video information by pointing to a character (e.g., a tab/on‑screen label) for that group, (c) a reproducing unit, and (d) a controller. Selecting a first group shows that group's thumbnails; selecting a second group shows that group's thumbnails. Core limitation: if a video item that belongs to both groups is deleted from the first group, the controller keeps it in the second group — the thumbnail still appears among the second group's thumbnails. In other words, removal from one group is a membership/list edit, not deletion of the underlying content.

  • Claim 5 — System. The same subject matter recast as a system (recording unit, reproducing unit, display unit), including the identical cross‑group deletion behaviour: deleting an item from group 1 does not remove it from group 2, and its thumbnail remains in group 2's display.

  • Claim 9 — Method. The same steps in method form (recording, outputting the character‑based group menu, reproducing, and controlling thumbnail display per selected group), with the same "delete from one group, retain in the other" requirement.

  • Claim 13 — System (controller‑centric). A system whose controller displays a menu of selectable characters corresponding to multiple groups of video information; selecting the character for group 1 or group 2 displays that group's thumbnails. Again, where an item is in both groups, deletion of it from group 1 leaves it in group 2 and the controller displays its thumbnail within group 2's thumbnails.

Dependent claims 2–4, 6–8, 10–12, 14–16 add: display of the group's character in a first area (e.g., a tab area) while thumbnails appear in a second, different area; and the explicit statement that the item is removed from the group without deleting the underlying recorded video (claims 4, 8, 12, 16).

4. Litigation, PTAB, and Federal Circuit status

  • PTAB / IPR2025‑00393 — LG Electronics, Inc. et al. v. Maxell, Ltd., filed Dec 30, 2024, patent at issue 9,818,449. Status: Terminated – Settled, termination date Jul 9, 2025. (ipverse.greyb.com; Google Patents lists "PTAB case IPR2025-00393 filed (Settlement)")
  • District court — Maxell, Ltd. v. LG Electronics Inc. and LG Electronics U.S.A., Inc., Case No. 5:24‑cv‑04972 (N.D. Cal.), originally filed in E.D. Tex. (5:23‑cv‑00152, Dec 29, 2023) and transferred Jul 1, 2024. The '449 patent was one of nine asserted patents; LG's invalidity contentions list the '449 patent's priority date as Dec 2, 2004 (JP 2004‑349264). Third‑party reporting indicates the case was dismissed with prejudice by joint stipulation (PatSnap litigation blog). (CourtListener docket; Docket Alarm)
  • CAFC 2026 dockets — I did not locate any 2026 Federal Circuit appeal naming US 9,818,449. The 2026 Maxell Federal Circuit activity I could find involves the Samsung disputes (e.g., Maxell, Ltd. v. Samsung Electronics Co., Ltd., Nos. 26‑1111, 26‑1330, 2026‑1625; Samsung v. Maxell, No. 26‑1320) and does not, on the records retrieved, concern the '449 patent. Separately, the August 2025 precedential Federal Circuit decision won by LG against Mondis/Maxell concerned display technology patents (Mondis), not the '449 patent. (Justia docket 26‑1111; Patexia 2026‑1625)

5. Uncertainty / limitations of this report

  • Source basis: the bibliographic and claim text above is taken from the patent's own full text (Google Patents rendering of US9818449B2) and corroborated by PTAB/litigation portals. I did not query USPTO Patent Center or PACER/CAFC dockets directly; those are fee-gated/authentication-gated, so I relied on secondary aggregators. A direct PACER pull would be needed to confirm the exact dismissal order and the absence of any sealed 2026 appellate activity.
  • No 2026 CAFC appeal for '449 was found, but I cannot rule one out with certainty — only that it does not appear in the retrievable 2026 Maxell CAFC docket listings. The IPR2025‑00393 record shows settlement, which typically ends that track rather than producing an appeal.
  • The quoted litigations details come partly from third‑party litigation blogs and may lag PACER; treat the dismissal-with-prejudice characterization as reported, not independently verified.
  • The "Expired – Fee Related" status and 2025‑08‑11 anticipated expiration are as listed by the aggregator; expiration date computations should be confirmed against USPTO maintenance‑fee records before being relied upon.

Generated 9/28/2026, 6:11:03 PM

Cases on file (2)

Group view →

Specific litigation cases in our database that name US patent 9818449. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

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

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I'll research litigation and post-grant proceedings involving US 9,818,449.

Let me dig deeper for case specifics and any other suits.

Let me check for any other suits or PTAB proceedings involving the '449 patent specifically.

Litigation and contested proceedings involving U.S. Patent No. 9,818,449

I ran targeted searches on the patent number itself (not family members). Everything I found traces back to one district court action and one PTAB proceeding, both involving LG. I found no other suits, ITC investigations, or PTAB proceedings in which the '449 patent was specifically asserted or challenged.


1. Maxell, Ltd. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) and LG Electronics U.S.A., Inc.

Field Detail
Plaintiff Maxell, Ltd. (Japan) — owner by assignment (originally Hitachi Maxell, Ltd.; the '449 issued from Appl. No. 15/176,435)
Defendants LG Electronics Inc. (Korea) and LG Electronics U.S.A., Inc. (Delaware)
Original jurisdiction / case no. E.D. Tex. (Texarkana Div.), No. 5:23-cv-00152, filed December 29, 2023
Post-transfer jurisdiction / case no. N.D. Cal. (San Jose), No. 5:24-cv-04972 (docketed there August 9, 2024; styled 5:24-cv-04972-NW-SVK after reassignment from Judge Eumi K. Lee to Judge Noël Wise)
Transfer LG's § 1404(a) motion to transfer granted July 1, 2024
Patents asserted Nine: 6,856,760; 6,973,334; 7,199,821; 7,421,188; 8,339,493; 8,736,729; 9,818,449; 10,199,072; 10,244,284
'449 claims asserted Claims 9–12 (the method claims) — Count 8 of the complaint
Accused products ~125 LG smartphones (e.g., LG V60 ThinQ 5G as representative; G, K, Q, Stylo, Aristo, Tribute, V families) and ~165 LG laptops (LG Gram); accused functionality was the "Gallery" app — albums as groups, thumbnail display, sort/reorder, and deleting a video from one album (e.g., Favorites) while it remains in another (e.g., Camera) and on the device
Outcome / current status Resolved by joint stipulation of dismissal WITH PREJUDICE under Fed. R. Civ. P. 41(a)(1)(A)(ii), each side bearing its own costs and fees. No merits judgment. Secondary reporting (PACER-based) states dismissal occurred ~327 days after the N.D. Cal. docketing, following the parties' April 29, 2025 notice to Judge Wise that a "prospective" settlement had been reached.

Key procedural details worth noting:

  • LG's § 101 challenge. In October 2024 LG moved for judgment as a matter of law / summary judgment that the asserted claims of the '188, '072, '449, and '760 patents are patent-ineligible under 35 U.S.C. § 101 as directed to the abstract idea of "recording, manipulating, and displaying data." Per MiEx/MLex reporting, briefing was complete and a hearing was set for May 13, 2025 — the court never ruled on it, because the settlement intervened.
  • Willfulness/damages posture. Maxell alleged willful infringement based on notice of the '449 patent given to LG by letter dated July 19, 2021 (and LG's IPR briefings reference notice on July 28, 2021). Maxell sought compensatory and treble damages, injunctive relief, and fees.
  • Transfer posture. LG's motion to stay was denied by Judge Wise on April 25, 2025, and this was followed by the settlement notice.
  • Preclusive scope. A Rule 41(a)(1)(A)(ii) dismissal with prejudice as to all claims and counterclaims operates as a final adjudication binding Maxell and LG (as to the accused LG products). It is not a holding of non-infringement or invalidity, and the patent remains enforceable against third parties (although it has since expired — see below).

2. LG Electronics Inc. and LG Electronics U.S.A., Inc. v. Maxell, Ltd. — IPR2025-00393

Field Detail
Forum USPTO Patent Trial and Appeal Board
Proceeding IPR2025-00393
Patent challenged U.S. 9,818,449 (claims challenged include claims 1 and 9–12)
Petitioners LG Electronics Inc. and LG Electronics U.S.A., Inc.
Patent Owner Maxell, Ltd.
Filing date December 30, 2024
Petitioner counsel Timothy W. Riffe et al., Fish & Richardson P.C.
Patent Owner counsel Robert G. Pluta et al., Mayer Brown LLP
Status Terminated — settled (pre-institution), termination decision July 9, 2025. Joint Motion to Terminate filed July 1, 2025; confidential settlement agreement filed as business-confidential information (Ex. 1041) under 35 U.S.C. § 317 / 37 C.F.R. § 42.74; post-institution fee refund approved July 30, 2025. No institution decision issued.

Grounds and defenses of note (for context if this is being used as prior-art/validity intelligence):

  • Ground 1 relied principally on Bryant (U.S. patent publication disclosing a digital photography system with "All Images" / "All Favorites" / "Group" selector UI and multiple-category classification of a single media file), plus Dr. Andrew Cockburn's declaration.
  • Maxell's preliminary response (Apr. 11, 2025) sought discretionary denial under § 314(a)/Fintiv and § 325(d), arguing: (i) the '449 patent was set to expire around August 11, 2025 (20 years from the Aug. 11, 2005 filing), i.e., before or about the time of the institution decision; (ii) LG waited over 3½ years after 2021 notice to file; (iii) no Sotera stipulation; and (iv) the Cockburn declaration allegedly parroted the petition verbatim (citing Xerox v. Bytemark), warranting little weight.
  • The Board never reached the merits — the parties settled and the proceeding was terminated.

Related family proceedings: LG's petition against the '449 appears to have been part of a coordinated wave of seven IPR petitions against Maxell patents, including IPR2025-00392 (filed Dec. 31, 2024) against U.S. 10,199,072 — a member of the same family as the '449 and asserted alongside it in the district court case.


3. Source note / discrepancy

The Google Patents page for US9818449B2 flags "PTAB case IPR2025-00393 filed (Settlement)" with an attribution line referencing Unified Patents' PTAB database, and separately flags a "US case filed in California Northern District Court" linking to case 5:24-cv-04972. The petitioner of record in IPR2025-00393 is LG Electronics (with LG Electronics U.S.A.), not Unified Patents — the "Unified Patents" reference is the licensing/attribution of the litigation database, not the petitioner. I flag this so the record isn't misread.


4. What I did not find

  • No other district court case in which U.S. 9,818,449 was asserted. Maxell's earlier enforcement campaigns — Hitachi Maxell v. Huawei Device USA (5:16-cv-178), Maxell v. ZTE (5:16-cv-179 and 5:18-cv-34), Maxell v. Apple (5:19-cv-36), Maxell v. Olympus (D. Del. 1:18-cv-00310), Maxell v. Lenovo/Motorola (W.D. Tex. 6:22-cv-00334), and the VIZIO ITC action (which asserted patents in the same family, including U.S. 11,017,815) — did not involve the '449 patent. Maxell's own joint case management statement lists six prior E.D. Tex. cases, none of which included the '449.
  • No second IPR or PGR against the '449 patent, and no CAFC appeal involving it (nothing to appeal, given the pre-institution settlement and stipulated dismissal).
  • No ITC Section 337 investigation naming the '449 patent.

5. Practical status takeaway (as of today, April 26, 2026)

  • The '449 patent was filed Aug. 11, 2005, claims priority to Dec. 2, 2004 (JP2004-349264), and was expected to expire around August 11, 2025 (20-year term measured from the 2005 filing). Google Patents now lists an "Anticipated expiration" of 2025-08-11.
  • Both the district court case and IPR2025-00393 were terminated by settlement; there is no validity or infringement ruling on the '449 patent from any tribunal. Its remaining value is therefore as a family/terms reference (the continuation chain — US 10,199,072, 10,679,674, 11,017,815, 11,468,916, 11,783,863, 11,929,101, 12,198,733 — carries the same priority date and overlapping disclosure), and LG's invalidity contentions and IPR petition materials remain the most detailed publicly-available prior-art/§ 101 attacks on these claims.

Caveats: I could not independently verify the exact docket entry date of the Rule 41(a) dismissal stipulation in the public record through my searches; the settlement notice date (April 29, 2025) and the "terminated July 9, 2025" PTAB date are well sourced, and PACER-based secondary reporting places the dismissal at roughly 327 days after Aug. 9, 2024. If the precise disposition date matters, the N.D. Cal. docket for 5:24-cv-04972 (docs. following Dkt. 130) should be checked directly.

Generated 9/28/2026, 6:11:10 PM

Proceedings on file (0)

All PTAB activity →

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

Current assignee: LG Electronics Inc., LG Electronics U.S.A., Inc.

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

PTAB challenges

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

✓ Generated

I'll research the PTAB record for US 9,818,449, starting from the structured block (which reports no ODP-indexed proceedings) and checking the web for anything the ODP hasn't ingested.

Confirming the LG proceeding and checking for any other IPRs against the '449 patent (or its family) that could bear on it.

Now checking the family-level IPR (Fandango v. Maxell) that bears on the '449's claim 1(g), plus whether any other IPR ever named the '449.

PTAB / AIA Trial Analysis — US 9,818,449 B2 ("Editing method and recording and reproducing device")

Handling note on sources. The structured "PTAB proceedings on file" block in my prompt reports that the USPTO Open Data Portal returns no AIA trial proceedings for this patent. That block is stale. Web search surfaced one proceeding that the ODP has not indexed — IPR2025-00393 — and it is fully documented on PTAB E2E and third-party dockets. Per my operating rules, I flag it and treat it as the canonical record; the ODP "no activity" default does not apply here. I found no second AIA trial naming the '449 patent.


Proceedings overview

Total AIA trials on US 9,818,449: one (1) — IPR2025-00393, terminated by settlement before institution on 2025-07-09. Zero proceedings reached an institution decision, zero reached a Final Written Decision, and therefore zero claims were canceled or sustained at the PTAB. The defensive bottom line is unusual and should not be misread: the patent is neither hardened nor narrowed — it is simply untested. All 16 claims stand exactly as issued, with no PTAB claim construction, no § 315(e)(2) estoppel running against anyone (including LG), and no invalidity adjudication to cite. The single most useful thing the PTAB record gives a defendant is the art set LG threw at claim 1(g) — Bryant, Kaplan and Horn — plus Maxell's own § 325(d) framing of it.


IPR2025-00393 — [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) and LG Electronics U.S.A., Inc. v. Maxell, Ltd.

  • Type: Inter Partes Review (35 U.S.C. §§ 311–319); Tech Center 2400, Art Unit 2484
  • Filed: 2024-12-30
  • Status: Terminated - Settled (verbatim from the structured data sources / dockets: "Terminated-Settled"; termination date 2025-07-09). Plain English: settled out before the Board decided whether to institute.
  • Judge panel: Kevin C. Trock, Jason W. Melvin, Frederick C. Laney (APJs). Trock authored the termination order. (Docket Alarm; ipverse)
  • Counsel: Petitioner — Timothy Riffe, Jennifer Huang, Robert Schwentker, Jack Wilson (Fish & Richardson P.C.). Patent Owner — Robert G. Pluta, Nicholas H. Ciulla (Mayer Brown LLP).
  • Petition grounds: All 16 claims challenged, entirely on § 103 obviousness. The petition/exhibit record identifies at least five grounds, each mapping claims 1–16, built on: Bryant (US 2004/0201691), Kaplan (US 2001/0056434), Horn (US 2004/0177319), DeYonker (US 2006/0107289), Mercer (US 2004/0078383), RE32,632 (Atkinson), US 6,493,006 (Gourdol), and Ethington, Introducing Microsoft Windows 95 plus a "Change BMP Icon to Thumbnail View" web capture. The core theory targeted claim 1[g]: Bryant's "favlevel" metadata and Kaplan's/Horn's "pointers"/multi-collection metadata links were said to teach that removing an item from one group does not remove it from another. (Ground mapping reconstructed from the public petition/exhibit list and a third-party digest of the petition — I did not retrieve the petition PDF itself; treat the specific ground numbering as approximate.)
  • Institution decision: None issued. The Board never reached § 314(a) institution. Maxell's Preliminary Response / Discretionary Denial Brief (filed 2025-04-11) argued denial under § 314(a) (Fintiv) — pointing to the co-pending N.D. Cal. case — and under § 325(d) (Advanced Bionics / Becton, Dickinson), arguing the petition's art (especially Kaplan and Bryant, already litigated in Fandango IPR2018-01432) was previously presented to or considered by the Office without material Examiner error. Maxell also invoked the Acting Director's 2025-03-26 Memorandum on "Interim Processes for PTAB Workload Management." The Board extended discretionary-briefing deadlines (2025-04-09) and the case settled before any institution ruling.
  • Final Written Decision: None. The termination order states expressly: "This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." No claim of the '449 patent has been canceled, confirmed, or construed by the Board.
  • Settlement / termination: Joint Motion to Terminate filed 2025-07-01 under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74; Settlement Agreement filed as Ex. 1041 with access to "Board and Parties Only," and a joint request to treat it as business confidential information under § 317(b) / § 42.74(c). The Board granted termination on 2025-07-09, ordered the agreement kept separate from the '449 file, and released it only to Federal agencies on written request or on a showing of good cause. Terms are confidential. Petitioner then filed a Request for Refund of Post-Institution Fees (2025-07-22), approved 2025-07-30 — consistent with there never having been an institution.
  • Appeal: None. No FWD → nothing appealable under 35 U.S.C. §§ 141(c), 319. I found no CAFC appeal of IPR2025-00393, which is consistent with the earlier section's finding of no 2026 CAFC activity naming the '449 patent.
  • Defensive value: This proceeding is worthless as estoppel and worthless as precedent. Because it settled pre-institution, § 315(e) estoppel never attached — not even against LG or its privies — and the Board made no claim constructions. What it does give a defendant is a free roadmap of LG's § 103 theory against claim 1[g] (Bryant/Kaplan/Horn) and a preview of Maxell's counter-attack: Maxell will run § 325(d) to argue that this same art was already before the Office (via Fandango IPR2018-01432 and the family's prosecution), so a new petitioner who reuses Kaplan/Bryant/Horn should expect a Advanced Bionics fight and should lead with art the Office has genuinely never seen.

Related family proceedings — NOT proceedings on the '449 patent (context only)

Do not cite these as IPRs of the '449 patent. They matter because they construe/attack the same specification and near-identical claim language (the '449 is a direct continuation of US 9,384,783, filed 2013-12-26).

  • IPR2018-01432 — Fandango Media, LLC v. Maxell, Ltd., filed 2018-07-20, challenging claims 2, 5, and 6 of US 9,384,783 (the '449's immediate parent) on § 103 grounds over Kaplan, Bryant, and Kaplan in view of Bryant. Institution 2019-02-13; Final Written Decision 2020-02-10 (Paper 32). LG attached this FWD as LG-1040 in its '449 petition and argued it should control the "one video information" limitation of the '449's claim 1[g]; Maxell's preliminary response attacked that reliance as involving "different claims" of a "distinct" patent. I could not verify the claim-level outcome of Paper 32 in this session — I will not characterize it. It should be pulled directly from PTAB E2E. (RPX Insight; PTAB E2E)
  • IPR2018-01434 — Fandango Media, LLC v. Maxell, Ltd. (US 7,515,810): institution denied (1985 panel: McMillin, Hudalla, Melvin). Not relevant to the '449's claims but shows Maxell's track record of defeating institution.
  • IPR2025-00392 / -00394 are different LG petitions against different Maxell patents (e.g., US 8,339,493 and US 10,199,072), filed 2024-12-31 and 2024-12-30 respectively, and terminated the same week on the same settlement. They are not proceedings on the '449.

Alignment check with the earlier section: No contradiction. The earlier summary's IPR2025-00393 filing date (2024-12-30), termination date (2025-07-09), petitioner (LG), and status (Settled) all match. One attribution needs correcting for the record: Google Patents renders this case with a "Petitioner: 'Unified Patents PTAB Data'" label — that is a CC BY 4.0 data-licensing credit for Unified Patents' PTAB dataset, not a party. Unified Patents is not the petitioner in IPR2025-00393 and no defensive aggregator appears anywhere in this patent's PTAB chain. The petitioner is LG alone.


Strategic summary

Claim status across the patent: 0 CANCELED / 0 SUSTAINED / 16 UNTESTED. Claims 1–16 — including independent claims 1, 5, 9 and 13, and the dependent claims 4, 8, 12, 16 that add the "removes it from the group without deleting it from the recording medium" limitation — have never been the subject of an institution decision or an FWD. There is no PTAB win to hand to a court, no canceled claim to moot a demand letter, and no Board construction of "group," "character," or "one video information" that binds anyone. Be careful not to describe this patent as "hardened by surviving IPRs" (false — nothing was decided) or as "narrowed by IPR" (also false). It is procedurally untouched but commercially validated: Maxell extracted a portfolio-wide settlement from LG that resolved this and six sibling petitions simultaneously.

Estoppel landscape — the key tactical point. Under 35 U.S.C. § 315(e)(2), estoppel attaches only after a final written decision. IPR2025-00393 produced none, so no IPR estoppel bars anyone from raising the Bryant/Kaplan/Horn/DeYonker/Mercer/Gourdol/RE32,632 art in litigation — not LG, not its privies, not a later defendant. Equally, there is no IPR estoppel defense available to Maxell in the reverse direction. The real constraint is different: § 325(d), which Maxell has already shown it will deploy (its 2025-04-11 preliminary response argued that Kaplan and Bryant were previously considered by the Office via the '783 prosecution and Fandango IPR2018-01432, and that there was no material Examiner error). A new petitioner should therefore (i) lead with art not previously before the Office, and (ii) if reusing Kaplan/Bryant, affirmatively brief the Advanced Bionics two-part test with a specific, documented Examiner-error theory rather than relying on the Board to find error sua sponte.

Pattern signals. LG ran a coordinated seven-petition campaign against Maxell (petitions against US 8,339,493, 8,736,729, 10,244,284 and the '449, '072, '760 and '188 patents), and all were swept away together by the 2025-07-01 settlement. Two sequencing facts matter for timing strategy: Judge Wise denied LG's motion to stay the N.D. Cal. case on 2025-04-25, and LG noticed a "prospective" settlement on 2025-04-29 — i.e., Maxell faced down a stay motion and a § 101 JMOL motion, then settled. LG's § 101 "abstract idea of recording, manipulating, and displaying data" challenge to the '449 (raised October 2024, fully briefed, hearing set for 2025-05-13) was never ruled on, because the case ended by stipulation of dismissal WITH PREJUDICE under Rule 41(a)(1)(A)(ii) (each side bearing its own fees). That § 101 theory is now unadjudicated and reusable by the next defendant — and it is the most promising non-PTAB avenue, since no court or the Board has ever construed these claims. Finally, Maxell's broader portfolio is being actively and successfully attacked elsewhere (e.g., Samsung's IPRs, IPR2024-00867, and a district court JMOL criticizing Maxell's expert testimony), which is useful context on how Maxell's claims fare when actually litigated — but none of that involves the '449 patent.

Also relevant to value: the '449 is listed as "Expired – Fee Related," anticipated expiration 2025-08-11 (per the aggregator data in the earlier section — confirm against USPTO maintenance-fee records). If that holds, a defendant being asserted today is looking at past damages only, with no injunctive exposure on this patent, which materially changes settlement posture.


Recommended next steps

  1. If you are facing an assertion of the '449 today: there is no FWD to cite — do not pretend otherwise. Your best artifacts are (a) the IPR2025-00393 petition and its claim charts (public on PTAB E2E at https://ptacts.uspto.gov/ptabweb/, proceeding IPR2025-00393; documents mirrored at Docket Alarm), which show exactly how Bryant/Kaplan/Horn were mapped to elements [1.a]–[1.g], and (b) IPR2018-01432 Paper 32 (2020-02-10) on the parent '783 patent, whose construction of the "one video information" limitation LG argued should control the '449's claim 1[g]. Pull Paper 32 from USPTO PTAB Decisions or PTAB E2E before relying on its holding — I did not verify its verdict.
  2. No new AIA trial is pending on the '449. There are no institution-deadline, oral-hearing, or FWD dates to track — that track closed on 2025-07-09. Nothing is on appeal and nothing is at the Federal Circuit. If you are considering a new petition, note there is no § 315(b) time bar running from the LG IPR (that bar keys to service of your own complaint) and no § 315(e) estoppel, so a fresh petition is legally available.
  3. Expect the § 325(d) fight. Maxell telegraphed its discretionary-denial playbook in the 2025-04-11 filing. Budget briefing on Advanced Bionics and consider the current Director-level guidance on discretionary denial that Maxell itself invoked (the March 26, 2025 work-load-management memorandum) — that guidance has changed repeatedly since 2024 and should be re-pulled as of today's date rather than assumed.
  4. The unadjudicated § 101 theory is the sleeper issue. LG's October 2024 JMOL-equivalent motion on §§ 101 for the '449 was briefed, heard-scheduled, and then extinguished by settlement without a ruling. That record (transcripts/briefs in N.D. Cal. 5:24-cv-04972, CourtListener docket) is a ready-made starting point for a § 101 challenge by any new defendant.
  5. Correct the record in any internal memo: the '449 has no canceled claims, no FWD, no PTAB estoppel, and no defensive-aggregator involvement. The "Unified Patents" string in the Google Patents record for IPR2025-00393 is a data-license credit, not the petitioner.

Confidence and gaps: High confidence on the existence, parties, dates, panel, status, and settlement of IPR2025-00393 (corroborated across PTAB E2E petition documents, the Board's own termination order, Docket Alarm, and ipverse). Medium confidence on the exact ground-by-ground mapping of the petition (reconstructed from the exhibit list and a third-party digest, not the petition PDF). Unverified and deliberately not asserted: the claim-level outcome of the Fandango FWD, IPR2018-01432 Paper 32. I also could not run a live PACER/PTAB E2E pull, so the absence of any other short-lived or sealed proceeding cannot be ruled out with absolute certainty — a direct E2E search on patent 9,818,449 is the one remaining check worth doing.

Generated 9/28/2026, 6:11:51 PM

Ownership chain (5)

Asserters network →

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

  1. ? · recorded 2017-01-09 · Assignment

    OKAMOTO, HIROO; SHIOKAWA, JUNJI; YOSHIDA, SUSUMUHitachi, Ltd.

    chain-of-title clean-up

  2. ? · recorded 2017-01-09 · Assignment

    Hitachi, Ltd.Hitachi Maxell, Ltd.

    internal reorg

  3. 2017-10-01 · recorded 2018-01-25 · reel 045142/0208 · Assignment

    Hitachi Maxell, Ltd.Maxell, Ltd.

    Correspondent: NADEEN NSOULI

    internal reorg

  4. ? · recorded 2021-11-29 · Merger

    Maxell, Ltd.Maxell, Ltd.

    internal reorg

  5. ? · recorded 2021-12-03 · Change of Name

    Maxell, Ltd.Maxell, Ltd.

    change of name only

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment chain, correspondent of record, and NPE signals. Let me run several searches in parallel.

Good leads. Let me dig into the specific assignment records, correspondent of record, and the corporate-chain details.

Assignment & Ownership Reconstruction — US 9,818,449 B2

Scope note / source limitation (please read first). The USPTO Assignment Center (https://assignmentcenter.uspto.gov/) and Assignment Search (https://assignment.uspto.gov/patent/index.html) are scripted applications; and PATENTSCOPE-style deep links to individual reel/frame cover sheets are not retrievable as stable URLs. I therefore assembled the chain from (i) the Google Patents legal-events panel for US9818449B2 (which mirrors recorded-assignment data), (ii) a USPTO Patent Assignment Abstract of Title reproduced inside a PTAB reexamination file-history exhibit that captures the same Hitachi Maxell → Maxell recording, and (iii) Maxell's own federal complaints describing the corporate reorganization. I did not obtain a '449-specific cover sheet for every link. Where I have a reel/frame, I say so; where I do not, I say so explicitly rather than guess. Nothing below is invented.


Inventors

Inventor Residence of record Employer at filing Basis
Susumu Yoshida Kawasaki, Japan Hitachi, Ltd. Named on the '449; executed assignment of interest to Hitachi, Ltd. recorded 2017-01-09
Junji Shiokawa Chigasaki, Japan Hitachi, Ltd. Same
Hiroo Okamoto Yokohama, Japan Hitachi, Ltd. Same

Unusual patterns:

  • All three inventors' assignment to Hitachi, Ltd. was recorded 2017-01-09 — roughly 11.4 years after the 2005-08-11 filing of the parent application (Ser. No. 11/203,457) and only weeks before the '449 continuation was published (pre-grant pub. 2017-01-26) and months before it granted (2017-11-14). A confirmatory/late-recorded employment assignment filed simultaneously with the transfer to Hitachi Maxell, Ltd. is the classic chain-of-title clean-up before a portfolio transfer, not a contemporaneous filing assignment. (I flag the interpretation as inferred; the executed date is not visible in the aggregated record.)
  • No evidence of inventors departing the original assignee within 12 months of filing; the record does not permit that determination either way — do not read the 2017 recordation as a departure signal.

Original assignee

  • Entity named on the face of the granted patent: Hitachi Maxell, Ltd. (Google Patents "Original Assignee"). Earlier-filed family members (US 7,613,383) named Hitachi, Ltd.
  • Primary line of business: recordable media (magnetic tape, optical disc), lithium-ion micro-batteries and alkaline batteries, projectors/lenses, and consumer accessories. Maxell's complaints describe a company "founded in 1961 as Maxell Electric Industrial Co., Ltd." with 50+ years in storage media and energy products.
  • Did it ship a product embodying the claims? Not verified. The asserted claims are directed to a recording/reproducing apparatus with character/tab-based group menus and thumbnail lists — i.e., an HDD/DVD recorder UX. Hitachi-branded DVD/HDD recorders existed in the relevant window, but no product map, claim chart, or product literature tying a shipped SKU to claims 1/5/9/13 was produced in the material I retrieved. Treat "ships an embodiment" as plausible but unconfirmed.
  • Current status: Hitachi Maxell, Ltd. no longer exists under that name; the '449 now sits with Maxell, Ltd. (1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto), a listed Japanese operating company (Maxell Holdings, Ltd. / Maxell, Ltd. corporate group). Not bankrupt, not dissolved. The original assignee's business was reorganized into the current holder rather than sold off.

Assignment timeline

There are recorded post-issuance assignments for this patent — four links. Note there is no third-party NPE anywhere in the chain.

2004-12-02 / 2004-12-28 (priority instruments; no US assignment recorded)

  • Conveyance: n/a (JP priority filings 2004-349264, 2004-378767, 2004-378768)
  • Not an assignment event; listed for chain context only.

2017-01-09 (recorded) — Reel/frame not retrieved

  • Conveyance: ASSIGNMENT OF ASSIGNORS' INTEREST
  • Assignors: OKAMOTO, HIROO; SHIOKAWA, JUNJI; YOSHIDA, SUSUMU (inventors)
  • Assignee: HITACHI, LTD.
  • Correspondent: not captured in the sources retrieved.
  • Context: chain-of-title clean-up — historical inventor assignment recorded in the same window as the asset transfer, suggesting the transferee required a clean record before closing.

2017-01-09 (recorded) — Reel/frame not retrieved

  • Conveyance: ASSIGNMENT OF ASSIGNORS' INTEREST
  • Assignor: HITACHI, LTD.
  • Assignee: HITACHI MAXELL, LTD.
  • Correspondent: not captured.
  • Context: internal corporate reorganization — Hitachi consumer-electronics IP consolidated into Hitachi Maxell. (Discrepancy flagged below.)

2018-01-25 (recorded) — executed 2017-10-01 — Reel 045142/0208 (corroborated via a USPTO Patent Assignment Abstract of Title reproduced in a PTAB reexam exhibit; the abstract shows this recording as a 141-page bulk instrument)

  • Conveyance: ASSIGNMENT OF ASSIGNORS' INTEREST
  • Assignor: HITACHI MAXELL, LTD.
  • Assignee: MAXELL, LTD., 1 Koizumi, Oyamazaki, Oyamazaki-cho, Otokuni-gun, Kyoto, Japan
  • Correspondent: NADEEN NSOULI, 71 South Wacker Drive, Chicago, IL 60606
  • Context: internal reorganization / name-and-business realignment (Maxell's complaints describe it as "a reorganization and name change"); the 141-page bulk character shows a portfolio-wide conveyance, not a targeted transfer.
  • ⚠️ Caveat: reel 045142/0208 is the recording that matches the '449's 2018-01-25 event by date, parties and conveyance type, but the abstract I retrieved came from a sibling Maxell patent's file history. The '449's cover sheet may be one of the 141 pages of that bulk instrument or a companion recording. Verify the exact frame number on the '449 cover sheet before citing it as the '449-specific reel/frame.

2021-11-29 (recorded) — Reel/frame not retrieved

  • Conveyance: MERGER
  • Assignor: MAXELL, LTD.
  • Assignee: MAXELL HOLDINGS, LTD.
  • Context: internal holding-company reorganization (merger of the operating entity into the holding company).

2021-12-03 (recorded) — Reel/frame not retrieved

  • Conveyance: CHANGE OF NAME
  • Assignor: MAXELL HOLDINGS, LTD.
  • Assignee: MAXELL, LTD.
  • Context: change of name only — no change in beneficial ownership; 4 days after the merger, confirming a two-step reorg rather than a third-party transfer.

Contradiction to flag explicitly

Maxell's complaints (e.g., Maxell, Ltd. v. LG Electronics, E.D. Tex. 5:23-cv-00152 ¶4) narrate the chain as 2009: Hitachi, Ltd. → Hitachi Consumer Electronics Co., Ltd., then 2013: Hitachi Consumer Electronics Co., Ltd. → Hitachi Maxell, Ltd., then Hitachi Maxell → Maxell "as a result of a reorganization and name change."

The recorded events on the '449 page show no 2009 or 2013 recording and no Hitachi Consumer Electronics Co., Ltd. link at all — the transfer into Hitachi Maxell, Ltd. is recorded 2017-01-09, directly from Hitachi, Ltd. Either (a) the 2009/2013 deeds were executed earlier but not recorded until the 2017 clean-up, or (b) the '449's continuation chain bypassed HCE. The litigation narrative and the recorded chain do not line up on dates or on the intermediate entity, and this matters for standing/priority-of-title arguments. Flag for verification against the actual reel/frame instruments.

Correspondent recurrence (signal 3 data point): "NADEEN NSOULI" appears as correspondent of record on the bulk Hitachi Maxell → Maxell assignment at reel 045142/0208 (Chicago, IL 60606). A USPTO-registered practitioner named Nadeen Nsouli (Reg. No. 76859) is now listed with Cooley LLP, 110 N. Wacker Drive, Suite 4200, Chicago, IL 60606 (patentbots practitioner record). Note the recorded address (71 South Wacker Drive) and the current firm address (110 N. Wacker Drive) differ — I cannot confirm from these sources that the same firm of record is involved, so I do not treat the Nsouli appearances as a proven repeat-filer NPE pattern. Maxell's other recordings also show different correspondents (e.g., McDermott, Will & Emery LLP, Washington DC), which is consistent with a real in-house IP department rotating outside counsel rather than a single attorney running a shell network.


Timeline diagram

timeline
    title Ownership of US 9818449
    2004 : Japanese priority applications filed
    2005 : US parent application filed
    2017 : Inventors assign to Hitachi Ltd
         : Hitachi Ltd transfers to Hitachi Maxell Ltd
         : Continuation issues as US 9818449
    2018 : Hitachi Maxell Ltd assigns portfolio to Maxell Ltd
    2021 : Maxell Ltd merges into Maxell Holdings Ltd
         : Maxell Holdings renamed Maxell Ltd
    2023 : Maxell asserts patent against LG
    2025 : IPR2025-00393 settled and terminated
         : Patent reaches fee-related expiry

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT.
Every assignee is a named Japanese operating corporation with a real corporate address: Hitachi, Ltd. (6-6 Marunouchi 1-chome, Chiyoda-ku, Tokyo); Hitachi Maxell, Ltd.; Maxell, Ltd. (1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto); Maxell Holdings, Ltd. Conveyance types are Assignment of Assignors' Interest → Merger → Change of Name — the signature of an internal reorganization, not a drop into a licensing shell. No "IP/Licensing/Ventures" suffix, no registered-agent service address, no single-purpose Delaware/Texas LLC appears on reel 045142/0208 or in any Google Patents legal event for this patent. Compare, contrast: the Mondis Technology Ltd. lineage (a genuine Hitachi-origin NPE) is a different family — it is not in this chain.

2. Known asserter in the chain — NOT PRESENT.
None of Hitachi, Ltd., Hitachi Maxell, Ltd., Maxell, Ltd., or Maxell Holdings, Ltd. appears on the enumerated NPE rosters (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). Inverse indicator: Unified Patents' own PTAB portal classifies the patent owner in the companion Maxell IPRs as "Maxell Ltd — Operating Company" (see IPR2025-00444 case record). Maxell is a high-frequency plaintiff (LG, Samsung, Apple, ZTE, VIZIO-adjacent), but high-frequency plaintiff ≠ NPE for an operating company with shipped product lines.

3. Repeat correspondent across the chain — UNCLEAR / WEAK.
One correspondent is captured: Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 on the Hitachi Maxell → Maxell recording (reel 045142/0208, recorded 2018-01-25). Maxell's other recordings use McDermott Will & Emery LLP (e.g., reel 44603/893) — i.e., the correspondent is not a single recurring lawyer across the chain. A name that also matches a Cooley LLP patent agent (Reg. No. 76859) exists, but the recorded street address differs and the role is a filing/paralegal function typical of operating-company bulk recordings. One appearance is not a finding; this signal stays weak. Flagged for the record only because the recurring-registrant was specifically requested.

4. Cascading transfers through chained LLCs in <24 months — NOT PRESENT.
Recordings are 2017-01-09 (×2), 2018-01-25, 2021-11-29, 2021-12-03 — four recordings over ~5 years, all between named operating corporations of the same corporate group, all with Japanese corporate addresses. The only sub-24-month cluster is the 2021 merger + name change four days apart, which is a two-step holding-company reorg, not a shell cascade.

5. Pre-litigation transfer — NOT PRESENT.
The last substantive transfer is the 2021-12-03 change of name (reel/frame not retrieved); the first identified suit naming the '449 is Maxell, Ltd. v. LG Electronics Inc., E.D. Tex. No. 5:23-cv-00152, filed 2023-12-29 (later transferred to N.D. Cal. as 5:24-cv-04972). That is ~25 months after the last recording — well outside the 6-month window, and the intervening recordings are internal, not inbound transfers from an unrelated seller. (Note: I cannot rule out an earlier '449 assertion inside the 2018–2020 Maxell v. ZTE / Maxell v. Apple suits without pulling each complaint; if one exists in mid-2018 it would fall within 6 months of the 2018-01-25 recording — worth checking, but the 2018-01-25 instrument is an internal reorg either way, so the signal's significance is low.)

6. Bankruptcy fire-sale — NOT PRESENT.
No Chapter 7/11 by Hitachi or Maxell is reflected in the records retrieved. The 2009 Hitachi → Hitachi Consumer Electronics, 2013 HCE → Hitachi Maxell, and 2018 Hitachi Maxell → Maxell steps were solvency reorganizations, not insolvency sales.

7. Privateering — NOT PRESENT (with a noted nuance).
The patent never left the Hitachi/Maxell corporate family; Maxell asserts it in its own name (Maxell, Ltd. is the named plaintiff, and it is identified as owner by assignment in the complaints). There is no third-party NPE asserting on Hitachi's behalf. Nuance: Maxell maintains a US affiliate, Maxell Research and Development America, LLC ("MRDA"), founded in Marshall, Texas, and Maxell's pleadings expressly link that affiliate to its Eastern-District-of-Texas presence — a venue/establishment play by an operating company, which is aggressive assertion practice but not privateering.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at Maxell, Ltd. — an operating company. It does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN, so the patent has not been neutralized.

Additional pattern worth recording (assertion strategy, not ownership): the '449 is a 2016-filed continuation of a 2005 application, and the family was extended repeatedly through US 12,198,733 (2024) — a deliberately long continuation tail. The '449 was asserted a decade-plus after its priority date, alongside seven sibling continuations in the same portfolio. That is portfolio-maximization and assertion-tail behavior by an operating company, not an ownership-chain defect.


Verdict

Operating-company assertion.

The chain is a four-link internal Japanese corporate reorganization — inventors → Hitachi, Ltd. (recorded 2017-01-09); Hitachi, Ltd. → Hitachi Maxell, Ltd. (recorded 2017-01-09); Hitachi Maxell, Ltd. → Maxell, Ltd. (bulk assignment, reel 045142/0208, executed 2017-10-01, recorded 2018-01-25, correspondent Nadeen Nsouli); Maxell, Ltd. → Maxell Holdings, Ltd. by MERGER (2021-11-29) and back by CHANGE OF NAME (2021-12-03). Zero of the eight NPE signals is present; the only non-trivial observations are a Chicago correspondent whose name recurs on one link (signal 3, weak) and a >24-month gap between the final recording and the first identified assertion against LG (Dec 2023), which is affirmatively anti-corroborative of a pre-litigation transfer. Current holder Maxell, Ltd. is a listed Japanese operating manufacturer that ships storage-media, battery, projector and consumer-electronics products and, per Unified Patents' own classification of the patent owner in the parallel Maxell IPRs, is an "Operating Company" enforcing its own patents against actual competitors.

Verify at: https://assignmentcenter.uspto.gov/ (search by patent number 9818449) and the parallel https://assignment.uspto.gov/patent/index.html — request the cover sheets for all four recordings and confirm the '449-specific reel/frame for the 2018-01-25 bulk assignment, the 2017-01-09 execution dates, and the 2021 merger/name-change reel frames, none of which I could pull directly.

Generated 9/28/2026, 6:12:12 PM

Prior art

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

✓ Generated

I'll build on the prior sections. Note the full patent text (including the "Patent Citations (17)" table) is already authoritative in the record, so my job here is to ground each cited reference and assess § 102 anticipation against the granted claims (1, 5, 9, 13 and dependents). Let me verify the key references.

Let me verify the remaining higher-relevance references: the two examiner-flagged UI references (Honkaniemi, Yahoo) and the Fuji Xerox and Hitachi references.

Prior-Art Analysis — U.S. Patent No. 9,818,449 B2

0. Patent identification (confirming the literal ID)

The instruction was to search for 9818449 and not similar numbers. The authoritative full text in the record is the USPTO/Google Patents rendering of US 9,818,449 B2, titled "Editing method and recording and reproducing device" — App. No. 15/176,435, filed 2016‑06‑08, granted 2017‑11‑14, priority 2004‑12‑02 (JP 2004‑349264, plus JP 2004‑378767 / JP 2004‑378768 of 2004‑12‑28). This matches the ID exactly and is the patent analyzed below.

Source caveat (repeating a limitation flagged in the summary section): I could not query USPTO Patent Center / PAIR directly (auth/fee-gated). The citation list below is taken verbatim from the '449 patent's own front page, which is the authoritative record for this analysis; the descriptive and date data for each reference were then corroborated against Google Patents, Espacenet, and USPTO.report. Where a secondary source gives a date that conflicts with the patent's own table, I flag it.

Governing date. The '449 patent's effective filing/priority date for prior-art purposes is at the latest 2004‑12‑02 (earliest JP priority); the earliest US filing in the chain in which the '449's subject matter appears is 2005‑08‑11 (parent 11/203,457). This matters below — see the Honkaniemi timing problem (§17) and the overall conclusion.


1. The cited references (17 patent documents on the '449 front page)

The '449 lists 17 patent citations. In Google Patents' convention, the two marked with an asterisk in the "Citations" list — US 2007/0022382 A1 (Honkaniemi) and US 7,512,622 B2 (Yahoo) — are marked as exampler-cited; the remainder came in largely via the Japanese priority/IDS search. The patent page also lists prior-art keywords: group, video information, display, thumbnails, information — confirming the examiner's focus was the group/thumbnail UI, not the disc-management architecture.

1. JPH 1132301 A — Sony Corp.

  • Title: Image processing apparatus, image processing method, and recording medium
  • Dates: priority 1997‑07‑10; published 1999‑02‑02
  • Description: Sony's index/thumbnail image processing disclosure — displaying representative images associated with recorded material. Describes thumbnail-style navigation of image data.
  • § 102 read: No full anticipation of any claim. It predates the priority date comfortably and is relevant only to the generic "thumbnail" element of the independent claims; it discloses no character-selectable group menu and, critically, no cross-group deletion-retention. At most § 103 fodder for the thumbnail display element of claims 1/5/9/13.

2. CN 1243596 A — Matsushita Electric Industrial Co.

  • Title: Optical disc, video data editing device, recording medium for storing computer-readable editing program, optical disc playback device, and recording medium for storing computer-readable playback program
  • Dates: priority 1997‑09‑17; published 2000‑02‑02
  • Description: The Chinese counterpart/relative of the Matsushita optical-disc editing family. Discloses navigation/management information enabling editing of reproduction sequences on an optical disc.
  • § 102 read: No full anticipation. Establishes the general "management information + editing program" background; not directed to group/thumbnail UI.

3. JP 2000‑152180 A — Matsushita Electric Industrial Co.

  • Title: Optical disk, video data editing device, computer-readable recording medium recording editing program, optical disk reproducing device, computer-readable recording medium recording reproduction program
  • Dates: priority 1997‑09‑17; published 2000‑05‑30
  • Description: This is the reference the '449 patent itself cites in its Background as the conventional technique (the "play list" reference). It is the source of the FIG. 2 management model that the '449 uses as its point of departure (original cell information + user-defined cell information + program-set information/play-list information on two levels).
  • § 102 read: No anticipation of any granted claim, but it is the most important specification-level reference: it discloses the layered management-information model (original vs. user-defined cells; play lists). Note the '449's own critique — in this reference the play-list sequence is fixed and users cannot select/manage subsets. Its relevance is to the problem statement, not to the granted claim language (group-character menu, per-group thumbnails, cross-group retention).

4. US 6,181,870 B1 — Matsushita Electric Industrial Co. (Okada et al.)

  • Title: Optical disc having an area storing original and user chain information specifying at least part of a video object stored on the disc, and a computer program and recording apparatus for recording and editing the chain information
  • Dates: priority 1997‑09‑17; filed 1998‑09‑17 (App. 09/154,878); granted 2001‑01‑30
  • Description: The US counterpart in the same Matsushita family as JP 2000152180 and CN 1243596. Its core is a disc storing both "original chain information" and "user chain information" that specify at least part of a stored video object, plus recording/editing apparatus for that chain information. (Confirmed via Google Patents/Espacenet: application 09/154,878 → US 6,181,870 B1, granted 2001‑01‑30.)
  • § 102 read: Strongest "architecture-level" reference, but no full anticipation. The original-chain / user-chain pair is the closest cited analogue to the '449's "original unified information" vs. "user-defined unified information" concept. However, claim 1/5/9/13 require (i) a menu in which a group is selected by pointing to a character for that group, (ii) display of that group's thumbnails, and (iii) the specific cross-group deletion-retention behavior. US 6,181,870 discloses none of those. Potentially relevant only as background/§ 103 combination for the data-structure concepts.

5. US 2001/0023436 A1 — Anand Srinivasan

  • Title: Method and apparatus for multiplexing separately-authored metadata for insertion into a video data stream
  • Dates: priority 1998‑09‑16; published 2001‑09‑20
  • Description: Metadata multiplexing into a video stream — an authoring/transport reference, not a UI or navigation reference.
  • § 102 read: None. No group/menu/thumbnail/cross-group-deletion teaching. Tangential.

6. JP 2002‑197806 A — Toshiba Corp.

  • Title: Stream information processing system
  • Dates: priority 1999‑02‑18; published 2002‑07‑12
  • Description: Stream information processing (recording/reproduction of streamed AV data and its management information).
  • § 102 read: None of the granted claims. Recites stream handling, not group UI or list-level deletion semantics.

7. US 6,470,140 B1 — Matsushita Electric Industrial Co.

  • Title: Optical disc, optical disc recording and reproducing apparatus, and optical disc recording and reproducing method
  • Dates: priority 1999‑03‑10; granted 2002‑10‑22
  • Description: Optical-disc recording/reproduction with navigation data.
  • § 102 read: None of the granted claims. Background only.

8. US 6,480,669 B1 — Kabushiki Kaisha Toshiba

  • Title: Digital video recording/playback system with entry point processing function
  • Dates: priority 1999‑05‑12; granted 2002‑11‑12
  • Description: Entry-point (chapter/start-point) processing in a digital video recording/playback system.
  • § 102 read: None of the granted claims. Entry points are not "groups of video information" selected via a character menu, and there is no cross-group retention teaching.

9. JP 2002‑150503 A — Pioneer Electronic Corp.

  • Title: Information recording/reproducing device and information recording medium
  • Dates: priority 2000‑11‑13; published 2002‑05‑24
  • Description: Recording/reproducing device with management information on a recording medium.
  • § 102 read: None. Generic medium/management-art.

10. JP 2003‑100055 A — Matsushita Electric Industrial Co.

  • Title: Recording apparatus, recording medium, reproducing apparatus, program, and method
  • Dates: priority 2001‑06‑04; published 2003‑04‑04
  • Description: Recording/reproducing apparatus and medium with management data.
  • § 102 read: None of the granted claims. Background.

11. JP 2003‑036652 A — Toshiba Corp.

  • Title: Recording/reproducing apparatus and recording/reproducing method
  • Dates: priority 2001‑07‑25; published 2003‑02‑07
  • Description: Recording/reproducing apparatus/method (management-information based reproduction control).
  • § 102 read: None of the granted claims.

12. US 2003/0063897 A1 — Samsung Electronics Co., Ltd. (Heo Jung‑Kwon)

  • Title: Information storage medium with user defined file containing reproducing information, apparatus and method therefor
  • Dates: priority 2001‑09‑28 (the '449's own table prints 2001‑09‑29); filed 2002‑09‑26 (App. 10/256,286); published 2003‑04‑03
  • Description: A medium storing (a) data files, (b) one information file per data file (carrying navigation information), (c) a "unified information file" carrying management information over the information files, and (d) a "user-defined unified information file" carrying navigation information for a user-selected subset of the data files. Notably, it expressly addresses edit/delete propagation: "if at least a portion of a data file is edited or deleted, the edits or deletions are reflected by a user-defined unified information file."
  • § 102 read: Conceptually the closest cited reference to the '449's specification-level invention — it literally uses the "user-defined unified information file" terminology the '449's claims/summary employ. But it still does not disclose: a menu in which a group is selected by pointing to a character; per-group thumbnail arrays; nor the decisive limitation that deleting an item from one group leaves it in another group and keeps its thumbnail displayed there. Its deletion teaching runs the other way (propagating a deletion into the user-defined file). So: no anticipation of claims 1/5/9/13, but it is a strong § 103 candidate on the data-structure elements and the single most important reference to reconcile.
    • Minor discrepancy to flag: the '449 front page prints the priority as 2001‑09‑29; Google Patents/USPTO.report show 2001‑09‑28. Either way it is well before the 2004 priority.

13. JP 2003‑123389 A — Sony Corp.

  • Title: Recording medium reproducing apparatus and method, recording medium, and program
  • Dates: priority 2001‑10‑16; published 2003‑04‑25
  • Description: Reproduction apparatus/method for a recording medium (navigation/management).
  • § 102 read: None of the granted claims.

14. US 7,257,774 B2 — Fuji Xerox Co., Ltd. (Denoue et al.)

  • Title: Systems and methods for filtering and/or viewing collaborative indexes of recorded media
  • Dates: filed 2002‑07‑30 (App. 10/207,108); granted 2007‑08‑14 (pub. US 2004/0021685 A1, 2004‑02‑05)
  • Description: Merging multiple users' annotation indexes over a video stream, scoring/ranking annotations by heuristics, and visualizing them in user interfaces with groupings/clusters and per-user tags. Multiple-user handling is central.
  • § 102 read: No full anticipation. Relevant to the "plurality of users / groups" and multi-view UI concepts, but the "groups" are clusters of annotations, not user-selectable groups of video information presented as thumbnail sets via a character menu; and it has no list-membership deletion semantics at all. § 103 candidate for the multi-user aspect only.

15. JP 2004‑192779 A — Hitachi, Ltd.

  • Title: Recording medium, recording device, recording method, reproducing device, and reproducing method
  • Dates: priority 2002‑10‑18; published 2004‑07‑08
  • Description: Hitachi's own earlier work on a recording medium with recording/reproduction management — i.e., the same assignee's antecedent technology (Hitachi, Ltd. is the original inventor-employer; assignment to Hitachi Maxell recorded 2017‑01‑09).
  • § 102 read: No anticipation of the granted claims. Same-family antecedent art, useful mainly as context for what the applicants themselves treated as known.

16. US 7,512,622 B2 — Yahoo! Inc. — (examiner-cited, * )

  • Title: Method and apparatus for organizing and playing data
  • Dates: filed 2003‑06‑11 (App. 10/459,341); granted 2009‑03‑31
  • Description: Organizing/presenting media content in a consistent interface across sources; creating playlists and playing content out of sequence; a metadata-driven navigation UI with categories/channels. (Note: Yahoo has a companion grant, US 7,574,448 B2, sharing the same title.)
  • § 102 read: Valid § 102(e) reference (its 2003‑06‑11 filing date comfortably precedes the 2004‑12‑02 priority), and it is the closest cited art on "playlist organization in a UI." But it discloses no character-selectable group menu over video-information groups, no per-group thumbnail arrays, and no cross-group deletion-retention. No anticipation of any granted claim; § 103 candidate for the playlist/UI organization elements.

17. US 2007/0022382 A1 — Petteri Honkaniemi — (examiner-cited, * )

  • Title: Digital content management user interface, apparatus and system thereof
  • Dates: filed 2005‑07‑22 (App. 11/341,373 per the family); published 2007‑01‑25
  • Description: A digital-content management UI with editor panels, a playlist view, an item view, loop view, thumbnails forming playlists, drag-and-drop of items into a playlist, and a remove button ("If user wants to remove item or playlist, he/she just selects the item and pushes the remove button…").
  • § 102 read — with a critical timing caveat. On its face this is the closest cited reference to the UI mechanics of claims 1/5/9/13 (thumbnail series, playlist manipulation, add/remove). But its earliest date (filed 2005‑07‑22) is after the '449's 2004‑12‑02 priority. It can therefore be § 102(e) prior art only if the granted group/thumbnail/cross-group-deletion claims are not entitled to the 2004‑12‑02 priority date (i.e., only if those limitations are new matter relative to the three JP 2004 applications, so that the claims' § 102(e) date shifts to the 2005‑08‑11 US filing of parent 11/203,457). If the claims keep the 2004 priority, Honkaniemi is not prior art at all. Even assuming it qualifies, it discloses removal of an item from one list and nothing about the item remaining in a second group with its thumbnail still shown there — so it still would not anticipate the independent claims; it is § 103 fodder at best. This timing/named-inventor question is, in my view, the single most important issue to verify in the file wrapper.

Other listed citations: The front page also lists a "Patent Citations (17)" and separately a "Citations (16)/Family Cites Families (171)" set. The two examiner-flagged items above are reproduced with the asterisk convention; none of the other 15 cited documents is marked as third-party-cited.


2. Non-patent citations (5)

The '449 front page lists five NPL items; the visible four are prosecution documents, not prior art:

  1. Chinese IP Office (SIPO) office action, CN 2005‑100935522, dated 2008‑05‑26.
  2. Japan Patent Office (JPO) office action, JP 2004‑349264, dated 2008‑08‑06.
  3. Japan Patent Office (JPO) office action, JP 2008‑268104, dated 2009‑06‑12.
  4. "Office …" (truncated in the rendering — likely a further office action/notice).

These are the counterpart-prosecution record and confirm the family was substantively examined in CN and JP; they carry no § 102 significance by themselves.


3. Summary table — § 102 potential by reference

# Reference Effective date vs. 2004‑12‑02 Closest claim(s) Full § 102 anticipation?
3 JP 2000‑152180 (Matsushita) Before — (spec background) No
4 US 6,181,870 (Matsushita) Before 1/5/9/13 (structure only) No
12 US 2003/0063897 (Samsung) Before 1/5/9/13 (data-structure only) No
16 US 7,512,622 (Yahoo) * Before 1/5/9/13 (playlist UI only) No
17 US 2007/0022382 (Honkaniemi) * After 2004‑12‑02; only if priority lost 1/5/9/13 (UI mechanics) No (and possibly not art at all)
14 US 7,257,774 (Fuji Xerox) Before multi-user aspect No
1 JP H11‑32301 (Sony) Before thumbnail element No
2,5,6,7,8,9,10,11,13,15 remaining JP/US refs Before none of the granted claims No

4. Analytical conclusion

  1. No cited reference appears to anticipate any independent claim (1, 5, 9, or 13) under § 102. The distinguishing limitation across all four independent claims is the cross-group deletion-retention rule — an item present in two groups, when deleted from the first, (a) stays in the second and (b) its thumbnail still appears among the second group's thumbnails, and (per dependent claims 4/8/12/16) the underlying recorded video is not deleted. None of the 17 cited documents discloses that behavior. Several (Matsushita, Samsung) disclose deletion propagation into a management/user-defined file — the opposite direction — which if anything cuts against anticipation and could be argued as teaching away.

  2. The cited art clusters into two groups that map to two different things:

    • Disc-management/DVD-navigation art (JP 2000152180, US 6,181,870, CN 1243596, US 6,470,140, US 6,480,669, JP 2002150503, JP 2003100055, JP 2003036652, JP 2003123389, JP 2004192779) — relevant to the specification's "original vs. user-defined unified information" architecture but not to the granted claims.
    • General media/annotation UI art (Yahoo US 7,512,622, Honkaniemi US 2007/0022382, Fuji Xerox US 7,257,774, Sony JP H11‑32301) — relevant to playlists, thumbnails, and multi-user grouping/views, which is where the granted claims actually live.
  3. The two examiner-flagged references are the most probative on the claims, and one of them (Honkaniemi) has a date problem. Because Honkaniemi filed 2005‑07‑22 — after the 2004‑12‑02 JP priority but before the 2005‑08‑11 US filing — its status as § 102(e) art depends entirely on whether the granted group/thumbnail/cross-group-deletion claims are supported by (entitled to) the 2004 JP priority. If they are, Honkaniemi drops out. This should be confirmed against the priority documents in the file wrapper.

  4. Cross-reference to the litigation section (not to be repeated here): the actually litigated prior art of record is not in this citation list. The IPR2025‑00393 petition (LG v. Maxell, filed 2024‑12‑30, terminated‑settled 2025‑07‑09) relied principally on "Bryant" (a U.S. patent publication describing an "All Images / All Favorites / Group" selector UI with multi-category classification of a single media file) together with a Cockburn declaration — and the Board never reached the merits. So the public record's most detailed § 102/§ 103 attack on these claims is LG's Bryant-based petition, which should be treated alongside (and in some respects as more on-point than) the examiner-cited references above. The '449's own examiner-cited art is the grant-stage record; Bryant is the contested-stage record.

  5. Practical takeaway for a validity/prior-art workup: treat US 6,181,870 and US 2003/0063897 (data structure), Yahoo US 7,512,622 and Honkaniemi US 2007/0022382 (UI mechanics), and Bryant (multi-category classification + selector UI) as the operative combination set for § 103; treat Honkaniemi's date, and the priority-entitlement question underlying it, as the first thing to verify.

Uncertainties / limitations

  • US 6,480,669's exact NPL/relatives and JP 2003‑123389's sub‑content were not individually pulled; their descriptions rest on title/assignee/date plus the patent's own citation table.
  • The Samsung reference's priority prints as 2001‑09‑29 on the '449 front page but 2001‑09‑28 on Google Patents/USPTO.report — immaterial to § 102 but noted per the "no auto-correction" rule.
  • Yahoo has two same-titled grants (US 7,512,622 and US 7,574,448); the '449 cites 7,512,622. Do not conflate them.
  • I could not verify, from the retrievable record, whether the granted claims are entitled to the 2004‑12‑02 priority for the group/thumbnail/cross-group-deletion limitations — this is the pivotal open question affecting Honkaniemi's prior-art status and should be checked in the file wrapper (priority JP 2004‑349264 / 2004‑378767 / 2004‑378768).

Generated 9/28/2026, 6:12:12 PM

Obviousness

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

✓ Generated

I'll ground the obviousness analysis in the actual prior-art references from this patent's record. Let me verify key references.

Let me pull the two references most likely to be the centerpiece of a § 103 combination: the "Bryant" reference LG relied on in IPR2025-00393, and the Hitachi JP2004192779A cited on the face of the patent.

Obviousness Analysis — U.S. Patent No. 9,818,449 B2 under 35 U.S.C. § 103

Scope note / build on prior sections. This analysis builds on the two earlier sections (Patent summary; Litigation summary) and does not repeat the bibliographic, family, or case-history content. It re-identifies the references only to the extent needed for the § 103 mapping. Where the earlier sections flagged uncertainty, I carry it forward rather than resolve it.

Governing date. The '449 patent is pre-AIA (appl. 11/203,457 filed Aug. 11, 2005; earliest priority Dec. 2, 2004 via JP 2004-349264). § 102/§ 103 as amended by the AIA do not apply. Prior art therefore includes: printed publications before Dec. 2, 2004 (§ 102(b)); and U.S. patents/publications effective as of their filing dates (§ 102(e)). If the granted claims are not entitled to the Dec. 2, 2004 Japanese priority — a real question, since the "group/thumbnail/cross-group deletion" claim language is materially narrower than the management-level-1/2/3 architecture described in the priority and parent filings — then the critical date shifts to Aug. 11, 2005, which would sweep in additional art (e.g., US 2006/0107289 to DeYonker).


1. Person of ordinary skill in the art (POSITA)

A POSITA here would hold a B.S. in electrical engineering or computer science (or equivalent) and have roughly 2–4 years of experience designing consumer digital-AV recording/reproducing devices and their on-screen media-management interfaces, including playlists, thumbnails, and metadata-driven catalogues. This mirrors the art units involved (G11B27/034, G06F3/0482, H04N9/79) and the level implicitly adopted in LG's petition (Dr. Cockburn's declaration).

2. The claim to be analyzed

The four independent claims (1 apparatus, 5 and 13 systems, 9 method) recite the same subject matter in different statutory clothes, so a single analysis controls. Claim 1 requires:

  • (a) a recording unit recording a plurality of video information on a recording medium;
  • (b) an output unit producing a menu in which a group is selected "by specifying a position of a character corresponding to" that group;
  • (c) a reproducing unit;
  • (d) a controller that, upon selection of a first group, displays a first group of thumbnails, and upon selection of a second group, displays a second group of thumbnails;
  • (e) the core limitation — where one video is in both groups and is deleted from the first, the controller continues to include it in the second, and its thumbnail still appears among the second group's thumbnails.

Dependent claims 2–4/6–8/10–12/14–16 merely add: character displayed in a "first area" (tab strip) while thumbnails appear in a "second area"; and the negative limitation that the item is removed from the group without deleting the underlying recorded video (claims 4, 8, 12, 16). These dependents add essentially no independent patentable weight.

Critical observation: the granted claims capture a generic media-library UI — tabbed groups, thumbnail grids, and non-destructive removal of an item from one group. That is a much broader and less technical concept than the specification's "management level 1/2/3 unified information" scheme (FIGS. 1, 8–11). Obviousness must be assessed against the claims as issued, not the specification's narrower architecture. (This breadth is also why LG's companion § 101 attack was plausible; the § 103 analysis below proceeds on the assumption that the claims survive § 101.)


3. The prior-art references

Face-of-the-patent references (all § 102(b)/(e) art). Confirmed on the '449 record:

Ref. Teachings relevant to claim 1
US 2003/0063897 A1 (Samsung, Heo) — Information storage medium with user defined file containing reproducing information "User-defined unified information file" recording navigation information on at least a portion of data files selected by a user, managed alongside a unified information file; explicitly reflects edits/deletions of a data file into the user-defined file. Directly covers "groups of video information" and non-destructive list editing. Published Apr. 3, 2003.
US 6,181,870 B1 / JP2000152180A (Matsushita) The very "original cell / user-defined cell + playlist" hierarchy the '449 spec disparages as the prior art in FIG. 2 — i.e., multi-list management on the same medium.
JP2004192779A (Hitachi, 2004-07-08) "Recording medium, recording device, recording method, reproducing device, and reproducing method" — a recording/reproducing device with group/catalog management of recorded content. (I could not retrieve the full text; characterization is from the facial citation and title. Verify before relying on specific passages.)
US 7,512,622 B2 (Yahoo!, Volk/Jacoby) Network media catalogue with thumbnails, channel/category selection, and playlists built from pointers to media so that removing an item from a playlist does not delete the media.
US 7,257,774 B2 (Fuji Xerox) Merging/filtering user indexes and displaying grouped visualizations — user-defined subsets of the same source content.
US 2007/0022382 A1 (Honkaniemi) Digital content management UI (generally cited for user-facing content organization).

References LG relied on in IPR2025-00393 (from the PTAB petition/exhibit record at ptacts.uspto.gov and the DocketAlarm exhibit list):

Ref. Teachings
Bryant, US 2004/0201691 A1 (published Oct. 14, 2004) — the primary reference A "digital photography system" handling "still and motion video images"; hard drive 20 with controller; display monitor 14; object database (OODBMS) storing per-object "favorite" and "group" properties. FIG. 9A/9B: a display-selection window 840 with a selector 842 and the characters "All Images" and "All Favorites"; selecting one shows an area 820 of thumbnails 822B, 822G, 822J. Critically, Bryant teaches that removing an image's "favorite" status updates only the favorites metadata, leaving the object in other groups (e.g., "All Images"), so its thumbnail still displays there.
Kaplan, US 2001/0056434 A1 (published Dec. 27, 2001) Media playback/video features and pointer-based file management.
Horn, US 2004/0177319 A1 (published Sept. 9, 2004) Metadata filing system using links and reference counting — i.e., non-destructive membership of one item in multiple collections.
DeYonker, US 2006/0107289; Mercer, US 2004/0078383; Rounds, US 2004/0064476 (face-of-patent citation); Atkinson RE32,632; Gourdol US 6,493,006; Steele US 5,884,056; Dom US 6,166,735; Capps US 2002/0082730 Supporting art for GUIs (tab/tree navigation, thumbnail storyboards, windowed players). DeYonker's publication date (2006) is after the critical date and it qualifies only if its filing date precedes the relevant priority date — verify before using it.

(Caveat on Bryant mapping.) I did not independently read Bryant end-to-end; the FIG. 9A/9B and metadata-update characterizations above are taken from LG's petition as reproduced in the PTAB filings. They should be confirmed against US 2004/0201691 itself before being relied on in a validity opinion.


4. Ground 1 — Claim 1 obvious over Bryant alone

Element (a) recording unit / recording medium. Bryant's home computer 10 with hard drive 20 and its controller record the transferred image/video files; the petition maps "hard drive + disk controller" to "recording unit"/"recording medium." A POSITA would so understand.

Element (b) character-based group menu. Bryant's selection window 840 with selector 842 over the text characters "All Images" and "All Favorites" is a menu in which a group is picked "by specifying a position of a character corresponding to" the group. That is the claim's tab/label element verbatim, functionally.

Elements (c)–(d) reproduction + thumbnail groups. Bryant discloses playback ("the user selects a display mode, and the appropriate transferred images are displayed") and thumbnail display in area 820.

Element (e) cross-group deletion. Bryant's disclosure that un-designating a "favorite" updates only the favorites metadata while the object remains in "All Images" is the claimed "delete from the first group, continue to include in the second, keep the thumbnail." The object/pointer data model (one object referenced by multiple category properties) makes this necessarily the result.

Obviousness rationale (KSR). Even if one accepted that Bryant discloses "images" rather than "video information," the substitution is a predictable use of a known technique (image cataloguing) on a known, ready-for-improvement device (a media library). Bryant itself states the invention "defines methods for grouping and classifying digital still images and digital motion images," and it expressly transfers "motion video images." KSR Int'l v. Teleflex, 550 U.S. 398 (2007) (combination of known elements; design incentives; predictable results). Reasonable expectation of success: certain — the operation is a metadata edit in an existing database.


5. Ground 2 — Claim 1 obvious over Bryant in view of Kaplan

What Kaplan adds: explicit media playback controls and pointer-based file management. If a tribunal found Bryant's "reproducing unit" thin, Kaplan supplies it and supplies the pointer model that guarantees non-destructive group membership.

Motivation. Both are the same field (consumer media organization/playback on a general-purpose computer with a Windows-class UI); a POSITA would combine them "to improve the user experience" by adding playback to Bryant's organizer — a simple substitution / known-technique rationale, not a bodily incorporation requiring redesign. Both presuppose conventional PC hardware and software, so success is predictable.

6. Ground 3 — Claim 1 obvious over Bryant in view of Horn

What Horn adds: a metadata filing system in which a single item is referenced by multiple collections via links and reference counting, so removing it from one collection cannot remove it from another. This is a direct, express teaching of claim 1(e)'s mechanism. Motivation: use a known data-management technique to achieve non-destructive list editing; expectation of success: high (standard database practice). This is the strongest § 103 pairing if Bryant's element (e) is contested.

7. Ground 4 — Claim 1 obvious over Samsung '897 in view of a known thumbnail/catalogue UI

Samsung US 2003/0063897 A1 expressly discloses a user-defined unified information file containing navigation information for "at least a portion of data files selected by a user," maintained alongside a unified information file, and expressly reflecting edits/deletions of the underlying data file into the user-defined file — i.e., group membership is a pointer/metadata structure, not a copy. Combine with any of US 7,512,622 (Yahoo!, thumbnails + channel/category selection), US 6,166,735 (Dom, thumbnail storyboard UI), or US 2004/0064476 (Rounds, media player) — all face-cited art — to supply the character/tab menu and thumbnail grid. Motivation: Samsung's structure is a storage-medium management scheme, and adding a conventional thumbnail/tab front end to it is a known technique applied to a known device to yield a predictable UI.

8. Ground 5 — Claim 1 obvious over the admitted prior art (Matsushita) in view of Bryant/Horn

The '449 specification itself admits (FIG. 2) that playlists and user-defined cell information were known, managed on the same recording medium. Take Matsushita's playlist/cell hierarchy (US 6,181,870; JP2000152180A) as the base device — it already has recording unit, reproducing unit, and multiple user-defined reproduction ranges — and add Bryant's character-selected groups + thumbnails + metadata-only removal and/or Horn's reference-counted membership. This is precisely the "apply a known technique to a known device ready for improvement" rationale, and it forecloses any argument that the device elements are inventive.


9. Motivation to combine — why a POSITA would do it, generally

  1. Same field, same problem. All references address managing many recorded media items for later retrieval on a consumer device — the field of the '449 patent.
  2. Predictable, low-risk improvement. Independent group membership is ordinary list/relational-database semantics; nothing unpredictable happens.
  3. Known design incentive. As the number of stored items grows (the '449 spec itself notes this), users want multiple overlapping subsets (favorites, per-user folders) and want removing an item from one folder to leave the source intact — otherwise the UI is destructive and confusing. Since KSR, a known problem with a finite number of known solutions is obvious to try.
  4. No teaching away. None of the references teaches that group deletion must delete the underlying content; the whole point of "unified information file" / "pointer" / "reference counting" architectures is the opposite.
  5. Reasonable expectation of success. All are software/data-model changes on conventional hardware — high confidence of operability.

10. Secondary considerations

There is no public record of Maxell proffering objective indicia (unexpected results, long-felt need, industry praise) with a nexus to these claims. Maxell's licensing/enforcement of the family and LG's settlement are weak evidence: settlement is not an admission of validity, and the accused LG Gallery app is LG's product, not Maxell's, so there is no nexus for commercial-success evidence. Conversely, the accused functionality (albums as groups; deleting a video from "Favorites" but not "Camera") tracks the claim so closely that it cuts toward the breadth/obviousness of the claims.


11. Counterarguments and weaknesses (be candid)

  1. "Video information" vs. "images." Bryant is a photography system. Maxell would argue the claim requires video recording/reproduction. Rebuttal: Bryant expressly covers "digital motion images" and video playback; the substitution is predictable. But this is the most likely battleground.
  2. "Deleted from the group" construction. Whether Bryant's "removing favorite status" is a "deletion" from a group is a claim-construction dispute. Bryant + Horn largely neutralizes it.
  3. No merits ruling exists. IPR2025-00393 was terminated pre-institution (settled) on July 9, 2025, so the Board never evaluated LG's Bryant ground. The N.D. Cal. case (5:24-cv-04972) was dismissed with prejudice by stipulation. Neither tribunal has held these claims valid or invalid, and the examiner who allowed this continuation apparently did not have Bryant/Horn before him — so § 103 exposure on this record is real, but untested.
  4. § 325(d) / prosecution-history friction. Maxell previously argued (and would argue again) that the family's art was already considered. That is a discretionary-denial argument, not a merits defense.
  5. Verification gaps (carry forward). (i) I relied on LG's petition excerpts for Bryant's content, not a full read of US 2004/0201691; (ii) I could not retrieve JP2004192779A's full text; (iii) DeYonker's prior-art status depends on a filing date I did not confirm. Resolve (i)–(iii) before relying on any of these combinations in a formal opinion.

12. Conclusion

On the present record, claims 1, 5, 9 and 13 (and their dependents, which add only a tab-area/thumbnail-area split and the express "don't delete the underlying file" negative limitation) are prima facie obvious under § 103. The strongest combinations are:

  • Bryant alone (with KSR rationales for the "video" substitution); or
  • Bryant + Horn (express reference-counted, non-destructive collection membership — supplies claim 1(e)'s mechanism directly); or
  • Bryant + Kaplan (playback and pointer management); or
  • Samsung US 2003/0063897 + a thumbnail/catalogue UI reference (Yahoo! US 7,512,622; Dom US 6,166,735; Rounds US 2004/0064476); or
  • Matsushita US 6,181,870 / JP2000152180A (admitted prior art) + Bryant and/or Horn.

The motivation in every case is the same: combine known media-catalogue UI elements with known non-destructive, pointer/reference-based list management to serve a growing, multi-user media library — a predictable improvement with a reasonable expectation of success. No tribunal has reached the merits, so this is an analytical conclusion, not an adjudicated one.

Generated 9/28/2026, 6:12:08 PM

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