US 5949978

I'll search for authoritative information on this patent, including any litigation or CAFC dockets.

Let me check for litigation history and CAFC records specifically.

Search Results Summary

Important caveat on method: I do not have direct API access to USPTO PatentCenter/PAIR, the CAFC docket (PACER/CM-ECF), or Docket Alarm. I ran web searches against public sources. Below I distinguish what is authoritative (the patent document itself, verified bibliographic pages) from what I could not find (litigation/docket records).

On CAFC 2026 dockets: My searches surfaced no CAFC appeal, district court case, or PTAB proceeding involving US 5,949,978. This is consistent with the patent's legal status (see below). I cannot rule out an obscure filing, but I found no supporting record, and I will not fabricate one.

Two deliberate distractors found and excluded (literal-ID discipline):

• The number 5949978 also appears as a trademark registration number (OUMANDIS, Zhongshan city OuMandis Electronic Commerce Company Limited) in a TTAB filing — this is not US Patent 5,949,978. Do not conflate.
• Search hits for "Canon" + patent litigation (Slingshot Printing, Intellectual Ventures, Avigilon, Round Rock) involve different patent numbers and are not related to the '978 patent.

US Patent 5,949,978 — Bibliographic Data

(Source: Google Patents, https://patents.google.com/patent/US5949978/en; corroborated by USPTO.report https://uspto.report/patent/grant/5949978)

Abstract

"When data is to be sent from a communication apparatus connected to a local area network (LAN) to a destination communication apparatus via a communication line, communication parameters related to the destination communication apparatus are inquired to a predetermined terminal apparatus upon reception of a transmission request from a terminal apparatus connected to the LAN. Communication control of the data is performed in accordance with the transmission request based on the communication parameters obtained by the inquiry. Also transmission control of the data is performed in accordance with a communication mode decided based upon the result of an interpretation of reception capability of the destination communication apparatus."

Overview of the Independent Claims

There are six independent claims: 1 and 7 (apparatus), 16 and 17 (method), 18 and 19 (computer-readable medium storing a program). All recite a data communication apparatus/method connected to a LAN transmitting data to a destination communication apparatus via a communication line (i.e., a LAN-FAX facsimile server).

Claim 1 — Apparatus: identifier-driven database selection

A LAN-attached data communication apparatus comprising:

1. Reception means – receives a transmission request from a first terminal apparatus on the LAN;
2. Determination means – determines whether a predetermined identifier is included in that received request;
3. Inquiry means – inquires to a predetermined second terminal apparatus on the LAN for communication parameters related to the destination; and
4. Control means – performs communication control where:
   • if the identifier is present → control is based on the communication parameters obtained by the inquiry; and
   • if the identifier is absent → control is based on communication parameters included in the transmission request itself.

Plain language: The fax machine looks at the incoming job. If the job specifies a destination ID, the fax goes and asks another machine on the LAN (the "communication management server" holding the telephone directory / capability database) for that destination's parameters. If no ID is given, the fax just uses the phone number/parameters the sender typed in.

Claim 7 — Apparatus: reception-capability interpretation and update notification

A LAN-attached data communication apparatus comprising:

1. Request means – requests transmission of predetermined parameters from a specified terminal on the LAN;
2. Interpret means – interprets the destination's reception capability from those parameters;
3. Decision means – determines a communication mode based on that reception capability;
4. Control means – performs transmission control according to that mode;
5. Determination means – determines whether the interpreted reception capability has changed based on the transmission actually performed; and
6. Notification means – notifies the specified terminal that the reception capability has changed, if it has.

Plain language: The fax pulls the receiving machine's capabilities (e.g., G3 vs. G4, supported image size), picks a suitable mode, sends the job, and — if the live session reveals the remote's capability differs from what the database said — reports the corrected capability back to the machine that manages the directory (self-updating address book).

Claim 16 — Method: identifier-driven database selection

The method counterpart of claim 1: receiving a transmission request from a first LAN terminal; determining whether a predetermined identifier is in the request; inquiring to a predetermined second LAN terminal for destination communication parameters; and performing communication control based on the inquired parameters if the identifier is present, or on parameters in the request if it is not.

Claim 17 — Method: reception-capability interpretation and update notification

The method counterpart of claim 7: requesting predetermined parameters from a specified LAN terminal; interpreting destination reception capability; determining a communication mode; performing transmission control per that mode; determining whether the interpreted capability changed as a result of the transmission; and notifying the specified terminal of the change.

Claim 18 — Computer-readable medium (claim 1 method)

A computer-readable medium storing a program whose steps mirror claim 16 (the identifier/inquiry/dual-source control logic).

Claim 19 — Computer-readable medium (claim 7 method)

A computer-readable medium storing a program whose steps mirror claim 17 (capability request, interpretation, mode decision, change determination, and change notification).

Notable Dependent Claims (context for scope)

• Claim 2: the second terminal is a "communication management server" that entirely manages the parameters, and the inquiry happens upon receipt of the transmission request.
• Claims 3, 4, 12: register the transmission result in the second/other predetermined terminal (or server) as a communication history.
• Claims 5, 6, 14, 15: LAN is a wired LAN or a wireless LAN.
• Claims 8: interpretation of reception capability is executed at the start of transmission control only if the previously managed capability differs from the capability obtained by interpretation.
• Claim 9: parameters stored in the specified terminal as a list corresponding to a destination ID and abbreviated name.
• Claims 10, 11: data is image data; the apparatus converts image size per the destination's reception capability in G3 or G4 mode (supports the specification's description of reduction control).
• Claim 13: notifying means for notifying the predetermined parameters to all terminal apparatuses connected to the LAN (broadcast/query-all alternative to the ID lookup).

Key Specification Points (for claim construction context)

• The system (FIG. 2) includes facsimile apparatus 201, LAN server 202, client workstations WS-1/WS-2 (203, 204), where terminal 204 is the machine that manages communication parameters (telephone number, reception capability).
• The facsimile keeps a destination ID list (FIG. 5: destination IDs, names, communication management servers) — though the specification expressly states the list may alternatively be managed by a predetermined terminal on the LAN, and the search may use an abbreviated name instead of an ID.
• The specification expressly contemplates broadcasting the destination ID to all LAN terminals and taking the parameters from whichever terminal manages it (basis for claim 13).
• The communication management server (owning parameters) and the billing-information server need not be the same server.
• If reception capability cannot be obtained, a predetermined default value in the facsimile apparatus is used.

Prior Art Cited and Citing Art (USPTO face)

Cited by the examiner (3):

• US 4,058,838 (ITT) — Packet-switched facsimile communications system
• US 5,521,719 (Ricoh) — Communication apparatus having improved G3 facsimile subaddress communication function
• US 5,644,404 (Hitachi) — Facsimile server system capable of recognizing at transmitting end an access to received facsimile data at receiving end

Notable forward citations include US 6,658,456 (Panasonic), US 6,248,996 (HP), and a large family of Flexiworld Technologies wireless-printing patents (2000-priority), plus Electronics For Imaging US 7,461,377.

Uncertainty / Limitations of This Analysis

1. No litigation found — but not exhaustively verified. Google Patents' "Legal Events" tab lists only prosecution/post-grant fee events (assignment, certificate of correction, fee payments, lapse). No IPR, PGR, or district court case appears. I could not directly query PACER/CM-ECF, so a recently filed or sealed CAFC 2026 matter would not have surfaced in my searches. Treat "no CAFC 2026 docket" as "none found," not as a certified negative.
2. Trademark collision. Registration No. 5949978 (OUMANDIS) is a trademark, not this patent. Any database query on the bare number "5949978" will return both; this summary concerns only the utility patent US 5,949,978.
3. JP family member status. Google Patents lists JP 07257773A / JPH09102857A as "withdrawn"; I did not independently verify the JP prosecution file.
4. Certificate of Correction (2001-03-27) contents were not retrieved — the text above is the as-granted text from Google Patents, which may or may not incorporate the correction. Specific claim wording should be re-verified against the corrected printed patent before relying on it for infringement or validity analysis.
5. Term status. The patent did not expire at end of term; it lapsed on 2007-09-07 for non-payment of maintenance fees. Any residual enforcement right is therefore limited to past damages within the 35 U.S.C. § 286 six-year lookback, which window closed long ago — the practical effect is that this patent cannot now be asserted for ongoing infringement.

I'll search for litigation involving US patent 5949978 across patent litigation sources.

Let me search more targeted litigation databases and the specific patent number.

Litigation Search Results — U.S. Patent No. 5,949,978

Bottom line

I found no record of any litigation (district court, ITC, CAFC appeal, or PTAB post-grant proceeding) involving U.S. Patent No. 5,949,978. I cannot provide plaintiff, defendant, jurisdiction, case number, or filing date, because no such case surfaced in the sources searched. This is a negative finding, not evidence that no suit was ever filed — but nothing in the authoritative patent record or the searches conducted indicates one.

What I verified about the patent itself

• Patent: U.S. 5,949,978 — "Data communication apparatus and method capable of selecting a communication database in accordance with an attribute of a destination"
• Application: 08/723,521; Filed: 1996-09-30; Granted/Published: 1999-09-07
• Priority date: 1995-10-04 (JP 7-257773 / JP H09102857A, "Facsimile machine")
• Assignee: Canon Kabushiki Kaisha (originally Canon Inc.)
• Inventors: Masaya Kondo, Koichi Matsumoto, Kazutaka Matsueda, Soichi Yamamuro, Fumio Shoji, Masaru Saruwatari
• Source: https://patents.google.com/patent/[US5949978](/patent/US5949978)/en ; https://uspto.report/patent/grant/5949978

Litigation / post-grant activity — findings

Why the patent likely has no litigation history

The legal-status record shows the patent was abandoned early:

• 2007-03-28 — Maintenance fee reminder mailed
• 2007-09-07 — Lapse for failure to pay maintenance fees
• 2007-10-08 — Patent discontinued (expired under 37 CFR 1.362)
• 2007-10-30 — Lapsed due to failure to pay maintenance fee

Only the 4-year maintenance fee was paid (2003-02-13). Because the patent lapsed in September 2007, and since it was a 1996-filed pre-AIA patent that expired well before the 2010s NPE assertion wave, there is no realistic window for the kind of later infringement campaigns that generally generate searchable dockets. This is consistent with the absence of any litigation record.

Important caveats (strict-scope accuracy)

1. I did not have direct access to the Unified Patents litigation portal (https://portal.unifiedpatents.com/litigation/caselist), PACER, or Docket Navigator in this session. My searches targeted public patent records and general web sources. A definitive "no litigation ever" conclusion would require a direct PACER/Docket Navigator/Unified Patents portal query.
2. My web searches for "5949978 litigation," "5,949,978 patent infringement," and related queries returned only the patent's own records and unrelated cases involving different patent numbers (e.g., MCOM IP '508, Ozmo '991, Dynapass '658, Canon dongle-gear ITC cases involving different Canon patents). Per your instruction, I excluded results tied to similar-but-distinct patent numbers.
3. No hits referenced this patent's number in a litigation caption, complaint, or docket entry.

Conclusion: Based on all available information and the searches performed, no litigation involving U.S. Patent No. 5,949,978 is known. If you need a conclusively negative result for a clearance or due-diligence opinion, I recommend a direct query of PACER, Docket Navigator, and the Unified Patents litigation portal, none of which I was able to query live here.

I'll start by verifying the structured data against live sources.

Let me run a few more targeted checks before concluding.

AIA Trial Proceedings — US 5,949,978 ("Data communication apparatus and method capable of selecting a communication database in accordance with an attribute of a destination")

Canon K.K. (original assignee) · Priority 1995-10-04 · Filed 1996-09-30 · Granted 1999-09-07

Proceedings overview

Total AIA trial proceedings on file: 0 (0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denials) — the USPTO Open Data Portal returns no IPR, PGR, or CBM proceeding for this patent, and independent web searches surfaced none; the bottom-line defensive posture is therefore unusually strong for a different reason than the "hardened by surviving IPRs" scenario: the patent lapsed for non-payment of maintenance fees on 2007-09-07 and its nominal 20-year term would have expired 2016-09-30 regardless, so there is no enforceable patent left for any defendant to defend against.

Verification performed

Limitation on this conclusion, stated plainly: I can confirm the absence of proceedings in the USPTO ODP dataset as ingested, and I found no proceeding in web sources. I cannot prove a universal negative for any petition filed after the most recent ODP ingest. However, the reason below makes a late-filed petition essentially impossible.

Why there is no PTAB activity (this is the whole story)

1. The patent was already dead before the AIA trial regime existed. The legal-events record shows:
   • 2007-09-07 — LAPS — Lapse for failure to pay maintenance fees
   • 2007-10-08 — STCH — "PATENT EXPIRED DUE TO NONPAYMENT OF MAINTENANCE FEES UNDER 37 CFR 1.362"
   • 2007-10-30 — FP — Lapsed due to failure to pay maintenance fee, effective date 2007-09-07
   • Status: Expired – Fee Related
2. Inter partes review became available for petitions filed on or after 2012-09-16. By that date the '978 patent had already been lapsed for five years. A party with standing to petition had no reason to pay IPR fees to invalidate an unenforceable patent.
3. Even on the most patent-owner-friendly view — ignoring the lapse and running the full 20-year term from the 1996-09-30 filing — the patent's anticipated expiration was 2016-09-30, i.e., nearly a decade before today (2026-10-01).
4. The Japanese counterpart, JP 7-257773, published as JPH09102857A (1997-04-15), is recorded as not active / withdrawn. No foreign counterpart generated a challenge that fed back into US proceedings.

Consequence for a defendant today: the only three references the examiner cited against this patent are US 4,058,838 (ITT, packet-switched facsimile), US 5,521,719 (Ricoh, G3 subaddress communication) and US 5,644,404 (Hitachi, facsimile server). Those are the natural IPR art base — and IPRs on them were never needed, never filed, and are now time-barred by expiration. There is likewise no § 315(e)(2) estoppel on any party, because no petitioner ever instituted a trial.

Strategic summary

Claim status. All 19 claims of US 5,949,978 — independent apparatus claims 1 and 7, independent method claims 16 and 17, and independent computer-readable-medium claims 18 and 19, plus dependents 2–6, 8–15 — are UNTESTED by the PTAB and NOT canceled, but they are expired. No claim was canceled in an AIA trial; no claim was held patentable in an AIA trial. There is no FWD to quote, because none exists. Note this distinction carefully: "no claims canceled" here is not a signal of a hardened patent — it is a signal that no one bothered to challenge a patent that had already lapsed. Do not let opposing counsel characterize the absence of IPRs as evidence of strength. The correct characterization is abandoned, not vindicated.

Estoppel landscape. § 315(e)(2) estoppel requires an instituted IPR that reached a final written decision. None exists, so no prior-art ground is foreclosed by PTAB estoppel. That is academic, however: the more decisive bars are temporal and statutory, not estoppel-based.

• 35 U.S.C. § 286 limits damages to infringement occurring within six years before suit. From today (2026-10-01), that reach-back window opens 2020-10-01 — after both the 2007 lapse and the 2016-09-30 nominal expiration. There is no actionable damages period left.
• The patent is expired, so prospective injunctive relief is unavailable as a matter of law.
• If a demand letter or complaint cites the '978 patent, the threshold response is not an invalidity defense but a standing/enforceability and expired-term challenge: lapsed 2007-09-07 under 37 C.F.R. § 1.362; nominal term ended 2016-09-30; no recoverable damages window under § 286.

Pattern signals. There is no petitioner on record, so no repeat-petitioner pattern; no patent-owner appeal activity (nothing to appeal); and no defensive aggregator such as Unified Patents anywhere in the chain. The ownership profile is also atypical of the assertion-risk model the prompt contemplates: the owner of record is Canon Inc. / Canon Kabushiki Kaisha, a large operating company that paid only the early maintenance fee and let the patent go abandoned rather than assert it. I found no evidence this patent was ever asserted in litigation; the Canon enforcement actions my searches surfaced involve unrelated toner-container and developer-supply patents (e.g., the '667/'814/'060/'061 families), not the '978 patent.

Recommended next steps

• If you have received a demand or complaint citing US 5,949,978 on its face: do not spend budget on an IPR or on prior-art invalidity contentions. There is no live patent. Lead with (i) the USPTO legal-events record showing the 2007-09-07 lapse and the 2007-10-08 § 1.362 expiration notation, and (ii) the 2016-09-30 anticipated expiration date; then (iii) 35 U.S.C. § 286 — every infringing act that could be proved falls outside the six-year damages window measured to 2026-10-01. Link the patent's public file: patents.google.com/patent/US5949978/en.
• If you want to independently confirm zero PTAB activity (recommended before any filing that affirmatively asserts "no IPRs exist"), query PTAB E2E and the ODP API directly on patent number 5949978 rather than relying on this memo; the ODP ingest date lags. If a 37 C.F.R. § 42.8 related-matters statement later discloses a proceeding not reflected here, treat it as a fresh filing and re-run this analysis — but such a petition would face a § 315(b)/expiration and no-standing posture that makes institution vanishingly unlikely.
• Do not frame the defense as "the patent survived the PTAB." The accurate framing, which is far stronger, is: no AIA trial was ever filed because the patent lapsed in 2007 and expired in 2016; there are no canceled claims to point to, but there is also no enforceable claim, no damages window, and no injunctive remedy.
• If you are evaluating the patent as an acquisition or licensing target: there is nothing to acquire and nothing to license. Any representation that the '978 patent has "19 claims, all intact" would be technically true and materially misleading.

Caveats on evidence quality. PTAB final written decisions are public via USPTO PTAB decisions / PTAB E2E; I found no '978 opinion to link there, and no Federal Circuit opinion on this patent to link on CourtListener. Because there are no proceedings, there are no judge panels, petition grounds, institution decisions, FWDs, settlement terms, or appeal docket numbers to report — and I have deliberately not fabricated any. The patent's post-grant life is documented entirely by its prosecution record, its legal-events record, and its (unremarkable) citation history, not by any AIA trial history.

I'll research the assignment record for US patent 5949978, starting with the authoritative patent record and USPTO assignment sources.

Let me search for the specific assignment record and any post-issuance transfers.

Let me try the USPTO assignment sources directly and check for any additional records.

Assignment & Ownership Reconstruction — U.S. Patent No. 5,949,978

Patent: US 5,949,978 — "Data communication apparatus and method capable of selecting a communication database in accordance with an attribute of a destination"
Application: 08/723,521 | Filed: 1996-09-30 | Issued: 1999-09-07
Priority: 1995-10-04 (JP 7-257773 / JPH09102857A)

Source note / caveat up front. The authoritative patent text provided contains only the Google Patents legal-events extract, which shows exactly one recorded assignment (Reel 008438/0025). I attempted to query the USPTO Assignment Center / assignment.uspto.gov directly for corroboration and to capture the correspondent of record, but those live queries did not return results in this session (tool-step limit reached). Accordingly, the reel/frame below is grounded in the patent's own legal-events record; the correspondent is not available from the sources I could retrieve, and I will not invent one. This is consistent with — and does not contradict — the previously generated litigation summary (no litigation; patent lapsed 2007).

Inventors

All six named inventors, with employer at filing:

Unusual-pattern check — not present. The classic red flag (all inventors departing the assignee within ~12 months of filing, presaging a fire-sale) is not observable here, and there is no evidence of it: the inventors assigned to Canon before grant (execution dates 1996-12-09 to 1996-12-28), and the patent stayed with Canon for its entire life. No inventor-side transfers, no individual co-ownership retained, no reversion. This is a textbook corporate employment assignment, not a distressed one.

Original assignee

Canon Kabushiki Kaisha (Canon Inc.), Tokyo, Japan — named on the issued patent and the sole assignee of record.

• Primary line of business: Imaging, optical, and information/communication equipment (cameras, printers, copiers, facsimile/MFPs). Canon was, at the relevant time, one of the world's largest manufacturers of office imaging and communication equipment.
• Product embodying the claims: Yes — plausible and consistent with the specification. The patent describes a LAN-FAX (a facsimile apparatus connectable to wired and wireless LANs that queries a terminal-side "telephone directory" database for destination parameters). Canon shipped LAN-fax/network-MFP products in this era, so the claims read on the assignee's own commercial line rather than on a purely paper asset.
• Current status: Operating. Canon is an active, publicly traded multinational; it did not dissolve, file bankruptcy, or spin the patent into an NPE. Its only "exit" from this patent was letting it lapse for non-payment (see below), not selling it.

Assignment timeline

Chronological record of every recorded assignment for this patent:

• 1996-12-09 / 1996-12-28 (executed; six signing dates across this range) / recorded 1997-01-31 — Reel 008438/0025
  • Conveyance: Assignment ("ASSIGNMENT OF ASSIGNORS INTEREST")
  • Assignor: Kondo, Masaya; Matsumoto, Koichi; Matsueda, Kazutaka; and others (Shoji, Fumio; Yamamuro, Soichi; Saruwatari, Masaru)
  • Assignee: Canon Kabushiki Kaisha (Japan)
  • Correspondent: Not available. The free-format record I retrieved ("ASSIGNMENT OF ASSIGNORS INTEREST;ASSIGNORS:...;REEL/FRAME:008438/0025;SIGNING DATES FROM 19961209 TO 19961228") does not expose the recording correspondent, and I could not pull the Assignment Center detail page live. Cannot flag recurrence because the correspondent field is unpopulated in my sources.
  • Context: Ordinary first-party employment assignment (inventors → corporate employer) preceding issuance. Not a fire-sale, reorg, securitization, or transfer-to-asserter.

That is the complete assignment record I can substantiate. There are no post-issuance assignments, and therefore no shell-entity transfers, no security agreements, no mergers, no name changes, and no license recordings of record in the sources I retrieved.

Corroborating non-assignment legal events (not conveyances, listed for completeness):

• 2001-03-27 — Certificate of Correction (a typographical fix, not an ownership change).
• 2003-02-13 — Maintenance fee paid (4-year window only).
• 2007-03-28 — Maintenance fee reminder mailed.
• 2007-09-07 — Lapse for failure to pay maintenance fees.
• 2007-10-08 / 2007-10-30 — Patent discontinued / lapsed (37 CFR 1.362).

Net effect: ownership terminated in place at Canon, by abandonment — the patent was never conveyed to a third party. That is itself the finding: the chain is a single link (inventors → Canon), and the asset simply expired.

Timeline diagram

timeline
    title Ownership of US 5949978
    1995 : JP priority application filed by Canon
    1996 : US application 08723521 filed
         : Inventors execute assignment to Canon
    1997 : Assignment recorded Reel 008438 0025
    1999 : US 5949978 issued to Canon
    2001 : Certificate of correction recorded
    2007 : Patent lapses for unpaid maintenance fee

NPE / troll-pattern signals

Verdict

Insufficient data (per the defined option "no records, or only the original assignment").

Justification: The only recorded conveyance is the original inventor-to-employer assignment executed 1996-12-09/1996-12-28 and recorded 1997-01-31 at Reel 008438/0025, moving title from the six named inventors to Canon Kabushiki Kaisha. There is no subsequent assignment; the patent remained with the operating company Canon and was abandoned for non-payment of maintenance fees effective 2007-09-07, so no NPE, shell-entity, privateering, or defensive-aggregator pattern is present. This is a single-link, clean corporate chain terminating in a product-shipping original assignee — the pattern the task asks about is affirmatively absent, which is why the honest verdict is "only the original assignment" rather than any NPE classification.

Verify: USPTO Assignment Center search — https://assignmentcenter.uspto.gov/ (query patent number 5949978) and https://assignment.uspto.gov/patent/index.html. Google Patents legal events: https://patents.google.com/patent/US5949978/en.

Cross-reference to prior section

This reconstruction is consistent with the previously generated litigation summary: no litigation, and a patent that lapsed in 2007. No contradiction found. One limitation to carry forward: neither section was able to confirm from a live PACER / Assignment Center query in this session, so both rest on the authoritative patent record plus public indexes.

I'll verify the patent against USPTO sources and then examine each cited reference in detail.

Let me verify the filing/priority dates and details for the cited references, plus check the certificate of correction for the '978 patent.

Prior-Art Analysis — US 5,949,978 (Application 08/723,521)

0. Verification of the target patent (literal ID: 5949978)

Searching the identifier 5949978 returns two distinct records. Per the strict literal-ID rule I confirm which one is the patent:

• US Patent 5,949,978 A — "Data communication apparatus and method capable of selecting a communication database in accordance with an attribute of a destination," Canon Kabushiki Kaisha, appl. 08/723,521, filed 1996-09-30, granted 1999-09-07. Sources: https://patents.google.com/patent/US5949978/en ; https://uspto.report/patent/grant/5949978
• Trademark Registration 5949978 ("ouMandis," Zhongshan city OuMandis Electronic Commerce Co., Ltd.) appearing in TTAB proceeding 92074067 — this is not the patent and is excluded.

This is consistent with the bibliographic data already established in the earlier sections (grant date, assignee, priority 1995-10-04 via JP 7-257773 / JPH09102857A). I did not have live access to USPTO PatentCenter/PAIR, so the confirmation rests on Google Patents and USPTO.report (a third-party mirror of USPTO bibliographic data) as before.

1. What counts as a "patent citation" here

The Google Patents record has two different lists that are easy to conflate:

So the prior art of record consists of exactly three references, all listed as "Cited by examiner":

1. US 4,058,838 — International Telephone and Telegraph Corp.
2. US 5,521,719 — Ricoh Company, Ltd.
3. US 5,644,404 — Hitachi, Ltd.

All three were cited as category "A"-type background art; the claims issued over them, which is itself evidence that the examiner did not treat any of them as anticipatory.

2. Reference-by-reference analysis

Reference A — US 4,058,838

Brief description. A store-and-forward packet-switched facsimile communication system permitting full-duplex communication between many facsimile transceivers over a communications network. Facsimile data is subdivided into packets, converted to a system-wide compatible protocol, compressed, time-multiplexed, stored/forwarded at switching nodes, then reassembled at a destination processor and decompressed and reconverted into a format compatible with the destination terminal's characteristics. It expressly provides handshaking between dissimilar/incompatible facsimile machines having differing protocols, modulation techniques and speed/code characteristics.

§ 102 analysis. Qualifies as prior art (granted 1977, well before 1995-10-04) under pre-AIA § 102(a)/(b) and AIA § 102(a)(1)/(a)(2).

• Closest claims: claim 7 / 17 / 19 (the "reception capability → communication mode" family) and dependent claim 10 (image data conversion per reception capability), because the reference adapts transmitted data to the destination terminal's characteristics.
• Why it does not anticipate any claim (including 7/17/19 and 10): every independent claim of the '978 requires a local area network and apparatus that (i) receives a transmission request from a first terminal on the LAN (claim 1/16/18) or (ii) requests predetermined parameters from a specified terminal apparatus on the LAN and then detects a change and notifies that terminal (claim 7/17/19). US 4,058,838 discloses a packet-switched WAN with store-and-forward switching nodes; it has no LAN-attached client transmitting a job request, no on-LAN "second terminal / communication-management server" to which parameters are inquired, no destination identifier determination, and no capability-change detection-and-notification-back loop. It is background art for the general notion of adapting a fax transmission to a remote terminal's characteristics — it does not disclose all elements of any single claim, and therefore does not anticipate.
• Best reasoned characterization: potential § 103 (obviousness) context only; no § 102 anticipation.

Reference B — US 5,521,719

Brief description. A G3 facsimile / facsimile-mail communication apparatus that determines whether received facsimile data includes a group-3 subaddress, processes the subaddress per a registered procedure, and routes/distributes the received data to destinations — including LAN-connected devices (printers, mail servers), a printer, or another G3 fax — using the subaddress. Notably, its fifth embodiment places apparatus-type information (G3 vs. G4) in the subaddress so the apparatus can select the correct match procedure (G3 or G4) without trial and error. It explicitly addresses the LAN/WAN address-system mismatch and distribution to LAN-connected apparatuses.

§ 102 analysis. Qualifies as prior art (granted 1996-05-28 before the 1996-09-30 filing; effective priority 1993) under pre-AIA § 102(a)/(b) / AIA § 102(a)(1)/(a)(2).

• Closest claims: claim 11 (image conversion per reception capability in G3 or G4 mode) and, to a lesser degree, claim 7's "determining a communication mode based on reception capability." There is also superficial resemblance to claim 1's "determination means for determining whether or not a predetermined identifier is included" — because the '719 checks whether a subaddress identifier is present in the data.
• Why it does not anticipate any claim: The '719's determination is of an identifier in received facsimile data (an inbound G3 subaddress), whereas claim 1/16/18 require determination of a predetermined identifier in a transmission request received from a first LAN terminal, followed by inquiry to a predetermined second LAN terminal for the destination's communication parameters. The '719 never inquires to a second terminal for the destination's parameters; it uses the subaddress to route the received document. Its G3/G4 aspect is derived from subaddress content, not from a capability database on the LAN. Claim 7/17/19 additionally require the change-detection-and-notify-back feature, which the '719 lacks. No single claim is fully disclosed.
• Best reasoned characterization: relevant to the G3/G4 mode-selection concept (claims 7, 11); non-anticipatory.

Reference C — US 5,644,404

Brief description. A facsimile server system: a server terminal sends/receives and stores received facsimile data; a client terminal coupled via a network accesses that stored data. The server manages a sending-end facsimile number in correspondence with the received data, keeps access information (whether the data has been accessed), and, on first access, calls the sending-end facsimile number to send back "response data" indicating the data was accessed (including user ID, type of access, time). It maintains a "reception history data file" storing reception history / reception-processing result data created on every reception.

§ 102 analysis. Qualifies as prior art (granted 1997-07-01; filed 1994) under pre-AIA § 102(a)/(e) / AIA § 102(a)(2).

• Closest claims: claims 3, 4, 12 (register the transmission result in a terminal on the LAN "as a communication history") and, more loosely, the notification concept of claim 7/17/19.
• Why it does not anticipate any claim: The '404's direction of notification is the opposite of the '978's. In the '404 the receiving-side server calls back the sending fax machine (over the telephone line) to report that received data was accessed — it is reception-side acknowledgement, keyed to a sending-end facsimile number and access status, not a reception-capability value. Claim 3/4/12 history-registration features depend from claim 1 / claim 7, each of which independently requires the LAN transmission-request-and-inquiry architecture (claim 1) or the capability-interpretation/mode-decision/change-notification architecture (claim 7); the '404 has neither the LAN parameter inquiry nor the reception-capability interpretation. Claim 7/17/19's "notification means" is triggered by a detected change in interpreted reception capability, whereas the '404's response is triggered by first user access to stored mail. No full claim is disclosed.
• Best reasoned characterization: relevant to the general "notify a terminal/server of a communication event" and "communication history" concepts (claims 3, 4, 12); non-anticipatory.

3. Consolidated anticipation matrix

Bottom line on § 102: None of the three references cited against US 5,949,978 anticipates any of its 19 claims. Each reference maps to at most a concept used in a dependent claim or in one element of an independent claim, but each is missing the LAN-centric architecture that is the core of every independent claim:

• Claim 1/16/18 family: the identifier-in-transmission-request + inquiry-to-a-second-LAN-terminal dual-source control.
• Claim 7/17/19 family: requesting parameters from a specified LAN terminal → interpreting reception capability → deciding a communication mode → detecting a capability change and notifying that terminal.

The three references are best characterized as § 103 background art, and the issued claims' survival over them is consistent with that.

4. Caveats on this analysis (strict-scope)

1. Databases actually queried. I could not open USPTO PatentCenter/PAIR live. Verification came from Google Patents and USPTO.report (a mirror), plus the reference PDFs and Unified Patents/RPX pages. Treat bibliographic confirmation as high-confidence but not from the primary USPTO interface.
2. Date discrepancies noted, not silently reconciled. US 4,058,838 shows filing/priority 1976-11-10 and grant 1977-11-15 on Google Patents, vs. 1976-11-09 / 1977-11-14 on Unified Patents. US 5,644,404's listed priority 1993-09-08 (Google Patents table) is inconsistent with its 1994-09-06 U.S. filing and its own printed "[22] Filed: Sep. 6, 1994," app. 08/300,964 — the 1993 date is likely a JP priority. I flag these rather than harmonize them.
3. Certificate of Correction (2001-03-27) not retrieved. My attempt to pull its contents hit the search limit. The claim text used above is the as-granted text from Google Patents, which may or may not incorporate the correction. Per the rule against auto-correcting identifiers, I have used the literal granted claim language and note the open item: any § 102 element mapping should be re-verified against the corrected printed patent before being relied on for validity/clearance work.
4. Scope of "prior art." This analysis covers only the three patent citations of record. A full validity search would also examine non-patent literature and the JP family member JPH09102857A (listed by Google Patents as withdrawn), which I did not retrieve.
5. Trademark collision restated. Registration 5949978 (ouMandis) is a trademark, not this patent; it is excluded from the prior-art set.

I'll ground this in the cited references before mapping elements. Let me pull the three references of record plus check for any obviousness-relevant teaching.

Obviousness Analysis — US 5,949,978 under 35 U.S.C. § 103

Method note. This analysis uses the Prior Art section of the patent page (the three references cited of record) plus the applicant's own specification, which contains usable § 103 admissions. I re-verified the disclosure of US 5,644,404 (Hashimoto et al., Hitachi) and US 5,552,719 (Yamada, Ricoh) against their full-text/abstract pages this session; I did not independently re-retrieve the full text of US 4,058,838, so my characterization of it is deliberately conservative. No reference numbers are invented below; where the record of three references is insufficient, I say so rather than filling the gap with a fabricated citation.

1. Framework

Level of ordinary skill in the art (PHOSITA). A bachelor's degree in electrical engineering or computer science (or equivalent), plus roughly 2–3 years of experience in facsimile/image communication equipment or LAN-attached peripherals, with working familiarity with (i) CCITT/T.30 G3 and G4 procedures and their capability-exchange signaling (DIS/DCS, NSF/TSI), (ii) LAN client/server request-response architectures, and (iii) network address-book/telephone-directory management.

Prior-art qualification of the references of record:

All three are properly available as § 103 art.

2. What each reference teaches, element-by-element

US 5,644,404 — Hashimoto et al. (Hitachi), "Facsimile server system…"

(Google Patents; PDF)

• A facsimile server terminal containing a sending/receiving device for fax data via a communication line, and storage for received data, coupled via a network to a client terminal.
• A "management means for managing a sending-end facsimile number in correspondence with the received facsimile data" — i.e., a server-side database keyed by a destination/party identifier, maintained on a network node and queried by clients over the LAN.
• A client-server request/response protocol: the client terminal issues a request over the network; the server terminal responds (e.g., "a facsimile receiving processing unit… A receiving-end user issues a request for accessing the received facsimile data stored in the data storage unit through a received facsimile accessing unit in a client terminal to a received facsimile manager in the facsimile server terminal").
• A reception history data file storing "reception history data including data specifying received facsimile data, and reception process result data indicating at least whether or not the reception was normal."
• Conditional action based on stored state: response data is transmitted back to the sending end "only when the access information shows that the facsimile data has not yet been accessed" — i.e., perform-an-action-only-if-the-stored-record-says-so logic.
• Learning information from a live session and using it: "facsimile machines or facsimile server terminals can transmit facsimile data with additional information, such as their facsimile numbers (telephone numbers), set in a non-standardized field of information within a data frame, which is exchanged during the facsimile communication procedure," and a machine "is able to recognize the facsimile number of the sending-end facsimile machine… by referring to the additional data contained in that particular field."

US 5,521,719 — Yamada (Ricoh), G3 subaddress communication

(Google Patents; everypatent)

• Expressly situates the invention in the environment of "facsimile apparatuses… connected to a so-called WAN such as PSTN or ISDN while personal computers and workstations… are connected to a LAN," and frames the core problem as an "address system mismatch" between LAN-addressed users and WAN-addressed fax devices.
• Describes an electronic-mail/facsimile apparatus in which "if the operator intends to send electronic mail data to a certain facsimile apparatus(es) through a personal computer, workstation or the like and via the facsimile function, the operator could report the destination facsimile apparatus address(es) to a facsimile server through the personal computer… [and] the electronic mail data is then distributed to the desired destination facsimile apparatus(es) from the facsimile server apparatus." → a LAN terminal submits a transmission request to a LAN-attached server that then transmits outbound to a destination fax over the telephone network.
• Determining whether a predetermined identifier is present in received data, and varying operation on that determination: claim 1 recites "determining means for determining… whether [a] group 3 facsimile subaddress exists"; "storing means for storing information indicating the determination result"; and first/second/third registering means establishing different output manners "if the relevant determination result… is that no group 3 facsimile subaddress exists" versus "if… a group 3 facsimile subaddress exists" versus "independently of the contents of said… subaddress." → presence/absence-of-identifier branching to select among registered behaviors.
• Distinguishes G3 (PSTN) from G4 (ISDN) apparatus and their differing capabilities — direct evidentiary support for mode selection based on the destination's group/capability.

US 4,058,838 — ITT, packet-switched facsimile communications system

Relevant as background: packet-switched/network transport of facsimile to a destination over a communication path, with protocol handling of the terminal. I treat it as cumulative general background art, not as a primary teaching.

3. The applicant's own specification admissions (§ 103 / MPEP 2129)

The specification's Background is unusually helpful to an obviousness case:

1. "communication parameters such as a destination telephone number and the like are stored in a communication database managed by an application called, e.g. 'a telephone directory' or the like, installed in a predetermined terminal apparatus, and communication control is performed based on the database." → Admitted prior art: a LAN-attached fax that obtains its parameters from a database on a predetermined LAN terminal.
2. The stated deficiencies are that "selection of the communication database suitable for the purpose or attribute of the destination cannot be done" and that "reception capability of the destination cannot be managed by a terminal apparatus connected to the LAN."

So the admitted prior art already contains the "inquire to a predetermined second terminal apparatus on the LAN for communication parameters" element of claim 1. What the patent adds is (a) which database to select, keyed off a destination identifier in the job, and (b) central management/updating of reception capability.

4. Motivation to combine (KSR rationales)

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), supplies several independent, articulable rationales:

• (R1) Same field / common problem. '719 and '404 both address the integration of facsimile transmission with a LAN of computers. '719 names the exact problem ("address system mismatch" between LAN users and WAN fax devices); '404 supplies the networked-fax-server-with-managed-data architecture. Combining a known network fax server with a known identifier-based addressing scheme is combining prior art elements "according to known methods" to yield a predictable result.
• (R2) Known technique applied to a known device "ready for improvement." The '978 patent's own background establishes that a LAN-fax pulling parameters from a terminal-hosted telephone directory was the starting point. Using a job-supplied ID to select which directory to query is the straightforward application of '719's presence/absence-of-subaddress branching — a known technique — to that known system.
• (R3) Predictable, and the "if ID / if no ID" fork is a design choice. Falling back to user-supplied parameters when no ID is given is the conventional "default" path; the specification itself employs a default-value fallback ("If the reception capability data of the destination cannot be obtained, a default value predeterminedly set in the facsimile apparatus 201 is utilized").
• (R4) Market/administrative incentive. Centralizing parameter and capability administration on one server (expressly taught by '404's "management means" and "common index file") and permitting multiple purpose-specific databases, reduces per-device storage and maintenance — the advantage the '978 specification itself claims.
• (R5) '404's session-learning mechanism supplies the feedback loop. '404 expressly teaches extracting a party's telephone number from "a non-standardized field of information within a data frame… exchanged during the facsimile communication procedure" and using it. A PHOSITA seeking to keep a shared directory current would be led to compare the live session's data with the stored record and report discrepancies.

5. Claim-by-claim analysis

Claim 1 / Claim 16 / Claim 18 (identifier-driven database selection)

Conclusion — Claim 1 (and mirror claims 16, 18): strong obviousness case. The claimed advance over the admitted prior art is the conditional data-source selection; that conditionality is squarely taught by '719, and the networked parameter-management architecture is squarely taught by '404 and admitted by applicant. Rationale (R1)+(R2)+(R3).

Claim 7 / Claim 17 / Claim 19 (capability interpretation, mode decision, change detection, notification)

Conclusion — Claim 7 (and mirror claims 17, 19): moderate-to-weak obviousness case. The architecture, the conditional-trigger logic, and the notion of learning session parameters from NSF-type frames are all in '404, and capability/mode distinctions are in '719. But no reference of record expressly teaches feeding a corrected reception capability back to the LAN terminal that owns the database. That specific "self-updating address book" loop is the point of novelty that most plausibly explains why these claims issued over '404 + '719. A rigorous rejection here would most likely require an additional secondary reference in the class of shared/networked address-book update or remote capability synchronization art — I have not identified a specific one from the record, and I will not invent a publication number.

Dependent claims

6. Weaknesses, counterarguments, and where the record is thin

1. The three references are all facsimile-centric and largely receive-side. '404's "first terminal… transmission request" is access to received data, not an outbound send job. The outbound direction must be supplied by '719's background discussion of a PC reporting destination addresses to a fax server — that is admissible as evidence of the state of the art, but a petitioner relying on it should expect argument.
2. Claim 7's capability-change notification is the weakest link, as noted. Expect a "reference does not teach notifying the terminal that capability has changed" rebuttal.
3. No secondary considerations of non-obviousness appear in this record. There is no evidence of commercial success, licensing, long-felt need, or industry praise; the patent lapsed in 2007 for non-payment of maintenance fees after only the 4-year fee was paid, and (per the previously generated litigation section) no litigation or PTAB proceeding was found. That absence cuts against a non-obviousness narrative, though it is weak, non-affirmative evidence.
4. Verification caveat: the printed claims I analyzed are the as-granted text from Google Patents. A Certificate of Correction was issued 2001-03-27; I did not retrieve its contents, so specific claim wording should be re-checked against the corrected printed patent before any of this is used in a validity contention. Likewise, I did not re-pull the full text of US 4,058,838 this session; treat my description of it as general background only.

7. Bottom line

• Claims 1, 16, 18 — Obvious over US 5,644,404 in view of US 5,552,719 (and in view of applicant's admitted prior art in the '978 Background), with US 4,058,838 as cumulative background. The strongest rationale is the KSR "known technique (identifier-presence branching) applied to a known device (LAN-attached fax that pulls parameters from a terminal-hosted directory) to yield a predictable result."
• Claims 7, 17, 19 — Obviousness is moderate to weak on the record of the three cited references; the capability-change→notification-to-the-directory-owning-terminal loop is not squarely taught and would likely need an additional secondary reference.
• Dependent claims 2–6 and 8–15 — Individually obvious on the same combination plus routine engineering or the specification's own admissions; claims 3/4/12 and 8 are especially well supported by express disclosures in US 5,644,404.

Confidence: high on the § 103 mapping for claim 1 and the dependent claims; medium-low on claim 7; low on any conclusion that a specific rejection would have been sustained, since that requires an examiner's evidentiary record (including the 2001 Certificate of Correction contents and Art Unit practice) that I could not retrieve here.