Invalidity dossier

US 5974401

Digital print order and delivery method and system

Current assignee: Fujifilm Holdings Corp

Added 9/24/2026, 6:39:06 AM

At a glanceNo PTAB challengesNo litigation on fileSoftware Technology & Computing Systems (T)

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 search for authoritative information on this patent number, including any 2026 CAFC activity.

Let me do targeted searches for any 2026 Federal Circuit or litigation activity involving this patent.

Search results summary — US 5,974,401

Search coverage and a necessary caveat

I searched for the exact number 5974401 (and the formatted forms "US 5,974,401" / "US5974401A"). Results returned only this one patent — no sibling or near-miss numbers were mixed in. I was not able to directly query the USPTO PatentCenter/PACER or the CAFC docket system; no searchable index of CAFC 2026 dockets was reachable with the tools available. Therefore:

I found no Federal Circuit 2026 docket activity involving US 5,974,401. This is a negative finding based on search, not a certification that none exists. It is also consistent with the patent's recorded status: the Google Patents record shows it Expired – Lifetime with an anticipated expiration of 1997‑09‑03 + 20 years = 2017‑09‑03, roughly nine years before the date you specified. A live 2026 appeal would be unusual for a patent that lapsed in 2017.

Bibliographic data (from the authoritative full text)

Field Value
Patent number US 5,974,401 A (US5974401A)
Application number US 08/922,239
Title Digital print order and delivery method and system
Inventors Jun Enomoto; Hiroaki Nakamura
Original assignee Fuji Photo Film Co., Ltd.
Current assignee (per record) Fujifilm Holdings Corp. / Fujifilm Corp. (reassignment recorded 2007‑02‑15)
Priority date 1996‑09‑04 (JP 8‑234234 / JP23423496A)
Filing date 1997‑09‑03
Publication/grant date 1999‑10‑26
Status Expired – Lifetime; anticipated expiration 2017‑09‑03
Claims 14 (independent claims 1 and 4)
JP family member JP3947251B2 ("Digital print ordering and delivery system and reception processing device")
Representative CPC G03D15/005 (order systems, e.g. printsorter); H04N1/00145 (ordering from a remote location); H04N1/00188 (printing, e.g. prints or reprints); G06Q10/087; G06Q20/102

Prior art cited on the face: US 5,327,526 (Fuji Xerox, print job control system); US 5,477,353 (Olympus, photographic image processing system); JPH07261279A (Eastman Kodak, selection system/method of photograph picture); US 5,799,219 (Eastman Kodak, remote image communication using data recorded on photographic film).

Notable forward citations: the record lists two counts of citing documents — "Cited By (155)" and a later "Cited By (359)" table — including US 6,324,521 (Fuji Photo Film, network photograph service system) and the Shutterfly backprinting/re-order patents (US 6,646,754; US 6,657,702). US 5,974,401 itself was later cited as X-category prior art against several EPO applications (EP1071272, EP1403802, EP1075138, EP107569, EP1298910), where it was characterized as "X" against claims 1–10 in EP1071272.

One discrepancy worth flagging: an EPO search-report annex (EP1075138A3) renders the same document as "US 5 974 401 A … 9 September 1997," which conflicts with the grant date. That is a transcription artifact in the search report; the authoritative bibliographic records give filing 1997‑09‑03 and grant 1999‑10‑26.

Abstract (as issued)

"According to the method and system of the present invention, digital image data is input in a personal computer, through an image input device. The order sender processes the image data with reference to a display on the screen of the personal computer, and then inputs print order data. The print order data includes print option data designating size and number of prints, expected delivery date data, delivery option data designating the way of delivery, and user ID data for identifying the order sender. Then an order receiver or a particular photofinisher is designated. The processed digital image data and the print order data are sent to the designated photofinisher. The reception processing device of the order receiver stores the digital image data and relating print order data, and commands a digital printer to make prints from the digital image data in accordance with the print order data."

Independent claims in plain language

Claim 1 — the method (the core, and the claim the EPO relied on most heavily). A user sends both the digital image data and the accompanying print order data to the photofinisher's reception processing device. The order data must include user ID data containing a user ID number. The reception device stores the image plus order data in a storage device, then allocates an order number and stores the order data together with code data representing the user ID number and the order number, so the order can later be retrieved from storage by that code data. The photofinisher then makes the prints from the stored data and delivers them to the sender.

  • The distinctively claimed step is the order-number-plus-user-ID code indexing — i.e., the order record is retrievable by a code rather than by free-form lookup.

Claim 4 — the system (mirror of claim 1, plus architecture split). The system comprises: (a) an image input device; (b) a data processing device that processes the image data while displaying it, and that also accepts print order data including user ID data with a user ID number; (c) a data transfer device; (d) a reception processing device that receives the transferred image and order data and runs a reception process — and that allocates an order number and stores the order data with code data indicating the user ID number and order number so it can be retrieved from the storage device on the basis of that code; (e) a storage device; and (f) a digital printer. The claim also recites the two-sided topology: image input device, data processing device, and data transfer device sit on the order‑sender side; reception processing device, storage device, and digital printer sit on the order‑receiver side.

How the dependents build on them

  • Claims 2, 5 — image input via digital camera, image scanner, computer-graphics device, or video capture.
  • Claims 3, 6 — the order data further includes print option data (size/count), expected delivery date data, delivery option data (way of delivery), plus the user ID data.
  • Claim 7 — a two-phase protocol: the sender first transmits pre‑order data (image data size, print option data, expected delivery date data); the receiver computes delivery date and charge and returns them; printing is then commanded once the entire order (image + order data) is transferred.
  • Claim 8 — the receiver issues an accept number with the quote and manages reception and printing by reference to it.
  • Claim 9 — payment option data among several options (cash, credit card, prepaid card, electronic money, account auto-transfer, deposit to photofinisher's account).
  • Claims 10–11 — optional storage time designation for the image data in the storage device, and re-download of that stored image data (addressed by user ID) on the sender's request.
  • Claim 12 — order data may designate writing the image data to a recording medium (e.g., DVD/MO/CD/FD per the specification) for the receiver to perform.
  • Claims 13–14 — the sender-side device memorizes a library list of order receivers, the list being downloadable over a network. (The specification describes downloading the photofinisher list and the image-processing/ordering software from the photofinisher's database over the Internet.)

Points of uncertainty

  • CAFC 2026 dockets: unverified/not found; I could not search the court's docket system directly, and the patent's 2017 expiration makes 2026 appellate activity improbable. Treat the "no results" as inconclusive rather than dispositive.
  • Assignee chain: the text shows the original grant to Fuji Photo Film Co., Ltd. with a 2007 assignment to Fujifilm Corporation (assignor listed as Fujifilm Holdings Corporation, formerly Fuji Photo Film Co., Ltd.). The "current assignee" field listing both Fujifilm Holdings Corp. and Fujifilm Corp. is Google's automated listing and is explicitly described in the record as not legally analyzed.
  • Citation counts: the two different totals (155 vs. 359) appear on the same record; I did not reconcile which reflects examiner citations versus third-party citations.

Generated 9/30/2026, 11:23:49 PM

Cases on file (0)

Specific litigation cases in our database that name US patent 5974401. The free-form analysis below may also discuss cases beyond this list.

No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.

Litigation summary

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

✓ Generated

I'll research litigation involving US patent 5974401 across patent litigation databases.

The initial results are for different patents (e.g., '597 patents from other patent numbers). Let me search the specific databases directly.

Let me search litigation-specific databases with more targeted queries.

Litigation Search: US Patent 5,974,401

Bottom line

I found no litigation involving US Patent 5,974,401 (Enomoto et al., "Digital print order and delivery method and system," assigned to Fuji Photo Film Co., Ltd., now FUJIFILM Corporation).

Based on my searches of patent-focused sources, there is no case (district court, ITC, or CAFC) in which US 5,974,401 appears as an asserted patent-in-suit, and no PTAB proceeding (IPR/PGR/CBM) challenging it.

What I searched and what came back

I ran targeted queries on patent litigation portals and general web sources. Every hit for the literal string "5974401" was one of the following — none was litigation involving this patent:

Type of hit Example / source Why it is not this patent's litigation
Prior-art citation in a foreign search report EP 1 071 272 A3, EP 1 107 569 A3, EP 1 075 138 A3, EP 1 480 076 A1 — all cite "US 5 974 401 A (ENOMOTO et al.)" as an X/A reference These are prosecution/search citations, not lawsuits
Prior-art listing on later US patents Justia pages (e.g., US 10,303,411; US 10,592,202) list "5974401 – Oct 26, 1999 – Enomoto et al." This is the patent being cited by later patents, not asserted
Unrelated patents with "597" in the number e.g., U.S. 5,624,597 (Abaxis v. Cepheid); various "’597 patents" in CourtListener opinions Different patent numbers — matches on the trailing digits only
Unrelated docket text containing "5974401" S.D.N.Y. bankruptcy/clerk filing (Oct. 12, 2021) showing "…5974401 + The Wackenhut Corporation…" A case/party string, not a patent assertion
Unrelated case numbers N.D. Cal. 3:17-cv-03817 ("Nemesis" / '597 patent litigation) Case number / unrelated '597 patent

I was unable to retrieve a dedicated litigation record from the Unified Patents portal (portal.unifiedpatents.com/litigation/caselist) or RPX Insight for this specific number before my search budget was exhausted, but no query surfaced a plaintiff, defendant, or case number tied to US 5,974,401.

Important context from the patent record itself

  • Current legal status: "Expired – Lifetime." Per the Google Patents bibliographic data, the anticipated expiration was 2017-09-03 (application filed 1997-09-03; priority 1996-09-04). An expired patent cannot be enforced going forward, which is consistent with — though not proof of — the absence of active litigation.
  • Family: US 08/922,239; JP counterpart JP3947251B2 (priority JP23423496A / JP 8-234234, filed 1996-09-04).
  • Prosecution-era citations (citations of record, i.e., prior art, not litigation): US 5,327,526 (Fuji Xerox); US 5,477,353 (Olympus); JP H07-261279 (Eastman Kodak); US 5,799,219 (Eastman Kodak).
  • The patent has a very large forward-citation footprint (Google Patents lists 155 third-party "cited by" entries and 359 in a broader list), which indicates it is heavily used as prior art in the digital-photofinishing space — but citation as prior art is not litigation.

Caveats and how to verify definitively

I am answering with the searches available to me, and I want to be transparent about the limits of this finding rather than overstate it:

  1. My search access is limited. I could not directly query the Unified Patents litigation caselist, RPX Insight, PACER, or Docket Alarm case pages for the exact number. A negative result from these tools as used here is not a definitive all-courts clearance.
  2. Recommendation for a definitive answer: Run the literal string 5,974,401 (and, separately, its JP counterpart JP3947251B2) in:
    • Unified Patents litigation and PTAB caselists (portal.unifiedpatents.com/litigation/caselist and /ptab/caselist)
    • RPX Insight (insight.rpxcorp.com)
    • PACER (all district courts + CAFC) via a docket-alert service
    • USPTO Patent Trial and Appeal Board and Assignment databases
    • The ITC EDIS database (Section 337 investigations)
  3. Do not treat a "no result" as conclusive if the goal is freedom-to-operate or validity analysis; confirm with a full commercial litigation database (Lex Machina, Darts-ip, or similar).

Conclusion: As of my search, no known litigation is recorded against US 5,974,401. I could not identify any plaintiff, defendant, jurisdiction, case number, filing date, or outcome because no such case surfaced. If litigation does exist, it would most likely appear in Darts-ip or Lex Machina, which I was unable to access directly.

Generated 9/30/2026, 11:23:47 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.

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

PTAB / AIA Trial Proceedings — U.S. Patent No. 5,974,401

Patent: U.S. 5,974,401 — Digital print order and delivery method and system
Patent owner (current): Fujifilm Holdings Corp. / Fujifilm Corp. (originally Fuji Photo Film Co., Ltd.)
Inventors: Jun Enomoto; Hiroaki Nakamura
Priority date: 1996-09-04 · Filed: 1997-09-03 · Granted: 1999-10-26 · Status: Expired – Lifetime (anticipated expiration 2017-09-03)
Claims: 14 (claims 1 and 4 independent)


Proceedings overview

Zero (0) AIA trial proceedings — no IPR, no PGR, no CBM — have ever been filed against U.S. 5,974,401. The structured "PTAB proceedings on file" block (USPTO Open Data Portal) shows an empty set, and my independent web searches of PTAB decision databases, Docket Alarm PTAB records, the Unified Patents patent portal, and the Federal Circuit/CourtListener space surfaced no petition, institution decision, Final Written Decision, or appeal naming this patent. Breakdown by status is therefore: active — 0; claims invalidated — 0; claims sustained — 0; settled — 0; institution denied — 0.

The defensive posture this gives a defendant is unusual, and it is driven by the calendar rather than by the strength of the claims: the patent has never been crash-tested at the PTAB, but it also expired on 2017-09-03, so there is no live IPR lever left to pull and very likely no compensable infringement period to defend. You are not inheriting a "hardened by two IPRs" patent, and you are not inheriting a "claims 1–5 canceled" paper tiger either — you are inheriting an untested, long-expired patent whose assertion today has a damage-exposure problem before it ever reaches validity.

⚠️ False-positive alert — do not confuse the numbers. A self-styled "PTAB IPR of U.S. Pat. 5972401" appears in Docket Alarm search results. That petition (IPR2014-00224, Paper 1) is directed to U.S. 5,972,401 — "Process for manufacturing tasteless superpurified smoke for treating seafood to be," inventor William R. Kowalski. Only the fourth digit differs (5,972,401 vs. 5,974,401). It has nothing to do with this patent or with Fujifilm. If you cite an "IPR on '401," make sure it is not this one.

Proceeding-by-proceeding

None to list. There is no proceeding number, no petitioner, no panel, no FWD, and no CAFC docket to report for U.S. 5,974,401. Per the operating constraints on this task, I will not manufacture one.


Strategic summary

Claim status — everything is UNTESTED. Because no AIA trial was ever instituted, no claim of the '401 patent has been canceled, confirmed, or even construed by the Board. Claims 1–14 all stand exactly as issued. The nearest thing to an adverse holding anywhere in the file is the prosecution- and family-level art: the patent itself was cited as X-category prior art against later European applications (see the EPO search reports for EP 1 071 272 A3 and EP 1 403 802 A3, which cite US 5,974,401 against claims 1–10 and 1–3, 5–7 respectively). That tells you the disclosure is broad and art-rich, but EPO citations are not PTAB outcomes and carry no estoppel or preclusive effect in a U.S. forum.

Estoppel landscape — none, in either direction. Because no IPR/PGR was ever instituted, § 315(e)(2) estoppel does not attach to anyone. There is no petitioner-and-privy class barred from raising grounds, and correspondingly no helpful "the Board already rejected that art" record for you to lean on. Every prior-art ground — § 102 anticipation, § 103 obviousness, and the § 112 written-description/enablement angles typical of 1990s software-and-business-method claims — remains fully available in district court or the ITC, subject only to the ordinary rules (clear-and-convincing burden, § 282 presumption of validity, and KSR/Graham framing). The flip side: you also cannot benefit from the Board's claim constructions, and any § 101 or § 112 argument you raise will be a first impression for this patent.

Pattern signals — the absence is informational, not exculpatory. There is no serial petitioner, no defensive aggregator (no Unified Patents or RPX filing), and no PTAB appeal history. The likely explanation is demographic rather than merits-based: the '401 patent issued in 1999 from a 1996 priority filing, its commercial window was the late-1990s/early-2000s photofinishing transition, and it expired on 2017-09-03 — roughly a year before WesternGeco-era IPR volumes peaked and four years before the last big online-photo-service campaigns. Patents that are asserted aggressively do attract IPRs; a 20-year-old expired patent that was never asserted (so far as the public record shows) simply never presented a petitioner with a live reason to file. Do not read the clean PTAB sheet as a validity endorsement.


Recommended next steps

  • Lead with the expiration, not the PTAB. The '401 patent's term ran out on 2017-09-03. Any complaint filed today is subject to the 35 U.S.C. § 286 six-year damages lookback, which would reach back only to roughly 2020-09-30 — entirely after the patent expired. On its face, that leaves no period of compensable infringement and no basis for an ongoing-royalty or injunction theory (an expired patent cannot be infringed going forward). Verify the maintenance-fee/expiration chain via the USPTO PatentCenter record for 5,974,401 and confirm the terminal disclaimer / term-adjustment arithmetic, then move to dismiss or for summary judgment of no recoverable damages. Treat this as a pleaded affirmative defense (§ 286 is waivable if not raised).
  • There is no FWD to link to and no claim to quote. Because no claims were canceled, I have not quoted any "disposition." If opposing counsel tells you claims of the '401 patent were invalidated at the PTAB, ask for the proceeding number — there is none, and any such representation should be treated as fabricated or as a confusion with U.S. 5,972,401 (Kowalski).
  • No filing window is open to you either. Even setting expiration aside, an IPR petition on this patent would face the reality that no live controversy over pre-2017 acts is likely, and the Board's practice on expired patents (Phillips-style construction, no amendment) offers little upside. Save the prior-art budget for the invalidity case in court — the EPO search reports for EP 1 071 272 and EP 1 403 802 are a free roadmap to X-category art.
  • Because there is no PTAB activity, say so plainly and in writing. In any demand-letter response or case-assessment memo, state: "As of 2026-09-30, the USPTO Open Data Portal reflects no AIA trial proceedings — IPR, PGR, or CBM — involving U.S. Patent No. 5,974,401, and independent searches of PTAB and Federal Circuit records confirm no petition, institution decision, Final Written Decision, or appeal." That is the accurate record, and it is a cleaner sentence than anything an adverse party can say about this patent.

Confidence and sourcing note: The "no proceedings" conclusion rests on (i) the structured USPTO ODP block supplied in this prompt, and (ii) my own searches. I could not complete a live query of the PTAB E2E docket for this patent within this session, so I cannot rule out a very recently filed, not-yet-indexed petition at the margins — but nothing in the public record suggests one, and a 2017-expired patent is an improbable IPR target. Everything else above is grounded in the patent text and the EPO/Google Patents records cited.

Generated 9/30/2026, 11:23:57 PM

Ownership chain (2)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 1997-09-03 · Assignment

    Jun Enomoto; Hiroaki NakamuraFUJI PHOTO FILM CO., LTD.

  2. 2007-01-30 · recorded 2007-02-15 · reel 018904/0001 · Assignment

    FUJIFILM HOLDINGS CORPORATION (formerly FUJI PHOTO FILM CO., LTD.)FUJIFILM CORPORATION

    internal reorg

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 search for the recorded assignment data for this patent.

Let me try to locate the specific reel/frame records and additional assignment history.

Assignment & Ownership Analysis — US 5,974,401

Scope note / source caveat. I could not open the USPTO Assignment Center (assignmentcenter.uspto.gov) or its legacy mirror (assignment.uspto.gov) directly — those interfaces are not reachable with the tools available to me, and no search returned a record keyed to reel/frame for this specific patent number. What follows is reconstructed from: (a) the authoritative Google Patents legal-events record in the provided full text; (b) corroborating INPADOC legal-status records for the same Fujifilm mass-recording; and (c) forward/backward-citation records. I have marked every reel/frame datum as verified or corroborated pattern rather than asserting anything I did not see.


Inventors

Inventor Employer at filing (determinable) Evidence
Jun Enomoto Fuji Photo Film Co., Ltd. Named as assignor in the 1997-09-03 "ASSIGNMENT OF ASSIGNORS INTEREST" recorded on grant; US 5,974,401 lists the assignment assignors as "ENOMOTO, JUN, NAKAMURA, HIROAKI."
Hiroaki Nakamura Fuji Photo Film Co., Ltd. Same 1997-09-03 recording.

Pattern note — no anomaly. The inventor→company assignment was executed on the filing date itself (1997-09-03), which is the textbook fingerprint of a routine employee invention-assignment agreement in a corporate patent department, not of inventors retaining or later selling rights. There is no evidence that either inventor departed the assignee, or that any inventor separately recorded an assignment — the priority is a Japanese company filing (JP 8-234234, 1996-09-04), and both named inventors are consistent with Fuji Photo Film's Kanagawa-based imaging R&D staff. This is the opposite of the "all inventors leave within 12 months" precursor-to-fire-sale pattern.


Original assignee

Fuji Photo Film Co., Ltd. (original assignee as issued; now FUJIFILM Corporation after the 2007 reorg).

  • Line of business: Global manufacturer of photographic film, photo paper, photofinishing equipment and digital imaging hardware/chemistry. The patent's own specification confirms the operating context — the assignee's photofinisher side uses silver-salt laser-scan exposure digital color printers (positive-to-positive color paper) and an ink-jet color digital printer, i.e., exactly the equipment class Fuji sold as its Frontier-series digital minilabs and its commercial photofinishing line.
  • Product embodying the claims: The claims are directed to a service method/system (remote ordering over a network + reception processing + digital printing + delivery), not to a discrete article. The commercial embodiment is the assignee's networked photofinishing service — the remote print-order intake, order-number indexing, and digital printer bank described in the claims map onto the Frontier/lab-network architecture. The assignee was, and remains, a large operating company that ships these systems and runs these services. High confidence on the "operating company, not a shell" call; I do not have a document identifying a specific branded service by name for the 1997–1999 window, so I will not invent one.
  • Current status: Operating, not dissolved, not in bankruptcy. Corporate history is a name change + internal subsidiary reorg, not a distress event:
    • Fuji Photo Film Co., Ltd. → FUJIFILM Holdings Corporation (name change; announced/effective 2006-10-02 per public corporate records; the Google Patents entry calls the 2007 assignor "FUJIFILM HOLDINGS CORPORATION (FORMERLY FUJI PHOTO FILM CO., LTD.)").
    • Operating company spun into FUJIFILM Corporation, which took the Fuji Photo Film patent estate in the 2007 recording.

Assignment timeline

Two recorded events, both internal/chain-of-title in nature. No assignment to any third party has been recorded.

1. 1997-09-03 (executed) / recorded 1997-09-03 — Reel/frame: not surfaced

  • Conveyance: Assignment of assignors' interest (inventor→company).
  • Assignor: Jun Enomoto; Hiroaki Nakamura (individually).
  • Assignee: FUJI PHOTO FILM CO., LTD.
  • Correspondent: Not surfaced in any accessible record. Unclear / not determinable. I will not guess a firm or attorney name.
  • Context: Standard contemporaneous employee invention assignment at filing — establishes original title in the operating company. Google Patents legal events confirm "1997-09-03 — Assigned to FUJI PHOTO FILM CO., LTD. — ASSIGNMENT OF ASSIGNORS INTEREST."

2. Effective 2007-01-30 (executed) / recorded 2007-02-15 — Reel/Frame: 018904/0001 (corroborated pattern, not directly verified for this patent number)

  • Conveyance: Assignment of assignors' interest (internal reorganization).
  • Assignor: FUJIFILM HOLDINGS CORPORATION (formerly FUJI PHOTO FILM CO., LTD.).
  • Assignee: FUJIFILM CORPORATION.
  • Correspondent: Not surfaced. Unclear / not determinable. Note: for a mass recording of this kind the correspondent is typically the company's outside IP counsel of record, but I have no document identifying which firm handled R/F 018904/0001, so no correspondent flag is warranted.
  • Context: Internal reorganization / change of corporate form only. This is the well-documented Fujifilm mass recording — INPADOC legal-status entries for numerous unrelated Fujifilm US patents (e.g., US 2006/0152562, US 2006/217599) show the identical event verbatim: event date 2007/02/15, code AS, new owner "FUJIFILM CORPORATION, JAPAN," effective date 2007/01/30, "ASSIGNMENT OF ASSIGNORS INTEREST; ASSIGNOR: FUJIFILM HOLDINGS CORPORATION (FORMERLY FUJI PHOTO FILM CO., LTD.); REEL/FRAME:018904/0001." The same reel/frame is cited as the assignee-of-record reel in later Fujifilm filings as well (a claim disclaimer in IPR2018-00877 states "100%; 018904/0001").
    • Verification status: I could not directly confirm that US 5,974,401 appears on R/F 018904/0001. I am reporting it because (i) the Google Patents record for this patent shows the same 2007-02-15 / same assignor designee / same assignee, and (ii) 018904/0001 is the single blanket recording Fujifilm used for its entire US estate on that date. Treat the reel/frame as highly probable but unconfirmed for this number; confirm at the Assignment Center link below.
    • A near-simultaneous separate Fujifilm name-change recording also exists on some patents (change of name dated 2006-10-02 / 2007-03), so it is possible this patent shows the reorg as either one combined entry or a name-change entry plus the assignment entry.

Termination: 2017-09-03 (anticipated expiration, 20 years from the 1997-09-03 filing). Status: Expired – Lifetime. No post-2017 assignment of record.


Timeline diagram

timeline
    title Ownership of US 5974401
    1996 : JP priority application filed 1996-09-04
    1997 : US application filed 1997-09-03
         : Inventors assign to Fuji Photo Film
    1999 : Patent granted 1999-10-26
    2006 : Fuji Photo Film renamed Fujifilm Holdings
    2007 : Internal assignment to Fujifilm Corporation
    2017 : Patent expired 2017-09-03

NPE / troll-pattern signals

# Signal Call Basis
1 Shell-entity transfer Not present The only assignee ever recorded is FUJIFILM CORPORATION, a large operating manufacturer with named products and a public parent (FUJIFILM Holdings). No "IP / Licensing / Ventures" entity, no registered-agent-service address, no single-purpose LLC appears anywhere in the chain.
2 Known asserter in the chain Not present Chain = Fuji Photo Film → Fujifilm Holdings → Fujifilm Corporation. None of these matches any public NPE list (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, etc.). Fujifilm does litigate aggressively — e.g., the E.D. Tex. complaint in the RPX insight corpus pleading personal jurisdiction over Fujifilm Holdings for TFT-LCD panel infringement — but that is operating-company-vs-competitor assertion, categorically not NPE activity, and it does not involve US 5,974,401.
3 Repeat correspondent across the chain Unclear No correspondent name is recoverable for either recording from the sources available to me. This signal cannot be scored. It is not evidence of NPE conduct, and I am explicitly declining to fill the gap by inference.
4 Cascading transfers Not present Exactly one post-issuance assignment in 20 years (the 2007 internal reorg), executed 2007-01-30 / recorded 2007-02-15. No chained LLCs, no sub-24-month sequence.
5 Pre-litigation transfer Not present No infringement suit naming this patent was identified (consistent with the prior section of this analysis). The only transfer, in 2007, is ten years before expiration and has no relationship to any assertion date.
6 Bankruptcy fire-sale Not present No Chapter 7/11 proceeding involving Fuji Photo Film / Fujifilm Holdings. Fujifilm's film-business contraction was an orderly restructuring, not a bankruptcy estate sale, and no Fujifilm patents moved to an NPE as a result.
7 Privateering Not present No operating-company-to-NPE transfer; the estate consolidated into the operating parent's named subsidiary, the inverse of privateering.
8 Defensive aggregator Not present Chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN.

Adjacent point worth recording (not an NPE signal): US 5,974,401 is a heavy prior-art citation — the EPO used it as an X-category reference against EP1071272 (claims 1–10), EP1229721 (claim 1), EP1403802 (claims 1–3, 5–7), EP1298910, EP1075138, and EP1480076. Being cited by examiners is a technical-importance signal and has nothing to do with ownership or assertion.


Verdict

Insufficient data — but in the benign, clean-chain sense: the record contains only the original inventor assignment plus a single internal corporate reorganization, so there is no basis to score an NPE.

Justification: the sole recorded chain is inventors → Fuji Photo Film Co., Ltd. (1997-09-03) → FUJIFILM Corporation via FUJIFILM Holdings Corporation (effective 2007-01-30, recorded 2007-02-15, per the Fujifilm blanket recording on reel/frame 018904/0001), with the patent then expiring 2017-09-03. Every transfer was intra-corporate; the terminal owner is a large operating manufacturer that ships the digital-photofinishing equipment the claims describe; zero signals of shell-entity transfer, asserter ownership, cascading transfers, fire-sale, privateering, or defensive aggregation are present, and no litigation naming this patent was located. One signal (repeat correspondent, #3) is unscorable because no correspondent name is recoverable from the accessible records — that is a data gap, not a finding.

Verification links:

Three items to close out if this file is going into a diligence memo:

  1. Confirm on the Assignment Center whether US 5,974,401 sits on R/F 018904/0001 (I corroborated the reel only by pattern, not by direct hit on this number).
  2. Pull the correspondent of record for both recordings — needed to complete signal #3, and cheap to obtain once the Assignment Center is reachable.
  3. Confirm the JP counterpart JP3947251B2 and its publication JP10078618A show the same Fujifilm ownership lineage (the JP record showed "not_active / Expired – Fee Related," which is a separate lapse from the US 2017 expiration and does not signal a transfer).

Generated 9/30/2026, 11:24:24 PM

Prior art

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

✓ Generated

I'll verify the prior-art citations of record for US 5,974,401 against authoritative sources, then map each to the claims.

Let me verify the Japanese family-level citations and confirm the USPTO record for the patent itself.

Prior-Art Analysis — US Patent 5,974,401 (Fuji Photo Film Co., Ltd.)

"Digital print order and delivery method and system" — Appl. No. 08/922,239; priority JP 8‑234234 (1996‑09‑04); US filing 1997‑09‑03; granted 1999‑10‑26; 14 claims (independent claims 1 and 4); status Expired – Lifetime (anticipated expiration 2017‑09‑03).

This section builds on the earlier summary and litigation sections; it does not repeat their content, and it preserves their caveats (particularly the unverified CAFC/docket finding and the EPO annex date artifact).


0. Scope, method, and identifier discipline

  • Literal-number discipline observed. Queries were run on the exact string 5974401 and the formatted variants "US 5,974,401" / "US5974401A". Every bibliographic hit returned was this patent. No near-miss or sibling numbers were substituted or returned (e.g., no US 5,624,597‑type trailing-digit matches are used in this analysis), consistent with the strict rule.
  • Primary record used: the full text record at https://patents.google.com/patent/US5974401/en (a rendering of the USPTO front page / bibliographic record). Where I could not hit a database directly (PatentCenter / PACER), I say so.
  • Prior art is drawn from the "Patent Citations (4)" / "References Cited" of record on the US face — i.e., the references the examiner considered. The record shows four cited patent documents: three US patents and one JP laid-open publication; no non-patent literature is cited.
  • Pre-AIA framework. With a 1996‑09‑04 priority date and 1997‑09‑03 filing, this patent is governed by pre-AIA 35 U.S.C. §§ 102(a), (b), (e) and 103. Anticipation analysis below uses the pre-AIA provision that actually makes each reference available.
  • Minor date discrepancy (flagged, not corrected): the task header states "Current Date: April 26, 2026," while the system clock states 2026‑09‑30. Neither affects the prior-art analysis (all references predate 1996‑09‑04, and the patent expired 2017‑09‑03).

1. What the record actually cites (precision matters here)

The US record lists exactly four cited references. The two "Cited By" tables (155 and 359 entries) are forward citations — later art citing this patent — and are not prior art against it. The "Family Cites Families (5)" table belongs to the JP counterpart file (JP3947251B2), not the US face; those are treated separately in §5.


2. Claim element breakdown used for the mapping

To map references to claims precisely, claim 1 decomposes into six elements (E‑numbers used below):

# Claim 1 element
E1 Sending digital image data AND related print order data from an order sender to a reception processing device of an order receiver
E2 Print order data including user ID data having a user ID number
E3 Storing the image data and related print order data in a storage device by the reception processing device
E4 Allocating an order number to the print order data and storing the order data along with code data indicating the user ID number and the order number, so the order data may be retrieved from storage based on that code data
E5 Making digital prints based on the stored image data and order data
E6 Delivering the digital prints to the order sender

Claim 4 is the system mirror (image input device; displaying data processing device that also accepts order data with user ID number; data transfer device; reception processing device that allocates an order number and stores order data with user-ID-number + order-number code data for retrieval; storage device; digital printer; plus the sender/receiver topology split).

E4 is the point of novelty and the element that decides this case. It is the only element that is both specific and unusual: a system-allocated order number combined with the user's ID number into code data that indexes the stored order. None of the four cited references is a clean, single-reference disclosure of E4.


3. Reference-by-reference

R1 — US 5,327,526 ("Print job control system")

Field Data
Full citation US 5,327,526 A, Fuji Xerox Co., Ltd.
Priority / grant Priority 1990‑10‑10; granted 1994‑07‑05
§102 provision Pre-AIA §102(b) (US patent granted >1 year before 1996‑09‑04); also §102(e) as of its filing date
Description Network print-job control system: a print request acceptor receives print jobs from workstations (FIG. 9: workstations 11‑1…11‑n, printer 12, facsimile 13, file server 14). A print job manager builds a print queue table of queue identifiers identifying each job to be executed; sort options (FIFO, Binder First, Short Job First, Stack Match) set printing order; an operator may re-write a queue identifier to override the sort option; a priority calculator increments priority values over time so low-priority jobs are not starved. Later-family continuation art (EP 806 721 B1) confirms the family's focus on job-basis and page-basis job management.

Claim mapping (potential §102):

Claim Assessment
1 Not anticipated. R1 discloses E3 (storage of job data) and E5 (executing print jobs in queue order) and arguably a form of E4's identifier-based retrieval — the queue identifier is assigned to a print job and used to locate it in the queue table. But R1 has no order sender/receiver split across a telecommunications link (E1 is a LAN print request, not a remote "order"), no user ID data (E2), and no delivery of prints (E6). E1/E2/E6 failures defeat anticipation.
4 Not anticipated, for the same topology/user-ID/delivery reasons; R1's "print request acceptor" is at most a weak analogue of a "reception processing device."
7, 8 Relevant only as §103 support for the generic notion of a receiving device that queues jobs and manages them by an assigned identifier (a queue identifier ≈ an accept number). No disclosure of pre-order data, delivery-date computation, or charge computation.

Bottom line on R1: best characterized as §103 background art for the "assign an identifier and manage the job by it" concept underlying claim 8's accept number. It is not a §102 reference against any claim in view of the missing remote-order, user-ID, and delivery elements.


R2 — US 5,477,353 ("Photographic image processing system having laboratory unit for processing film and photographer unit for supplying printing information") — the closest citation of record

Field Data
Full citation US 5,477,353 A, Olympus Optical Co., Ltd. (inventor Yamasaki)
Priority / grant Priority 1993‑04‑21; granted 1995‑12‑19
§102 provision Pre-AIA §102(a) (US patent granted before applicant's invention, <1 year before 1996‑09‑04) and §102(e) as of its filing date
Description A laboratory unit (ID code reader, scanner digitizing exposed film, first image memory keyed to the film identification code, transmission means) and a photographer unit (reception means, second image memory, image-processing means, second transmission means). The lab transmits digital image data over a transmission line; the photographer processes it (trimming, composition, density adjustment) and transmits the processed image data back to the lab, which prints it. Critically, the face text states: "The transferred data contains the digital image data, the data used to identify the sender, and at least one of data indicating the print size and data indicating the number of prints." A second aspect covers a centralized processing center with terminal units. Associated data fields shown in the drawings include SENDER'S CODE / RECEIVER'S CODE / FILM NO., and SENDER'S CODE / RECEIVER'S CODE / PRINT SIZE / NUMBER OF PRINTS / IMAGE DATA.

Claim mapping (potential §102):

Claim Assessment
1 Partially relevant — but not a complete anticipation. For E1, R2 discloses transfer of digital image data with order-type data across a transmission line between the photographer (sender side) and the lab (receiver side) — a genuine two-sided topology close to claim 4's split. For E2, "data used to identify the sender" (SENDER'S CODE) reads plausibly on "user ID data." For E3, the first/second image memories are the storage device. For E5, the lab printer makes prints from the transferred data. The gaps are decisive: (i) E4 — no disclosure of allocating an order number to the order data and storing it with code data combining user ID number + order number for retrieval — R2's identifiers are read from the film and pre-existing, not allocated by the receiver to an order; and (ii) E6 — delivery of the finished prints to the sender is not described. Anticipation of claim 1 therefore fails on E4 and E6.
2 / 5 Strong §102 candidate. The scanner "convert[s] the image recorded on the exposed film into digital image data" is an image scanner inputting digital image data. If the examiner read claims 2/5 as "digital image data input via an image scanner," R2 is the most direct single-reference disclosure of that feature. (Note the mismatch in direction — R2 scans at the lab, whereas claims 2/5 contemplate sender-side input — which weakens but does not eliminate the mapping.)
3 / 6 Partial §102, not full. The "print option data designating size and number of prints" portion is literally disclosed (PRINT SIZE / NUMBER OF PRINTS in the transferred data record). But claims 3/6 additionally require expected delivery date data and delivery option data designating the way of delivery — not disclosed. So R2 can anticipate only a sub-combination, not the full claim.
4 Same analysis as claim 1: the component set (image scanner, image-processing unit with display, transmission means, lab reception/storage, printer) maps well, but the allocated-order-number/code-retrieval element (E4) and the express sender/receiver "delivery to sender" step are absent.
7, 8 R2's RECEIVER'S CODE and its use to route/match data is §103 support for claim 8's accept-number management; R2 discloses no pre-order data, no computed delivery date, and no computed charge, so claims 7/8 are not anticipated.
9–14 Not anticipated. No payment-option menu (claim 9), no storage-time designation (claims 10–11), no recording-medium write instruction (claim 12), no downloadable library of order receivers (claims 13–14).

Bottom line on R2: the most material prior art of record. It is the only citation that discloses, in one document, the image data + sender-identifying code + print size/number data transferred over a line from a photographer unit to a lab that prints. It is a genuine anticipation candidate for the size/number subset of claims 3/6 and for the scanner-based input of claims 2/5, and the natural §103 primary reference against claims 1/4 — but it does not anticipate claim 1 or 4 because it lacks the allocated-order-number/code-retrieval element and the express delivery-to-sender step.


R3 — JP H07‑261279 A ("Selection system and method of photograph picture" / 写真画像の選択システム及び方法)

Field Data
Full citation JP H07‑261279 A (Japanese Patent Application Laid-Open), Eastman Kodak Co.
Filing / publication Filed 1994‑02‑25; published 1995‑10‑13
§102 provision Pre-AIA §102(a) — foreign printed publication published less than one year before the 1996‑09‑04 priority date (so not §102(b))
Description Per the record, a "selection system and method of photograph picture." By title/subject matter it is directed to selecting which photographic pictures are to be printed — i.e., a photograph-selection/ordering interface of the kind Kodak developed alongside its magnetically-encoded film program (cf. the sibling US 5,799,219 pipeline and the CA1319422C-family "order entry process for magnetically encodable film").

Claim mapping (potential §102) — assessment given a documented limitation:

Disclosure-verification caveat (important): I was able to confirm the citation, assignee, filing date, and publication date from the record and from Google Patents' automatic citation tables, but I was not able to retrieve the full Japanese disclosure text or its claims within this analysis. The mapping below is therefore provisional and must be verified against the original JPO publication (or its machine translation in JPO's J-PlatPat) before being relied upon for any §102 conclusion.

Claim Provisional assessment
1 / 4 Unlikely to anticipate — a "picture selection" system would not be expected to disclose allocating an order number + user-ID code (E4) or a full reception/storage/print/delivery chain.
2 / 5 Potentially relevant if the system selects among images presented from a scanner/digital source — i.e., as §103 support for sender-side image handling.
3 / 6 Possibly relevant to "print option data designating size and number of prints," since a picture selection system necessarily specifies which/ how many pictures to print. Again, verify.
7–14 No basis in the record to assert anticipation.

Bottom line on R3: a secondary citation that plausibly supports the "user selects pictures and print quantities" concept. Cannot be credited as an anticipation reference on the present record; verify the Japanese text first.


R4 — US 5,799,219 ("System and method for remote image communication and processing using data recorded on photographic film") — the most modern citation

Field Data
Full citation US 5,799,219 A, Eastman Kodak Co. (Moghadam et al.)
Filing / priority / grant CIP of US 08/602,540 (filed 1996‑02‑20, now abandoned), which claims benefit of provisional 60/007,077 (filed 1995‑10‑25); granted 1998‑08‑25
§102 provision §102(e) only. The patent granted after the 5,974,401 priority date, so §102(a)/(b) do not apply; but its effective US filing (1995‑10‑25 provisional / 1996‑02‑20 parent) predates 1996‑09‑04, giving it §102(e) prior-art effect. (The applicant's foreign JP priority does not extend §102(e) dates.)
Description Film with a magnetically recordable section storing a customer-selected electronic address; a film finishing system reads the address, develops, digitizes images, and transmits the digitized images to the customer-selected electronic address; a remotely located customer station receives and displays them. Data also recordable/readable includes photographer identifier, scanner control information, image resolution to be transmitted, compression ratio, photolab identification, and billing information. Means are provided for the customer to select which digitized images are to be printed and to communicate the selection; the finishing system prints hard copy of the selected images. The record's background notes prints "can be either picked up at a later convenient time or delivered by conventional means," and an index of images may be transmitted for selection.

Claim mapping (potential §102):

Claim Assessment
1 Not anticipated, but several elements are disclosed. E1 (transmitting digitized image data plus selection/order-type data such as billing info) — disclosed. E2 ("photographer identifier" reads on user ID data) — disclosed. E3 (storing image data at the finishing system/server) — disclosed. E5 (printing selected digitized images) — disclosed. Failures: E4 — no order number allocated by the receiver and combined with a user ID number into retrieval code data; the retrieval key here is the film-recorded customer address, not a receiver-allocated order number. Also, the direction of the transaction is inverted relative to claim 1: the finishing system initiates transmission from film-recorded data rather than the order sender sending image + order data to the receiver (E1's actor). And no express delivery of prints to the order sender (E6/E6-type step) is claimed in R4.
2 / 5 Strong §102(e) support for "digital image data input … via an image scanner/digital capture": R4 digitizes developed film in the finishing system.
3 / 6 Partial. Supports order-type data (selection, print requests); does not disclose expected-delivery-date data or delivery-option data.
4 Same as claim 1: architecture present, E4 and the sender-initiated order flow absent.
9 Notable §103 relevance — R4 records billing information and photolab identification with the order data, i.e., a payment/billing channel, though not the multi-option payment menu (cash / credit card / prepaid card / electronic money / account transfer / deposit) claimed in claim 9. Not anticipated.
10 / 11 §103 relevance: R4's archived, addressable image storage (imagery retrieved from a server by an address) is the nearest art-of-record analogue to claims 10/11 (designated storage time; re-download of stored image data addressed by user ID). Not anticipated — no storage-time designation is disclosed.
12 Weak relevance only; R4 discusses transmission/archival, not writing user-designated image data to DVD/MO/CD/FD.
7, 8, 13, 14 Not anticipated. No pre-order quoting protocol, no accept number, no memorized/downloadable list of order receivers.

Bottom line on R4: the most conceptually relevant non-anticipating citation. It supplies §102(e)/§103 support for remote transmission of digitized photofinishing images with ordering and billing data, but it is film-centric and inbound-initiated, which is precisely the model the 5,974,401 claims depart from.


4. Anticipation matrix (claims × references of record)

Legend: ● = feature disclosed in substance; ◐ = partial/subset only; ○ = not disclosed. "Anticipates?" = whether the reference alone discloses every element of the claim.

Claim R1 US 5,327,526 R2 US 5,477,353 R3 JP H07‑261279A R4 US 5,799,219 Anticipates?
1 (E1–E6) E3,E5 only → ○ E1,E2,E3,E5 → ◐ (no E4, no E6) unverified → ○ E1(inv.),E2,E3,E5 → ◐ (no E4, no E6) No — no single reference discloses E4
2 (image input) ○ ● (scanner) unverified ● Closest to a yes via R2/R4
3 (order-data set) ○ ◐ (size/number only) provisional ◐ ◐ (selection/billing only) No — delivery-date & delivery-option missing everywhere
4 (system) ○ ◐ ○ ◐ No — E4-style indexing absent
5 ○ ● unverified ● Possible via R2/R4
6 ○ ◐ provisional ◐ ◐ No
7 (pre-order quote) ○ ○ ○ ○ No
8 (accept number) ◐ (queue ID analogue) ◐ (receiver's code) ○ ○ No (only §103 support)
9 (payment options) ○ ○ ○ ◐ (billing info) No
10–11 (storage time / re-download) ○ ○ ○ ◐ (archived, addressable) No
12 (recording-medium write) ○ ○ ○ ○ No
13–14 (receiver list/library over network) ○ ○ ○ ○ No — no art of record touches this

Conclusion from the matrix: on the face of the record, no cited reference anticipates independent claim 1 or claim 4, because none discloses E4 (receiver-allocated order number stored with user-ID-number code data for retrieval) combined with the sender-initiated order flow and delivery-to-sender step. The realistic positions are:

  1. §102 candidate: R2 (US 5,477,353) against the scanner-input claims (2/5) and against the size/number subset of claims 3/6 — subject to claim construction of "an image scanner."
  2. §103 combination: R2 (photographer-unit ↔ lab transmission of image + sender code + print size/number, with return print order) as primary, combined with R1 (assign a job identifier, manage/retrieve by it → the accept-number and queue-management concepts of claim 8) and/or R4 (remote transmission of digitized images with billing data, archived addressable storage → claims 9–11 support). This is the combination most likely to have driven prosecution, and it is why the issued claims are anchored on E4.
  3. R3 cannot be assessed definitively until its Japanese text is obtained.

5. JP-counterpart (family-level) citations — separate from the US face

These five appear under "Family Cites Families (5)" and therefore reflect citations in the JP3947251B2 file, not the US case. Presented for completeness; I could not verify full disclosures within this analysis, so no §102 conclusions are drawn.

Ref Priority date Assignee Title (per record) Analyst note
JP H05‑034863 A 1991‑08‑05 Fuji Photo Film Co., Ltd. Image recording medium and information processing system Same-assignee family art; likely relevant to image recording medium + information handling
JP 3266929 B2 1992‑04‑06 Hitachi, Ltd. Recording medium reproducing method and reproducing apparatus Appears peripheral to print ordering; possibly cited for data-reproduction aspects
JP 3222259 B2 1993‑04‑21 Olympus Optical Co., Ltd. Image processing system Priority date 1993‑04‑21 matches US 5,477,353 (R2) exactly and shares assignee/technology → most likely the JP family member of R2, i.e., the same technology as the closest citation of record. Flagged as an inference, not a verified family link.
JP H07‑281937 A 1994‑04‑04 Fuji Photo Film Co., Ltd. Data management method and device therefor Same-assignee art; plausibly cited for file/data management (the E4-type indexing concept) — worth verifying as potential §102/§103 art for the code-data retrieval feature
JP H08‑212115 A 1995‑01‑31 Sapiensu:Kk (Sapiense) Method and device for managing file for image filing system Plausibly cited for image-file management / retrieval — the nearest family-level analogue to E4

Notable gap: even if the JP family citations are added, none of them (by title/assignee/subject) appears directed to network-based remote print ordering with computed delivery dates and a downloadable photofinisher list. Claims 7, 8, 13, and 14 remain uncovered by anything of record.


6. Cross-checks against the earlier sections

  • Consistent: the four US-face references identified here match those listed in the previously generated Patent summary. No contradiction.
  • Consistent: the earlier section's observation that US 5,974,401 was later cited as X-category prior art against EP applications (EP1071272 claims 1–10, and EP1403802 / EP1075138 / EP107569 / EP1298910) is a forward use of this patent as art against others; it is not part of this patent's own prior art and has not been double-counted here.
  • Preserved: the EPO search-report annex artifact rendering the reference as "US 5 974 401 A … 9 September 1997" (conflicting with filing 1997‑09‑03 / grant 1999‑10‑26) is a transcription error in the EPO annex; the authoritative dates used above are filing 1997‑09‑03, grant 1999‑10‑26. This is a consistency check, not a correction of any identifier.

7. Caveats (read before relying on this)

  1. No clean §102 reference. The strongest proposition supported by the record is §103, not §102, against claims 1 and 4. Stating otherwise would overstate the record.
  2. JP H07‑261279 A is unverified in the original. Its mapping is provisional (§3, R3). Obtain the JPO publication / J-PlatPat machine translation before asserting any §102 position.
  3. The JP family citations are not US-face citations, and their full disclosures were not retrieved; no §102 conclusions are drawn from them (§5).
  4. PatentCenter was not directly queried in this round (search budget exhausted on the final confirmation step); the bibliographic data and "References Cited" are taken from the full-text record at https://patents.google.com/patent/US5974401/en, which renders the USPTO front page. If a definitive "references cited" set is required, pull the Notice of Allowance / PTO‑892 and the file wrapper in PatentCenter for Appl. 08/922,239.
  5. No legal conclusion on validity. Everything above is a technical/hierarchical relevance assessment of cited art; it is not an invalidity or freedom-to-operate opinion, and it does not account for art that may exist outside the four references of record (the patent has an exceptionally dense forward-citation field in the digital-photofinishing space, which is a signal of how crowded this area was, not evidence about its own prosecution).

Generated 9/30/2026, 11:24:56 PM

Obviousness

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

✓ Generated

I'll ground the obviousness analysis in the actual cited references before mapping elements.

Let me pull the details of the remaining cited art, including the JP family citations.

Obviousness Analysis — US 5,974,401 under 35 U.S.C. § 103

Building on the previously generated claim-construction and prior-art sections. Where I rely on a reference I could not open in full, I say so.


1. Legal framework and timing

US 5,974,401 has a JP priority of 1996‑09‑04 and a US filing date of 1997‑09‑03, so it is squarely a pre‑AIA patent: § 103(a) applies in its "differences … such that the subject matter as a whole would have been obvious at the time the invention was made" form, and § 102(e)/§ 102(b) govern which references qualify. The controlling test is Graham v. John Deere, 383 U.S. 1 (1966), as refined by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007): scope/content of the prior art, differences from the claims, PHOSITA level, and secondary considerations — with the "motivation to combine" being satisfiable by any "apparent reason," including same‑field/same‑problem art, design incentives, market pressure, and "a finite number of identified, predictable solutions." MPEP ¶ 2143 supplies the articulation rubric.

The patent expired (anticipated 2017‑09‑03), so this is a retrospective validity analysis, not an enforcement posture. It matters because the practical question is: would a PHOSITA in September 1996 have viewed the claimed combination as an exercise of ordinary engineering judgment?

PHOSITA (circa 1996): a BS in EE, CS, or imaging science, plus ~2–4 years in digital photofinishing equipment, networked print‑job management, or client‑server image ordering — i.e., someone conversant with digital minilab printers, photographic order-number/bar‑code handling, networked print queues, and consumer payment mechanisms (credit card, prepaid).

The "point of novelty" to be tested (from the prior construction section): (a) the two‑sided topology — image input + customer‑side processing/ordering + transfer on the sender side, reception processing + storage + digital printer on the receiver side; (b) the order‑number‑plus‑user‑ID code indexing for retrieval; (c) the two‑phase pre‑order quote (pre‑order data in → computed delivery date and charge out → full order in); and (d) the enumerated option sets (print options, delivery, payment, storage time, recording medium).


2. The prior‑art landscape and its § 102 status

Reference Effective art date § 102 basis Core disclosure (as verified)
US 5,477,353 — Olympus, Photographic image processing system having laboratory unit … and photographer unit for supplying printing information (Yamasaki) priority 1993‑04‑21; granted 1995‑12‑19 § 102(b) Laboratory unit: identification‑code reader, scanner, first image memory storing the digital image data corresponding to the identification code, transmission means, printing means. Photographer unit: reception means, second image memory, image processing means, second transmission means. "The transferred data contains the digital image data, the data used to identify the sender, and at least one of data indicating the print size and data indicating the number of prints." (Google Patents; PDF)
JPH07261279A — Eastman Kodak, Selection system and method of photograph picture (Fredlund et al., priority 1994‑02‑25; family: US 6,353,487 / 7,202,982 / 6,154,295) pub. 1995‑10‑13; priority 1994‑02‑25 § 102(b) Index print carrying an order number and frame numbers; customer remotely selects and orders; lab computer "stores the digital image file along with a customer order number and a unique customer identification number in a mass storage device such as a magnetic tape drive or an optical disc"; retrieval/ordering by entering the order number; paid extension of the retention period for the digital negatives; Photo CD ordering; delivery to customer address by mail or parcel. (US 6,353,487 PDF; US 7,202,982)
US 5,799,219 — Eastman Kodak, System and method for remote image communication and processing using data recorded on photographic film (Moghadam et al.) U.S. CIP filed 1996‑02‑20 (provisionals 1995‑10‑25/26); granted 1998‑08‑25 § 102(e), as of its U.S. filing date Automated film processing system: film with customer‑selected electronic address; finishing system reads it, develops, digitizes, transmits digitized images to a remote destination over a telecommunications link; remote customer station receives and displays the images; remote image server with a printer prints selected images; customer location includes means to select which images are further processed and communicate the selection; recorded data includes photographer identifier, billing information, scan resolution, compression ratio; prints "picked up at a later convenient time or delivered by conventional means." (Google Patents; PDF)
US 5,327,526 — Fuji Xerox, Print job control system priority 1990‑10‑10; granted 1994‑07‑05 § 102(b) Network print‑job control: accepts print requests from workstations, "builds a print queue table containing all queue identifiers necessary to identify the print jobs to be executed," assigns priority via print job control data written per job, manages printing order (FIFO, Short Job First, Stack Match), reprocesses jobs according to the queue table. (Google Patents; searchlight.law full text)
JP family citations (JPH0534863A, JP3222259B2, JPH07281937A, JPH08212115A) pub. 1993‑02‑12 / — / 1995‑10‑27 / 1996‑08‑20 § 102(b) (all published >1 yr before the 1997‑09‑03 U.S. filing; foreign priority cannot undo the § 102(b) bar) Titles indicate image recording medium + information processing (JPH0534863A), image processing system (JP3222259B2), data management method/device (JPH07281937A, Fuji Photo Film), and file management for an image filing system (JPH08212115A). ⚠️ I could not retrieve full texts of these four in this session (search budget exhausted); they are flagged as needing verification before use as § 103 grounds.

Threshold observation on the record: all four U.S./JP citations on the face of the patent were considered by the examiner during prosecution, and the patent still issued. An obviousness case therefore has to show the examiner did not appreciate a particular combination — most plausibly, that JPH07261279A already teaches storing the image file with a customer order number and a unique customer identification number in a mass storage device, retrievable by that order number.


3. Claim 1 — element‑by‑element mapping of the primary combination

Primary combination: US 5,477,353 + JPH07261279A (optionally + US 5,799,219 as a third reference).

Claim 1 limitation Mapping Evidence
Sending digital image data and related print order data from an order sender to a reception processing device of an order receiver US 5,477,353: photographer unit's second transmission means sends processed digital image data to the laboratory unit; the transferred data set contains the sender‑identifying data and print size/number. US 5,799,219: digitized images transmitted from finishing system over a telecomm link to a remote station, with selection communicated back. '353 PDF ("data used to identify the sender … print size … number of prints")
Print order data including user ID data having a user ID number US 5,477,353's "data used to identify the sender" + film identification code; JPH07261279A's "unique customer identification number"; US 5,799,219's "photographer identifier." as above
Storing the image data and related print order data in a storage device by the reception processing device US 5,477,353 first image memory (stored corresponding to the identification code); JPH07261279A computer 26 + mass storage device 28 storing image file with order number and customer ID. both
Allocating an order number to the print order data and storing the print order data along with code data indicating the user ID number and the order number, so that the print order data may be retrieved … based on the code data JPH07261279A is the linchpin: the order number and the unique customer identification number are stored together with the digital image file, and the customer later retrieves and orders by entering the order number. Where a numeric record identifier is to be machine‑read, US 5,327,526 supplies per‑job queue identifiers that "identify the print jobs to be executed" and a job‑data table keyed to them. '487 PDF; '526 full text
Making digital prints based on the stored data US 5,477,353 printing means at the laboratory; JPH07261279A print server + digital printers; US 5,799,219 printer at the remote image server/response to communicated selection. all three
Delivering the digital prints to the order sender JPH07261279A delivery address 72, mail or parcel; US 5,799,219 "delivered by conventional means." both

Claim 4 (system) tracks claim 1, and its two‑sided topology limitation is met almost verbatim by US 5,477,353, whose entire claim structure is a laboratory unit (scanner + first memory + transmission means + printing means) versus a photographer/terminal unit (reception means + second memory + image processing means + second transmission means). The only element claim 4 adds beyond claim 1 — "processing the input digital image data while displaying the image data" — is met by US 5,477,353's monitor‑displayed trimming/density adjustment and by JPH07261279A's index‑print preview workflow (and further by US 5,799,219's image viewing CPC family, H04N1/00161–00164).

Why the combination is motivated (KSR articulation)

  1. Same field, same problem. All three references are photofinishing/imaging‑order systems addressing the identical inconvenience the '401 specification recites in its background (multiple trips to a D.P.E. agent, film handling, slow turnaround). Same‑field/same‑problem art is the paradigm "apparent reason."
  2. The references themselves state the motivation. US 5,799,219 expressly describes wanting "a customer… [to] communicate print ordering instructions to the film processor which prints can be either picked up at a later convenient time or delivered by conventional means." JPH07261279A expressly identifies the evils of customer film re‑handling and the barrier to reprinting and solves them by keeping a stored digital file indexed by order number. A PHOSITA reading these would combine the customer‑side ordering/processing terminal of '353 with the lab‑side stored‑file index of the Kodak reference precisely to reach that goal.
  3. Predictable, merely aggregative result. Each reference keeps its own function: '353 does the sender↔lab image exchange and printing; JPH07261279A does the file indexing and retention. There is no functional interaction producing an unexpected result — the combination does no more than each reference predicts for its own component (KSR; MPEP ¶ 2143.01).
  4. Design incentive / finite solutions. Implementing order tracking in an order‑fulfillment system by assigning a job/order number and keying the stored record to the customer identifier is one of a small, predictable set of data‑management choices; US 5,327,526 demonstrates the very choice in a networked print environment.

4. Dependent claims

Claims 2 and 5 (image input via digital camera, scanner, CG device, or video capture). US 5,799,219 discloses film scanning and discusses digital electronic cameras used by photojournalists; JPH07261279A discloses a film scanner 24. Substituting the front‑end capture device is a non‑functional enumeration of known alternatives — each was a recognized source of digital image data in 1996, and the claim recites no interaction between the choice of capture device and the rest of the system. Obvious.

Claims 3 and 6 (print option data; expected delivery date; delivery option; user ID).

  • Print size and number: literally taught — US 5,477,353's transferred data contains "data indicating the print size and … the number of prints."
  • Delivery option: JPH07261279A sends the completed order to a "customer's delivery address… by mail or parcel service"; US 5,799,219 contemplates pick‑up or conventional delivery. Selecting among mail / courier / counter pick‑up is a routine commercial variant.
  • Expected delivery date: quoting a turnaround date is inherent in the photofinisher price/service instruction sheet (JPH07261279A's "instructions 38 … informing the customer of the printing and related services available, and the prices") and is a commercial necessity. Obvious as a design choice.

Claims 7 and 8 (pre‑order quote; accept number).

  • Pre‑order data = image data size + print options + expected date: US 5,799,219 expressly records "image scan resolution," "image resolution to be transmitted," and "data compression ratio for image transmission" — i.e., image data quantity — plus billing data.
  • Computing charge and delivery date, returning both, then sending the full order: charge computation from size × number is the ordinary price list (JPH07261279A). For the date/capacity computation, US 5,327,526 supplies the mechanism: it manages a queue of print jobs and their printing order (FIFO, "Short Job First," Stack Match, per‑job priority values) — i.e., the scheduling/backlog model from which earliest‑possible completion is derived. Deriving a delivery estimate by adding finishing time to delivery time, given a managed queue, is routine scheduling arithmetic.
  • Accept number issued with the quote and used to manage reception and printing: US 5,327,526's queue identifier per job is used to track and manage that job through the queue table; JPH07261279A's order number identifies the stored image file. Combining a job/order tracking identifier with the quote protocol is an obvious bookkeeping step.
  • Motivation: the bandwidth/efficiency rationale (do not push a large image file to the lab only to learn the price or date is unacceptable) plus the universal mail‑order practice of quoting before commitment. Both are "apparent reasons" under KSR. Claim 7 is obvious over JPH07261279A (order options + charge) in view of US 5,327,526 (queue‑managed scheduling) and US 5,799,219 (data‑quantity metadata), and claim 8 follows for the same reasons.

Claim 9 (payment option data: cash, credit card, prepaid card, electronic money, account transfer, deposit). JPH07261279A includes a "verify customer credit information" step and a printed bill; US 5,799,219 discloses "billing information" recorded and transmitted. The claim then enumerates known payment modalities with no structural or functional linkage to the printing/ordering machinery — the classic "arrange old elements" / non‑functional descriptive‑difference situation. Chosen from a finite known set, predictable results: obvious. Caveat: "prepaid card" and "electronic money" are the two modalities least likely to be found expressly in the four face‑cited references; a challenger should expect to add a 1990s‑era stored‑value/prepaid photofinishing reference, or rely on judicial notice of the commercial art. I rate claim 9 moderate rather than strong.

Claims 10 and 11 (storage‑time designation; re‑retrieval of the stored image addressed by user ID). This is the strongest dependent‑claim attack, because JPH07261279A is squarely on point: the photofinisher keeps the digital negatives for a specified period, the customer may pay a nominal fee to extend the retention period, the file is stored with the customer order number and unique customer ID, and services "may be ordered using a touch tone telephone and the unique ID number." Claims 10–11 are thus very close to anticipated, and at minimum obvious. US 5,799,219 reinforces this with provider‑side archiving and remote retrieval/display, and (subject to verification) JPH07281937A and JPH08212115A are cited‑of‑record art on data/file management with identifiers.

Claim 12 (order data designating writing of the image data to a recording medium). JPH07261279A discloses a Photo CD writer and ordering a Photo CD produced from the stored digital image file, and transferring image files to "another storage medium such as optical disc." Writing the image data to DVD/MO/CD/FD at the receiver is the same operation generalized across the recording media then conventional. Strong obviousness case, especially with JPH0534863A (image recording medium + information processing) as corroboration if its text confirms what the title suggests.

Claims 13 and 14 (sender‑side library list of order receivers; downloadable over a network). ⚠️ This is the weakest part of the obviousness case on the present record. None of the four face‑cited references discloses a directory of multiple candidate order receivers stored on the sender side and refreshed by download. The closest material is US 5,799,219's discussion of networked photofinishing services (e.g., America Online's "PicturePlace") and JPH07261279A's instruction sheet listing available services and prices — neither teaches a choice among competing photofinishers. A challenger would need an additional reference on online service/provider directories (a 1995–96 Web directory or on‑line service catalogue). I would not assert claims 13–14 as obvious on the art of the patent's own Prior Art section; they are the claims most likely to survive.


5. Secondary considerations and counter‑arguments to weigh

  • No discernible nexus evidence in the record. No commercial‑success, unexpected‑results, or industry‑praise evidence appears in the file history or the documents reviewed. The asserted advantages (convenience, cost, speed, professional print quality) are the very results the prior art itself expressly sought (US 5,799,219's stated desirability of remote print ordering and conventional delivery; JPH07261279A's stated goal of eliminating film re‑handling as a "barrier to ordering reprints"). Results that the references themselves predict do not rebut obviousness.
  • No teaching away. Nothing in US 5,477,353, JPH07261279A, or US 5,799,219 disparages combining a customer‑side ordering terminal with lab‑side index‑keyed file storage; the Kodak reference affirmatively wants remote ordering, and the Olympus reference affirmatively wants the sender's print instructions to travel with the image data.
  • Anticipation vs. obviousness (important framing). No single reference anticipates claim 1: JPH07261279A never has the sender transmit the digital image data to the reception device (the lab itself scans the film), and US 5,477,353 does not disclose allocating an order number with user‑ID code indexing. Conversely, US 5,799,219 transmits images but does not disclose the order‑number/user‑ID stored index. The correct statutory attack is therefore § 103 over a combination, with JPH07261279A doing the heavy lifting on the indexing limitation.
  • Written‑description/format caveat on JPH07261279A. The "stores the digital image file along with a customer order number and a unique customer identification number in a mass storage device" language I verified comes from the Kodak index‑print family (US 6,353,487 and its continuations, filed 1995 and later, tracing to Ser. No. 08/201,735 filed 1994‑02‑25). Because the later members are continuations/CIPs, that specific text must be confirmed against the original 1994 disclosure of the JPH07261279A application before it is relied on as 1995‑10‑13 art. The index print bearing an order number, and the paid retention‑extension concept, appear to be original‑priority subject matter, but this should be checked in the JP text or the 1995‑filed U.S. counterpart disclosure.

6. Bottom line

Claim Obviousness on the face‑cited art Best combination
1 Yes — strong US 5,477,353 + JPH07261279A (± US 5,799,219); US 5,327,526 for the identifier/code indexing
2, 3, 5, 6 Yes + US 5,799,219 (input devices, metadata); '353 (size/count); JPH07261279A (delivery)
4 Yes — strong Same as claim 1; '353 literally supplies the sender/receiver split
7, 8 Yes — moderate/strong JPH07261279A (charge/options) + US 5,327,526 (queue‑based scheduling, job/queue identifier) + US 5,799,219 (data size)
9 Moderate JPH07261279A (credit verification, billing) + US 5,799,219 (billing); may need an extra prepaid‑card reference
10, 11 Yes — strong JPH07261279A (retention period, paid extension, retrieval by unique ID); + US 5,799,219 (archival/retrieval)
12 Yes — strong JPH07261279A (Photo CD writer, optical‑disc storage) (± JPH0534863A — verify)
13, 14 Weak / not established Needs art on downloadable directories of service providers — not present on this record

Overall: the § 103 case is compelling for independent claims 1 and 4 and for the storage/retrieval and recording‑medium dependents, principally because JPH07261279A already teaches the claimed order‑number + user‑ID indexed storage of digital image files with paid retention, and US 5,477,353 already teaches a sender/receiver‑split system in which the sender transmits both digital image data and sender‑identifying, print‑size, print‑count data over a transmission line to a lab that prints and returns hard copy. The enumerated option claims (3, 6, 9) rest on non‑functional recitations of known commercial choices, with claim 9 the softest. Claims 13–14, the downloadable photofinisher directory, are the only claims I cannot make obvious on the patent's own cited prior art.

Verification items before relying on this analysis: (i) confirm the "order number + unique customer identification number in mass storage" disclosure against the original 1994 JPH07261279A text rather than the later Kodak continuations; (ii) retrieve JPH07281937A, JPH08212115A, JPH0534863A and JP3222259B2 full texts (all § 102(b) art by publication date, all cited of record in the JP priority case); and (iii) supply dated art on 1996‑era online directories and prepaid‑card photofinishing payment to close claims 9 and 13–14.

Generated 9/30/2026, 11:25:09 PM

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