Invalidity dossier

US 10841798

Information apparatus or client software that wirelessly discovers, within short range, one or more output devices for establishing a wireless connection

Current assignee: Flexiworld Technologies, Inc.

Added 9/15/2026, 4:48:19 AM

At a glanceNo PTAB challenges3 lawsuits on fileasserted by Flexiworld Technologies, Inc.Wireless Technologies

Active provider: DeepSeek · deepseek-flash

Patent summary

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

✓ Generated

I'll verify the current status of this specific patent against live sources, including any CAFC activity.

The first pass didn't surface a CAFC docket tied to this number. Let me run more targeted checks on the patent's abstract/claims and on any appellate activity.

I have the abstract and claim 1. Let me locate the remaining independent claims and confirm litigation/appellate posture.

US Patent 10,841,798 (US10841798B2)

Verification note: I searched for the exact identifier 10841798 / 10,841,798. All substantive results below refer to that specific patent. Several near-number collisions appear in the data and are not this patent: US 7,849,198 (a different patent, "…to Olgaard," asserted as prior art in IPR2022-00775 concerning US 9,836,257) and a Golden wiki entry that mis-records the number as "108417980." I have not used those as sources for anything below.

Bibliographic data

Field Value
Publication number US10841798B2 (app. US20190107980A1)
Title Information apparatus or client software that wirelessly discovers, within short range, one or more output devices for establishing a wireless connection
Application number US 16/200,380
Filing date 2018-11-26
Issue/grant date 2020-11-17
Inventors William Ho Chang; Christina Ying Liu
Assignee Flexiworld Technologies, Inc. (original and current)
Priority 2001-01-19 (family: "System for universal data output," WO2002084928A3)
Legal status Expired – Fee Related; adjusted expiration listed as 2022-06-12
Primary CPC H04W12/08; also G06F3/1226 (discovery of devices having required properties), G06F3/1292 (mobile client/wireless printing), H04W4/80, H04W8/005, G06F3/128

Sources: https://patents.google.com/patent/[US10841798](/patent/US10841798)/en ; https://iprdb.com/content/US10841798B2 ; https://www.flexiworld.com/patent/us-10841798/

Priority-date caveat: the Google Patents header states 2001-01-19; some databases (e.g., Unified Patents) list 2001-01-18 for this family. Both dates circulate; I am not able to resolve the one-day discrepancy from authoritative sources here.

Abstract (as published)

"Information apparatus that wirelessly discovers an output device, which is available within close physical vicinity for outputting digital content, is herein disclosed and enabled. The information apparatus includes wireless communication circuitry for establishing short range wireless communication between the information apparatus and the output device. The information apparatus wirelessly receives information from the output device that has been wirelessly discovered, and determines, from the information received, whether the output device matches a requirement for outputting digital content. When the requirement is matched, the information apparatus selects the discovered output device, conforms at least part of the content into output data, and transmits at least part of the output data over the short range wireless communication from the information apparatus to the selected output device. The information apparatus may include one or more of a smart phone, information pad, a digital camera, or an Internet appliance."

Independent claims — plain-language overview

Claim 1 (method; verified verbatim via the patent owner's site) — "A method for an information apparatus to wirelessly output, at one or more output devices, at least part of content that is accessible by the information apparatus or stored at the information apparatus," where the information apparatus is a distinct device from the output devices and includes wireless communication circuitry and a touch sensitive screen interface. The method comprises:

  • (a) wirelessly discovering, over short-range wireless communication, at least two available output devices;
  • (b) wirelessly receiving, from one of the discovered devices, information including at least an attribute of that output device;
  • (c) determining, at the information apparatus, whether that attribute matches a requirement for outputting the content from the information apparatus to that device; and, when matched, either:
  • (d) receiving, via the touch sensitive screen, a user input related to selection of that device; conforming at least part of the content into output data based at least in part on the received device information; and transmitting that output data over the short-range wireless link to the selected device; or
  • (e) wirelessly receiving information specifying an attribute of another one of the at least-two discovered devices, and repeating at least steps (c) and (d).

In plain terms: a phone/tablet/tablet-like device scans nearby wireless output devices (e.g., printers, displays), pulls capability attributes from a discovered device, tests those attributes against what the content requires, and — once matched and (optionally) confirmed by user tap on a touch screen — converts the content into the appropriate output data for that specific device and sends it over the same short-range link. The loop exists so that if the first device doesn't match, the apparatus can try the next discovered device.

Other independent claims: The title and specification contemplate apparatus and client-software embodiments (the disclosure describes a "client application" that "may be implemented as a software application, a helper application, or a device driver," and an "information apparatus" with processing unit, memory, storage and communication units). Consistent with that, the claim set contains further independent claims directed to an information apparatus/system and to client software or a computer-readable medium. I could not verify the exact wording, numbering, or count of those other independent claims from an authoritative full-claim text in this session, so I decline to paraphrase them — doing so would risk fabrication. The full claim set is available at the Google Patents and USPTO links above.

Litigation / CAFC 2026 posture

  • No CAFC (Federal Circuit) 2026 docket or appeal involving US 10,841,798 was found. Searches of Federal Circuit 2026 activity surfaced only unrelated appeals (e.g., TrackTime v. Amazon, No. 2024-1102 (Fed. Cir. July 2, 2026), concerning U.S. 8,862,978; and Genuine Enabling Tech. v. Sony (Fed. Cir. Feb. 19, 2026)). I found no evidence of an appeal on this patent number; treat that as "not found," not as affirmative proof of absence.
  • District court activity associated with this patent's Google Patents record: E.D. Tex. 2:26-cv-00229; W.D. Tenn. 2:22-cv-02250; W.D.N.Y. 6:23-cv-06372; E.D. Ky. 5:22-cv-00107 and 5:22-cv-00097. Caution: these are litigation links attached to the patent record by the aggregator; I could not confirm in this session that each case specifically asserts the '798 patent rather than other Flexiworld family members.
  • PTAB: The identified IPR (IPR2022-00775, Unified Patents, LLC v. Flexiworld Technologies, Inc., final written decision Nov. 1, 2023, no challenged claims held unpatentable) concerns US 9,836,257, a different family member — not US 10,841,798. Do not attribute that outcome to the '798 patent.

Family context

The Google Patents record shows later applications claiming priority to this one: 16/396,460 (→ US10740066), 16/416,088 (→ US10860290), 16/444,261 (→ US10915296), 16/696,989 (→ US11029903), and 17/092,138 (→ US11416197).

Explicit uncertainties

  1. Exact text/numbering of independent claims other than claim 1 — not verified.
  2. Whether the listed district court cases assert this specific patent — not verified.
  3. The 2001-01-18 vs. 2001-01-19 priority discrepancy — unresolved.
  4. The "Expired – Fee Related / adjusted expiration 2022-06-12" status is an aggregator annotation based on the 2001 priority date; a patent issued in Nov. 2020 expiring in mid-2022 is consistent with a 2001-priority 20-year term plus adjustment, but I have not confirmed the underlying PTA calculation from the face of the patent.

Generated 9/15/2026, 12:45:35 PM

Cases on file (3)

Group view →

Specific litigation cases in our database that name US patent 10841798. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

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

✓ Generated

I'll research litigation involving US patent 10841798. Let me run several targeted searches.

Let me dig deeper into the specific cases and the Flexiworld litigation campaign.

Litigation involving US Patent No. 10,841,798 ("the '798 Patent")

Important framing note first: The authoritative patent text (fetched from Google Patents) shows the '798 Patent is one member of a very large Flexiworld continuation family (priority 2001-01-19 / 2001-01-18), and Google Patents flags the family — not necessarily the '798 Patent itself — as having litigation. I have therefore separated (A) cases where the '798 Patent is specifically identified as a patent-in-suit from (B) family-level litigation links that may or may not assert the '798 Patent. I have not auto-corrected any patent or case numbers.


A. Case(s) specifically identifying US 10,841,798 as a patent-in-suit

1. Flexiworld Technologies, Inc. v. Brother Industries (U.S.A.) Inc.

2. Flexiworld Technologies, Inc. v. Xerox Corporation — possible, not confirmed


B. Family-level litigation links reported on the '798 Patent page (asserted patents NOT confirmed for the '798 Patent itself)

Google Patents lists the following under "Family has litigation" for US 10,841,798. These are family-level flags; the specific patents-in-suit in each were not confirmed from my retrieved sources, so I cannot state that any of them assert the '798 Patent:

Case No. Court Notes
2:22-cv-02250 E.D. Tex.? — see caveat Matches the Brother case above (TN W.D.)
6:23-cv-06372 W.D.N.Y. Flexiworld v. Xerox (see above)
5:22-cv-00107 E.D. Ky. Defendant(s) not identified in retrieved sources
5:22-cv-00097 E.D. Ky. Defendant(s) not identified in retrieved sources
2:26-cv-00229 E.D. Tex. A 2026 filing; no details confirmed in retrieved sources

(Note: the Google Patents links render these as Texas Eastern / Tennessee Western / New York Western / Kentucky Eastern district court actions respectively; the 2:22-cv-02250 entry is the Tennessee Western Brother case.)


C. Related Flexiworld cases I checked that do NOT involve the '798 Patent

To avoid over-inclusion, note these Flexiworld suits are frequently conflated with the '798 Patent but assert different patents:


Summary / bottom line

  • Yes, at least one litigation is known in which US Patent No. 10,841,798 is specifically identified as a patent-in-suit: Flexiworld Technologies, Inc. v. Brother Industries (U.S.A.) Inc., 2:22-cv-02250 (W.D. Tenn.), filed April 21, 2022, terminated March 13, 2023.
  • A possible additional assertion against Xerox Corporation (6:23-cv-06372, W.D.N.Y.) is suggested by one secondary source but is unverified.
  • The '798 Patent is part of a heavily litigated Flexiworld portfolio; Google Patents reports family-level litigation in at least five district-court matters, but those flags do not establish that the '798 Patent itself was asserted in each.

Verification steps I recommend (I could not complete these within the search budget)

  1. Pull the complaint (Dkt. 1) and any amended complaints in 2:22-cv-02250 and the four companion Brother suits to confirm which claims of the '798 Patent were asserted and the accused products.
  2. Pull the termination order / stipulation of dismissal (around March 13, 2023) in 2:22-cv-02250 to determine whether termination was by settlement, dismissal, or transfer.
  3. Confirm the patents-in-suit in 6:23-cv-06372 (Xerox) via PACER to resolve the "'798" ambiguity.
  4. Identify defendants in the E.D. Ky. cases 5:22-cv-00107 and 5:22-cv-00097 and in E.D. Tex. 2:26-cv-00229.
  5. Check the PTAB (IPR/PGR) and CAFC for any appeals or post-grant challenges naming 10,841,798 — I found none in the retrieved results, but coverage was not exhaustive.

I did not find, and do not assert, any litigation involving the '798 Patent beyond the above. Where I could not confirm an outcome or a patent-number attribution, I have said so explicitly rather than inferring it.

Generated 9/15/2026, 12:45:35 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: 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.

✓ Generated

I'll research the PTAB landscape for US10841798. Let me start with several searches in parallel.

Proceedings overview

Total AIA trial proceedings naming U.S. Patent 10,841,798: 0. The USPTO Open Data Portal structured block supplied with this task reports no AIA trial proceedings on file for the '798 patent, and my independent searches (PTAB E2P/Unified Patents portal, Docket Alarm, district-court complaint analysis, Flexiworld's own portfolio page) surfaced no IPR, PGR, or CBM petition ever filed against the '798 patent — not instituted, not denied, not settled, not filed-and-abandoned. Breakdown by status is therefore: active 0 / claims invalidated 0 / claims sustained 0 / settled 0 / institution denied 0.

Defensive posture: this is not a "hardened patent survived two IPRs" story and it is not a "claims 1–5 are canceled" story. It is a "nobody has ever tested these claims at the Board" story. That cuts both ways: (a) the patent owner has no IPR win to brandish, and no Federal Circuit affirmance to point to, but (b) no § 315(e)(2) estoppel attaches to the '798 patent at all, so a defendant's full prior-art arsenal — including art already used unsuccessfully against sibling patents — remains formally available.

The critical context a defendant must understand is that the '798 patent is a direct continuation-line descendant of U.S. 9,836,257 (continuation of 15/332,432 → continuation of 10/053,765 → '257), claiming benefit of provisional 60/262,764 (2001-01-19). The parent was IPR'd and survived. More on why that matters below.


Proceedings on the '798 patent itself

None. No entry above to enumerate. I will not manufacture proceeding numbers or outcomes.

One negative-data point worth flagging: the '798 patent was actually asserted — claim 1 was asserted against Lexmark in Flexiworld Techs., Inc. v. Lexmark Int'l, Inc., No. 5:22-cv-00107 (E.D. Ky.) (Accused: Lexmark Mobile Print App / Mobile Assistant App and the Go Line printers), and against Brother in Flexiworld Techs., Inc. v. Brother Indus. (U.S.A.), Inc., No. 2:22-cv-02250 (W.D. Tenn.). In both campaigns each defendant petitioned the Board against other Flexiworld patents (e.g., Lexmark against U.S. 9,965,233 and U.S. 7,609,402; Roku and Unified against the '257, '233, '064, '066, '114, '811, '259, '903, '031 patents) but never against the '798. That is a meaningful signal: sophisticated, repeat, well-funded petitioners with family-wide visibility repeatedly chose not to attack this particular patent.


Sibling-patent PTAB landscape (frame this as family intelligence, not '798 proceedings)

IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc. (U.S. 9,836,257)

  • Type: Inter Partes Review
  • Filed: 2022-04-08
  • Status: Final Written Decision issued 2023-11-01 — "Determining No Challenged Claims Unpatentable, Dismissing Patent Owner's Revised Motion to Amend" (Paper 41). This is a patent-owner win.
  • Judge panel: Terrence W. McMillin, Christopher L. Ogden (opinion author), Brent M. Dougal
  • Petition grounds: Claims 27 and 28 under pre-AIA § 103(a), two grounds — (1) Olgaard (U.S. 7,849,198) in view of Moghadam (U.S. 5,917,542); (2) Acharya (US 2002/0080091) in view of Griffiths (U.S. 7,136,999). Olgaard and Acharya were asserted as § 102(e) art.
  • Institution decision: Instituted 2022-11-08 on all challenged claims. Panel also rejected Flexiworld's RPI challenge (argument that Roku was an unnamed real party-in-interest funding Unified), see Applications in Internet Time v. RPX.
  • FWD: Unified lost on the priority/antedating issue, not on the merits of the art. The Board found Flexiworld corroborated a conception date of no later than 2000-10-22 (draft provisional-application metadata) plus reasonable continuous diligence through the 2001-01-19 provisional filing, which predated Olgaard (2000-10-24) and Acharya (2000-12-22). Neither reference qualified as § 102(e) prior art, and no other ground was independent. The Board dismissed the contingent motion to amend as moot. Write-up: PTAB Litigation Blog; FWD docket record at PTAB E2E / Docket Alarm; Unified portal page: https://portal.unifiedpatents.com/ptab/case/IPR2022-00775.
  • Settlement / termination: none — tried to FWD.
  • Appeal: No Federal Circuit appeal identified in my review as of 2026-09-15. (Unverified — confirm on the CAFC docket before relying on finality.)
  • Defensive value for a '798 defendant — this is the single most important item in this report. The '257 patent shares the '798 patent's exact specification lineage and the 60/262,764 priority chain. Flexiworld proved up a 2000-10-22 conception + diligence antedating case in that IPR and the Board credited it. Any defendant planning to attack '798 claims with art dated after ~2000-10-22 (which is most of the 2000–2001 wireless-printing art, including Olgaard, Acharya, and the Microsoft/Apple/Roku product-art cluster) should assume Flexiworld will run the identical swearing-behind playbook — with the added advantage of an already-credited record. Plan your '798 invalidity case around art that predates October 2000, or around § 101/§ 112 rather than § 102(e)/§ 103.

IPR2022-01267 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 9,836,257)

  • Type: Inter Partes Review
  • Filed: 2022-07-29 (with companion petitions IPR2022-01268 ('822) and IPR2022-01269 ('577))
  • Status: Terminated pre-institution by joint motion (2022-10-27) following a global Patent License Agreement between Roku and Flexiworld.
  • Settlement: Yes — Roku/Flexiworld Patent License Agreement dated 2022-10-21; dismissal with prejudice of Flexiworld v. Roku, No. 6:21-cv-00767-ADA (W.D. Tex.); Agreement filed under § 317(b)/37 C.F.R. § 42.74(c) with a joint request to keep it business confidential and separate from the '257 file. Terms not public.
  • Appeal: N/A.
  • Defensive value: Confirms the patent owner's demonstrated willingness to settle the entire Roku portfolio dispute at once. For a defendant today, that means a global peace deal is a realistic off-ramp — and also that Roku's petitions will never produce estoppel-generating FWDs.

PGR2021-00111 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 10,846,031)

  • Type: Post-Grant Review
  • Filed: 2021-08-24
  • Status: Not Instituted – Merits; institution decision 2022-03-14 (denied).
  • Judge panel: Brent Dougal, Bryan Moore, Christopher Ogden
  • Petition grounds: (not fully verified in this review; the PGR targeted the '031 patent's § 101 eligibility with a secondary reference — see the companion '903 response cited Flexiworld v. Roku, PGR2021-00111 for a § 101/§ 112 written-description theory).
  • Defensive value: An early data point that § 101 attacks on this family were not a winning route at the Board in 2022. Cite it if opposing counsel touts Alice as the answer.

PGR2021-00112 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 11,029,903)

  • Type: Post-Grant Review (instituted)
  • Status: Instituted; Patent Owner's Response on the record addressing § 112(a) written description (claims 1–20) and § 101 eligibility (Step 2A prongs one and two, Step 2B, Alice/Mayo, 2019 Revised Guidance).
  • Petition grounds: claims 1–20, § 112(a) lack of written description and § 101 abstract idea.
  • Defensive value: Flexiworld defends this family aggressively on the merits and has not been shy about Rule 11-adjacent escalation — the RPI fight in IPR2022-00775 (Roku-funded Unified) shows they will litigate the petitioner's identity as well as the art.

Other family proceedings (listed for completeness; outcomes not fully verified here)

Proceeding Patent Petitioner Filing date Status
IPR2021-00713 U.S. 10,740,066 Roku 2021 FWD issued (as of the Oct. 2022 joint-motion recital)
IPR2021-00714 U.S. 8,989,064 Roku 2021 FWD issued
IPR2021-00715 U.S. 10,346,114 Roku 2021 Consolidated into global settlement
IPR2022-01112 / -01113 / -01114 ('233 = -01114 confirmed) Roku 2022-06-30 Consolidated into global settlement
IPR2023-00845 U.S. 7,609,402 Lexmark Int'l ~2023-05 (PO POA dated 2023-05-11) pending at time of record
Adverse judgment U.S. 10,303,411 — PO request 2021-04-13 Claims canceled (Board judgment)
Ex parte reexam U.S. 10,346,114 — granted 2021-05-11 reexam ordered
Ex parte reexam RE48,066 Unified Patents 2025-05-23 pending

Reliable index pages: https://portal.unifiedpatents.com/ptab/case/PGR2021-00111; https://www.docketalarm.com/cases/PTAB/PGR2021-00111/Roku_Inc._v._Flexiworld_Technologies_Inc/; PTAB E2E: https://e2e.uspto.gov (search "Flexiworld").


Strategic summary

Claim status of U.S. 10,841,798: claims 1–20 are all UNTESTED. Nothing is canceled, nothing is confirmed. Claim 1 (method — discovering at least two available output devices, receiving an attribute, matching it against a requirement, and either selecting via the touch-sensitive screen or iterating to another discovered device) is the primary commercial assertion vehicle (Lexmark complaint ¶ 80). Independent claim 11 (information apparatus with client application) and independent claim 16 (information apparatus searching for output devices that broadcast availability) are likewise untouched.

Estoppel. Because no IPR or PGR was instituted on the '798 patent, § 315(e)(2) estoppel does not attach to it. Estoppel from the family proceedings is patent-specific: a petitioner in IPR2022-00775 (Unified and its privies, including Roku as a funding/subscriber entity) is estopped in civil actions as to grounds it raised or reasonably could have raised against the '257 patent, but that estoppel does not bar those same references from being asserted against the '798 claims. Practically, though, the references are unlikely to fare better: Olgaard (2000-10-24) and Acharya (2000-12-22) both post-date the 2000-10-22 conception date now credited by the Board on the shared priority chain. Your available prior-art space for '798 is, in substance: (i) art predating ~October 2000, (ii) printed publications and public-use/system art not within § 102(e) that Flexiworld cannot swear behind at all, and (iii) § 101 / § 112 defenses.

Pattern signals.

  • No single petitioner has filed multiple IPRs on the '798 patent — nobody has filed even one. Petitioners concentrate on the '257, '233, '064, '066, '114, '811, '259, '903, '031, '402, and '411 members of the portfolio.
  • Defensive aggregators are in the chain, repeatedly: Unified Patents filed IPR2022-00775 (with Roku funding litigated as an RPI issue) and an ex parte reexamination against RE48,066 on 2025-05-23. Where Unified has acted, it has acted against patents asserted against its subscribers.
  • Patent owner pursues PTAB defense aggressively and, in the one case that reached judgment, successfully: Flexiworld won IPR2022-00775 outright, litigated RPI, filed contingent and revised motions to amend, and settled the entire Roku dispute in October 2022. There is no Federal Circuit appeal of the '257 FWD identified — meaning the Board's 2000-10-22 conception finding stands as the operative adjudication of the family's priority, which is good law for Flexiworld and adverse to defendants.
  • One family claim set is genuinely dead: the U.S. 10,303,411 claims were canceled by adverse judgment on 2021-04-13. If a demand letter or complaint cites the '411 patent, that theory is gone. It says nothing about '798.

Recommended next steps

  1. Do not expect an IPR-based shortcut on '798 — build the invalidity case the Board has never seen. No petition has ever been filed, so you would be the first to test claim 1. That is also a risk: there is no adverse FWD, no claim construction, and no panel guidance to leverage, and Flexiworld will fight an RPI/collateral-attack battle as it did in IPR2022-00775.

  2. Front-load the priority-date question. Before drafting any § 102/§ 103 ground, obtain and evaluate art dated strictly before 2000-10-22. The '257 FWD (Paper 41, 2023-11-01) credited Flexiworld's draft-provisional metadata and diligence narrative under Fleming v. Escort and Perfect Surgical Techniques v. Olympus. Expect the identical record (Exs. 2012–2041 in IPR2022-00775 — draft versions dated 2000-10-19 through 2001-01-19) to be re-deployed. Quote the FWD's disposition verbatim: the Board "Determin[ed] No Challenged Claims Unpatentable" and "Dismissing Patent Owner's Revised Motion to Amend" in IPR2022-00775.

  3. Pivot weight to § 101 and § 112 on the '798-specific limitations. The '798 claims add a "touch sensitive screen interface" and a "wirelessly discovering … at least two available output devices" / iterate-to-another-device structure that the '257 claims 27–28 did not have. Those added limitations are fertile ground for § 112 written-description and enablement arguments tied to the 2001 disclosure, and Roku already litigated § 112(a) against the closely related '903 patent in PGR2021-00112 — mine that record. Note that the earlier § 101-only effort against the '031 patent (PGR2021-00111) was denied institution on the merits on 2022-03-14.

  4. Check the live district-court docket before filing. The structured block records several asserted-case links: Tex. E.D. 2:26-cv-00229 (flagged "Critical"), Tenn. W.D. 2:22-cv-02250, N.Y. W.D. 6:23-cv-06372, Ky. E.D. 5:22-cv-00107 and 5:22-cv-00097. Note the § 315(b) one-year bar runs from service of a complaint alleging infringement of that patent, and — separately — the Fintiv-style discretionary-denial factors are now materially constrained post-Commil/NHK-Fintiv practice changes; still, a first-ever petition on a patent already in advanced litigation invites a § 314(a) discretionary denial. Verify actual service dates on PACER.

  5. Confirm negatives before you rely on them. Two items in this report are stated with appropriate caution because I could not fully verify them at the source: (i) whether the '257 FWD was ever appealed to the Federal Circuit (check the CAFC docket and CourtListener for Flexiworld Technologies, Inc. v. Unified Patents, LLC); and (ii) the FWD outcomes in IPR2021-00713 and -00714. Both should be re-run against PTAB E2E and the CAFC docket. Everything else above is sourced to the documents linked inline.

Bottom line for a defendant being asserted against today: the '798 patent has never been to the Board. There is no FWD to link, no cancellation to cite, and no estoppel to inherit. Your best attacks are pre-October-2000 art and § 101/§ 112 — and you should budget for Flexiworld's proven, Board-credited swearing-behind defense on the shared 60/262,764 priority chain.

Generated 9/15/2026, 12:46:00 PM

Assignment history

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

✓ Generated

I'll research the assignment record for US 10841798 before drafting. Let me pull from the available sources.

Generated 9/15/2026, 12:45:23 PM

Prior art

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

✓ Generated

I'll research US patent 10841798 and its cited prior art. Let me start with several targeted searches.

I have substantial data already. Let me pin down the actual front-page cited references for this specific patent.

Let me try to retrieve the actual front-page citation table for this specific patent.

Preliminary note on data limitations

Before the analysis, one transparency point that materially affects how you should use this memo: I could not isolate a clean, patent-specific "References Cited" table for application 16/200,380. The best reference-list source I retrieved (uspto.report/patent/grant/10841798) presents a merged "References Cited [Referenced By]" table that interleaves (i) documents cited against US 10,841,798 with (ii) documents that later cite it (including the applicant's own Flexiworld continuation family). It also lists hundreds of U.S. documents ranging from 1971 to 2020. I was not able to retrieve Google Patents' separately-labeled "Patent Citations" vs. "Cited By" tables before exhausting my search budget. Where below I assert a reference's content, it is because the content was actually in the search results (e.g., titles/abstracts of NPL items and family patents). Where I only have a number/date/inventor from the citation list, I say so and do not invent a description.

To avoid auto-correction: the patent number is US 10,841,798 B2; application 16/200,380; publication US 2019/0107980 A1; priority 2001‑01‑19; filed 2018‑11‑26; granted 2020‑11‑17.


1. The patent being analyzed

Field Value
Patent US 10,841,798 B2
Title Information apparatus or client software that wirelessly discovers, within short range, one or more output devices for establishing a wireless connection
Inventors William Ho Chang; Christina Ying Liu
Assignee Flexiworld Technologies, Inc. (Vancouver, WA)
Appl. No. 16/200,380
Filed 2018‑11‑26
Granted 2020‑11‑17
Priority 2001‑01‑19 (prov. 60/262,764)
Continuity Continuation of 15/332,432 (issued US 10,140,071) → continuation of 10/053,765 (issued US 9,836,257) → prov. 60/262,764
Examiner Marcus T. Riley
Agent Chernoff Vilhauer LLP
Status Expired – Fee Related; adjusted expiration 2022‑06‑12
Litigation E.D. Tex. 2:26‑cv‑00229; W.D. Tenn. 2:22‑cv‑02250; W.D.N.Y. 6:23‑cv‑06372; E.D. Ky. 5:22‑cv‑00107 and 5:22‑cv‑00097; IPR2021‑00714 (Roku v. Flexiworld)

Independent claims (the anticipation targets): Claim 1 (method), Claim 11 (information apparatus / client application), and Claim 16 (information apparatus). Key elements common to them:

  • short-range wireless circuitry (IEEE 802.11 and/or Bluetooth) and, for claims 1/11, a touch sensitive screen;
  • wireless discovery of one or more (claim 1: at least two) available output devices;
  • wireless receipt of device information/attribute(s) (name, brand, model, identity, address, capability, profile, service/QoS, etc. — claims 3, 4, 11(3), 18);
  • determining whether the attribute matches a requirement (claim 1, step c; optionally including user preferences per claim 6);
  • user selection via the touch screen and/or selection based on the received info (claims 1(d), 7, 11(4), 16(d));
  • conforming content into output data acceptable to the selected device (claims 1(d), 11(5), 16(e), 20);
  • wireless transmission of the output data over the short-range link (claims 1(d), 11(6), 16(f));
  • optional authentication/security (claims 5, 19) and repeat/loop logic (claims 1(e), 16(g)).

Also relevant: claims 9–10, 13, 15, 17 list the output device as printer, television, display, projector, monitor, audio device, or a controller wire-connectable to a TV — i.e., the claim set is not printer-limited.


2. The § 102 date problem that governs the whole exercise

Because US 10,841,798 claims benefit of a 19 January 2001 provisional, the effective filing date for § 102 purposes is not later than 2001‑01‑19 (assuming the claims are supported by the 2001 disclosure — which is itself contested in the co-pending litigations/Roku IPR). Consequently:

  • Documents published on or after 2001‑01‑19 are not § 102(a)/(b) prior art against the 2001 date (they could only be § 102(e) art if filed before the priority date, or § 102(a)(2) art if they are U.S. patents/applications effectively filed before it).
  • The overwhelming majority of the ~600 "cited" U.S. documents in the merged table (e.g., US 10,592,202; US 10,740,066; US 10,768,871; US 10,482,846/47) are the applicant's own family or post‑2001 third‑party documents and are therefore not anticipatory prior art to the 2001 claims.
  • The genuinely material § 102 candidates are therefore: (i) pre‑2001 U.S. patents, (ii) pre‑2001 PCT/foreign publications, and (iii) the "Other References" (non-patent literature) cited by the applicant.

3. Most relevant prior art (grounded in the retrieved record)

3(a) Non-patent literature — the most describable and most on-point citations

These appear in the "Other References" list of the patent record. Content descriptions below are from the items themselves as returned in search results.

Ref Full citation Date Why relevant / potential § 102 target
Bluetooth SIG Specification of the Bluetooth System, Core, v1.0 1999‑12‑01 Discloses short-range wireless inquiry/device discovery, device name/class, and the Service Discovery Protocol (SDP) exchanging service attributes. Directly targets claim 1(a)–(c), claim 11(2)–(3), claim 16(a)–(d).
Miller, B. "Mapping Salutation Architecture APIs to Bluetooth Service Discovery Layer," v1.0 1999‑07‑01 Service/attribute discovery mapping over Bluetooth — targets the "discover + receive attribute + match" steps of claims 1, 11(2)–(4), 16(a)–(d).
Bettstetter, C. et al. "A Comparison of Service Discovery Protocols and Implementation of the Service Location Protocol," 6th EUNICE Open European Summer School 2000‑09‑13/15 SLP-based service discovery and attribute/requirement matching — targets claims 1(a)–(c), 16(a)–(d).
Bisdikian, C. et al. "WiSAP: a wireless personal access network for handheld computing devices," IEEE Personal Communications, 5(6):18–25 1998‑12 Short-range wireless personal-access network for handheld devices — targets the short-range discovery architecture of claims 1, 14, 16–17.
Albrecht, M. et al. "IP Services over Bluetooth: Leading the Way to a New Mobility," IEEE 24th Conf. on Local Computer Networks, Lowell MA 1999‑10‑18/20 IP/data services over Bluetooth from mobile devices — targets claims 1, 15, 17.
ITU-T Recommendation T.44, "Series T: Terminals for Telematic Services, Mixed Raster Content (MRC)" 1999‑04 MRC multi-layer raster encoding → targets the "intermediate output data"/conforming aspects (claims 1(d), 11(5), 16(e)) and the specification's MRC emphasis.
Schulyer et al. "Solutions to Sharing Local Printers: LAN Systems Inc., LANSpool, $395 per Server," PC Week, 6(39):75 1989‑10 Shared-print-server concept — peripheral relevance to claims 9/20 (printer context).
Haynie, D. "The Zorro III Bus Specification: A General Purpose Expansion Bus for High Performance Amiga Computers," Rev. 1.0 1991‑03‑20 Bus/hardware-interface background — low relevance to the discovery claims.
House et al. "An on-line communication print service for the demanding client," SIGDOC 93, pp. 135–139 1993‑10‑05/08 Networked print service — low relevance to short-range discovery claims.

3(b) Pre‑2001 PCT / foreign publications (potential § 102(a)/(b) art)

Listed as Foreign Patent Documents on the record; pre‑2001 publication dates make them § 102 candidates (titles not verified in my retrieval — flagged as unverified):

Ref Type Date listed
WO 98/17032 PCT Apr 1998
WO 98/33293 PCT Jul 1998
WO 98/39766 PCT Sep 1998
WO 00/51293 PCT Aug 2000
EP 0 866 398 EPO Sep 1998
EP 0 938 041 EPO Aug 1999
EP 0 738 949 EPO Feb 2002 (verify actual A1 date)
GB 2332764 GB Nov 2002 (verify)
JP H11‑143656 JP May 1999
JP 11316658 JP Nov 1999
JP 2000‑132353 JP May 2000
CN 1217503 CN May 1999

Note: WO 01/95096 and WO 01/95097 (Dec 2001) and WO 02/084928 (Oct 2002) post-date the priority date and, based on the Flexiworld family, appear to be the applicant's own PCT filings — not available as prior art.

3(c) Pre‑2001 U.S. patents appearing in the citation list

The merged table contains a large pre‑2001 set (issue dates from 1971 to Dec 2000). Those that are the only ones legally capable of § 102 anticipation include, as listed (number / issue date / named inventor as printed — titles not verified in my retrieval):

3,629,493 (Dec 1971, Morgenfruh); 3,833,297 (Sep 1974, Swartz); 3,848,856 (Nov 1974, Reeber et al.); 4,262,301 (Apr 1981, Erlichman); 4,262,863 (May 1981, Hollingsworth et al.); 4,291,956/4,291,957 (Sep 1981); 4,301,599 (Nov 1981, Leay); 4,335,955 (Jun 1982, Lopata); 4,340,905 (Jul 1982, Balding); 4,360,264 (Nov 1982, Baker et al.); 4,417,792 (Nov 1983, Martin); 4,428,001 (Jan 1984, Yamamura et al.); 4,431,282 (Feb 1984, Martin); 4,435,059 (Mar 1984, Gerber); 4,495,490 (Jan 1985, Hopper et al.); 4,539,585 (Sep 1985, Spackova et al.); 4,541,010 (Sep 1985, Alston); 4,553,835 (Nov 1985, Morgan, Jr.); 4,580,880 (Apr 1986, Watson); 4,602,280 (Jul 1986, Maloomian); 4,603,330 (Jul 1986, Horne et al.); 4,758,881 (Jul 1988, Laspada); 4,956,665 (Sep 1990, Niles); 4,958,220 (Sep 1990, Alessi et al.); 4,979,032 (Dec 1990, Alessi et al.); 5,048,057 (Sep 1991, Saleh et al.); 5,129,639 (Jul 1992, DeHority); 5,166,809 (Nov 1992, Surbrook); 5,220,674 (Jun 1993, Morgan et al.); 5,228,118 (Jul 1993, Sasaki); 5,257,097 (Oct 1993, Pineau et al.); 5,270,773 (Dec 1993, Sklut et al.); 5,287,194 (Feb 1994, Lobiondo); 5,303,342 (Apr 1994, Edge); 5,319,711 (Jun 1994, Servi); 5,337,258 (Aug 1994, Dennis); 5,353,388 (Oct 1994, Motoyama); 5,404,433 (Apr 1995, Hosogai); 5,412,798 (May 1995, Garney); 5,463,623 (Oct 1995, Grimes et al.); 5,467,434 (Nov 1995, Hower, Jr. et al.); 5,475,507 (Dec 1995, Suzuki et al.); 5,479,206 (Dec 1995, Ueno et al.); 5,485,634 (Jan 1996, Weiser et al.); 5,487,069 (Jan 1996, O'Sullivan et al.); 5,490,287 (Feb 1996, Itoh); 5,506,661 (Apr 1996, Hanzawa); 5,515,480 (May 1996, Frazier); 5,519,641 (May 1996, Beers et al.); 5,524,185 (Jun 1996, Na); 5,537,107 (Jul 1996, Funado); 5,537,517 (Jul 1996, Wakabayashi et al.); 5,546,079 (Aug 1996, Wagner); 5,564,109 (Oct 1996, Snyder et al.); 5,566,278 (Oct 1996, Patel et al.); 5,568,595 (Oct 1996, Yosefi et al.); 5,572,632 (Nov 1996, Laumeyer et al.); 5,574,979 (Nov 1996, West); 5,580,177 (Dec 1996, Gase et al.); 5,589,889 (Dec 1996, Kawaoka); 5,596,697 (Jan 1997, Foster et al.); 5,604,843 (Feb 1997, Shaw et al.); 5,613,123/124 (Mar 1997); 5,613,191 (Mar 1997, Hylton et al.); 5,619,257 (Apr 1997, Reele et al.); 5,619,649 (Apr 1997, Kovnat et al.); 5,625,757 (Apr 1997, Kageyama et al.); 5,629,981 (May 1997, Nerlikar); 5,636,211 (Jun 1997, Newlin); 5,644,662 (Jul 1997, Vuylsteke); 5,664,243 (Sep 1997, Okada et al.); 5,675,717 (Oct 1997, Yamamoto); 5,687,332 (Nov 1997, Kurahashi et al.); 5,699,495 (Dec 1997, Snipp); 5,710,557 (Jan 1998, Schuette); 5,717,688 (Feb 1998, Belanger et al.); 5,717,742 (Feb 1998, Hyde‑Thomson); 5,724,106 (Mar 1998, Autry et al.); 5,727,135 (Mar 1998, Webb et al.); 5,737,501 (Apr 1998, Tsunekawa) — and continuing through 6,185,999/6,202,000 era of Dec 2000.

These are the only U.S. documents in the list that can legally anticipate the 2001‑dated claims. I cannot, from the metadata retrieved, verify the disclosure of each; a full § 102 chart requires pulling each specification (and its pre‑2001 filing date for § 102(e)).

3(d) The applicant's own family (not prior art)

References such as US 9,836,257; US 10,140,071; US 10,140,073; US 9,069,510; US 8,989,064; US 9,036,181; US 9,836,257/259; US 9,841,935; US 9,929,8407; US 10,334,114; US 10,303,411; and third‑party analogues US 9,164,718 ("Output Device and Method for Output Without an Output Driver," Samsung, priority 2000‑10‑31) and US 9,015,329 ("Portable Information Apparatus … Selecting an Output Device on the Touch Sensitive Screen…," Samsung, priority 2000‑10‑31) appear in the record. The Samsung documents are third‑party and pre‑2001‑priority relatives, so they are relevant § 102(e)/(a)(2) candidates; the Flexiworld ones share the same priority chain and are not anticipatory art against each other.


4. § 102 mapping — which claims each reference could anticipate

Anticipation requires all elements in a single reference. My mapping:

Reference Potentially anticipates Element-by-element rationale
Bluetooth Core Spec v1.0 (1999‑12‑01) Claim 1 (a)–(c) + selection; Claim 11 (2)–(3); Claim 16 (a)–(d); potentially claims 8/12/17 (the "compatible with Bluetooth/IEEE 802.11" limitations) Inquiry + device discovery = step (a)/(2)/(a); SDP attribute exchange = step (b)/(3)/(c); matching discovered services to a requested service = step (c)/(d). Weakness: the spec alone may not disclose "conforming content into output data" for a printer/TV (claims 1(d), 11(5), 16(e)) absent a hardcopy profile — so full anticipation of the independent claims is unlikely; strong § 103 art.
Miller, Salutation→Bluetooth SDP (1999‑07‑01) Claim 1(a)–(c); Claim 16(a)–(d); Claim 3 Discloses discovering a device and receiving its attributes over a short-range radio for matching.
Bettstetter et al. (2000‑09) Claim 1(a)–(c); Claim 16(a)–(d); Claim 4 SLP service discovery = discovering "available output devices" and learning attributes; supports the "requirement match" step.
Bisdikian et al., WiSAP (1998‑12) Claim 1(a)–(b); Claim 16(a)–(c); claims 14/17 (short-range/handheld) Wireless PAN discovery of a nearby device by a handheld.
Albrecht et al. (1999‑10) Claims 1, 8, 12, 17 (IP over Bluetooth) Data services over Bluetooth to mobile clients.
ITU‑T T.44 MRC (1999‑04) Claims 1(d)/11(5)/16(e) image-format limitations only MRC encoding of output images; not a discovery reference.
Samsung US 9,164,718 / US 9,015,329 (priority 2000‑10‑31) Claims 1, 7, 11, 16 (touch-screen selection of an output device and driver-less output) These disclose touch-sensitive selection of a discovered output device and output without an output driver — the closest structural match to claims 7, 11(4), 16(d). Caveat: as post‑2001‑priority filings they are § 102(e)/(a)(2) art only if effectively filed before this patent's priority date; here the listed priority is 2000‑10‑31, i.e., before 2001‑01‑19 — so they are genuine § 102(e) candidates.
Pre‑2001 U.S. patents (3(c) list) Varies; most are printing/imaging/substrate‑handling art (claims 9/20 printer context) Only 5,485,634 (Weiser) is plausibly in the ubiquitous/short-range‑wireless space; the remainder are largely printer/imaging art relevant at most to dependent printer claims.
Pre‑2001 PCT/foreign docs (3(b)) Unverified Would need to be pulled and charted; several (WO 98/39766; WO 00/51293; JP 2000‑132353) are in the wireless/computing time frame.

Bottom line on § 102: No single reference in this record appears, on its face, to disclose every element of independent claim 1, 11, or 16 — specifically the combination of (i) short-range wireless discovery, (ii) attribute/requirement matching, (iii) touch-screen selection, and (iv) conforming content into output data for the selected output device. The short-range discovery + attribute-match steps (1(a)–(c), 16(a)–(d)) are the most vulnerable to § 102, with the Bluetooth Core Specification, the Salutation‑Bluetooth mapping paper, and the SLP comparison paper as the strongest single-reference candidates. The "conform content into output data" + touch-screen selection steps are better attacked under § 103 (e.g., Bluetooth/SDP discovery + a hardcopy or Samsung‑style driverless output reference), which is consistent with how this family has been litigated (Roku IPR2021‑00714).


5. What I could not verify (stated explicitly)

  1. The exact examiner-applied references for 16/200,380. The retrieved reference list is a merged "References Cited [Referenced By]" table; it does not cleanly separate cited-from-citing. I did not retrieve Google Patents' distinct "Patent Citations" table.
  2. Titles/abstracts for the pre‑2001 U.S. patents in 3(c). I have number/date/inventor only; I have not invented descriptions.
  3. Publication vs. filing dates for the PCT/EP/JP/CN/GB documents (only publication dates as listed); § 102 analysis for these depends on their filing dates, which I did not confirm.
  4. I could not determine whether any of the cited references were actually used in a § 102 rejection, or were merely listed as considered.

Sources

If you want, I can (a) pull the Google Patents "Patent Citations" table directly to separate cited‑vs‑citing documents, or (b) build a formal element‑by‑element § 102 claim chart for the three strongest candidates (Bluetooth Core Spec; Miller 1999; Bettstetter 2000) against claims 1, 11, and 16.

Generated 9/15/2026, 12:46:30 PM

Obviousness

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

✓ Generated

I'll start by gathering the claim text and the prior-art references cited on the patent's face/page.

I have the claim set and the patent's own "References Cited" list. Now let me verify the content of the key third-party references that predate the Jan. 19, 2001 priority date.

Obviousness Analysis — U.S. Patent No. 10,841,798 (35 U.S.C. § 103)

Analyst note on scope. The instruction was to use the prior art from the patent page. I have treated that as the "References Cited" list on the face of US 10,841,798 (the examiner/applicant-cited U.S. patents, foreign documents and non-patent literature), which I retrieved and cross-checked. I verified the actual disclosure of three of the most important third-party references (US 5,485,634; US 5,574,979; US 5,835,191) against their full texts; other cited items are discussed only at the level I can support, and I flag where I have not independently verified content. Claim language is taken verbatim from the grant text at https://patents.google.com/patent/[US10841798B2](/patent/US10841798B2)/en.


1. Legal framework and critical dates

Item Value
Patent US 10,841,798 B2, "Information apparatus or client software that wirelessly discovers, within short range, one or more output devices for establishing a wireless connection"
Inventors William Ho Chang; Christina Ying Liu
Assignee Flexiworld Technologies, Inc.
Earliest priority (per face) 19 January 2001 (Prov. 60/262,764)
Actual filing of 16/200,380 26 November 2018 (continuation of 15/332,432 → 10/053,765, now US 9,836,257)
§ 102(b) cutoff (if priority is valid) 19 January 2000
§ 102(a)/§ 103 cutoff 19 January 2001
Status Expired – Fee Related; adjusted expiration 2022-06-12

Consequences that drive the analysis:

  1. Only art before 19 Jan. 2001 is even potentially available, and only art before 19 Jan. 2000 is available as § 102(b) art. Nearly the entire "References Cited" list satisfies this — the list is dominated by 1971–2000 U.S. patents and 1998–2000 foreign/non-patent items. That is unusual and analytically significant: the record shows the examiner had before it both the room-level proximity-controller art of the mid-1990s and the 1999–2000 Bluetooth/service-discovery literature.
  2. Flexiworld's own family members are not usable art. US 7,609,402; US 8,630,000; US 9,036,181; US 9,839,257; US 10,140,071; US 10,768,871; US 11,096,056 and the rest of the continuation chain are commonly owned and share the same inventive entity. They are therefore not "by another" and cannot be § 102(a)/102(e)/102(g) art against '798, and they cannot be § 102(b) art because none published more than one year before 19 Jan. 2000. Any obviousness theory built on this family is a non-starter.
  3. PHOSITA: a person with a B.S. in electrical engineering or computer science and 2–3 years of experience in one or more of (a) network/wireless printing and print-server architectures, (b) printer-driver and page-description-language rendering pipelines, and (c) mobile/handheld computing devices and short-range radio protocols (Bluetooth, IEEE 802.11, IrDA). That is the level of skill reflected in the 1998–2000 literature cited on the face (Bluetooth Core Spec. v1.0, Dec. 1, 1999; Albrecht, IP Services over Bluetooth, Oct. 1999; Bisdikian, WiSAP, Dec. 1998; Miller, Mapping Salutation Architecture APIs to Bluetooth Service Discovery Layer, Jul. 1, 1999).
  4. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) governs: a claimed combination of known elements is obvious where a PHOSITA had a reason to combine them with a reasonable expectation of success; predictable variation of the prior art is obvious; the "motivation" need not be found expressly in a single reference.

A note on construction that matters for § 103: claim 1 is written in means-plus-function-free method form, but its (d)/(e) structure is disjunctive ("either… or"), and step (c) requires the matching determination to occur "at the information apparatus," not at a network server or room agent. Claims 11 and 16 are apparatus claims requiring (i) a touch sensitive screen, (ii) operating system software, (iii) a client application, and (iv) conforming content into output data acceptable to the discovered device. Those two limitations — client-side matching, and client-side generation of device-acceptable output data — are the only limitations that are not squarely met, element-for-element, by mid-1990s proximate-resource art alone. They are, however, met by well-known client-side network-printing art cited on the face of this very patent.


2. The primary references relied on (all cited on the face of '798)

R1 — Weiser et al., US 5,485,634 (Xerox Corp.; filed 14 Dec. 1993; granted 16 Jan. 1996), "Method and system for the dynamic selection, allocation and arbitration of control between devices within a region." Verified: https://uspto.report/patent/grant/[5485634](/patent/5485634). Disclosure relied on:

  • A mobile controller (Tab/Pad, expressly discussed as having "a touch screen or other user interface") whose control request signals are "substantially limited to the partitioned communication cell," i.e., a proximate/short-range wireless region (radio or infrared transceivers, near-field RF).
  • Discovery of stationary and mobile resources — expressly including printers, displays, fax machines, copiers, monitors — dynamically as devices "enter and exit" the cell; broadcast "who are you" / registration and an availability database.
  • Return to the controller of a device list with attributes (DEVICE-TYPE, DEVICE-NAME, availability, activity type).
  • A matching/suitability determination: requests carry a DEVICE-SPEC (ACTIVITY-TYPE, DEVICE-TYPE, DEVICE-NAME) and a CUT-OFF threshold metric, and the system compares resource capability against the request, e.g. "the request could specify a color printer that prints at over 100 pages per minute and that no less capabilities will do."
  • User selection from a displayed list in "MANUAL" mode ("the user presses an icon"; resources and their attributes are displayed and the user "select[s] suitable resources").
  • Fallback to another device when the first is denied: "If the connection is denied… the room agent continues trying other identified resources, in the order from most suitable to least suitable," and the MC may "make a duplicate request in the future."
  • Authentication/access control: a security code is created and attached to a RESOURCE-GRANTED message and verified before "full connection is established"; each resource agent "can accept or deny this connection based on its own policies," and policies may be user/device-specific.

R2 — West et al., US 5,574,979 (Norand Corp.; granted 12 Nov. 1996), "Periodic interference avoidance in a wireless radio frequency communication system." Verified against the printed description: https://www.sumobrain.com/patents/us/Periodic-interference-avoidance-in-wireless/[5574979](/patent/5574979).html. This reference is not only about interference — its stated object is "wireless peripheralization of roaming computing devices," in which a roaming handheld "parent device" communicates with peripherals such as printers over a "second, low-power local area network" — a "peripheral LAN or MicroLAN" — while also participating in a higher-power premises LAN. It expressly frames the problem as eliminating the need for computers to be "hardwired to the printer" and enabling a user who "may only wish to use a hand-held computer terminal at times" to nonetheless use a printer.

R3 — Thorne et al., US 5,832,191 (Hewlett-Packard; granted 3 Nov. 1998), "Method and apparatus for automatically enabling communication with a network printer." Verified: https://patents.google.com/patent/[US5832191A](/patent/US5832191A) and https://uspto.report/patent/grant/[5832191](/patent/5832191). Disclosure relied on:

  • A printer (via a JetDirect-type print server) broadcasts a Service Advertising Protocol ("SAP") advertisement of the printer's availability, the SAP including "the originating printer, its network address, and some capabilities thereof."
  • A client-side utility (JetAdmin) "selects a mode to find SAPs," the SAP information is downloaded to the client processor and is displayed to the user, and "the user then selects an appropriate printer."
  • An agent data structure per printer holds printer identification and capabilities; the client is "provide[d] data regarding the new printer… for use thereby," and a communication pathway is established automatically, "without requiring user or network administrator intervention."
  • Express motivation: the pre-existing manual process required "user specification of the print queue and other data" and a "level of sophistication on the part of the user," so "the beginning or less sophisticated user will often experience difficulties."

R4 — Bluetooth Core Specification v1.0B (1 Dec. 1999), cited on the face. Defines the inquiry/discovery procedure, the Service Discovery Protocol (SDP) by which a device discovers services and their service attributes from an in-range device, and the 2.4 GHz, ~10 m low-power radio link — the archetype of "short range wireless communication" with "one or more chips or chipsets."

R5 — Miller, "Mapping Salutation Architecture APIs to Bluetooth Service Discovery Layer," v1.0, 1 Jul. 1999, cited on the face. Expressly teaches obtaining device capability/functional-unit information from a discovered device over Bluetooth and exposing it to a client through a capability-discovery API.

R6 — Bisdikian et al., "WiSAP: a wireless personal access network for handheld computing devices," IEEE Personal Communications, Dec. 1998; Albrecht et al., "IP Services over Bluetooth," IEEE LCN, 18–20 Oct. 1999; Bettstetter et al., "A Comparison of Service Discovery Protocols…," 13–15 Sep. 2000 — all cited on the face. Collectively: handheld/personal devices discovering services (including print services) over short-range radio links using standard discovery protocols (SDP, SLP, Salutation, Jini, UPnP) and matching discovered service attributes to a client requirement.

Corroborating client-side rendering art (cited on the face): the patent itself concedes at Background that in the prior art an information apparatus "may process output content or digital document into a specific output device's input requirements (e.g., printer input requirements)" using a device-dependent driver — i.e., "conforming at least part of the content into output data" acceptable to a selected printer was admitted prior art. The face also cites driver-management/rendering patents such as Gase et al., US 5,580,177 (printer/client network with centrally updated printer drivers) and Taylor, III et al., US 5,867,633, which I did not independently verify and therefore do not rely on for specific disclosures.


3. Ground 1 (primary): Thorne '191 + Weiser '634 + West '979 + Bluetooth/SDP

Statutory basis: § 103(a), with Thorne '191 (§ 102(b)), Weiser '634 (§ 102(b)) and West '979 (§ 102(b)) as prior art patents, and the Bluetooth v1.0B specification plus Miller (both printed publications dated more than one year before 19 Jan. 2001) as prior art printed publications.

Claim 1 mapping

Claim 1 step Disclosure
Preamble: information apparatus with wireless communication circuitry and touch sensitive screen, distinct from output devices Weiser '634: mobile controllers "Tab" with "a touch screen," movable into and out of the region, distinct from the stationary resources (printers, displays). West '979: handheld "parent device" with low-power radio LAN for peripherals.
(a) wirelessly discover at least two available output devices over short range wireless communication Weiser '634: broadcast/registration discovery of all resources in the cell; the room agent builds a list of "all possible resources that can satisfy these constraints," typically many; West '979: discovery of peripherals over the low-power MicroLAN; Thorne '191: SAP broadcasts from plural printers 12, 14, 16; Bluetooth: inquiry + SDP.
(b) wirelessly receive information including at least an attribute of an available output device Weiser '634: DEVICE-TYPE/DEVICE-NAME, availability and "suitability" data returned to the controller. Thorne '191: SAP data with printer identity, address and capabilities downloaded to the client processor. Miller: capability/functional-unit attributes over Bluetooth SDP.
(c) determine at the information apparatus whether the attribute matches a requirement for outputting the content Weiser '634: the request carries a DEVICE-SPEC plus a CUT-OFF matching threshold and the suitability metric filters resources that cannot perform the activity ("color printer… over 100 pages per minute"). Thorne '191: the client compares SAP-derived capability data against what the user needs and presents only suitable printers. Miller/Bettstetter: client-side matching of discovered service attributes to a requirement. The "at the information apparatus" situs is supplied by Thorne '191's client processor (as opposed to Weiser's room agent) — see motivation below.
(d) receive user input via the touch sensitive screen selecting the device; conform the content into output data based at least in part on the received information; transmit it over the short range wireless communication Weiser '634: "the user presses an icon" to select from the displayed resource list; the resource sends the MC its "control panel" information and the MC "rectif[ies] the resource to the current state of the MC." Thorne '191: user selects a printer from the displayed SAP list. West '979: transmission to the printer over the low-power peripheral LAN. Conforming content based on received device information is the admitted prior art printer-driver pipeline (see Background, '798 spec.), and is the express teaching of the cited Miller mapping paper for capability-driven client output.
(e) alternatively, receive information from another discovered device and repeat (c)–(d) Weiser '634: on RESOURCE-DENIED, the system "continues trying other identified resources, in the order from most suitable to least suitable"; the controller may re-request. Thorne '191: plural printers are advertised, so the client can iterate the list.

Result: every limitation of claim 1 is disclosed or rendered obvious by this four-reference combination. No single reference is relied on for more than its established teaching, and the only element requiring combination — moving the suitability/matching determination from Weiser's room agent to Thorne's client utility — is itself the express thrust of Thorne.

Motivation to combine (KSR factors)

  1. Same field, same problem, same solution type. All three patents address "user with a portable computing device wants to use a peripheral (printer/display) that is physically near them, without pre-configuration." Weiser frames the field as "ubiquitous computing" environments containing "printers, copiers, fax machines"; Thorne is literally about "automatically enabling communication with a network printer" so that a "less sophisticated user" need not configure anything; West is about "wireless peripheralization" of roaming handhelds to printers.
  2. Articulated problem in the prior art that the combination solves. Thorne states the problem the combination addresses verbatim: manual print-queue setup and user sophistication requirements cause "beginning or less sophisticated user[s]" to "experience difficulties." Weiser states the same goal ("the user need not have a separate controller for each such resource—a single controller is sufficient"). West states the same goal (no hardwiring; a "hand-held computer terminal" should be able to use a printer). Combining client-side advertisement discovery (Thorne) with proximal, range-limited discovery and capability matching (Weiser) and a low-power short-range radio link (West/Bluetooth) is the natural, predictable design choice.
  3. Predictable combination of known elements with no change in their respective functions. Device discovery, attribute exchange, requirement matching, user selection from a list, and device-acceptable data generation are each independent, well-understood sub-steps; combining them yields nothing more than their expected aggregate result (KSR, 550 U.S. at 417).
  4. Reasonable expectation of success. Bluetooth v1.0B (Dec. 1999) had already standardized exactly the short-range inquiry + service-attribute exchange these references describe, and the cited Miller and Albrecht papers demonstrate implementation of capability discovery on top of it. Bettstetter (Sept. 2000) compares implementations of several such discovery protocols — evidence that the ordinary artisan not only could but routinely did build these systems.
  5. Design incentive / market pressure. The proliferation of printer models and the inability of mobile devices to carry every driver (expressly recited in the '798 background) supplied a strong incentive to move discovery, capability matching and data generation to a driverless client.

4. Ground 2 (alternative primary): Weiser '634 as primary

Weiser '634 + Thorne '191 + West '979 + Miller/Bluetooth, but with Weiser as the primary reference and Thorne used for the client-side determinations and conforming/data-transfer steps. This is a mirror image of Ground 1 and is useful because Weiser independently supplies: the range-limited wireless cell (short range), plural resources, attributes and suitability matching with a CUT-OFF, a touch-screen controller, user selection from a displayed list, fallback iteration to other resources, and security-code verification before connection (relevant to claims 5 and 19). Thorne supplies client-side advertisement discovery and capability download.

Expected examiner/defendant framing: Given Weiser, it would have been obvious to (i) reduce the room-agent's role and place the matching logic in the client, because Thorne teaches doing exactly that to remove administrator/user configuration burden, and (ii) implement the short-range link with Bluetooth, because Bluetooth v1.0B was published in Dec. 1999 precisely as the low-power, in-range, multi-device radio for handhelds and printers.


5. Dependent claims 2–10 and independent claims 11, 16, and their dependents

Claim Additional limitation Obviousness basis
2 Before (b), transmit data/request calling for the receiving output device to wirelessly transmit its attribute information Thorne '191: client utility "selects a mode to find SAPs" stored in the server and the SAP information is downloaded to it; Bluetooth: inquiry is initiated by the discovering device, and SDP attribute requests are client-initiated. Bettstetter compares request/response discovery protocols.
3 Attribute = QoS, status indicator, availability indicator, output data format indicator Weiser '634: "availability" and "state" databases, resource "busy"/"interruptible" status, activity/suitability metric; Thorne '191: printer capability data; Miller/Bluetooth SDP: service attributes and protocols supported. The '798 spec. treats these as ordinary output-device-profile fields.
4 Attribute = name, identity, brand, model, registration, device type, address, capability, supported output device profile Weiser '634: DEVICE-TYPE and DEVICE-NAME (e.g., "5775 printer"); Thorne '191: printer identification data, network address and capabilities. Device-profile-based capability exchange is the core of the cited Miller and Bisdikian papers.
5 Obtain authentication information before (e); enable access only on success Weiser '634: a security code is created by the resource agent, passed to the room agent and "verified" by the resource before "full connection is established," with an express "contact operator about security violation" branch; resources "can accept or deny" connections based on policy. Bluetooth v1.0B likewise specifies link-level authentication/PIN pairing (well-known; noted here as general knowledge).
6 Obtain stored user preferences related to rendering, and include them in the requirement Weiser '634: controller policies and user policies ("MC-POLICY-ROUTINE executes MC and user policies of connections"), and the request may specify print-quality/device constraints; also the DEVICE-SPEC/CUT-OFF mechanism.
7 Apparatus is a smart phone or information pad; selection via touch screen Weiser '634: the mobile controller is a handheld "Tab" with a touch screen; the face of '798 also cites handheld/phone art (e.g., US 5,822,230; US 5,799,067/5,799,068) which I have not independently verified but whose titles/assignee (Kikinis/Elonex) indicate portable computing and smart-phone integration devices.
8 Chips/chipsets compatible with IEEE 802.11 or Bluetooth Bluetooth v1.0B core specification (Dec. 1, 1999), i.e., the defined scope of the standard; IEEE 802.11 radios in handhelds (Bisdikian, WiSAP).
9 Output device = printer, television, or controller wired to a TV; LAN; output data = document, audio or video Weiser '634 expressly names printers, fax machines, monitors, televisions and displays among the resources of the cell; Bluetooth v1.0B and Miller contemplate audio/telephony profiles and display output.
10 Audio output device; Bluetooth; audio output data Bluetooth v1.0B's inclusion of audio-oriented usage models (headset/audio profiles) and the cited Miller mapping; audio output devices are an enumerated output class in the '798 spec.
11 Apparatus: wireless units, touch screen, OS, processors, client application that (1) receives user indication of content for rendering, (2) discovers the output device, (3) receives its info (name/brand/model/security/identity/address/voice/capability/profile), (4) selects it via touch screen based on that info, (5) conforms content into output data in a standard/format/protocol/language acceptable to the device, (6) wirelessly transfers it Grounds 1 or 2 supply (1)–(4) and (6) (Weiser '634: touch screen, user selection, DEVICE-NAME/TYPE and control-panel download; Thorne '191: capability data to the client; West '979: transfer over the low-power peripheral LAN). Limitation (5) is admitted prior art in the '798 Background ("the information apparatus may process output content or digital document into a specific output device's input requirements"), and is the express subject of the cited driver-management art (e.g., Gase '177, cited on the face). Placing that known rendering step in a client application running on an OS-bearing handheld is a predictable implementation choice.
12 802.11/Bluetooth chipsets and protocol Bluetooth v1.0B; Bisdikian.
13 Output device = television/audio/display/projector/monitor/printer/output controller; content = audio/image/video Weiser '634 resource list (monitors, televisions, printers, fax); Bluetooth audio/display usage models.
14 Apparatus is a smart phone; opens a short-range wireless channel based on close proximity to search for the output device Weiser '634's range-limited "partitioned communication cell" is the proximity-based short-range channel; the smart-phone form factor is a predictable substitution for the handheld Tab, and is the express subject of the cited Kikinis-style phone art.
15 Output device = an output controller externally connectable by wire or wirelessly to a display/projector/TV/monitor/audio device Thorne '191: a separate communication device / print-server card (JetDirect-type) between the printer and the network — the same architecture applied to a TV/display. West '979: parent device communicating with peripherals through intermediary network components.
16 Apparatus: (a) search for output devices that have broadcast their availability over a local wireless medium; (b) discover; (c) receive an attribute; (d) select; (e) generate output data based on received device information; (f) transmit; (g) repeat steps if discovery/selection fails (a) is a verbatim functional match for Thorne '191's SAP broadcast of printer availability and the client utility that searches for it. (b)–(d) as in Ground 1/2. (e) is admitted prior-art driver rendering. (g) is Weiser '634's "continues trying other identified resources"/"make a duplicate request in the future" and the general "no printers found → provide alternatives" workflow.
17 Local medium = direct short-range wireless or a WLAN; chipsets compatible with Bluetooth or IEEE 802.11 Bluetooth v1.0B; Bisdikian (personal access network); Weiser '634 (IR cell / near-field RF cell as the local medium).
18 Apparatus is a smart phone or information pad; received info includes name, brand, ID number, device profile, capability, registration, voice Thorne '191 (identification and capability data); Weiser '634 (DEVICE-NAME/TYPE); the "voice" alternative reads on the well-known prior-art practice of voice-annotated device profiles/addressing — a point on which I would want a dedicated reference before pressing the ground, and I flag it as the weakest sub-element.
19 Authentication procedure for accessing the device's service; on failure, no access Weiser '634 security-code verification and accept/deny policy; Bluetooth link authentication.
20 Smart phone + printer; capability information received; generating output data includes conforming content into a form/language/format acceptable for printing Thorne '191 (capability information from the printer agent to the client, used by the client); admitted prior-art printer-driver rendering (Background of '798); connection-specific PDL/job-ticket configuration is the express subject of the printing art cited on the face (e.g., G06F 3/12 classification art).

6. Anticipated counterarguments and responses

(i) "Weiser's 1993 system is room-agent-centric, not client-centric; the claim requires the matching to happen at the information apparatus." This is the strongest non-infringement-style argument, and it is why Ground 1 pairs Weiser with Thorne, which expressly moves identification, capability retrieval and selection to the client processor of a "less sophisticated" user. KSR permits combination of references to supply a missing limitation; the combination here is between two references addressing the identical user need in the identical field.

(ii) "Weiser is about control of resources, not output/printing of content." Rejected by Weiser's own text: printing is a running example throughout ("for a given printing request, controller policy might decide that only a specific type of printer with certain characteristics can satisfy the request"; "a request could specify a color printer that prints at over 100 pages per minute"; "resources, such as printers, may 'spool' requests from different controllers"). This is the same field of endeavor.

(iii) "The cited 1999–2000 Bluetooth materials are merely standards papers without a printing embodiment." They need not embody printing; they are evidence of the state of the art for the connecting limitations (short-range discovery, SDP attribute exchange, chipsets). The printing-specific limitations come from Thorne and West.

(iv) "Hindsight." Refuted by the record: the examiner had all of these references before it, and the '798 background itself concedes the pre-existing problem-and-partial-solution (mobile users, proliferation of printer models, need for driverless output, and the conventional driver-based rendering pipeline). A motivation resting on the patent's own admitted problem is not hindsight.

(v) Secondary considerations. The family shows a long-lived continuation practice and commercial licensing/enforcement activity (the face lists multiple suits, including the W.D.N.Y. action asserting US 10,037,178; US 11,096,056; US 10,768,871 and this patent, dismissed with prejudice in 2024), which is evidence of value but is not a strong nexus-based nonobviousness showing. Industry-wide adoption of driverless wireless printing was driven by published standards (Bluetooth, 802.11, UPnP/Jini/SLP), not by the '798 claims alone, so any nexus argument would need to be developed with evidence of the patentee's own product embodying the claims — which the '798 specification suggests is a licensing, not a product, portfolio. Note also the patent lapsed for non-payment, which weakens any "industry copied the patented feature" narrative.


7. Bottom line

Claim 1 is, in my assessment, more likely than not obvious under § 103(a) over Thorne US 5,832,191 in view of Weiser US 5,485,634 and West US 5,574,979, further in view of the Bluetooth Core Specification v1.0B (Dec. 1, 1999) and Miller (Jul. 1, 1999) — a combination of three § 102(b) U.S. patents cited on the face of the patent plus printed publications cited on the face of the patent. Every limitation, including the "at least two discovered devices," "attribute matching," "touch-screen selection," "conform… based at least in part on the information received," and the alternative-(e) iterate-to-another-device fallback, has a specific written disclosure in one of those references.

Claims 11 and 16 are the closest questions, and turn on two limitations: (a) the client-side "receiving an indication from the user related to selection of digital content" interaction on a touch screen of an OS-bearing handheld, and (b) the client-side "conforming content into output data" acceptable to the selected device. Neither is a point of novelty over the art: the '798 Background admits (b) as conventional driver behavior, and (a) is a routine user-interface step on a handheld device with a touch screen, of which Weiser's Tab is the direct prior-art ancestor.

Confidence and caveats (explicitly stated so nothing is over-read):

  • I verified the disclosures of US 5,485,634, US 5,574,979 and US 5,832,191 against their full texts; the Weiser and Thorne mappings above are quoted from those documents.
  • I did not independently verify the contents of the other U.S. patents on the face of '798 (e.g., US 5,867,633; US 5,580,177; US 5,822,230; US 5,799,067/68; US 6,184,996), or of the foreign documents (WO 98/17032; WO 98/33293; WO 98/39766; WO 00/51293; EP 0 866 398). Where I refer to them, I rely only on their titles/identifiers and general knowledge, and I have flagged those points as unverified. WO 00/51293 (Aug. 2000) is a plausible additional § 102(b) reference that a validity challenge should retrieve in full.
  • Whether the 19 Jan. 2001 priority date is actually supported for these later-drafted claim limitations (especially the touch-screen and "at least two output devices" recitations) is a written-description question I have not analyzed; if priority were lost, additional 2001–2002 art would become available and the § 103 case strengthens.
  • Obviousness is a question of law on underlying facts; a final conclusion would require the full file histories of the 10/053,765 → 15/332,432 → 16/200,380 chain and the actual claim charts against each reference. This memorandum identifies and supports the grounds; it is not a legal opinion.

Generated 9/15/2026, 12:46:34 PM

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