Invalidity dossier

US 10134060

Added 9/24/2026, 4:46:26 AM

At a glanceNo PTAB challengesNo litigation on fileSoftware Technology & Computing Systems (T)

Active provider: DeepSeek · deepseek-flash

Patent summary

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

✓ Generated

I'll search for authoritative information on this patent, including any 2026 CAFC docket activity.

Let me check for litigation and 2026 Federal Circuit docket activity, plus the current assignee status.

Let me search specifically for the '060 patent in litigation and any 2026 appellate activity.

CAUTION ON SCOPE AND METHOD

I searched for the literal identifier 10134060 / US 10,134,060 B2. Below I separate (a) the authoritative full patent text supplied to me (fetched from Google Patents on 2026‑09‑24), (b) what my searches returned, and (c) what I could not confirm. Two important caveats up front:

  • I found no Court of Appeals for the Federal Circuit (CAFC) 2026 docket entry naming US 10,134,060 specifically. The 2026 CAFC material my searches surfaced is unrelated (ParkerVision v. Qualcomm, Crocs/ITC). I cannot assert the '060 patent is on any 2026 CAFC docket, and I did not have a working route to the CAFC docket database in this session. Treat this as unverified, not as a finding of "no litigation."
  • The abstract does not match the issued claims. This is a real, checkable discrepancy in the patent itself, not a transcription artifact (see below).

1. Bibliographic summary

Field Value
Patent number US 10,134,060 B2 (literal string 10134060)
Title "System and method for delivering targeted advertisements and/or providing natural language processing based on advertisements"
Inventors Tom Freeman (Mercer Island, WA); Mike Kennewick (Bellevue, WA)
Application no. US 15/223,870
Filing date 2016‑07‑29
Publication date (B2) 2018‑11‑20
Pre‑grant publication US 2016/0335676 A1 (2016‑11‑17)
Priority date (claimed) 2007‑02‑06 (earliest ancestor: App. 11/671,526, which issued as US 7,818,176)
Current assignee (per Google Patents) VB Assets LLC; original assignee VB Assets LLC
Legal status (per Google Patents) Active, adjusted expiration 2027‑06‑02
Classification G06Q30/0269, G06Q30/0251, G06Q30/0242, G06Q30/0241, G10L15/18, G10L15/26, G06F40/263, etc.
Claims 12 (4 independent: 1, 6, 11, 12)

Continuation chain (from the patent's own CROSS‑REFERENCE section): 11/671,526 (filed 2007‑02‑06, issued US 7,818,176) → 12/847,564 → US 8,145,489 → 13/371,870 → US 8,527,274 → 14/016,757 → US 8,886,536 → 14/537,598 → US 9,269,097 → 14/836,606 → US 9,406,078 → 15/223,870 → US 10,134,060. There is also a child, 16/194,944 (filed 2018‑11‑19), which issued as US 11,080,758.

Assignee ambiguity worth flagging: Google Patents' assignment timeline shows a 2020‑01‑22 assignment to Nuance Communications, Inc. from "VB Assetts LLC," followed by a 2020‑09‑22 corrective assignment back to VB Assets, LLC (correcting the assignor/assignee names). Contemporaneous press reporting says the specific VoiceBox patents litigated against Amazon did not follow the rest of VoiceBox's portfolio to Nuance and went instead to a successor entity, VB Assets. I have not independently confirmed the current chain of title from the USPTO Assignment database; treat the assignee entry as "as listed," not as a legal conclusion.


2. Abstract (verbatim)

"The system and method described herein may use various natural language models to deliver targeted advertisements and/or provide natural language processing based on advertisements. In one implementation, an advertisement associated with a product or service may be provided for presentation to a user. A natural language utterance of the user may be received. The natural language utterance may be interpreted based on the advertisement and, responsive to the existence of a pronoun in the natural language utterance, a determination of whether the pronoun refers to one or more of the product or service or a provider of the product or service may be effectuated."

Note the mismatch: the abstract is about advertisement‑grounded anaphora/pronoun resolution, but none of the 12 issued claims recite pronoun resolution. The claims are directed to (i) cross‑application request servicing with advertisement selection and (ii) purchase‑opportunity selection for incomplete/unrecognized utterances. This looks like an abstract carried forward from an ancestor filing rather than re‑written to the issued claims. Anyone relying on the abstract alone would mischaracterize the patent's claim scope.


3. Plain‑language overview of each independent claim

Claim 1 — Method (cross‑application request + targeted ad).
Feed a natural language utterance into a speech recognizer; take the recognized words/phrases and feed them into a conversational language processor; get back an interpretation; determine a context from the recognized words/phrases. Then determine that the utterance contains a cross‑application request — i.e., at least a first request and a second request to be handled by two different context‑appropriate applications. Route the first request to a first application and the second to a second application. Select an advertisement based on the context and on either/both requests. Build a combined service output containing (i) the first application's output, (ii) the second application's output, and (iii) the ad, and present that via an output device. (The core novelty is the bundling of multi‑application request fulfillment with an ad selected from the same context/requests.)

Claim 6 — System counterpart to claim 1. Identical substantive steps, recast as one or more physical processors programmed to perform them.

Claim 11 — Method (purchase opportunities for under‑specified utterances).
Feed an utterance containing a request into a speech recognizer, pass recognized words/phrases to a conversational language processor, and receive an interpretation. Determine that the utterance also contains incomplete or unrecognized words/phrases such that there is insufficient information to determine the request. In direct response to that determination, select a plurality of purchase opportunities based on the interpreted utterance, and present them to the user. Receive an indication that the user interacted with at least one of them. Then determine the request from the interpretation plus the context of the purchase opportunity the user interacted with, and service the request. (The mechanism is: ambiguous request → show multiple purchase options → user's pick disambiguates the request.)

Claim 12 — System counterpart to claim 11. Same steps, recast as programmed processors.

Dependent claims: 2 (phoneme→syllable mapping in an acoustic grammar producing a preliminary interpretation) and 5 (cross‑application determination based further on context) depend from claim 1; 3 (environmental model input) and 4 (environmental information = user location/activity/action) depend from claim 1 via 3. Claims 7–10 are the mirrored dependents of claim 6.


4. Litigation / post‑grant posture (as found)

  • Google Patents flags "First worldwide family litigation filed" for family ID 39676921 (which includes the '060).
  • VB Assets, LLC v. [Amazon.com Services LLC](/litigations/by-plaintiff/Amazon.com%20Services%20LLC), No. 1:19‑cv‑01410‑MN (D. Del.) — Nov. 8, 2023 jury verdict of willful infringement of four patents; judgment reported at $46.7M via running royalty. Reported asserted patents across the family litigation include US 7,818,176, 8,073,681, 8,886,536, 9,269,097, 9,502,025, 11,087,385, 10,297,249, 10,755,699, 11,222,626. US 10,134,060 itself does not appear in the asserted‑patent lists I retrieved. Its direct ancestors ('536 and '097) do.
  • IPR activity against family members (not the '060): Samsung v. VB Assets, IPR2025‑00866 (terminated 2025‑09‑12 by discretionary denial). Petitions also listed against US 11,080,758 (IPR2025‑01240, filed 2025‑07‑01), US 10,297,249 (IPR2025‑01365), US 10,755,699 (IPR2025‑01379), and US 11,087,385 (IPR2025‑01167). Because US 11,080,758 is a continuation of the '060, that IPR is the closest thing to a validity challenge touching this claim family — but it is a challenge to the child, not to the '060.
  • VB Assets, LLC v. SoundHound AI, Inc., No. 1:24‑cv‑1279‑MN (D. Del.) (per SoundHound's 2025 10‑K disclosures): asserted patents listed are 8,073,681, 11,222,626, 8,886,536, 9,269,097, 9,502,025, 11,087,385, with later‑added 10,755,699, 10,297,249, 7,818,176. The '060 is not listed.

5. What I could not verify

  1. Any CAFC 2026 appeal involving US 10,134,060. Not found. I also did not confirm whether the Amazon verdict was appealed or where that appeal stands as of 2026.
  2. Current USPTO chain of title for the '060, given the Nuance assignment / corrective assignment conflict.
  3. USPTO "PatentCenter" status of the '060 in 2026 beyond Google Patents' "Active / adjusted expiration 2027‑06‑02" entry.
  4. Whether the abstract/claim mismatch has been the subject of any § 112 or § 101 challenge in litigation.

If you need docket‑level confirmation of (1) or (2), the reliable next steps are the CAFC CM/ECF docket search (via PACER) filtered to patent 10,134,060 and party "VB Assets," and the USPTO Assignment Search for reel/frame records around the 2020‑01‑22 and 2020‑09‑22 entries.

Sources: the authoritative patent text supplied for US 10,134,060 B2; Unified Patents portal entries for US‑10134060‑B2 (listing priority 2007‑02‑05 and assignee VB Assets LLC); Docket Alarm entry for IPR2025‑00866 (Samsung v. VB Assets); USPTO PTAB petition documents listing family IPRs (IPR2025‑01167/01240/01343/01365/01379); GeekWire, Global Legal Post, and Legal.io coverage of the Nov. 8, 2023 Amazon verdict; SoundHound AI 10‑K contingency disclosure (March 2026 archive) listing US patents asserted in VB Assets v. SoundHound; Google Patents family/litigation metadata for family ID 39676921.

Generated 10/1/2026, 12:23:47 PM

Cases on file (0)

Specific litigation cases in our database that name US patent 10134060. The free-form analysis below may also discuss cases beyond this list.

No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.

Litigation summary

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

✓ Generated

I'll search for litigation involving US patent 10134060 specifically.

Let me search for litigation involving VB Assets, the patent's current owner.

Let me search more specifically for the '060 patent in litigation and the Samsung case.

Summary: No litigation found specifically asserting US 10,134,060

Based on my searches of patent-litigation sources (CourtListener/RECAP, Docket Alarm, Law360, Bloomberg Law, Unified Patents, USPTO PTAB records), I did not find any case in which US Patent No. 10,134,060 ("the '060 patent") is identified as an asserted patent-in-suit. I searched specifically for the number "10134060" / "10,134,060" and did not return matches for similar numbers. I want to be explicit that this is a "not found" result, not a confirmed negative — I was unable to complete the full set of targeted searches, so treat this as the state of the evidence available to me rather than an exhaustive clearance.

Important context: the patent sits inside a heavily litigated family

US 10,134,060 is titled "System and method for delivering targeted advertisements and/or providing natural language processing based on advertisements" (inventors Tom Freeman and Mike Kennewick; priority date 2007-02-06; current assignee VB Assets LLC, successor to VoiceBox Technologies). The Google Patents record itself flags "Family has litigation" and links to a Darts-IP family record (family ID 39676921), which indicates the family has been litigated. VB Assets/VoiceBox is a well-known active patent plaintiff. However, "family has litigation" is not the same as "this patent has been asserted," and I could not tie a case to the '060 patent itself.

Related litigation involving the same owner/family (NOT the '060 patent)

So you can see the distinction — these are sibling patents, not the '060 patent:

Case Plaintiff Defendant(s) Court / Case No. Filed Patents asserted (as reported) Status
VB Assets v. Amazon VB Assets LLC Amazon.com, Inc., et al. (and later Amazon.com Services LLC) D. Del. 1:19-cv-01410-MN Jul 29, 2019 '681, '176, '097, '703 (per final judgment) Jury verdict 11/8/2023 (willful infringement, $46.7M); final judgment 5/16/2025 ($40.0M + ongoing royalty + prejudgment interest)
VB Assets v. Amazon.com Services VB Assets LLC Amazon.com Services, LLC D. Del. 1:24-cv-00839-MN Jul 18, 2024 '249, '699, '385, '758, '025 Dismissed with prejudice 4/28/2026 (confidential settlement/license)
VB Assets v. Google VB Assets LLC Alphabet, Google, Android, XXVI Holdings, YouTube D. Del. 1:26-cv-00443 Apr 17, 2026 '681, '765, '249, '341, '699, '176, '274, '536, '097, '456, '385 Pending (answer deadline extended to 6/22/2026)
VB Assets v. IBM VB Assets LLC International Business Machines Corp. D. Del. 1:26-cv-00868 Jul 16, 2026 '681, '699, '341, '628, '176, '097, '489, '274 Pending
VB Assets v. Samsung VB Assets LLC [Samsung Electronics Co. Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) / Samsung Electronics America E.D. Tex. 2:24-cv-828-JRG-RSP 2024 (referenced in IPRs) (referenced; asserted patents not confirmed from my results) Pending/Petitions stage

Note: US 10,134,060 does not appear in any of the patent lists reported above. Its continuation/child patents in the same family (e.g., US 11,080,758; US 12,236,456; application US 19/020,255 = US 2025/0384463) also do not appear in the reported asserted-patent lists, even though they share the '060 specification.

Also relevant (PTAB, not district court)

Amazon, Samsung, and others have filed numerous inter partes reviews against VB Assets patents (e.g., IPR2025-00866, -00871, -01167, -01240, -01343, -01365, -01379, and the older IPR2020-013xx series). These are administrative validity challenges, not district-court litigation, and none of the ones I saw name the '060 patent.

Bottom line / caveats

  • As of my search on this date, I found no district-court or Federal Circuit case that specifically asserts US 10,134,060. If the '060 patent has been asserted, it did not surface in the sources I reached.
  • The owner (VB Assets LLC / VoiceBox) is unquestionably an active litigant, so any "no litigation" statement must be scoped to this patent number, not the owner or family.
  • I could not complete every planned targeted query (CourtListener, Unified Patents caselist for this numberspecific hit, PACER, and the E.D. Tex. Samsung docket were partly unreached) due to search limits. Recommended verification steps to close the gap: (1) run the exact number "10,134,060" on the Unified Patents litigation portal and CourtListener/RECAP docket search; (2) check the Darts-IP family link on the Google Patents page for the family ID 39676921 and filter to the '060 member; (3) confirm the E.D. Tex. VB Assets v. Samsung complaint's asserted-patent list directly on PACER.

If you'd like, I can attempt the remaining targeted searches (Unified Patents caselist, the Samsung E.D. Tex. docket, and Darts-IP family filtering) to try to definitively confirm whether the '060 patent itself has ever been asserted.

Generated 10/1/2026, 12:23:42 PM

Proceedings on file (0)

All PTAB activity →

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

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

PTAB challenges

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

✓ Generated

I'll verify the structured "no PTAB activity" signal against public sources before finalizing.

Let me check specifically whether 10,134,060 itself (as opposed to its siblings in the same family) has any AIA challenge, and confirm the family-wide IPR picture.

Proceedings overview

Zero AIA trial proceedings are on file for US 10,134,060. The structured PTAB block is empty (active: 0 / claims invalidated: 0 / claims sustained: 0 / settled: 0 / institution denied: 0), and targeted searching for an IPR, PGR, or CBM naming the '060 patent returns nothing. This is not an "ODP lag" artifact of the kind that sometimes hides a recent filing: the reason the '060 patent has no PTAB history is that it appears never to have been asserted in any of the VoiceBox/VB Assets campaigns, so no defendant has had a reason to file. The bottom line for a defendant is therefore not "the patent is hardened by surviving IPRs" and not "the claims are already dead" — it is "this specific patent is a blank slate at the Board, but it sits in a family whose PTAB record is extremely well-developed and largely unfavorable to the patent owner." Read the family record below as a forecasting tool, not as precedent against the '060.

Confidence note: the ODP "no proceedings" signal is corroborated by my searches. I could not find any petition, institution decision, or FWD naming U.S. Pat. No. 10,134,060. I am flagging the absence as the finding, not inferring a proceeding that search did not surface.

Per-proceeding entries

There are no proceedings to itemize for the '060 patent, so the required per-proceeding sections would all be empty. Instead, below is the family-level PTAB record — these proceedings are against different patents (siblings/parents/children of the '060). Do not cite any of them as an adjudication of the '060's claims.

Family context — IPR2020-01346 — [Amazon.com, Inc.](/litigations/by-plaintiff/Amazon.com%2C%20Inc.) et al. v. VB Assets, LLC

  • Type: Inter Partes Review
  • Patent challenged: U.S. Pat. No. 9,015,049 (family relative, not the '060)
  • Filed: 2020-07-29
  • Status: FWD — all challenged claims unpatentable (FWD mailed 2022-02-01)
  • Defensive value: The most useful family datapoint for a would-be '060 challenger: an Amazon petition in this lineage produced a total claim wipe-out. It shows the art and claim-construction theories the Board has accepted against this specification.

Family context — IPR2020-01367 — Amazon.com, Inc. et al. v. VB Assets, LLC

  • Type: Inter Partes Review
  • Patent challenged: U.S. Pat. No. 8,073,681
  • Filed: 2020-07-29
  • Institution: Granted 2021-03-11
  • Final Written Decision: 2022-03-07 — "Determining No Challenged Claims Unpatentable" (patent owner prevailed; the challenged claims were sustained)
  • Defensive value: A cautionary counterpoint. The same petitioner, same campaign, same general art area, lost on the merits against the '681. Family-level PTAB outcomes are mixed, not uniformly pro-defendant.

Family context — IPR2020-01390 — Amazon.com, Inc. et al. v. VB Assets, LLC

  • Type: Inter Partes Review
  • Patent challenged: U.S. Pat. No. 7,818,176 (the original parent in the '060 chain)
  • Filed: 2020-07-29
  • Institution decision: Denied (decision entered 2021-03-11)
  • Defensive value: Shows the Board has not reflexively instituted against this family; a '060 petition will need to clear § 314(a) on the merits and now also the post-2025 discretionary framework.

Family context — IPR2020-01388 — Amazon.com, Inc. et al. v. VB Assets, LLC

  • Type: Inter Partes Review
  • Patent challenged: U.S. Pat. No. 9,269,097 (the direct parent of the '060)
  • Filed: 2020-07-29
  • Status/outcome: Not confirmed. I found the petition on the docket but could not verify the institution decision or FWD outcome. Verify on PTAB E2E before relying on it.

Family context — Samsung 2025 campaign — Samsung Electronics Co., Ltd. et al. v. VB Assets, LLC

  • Type: Inter Partes Review (six petitions)
  • Proceeding numbers: IPR2025-00866, -00867, -00868, -00869, -00870, -00871 (per the structured/aggregator data; note IPR2025-00866 is reported as terminated 2025-09-12 on discretionary denial, and IPR2025-00871 papers self-identify as directed to U.S. Pat. No. 10,510,341)
  • Filed: 2025-04 (roughly 2025-04-21 to 2025-05-02)
  • Status: discretionary denials, per third-party aggregator (greyb/IP Verse) — treat as unverified against ODP
  • Defensive value: Confirms the family remains a live litigation target (E.D. Tex., VB Assets v. Samsung, No. 2:24-cv-00828) but again shows no petition has ever been aimed at the '060.

Family context — Amazon 2025 campaign

  • Proceeding numbers: IPR2025-01167, -01240, -01343, -01365, -01379
  • Filed: 2025-06 to 2025-08
  • Patents challenged (per joint claim-construction chart): among others, the '385, '249, '025, '758, and '699 patents — several of which (e.g., US 11,080,758) are children of the '060
  • Status: reported as discretionary denials (aggregator data; unverified)
  • Defensive value: The 2025 Amazon campaign reaches the '060's progeny but still stops short of the '060 itself — reinforcing the "never asserted, so never challenged" explanation.

Strategic summary

Canceled vs. sustained vs. untested — as to the '060. No claim of US 10,134,060 has been canceled, sustained, or even tested in an AIA trial. All twelve claims (independent claims 1, 6, and 11, and dependents 2–5, 7–10, and 12) remain as issued and untested at the Board. Note that the '060 is a continuation in a long chain (its own specification recites the chain back to U.S. Pat. No. 7,818,176), and the family's other members have had a rough PTAB ride — the '049 was fully invalidated, while the '681 and '176 fared better. Do not represent to a court or adversary that any '060 claim has been adjudicated. The relevant operative claims for a defendant are claim 1 (method, speech-recognition-engine → conversational-language-processor → cross-application request → select ad → service output) and claims 11–12 (purchase-opportunity variant for incomplete/unrecognized utterances).

Estoppel landscape. Because there is no IPR on the '060, no § 315(e)(2) estoppel attaches to the '060. Estoppel under § 315(e)(2) runs to "the patent" that was the subject of the petition; the Amazon and Samsung IPRs on the '176, '049, '681, '097, '341, '765, etc. do not estop anyone from raising grounds against the '060. That cuts both ways: a defendant is free to file a clean § 102/§ 103 IPR against the '060 using the same art that killed the '049, but the same petitioner who lost on the merits against the '681 (or was denied institution against the '176) may face § 325(d) "same or substantially the same art" arguments if it recycles that record. Realistically, the family's PTAB record is the single best scouting source for the '060: the winning '049 grounds, the experts (e.g., Dr. Padhraic Smyth's declaration in the '176 petition), and the claim-construction positions are all public.

Pattern signals. (1) Serial petitioners. Amazon filed a four-petition batch in July 2020 and a five-petition batch in 2025; Samsung filed a six-petition batch in 2025 — both against the family, never the '060. (2) Assertive NPE patent owner. VB Assets is the classic PAE profile described in Samsung's briefs — no products, no website, formed to hold the VoiceBox portfolio after the 2018 Nuance acquisition. It won a $40,007,600 running-royalty judgment plus ongoing royalties against Amazon on the '681, '176, and '097 (E.D. Del., No. 1:19-cv-01410; final judgment 2025-05-16), and it is litigating against SoundHound, Apple, and Samsung. (3) Aggressive appellate posture. The Amazon judgment is on appeal at the Federal Circuit (Nos. 2025-1113, 2025-1142, 2025-1357, consolidated/dismissed-in-part for lack of a final judgment). (4) No defensive aggregator in the chain. The '060 appears on Unified Patents' portal as a tracked asset, but I found no Unified Patents (or RPX-style) challenge on this patent or the family. (5) Policy overlay. The 2025 Director Squires memorandum (2025-10-16) centralizing institution decisions and the proposed rules on parallel proceedings/settled expectations are highly relevant — this family is precisely the "older patent re-asserted by an NPE" fact pattern the new discretionary-denial regime targets, which materially worsens the odds of a '060 petition being instituted.

Recommended next steps

  • If you are a defendant: there is no PTAB activity on the '060 to lean on — you cannot point to a canceled claim or a prior FWD. The absence is itself a signal: this patent has never been asserted, so it has never had to survive scrutiny. Sanity-check whether the '060 is even in the asserted set before building a defense around it; in the litigations I reviewed (Amazon, Apple, Samsung, SoundHound), the asserted VoiceBox patents are the '176, '081/'681, '097, '536, '703, '049, '699, '385, '249, '025, '765, and '341 — not the '060.
  • Pre-filing diligence: before any '060 petition, pull the full family PTAB docket off USPTO PTAB E2E (https://ptacts.uspto.gov/ptacts/), and pull the Amazon '049 FWD (all claims canceled) as your template, while treating the '681 FWD (claims sustained) as the ceiling on what the family's art can achieve. Verify the unconfirmed statuses I flagged (IPR2020-01388; the 2025 discretionary denials) directly on E2E.
  • Forum/timing: if you file, expect a § 314(a) discretionary fight under the post-October-2025 framework; consider a Sotera-type stipulation (Samsung and Amazon both used "Sotera-plus" stipulations in the 2025 family petitions) and be ready for the "settled expectations" argument the Director has been applying to aged NPE patents.
  • If you are monitoring/defensive-only: set an E2E alert on 10,134,060 and 11,080,758 (the '060's child, already in the 2025 Amazon crosshairs). If VB Assets adds the '060 to a new complaint, expect an IPR petition within days and a one-year trial clock from institution if the Director institutes.
  • Appellate watch: the E.D. Del. judgment on the '176/'681/'097 is on appeal at the Federal Circuit (Nos. 2025-1113, 2025-1142, 2025-1357). A Federal Circuit ruling on those claims is the most likely near-term development that could change the '060's assertion value — track it on CourtListener (https://www.courtlistener.com/) under VB Assets, LLC v. Amazon.com Services LLC.

Caveats: I found no proceeding naming US 10,134,060; every proceeding above is against a different patent in the same family, and I have labeled them as such. Statuses drawn from the greyb/IP Verse aggregator (2025 discretionary denials) and the IPR2020-01388 outcome are unverified and should be confirmed on PTAB E2E before being cited. Claim numbers are quoted only where I could verify them; I have not attributed any FWD holding to the '060's claims.

Generated 10/1/2026, 12:24:03 PM

Assignment history

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

✓ Generated

I'll research the assignment chain and litigation/enforcement history before drafting.

Let me pull the full assignment abstract of title and confirm the parties and correspondents.

Assignment & Ownership Reconstruction — US 10,134,060 B2

Patent: System and method for delivering targeted advertisements and/or providing natural language processing based on advertisements
App. 15/223,870 · filed 2016-07-29 · issued 2018-11-20 · priority 2007-02-06 · current assignee of record (Google Patents): VB Assets LLC

Method / provenance note. Google Patents' legal-events table (embedded in the patent record supplied for this analysis) is the authoritative spine below; it is a mirror of the USPTO assignment database and carries no reel/frame. I was able to obtain reel/frame numbers and correspondents only from a same-family USPTO "assignment abstract of title" (Application 14/016,757 → US 8,886,536, the '097/'060 family) that was filed as a PTAB exhibit. Those reel/frames apply to the shared family recordings; verify each against the '060's own abstract at assignment.uspto.gov (patent 10134060). Where I could not retrieve a reel/frame I say so rather than guess.


Inventors

Inventor Employer at filing (determinable) Notes
Tom Freeman VoiceBox Technologies, Inc., Bellevue, WA Named on the '176, '097, '536 and '060; listed with a Mercer Island, WA residence in sibling filings
Mike Kennewick VoiceBox Technologies, Inc. (co-founder and CEO) Founded VoiceBox in 2001 with brothers Rich and Bob Kennewick; principal figure in the post-sale monetization of the portfolio

Unusual patterns (documented, not inferred):

  • The inventors' assignment to VoiceBox Technologies, Inc. was recorded 2016-07-29 — the same day the '060 continuation was filed and the day the VoiceBox Inc. → VoiceBox Technologies Corporation merger was recorded. That is a ~9.4-year-late confirmatory recording against a 2007-02-06 priority date, not a contemporaneous hire-to-file assignment. Minor housekeeping anomaly, not by itself suspicious.
  • Inventor retained by the monetization entity on a contingency. A 2024 E.D. Va. opinion (Dialect, LLC v. Amazon.com) records that VoiceBox's Mr. Kennewick was retained as a consultant by Dialect, LLC nearly six months before Dialect sued, that he "collected on a contingency fee basis," and that his LLC became a member of Dialect. PTAB briefing in the parallel Amazon IPRs further states that after the 2018 sale, "key VoiceBox patents were retained by named inventor Mike Kennewick via Patent Owner" (i.e., VB Assets, LLC). This is a classic monetization-vehicle tell and is squarely on the record.
  • The co-inventors of the sibling VoiceBox family members (Larry Baldwin, Michael Tjalve, Blane Ebersold, Chris Weider — '681/'765/'341/'699) do not appear on the '060. The '060 is a two-inventor advertising/NLU continuation.
  • I found no evidence of the inventors departing the original assignee within 12 months of filing, and no evidence of an inventor-side fire-sale trigger.

Original assignee

Entity named on the issued patent: Google Patents' front-page index lists the original assignee as VB Assets LLC. That is consistent with the paper trail: the nunc pro tunc assignment from VoiceBox Technologies Corporation to VB Assets, LLC was executed 2018-03-12 and recorded 2018-07-25 — four months before the 2018-11-20 issue date — so the printed assignee at issue would already reflect VB Assets, not the operating company. (I did not independently view the printed face of the patent; treat this as an inference from the recording dates.)

The record chain begins with VoiceBox Technologies, Inc. (Bellevue, WA).

  • Products embodying the claims: Yes — historically. VoiceBox was an early NLU/conversational-voice vendor; its software shipped to Toyota, Lexus, Chrysler, Dodge, TomTom, Pioneer, Magellan and Samsung, and it built a pre-Alexa voice-controlled speaker prototype ("Cybermind"). IEEE ranked VoiceBox #13 in patent power for computer software in 2013. So this is not a paper patent.
  • Primary line of business: natural-language understanding / conversational voice-user-interface software licensing.
  • Corporate history: VoiceBox Technologies, Inc. → VoiceBox Technologies Corporation (merger recorded 2016-07-29) → its remaining assets and the company itself acquired by Nuance Communications, Inc. in 2018 (Nuance announced/closed the VoiceBox acquisition in 2018; Nuance was itself acquired by Microsoft in March 2022). Portions of the portfolio went to Nuance (e.g., the '409 patent, sold on to Voice Inventions, LLC in Jan 2021, and sibling VoiceBox patents now asserted by Dialect, LLC). The '060 family did not go to Nuance/Dialect — it stayed with VB Assets, which litigates it.
  • Current status of the original assignee: not operating; the business was absorbed by Nuance in 2018. No Chapter 7/11 bankruptcy proceeding for VoiceBox Technologies Corporation was located in the sources reviewed.

Assignment timeline

Chronological. Reel/frames marked ◊ are corroborated directly in the '060's own legal-events table; the remainder come from the same-family abstract of title and should be verified on the '060 abstract.

2016-07-29 (recorded) — Reel/frame not retrieved

  • Conveyance: Assignment of assignors' interest (inventors → company)
  • Assignor: Tom Freeman; Mike Kennewick
  • Assignee: VoiceBox Technologies, Inc.
  • Correspondent: not retrieved
  • Context: late confirmatory/clean-up assignment of inventors' rights, recorded the same day the continuation was filed.

2016-07-29 (recorded) — Reel/frame not retrieved

  • Conveyance: Merger
  • Assignor: VoiceBox Technologies, Inc.
  • Assignee: VoiceBox Technologies Corporation
  • Correspondent: not retrieved
  • Context: internal reorg only — no change in ultimate control.

2017-12-22 (recorded) — Reel/frame not retrieved

  • Conveyance: Security Interest
  • Assignor: VoiceBox Technologies Corporation
  • Assignee: ORIX Growth Capital, LLC
  • Correspondent: not retrieved (family abstract set "62 properties" on the paired release)
  • Context: securitization — secured lending against the portfolio roughly 15 months before the Nuance sale.

Executed 2018-04-02 / recorded 2018-04-05 — Reel 045581/0630

  • Conveyance: Release by Secured Party
  • Assignor: ORIX Growth Capital, LLC
  • Assignee: VoiceBox Technologies Corporation (11980 N.E. 24th Street, Suite 100, Bellevue, WA 98005)
  • Correspondent: Wilson Sonsini Goodrich & Rosati, 650 Page Mill Road, Palo Alto, CA 94304-1050. Single appearance in this chain — not flagged as a repeat correspondent.
  • Context: collateral released as part of unwinding the prepackaged 2018 transaction.

Executed 2018-03-12 / recorded 2018-07-25 — Reel 046456/0128 (24 properties)

  • Conveyance: Nunc Pro Tunc Assignment
  • Assignor: VoiceBox Technologies Corporation
  • Assignee: VB Assets, LLC
  • Correspondent: Sheppard Mullin Richter & Hampton LLP, 2099 Pennsylvania Avenue NW, Washington, DC 20006. ⚑ This firm recurs in the chain — it also appears as correspondent on the 2019 Delphi release at reel 049459/0596 (Costa Mesa, CA office), i.e., two family recordings from two different offices.
  • Context: divestiture of retained patents out of the operating company into a non-practicing LLC, executed the same day as the Nuance-side paper.

Executed 2018-03-12 / recorded 2020-01-22 — Reel 051581/0216 ◊ (11 properties, 20 pages)

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: "VB ASSETTS LLC" (as recorded — an entity name that appears nowhere else in this chain)
  • Assignee: Nuance Communications, Inc., One Wayside Road, Burlington, MA 01803
  • Correspondent: Charles N.J. Ruggiero, Esq., Ohlandt, Greeley, Ruggiero & Perle, L.L.P., One Landmark Square, 10th Floor, Stamford, CT 06901. Single appearance; this is VoiceBox's own prosecution firm (attorney Hean L. Koo of the same firm signed IDSs in VoiceBox family applications), so this looks like prosecution counsel filing routine paper rather than an NPE-mill recording agent.
  • Context: executed with the March 2018 transaction but recorded ~22 months later, six months after VB Assets filed its first infringement suits — see anomaly note below.

Executed 2018-03-12 / recorded 2020-09-22 — Reel 053851/0873 ◊ (11 properties, 21 pages)

  • Conveyance: Corrective Assignment (correcting the assignor's name and the assignee's name previously recorded at reel 051581/0216)
  • Assignor: VoiceBox Technologies Corporation
  • Assignee: VB Assets, LLC
  • Correspondent: not retrieved from the excerpt
  • Context: chain-of-title repair, recorded 14 months after the first suits were filed and ~7 months before the second wave of assertion.

Executed 2019-04-10 / recorded 2019-04-12 — Reel 048872/0831 (26 properties, 16 pages)

  • Conveyance: Security Interest
  • Assignor: VB Assets, LLC
  • Assignee: Delphi Asset Management Corporation (5525 Kietzke Lane, Suite 200, Reno, NV 89511) — assignee line truncated in the retrieved excerpt but identified by the paired release
  • Correspondent: GTC Law Group PC & Affiliates, One University Ave., Ste. 302B, Westwood, MA 02090. Single appearance; GTC is an IP-finance/valuation practice, consistent with a collateralized loan rather than an NPE recording mill.
  • Context: securitization — patent-collateral financing ~3.5 months before the first Amazon/Google complaints.

Executed 2019-05-09 / recorded 2019-06-13 — Reel 049459/0596 (26 properties, 4 pages)

  • Conveyance: Release by Secured Party
  • Assignor: Delphi Asset Management Corporation
  • Assignee: VB Assets, LLC (13407 NE 37th Place, Bellevue, WA 98005)
  • Correspondent: Sheppard Mullin Richter & Hampton LLP, 650 Town Center Drive, 4th Floor, Costa Mesa, CA 92626 ⚑ (second appearance of this firm in the chain — see recurrence flag above).
  • Context: short-dated financing release; the "13407 NE 37th Place" address is a residential-style Bellevue address, not commercial office space — worth noting as an address-of-record tell.

2025-04-08 (recorded) — Reel/frame not retrieved

  • Conveyance: Security Interest
  • Assignor: VB Assets, LLC
  • Assignee: Contingency Capital Fund A LP
  • Correspondent: not retrieved
  • Context: securitization / litigation-funding-style secured facility, granted while VB Assets was litigating Amazon and Samsung.

2026-05-13 (recorded) — Reel/frame not retrieved

  • Conveyance: Release of Security Interest
  • Assignor: Contingency Capital Fund A LP
  • Assignee: VB Assets, LLC
  • Context: facility repaid/terminated; no change in title.

Anomaly to verify

Reel 051581/0216 (recorded 2020-01-22) records a transfer out of VB Assets and into Nuance, executed 2018-03-12 — yet the same family was asserted by VB Assets against Amazon in 2019 and its continuation US 11,080,758 was asserted by VB Assets again in 2024–25 (Amazon IPR2025-01240, Patent Owner VB Assets, LLC). The 2020-09-22 corrective (reel 053851/0873) resolves the record to VoiceBox Technologies Corporation → VB Assets, LLC, and Google's current-assignee field agrees. The most economical reading is a defective cover sheet on the 2020-01-22 recording that was repaired post-suit; a different reading is that an 11-property slice briefly sat with Nuance and was corrected back. This should be confirmed against the face of the recorded documents before relying on it.


Timeline diagram

timeline
    title Ownership of US 10134060
    2007 : Priority application filed
    2016 : Continuation filed
         : Inventors assign to VoiceBox Inc
         : Merger into VoiceBox Corp
    2017 : Security interest to ORIX
    2018 : ORIX release
         : Nunc pro tunc transfer to VB Assets
         : Nuance acquires VoiceBox business
    2019 : First suits v Amazon and Google
         : Delphi security interest and release
    2020 : Nuance recording
         : Corrective assignment names VB Assets
    2024 : Suits v Amazon and Samsung
    2025 : Contingency Capital security interest
    2026 : Contingency Capital release

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
Operating assignee VoiceBox Technologies Corporation transferred the family to VB Assets, LLC by nunc pro tunc assignment executed 2018-03-12, recorded 2018-07-25, reel 046456/0128, in the same transaction window as the Nuance acquisition. Supporting facts, all from the record rather than the name: VB Assets, LLC is a Delaware LLC with a Bellevue, WA principal place of business (1229A 120th Avenue NE per its 2024 complaint; 13407 NE 37th Place per reel 049459/0596 — a residential-style address); it ships no products; its sole identified activity is asserting the acquired patents (Amazona jury verdict; suits v. Google and Samsung); and PTAB briefing states the retained patents were held "by named inventor Mike Kennewick via Patent Owner." The name suffix is not the classic "IP Holdings," so the finding rests on conduct and address, not naming.

2. Known asserter in the chain — NOT PRESENT (on the enumerated lists).
No link in this chain is Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp or an Erich Spangenberg entity. Related but distinct entities surfaced in the same portfolio — Dialect, LLC (RPX: "connected to a familiar patent monetization figure") and Voice Inventions, LLC — hold sibling VoiceBox patents, not the '060. VB Assets itself functions as a serial plainitff but I did not verify it against the RPX/Unified high-frequency-plaintiff directories.

3. Repeat correspondent across the chain — PRESENT (weak-to-moderate).
Sheppard Mullin Richter & Hampton LLP appears on two family recordings: reel 046456/0128 (nunc pro tunc to VB Assets, Washington DC office) and reel 049459/0596 (Delphi release, Costa Mesa CA office). That satisfies the recurrence test the brief asks for. Caveat: Sheppard Mullin is a large general-practice firm that does both operating-company and monetization work, so recurrence here shows continuity of deal counsel, not an NPE-mill recording agent. The other correspondents — Wilson Sonsini (045581/0630), GTC Law Group (048872/0831), and Ohlandt, Greeley, Ruggiero & Perle (051581/0216, VoiceBox's own prosecutors) — each appear once and are not flagged.

4. Cascading transfers — UNCLEAR.
Between March 2018 and January 2020 the record shows five events (reels 046456/0128, 051581/0216, 053851/0873, plus the ORIX release at 045581/0630 and the Delphi pair at 048872/0831 and 049459/0596). But four of those trace to a single 2018-03-12 transaction recorded on three different dates, and the Delphi entries are a security-interest/release pair rather than title transfers. There is no chain of successive LLC-to-LLC conveyances. What is unusual is the pattern of recording title papers after litigation began (2020-01-22 and 2020-09-22), which reads as a standing/chain-of-title fix rather than a cascade.

5. Pre-litigation transfer — NOT PRESENT.
The last title-changing event (reel 046456/0128, executed 2018-03-12) predates the first suits asserting VoiceBox patents (VB Assets v. Amazon, D. Del. 1:19-cv-01410, and v. Google, filed 2019-07-29) by roughly 16.5 months — outside the 6-month window. The inverse anomaly is present and is flagged instead: the Nuance recording (2020-01-22) and the corrective (2020-09-22) both post-date the suits.

6. Bankruptcy fire-sale — NOT PRESENT.
The 2018 VoiceBox event was a corporate/acquisition transaction with Nuance, not a Chapter 7/11 sale. I could not locate a VoiceBox Technologies Corporation bankruptcy docket; I did not verify this exhaustively, so treat as "not indicated" rather than affirmatively disproven.

7. Privateering — NOT PRESENT for this chain.
VoiceBox at the time of transfer was winding toward sale, not transferring patents to an NPE to assert against its own competitors. (A privateering-adjacent dynamic does appear elsewhere in the portfolio — Nuance → Voice Inventions, LLC → Dialect, LLC — but that path does not include the '060.)

8. Defensive aggregator — NOT PRESENT.
The chain terminates at VB Assets, LLC, an asserting party. No RPX, AST, LOT, Unified Patents or OIN link exists anywhere in the chain.


Verdict

NPE — high confidence.

The title to US 10,134,060 was moved off the operating company VoiceBox Technologies Corporation into a non-practicing, single-purpose Delaware LLC, VB Assets, LLC, by nunc pro tunc assignment executed 2018-03-12 and recorded 2018-07-25 at reel 046456/0128 (with the corrected counterpart paper at reel 053851/0873, recorded 2020-09-22, fixing reel 051581/0216). VB Assets ships no products; its documented business is enforcement — it won a reported $46.7M willful-infringement verdict against Amazon and has sued Google and Samsung — and it has repeatedly pledged the family as loan collateral (reel 048872/0831 to Delphi, April 2019; the 2025 Contingency Capital facility), which is characteristic of litigation-funded assertion rather than product revenue. Two caveats belong on the record: the classic anonymity tells are only weakly present here (the patent's own inventors are public and the CEO materially participated in the monetization), so "NPE" is well supported while the stronger pejorative "troll" characterization is not established by this evidence — and the 2020-01-22 Nuance recording at reel 051581/0216 is an unresolved title anomaly that a litigant should verify against the recorded documents.

Verify the full abstract of title at: https://assignment.uspto.gov/patent/index.html#/patent/search/resultAbstract?searchinput=[10134060](/patent/10134060)&id=10134060&type=patNum

Generated 10/1/2026, 12:25:29 PM

Prior art

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

✓ Generated

I'll search the USPTO database and related sources for this specific patent number and its cited prior art.

Let me try to retrieve the actual front-page "References Cited" data for this specific patent.

Analyst Report — Prior-Art Citations for US Patent No. 10,134,060

1. Patent identified (literal number, per instruction)

Field Value (as recorded)
Patent number US 10,134,060 B2 ("the '060 patent")
Title System and method for delivering targeted advertisements and/or providing natural language processing based on advertisements
Application US 15/223,870, filed 2016-07-29
Granted 2018-11-20
Priority 2007-02-06 (via chain: 11/671,526 → 12/847,564 → 13/371,870 → 14/016,757 → 14/537,598 → 14/836,606 → 15/223,870)
Inventors Tom Freeman; Mike Kennewick
Assignee VB Assets LLC (orig. VoiceBox Technologies)
Claims 12 total: independent claims 1, 6, 11, 12; dependent 2–5, 7–10
Pre-AIA/AIA Pre-AIA 35 U.S.C. § 102 governs (all claims supported by the 2007-02-06 pre-AIA priority application; the '060 patent's claims never had an effective filing date on/after 2013-03-16)

2. Important limitation on this analysis — read first

The authoritative full text of US 10,134,060 supplied for this analysis does not contain the front-page "(56) References Cited" list. The scraped Google Patents record jumps from Classifications → Definitions → Abstract → Description → Claims; the only citation-type sections present are:

  • "Cited By (1)" — US11113350B2 (AT&T Intellectual Property I, L.P., priority 2019-03-29, published 2021-09-07), titled "Systems and methods for administering suggested merchandising arrangements." This is a forward citation. It post-dates the '060 patent by more than a decade and is not prior art to it under any subsection of § 102.
  • "Families Citing this family (389)" — a long list of documents. I flag this section as unreliable/unstructured in the supplied text: it mixes documents that predate the '060 patent (e.g., US7590224B1, 1995, AT&T; WO2001013255A2, 1999, Pixo; US8645137B2, 2000, Apple) with members of the '060 family itself (US7818176B2, US9406078B2, US9269097B2) and with documents that post-date it. Some of those early entries (e.g., US20070219866A1, Ragan, "Passive Shopper Identification Systems Utilized to Optimize Advertising", 2006-03-17 — noted cited by examiner) look like front-page § 56 art carried through the family, but I cannot confirm from the supplied text which of those documents are actually listed on the face of the '060 patent versus on a sibling (e.g., the '176 patent).

I therefore did not retrieve the definitive § 56 list for the '060 patent, and I am explicitly not going to reconstruct one from memory. What follows separates (A) citations I can verify from the authoritative text, from (B) family/§ 102(e) candidates, from (C) non-prior-art forward citations, and (D) a verification plan.


3. Category A — References cited in the '060 specification (verifiable from the authoritative text)

These are the only "patent citations" I can confirm as appearing in the '060 patent itself. They are cited as incorporated by reference to support the natural-language-processing infrastructure described at col.-level in the specification (ASR 110, conversational language processor 120, context determination module 130, agents 135, environmental model).

# Full citation Filed / Issued Brief description Does it anticipate any '060 claim under § 102?
A1 U.S. Pat. No. 7,398,209, Systems and Methods for Responding to Natural Language Speech Utterance, appl. 10/452,147 filed 2003-06-03; issued 2008-07-08 VoiceBox natural-language speech response; recognizer using dictionary/phrase tables with dynamically updated fuzzy-set/prior probabilities No. Discloses NLU/ASR architecture, not ad selection, not cross-application request servicing. Could not meet claim 1/6 limitations (selecting an advertisement; first + second applications) or claim 11/12 (purchase opportunities).
A2 U.S. Pat. No. 7,693,720, Mobile Systems and Methods for Responding to Natural Language Speech Utterance, appl. 10/618,633 filed 2003-06-15; issued 2010-04-06 Mobile NL response system No. Same reasoning as A1.
A3 U.S. Pat. No. 7,634,409, Dynamic Speech Sharpening, appl. 11/513,269 filed 2006-08-31; issued 2009-12-15 Acoustic-grammar-based re-interpretation of utterances (ASR post-processing) No. Relevant only to claim 2/7-style phoneme→syllable mapping. Does not disclose the ad-selection or cross-application limitations of claims 1/6/11/12.
A4 U.S. Pat. No. 7,640,160, Systems and Methods for Responding to Natural Language Speech Utterance, appl. 11/197,504 filed 2005-08-05; issued 2009-12-29 Domain-agent competition / context-based interpretation No. Maps to "conversational language processor … interpretation" element only. Silent on ads and on two different context-appropriate applications.
A5 U.S. Pat. No. 7,949,529, Mobile Systems and Methods of Supporting Natural Language Human-Machine Interactions, appl. 11/212,693 filed 2005-08-29; issued 2011-05-24 Mobile NL human-machine interaction No. Same as A4.
A6 U.S. Pat. No. 7,620,549, System and Method of Supporting Adaptive Misrecognition in Conversational Speech, appl. 11/200,164 filed 2005-08-10; issued 2009-11-17 Environmental model (user location, activity, tracked actions) + adaptive misrecognition Partial relevance to claim 3/4 (and 8/9). Discloses use of an environmental model for location/activity/action — but claims 3/4 are dependent claims, and § 102 anticipation must be assessed against the whole claim including all limitations of claim 1. A6 alone cannot anticipate claims 3/4.
A7 U.S. Pat. No. 8,073,681, System and Method for a Cooperative Conversational Voice User Interface, appl. 11/580,926 filed 2006-10-16; issued 2011-12-06 Cooperative conversational VUI No. Conversation-management art; no advertising or cross-application claim elements.

Key legal point on Category A: A1–A7 are all VoiceBox Technologies / Kennewick-family documents. Under pre-AIA § 102(e) a U.S. patent is prior art only if it names "another" inventor. Mike Kennewick is a named inventor on the '060 patent and on several of A1–A7, so those are not "by another" to that extent; where the inventive entity differs (e.g., A4/A5/A6 name additional inventors), § 102(e) could nominally apply, but none of them discloses the claimed subject matter, so no § 102 rejection can be sustained on any of them. Their real function in the '060 patent is as a written-description/enablement crutch ("as described in …"), not as anticipatory art.


4. Category B — Same-family applications/patents (NOT prior art in the ordinary sense)

Citation Filed / Issued Status vs. '060
US 7,818,176 B2, appl. 11/671,526 2007-02-06 / 2010-10-19 Parent. Same inventive entity (Freeman + Kennewick) → not "by another"; not § 102 art.
US 8,145,489 B2, appl. 12/847,564 2010-07-30 / 2012-03-27 Continuation of '176. Same entity.
US 8,527,274 B2, appl. 13/371,870 2012-02-13 / 2013-09-03 Continuation. Same entity.
US 8,886,536 B2, appl. 14/016,757 2013-09-03 / 2014-11-11 Continuation. Same entity.
US 9,269,097 B2, appl. 14/537,598 2014-11-10 / 2016-02-23 Continuation. Same entity.
US 9,406,078 B2, appl. 14/836,606 2015-08-26 / 2016-08-02 Immediate parent. Same entity.
US 11,080,758 B2 (16/194,944); US 12,236,456 B2 (17/391,388); US 2025/0384463 A1 (19/020,255) 2018-11-19; 2021-08-02; 2025-01-14 Children — post-date the '060 patent; not prior art.
EP 2109849 A4; CN 101689267 B; WO 2008/098039 A1 family members Foreign siblings of the same priority — same disclosure, not independent art.

Note on the § 56 list of a continuation: In U.S. practice, the front page of a continuation typically reproduces the references cited in the parent. The '060 patent's effective § 56 list is therefore most likely the reference list of US 7,818,176, which is the document whose file history should be checked for the definitive set (see § 7).


5. What the claims actually require — and why the cited documents do not anticipate

For a § 102 rejection, a single reference must disclose every limitation. The independent claims are demanding:

  • Claim 1 (method): provide utterance to ASR → receive recognized words → provide to conversational language processor → receive interpretation → determine context → determine that the utterance includes a cross-application request comprising at least a first request and a second request to be serviced by different context-appropriate applications → route first request to a first application, second request to a second application → select an advertisement based on the context and either/both requests → generate a service output comprising first app output + second app output + selected advertisement → output.
  • Claim 6: parallel system claim.
  • Claim 11 (method): utterance includes a request → determine the utterance further includes incomplete or unrecognized words/phrases such that insufficient information is available to determine the request → select a plurality of purchase opportunities responsive to that determination → present them → receive user interaction indication → determine the request from the interpretation and the context of the interacted-with purchase opportunity → service the request.
  • Claim 12: parallel system claim.

The narrowest, most vulnerable independent claims are 11 and 12, because the "advertisement used to disambiguate / advance the conversation" concept is the classic pre-2007 conversational-advertising idea. The most distinctive claims are 1 and 6 (the cross-application, two-different-applications-at-once element). None of the Category A references discloses either the cross-application routing element (claims 1/6) or the purchase-opportunity-driven disambiguation element (claims 11/12). On the record I can verify, the '060 patent's own cited documents are infrastructure art, and the patent would have to be attacked with art outside the four corners of its § 56 list.

6. Category C — Forward citations (expressly NOT prior art)

Citation Priority / Publication Reason it is not § 102 art
US 11,113,350 B2, AT&T Intellectual Property I, L.P., Systems and methods for administering suggested merchandising arrangements 2019-03-29 / 2021-09-07 Published ~2.5 years after the '060 application was filed and ~12 years after its priority date. Sole entry under "Cited By (1)". Cited by examiner/third party directed forward. Cannot be § 102 art (except, theoretically, as a § 102(a)(2) secret application if filed before and published after — inapplicable here).

7. Gap and verification plan (recommended before any § 102 opinion is relied upon)

Because I could not extract the front-page § 56 list for the '060 patent from the sources reached, the following steps are needed to close the record:

  1. USPTO PatentCenter / Patent Full-Text (USPTO.gov) for 10,134,060 — retrieve the "References Cited" (56) block verbatim from the granted patent PDF (patentimages storage) rather than the scraped HTML.
  2. USPTO PatentCenter file wrapper for appl. 15/223,870 — the examiner's Form PTO-892 "Notice of References Cited" and the "List of references cited by examiner" is the authoritative citation list; note that continuations rarely add new art.
  3. File wrapper for appl. 11/671,526 (the '176 parent) — because § 56 art is inherited, the '176 prosecution is where the operative citation set for this family originates.
  4. Darts-IP family ID 39676921 (linked from the Google Patents record) — filter to the '060 member to distinguish family-level citations from document-level citations.
  5. Do not treat the "Families Citing this family (389)" list as the '060 patent's prior art without cross-checking each entry's date and target document; it is contaminated with the family's own members and with post-2007 documents.

8. Honest conclusions

  • Verified: The patent is US 10,134,060 B2 (appl. 15/223,870), Freeman & Kennewick, priority 2007-02-06, granted 2018-11-20, VB Assets LLC.
  • Verified citations inside the '060 patent: the seven VoiceBox/Kennewick patents/applications incorporated by reference (A1–A7) plus the six-family continuation chain. None of them anticipates any claim of the '060 patent under pre-AIA § 102.
  • Not verified: the front-page (56) "References Cited" list. I could not retrieve it, and I will not invent it. I do not know with high confidence what the complete § 56 list of US 10,134,060 is.
  • Forward citation US11113350B2 is not prior art.
  • Most substantively relevant art for the actual claims would have to target: (i) routing two requests from a single utterance to different context-appropriate applications and (ii) using user interaction with a selected purchase opportunity to complete an ambiguous request — neither of which is addressed by any document I could verify as cited in the '060 patent. Any § 102/§ 103 opinion on claims 1/6/11/12 should be built on newly located art, not on the patent's own citation list.

Generated 10/1/2026, 12:24:23 PM

Obviousness

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

✓ Generated

I'll ground this § 103 analysis in the prior-art record actually cited on this patent's page, plus targeted searches for the references it names. Let me pull those together.

Let me pull the remaining key references — the VoiceBox conversational-NLU family members, the contextual-advertising art, and multi-application request routing.

Obviousness Analysis — US 10,134,060 B2 under 35 U.S.C. § 103

Builds on the earlier Patent summary and Litigation summary sections. Nothing in those is repeated here except where a cross‑reference is needed. One factual correction/flag from my search: Google Patents lists the prior‑art (priority) date as 2007‑02‑06, while Unified Patents' entry for US‑10134060‑B2 lists 2007‑02‑05. Both point to the same parent filing (11/671,526, filed 2007‑02‑06); the one‑day delta is a metadata artifact and does not change any conclusion below.


1. Method, governing law, and the person of ordinary skill

Governing law. If the issued claims are entitled to the 2007‑02‑06 priority date (they are straight continuations, and the specification is essentially unchanged across the family), the pre‑AIA § 103 framework applies — including pre‑AIA § 103(c) (commonly owned art) and pre‑AIA § 102(e). That matters because several of the most on‑point references are inside the same corporate family (VoiceBox/VB Assets). See § 3 below.

PHOSITA. A person with a bachelor's degree in CS/EE (or equivalent) and 2–3 years of experience in one or both of: (a) automatic speech recognition and conversational/NLU user interfaces, or (b) online/context‑based advertising selection. This is a "predictable arts" combination case; the PHOSITA is charged with knowledge of both the conversational‑interface art and the contextual‑advertising art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

Claim structure (from the authoritative text). Independent claims 1 and 6 (method/system: cross‑application request → two applications → ad selected on context/requests → combined service output). Independent claims 11 and 12 (method/system: utterance with incomplete/unrecognized content → select plurality of purchase opportunities → user interaction → disambiguate the request from the context of the interacted‑with opportunity → service it). Dependents 2–5 and 7–10.


2. The prior‑art record actually on this page

The page's Prior Art section supplies (i) prior‑art keywords — request, natural language, phrases, language utterance, words; (ii) the applicant's own spec‑cited references; and (iii) a "Families Citing this family (389)" table (shown only in part). The references most probative of the claims, taken from that record:

Ref. (as listed on the page) Date What it teaches / why it matters
US 7,949,529 B2 — VoiceBox, Mobile Systems … Natural Language Human‑Machine Interactions (Weider et al.) filed 2005‑08‑29; pub. US 2007/0050191 ASR + parser + context stack + domain agents; explicitly addresses multiple/chained requests to multiple data sources: "several requests may need to be initiated and even these requests may need to be chained or concatenated… the multiple results should be evaluated and combined to form the best possible answer."
US 7,640,160 B2 — VoiceBox, Responding to Natural Language Speech Utterance filed 2005‑08‑05 Context‑specific domain agents competitively scoring interpretations; multi‑domain request handling.
US 7,620,549 B2 — VoiceBox, Adaptive Misrecognition in Conversational Speech (Di Cristo et al.) filed 2005‑08‑10 Handles misrecognized/incorrect interpretations; environmental model (user location/activity/actions); reinterprets utterances — directly relevant to claim 11's "incomplete or unrecognized" trigger and to claims 3/4/8/9.
US 7,634,409 B2 — VoiceBox, Dynamic Speech Sharpening filed 2006‑08‑31 Phoneme stream → syllable mapping against an acoustic grammar → preliminary interpretation — i.e., claim 2/7 verbatim‑level teaching.
US 8,073,681 B2 — VoiceBox, Cooperative Conversational Voice User Interface filed 2006‑10‑16 Long‑/short‑term shared knowledge; cooperative dialog to satisfy mutual goals.
US 7,590,224 B1 — AT&T, Automated Task Classification System 1995 prio. Classifying a caller's utterance into tasks — request identification.
US 2006/0271520 A1 — Ragan, Content‑Based Implicit Search Query filed 2005‑05‑27; pub. 2006‑11‑30 Determines context from user interaction, generates implicit search terms, and searches "one or more local databases associated with one or more applications on the device"; ranks results by relevance/context; presents them for user selection. Cross‑application information retrieval + implicit‑query disambiguation.
US 2007/0219866 A1 — Wolf, Passive Shopper Identification … Optimize Advertising filed 2006‑03‑17 Targeted/optimized advertising based on tracked behavior (e.g., time/duration), display or audio ads.
US 2006/0161520 A1 — Brewer et al. (Microsoft), Generating Alternative Search Terms filed 2005‑01‑14; pub. 2006‑07‑20 Presents a set of selectable alternative search terms and executes the search on the user‑selected alternative — the disambiguation‑by‑user‑selection mechanism. (Surfaced in the citing‑family web, not the truncated list itself.)
US 7,136,875 B2 / US 2004/0093327 A1 — Anderson et al. (Google), Serving Advertisements Based on Content 2002 prio. Foundational context/content‑based ad targeting, scoring/ranking ads, combining ads with content into one served output — the ad‑selection element.

What the page does not contain: no reference that anticipates claims 1/6/11/12 in a single document; and (as the Litigation summary found) no IPR naming the '060 itself. So the analysis is necessarily a combination case.


3. Threshold issue that a challenger must address: pre‑AIA § 103(c)

The most technically on‑point NLU references ('529, '160, '549, '681, '409, '209, '720) are VoiceBox patents sharing inventor Mike Kennewick with the '060 (Freeman/Kennewick), and all were commonly owned by VoiceBox/VB Assets at the relevant time. Under pre‑AIA § 103(c), art that qualifies only under § 102(e)/(f)/(g) and was commonly owned "at the time the invention was made" cannot be used in a § 103 rejection. A challenger therefore has two paths:

  1. Use them only if they qualify under § 102(a)/(b) — i.e., if a given family member published (as a patent or pre‑grant publication) more than one year before 2007‑02‑06 (before ~2006‑02‑06). Some (e.g., the '529's pre‑grant pub. US 2007/0050191, published 2007‑03‑01) fall after the critical date and would be § 102(e)‑only — hence § 103(c)‑disqualified. I could not confirm each publication date on this record; treat per‑reference availability as unverified.
  2. Rely on third‑party art for the primary conversational teaching (e.g., Ragan '520 for context‑derived implicit queries and cross‑application searching; AT&T '224 for task classification), using the VoiceBox references only as background evidence of the state of the art, not as § 103 prior art.

This is the single biggest weakness in any obviousness attack on the '060 today: the deepest NLU art may be statutorily off‑limits, forcing the case onto thinner third‑party references.


4. Element‑by‑element combinations

Claim 1 / Claim 6 — cross‑application request + targeted ad + combined output

Claim element Primary ref Secondary ref
Utterance → speech recognizer → words/phrases → conversational language processor → interpretation '529 ("context description grammar," "best match … to a response generator"); '160 (domain‑agent scoring) AT&T '224 (utterance→task classification)
Determine a context from recognized words/phrases '529; '160; '549 (environmental model) Ragan '520 (context engine from user interaction)
Determine a cross‑application request (first + second request → different applications) '529 ("multiple requests … to multiple data sources," requests "chained or concatenated") Ragan '520 (searching "one or more local databases associated with one or more applications on the device")
Route first request to app #1, second to app #2 '529 (agents/response generators per domain) —
Select an advertisement based on the determined context and either/both requests Anderson '875 / '004‑0093327 (ads "relevant to content," scored/ranked) Ragan '520 (implicit terms from context); Wolf '866 (optimized, contextually targeted ads)
Combine app‑1 output + app‑2 output + ad into one service output '529 ("multiple results … evaluated and combined to form the best possible answer") '875 (ad combined with content into one served document)
Output via output device '529; Wolf '866 (visual or audible delivery) —

Motivation / KSR rationales.

  • Same field + known technique: Context‑based ad serving ('875, priority 2002) was a routine, well‑understood technique for monetizing any interactive service; applying it to the context already computed by the conversational processor is "use of a known technique to improve a similar device in the same way." KSR, 550 U.S. at 417.
  • Business/market incentive: The '060 specification itself concedes the motivation — existing VUIs caused "missed opportunities," and "providers of goods and services may lose out on potential business." A PHOSITA had a concrete incentive to insert targeted ads into the voice response. § 103 recognizes market forces as a motivation.
  • Predictable result: Combining the two applications' outputs and an ad into a single response is the natural union of ('529's combined multi‑source answer) and ('875's content+ad document) — no change in function of any element.
  • Reasonable expectation of success: Both references operate on the same device class (mobile/telematics, per '529) and the same computational pipeline (recognize → interpret → respond).

Anticipation note: none of the page references alone discloses the combination; claim 1 is a classic "'arrangement' of old elements" that KSR treats as obvious absent an unexpected result.

Claim 11 / Claim 12 — ambiguous utterance → purchase opportunities → disambiguation

Claim element Primary ref Secondary ref
Utterance with a request → ASR → words/phrases → conversational processor → interpretation '549; '160; '529 AT&T '224
Determine the utterance has incomplete/unrecognized words such that insufficient info is available '549 (adaptive misrecognition; incorrect/ambiguous interpretations); '529 (background: "most natural language requests and commands are incomplete … many … may be ambiguous") —
In response, select a plurality of purchase opportunities based on the interpreted utterance Wolf '866 (targeted purchase‑type ads); '875 (relevant‑ad selection) Ragan '520 / Brewer '520 (candidate sets generated from context)
Present the plurality; receive indication of user interaction Brewer '520 (present a set of selectable alternative search terms; user activates one) Wolf '866
Determine the request from interpretation + context of the interacted‑with opportunity '160/'529 (context stack updated by follow‑up interactions); Ragan '520 (refine/execute on the user‑selected term) —
Service the request '529 (agents/service fulfillment) —

Motivation / KSR rationales.

  • Known problem, known solution: Ambiguity/incompleteness of NL requests was expressly recognized ('529 background). The known remedy was to surface candidate interpretations and let the user pick (Brewer '520; Ragan '520). Substituting purchase opportunities for generic candidate terms is an advertised application of the same mechanism — the outcome (disambiguating the request from the user's pick) is identical and predictable.
  • Design incentive: Once ads/'calls to action' are in the pipeline (as in claim 1), using a plurality of them as the disambiguation prompt is an obvious efficiency — it simultaneously resolves ambiguity and monetizes the interaction. The '060 spec concedes this: ads may be "selected to help in interpreting incomplete and/or ambiguous requests" and to "frame a subsequent user input."
  • "Obvious to try": Faced with "Do you know [mumbled] Seattle?", a PHOSITA had a finite set of predictable options (ask a clarifying question; present a candidate list; present sponsored options). Presenting options is taught by Brewer '520, and adding a commercial dimension is a design choice.

Dependents

  • Claim 2 / 7 (phoneme→syllable in acoustic grammar → preliminary interpretation): taught near‑verbatim by '409 (Dynamic Speech Sharpening) — if that reference is § 102(b) art; otherwise by the ASR‑grammar disclosures of '529/'224. Strong ground.
  • Claims 3–4 / 8–9 (environmental model → location/activity/action): taught by '549 (environmental model) and '529 (device location as context) — strong.
  • Claims 5 / 10 (cross‑application determination "further based on the determined context"): a mere use of the already‑determined context; obvious over '529/'160.

5. Weaknesses in the obviousness case (be candid)

  1. Common ownership / pre‑AIA § 103(c) may remove the best NLU references (see § 3). A challenger must either find early § 102(b) publications within the family or build the case on third‑party art alone.
  2. No clean single‑reference anticipation. The claims' bundling recitation — a single service output carrying two applications' outputs plus a context‑selected ad (claim 1), and deriving the request from the context of the specific purchase opportunity the user touched (claim 11) — is narrow. Expect a patent owner to argue that the specific interaction → context → request determination linkage is not shown.
  3. Hindsight risk for claim 11. Using purchase opportunities specifically (as opposed to generic candidate interpretations) as the disambiguator is arguably inured from the claimed invention's own ad‑monetization premise. Expect a non‑obviousness argument on that ground, rebutted by the "design incentive" rationale.
  4. Secondary considerations — evidence not located. I found no evidence of unexpected results, industry praise, copying, or nexus‑bearing commercial success attributable to the '060's claims. If such evidence exists (the family's ~$46.7M Amazon verdict and the pending Google/IBM/Samsung suits are relevant only if there is a nexus to these claims), it could rebut. Flagged as unverified.
  5. Separate § 101 exposure (not § 103). The abstract/claim mismatch noted in the Patent summary — an abstract about pronoun/anaphora resolution over claims about cross‑application routing and purchase opportunities — is unusual but does not itself create a § 103 issue; it does invite a § 112 written‑description/claim‑scope attack and complicates any claim‑construction‑driven obviousness analysis.

6. Bottom line

  • Strongest § 103 grounds: a VoiceBox conversational‑NLU reference ('529 or '160) in view of a contextual‑advertising reference (Google '875/'004‑0093327, Ragan '520, or Wolf '866) renders claims 1 and 6 obvious, with the dependents 2–5/7–10 falling to '409 ('409 for claim 2/7), '549/'529 (claims 3–4/8–9), and the context limitation (claims 5/10).
  • Claims 11–12 are obvious over '549 (adaptive misrecognition / ambiguity) or '160 in view of a candidate‑selection reference (Brewer '520 or Ragan '520) and an ad/purchase‑opportunity reference (Wolf '866 or '875); the strongest sub‑combination pairs Brewer's select‑a‑term disambiguation with a targeted‑offer source.
  • Biggest legal obstacle: pre‑AIA § 103(c) common ownership of the VoiceBox family may disqualify the most on‑point NLU art, forcing reliance on third‑party references whose disclosures are thinner.
  • Verification still needed: (i) the § 102(b)/102(a) publication dates of each VoiceBox family member relative to 2006‑02‑06; (ii) whether any asserted family claim has an effective filing date after 2007‑02‑06 that would flip the case to AIA § 102/103; (iii) full text of the truncated 389‑item citing‑family list, which may contain additional third‑party art not surfaced here. Consistent with the Litigation summary, I again found no IPR or district‑court assertion naming the '060 itself — the validity challenges run against the '758/'249/'699/'385 siblings and the '765/'176/'681/'536/'097 patents.

Sources: authoritative patent text for US 10,134,060 B2 (claims, spec, Prior‑Art keywords, "Families Citing this family" list); Google Patents family/litigation metadata for family 39676921; US 7,949,529 B2 and its prosecution/background (patentimages PDF; freepatentsonline); US 2006/0271520 A1 (Ragan) (patentimages PDF; freepatentsonline; uspto.report); US 2007/0219866 A1 (Wolf) (patentimages PDF; patents‑review.com; WO2007109479A3); US 2006/0161520 A1 (Brewer) (patentimages PDF); US 7,136,875 B2 / US 2004/0093327 A1 / US 2010/0185513 A1 (Anderson et al., Google) (patentimages PDF; Unified Patents portal); USPTO PTAB petition documents referencing the '409/'529/'160/'681 VoiceBox patents (ptacts.uspto.gov); Unified Patents portal entry for US‑10134060‑B2.

Generated 10/1/2026, 12:25:00 PM

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