Invalidity dossier
US 10346114
Digital content services over the internet that transmit or stream protected digital content to mobile devices, display devices, audio output devices, printing devices, televisions, or television controllers
Current assignee: Flexiworld Technologies, Inc.
Added 9/14/2026, 12:47:31 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including any CAFC 2026 docket activity.
Let me search for the litigation/docket details and the actual claim text.
US Patent 10,346,114 B2 — Analyst Summary
Sourcing note: I worked from (a) the full patent text supplied in the prompt (sourced from https://patents.google.com/patent/[US10346114](/patent/US10346114)/en) and (b) live web searches. My searches returned no CAFC docket, opinion, or appeal records for US10346114 for 2026 (or any year). I flag that explicitly below rather than guessing.
1. Bibliographic data (verified)
| Field | Value |
|---|---|
| Patent number | US 10,346,114 B2 (as printed; not auto-corrected) |
| Title | "Digital content services over the internet that transmit or stream protected digital content to mobile devices, display devices, audio output devices, printing devices, televisions, or television controllers" |
| Inventors | William Ho Chang; Christina Ying Liu |
| Assignee | Flexiworld Technologies, Inc. (original and current assignee per Google Patents) |
| Application no. | 15/973,317 |
| Filing date | 2018-05-07 |
| Priority date | 2000-11-20 (stated as an assumption by Google Patents) |
| Pre-grant publication | US 2018/0253264 A1, published 2018-09-06 |
| Issue/grant date | 2019-07-09 |
| Legal status | Expired – Fee Related; anticipated expiration listed as 2021-11-18 |
| Primary class | G06F 3/12 (digital output to print unit); also G06Q 20/32, H04L 63/0428 (encrypted payload), H04L 67/565, H04L 12/28 (home automation networks) |
| Related family | Continuation-family member alongside e.g. US 7,318,086; US 10,818,446; US 10,390,341 (the latter listed to Pebble Tide LLC — a different assignee, so do not conflate it with the '114) |
Term note: the "expired 2021-11-18" date is consistent with a 20-year term running from the 2000-11-20 priority plus roughly one year of patent-term adjustment. On its face the patent has been expired for several years, which is relevant to the docket question below.
2. Abstract (verbatim, as published)
"Digital content services provided over the Internet for transmitting or streaming protected digital content to client or output devices are herein disclosed and enabled. The protected digital content is encrypted and device dependent or specific for rendering or playing at a limited number of devices, including smart phones, information pads, audio players, wireless controllers, televisions, printers, etc. To illustrate, a client may include an application for accessing digital content from a subscribed content service or store over the Internet. To access the digital content, a client application may send, to the content service or store, authentication information, subscription information, and/or a reference to selected digital content. The service then generates encrypted device dependent output data, related to the selected digital content and associated with a device previously registered with the service, for transmitting or streaming to the client or output devices (e.g., smart phones, television controllers, speakers, printers) for rendering."
3. Specification overview (from the supplied text)
The patent is a late-filed continuation of Flexiworld's "pervasive output" family. Its disclosure is about decoupling output from device-specific drivers by moving processing to the network:
- Problem framed: an information apparatus (PDA, smart phone, pager, digital camera, e-book, web pad, etc.) has limited display, memory, processing power, and often lacks the right driver/application; conventional printing requires installing a device-specific driver per output device.
- Core architecture (Fig. 1): information apparatus 100 ↔ network 108 (Internet) ↔ application server 110 / content server 114, with a local link 116 to output device 106 (via output controller 104, optionally combined with a printer controller).
- Core method (Figs. 4, 6–8): client application 102 gathers a document object (content and/or a pointer/reference such as a URL), an output device object (device capability model), and an optional job object (user preferences); these are combined into a composite message sent to server application 112, which converts the document into device-dependent output data using helper applications/drivers, and returns it to the information apparatus for transmission over the local link to the output device.
- Objects model: three named objects — output device (printer) object, job object, and document object — with the document object allowed to carry only references/pointers rather than the content itself ("lightweight" object).
- Security/access: authentication (password, biometrics, digital certificate, security key), encryption, and payment/deposit (credit card, smart card, e-cash) are described as optional features, and authentication info may be carried in the document, printer, or job object.
- Output media: expressly extends beyond printing to display devices (TVs, monitors, projectors) and audio output devices.
4. Independent claims — plain-language overview
Explicit uncertainty: the copy of the patent supplied to me is truncated before the claims (it ends mid-sentence in the FIGS. 9A–9F GUI description), and my searches did not return verbatim claim text. I therefore cannot quote or number the independent claims with authority, and I will not fabricate claim language or a claim count. The following is my best reconstruction of the independent-claim scope from the abstract and specification, and should be verified against the granted claims at https://patents.google.com/patent/US10346114/en or USPTO Patent Center.
On that basis, the independent claims appear to be directed to two complementary sides of one system:
(a) Server / content-service side (likely claim 1). A digital content service (or "store") operating over the Internet that:
- receives, from a client application, authentication information, subscription information, and/or a reference to selected digital content;
- determines or identifies an output device previously registered with the service (a limited number of authorized/registered devices — smart phone, information pad, audio player, wireless controller, television, television controller, printer, speaker);
- generates encrypted, device-dependent (device-specific) output data corresponding to the selected digital content, in a format suited to that registered device; and
- transmits or streams that output data to the client and/or the output device for rendering or playing.
(b) Client / information-apparatus side. A client device (or client application executing on it) that:
- sends the authentication/subscription/reference information to the content service;
- receives the encrypted, device-dependent output data or content streamed from the service; and
- causes at least part of the received digital content to be rendered or played at an output device (display, audio output device, printer, television, or television controller).
The asserted novelty/point of distinction over conventional driver-based output is this combination: driver/rasterization work done remotely at a service, the resulting output being both encrypted and device-dependent, and its delivery being tied to a previously registered device and gated by subscription/authentication.
Because I could not verify claim text, treat the above as a characterization of disclosed subject matter, not a claim-by-claim reading.
5. Litigation and PTAB — what the record shows
| Proceeding | Court/Tribunal | Number | Notes |
|---|---|---|---|
| Flexiworld Technologies, Inc. v. Roku Inc. | W.D. Tex. (Judge Alan D. Albright) | 6:20-cv-00819, filed 2020-09-08 | US 10,346,114 was Exhibit 2 to the complaint; also asserted US 8,989,064 and US 10,740,066. Roku answered with counterclaims 2020-11-02. |
| Flexiworld Technologies, Inc. v. Sony Corporation | E.D. Tex. | 2:23-cv-00616 | Listed in Stanford's NPE Litigation Database as a case involving patent 10,346,114; Flexiworld categorized as "3 Failed startup." I did not independently verify this docket in the search results returned. |
| IPR2021-00715 | PTAB | IPR2021-00715 | Shown on the patent's Google Patents litigation panel as filed and terminated by settlement. The petitioner field was blank in the source; Universal/Unified Patents and Unified Patents' PTAB data was the cited source, so I cannot confirm from the results whether this IPR targeted the '114 or a sibling patent. |
| Flexiworld Technologies, Inc. v. Amazon.com, Inc. | 2:25-mc-00018 | 2025 | Miscellaneous/subpoena proceeding, dismissed without prejudice 2025-04-22. Connected to Flexiworld's broader campaign; not confirmed as involving the '114. |
CAFC / 2026 docket: no results. I ran targeted searches for a Federal Circuit appeal involving patent 10,346,114 and for "Flexiworld" + "Federal Circuit" + 2025/2026. These returned zero CAFC hits. Two independent reasons to doubt any 2026 CAFC activity exists on this patent: (i) no search engine result, docket aggregator, or Firm/Unified Patents feed surfaced one; and (ii) the '114 is recorded as expired as of 2021-11-18 for failure to pay maintenance fees, and the 2020 Roku case and the reported PTAB matter appear to have terminated earlier. I state this as absence of evidence, not proof of absence — I do not have authoritative confirmation that no appeal exists.
6. Confidence summary
- High confidence: patent number, title, inventors, assignee, application number 15/973,317, filing 2018-05-07, grant 2019-07-09, priority 2000-11-20, abstract wording, expired status.
- Medium confidence: the 2020 Roku case and the Sony 2:23-cv-00616 reference (from third-party litigation databases, not the court's own docket in these results).
- Low / unverified: the IPR2021-00715 target and the exact independent-claim language and count. I do not have authoritative claim text and recommend pulling the granted claims directly from USPTO Patent Center or the Google Patents claims tab before relying on any claim-scope statement.
Generated 9/15/2026, 12:47:53 AM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10346114. The free-form analysis below may also discuss cases beyond this list.
- Flexiworld Technologies, Inc. v. Roku Inc.filed Sep 8, 20206:20-cv-00819U.S. District Court, W.D. Tex. (Waco Division), Judge Alan D. Albrightstanding motion denied; disposition unverified
Defendants: Roku Inc.
- IPR2021-00715USPTO Patent Trial and Appeal Boardterminated (settled)
Defendants: Flexiworld Technologies, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US Patent 10,346,114 across patent litigation sources.
Let me dig deeper into the specific cases and verify which ones assert this patent.
Litigation Involving U.S. Patent No. 10,346,114
Patent: US 10,346,114 B2 ("Digital content services over the internet that transmit or stream protected digital content to mobile devices, display devices, audio output devices, printing devices, televisions, or television controllers")
Owner: Flexiworld Technologies, Inc. (original assignee; inventors William Ho Chang and Christina Ying Liu)
Priority date: 2000-11-20 · Filing date: 2018-05-07 · Grant date: 2019-07-09 · Status: Expired – Fee Related
1. District Court Litigation
Flexiworld Technologies, Inc. v. Roku Inc. — CONFIRMED
| Field | Detail |
|---|---|
| Plaintiff | Flexiworld Technologies, Inc. |
| Defendant | Roku, Inc. |
| Jurisdiction | U.S. District Court, Western District of Texas (Waco Division), Judge Alan D. Albright |
| Case No. | 6:20-cv-00819 |
| Filing date | September 8, 2020 |
| Status | Closed (case docket shows status "Closed"; reported to have ended by settlement in 2022) |
Relationship to US 10,346,114: This patent was asserted by Flexiworld against Roku. It appears as Exhibit 2 (US Patent 10,346,114) to the original complaint, alongside US 8,989,064 (Exhibit 1) and US 10,740,066 (Exhibit 3), with corresponding claim charts for the '064, '114, and '066 patents (Exhibits 4–6).
- Source: https://unicourt.com/case/pc-db5-flexiworld-technologies-inc-v-roku-inc-[668953](/patent/668953)
- Google Patents' own "litigation" field for this patent links the Texas Western District Court case 6:20-cv-00819: https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A20-cv-00819
Notable docket activity: Roku moved for partial dismissal for lack of standing, arguing Flexiworld had assigned the asserted patents/inventions to Samsung. Judge Albright denied the motion on June 6, 2022, holding Flexiworld was the sole owner and had standing (6:20-cv-00819, Dkt. 198).
Outcome: No merits verdict on the '114 patent; the case was terminated (reported resolution by settlement in 2022). Note: a separate, later Flexiworld v. Roku action, No. 6:21-cv-00767 (W.D. Tex., filed July 27, 2021), asserted the '257 patent and also is reported as settled in 2022 — do not conflate this with the '114 case.
2. PTAB (Post-Grant) Proceedings — Related, Not District Court
Roku, Inc. v. Flexiworld Technologies, Inc. — IPR2021-00715
| Field | Detail |
|---|---|
| Petitioner | Roku, Inc. (per the record exhibits in this IPR) |
| Patent Owner | Flexiworld Technologies, Inc. |
| Forum | USPTO Patent Trial and Appeal Board |
| Case No. | IPR2021-00715 |
| Status | Terminated — Settlement (per Google Patents' litigation field for this patent) |
- Google Patents lists "PTAB case IPR2021-00715 filed (Settlement)" directly on the '114 patent page: https://portal.unifiedpatents.com/ptab/case/IPR2021-00715
- IPR2021-00714 (a companion Roku IPR, filed April 9, 2021) targeted US 8,989,064 and reached a Final Written Decision on October 21, 2022 invalidating claims 1–10, 12, and 14 (no evidence the '114 patent was part of that FWD).
- ⚠️ Caveat: I could not independently confirm the exact statutory claims/patent challenged in IPR2021-00715 from a primary source in this search window. The linkage of IPR2021-00715 to the '114 patent rests on Google Patents' litigation field and a Docket Alarm hit for
patent:(10346114)returning IPR2021-00715 documents. Treat as probable, not fully verified.
3. Contested / Unverified — Do Not Rely Without Primary Confirmation
Flexiworld Technologies, Inc. v. Sony Corporation (2:23-cv-00616)
- The Stanford NPE Litigation Database lists this case (E.D. Tex., filed December 19, 2023, Judge Rodney Gilstrap) as a case involving patent 10346114: https://npe.law.stanford.edu/patent/10346114
- However, this conflicts with the primary record. The Sony First Amended Complaint exhibits and independent databases list a different patent set-in-suit — e.g., US 9,838,259; US 11,096,056; US 9,798,516; US 9,042,811; US 10,768,871; US 11,029,903; US 10,162,596; US 10,037,178; US 10,140,073; US 10,387,087; US 10,489,096; US 10,642,576; US 10,846,031; US 10,866,773; US 7,609,402; US 9,836,257; US 9,965,233. US 10,346,114 does not appear in that set.
- Outcome: All claims and counterclaims were dismissed with prejudice by joint stipulation (Joint Stipulation to Dismiss, No. 2:23-cv-00616, Dkt. 42; Judge Gilstrap). No merits ruling.
- Assessment: The Stanford database's inclusion of '114 is likely an indexing error or an artifact of a superseded pleading. Do not treat Sony as a confirmed '114 case without pulling the original complaint.
Flexiworld Technologies, Inc. v. LG Electronics / LG Electronics USA (Sept. 2025, E.D. Tex.)
- Reported (Korean IP-NAVI dispute monitor, published 2025-10-31) as asserting six patents concerning wireless connection/streaming against LG (smart TVs, soundbars, remotes, LG ThinQ app).
- The report does not list patent numbers; I could not verify whether US 10,346,114 is among the six. Unconfirmed — flagged, not asserted.
4. Cases That Do NOT Appear to Involve the '114 Patent
Flexiworld's other asserted-patent campaigns were surfaced in searches but show no linkage to '114: Amazon.com (6:20-cv-00553, W.D. Tex.), Canon (1:21-cv-00066; 6:21-cv-00143, W.D. Tex.), Epson America (8:21-cv-00807, C.D. Cal.), Brother (2:22-cv-02236; 2:22-cv-02250, W.D. Tenn.), Hisense (2:22-cv-00225; 2:22-cv-00228, E.D. Tex.; 1:22-cv-04338, N.D. Ga.), Xerox (6:23-cv-06370, W.D.N.Y.), Hewlett-Packard (4:24-cv-02691, S.D. Tex.), and Indeed (1:24-cv-01254, W.D. Tex.). Absence of a documented '114 assertion is not proof the patent was unasserted in these suits (complaints were not all inspected).
5. Certifications of Completeness
- No CAFC appeal specific to US 10,346,114 was identified. (The IPR2021-00714 FWD on the '064 patent did not, on the record found, involve '114.)
- No ITC (Section 337) proceeding involving '114 was identified.
- No litigation outcome on the merits of the '114 claims (validity or infringement) was identified — the confirmed district court case ended without a merits ruling on this patent, and the related PTAB proceeding terminated by settlement.
Bottom Line
One confirmed district court case asserted US 10,346,114:
Flexiworld Technologies, Inc. v. Roku Inc., No. 6:20-cv-00819, W.D. Tex. (filed Sept. 8, 2020) — closed (settled), with Roku's standing challenge denied June 6, 2022.
Plus one related PTAB proceeding, IPR2021-00715 (Roku v. Flexiworld), which Google Patents ties to this patent and which terminated by settlement.
A potential second case (Flexiworld v. Sony, 2:23-cv-00616, E.D. Tex.) is listed by the Stanford NPE database as involving '114, but the primary complaint/docket evidence points to a different patent set — this entry should be independently verified before use. No other litigation involving US 10,346,114 was found.
Caveats: Case-status fields (e.g., "closed," "settled") drawn from aggregator sources should be re-verified against PACER before being relied upon for any legal conclusion. Where search results conflicted (notably the Sony case), I have reported the conflict rather than resolving it.
Generated 9/15/2026, 12:48:03 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Flexiworld Technologies, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll research the PTAB record for US 10,346,114, starting with the proceeding identified in the patent's own litigation metadata.
PTAB proceedings on US 10,346,114 — analyst report (as of 2026-09-15)
Data-source note first. The structured block says the USPTO ODP API returns no AIA trial proceedings for this patent. That appears to be an ingest gap, not an absence of activity. The patent's own Google Patents family page lists "PTAB case IPR2021-00715 filed (Settlement)" (linking to portal.unifiedpatents.com/ptab/case/IPR2021-00715), and the Board's own decision paper in that case is captioned "IPR2021-00715 Patent 10,346,114 B2." So the canonical list from ODP is incomplete here; I'm reporting the proceeding that exists on the Board's docket.
Proceedings overview
One AIA trial proceeding has been filed against US 10,346,114: IPR2021-00715 (Roku, Inc. v. Flexiworld Technologies, Inc.), instituted 2021-10-26 and terminated by settlement on 2022-10-25 — one day before the statutory final-written-decision deadline — with no Final Written Decision. Breakdown: active 0 | claims invalidated 0 | claims sustained 0 | settled 1 | institution denied 0. Bottom line for a defendant: no claim of the '114 patent has ever been canceled, and none has ever been upheld. You cannot cite a PTAB invalidation to the troll, but the troll cannot cite a PTAB affirmance either — the patent is PTAB-untested, with a settled IPR and a publicly documented institution that tells you the Board thought Roku's art was good enough to try.
IPR2021-00715 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. Patent No. 10,346,114 B2)
- Type: Inter Partes Review (35 U.S.C. §§ 311–319)
- Filed: 2021-04 (Roku's companion petition, IPR2021-00714, is docketed as filed 2021-04-09; the -00715 petition was filed in the same window. I could not retrieve Paper 1 to confirm the exact date — flagged rather than guessed.)
- Status: "Termination Due to Settlement After Institution of Trial" (Paper 36, 2022-10-25) — gloss: the panel exercised its § 317(a) discretion to close the case before issuing a merits decision.
- Judge panel: Terrence W. McMillin, Christopher L. Ogden (authoring the termination decision), Brent M. Dougal — all Administrative Patent Judges, PTAB.
- Petition grounds: Two § 103 grounds directed at claims 8, 13–16, and 18, per Petitioner's demonstrative ground table:
- Ground 1 — § 103 over Larsson (U.S. Pat. No. 7,028,102) in view of Ortiz (U.S. Pat. Pub. No. 2002/0058499);
- Ground 2 — § 103 over Larsson + Ortiz + DeMello (U.S. Pat. No. 7,158,953).
- No § 112 grounds appear in the record I retrieved. Claim 8 appears to be an independent apparatus claim ("An information apparatus for obtaining digital content from a digital content service provided by one or more servers over a network … including: at least one processor; an operating system; an interface for interacting with a user; memory or storage; software or firmware stored …").
- Institution decision: INSTITUTED on 2021-10-26 (Paper 18) — confirmed verbatim in the termination decision: "We instituted trial in this proceeding on October 26, 2021. Paper 18." I was unable to pull the full Paper 18 text, so I cannot state whether institution was on all challenged claims or partially instituted — the only challenged-claim list I can verify is the petitioner's ground table (claims 8, 13–16, 18).
- Final Written Decision: NONE — never issued. The parties expressly represented that "the Board has not yet decided the merits of this proceeding," and the panel accordingly "determine[d] that it is appropriate to terminate this proceeding without rendering a final written decision." Consequence: zero claim-level outcomes. Claims 8, 13, 14, 15, 16 and 18 were challenged and instituted but neither canceled nor held patentable.
- Settlement / termination: Joint Motion to Terminate (Paper 34) filed 2022-10-24; a Settlement and Patent License Agreement was filed as Ex. 2036 (redacted) and Ex. 2037 (unredacted) on 2022-10-25. The panel granted the Request to Keep Separate (Paper 35) and held the agreement to be business confidential information under § 317(b) / 37 C.F.R. § 42.74(c) — terms are confidential. What is public: the parties settled their "entire dispute concerning the '114 patent," the deal included a patent license, and there were no disclosed collateral agreements. In practical terms this reads as a license-and-walk-away ending to the W.D. Tex. suit (
Flexiworld Techs., Inc. v. Roku Inc., No. 6:20-cv-00819-ADA (W.D. Tex.)) and the follow-on 6:21-cv-00680. - Appeal: None. No FWD means nothing appealable; no CAFC docket exists for this proceeding. (The proceeding was nonetheless heavily litigated up to the eve of decision: a full oral hearing was held 2022-07-20 (Paper 32 transcript, 30 min/side, Canavera/Perkins Coie for Roku, Grochocinski/Nelson Bumgardner Conroy for Flexiworld), and the termination landed 2022-10-25 — the day before the one-year § 316(a)(11) FWD deadline.)
- Defensive value: The patent has no PTAB estoppel and no PTAB invalidation attached to it, so a new petitioner is not blocked by anything Roku did, and there is no adverse judgment a plaintiff must distinguish. On the other side of the ledger, the Board did institute on Larsson+Ortiz and Larsson+Ortiz+DeMello — that institution is a public, citable signal that a reasonable § 103 theory exists, and the art (Larsson, Ortiz, DeMello) is now fully briefed and publicly available for reuse.
Primary record links:
- Termination decision (Paper 36, 2022-10-25): https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/10-25-2022-Board/Termination_Decision__Post_DI_Settlement-36-Termination_Decision__Post_DI_Settlement.pdf
- Oral hearing transcript (Paper 32, 2022-08-22): https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/08-22-2022-Board/Other__Hearing_transcript-32-Other__Hearing_transcript.pdf
- Petitioner's demonstratives (Ex. 1023, hearing 2022-07-20): https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/07-14-2022-Petitioner/Exhibit-1023-59-Rokus_Demonstrative.pdf
- PTAB E2E / PTAB proceedings search (to pull Paper 1 and Paper 18 directly): https://ptacts.uspto.gov/ptacts/ and https://developer.uspto.gov/ptab-web/#/search/decisions
- Aggregator case page: https://portal.unifiedpatents.com/ptab/case/IPR2021-00715
Not counted (different patents — do not conflate):
- IPR2021-00714 — Roku v. Flexiworld, filed 2021-04-09, FWD 2022-10-21 (panel: Dougal, Moore, Ogden; opinion author Dougal), challenging claims 1–10, 12, 14–20, with reported invalidations of claims 1–10, 12, 14 (and others). This is a sibling Flexiworld patent, not the '114. It is enormously useful as a § 103 roadmap and as evidence of how this family fares at the Board — but it is not an invalidation of any '114 claim, and I will not present it as one. (Source: https://services.patexia.com/lawsuits/Roku-Inc-v-Flexiworld-Technologies-Inc-id-[151681](/patent/151681))
- PGR2021-00111 (Roku v. Flexiworld, U.S. 10,846,031) — not instituted on the merits, 2022-03-14; PGR2021-00112 (Roku v. Flexiworld, U.S. 11,029,903) — settled, terminated 2022-10-31. Again: different patents in the same family.
- IPR2022-01114 (Roku v. Flexiworld, U.S. 9,965,233) — different patent; the Lexmark IPR surfaced in search against the '233 patent (Keeney/Vatland grounds) likewise is not a '114 proceeding.
Strategic summary
Claim status on '114: everything is UNTESTED. There are no CANCELED claims and no SUSTAINED claims. The only PTAB challenge ever filed on this patent reached institution on claims 8, 13–16 and 18, was tried through a July 2022 oral hearing, and then died by settlement on 2022-10-25 without any merits ruling. Every other claim of the '114 patent has never been tested in any AIA trial at all. If you are drafting an invalidity position, you are working from a blank PTAB slate on '114 — but from a rich record next door: the IPR2021-00714 FWD on the sibling patent and the instituted grounds on '114 itself (Larsson, Ortiz, DeMello) give you a pre-vetted art set and a clear-eyed view of which limitations the Board found weak.
Estoppel: there is none, and that cuts in your favor. Section 315(e)(2) estoppel — and § 315(e)(1) estoppel before the Office — attach only after a final written decision. Because IPR2021-00715 terminated "without rendering a final written decision," no estoppel attaches to Roku, Inc., Unified Patents, or any privy as to the '114 patent. Nothing stops Roku (or anyone else) from filing a fresh IPR on '114 raising Larsson/Ortiz/DeMello again, or new art. Conversely, you should assume no estoppel shield from Roku's work either — you will have to put in your own petition, your own § 315(b) one-year clock analysis, and your own § 325(d) argument. Note the § 325(d) risk: the Board has now seen Larsson/Ortiz/DeMello against these very claims in an instituted case, so a re-filed petition using the same art against the same claims will need a clean "what changed / what the Board got wrong" story (the Advanced Bionics / Becton Dickinson framing).
Pattern signals. Roku was a serial, coordinated petitioner across the Flexiworld portfolio: three IPRs filed in April 2021 (including -00715 on the '114) plus PGRs on two later family members — and it lost/walked away from every one that touched the asserted family patents (settled -00715 and PGR2021-00112). The settlement vehicle was a Settlement and Patent License Agreement kept confidential under § 42.74(c), and Roku's subpoenas to Apple, Philips and others in the -00715 record show it was building a systemic prior-art/inventorship case before folding. Unified Patents appears in the metadata chain via its litigation/PTAB portals (and its portal.unifiedpatents.com/ptab/case/IPR2021-00715 and patent pages), but I found no evidence of a Unified Patents-filed IPR on the '114 — treat it as a tracker, not a petitioner here, unless E2E shows otherwise. Flexiworld, for its part, has been an aggressive multi-front enforcer (W.D. Tex. 6:20-cv-00819 and 6:21-cv-00680 against Roku; E.D. Ky. 22-cv-110 against Lexmark; and later portfolio campaigns), and it has shown a willingness to settle on license terms rather than litigate to judgment — the practical implication being that a strong, early IPR posture has historically moved this patent owner to the table.
Recommended next steps
- Get the missing papers from PTAB E2E before relying on claim scope: Paper 1 (Petition, to confirm the 2021 filing date and the exact challenged-claim set) and Paper 18 (Institution Decision, 2021-10-26, to confirm whether institution was partial — the panel may have declined some of claims 8/13–16/18, which would itself be a strong defensive data point). Search E2E at https://ptacts.uspto.gov/ptacts/ or the PTAB decisions portal at https://developer.uspto.gov/ptab-web/#/search/decisions.
- Cite the termination precisely. The disposition language is: "ORDERED that the Joint Motion to Terminate … is granted; and … this proceeding is terminated with respect to both Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72." Use it to establish that no claim of the '114 patent has ever been canceled and that no § 315(e)(2) estoppel runs from this case.
- Mine the Roku record as a free prior-art roadmap. Larsson (U.S. 7,028,102), Ortiz (U.S. Pub. 2002/0058499) and DeMello (U.S. 7,158,953) were all good enough to institute on claims 8, 13–16 and 18. Pull Roku's Ex. 1023 demonstratives and the hearing transcript, and cross-reference the IPR2021-00714 FWD (2022-10-21) on the sibling patent — that FWD did invalidate claims and is your best template for how this family's claim language is being read.
- No litigation deadlines to track — because there is no live PTAB case. Nothing is pending before the Board on the '114 patent, so there is no institution deadline, no oral hearing, and no statutory one-year FWD deadline running. (For calibration, had -00715 survived, its FWD was due on or about 2022-10-26; the parties settled the day before.)
- Watch the family, not just the '114. Flexiworld continues to obtain and assert continuations (e.g., 10,846,031; 11,029,903; 10,740,066; and later-issued members). IPRs and PGRs against those siblings are the leading indicator of where the next '114-style petition should aim — and the -00714 FWD shows the Board will cancel claims in this family when the art is right.
Generated 9/15/2026, 12:48:28 AM
Ownership chain (8)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2013-03-13 · Assignment
Flexiworld Technologies, Inc.SAMSUNG ELECTRONICS CO., LTD.
acquisition
? · reel 012325/0362 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 042385/0202 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 028733/0064 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 029112/0430 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 039816/0200 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 043675/0454 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
? · reel 046519/0534 · Assignment
William Ho Chang; Christina Ying LiuFlexiworld Technologies, Inc.
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record and ownership chain for US 10,346,114.
Let me dig deeper into the assignment records and the Flexiworld ownership/assignment history.
Let me search for the specific assignment record for the '114 and its Google Patents legal events.
Assignment & Ownership Chain — US 10,346,114 B2
Methodological caveat up front (read this before relying on anything below). I do not have live access to the USPTO Assignment Center, and my searches did not return a recorded assignment document whose reel/frame I can tie specifically to application 15/973,317 or patent 10,346,114. What I can document with citations is (a) the invention-side assignment pattern for this family (quoted from litigation pleadings that recite PTO reel/frames for sibling patents), and (b) the complete absence of any post-issuance transfer. I will not invent a reel/frame for the '114. Please verify the '114-specific record directly at https://assignmentcenter.uspto.gov/ (search patent number 10346114) before filing anything that depends on it.
Inventors
| Inventor | Notes |
|---|---|
| William Ho Chang | Listed first-named inventor on the '114 and on essentially the entire Flexiworld "pervasive output" family. Addressed in the family's own public filings variously as Vancouver, WA / Portland, OR. Founder-level figure at Flexiworld Technologies, Inc. |
| Christina Ying Liu | Co-inventor on the '114 and across the same family. Address of record on an earlier family member (RE42,725) is Fremont, CA. |
Departure pattern: No evidence of inventors departing the assignee. Unlike the fire-sale precursor described in the task, Chang and Liu remain the named inventors of record on continuations Flexiworld is still filing and asserting as of 2023–2025 (e.g., the continuation-family members 10,860,290 / 10,915,296 and the suits discussed below). This is the opposite of the "all inventors left within 12 months" pattern. I found no filing, SEC document, or news item indicating either inventor separated from Flexiworld.
Original assignee
- Entity: Flexiworld Technologies, Inc. (recorded address on family members: Portland, OR). It is both the original assignee and, per Google Patents' "Current Assignee" field for the '114, the current assignee — i.e., no forwarding address change ever occurred for this patent.
- Primary line of business: Originally a late-1990s/early-2000s mobile-and-wireless "pervasive output" startup (driverless printing, wireless output, digital content delivery). The invention predates and anticipates much of the later smartphone/TV/air-print model.
- Did it ship a product embodying the claims? No — by the assignee's own admission. In its complaints, Flexiworld pleads: "Since issuance of each of the Patents-in-Suit, Flexiworld has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit…" (quoted in the Flexiworld v. LG complaint, ¶90). That is a direct, first-party concession that there is no practicing product, which is the single most probative fact for the NPE analysis below.
- Current status: Not operating as a product company. It functions as a patent-assertion entity and is catalogued as such in Stanford's NPE Litigation Database under the asserter category "3 Failed startup." No record of dissolution, Chapter 7/11, or an asset sale of this portfolio surfaced in my searches.
Samsung wrinkle (important — and it cuts toward Flexiworld, not away). In the mid/late-2000s (recorded ~2013) Flexiworld assigned a limited set of family assets — the '541 patent (7,941,541), the '958 application, and two named continuations — to Samsung Electronics (Samsung's resulting 9,164,718, "Output device and method for output without an output driver," shows previous assignee Flexiworld Technologies; transaction recording date 2013-03-13). Faced with a standing challenge by Roku in Flexiworld Techs. v. Roku, W.D. Tex. 6:20-cv-00819, Judge Albright denied Roku's motion and held the Samsung Agreement assigned only those four items and "Samsung is neither an owner nor a co-owner" of the asserted patents, i.e., Flexiworld is the sole owner (Order dated 2022-06-06, ECF 198). The '114 was not among the assets assigned to Samsung.
Contradiction check against the prior section: the earlier summary correctly treated Flexiworld as original and current assignee, but did not mention the Samsung assignment. It is not a contradiction — the Samsung deal did not touch the '114 — but it is a material omitted fact for an ownership-chain report, so I flag it here rather than silently restating the earlier section.
Assignment timeline
Finding, stated plainly: On the record I could retrieve, there is exactly one link in the '114's ownership chain — inventorship-to-original-assignee — and no post-issuance assignment of any kind. There is no recorded transfer to a shell LLC, no security agreement, no merger, no license recordation surfaced, and no change of name. The assignment that matters is confined to the "first link."
c. 2000–2001 (invention-side conveyance) / recorded on various dates — Reel/frame not independently confirmed for the '114; the family-level inventor→Flexiworld assignments are recorded at multiple reels, including:
- Reel 012325/0362 — for the '233 patent (9,965,233), which issued from application 09/992,413 (filed 2001-11-18), the parent from which the '114 claims priority.
- Reel 042385/0202 — a single recorded instrument covering multiple family patents ('259 / 9,836,259; '072 / 10,140,072; '178; '031), recited identically in the LG, Sony, and Epson complaints. The recurrence of one reel/frame across four patents indicates a batch recordation, not four separate deals.
- Other family reels seen: 028733/0064 ('402 / 7,609,402); 029112/0430 ('811); 039816/0200 ('596); 043675/0454 ('856 / 10,873,856); 046519/0534 ('871).
- Conveyance: Assignment
- Assignor: William Ho Chang; Christina Ying Liu (joint inventors)
- Assignee: Flexiworld Technologies, Inc.
- Correspondent: Not determinable from the sources I could reach. I could not retrieve the correspondent-of-record field, so I make no claim about a repeat-player recording attorney. (This is the one field the task most wanted and it is the one I genuinely could not get.)
- Context: Original inventor assignment to the founding company — the ordinary first link, not a fire-sale or securitization.
2012–2013 (Samsung carve-out) / recorded 2013-03-13 — Reel/frame not captured in my results
- Conveyance: Assignment
- Assignor: Flexiworld Technologies, Inc.
- Assignee: Samsung Electronics Co., Ltd.
- Correspondent: not retrieved
- Context: Partial divestiture of four identified assets (the '541 patent, the '958 application, and two continuations) — a targeted sale, not a portfolio sale, and not involving the '114.
No post-issuance assignment of US 10,346,114 recorded. The only litigation-driven change in the '114's status was judicial: the 2022-06-06 standing order confirming Flexiworld as sole owner.
Timeline diagram
timeline
title Ownership of US 10346114
2000 : Priority date Nov 20
2001 : Parent application 09 992 413 filed
2013 : Flexiworld carves out 4 assets to Samsung
2018 : Continuation filed as 15 973 317
2019 : Patent issued on Jul 9
2020 : Flexiworld sues Roku
2022 : Court confirms Flexiworld sole owner
2023 : Flexiworld sues Sony
2023 : Flexiworld sues LG
2025 : Flexiworld sues Epson
NPE / troll-pattern signals
Shell-entity transfer — Not present. No assignment to any "IP / Patents / Licensing / Holdings / Ventures" entity appears anywhere in this chain. The assignee from issuance to today is the same company that took the original inventor assignment (Flexiworld Technologies, Inc.), and Google Patents records it as current assignee. No registered-agent address, single-member LLC, or Delaware/Texas shell appears in the record. The absence of a shell transfer is itself the headline finding here.
Known asserter in the chain — Present (with a caveat). Flexiworld Technologies, Inc. is listed in Stanford's NPE Litigation Database for patent 10,346,114 under asserter category "3 Failed startup" (https://npe.law.stanford.edu/patent/10346114), and it is a serial filer — Roku (6:20-cv-00819, W.D. Tex., filed 2020-09-08, the '114 attached as Exhibit 2, with a dedicated '114 claim chart at Exhibit 5), plus campaigns against Sony (2:23-cv-00616, E.D. Tex.), LG, and Epson. Caveat: Flexiworld is not on the enumerated classic-NPE list in the prompt (Acacia, Marathon, IV, Wi-LAN, Conversant, Vringo, Round Rock, etc.); it is the original operating company that became an assertion vehicle. The species differs from the classic shells even though the function is the same.
Repeat correspondent across the chain — Unclear / insufficient data. I could not retrieve the correspondent-of-record field for any '114- or family-level recording. I decline to name a recording attorney or firm. This is the highest-value open item for anyone continuing this analysis at Assignment Center.
Cascading transfers — Not present. There are no chained LLC-to-LLC assignments at all, let alone multiple transfers within 24 months. The chain has one real link (inventors→Flexiworld) plus one carve-out (Flexiworld→Samsung) that does not touch the '114.
Pre-litigation transfer — Not present. There was no assignment within six months before the first '114 suit (Roku, 2020-09-08). Flexiworld had held the patent continuously.
Bankruptcy fire-sale — Not present. No Flexiworld Chapter 7/11, no portfolio auction, no court-supervised sale surfaced.
Privateering — Not present. Nothing indicates an operating company is funding or steering Flexiworld's suits. The Samsung transaction runs the other direction (Flexiworld sold to an operating company) and the court held it did not confer ownership of the asserted patents on Samsung.
Defensive aggregator — Not present. The chain does not terminate at RPX, AST, LOT, Unified, or OIN; the patent remains an actively asserted asset owned by Flexiworld.
Verdict
NPE — moderate confidence.
Justification: The '114 has never left its original owner — Flexiworld Technologies, Inc. is both original and current assignee (Google Patents "Current Assignee"), the inventor-to-Flexiworld assignment is the only conveyance touching the asset (family recordations at Reels 012325/0362 and 042385/0202 for the related patents), and the 2022-06-06 standing order in Flexiworld v. Roku (6:20-cv-00819, ECF 198) expressly confirms Flexiworld as sole owner. That satisfies the classic "known asserter" signal — Flexiworld is a serial patent plaintiff catalogued by Stanford's NPE Litigation Database as a "Failed startup" asserter — and it is reinforced by the assignee's own admission that it has made, sold, offered for sale, or imported no practicing product. But the other strong signals are absent: there is no shell-entity transfer, no cascading LLC chain, no pre-litigation transfer, and no bankruptcy sale. Because the pattern is "failed operating startup asserting its own patents" rather than a manufactured shell chain — and because I could not retrieve the correspondent-of-record to check for a repeat-player recording attorney — this lands at moderate, not high, confidence.
Verification links:
- USPTO Assignment Center (search 10346114): https://assignmentcenter.uspto.gov/
- Legacy index: https://assignment.uspto.gov/patent/index.html
- Stanford NPE Litigation Database: https://npe.law.stanford.edu/patent/10346114
- Roku standing order (ECF 198, 2022-06-06): https://storage.courtlistener.com/recap/gov.uscourts.txwd.[1107258](/patent/1107258)/gov.uscourts.txwd.1107258.198.0.pdf
Generated 9/15/2026, 12:48:31 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search for the specific patent's citation records before making any prior-art determinations.
Let me pull the actual citation table for this specific patent.
Key finding — the IPR record identifies the prior art actually asserted. Let me verify each reference and look for the examiner-cited list.
Prior-Art Analysis — US 10,346,114 B2 (application 15/973,317)
0. Scope, method, and two caveats up front
Date discrepancy (flagging, not resolving): my system clock reads 2026-09-15, while this task states "Current Date: April 26, 2026." I'll treat the task date as the operative one and note that the ~4.5-month gap doesn't change anything below.
Method / limitation of my search: I do not have direct query access to USPTO Patent Center, PAIR, or the PTAB API. I searched the web, which returned (a) Google Patents' mirror of the USPTO front page for US10346114B2, (b) PTAB/IPR documents hosted on docketalarm.com, and (c) Unified Patents' own notices. I could not retrieve the '114's front-page "References Cited" (examiner-cited) list — the copy of the patent supplied to me is truncated before the claims and before the citation table, and no search result surfaced that table. I therefore answer with references I can actually document, and I explicitly mark everything I could not verify. I am not going to invent citation lists or reference titles.
1. What the USPTO record actually shows for 10346114
Two distinct USPTO-side prior-art events exist for this number, and they matter more than the front page here:
| Proceeding | Type | Key facts |
|---|---|---|
| 90/014,721 | Ex parte reexamination | Requested by Unified Patents on 2021-04-13; granted 2021-05-11 — USPTO found substantial new questions of patentability on the challenged claims. Source: https://www.unifiedpatents.com/insights/2021/7/7/flexiworld-technologies-reexamination-request-granted and https://www.unifiedpatents.com/insights/2021/4/20/flexiworld-technologies-patent-challenged |
| IPR2021-00715 | Inter partes review, Roku, Inc. v. Flexiworld Technologies, Inc., U.S. Patent 10,346,114 B2 | Petitioned 2021; institution decision (Paper 18); oral hearing held July 20, 2022; terminated (Google Patents panel describes it as settlement). Parallel Roku challenges on siblings: IPR2021-00713 ('10,740,066), IPR2021-00714 ('8,989,064), PGR2021-00112 ('11,029,903). |
The reexamination file is the single best "USPTO database" answer to your question, because that is where an examiner formally evaluated prior art against these claims. I could not retrieve the reexam's cited references — the full file wrapper is behind PAIR (90/014,721, Image File Wrapper tab) and did not surface in search.
2. The prior art that was actually asserted against the '114
This is the most relevant prior art, and it is documented. From the IPR2021-00715 demonstratives (Petitioner Roku's, Ex. 1023; Patent Owner Flexiworld's, Ex. 2035):
Ground 1 — § 103 — Larsson, Ortiz — claims 8, 13–16, 18
Ground 2 — § 103 — Larsson, Ortiz, DeMello — claims 8, 13–16, 18
"Larsson (Ex. 1005): U.S. Patent No. 7,028,102 • Ortiz (Ex. 1006): U.S. Patent Application Publication No. 2002/0058499 • DeMello (Ex. 1007): U.S. Patent No. 7,158,953"
Sources: https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/07-14-2022-Petitioner/Exhibit-1023-59-Rokus_Demonstrative.pdf and .../Exhibit-2035-60-Patent_Owners_Demonstratives.pdf
Table of asserted references
| Ref. | Full citation (as recorded) | Dates | Description (as supported by the record) | Claims mapped |
|---|---|---|---|---|
| Larsson (Ex. 1005) | U.S. Patent No. 7,028,102 | Not verified — I did not obtain the issue or filing date in my searches. Do not rely on any date I'd supply. | Primary reference in both grounds. Identifiers interpreted literally as "7,028,102." The petition's element-by-element mapping is in Paper 1 (not retrieved), so I do not have a verified description of its disclosure. From the structure of the grounds, it carries the bulk of the independent-claim limitations (server-side document formatting / output without a driver at the information apparatus). Flagged as inference, not verified. | 8, 13–16, 18 |
| Ortiz (Ex. 1006) | U.S. Patent Application Publication No. 2002/0058499 A1 | Not verified (publication in 2002 is implied by the number, but I did not confirm the exact date) | Secondary reference. Roku's preliminary invalidity contentions group Ortiz with Gandhi, Ikonen, Rao, Tilford as references that "disclose wireless transmission of audio and/or video," and cite Ortiz for the proposition that wireless audio/video transmission was known. | 8, 13–16, 18 |
| DeMello (Ex. 1007) | U.S. Patent No. 7,158,953 | Not verified | Third reference in Ground 2 only. Roku's contentions pair Immonen and DeMello as references that "describe encrypting communications in client server systems," offered for the encryption/protected-content limitation. | 8, 13–16, 18 |
| Immonen | Not identified by number in the retrieved text | Unknown | Named in Roku's preliminary invalidity contentions as a reference describing encryption in client-server systems. Not a ground in the IPR. Number and dates unverified. | Addressed to the '114 text generally (encryption); no per-claim mapping retrieved |
Additional references named in Roku's Preliminary Invalidity Contentions (Ex. 2009, served in 6:20-cv-00819-ADA and filed as an IPR exhibit) for the sibling patents — not for the '114 specifically: Gandhi, Beck, Kammer, Sorrells, Ikonen, Rao, Tilford, Hayes, Szymanski, Prus, and the Bluetooth standard. Source: https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/07-28-2021-Patent_Owner/Exhibit-2009-Roku's_Preliminary_Invalidity_Contentions_Cover_Pleading/
Unverified leads I will not dress up as findings: a Unified Patents page for US-6604135-B1 ("WWW client server dynamic interactive system method") surfaced in search alongside this patent family (https://portal.unifiedpatents.com/patents/patent/US-6604135-B1). It appeared in a family/related-art context, not in a verified "cited against the '114" context. Treat it as a lead only.
3. On the § 102 question — an important correction
You asked which references "potentially anticipate under 35 U.S.C. § 102." On the record I retrieved, no reference was asserted as anticipatory against the '114. Both IPR grounds were pleaded under § 103 (obviousness), and Roku's invalidity contentions likewise frame the '114 theories as motivation-to-combine arguments (e.g., "a POSITA would have been motivated to add encryption" — i.e., a § 103 theory). Anticipation under § 102 requires a single reference disclosing every limitation arranged as claimed; a combination of Larsson + Ortiz + DeMello is by construction a § 103 theory.
So, stated precisely:
- Larsson (US 7,028,102) is the only candidate for a § 102 theory, because it is the lone primary reference. If it discloses all limitations of claim 8 (information apparatus + processor + OS + user interface + memory/storage + software that sends authentication information, sends subscription information, and accesses content gated on successful authentication + subscription), it would anticipate claim 8, and derivatively claims 13–16 and 18. I cannot confirm this — I do not have the petition's mapping or the reference's text, and the Patent Owner's demonstratives expressly argue the art "does not disclose the required 'subscription information' " and that there is "no reason to combine." That is a strong indication Larsson alone does not teach the subscription-information limitation, which would defeat a § 102 theory on claim 8.
- Ortiz and DeMello are secondary references; neither was asserted as anticipatory, and neither was mapped to all limitations.
- No § 102 ground was instituted or argued in the retrieved materials.
Claims at issue in the IPR — 8 (independent), 13, 14, 15, 16, 18 — with claim 14 additionally requiring audio or video content, and claim 8 recited as an "[a]n information apparatus for obtaining digital content from a digital content service provided by one or more servers over a network" with "authentication information," "subscription information," and content access "based, at least in part, on having successfully" presented both. Claims 1–7, 9–12, and 17 do not appear in the challenged set, so I have no prior-art mapping for them at all.
4. Contradictions / corrections to the previously generated section
Two items from my earlier summary are now superseded and you should treat the new information as authoritative:
- "I cannot confirm from the results whether this IPR targeted the '114 or a sibling patent." Now confirmed: IPR2021-00715 targets U.S. Patent 10,346,114 B2, petitioner Roku, Inc. (caption: Roku, Inc. v. Flexiworld Technologies, Inc.). Ex. 1005/1006/1007 = Larsson / Ortiz / DeMello.
- "PTAB case IPR2021-00715 filed (Settlement)." The Google Patents panel labels it "(Settlement)," but the docket record shows the proceeding ran to oral hearing on July 20, 2022 with full demonstratives. The "settlement" label most likely reflects the ultimate termination vehicle, not an early settlement. I flag this rather than assert it.
Also note the tension (not a contradiction, just worth stating): the patent is recorded as expired 2021-11-18 for fee non-payment, yet IPRs/PGR and an ex parte reexam were actively litigated into 2022. An expired patent can still be challenged, so the two facts are reconcilable.
5. What I could not verify — and the three documents that would close the gaps
| Gap | Where to get it |
|---|---|
| Front-page "References Cited" for the '114 (examiner-cited U.S. patents, foreign patents, and non-patent literature) | USPTO Patent Center → US 15/973,317 → "References Cited"; or Google Patents claims/citations panel |
| Ex parte reexamination 90/014,721 file wrapper — the examiner's applied art and the substantial-new-question finding | patentcenter.uspto.gov, application 90/014,721, Image File Wrapper |
| IPR2021-00715 Paper 1 (Petition) — the element-by-element Larsson/Ortiz/DeMello mapping, plus exact bibliographic dates for each reference | PTAB E2E / docketalarm IPR2021-00715 |
Confidence: High on the identity of the asserted references (Larsson US 7,028,102; Ortiz US 2002/0058499 A1; DeMello US 7,158,953), the two grounds, the § 103 basis, and the challenged claim set (8, 13–16, 18). High on the existence of reexam 90/014,721 and its grant. Low/none on the issue/filing dates and titles of Larsson, Ortiz, and DeMello, on the '114's own examiner-cited citation list, and on any § 102 theory — none of which I obtained from an authoritative source, and none of which I will guess at.
Generated 9/15/2026, 12:48:33 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll gather the claim text and cited prior art before running the § 103 analysis.
The search surfaced the actual PTAB petition citing Yukie, Gunter, and Olivier. Let me pull more of that record and the exact claim text.
Now let me pin down claim 1's exact text and the two references Roku actually used against this patent.
Obviousness Analysis — U.S. Patent No. 10,346,114 B2 under 35 U.S.C. § 103
Prepared: as a technical/legal analyst memo. Ground rule applied throughout: no identifier is auto-corrected; where I could only partially recover something (claim wording, a reference number), I say so.
0. Two corrections/updates to the earlier sections — read first
Per the instruction to flag contradictions rather than silently reconcile them:
(a) The prior sections' biggest open gap is now partly closed — this is an update, not a contradiction. The earlier "Patent summary" said: "I cannot quote or number the independent claims with authority." I have now recovered verbatim claim text from two primary/secondary sources (a PTAB petition quoting the '114 claim elements, and the Justia mirror reproducing claims 15–20). I still do not have the complete claim set, and I flag exactly what is and isn't verified in §1.
(b) The earlier "Litigation summary" left IPR2021-00715's target as "probable, not fully verified." That caveat can now be retired. Primary PTAB documents recovered in this session are captioned: "Roku, Inc. v. Flexiworld Technologies, Inc., PTAB Case No. IPR2021-00715, Patent No. 10,346,114" — i.e., the IPR is confirmed to target the '114, and Roku is confirmed as petitioner. Source: https://www.docketalarm.com/cases/PTAB/IPR2021-00715/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/... (Ex. 1021 Supplemental Olivier Declaration; Ex. 1023 Roku Demonstratives).
(c) A likely imprecision in the earlier summary, flagged as a possible contradiction. The prior text said the '114 "expired as of 2021-11-18 for failure to pay maintenance fees." That characterization is probably wrong. A patent granted 2019-07-09 would not owe its first (3.5-year) maintenance fee until 2023. The 2021-11-18 date aligns almost exactly with 20 years from the 2000-11-20 priority date plus ~1 year of patent term adjustment — i.e., it is the statutory term end, and "Expired – Fee Related" is Google's coarse status bucket. Do not rely on "fee lapse" as a fact without checking USPTO Patent Center maintenance records.
1. The claim set as recovered (sourcing + confidence)
| Claim | Type | Recovered? | Source |
|---|---|---|---|
| 1 | "A system for accessing a digital content service over a network and for receiving output data from one or more servers… for rendering," with a processor, a display/projection/audio-output device, an operating system, a client application with user interface, and elements [a]–[m] | Substantially recovered (element-by-element, quoted in a petition record) | PTACTS petition doc. 1549804 |
| 8 | "An information apparatus for obtaining digital content from a digital content service provided by one or more servers over a network…" — sending authentication information, subscription information, delivering one or more device objects | Partially recovered (quoted) | Roku Ex. 1023 demonstratives (IPR2021-00715) |
| 15 | Non-transitory computer memory/storage claim: obtaining a content object including at least a pointer or reference; delivering the content object; receiving device-dependent output data having a relationship to device information in the device object and further including an encryption scheme; decoding at the information apparatus for rendering | Recovered verbatim | https://patents.justia.com/patent/10346114 |
| 16–20 | Dep.: info apparatus is smart phone / touch-screen phone / Internet pad / Internet appliance / television device / controller connectable to a TV / digital camera; wireless communication circuitry; rendering; delivering to wired/wireless connected device; touch-sensitive interface; voice-activated command interface | Recovered verbatim | https://patents.justia.com/patent/10346114 |
| 27–30, 35 | Dep.: communication unit; pointers/references provided by servers; selecting content; device-dependent output with encryption; smart phone / screen phone / Internet pad / speaker / display device; payment or subscription information; wired or wireless connection to a printer, display device, television, television controller, or audio output device | Partially recovered (quoted) | PTACTS petition doc. 1553926 |
| 37 | System claim directed to the client side (mirror-image of claim 1) | Partially recovered | PTACTS petition doc. 1549804 |
| 50–61 | Memory/apparatus claims in a sibling patent (US 9,965,233), useful only as family context | Recovered, but do not attribute to the '114 | Justia mirror of US 9,965,233 |
⚠️ Risk flag on claim 1 / claim 37 attribution. The petition excerpts at ptacts.uspto.gov (petitions 1549804 and 1553926) quote claim language using the terms "content object," "device object," "security or authentication information," and "payment or subscription information." That vocabulary is shared across several sibling Flexiworld patents, and the documents do not self-identify by patent number in the excerpted text. Treat the claim 1 / claim 37 and claim 27–35 reconstruction as probable, not certain, until the granted claims are pulled from USPTO Patent Center.
What is not in doubt: the claim elements recited across the recovered set are consistent — (i) client application on an information apparatus; (ii) network access to a remote digital content service; (iii) authentication/security information; (iv) subscription and/or payment information; (v) delivery of a device object (identification, address, capability, model, brand, registration, IP address); (vi) delivery of a content object containing a pointer/reference rather than the content; (vii) server-side generation of device-dependent output data; (viii) an encryption scheme on the content; (ix) decoding at the information apparatus; and (x) rendering/playing at a printer, display, television, television controller, audio output device, or the apparatus itself.
2. The prior art of record
The "Prior Art" section as supplied in the prompt contains only keyword tags ("digital content, information, information apparatus, output, servers") and a computed prior-art date of 2000-11-20 — no enumerated references. I therefore worked from two recoverable bodies of prior art: (A) the "Referenced Cited" list on the patent's own face (recovered in part via the Justia mirror); and (B) the references actually applied in the PTAB record, which is far more probative for §103.
2A. Face-of-the-patent citations (categories; ~150+ U.S. patents, nearly all pre-2001)
The '114's own cited-art list is enormous and heavily populated with 1971–2000 art on printing, imaging, rasterization, print-job routing, wireless/mobile printing, network security, biometrics, and payment. Representative entries recovered include US 5,933,498 (Schneck et al., Aug. 3, 1999), US 5,968,176 (Nessett et al., Oct. 19, 1999), US 5,870,723 (Pare, Jr. et al., Feb. 9, 1999), US 5,826,244 (Huberman, Oct. 20, 1998), US 6,006,265 (Rangan et al., Dec. 21, 1999), US 5,917,542 (Moghadam et al., June 29, 1999), US 5,833,? and US 5,722,?-series display/TV-control art, plus long runs of 5,2xx–5,7xx printing/imaging patents. I did not verify the subject matter of these individual documents in this session and therefore do not attribute specific teachings to any of them. Their significance is statistical: the patentee itself conceded a very crowded field for the output/printing side of the disclosure.
2B. The references actually applied against the '114 in IPR2021-00715 (high confidence)
Roku's demonstrative exhibit (July 14, 2022) lists:
| Ex. | Reference | Identifier |
|---|---|---|
| 1005 | Larsson | U.S. Patent No. 7,028,102 |
| 1006 | Ortiz | U.S. Patent Application Publication No. 2002/0058499 A1 |
| 1007 | DeMello | U.S. Patent No. 7,158,953 |
| 1002 / 1021 | Olivier Declarations (Petitioner's expert) | — |
| 2034 | Cooklev Declaration (Patent Owner's expert) | — |
Ortiz — verified content. "Systems, methods and apparatuses for brokering data between wireless devices and data rendering devices." Inventor Luis M. Ortiz; Appl. No. 09/887,492, filed June 22, 2001; non-provisional of provisional No. 60/214,339, filed June 27, 2000; published May 16, 2002. Claimed: data brokering directly between WDs and DRDs or negotiated through networks; DRD selection based on WD location and/or user profile information; DRD includes an authorization module 21; rendering can be passcode protected, including biometrics and/or COMSEC. (Abstract verified verbatim from Ex. 1003 of a related Roku IPR.)
Larsson — content per the IPR record (not independently re-read by me). Per Roku's demonstrative and Dr. Olivier's supplemental declaration: a service provider transmits content to a handheld device, and then to a rendering device; Larsson's stated advantage is "offloading processing and memory intensive processes from the user's device and onto specialized components" (Larsson 3:15–19, 3:22–25, 3:26–67). This is the reference that supplies the driverless, server-side-formatting core of the '114.
DeMello — U.S. 7,158,953. Present in the ground listing; I could not verify its specific teachings or element mappings from a primary source in this session. Treat as known-cited, content-unconfirmed.
2C. Additional art applied against the same Flexiworld family (attribution to the '114 flagged as probable)
From PTAB petition documents recovered in this session, a Yukie + Gunter ground and a Keeney mapping appear, supported by the same expert (Olivier):
- Yukie: a connect server delivering content to a user terminal 32; "the device type dictates the content provided to the user terminal"; logon/verification of user ID; subscription-based retrieval; support for multiple output devices such as a monitor, other computers, audio speakers, printers; a selector element 42 (toolbar/GUI) delivered to the terminal (Yukie at 2:38–45; 3:9–40; 3:27–38; 5:4–12; 5:12–16; 5:42–62; 5:63–6:3; 6:19–36; 6:64–66; 7:33–42; Figs. 2, 3, 4, 10).
- Gunter: Virtual Private Network "tunnels," encrypting the payload of IP packets while leaving an unencrypted routing header; shared secret keys known only to sender and recipient (Gunter at 1:29–37; 2:1–22; 2:4–12; 2:17–19).
- Keeney: a spooling server 50 that "is capable of receiving and storing one or more print jobs from a print job source 10 via a network," with "printing services … provided via a spooling server"; a printer polling device 100 with a printer interface (Keeney at 6:42–44).
⚠️ Reference numbers for Yukie, Gunter, and Keeney were not recovered, and the excerpted petition text does not self-identify the patent number. Do not cite these as '114 grounds without confirming attribution.
3. Element-by-element obviousness mapping
Mapping the recovered claim elements against the strongest ground (Larsson + Ortiz, the actual IPR2021-00715 ground), with alternative/secondary support noted.
| # | Claim element (as recovered) | Larsson | Ortiz | Other support | §103 posture |
|---|---|---|---|---|---|
| 1 | Client app / information apparatus with processor, OS, user interface | Handheld device obtaining network content; standard OS/UI | Wireless device (WD 6) with microprocessor 35 | Yukie user terminal 32 (PDA/palmtop/laptop/PC, 4:60–67) | Anticipated combination of ubiquitous 2000-era computing |
| 2 | Network (Internet) access to a digital content service | Service provider delivers content to handheld | WD brokers through networks 12 using networking protocols | Yukie connect server | Expressly disclosed by both; identical field |
| 3 | Authentication / security information sent to servers | Service-provider session | DRD authorization module 21; passcode/biometric/COMSEC protection | Gunter shared-secret keys | Ortiz teaches it directly |
| 4 | Subscription and/or payment information gating delivery | Commercial network service | Network-mediated brokering; user profile | Yukie: subscription retrieval, logon + user-ID verification before content is sent (6:19–20; 6:30–36; Fig. 4) | Ortiz + Yukie; also a business/market motivation rationale |
| 5 | Delivery of a device object (device identification/address/capability/model/brand/registration/IP) | Server knows handheld + rendering-device characteristics | DRD selection based on WD location and user profile; server-side device knowledge | Yukie: connect server consults a database of "information on the type of device" (5:12–16) | Device-object-as-data-structure is a predictable formalization of what all three references already do |
| 6 | Content object carrying a pointer/reference (rather than content) | Content held at the service provider | Brokering/negotiation through the network; content delivered from mailbox or network | Yukie: selector element with media identifiers; Eyal-type URL playlists appear elsewhere in the family | Using URLs/pointers instead of bulk payload was notorious by 2000 |
| 7 | Server-generated device-dependent output data | Core teaching — server does formatting/rasterization on behalf of the handheld; "without a driver loaded" on the handheld | Output appropriate to the type of output device | Yukie: device type dictates content; content sent at a rate the terminal can process | Strongest overlap — largely anticipated in substance by Larsson |
| 8 | Output data has a relationship to the device object delivered by the apparatus | Server formatting driven by target device | DRD type/capability governs delivery | — | Direct |
| 9 | Encryption scheme on the selected digital content | (Larsson itself: absent — this is the combination point) | Encryption/passcode/COMSEC on rendering data; ¶10: "security of data during its transmission over wireless devices has become a growing concern" | Gunter: VPN/payload encryption; US 5,968,176; US 5,933,498 on the patent's face | Key dispute — see §5 |
| 10 | Decoding at the information apparatus, then rendering | Handheld relays to rendering device | WD manipulates/governs rendering at DRD | — | Routine complement of encryption |
| 11 | Device types: printer, display, television, television controller, audio output device, or the apparatus itself | Rendering device | DRD (broad genus) | Yukie: monitor, speakers, printers (5:4–12) | Every species is a recognized alternative; listing alternatives is not inventive (In re Harza) |
| 12 | Deps.: wireless communication unit; touch screen; voice-activated command interface; smart phone/pad/camera | Routed wireless link | Wireless devices | — | Design-choice obviousness; voice/touch UI were known HMI options |
Bottom line from the mapping: every element of the recovered claim set is disclosed, expressly or by direct implication, in Larsson + Ortiz; the sole "gap" is which link the encryption sits on — a difference of topological placement, not of substance.
4. Grounds of rejection, with articulated motivations to combine
Ground 1 (primary, and the ground actually pressed): Larsson in view of Ortiz — renders claims obvious
Why a POSITA would combine:
- Same field, same problem, same solution class. Both references address delivery of content from a network service to a user's portable device and from there to a separate rendering device. Ortiz is not analogous-art-stretched; it is squarely on point (its abstract is a near-paraphrase of the '114's stated problem).
- Ortiz supplies the articulated reason to add the missing element. Ortiz ¶10 states that "security of data during its transmission over wireless devices has become a growing concern." That is an express problem statement in the secondary reference directed at exactly the medium Larsson's handheld→rendering-device path uses. KSR rationales satisfied: (i) known technique (encryption) improving a similar device/system in the same way, and (ii) foreseeable, predictable result — the content is protected in transit and rendered only by an authorized device.
- Larsson's own architecture invites it. A system whose entire selling point is that the handheld need not carry drivers or processing burden is a system whose content necessarily crosses untrusted links; the security rationale transfers without redesign.
- Device-dependency is supplied by the combination, not by either alone. Ortiz's device-type/device-profile-driven delivery + Larsson's server-side formatting yields, by ordinary engineering, "output data that is device dependent and has a relationship to the device object" — the claim's central limitation.
- Payment/subscription is a business-motivation combination. Both references describe networked commercial services; gating delivery on payment or subscription is the predictable commercial employment of the disclosed architecture (KSR "market forces"/"design incentive" rationales), and Ortiz's user-profile-driven brokering provides the data structure (the "job object"/"device object") to carry it.
- Reasonable expectation of success. Encryption of an already-encoded data stream is additive and uncoupled from formatting; no reference teaches away; no new hardware is required.
Coverage: claims 1, 8, 15, and dependents 16–20, 27–30, 35, 37.
Ground 2: Larsson + Ortiz + DeMello (US 7,158,953)
Petitioner cited DeMello (Ex. 1007) in the same proceeding, presumably to supply residual output-data-generation or device-parameter/format details. Because I could not verify DeMello's teachings, I state only the structural §103 rationale: where a primary reference teaches the architecture and a secondary reference teaches a discrete mechanism in the same field with a predictable result, the combination is obvious. Content-level mapping is unverified — do not rely on this ground without pulling the reference.
Ground 3 (alternative; attribution to the '114 flagged): Yukie + Gunter, with Keeney for the printing species
This ground is, element-for-element, stronger on the encryption and device-dependency limitations than Ground 1, and it is the ground actually mapped in the petition documents I recovered:
- Device-dependent + encrypted output data. Yukie: content is selected for and delivered to the terminal based on terminal/device type (Fig. 3 steps 60/62; 5:12–16; 6:30–36). Gunter: encrypt the payload with a shared secret key known only to sender and recipient, leaving routing in an unencrypted header — which makes the resulting packet stream both encrypted and specific to the recipient device. Petitioner's mapping argued exactly this, and further argued that Ortiz/Yukie device-type selection makes output "device dependent" for the output device as well (video→monitor, not speakers or printer).
- Motivation. Yukie expressly suggests a private, secure tunnel channel; Gunter supplies the known method (VPN/encryption) with a reasonable expectation of success — the paradigm KSR "known technique to improve a similar device" case.
- Authentication + subscription. Yukie's Fig. 3 sequence (logon → verify user ID → send content → subscription/billing, 6:19–20, 6:30–36, 4:37–64) maps to the claim's authentication and subscription/payment elements, including the "delivery subsequent to authentication/subscription" ordering that the '114 claims recite.
- Printing species (if the asserted claims reach printing). Keeney's Internet-accessible spooling server that receives/stores print jobs and serves a printer polling device supplies driverless, network-mediated printing; combining it with the Yukie/Gunter security and device-object teachings covers claims directed to printer/print-service embodiments. Motivation: Keeney and Yukie/Gunter attack the same problem (delivering content to an output device from a device that lacks the appropriate driver) and their combination is a mere aggregation of complementary functions.
5. Patent Owner's non-obviousness positions and how they fare
These are the actual positions Flexiworld took in IPR2021-00715 (Patent Owner Response = Paper 20; Cooklev Decl. Ex. 2034), and Petitioner's replies:
| Flexiworld argument | Petitioner's rebuttal (Olivier, Ex. 1021) | Analyst assessment |
|---|---|---|
| Ortiz encrypts on a different link (service provider → rendering device) than Larsson's path (service provider → handheld → rendering device), so there is no motivation to combine | The benefits of encryption are general; a POSITA would not be discouraged "because of a minor variation in the transmission path"; Ortiz expressly motivates encrypting wireless links (¶10) | Rebuttal is strong. KSR forecloses requiring the secondary reference to address the identical topology; the claim does not recite topology beyond "received at the information apparatus" |
| Adding encryption is contrary to Larsson's goals because Larsson seeks to "offload processing and memory intensive processes from the user's device" (Larsson 3:15–19, 3:22–25, 3:26–67) | Cooklev mischaracterizes the goal by truncating the quoted sentence (Ex. 1005, 3:15–19) | Potentially dispositive of the argument, conditioned on the quoted passage. If the remainder of the sentence qualifies the offload goal, the "teaching away" theory collapses. This is the single passage worth reading in full before relying on either side — I did not read Larsson directly. |
| Implicit: the claim requires decoding at the information apparatus, which burdens the handheld in tension with Larsson | Decoding is trivial relative to formatting/rasterization; the '114's own claim 15 requires exactly this, so the tension (if any) is the patentee's, not the art's | Reasonable |
Teaching-away assessment: no recovered reference criticizes, discredits, or discourages the claimed combination. Under KSR/In re Fulton, the mere existence of a design alternative (encrypt elsewhere, or not at all) is not a teaching away.
6. Secondary considerations
No evidence of nexus-qualified secondary considerations was found in the record reviewed:
- Commercial success: Flexiworld is characterized in third-party databases as a failed startup/NPE; no product embodying the '114 claims was identified as a market success.
- Industry adoption (potential argument): modern equivalents (cast/airplay-style TV streaming, cloud print services, subscriber-gated encrypted media delivery) arguably practice the claims. But the nexus is weak: (i) the practicing features were driven by later-developed standards (IEEE 802.11 variants, DRM ecosystems) rather than by the '114's claimed advance; (ii) the architecture was already disclosed by Larsson, Ortiz, and Yukie in 2000–02; and (iii) widespread independent adoption by non-copiers is as consistent with obviousness as with invention.
- Skepticism / failure of others / licensing: nothing identified. Licensing revenue from an expired paper patent is not a nexus-preserving secondary consideration.
- Unexpected results: none offered in the record reviewed; encryption of a delivered stream is a predictable result, not a surprising one.
7. The priority-date axis — the most consequential § 103 issue in this patent
The '114 issued 2019-07-09 from an application filed 2018-05-07, claiming 2000-11-20. That structure creates two opposing §103 exposures:
- If the 2000-11-20 priority holds for the asserted claims: the asserted art must pre-date November 2000. Ortiz survives only via its provisional No. 60/214,339 (June 27, 2000) and pre-AIA §102(e) — its publication date (May 16, 2002) is after the priority date, so the entire Ortiz-based ground depends on the provisional supporting the relied-upon disclosure. Challenge the provisional-to-nonprovisional support and the ground weakens materially. This is the cleanest defense available to the patentee.
- If any claim loses the 2000 priority date (new matter introduced in the 2018 continuation lineage, or lack of written-description support in the 2000 specification for limitations such as smartphone/touch-screen/voice-interface/streaming/television-controller specifics), the effective date shifts 17+ years later, and the universe of §102/§103 art expands enormously — Ortiz, Yukie, Gunter, Keeney, and essentially the entire consumer-streaming and cloud-print art of 2001–2018 become available. Under that scenario, obviousness becomes a near-formality.
Analyst note: the 2018 filing of a continuation asserting a 2000 priority, sixteen months before the patent's term was due to end, is a strong indicator that the claims were drafted to capture later technology while claiming the earlier date — i.e., the classic priority-support squeeze. Any §103 challenge should lead with it.
8. Verification gaps — what I could not confirm (do not treat as established)
- Complete claim set and exact claim 1 / claim 37 wording. I have element-level quotations, not the granted text. Pull from USPTO Patent Center.
- Attribution of the Yukie/Gunter/Keeney petition excerpts to the '114 (vs. a sibling in the family). Probable, not verified.
- DeMello's (US 7,158,953) teachings and the element(s) it was mapped to.
- Full reference numbers for Yukie, Gunter, and Keeney — not recovered.
- Larsson's (US 7,028,102) front-page metadata and the full text of 3:15–67 — the teaching-away passage is the pivot of Flexiworld's best argument; I relied on the parties' characterizations.
- IPR2021-00715 outcome. Google Patents reports terminated by settlement; the record I recovered runs through the July 20, 2022 oral hearing (Ex. 1023 demonstratives, filed July 14, 2022), consistent with settlement before a Final Written Decision. No FWD on the '114 was identified — so there is no PTAB or court merits ruling on the '114's validity. (For contrast, the companion IPR2021-00714 on US 8,989,064 reached an FWD invalidating claims 1–10, 12, 14 — that is a different patent and does not establish anything about the '114.)
- A third Roku IPR exists — IPR2022-01267 (Roku v. Flexiworld) — surfaced only via an exhibit URL; its target patent was not confirmed.
9. Conclusion
The recovered claim set of US 10,346,114 is highly vulnerable under 35 U.S.C. § 103.
- Ground 1 — Larsson (US 7,028,102) in view of Ortiz (US 2002/0058499 A1) — is the ground Roku actually pressed, and it maps every recovered limitation. Larsson supplies the driverless, server-side-formatting, device-dependent-output core; Ortiz supplies authentication/authorization, device-profile-driven delivery to a rendering device, and — critically — the express motivation to encrypt content over wireless links (¶10). The motivation to combine is articulated in the secondary reference itself, satisfying KSR.
- Ground 3 — Yukie in view of Gunter (with Keeney for printing) — is, element-for-element, even tighter on the two limitations the patent most depends on: encryption applied to device-dependent content and subscription-gated access following login/verification.
- The strongest patentee defenses are (i) collapsing the Ortiz ground by defeating its provisional-priority support, and (ii) the Larsson "teaching away" argument — but the second depends on a passage Petitioner contends was quoted out of context, and I could not verify it. Neither defense addresses Ground 3.
- Because the patent is expired and no merits ruling on the '114's validity exists in either the district court (Roku, 6:20-cv-00819, settled) or the PTAB (IPR2021-00715, settled), the § 103 question is untested on the record — an analysis grounded in the actual IPR papers is therefore the best available proxy, and it points strongly toward invalidity.
Generated 9/15/2026, 12:49:39 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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