Invalidity dossier
US 10405082
Automatic keyword pass-through system
Current assignee: Staton Techiya, LLC
Added 9/29/2026, 9:05:41 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll run targeted searches for this patent number and its litigation/appeal history.
Let me dig into the IPR outcome and the Federal Circuit appeal status.
Let me pin down the IPR2022-00369 final outcome for this specific patent.
US 10,405,082 B2 — Automatic Keyword Pass-Through System
Sourcing note: I searched and cross-checked Google Patents, Docket Alarm/Patexia (PTAB + district court + CAFC), and the Federal Circuit's own order page. Everything below is grounded in those results; where sources conflict I say so.
Bibliographic data (as issued)
| Field | Value |
|---|---|
| Patent number | US 10,405,082 B2 (literal: 10405082) |
| Title | Automatic keyword pass-through system |
| Inventor | John Usher (Beer, Devon, GB) |
| Applicant / original assignee | Staton Techiya, LLC (Delray Beach, FL) |
| Application no. | 16/168,752 |
| Provisional priority | US 62/575,713, filed 2017‑10‑23 |
| Filing date | 2018‑10‑23 |
| Pre‑grant publication | US 2019/0124436 A1, 2019‑04‑25 |
| Issue date | 2019‑09‑03 |
| Examiner / Art Unit | Olisa Anwah / AU 2655; Class 381 (381/071100) |
| Prosecuting firm | Akerman LLP (Chiabotti; Mammen (Roy) P.) |
| Claims / drawings | 20 claims, 4 drawing sheets |
| Current assignees (per Google Patents) | Cases2tech LLC and Strategic Portfolio Holdings LLC |
Assignee chain (recorded): Staton Techiya, LLC → ST Portfolio Holdings, LLC (effective 2024‑06‑12, reel 067803/0129) → Cases2tech, LLC (effective 2024‑06‑12, reel 067803/0141), both recorded 2024‑06‑21.
Abstract (verbatim)
"At least one embodiment is directed to a method for automatically activating ambient sound pass-through in an earphone in response to a detected keyword in the ambient sound field of the earphone user, the steps of the method comprising at least receiving at least one ambient sound microphone (ASM) signal; receiving at least one audio content (AC) signal; and comparing the ASM signal to a keyword and if the ASM signal matches a keyword then an AC gain is created."
Independent claims — plain language
Claim 1 (method). A method for automatically turning on ambient-sound pass-through in an earphone when a keyword is detected in the wearer's surroundings. Steps: (1) receive an ambient sound microphone (ASM) signal; (2) receive an audio content (AC) signal; (3) compare the ASM signal to a keyword — and if it matches, create an AC gain. The closing limitation is the key one: the keyword is "identified" when the temporal or spectral patterns of the keyword and the ASM signal match within a threshold average value (the spec's example is ±3 dB).
Claim 9 (method). Same preamble and core comparison, but with the full mixing pipeline spelled out: apply the AC gain to the AC signal; apply the ASM gain to the ASM signal; mix the two; send the mix to a speaker. Added limitation: the AC gain is adjusted at a slew rate between 5–30 dB/sec when increasing and −5 to −30 dB/sec when decreasing.
Claim 11 (method). Substantively claim 9's pipeline, plus a slew-rate limitation on the ASM gain as well ("between 5–30 dB/sec if increasing and the range −5 to −30 dB/sec if decreasing"). Note claims 9 and 11, as written, each recite the full procedure and are therefore parallel rather than strictly dependent formulations.
Claim 14 (device). A keyword-detecting device comprising a microphone, a processor, and processor-readable memory that stores acoustic characteristics of at least five verbal keywords. The processor identifies a keyword by comparing those stored characteristics to the microphone signal — again, identification occurs when temporal or spectral patterns match within a threshold average value. On identification, the processor is configured to do at least one of: initiate a phone call; initiate a gain increase to the acoustic signal; initiate a gain decrease to the acoustic signal.
Representative dependent claims: 2 (AC gain created even on no-match), 3–7 (apply/mix/send steps), 8 (keyword types: first name, surname, familiar/truncated form, nickname, emergency word), 10 (match keyword to a phone number and call it), 12–13 (ASM gain increased when AC gain decreased, and vice versa), 15–18 (device is a wireless earphone; processor/memory on the phone or the earphone), 19–20 (occluding eartip providing ≥10 dB isolation).
⚠️ Critical status facts a reader would otherwise miss
This patent is not simply "Active" in the meaningful sense, and the Google Patents "Active" flag is misleading on its own:
- IPR2022-00369 — Samsung Electronics Co., Ltd. v. Staton Techiya, LLC, filed 2021‑12‑30, instituted on all grounds 2022‑08‑16, Final Written Decision 2023‑08‑11 determining claims 1–15, 17, 19, and 20 unpatentable. The decision is captioned "Judgment Final Written Decision Determining All Challenged Claims Unpatentable ‑ 35 U.S.C. § 318(a)." Panel: Hoskins, Engels, Cass (Cass writing). Prior art relied on: Goldstein (US 8,150,044 B2), Usher (US 2015/0215701 A1), Keady (US 8,522,916 B2), Bailey (US 7,280,849 B1).
- All four independent claims (1, 9, 11, 14) fall within the cancelled set.
- Claims 16 and 18 were not challenged — but both depend from cancelled claims (16 from 15, 18 from 17), so they are of no independent practical value.
- An IPR certificate (kind code K1) is recorded as issued 2023‑11‑03 for this trial. Consistent with §318(b), that certificate cancels the claims held unpatentable. Uncertainty: I did not retrieve the certificate's verbatim text, so I cannot independently quote the cancellation language.
- Federal Circuit Appeal No. 24‑1917 — Staton Techiya, LLC v. [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd. Notice of appeal dated 2024‑06‑03 (from E.D. Tex. Nos. 2:21‑cv‑00413‑JRG‑RSP and 2:22‑cv‑00053‑JRG‑RSP; findings of fact and conclusions of law dated 2024‑05‑09; final judgment 2024‑06‑21). Dismissed 2024‑12‑20 by joint stipulation under FRAP 42(b) — a one-page nonprecedential order with no substantive analysis and no precedential effect. PatSnap's commentary confirms US10405082B2 was among the ten patents at issue in that appeal.
- District court — E.D. Tex. 2:21‑cv‑00413 (filed 2021‑11‑05), bench trial before Chief Judge Gilstrap; judgment went to Samsung. Reporting indicates a subsequent motion to alter/amend the judgment was denied on 2026‑03‑15. Uncertainty: this is from a secondary Korean-language news source, not the primary docket; treat the date as unverified.
Important caveat on which patent the district court actually addressed: the 2021 suit asserted a broader portfolio (reported to include US 8,111,839, US 9,124,982 and others). Whether US 10,405,082 was specifically tried and ruled on, versus being asserted and then resolved via the IPR, is not something the sources I retrieved establish with confidence.
Other notes and uncertainties
- Term. The Google Patents face text of the patent says term extended under 35 U.S.C. 154(b) "by 0 days," and the anticipated expiration is listed as 2038‑10‑23 (20 years from filing). Docket Alarm's prosecution timeline shows an entry reading "56.5 | PTA 36 Months," which conflicts with the 0‑day figure. I flag this rather than resolve it; the 2038‑10‑23 date is consistent with zero PTA.
- Antecedent-basis observation (not a legal conclusion). Claim 1 creates an "AC gain" and never recites an ASM gain, yet claim 4 recites "applying the ASM gain." This is the kind of drafting artifact that featured in the PTAB proceeding, though I have not verified whether indefiniteness was raised.
- Family. Continuations/divisionals sharing the 2017‑10‑23 priority and titled "Automatic keyword pass-through system": US 10,966,015 B2 (app. 16/555,824), US 11,432,065 B2 (app. 17/172,065), and US 12,621,598 B2 (app. 17/733,988). Family ID 66171348.
- Non-US parallel. An IP‑Navi (Korea) dispute record lists US10405082 under "Automatic keyword pass‑through system" with IPC H04R 1/10 and G10L 15/22 for the Staton Techiya v. Samsung dispute over Bixby-enabled smartphones/earphones.
Bottom line: US 10,405,082 is a John Usher invention directed to keyword-triggered ambient-sound pass-through in a sound-isolating earphone, originally assigned to Staton Techiya and now held by Cases2tech/Strategic Portfolio Holdings. Its issued claims — including all four independents — were held unpatentable by the PTAB in IPR2022‑00369, the corresponding certificate issued in November 2023, and the related Federal Circuit appeal was voluntarily dismissed in December 2024 without a merits ruling. The "Active" legal status shown by Google Patents should not be read as meaning the claims remain enforceable.
Generated 9/29/2026, 9:12:10 PM
Cases on file (3)
Group view →Specific litigation cases in our database that name US patent 10405082. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Staton Techiya, LLC v. Samsung Electronics Co., Ltd. et al.filed Jun 6, 20242024-1917U.S. Court of Appeals for the Federal Circuitterminated Dec 20, 2024dismissed
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Other patents asserted: 10979836, 8111839, 8254591, 8315400, 9124982, 9270244, 9491542, 9609424, 10966015, 11039259, 11057701, 11217237, 11244666
- Samsung Electronics Co., Ltd. et al. v. Staton Techiya, LLCfiled Dec 30, 2021IPR2022-00369USPTO Patent Trial and Appeal Boardterminated Aug 11, 2023final written decision; terminated; IPR certificate issued
Defendants: Staton Techiya, LLC
- Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.filed Nov 4, 20212:21-cv-00413-JRG-RSPU.S. District Court for the Eastern District of Texas, Marshall Divisionterminated Jun 20, 2024closed — dismissed with prejudice; judgment for Samsung; claims unenforceable
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 10,405,082. Let me search multiple sources.
Let me gather more detail on the Federal Circuit appeal and IPR outcome.
Litigation Involving U.S. Patent No. 10,405,082 ("Automatic keyword pass-through system")
Based on the patent record and the litigation sources I searched (Unified Patents portal, CourtListener/PACER dockets, Docket Alarm, Justia, and the PTAB/CAFC records), U.S. Patent No. 10,405,082 ("the '082 patent") has been involved in the following matters. Note that the '082 patent was one of a large group of patents (ten or more) asserted together against Samsung — it was never asserted as a standalone case, and I found no other defendant or district-court case in which it was asserted.
1. District Court — Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.
| Field | Detail |
|---|---|
| Plaintiffs | Staton Techiya, LLC and Synergy IP Corp. |
| Defendants | Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. |
| Court / Jurisdiction | U.S. District Court for the Eastern District of Texas, Marshall Division |
| Case No. | 2:21-cv-00413-JRG-RSP (consolidated with 2:22-cv-00053-JRG-RSP) |
| Judge | Chief Judge J. Rodney Gilstrap; Magistrate Roy S. Payne |
| Filing Date | November 4, 2021 (Unified Patents lists 2021-11-04; Samsung's mandatory notice says the complaint was "filed November 5, 2021"; the AO 120 form lists date filed 11/8/2021 — the docket date of record is disputed among these sources) |
| Cause of action | Patent infringement |
| Outcome / Status | Closed — dismissed with prejudice; Samsung prevailing party |
What happened
- The '082 patent was asserted against Samsung products including Galaxy Buds+ earphones, Galaxy S20 smartphones, and the Bixby personal assistant app, along with nine other U.S. patents ('839, '591, '400, '982, '244, '542, '424, '015, and '836).
- Following a bench trial held March 26–27, 2024, the Court issued Findings of Fact and Conclusions of Law on May 9, 2024 (Dkt. No. 923), finding that Techiya's asserted patent claims are unenforceable against Samsung based on Techiya's unclean hands (misconduct imputed from Synergy IP Corp., acting as Techiya's agent).
- Final Judgment entered June 21, 2024 (Dkt. No. 950): the asserted claims of the Asserted Patents (including the '082 patent) are unenforceable against Samsung, and Techiya's infringement claims were dismissed with prejudice; Samsung's counterclaims were dismissed (non-patent counterclaims without prejudice as moot; patent counterclaims without prejudice for lack of subject-matter jurisdiction). Samsung was designated the prevailing party and awarded costs.
- Unified Patents lists the case as Closed (termination date 2024-06-20). Post-judgment fee/cost litigation followed, including Samsung's sealed motion for attorneys' fees and a bill of costs (reported at various points in the ~$25–26 million range before reductions), and Techiya's motion to amend the judgment (denied in relevant part, Dkt. No. 992).
Sources: Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/Texas%20Eastern%20District%20Court/case/2:21-cv-00413); CourtListener docket 60703630; Justia (2:2021cv00413, Docs 991–992); Docket Alarm (Dkt. 936 Notice of Appeal; Dkt. 951 AO 120 listing US 10,405,082).
Importantly: I found no other district court action, no ITC action, and no other defendant in which the '082 patent has been asserted. Samsung's own mandatory notices in the IPR state: "To the best of Petitioners' knowledge, the '082 patent has only been involved in the following district court litigation: Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al., 2:21-cv-00413 (E.D. Tex.)."
2. PTAB — Inter Partes Review (IPR2022-00369)
| Field | Detail |
|---|---|
| Petitioners | Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. |
| Patent Owner | Staton Techiya, LLC |
| Forum | USPTO Patent Trial and Appeal Board |
| Case No. | IPR2022-00369 |
| Filed | December 30, 2021 |
| Institution Decision | August 16, 2022 |
| Claims challenged | 1–15, 17, 19, 20 (claim 16 not challenged per the summary) |
| Panel | Judges George Hoskins, Nathan Engels, Russell E. Cass (Cass authored the Final Written Decision) |
| Final Written Decision | August 11, 2023 (case terminated same date) |
| Certificate | IPR certificate issued November 3, 2023 (reported as a K1 document on the public record) |
- Samsung also filed a parallel petition, IPR2022-00388, against the closely related U.S. Patent No. 10,966,015, which shares the same priority family; the two proceedings had a common panel and consolidated oral argument on May 16, 2023.
- Caveat on the substantive outcome: My searches confirmed the filing, institution, FWD date (Aug. 11, 2023), and issuance of an IPR certificate (Nov. 3, 2023), but I could not confirm from the sources retrieved exactly which claims (if any) were held unpatentable in the FWD. I am not asserting a specific claim-level outcome here rather than guessing. The issuance of an IPR certificate is consistent with a final decision having been reached; the precise disposition should be verified against the FWD itself.
Sources: Docket Alarm / Docket Alarm PTAB dockets for IPR2022-00369; Patexia case summary (IPR2022-00369); Unified Patents PTAB portal (https://portal.unifiedpatents.com/ptab/case/IPR2022-00369); Petitioners' Updated Mandatory Notices (Jan. 20, 2022).
3. Federal Circuit — Staton Techiya, LLC v. Samsung Electronics Co., Ltd.
| Field | Detail |
|---|---|
| Appellant | Staton Techiya, LLC |
| Appellees | Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. |
| Court | U.S. Court of Appeals for the Federal Circuit |
| Case No. | 24-1917 |
| Appealed from | E.D. Tex. Nos. 2:21-cv-00413-JRG-RSP and 2:22-cv-00053-JRG-RSP |
| Notice of Appeal filed | June 3, 2024 |
| Outcome | Dismissed December 20, 2024 (nonprecedential order) |
- Techiya appealed the district court's May 9, 2024 Findings of Fact and Conclusions of Law, the Final Judgment, and numerous earlier orders (disqualification order, claim construction, summary judgment rulings, evidentiary rulings, etc.).
- On December 20, 2024, the Federal Circuit issued a nonprecedential order: "Upon consideration of the parties' joint stipulation of voluntary dismissal of this appeal pursuant to Federal Rule of Appellate Procedure 42(b), IT IS ORDERED THAT: (1) The appeal is dismissed." No merits ruling was issued.
Sources: CourtListener opinion 10298215 (Fed. Cir. 24-1917, Dec. 20, 2024); Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/24-1917).
Summary
The '082 patent's known litigation exposure is confined to one defendant (Samsung) and consists of three related tracks:
- E.D. Tex. 2:21-cv-00413-JRG-RSP — Staton Techiya + Synergy IP v. Samsung; filed Nov. 2021; claims held unenforceable for unclean hands (May 9, 2024), infringement dismissed with prejudice, Samsung prevailing party (final judgment June 21, 2024; case closed).
- PTAB IPR2022-00369 — Samsung v. Staton Techiya; filed Dec. 30, 2021; instituted Aug. 16, 2022; Final Written Decision Aug. 11, 2023; IPR certificate issued Nov. 3, 2023 (specific claim disposition not confirmed from my sources).
- Fed. Cir. 24-1917 — Techiya's appeal of the district-court judgment; voluntarily dismissed Dec. 20, 2024 with no merits ruling.
No other litigation naming the '082 patent (different defendants, other districts, ITC, or foreign courts) was found.
Note on unrelated identifiers: Search results also surfaced (a) EP application 10405082.8 (a refrigerator cooling-water drain application) and (b) DOI 10.1109/ICACRS58579.2023.10405082 — these are coincidental numeric matches and have nothing to do with U.S. Patent 10,405,082.
If you need the exact claim-by-claim outcome of the IPR Final Written Decision (IPR2022-00369) or the $ figures in the attorneys'-fee/cost rulings, I can pull the FWD and the cost orders directly — tell me and I'll retrieve them.
Generated 9/29/2026, 9:12:11 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.
Current assignee: Staton Techiya, LLC
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 proceedings on this patent. The full-text record already flags IPR2022-00369 (Samsung petitioners) with an IPR certificate issued 2023-11-03, so I need to verify and detail that.
Strong results. Let me pin down the Federal Circuit appeal of this specific FWD and the related IPR on the sibling patent.
Let me find the CAFC appeal specific to the '082 FWD and confirm the claim-level disposition in the FWD.
PTAB Proceedings — US Patent 10,405,082 ("Automatic keyword pass-through system")
Data-source note / discrepancy flag. The structured "PTAB proceedings on file" block in this prompt states the USPTO ODP API returns no AIA trial proceedings for this patent. That block appears stale or incomplete. The patent's own front-facing record (Google Patents / USPTO assignment & legal-events data) documents IPR2022-00369, a Samsung-filed IPR, and an inter partes review certificate issued 2023-11-03 canceling the challenged claims. I treat the certificate as authoritative over the empty ODP list. Also note the record contains a second, non-PTAB appeal (CAFC 24-1917) — that is Techiya's appeal of the E.D. Tex. bench-trial judgment, not an IPR appeal; do not conflate it with the PTAB track.
Proceedings overview
One AIA trial proceeding is on file against US 10,405,082: IPR2022-00369, filed by Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., which instituted on all grounds and invalidated every challenged claim (claims 1–15, 17, 19, and 20) by Final Written Decision dated 2023-08-11, with the IPR certificate issuing 2023-11-03. There are no active proceedings, no settlements, and no institution denials on this patent. Breakdown: active 0 / claims invalidated 1 / claims sustained 0 / settled 0 / institution denied 0.
Bottom line for a defendant: this is the "claims are canceled" scenario, and more severely than that. All four independent claims — 1, 9, 11, and 14 — were held unpatentable and canceled by certificate. The only two claims the Board never reached, 16 and 18, are dependent claims that depend from canceled claims 15 and 17 respectively, so they carry no independent, separately assertable scope. If a demand letter cites claim 1, 9, 11, or 14, the asserted claim no longer exists. Asserting a canceled claim is sanction-bait.
IPR2022-00369 — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. v. Staton Techiya, LLC
Type: Inter Partes Review (35 U.S.C. §§ 311–319)
Filed: 2021-12-30
Status: Final Written Decision issued; all challenged claims unpatentable; IPR certificate issued 2023-11-03 (kind code K1 — Inter Partes Review Certificate). Structurally "terminated," outcome adverse to patent owner.
Judge panel: George R. Hoskins, Nathan A. Engels, and Russell E. Cass (Administrative Patent Judges). Cass authored the Final Written Decision.
Petition grounds: Claims 1–15, 17, 19, and 20 challenged (i.e., 19 of the 20 claims; only claims 16 and 18 were not challenged). Asserted basis was § 103 obviousness, built on six combinations presented in the patent owner's own demonstratives:
- Ground 1 — Goldstein, § 103
- Ground 2 — Goldstein + Bailey, § 103
- Ground 3 — Goldstein + Keady, § 103
- Ground 4 — Goldstein + Usher, § 103
- Ground 5 — Goldstein + Usher + Bailey, § 103
- Ground 6 — Goldstein + Usher + Keady, § 103
Principal references (Samsung exhibits): Goldstein, US 8,150,044 B2 (Ex. 1007); Usher, US 2015/0215701 A1 (Ex. 1009); Keady, US 8,522,916 B2 (Ex. 1010); Bailey, US 7,280,849 B1 (Ex. 1011). The FWD's reference list also names Nathan, US 7,107,109 (Ex. 1012), Bateman, US 4,947,440 (Ex. 1013), Archibald, US 2009/0024234 A1 (Ex. 1014), and Saukko, US 2013/0219345 A1 (Ex. 1015), indicating additional grounds beyond the six shown in the demonstratives. I have not independently reconstructed the exact claim-by-claim / ground-by-ground mapping; the Board did not publish a per-ground table in the excerpt I reviewed, so I am not going to state one. Petitioner's expert: Dr. Richard M. Stern (Ex. 1002). Patent Owner's expert: Dr. Marshall Buck / Mr. Marshall Buck (Exs. 2001, 2008).
- Real party in interest note: Patent Owner initially named Staton Techiya, LLC and Synergy IP Corporation; an Updated Mandatory Notice filed 2023-06-28 purported to remove Synergy IP as an RPI (the notice text on its face is internally inconsistent, so treat the RPI posture with mild caution).
Institution decision: Instituted on all grounds — Paper 14, dated 2022-08-16. The petition survived a § 314(a) / Fintiv discretionary-denial challenge; the Board authorized supplemental Fintiv briefing in June 2022, and the parties exchanged preliminary reply / sur-reply papers (Papers 10–11) before the panel exercised its discretion to institute.
Final Written Decision (2023-08-11): Captioned "Judgment — Final Written Decision Determining All Challenged Claims Unpatentable, 35 U.S.C. § 318(a)." The disposition, verbatim: "For the reasons discussed below, Petitioner has proven by a preponderance of the evidence that claims 1-15, 17, 19, and 20 are unpatentable." Claim-level picture: 1–15, 17, 19, 20 canceled; no claim held patentable; claims 16 and 18 not addressed (not challenged).
- Oral hearing held 2023-05-16, transcript at Paper 31. Patent Owner had requested consolidation of argument with IPR2022-00388 (the sibling '015 patent), noting "the same panel presides over two proceedings."
Settlement / termination: No settlement. The proceeding ran to a merits FWD.
Appeal: On the record available to me, no Federal Circuit appeal was taken from this FWD. The IPR certificate issued 2023-11-03 — roughly three weeks after the 63-day appeal window (which closed around 2023-10-13) — which is consistent with cancellation becoming effective without appellate review. In the sibling Techiya IPRs, by contrast, appeals were filed and litigated (23-2290 on the '400 patent; 23-2294/23-2305 on the '982 and '839 patents), and the certificate timing there was correspondingly later. I could not locate any CAFC docket for IPR2022-00369 itself; verify on PTAB E2E before relying on this (see links below).
Defensive value: Decisive. The Board's FWD, made final by the 2023-11-03 certificate, means the independent method claims (1, 9, 11) and the independent device claim (14) are cancelled and cannot support infringement. Any theory built on claims 1, 9, 11, or 14 is facially dead. The only claims the Board never reached — 16 and 18 — are dependent and inherit the canceled limitations of claims 15 and 17, leaving no standalone scope.
Key links
- FWD (Paper 32, 2023-08-11): https://www.docketalarm.com/cases/PTAB/IPR2022-00369/Samsung_Electronics_Co._Ltd._v._Staton_Techiya_LLC/docs/08-11-2023-Board/Final_Written_Decision__original-32-Determining_All_Challenged_Claims_Unpatentable__35_USC_%C2%A7_318a.pdf
- PTAB proceeding record: https://portal.unifiedpatents.com/ptab/case/IPR2022-00369
- USPTO PTAB Decisions: https://www.uspto.gov/patents/ptab/decisions
- USPTO PTAB E2E (case status / certificate): https://e2e.uspto.gov
Related PTAB activity on sibling patents (not US 10,405,082, but the same Techiya/Samsung campaign)
These do not invalidate US 10,405,082, and you should not cite them against it — but they matter for understanding the campaign and the patent owner's litigation posture:
- IPR2022-00234 — U.S. Pat. No. 9,124,982 ('982). Board held claims unpatentable; Techiya appealed (Fed. Cir. 23-2294, decided as a companion to 23-2305).
- IPR2022-00242 / IPR2022-00243 — U.S. Pat. No. 8,111,839 ('839). IPR2022-00243 FWD (panel: Engels, Howard, Cass) held claims 1–4 unpatentable over Le + Armstrong + Kvaløy (+ Hall). In IPR2022-00242 the Board held claims 14–17 unpatentable. Techiya appealed (23-2305), and the Federal Circuit affirmed on 2025-10-09, rejecting Techiya's "analysis"/"audio forensics analysis" construction as forfeited (not presented to the Board) and, in any event, incorrect on the intrinsic evidence. Nonprecedential opinion: https://www.cafc.uscourts.gov/opinions-orders/23-2305.OPINION.10-9-2025_2585626.pdf
- IPR2022-00282 — U.S. Pat. No. 8,315,400 ('400). Board invalidated claims; affirmed by the Federal Circuit on 2025-11-04 in Cases2Tech, LLC v. Squires, No. 23-2290 (Taranto, J.) (construction of "background noise level" and "based on" — latter waived). Appeal No. 2023-2292 (Samsung's cross-appeal) was voluntarily dismissed (order dated 2025-01-29): https://www.cafc.uscourts.gov/opinions-orders/23-2290.ORDER.1-29-2025_2459270.pdf and https://www.courtlistener.com/opinion/[10330169](/patent/10330169)/in-re-staton-techiya-llc/
- IPR2022-00388 — U.S. Pat. No. 10,966,015 ('015), the child of the '082 patent. This is the closest relative to the patent at issue; it is a separate patent with its own claims and its own validity posture.
Parallel district-court track (for context, not an invalidity holding): Staton Techiya, LLC v. Samsung Electronics Co., Ltd., Nos. 2:21-cv-00413 / 2:22-cv-00053 (E.D. Tex.). After a bench trial, the court found on 2024-05-09 that the asserted patents were unenforceable against Samsung based on unclean hands, entered final judgment 2024-06-21 dismissing Techiya's infringement claims with prejudice, and Techiya's appeal (CAFC 24-1917) was dismissed by joint stipulation (FRAP 42(b)) in late 2024. Critically, unclean hands is defendant-specific ("against Samsung") and is not an invalidity judgment; it does not, on its own, clear the patent for anyone else. The IPR certificate, by contrast, is erga omnes.
Strategic summary
Which claims are canceled vs. sustained vs. untested. Through IPR2022-00369, claims 1–15, 17, 19, and 20 of US 10,405,082 are canceled as of the 2023-11-03 IPR certificate. That sweep includes all four independent claims (1 and 9 and 11 — methods; 14 — device) and every substantive dependent claim. Claims 16 and 18 are untested — the Board never reached them because the petition did not challenge them — but both are dependent claims (16 from 15; 18 from 17) whose parents were canceled, so they embody the canceled limitations and offer no independent scope. There is no sustained claim and no surviving independent claim. Practically, US 10,405,082 is a spent patent.
Estoppel landscape. Under § 315(e)(2), Samsung and its privies are barred, in the E.D. Tex. action (and any other civil action) and in ITC proceedings, from asserting that claims 1–15, 17, 19, and 20 are invalid on any ground they raised or reasonably could have raised in IPR2022-00369 — which for a six-ground Goldstein-based § 103 attack plus the Nathan/Bateman/Archibald/Saukko references is a broad bar. For a new defendant being asserted: estoppel is not your problem — you don't need it, because the certificate already canceled the claims. The important corollary is that the reasonably-could-have-raised prong did not reach claims 16 and 18 (unchallenged), so a third party could in principle petition against claims 16 and 18 on grounds Samsung didn't raise — but that is a low-value exercise given their dependency on canceled claims.
Pattern signals. Samsung ran a coordinated multi-patent IPR wave against the Techiya portfolio in December 2021 (IPR2022-00234, -00242, -00243, -00282, -00369, -00388 and others), timed within days of Techiya's 2021-11-05 complaint. The results were lopsided in Samsung's favor: all-claims-invalidated outcomes in multiple proceedings, including this one, and Federal Circuit affirmances in 2025. Techiya (and its assignee successors — ST Portfolio Holdings, LLC and now Cases2Tech, LLC / Strategic Portfolio Holdings) pursued appeals selectively and unsuccessfully, and its district-court appeal ended by stipulated dismissal. No defensive aggregator was in the chain: the petitioner here was Samsung (a competitor defendant), not Unified Patents or another aggregator; the Unified Patents link in the record is merely a data source. Ownership has since passed from Staton Techiya → ST Portfolio Holdings → Cases2Tech, consistent with portfolio carve-up after the litigation loss.
Recommended next steps
- If you're a defendant and a demand letter cites claims 1, 9, 11, or 14, quote the disposition back. The FWD's holding is verbatim: "Petitioner has proven by a preponderance of the evidence that claims 1-15, 17, 19, and 20 are unpatentable" (Paper 32, 2023-08-11), and the IPR certificate issued 2023-11-03 effectuates cancellation. See the FWD at the docketalarm link above and confirm the certificate at https://e2e.uspto.gov.
- Treat claims 16 and 18 as the only nominally live claims — and treat them as non-viable. They were never challenged, but each depends from a canceled claim. If a plaintiff ever asserted them, move to dismiss on the ground that a dependent claim cannot survive cancellation of the claim from which it depends, and note that no independent claim remains. Verify the current claim listing against the certificate (the certificate should show the canceled claims struck).
- No PTAB watch needed on this patent. There is no active proceeding, so there is no institution-decision deadline, no oral-hearing date, and no § 318(a) one-year FWD deadline to track. Any new IPR against the '082 patent would be an original petition by a third party — but against what claim?
- Watch the siblings, not the '082. Because US 10,405,082 is in a continuation family (US 10,405,082 → 10,966,015 ('015') → 11,432,065 → 12,621,598), and because the '015 patent was the subject of IPR2022-00388, the family remains the real exposure. The '015 and later patents have different claims that were not canceled by certificate, so confirm which family member is actually being asserted before concluding the family is clear. The '015 IPR outcome (IPR2022-00388) should be verified separately — its FWD was issued by the same panel but is a distinct proceeding from this one.
- Two items to verify on PTAB E2E before you rely on this memo: (a) that no Federal Circuit appeal was ever docketed from IPR2022-00369 (the certificate timing strongly suggests none, but I found no affirmative docket either way); and (b) the precise per-ground, per-claim mapping in the FWD, which I did not reconstruct.
Honesty caveats: I did not obtain the full text of the 2023-08-11 FWD beyond the excerpt quoted and the ground list — so I am not attributing specific reasoning or specific claim subsets to specific grounds. The panel's substantive reasoning and any per-claim findings beyond the top-line "all challenged claims unpatentable" are not stated here because I did not retrieve them. The proceeding list is short (one proceeding) and I have flagged the ODP-vs-record discrepancy rather than silently resolving it.
Generated 9/29/2026, 9:12:43 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2019-01-03 · recorded 2019-02-19 · reel 048374/0088 · Assignment
Usher, JohnStaton Techiya, LLC
inventor-to-company assignment
2024-06-12 · recorded 2024-06-21 · reel 067803/0129 · Assignment
Staton Techiya, LLCST Portfolio Holdings, LLC
transfer-to-asserter
2024-06-12 · recorded 2024-06-21 · reel 067803/0141 · Assignment
ST Portfolio Holdings, LLCCASES2TECH, LLC
transfer-to-asserter
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 reconstruct this ownership chain from the patent record and cross-check with litigation/assignment data.
Let me pull the specific assignment-record details and the ownership-entity identities.
US 10,405,082 B2 — Ownership & Assignment Reconstruction
Scope note. The reel/frame values and dates below are taken from the assignment events mirrored on the patent's Google Patents legal-events record (which reproduces USPTO assignment data) and cross-checked against PTAB and district-court records. Two fields the Assignment Center normally exposes — recording correspondent and the conveyance-type code — were not present in any source I could retrieve in this session; I flag those as data gaps rather than guessing. IPR2022-00369 FWD (2023-08-11) and the resulting IPR certificate (2023-11-03) are confirmed, but the per-claim outcome was not retrievable.
Inventors
| Inventor | Residence on face of patent | Employer at time of filing |
|---|---|---|
| John Usher (sole inventor) | Beer, Devon, GB | Not determinable from the record |
- Single-inventor patent. Usher is a recurring audio/earphone inventor in the Personics Holdings → Staton Techiya lineage; he is separately cited as prior art ("Usher," US 2015/0215701) against this very patent in IPR2022-00369.
- Irregular timing worth noting: the application was filed 2018-10-23 with Staton Techiya, LLC, Delray Beach, FL named as applicant (item (71) on the printed patent), yet the inventor→company assignment was not executed until 2019-01-03 — a ~2.5-month gap between filing and execution. Consistent with a confirmatory assignment, but it means the company was the named applicant before a recorded instrument of transfer existed.
- No "all inventors depart within 12 months" pattern is assessable — there is only one inventor, and no employment/separation record is public.
Original assignee
Staton Techiya, LLC — Delray Beach, Florida (customer-number address of record: 16193 Bridlewood Circle, Delray Beach, FL 33445, per a USPTO/PTAB exhibit in a related family member).
- Primary line of business: holding and asserting the ear-worn audio portfolio originating from Personics Holdings (Steven W. Goldstein / John P. Keady lineage). In its own complaint it describes sending studies, marketing materials, and prototypes and a "comprehensive valuation model... hundreds of patents and patent applications" to Harman — i.e., R&D and IP valuation, not volume manufacturing.
- Did they ship a product embodying the claims? No evidence of a commercial product found. The record shows prototypes and R&D (its complaint against Harman describes prototype demos and NDAs, not sales). Third-party litigation analytics characterize Techiya as "a patent assertion entity (PAE)... operating without a primary product line."
- Current status: No longer the owner of the '082 patent (assigned away 2024-06-12, recorded 2024-06-21). Still an active patent owner/asserter on other family members (e.g., named Patent Owner with real parties Staton Techiya and ST CasesTech in IPR2024-01034, July 2024). It is the losing plaintiff in Staton Techiya v. Samsung, 2:21-cv-00413, where the court found the asserted claims unenforceable for unclean hands and awarded Samsung its costs (reported at ~$25.8M). No bankruptcy filing found.
Assignment timeline
2019-01-03 (executed) / recorded 2019-02-19 — Reel 048374/0088
- Conveyance: Assignment of assignors' interest (initial inventor→company assignment)
- Assignor: Usher, John
- Assignee: Staton Techiya, LLC (Florida)
- Correspondent: not retrievable in this session — data gap. (Patent face lists prosecution counsel Akerman LLP — Peter A. Chiabotti; Mammen (Roy) P. Zachariah, Jr. — and Staton Techiya's USPTO customer-number correspondence contact on related family members is John Keady, Reg. No. 56,389. Neither is confirmed as the recording correspondent for this reel/frame; flagging as unverified.)
- Context: inventor-to-company assignment — the link that put the patent in Staton Techiya's name; precedes any litigation.
2024-06-12 (executed) / recorded 2024-06-21 — Reel 067803/0129
- Conveyance: Assignment of assignors' interest (entity-to-entity transfer; type code not exposed in the sources retrieved)
- Assignor: Staton Techiya, LLC
- Assignee: ST Portfolio Holdings, LLC (Florida)
- Correspondent: not retrievable — data gap. However, note that this record and the next share the same reel, 067803, and were recorded the same day → single-filer batch.
- Context: transfer-to-asserter / holding-company staging — occurs ~9 days before the 2024-06-21 final judgment against Techiya.
- ⚠️ Google Patents renders this assignee as "Strategic Portfolio Holdings LLC"; the USPTO-derived event text reads ST Portfolio Holdings, LLC. Flagging the naming variance rather than silently normalizing it.
2024-06-12 (executed) / recorded 2024-06-21 — Reel 067803/0141
- Conveyance: Assignment of assignors' interest
- Assignor: ST Portfolio Holdings, LLC
- Assignee: CASES2TECH, LLC (Florida)
- Correspondent: not retrievable — data gap. Same reel (067803) and same recording date as the preceding entry; frames 0129 and 0141 are near-adjacent on one reel.
- Context: second hop of a cascading transfer — intermediate LLC exists to pass title to the current asserting owner.
Chain as it stands: John Usher → Staton Techiya, LLC (048374/0088) → ST Portfolio Holdings, LLC (067803/0129) → CASES2TECH, LLC (067803/0141) — the last two hops executed and recorded on the same two days.
Corroborating family-wide pattern (not this patent's reel, but relevant): Google Patents lists "St Famtech, Llc" as current assignee of the sibling continuation US12621598B2 (same 2017-10-23 priority), and Techiya's PTAB mandatory notice names "ST CasesTech, LLC" as a co-real-party-in-interest. Three separate "ST"-prefixed vehicles moving the same priority family is a program, not a one-off.
Timeline diagram
timeline
title Ownership of US 10405082
2017 : Provisional 62575713 filed
2018 : Non-provisional filed
: Staton Techiya named applicant
2019 : Usher assigns to Staton Techiya
: Executed 3 Jan recorded 19 Feb
: Patent issued 3 Sep
2021 : Techiya sues Samsung
: Samsung files IPR2022-00369
2023 : IPR certificate issued
2024 : Assigned to ST Portfolio Holdings
: Assigned to CASES2TECH same day
: Final judgment unclean hands
2025 : Cases2Tech appeal decided
(Repo terse by design: no commas, slashes, or parentheses in event text.)
NPE / troll-pattern signals
1. Shell-entity transfer — PRESENT.
Two consecutive hops out of the original owner into license-holding vehicles: Staton Techiya, LLC → ST Portfolio Holdings, LLC (667803/0129... i.e. 067803/0129) → CASES2TECH, LLC (067803/0141), both executed 2024-06-12 and recorded 2024-06-21 on the same reel. Name suffixes ("Holdings"), a single-purpose intermediary that exists only long enough to pass title, and Staton Techiya's residential street address of record (16193 Bridlewood Circle, Delray Beach, FL 33445) are the concrete tells. No product embodying the claims was found for any link in the chain. Caveat for precision: I found no registered-agent-service address or LLC membership record in the retrieved sources, so the call rests on the transfer mechanics + absence of product + residential address, not on a corporate registry lookup.
2. Known asserter in the chain — PRESENT (moderate).
Neither Staton Techiya nor CASES2TECH appears on the enumerated legacy lists (Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation, Spangenberg entities) per the sources I could retrieve. The signal instead rests on: (a) the '082 is one of ~14 patents asserted against Samsung in 2:21-cv-00413, with separate suits against Harman (1:23-cv-00801/00802, D. Del., filed July 2023) and a second Samsung case (2:23-cv-00319, filed 2023-07-10); (b) third-party analytics (PatSnap) classify Staton Techiya as a PAE; (c) the successor CASES2TECH continued asserting — it is the named owner-appellant in Cases2tech, LLC v. Squires, No. 23-2290 (Fed. Cir. Nov. 4, 2025) and in Fed. Cir. 24-1917. Caution: the Unified Patents portal links on the Google Patents page are coverage of the Samsung IPR and the Texas case, not a Unified Patents NPE designation, and Unified was not the petitioner (Samsung was). I am not treating that link as an NPE listing.
3. Repeat correspondent across the chain — UNCLEAR / data gap.
The recorded correspondent (attorney or agent who filed each recording) is not exposed in any source retrieved. I will not infer it. What is verifiable and adjacent: Akerman LLP (Chiabotti; Zachariah) is the attorney/agent of record on the printed patent, and John Keady (Reg. 56,389) filed Staton Techiya's customer-number correspondence change on a sibling family member. Whether either filed reels 048374/0088, 067803/0129, or 067803/0141 is unconfirmed. Practically, the same reel + same recording date for the two 2024 hops is strong circumstantial evidence of a single filer, even without the name.
4. Cascading transfers — PRESENT.
Two assignments through chained LLCs within <24 months — in fact, executed on the same day (2024-06-12) and recorded on the same day (2024-06-21) on the same reel (067803, frames 0129 and 0141). This is the clearest signal in the file. It is reinforced by contemporaneous sibling transfers in the same priority family (US16/555,824, US17/172,065, US17/733,988) to related "ST"-named vehicles including St Famtech and ST CasesTech.
5. Pre-litigation transfer — NOT PRESENT (but a judgment-timing variant is present).
The inventor→Staton Techiya assignment (executed 2019-01-03) precedes the first suit (2021-11-05) by ~34 months — outside the 6-month window. However, the 2024 transfers were effective 2024-06-12, nine days before the 2024-06-21 final judgment in 2:21-cv-00413 and ahead of Samsung's ~$25.8M bill of costs. I report the timing as fact; I draw no conclusion about motive.
6. Bankruptcy fire-sale — NOT PRESENT.
No Chapter 7/11 filing by Staton Techiya found. The 2024 transfers resemble a fire-sale in timing (immediately around an adverse, cost-bearing judgment) but not in mechanism — no court-supervised sale, no public auction.
7. Privateering — NOT PRESENT.
No operating company behind this chain transferred the patent to an NPE to assert on its behalf. The relationship that is documented runs the other way and was adjudicated: Staton Techiya sued alongside Synergy IP Corporation, an entity founded by Samsung's former IP-center head, and the court on 2024-05-09 found unclean hands — that the assertion was built using Samsung confidential information obtained through former Samsung personnel — rendering the asserted claims unenforceable against Samsung and dismissing with prejudice (final judgment 2024-06-21). That is assertion misconduct, a distinct (and more serious) finding than privateering, and I flag it as such rather than mislabeling it.
8. Defensive aggregator — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT, Unified, or OIN. It terminates at CASES2TECH, LLC, which kept asserting on appeal as owner. The patent was not neutralized by aggregation — though it was substantially de-fanged by (i) the PTAB (IPR2022-00369, FWD 2023-08-11, IPR certificate 2023-11-03) and (ii) the unenforceability holding in E.D. Tex.
Verdict
NPE — high confidence.
The chain terminates in a purpose-built asserting vehicle: Staton Techiya, LLC → ST Portfolio Holdings, LLC (reel 067803/0129) → CASES2TECH, LLC (reel 067803/0141), both executed 2024-06-12 and recorded 2024-06-21 on the same reel, with an intermediary LLC that existed only to pass title and no product embodying the claims anywhere in the chain. That is two strong signals on its own (cascading transfers + shell-entity transfer), reinforced by a serial assertion campaign — the '082 was one of ~14 patents pressed against Samsung in 2:21-cv-00413 with parallel Harman suits — and by the court's 2024-05-09 unclean-hands finding and 2024-06-21 final judgment with the successor entity continuing the fight on appeal. The one unresolved item that would sharpen this further is the recording correspondent for reels 048374/0088 and 067803/0129–0141, which I could not retrieve and have deliberately not guessed.
Verify at: https://assignment.uspto.gov/patent/index.html (search patent number 10405082) and https://assignmentcenter.uspto.gov/ · Grounded source record: https://patents.google.com/patent/[US10405082B2](/patent/US10405082B2)/en
Generated 9/29/2026, 9:13:01 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll ground this analysis in the actual patent record and verify the key references before mapping them to claims.
Now let me verify the IPR's primary references and the remaining anticipatory candidates.
Prior-Art Analysis — U.S. Patent No. 10,405,082 B2 ("Automatic keyword pass-through system")
Scope note (literal ID handling). I analyzed the single patent number 10405082 (US 10,405,082 B2). Search results also surfaced two coincidental numeric matches — EP 10405082.8 (a refrigerator condensate-drain application) and DOI 10.1109/ICACRS58579.2023.10405082 — both unrelated and excluded. I also note that "10405082" is not the number Google Patents places in its own patent/US10405082B2/en URL path when it disagrees; the authoritative record is US 10,405,082 B2, app. 16/168,752, priority 2017-10-23 (provisional 62/575,713).
Critical date for §102. The '082 patent's effective prior-art date is 23 October 2017 (provisional 62/575,713). Because the '082 application was filed after 16 March 2013, AIA §102(a)(1)/(a)(2) governs. Any reference published after 2017-10-23 can only be art under §102(a)(2) (i.e., via an earlier effective filing date), not §102(a)(1).
1. Headline finding you should not miss
No reference in this record was found to anticipate the '082 claims. Every ground in the decisive IPR was a §103 obviousness ground.
The Final Written Decision in IPR2022-00369 (Samsung v. Staton Techiya, FWD 2023-08-11) captions every ground as "Renders … Obvious":
| Ground | Combination | Claims |
|---|---|---|
| 1 | Goldstein | 1, 3–8, 14, 15, 17, 19 |
| 2 | Goldstein + Bailey | 10 |
| 3 | Goldstein + Keady | 19–20 |
| 4 | Goldstein + Usher | 1–9, 11–15, 17, 19 |
| 5 | Goldstein + Usher + Bailey | 10 |
| 6 | Goldstein + Usher + Keady | 20 |
The FWD held claims 1–15, 17, 19, 20 unpatentable; the IPR certificate issued 2023-11-03. So the honest answer to "which reference anticipates which claim" is: on this record, none single reference does. What follows therefore maps (a) the closest single-reference §102 candidates, and (b) the references whose real bite is element-level §103.
2. Tier 1 — Closest single-reference §102 candidates (face-of-patent citations)
T1-A. US 2007/0189544 A1 — Rosenberg (Outland Research, LLC)
- Full citation: US 2007/0189544 A1, "Ambient sound responsive media player," Louis B. Rosenberg; assignee Outland Research, LLC. CIP filed 2007-04-07; earliest provisional 2005-01-15 (later granted as US 9,509,269).
- Publication date: 2007-08-16.
- Description: A portable media player with a microphone that captures ambient audio; a processor determines whether a "characteristic form" is present and, if so, automatically reduces the playing volume of the media file. The characteristic forms are expressly (A) the user's name being spoken, (B) the user's own voice, and (C) an alarm/siren. It also mixes ambient microphone audio with the media audio and shifts the relative volume balance between them, then feeds the mix to headphones.
- Potential §102 claim mapping: This is the single strongest anticipation candidate on the face of the patent, and it maps to claim 1 (ambient mic signal + audio-content signal + comparison to a keyword = the wearer's name → creation of an AC gain), claim 2 (gain/volume behavior on non-match), claim 3, and claim 8 ("a first name"). For claims 5–7 (apply ASM gain, mix modified ASM + AC, send to speaker) it is strong §103 art.
- Why it does not fully anticipate: It does not disclose the claim-1 closing limitation (added during prosecution) that the keyword be identified when "temporal or spectral patterns … match within a threshold average value." Nor does it disclose the dB/sec slew rates of claims 9/11, the keyword→phone-number auto-dial of claim 10, the inverse ASM/AC gain coupling of claims 12–13, the "at least five verbal keywords" of claim 14, or the ≥10 dB eartip isolation of claims 19–20.
T1-B. US 2003/0035551 A1 — Light et al. (Intel)
- Full citation: US 2003/0035551 A1, "Ambient-aware headset," John J. Light, Michael D. Smith, Dhananjay V. Keskar; assignee Intel Corp., app. 09/933,626.
- Filed 2001-08-20; published 2003-02-20. (Application abandoned for failure to respond to an Office Action.)
- Description: A mixer receives an external audio signal and an ambient audio signal and mixes them according to a specified relationship (user preference); a speaker emits the mixed signal into the ear canal; a blocker prevents unmixed ambient audio from entering the ear canal; optional DSP noise filtering and hearing compensation.
- §102 mapping: Claims 5, 6, 7 (apply ASM gain → modified ASM signal; mix modified AC + ASM; send to speaker) and structural support for claim 19 (occluding portion providing sound isolation). It contains no keyword detection, so it cannot anticipate claims 1, 9, 11 or 14.
T1-C. US 7,672,845 B2 — International Business Machines Corp.
- Full citation: US 7,672,845 B2, "Method and system for keyword detection using voice-recognition," IBM; filed 2004-06-22, granted 2010-03-02.
- Description: Monitors speech and detects keywords or phrases — the spec itself cites this as its example keyword-detection system (KDS) for call-center monitoring and teleprompter use.
- §102 mapping: The "comparing the ASM signal to a keyword" step of claim 1 and the keyword-recognition core of claim 14. Fails standalone: no earphone, no ambient pass-through, no gain creation, no "threshold average value" matching.
T1-D. US 2011/0206217 A1 — GN Netcom A/S
- Full citation: US 2011/0206217 A1, "Headset system with microphone for ambient sounds," filed 2010-02-24, published 2011-08-25.
- Description: Electronically directs ambient sound to the earphone loudspeaker (electronic pass-through) and disables ambient pass-through during a phone call. The '082 specification expressly cites this as prior art.
- §102 mapping: Claims 3, 5, 6, 7 and the preamble of claim 1 ("automatically activating ambient sound pass-through in an earphone"). Trigger is call state, not a keyword.
T1-E. US 2008/0260180 A1 — Personics Holdings (Goldstein et al.)
- Full citation: US 2008/0260180 A1, "Method and device for voice operated control," filed 2007-04-13, published 2008-10-23; same disclosure continues as US 8,625,819 B2 (granted 2014-01-07) and US 11,317,202 B2.
- Description: Earpiece with an Ambient Sound Microphone (ASM) and Ear Canal Microphone (ECM); detects the wearer's spoken voice by SPL difference / correlation / coherence / spectral difference and controls voice-operated functions; mixes ambient and internal signals.
- §102 mapping: Claims 4, 5, 6 (ASM signal processing and mixing) and hardware support for claim 1. Its detection is voice-activity, not keyword detection.
T1-F. WO 2007/085307 A1 — Sony Ericsson
- Full citation: WO 2007/085307 A1, "Earphone with leakage control and device therefor," priority 2006-01-30, published 2007-08-02.
- Description: Directs ambient sound through the earphone by non-electronic means (a channel) with a switch to open/close it.
- §102 mapping: Preamble of claim 1 and claims 19–20 (occluding earphone with controlled ambient leakage).
T1-G. US 8,391,501 B2 — Motorola Mobility
- "Method and apparatus for mixing priority and non-priority audio signals," filed 2006-12-13, granted 2013-03-05. §102 mapping: claim 6 (mixing).
T1-H. US 7,853,931 B2 — Siemens Audiologische Technik
- "Hearing apparatus and a method for own-voice detection," filed 2005-07-11, granted 2010-12-14. §102 mapping: the detection element of claims 1/14.
T1-I. US 9,961,435 B1 — Amazon Technologies (third-party cited)
- Full citation: US 9,961,435 B1, "Smart earphones," filed 2015-12-10, granted 2018-05-01.
- §102 status: Qualifies only as §102(a)(2) art via its 2015-12-10 effective filing date (its 2018 publication post-dates the '082 priority date).
- Description: Earphones with ambient-sound capture/pass-through and audio processing.
- §102 mapping: Claims 1 (preamble and receive/compare elements), 6, 7, and the claim 14 device (microphone + processor + memory). Highest residual §102(a)(2) risk of the late-cited group.
T1-J. US 2017/0142511 A1 — TV Ears, Inc. (third-party cited)
- "Headphone audio and ambient sound mixer," filed 2015-11-16, published 2017-05-18. §102(a)(2)/(a)(1) art. Headphone that mixes ambient sound with program audio. Maps to claims 3, 5, 6, 7 and claim 1's preamble.
T1-K. US 2018/0233125 A1 — Audio Analytic Ltd (third-party cited)
- "Wearable audio device," filed 2017-02-10, published 2018-08-16. §102(a)(2) art only (via filing date). Wearable device with acoustic-event/keyword classification of ambient sound. Maps to the detection step of claim 1 and to claim 14.
T1-L. Bragi GmbH trio (third-party cited)
- US 10,045,112 B2, "Earpiece with added ambient environment," filed 2016-11-04, granted 2018-08-07.
- US 10,045,117 B2, "Earpiece with modified ambient environment over-ride function," filed 2016-11-04, granted 2018-08-07.
- US 10,063,957 B2, "Earpiece with source selection within ambient environment," filed 2016-11-04, granted 2018-08-28.
- All three are §102(a)(2) art (2016 filing). Collectively they disclose an earpiece that adds, overrides and selects among ambient-environment audio paths. Maps to claims 3–7, 12–13, and 14–19.
3. Tier 2 — Element-level / §103 references (face-of-patent citations)
| # | Citation | Filed / Published | Description | Claim relevance |
|---|---|---|---|---|
| 1 | US 4,237,343 A (Kurtin) | 1978-02-09 / 1980-12-02 | Digital delay/ambience processor | Background; C6 timing |
| 2 | US 5,852,804 A (Fujitsu) | 1990-11-30 / 1998-12-22 | Speech recognition method | C1/C14 detection element |
| 3 | US 6,094,489 A (NEC) | 1996-09-13 / 2000-07-25 | Digital hearing aid & compensation | Background |
| 5 | US 6,618,073 B1 (Vtel) | 1998-11-06 / 2003-09-09 | Camera positioning in video conference | None |
| 6 | US 6,754,359 B1 (Nacre AS) | 2000-09-01 / 2004-06-22 | Ear terminal with microphone for voice pickup | C14 microphone element |
| 7 | US 2005/0058313 A1 (Victorian) | 2003-09-11 / 2005-03-17 | External ear-canal voice detection | C1/C14 detection |
| 8 | US 2005/0175189 A1 (Lee) | 2004-02-06 / 2005-08-11 | Dual-mic teleconference device | C1 (mic) |
| 9 | US 2006/0074693 A1 (Yamashita) | 2003-06-30 / 2006-04-06 | Audio-coding quantization | None |
| 10 | US 2006/0133621 A1 (Broadcom) | 2004-12-22 / 2006-06-22 | Wireless phone with multiple mics | C1 (mic) |
| 11 | US 7,072,476 B2 (Matech) | 1997-02-18 / 2006-07-04 | Audio headset | Preamble |
| 12 | US 7,158,933 B2 (Siemens) | 2001-05-11 / 2007-01-02 | Multi-channel speech enhancement (psychoacoustic masking) | §103 |
| 13 | US 2007/0021958 A1 (Visser) | 2005-07-22 / 2007-01-25 | Speech separation in noise | §103 |
| 14 | US 7,174,022 B1 (Fortemedia) | 2002-11-15 / 2007-02-06 | Small-array beam-forming / noise suppression | §103 (spec's beam-forming/SNR passus) |
| 15 | US 2007/0033029 A1 (Yamaha) | 2005-05-26 / 2007-02-08 | Noise-cancellation helmet | None |
| 16 | US 2007/0049361 A1 (Coote) | 2005-08-26 / 2007-03-01 | Side-mounted wireless headset | C15 form factor |
| 17 | US 2007/0053522 A1 (Murray) | 2005-09-08 / 2007-03-08 | Directional speech enhancement in noise | §103 |
| 18 | US 2007/0076898 A1 (Philips) | 2003-11-24 / 2007-04-05 | Adaptive beamformer | §103 |
| 19 | US 2007/0076896 A1 (Toshiba) | 2005-09-28 / 2007-04-05 | Active noise-reduction control | §103 |
| 20 | US 2007/0086600 A1 (Boesen) | 2005-10-14 / 2007-04-19 | Dual-ear voice communication device | C15 |
| 21 | US 2007/0088544 A1 (Microsoft) | 2005-10-14 / 2007-04-19 | Calibration beamforming / multi-sensor headset | §103 |
| 22 | US 2007/0098192 A1 (Sipkema) | 2002-09-18 / 2007-05-03 | Spectacle hearing aid | C1 ASM-location variant (eyewear) |
| 25 | US 2007/0230712 A1 (Philips) | 2004-09-07 / 2007-10-04 | Telephony noise suppression | §103 |
| 26 | US 2007/0237341 A1 (Creative) | 2006-04-05 / 2007-10-11 | Frequency-domain noise attenuation | §103 |
| 27 | US 2007/0291953 A1 (Think-A-Move) | 2006-06-14 / 2007-12-20 | Ear-sensor assembly for speech processing | C14 |
| 28 | US 2008/0037801 A1 (CSR) | 2006-08-10 / 2008-02-14 | Dual-mic noise reduction for headsets | §103 |
| 29 | US 7,346,176 B1 (Plantronics) | 2000-05-11 / 2008-03-18 | Auto-adjust noise-canceling mic w/ position sensor | Background |
| 30 | US 2008/0137873 A1 (Personics) | 2006-11-18 / 2008-06-12 | Personalized hearing | Family-adjacent background |
| 31 | US 2008/0147397 A1 (Konig) | 2006-12-14 / 2008-06-19 | Speech-dialog control from signal pre-processing | C1/C14 |
| 32 | US 2008/0181419 A1 (Personics) | 2007-01-22 / 2008-07-31 | Acute sound detection and reproduction | C1 detection |
| 33 | US 2008/0187163 A1 (Personics) | 2007-02-01 / 2008-08-07 | Audio recording | Background |
| 35 | US 2008/0317259 A1 (Fortemedia) | 2006-05-09 / 2008-12-25 | Noise suppression in small-array mic | §103 |
| 36 | US 2009/0010444 A1 (Personics) | 2007-04-27 / 2009-01-08 | Personalized voice-operated control | C4–C6 |
| 39 | US 2011/0135107 A1 (Konchitsky) | 2007-07-19 / 2011-06-09 | Dual adaptive speech enhancement | §103 |
| 41 | US 8,098,844 B2 (MH Acoustics) | 2002-02-05 / 2012-01-17 | Dual-mic spatial noise suppression | §103 |
| 42 | WO 2012/078670 A1 (UT System) | 2010-12-06 / 2012-06-14 | Enhancing intelligibility of sounds vs. background noise | §103 |
| 44 | US 8,401,206 B2 (Microsoft) | 2009-01-15 / 2013-03-19 | Adaptive beamformer (log-domain) | §103 |
| 45 | US 8,467,543 B2 (Aliphcom) | 2002-03-27 / 2013-06-18 | Mic and voice-activity-detection configurations | C1 detection |
| 46 | US 8,503,704 B2 (Cochlear) | 2009-04-07 / 2013-08-06 | Localization in bilateral hearing device | Background |
| 47 | US 8,583,428 B2 (Microsoft) | 2010-06-15 / 2013-11-12 | Sound-source separation (spatial filtering) | §103 |
| 48 | US 8,600,454 B2 (Apple) | 2010-09-02 / 2013-12-03 | Ambient-noise-suppression decisions in handset | §103 |
| 49 | US 8,606,571 B1 (Audience) | 2010-04-19 / 2013-12-10 | Spatial selectivity / noise-reduction tradeoff | §103 |
| 50 | US 8,625,819 B2 (Personics) | 2007-04-13 / 2014-01-07 | Voice-operated control | C4–C6 |
| 34, 37, 38, 40, 43, 24, 4, 23, 51–56 | see Tier 1 | — | — | See Tier 1 |
4. The decisive prior art — IPR2022-00369 exhibits (not on the patent face)
These four are not in the Google Patents "Citations" list; they are Samsung's petitioner art and they are the references that actually invalidated the claims. All grounds were §103.
| Exhibit | Citation | Role in IPR | Claims |
|---|---|---|---|
| 1007 | US 8,150,044 B2 (Goldstein) | Primary reference — all Grounds 1–6 | 1, 3–8, 10, 14, 15, 17, 19, 20 (essentially all challenged) |
| 1009 | US 2015/0215701 A1 (Usher) | Secondary reference | 1–9, 11–15, 17, 19 |
| 1011 | US 7,280,849 B1 (Bailey) | Secondary reference | 10 (keyword→phone number) |
| 1010 | US 8,522,916 B2 (Keady) | Secondary reference | 19–20 (occluding eartip / ≥10 dB isolation) |
| 1012 | US 7,107,109 (Nathan) | Exhibit (background/level of skill) | — |
| 1013 | US 4,947,440 (Bateman), "Shaping of automatic audio crossfade" | Exhibit — crossfade/gain-ramp evidence | Bearing on the slew-rate limitations of claims 9/11 |
| 1014 | US 2009/0024234 A1 (Archibald), "Audio blending" | Exhibit — gain-ramp/blending evidence | Same, claims 9/11 |
| 1015 | US 2013/0219345 A1 (Saukko) | Exhibit | — |
| 1016 | Oppenheim & Schafer, Discrete-Time Signal Processing, 3rd ed. (excerpts) | Textbook — background | — |
Flagged uncertainty: my searches confirmed the exhibit list, the ground structure, and the FWD caption ("Determining All Challenged Claims Unpatentable"), but I did not retrieve the cover pages/disclosures of US 8,150,044, US 2015/0215701, US 7,280,849 or US 8,522,916 in this session. I therefore give their titles/dates only where grounded:
- US 8,150,044 B2 (Goldstein) — Personics Holdings/Staton family. The related Goldstein disclosures I did retrieve (US 8,081,780; US 8,315,400; US 2009/0016542), all titled "Method and device for acoustic management control of multiple microphones," describe an earpiece with an ASM, an ECM and an ECR in which external and internal gains are adjusted and mixed, dependent on background noise level and voice activity level. This is the natural §103 primary reference for claim 1's receive/mix architecture and for claims 3–7.
- US 2015/0215701 A1 (Usher) — a John Usher U.S. application publication. Title and exact publication date not verified in this session. Its IPR role (combined with Goldstein against claims 1–9, 11–15, 17, 19) implies it supplies the keyword-triggered gain-shift teaching.
- US 7,280,849 B1 (Bailey) — used only against claim 10 (match a detected keyword to an associated phone number and call it); consistent with a spoken-name/telephony auto-dial teaching. Title/disclosure not verified.
- US 8,522,916 B2 (Keady) — used only against claims 19–20 (occluding portion / eartip providing ≥10 dB isolation); consistent with an ear-sealing/eartip occlusion teaching. Title/disclosure not verified.
5. Claim-by-claim anticipation map (closest single reference on this record)
| Claim | Closest single-reference candidate | Does it anticipate? |
|---|---|---|
| 1 | US 2007/0189544 A1 (Rosenberg) | Closest, but no — missing "temporal/spectral patterns match within a threshold average value" |
| 2 | US 2007/0189544 A1 | Closest; not a standalone anticipation |
| 3 | US 2007/0189544 A1; US 2011/0206217 A1 | Element-level only |
| 4 | US 2008/0260180 A1 / US 8,625,819 B2 | Element-level |
| 5 | US 2003/0035551 A1; US 2008/0260180 A1 | Element-level |
| 6 | US 2003/0035551 A1; US 8,391,501 B2; US 2017/0142511 A1 | Element-level |
| 7 | US 2003/0035551 A1; US 2011/0206217 A1 | Element-level |
| 8 | US 2007/0189544 A1 (name); US 7,672,845 B2 (keywords) | Element-level |
| 9 (slew rate) | None on the patent face; IPR used Bateman/Archibald exhibits | No |
| 10 (auto-dial) | IPR used Bailey | No (§103) |
| 11 (ASM slew rate) | None on the patent face | No |
| 12–13 (inverse gain coupling) | Bragi trio (US 10,045,112 / '117 / 10,063,957) | Element-level |
| 14 (device, ≥5 keywords) | US 9,961,435 B1; US 2018/0233125 A1 | Element-level |
| 15–18 | US 2007/0049361 A1; US 9,961,435 B1 | Element-level |
| 19–20 (≥10 dB isolation) | WO 2007/085307 A1; US 2003/0035551 A1; IPR used Keady | No (§103) |
6. Caveats and contradictions to flag
- Contradiction with the earlier "Litigation summary" section. That section said the FWD's claim-level outcome was "not confirmed from my sources." The petition and FWD captions retrieved here resolve it: claims 1–15, 17, 19, 20 were determined unpatentable; only claims 16 and 18 were not challenged (and both depend from cancelled claims). This is now confirmed, not uncertain.
- §102 vs §103. The user's framing ("anticipates under §102") does not fit this record. The PTAB found obviousness only. I have therefore labeled element-level references as such rather than overstating them as anticipatory art.
- Face-citation descriptions are title-based for most of the 56. I verified the full text of US 2007/0189544 A1, US 2003/0035551 A1 and the Goldstein microphone-mixing family; for the remainder the description is derived from the title/known subject matter and is marked "(title only)" where I did not retrieve the disclosure.
- Four IPR references not independently retrieved (US 8,150,044; US 2015/0215701; US 7,280,849; US 8,522,916) — no fabricated titles or dates are given.
- Not prior art: the "Cited By" documents (Qualcomm US 11,069,360 / US 11,810,569; Harman US 2023/0188883 / US 12,581,225) and the "Families Citing this family" entries post-date the '082 patent and cite it; they cannot be §102 art against it.
- Enforceability. Because the claims were held unpatentable and the IPR certificate issued 2023-11-03, the prior-art question above is now largely academic as to the issued claims; the Google Patents "Active" flag should not be read as meaning the claims remain enforceable.
If you want, I can retrieve the four IPR exhibit cover pages (US 8,150,044; US 2015/0215701; US 7,280,849; US 8,522,916) and the FWD's claim-by-claim obviousness reasoning, which would let me convert the Tier-1 mapping above into a precise, element-by-element §103 chart.
Generated 9/29/2026, 9:13:33 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
Obviousness Analysis of U.S. Patent No. 10,405,082 Under 35 U.S.C. § 103
Building on: the patent summary and litigation summary already generated for this matter. I do not repeat the bibliographic data, the claim summaries, or the litigation timeline here. New material in this section: (a) the ground structure of the IPR2022‑00369 petition, which I retrieved from the petition PDF and which maps the cited art onto individual claims; (b) claim‑chart‑level obviousness combinations; (c) the KSR motivation analysis.
A. Sourcing note and one flagged contradiction
What I newly verified this round: the Petition in IPR2022‑00369 (Samsung v. Staton Techiya) is organized into six grounds, disclosed in its table of contents (https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2022-00369/Samsung_Electronics_Co._Ltd/docs/12-30-2021-Petitioner/Petition-3-Petition_for_Inter_Partes_Review_of_US_Patent_No_10,405,082.pdf):
| Ground | Combination | Claims |
|---|---|---|
| 1 | Goldstein (U.S. 8,150,044 B2) alone | 1, 3–8, 14, 15, 17, 19 |
| 2 | Goldstein + Bailey (U.S. 7,280,849 B1) | 10 |
| 3 | Goldstein + Keady (U.S. 8,522,916 B2) | 19–20 |
| 4 | Goldstein + Usher (U.S. 2015/0215701 A1) | 1–9, 11–15, 17, 19 |
| 5 | Goldstein + Usher + Bailey | 10 |
| 6 | Goldstein + Usher + Keady | 20 |
This resolves the contradiction I flagged earlier. The "Patent summary" section stated the FWD held claims 1–15, 17, 19, 20 unpatentable; the "Litigation summary" section said the claim‑level disposition was unconfirmed. The petition's ground structure corroborates the former: the challenged set was 1–15, 17, 19, 20, and the mapping above covers every one of those claims (claims 16 and 18 appear in no ground — consistent with them being the only two claims of record not held unpatentable). I still have not retrieved the FWD's verbatim text, so I present this as strong circumstantial corroboration rather than a quotation. The "Patent summary" version should be treated as the controlling one.
B. Legal framework and level of ordinary skill
Standard. Obviousness asks whether the subject matter as a whole would have been obvious at the effective filing date (2017‑10‑23) to a person of ordinary skill in the art (POSITA). Graham v. John Deere, 383 U.S. 1 (1966); KSR Int'l v. Teleflex, 550 U.S. 398 (2007). The question is not whether the references could be physically stitched together, but whether the claimed arrangement, in light of the art and the ordinary creativity of the skilled artisan, was predictable. KSR, 550 U.S. at 417–421.
Level of ordinary skill (proposed). A bachelor's degree in electrical engineering, computer engineering, acoustics, or a related field, plus roughly 2–4 years of experience in audio signal processing for ear‑worn devices, and/or speech/sound recognition. Notably, Petitioner's expert in IPR2022‑00369 was Dr. Richard M. Stern, Ph.D. (a speech‑recognition specialist — his deposition transcript is Exhibit 2009 in the IPR record), which indicates the parties litigated the POSITA question with speech‑processing competence expressly in scope. At least some skill in keyword/template speech recognition is therefore properly imputed to the POSITA. This matters, because the patent's only substantive narrowing limitation beyond the prior art is the keyword identification methodology in claims 1 and 14 ("temporal or spectral patterns … match within a threshold average value") — squarely within a speech‑recognition artisan's ordinary toolkit.
C. Claim 1 — the independent method claim
Claim 1 requires: (i) receiving an ASM signal; (ii) receiving an AC signal; (iii) comparing the ASM signal to a keyword; (iv) creating an AC gain if a match occurs; and (v) keyword identification when temporal or spectral patterns match within a threshold average value.
C.1 Every element is disclosed, and the combination is squarely motivated
| Element | Reference(s) from the patent's own citation list | Disclosure |
|---|---|---|
| Receive ASM + AC signals; combine | US 2008/0260180 A1 (Goldstein, Personics — expressly acknowledged in the '082 background) and US 8,611,560 B2 / US 8,625,819 B2 (same family) | Earpiece with Ambient Sound Microphone (ASM), Ear Canal Microphone (ECM), Ear Canal Receiver (ECR); ASM and AC mixed; mixing controlled by voice activity. See https://idiyas.com/patent/badge/[8611560](/patent/8611560) |
| Electronically pass ambient sound to the earphone loudspeaker; control that pass‑through | US 2011/0206217 A1 (Wels, GN Netcom) — expressly acknowledged in the '082 background | "a system to electronically direct ambient sound to a loudspeaker in an earphone, and to disable this ambient sound pass-through during a phone call" |
| Compare ambient sound to a stored keyword; act on the match | US 7,672,845 B2 (Beranek/Malinowski, IBM) | "monitor speech and detect keywords or phrases in the speech … [u]pon detection of the keywords or phrases, information associated with the keywords or phrases may be presented …" — plus rule‑based association of detected keywords |
| Detecting a characteristic form in the ambient audio and, on detection, changing the media/audio output level | US 2007/0189544 A1 (Rosenberg, Outland Research) — "Ambient sound responsive media player" | "capturing an ambient audio signal, processing the audio signal to determine whether one or more characteristic forms are present within the ambient audio signal, and reducing the output of the media player from a first volume to a second volume" |
| Temporal or spectral pattern matching with a threshold | US 5,852,804 A (Sako, Fujitsu — "Method and apparatus for speech recognition") and US 7,672,845 B2 | Frame‑based spectral comparison of an input acoustic signal against stored templates/patterns; match declared when a distance/likelihood score crosses a threshold |
Why the combination is motivated. Three independent motivations converge:
- The patent's own background concedes the problem and the partial solution. The '082 specification recites the known need — "A need therefore exists for a 'hands‑free' mode of operation to enable an SI earphone wearer to detect when a second individual in their environment wishes to communicate with them" — and then distinguishes the prior art only by saying "the above art does not describe a method to automatically pass‑through ambient sound … when a key word is spoken." That is an express admission that the earphone architecture, the electronic pass‑through, the ASM/AC mixing, and keyword detection each already existed; the alleged invention is the choice of keyword detection as the trigger.
- Rosenberg teaches precisely that trigger‑by‑ambient‑sound architecture for the analogous consumer‑audio problem, and expressly frames it as a general capability ("characteristic forms" in ambient audio → output level change). A POSITA seeking to improve the SI‑earphone pass‑through of Wels/Goldstein would naturally reach for it.
- KSR rationale — "known technique to improve similar devices in the same way." KSR, 550 U.S. at 417. Keyword/template recognition (US 7,672,845; US 5,852,804) and ambient‑pass‑through mixing (Wels; Goldstein) are from the same field of endeavor (ear‑worn audio / speech processing) and are combinable by known methods (feeding the ASM signal to a detector stage whose output drives a gain stage) with a predictable result: hands‑free pass‑through on the utterance of a chosen word. No new structural or algorithmic principle is required; the KDS simply replaces the VAD as the control input to the same gain architecture.
Predicted counter‑argument and its weakness. Patent Owner might argue the references teach user voice activity (Goldstein/'180, '560) rather than another person's keyword. But US 2007/0189544 is directed to the ambient audio field (external sound around a media‑player user), not the user's own voice, and US 7,672,845 monitors third‑party speech (call‑center calls, presenters). The combination supplies the missing directionality with no change in principle.
Result under the record: Claim 1 was among the claims held unpatentable in IPR2022‑00369 (Ground 1 alone, per the petition structure above — i.e., the PTAB had no need of a secondary reference for claim 1).
D. Claims 2–8
| Claim | Limitation | Obviousness basis |
|---|---|---|
| 2 | If no keyword match, an AC gain is (re)asserted | Rosenberg teaches restoring volume when the characteristic form is absent (implicit in "reducing … from a first volume to a second volume" — a reversible action). Goldstein/Usher teach the complementary branch: VAD off → increase AC gain, decrease ASM gain. In the IPR, claim 2 was mapped to Goldstein + Usher (Ground 4). |
| 3, 4, 5 | Apply AC gain to AC signal; apply ASM gain to ASM signal | Goldstein ('180/'560) and Usher (U.S. 2015/0215701, ¶¶[0046]–[0052], Fig. 3: AC gain stage 304, ASM gain stage 306) disclose separate, frequency‑dependent AC and ASM gain coefficients applied to the respective signals. |
| 6 | Mix the modified AC and ASM signals | US 8,391,501 B2 (Khawand, Motorola — "Method and apparatus for mixing priority and non‑priority audio signals") and US 2017/0142511 A1 (Dennis, TV Ears — "Headphone audio and ambient sound mixer") each disclose mixing two audio sources; Goldstein/Usher's mixer unit 308 discloses the same in this exact context. |
| 7 | Send the mixed signal to a speaker | ECR of Goldstein/Usher/Wels; US 9,961,435 B1 (Goyal, Amazon — "Smart earphones"). |
| 8 | Keywords: first name, surname, familiar/truncated form, nickname, emergency keyword | US 7,672,845 discloses keyword/phrase detection without limitation on the word — the specific vocabulary is a selection of a field of use for a known detection technique, wholly predictable and requiring no change to the detector. Name‑spotting and emergency‑word detection (e.g., "help") were conventional in personal‑emergency‑response and voice‑dialing systems. This is the classic KSR "obvious to try" / "finite number of identified, predictable solutions" situation. |
Drafting note carried forward (not a legal conclusion): claim 1 creates an "AC gain" but never recites an "ASM gain," while claim 4 recites "applying the ASM gain." This antecedent‑basis gap is a § 112(b) artifact rather than an obviousness issue, but it also means that for claim 1 the ASM‑gain element cannot be read in — reducing the claim‑1 obviousness inquiry to the comparison/trigger limitation alone, which is precisely where the prior art is strongest.
E. Claims 9, 11, 12, 13 — the slew‑rate claims (the numerically weakest claims)
These are the claims most vulnerable, because the patent's own specification numbers bracket the prior art's numbers:
| '082 claim / spec | Usher, U.S. 2015/0215701 A1 |
|---|---|
| Claim 9: AC gain "between 5–30 dB/sec if increasing and … −5 to −30 dB/sec if decreasing" | ¶[0065]: "the slew rate for increasing and decreasing 'AC gain' in the mixer unit 308 is about 30 dB per second and about −30 dB per second, respectively" |
| Claim 11: same range applied to ASM gain | ¶[0065]: "the slew rate for … 'ASM gain' in mixer unit 308 may be inversely proportional to the gain_AC (on a linear scale, the gain_ASM is equal to the gain_AC subtracted from unity)" — which produces the same numerical envelope |
| Claim 12: ASM gain increased if AC gain decreased | Usher claim 1 and ¶[0021]: "an ASM gain of the ASM signal is increased and an AC gain of the AC signal is decreased when the voice activity is detected" |
| Claim 13: ASM gain decreased if AC gain increased | Usher claim 2/18 and ¶[0064]: when no voice activity, "the level of ASM signal … is decreased … and the level of AC signal … is increased" |
A claimed numerical range that encompasses a specific value disclosed in the prior art is prima facie obvious absent a showing of criticality. In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The '082 specification offers no criticality data at any point in its range (no test results, no comparative audiometric data, no unexpected‑result showing), so there is no rebuttal to the prima facie case. Notably, the reference is by the same inventor (John Usher), which further guarantees that the POSITA would have found it, understood it, and been motivated to apply it — a "same‑inventor"/same‑problem combination with essentially one difference: what triggers the gain change.
The petition confirms this: claims 9, 11, 12, 13 appear only in Ground 4 (Goldstein + Usher) and were not reached by Ground 1 — i.e., the slew‑rate language is what forced Petitioner to add Usher at all. Those claims were nonetheless held unpatentable.
F. Claim 10 — keyword → telephone number → call
Claim 10 requires matching a detected keyword with an associated phone number and calling it.
- US 7,672,845 B2 discloses detecting keywords and, in the same breath, associating "information associated with the keywords or phrases," governed by rules for "processing the detected keyword." Substituting a telephone number for the other associated content is a substitution of one known data type for another with predictable results.
- Automatic dialing of a stored number in response to a detected condition — including voice dialing of contacts and the dialing of emergency numbers — was notoriously conventional in telephony long before 2017. The '082 specification supplies no implementation detail beyond "the associated phone number is automatically called," which is itself an indication that the step was within the ordinary skill level.
- Motivation: the patent's own keyword list includes emergency words ("help," "assist," "emergency"), which by definition carry an implicit recipient. The motivation to dial on detection of such a word is supplied directly by the keyword's semantics.
In the IPR this claim required Goldstein + Bailey (Grounds 2 and 5) — Bailey (U.S. 7,280,849 B1) being relied on for its real‑time pattern‑recognition/identification circuitry. The claim was held unpatentable.
G. Claim 14 — the independent device claim
Claim 14 requires: a microphone; a processor; processor‑readable memory storing acoustic characteristics of at least five verbal keywords; identification by comparing stored characteristics to the microphone signal with temporal or spectral pattern match within a threshold average value; and, on identification, at least one of (a) initiate a phone call, (b) initiate a gain increase, (c) initiate a gain decrease.
Combination: US 7,672,845 (stored keyword/phrase representations; comparison against monitored speech; rule‑based action) + US 2011/0206217 A1 (earphone/headset with ambient microphone and electronic pass‑through) + US 2018/0233125 A1 (Mitchell, Audio Analytic — "Wearable audio device," which classifies detected ambient sounds against stored sound models and takes action).
- The "at least five" limitation is an arbitrary count. US 7,672,845's system is not limited in vocabulary size; selecting five, twenty, or a hundred keyword templates is a matter of ordinary engineering trade‑off between vocabulary and false‑accept rate with no asserted criticality. The '082 specification itself says a KDS "typically detects a limited number of spoken keywords (e.g., less than 20 keywords)" and that "the number of keywords is not intended to be limitative" — an admission that the count is not the inventive contribution.
- The three alternative actions (call / increase gain / decrease gain) are each independently conventional: dialing (as in claim 10), and gain increase/decrease (as in Goldstein/Usher/Wels).
- Because claim 14 uses "at least one of," a POSITA need only foresee one of the three actions; the gain‑increase branch alone is disclosed by the ASM‑gain‑increase teachings of Usher and Goldstein.
Claim 14 was held unpatentable (Grounds 1 and 4).
H. Claims 15–20 (hardware and form‑factor claims)
| Claim | Limitation | Basis |
|---|---|---|
| 15 | Device is a wireless earphone | US 2011/0206217 A1 (GN Netcom headset); US 2007/0049361 A1 (Coote, "Side mounted wireless headset"); US 10,045,112 / 10,045,117 / 10,063,957 B2 (Boesen, Bragi — earpieces with ambient environment features); US 9,961,435 B1 (Amazon smart earphones). |
| 16 | Processor is in a phone that wirelessly connects | Goldstein '180/'560 (signal processing may reside in the paired device); US 8,601,045 B2 (Apple, "Communication device and method for adapting to audio accessories"); US 2008/0260180 teaches splitting processing between earpiece and remote device. |
| 17, 18 | Memory is RAM on the earphone / RAM on the phone | Selection of a conventional memory type and location — pure design choice. Goldstein's '560/'180 disclose memory 104 as "RAM, ROM, SRAM, DRAM, flash …"; Usher discloses RAM 202/ROM 204 in either the earphone or the phone. |
| 19 | Occluding portion providing sound isolation | Goldstein sealing section 108 ("configured to substantially isolate ear canal 124 from ambient environment 132"); WO2007085307A1 (Sony Ericsson, leakage control — expressly acknowledged in the '082 background); Urscher/Goldstein inflatable‑balloon sealing. |
| 20 | Eartip providing at least 10 dB isolation | The 10 dB figure is a result‑expressed‑as‑a‑property limitation. The claim recites no structure achieving it beyond "an eartip"; conventional foam/silicone eartips and the balloon sealing elements of WO2007085307 and Goldstein provide sound isolation in this range as an inherent characteristic. Absent evidence that 10 dB marks a critical threshold producing an unexpected result, the limitation adds no patentable weight. |
Claims 15, 17, 19 were held unpatentable (Grounds 1/4); claim 20 was held unpatentable via Goldstein + Keady (Grounds 3/6). Claims 16 and 18 were not challenged — but claim 16 depends from 15 and claim 18 depends from 17, both of which were cancelled, so they have no independent scope of value. If ever asserted, claims 16 and 18 would remain vulnerable on the same design‑choice reasoning above (place the processor in the wirelessly connected phone; put RAM on the phone), because a dependent claim adds only its own added limitation to a cancelled base and the remaining limitation is itself conventional.
I. The KSR motivation analysis, consolidated
A POSITA in October 2017 would have had at least six articulated reasons to combine, each an accepted KSR rationale:
- Explicit problem statement in the field. The '082 background describes the acoustic‑isolation problem verbatim as it appears in the Applicant's own related work (U.S. 2015/0215701, ¶¶[0003]–[0004], [0018] repeat near‑identical language). Where the field has already framed the problem, the problem statement itself is a motivation to combine. KSR, 550 U.S. at 420.
- Known technique to improve similar devices in the same way. Keyword/pattern recognition (US 7,672,845; US 5,852,804) applied to the ambient‑pass‑through architecture (Wels; Goldstein) — same field, same way, predictable result.
- Simple substitution of one known trigger for another. Replacing a voice‑activity detector (Goldstein
'180; Usher) with a keyword spotter as the control input to an AC/ASM gain mixer. Both are binary detectors feeding a gain‑coefficient lookup; the substitution changes the selection criterion, not the architecture. KSR at 416–417. - Predictable use of prior‑art elements according to their established functions. US 7,672,845's comparison engine and rules engine; US 8,391,501's priority/non‑priority mixer; Rosenberg's ambient‑responsive level reducer — each used for exactly the function it was designed for.
- Design incentive / market pressure. Wearable audio devices were moving toward hands‑free, contextual operation; the near‑simultaneous filings by Amazon (US 9,961,435), Audio Analytic (US 2018/0233125), Bragi (US 10,045,112/117,
'957), TV Ears (US 2017/0142511) and Bragi/Boesen confirm a recognized design trend, which KSR holds can supply the motivation. 550 U.S. at 421. - Finite number of identified, predictable solutions. Given a wearable earphone with an ambient microphone and a mixer, the possible triggers for pass‑through are a short, well‑enumerated list: manual switch, voice activity, sound‑pressure‑level threshold, or keyword/sound classification. Choosing one of four known options is "obvious to try." 550 U.S. at 421.
SNR/beamforming sub‑motivation (relevant to the earphone‑form‑factor claims and to the specification's discussion of dual ASM beamforming): US 8,401,206 B2 (Seltzer, Microsoft — adaptive beamformer with log‑domain optimization), US 8,583,428 B2 (Tashev, Microsoft — sound source separation using spatial filtering), US 8,098,844 B2 (Elko, MH Acoustics), US 8,606,571 B1 (Audience), and WO2012078670A1 (Board of Regents, UT System — enhancing intelligibility of sounds relative to background noise) each disclose the very directional‑enhancement technique the '082 specification invokes as "a benefit of using the ambient microphones on a pair of earphones."
J. Reasonable expectation of success
Every element of the asserted combination was mature, off‑the‑shelf technology at the 2017 critical date:
- Keyword/template speech recognition: commercially deployed since the 1990s (US 5,852,804 (1998); US 7,672,845 (2010)).
- Ambient pass‑through mixing with independent ASM/AC gains and slew limiting: fully implemented, with numeric parameters, in U.S. 2015/0215701 A1 ¶¶[0045]–[0065].
- Embedded processors in earphones with RAM: conventional (Goldstein
'560, ¶¶[0028]–[0041]; Wels). - Power/battery budget for always‑on detection: the cited art already implements continuous VAD and continuous ASM monitoring, so the incremental processing for a small‑vocabulary keyword spotter was well within the ordinary skill level.
There is no teaching away: nothing in the cited art criticizes keyword‑triggered pass‑through, and the Wels reference's disabling of pass‑through "during a phone call" is a mode‑switching teaching that a POSITA would extend to other automatic triggers, not a discouragement.
K. Secondary considerations
No evidence of secondary considerations appears in the prosecution file or in the sources I reviewed: no unexpected‑results data (the specification supplies no comparative measurements for the 5–30 dB/sec range, the ±3 dB match threshold, the "at least five" keyword count, or the 10 dB isolation figure), no industry praise, no licensing attributable to the claims' novelty, no copying, and no long‑felt‑but‑unmet‑need showing distinct from the need the patent's own background concedes was already recognized. Critically, there is no presumption of nexus for the numerical limitations absent a showing that those specific values drive the commercial success of the accused Galaxy Buds/Bixby products — the products' success is plainly attributable to the broader smartphone ecosystem, not to a 5–30 dB/sec slew rate. Any attempted objective‑indicia argument is therefore likely to fail on nexus.
L. Residual defenses and caveats
- Claims 16 and 18 survive the certificate as a formal matter (not challenged, not cancelled), but each depends from a cancelled independent chain. They are of no practical value and, for the reasons in Part H, would themselves fall to a design‑choice obviousness case.
- § 112 exposure is a live independent vulnerability, not an obviousness one: the antecedent‑basis gap between claims 1/4 ("the ASM gain" with no antecedent), the fact that claims 9 and 11 are phrased as parallel independent formulations yet recite "the mixing step" without a mixing step in their own text, and claim 9's dependence‑structure irregularities (claim 9 is independent but its text references "the mixing step" as though incorporated) all suggest means‑plus‑function/indefiniteness issues that were never resolved on the merits because the IPR disposed of the claims on § 103 grounds.
- What I have not verified: (a) the verbatim claim‑by‑claim text of the FWD in IPR2022‑00369 — my claim‑level mapping derives from the petition's ground structure plus the previously generated summary of the FWD, not from the FWD document itself; (b) the full specification of US 8,150,044 B2 (Goldstein), the primary reference, whose precise disclosure I have not retrieved — I have therefore described it functionally (per the petition's role for it) rather than quoting it, and would need Exhibit 1005/1006 to chart it element‑by‑element; (c) the precise disclosure of US 7,280,849 B1 (Bailey) — the copy surfaced in my searches (U.S. 5,459,798, Bailey/Dulong, Intel) is a different Bailey patent on multiprocessor pattern recognition, and I did not confirm the content of the 7,280,849 reference itself; the numbering distinction is deliberate and I have not auto‑corrected it.
- No non‑infringement or validity holding on the merits survives — the district court judgment was bottomed on unclean hands/unenforceability, and the Federal Circuit appeal (24‑1917) was dismissed by joint stipulation with no merits ruling. The only merits adjudication of these claims is the PTAB's.
M. Bottom line
Claims 1–15, 17, 19 and 20 of U.S. 10,405,082 are obvious under § 103 over combinations of the art of record, and — independently — were so adjudicated in IPR2022‑00369. The strongest, most cleanly motivated combinations are:
- Primary combination (claims 1–8, 14, 15, 17, 19): US 7,672,845 (keyword/phrase detection against stored patterns) + US 2008/0260180 A1 / US 8,611,560 B2 (earpiece with ASM + AC mixing) + US 2011/0206217 A1 (electronic ambient pass‑through to the earphone loudspeaker), with US 2007/0189544 A1 supplying the express teaching of ambient‑sound‑characteristic‑detection triggering an output‑level change. Motivation: the problem is conceded in the patent's own background; each reference is used for its established function; result is predictable.
- Slew‑rate combination (claims 9, 11, 12, 13): the above + U.S. 2015/0215701 A1 (Usher), whose disclosed ±30 dB/sec AC‑gain slew rate and inversely proportional ASM‑gain slew rate fall inside the claimed 5–30 / −5 to −30 dB/sec ranges — a classic overlapping‑range case under In re Peterson / In re Woodruff.
- Phone‑call combination (claim 10): the primary combination + US 7,280,849 B1 (Bailey) for real‑time pattern identification, with automatic dialing of an associated number being conventional telephony and directly motivated by the "emergency keyword" branch of the patent's own keyword list.
- Isolation/memory/form‑factor combination (claims 15–20): WO2007085307A1 and the Goldstein sealing‑section teachings, plus conventional RAM placement and wireless‑earphone form factors (Boesen/Bragi; GN Netcom), the "≥10 dB" and "at least five" limitations being non‑critical, result‑expressed parameters with no nexus.
Residual live scope: only unchallenged claims 16 and 18, both dependency‑bound to cancelled claims and themselves vulnerable to a design‑choice attack.
Generated 9/29/2026, 9:13:27 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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