Invalidity dossier
US RE49176
Added 9/29/2026, 7:01:14 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll start by verifying the patent record and checking for any litigation or CAFC docket activity.
Let me dig into the claim text and any 2026 appellate activity.
Let me try to retrieve the actual claim set (particularly independent claim 38) and check for any appeal.
Bottom line
US RE49176 (USRE49176E1) is real, verifiable, and expired. It is a reissue patent in a very long Flexiworld Technologies reissue chain, but its original priority is 2000, so it carries an adjusted expiration of 2024-04-30 — roughly two years before today's date. I found one district-court case and one USPTO-adjacent prior-art contest, but no CAFC 2026 docket or appeal for this patent number. Verbatim claim text was not retrievable within my search budget, so I flag claim-level uncertainty explicitly below rather than reconstruct it.
1. Bibliographic data (as issued)
| Field | Value |
|---|---|
| Patent number | RE49176 (publication USRE49176E1) |
| Title | Apparatus, methods, or software for data mining user information by providing services over the internet for connecting people |
| Inventors | Christina Ying Liu; William Ho Chang |
| Original assignee | Flexiworld Technologies Inc |
| Current assignee | Flexiworld Technologies Inc |
| Application number | 15/838,234 |
| Filing date | 2017-12-11 |
| Issue date | 2022-08-16 |
| Priority date | 2000-09-05 (provisional 60/230,021, filed Sep. 5, 2000) |
| Adjusted expiration | 2024-04-30 — status: Expired – Lifetime |
| Primary examiner | Ovidio Escalante |
| Representative CPC | H04M3/42008 (anonymous communication between parties), H04M3/382, H04M1/2535, H04M1/2749, H04M7/0045, H04M7/0054, H04M7/128 |
| Litigation family flag | Google Patents "Family has litigation" → Darts-IP family 26923835 |
Source: https://patents.google.com/patent/USRE49176/en ; corroborated at https://portal.unifiedpatents.com/patents/patent/RE49176
Minor data discrepancy (not auto-corrected): the Unified Patents portal renders the same record one day off across the board — priority 2000-09-04, application 2017-12-10, grant 2022-08-15, expiration 2024-04-29. This looks like a timezone-rendering artifact, but I am reporting both readings rather than silently harmonizing them.
2. Reissue lineage (this matters for the effective dates)
RE49176 is not a standalone patent; per its own cross-reference section it sits deep in a chain:
- Provisional 60/230,021 (filed 2000-09-05)
- → App. 09/947,116 (filed 2001-09-04) → U.S. 7,099,304 (issued 2006-08-29)
- → App. 12/199,647 (filed 2008-08-27) → RE43,181 (issued 2012-02-14)
- → App. 13/371,318 (filed 2012-02-10) → RE46,637 (issued 2017-12-12)
- → App. 15/838,234 (filed 2017-12-11) → RE49176 (issued 2022-08-16) ← this patent
Related sibling reissues named in the specification: RE48,066, RE48,088, RE42,828, RE41,416, RE41,487, RE41,532, RE41,689, RE41,882.
3. Abstract (as issued — verbatim from the record)
The issued abstract is two paragraphs, reflecting that the reissue added subject matter beyond the original voice-anonymity disclosure:
- "Anonymous voice communication between a first station and a second station is facilitated by providing an interface that allows input of a transaction specification from at least one of the first and second stations. A reference code associated with the transaction is generated, there being a defined relationship between the reference code and the address of the second station for voice communication. The reference code is supplied to the first station, and a voice communication request and the reference code are received from the first station. The reference code is used to recover said address and a channel for voice communication is opened between said first and second stations. Voice communication can thereby be established between the first and second stations without providing the address of the second station to the first station."
- "An Internet-based service system for data mining user information is herein disclosed and enabled… Data obtained from each transaction submitted through the service are data mined… To create transactions, the system may create a proposed transaction specifying a transaction between first and second parties based, at least in part, on data mining the first and second party's history of transactions. The service system may transmit a reference code to the first party related to the proposed transaction, and wait to receive a communication request from the first party employing the reference code. The reference code may include text, image(s), video(s), audio, or communication link(s), and the proposed transaction may be an advertisement or matching service."
Titular note: the title and paragraph 2 are the "data mining" reissue overlay; paragraph 1 is the original 2000-era anonymity disclosure. Two different inventions are thus abstracted in one document.
4. Claim overview — ⚠️ with an explicit caveat
I could not retrieve the verbatim claim set within my search budget, and the authoritative text supplied to me is truncated before the claims section. I will not fabricate claim language. What I can state with grounding:
The patent has at least 38 claims — Unified Patents' Patroll program ran a contest seeking prior art "on at least claim 38" (Dec 4, 2024 – Jan 4, 2025). A claim 38 implies a substantial claim set, consistent with a reissue that added many claims.
Claim 38 appears to be an independent claim and appears to be directed to the added data-mining/service-system subject matter (the Patroll framing and paragraph 2 of the abstract both point that way). It was the target of the prior-art hunt, which typically signals the claim asserted in litigation.
The specification's "Summary of the Invention" recites three aspects, which correspond to the three independent-claim families of this family of patents:
(a) Method — facilitation aspect. A method of facilitating anonymous voice communication between a first station and a second station (at least the second having a voice address), comprising: provide an interface allowing input of a transaction specification from at least one station; generate a reference code associated with the transaction with a defined relationship between the reference code and the second station's address; supply the reference code to the first station; receive a voice communication request and the reference code from the first station; use the reference code to recover the address; and open a voice channel between the two stations — without ever giving the first station the second station's address. Plain language: a middleman hands you a ticket; you later call the middleman with the ticket, and the middleman dials the other person for you so you never learn their number.
(b) Method — controller aspect. The same sequence, restructured as a method performed at a controller: transaction specification is supplied to the controller, the reference code is generated at the controller and supplied from the controller, the request and code go from the first station to the controller, and the controller recovers the address and opens the channel.
(c) Apparatus aspect. An apparatus (means-plus-function style) with: means for enabling negotiation of a transaction specification; means for generating a reference code (defined relationship to the address) and supplying it to the first party; means for receiving the voice communication request and the reference code; means for recovering the address from the code; and means for opening a voice channel to that address without disclosing it to the first party.
(d) Reissue-added claims (including claim 38). Plain language: a server-side service that mines data from users' transactions and profiles, proposes a transaction between two parties based at least in part on that mined history, pushes a reference code (which may be text, images, video, audio, or a link) to a party, waits for an incoming communication request carrying that code, and treats the proposal as an advertisement or matching service. This is the "data mining user information" half of the title.
What I will not assert: the exact number of independent claims, the exact boundary line between original and newly added claims, or the precise wording/limitations of claims 1 and 38. That requires the claim text from the USPTO full-text or the issued PDF.
5. Docket check — district court, Federal Circuit, and contests
District court (found):
- Flexiworld Technologies, Inc. v. Indeed, Inc., No. 1:24-cv-01254, W.D. Tex. (Austin Division), filed 2024-10-18; 35 U.S.C. § 271 patent infringement; jury demand.
- Source dockets conflict on the presiding judge: Justia shows an order entered by Judge Robert Pitman (unopposed extension, answer due 2024-12-13); Docket Alarm lists Judge Alan D. Albright. I report both rather than picking one.
- Indeed moved to dismiss under Rule 12(b)(6) on 2024-12-13 (Dkt. 14); Indeed's Rule 7 disclosure identifies corporate parent RGF OHR USA, Inc. and affiliate Recruit Holdings Co., Ltd.
- Stanford's NPE Litigation Database lists Flexiworld under asserter category "Failed startup" as a non-practicing entity.
- Sources: https://dockets.justia.com/docket/texas/txwdce/1:2024cv01254/1172809333 ; https://npe.law.stanford.edu/patent/re49176 ; https://litigation.rpxcorp.com/litigation/txwdce-1172809333-flexiworld-technologies-v-indeed
Prior-art contest (found):
- Unified Patents Patroll contest targeting at least claim 38 of US-RE49176-E1, Dec 4, 2024 – Jan 4, 2025, $2,000 prize, "Winner Announced"; Unified's insights page references a $1,500 award for Flexiworld communication patents.
- Sources: https://patroll.unifiedpatents.com/contests/DwhGSBewqhuwE8nnt ; https://www.unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art
CAFC 2026 dockets (NOT found — stated as a negative finding):
- I searched for Federal Circuit 2026 activity tied to RE49176 and found none. No CAFC appeal number, briefing, opinion, or Rule 36 affirmance for RE49176 surfaced.
- The 2026 Federal Circuit material that my searches did return is unrelated and should not be attributed to this patent: Headwater Research LLC v. Verizon (E.D. Tex. 2:23-cv-00352, cross-appeals noticed May 2026, USCA No. 26-1884) and Spero v. Mercedes-Benz (Fed. Cir. 2026, re U.S. 10,894,503, panel rehearing petition filed 2026-06-15).
- Because the patent expired 2024-04-30, any 2026 appellate activity would most plausibly relate to past damages / the Indeed case, not injunctive relief — but I have no evidence such an appeal exists, and I am not inferring one.
6. Explicit uncertainties
- Claims are not verified. No verbatim claim text (count, numbering, or independent-claim wording) was obtained. The claim overview above is grounded in the specification's three recited aspects plus the Patroll reference to claim 38 — not in the issued claims.
- Independent-claim count is unknown. "At least 38 claims," with claim 38 apparently independent, is the most I can support.
- Priority date differs between sources (2000-09-05 vs 2000-09-04); reported, not resolved.
- Judge assignment in 1:24-cv-01254 conflicts across dockets; reported, not resolved.
- Title discrepancy not auto-corrected: Patroll labels this contest "US-RE49176-E1 (Enhancing the Efficiency and Relevancy of Transactions on the Internet)." That phrasing does not match RE49176's issued title as recorded by Google Patents and the Golden wiki. I am flagging it rather than correcting either string; it may be a mislabeled contest title or a companion Flexiworld patent.
- No CAFC action confirmed for 2026. Absence of evidence here is a search limitation as much as a fact, since my search budget was exhausted before I could query PACER/CM-ECF or the Federal Circuit's own docket directly.
Generated 9/29/2026, 7:11:11 PM
Cases on file (0)
Specific litigation cases in our database that name US patent RE49176. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US RE49176 specifically.
Let me dig into the specific case and check for additional defendants/assertions.
Let me check the current status of the Indeed case and any PTAB proceedings.
Litigation Involving U.S. Patent No. RE49,176 ("the '176 patent")
I searched the Stanford NPE Litigation Database (patent-level page for RE49176), Unified Patents' patent/litigation portal, RPX Empower, Justia Dockets, Docket Alarm, PacerMonitor, and general web sources. Only one litigation matter appears to involve the '176 patent specifically.
Table of known litigation
| Plaintiff | Defendant | Jurisdiction | Case No. | Filing Date | Outcome / Current Status |
|---|---|---|---|---|---|
| Flexiworld Technologies, Inc. | Indeed, Inc. | U.S. District Court, Western District of Texas (Austin Division) | 1:24-cv-01254 | October 18, 2024 | Pending/contested as of the last available docket data; one third-party aggregator reports the case as "Closed," but I could not confirm a termination date or dismissal via PACER. No CAFC appeal found. |
Details and grounding
*The only case: Flexiworld Technologies, Inc. v. Indeed, Inc., 1:24-cv-01254 (W.D. Tex.)*
- The Stanford NPE Litigation Database lists exactly one case under patent RE49176 — Flexiworld Technologies, Inc. v. Indeed, Inc., civil action 1:24-cv-01254, venue W.D. Tex. Source: https://npe.law.stanford.edu/patent/re49176
- Filed October 18, 2024; cause of action 35 U.S.C. § 271; jury demand by plaintiff. Sources: https://dockets.justia.com/docket/texas/txwdce/1:2024cv01254/1172809333 and https://litigation.rpxcorp.com/litigation/txwdce-1172809333-flexiworld-technologies-v-indeed
- Asserted patent (the '176 patent) is described in the complaint as a reissue of U.S. Patent No. 7,099,304, reissued August 16, 2022 from Application No. 15/838,234, claiming priority back to Provisional Application No. 60/230,021 (filed September 5, 2000). Complaint PDF: http://www.jobboarddoctor.com/wp-content/uploads/2024/10/Flexiworld_Technologies_Inc_v_Indeed_Inc__txwdce-24-01254__0001.0.pdf
- Asserted claims of RE49,176: independent claim 38 and claims 39–42 and 52–55. Accused instrumentality: Indeed's internet-based platform, including Indeed Ads, Indeed Resume Project, and Indeed Instant Match (web, iOS, Android). Source: complaint analysis at https://ai-lab-cl-prod.azurewebsites.net/case/dct/txwd/1:24-cv-01254/doc/analysis/25
- The complaint also asserts related reissue patents from the same family — reportedly RE46,637 and RE48,066 (and see also the RE48,088 case listing pointing to the same underlying case). Source: same complaint analysis page.
- Procedural history from the docket: defendant served 10/23/2024; answer deadline extended to 12/13/2024; Indeed filed a 12(b)(6) motion to dismiss and a motion to strike on 12/13/2024; case reassigned to Judge Alan D. Albright; an amended complaint was filed (answer/response deadline reset to 2/14/2025); response/reply deadlines extended into March 2025. Sources: https://www.pacermonitor.com/public/case/55514617/Flexiworld_Technologies,_Inc_v_Indeed,_Inc and https://dockets.justia.com/docket/texas/txwdce/1:2024cv01254/1172809333
- Status caveat: one third-party aggregator lists the case status as "Closed" (https://ai-lab-cl-prod.azurewebsites.net/case/dct/txwd/1:24-cv-01254/flexiworld-tech-inc-v-indeed-inc), while the Stanford NPE entry's "Termination Date" field is blank. The free dockets I could reach were last retrieved around December 2024/early 2025. I therefore cannot confirm with high confidence whether the case was dismissed, settled, or remains active as of April 2026; PACER would be required to verify.
No other known litigation
- I found no other lawsuit, ITC action, or CAFC appeal naming RE49,176. Flexiworld Technologies has filed many other infringement suits (e.g., against Roku, Lexmark, Brother, Hisense, Canon, Xerox, LG, and Amazon/related defendants), but those assert different patents in the Flexiworld portfolio (e.g., 7,609,402; 9,965,233; 7,944,577; 10,140,072/073; 10,387,087; 10,768,871), not RE49,176. Sources: Lexmark IPR petition listing related matters (https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1553926](/patent/1553926)/download-documents?artifactId=RWwDbFmhM8yIBeOb3mmwrxNpsHlsvgaQMVopEDyMJRuJRSggPV3tA88) and Flexiworld v. Roku complaint (https://insight.rpxcorp.com/litigation_documents/14324357).
- I found no PTAB proceeding (IPR/PGR) against RE49,176. Note a related, non-litigation defensive prior-art effort: Unified Patents ran a "Patroll" prior-art bounty on claim 38 of US-RE49176-E1, describing the patent as "asserted against Indeed" (https://patroll.unifiedpatents.com/contests/DwhGSBewqhuwE8nnt). That is a defensive prior-art contest, not litigation. The patent's listed expiration (Google Patents: adjusted expiration 2024-04-30; expired-lifetime status) would also generally foreclose certain PTAB challenges.
Important caveats as to identifiers
- Per your standing instruction, I have not auto-corrected any identifiers. Note that the plaintiff's own complaint and certain databases sometimes refer to the same family members by confusable numbers (e.g., "RE46,637"/'637, "RE48,066"/'066, and "RE48,088"/'088). Those are separate reissue patents in the same family, not RE49,176. The case above is the only one the sources tie specifically to RE49,176.
- If you need a courtroom-grade citation, I recommend pulling the PACER docket for 1:24-cv-01254 directly, since my most recent freely accessible docket snapshots predate mid-2025.
If you'd like, I can attempt targeted follow-up searches on the docket's post-March-2025 entries or on any Indeed IPR filings, but I've exhausted the reliable free sources available in this session.
Generated 9/29/2026, 7:11:02 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.
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.
I'll start by verifying the structured data's "no proceedings" default against public sources, since the ODP ingest can lag.
Key finding so far: the Lexmark/Roku IPRs I'm seeing are against a different Flexiworld patent (the '233). Let me chase whether any IPR was actually filed against RE49176 itself — PATROLL contests often convert into an IPR.
Now let me check whether any IPR/PGR was actually filed against RE49176 itself, and the status of the Indeed litigation.
Proceedings overview
Total AIA trial proceedings on file for US RE49,176: 0. The structured USPTO Open Data Portal ("PTAB proceedings on file") block returns no IPR, PGR, or CBM for this patent, and my independent web search corroborates it: I found no petition, institution decision, FWD, or appeal directed at RE49,176 itself. Breakdown: 0 active, 0 claims invalidated, 0 claims sustained, 0 settled, 0 institution denials — because no AIA trial has ever been instituted on this patent. Bottom line for a defendant: this is not a "hardened patent that survived IPRs" story, and it is not a "claims are dead" story either — it is an untested patent. That cuts both ways: there is no prior PTAB record estopping the patent owner, but there is also a clean, empty PTAB slate, and (critically) the patent's term appears to have expired on 2024-04-30, which materially limits what an IPR is worth to you.
Important scope note. Flexiworld has been extremely active at the PTAB — but on its other patents (the wireless-printing / digital-content family: the '233, '257, '064, '903, etc.). RE49,176 belongs to a different lineage: it is a reissue of U.S. 7,099,304, claiming benefit of Provisional 60/230,021 (2000-09-05), and is titled/directed to anonymous voice communication and data mining of user transactions. Do not let anyone conflate the Flexiworld IPR history with this patent. Nothing I found transfers.
No proceedings found — and here is what I affirmatively checked
I searched for AIA trials naming "RE49176," for Flexiworld petitions by Unified Patents, Indeed, and Lexmark, and for PTAB dockets on this patent. Every hit resolved to a different patent. The near-misses are set out below so you can see they are near-misses and not this patent.
(Adjacent activity — expressly NOT AIA trials on RE49,176)
Unified Patents PATROLL contest — US‑RE49176‑E1 ("Enhancing the Efficiency and Relevancy of Transactions on the Internet")
- Type: Crowdsourced prior-art bounty (PATROLL). This is not an IPR/PGR/CBM and is not a PTAB proceeding.
- Window: 2024-12-04 to 2025-01-04 (contest closed; winner announced).
- Claim at issue: Unified sought prior art on at least claim 38 of US‑RE49176‑E1.
- Source links: https://patroll.unifiedpatents.com/contests/DwhGSBewqhuwE8nnt ; winning prior art published 2025-03-29 at https://www.unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art
- Why it matters: This is a pre-filing invalidity workup already paid for. The winning charts target claim 38 on this exact patent. It is the single most useful free asset available to a defendant — but a PATROLL contest is a sourcing step, and it has not (as of this writing) been converted into a petition against RE49,176.
Unified Patents ex parte reexamination — U.S. RE48,066
- Type: Ex parte reexamination, filed 2025-05-23. Not an AIA trial, and not this patent.
- Patent: RE48,066 — a sibling reissue in the same Flexiworld family, described by Unified as "an internet-based transactional system involving data mining," also asserted against Indeed.
- Source: https://www.unifiedpatents.com/insights/2025/5/27/flexiworld-data-mining-patent-challenged
- Why it matters: Confirms Unified's strategy against this family has been reexam, not IPR. Reexam art and claim constructions from RE48,066 are likely portable to RE49,176 given the shared specification. Track the RE48,066 reexam file closely.
Flexiworld's actual PTAB history (all on OTHER patents — included only to show the pattern)
- IPR2022-00775, Unified Patents, LLC v. Flexiworld Technologies, Inc., U.S. 9,836,257. Final Written Decision: "Determining No Challenged Claims Unpatentable" (claims 27 and 28 sustained). Panel: Brent Dougal, Christopher Ogden, Terrence McMillin. Source: https://www.docketalarm.com/cases/PTAB/IPR2022-00775 and https://bannerwitcoff.com/wp-content/uploads/2022/12/IPR2022-00775.pdf
- IPR2021-00714 / -00715 (Roku, '064 patent); IPR2022-01114 (Roku, '233 patent); IPR2023-00846 (Lexmark, '233 patent — terminated 2024-01-17 on a joint motion after a patent license agreement, per https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1553926](/patent/1553926)); PGR2021-00111 / -00112 (Roku, '903 patent).
- Pattern signal: Flexiworld has repeatedly settled rather than litigate to judgment (Roku, Lexmark, Epson, Brother), and where it did go to FWD it won (the '257). The PTAB has never canceled a Flexiworld claim on any patent I could find.
Strategic summary
Claim status of RE49,176: UNTESTED — every claim. No claim of this patent has been canceled, confirmed, or even subjected to an institution decision. Claim 1 and all dependents stand as issued in the reissue. The only public, claim-specific invalidity work is the PATROLL chart aimed at claim 38. So there is no "claim 1 is dead" narrative to hand your CEO — nor a "this patent has survived two IPRs and is hardened" narrative for the patent owner to hand its investors. Both would be fabrications.
Term and damages posture (the real story). The Google Patents structured record for USRE49176E1 lists legal status "Expired - Lifetime," adjusted expiration 2024-04-30 (Unified's portal shows 2024-04-29). If that holds, RE49,176 issued 2022-08-16 and expired roughly two years later. Practically: there is no prospective infringement, only past damages, and § 286 caps recovery at six years before the complaint — all of which was within the expired window. This dramatically discounts the value of an IPR: you would spend seven figures to invalidate a patent whose remaining exposure is a slice of past damages, and Flexiworld's own briefing shows it has been fighting § 287(a) marking/pre-suit-damages battles across its portfolio (see the E.D. Ky. opinion in Flexiworld v. Lexmark, 5:22-cv-00097-KKC, at https://cases.justia.com/federal/district-courts/kentucky/kyedce/5:2022cv00097/98438/44/0.pdf). Attack the pre-suit damages theory before you spend on an IPR.
Estoppel landscape. Because no IPR has ever been instituted on RE49,176, § 315(e)(2) estoppel is a blank slate for this patent. Estoppel from the Flexiworld IPRs on the '233/'257/'903/'064 patents does not attach to RE49,176 — estoppel is patent- and ground-specific, and those involve entirely different claims. The only bars you face are your own: § 315(b) (one year from service of a complaint asserting RE49,176) and § 325(b). Note the litigation posture: the NPE Litigation Database lists Flexiworld Technologies, Inc. v. Indeed, Inc., No. 1:24-cv-01254 (W.D. Tex.) as the only RE49,176 case (https://npe.law.stanford.edu/patent/re49176). If Indeed was served in 2024, Indeed's own § 315(b) window has almost certainly closed — and no petition appears, which is itself informative. A defendant newly served today would start a fresh one-year clock.
Pattern signals. No petitioner has filed multiple IPRs on this patent (zero, in fact). Unified Patents is clearly the defensive aggregator in the chain against the Flexiworld family — it ran the RE49,176 PATROLL contest and filed the RE48,066 reexam, and it lost the one Flexiworld IPR that reached FWD. Flexiworld does not appear to have appealed any PTAB FWD to the Federal Circuit on this family. I found no CAFC appeal touching RE49,176.
Recommended next steps
- Confirm the zero through PTAB E2E directly before you rely on it — https://ptab.uspto.gov/ (search "RE49176" as patent number). The ODP "no proceedings" result is consistent with everything I found, but ODP ingest lags, and the absence is load-bearing for your invalidity budget. Treat the result as "no AIA trial on RE49,176" with high (not absolute) confidence; I could not rule out a freshly filed, not-yet-indexed petition.
- Pull the PATROLL package now. The winning charts against claim 38 were published 2025-03-29 and are free: https://www.unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art. That is your invalidity starter kit, and the art is (per the contest rules) not previously cited in prosecution.
- Run the expiration math before anything else. Verify the 2024-04-30 adjusted-expiration via PTAB/USPTO PatentCenter and the patent term adjustment on the original 7,099,304. If confirmed, your § 282 defense and your damages exposure are both largely historical, and an IPR may be uneconomic.
- Coordinate with the RE48,066 reexam (filed 2025-05-23). Same specification, same family, same patent owner; art and prosecution positions developed there are the cheapest route to a RE49,176 invalidity theory outside the PTAB — and ex parte reexam has no § 315(b) time bar, which matters if Indeed's window has closed.
- No trial-stage milestones to calendar. With no institution, there is no 1-year statutory FWD deadline, no oral hearing, no PO response date. If a petition is filed, the milestones are: PO preliminary response (3 months), institution decision (~6 months from filing), PO response (3 months post-institution), and FWD within 12 months of institution (§ 316(a)(11)).
- If you hold a demand letter citing RE49,176: know that (a) the patent appears expired, so demand any prospective royalty be rejected outright, and (b) Flexiworld's pre-suit damages theory is its known soft spot — it has litigated § 287(a) marking across this portfolio.
Confidence and caveats. I found no RE49,176 AIA trial; that finding is consistent across the ODP block and my searches, but I could not exhaustively query PTAB E2E or CourtListener within this session, and I did not confirm the exact filing date of Flexiworld v. Indeed (1:24-cv-01254) or whether that case has settled, been dismissed, or produced any IPR petition. The 2024-04-30 expiration is drawn from the structured legal-status field, which Google expressly labels an assumption, not a legal conclusion — verify it. I have not invented any proceeding number, panel, ground, or disposition; every proceeding number above belongs to a different patent and is labeled as such.
Generated 9/29/2026, 7:11:16 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
Correspondent: Edward B. Anderson · Kolisch Hartwell
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.
I'll research this patent's ownership chain using the sources you specified.
Let me dig deeper into the specific assignment records and litigation history.
Let me search for the specific assignment record for the '304 patent family and the Flexiworld v. Indeed complaint details.
Ownership & Assignment Analysis — US RE49176 (RE49,176 E1)
Patent under review: US RE49,176 E1 — "Apparatus, methods, or software for data mining user information by providing services over the internet for connecting people"
Application: 15/838,234 (reissue continuation) · filed 2017-12-11 · reissue granted 2022-08-16
Underlying original patent: US 7,099,304 (app. 09/947,116, filed 2001-09-04; issued 2006-08-29; provisional 60/230,021, 2000-09-05)
⚠️ Data-integrity note up front. The USPTO Assignment Center / Patent Assignment Search is a JavaScript application; I could retrieve docket and complaint corroboration of ownership but not a live reel/frame record keyed to RE49176 itself. Reissue patents are normally not re-recorded on issuance — title follows the original patent's assignment. I therefore report the confirmed chain below and explicitly mark the one number I could not independently verify. No assignment has been invented.
Inventors
| Inventor | Residence of record | Employer / role at filing |
|---|---|---|
| William Ho Chang | Vancouver, WA | Co-founder & principal of Flexiworld Technologies, Inc. — the assignee. Signed PTAB papers as "William Chang, Flexiworld Technologies, Inc." (PGR2021-00112, dated 2021-10-04), confirming continued control. |
| Christina Ying Liu | San Francisco, CA | Co-founder/co-principal of Flexiworld Technologies, Inc. |
Pattern note — this is the inverse of the fire-sale tell. Both inventors are the founders of the assignee and are the only named inventors across the entire Flexiworld portfolio (dozens of continuations). They did not depart within 12 months; they retained control and still appear as the assignee's signatories ~21 years after filing. There is no inventor-departure/portfolio-dump signal here. What the inventor–assignee overlap does tell you is that this is a founder-controlled patent-holding company, not an inventor who sold out to a third party.
Original assignee
Flexiworld Technologies, Inc. — a Washington corporation (Portland, OR / Vancouver, WA addresses of record in later filings). Named as applicant on the 2001 filing and as assignee throughout.
- Primary line of business: An early-2000s wireless-printing / "universal data output" startup. It appears to have failed to commercialize — the Stanford NPE Litigation Database classifies Flexiworld both as a Non-Practicing Entity and with the asserter category "3 Failed startup" (https://npe.law.stanford.edu/patent/re49176). Flexiworld's own complaints confirm the non-practice: "Since issuance of each of the Patents-in-Suit, Flexiworld has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit…" (Sony complaint, ¶101, via RPX Insight doc 15717164).
- Did it ship a product embodying the claims? No evidence of commercial embodiment; by its own admission, no marked product.
- Current status: Active as a patent-assertion entity. Not dissolved, not (on the record I could retrieve) in bankruptcy. It was still filing new complaints in 2024 (Flexiworld v. Indeed) and defending an IPR in 2023 (Lexmark, IPR2023-00845). So: operating only as a licensor/litigant.
Note the title discrepancy: Google Patents shows "Current Assignee: Flexiworld Technologies Inc" while the abstract was rewritten for the reissue around a generic "data-mining service system." The
Prior art keywords"party / station / transaction / information / internet" and revamped abstract are post-hoc claim-cover editorializing on the reissue, not a title change.
Assignment timeline
Finding: There is one substantive conveyance in the chain — inventor → Flexiworld Technologies, Inc. — and no recorded post-issuance transfer to any third party, LLC, or aggregator. Flexiworld is confirmed as the present owner by its own standing allegations in litigation.
2001 (executed; recording date not confirmed) — Reel not independently verified for RE49176 / '304
- Conveyance: Assignment (inventor-to-corporation, entire right/title/interest)
- Assignor: William Ho Chang; Christina Ying Liu
- Assignee: Flexiworld Technologies, Inc.
- Correspondent: Kolisch Hartwell, P.C. (Edward B. Anderson, Reg. No. 30,154; Portland, OR) — the firm that filed Flexiworld's 37 CFR 3.73(b) statement of ownership across the portfolio. ⚠️ Flag: Kolisch Hartwell / Edward B. Anderson recur family-wide as the address of record, but the retrieved 3.73(b) filing relates to sibling applications — I could not confirm them as the recording correspondent for the '304/RE49176 assignment specifically. Treat as "prosecution correspondent of record," not a verified recording correspondent.
- Context: Founder/startup formation assignment — the inventors assigned their own patent to their own company. Not a fire-sale, securitization, or transfer-to-asserter.
2017-12-11 → 2022-08-16 — No assignment recorded — Reissue prosecution only (continuation reissue of RE46,637 → RE49,176). A reissue does not generate a new title record; Flexiworld's 2001 acquisition carries through.
2024-10-18 — No assignment; assertion event. Flexiworld Technologies, Inc. v. Indeed, Inc., 1:24-cv-01254 (W.D. Tex., Judge Albright). RE49,176 and RE46,637 are among the asserted patents (Stanford NPE DB). Notably, no pre-suit transfer — Flexiworld sued as the same entity that has held title since 2001.
Sibling reel/frames I did verify (context, NOT RE49176): '402 → 028733/0064; '031 & '178 & '072 → 042385/0202; '856 → 043675/0454; '871 → 046519/0534; '596 → 039816/0200. These document the same single-assignor→single-assignee pattern across the portfolio; none involves a downstream buyer.
Timeline diagram
timeline
title Ownership of US RE49176
2001 : Original app filed by inventors
: Assigned to Flexiworld Technologies
2006 : US 7099304 issued to Flexiworld
2012 : Reissue RE43181 granted
2017 : Reissue RE46637 granted
: Continuation reissue filed
2022 : Reissue RE49176 granted
2023 : Flexiworld litigates Lexmark Brother Hisense
2024 : Flexiworld sues Indeed in W D Tex
NPE / troll-pattern signals
| # | Signal | Call | Evidence |
|---|---|---|---|
| 1 | Shell-entity transfer | Not present | No LLC, no "IP/Holdings/Ventures" assignee, no registered-agent address. The single assignee is the original Washington operating corporation. Nothing moved. |
| 2 | Known asserter in the chain | Present | Flexiworld is a high-frequency serial plaintiff, not a one-off. Verified suits: Roku (6:21-cv-00680, 2021), Brother (2:22-cv-02251), Lexmark (5:22-cv-00110), Hisense (E.D. Tex./N.D. Ga. 2022), Sony, Epson, Amazon (6:20-cv-00553), Indeed (1:24-cv-01254). Stanford NPE DB lists it as "Non Practicing Entity / 3 Failed startup." It is not on the classic Acacia/Marathon/IV/Wi-LAN lists, but it independently qualifies as a repeat asserter surfaced by Stanford/RPX. |
| 3 | Repeat correspondent across the chain | Unclear | Because there is only one assignment link, there is no chain recurrence to measure. Kolisch Hartwell / Edward B. Anderson recur family-wide (prosecution), and Chernoff Vilhauer LLP appears as attorney of record on later Flexiworld patents (e.g., US 10,126,991). A single recording appearance is not a finding; flagged only as a name to watch. |
| 4 | Cascading transfers (<24 mo through chained LLCs) | Not present | Zero downstream transfers. No chain of LLCs, no shared principal/correspondent hopping. |
| 5 | Pre-litigation transfer (within 6 mo of first suit) | Not present | RE49176 issued 2022-08-16; Indeed suit filed 2024-10-18. No assignment was recorded near any suit — Flexiworld asserted patents it had held since 2001. |
| 6 | Bankruptcy fire-sale | Not present | No bankruptcy docket or §363 sale surfaced for Flexiworld or this patent family. |
| 7 | Privateering | Not present / no evidence | No operating-company patron. Flexiworld is the original developer asserting its own patents, not a proxy fronting for a competitor. |
| 8 | Defensive aggregator (anti-NPE) | Not present | Chain does not terminate at RPX, AST, LOT, or Unified. Inverse case: the patent is actively weaponized. |
Verdict
NPE — high confidence.
Two independent strong signals drive this. First, self-admitted non-practice: Flexiworld's own complaints (Sony ¶101; Epson/Amazon filings) state it "has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit," and the Stanford NPE Litigation Database classifies it as a Non-Practicing Entity / failed startup — verified at https://npe.law.stanford.edu/patent/re49176. Second, serial, programmatic assertion: the same entity has sued Roku, Brother, Lexmark, Hisense, Sony, Epson, Amazon, and Indeed (2021–2024), including RE49,176's assertion in Flexiworld v. Indeed, No. 1:24-cv-01254 (W.D. Tex., filed 2024-10-18).
Crucially, the assignment record itself is clean: inventor→Flexiworld (2001), with no shell-LLC transfer, no cascading reassignments, no bankruptcy sale, and no defensive-aggregator terminus. The NPE character comes from what the owner does, not from a contrived ownership chain — which is why the shell-entity, cascading-transfer, and pre-litigation-transfer signals all read "not present."
Verify at: USPTO Patent Assignment Search — https://assignmentcenter.uspto.gov/ (or https://assignment.uspto.gov/patent/index.html), search by RE49176 or by the root application 09/947,116 / patent 7099304.
Generated 9/29/2026, 7:11:16 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US patent RE49176 and its cited prior art.
Let me search for the specific prior art references cited in RE49176.
Preliminary note on what I could verify vs. what I could not
I need to be upfront about a limitation before answering, because your request depends on a specific data set that I was not able to fully retrieve.
What your authoritative full text contains: The RE49176 text supplied to me includes the abstract, description, drawings list, classifications, and a Google-Patents-generated "Definitions" glossary. It does not include the front-page "References Cited" section (the enumerated U.S. patent documents, foreign documents, and non-patent literature that the examiner cited during prosecution). That section is where the patent's own prior-art citations live.
What my searches returned: I located the patent and its metadata, but the searches surfaced aggregate citation counts rather than the enumerated list, and I exhausted my search budget before pulling the actual reference list.
So I can give you verified identification data and the verified citation totals, but I cannot responsibly enumerate "each patent citation for RE49176" with full citations, dates, and per-claim § 102 mappings, because I never retrieved that list and will not fabricate patent numbers or titles. That was the explicit risk you flagged (do not auto-correct, do not invent identifiers), so I am declining to guess.
1. Patent identification (verified)
| Field | Value (as found) |
|---|---|
| Publication number | USRE49176E1 |
| Title | "Apparatus, methods, or software for data mining user information by providing services over the internet for connecting people" |
| Application number | US 15/838,234 |
| Filing date | 2017-12-11 |
| Publication/grant date | 2022-08-16 |
| Priority date | 2000-09-05 (provisional 60/230,021, filed Sep. 5, 2000) |
| Inventors | Christina Ying Liu; William Ho Chang |
| Assignee | Flexiworld Technologies, Inc. |
| Legal status | Expired – Lifetime; adjusted expiration 2024-04-30 |
| CPC | H04M3/42008 (anonymous communication between parties), H04M7/0045, H04M7/0054, H04M1/2535, H04M7/128, among others |
Reissue chain (from the patent text): RE49176 is a continuation reissue of Ser. No. 13/371,318 (issued as RE46,637), which is a continuation reissue of Ser. No. 12/199,647 (issued as RE43,181), which is a reissue of U.S. Pat. No. 7,099,304, from application Ser. No. 09/947,116 filed Sep. 4, 2001.
This matters for your question: the § 102 prior art for RE49176 is substantively the same art cited during prosecution of the original '304 application (and its reissues), because the reissues do not add new priority.
2. Citation counts (verified aggregate, not the list)
- Unified Patents portal for US-RE49176-E1 reports: Patent Art (187) and Non-Patent Literature (81) citations, Referenced By (0).
- Google Patents' prior-art keywords for this document: party, station, transaction, information, internet.
These totals describe the size of the citation set but do not identify the individual documents.
3. A directly useful data point about the citation set
The Unified Patents / Patroll campaign for this patent (contest "Flexiworld Technologies: US-RE49176-E1," Dec. 4, 2024 – Jan. 4, 2025, $2,000 prize, claim 38 targeted, asserted against Indeed) stated:
"PRIOR ART THAT HAS BEEN PREVIOUSLY CITED DURING PROSECUTION WILL NOT BE CONSIDERED."
and linked a Google Patents query restricted to before=filing:20000905. That confirms (a) there is a defined prosecution-cited prior-art set for RE49176, and (b) the campaign's winning art was outside that set. The winning prior art was published at unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art.
4. The prior-art approaches the patent itself distinguishes (relevant to § 102 framing)
The specification's Background expressly describes pre-existing systems it is characterizing as the prior art. These are the strongest candidates for what was cited and for § 102 relevance, though I have not verified which documents embody them:
- User-code / chat-room anonymity systems — assign each user a unique code; associate it with the user's phone number; a caller dials the service, enters the code, and the system bridges the call without revealing the number. The patent criticizes this because a user code is not sufficient to identify and describe different transactions having different transaction specifications and connection criteria.
- Contact-code scheduled-call systems — each party gets a contact code; both parties dial in at a scheduled time and enter codes; the system connects them if the codes are proper.
- Record-based call-back extension — after a first successful connection, the system stores a record and later calls the non-dialing party when the other party dials in.
Claim 1 (and claim 38, the claim the Patroll campaign attacked) recites: an interface allowing input of a transaction specification; generating a reference code associated with the transaction, with a defined relationship to the address of the second station; supplying the reference code to the first station; receiving a voice communication request plus the reference code; recovering the address; and opening a voice channel without providing the address to the first station. The distinguishing hook over items 1–3 above is the transaction-specific reference code tied to a negotiated transaction specification, rather than a user-specific code.
5. What I am explicitly not providing, and why
I am not providing a table of "each reference → full citation → date → anticipating claim(s)," because:
- The enumerated citation list was not in the authoritative text I was given, and
- My searches hit their step limit before retrieving it, and
- Fabricating patent numbers, titles, or dates would violate your strict rule and produce an unreliable § 102 chart.
6. Where the actual list is and how to complete this
The enumerated citations for RE49176 are available from:
- Google Patents – USRE49176E1 → "Citations" / "Patent citations" and "Non-Patent Citations" tables (patents.google.com/patent/USRE49176E1/en).
- USPTO PatentCenter for application 15/838,234 — the "References Cited" / PTO-892/1449 forms.
- The front pages of U.S. Pat. No. 7,099,304, RE43,181, and RE46,637, which carry the original examiner citations (including any that survived into the reissue).
If you supply (or authorize me to pull) those tables — or paste the "References Cited" section from the Google Patents page or the '304 front page — I will immediately produce the requested per-reference analysis: full citation, publication/filing date, brief technical description, and a claim-by-claim 35 U.S.C. § 102(a)/(b)/(e) anticipation assessment against RE49176's claims (with claim 38, given it is the commercially targeted claim, treated in detail).
Generated 9/29/2026, 7:11:06 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll start by gathering the authoritative scope of the claims and any prior-art references actually associated with this patent, since the page text you provided was truncated before the Claims section and its "Prior Art" section only listed keywords.
Good — I now have the family's prosecution record. Let me pin down the reissue's actual claim set and the prior art actually of record / asserted.
0. Important scope note first — what the "Prior Art section of this page" actually gave us
The page as fetched for USRE49176E1 contains a Prior Art block that is essentially meta-data, not references:
Prior art keywords: party, station, transaction, information, internetPrior art date 2000-09-05(this is the assumed priority date, not a reference)- Classifications (H04M3/42008 "systems for anonymous communication between parties, e.g. by use of disposable contact identifiers"; H04M3/382; H04M7/0045; H04M7/0054; H04M7/128)
It contains no prior-art reference list, and the fetched text is truncated inside the Description (it ends mid-sentence at "...participants B and C are permitted to make contact for career couns…"). The Claims section was not delivered at all. So I cannot quote claim language verbatim from the page, and I will not pretend to. Where I use claim language below, I name the external source and flag its confidence.
Per your operating rule, I searched for the references of record and for the claim scope. Everything below that is not sourced is labeled as my own § 103 reasoning.
1. Verified bibliographic and family facts (ground truth from search)
| Item | Value | Source |
|---|---|---|
| Patent | USRE49176E1, granted 2022-08-16, app. 15/838,234 filed 2017-12-11 | Google Patents |
| Origin | Reissue of US 7,099,304 B2, app. 09/947,116 filed 2001-09-04, issued 2006-08-29 | RE49176 spec ("a reissue application of U.S. Pat. No. 7,099,304") |
| Priority | Provisional 60/230,021, filed 2000-09-05 | RE49176 spec (CROSS-REFERENCE) |
| Reissue chain | 12/199,647 → RE43,181 → 13/371,318 → RE46,637 → 15/838,234 → RE49,176 | RE49176 spec |
| Sibling reissues (same family) | RE48,066, RE48,088, RE42,828, RE41,416, RE41,487, RE41,532, RE41,689, RE41,882 | RE49176 spec |
| Assignee / inventors | Flexiworld Technologies, Inc.; Christina Ying Liu, William Ho Chang | Google Patents |
| Examiner | Ovidio Escalante | Unified Patents portal |
| Asserted against | Indeed, Inc., 1:24-cv-01254 (W.D. Tex.) — claims 38, 39-42, 52-55 | Stanford NPE DB |
| Third-party challenge | Unified Patents PATROLL contest on at least claim 38 | PATROLL |
Because priority is 2000-09-05, pre-AIA 35 U.S.C. §§ 102/103 govern (subject to any later-added claim language not entitled to that date — see §7).
2. The claims to be analyzed (reconstructed, with confidence notes)
A. The "old" (original-'304) claims — HIGH confidence. Claim 1 of US 7,099,304, as reproduced on RPX Insight:
"A method of facilitating anonymous communication between a first station and a second station, the second station having an address for communication … providing a transaction specification from at least one of the first and second stations, generating a reference code in response to the transaction specification, there being a defined relationship between the reference code and said address, supplying the reference code to at least the first station, receiving a communication request from the first station, receiving the reference code from the first station, using the reference code to recover said address, and opening a channel for communication … whereby anonymous communication can be established … without providing said address to the first station."
(insight.rpxcorp.com/patent/US7099304B2)
B. The independent claim asserted against Indeed (claim 38) — MODERATE confidence. A third-party complaint analysis maps claim 38 (and RE46,637's parallel) to these elements:
| # | Element (claim 38, as characterized) | Spec cite asserted |
|---|---|---|
| 38.1 | obtaining, by a controller, transaction specification(s) over the Internet associated with the second party | col. 12:19-24 |
| 38.2 | data mining information on the second party based at least in part on data collected from a history of transactions | col. 28:41-49 |
| 38.3 | verifying identity of the first party/station | col. 28:4-5 |
| 38.4 | creating a proposed first party transaction specification employing the mined information | col. 28:50-55 |
| 38.5 | generating a reference code for supply to the first party, the code having a relationship to the second party | col. 28:56-61 |
| 38.6 | receiving a connection request from the first party employing the reference code | col. 28:1-4 |
| 38.7 | making a connection without requiring the first party to provide a transaction specification to the controller | col. 28:6-16 |
Source: complaint analysis, 1:24-cv-01254. Verify against the patent before relying on it — I could not retrieve the verbatim claim.
Critical observation: as charted, claim 38 requires no voice communication, no anonymity, and no telephony — it is a generic recommendation/matching engine driven by mined transaction-history data, with a token used to complete the connection. That materially lowers the obviousness hurdle (see Ground 3).
3. Prior art
3.1 References of record (cited during prosecution of the 09/947,116 family)
The full "References Cited" list appears on the sibling reissue Justia page (RE41532). Numbers are verbatim from that list; my teaching-descriptions are flagged by confidence.
| Ref | Teaching (confidence) |
|---|---|
| US 4,757,267 (Riskin) | "Telephone system for connecting a customer to a supplier of goods" — intermediary stores supplier numbers; caller need not know them (HIGH — title confirmed in search) |
| US 4,847,890 / 4,878,239 / 5,058,152 / 5,361,295 / 5,809,114 (Solomon et al.) | Anonymous/controlled telephone-connection systems (HIGH) |
| US 5,058,152 ("Solomon '152") | Caller is prompted for name/number/purpose; "the subscriber's reference number (embedded in the called telephone number) is recognized, and the subscriber's corresponding and actual telephone number is found in memory"; subscriber then called and "may be requested to enter a verification code"; caller is on hold; the subscriber's number is unpublished and preserved. Confirmed verbatim from a PTAB petition exhibit (ptacts.uspto.gov) — HIGH |
| US 5,818,836 (DuVal) | Anonymous Voice System (AVS) + On-line Data System (ODS): parties exchange messages over the ODS to request an anonymous voice connection; the ODS "generates a command which prompts the AVS to establish a telephone connection with party A and party B, and then connects the two parties"; CSN + packet-switched network; billing/subscription (US5818836 PDF; IPR2013-00312 exhibits) — HIGH |
| US 5,754,938 (Herz et al.) | "Pseudonymous server for system for customized electronic identification of desirable objects" — server-side profiling of users, mining of user data, and automated selection/recommendation of "desirable objects" to a pseudonymous user — MODERATE (number confirmed of record; title from my recollection) |
| US 5,845,266 (Lupien) | Computerized intermediation/exchange of commodities via a central matching system — MODERATE |
| US 5,907,677 (Glenn); 5,864,612 (Strauss); 5,907,604 (Hsu); 5,910,946 (Csapo); 5,956,020 (D'Amico); 5,751,966 & 5,825,771 (Cohen); 5,754,636 (Bayless); 5,757,267 (Xydis); 5,761,279 (Bierman); 5,797,099 (Ejzak); 5,805,677 (Ferry); 5,599,868 (Blonder); 5,353,331 (Emery); 5,247,571 (Kay); 4,899,373 (Lee) | Telephony call-control, caller-ID, gateway and messaging art (LOW on individual teachings — do not chart these without pulling the documents) |
3.2 102(e)-class references confirmed by an international search report
WO 01/31903 A1's ISR ("C. DOCUMENTS CONSIDERED TO BE RELEVANT") cites, with the "Y,E" code (= relevant + earlier patent document / 102(e)):
- US 6,148,067 A (Leipow), 2000-11-14
- US 6,175,619 B1 (Desimone), 2001-01-16 → this is the US grant of CA 227,4350 A1 / US 09/111,672 filed 1998-07-08, "Anonymous voice communication using on-line controls" (AT&T; inventor Antonio Desimone): a Call Broker receives call-setup info from on-line (chat-room) participants, provides session info + a Participant Authorization Code (PAC) and callback numbers, and the broker "completes voice links … without sharing telephone numbers," bridging VoIP and PSTN (CA2274350A1; US20050259638A1) — HIGH
Both are pre-2000-09-05 filings, so they qualify as § 102(e) art even though one granted after the priority date.
3.3 Reference that is NOT prior art — flag it
EP 1 315 351 A1 ("Telecommunication method and system for providing chat room participants with anonymous voice communication" — chat users agree an ID code, then both enter it into a voice-chat service which matches codes and bridges the calls). Publication 2003-05-28, application "EP 01 20 4521" (~Nov 2001). That is after the 2000-09-05 priority date and I see no earlier priority. Do not chart it unless a US counterpart with a pre-September-2000 filing date is located. (EP1315351A1 PDF)
4. Ground 1 — Base anonymous-connection claims (e.g., '304 claim 1 / the corresponding RE49,176 claims): DuVal '836 in view of Solomon '152 (optionally + Riskin '267, + Desimone '619)
| Limitation | Where taught |
|---|---|
| "transaction specification from at least one of the first and second stations" (interface) | DuVal — parties exchange messages through the on-line data system to request an anonymous voice connection; AVS prompts both parties for input |
| "reference code … defined relationship between the reference code and said address" | Solomon '152 — "the subscriber's reference number (embedded in the called telephone number) is recognized, and the subscriber's corresponding and actual telephone number is found in memory" |
| "supplying the reference code to at least the first station" | Solomon '152 — caller uses the published reference number; DuVal — codes/commands passed through the ODS |
| "receiving a communication request … and the reference code from the first station" | Solomon '152 — caller dials in with the reference number; DuVal — ODS command triggers AVS |
| "using the reference code to recover said address" | Solomon '152 — number retrieved from memory |
| "opening a channel … without providing said address to the first station" | Solomon '152 (unpublished number preserved) + DuVal (AVS bridges the two parties) + Desimone '619 ("without sharing telephone numbers," PAC-based bridging) |
Motivation to combine (KSR / MPEP 2143):
- Same field of endeavor, same problem. Both DuVal and Solomon target the identical problem recited in RE49,176's own Background: permitting a voice conversation between strangers without disclosing a phone number. The examiner already treated them as analogous art — they were cited together against the original '304.
- Predictable combination of known techniques. Solomon's "published reference number → controller recovers unpublished number → connect" is a complete, working switching solution; DuVal supplies the Internet/on-line-session initiation layer. Substituting one initiation channel (dial-in/POTS) for another (Web/on-line data session) is the classic "mere substitution of one known element for another to obtain its predictable results" (MPEP 2144.03 / KSR).
- Design incentive. The RE49,176 Background itself states the want: voice communication integrated with Internet-mediated transactions while preserving anonymity, plus the marketplaces (eBay/Yahoo/Amazon era) pushing transaction initiation onto the Web. That is an express teaching, admission, and market demand in one.
- Desimone '619 merely formalizes the reference/authorization-code as a token handed to the called party — reinforcing that PAC/reference-code brokering was a known, expected implementation choice by 1998, not an invention.
Counter-argument to anticipate: DuVal/Solomon create a connection only after matching codes entered by two parties (or one party dialing a code); the claims require the controller to recover the second station's own address and open the channel from a single code. That is met by Solomon '152 (single reference number → address recovered → subscriber called), so Ground 1 holds on that point; note the narrowing in the prosecution history if the applicant distinguished on it.
5. Ground 2 — Scheduling / negotiated connection criteria claims: Ground 1 + Herz '938 (or Lupien '266) + Desimone '619
The RE49,176 spec's novelty pitch is: "allows transacting parties to specify their mutually agreed connection criteria, such as connection time frame, which party should initiate the connection, charging method and duration." Every one of these is a business-rule parameter, and the record art teaches each:
- which party initiates + billing + callback number → Desimone '619 ("billing qualification … provide a callback number"; "The process … can be used to add other participants").
- charging method / call-duration billing → DuVal '836 (billing and subscription sharing between ODS and AVS per IPR2013-00312 Exhibit 2018).
- scheduling / availability → the Background itself concedes "office hours" scheduling was known, i.e., an admission of prior art in the specification.
- participant matching / proposed matches → Herz '938 (pseudonymous profiling and server-side recommendation).
Motivation: In re Kollman / KSR — configuring a known telephony-brokering system with a known scheduling/parameter table is not inventive; the Federal Circuit repeatedly holds that business logic implemented on a general-purpose networked controller (here, storing parameters and comparing a call time against a time window, per the spec's "controller unit qualifies the connection according to the transaction specification, such as the pre-agreed appointment time") is routine. The controller-logging/billing features are also concededly conventional (the '304 spec's own "communication record" and "billing" descriptions track standard CDR practice).
6. Ground 3 — The independent data-mining claim (claim 38) and dependents 39-42, 52-55: Herz '938 + DuVal '836 + Solomon '152 (optionally + Desimone '619, + marketplace NPL)
If claim 38 is as characterized in §2B, then this is the strongest § 103 attack in the set, because the claim does not require voice, telephony, or even anonymity:
| Claim 38 element | Reference teaching |
|---|---|
| controller obtains transaction specifications over the Internet from the second party | Herz '938 (networked server receiving user/object profiles); DuVal '836 (ODS on a packet network) |
| data mining info on the second party from a history of transactions | Herz '938 — server accumulates and mines user profile/interaction data to identify "desirable objects"; DuVal '836 transaction/billing history |
| verifying identity of the first party | Solomon '152 verification code; Desimone '619 billing qualification/authorization |
| creating a proposed first-party transaction specification from the mined data | Herz '938 — automated generation of a recommendation to a specific user; Lupien '266 — central system generating a proposed matched trade |
| generating a reference code related to the second party and supplying it to the first party | Desimone '619 — the PAC delivered to the selected chat participant; Solomon '152 — reference number tied to the subscriber's identity/address |
| receiving a connection request employing the reference code | Desimone '619 — chosen participant uses the session info + PAC to reach the Call Broker |
| connection made without the first party supplying a transaction specification | Specification admission: "the system/server or either/both users may establish that only the transaction specification of the user … is to be obtained … a user is relieved of providing a transaction specification," and the '304 spec's "with a click of a button, the user is anonymously and automatically connected" |
Motivation to combine:
- Same problem, complementary teachings. Herz solves "which of millions of objects/people should be presented to this user, given mined history"; Desimone/Solomon solve "how do we connect this user to that counterparty without exposing addresses." Combining a recommender output with a token-based connection service is the ordinary, predictable engineering step — and it is precisely the architecture already deployed by 2000 in online matchmaking/recruiting (Match.com, Monster.com, HotJobs) and by one-click purchase flows.
- KSR factor "known technique, same way." A reference code that is disposable and transaction-scoped is not merely analogous to Solomon's DID/reference number — the classification for this very patent (H04M3/42008: "Systems for anonymous communication between parties, e.g. by use of disposable contact identifiers") states the technique belongs to a known class.
- Predictable result. Herz + a code-brokering layer yields exactly the claimed output (a mined, system-generated proposal + a token); no new and unexpected function arises, and the only asserted benefit ("enhancing the efficiency and relevancy of transactions") is the stated goal of Herz.
- Avoid circularity: even if one refuses Herz, the claimed "data mining … history of transactions" is met by any conventional transaction-log mining on a record of the kind the '304 spec itself describes ("communication records … the identities of communicating parties, billing information, transaction reference code … starting time and duration"). That is applicant's own admission of a conventional logging/mining substrate.
Dependent claims 39-42, 52-55: these depend from 38 and, on the complaint analysis, appear to add anonymity/voice/notification limitations already covered by DuVal '836 (anonymous voice via ODS+AVS) and Solomon '152 (hold-and-verify call completion) — i.e., Ground 1 supplies them, so the Ground 3 combination disposes of the whole asserted set.
7. Weaknesses, caveats, and why § 103 is not the only (or best) attack
What strengthens the § 103 case:
- The entire family was asserted/re-examined heavily; DuVal '836 was itself the subject of IPR2013-00312, and the PTAB has already had to construe the DuVal/PAC-type disclosures.
- Notably, the '304 patent itself has been used as prior art against others: in IPR2018-01083 (US 9,445,251), the Board discusses "Liu" teaching that a station sends "a communication request and the second station's 'reference code' to a server," which "uses the reference code to recover the second station's address." That is a PTAB characterization of this very disclosure as a known technique, which is useful KSR ammunition.
What cuts against the § 103 case (be honest about these):
- I do not have the verbatim claim text of RE49,176. The page was truncated; the claim-38 element list comes from a third-party complaint analysis. A real § 103 opinion must re-run against the granted claims.
- § 102(e) timing risk on Leipow '067 / Desimone '619. Their filing dates precede 2000-09-05, but if the applicant can swear behind under pre-AIA § 1.131 (invention date ≤ 2000-09-05 is only that date; conception may be earlier still), the Leipow/Desimone fallback weakens. DuVal '836 and Solomon '152 are § 102(b)/102(a) art and carry no such risk — lead with those.
- Motivation statements must be evidence-backed, not conclusory, post-KSR. I have pointed at express textual hooks (the spec's own Background admissions, Herz's stated purpose, Desimone's stated anonymity goal). A petition should cite paragraph/column numbers for each, which I have not verified for Herz '938 or Lupien '266 (see my confidence flags).
- There is a much cleaner attack than § 103 on claim 38, and you should evaluate it: the "data mining / proposed transaction" subject matter does not appear in the 7,099,304 claims, whose claim 1 is directed to anonymous communication with a transaction specification supplied by a party. If the RE49,176 reissue claims to that new matter, the challenge is § 251 recapture / lack of support in the original disclosure (§ 112(a)) and possibly § 101, not § 103. The reissue was granted 2022-08-16 with a shortened term expiring 2024-04-30 — consistent with a reissue that was pressed to conclusion late in the patent's life; that history is worth mining for prosecution-history estoppel and recapture admissions.
- Narrower-but-real distinctions: the claims require that the system (not a user) creates the proposed transaction and that the connection is made without the first party supplying a specification. Ground 3's weakest link is Herz '938 — if Herz is read as recommending objects rather than counterparties, a second reference (a matchmaking/recruiting NPL such as Monster.com/HotJobs/Match.com usage evidence, or Lupien '266's matched-exchange disclosure) should be added to supply that element.
8. Bottom line
| Ground | Combination | Claims reached | Strength |
|---|---|---|---|
| 1 | DuVal '836 + Solomon '152 (opt. Riskin '267, Desimone '619) | Base anonymous-connection claims (orig. '304 cl. 1 analogues) | Strong — refs of record, same field, single-code→address-recovery met by Solomon '152 |
| 2 | Ground 1 + Herz '938 / Lupien '266 + Desimone '619 | Scheduling, billing, "who initiates," negotiated-criteria dependents | Strong — all limitations are admitted business rules + conventional logging/billing |
| 3 | Herz '938 + DuVal '836 + Solomon '152 (opt. Desimone '619; opt. matchmaking NPL) | Claim 38 and dependents 39-42, 52-55 — the actual asserted set | Moderate-to-strong, because as characterized claim 38 needs no voice, no telephony, and no anonymity — only mined-history-driven recommendation + token-based connection |
Predominant motivation theme across all three grounds: every one of these references was directed at the same two-step problem this patent states in its own Background — (i) help a user find the right counterparty in a networked marketplace, and (ii) connect that user to the counterparty without revealing the counterparty's address. When the references are combined, "the improvement is more than the predictable use of prior art elements according to their established functions" is the only available argument, and it is a hard one to win on this record.
Two action items before any of this is relied upon: (1) obtain the verbatim claim set of RE49,176 (claims 38-42, 52-55) and re-run the mapping; (2) pull the actual documents for the LOW/MODERATE-confidence references (Herz '938, Lupien '266, Glenn '677, Strauss '612) rather than trusting the teaching descriptions above. I have deliberately not quoted or paraphrased any reference I could not confirm from the search results without flagging it.
Generated 9/29/2026, 7:11:56 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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