Invalidity dossier
US 10489096
Information apparatus and application for receiving digital content from a digital content service over the internet and for playing at least part of the received digital content at an output device
Current assignee: Flexiworld Technologies, Inc.
Added 8/28/2026, 12:48:42 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for this specific patent across the sources you named. Let me run several queries in parallel.
Let me pull the abstract and claim text directly, and check for any 2026 litigation/docket records.
Let me try to retrieve the claim set, and check for any 2026 court activity specifically.
I hit the search-step limit before I could pull verbatim claim text, so I'll give you what I verified and flag precisely what I could not.
US 10,489,096 — Verified Record
Bibliographic data (as reported by Google Patents, corroborated by Unified Patents and uspto.report/Golden):
| Field | Value |
|---|---|
| Patent number | US 10,489,096 B2 ("US10489096", "US10489096B2") |
| Title | Information apparatus and application for receiving digital content from a digital content service over the internet and for playing at least part of the received digital content at an output device |
| Application no. | 15/787,067 |
| Pre-grant publication | US 2018/0041482 A1 (published 2018-02-08) |
| Filed | 2017-10-18 (Google Patents; Golden). Unified Patents lists 2017-10-17 |
| Issued | 2019-11-26 (Google Patents; Golden). Unified Patents lists grant date 2019-11-25 |
| Earliest priority asserted | 2000-11-01 (Google Patents "Prior art date"; priority claimed from US 10/016,223, 2001-11-01 and US 10/053,765, 2002-01-18). Unified Patents lists 2000-10-31 |
| Inventors | William Ho Chang; Christina Ying Liu |
| Assignee (original and current) | Flexiworld Technologies, Inc. (assignment recorded 2018-05-25) |
| Legal status | Expired – Fee Related; anticipated expiration 2021-11-01 |
| Continuations | US 16/696,989 → US 11,029,903 B2; US 17/171,687 → US 2021/0165632 A1 |
Note the date/priority conflicts. The three databases do not agree on the filing date, grant date, or earliest priority date. I am reporting each literally rather than reconciling them, since the authoritative full text I hold lists "Priority date 2000-11-01 / Filing date 2017-10-18 / Publication date 2019-11-26."
Abstract (verbatim, identical across Unified Patents and Golden):
"Information apparatus (e.g., smart phone, Internet appliances, information pad, display devices) with software applications for receiving digital content from a service provided over a network (e.g., Internet) and for wirelessly playing at least part of the received digital content at a wireless output device (e.g., a Bluetooth enabled device) are herein disclosed and enabled. To receive and play the digital content, the software applications may obtain authentication information for accessing the service, receive a list of one or more digital content that is available from the service for selection on a touch sensitive screen, receive selected digital content from the list displayed on the touch sensitive screen, receive output data from the service related to the selected digital content, and then either play audio data related to the received output data at a speaker of the information apparatus or wirelessly play the audio data at the wireless output device."
Classifier footprint (relevant to claim scope): G06F 3/12 line (print job management, job translation, mobile/wireless printing), G06Q 20/32 (wireless payment devices), H04L 12/28 home-automation/audio-video appliance networks, H04L 63/0428 (encrypted payload), H04L 67/04 and 67/5651 (terminal-limited protocols; content size reduction).
Plain-Language Claim Overview — with an explicit caveat
I could not retrieve the claims verbatim. The authoritative full text in my working context is truncated before the claims section, and my searches for claim text were cut off by a step limit. Everything below is reconstructed from the abstract, the disclosed feature sets, and the classification signal — it is not a verified quotation of the claim language, and claim numbering/independent-claim count is unconfirmed.
Reconstructed independent claim(s) most likely recite an information apparatus (mobile: smart phone, Internet appliance, information pad) comprising:
- A touch-sensitive screen interface;
- Wireless communication circuitry (abstract names Bluetooth for the output path; classifiers add IEEE 802.11 / wireless LAN);
- A memory storing software applications and a processor, the application configured to:
- obtain authentication or security information for accessing a digital content service over a network including the Internet;
- receive a list of available digital content and display it on the touch-sensitive screen;
- receive a user selection of digital content from that list;
- receive output data from the service corresponding to the selected digital content; and
- render at least part of it — either as audio at a speaker of the information apparatus itself, or wirelessly at a wireless/Bluetooth-enabled output device.
A second independent claim is plausibly drafted in method form (steps mirroring the above) and possibly a third in software-application / non-transitory medium form, consistent with the title's "and application" phrasing — but I have no authoritative confirmation of the independent-claim count, numbering, or exact boundaries.
One caution on spillover evidence: Some Flexiworld PTAB petition documents surfaced in my searches (discussing claims numbered in the 40s–60s, "queuing or spooling," "device dependent output data," Keeney/Vatland/Saulpaugh/Ghori) belong to a different Flexiworld patent in this family, not necessarily to US 10,489,096. I am deliberately not attributing that claim language here.
Docket Check
- CAFC / Federal Circuit 2026: My targeted query returned zero results. I have no evidence of any 2026 Federal Circuit appeal involving US 10,489,096. Absence of hits is not proof of absence — I simply could not confirm any activity, and I'm not going to assert there is none.
- District court (per the Google Patents litigation panel and Unified Patents litigation data):
- W.D. Wash., case 2:21-cv-01055
- W.D. Tex., case 6:20-cv-00553
- A worldwide family litigation entry is also indexed via Darts-ip (family 22957058).
- The patent is flagged "Family has litigation / Critical," and its fee-related expiration (2021-11-01) predates the currently indexed appeals window — worth verifying maintenance-fee and reinstatement status directly on USPTO Patent Center before relying on enforceability.
Bottom line: Title, inventors, assignee, application number, abstract, and the two 2020–2021 district court cases are firmly grounded. Filing/grant/priority dates carry a documented ±1-day conflict across databases, and the claim set is unverified — for claim charts or an infringement/FTO opinion you should pull the issued claims from USPTO Patent Center or the granted PDF rather than rely on this reconstruction.
Generated 9/15/2026, 4:48:37 AM
Cases on file (1)
Group view →Specific litigation cases in our database that name US patent 10489096. The free-form analysis below may also discuss cases beyond this list.
- Flexiworld Technologies, Inc. v. Sony Corporationfiled Dec 19, 20232:23-cv-00616U.S. District Court for the Eastern District of Texas, Marshall Division (Judge Rodney Gilstrap)terminated May 29, 2025dismissed with prejudice
Defendants: Sony Corporation
Other patents asserted: 10133527, 9836259B2, 11096056B2, 9798516B2, 9042811B2, 10768871B2, 11029903B2, 10162596B2, 10037178, 10140073, 10387087, 10642576, 10846031, 10866773, 7609402, 9836257, 9965233
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 10,489,096.
Let me search for the specific cases and which ones assert this patent.
Litigation involving US Patent No. 10,489,096
Important framing note: I located litigation records, but I hit my search-step limit before I could fully verify every Flexiworld case. Below I separate (A) cases where the record expressly identifies U.S. 10,489,096 as an asserted patent, from (B) Flexiworld cases I found that do not appear to assert it, and (C) items I could not verify.
A. Cases where U.S. 10,489,096 was expressly asserted
1. Flexiworld Technologies, Inc. v. Amazon.com, Inc.
- Plaintiff: Flexiworld Technologies, Inc.
- Defendant: Amazon.com, Inc.
- Jurisdiction: U.S. District Court for the Western District of Texas (Waco Division)
- Case No.: 6:20-cv-00553 (reported in Chinese coverage with a typographical trailing "z": "6:20-cv-00553z")
- Filing date: on/about June 29, 2020 (2020-06-30 article reporting a Monday filing)
- Patents asserted: 10 patents, listed as 8,332,521; 8,989,064; 10,133,527; 10,140,072; 10,162,596; 10,387,087; 10,481,846; 10,489,096; 10,642,576; 9,110,622
- Accused products: Amazon Echo smart speakers
- Status/outcome: Not verified. I confirmed the docket exists (the case docket sheet is cited as an exhibit in Roku's IPR papers, Ex. 2031), but I did not retrieve a disposition. Do not treat as settled/dismissed on my authority.
- Sources: https://www.thepaper.cn/newsDetail_forward_8042839 ; https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2021-00714/... (Ex. 2031 reference)
2. Flexiworld Technologies, Inc. v. Sony Corporation
- Plaintiff: Flexiworld Technologies, Inc.
- Defendant: Sony Corporation
- Jurisdiction: U.S. District Court for the Eastern District of Texas
- Case No.: 2:23-cv-00616
- Filing date: December 19, 2023
- Patents asserted (15): 10037178; 10140073; 10387087; 10489096; 10642576; 10768871; 10846031; 10866773; 11029903; 11096056; 7609402; 9042811; 9836257; 9836259; 9965233
- Accused products: Not specified in the sources I retrieved.
- Status/outcome: Not verified — no disposition found.
- Sources: https://npe.law.stanford.edu/patent/10489096 ; https://goldencompass.patentpia.com/... (Sony litigation report)
This Sony case is the only case listed for patent 10,489,096 in the Stanford NPE Litigation Database (https://npe.law.stanford.edu/patent/10489096).
B. Flexiworld cases I found where 10,489,096 does NOT appear to be asserted
| Case | Court / No. | Filed | Patents asserted (as found) | '096? |
|---|---|---|---|---|
| Flexiworld v. Roku, Inc. | W.D. Tex. 6:20-cv-00819 | Sept. 8, 2020 | 8,989,064 ('064); 10,346,114 ('114); 10,740,066 ('066) | No |
| Flexiworld v. HP, Inc. | S.D. Tex. 4:24-cv-02691 | July 19, 2024 | Includes '181, '071, '257, '510, '847 (partial list from complaint analysis) | No (not seen) |
| Flexiworld v. LG Electronics, Inc. et al | E.D. Tex. 2:25-cv-00960 | Sept. 18, 2025 | 9,042,811; 9,836,259; 9,965,233; 10,140,072; 10,162,596; 10,037,178 | No |
| Flexiworld v. TCL Electronics Holdings Ltd. et al | E.D. Tex. 2:26-cv-00229 | Mar. 20, 2026 | Not confirmed (complaint not retrieved) | Unverified |
| Flexiworld v. Hisense Co., Ltd. et al | E.D. Tex. 2:22-cv-00225; 2:22-cv-00228; N.D. Ga. 1:22-cv-04338 | 2022 | Not confirmed | Unverified |
Notes on section B: For Roku, the asserted-patent list comes from Flexiworld's expert's report (Almeroth Rebuttal) and the complaint exhibits, and it lists only the '064, '114, and '066 patents. For HP and LG, the asserted patents are affirmatively listed and the '096 is absent from those lists — but I only saw partial/derived listings, so treat the HP negative as provisional. I did not retrieve the TCL or Hisense complaints, so I cannot rule those in or out.
Sources: http://g.casetext.com/case/flexiworld-techs-v-roku-inc ; https://www.docketalarm.com/cases/PTAB/IPR2021-00715/... (Almeroth Ex. 1022) ; https://ai-lab.exparte.com/case/dct/txed/2:25-cv-00960/doc/analysis/1 ; https://ai-lab.exparte.com/case/dct/txsd/4:24-cv-02691/... ; https://dockets.justia.com/docket/texas/txedce/2:2026cv00229/[244557](/patent/244557) ; https://npe.law.stanford.edu/party/hisense-international-america-holdings-co-ltd
C. Family-level litigation flags (not proof the '096 itself was asserted)
The Google Patents page for US10489096B2 carries a "Family has litigation" flag listing:
- W.D. Wash. case 2:21-cv-01055 — parties not verified by me. (A 2021 Western District of Washington Flexiworld case is consistent with the Samsung assignment/standing dispute litigated in the Roku case, but I did not confirm the caption or that '096 was asserted.)
- W.D. Tex. case 6:20-cv-00553 — this is the Amazon case in section A.
These flags are family-level and, standing alone, do not establish that the '096 patent was asserted in the W.D. Wash. action.
Source: https://patents.google.com/patent/[US10489096](/patent/US10489096)/en
Practical/analyst observations (flagging, not conclusions)
- Patent status: Google Patents shows US10489096B2 as "Expired – Fee Related," and Unified Patents lists an expiration date of 2021-10-31 (priority 2000-10-31/2000-11-01; app. filed 2017-10-17/18; granted 2019-11-26). If that expiration date is correct, the post-2021 suits (e.g., Sony 2023, TCL 2026) could only reach pre-expiration infringement subject to the 35 U.S.C. § 286 six-year lookback. I flag this because it materially affects damages exposure — but I did not independently verify the expiration calculation (a statutory-disclaimer or terminal-disclaimer basis was not confirmed). Verify against USPTO Patent Center / PAIR before relying on it.
- Standing/ownership was actively litigated in the related Flexiworld family — the Roku court decided a Samsung assignment-agreement dispute (Dkt. 198, 6:20-cv-00819-ADA, June 6, 2022), holding the '064 and '066 patents were not assigned to Samsung. Any party defending the '096 patent should expect a similar standing/ownership challenge, since the '096 shares the same specification family.
Bottom line
Based on the records I could retrieve, U.S. 10,489,096 is confirmed as asserted in at least two district court actions — Flexiworld v. Amazon.com (W.D. Tex. 6:20-cv-00553, filed ~June 29, 2020) and Flexiworld v. Sony Corporation (E.D. Tex. 2:23-cv-00616, filed Dec. 19, 2023). I did not find or verify any appellate (CAFC) decision, IPR/PTAB proceeding, or disposition/judgment specifically addressing the '096 patent. The two outstanding gaps are (i) outcomes for both confirmed cases, and (ii) whether the '096 is in the TCL and Hisense complaints. I recommend confirming those three items via PACER/RECAP and the USPTO Patent Center before relying on this list.
Generated 9/15/2026, 4:48:43 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Flexiworld Technologies, Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the PTAB landscape with targeted searches before reporting.
Found a lead — Roku v. Flexiworld PGR2021-00111 referencing this patent's prosecution history. Let me dig deeper.
The PGR2021-00111 is on a different Flexiworld patent ('031). Let me check specifically whether any proceeding names '096.
I hit the tool-step ceiling before I could run a full PTAB E2E party-name sweep, so I'll be explicit about what is confirmed versus what remains to be verified. Here is the analysis.
PTAB / AIA Trial Landscape — US 10,489,096 B2
Patent: Information apparatus and application for receiving digital content from a digital content service over the internet and for playing at least part of the received digital content at an output device
Patent Owner: Flexiworld Technologies, Inc. (app. 15/787,067; filed 2017-10-18; granted 2019-11-26)
Structured source: USPTO Open Data Portal returns zero AIA trial proceedings — this is the canonical list and I treated it as controlling.
Proceedings overview
Total AIA trial proceedings on US 10,489,096: 0. Breakdown: 0 active / 0 with claims invalidated / 0 with claims sustained / 0 settled / 0 institution denials — the patent has never been the challenged patent in an IPR, PGR, or CBM. The bottom-line defensive posture is therefore not "hardened by surviving IPRs," and it is also not "claims canceled — the demand letter is baseless." It is a third posture: an untested patent whose main defensive features are its expiration and its ownership chain, not any PTAB outcome. US 10,489,096 is recorded on Google Patents as Expired – Fee Related with an anticipated expiration of 2021-11-01, and the Unified Patents patent profile lists an expiration date of 2021-10-31 — either way, the patent term is over, which caps exposure to past damages and forecloses injunctive relief regardless of what the PTAB has or hasn't done.
I found no proceeding in which 10,489,096 is the challenged patent, and I want to flag the trap here explicitly, because a naive search produces a false positive:
⚠️ False-positive alert: PGR2021-00111 is NOT a proceeding on this patent
Web search surfaces PGR2021-00111, Roku, Inc. v. Flexiworld Technologies, Inc. in connection with the number 10,489,096, because Flexiworld filed the '096 prosecution history as Patent Owner Exhibit 2005 (in six parts) and an exhibit comparing '031 claim 1 to '096 claim 1 (Exhibit 2006). Per the Unified Patents PTAB case record, the challenged patent in PGR2021-00111 is U.S. Patent No. 10,846,031 (application 15/594,440) — a different Flexiworld patent. The '096 material appears only as related-family evidence. Do not cite PGR2021-00111 as an IPR/PGR "on" the '096 patent.
- Type: Post-Grant Review — but on the '031 patent, not '096
- Filed: 2021-08-24
- Status: Institution Denied (Not Instituted – Merits), terminated 2022-03-14
- Panel: APJs Brent Dougal, Bryan Moore, Christopher Ogden
- Disposition: Institution Decision denying institution of post-grant review under 35 U.S.C. § 324 (2022-03-14)
- Source: https://portal.unifiedpatents.com/ptab/case/PGR2021-00111 and https://www.docketalarm.com/cases/PTAB/PGR2021-00111/Roku_Inc._v._Flexiworld_Technologies_Inc/
- Defensive value for '096: none directly. Its only value is evidentiary asymmetry — Roku's own PGR theory against a sibling patent was denied institution on the merits, which tells you the Board has looked askance at at least one attack on this family.
Adjacent Flexiworld PTAB activity (context only — none of these is the '096 patent)
I'm listing these so you don't mistake them for '096 proceedings, and because they color how this portfolio is litigated. Each is a different patent in the same family:
| Proceeding | Petitioner | Challenged Patent | Status |
|---|---|---|---|
| IPR2021-00713 | Roku | 10,740,066 | Roku-side grounds largely rejected at institution (per PO demonstratives) |
| IPR2021-00714 | Roku | 8,989,064 | FWD 2022-10-21 — claims 1–10, 12, 14 unpatentable; claims 15–20 not shown unpatentable |
| IPR2021-00715 | Roku | 10,346,114 | FWD issued |
| IPR2022-00775 | Unified Patents, LLC | 9,836,257 | FWD determining no challenged claims unpatentable (claims 27, 28 sustained); PO's revised motion to amend dismissed |
| IPR2022-01267 | Roku | 9,836,257 | filed 2022-07-29 |
| (petition, '811 challenge) | Roku | 9,042,811 | Roku petition attacking "smart TV" claims |
Notable cross-proceeding signals: Roku is a serial petitioner across this family (at least six filings touching Flexiworld patents). Unified Patents is in the chain as a defensive aggregator — it filed IPR2022-00775 against '257 and lost on the merits in its FWD, and Unified's own commentary confirms it views Flexiworld as an NPE target. Flexiworld's PTAB counsel throughout is Nelson Bumgardner Albritton P.C.; Unified's counsel is in-house (Jordan Rossen, Roshan Mansinghani). Sources: https://www.unifiedpatents.com/insights/2022/11/10/flexiworld-wireless-communications-patent-likely-invalid (institution), https://patexia.com/feed/ptab-upholds-flexiworld-s-wireless-content-transfer-patent-after-challenge-by-unified-patents-20231103 (FWD outcome).
Explicit non-finding: I have no record of an IPR/PGR/CBM naming 10,489,096, and I did not find any Federal Circuit appeal of a PTAB decision involving 10,489,096 — consistent with there being no FWD to appeal. Because I could not run an exhaustive PTAB E2E party-name sweep before hitting my search limit, treat "zero" as high-confidence-but-not-audited; the structured ODP block independently supports it.
Strategic summary
Claim status: 100% UNTESTED. No claim of US 10,489,096 has been canceled, confirmed, or even instituted against at the PTAB. There are no "surviving claims" to list because none were ever placed at risk. If opposing counsel tells you a claim of '096 "was invalidated," that statement is false as of 2026-09-15. The '064 FWD (different patent, IPR2021-00714) canceled claims 1–10, 12, 14 and upheld claims 15–20, and the '257 FWD (IPR2022-00775) upheld claims 27 and 28 — those are sibling-patent outcomes that may inform claim-construction and prior-art strategy on '096 but have no preclusive or statutory effect on it.
Estoppel landscape: there is none to borrow and none to fear. Because no IPR/PGR was ever instituted on '096, § 315(e)(2) estoppel does not attach to anyone with respect to this patent. That cuts both ways: (a) a defendant today is not barred from any ground and may file its own IPR on '096 — the full prior-art universe, including art that Unified and Roku used against the sibling patents, remains available; and (b) you cannot estop the patent owner or point to a petitioner-side admission. Note the practical limit: an IPR against an expired patent can still be filed, but the value is narrow — past damages only, since there is no forward-looking relief to enjoin.
Pattern signals. Flexiworld asserts this family broadly (W.D. Tex. cases 6:20-cv-00819-ADA, 6:20-cv-00553, 6:21-cv-00680-ADA, 6:21-cv-00767-ADA, 6:21-cv-00882-ADA; W.D. Wash. 2:21-cv-01055) and has been met with a wall of Roku IPRs plus Unified Patents challenges. The most important non-PTAB development is the standing attack: in Flexiworld v. Roku, No. 6:20-cv-00819-ADA (W.D. Tex., ECF 198, 2022-06-06), Roku argued that a Samsung assignment agreement covering "rights related to and arising thereunder" conveyed the asserted patents. The court rejected that for the '064 and '066 patents, holding the assignment was limited to four enumerated items and to inventions "included in a claim," and that the broader Exhibit A language did not override § 11.5's integration clause. That reasoning turned on the specific '541/'958 lineage; whether it reaches '096 (a later continuation) requires a claim-by-claim priority-chain mapping, not an assumption. See https://www.courtlistener.com/opinion/[10214095](/patent/10214095)/flexiworld-technologies-inc-v-roku-inc/ and https://law.justia.com/cases/federal/district-courts/texas/txwdce/6:2020cv00819/[1107258/198](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=1107258-0198)/.
Recommended next steps
- Do not plead around a PTAB record that doesn't exist. Open with the expiration. Confirm the maintenance-fee lapse in Patent Center and confirm the term end date; if the patent is expired and fee-related, the demand letter's threat of ongoing royalties is hollow, and the damages window is capped by 35 U.S.C. § 286 (six years pre-complaint). Verify the "2021-10-31 vs 2021-11-01" discrepancy directly against the file: https://patents.google.com/patent/US10489096/en.
- Run the PTAB E2E party-name sweep yourself as confirmation, not because I expect a hit: search Patent Trial and Appeal Board E2E (https://ptacts.uspto.gov) for "10,489,096," "Flexiworld," and the inventors (William Ho Chang, Christina Ying Liu). My structured source and my search both point to zero proceedings on this patent; the sweep closes the loop.
- If you want an IPR, you are unencumbered. No § 315(e)(2) estoppel blocks any ground on '096. Reuse the art that worked in the sibling proceedings — Roku's Larsson/Ortiz encryption combination (IPR2021-00715), the Yamaguchi/Ikonen/Gu broadcast-and-discovery art (IPR2021-00713/'714), and Unified's Olgaard/Moghadam/Acharya/Griffiths/Chuah set (IPR2022-00775) — but re-map each reference to '096's specific claims, which differ from the siblings'.
- Weigh cost against the past-damages-only ceiling. Given expiration, an IPR may be less valuable than a § 101/§ 112 or standing/ownership challenge, which can dispose of the case without a trial-year of PTAB fees and without waiting on a statutory FWD deadline.
- Cite the record accurately in any brief. If you reference sibling outcomes, link the actual FWDs (e.g., the '064 FWD, Roku v. Flexiworld, IPR2021-00714, FWD 2022-10-21, holding claims 1–10, 12, 14 unpatentable and claims 15–20 not shown unpatentable) and label them as other patents in the same family.
Caveat on completeness. Per the operating rule to prefer live results over recollection, and to say so when I don't know something with high confidence: I am highly confident there are no AIA trial proceedings on US 10,489,096, based on both the structured ODP block and independent web search; I could not complete an exhaustive PTAB E2E audit before my search steps ran out, so I flag that residual uncertainty rather than overstate certainty.
Generated 9/15/2026, 4:48:51 AM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2018-05-25 · Assignment
CHANG, WILLIAM HO; LIU, CHRISTINA YINGFlexiworld Technologies, Inc.
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research this patent's ownership chain and litigation history before drafting.
Let me dig into the assignment records and Flexiworld's corporate history.
Scope note (read first): The USPTO Assignment Center interface at
https://assignmentcenter.uspto.gov/blocks automated retrieval, and I do not have an ODP API key for the Assignment Search API in this session. I was therefore unable to verify reel/frame numbers or the recording correspondent of record directly. Everything below is sourced from the patent's own front-page data, Google Patents legal events, and litigation/asserter databases, and I flag each item I could not confirm. No reel/frame number is asserted in this report, because I could not retrieve one.
Inventors
| Inventor | Address of record | Employer at filing (as determinable) |
|---|---|---|
| William Ho Chang | Vancouver, WA (US) | Founder, President and CTO of Flexiworld Technologies, Inc. — the applicant and assignee of record on the '096 patent. Per his own biography filed in USPTO proceedings (PTAB petition exhibits), prior roles were Sharp Laboratories (named Sharp Inventor of the Year, 1999), Chief Architect at Amiable Technologies (NASDAQ: SVECF), and Intergraph Corp. |
| Christina Ying Liu | San Francisco, CA (US) | Not determinable from the sources I could reach. She is a recurring co-inventor with Chang across the Flexiworld continuation family. |
Unusual patterns: None of the classic fire-sale precursor signs. Both inventors are the same two names that appear across the entire Flexiworld continuation chain (47 family members per Unified Patents), and both assigned to Flexiworld. There is no evidence of inventors departing the original assignee within 12 months of filing. The more notable ownership pattern is not inventor turnover but applicant-side continuity: Flexiworld filed this application on 2017-10-18 as a continuation of an application filed in 2001, and continued filing more of the family in 2019 (US 11,029,903) and 2021 (US 2021/0165632), i.e. a 20-year continuation practice maintained by the same two inventors and the same assignee.
Original assignee
Flexiworld Technologies, Inc. (Vancouver, WA on the '096 face; also reported as Portland, OR in press coverage), the entity named as applicant/assignee on the issued patent. Google Patents and the Unified Patents portal both list Flexiworld Technologies, Inc. as both the original and the current assignee — ownership has not moved off the original operating company in any record I could find.
- Line of business: Wireless/pervasive output software — wireless printing, wireless audio/display streaming, mobile device drivers. Chang's biography describes an engineering team, partnerships with handset makers, carriers, and Asian chip/manufacturer partners, and business-plan competition wins (2002–2003) as an early-stage startup.
- Did they ship a product embodying the claims? Unclear / no evidence found. I found no evidence of a currently shipped product. Third parties characterize the company differently than as an operating vendor: Stanford's NPE Litigation Database classifies Flexiworld's asserter category as "3 Failed startup," and the ex parte/AI-Lab docket mirror flags the patent owner in
6:20-cv-00553as "NPE (L)." - Current status: Not a functioning public company; no SEC registrant found. Its current activity is patent assertion. No bankruptcy filing was found, and I will not assert one.
- Unverified lead (flagged, not a finding): Unified Patents' data for a related patent surfaced an entity name "Flexijet Technologies Inc" associated with a 2000-11-19 date. I could not confirm any recorded Change of Name from Flexijet to Flexiworld and am not treating it as a recorded event.
Recorded legal status (verbatim from Google Patents): "Expired - Fee Related"; anticipated expiration 2021-11-01 (Unified Patents states 2021-10-31). Because the '096 patent is a continuation claiming benefit back to 2000-11-01/2001-11-01, its 20-year term had run out roughly two years after the 2019-11-26 grant.
Assignment timeline
Critical limitation, stated plainly: I could not retrieve a reel/frame number, execution date, or recording correspondent for any assignment on this patent. What follows is the one recorded chain event I could confirm from Google Patents legal events, plus an explicit statement of what is missing.
- Execution date not retrieved / recorded 2018-05-25
- Reel/Frame: NOT RETRIEVED (see scope note — do not cite a reel/frame for this patent from this report)
- Conveyance: "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)"
- Assignor: CHANG, WILLIAM HO; LIU, CHRISTINA YING (the two named inventors)
- Assignee: FLEXIWORLD TECHNOLOGIES, INC.
- Correspondent: Not retrieved. Note for diligence: the patent's attorney/agent of record on the face of the '096 grant is Chernoff Vilhauer LLP (Portland, OR) — that is the prosecution firm, and I have not confirmed it as the recording correspondent. Therefore I cannot state whether any correspondent recurs in this chain. This is a gap to close, not a finding.
- Context: Inventor-to-company assignment confirming title in the applicant — routine original-prosecution recordation, not an acquisition.
No post-issuance assignment was found. No security agreement, merger, name change, release, or transfer to a licensing entity appears in the accessible records. Per Google Patents, Unified Patents, and the '096 grant face, the assignee remained Flexiworld Technologies, Inc. throughout the assertion campaign. Under the task's own rubric this is itself the finding: the original operating company still owns the patent and is the entity doing the suing — there is no assignment chain for an NPE-transaction analysis to work with.
Timeline diagram
timeline
title Ownership of US 10489096
2000 : Family priority date claimed
2001 : Parent application filed
2017 : Continuation filed Oct 18
2018 : Inventor assignment recorded to Flexiworld
2019 : Patent issued Nov 26
2020 : Amazon infringement suit filed
2021 : Anticipated term expiry
2023 : Sony suit filed in E D Texas
2024 : Indeed suit filed
NPE / troll-pattern signals
- Shell-entity transfer — NOT PRESENT. No assignment of this patent to any "IP / Patents / Licensing / Holdings / Ventures" entity appears in any record I could reach. Current assignee is the original operating company, Flexiworld Technologies, Inc. There is no reel/frame evidencing a transfer because I found no transfer.
- Known asserter in the chain — PRESENT (via third-party classification, not the enumerated roster). Flexiworld does not appear on the enumerated list (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). It does appear as an NPE in the sources this task designates: Stanford NPE Litigation Database entry for patent 10489096 lists asserter category "3 Failed startup"; Unified Patents' own litigation data (the source cited on the Google Patents page for this patent) carries the Flexiworld cases; and the AI-Lab docket mirror records
6:20-cv-00553patent owner as "NPE (L)." Assertion volume:6:20-cv-00553(W.D. Tex., filed 2020-06-22, v. Amazon, 10 patents/91 claims incl. the '096),2:21-cv-01055(W.D. Wash., v. AWS), IPR2021-00715 (Roku v. Flexiworld),2:23-cv-00616(E.D. Tex., 2023-12-19, v. Sony, 15 patents incl. the '096), Flexiworld v. Indeed (W.D. Tex., Oct 2024), plus four W.D.N.Y. filings numbered6:2023-cv-06370through-06373. - Repeat correspondent across the chain — UNCLEAR / NOT ESTABLISHED. With only one confirmed chain event and no retrieved correspondent field, recurrence cannot be tested. I explicitly decline to treat Chernoff Vilhauer LLP's appearance as attorney of record on the '096 grant as an assignment-correspondent finding — a single prosecution-firm appearance is exactly the "not a finding" case the brief warns about.
- Cascading transfers — NOT PRESENT. No chained LLC transfers; no transfers at all were found.
- Pre-litigation transfer — NOT PRESENT. No assignment sits within 6 months before any of the 2020, 2021, 2023 or 2024 suits; ownership was static across all of them.
- Bankruptcy fire-sale — NOT PRESENT (no record found). No Chapter 7/11 proceeding or judicial patent sale was located. Weak corroborating signal only: Stanford categorizes Flexiworld as a "failed startup."
- Privateering — NOT PRESENT. Privateering requires an operating company handing patents to a separate NPE to assert on its behalf. Here the original company asserts in its own name against Amazon, Roku, Sony and Indeed; there is no separate assertion vehicle.
- Defensive aggregator — NOT PRESENT. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN; no evidence of neutralization.
Verdict
NPE — moderate confidence.
The assignment chain itself contributes zero NPE-typical evidence: there is no shell-entity transfer, no cascading LLC sequence, no pre-litigation assignment, and no defensive-aggregator endpoint — the '096 patent sits with its original assignee, Flexiworld Technologies, Inc., which is also the plaintiff in every suit. The NPE call rests on the one strong external signal available: Flexiworld is affirmatively classified as a non-practicing asserter by the sources named in this brief — Stanford NPE Litigation Database categories Flexiworld as asserter type "3 Failed startup" for this exact patent, and the 6:20-cv-00553 docket (filed 2020-06-22) is flagged "NPE (L)" — paired with a sizable serial-assertion campaign (Amazon 2020/2021, Roku IPR2021-00715, Sony E.D. Tex. 2:23-cv-00616 on 2023-12-19, Indeed 2024) and no evidence of any current product. Per the rubric this is 1 strong plus several weak signals, hence moderate rather than high.
Confidence caveat: this verdict would move to Insufficient data on the ownership question alone, because I could not open the Assignment Center records for reel/frame and correspondent. To close the gap, verify at the USPTO Assignment Center search page: https://assignment.uspto.gov/patent/index.html#/patent/search — search patent number 10489096, capture the reel/frame, execution date, and the correspondent of record for the 2018-05-25 inventor-to-company recordation, then re-run signal #3 (repeat correspondent) against Flexiworld's sibling patents (US 9,836,257, US 11,029,903, US 10,837,087) to see whether one filing attorney handles the whole family. That check is the single highest-value outstanding item.
Generated 9/15/2026, 4:49:03 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US Patent 10489096 and its cited prior art.
Let me retrieve the full citation list and the patent's claims.
Bottom line up front
I was able to verify the identity and bibliographic data of US 10,489,096 B2 and to retrieve a substantial — but not complete and not verbatim — list of the references cited against it and related prior art. I could not retrieve the full text of the patent's 20 claims or a complete, authoritative dump of the USPTO "References Cited" (Form PTO-892 / (56) field) from the USPTO database directly. Everything below is grounded in the sources I actually retrieved; where I could not verify a description or a claim mapping, I say so rather than guess.
1. The patent under analysis (verified)
| Field | Value |
|---|---|
| Patent number | US 10,489,096 B2 |
| Title | Information apparatus and application for receiving digital content from a digital content service over the internet and for playing at least part of the received digital content at an output device |
| Inventors | William Ho Chang; Christina Ying Liu |
| Assignee | Flexiworld Technologies, Inc. (Vancouver, WA) |
| Application no. | 15/787,067 |
| Filed | October 18, 2017 |
| Granted | November 26, 2019 |
| Pre-grant pub. | US 2018/0041482 A1 (Feb. 8, 2018) |
| Priority date (as listed) | 2000-11-01 (assumed; Google Patents flags this as an assumption) |
| Claims / drawings | 20 claims, 10 drawing sheets |
| Status | Expired – Fee Related; anticipated expiration 2021-11-01 |
| Litigation | W.D. Tex. 6:20-cv-00553; W.D. Wash. 2:21-cv-01055 |
| Primary CPC | G06F 3/126; G06F 3/1204; G06F 3/1247; G06F 3/1285; G06F 3/1288; G06F 3/1292; G06Q 20/3224; G06Q 20/327; H04L 63/0428; H04L 63/0492; H04L 67/04; H04L 67/303; H04L 67/5651; H04L 67/51 |
Priority chain (from the printed patent): continuation of App. 09/992,413 (filed Nov. 18, 2001, now US 9,965,233); also a continuation-in-part of App. 10/053,765 (filed Jan. 18, 2002, now US 9,836,257) and of App. 13/710,299 (filed Dec. 10, 2012); and App. 12/903,048 (filed Oct. 12, 2010). Google Patents also shows a priority claim from App. 10/016,223 (filed Nov. 1, 2001). This matters for §102: different claim limitations may be entitled to different effective filing dates, so the critical date is not a single number.
Source: https://patents.google.com/patent/[US10489096B2](/patent/US10489096B2)/en and https://patentimages.storage.googleapis.com/e9/a9/0e/00c44993dd4588/US10489096.pdf
Claim scope as reflected in the abstract (verbatim): "obtain authentication information for accessing the service, receive a list of one or more digital content that is available from the service for selection on a touch sensitive screen, receive selected digital content from the list displayed on the touch sensitive screen, receive output data from the service related to the selected digital content, and then either play audio data related to the received output data at a speaker of the information apparatus or wirelessly play the audio data at the wireless output device."
So the core inventive combination is: (a) internet content service + authentication → (b) list rendered/selected on a touch-sensitive screen → (c) output data returned from the service → (d) audio played either at the apparatus's own speaker or wirelessly at a wireless (e.g., Bluetooth) output device. I could not retrieve verbatim claim text, so all claim mapping below is by claim content category, not by verified claim number, except that the abstract language clearly tracks the broadest independent claim.
2. References cited — what I could verify
2a. U.S. patent documents in the patent's own reference list
Retrieved from the uspto.report grant record (which reproduces the (56) list). Grant dates are as shown; I could not verify the subject matter of every entry, so descriptions are given only where I have them.
| Patent | Grant date | Inventor | Notes on relevance (verified only where stated) |
|---|---|---|---|
| 6,421,716 | Jul. 2002 | Eldridge et al. | — |
| 6,553,240 | Apr. 2003 | Dervarics | — |
| 6,553,431 | Apr. 2003 | Yamamoto et al. | — |
| 6,556,313 | Apr. 2003 | Chang et al. | — |
| 6,574,672 | Jun. 2003 | Mitchell et al. | — |
| 6,578,072 | Jun. 2003 | Watanabe et al. | — |
| 6,600,569 | Jul. 2003 | Osada et al. | — |
| 6,604,135 | Aug. 2003 | Rogers et al. | — |
| 6,607,314 | Aug. 2003 | McCannon et al. | — |
| 6,608,928 | Aug. 2003 | Queiroz | — |
| 6,618,039 | Sep. 2003 | Grant et al. | — |
| 6,621,589 | Sep. 2003 | Al-Kazily et al. | — |
| 6,622,015 | Sep. 2003 | Himmel et al. | — |
| 6,623,527 | Sep. 2003 | Hamzy | — |
| 6,628,302 | Sep. 2003 | White et al. | — |
| 6,628,417 | Sep. 2003 | Naito et al. (Canon) | Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System — filed 1998-10-29 (per Unified Patents) |
| 6,633,346 | Oct. 2003 | Yamamoto | — |
| 6,633,395 | Oct. 2003 | Tuchitoi et al. | — |
| 6,643,650 | Nov. 2003 | Slaughter et al. | — |
| 6,654,135 | Nov. 2003 | Mitani | — |
| 6,658,625 | Dec. 2003 | Allen | — |
| 6,670,982 | Dec. 2003 | Clough et al. | — |
| 6,671,068 | Dec. 2003 | Chang et al. | — |
| 6,678,004 | Jan. 2004 | Schultheiss et al. | — |
| 6,678,751 | Jan. 2004 | Hays et al. | — |
| 6,690,918 | Feb. 2004 | Evans et al. | — |
| 6,694,371 | Feb. 2004 | Sanai | — |
| 6,697,848 | Feb. 2004 | Hamilton et al. | — |
| 6,701,009 | Mar. 2004 | Makoto et al. | — |
| 6,705,781 | Mar. 2004 | Iwazaki | — |
| 6,707,581 | Mar. 2004 | Browning | — |
| 6,711,677 | Mar. 2004 | Wiegley | — |
| 6,725,281 | Apr. 2004 | Zintel et al. | — |
| 6,735,616 | May 2004 | Thompson et al. | — |
| 6,738,841 | May 2004 | Wolff | — |
| 6,741,871 | May 2004 | Silverbrook et al. | — |
| 6,745,229 | Jun. 2004 | Gobin et al. | — |
| 6,748,195 | Jun. 2004 | Phillips | — |
| 6,750,978 | Jun. 2004 | Marggraff et al. | — |
| 6,751,732 | Jun. 2004 | Strobel et al. | — |
| 6,753,978 | Jun. 2004 | Chang | — |
| 6,757,070 | Jun. 2004 | Lin et al. | — |
| 6,760,745 | Jul. 2004 | Tan et al. | — |
| 6,775,407 | Aug. 2004 | Gindele et al. | — |
| 6,778,289 | Aug. 2004 | Iwata | — |
| 6,785,727 | Aug. 2004 | Yamazaki | — |
| 6,788,332 | Sep. 2004 | Cook | — |
| 6,788,428 | (list truncated) | — | — |
| 3,629,493 | Dec. 1971 | Morgenfruh | Screening/imaging art |
| 3,833,297 | Sep. 1974 | Swartz | — |
Foreign patent documents cited: CN 1217503 A (May 1999); CN 1488106 A (Apr. 2004).
Non-patent literature cited: USPTO Notice of Allowance for U.S. Appl. No. 13/477,987, dated Sep. 26, 2014, 42 pages; USPTO Notice of Allowance for U.S. Appl. No. 10/053,765, dated Sep. 3, 2013, 21 pages. (These are the applicant's own prosecution documents, not substantive prior art.)
Source: https://uspto.report/patent/grant/10489096
2b. Prior art surfaced on Unified Patents' "Patent Art" tab for US-10489096-B2
Unified Patents' algorithmic prior-art set (≈640 items) — this is a third-party mapping, not the patent's (56) list — includes the following with verified dates/titles:
| Reference | Date shown | Owner | Title |
|---|---|---|---|
| US 6,195,564 B1 | 1997-09-18 | Ericsson | Method for Automatically Establishing a Wireless Link Between a Wireless Modem and a Communication Device |
| US 6,628,417 B1 | 1998-10-29 | Canon | Data Communication Apparatus, Image Server, Control Method, Storage Medium, and Image System |
| JP H11316658 A | 1998-05-01 | Ricoh | Printing Equipment |
| US 6,495,550 B1 | 1998-11-19 | — | System Proximity Detection by Mobile Stations |
| US 2002/0013730 A1 | 1999-01-27 | — | Vehicle-based Order Entry and Processing Mechanism |
| US 6,549,612 B1 | 1999-06-20 | Optis | Apparatus and Method of Detecting Proximity Inductively |
| US 6,778,289 B1 | 1999-06-17 | Fujifilm | Image Processing Device |
| US 7,349,722 B2 | 1999-05-25 | Visteon | Wireless Communications System and Method |
| US 7,239,346 B1 | 1999-10-17 | — | System and Architecture that Supports a Multi-function Semiconductor Device Between Networks and Portable Wireless Communications Products |
| CN 100334577 C | 2000-10-31 | Fuyi Technology (Flexiworld's CN family counterpart) | System and Method for Device-to-device Pervasive Digital Output |
| US 6,801,692 B2 | 2001-02-05 | KDDI | Optical Coupling Structure |
| US 2002/0097418 A1 | 2001-01-18 | Individual | Raster Image Processor and Processing Method for Universal Data Output |
| US 6,952,414 B1 | 2000-09-25 | AMD | Portable Internet Browser Device with Cordless Phone Module and Method of Operation |
| US 2004/0309870 A1 | 2012-03-13 | Autoconnect Holdings | Vehicle-based Multimode Discovery |
| US 2018/0107449 A1 | 2004-10-26 | Chestnut Hill Sound | Multi-mode Media Device Operable in First and Second Modes, Selectively |
| US 6,069,707 A | 1996-09-19 | Portalis | System for Reproducing a Physical Color Image |
| US 6,195,494 B1... (US 6,215,494 B1) | 1997-12-17 | — | Method and System for Centering Image Objects |
| US 6,199,106 B1 | 1996-04-18 | Juno Online Services | Electronic Mail System with Advertising |
| US 7,929,950 B1 | 1996-12-15 | Smart Mobile Technologies | Dynamically Configurable IP Based Wireless Device and Wireless Networks |
| EP 0691619 B1 | 1994-06-26 | Xerox | System for Accessing and Distributing Electronic Documents |
| US 8,169,649 B2 | — | — | Mobile Device Methods for Enabling Pervasive Wireless Digital Media (Flexiworld family) |
| US 9,164,718 B2 | — | Samsung | Output Device and Method for Output Without an Output Driver |
| US 3,629,493 A | 1969-11-05 | Commercial Graphics | Screening Process Simulation Apparatus |
| US 4,291,956 A | 1979-12-16 | 3M | Graphic Forming Device with Preview Feature |
| US 5,475,507 A | 1992-10-13 | Fujitsu | Color Image Processing Method and Apparatus |
Source: https://portal.unifiedpatents.com/patents/patent/US-10489096-B2
⚠️ Important distinction: many items in the Unified Patents "related" list (US 6,947,995; US 7,318,086; US 7,944,577; US 7,953,818; US RE42,725; US 8,705,097; US 8,711,408; US 9,298,407; US 9,389,822; US 9,965,233; US 9,971,555; US 10,152,285; US 10,261,739; US 10,303,411; US 10,418,046; US 10,418,047; US 10,599,357; US 10,642,576; US 10,767,791; US 10,768,871; US 10,861,773; US 10,873,856; US 10,922,001; US 11,161,997; US 11,204,729; etc.) are the applicant's own family/publications and later continuations, not prior art. They cannot be §102 art against this patent.
3. §102 anticipation analysis — grounded mapping
Caveat, stated plainly: because I did not obtain verbatim claim text, the claim identifications below are by limitation category (matching the abstract's own language, which tracks the broadest independent claim). I have not verified full claim charts, and none of this is a legal conclusion.
| Reference | Why it maps to the claim set | Limitations it plausibly reaches | §102 posture |
|---|---|---|---|
| US 6,628,417 B1 — Naito et al. (Canon), filed 1998-10-29, granted 2003-09-02 | Discloses a data communication apparatus + image server architecture for distributing image data for output — i.e., a server-side content-to-output pipeline. | Independent claim's "receiving digital content from a service over a network" and "receiving output data from the service"; dependent claims on image/data conversion and rendering. | Strongest §102 candidate among the cited art for the generic server-mediated content→output concept, but it predates touch-screen list selection and Bluetooth audio playback; unlikely to anticipate the full independent claim. |
| US 6,952,414 B1 — AMD, filed 2000-09-25 | "Portable Internet Browser Device with Cordless Phone Module and Method of Operation" — a portable internet appliance with a cordless/wireless module. | Structural preamble limitations: portable information apparatus + processing unit + memory + wireless communication unit + internet access; possibly the "play audio at a speaker of the information apparatus" limitation. | Filed before the Nov. 1, 2000 priority date → available as §102(b)/102(a) art. Reaches structural claims; does not reach the touch-screen-selection + service-list + wireless-play combination. |
| US 7,239,346 B1, filed 1999-10-17 | Multi-function semiconductor device bridging networks and portable wireless communication products. | Dependent claims directed to a wireless communication chip/chipset/circuit within the information apparatus (e.g., claims reciting "wireless communication unit" implementations). | Good §102(a)/(b) candidate for hardware-dependent claims only. |
| US 7,929,950 B1, filed 1996-12-15 (Smart Mobile Technologies) | "Dynamically Configurable IP Based Wireless Device and Wireless Networks." | Preamble/structural limitations: information apparatus with IP-based wireless networking. | Obtained by an ex parte reexamination certificate (B1) → issued claims survived reexam; useful §102 art for wireless-networking limitations. |
| US 6,495,550 B1, filed 1998-11-19 | "System Proximity Detection by Mobile Stations." | Dependent claims reciting proximity/short-range discovery or physical-distance-based enabling of the wireless output device. | §102(b) art for proximity-based connection claims. |
| US 6,549,612 B1 (Optis), filed 1999-06-20 | Inductive proximity detection. | Same proximity limitation category as above. | §102(b) art; narrow. |
| EP 0691619 B1 — Xerox, filed 1994-06-26 | "System for Accessing and Distributing Electronic Documents." | "Receiving digital content from a service provided over a network" — pre-Internet-protocol document distribution. | §102(b) art; likely does not reach client-side audio playback. |
| US 6,199,106 B1 — Juno Online Services, filed 1996-04-18 | Electronic mail system with advertising delivered over a network. | Claims reciting authentication to access a service, and receiving content from an internet service. | §102(b) art for the "service + authentication" limitations. |
| US 2018/0107449 A1 — Chestnut Hill Sound, filed 2004-10-26 | "Multi-mode Media Device Operable in First and Second Modes, Selectively." | The dual-mode output concept: play audio locally at the device or route audio to an external/remote output. | ⚠️ Effective filing date (2004) is well after the 2000–2002 priority dates, so it is prior art only under pre-AIA §102(e)/§102(a)(2) if the relevant claims are entitled to a later (post-2004) priority. For this patent's claims, it is likely not available as §102 art. |
| US 2004/0309870 A1 — Autoconnect Holdings, filed 2012-03-13 | Vehicle-based multimode discovery. | Discovery of a wireless output device. | Likely not available (filed 2012, long after priority). Appears in the Unified Patents set, likely through later family members whose priority dates are 2004-2005. |
| US 2002/0097418 A1, filed 2001-01-18 | "Raster Image Processor and Processing Method for Universal Data Output." | Dependent claims reciting server-side raster image processing / conversion of output data (the patent's dependent claims recite conversion, segmentation, compression/decompression, color correction, smoothing). | Filed Jan. 18, 2001 — before the Jan. 18, 2002 CIP date but after Nov. 1, 2000. Availability depends on which claims get which priority date. |
| CN 100334577 C — Fuyi Technology, 2000-10-31 | Chinese counterpart of the "device-to-device pervasive digital output" family. | — | ⚠️ This is the applicant's own foreign family member, not prior art. |
| US 3,629,493; US 3,833,297; US 4,291,956; US 5,475,507; US 6,069,707; US 6,215,494; US 6,778,289 | 1971–1999 screening, imaging, halftoning, color-reproduction and page-centering art. | Dependent claims reciting halftoning, imaging/color-correction, image positioning, smoothing, segmentation. | §102 art only against very narrow dependent claims; no bearing on the independently claimed combination. |
| JP H11316658 A — Ricoh, 1998-05-01 | "Printing Equipment." | Print-job/output-device limitations. | Narrow §102(b) art. |
What this means practically
On the art I was able to verify, no single reference appears to anticipate the full scope of the broadest independent claim. The three-element combination that drives novelty — (1) list of content from a network service rendered for selection on a touch-sensitive screen, (2) output data received back from that service, and (3) audio played either at the apparatus's own speaker or wirelessly at a Bluetooth-class output device — is not fully disclosed by any of the individually cited references I could review. The realistic invalidity theory against these claims is §103 (e.g., US 6,628,417 or US 6,199,106 for the service/content-delivery side + US 6,952,414 or US 7,929,950 for the portable wireless apparatus side + US 6,495,550/6,549,612 for proximity-based pairing), not §102.
4. Explicit limitations of this analysis
- I did not obtain a complete, verbatim USPTO "References Cited" list. The list in §2a is partial (the uspto.report page truncated) and I did not retrieve the actual PTO-892.
- I did not obtain verbatim claim text. Claim-to-reference mapping is by limitation category, inferred from the patent's own abstract plus its CPC classification and claim-term frequency data.
- Some descriptions are unverified. For references where I did not retrieve a title, I marked the description as "—" rather than inventing one.
- Priority-date allocation is unresolved. With claim chains reaching back to applications filed Nov. 18, 2001 and Jan. 18, 2002, plus a listed 2000-11-01 priority, the §102 critical date must be determined claim-by-claim. Several references in the Unified Patents "Patent Art" set (e.g., US 2004/0309870, US 2018/0107449) appear to post-date at least some of the claimed subject matter and are probably not available as §102 art.
- The patent is expired (fee-related) and has been litigated (W.D. Tex. 6:20-cv-00553; W.D. Wash. 2:21-cv-01055). If you need the definitive, court-tested prior-art record, the IPR/PGR and litigation files — not the face of the patent — will contain the complete art and claim charts.
If you can give me the specific claim numbers you care about (e.g., claim 1 vs. claims 12–20), I can attempt to pull the verbatim claim text and tighten these mappings to exact limitations.
Generated 9/15/2026, 4:49:23 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll pull the actual cited prior art and claim text for US 10,489,096 before running the § 103 analysis.
The page's "Prior Art" panel didn't come through in what I hold. Let me try to retrieve it and the claims directly.
Let me try to pin down whether 10,489,096 has its own citation list or any § 103 challenge on record.
I hit the search-step limit again, so here is my analysis plus an explicit account of what I could and could not retrieve.
§ 103 Obviousness Analysis — US 10,489,096 B2
0. Threshold problem: I could not read the "Prior Art" panel
I have to flag this before anything else, because it changes how you should use this memo.
The authoritative page text I hold for https://patents.google.com/patent/US10489096B2/en contains a "Prior art keywords" field (the auto-generated terms information apparatus, wireless communication, output device, output, wirelessly) — but no "Prior Art" / "Similar Documents" listing and no "References Cited" table. The document is truncated mid-Description (at the FIG. 9A GUI discussion). I ran three rounds of searches attempting to recover the '096 citation list and hit the step limit; I did not retrieve it.
Two specific misattribution traps I want to warn you about, because search results surface them and they look like the '096 art:
- A "Citations (9)" table — US 5,748,084 (Isikoff); US 5,898,831 (Motorola); US 6,175,922 (eSign); US 6,182,142 (Encommerce); US 6,285,295; US 6,289,104 (Illinois Inst. of Tech., free-space quantum cryptography); US 6,323,566 (TI, transponder for remote keyless entry); US 6,601,040 (USA Technologies); US 6,828,902 (Soundcraft) — appears on the page for US 2008/0098468 A1, "Techniques for providing a personal identification security feature to a portable computing device," where US10489096 appears only in the Cited By list. Those nine are not '096's citations. They are also substantively off-point (quantum cryptography, remote keyless entry).
- Keeney (US 6,748,471) and Vatland (US 6,091,507) appear in a PTAB petition at
ptacts.uspto.gov/.../petitions/1553926/..., where the petitioner states: "Neither Keeney nor Vatland was before the Board during the 18-year long examination of the '233 patent." That is a different Flexiworld patent, not '096. My prior section flagged this same spillover risk. I am not adopting Keeney/Vatland as '096 art — I mention them only in §4 below, clearly labeled.
Consequence: the analysis below is built primarily on (a) admissions in the '096 specification itself, which are usable as prior art under § 103 regardless of citation, and (b) the classification record. I have marked every place where a real citation list would materially strengthen or weaken the conclusion.
Also, a bookkeeping conflict: your task header says April 26, 2026; my operating context says 2026-09-15. I've not reconciled them and it doesn't affect the analysis.
1. The priority chain is the whole ballgame
'096 was filed 2017-10-18 and issued 2019-11-26, but asserts benefit back through US 10/016,223 (2001-11-01) and US 10/053,765 (2002-01-18) to an earliest asserted date of 2000-11-01. Under § 103, the effective filing date determines which art qualifies, and here there are four candidate dates:
| Candidate effective date | Source |
|---|---|
| 2000-11-01 | Google Patents "Prior art date" |
| 2001-11-01 | US 10/016,223 |
| 2002-01-18 | US 10/053,765 |
| 2017-10-18 | actual filing of 15/787,067 |
A § 112 written-description/enablement challenge to the priority claim is the single highest-leverage § 103 argument available. Benefit is presumed but rebuttable (MPEP 2136.03 et seq.). Any limitation not disclosed in the 2000–2002 disclosures gets only the 2017-10-18 date — which is fatal, because by 2017 the asserted subject matter (touchscreen list of content from an online service → select → receive output data → play at a speaker or over Bluetooth) describes the iPhone/Android + iTunes/Spotify + Bluetooth speaker combination as a matter of everyday consumer experience, and KSR squarely covers "a combination of familiar elements according to known methods."
Statutory regime flips with the date. If benefit is perfected to 2001/2002, pre-AIA §§ 102/103 apply (note pre-AIA § 103(c)(1): commonly-owned § 102(e)/(f)/(g) art is disqualified for obviousness). If any claim gets only 2017-10-18, AIA § 102/103 applies, with the § 102(b)(2)(C) common-ownership exception as the analogue.
A concrete, verifiable corroboration of the family structure: '096 issued 2019-11-26 but carries an anticipated expiration of 2021-11-01 — exactly 20 years from the 2000-11-01 date. A patent granted in 2019 cannot expire in 2021 absent a terminal disclaimer tying it to an earlier-expiring family member. That is strong documentary evidence that the family was examined under obviousness-type double patenting (ODP) pressure. ODP is the most probable invalidity vehicle for this family (per In re Cady, G.D. Searle & Co. v. Int'l Trade Comm'n), and the Unified Patents listing shows dozens of same-priority Flexiworld siblings with overlapping titles — e.g. US 11,029,903 (a direct continuation of '096), US 10,866,773, US 11,204,729, US 10,960,056. See https://portal.unifiedpatents.com/patents/patent/US-10489096-B2. Pull the file wrapper for the terminal disclaimer and any ODP rejection — it will hand you an examiner-endorsed obviousness rationale almost verbatim.
2. The claim elements to be tested
Carrying forward the caveat from my prior section: I still have not verified the claim text, so I've decomposed the claims into functional elements E1–E7 drawn from the abstract and specification. Confirm against the granted claims before filing anything.
- E1 Information apparatus (smart phone / Internet appliance / information pad) with processing unit and memory.
- E2 Touch-sensitive screen interface.
- E3 A software application executing on the apparatus.
- E4 Obtain authentication/security information for accessing a digital content service over a network including the Internet.
- E5 Receive a list of available digital content from the service; display the list on the touch-sensitive screen.
- E6 Receive a user selection from the list.
- E7 Receive output data from the service corresponding to the selection, and play at least part of it — (7a) at a speaker of the apparatus, or (7b) wirelessly at a wireless output device (Bluetooth per abstract).
Important structural point for E7: the abstract's "either ... or ..." phrasing means the claim likely covers alternatives. For § 103 (as for § 102), art disclosing any single embodiment falling within the claim invalidates the whole claim — you need not prove both 7a and 7b.
3. Prior art available, and the § 103 combinations
3A. The specification's own admissions (strongest available, fully grounded)
The '096 specification admits the existence and public availability of, at the claimed 2000 priority date:
- Wireless output/interconnect: Bluetooth (frequency-hopping, 79 hop frequencies from 2402 MHz, piconets, 10 m range), HomeRF/SWAP, IEEE 802.11, IrDA (0–1 m, up to 4 Mbps, point-to-point), radio, infrared, ultrasonic. → E3/E7b infrastructure is admitted art.
- Discovery protocols: "Bluetooth, HAVi, Jini, Salutation, Service Location Protocol, and Universal Plug-and-play among others" — expressly listed as applicable to the discovery process. → E5 discovery is admitted art.
- Content adaptation gateways: "WAP protocol, I-Mode, and web clipping among others may downsize, reduce or truncate information on the original web page" — i.e., a service-side list-and-select content architecture was admitted prior art.
- Network/browser: Internet Explorer, Netscape Navigator, WAP browsers, HTTP/FTP, Microsoft Word, PDF/HTML/JPEG/MPEG formats, PostScript/PCL printers. → E4/E7 data-path art admitted.
- Audio-capable output devices: "Any device capable of playing or reading digital content in audio (e.g., music) or data (e.g., text or document) formats is also a possible output device"; and the claims' G06Q 20/32 wireless-device payment classification shows stored-value/credit-card payment was known.
Strategy: these admissions let you prove E2, E3, E5-discovery, E7b and E4-infrastructure largely from the patent's own text, without a single third-party reference. That is a very strong § 103 posture — particularly the express Jini/UPnP/SLP/HAVi admission, which kills any argument that wireless discovery of an output device was inventive.
3B. Combinations
| # | Combination | Elements covered | Motivation / KSR rationale |
|---|---|---|---|
| C1 | Admission base (Bluetooth/IrDA + Jini/UPnP/SLP discovery + WAP/I-Mode content gateway) + a handheld online music/audio download service (contemporaneous: Liquid Audio, MP3.com, RealNetworks, RioPort-style download services) | E1–E7 incl. 7b | Both are in the same field of pervasive/mobile digital content. Motivation: predictable use of prior art elements according to their established functions; recognized problem of limited mobile memory/processing, which the spec itself frames as the problem to be solved. |
| C2 | C1 + Bluetooth audio-output profile (headset/speaker profile) | E7b, and E2/E3 for a portable player | Combination of familiar elements: app on portable device → short-range radio → audio sink. Design incentive obvious to a POSITA; the spec admits Bluetooth is a preferred short-range wireless interface. |
| C3 | Content-adaptation gateway (admitted WAP/I-Mode/web-clipping art) + server-side rendering of a list, transmission of the selected item's output data, + a touchscreen browser (admitted IE/Navigator/PDA art) | E4, E5, E6, E7a | Known technique, predictable result: replacing a downsized/truncated page with a full-fidelity output stream. In re Kubin "obvious to try" is comfortable here because the number of identified, predictable solutions was small and the art predicted success. |
| C4 | Any of the above + wireless/electronic payment art (smart card, credit card, electronic cash — all admitted in the spec; plus G06Q 20/32 classification evidence) | E4 authentication variants | Express specification admission that "payment or deposit or escrow ... may include cash, credit card, bankcard, charge card, smart card, electronic cash" and that the output controller "may provide payment calculation or transaction processing as optional feature sets." |
| C5 (conditional — see §4) | Keeney US 6,748,471 (filed 2000-10-16, § 102(e)) + Vatland US 6,091,507 (filed 1994-07-01, § 102(a)) + admission base | TBD | Petitioner in the '233 proceeding asserted these were never before the Board in 18 years of family examination — i.e., fresh art with no prosecution estoppel. But the applicability to '096 is unverified. |
4. Where I will not speculate, and what to do about it
I do not know with high confidence what Keeney US 6,748,471 or Vatland US 6,091,507 disclose. I know only (a) their numbers, filing/issue dates as recited in the petition snippet, and (b) that they were asserted against a different Flexiworld patent. I have no basis to assert they teach E5–E7. Do not let C5 into a chart without pulling both patents' full text and confirming the element mapping yourself.
Likewise, I have not named Saulpaugh, Ghori, or other references from my earlier note, because I could not verify in this session which Flexiworld proceeding they came from or what they disclose.
Highest-value next retrievals (I ran out of steps):
- The granted claim set (17 claims? independent claim count? alternative-form language in E7?) from Patent Center or the granted PDF.
- '096's own "References Cited" table — the panel I could not render.
- The '096 file wrapper: any ODP rejection, terminal disclaimer, and the examiner's stated § 103 rationale.
- Keeney and Vatland full text, and the identity of the petitioner in the
1553926proceeding — if it is a Unified Patents IPR against a sibling, the same art may be reusable. - Litigation docs in W.D. Tex. 6:20-cv-00553 and W.D. Wash. 2:21-cv-01055 — defendants' invalidity contentions will contain a professionally charted § 103 case, which is far better than a reconstruction.
5. Bottom line
A defensible § 103 case against '096 exists on either priority date — the difference is effort, not outcome:
- Pre-2000/2001 art only: winnable, but it depends on admissions plus era-appropriate streaming-audio and wireless-discovery art. C1–C4 carry it; the specification's own Jini/UPnP/SLP/HAVi and WAP/I-Mode admissions do a lot of the work.
- 2017-10-18 effective date (i.e., if the priority chain breaks on § 112 for any limitation not in the 2000–2002 disclosures): the case is straightforward and probably decisive — the claimed subject matter was, by 2017, the ordinary operation of a smartphone with an online content service and a Bluetooth audio device.
- Separately and probably more cheaply: pursue ODP / terminal disclaimer via the file wrapper. The 2019 grant / 2021-11-01 expiry mismatch says a terminal disclaimer is already on record, and the dozens of same-priority siblings mean an ODP challenge is likely examiner-precedented.
Confidence levels: high on the bibliographic/admission points and the priority-date framing; low-to-none on the specific reference identifications, because the page's Prior Art section did not render in my copy and I exhausted my search budget before recovering it.
Generated 9/15/2026, 4:49:27 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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