US 10037178

I'll search for the specific patent number and pull authoritative details, particularly the abstract and claims (which were not included in the specification text provided to me).

Let me check for any Federal Circuit (CAFC) activity and confirm the current legal/litigation status.

Scope / search note

I searched for the identifier 10037178 as given (which corresponds to granted U.S. Patent No. 10,037,178 B2; pre-grant publication US 2017/0064746 A1). Results for other Flexiworld patents (e.g., 10,768,871 / US10768871B2, 11,096,056 / US11096056B2, 10,841,798 / US10841798B2, 9,042,811) surfaced in the same family and litigation clusters, but I have excluded them from the bibliographic and claim summary below except where they are relevant context.

I was not able to verify any Court of Appeals for the Federal Circuit docket for this patent, in 2026 or any other year. Everything I found is district-court activity. I cannot confirm CAFC activity either way — absence here is not proof of absence.

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Bibliographic data — US 10,037,178 B2

Source URLs: https://patents.google.com/patent/US10037178/en · https://uspto.report/patent/grant/10,037,178 · https://portal.unifiedpatents.com/patents/patent/US-20170064746-A1

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Abstract (as printed on the granted patent)

"Output devices supporting wireless device discovery are herein disclosed and enabled. To setup an output device for wireless connection, wireless device discovery is performed by a client of the output device to discover the output device. Upon being discovered, the output device may provide identification or information related to the output device to the client for establishing a wireless connection. Subsequently, the output device may receive, via the established wireless connection, digital content from the client for output. Wireless device discovery operations may be based on one or more of a close proximity wireless communication, a Bluetooth wireless communication, or a wireless communication compatible with a protocol within IEEE 802.11 standards. Security information, such as a password, biometrics, or a PIN, may be required for establishing the wireless connection. The output device may automatically obtain the security information from the client or may be based, in part, on user input."

(Reproduced from uspto.report's rendering of the grant. The pre-grant A1 abstract says "direct wireless communication compatible with a protocol within IEEE 802.11 standards" and "may require, in part, user input" — minor wording differences between the A1 and the B2.)

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Independent claims — plain-language overview

The patent has three independent claims: 1 (method), 7 (wireless controller), and 13 (output device), plus fifteen dependent claims (2–6, 8–12, 14–18). All three independents recite essentially the same five-to-six step sequence from the output-device side, differing in claim type and in which limitations get imported.

Claim 1 — Method performed by the output device

A wireless communication method for an output device (memory stores at least an attribute or ID of the device) to link up with a "client" (a wireless information apparatus or a client application on it — expressly a distinct device from the output device):

1. The output device's wireless unit facilitates a wireless device discovery operation — either the device discovers the client, or the device is discoverable by the client.
2. After discovery, the device transmits its attribute/identification information to the client.
3. After that transmission, a security or authentication procedure is implemented at the output device. The claim enumerates: user name, password, ID number, PIN, IP address, device identification, security key, biometric, fingerprint, or voice, "individually or in any combination."
4. A wireless communication link is then established, based at least in part on having implemented step (3), and the link must be at least partly compatible with a protocol in IEEE 802.11 or Bluetooth.
5. Output data is received over that link, related to at least part of a digital content for output/playing at the device; the digital content is expressly audio and/or video content.

Claim 7 — Wireless controller inside an output device

A wireless controller included in an output device for receiving digital content from a wireless information apparatus. Structural recitals: an antenna, and wireless communication circuitry at least partly compatible with IEEE 802.11 or Bluetooth. Functionally configured to:

1. facilitate, via the antenna, wireless discovery of the output device by the wireless information apparatus;
2. provide an attribute/identification of the output device to the apparatus that is discovering it;
3. receive output data from the apparatus subsequent to providing that information, where the data relates to at least part of the digital content for output/playing at the output device.

The receipt in (3) must be subsequent to a security or authentication procedure implemented at least in part at the output device (user name, password, ID number, PIN, device identification, code, security key, biometric, fingerprint, or voice), and must occur over the established wireless link using the 802.11/Bluetooth-compatible circuitry.

Claim 13 — Output device for receiving and playing digital content

An output device comprising a user-operable interface and wireless communication circuitry including at least a wireless communication chip or chipset compatible at least partly with 802.11 or Bluetooth. The device is operable for an ordered sequence:

1. receiving, via the interface, at least an indication from the user related to a wireless device discovery operation;
2. subsequent to that indication, facilitating a discovery operation so a client can wirelessly discover the output device;
3. subsequent to being discovered, transmitting attribute/identification information to the client;
4. subsequent to (3), receiving a query or service request from the client;
5. subsequent to (4), establishing the wireless link using the 802.11/Bluetooth-compatible chip or chipset;
6. receiving output data over that link, relating to at least part of the digital content for outputting/playing; digital content is at least audio and/or video.

The client is either a mobile information apparatus or a client application on it, and is a distinct device from the output device.

Notable dependent claims

• 2 / 15 — Repeating later steps (data transfer, security, query) on future connections without repeating the discovery step (claim 15: skipping steps (1)–(3)).
• 3 / 12 / 17 — Output device is a Bluetooth-enabled audio output device and the information apparatus is a smart phone; content is audio; claim 17 adds that the attribute/ID is stored in the output device's memory/storage and transmitted from there.
• 4 / 11 / 18 — Device-type lists: audio output device, sound output device, projection device, display device, television, or a controller box connected to a television; client types: smart phone, Internet-Phone, touch-sensitive-screen phone, Information-Pad, digital camera, Internet appliance, Internet-Pad. Claim 11 adds that the controller/device interprets, decodes, or processes the received output data for playback.
• 5 / 10 / 12 — Discovery based at least in part on physical proximity / short-range close-proximity communication (claim 10 frames this as the basis for the client selecting/identifying the output device).
• 6 / 14 — The security/authentication procedure is performed by the output device receiving the enumerated security information from the client.
• 8 — The controller may be embodied as a chip/chipset or a circuit board including one or more chips/chipsets.
• 9 — The controller may include processors, firmware, ASIC, DSP, system on a chip, or communication chipsets.
• 16 — The interface is one or more of a display screen, touch-sensitive screen/interface, button, push button, soft key, keypad, status indicator, on/off power control, or switch.

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Family / priority chain (flagging a real ambiguity)

The record contains two overlapping priority chains, and I am not able to reconcile them definitively from the sources I could reach:

• Google Patents lists the priority date as 2000-11-01 and shows an "external priority" claimed from US 10/016,223 dated 2001-11-01.
• The "Parent Case Text" reproduced on uspto.report states the application is a continuation of 10/053,765 filed Jan. 18, 2002, which claims priority to provisional 60/262,764 filed Jan. 19, 2001, and additionally a continuation-in-part of 13/710,299 filed Dec. 10, 2012, itself a continuation of 12/903,048 (issued as 8,332,521), which is a continuation of 10/016,223 filed Nov. 1, 2001 (issued as 7,941,541), claiming benefit of provisional 60/245,101 filed Nov. 1, 2000.
• The related-documents table lists 10/053,765, 13/710,299, 12/903,048, 10/016,223, 60/262,764 (Jan. 19, 2001) and 60/245,101 (Nov. 1, 2000).
• Unified Patents lists the A1 priority date as 2000-10-31 (plausibly a time-zone artifact of the Nov. 1, 2000 provisional).

Takeaway: the earliest claimed benefit appears to be the Nov. 1, 2000 provisional (60/245,101), but the operative 20-year term appears to run from the Nov. 1, 2001 filing (10/016,223), consistent with Google Patents' listed anticipated expiration of 2021-11-01. Treat the exact priority/term calculus as unverified.

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Prosecution and status

• Continuation-with-CIP lineage — This is a late-2016 continuation from the original 2001–2002 Flexiworld "pervasive output" family. The specification body is the original universal-output/RIP-sharing disclosure (client rasterizes; output controller or output device completes halftoning/color conversion; MRC intermediate output data; output device profiles; discovery processes), while the claims are much narrower and directed to wireless device discovery + security/authentication + reception of audio/video digital content.
• Certificate of Correction — uspto.report notes "Please see images for: (Certificate of Correction)" for this grant, meaning the printed claim text may have been corrected post-issue. The claim text quoted above is from a third-party rendering of the printed patent, not the official USPTO/certificate-corrected copy. Verify against USPTO PatentCenter before relying on exact claim language.
• Status: Expired – Fee Related, with anticipated expiration 2021-11-01. That is an unusual combination with ongoing litigation, and I flag it as a factual anomaly rather than attempting to explain it.

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Litigation involving 10,037,178 (from search results)

Sources: https://patents.google.com/patent/US10037178/en (litigation links) · https://www.patsnap.com/de/resources/blog/litigation/flexiworld-technologies-v-xerox-corp-wireless-output-device-patents-patsnap/ · https://ai-lab.exparte.com/case/dct/kyed/5:22-cv-00107/doc/analysis/1

No CAFC appeal docket for 10,037,178 was found in my searches. I could not verify the current (2026) docket status of any of the above cases, including 2:25-cv-00960.

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Confidence and uncertainty

High confidence (multiple independent sources agree): patent number, title, inventors, assignee, application number 15/348,006, filing date 2016-11-10, issue date 2018-07-31, pre-grant publication US 2017/0064746 A1, the abstract, and the structure/content of independent claims 1, 7 and 13 and the dependent claims.

Lower confidence / explicitly uncertain:

1. Exact claim wording — sources are third-party renderings of the printed patent, and a Certificate of Correction is noted. Official USPTO text should be checked.
2. Priority chain and term — two overlapping chains appear in the record; the Nov. 1, 2000→Nov. 1, 2001 vs. Jan. 19, 2001/Jan. 18, 2002 relationship is not something I can resolve authoritatively.
3. CAFC 2026 activity — nothing found; I cannot rule it out.
4. Litigation specifics (asserted claims, current case status) — drawn from secondary/AI-generated analyses and news summaries, not from primary PACER records I could retrieve directly.

I'll research litigation involving US patent 10037178 using multiple searches.

Let me gather details on the specific case numbers cited in the patent record.

Let me verify the remaining cases (LG, Sony, Hisense, Brother) and check for any others.

Bottom line

US 10037178 B2 ("the '178 patent" — Wireless output devices or wireless controllers that support wireless device discovery for establishing wireless connectivity, Flexiworld Technologies, Inc.; inventors William Ho Chang and Christina Ying Liu) has been asserted in a multi-defendant Flexiworld licensing/enforcement campaign. I identified eight matters in which the '178 patent is identified as asserted (seven from the patent's own Google Patents litigation record, plus one from a third‑party litigation database). It is a single-patent-family campaign — the same complaints typically assert 4–15 related Flexiworld patents (e.g., US 10,768,871; US 11,096,056; US 10,841,798; US 9,965,233; US 10,642,576).

Important caveat on precision: I could confirm case identity, court, case number, and (for most) filing dates, but outcomes are not verifiable for most cases from the sources I retrieved. Where I state a disposition, it comes from a docket-based or court-document source cited below. Where I do not know, I say so rather than guessing.

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Litigation involving US 10037178

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Case-by-case detail

1. Flexiworld v. Epson America, Inc., 8:21-cv-00807 (C.D. Cal.)
Patent-infringement action under 35 U.S.C. § 271, filed April 29, 2021, complaint with 28 exhibits; served on Epson May 4, 2021. Extensive pro hac vice activity through 2021, then a "REPORT ON THE DETERMINATION OF AN ACTION Regarding a Patent or Trademark. (Closing) (Attachments: #1 Order Dismissing Civil Action)" entered February 2, 2022, and the case is shown as "Closed." (Justia docket; Unified Patents litigation portal; Unified Patents, 8:21-cv-00807.) Dockets indicate disposition was by dismissal; the stipulation/settlement terms are not in the public docket extract I retrieved.

2. Flexiworld v. Lexmark International, Inc., 5:22-cv-00097-KKC (E.D. Ky.)
Flexiworld filed four separate April 2022 complaints against Lexmark asserting fifteen patents in total, expressly including "10,037,178 ('the '178 Patent')." The four actions were consolidated for discovery and pretrial proceedings (Order, Aug. 8, 2022), with 5:22-cv-00097 designated lead. On March 20, 2023, Judge Caldwell denied Lexmark's initial motion to dismiss (as moot), denied the renewed partial motion to dismiss, denied the alternative motion to phase discovery, and denied Flexiworld's request for oral argument as moot. The decision turned on § 287(a) marking and issue preclusion from Flexiworld v. Roku (6:20-cv-00819-ADA, W.D. Tex.) — the court held the Roku patents and marking issue were not identical to those here. (Justia opinion/order; CourtListener; Casetext; Lexmark First Amended Complaint, 5:22-cv-00097-KKC.) Post-2023 disposition (settlement/trial) is not confirmed by my sources.

3. Flexiworld v. Brother Industries (U.S.A.), Inc., 2:22-cv-02250 (W.D. Tenn.)
Listed in the Stanford NPE Litigation Database as a case involving patent 10037178, filed April 21, 2022, against Brother Industries (U.S.A.), Inc. and Brother International Corporation. (Stanford NPE Litigation Database, npe.law.stanford.edu/patent/10037178.) It also appears in the '178 patent's Google Patents litigation record as Tennessee Western District Court, 2:22-cv-02250. Outcome not confirmed.

4. Flexiworld v. Hisense Co., Ltd. et al., 2:22-cv-00225 (E.D. Tex.)
Filed June 24, 2022 against Hisense Co., Ltd. plus twelve affiliated entities (Guiyang Hisense Electronics; Hisense International; Hisense Visual Technology; Qingdao Huatong State‑Owned Capital Operation (Group) Co. Ltd.; etc.). (Stanford NPE Litigation Database; Google Patents litigation record.) Outcome not confirmed.

5. Flexiworld v. Xerox Corp., 6:23-cv-06372 (W.D.N.Y.)
Asserted the '178 patent together with US 11,096,056; US 10,768,871; and US 10,417,98 (Note: PatSnap's summary renders the last as US 10,841,798 — the four-patent cluster shown for the case is US 10,037,178; US 11,096,056; US 10,768,871; US 10,841,798). The parties stipulated to dismiss with prejudice all pending claims and counterclaims, each side bearing its own costs, fees, and expenses — no § 285 exceptional-case contest. (PACER docket 6:23-cv-06372, as summarized by PatSnap, Flexiworld Technologies v. Xerox Corp..) Exact filing and dismissal dates were not in the material I retrieved; the case number indicates a 2023 filing.

6. Flexiworld v. Sony Corporation, 2:23-cv-00616 (E.D. Tex.)
Reported as filed December 19, 2023 in the Eastern District of Texas, with 15 Flexiworld patents asserted including 10037178, along with '402, '073, '811, '087, '096, '576, '871, '031, '773, '903, '056, '257, '259, and '233. (GoldenCompass/PatentPia litigation report, link.) Note: this case does not appear in the Google Patents litigation list embedded in the patent text I was given, so treat it as database-sourced and verify against PACER. Outcome not confirmed.

7. Flexiworld v. LG Electronics, Inc. et al., 2:25-cv-00960 (E.D. Tex.)
Filed September 18, 2025, assigned to Judge Rodney Gilstrap (Marshall Division). Accused products: LG smart TVs, soundbars, TV remotes, and LG apps (LG ThinQ–type mobile apps). The '178 patent is asserted — claims 13, 14, 15, 16, and 18 — against the accused TVs and soundbars; co-asserted patents include US 9,965,233 (claims 37–39), US 10,140,072 (claims 1–6), and US 10,162,596 (claims 1–2, 4–9, 11–13). Relief sought includes damages and reasonable royalties. Currently open. (PACER Monitor case 2:25-cv-00960; Ex Parte AI Lab complaint analysis; Korean IP‑NAVI dispute bulletin, link.)

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Cases in the same campaign that do not appear to involve the '178 patent

For completeness (these are frequently lumped into the "Flexiworld" narrative but the asserted patents differ):

• Flexiworld v. Roku, Inc., 6:20-cv-00819-ADA (W.D. Tex.) — asserted US 8,989,064; US 10,346,114; US 10,740,066. Roku won an oral summary-judgment ruling on § 287(a) pre-suit damages; the case settled and the ruling was vacated (Google Patents litigation record; E.D. Ky. opinion in 5:22-cv-00097).
• Flexiworld v. Canon Inc., 6:21-cv-00143-ADA (W.D. Tex.) — referenced in the Lexmark briefing as involving Flexiworld licensees; I could not confirm that the '178 patent was asserted there.

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What I could not verify (and how you should verify it)

• Outcomes for Brother, Hisense, Sony, and post-2023 Lexmark are not established by the sources I retrieved. Do not treat them as pending, settled, or dismissed without a PACER check.
• German/Chinese-language and secondary aggregators (PatSnap, Ex Parte, PatentPia, UniCourt) sometimes mis-state patent numbers and dates. The number 10,417,98 appears in one summary and is obviously a truncation of US 10,841,798 — I have flagged it rather than silently correcting it, per your instruction to interpret identifiers literally.
• The Google Patents litigation block embedded in the patent text lists only seven entries (five of which I mapped above: 8:21-cv-00807, 2:22-cv-00225, 2:22-cv-02250, 6:23-cv-06372, 5:22-cv-00107, 5:22-cv-00097, and 2:25-cv-00960); it is not exhaustive — the Sony matter and the two additional Lexmark member cases came from other sources.
• Recommended verification: PACER docket pulls for each case number above; the Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/caselist); and a CAFC docket search for any appeal (none surfaced for the '178 patent in my searches — no Federal Circuit appeal of any of these matters was identified).

Note also that the '178 patent itself is recorded as "Expired – Fee Related," with an anticipated expiration of November 1, 2021 (Google Patents legal-status block). That does not bar past-damages claims for pre-expiration infringement, but it materially limits the forward-looking value of any case still open, including the 2025 LG action.

I'll verify the "no PTAB activity" default with targeted searches before writing.

Let me run additional targeted searches to confirm nothing exists against this specific patent.

Let me do a final check on the broader Flexiworld PTAB docket to see whether the '178 patent was ever challenged under a differently formatted identifier.

PTAB / AIA Trial Proceedings — US 10,037,178 B2

Scope note: The canonical list in the structured "PTAB proceedings on file" block (USPTO Open Data Portal) contains zero AIA trial proceedings for this patent as of the most recent ingest. I ran four independent web searches against the patent number in multiple formats (10037178, 10,037,178, 1037178), against the patent title, and against the Flexiworld PTAB campaign generally. Nothing surfaced that contradicts the ODP result. I could not query PTAB E2E (PTAB Center) directly, so the ODP block plus secondary-source corroboration is the basis for everything below.

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Proceedings overview

Total AIA trial proceedings on US 10,037,178: 0. No IPR, no PGR, no CBM — not instituted, not denied, not settled, not pending. There is no proceeding list to break down by status, and therefore no claim of the '178 patent has ever been canceled, narrowed, or adjudicated at the PTAB. The bottom line for a defendant is the inverse of the usual framing: this is an untested patent, not a hardened one — but it is also not a paper tiger, because the same patent owner litigated 14+ PTAB cases across the sibling family and repeatedly beat back the challengers on the priority/conception question that a '178 petitioner would have to win first. You are starting from scratch, with no estoppel against you and no free kill-shot handed to you by a prior petitioner.

Because there is nothing to report on this patent, the substantive value below is in the adjacent proceedings — same inventors, same specification, same 2000–2001 priority chain — which are the closest thing to a preview of what an IPR against the '178 would look like.

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No proceedings on US 10,037,178 B2

To be explicit, so there is no ambiguity for a defendant reading this:

• No petition has ever been filed against the '178 patent. There is no IPR2021-xxxxx, IPR2022-xxxxx, IPR2023-xxxxx, or later docket number bearing Patent No. 10,037,178 that I could locate in the ODP data or in any public source.
• Consequence: no § 315(e)(2) estoppel runs against anyone on this patent. A first-filer gets a clean shot.
• Consequence: no claim of the '178 has been construed by the Board. The only claim-construction discourse I found is the infringement-side analysis in the Flexiworld v. Lexmark complaint (E.D. Ky. 5:22-cv-00107), which flags "wireless device discovery operation" ('178 claim 1) and "attribute or identification information" as the disputed terms. Those are the terms an IPR petitioner would need to brief.

Why the absence matters. Flexiworld has been a serial plaintiff since 2021 (Epson 2021, Brother 2022, Lexmark 2022, Hisense 2022, Xerox 2023, Sony 2023, LG 2025, TCL 2026). That level of assertion normally attracts IPR petitions as night follows day — and indeed Flexiworld has faced roughly 14 PTAB cases family-wide. The fact that the '178 specifically has drawn none is a real signal, though I want to be candid that I am inferring the cause, not stating a documented fact. The most plausible explanation is the priority problem (below): the '178 traces to the 2000-11-01 provisional, so § 102(e) art must pre-date that, and the Board has now twice credited Flexiworld's conception evidence at 2000-10-22 — a date that knocks out the natural reference set. A challenger with a weak priority attack has little to work with.

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Adjacent family proceedings — what a '178 petitioner must know before filing

These are not proceedings on the '178 patent. Do not cite them as such. They are included because each one tests the same specification, the same inventors, and (critically) the same priority chain that the '178 depends on.

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

• Type: Inter Partes Review (pre-AIA § 103(a))
• Filed: 2022-04-08
• Patent challenged: US 9,836,257 B2 (claims 27 and 28) — a sibling in the same family, asserted against Roku
• Status: Final Written Decision — no challenged claims unpatentable. Patent owner prevailed.
• Judge panel: Administrative Patent Judges Terrence W. McMillin, Christopher L. Ogden, and Brent M. Dougal
• Petition grounds: Pre-AIA § 103(a) obviousness, two grounds — Olgaard in view of Moghadam, and Acharya in view of Griffiths. Institution on all challenged claims (2022-11-08).
• Institution decision: Instituted 2022-11-08. The panel expressly declined to exercise § 314(a) discretion to deny, holding that (i) Flexiworld's real-party-in-interest/ethical-conflict theory about Unified's unnamed subscribers was unsupported on the preliminary record, and (ii) Unified's non-practicing status is irrelevant under § 311(a) — "Congress did not implement a standing requirement for petitioners."
• Final Written Decision: 2023-11-01 (Paper 41). The Board held Unified failed to show claims 27 and 28 unpatentable under pre-AIA § 103(a). The dispositive issue was not the merits of the art — it was that the art was not prior art at all. Olgaard's date was 2000-10-24; Acharya's was 2000-12-22. Flexiworld proved conception no later than 2000-10-22, using draft provisional applications whose file metadata showed modification dates, corroborated by inventor testimony. The panel called the metadata "the most reliable indicator of the latest date each draft was completed," and held that metadata generated automatically by the operating system can itself be corroborative even though it originated with the inventor. The Board also found reasonable continuous diligence through the Thanksgiving/Christmas/New Year period, and held that neither reference qualified under § 102(e). The panel also dismissed Flexiworld's revised motion to amend — so no substitute claims were added.
• Settlement / termination: N/A (trial ran to FWD)
• Appeal: None found. I could not verify any Federal Circuit appeal of Paper 41.
• Defensive value for a '178 defendant: This is the single most important datapoint for you. Any '178 invalidity theory anchored on art dated after 2000-10-22 is now swimming upstream against a Board holding that Flexiworld has corroborated conception and diligence evidence for this exact disclosure. Expect Flexiworld to re-deploy the same metadata-plus-inventor-declaration package, and expect it to be credible with the Board. Also note the PTAB's refusal to reach the merits — Unified never got a ruling that the claims were non-obvious; it lost on the threshold. Estoppel therefore does not attach to § 103 merits arguments, but you also have no roadmap from this decision.

PGR2021-00111 — Roku, Inc. v. Flexiworld Technologies, Inc.

• Type: Post-Grant Review
• Filed: 2021-08-24
• Patent challenged: US 10,846,031 B2 (Application No. 15/594,440) — a sibling, and one of the patents in the Flexiworld v. Xerox and v. Epson clusters
• Status: Not Instituted – Merits (institution denied on the merits)
• Judge panel: Not stated in the source I could retrieve
• Petition grounds: Not stated at the level of reference-level detail in the sources I could reach; the source records a patent-owner preliminary response that argued the '031 claims lack written-description support relative to prosecution history of US 10,489,096, plus 2001–2003 Portland Business Journal articles and the Flexiworld website homepage as evidence
• Institution decision: 2022-03-14 — "Institution Decision: Denying Institution of Post-Grant Review 35 U.S.C. sec. 324." Petitioner filed a refund request 2022-04-13; refund approved 2022-04-18.
• Final Written Decision: None (never instituted)
• Settlement / termination: Terminated 2022-03-14 by the denial
• Appeal: None found
• Defensive value: Confirms that a PGR-style attack (which permits §§ 101/112 grounds) was tried against this family and failed at the threshold. For the '178 specifically, a PGR is not even available — see the statutory-availability point in the strategic summary.

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

• Type: Inter Partes Review
• Patents: IPR2021-00713 → US 10,740,066 ('066); IPR2021-00714 → US 8,989,064 ('064)
• Filed: 2021 (docket numbers indicate FY2021; exact filing dates not verified)
• Status: Went to trial; oral hearing held 2022-07-19. I could not verify the final dispositions from primary sources.
• Judge panel: Not verified
• Petition grounds (from Roku's 2022-07-19 demonstratives): Grounds 1/1A Yamaguchi + Gu (and Garfunkel); Grounds 2/2A Ikonen + Gu; Grounds 3/3A Ikonen + Kammer (and Peng). Contested issues included whether Yamaguchi was prior art, motivation to combine, "advertising" as a claim element, and alleged UPnP security issues.
• Priority fight of record: Roku's expert (Bhattacharjee) opened on the express position that claim 7 of the '066 patent and its dependents are not entitled to the benefit of the Nov. 1, 2000 provisional — i.e., Roku attacked the priority claim head-on. Flexiworld then shifted to assert the Nov. 1, 2000 provisional date after the petition was filed. This is the exact battle line you would inherit.
• Appeal: Not verified
• Defensive value: The briefing here (Roku's demonstratives and the Bhattacharjee reply declaration) is the best public roadmap of how a sophisticated defendant frames the priority attack on this family. Read it before drafting.

IPR2022-01112 — Roku, Inc. v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review
• Patent challenged: US 10,140,073 ('073)
• Filed: 2022 (petition as retrieved)
• Status: Not verified beyond petition stage
• Petition grounds: Claims 1–20, all three independents (1, 8, 16), pre-AIA § 103. Art included Saulpaugh, Castell, Beck, Putzolu, Larsson, Slaughter, and several provisionals. Roku framed the claims as "known device discovery mechanisms that enable remote service calls, e.g., a cell phone detecting and using a remote printer."
• Related matter note: The petition states the '073 patent was then asserted against Roku and in Flexiworld v. Hisense (2:22-cv-00227, E.D. Tex.), and that the Roku case was stayed.
• Defensive value: Shows a petitioner building a discovery-plus-authentication obviousness case across the family. Note that the Board has been receptive to anticipation/obviousness arguments when the art predates the conception date — the failure in IPR2022-00775 was a priority failure, not an art failure.

Other family proceedings identified (numbers verified, details not fully verified)

Family-wide totals (secondary source, GreyB/IP Verse, last updated 2026-05-21): Flexiworld has faced approximately 14 PTAB cases; Roku is a prolific petitioner (≈80 PTAB filings) and Unified Patents is squarely in the chain (≈279 PTAB filings, 28 as a party). Unified Patents is the defensive aggregator to watch — it has already taken on this family twice.

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Strategic summary

Claim status of the '178 patent. There is no PTAB claim-level disposition to report. Claims 1–18 are all UNTESTED at the PTAB — none canceled, none sustained, none amended. Note the asymmetry with the litigation, which tells you where the assertion value sits: Flexiworld asserted at least claim 7 against Lexmark (E.D. Ky. 5:22-cv-00107) and asserted claims 13, 14, 15, 16, and 18 against LG (E.D. Tex. 2:25-cv-00960). The asserted set is therefore dominated by the output-device and wireless-controller claims (7, 13, 16, 18) and by claim 15's "skip rediscovery on subsequent connections" limitation — not by method claim 1. Any IPR strategy that attacks only claim 1 misses most of the asserted set.

Statutory availability — this is the sharpest point for a defendant. The '178 issued from an application with an effective filing date well before 2013-03-16. Three consequences: (1) PGR is unavailable — it applies only to patents with an effective filing date on or after the AIA transition date; (2) CBM review is unavailable — the transitional program sunset on 2020-09-16 and would not reach a 2001-era wireless-discovery patent anyway; (3) IPR is your only AIA vehicle, and it is limited to §§ 102 and 103 on patents and printed publications. That means the two attack surfaces that worked (or nearly worked) elsewhere in this family — the § 101 abstract-idea argument Roku ran against a sibling, and the § 112 written-description / Rivera conflation argument — cannot be raised at the PTAB against the '178 at all. They are district-court defenses only. Conversely, the pre-AIA regime cuts the other way too: because the '178 is pre-AIA, Flexiworld can swear behind § 102(e) references by proving prior conception and diligence — which the Board has already found it did, crediting conception at 2000-10-22.

Estoppel landscape. § 315(e)(2) estoppel runs from a final written decision against the petitioner and its privies. Because no FWD has ever issued on the '178, there is no estoppel of any kind against any party on this patent. A defendant is free to raise any § 102/§ 103 ground, including grounds that a sibling-case petitioner raised against a different patent in the family. Two practical warnings: (a) Unified Patents' IPR2022-00775 did not reach § 103 merits on the '257, so there is no estoppel on those merits either — but Unified and its 3,000+ members are a privy risk worth checking if you are a Unified member; and (b) any Roku FWD in the parallel family IPRs may create estoppel against Roku only, not the world.

Pattern signals. One petitioner (Roku/Perkins Coie) filed a coordinated multi-patent campaign across the family rather than serially hammering a single patent. One defensive aggregator (Unified Patents, in-house counsel Jordan Rossen and Roshan Mansinghani) entered the family twice. Flexiworld's counsel has been stable at Nelson Bumgardner (Bumgardner, Ginnings, Kennedy) throughout. Flexiworld has defended the priority/conception question aggressively and won the only time it was squarely litigated to FWD. There is no indication of a Flexiworld PTAB appeal to the Federal Circuit in any family case I could verify, and no CAFC docket for the '178 — the prior sections' note that CAFC activity is unverified stands and is unchanged here.

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Recommended next steps

1. Treat the absence of IPRs as a strategic fact, not an oversight. The '178 has been in continuous assertion since at least 2021 across printers, TVs, and soundbars, and nobody has petitioned. Before you spend the money, work out why. My working hypothesis — explicitly an inference — is that the priority chain makes the § 102(e) art problem acute for this particular claim set. Test that hypothesis by identifying your best prior art first and asking whether it pre-dates 2000-10-22, not merely 2000-11-01.

2. Read IPR2022-00775 Paper 41 (2023-11-01) before drafting anything. It is the controlling public record on Flexiworld's conception and diligence showing. Sources: the proceeding page at https://portal.unifiedpatents.com/ptab/case/IPR2022-00775 and the Board's FWD docketed as Paper 41 (accessible via PTAB E2E at https://ptacs.uspto.gov/ptacts/ or Docket Alarm at https://www.docketalarm.com/cases/PTAB/IPR2022-00775/). Practitioner analyses summarizing the holding: https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/ and https://www.mondaq.com/Article/[1408774](/patent/1408774). Plan for the metadata corroboration fight — the Board has already held that OS-generated file metadata is independent, contemporaneous corroboration. If you intend to contest conception, you need a theory for attacking 2000-era metadata that survives Fleming v. Escort rule-of-reason analysis.

3. Target the asserted claims, not claim 1. Build grounds against claims 7, 13, 14, 15, 16, and 18 — the set Flexiworld actually asserts (claim 7 against Lexmark; 13/14/15/16/18 against LG). Claim 15's "skip rediscovery on subsequent connections" limitation is a distinctive hook; claim 13's user-operable-interface + ordered-sequence recitation is another.

4. Write the petition to survive a § 314(a) discretionary-denial fight. Flexiworld litigates discretionary denial hard — it sought denial in IPR2022-00775 on both RPI/conflict and "Unified doesn't practice the patent" theories, and lost both. Expect the same brief. Also expect a § 325(d) argument given the extensive prosecution history of this family.

5. No statutory deadlines are running, because no proceeding exists. There is no institution deadline, no oral hearing date, and no FWD due date to track. If you file, the clock you must watch is the § 315(b) one-year bar from service of a complaint alleging infringement of the '178 — that is the binding constraint, and with live cases in E.D. Tex., D. Del.-adjacent dockets, and a 2026 TCL action (E.D. Tex. 2:2026cv00229, Judge Gilstrap), it is date-sensitive. Confirm service dates from PACER before relying on the secondary-source docket summaries cited here.

6. Cross-check everything against primary sources. The absence-of-proceedings finding rests on the ODP structured block plus secondary corroboration; I did not reach PTAB E2E directly. Before filing, run Patent No. 10,037,178 through PTAB E2E and confirm zero results, and separately confirm that no terminated-before-institution proceeding (which sometimes is not surfaced by ODP) exists.

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Corrections / flags against the prior sections

• No contradiction with the prior sections. The earlier bibliographic and prosecution work states no PTAB activity was found; that is confirmed here. The earlier note that the '178 carries a Certificate of Correction matters for any IPR petition — you must challenge the corrected claim text. Verify the certificate-corrected language at USPTO PatentCenter before finalizing claim charts.
• The earlier sections flag the two overlapping priority chains (Nov. 1, 2000 provisional 60/245,101 via 10/016,223; and Jan. 19, 2001 provisional 60/262,764 via 10/053,765) and say the calculus is unverified. The PTAB record now supplies hard evidence bearing on that: in IPR2022-00775 the Board credited a 2000-10-22 conception date with diligence, which is consistent with the Nov. 1, 2000 chain governing. That strengthens — but does not conclusively establish — the earlier inference that the operative priority runs to Nov. 1, 2000 / Nov. 1, 2001.
• The earlier sections note the odd combination of "Expired – Fee Related" with active assertion and a 2026 litigation campaign. I cannot resolve that anomaly and it is not a PTAB question, but it is worth independent verification: an expired patent cannot support a § 285 damages theory for post-expiration conduct, and it bears on the value of petitioning at all. Flagging, not explaining.

I'll research the assignment/ownership record for US 10,037,178. Let me run several targeted searches.

Key lead: a reel/frame reference surfaced. Let me verify it and pull more.

Assignment / Ownership Reconstruction — US 10,037,178 B2

Scope note up front: I could not query the USPTO Assignment Center directly from this session. The reel/frame and conveyance data below comes from (a) Google Patents' "Legal Events / Assignments" rendering of USPTO assignment data, (b) Flexiworld's own infringement pleadings as summarized in a third‑party complaint analysis, and (c) secondary litigation databases. Records do exist for this patent — so I am not stopping after the timeline section — but the single most important field you asked for (the correspondent of record) could not be retrieved, and I say so explicitly rather than guessing. Verify everything below at https://assignmentcenter.uspto.gov/ (legacy: https://assignment.uspto.gov/patent/index.html) and https://patents.google.com/patent/US10037178/en.

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Inventors

• The inventors are the assignee's own principals, not third‑party employees. The inventor→company assignment step therefore carries no third‑party information: there is no "employee inventors assign to an employer that later sold the portfolio" pattern here.
• No inventor-departure pattern is detectable. The only inventor→assignee conveyance is dated effective 2001‑11‑01, i.e. it predates the 2016 continuation filing by ~15 years and predates issuance by ~17 years. I found no evidence of either inventor executing a separate post‑2016 assignment, quitclaim, or departure-related transfer, and no evidence of a "fire‑sale" in which inventors' rights were pooled and sold.
• One governance-adjacent nuance worth recording: Christina Ying Liu and William Ho Chang are also the named assignors on essentially every patent in this family (e.g., the '596 assignment at Reel/Frame 039816/0200; the '402 assignment at Reel/Frame 028733/0064, per Flexiworld's pleadings). Whatever the entity on the receiving end, the same two humans sit at the root of the chain across the whole Flexiworld portfolio.

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Original assignee

• Entity on the issued patent: Flexiworld Technologies, Inc. (Vancouver / Camas, Washington area — the record shows "FLEXIWORLD TECHNOLOGIES, INC., WASHINGTON" on the assignment free‑format text).
• Primary line of business: Flexiworld was a wireless‑output software venture — the '178 specification describes a "universal output" architecture in which a client application rasterizes content and an "output controller" in the printer/TV/speaker completes RIP (halftoning, color conversion), plus output‑device profiles and a discovery process. That is Flexiworld's own claimed product concept.
• Did they ship a product embodying the claims? Unclear / not established. I could not verify in this session that any commercial Flexiworld product shipped. What is verified is that the company has, since at least 2020, behaved as a licensing/enforcement vehicle (see "Known asserter," below).
• Current status: Not dissolved and not bankrupt on the evidence I retrieved. Flexiworld is pleaded as the current owner and assignee of all right, title and interest in these patents in pleadings as recent as the 2025 LG action, and the '178's Google Patents legal events show it as Current Assignee. However, the '178 itself is recorded as "Expired – Fee Related" (anticipated expiration 2021‑11‑01, per the earlier-generated sections) — a status that coexists oddly with continued assertion and should be re-checked.
• Adjacent-entity observation (not about the '178): siblings in the same priority family are registered to affiliated-looking entities — e.g., US 10,261,739 to "Flexijet Technologies, Inc." / "Pebble Tide LLC"; US 11,169,756 to "Flexijet Technologies, Inc."; and US 9,383,956 lists Mattel, Inc. as a co‑assignee. That shows this family has been fragmented and partly licensed out over time — but on the record I hold, the '178 was never moved.

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Assignment timeline

Only one recorded conveyance is visible for the '178 on the entire title abstract:

• 2001‑11‑01 (effective date) / recorded 2017‑05‑15 — Reel 042385 / Frame 0202 (see conflict note)
  • Conveyance: Assignment of assignors' interest ("ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
  • Assignor: CHANG, WILLIAM HO; LIU, CHRISTINA YING (individually)
  • Assignee: FLEXIWORLD TECHNOLOGIES, INC. (Washington)
  • Correspondent: NOT RETRIEVED. I could not obtain the correspondent name/firm/address recorded on this reel‑frame. I will not substitute the prosecution firm of record (Kolisch Hartwell, P.C., per uspto.report) or Flexiworld's litigation counsel (Nelson Bumgardner Conroy PC — Charles A. Ginnings, Peter J. Glennon, Timothy E. Grochockinski) for the actual recorded correspondent; those are different roles and substituting one for the other would be fabrication.
  • Context: founder-to-company confirmatory assignment — the inventors' original 2001 assignment re‑recorded against the 2016 continuation so the paper title matches the grant. Not an acquisition, not a fire‑sale, not a securitization, not a transfer to an asserter.

No other record found. I found no security agreement, lien, release, merger, change of name, license recordation, or second assignment for the '178 in any source consulted. That is the expected shape: the original assignee still owns the patent.

⚠️ Conflict to flag (do not silently resolve)

Reel/frame attribution in the record is inconsistent:

Two readings are possible: (i) the '178 and '072 applications were assigned under one recorded document (they were filed in the same 2016 continuation wave, and a single assignment can cover multiple properties — which would make the duplicated reel/frame correct, not an error); or (ii) the AI‑generated complaint summary duplicated a reel/frame. I cannot adjudicate this, and it also sits in tension with Google Patents listing the recording date as 2017‑05‑15 (reel 042385 is of a later vintage than 039816 on US patent reel numbering). Treat the reel/frame for the '178 as provisional until pulled from Assignment Center.

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Timeline diagram

timeline
    title Ownership of US 10037178
    2001 : Inventors assign rights to Flexiworld
    2016 : Continuation application filed
    2017 : Assignment recorded at the USPTO
    2018 : Patent issues to Flexiworld Technologies
    2020 : Flexiworld opens enforcement campaign
    2021 : This patent first asserted against Epson
    2025 : LG Electronics suit still asserting it

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NPE / troll-pattern signals

The headline finding is that the paper chain is clean. Despite the '178 being one of the most-sued patents in this family, there is no shell-entity layer at all — no assignment to an "IP Holdings/Licensing/Ventures" vehicle, no chained LLCs, no security agreements. The assertion behavior sits directly on the original operating assignee.

1. Shell-entity transfer — NOT PRESENT. No conveyance of the '178 to any licensing LLC exists on the record. The only assignee ever recorded is Flexiworld Technologies, Inc. itself (Reel 042385/0202, eff. 2001‑11‑01). Contrast the framing in your rubric: there is no "name that suggests a shell" to even test here for this patent. (Sibling patents show affiliated vehicles — "Pebble Tide LLC," "Flexijet Technologies, Inc." — but that is a portfolio-level observation, not a '178 chain entry, and I could not tie either entity to the '178.)

2. Known asserter in the chain — PRESENT (moderate support). Flexiworld Technologies, Inc. is the current and only assignee and has filed at least nine multi‑defendant infringement campaigns on this family (Roku 6:20‑cv‑00819; Epson 8:21‑cv‑00807; four Lexmark actions in E.D. Ky. 2022; Brother 2:22‑cv‑02250; Hisense 2:22‑cv‑00225; Xerox 6:23‑cv‑06372; Sony 2:23‑cv‑00616; LG 2:25‑cv‑00960). The '178 is also indexed in the Stanford NPE Litigation Database at https://npe.law.stanford.edu/patent/[10037178](/patent/10037178) (cited in the previously-generated litigation section). Caveat: I did not find Flexiworld on the specific enumerated entity lists (Acacia, Marathon, Intellectual Ventures, IPNav, Wi‑LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). The match is behavioral/database-based, not name-based.

3. Repeat correspondent across the chain — UNCLEAR / NOT ASSESSABLE. This signal cannot be scored: there is only one link in the chain, and I could not retrieve the correspondent of record for Reel 042385/0202 (or, if applicable, 039816/0200). I therefore cannot test the "same lawyer, rotating LLCs" hypothesis at all for this patent. Note for your file, however, that the litigation side shows a stable repeat player — Nelson Bumgardner Conroy PC / Charles A. Ginnings — across Flexiworld's suits. That is a counsel-recurrence observation, not an assignment-correspondent finding, and I am flagging it as a lead for your next pull, not as evidence.

4. Cascading transfers — NOT PRESENT. One recorded transfer in 25 years. No consecutive assignments through chained entities in any <24‑month window because there is no second assignment.

5. Pre-litigation transfer — NOT PRESENT. The assignment's effective date is 2001‑11‑01, ~20 years before the first suit naming the '178 (Epson, 2021‑04‑29). Even taking the 2017 recording date, it is ~4 years pre‑suit, not 6 months. The chain was not arranged to enable assertion.

6. Bankruptcy fire-sale — NOT PRESENT on the evidence. No Chapter 7/11 proceeding or § 363 sale involving Flexiworld surfaced, and Flexiworld is still pleading ownership through 2025. I could not search bankruptcy dockets directly, so treat this as "no evidence found," not a positive negative.

7. Privateering — NOT PRESENT. Privateering requires an operating company transferring to an NPE that asserts on its behalf. Here the asserting entity is the original owner and never transferred the patent. If anything, the pattern is the mirror image: the original owner retained the asset and asserts it directly.

8. Defensive aggregator — NOT PRESENT. No RPX, AST, LOT, Unified Patents, or OIN involvement in the chain. The patent has not been neutralized.

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Verdict

NPE — moderate confidence.

The chain-of-title evidence points the opposite way from a classic troll structure: a single founder-to-company assignment of the '178 effective 2001‑11‑01, recorded as Reel 042385/0202, with the original assignee Flexiworld Technologies, Inc. still pleaded as owner in 2025 — no shell LLC, no cascading transfers, no security interest, no pre-suit flip. The NPE characterization rests on one strong signal — the owner's conduct: Flexiworld is a non‑practicing licensor with nine-plus multi‑defendant campaigns on this family, is listed in the Stanford NPE Litigation Database for this patent, and I could substantiate no product shipping under the '178 claims. Because the only other two signals that could elevate this (a shell-entity layer, or a recurring assignment correspondent) are respectively absent and unverifiable from what I could retrieve, I am not calling it high confidence.

Next pulls to close the gaps, in priority order:

1. Assignment Center, search by Patent Number 10037178 → capture the Correspondent name/firm/address and confirm 042385/0202 vs 039816/0200; then search Reel 042385 through Reel 042386 for later frames to see whether a second property on that document is the '072 (resolving the conflict above).
2. Where reel 042385 appears, also check Flexijet Technologies, Inc. / Pebble Tide LLC recordings on sibling patents — same correspondent = portfolio-level repeat-player signal.
3. PACER: status of E.D. Tex. 2:25‑cv‑00960 (LG) — the only matter still asserting the '178, and the only one where an "Expired – Fee Related" patent is being enforced forward.

Verification links: https://assignmentcenter.uspto.gov/ · https://assignment.uspto.gov/patent/index.html · https://patents.google.com/patent/US10037178/en

I'll research the prior-art citations for US 10,037,178 B2, focusing on the patent's own citation record.

Let me pull the actual citation record, including the examiner-cited references.

The prior-art citation list isn't surfacing yet. Let me try dedicated patent databases.

I hit the tool-call limit before I could retrieve the enumerated citation table, and I will not invent one. Here is my honest, structured deliverable.

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⚠️ Scope note — read this first (important)

I was unable to retrieve the actual "References Cited" / "Patent Citations" list from the front page of US 10,037,178 B2. I will not fabricate entries.

Two reasons, both verifiable from the material I was given:

1. The authoritative full text supplied to me is truncated. It ends mid-sentence in the description: "…the output device 230 or system 250 may include a display de". It contains the abstract-adjacent "Definitions" block and the specification preamble, but not the Claims section and not the front-page citation tables. The "Prior art keywords" and "Prior art date" fields visible in it are Google Patents' derived metadata, not USPTO front-page data.
2. Google Patents renders its "Patent Citations" and "Cited By" tables dynamically; my searches returned only forward citation tables (i.e., other patents citing the '178 patent — e.g., US 6,076,109, US 6,473,800 B1, US 2001/0032254 A1), never the '178 patent's own backward citation list.

Consequence: I cannot, in good conscience, give you "full citation, date, description, and anticipated claim(s)" for each cited reference, because I do not have the reference list. Per my operating rules, I am stating that explicitly rather than generating plausible-looking citations that would be wrong and unusable in a validity analysis.

What I can give you with confidence is below: the verified prior-art metadata from the record, the element-by-element § 102 anticipation map you need in order to evaluate any reference, the candidate-art landscape, and the exact source to pull the authoritative list from.

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1. What the record does establish about the '178 patent's prior art

From the authoritative text provided:

Examiner's field of search (from the granted classifications) — these tell you what art the examiner actually looked at, and they map almost one-to-one onto the claim limitations:

• G06F3/1226 — Discovery of devices having required properties (print-system discovery)
• G06F3/1292 — Mobile client, e.g. wireless printing
• G06F3/1236 — Connection management
• H04W8/005 — Discovery of network devices, e.g. terminals
• H04W76/14 — Connection setup → Direct-mode setup
• H04W4/80 — Short-range communication: NFC, RFID, or low energy communication
• H04W12/06 / H04W12/08 — Authentication / Access security
• G06F3/162, G06F3/167, G10L15/22, G10L15/30 — audio output interface, voice commands, distributed speech recognition
• H04N1/00307, H04N1/00403, H04N1/00488 — mobile-phone image apparatus, voice input, audible output
• G06F3/1244–G06F3/1247 — job translation / conversion to printer-ready format (the RIP-sharing disclosure)

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2. The § 102 anticipation map — what any cited reference must disclose

Because all three independent claims recite essentially the same ordered sequence, a single reference only anticipates if it discloses every element below in the claimed order. This is the test to run against each reference once you have the list.

The two limitations that do the most validity work — and therefore define where the relevant art lives — are:

• Ordering of the security step ("link established based at least in part on having implemented [security]"), which pre-AIA art frequently discloses in the opposite order (pair → then authenticate); and
• Audio/video content played at the output device, which distinguishes the claims from the vast printer-discovery art (e.g., from the G06F3/1226 cluster).

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3. The priority-date fork — the single biggest § 102 issue, and it is unresolved

This is the point that decides which universe of art is even available, and the record is internally inconsistent (flagged in the earlier section and not resolvable from what I retrieved):

• If the effective filing date is 2000-11-01 / 2001-11-01 → § 102(a)/(b)/(e) art must predate late 1999–2000. Only true 1990s art (e.g., the Bluetooth 1.0 specification of July 1999, IEEE 802.11-1997 / 802.11b-1999, IrDA, and pre-2000 service-discovery work) can qualify.
• If the chain breaks at the 2016-11-10 filing (a real risk given the bifurcated "continuation of 10/053,765 and CIP of 13/710,299" parentage documented on uspto.report, and the intervening post-2012 drafting) → the entire 2001–2016 corpus opens up, including Flexiworld's own family publications.

The most legally dangerous art for this patent is the applicant's own family output. Flexiworld's own pre-2016 publications (e.g., the pervasive-output publications with 2000-11-20 and 2001-01-19 priority, and the '871/'798/'056 line) are the closest disclosures to these claims. Under pre-AIA § 102(e)/(b) they are excluded only so long as the priority claim holds; they are not disqualified merely by being the applicant's own documents if the inventive entity or chain differs. Whoever is testing validity should attack the priority chain first — that is the leverage point, not the citation table.

Also note the AIA/pre-AIA question: the application was filed 2016-11-10, after the AIA's 2013-03-16 cutoff, so AIA §§ 102/103 govern unless every claim has an effective filing date before that date. The mixed continuation/CIP parentage makes this genuinely indeterminate on the face of the record. I flag this as unverified.

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4. References I did encounter in the public Flexiworld record — and their actual status

I am listing these because they are real and citable, with an explicit label of what role each actually plays. None of the following is confirmed as a citation on the '178 patent's front page.

Named candidate art an invalidity searcher should test against the claims (documents I can name with confidence as pre-2000, clearly labeled as candidates — I have no evidence they are on the '178 face):

• Bluetooth Specification v1.0 (July 1999) and its later revisions — discloses inquiry/paging discovery, device discovery, and its own pairing/authentication (PIN, link key) sequence, i.e., the ordering limitation. Test against claims 1, 7, 13.
• IEEE 802.11-1997 / 802.11b-1999 — SSID-based discovery, association, and WEP authentication. Test against the "at least partly compatible with IEEE 802.11" limitation.
• RFC 2608, Service Location Protocol v2 (June 1999) — service/device discovery with attributes, and service-specific authentication. Test against the discovery + attribute-transmission elements.
• Bluetooth profiles (Headset/Handsfree profiles, adopted 1999–2001) — most directly on point for the audio output device + wireless discovery + authentication + audio content combination of claims 3/12/17 and 4/11/18.

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5. How to get the authoritative citation list (and close the gap I left)

The claims and citation tables must be pulled from primary sources, especially given the recorded Certificate of Correction:

1. USPTO PatentCenter / Public PAIR → application 15/348,006 → "References Cited" (examiner-cited list, Form PTO-892) and the Image File Wrapper (IDS submissions, PTO-1449, and the Certificate of Correction). This is the only authoritative source.
2. The printed grant PDF at patentimages.storage.googleapis.com for US 10,037,178 B2 — front page, columns "U.S. Patent Documents," "Foreign Patent Documents," "Other Publications."
3. Google Patents → https://patents.google.com/patent/US10037178B2 → the Patent Citations / Cited By tables (load dynamically; save the rendered DOM).
4. Espacenet / INPADOC and FreePatentsOnline for a cross-check of the cited-document set.

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6. Confidence statement

• High confidence: the prior-art date and keywords, the classification-based field of search, the element-by-element claim structure and anticipation map, the existence of the Certificate of Correction, the case identities in the litigation record, and the family-member relationships.
• Explicitly NOT established: the identity of any reference cited on the face of US 10,037,178 B2. I did not obtain that list and have not asserted any reference as a citation.
• Unresolved: the effective filing date / priority chain, and therefore whether pre-AIA or AIA § 102 governs and which art is even prior art. Do not rely on either the 2000-11-01 or the 2016-11-10 date without resolving the chain against the Image File Wrapper.

If you can supply the front-page "References Cited" table (or the PTO-892 / IDS from app. 15/348,006), I will run the full per-reference analysis — citation, date, disclosure summary, and the specific claims each reference anticipates under § 102(a)/(b)/(e) or § 102(a)(1)/(a)(2) — immediately.

I'll first try to recover the "Prior Art" / "References Cited" section that the task refers to, since the patent text I was given was truncated before the claims and citations. I'll search for the front-page citations and any post-grant validity challenges.

I have the family's IPR history but need the actual "Prior Art" list associated with this patent. Let me dig for the front-page references and any IPR/validity challenge specifically against the '178 patent.

Scope note before the analysis (important)

Your instruction was to use "the results from the Prior Art section of this page." I have to flag a data problem rather than paper over it:

• The authoritative full text supplied to me for US 10,037,178 B2 is truncated mid-sentence in the FIG. 7D/7E discussion and stops before the claims and before the front-page "References Cited" block. So the patent's own prior-art list was not in my inputs.
• My searches retrieved only a partial numeric listing of the face-of-patent U.S. references — a run of patents from 5,277,773 (Dec. 1993) through at least 5,80x,xxx (1998) on the uspto.report rendering of the grant (uspto.report/patent/grant/10,037,178). Titles/teachings for those were not returned.
• Google Patents' "Prior art keywords" for this patent are only examiner search concepts — output device, output, wireless, controller, wireless communication — not references.

So I am building the § 103 analysis from (a) the claims as summarized in the earlier sections of this analysis, (b) the admissions in the specification I do have, and (c) the prior art that Flexiworld's own family litigated in PTAB, which I did retrieve and can cite by exhibit number. I mark clearly below which reference teachings are verified versus inferred. I have not invented reference content.

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1. Legal framework that governs this patent

These are not side issues — they largely decide the outcome:

1. Pre-AIA § 103(a) applies. The '257 sibling in the same family was expressly held by the PTAB to be governed by pre-AIA § 103(a) because its effective priority predates the March 16, 2013 AIA transition. (Unified Patents, LLC v. Flexiworld Techs., Inc., IPR2022-00775, Paper 41 (Nov. 1, 2023), summarized at PTAB Litigation Blog.)
2. Pre-AIA § 102(e) art can be sworn behind. A § 1.131 affidavit can remove references whose only prior-art date is their U.S. filing date. That is exactly what Flexiworld did, successfully, in IPR2022-00775.
3. § 102(b) statutory bars cannot be sworn behind. Art publicly available more than one year before the effective U.S. filing date is a bar regardless of the inventor's earlier conception. This is why the Bluetooth specification ground below is the most dangerous to the patent and the § 102(e) grounds are the weakest.
4. The priority chain is unresolved (the earlier section flagged overlapping 2000-11-01 / 2001-01-19 / 2001-11-01 / 2002-01-18 chains). The critical date for § 102(b) shifts with that determination, and a CIP parent (13/710,299) raises the possibility of an AIA-classified claim. Treat the critical-date arithmetic as unverified.
5. A Certificate of Correction is noted on this grant, so the claim text I am analyzing is a third-party rendering. Any ground below should be re-checked against the corrected official claim set.

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2. Claim element map used below

The three independents are the same five-to-six-step sequence from the output-device side. That concentration matters for § 103: a single reference combination that discloses discovery → device-identity exchange → authentication → 802.11/Bluetooth link → receipt of output data defeats all three at once.

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3. Grounds of obviousness

Ground A (strongest): Bluetooth Core Specification v1.0 (July 1999) in view of IEEE 802.11-1999, and optionally a discovery/service-advertisement reference

What the Bluetooth 1.0 specification discloses (high confidence in the substance; the specific document was also put into the record of a sibling IPR — Exhibit 2037, "Bluetooth 1.0 (Core)", in IPR2022-00775):

Why a POSITA would combine (KSR, 550 U.S. 398 (2007)):

• The specification of the '178 patent itself admits that the information-apparatus-to-output-device link was conventionally wireless: "a wireless connection is also possible by using, for example, radio communication or infrared communication," and the description of the communication interface states it is "a short-range radio interface including those implemented according to the Bluetooth or IEEE 802.11 standard." That is an admission that Bluetooth/802.11 links between an information apparatus and an output device were known.
• The Bluetooth specification is not merely an optional reference — it is a mandatory interoperability standard. One of skill implementing a wireless audio output device in 1999–2000 had no design freedom: discovery, device-address exchange, PIN authentication and link key establishment are what the standard requires. KSR: "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results," and where market demand or design need dictates the arrangement.
• Each element performs its known function and produces no unexpected result: the discovery step discovers; the authentication step secures; the link carries content. In re Keller / In re Merck combination logic applies directly.

§ 102(b) / antedating exposure: If the Bluetooth 1.0 specification (July 1999) is a printed publication more than one year before whatever effective filing date the claims get (anywhere from 2001-01-19 to 2002-01-18), it is a statutory bar and cannot be sworn behind. This is the single most serious validity exposure, and it is grounded in the patent's own specification admissions.

Weakness of Ground A alone: the specification's audio/headset-profile implementations matured after 1.0 (A2DP arrived in 2003), and Bluetooth 1.0 does not literally describe a device that outputs digital content — that requires either a secondary reference to an audio playback/output device or reliance on common knowledge (MPEP 2144.03). This is why the strongest formulation is Ground A plus an output-device/discovery reference from Ground B or C.

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Ground B: Olgaard + Moghadam, and Acharya + Griffiths (the IPR2022-00775 set), re-aimed at the '178 claims

Verified from the exhibit list of IPR2022-00775 (Unified Patents, LLC v. Flexiworld Technologies, Inc.) (Patexia docket):

• Ex. 1005 — U.S. Patent No. 7,849,198 (Olgaard) — § 102(e) date of October 24, 2000
• Ex. 1006 — U.S. Patent No. 5,917,542 (Moghadam)
• Ex. 1007 — U.S. Pub. No. 2002/0080091 (Acharya) — § 102(e) date of December 22, 2000
• Ex. 1008 — U.S. Patent No. 7,136,999 (Griffiths)
• Ex. 1013 — U.S. Patent No. 6,285,665 (Chuah)
• Ex. 1009 — U.S. Application 09/695,518
• Ex. 1010 — Welland et al., "The Newton Operating System," COMPCON '94 (1994)
• Ex. 1011 / 1012 — Microsoft Computer Dictionary (3d ed. 1997); Data & Telecommunications Dictionary (CRC 1999)
• Ex. 1021 — Shellhammer, "WPAN Applications," IEEE 802.11-98/295 (Sept. 1998)

The two asserted grounds were Olgaard in view of Moghadam and Acharya in view of Griffiths. The PTAB's framing (per the PTAB Litigation Blog summary and the petitioner's own brief): Olgaard concerns short-range wireless device discovery; Acharya concerns a mobile wireless apparatus discovering and using a nearby device/service. I did not retrieve the bodies of Olgaard, Acharya, Moghadam or Griffiths, so I state their teachings at the level of generality the IPR record supports and no further.

Proposed re-mapping to the '178 claims:

Motivation to combine: These are all in the same field (short-range wireless connectivity between a portable computing/communication apparatus and a nearby device), address the same problem (finding and securely using an unaffiliated nearby device), and the secondary references supply known, standard techniques for identity and authentication. That is a textbook KSR "familiar elements / predictable result" combination.

Critical caveat — this ground may be dead on the '178 patent:
The PTAB in IPR2022-00775 found no challenged claims unpatentable, because Flexiworld swore behind Olgaard and Acharya under § 1.131. Flexiworld produced provisional-application drafts with file metadata showing a last-modified date of October 22, 2000 — before Olgaard's Oct. 24, 2000 date and well before Acharya's Dec. 22, 2000 date — and the PTAB credited the inventor testimony and treated the operating-system metadata as sufficiently independent corroboration under the rule of reason (Fleming v. Escort, Inc., 774 F.3d 1371 (Fed. Cir. 2014)). It also assessed diligence to reduction to practice, evidence for which included the Nov. 1, 2000 provisional (Ex. 2016) and the Nov. 20, 2000 letter (Ex. 2022).

Because the '178 claims descend from the same disclosure, the same swearing-behind evidence is available to Flexiworld here. A challenger asserting Olgaard/Acharya against the '178 claims must expect a § 1.131 challenge and must be prepared to show the '178 claims recite subject matter not conceived by Oct. 22, 2000 — which is difficult, since the '178 claims are narrower than, not broader than, the family's original disclosure.

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Ground C: Saulpaugh (alone and with Castell); Beck in view of Putzolu and Larsson; Yukie in view of Boyce and Gunter

Verified from IPR2022-01112 (Roku, Inc. v. Flexiworld Technologies, Inc.) and IPR2022-01114 (Roku, Inc. v. Flexiworld Technologies, Inc.):

• Saulpaugh renders obvious claims 1–20 (Ground 1a); Saulpaugh + Castell (Ground 1b) — petition at ptacts.uspto.gov
• Beck (claims 8–11, 14–15); Beck + Putzolu (claims 1–4, 6–7, 12, 16–20); Beck + Putzolu + Larsson (claims 5, 13) — same petition
• Yukie in combination with Boyce and Gunter (claims 1 and 37–49 of the '233 patent) — Olivier Declaration, Docket Alarm

The Roku petition's own characterization is directly relevant to the '178 claims: the asserted family patents "describe known device discovery mechanisms that enable remote service calls, e.g., a cell phone detecting and using a remote printer," concepts that "were well-known."

Motivation to combine: Saulpaugh is asserted as teaching service discovery followed by a remote service call to a discovered device — which is the discovery→identity→service-request→data-transfer chain of claim 13. Castell/Putzolu/Larsson are secondary references supplying conventional implementation details (naming, authentication, session control). Because the primary reference already teaches the entire ordered flow, the secondary references need only supply the recited alternatives (a security parameter; a wireless link technology), and MPEP 2144.03 permits reliance on common technical knowledge for such details.

Caveats: I could not retrieve the outcomes of IPR2022-01112 or IPR2022-01114, and I could not verify the disclosure content of Saulpaugh, Castell, Beck, Putzolu, Larsson, Yukie, Boyce, or Gunter. Their dates also matter: if any is a § 102(e)-only reference dated after Oct. 22, 2000, the same swearing-behind defense applies. Treat Ground C as promising but unverified.

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Ground D: The Lexmark IPR2023-00845 reference set (as a template, not a ground)

IPR2023-00845 (Lexmark Int'l, Inc. v. Flexiworld Techs., Inc.) challenged U.S. Patent No. 7,609,402 — a sibling of the '178 patent's parent (application 10/053,651, filed in the same Jan. 2002 window as the '178's parent 10/053,765) — with this exhibit set (ipverse.greyb):

• Ex. 1004 — US 2002/0083121 A1
• Ex. 1005 — US 7,941,541 (Chang) — Flexiworld's own earlier patent
• Ex. 1006 — US 7,355,732 B2
• Ex. 1007 — US 6,950,645 B1
• Ex. 1008 — US 6,952,831 B1
• Ex. 1009 — US 2002/0078160 A1
• Ex. 1015 — US 6,469,805 B1
• Ex. 1016 — WO 1997/39553 (Davis)
• Ex. 1002/1012 — prosecution history of application 10/053,765 (the '178's parent) and the 651 application

Institution was DENIED on November 17, 2023. I do not know from my sources whether the denial was discretionary (§ 325(d), § 314(a)) or on the merits. Two things follow:

1. The 10/053,765 prosecution history was already before the Office in a sibling IPR, which gives a challenger a § 325(d) hurdle but also a roadmap of what the examiner did and did not find in the same specification.
2. The "Chang" reference is US 7,941,541 — Flexiworld's own ancestor patent, and the patent from which the '178's family claims an "external priority." A challenger can use Flexiworld's own earlier disclosure (not § 102(e)-swearable-behind as to the inventors' own work under § 102(e)? — it is, in the sense that one's own earlier patent can be § 102(e) art if it's a different inventive entity, but here the inventors are the same, so it is not § 102(e) art at all; it is only relevant for double-patenting/priority). This is the sharpest legal trap in the family: the primary obviousness attack is not prior art at all, it is Flexiworld's own priority chain. If any '178 claim is not supported by the 2000/2001 provisional disclosures, its effective date moves to 2002 (10/053,765) or 2012 (13/710,299 CIP), and then everything in Grounds A–C becomes § 102(b) art that cannot be sworn behind.

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Ground E: The face-of-patent references and general state of the art

From the partial list I retrieved (uspto.report), the family's front page cites a dense block of 1993–1998 U.S. patents, including e.g. 5,277,773 (Sklut), 5,287,194 (Lobiondo), 5,353,388 (Motoyama), 5,485,634 (Weiser), 5,519,641 (Beers), 5,546,079 (Wagner), 5,580,177 (Gase), 5,596,697 (Foster), 5,604,843 (Shaw), 5,619,257 (Reele), 5,625,757 (Kageyama), 5,636,211 (Newlin), 5,699,495 (Snipp), 5,717,742 (Hyde-Thomson), 5,754,655 (Hughes), 5,796,394 (Wicks), 5,802,314 (Tullis). I did not retrieve the disclosures of these references and will not characterize their teachings.

What can be said with confidence is that this face-of-patent block, combined with the specification's own admissions, establishes the background against which Ground A must be judged: raster image processing / output-device-driver substitution on one side, and short-range wireless connectivity on the other. The '178 claims sit at the intersection, and the patent's own background section concedes both sides separately.

Non-patent art that a POSITA is chargeable with knowing, and that supplies the "common knowledge" predicate for MPEP 2144.03: Bluetooth Core Spec. v1.0 (July 1999), IEEE 802.11-1999, IrDA, Service Location Protocol (RFC 2608, June 1999), Jini (1998–99), and UPnP (1999–2000) — all directed to exactly the recitation "wireless device discovery … attribute/identification information … establishing a wireless connection." The Roku/Unified petitions already treated the general device-discovery concept as notorious.

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4. Dependent claims — the strongest § 103 positions

Claims 3/12/17 deserve emphasis: if the Bluetooth specification is § 102(b) art, these claims are the closest thing to a formal § 102 anticipation in the set, because they explicitly claim a Bluetooth audio output device receiving audio from a smart phone — the canonical Bluetooth headset use case.

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5. Where the obviousness case is likely to fail (and why you must not overstate it)

1. Swearing behind (§ 1.131). The PTAB already credited Flexiworld's Oct. 22, 2000 conception corroborated by file metadata, and found Olgaard (Oct. 24, 2000) and Acharya (Dec. 22, 2000) did not antedate the invention. Any ground built on 2000-dated § 102(e) references (Olgaard, Acharya, and probably Saulpaugh/Beck if their dates fall after Oct. 22, 2000) is exposed to the same attack. This is the dispositive fact in the family's litigation history so far.
2. § 102(b) is the challenger's only safe harbor. Only art published before the critical date — which, if the claims trace to a 2001-01-19/2001-11-01 filing, means art published before roughly Jan. 19, 2000 / Nov. 1, 2000 — is unswearable. The Bluetooth 1.0 spec (July 1999) and IEEE 802.11-1999 fall in this window. That is why Ground A is the only ground that does not depend on winning an antedating fight.
3. Claim 13's user-operable-interface limitation. The requirement of a user indication related to a wireless device discovery operation before discovery occurs is a genuine narrowing hook. Art in which discovery is automatic or background (much of the Ubiquitous-Computing and Jini/SLP art) does not literally disclose it. A challenger needs either a reference teaching a discoverability button/UI or a KSR "obvious user convenience" argument.
4. Ordering. Claim 1 requires ID transmission before the security procedure, and the security procedure to be performed at the output device. References that authenticate first, or that centralize authentication in the client or a server, need explicit motivation to reorder; do not assume this limitation away.
5. Pre-AIA vs. AIA. If the CIP lineage (13/710,299) put any '178 claim outside pre-AIA priority, AIA § 102(a)(1)/(a)(2) applies and there is no swearing behind at all — which would flip the whole analysis in the challenger's favor. I flag this as a live issue; the earlier section's unresolved dual priority chain (2000-10-31 vs. 2000-11-01 vs. 2001-01-19 vs. 2002-01-18) is precisely the fault line.
6. Secondary considerations. Flexiworld has documented conception/reduction-to-practice activity from 2000 and a long licensing campaign; whether that rises to nexus-backed commercial success is unclear and, in my sources, unevidenced. Do not assert it either way.
7. PTAB track record on this family is mixed-to-favorable for Flexiworld: no claims held unpatentable in IPR2022-00775 (Nov. 1, 2023), and institution denied in IPR2023-00845 (Nov. 17, 2023). I could not confirm outcomes for IPR2022-01112 or IPR2022-01114.

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6. Bottom line

• The best § 103 theory is a Bluetooth Core Specification v1.0 (July 1999)–centered ground, with an output-device/discovery reference (and the patent's own specification admissions naming Bluetooth and 802.11 as the known wireless interface between an information apparatus and an output device) supplying the "digital content for output/playing" element. That ground is built on § 102(b)-class art, which cannot be sworn behind, and it maps almost element-for-element onto claims 3, 6, 12, 14, 17 and the core sequence of claims 1, 7 and 13.
• The secondary theory is Olgaard + Moghadam / Acharya + Griffiths, and Saulpaugh (+Castell) / Beck + Putzolu + Larsson / Yukie + Boyce + Gunter, depending on the reference dates — but these are § 102(e)-exposed and demonstrably swearing-behind-exposed, and the PTAB has already rejected that attack once on this family.
• All three independents stand or fall together on the ordered discovery → identity → authentication → 802.11/Bluetooth link → audio/video output data sequence.

7. What I could not verify — and what to check

1. The actual "References Cited" section of US 10,037,178 B2 — I did not receive it and my searches returned only a partial numeric list. If your source contains that section, the analysis above should be re-keyed to those specific references. This is the single largest limitation of this answer.
2. The disclosures (as opposed to the identities/exhibit numbers) of Olgaard, Moghadam, Acharya, Griffiths, Chuah, Saulpaugh, Castell, Beck, Putzolu, Larsson, Yukie, Boyce, Gunter, and the IPR2023-00845 exhibits. I only have the petitions' characterizations of some of them.
3. The outcomes of IPR2022-01112 and IPR2022-01114; and whether the IPR2023-00845 denial was discretionary or merits-based.
4. The exact claim text after the Certificate of Correction (official USPTO PatentCenter copy required).
5. The operative priority date and whether any '178 claim relies on 13/710,299 new matter (which would flip the patent to AIA § 102/§ 103 with no swearing behind). Sources conflict (2000-10-31, 2000-11-01, 2001-01-19, 2001-11-01, 2002-01-18), and the earlier sections of this analysis likewise could not reconcile them.
6. I found no CAFC appeal or IPR petition specifically against US 10,037,178 in my searches. That is an absence of evidence, not evidence of absence — do not read it as a validity endorsement.

Contradiction flag: the earlier "Patent summary" section records Google Patents' anticipated expiration as 2021-11-01 with status "Expired – Fee Related," while the "Litigation summary" section records an open 2025 action (E.D. Tex. 2:25-cv-00960) asserting claims 13–16 and 18 of the '178 patent. Both can be true (past damages only), but any § 103 analysis should be read with the patent's expired status in mind — invalidity is now largely a defensive/reputational question rather than a forward-looking injunction question.

Sources

• USPTO/Google Patents: https://patents.google.com/patent/US10037178/en
• Partial citation list: https://uspto.report/patent/grant/[10,037,178](/patent/10037178)
• IPR2022-00775 FWD analysis: https://www.ptablitigationblog.com/conception-and-reduction-to-practice-dates-matter/
• IPR2022-00775 exhibit list: https://services.patexia.com/lawsuits/Unified-Patents-LLC-v-Flexiworld-Technologies-Inc-id-[163026](/patent/163026)/documents/sort_by/created/sort_dir/asc
• IPR2022-01112 petition (Roku): https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1549802](/patent/1549802)/download-documents
• IPR2022-01114 Olivier declaration (Roku): https://www.docketalarm.com/cases/PTAB/IPR2022-01114/ROKU_Inc._v._Flexiworld_Technologies_Inc/docs/06-30-2022-Petitioner/Exhibit-1002-Ex_1002.pdf
• IPR2023-00845 (Lexmark; institution denied): https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2023-00845