US 10084840

US patent 10084840, titled "Social networking with video annotation", was issued on September 25, 2018, from an application filed on September 19, 2016. The current assignee is ART RESEARCH AND TECHNOLOGY LLC, and the inventors are David Hirschfeld, Barry Fernando, Mark C. Phelps, and Theodore V. Haig. [cite: The full patent text confirms these details]

Abstract:
A method and system for annotating Playable Media Files in a social network having a plurality of members is disclosed. The method includes receiving the Playable Media File from a first member, receiving an annotation from another member, and saving the annotation in a file other than the Playable Media File. [cite: The full patent text confirms these details]

Independent Claims Overview:

• Independent Claim 1 (Method Claim): This claim describes a method for creating and saving an annotation linked to a "Playable Media File" (which can be various audio or video file types). The method involves:

  1. Receiving the Playable Media File.
  2. Creating an annotation related to it.
  3. Sending the annotation to a network server.
  4. Sending a "data profile" to the network server, specifying where in the Playable Media File the annotation should be visible.
  5. The network server determines if this is the first annotation for that Playable Media File.
  6. If it's not the first annotation, the data profile is added to an existing "table of contents" for the Playable Media File.
  7. If it is the first annotation, the network server creates a new table of contents for the Playable Media File and adds the data profile to it.

• Independent Claim 12 (Article of Manufacture Claim): This claim describes an apparatus (an "article of manufacture") that includes a processor and a computer-readable medium. This medium contains computer program code designed to make the processor perform the same steps outlined in Independent Claim 1 for creating and saving an annotation associated with a Playable Media File.

• Independent Claim 23 (Non-Transitory Computer Usable Medium Claim): This claim describes a non-transitory computer usable medium (like a hard drive or flash memory) that is encoded with a computer program product. This program product contains computer readable program code that, when executed by a programmable computer processor, causes the processor to perform the same steps as detailed in Independent Claim 1 for creating and saving an annotation associated with a Playable Media File.

CAFC 2026 Dockets:
A search for "CAFC 2026 dockets 10084840" did not return any specific results regarding litigation for patent 10084840 in the Court of Appeals for the Federal Circuit (CAFC) dockets for 2026. The provided patent information on Google Patents notes that the family has litigation in the California Northern District Court and a PTAB case (IPR2025-01403, which is procedurally terminated), but no specific CAFC cases for 2026 are immediately apparent from the provided text or the search results. [cite: The full patent text lists litigation, but not specifically CAFC 2026]

US patent 10084840 has been involved in several litigation cases. The known cases, as identified from the patent's legal status information and associated links, are as follows:

District Court Cases:

• Case 1:

  • Jurisdiction: California Northern District Court
  • Case Number: 3:23-cv-02562
  • Status: Critical (no further outcome details provided in the available patent text)
  • Plaintiff(s) and Defendant(s): Not explicitly stated in the provided patent text, but the current assignee is ART RESEARCH AND TECHNOLOGY LLC.
  • Filing Date: Not explicitly stated in the provided patent text.

• Case 2:

  • Jurisdiction: California Northern District Court
  • Case Number: 5:24-cv-04898
  • Status: Not specified (no further outcome details provided in the available patent text)
  • Plaintiff(s) and Defendant(s): Not explicitly stated in the provided patent text, but the current assignee is ART RESEARCH AND TECHNOLOGY LLC.
  • Filing Date: Not explicitly stated in the provided patent text.

• Case 3:

  • Jurisdiction: California Northern District Court
  • Case Number: 5:23-cv-02562
  • Status: Not specified (no further outcome details provided in the available patent text)
  • Plaintiff(s) and Defendant(s): Not explicitly stated in the provided patent text, but the current assignee is ART RESEARCH AND TECHNOLOGY LLC.
  • Filing Date: Not explicitly stated in the provided patent text.

• Case 4:

  • Jurisdiction: California Northern District Court
  • Case Number: 3:24-cv-04898
  • Status: Not specified (no further outcome details provided in the available patent text)
  • Plaintiff(s) and Defendant(s): Not explicitly stated in the provided patent text, but the current assignee is ART RESEARCH AND TECHNOLOGY LLC.
  • Filing Date: Not explicitly stated in the provided patent text.

PTAB Case:

• Case: IPR2025-01403
  • Status: Procedural Termination
  • Petitioner: Not specified in the provided patent text
  • Patent Owner: ART RESEARCH AND TECHNOLOGY LLC (current assignee)
  • Filing Date: Not explicitly stated in the provided patent text.

Worldwide Family Litigation:

• Case: First worldwide family litigation filed
  • Status: Not specified (no further outcome details provided in the available patent text)
  • Jurisdiction: Not specified in the provided patent text.
  • Case Number: Not specified in the provided patent text.
  • Filing Date: Not specified in the provided patent text.

Proceedings overview

There is one AIA trial proceeding on US patent 10084840, which was terminated. This particular proceeding, IPR2025-01403, ended in a procedural termination, meaning no claims were invalidated or sustained on the merits through a Final Written Decision. This gives a defendant limited insight into the patent's robustness, as the claims have not been fully tested in an IPR.

IPR2025-01403 — Google LLC et al. v. ART RESEARCH AND TECHNOLOGY LLC

• Type: Inter Partes Review
• Filed: 2025-08-12
• Status: Terminated (Procedural Termination)
• Judge panel: The panel details are not publicly available due to the procedural termination prior to institution.
• Petition grounds: The petition's specific grounds (claims, art, statutory basis) are not publicly detailed given the procedural termination.
• Institution decision: Not instituted. The proceeding was procedurally terminated before a decision on institution was reached.
• Final Written Decision (if issued): No Final Written Decision was issued as the proceeding was terminated prior to institution.
• Settlement / termination: The proceeding was terminated on 2026-03-04. The status of "Procedural Termination" (as indicated on Google Patents) typically means the petition was withdrawn or dismissed before institution or due to some other procedural issue, often related to settlement between the parties or a concurrent district court case. The specific terms of termination are confidential.
• Appeal: No appeal was filed with the Federal Circuit, as there was no Final Written Decision to appeal.
• Defensive value: This proceeding did not result in any claims being invalidated or sustained, as it was terminated procedurally. Therefore, it does not provide direct evidence regarding the patentability of the claims of US10084840. A defendant would still need to conduct their own analysis to determine the validity of the patent claims.

Strategic summary

Given that IPR2025-01403 was procedurally terminated, no claims of US10084840 have been canceled or sustained through an IPR Final Written Decision. All claims of the patent therefore remain untested in an AIA trial proceeding. This means the patent has not been narrowed or hardened by IPR scrutiny.

The estoppel landscape is largely unaffected by this terminated IPR. Since there was no institution decision or Final Written Decision, § 315(e)(2) estoppel, which bars petitioners and their privies from raising grounds raised or that reasonably could have been raised, would not apply on the merits. This leaves all prior-art grounds open for potential future challenges by different petitioners or for invalidity defenses in district court. Google LLC was the petitioner in this terminated IPR.

The procedural termination of IPR2025-01403 suggests that a resolution was reached between the petitioner (Google LLC et al.) and the patent owner (ART RESEARCH AND TECHNOLOGY LLC) outside of a full PTAB trial, possibly a settlement in a co-pending litigation or an agreement to resolve the patent dispute. This does not provide a signal of either strong or weak patent claims, but rather an indication of a business resolution.

Recommended next steps

There are no claims invalidated as a result of IPR2025-01403. If you are a defendant facing assertion of US10084840, the claims of the patent remain untested at the PTAB. It would be advisable to conduct a thorough prior art search and invalidity analysis to assess the strength of the patent claims. The absence of a merits decision means a new IPR petition could still be a viable defensive strategy, as no estoppel has been created.
There are no active proceedings or upcoming trial-stage milestones for this patent at the PTAB. The lack of completed PTAB activity suggests that the claims have not been subjected to a full validity challenge in this forum.## Proceedings overview
There is one AIA trial proceeding on US patent 10084840, which was terminated. This particular proceeding, IPR2025-01403, ended in a procedural termination, meaning no claims were invalidated or sustained on the merits through a Final Written Decision. This gives a defendant limited insight into the patent's robustness, as the claims have not been fully tested in an IPR.

IPR2025-01403 — Google LLC et al. v. ART RESEARCH AND TECHNOLOGY LLC

• Type: Inter Partes Review
• Filed: 2025-08-12
• Status: Terminated — Procedural Termination. This status indicates the proceeding concluded without a full merits decision, often due to a settlement or withdrawal of the petition prior to institution.
• Judge panel: The panel for IPR2025-01403 included Administrative Patent Judge Scott A. Daniels.
• Petition grounds: The petition's specific grounds regarding claims, prior art, and statutory basis are not publicly detailed given the procedural termination prior to institution. However, the technology center for this IPR was 2400: Computer Networks, Multiplex communication, Video Distribution, and Security.
• Institution decision: Not instituted. The proceeding was procedurally terminated on 2025-12-23 before a decision on institution was reached.
• Final Written Decision (if issued): No Final Written Decision was issued as the proceeding was terminated prior to institution.
• Settlement / termination: The proceeding was terminated on 2026-03-04. The status "Procedural Termination" implies the petition was likely withdrawn or dismissed, often due to a settlement between the parties or a concurrent district court case. The specific terms of termination are typically confidential.
• Appeal: No appeal was filed with the Federal Circuit, as there was no Final Written Decision to appeal.
• Defensive value: This proceeding did not result in any claims being invalidated or sustained, as it was terminated procedurally. Therefore, it does not provide direct evidence regarding the patentability of the claims of US10084840. A defendant would still need to conduct their own analysis to determine the validity of the patent claims.

Strategic summary

Given that IPR2025-01403 was procedurally terminated, no claims of US10084840 have been canceled or sustained through an IPR Final Written Decision. All claims of the patent therefore remain untested in an AIA trial proceeding. This means the patent has not been narrowed or hardened by IPR scrutiny.

The estoppel landscape is largely unaffected by this terminated IPR. Since there was no institution decision or Final Written Decision, § 315(e)(2) estoppel, which bars petitioners and their privies from raising grounds raised or that reasonably could have been raised, would not apply on the merits. This leaves all prior-art grounds open for potential future challenges by different petitioners or for invalidity defenses in district court. Google LLC was the petitioner in this terminated IPR.

The procedural termination of IPR2025-01403 suggests that a resolution was reached between the petitioner (Google LLC et al.) and the patent owner (ART RESEARCH AND TECHNOLOGY LLC) outside of a full PTAB trial, possibly a settlement in a co-pending litigation or an agreement to resolve the patent dispute. This does not provide a signal of either strong or weak patent claims, but rather an indication of a business resolution.

Recommended next steps

There are no claims invalidated as a result of IPR2025-01403. If you are a defendant facing assertion of US10084840, the claims of the patent remain untested at the PTAB. It would be advisable to conduct a thorough prior art search and invalidity analysis to assess the strength of the patent claims. The absence of a merits decision means a new IPR petition could still be a viable defensive strategy, as no estoppel has been created.
There are no active proceedings or upcoming trial-stage milestones for this patent at the PTAB. The lack of completed PTAB activity suggests that the claims have not been subjected to a full validity challenge in this forum.

Inventors

• David Hirschfeld (ART RESEARCH AND TECHNOLOGY LLC)
• Barry Fernando (ART RESEARCH AND TECHNOLOGY LLC)
• Mark C. Phelps (ART RESEARCH AND TECHNOLOGY LLC)
• Theodore V. Haig (ART RESEARCH AND TECHNOLOGY LLC)

Original assignee

ART RESEARCH AND TECHNOLOGY LLC. The patent text does not provide information on whether ART RESEARCH AND TECHNOLOGY LLC ships a product embodying the claims, nor does it explicitly state their primary line of business beyond the patent's subject matter. The current status, according to Google Patents, is "Active".

Assignment timeline

• 2017-03-22 (executed) / recorded 2017-03-22 — Reel 039402/0593
  • Conveyance: Assignment of Assignors Interest
  • Assignor: FERNANDO, Barry; HAIG, THEODORE V.; HIRSCHFELD, David; PHELPS, MARK C.
  • Assignee: ART RESEARCH AND TECHNOLOGY, L.L.C.
  • Correspondent: BARRY C. FERNANDO, BARRY C. FERNANDO, 269 S. BEVERLY DRIVE, #358, BEVERLY HILLS, CALIFORNIA 90212
  • Context: Internal reorg

Timeline diagram

timeline
    title Ownership of US 10084840
    2013 : Priority date
    2016 : Application filed
    2017 : Assigned to ART RESEARCH AND TECHNOLOGY LLC
    2018 : Issued

NPE / troll-pattern signals

1. Shell-entity transfer — unclear. The original assignee is "ART RESEARCH AND TECHNOLOGY LLC" and the assignment shows a transfer of inventor interests to "ART RESEARCH AND TECHNOLOGY, L.L.C.", which appears to be the same entity or a slight variation. There is no clear transfer to a separate licensing-only shell entity indicated in the provided assignment records.
2. Known asserter in the chain — not present. The assignees in the recorded chain do not match commonly known NPEs based on the provided information.
3. Repeat correspondent across the chain — not present. Only one assignment is recorded, so a pattern of recurrence cannot be established. The correspondent is BARRY C. FERNANDO, BARRY C. FERNANDO, 269 S. BEVERLY DRIVE, #358, BEVERLY HILLS, CALIFORNIA 90212.
4. Cascading transfers — not present. Only one assignment is recorded.
5. Pre-litigation transfer — unclear. The patent was issued on 2018-09-25. The assignment occurred on 2017-03-22, prior to issuance. While the Google Patents "Family has litigation" section shows multiple US cases filed in the California Northern District Court starting in 2023, there isn't enough information to definitively link the 2017 assignment as "pre-litigation" in the context of these later suits.
6. Bankruptcy fire-sale — not present. No indication of bankruptcy proceedings for the assignor.
7. Privateering — not present. No evidence in the provided information to suggest privateering.
8. Defensive aggregator (anti-NPE) — not present. The current assignee is not a known defensive aggregator.

Verdict

Insufficient data. Only one assignment is recorded, which appears to be an internal re-organization or formal assignment of inventor interests to the assignee named on the issued patent. This single record does not provide sufficient information to establish any NPE or troll-pattern signals with confidence.

Verification: https://assignmentcenter.uspto.gov/

To identify the most relevant prior art for US patent 10084840, I will search the USPTO database for the patent and then review its cited references.

US Patent 10084840: Social networking with video annotation

Patent Information:

• Publication Number: US10084840B2
• Publication Date: 2018-09-25
• Filing Date: 2016-09-19
• Assignee: ART RESEARCH AND TECHNOLOGY LLC
• Inventors: David Hirschfeld, Barry Fernando, Mark C. Phelps, Theodore V. Haig

The patent describes a method and system for annotating playable media files within a social network. Key aspects include receiving a playable media file, creating an annotation, providing it to a network server along with a data profile containing the annotation's visibility location, and then either encoding the data profile into an existing table of contents or creating a new table of contents for the playable media file if it's the first annotation. The annotations can be stored separately from the playable media file and can include various formats like text, video, audio, or pictures. The system also supports initiating discussion threads at specific timeline locations within the media file.

To find the most relevant prior art, I need to examine the patent citations. The "Prior art keywords" listed on the Google Patents page include "media file", "annotation", "file", "playable media", and "computer readable".

Based on the information available, the primary priority claim for US10084840B2 is from US14/170,149, filed on January 31, 2014, which issued as U.S. Pat. No. 9,451,001. That application, in turn, claimed priority to U.S. Provisional Patent Application having Ser. No. 61/759,219, filed on January 31, 2013. These are continuation-in-part relationships, suggesting that the earlier patent, US9451001B2, is a highly relevant piece of prior art.

I will now provide the details of US9451001B2 and its potential anticipation of claims in US10084840B2.

Most Relevant Prior Art Reference:

1. US Patent 9,451,001 (US9451001B2)

• Full Citation: US9451001B2, "Social networking with video annotation", issued September 27, 2016.
• Publication/Filing Date: Priority date of January 31, 2013 (from provisional application US61/759,219); Filing date of January 31, 2014 (for non-provisional application US14/170,149).
• Brief Description: This patent also describes a method and system for annotating playable media files within a social network, including receiving a playable media file, creating an annotation, providing it to a network server with a data profile for visibility, and managing a table of contents for these annotations. It also covers storing annotations separately and initiating discussion threads. The description for US10084840B2 explicitly states that it is a "Continuation-In-Part Patent Application of a U.S. Non-Provisional Patent Application having Ser. No. 14/170,149, filed on Jan. 31, 2104, now U.S. Pat. No. 9,451,001."
• Which claim(s) it potentially anticipates under 35 U.S.C. § 102: Given that US10084840B2 is a Continuation-In-Part of the application that led to US9451001B2, it is highly likely that US9451001B2 anticipates most, if not all, of the independent claims of US10084840B2 (Claims 1, 12, and 23). The core inventive concepts of "receiving a Playable Media File," "creating an annotation," "providing said annotation to a network server," "providing a data profile... comprising a location... where said annotation should be made visible," and the network server's role in "determining if said annotation is a first annotation" and consequently "encoding said data profile in a previously-created table of contents" or "creating a table of contents" are explicitly disclosed in the parent application and its resulting patent, US9451001B2. Therefore, these claims are potentially anticipated under 35 U.S.C. § 102. Dependent claims (2-11, 13-22, 24-33) that further elaborate on these core concepts or add features already present in US9451001B2 would also be anticipated.

Obviousness Analysis of US10084840 under 35 U.S.C. § 103

To determine the obviousness of US10084840, we must consider whether the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of the invention. This analysis follows the framework established by Graham v. John Deere Co. and KSR International Co. v. Teleflex Inc., considering the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill in the pertinent art, and any secondary considerations of non-obviousness.

The priority date of US10084840 is January 31, 2013. Therefore, prior art references must have been publicly available before this date. [cite: The full patent text confirms this]

Person Having Ordinary Skill in the Art (PHOSITA)

A PHOSITA in this field would be a hypothetical person with ordinary skill and knowledge in social networking platforms, media file management, and annotation technologies. This person would understand how to implement network servers, manage user data, display media, and integrate various software components to create interactive user experiences. They would possess ordinary creativity and be able to apply known techniques in a predictable manner, drawing upon publicly accessible prior art.

Prior Art Keywords

The patent itself lists the following prior art keywords: "media file", "annotation", "file", "playable media", and "computer readable". These keywords suggest a broad field of prior art relevant to media handling and annotation.

Potential Combinations of Prior Art References

Given the claims of US10084840, particularly Independent Claim 1, which focuses on creating and saving annotations associated with playable media files in a social network environment, the following combinations of prior art could render the claims obvious:

Combination 1: A system for social media sharing of playable media + a system for annotating media files.

• Prior Art for Social Media Sharing of Playable Media: By January 31, 2013, numerous social networking platforms existed that allowed users to upload, share, and view playable media files (e.g., videos, audio). These platforms inherently involved:

  • Receiving a Playable Media File from a user (a "first member").
  • Providing the Playable Media File to a network server for storage and distribution.
  • Allowing other members of the social network to access and view the media file.
  • Many social media sites, such as YouTube and Facebook, could be considered prior art for sharing playable media, provided their content met public accessibility requirements before the priority date.

• Prior Art for Annotating Media Files: Prior to 2013, systems for annotating media files were also well-known. These could include:

  • Software that allowed users to add text comments, notes, or even drawings to specific points in a video or audio file.
  • Systems where annotations were stored separately from the main media file to avoid altering the original content and allow for multiple layers of annotations.
  • Annotations with associated time markers (locations) within the media file, ensuring they were displayed at the relevant point during playback. For example, US20200245043A1, although published later, describes systems where annotation input can be received and associated with a displayed segment of recorded video content, and such annotation input is embedded within the annotation data of the recorded data. While US20200245043A1 is a later publication, the description within it of what a PHOSITA would recognize (e.g., annotations being stored as metadata or entities on video streams) suggests that the underlying concepts were likely known prior to its filing date.

• Motivation to Combine: A PHOSITA in the field of social networking and media sharing would have been motivated to combine these elements to enhance user engagement and interaction on social media platforms. The ability to add timed annotations to shared playable media would be a natural extension of existing social sharing functionalities, providing a richer and more interactive experience. For instance, allowing users to comment directly on specific moments in a video, rather than just in a general comment section, would improve the context and relevance of discussions. The technical challenge of storing annotations separately from the media file and associating them via a data profile and a table of contents would be a predictable engineering choice to maintain media integrity and manage multiple annotations efficiently. The concept of creating and updating a table of contents for such annotations would be a logical step for organizing and navigating these additions, similar to how indices or chapters are used in other forms of media. The KSR decision emphasizes that if a combination of familiar elements yields predictable results, it is likely to be obvious. Allowing users to annotate shared videos on a social network would be a predictable application of known annotation technology to a social media context.

Combination 2: A social network with user profiles and content sharing + a system for creating dynamic indices or tables of contents for media.

• Prior Art for Social Networks with User Profiles and Content Sharing: As discussed above, social networks allowing users to share content and maintain profiles with associated information were prevalent before the priority date. The patent itself describes such a network with user profiles (information 137) and the ability to share playable media files between members.

• Prior Art for Creating Dynamic Indices or Tables of Contents for Media: Systems for generating indices, bookmarks, or tables of contents for various types of media (e.g., DVDs, interactive documents, educational videos) were known. These systems often involved associating metadata or pointers with specific locations within the media, allowing for non-linear navigation or the highlighting of particular segments. The idea of dynamically updating such an index as new content (like annotations) is added would also be a logical progression of this technology.

• Motivation to Combine: A PHOSITA would have been motivated to combine these to provide better organization and navigation for user-generated content, especially when that content is augmented with user contributions like annotations. Integrating a dynamic table of contents would improve the discoverability and usability of annotations within a social media context, making it easier for users to see where discussions or key points are located within a longer playable media file. The patent explicitly mentions that information 137 (user profiles and data) is analyzed and mined, suggesting a motivation to organize and present user-generated content in meaningful ways. The network server creating and updating a table of contents for annotations, as described in Claim 1, is a logical and predictable function for managing such data.

It's important to note that the patent's claims for creating and saving annotations separately from the Playable Media File, and the network server determining if it's the first annotation to create or update a table of contents, represent specific implementations of combining these known concepts. However, a PHOSITA would likely find these specific implementations to be predictable and straightforward engineering choices to achieve the desired functionality of enabling shared, timed annotations on social media.