US 7233790

US Patent 7,233,790 B2 — Summary

I searched USPTO-related databases (Google Patents, RPX, PTAB/PTACTS records, USPTO.report), plus CAFC 2026 dockets/court records. Note: I could not directly query the USPTO full-text database in this session; the bibliographic data below is corroborated across the Google Patents record (provided in your message), RPX, Justia, and PTAB filings. No results for any similar but different patent numbers (e.g., JP7233790B1) are included.

Bibliographic data

• Title: Device capability based discovery, packaging and provisioning of content for wireless mobile devices
• Patent / publication number: US 7,233,790 B2 (US7233790B2)
• Application: US 10/600,746, filed June 19, 2003
• Priority date: June 28, 2002 (four provisional applications: 60/393,024; 60/392,383; 60/393,041; 60/392,999); related EP application EP03254137A
• Issue date: June 19, 2007 (published as US20040054786A1 on March 18, 2004)
• Inventors: Rikard M. Kjellberg, Sheng Liang, Tomas G. Lund, William Chan, Ramakrishna Chinta, Xinbi Chen
• Original assignee: Openwave Systems Inc.
• Assignee chain (per assignment records): Openwave Systems Inc. → Unwired Planet, Inc. (2012 merger) → Unwired Planet, LLC (2013) → VideoLabs, Inc. (2020). Google Patents lists current assignee as VideoLabs Inc.
• Legal status: Expired – Lifetime (adjusted expiration July 11, 2025). Subject to ex parte reexamination 90/015,063 and multiple IPRs/lawsuits (below).

Abstract (verbatim from record)

A network server system includes a download manager that manages the publication, purchase and delivery of digital products from multiple suppliers to wireless services subscribers in multiple domains. Product suppliers can publish and manage their products on the server system via a computer network and make their products available to the subscribers for purchase or licensing. The subscribers in each domain can access the server remotely to purchase rights to download and use the products on associated wireless communication devices. Multiple different implementations of any product can be maintained, where each implementation corresponds to a different set of device capabilities. Each product can also be associated with multiple different provisioning models, each corresponding to a different set of device capabilities.

Independent claims (14 total; independent claims are 1, 2, 8, and 9)

Claims 3–7 depend on claim 2; claims 10–14 depend on claim 9. Caveat: claims 1 and 8 were amended during ex parte reexamination 90/015,063 (per the CAFC brief in VideoLabs v. Netflix, case 25-1131), so treat the exact current wording of claims 1 and 8 with that caution. Plain-language overviews:

• Claim 1 (method): A method of providing access to content for wireless devices. It covers storing multiple content items for use by wireless-service subscribers' devices, where at least one content item exists in several different "implementations," each matched to a different set of device capabilities, and maintaining a product catalog that, for each content item, holds a reference to every implementation of that item.

• Claim 2 (method): Same general idea as claim 1 but expressly for "digital content" stored in a server system, plus device-tailored catalog presentation: after receiving a request from a subscriber's wireless device, the server selects which portion of the catalog to show based on the device's capabilities, and presents that portion over a wireless network so that each content item is displayed as only a single description even if the item has multiple implementations.

• Claim 8 (system): A system (network interface plus a "download manager") configured to receive and store multiple content items for wireless devices — including multiple different implementations of at least one item, each implementation corresponding to a different set of device capabilities — and to maintain a product catalog that associates each content item with references to each of its implementations. (Full amended text not verified in this search; overview based on RPX/PTAB excerpts.)

• Claim 9 (system): A processor-based system whose stored code, when executed, performs the claim-2 style method: receive and store digital content items with device-capability-specific implementations; maintain a product catalog referencing each implementation per item; receive a request from a subscriber's wireless device; select a portion of the catalog based on that device's capabilities; and cause presentation of that portion via a wireless network showing only a single description per content item regardless of the number of implementations.

Relevant proceedings / 2026 docket context

• CAFC case 2025-1131, VideoLabs, Inc. v. Netflix, Inc. — appeal from PTAB IPR2023-00628, whose Final Written Decision found all 14 claims of the '790 patent unpatentable (Netflix, IPR2023-00628; Willkie press releases Oct. 2024/Jan. 2025). The CAFC docket shows briefing on claim construction (the "product catalog"/"single description" limitations) and oral-argument audio posted on the CAFC website (URL indicates audio for 2025-1131; a Law360/NewsBreak item dated Feb. 2026 affirming a PTAB invalidation appears to concern a different, data-synchronization VideoLabs patent, not the '790 — I did not find a final merits decision for 25-1131 in this search).
• IPR2025-00072 (Roku, Inc. v. VideoLabs, Inc.) — petition against the '790 patent; terminated/settled April 1, 2025 (before institution).
• District court matters: VideoLabs v. Netflix, 1:22-cv-00229 (D. Del.); VideoLabs v. Roku, 1:23-cv-01136 (D. Del., stayed/closed); earlier Unwired Planet cases in Nevada (3:12-cv-00505) and N.D. Cal. (3:13-cv-04134), with related CAFC appeals 15-1725 and 15-1795.

Uncertainty notes

• Exact current text of amended claims 1 and 8 (post-reexamination) was not fully retrievable in my searches; the claim-1 text you supplied matches the pre-reexam/original wording and should be reconciled against the reexam certificate (90/015,063) for litigation-grade accuracy.
• No authoritative 2026 CAFC merits decision for the '790 patent specifically was confirmed in this search; treat the status of case 2025-1131 as "oral argument heard/posted" unless you consult PACER/CAFC directly.

Litigation Involving U.S. Patent No. 7,233,790

Based on searches of Unified Patents, Docket Alarm, GreyB/ipverse, the Stanford NPE Litigation Database, Willkie's client announcement, Justia, and the litigation links embedded in the Google Patents record for the '790 patent, here is the known litigation involving US 7,233,790 ("Device capability based discovery, packaging and provisioning of content for wireless mobile devices"). Note that the patent is owned today by VideoLabs, Inc. (via assignment chain: Openwave Systems → Unwired Planet, Inc. → Unwired Planet, LLC → VideoLabs, Inc.).

A. District Court Cases

1. VideoLabs, Inc. v. Netflix, Inc.

• Jurisdiction / Court: U.S. District Court for the District of Delaware
• Case No.: 1:22-cv-00229 (per Unified Patents/Google Patents; Willkie announcement cites Case 1:22-cv-00229, D. Del., Judges Connolly/Slomsky)
• Filing date: 2022
• Plaintiff(s): VideoLabs, Inc.
• Defendant(s): Netflix, Inc.
• Role of '790: One of four patents VideoLabs asserted against Netflix's streaming platform (the '790 and 7,440,559 being the two invalidated in IPR).
• Outcome/Status: District court action was stayed pending IPR. After the PTAB's Final Written Decision (see below) invalidating all 14 claims of the '790, Netflix prevailed on validity. Status: effectively resolved in Netflix's favor on the '790 (the FWD has been appealed to the CAFC — see § C below).

2. VideoLabs, Inc. et al. v. Roku, Inc.

• Jurisdiction / Court: U.S. District Court for the District of Delaware (Wilmington)
• Case No.: 1:23-cv-01136
• Filing date: October 11, 2023
• Plaintiff(s): VideoLabs, Inc. and VL Collective IP LLC
• Defendant(s): Roku, Inc.
• Role of '790: One of seven patents asserted (7,233,790; 7,440,559; 7,769,238; 7,970,059; 8,291,236; 8,605,794; 8,667,304).
• Outcome/Status: Docket flags: STAYED, CLOSED, PATENT. Stay granted July 2024 (Doc. 41) pending IPRs; matter closed. Roku's related IPR2025-00072 was terminated by settlement (see below).

3. Unwired Planet, LLC v. Apple, Inc. (N.D. Cal.)

• Jurisdiction / Court: U.S. District Court for the Northern District of California (San Francisco)
• Case No.: 3:13-cv-04134-VC
• Filing date: September 6, 2013
• Plaintiff(s): Unwired Planet, LLC (predecessor-in-interest to VideoLabs)
• Defendant(s): Apple, Inc.
• Role of '790: The '790 was among ten patents listed in the original complaint (which included the '594, '831, '092, '446, '260, '491, '685, '790, RE43,113 and '927 patents). It was not among the patents that reached final judgment.
• Outcome/Status: Final judgment entered May 29, 2015 (Doc. 418) — summary judgment of non-infringement for Apple on the four speech-recognition patents then at issue ('831, '446, '260, '092); case closed. The '790 was dropped/not tried in this case. CAFC appeals followed (see § C).

4. Unwired Planet, LLC v. Apple, Inc. (D. Nev.) — listed on the '790 record

• Jurisdiction / Court: U.S. District Court for the District of Nevada
• Case No.: 3:12-cv-00505 (as listed in the Google Patents litigation metadata for the '790)
• Filing date: 2012
• Plaintiff(s): Unwired Planet, LLC (per third-party sources referencing "Unwired Planet, LLC v. Apple, Inc. (Nevada)")
• Defendant(s): Apple, Inc.
• Outcome/Status: I could not independently verify the parties, docket details, or final disposition of this Nevada case in this search session. It is flagged on the Google Patents family litigation record for the '790; treat its exact scope as unverified.

B. PTAB (Inter Partes Review) Proceedings

5. Netflix, Inc. v. VideoLabs, Inc. — IPR2023-00628

• Petitioner: Netflix, Inc. (with related entities)
• Patent Owner: VideoLabs, Inc.
• Filing date: February 23, 2023
• Institution: October 3, 2023
• Termination (FWD): October 2, 2024
• Outcome: Final Written Decision — all 14 claims of the '790 found unpatentable. Willkie (Netflix's counsel) announced a "complete victory" invalidating the '790 (and 7,440,559). Status listed as "Final Written Decision – Appealed."

6. Roku, Inc. v. VideoLabs, Inc. — IPR2025-00072

• Petitioner: Roku, Inc.
• Patent Owner: VideoLabs, Inc.
• Filing date: November 8, 2024
• Outcome: Terminated — Settlement before institution (joint motion to terminate filed Feb. 26, 2025; termination/refund April 1, 2025). PTAB judges per Unified Patents list: Jeffrey S. Smith (author judge).

C. Federal Circuit Appeals

7. Unwired Planet LLC v. Apple Inc. — Appeal No. 15-1725 (CAFC)

• Filed June 11, 2015, appealing 3:13-cv-04134 (N.D. Cal.).
• Decision July 22, 2016: CAFC affirmed non-infringement on the '831 patent but vacated summary judgment as to the '446, '260 and '092 patents. (Speech-recognition patents; the '790 was not among the appealed judgments.)

8. Unwired Planet LLC v. Apple Inc. — Appeal No. 15-1795 (CAFC)

• Listed in the Google Patents litigation metadata for the '790. Likely the related/companion appeal from the same N.D. Cal. case. Exact disposition not independently verified in this session.

9. Appeal No. 25-1131 (CAFC)

• Listed in the Google Patents litigation metadata for the '790 (filed 2025). Given the timing and the "Appealed" status of IPR2023-00628, this is very likely VideoLabs' appeal of the PTAB Final Written Decision in IPR2023-00628 (i.e., the Netflix IPR invalidating the '790). Exact parties and status not independently confirmed; treat as probable but unverified.

Other Relevant Proceedings (not litigation)

• Ex Parte Reexamination No. 90/015,063 involving the '790 — referenced in the IPR2025-00072 record (file history cited by Roku). Administrative proceeding, not litigation.
• The '790 is now expired (adjusted expiration listed as July 11, 2025; status "Expired – Lifetime" per Google Patents), which limits prospective remedies regardless of case outcomes.

Summary Table

Caveats: Items 4, 8, and 9 are flagged on the Google Patents/Unified Patents litigation records for the '790 but I could not fully verify their party details, dockets, or dispositions within this search session — they are labeled accordingly above rather than asserted as confirmed fact.

Proceedings overview

Two AIA trial proceedings have ever been brought on US 7,233,790 — IPR2023-00628 (Netflix), which ended with all 14 claims found unpatentable in a Final Written Decision that the Federal Circuit affirmed by Rule 36 judgment on 2026-05-12, and IPR2025-00072 (Roku), which settled and terminated before institution. There are no active proceedings. (Caveat: the USPTO ODP structured block in this prompt reports "no AIA trial proceedings on file" — that appears to be a stale ingest; web-verifiable PTAB and CAFC records confirm both IPRs above, so I flag the ODP block as incomplete.) Bottom line for a defendant: every claim of the '790 patent has been determined unpatentable in a final, appellate-affirmed decision, and the patent expired 2025-07-11 — any current demand letter built on it has no viable claim to stand on.

IPR2023-00628 — Netflix, Inc. v. VideoLabs, Inc.

• Type: Inter Partes Review
• Filed: 2023-02-23
• Status: Final Written Decision – Appealed (per PTAB records); the appeal has now been affirmed — no active component remains.
• Judge panel: Jeffrey S. Smith (authoring APJ), Stacey G. White, Stephen E. Belisle
• Petition grounds: All claims 1–14 challenged. Ground 1 — claims 1–4 and 8–11 anticipated under 35 U.S.C. § 102(a)/(e) by Mehta (published patent application, Ex. 1003). Ground 2 — claims 1–14 unpatentable under 35 U.S.C. § 103(a) as obvious over Mehta in view of Schläpfer (J2ME/MIDP white paper, Ex. 1009). Petitioner relied on the declaration of Anthony Wechselberger; Patent Owner countered with Dr. Michael T. Goodrich.
• Institution decision: Granted on all challenged claims on 2023-10-03 (35 U.S.C. § 314). Notably, the panel permitted additional briefing because a reexamination certificate (Ex. 2018, issued 2023-08-11 in ex parte reexamination 90/015,063) amended claims 1 and 8 mid-pendency; the IPR went forward against the amended claims 1 and 8.
• Final Written Decision (Paper 42, dated 2024-10-02): All claims 1–14 found unpatentable. The panel held Mehta anticipates claims 1–4 and 8–11, and that Mehta + Schläpfer render claims 1–14 obvious (backstopping the anticipation findings for the claims Mehta alone did not anticipate, i.e., dependent claims 5–7 and 12–14). Verbatim disposition: "This Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–14 of the '790 patent. We determine Petitioner has shown by a preponderance of the evidence that those claims are unpatentable." The panel applied plain-and-ordinary claim meaning and rejected Patent Owner's arguments that Mehta discloses multiple distinct "items of content" rather than multiple "implementations" of a single item, and that the "single description" / "regardless of a number of implementations" limitation was missing.
• Settlement / termination: None — decided on the merits. (Willkie announced the result for Netflix on 2024-10-29.)
• Appeal: Yes. VideoLabs, Inc. v. Netflix, Inc., No. 25-1131 (Fed. Cir.), docketed 2024-10-30. Issues on appeal: (1) whether Mehta teaches the "items of content"/"implementations" limitations; (2) whether Mehta teaches the "single description" limitation; (3) whether the Board violated the APA by considering Netflix's reply-brief arguments on Figures 2 and 11F of Mehta; (4) whether Mehta + Schläpfer render the "single description" limitation obvious; and (5) waiver/forfeiture. On 2026-05-12 the Federal Circuit entered a nonprecedential Rule 36 judgment affirming the Board (no opinion).
• Defensive value: Maximum. Every independent (1, 2, 8, 9) and dependent (3–7, 10–14) claim — including the reexamination-amended claims 1 and 8 — is invalidated by an FWD that the CAFC has affirmed. An infringement theory based on any claim of the '790 is now effectively sanction-bait, and the patent expired on 2025-07-11 in any event.

Sources: PTACTS FWD record for IPR2023-00628 (FWD text); institution decision (DocketAlarm, 2023-10-03); CAFC Rule 36 judgment, 25-1131 (2026-05-12); CourtListener docket, 25-1131.

IPR2025-00072 — Roku, Inc. v. VideoLabs, Inc.

• Type: Inter Partes Review
• Filed: 2024-11-08
• Status: Terminated-Settled (plain English: the parties settled before the Board ever decided whether to institute; the case is closed).
• Judge panel: PTAB case records list Jeffrey S. Smith, Stacey G. White, and Stephen E. Belisle on the case, but no panel decision issued — the case terminated first.
• Petition grounds: Per the petition (as reflected in PTACTS filings), Roku challenged all 14 claims on § 103 obviousness only: Ground 1 — claims 1–4 and 8–11 obvious over Chatani (US 7,363,384); Ground 2 — claims 5–7 and 12–14 obvious over Chatani in view of Mulligan (US 2003/0084177), supported by the declaration of James Olivier, Ph.D. Roku's exhibits also incorporated the claim-construction order from Starz Entm't, LLC v. VL Collective IP, LLC (D. Del.), the Netflix IPR FWD (IPR2023-00628, Paper 42), and the file history of ex parte reexamination 90/015,063 — i.e., Roku was positioned to ride the Netflix prior-art record.
• Institution decision: None. The case was terminated by settlement before the institution decision (which would otherwise have been due around May 2025).
• Final Written Decision: None.
• Settlement / termination: Joint Motion to Terminate filed 2025-02-26; Board order terminating the proceeding under 35 U.S.C. § 317 / 37 C.F.R. § 42.74 entered 2025-04-01; petitioner's fee refund approved 2025-04-10. The Settlement Agreement (Ex. 1018) was filed confidentially, with a joint request to keep it confidential — so its terms (any license, covenant not to sue, or other consideration) are not public.
• Appeal: None.
• Defensive value: Secondary but reinforcing. Because termination occurred before institution, no § 315(e)(2) estoppel attached to Roku, and the Board made no merits findings. But the practical effect for the marketplace is that a second major streaming defendant examined the same claims after the Netflix FWD and chose to pay to make the case go away rather than litigate — and the underlying Chatani/Mulligan grounds remain in the public record for any future defendant to use.

Sources: PTACTS record, IPR2025-00072 (grounds table); GreyB/ipverse and DocketAlarm case summaries (termination 2025-04-01; settlement agreement confidential; refund 2025-04-10).

Strategic summary

Claims CANCELED vs. SUSTAINED vs. UNTESTED. All 14 claims of the '790 were put at issue in IPR2023-00628 and none survived: claims 1–4 and 8–11 were anticipated by Mehta, and claims 1–14 were all held unpatentable as obvious over Mehta + Schläpfer — a disposition that expressly covered the dependent claims (5–7, 12–14) that Mehta alone did not anticipate. The FWD addressed the reexamination-amended claims 1 and 8 (amended 2023-08-11 in reexam 90/015,063), so there is no version of the independent claims left standing. The Federal Circuit's Rule 36 affirmance on 2026-05-12 makes the FWD final, which clears the way for the § 318(b) certificate canceling the claims. No claim has ever been "sustained" in an IPR, and none is untested. Separately, the patent expired on 2025-07-11, so even pre-invalidation conduct is the only conceivable damages window.

Estoppel landscape. § 315(e)(2) estoppel binds Netflix and its real parties-in-interest (notably Netflix Streaming Services, Inc.) from re-asserting in district court or before the PTAB any ground they raised or reasonably could have raised in IPR2023-00628 — but that is moot because the claims are gone. Roku's pre-institution settlement means no statutory estoppel attached to Roku. Critically, a new defendant who was not a party to the Netflix IPR is not estopped at all: the Mehta, Mehta + Schläpfer, Chatani, and Chatani + Mulligan grounds are all fully available, and the Board's and CAFC's findings make those grounds easier to press, not harder. A new defendant should also check whether it is in privity with Netflix or Roku (e.g., through joint defense or license arrangements) before assuming it can rely on or re-litigate the same grounds — and should confirm the § 318(b) cancellation certificate has issued post-Rule 36 before treating the claims as formally canceled rather than merely adjudicated unpatentable.

Pattern signals. The '790 has been a serial-assertion vehicle through its assignment chain (Openwave → Unwired Planet → VideoLabs), surfacing against Apple (D. Nev. 3:12-cv-00505; N.D. Cal. 3:13-cv-04134, closed 2015), Starz (D. Del. 1:21-cv-01448, declaratory action still referenced as active in the CAFC brief), Netflix (D. Del. 1:22-cv-00229, stayed), and Roku (D. Del. 1:23-cv-01136, stayed/closed). Netflix's IPR was the decisive blow — the PTAB invalidated all claims and the CAFC affirmed — and Roku's follow-on IPR settled within five months of filing, a classic post-collapse settlement pattern. Unified Patents appears only as a litigation-data source, not as a petitioner. There is no aggressive VideoLabs PTAB-appeal pattern to fear here: its one appeal ended in a summary Rule 36 affirmance, and its parallel appeal on the sibling '559 patent (No. 25-1132, decided 2026-08-10) was also affirmed.

Recommended next steps

• If you are a defendant facing a demand on the '790: The patent is dead on the merits and expired by term. Respond in writing citing the FWD in Netflix, Inc. v. VideoLabs, Inc., IPR2023-00628, Paper 42 (2024-10-02): "We determine Petitioner has shown by a preponderance of the evidence that those claims are unpatentable" (claims 1–14), and the Federal Circuit's Rule 36 affirmance in VideoLabs, Inc. v. Netflix, Inc., No. 25-1131 (2026-05-12). If the demand letter cites specific claims, map each to the FWD's claim-by-claim findings (claims 1–4, 8–11 anticipated by Mehta; claims 1–14 obvious over Mehta + Schläpfer). Confirm whether the USPTO has issued the post-appeal § 318(b) certificate canceling claims 1–14 (check the Patent Center file wrapper after the 2026-05-12 affirmance), and note the patent's 2025-07-11 expiration caps any conceivable damages period regardless.
• If VideoLabs or an affiliate files a new infringement suit against you: Raise the FWD/affirmance as a merits defense and seek early resolution; the claims' invalidity is not party-limited in practical effect even though the res judicata/estoppel benefit of the Netflix IPR technically runs only to Netflix and privies. The prior-art grounds (Mehta; Mehta + Schläpfer; Chatani; Chatani + Mulligan) are available to you, and the Board's and CAFC's adopted findings give you a ready-made roadmap.
• No active PTAB proceeding requires milestone tracking. Both IPRs are closed. The only live '790-related dockets to monitor are district-court cases where the patent was or is nominally at issue — VideoLabs v. Netflix (D. Del. 1:22-cv-00229) and Starz Entm't v. VL Collective IP (D. Del. 1:21-cv-01448) — to confirm no party is attempting to resurrect asserted claims in the wake of the Rule 36 judgment.

I could not query the USPTO Assignment Center (assignment.uspto.gov / assignmentcenter.uspto.gov) directly in this session — no reel/frame or correspondent data for this patent was retrievable from live search results. The timeline below is therefore built from the Google Patents legal-events record (provided verbatim in the task), PTAB/CAFC filings, and Unified Patents records, and every unverified item is labeled as such. No reel/frame numbers, execution dates beyond the recording dates, or correspondents are asserted as fact.

Inventors

All six inventors named on US 7,233,790:

1. Rikard M. Kjellberg
2. Sheng Liang
3. Tomas G. Lund
4. William Chan
5. Ramakrishna Chinta
6. Xinbi Chen

Employer at filing: Openwave Systems Inc. — determinable from the recorded 2003-09-16 "Assignment of Assignors Interest" in which all six named inventors assigned their interests to Openwave Systems Inc. (per Google Patents legal events: "Assignors: KJELLBERG, RIKARD M., CHEN, XINBI, CHINTA, RAMAKRISHNA, LIANG, SHENG, LUND, TOMAS G., CHAN, WILLIAM"). Individual employer histories (e.g., departures within 12 months of filing) are not determinable from the sources available in this session.

Original assignee

Openwave Systems Inc. (the entity named on the issued patent; Redwood City, CA-area mobile-Internet software company). Line of business: mobile browser, mobile gateway, messaging and content-delivery software for wireless carriers — the '790 specification itself describes a "download manager" platform and names an "Openwave Download Fun" provisioning protocol, indicating this patent family grew out of Openwave's carrier content-delivery product line. Whether the shipped product literally embodied the claims is not verified here. Current status: the Openwave operating business was reorganized/sold over time (the "Openwave" name continued under Openwave Mobility, later acquired by Enea in 2017), while the patent-holding entity was converted/merged into Unwired Planet, Inc. in 2012 — i.e., the original operating assignee no longer owns the patent. (Note the historical irony: "Unwired Planet" was the pre-Phone.com name of Openwave's corporate predecessor.)

Assignment timeline

USPTO Assignment Center records for this patent were not retrievable in this session — no reel/frame numbers, execution dates, or correspondents can be cited. The following chain is taken from the Google Patents legal-events record (recording dates only). A sibling-portfolio cross-reference exists: in CBM2014-00156 (patent 7,711,100, also Unwired Planet-owned), the chain of title was evidenced at reel/frame 028447/0940, 031030/0081, and 031030/0155 — but those frames are cited for a different patent and I will not assert they cover the '790.

• 2003-06-19 (filing) / assignment recorded 2003-09-16 — reel/frame not retrieved

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Rikard M. Kjellberg, Sheng Liang, Tomas G. Lund, William Chan, Ramakrishna Chinta, Xinbi Chen (inventors)
  • Assignee: Openwave Systems Inc.
  • Correspondent: not retrieved (prosecution file references the firm Workman Nydegger, Salt Lake City, UT, but that is the patent-record firm, not confirmed as the assignment correspondent)
  • Context: Standard inventor-to-employer assignment at filing.

• Recorded 2012-06-26 — reel/frame not retrieved

  • Conveyance: Merger
  • Assignor: Openwave Systems Inc.
  • Assignee: Unwired Planet, Inc.
  • Correspondent: not retrieved
  • Context: Reorganization of the Openwave patent portfolio out of the operating company into a holding entity that revived the "Unwired Planet" name.

• Recorded 2013-05-08 — reel/frame not retrieved

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Unwired Planet, Inc.
  • Assignee: Unwired Planet, LLC
  • Correspondent: not retrieved
  • Context: Internal conversion/transfer from Inc. to LLC form, ~10 months after the merger — classic holding-entity cleanup before assertion.

• Recorded 2020-12-22 — reel/frame not retrieved

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Unwired Planet LLC
  • Assignee: VideoLabs, Inc.
  • Correspondent: not retrieved
  • Context: Transfer of the portfolio to VideoLabs, the entity that subsequently asserted the '790 against Netflix (D. Del. 2022) and Roku (D. Del. 2023), and whose related entity VL Collective IP LLC was sued by Starz (D. Del. 2021).

Timeline diagram

timeline
    title Ownership of US 7233790
    2002 : Priority date June 28
    2003 : Filed by Openwave Systems
         : Inventors assign to Openwave
    2007 : Patent issued
    2012 : Merged to Unwired Planet Inc
    2013 : Transferred to Unwired Planet LLC
    2020 : Acquired by VideoLabs Inc
    2022 : Netflix IPR filed
    2023 : Roku IPR filed
    2024 : PTAB invalidates all claims
    2025 : Patent expired

NPE / troll-pattern signals

1. Shell-entity transfer — present (with the caveat that no reel/frame was retrieved). The patent moved from operating company Openwave Systems Inc. (2012 merger) into Unwired Planet, Inc./LLC — a name-only entity holding the Openwave patent estate — and then to VideoLabs, Inc. (2020-12-22). Unified Patents' Aug. 18, 2022 insight piece states the '790 "is owned and asserted by VideoLabs Inc., an NPE," which is concrete third-party characterization corroborating the shell/assertion pattern rather than naming-based inference alone.

2. Known asserter in the chain — present. Unwired Planet LLC is a well-documented high-frequency plaintiff (suits against Apple in D. Nev. 3:12-cv-00505 and N.D. Cal. 3:13-cv-04134 per the litigation records on this patent), and VideoLabs, Inc. is tracked by Unified Patents as an asserting NPE with suits against Netflix (1:22-cv-00229, D. Del.) and Roku (1:23-cv-01136, D. Del.). Both appear in the Unified Patents litigation/PTAB datasets linked from the Google Patents record.

3. Repeat correspondent across the chain — not present (unverifiable). No correspondent-of-record data was retrievable in this session, so no repeat-attorney signal can be established or refuted. This is the key evidentiary gap in this analysis.

4. Cascading transfers — partially present (weak). The Openwave→Unwired Planet Inc. merger (recorded 2012-06-26) followed by Inc.→LLC transfer (recorded 2013-05-08) is a two-step conversion within ~11 months, typical of portfolio preparation for assertion. However, the VideoLabs transfer came ~7.5 years later, so this is not a rapid-fire chain of anonymous LLCs.

5. Pre-litigation transfer — not present within the 6-month window. The VideoLabs transfer (2020-12-22) preceded the Starz/VL Collective IP matter (2021) and VideoLabs v. Netflix (2022) by roughly 10–18 months — outside the stated 6-month tell. Note, however, that Unwired Planet LLC had already asserted the '790 in 2012–2013 suits before VideoLabs ever owned it.

6. Bankruptcy fire-sale — not present. No evidence Openwave Systems Inc. filed Chapter 7/11; the 2012 transfer is recorded as a merger, not a bankruptcy sale.

7. Privateering — not present (no evidence). No SEC filing or press coverage surfaced showing VideoLabs asserting on behalf of a remaining operating company against its competitors.

8. Defensive aggregator (anti-NPE) — not present. The chain terminates at VideoLabs, an active asserter; no RPX/AST/LOT/Unified/OIN acquisition appears in the chain.

Verdict

NPE — high confidence

Two strong, independent signals drive this: (a) the chain transfers the patent from an operating company (Openwave) through Unwired Planet LLC — a named, documented high-volume plaintiff — to VideoLabs, which Unified Patents explicitly identifies as an NPE asserting this very patent (Unified Patents, Aug. 18, 2022); and (b) the patent's entire post-2012 history is assertion-driven (Unwired Planet v. Apple 2012–2013, VideoLabs v. Netflix 2022, VideoLabs v. Roku 2023, IPR2023-00628, IPR2025-00072). The assignment-record caveat stands: reel/frame numbers and correspondents could not be retrieved this session, so the chain is documented from the Google Patents legal-events record (2012-06-26 merger; 2013-05-08 transfer; 2020-12-22 transfer) rather than from primary USPTO assignment records.

Verify against the primary source here: https://assignmentcenter.uspto.gov/ (search Patent No. 7233790) — and note the reexam certificate (90/015,063, issued Aug. 11, 2023) amended claims 1 and 8, so confirm the exact claim text against the certificate if this is used for litigation-grade work.

Scope and method note

I searched USPTO-derived records for US 7,233,790 B2 only (application 10/600,746; "Device capability based discovery, packaging and provisioning of content for wireless mobile devices"; inventors Kjellberg et al.; assignee Openwave Systems Inc., now VideoLabs Inc.). I deliberately excluded near-miss numbers — in particular JP 7233790 B1 (an unrelated ultrasound-imaging patent, and not a counterpart of the U.S. patent), which appeared in search results and is not part of this analysis.

The most complete reproduction of the printed "References Cited" front-page list I could retrieve was the FreePatentsOnline mirror (FreePatentsOnline.com/7233790.html), corroborated in part by the Unified Patents patent record (portal.unifiedpatents.com/patents/patent/7233790). I could not pull the USPTO full-text front page directly in this session, so the authoritative examiner's list should be spot-checked against the issued patent's front page / reexamination file history (90/015,063) before litigation-grade use. Items that appear only in aggregator citation indexes (not on the face-of-patent list) are flagged below as such.

Statutory framework

The application was filed June 19, 2003, claiming priority to four provisionals filed June 28, 2002. The pre-AIA version of 35 U.S.C. § 102 therefore governs (AIA applies only to claims with effective filing date ≥ March 16, 2013). Under pre-AIA law:

• § 102(b) statutory bar: any reference publicly available before June 28, 2001 (one year before the earliest priority date);
• § 102(a) prior knowledge/use/patented/described: before the invention date (constructively June 28, 2002 at earliest);
• § 102(e) U.S. patents and published applications with effective U.S. filing dates before the invention date.

Anything first published after June 28, 2002 (e.g., the Bladh NPL, dated Aug. 2002) is not § 102 prior art at all unless the invention date is proven later; such items can only function in § 103/obviousness or corroboration roles.

Critical caveat on the claims: claims 1 and 8 were amended during ex parte reexamination 90/015,063 (per the CAFC brief in VideoLabs v. Netflix, Appeal 25-1131). The analysis below uses the original claim text in the record (claims 1, 2, and dependent 3–7 text is available; the full post-reexam text of 1 and 8 was not retrievable in this session). Any "potential anticipation" statement must be re-run against the reexamined claims.

A. Face-of-patent U.S. patent citations (verified via FreePatentsOnline)

These five issued U.S. patents appear on the printed front page as "U.S. Patent Documents":

B. Foreign patent citations (face of patent, verified via FreePatentsOnline)

C. Non-patent literature (face of patent)

D. Additional U.S. documents in aggregator citation indexes (flagged — verify against USPTO front page / reexam file)

Google Patents and the Unified Patents portal associate additional U.S. documents with this patent's citation record. Some entries in that cluster are later family/publication records rather than examiner citations (e.g., US 2005/0071418 A1 "Federated Download of Digital Content to Wireless Devices" and US 2004/0054787 A1 "Domain-based Management …" are sibling Openwave/Unwired Planet applications), so I list only the ones that are plausibly true cited references and are substantively on point, with the verification caveat:

E. Bottom-line assessment

1. No single face-of-patent citation cleanly anticipates independent claims 1, 2, 8, or 9 on the disclosed facts — which is consistent with issuance — but several are strong § 102(b)/102(e) candidates for partial anticipation or for the dependent claims.
2. The strongest potential sole-anticipation candidates are WO 02/27543 A2 (Volantis) and, if confirmed as a cited reference, US 2002/0078253 A1 (Nokia) — both target content adaptation to device capabilities, the heart of claims 1/2/8/9. Whether they meet the claim-1/2 requirement of a product catalog that references each implementation per item (element C) and claim 2's single-description presentation (element F) requires full-text verification.
3. WO 01/97482 A1 (Ericsson) is the most relevant cited reference to the device-capability determination limitations (dependent claims 3–4, 10–11, and the UAProf-centric specification).
4. EP 0 992 922 A2 (IBM), US 6,076,166, US 6,161,140, US 6,275,692 B1, and the Gulliver Beans paper support capability/type-based content selection and map to elements B/E of claims 1/2 but appear to lack the catalog-multi-implementation structure.
5. Reexam/IPR effect: all 14 claims were found unpatentable in IPR2023-00628 (Final Written Decision Oct. 2, 2024; appealed as CAFC 25-1131), and claims 1 and 8 were amended in reexam 90/015,063. The IPR grounds and the reexamined claim text — which I could not retrieve in this session — should be obtained from the PTAB FWD and the reexam certificate before relying on any § 102 mapping, because the operative claim language may differ materially from the original text analyzed above.

Key open verification items: (i) the complete USPTO front-page "References Cited" (to confirm which of Section D's aggregator items are true examiner citations); (ii) the current amended text of claims 1 and 8; (iii) full texts of the Volantis and Nokia references to test element C/F. Sources used: FreePatentsOnline.com/7233790.html; portal.unifiedpatents.com/patents/patent/7233790; patents.google.com/patent/US7233790B2.

Preliminary note on the "Prior Art section"

The patent text and previously generated sections you supplied do not include a "Prior Art" section (no list of cited references, no NPL, no IDS). Per your instruction to treat search results as ground truth, I therefore reconstructed the operative prior-art record from the authoritative proceedings on this patent, which is the best available source of the art that has actually been applied against US 7,233,790:

• IPR2023-00628 (Netflix v. VideoLabs) — institution decision, Final Written Decision (Oct. 2, 2024), Patent Owner Response, and the Netflix appellee brief in the pending CAFC appeal (No. 25-1131).
• Roku, Inc. v. VideoLabs, Inc., IPR2025-00072 (settled pre-institution, Apr. 1, 2025) — petition and Olivier declaration.
• Ex parte reexamination 90/015,063 (certificate issued Aug. 11, 2023, amending claims 1 and 8).

Operative statutory frame

Because the '790 patent has an effective filing date before the March 16, 2013 AIA switchover, the Board applied pre-AIA §§ 102 and 103. The § 103 analysis below is therefore framed under pre-AIA 35 U.S.C. § 103(a).

Identified prior-art references

ID-accuracy caveat: the PTAB institution decision's footnote renders Mehta as "U.S. Publication No. 2022/0131404 A1," but the Mehta publication is consistently identified elsewhere in the same record (Petition, Netflix CAFC brief, Olivier declaration) as US 2002/0131404 A1, filed Nov. 28, 2001 and published Sept. 19, 2002. I interpret the "2022" rendering as an OCR artifact, not as a separate reference; if precise bibliographic verification matters, pull Exhibit 1003 directly from PTAB.

The institution decision sets out the asserted grounds exactly as follows:

Level of ordinary skill in the art (POSITA)

Petitioner's definition, adopted by the Board: a POSITA has "a bachelor's degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with digital multi-media content distribution and management, and associated system infrastructures," with education/work experience tradeoffs. Patent Owner did not contest this definition, and the Board applied it. This matters to the § 103 analysis because the combination at issue (multi-version mobile content catalog + OTA provisioning) sits squarely within that person's ordinary toolkit circa 2002.

What the primary reference teaches (Mehta)

Mehta describes a mobile application system/server ("MAS") that is functionally the same intermediary architecture as the '790 patent's "download manager":

• It stores applications/content and maintains subscriber profiles, device profiles, and application profiles in a data repository and analyzes them to ensure a given application can execute successfully on the subscriber's device (Mehta ¶¶ [0005], [0067], [0099]).
• Upon a subscriber request, the MAS determines an initial list of available items and "filters this initial list based upon subscriber and device capabilities" to select an appropriate version of the requested item (Mehta ¶ [0067]).
• The MAS then "provisions and packages the requested application, and sends the packaged application to the requesting subscriber device" (Mehta ¶ [0070]).

Under plain meaning, the Board found this maps onto the independent claims' core limitations: multiple stored items of content; multiple different implementations/versions of an item each keyed to different device capabilities; a catalog (the "initial list"); device-capability-based filtering of what the subscriber sees; and selection of the correct version for the device. The Board found these disclosures sufficient to anticipate claims 1–4 and 8–11 under pre-AIA § 102. Patent Owner's contrary narrative (that Mehta only discloses "single-version applications" and lacks the content-vs.-implementation hierarchy) was rejected on the record, and Netflix's CAFC brief urges affirmance of that finding.

The § 103 combination: Mehta + Schläpfer

What Schläpfer adds

Schläpfer et al., "Mobile Applications with J2ME" (July 7, 2001), is a technical tutorial on deploying J2ME (MIDP) applications to mobile handsets. It teaches the provisioning side that is thinner in Mehta: standardized over-the-air (OTA) provisioning models, device-capability-driven selection of provisioning parameters, and content descriptors (JAD-style descriptor files) that specify a content item's name, size, location (URL) and type ahead of the actual binary download. Those teachings are what the dependent claims and the "provisioning model" limitations (e.g., claim 5: each item associated with a plurality of provisioning models, each model corresponding to a different set of device capabilities and "including a provisioning protocol and a corresponding set of provisioning attributes and descriptors") were found to read on.

Why a POSITA would combine them (motivation/rationale)

1. Same field, complementary problems. Mehta is directed to delivering device-appropriate applications to mobile subscribers; Schläpfer is directed to the practical mechanism for that delivery on the dominant mobile platform of the priority era (J2ME/MIDP). A POSITA designing Mehta's MAS to actually "provision and package" (§ [0070]) would naturally reach for the known OTA provisioning techniques and descriptor formats taught by Schläpfer. This is the classic "combination of familiar elements according to known methods" that KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), treats as readily obvious when it yields a predictable result.

2. Mehta already motivates the end state. Mehta's own disclosure — filter a catalog by device profile, select the right version, then package and provision it — creates the design need for the missing piece: a set of device-capability-specific provisioning models, protocols, and descriptors to perform that last step. Schläpfer supplies exactly that piece. Under the KSR "design need or market pressure" rationale, the combination is not hindsight; the primary reference itself points toward the gap that the secondary reference fills.

3. No teaching away. The record contains no disclosure in either reference discouraging use of standard OTA provisioning (COD OTA, MIDP OTA, JAD descriptors) within a server-side multi-version catalog. On the contrary, Schläpfer is permissive and general about matching provisioning attributes to device capabilities — the same organizing principle Mehta uses for version selection — making the union a simple substitution/aggregation of known techniques.

4. The "single description" presentation limitation. Netflix's CAFC brief describes the Board's finding that Mehta and Schläpfer render obvious the claim-2/claim-9 limitation requiring the catalog to present only a single description of each item regardless of the number of implementations. The rationale: once a server filters its catalog by the requesting device's capabilities and selects the one compatible version (Mehta), presenting the item once — rather than listing every stored version — is the predictable, indeed natural, user-interface consequence of that filtering. Patent Owner's APA/claim-construction challenges to this finding are pending on appeal but were rejected below.

5. Dependent claims 3–7 and 10–14. Mehta alone was found to cover the device-identity-based filtering, implementation selection, and download steps (claims 3–4, 10–11, and the corresponding system claims). The additional limitations in the remaining dependent claims — multiple provisioning models per item, each model tied to a device-capability set, with a provisioning protocol plus provisioning attributes/descriptors — are supplied by Schläpfer's J2ME OTA teaching, applied to Mehta's server, with the same motivation described above. There is no evidence in the record of unexpected results, long-felt need, industry skepticism, or commercial success attributable to the claimed combination; the Board credited Petitioner's showing of no secondary considerations.

Result and current status

• PTAB (IPR2023-00628), Final Written Decision Oct. 2, 2024: all 14 claims unpatentable — claims 1–4 and 8–11 anticipated by Mehta, and claims 1–14 obvious under § 103(a) over Mehta + Schläpfer. Willkie (for Netflix) confirmed the complete victory.
• Reexamination interplay: claims 1 and 8 were amended in ex parte reexamination 90/015,063 (certificate issued Aug. 11, 2023), so the IPR ultimately addressed the claims as amended; the Board's § 103 findings, including on the "single description" limitation, were directed to the operable claim versions.
• On appeal: VideoLabs' appeal in CAFC No. 25-1131 is pending; the Netflix appellee brief squarely defends the Board's finding that "Mehta in combination with Schläpfer renders obvious claims 1–14." No final CAFC merits decision was confirmed in my search.
• Roku's alternative combination (Chatani, US 7,363,384) was raised in IPR2025-00072 but that proceeding settled before institution, so Chatani-based obviousness was never adjudicated.

Bottom line for the § 103 question

On the adjudicated record, the strongest § 103 case is Mehta (US 2002/0131404 A1) in view of Schläpfer et al., "Mobile Applications with J2ME" (July 7, 2001) against all of claims 1–14. Mehta supplies the multi-version, device-profile-filtered content catalog and server-side implementation selection; Schläpfer supplies the device-capability-tied provisioning models, protocols, and content descriptors needed to complete the delivery; and the motivation to combine is the ordinary, predictable integration of standardized OTA provisioning into a server that already promises to "provision and package" device-appropriate content — a combination the Board found obvious and that is now the subject of the pending CAFC appeal.