US 7318086

I'll run targeted searches for this exact patent number.

Let me pull the claim text and check for litigation/docket records.

US 7,318,086 — Analyst Summary

Search scope note: Searches were run against Google Patents, Justia Patents, FreePatentsOnline, USPTO PTAB/PTACTS filings, and litigation reporting. Results did surface unrelated documents sharing numbers or fragments of numbers (e.g., US 2018/0059805 "Data output device," US 12,147,856, US 2002/0087620, US 9,600,410, SU 1822876, WO 2012/002931). Those are not US 7,318,086 and are excluded below.

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1. Bibliographic data

Minor discrepancies across sources, noted rather than corrected:

• Justia lists Ms. Liu's residence as Vancouver, WA; FreePatentsOnline lists "Liu, Christina Ying (Freemont, CA)" in a related family member's record.
• Justia states the assignee as Flexiworld Technologies, Inc. (Vancouver, WA); a related family record shows Flexiworld Technologies, Inc. (Portland, OR).
• The application number appears variously formatted as US 09/992,420 and US09/992,420.

2. Abstract

I could not retrieve the verbatim abstract text from any of the sources returned — the Google Patents capture I was given omits the Abstract section, and the search snippets only exposed the abstract's generating-software tags (e.g., "rendering Methods 0.000 claims abstract description 19"), which is not the abstract text. I am therefore not quoting an abstract, to avoid fabricating one.

The gist, drawn from the specification's own summary/Definitions section (which I do have verbatim), is: the invention relates to providing digital content to an output device, and in particular to pervasive output in which an information apparatus can output digital content to an output device regardless of the processing power, display screen size and memory space of the information apparatus — without the user having to pre-install a device-specific driver, and by shifting the driver/conversion work to a server.

3. Plain-language overview of the independent claims

Important caveat on claim text. I could retrieve only fragments of the granted claim set (via Justia's page for patent 7318086), plus the full pre-grant claim set of publication US 2002/0078149 A1. These two sets are not identical — e.g., claim 44 in the published application is drafted as "A data output method…," while Justia's grant-page fragment shows claim 44 as "A data output system…comprising: means for…". I have not verified the complete, verbatim granted claim set. Treat the numbering below as provisional.

Based on what I retrieved, the issued patent appears to contain at least three independent claims:

Claim 1 — method (core of the invention). A data output method for rendering, at an output device, output content managed from an information apparatus. In plain terms: the portable device (a) gets a document object describing the content it wants output (the content itself and/or a pointer/reference to it), (b) gets an output device object describing the target output device's attributes (brand/model, languages, formats, capabilities, price, security, etc.), (c) sends those objects to a server application running on a server that is separate from both the information apparatus and the output device, (d) the server generates the device-compatible output data using at least those objects, and (e) the output data reaches the output device so the content is rendered. The point is that the thin client doesn't need the driver — the server does the conversion.

Claim 10 — method including device discovery. A related independent method in which the information apparatus discovers one or more output devices available to render the content, selects one (or more) of them, and then proceeds with the object/server/output-data flow. Dependent claims I retrieved flesh this out: satisfying output-service requirements such as price, quality of service, availability and default device (claims 15–16); uploading at least partial output device objects from discovered devices (17); rendering that info in the information apparatus for user selection (18); selection based on price/quality/availability/preset preference/first-available/default (20), on user input (21), or automatic selection (22).

Claim 44 — system claim (means-plus-function, "A data output system…"). As retrieved, this is drafted in means-plus-function form and combines: means for obtaining a document object; means for obtaining an output device object; means for providing both objects to a server application on a distinct server and generating output data there; means for providing the output data to the output device; an output engine that outputs content to an output medium in accordance with device-dependent output data the engine accepts; and a connection to an output controller that (i) provides at least part of the output device object to the information apparatus, (ii) receives output data from the information apparatus, and (iii) passes output data to the selected output device — with the output controller further including means for providing a user interface for receiving user-implemented modifications of the controller.

Possible additional independent claims. The pre-grant publication contains independent claims directed to data output software in computer readable media (there, claims 52 and 59). Whether the granted patent retains media claims as independent claims, and under what numbers, is not verified. Likewise, claims 2–9, 11–14, 23–43 and the claims after 44 were only partially retrieved; claims 23–43 are all dependent on claim 1 and define job-object attributes, document-object contents (including the content itself or a pointer/reference to it, instructions, software code, pointers to other objects), and output-device-object attributes (identification, services, language, format, payment, security).

Representative dependent-claim subject matter (granted): job objects with output preferences (quality, layout, copies, windows/page, color/grayscale, size); identification attributes (security, authentication, payment, subscription, user ID); job attributes (priority/QoS, status, queuing/cancellation/priority); and output device = printing, display, projection or audio device, with the information apparatus being a portable device.

4. Family and related filings

• Google Patents' family timeline for the '086 patent records a 2010-01-08 priority link to application US 12/684,869 → US RE42725 E1. Flexiworld later litigated a patent identified as RE42,725 (the '725 Patent) in the Lexmark consolidated action. The reissue, titled "Output service over a network," has a filing date of 01/08/2010 and publication date 09/20/2011 in the record I retrieved. Whether RE42,725 is a reissue of the '086 patent itself is uncertain — the titles differ ("System for mobile and pervasive output" vs. "Output service over a network"), and I could not retrieve an authoritative reissue parent linkage. I flag this rather than asserting it.
• Sibling applications filed the same day are referenced in the family's Office Action list: 09/992,183; 09/992,198; 09/992,413; 09/992,417 (and 09/992,420 = this patent). Corresponding publications include US 2002/0078101 (Mobile and pervasive output client device), US 2002/0077980 (Method for mobile and pervasive output), US 2002/0062406 (Output device for mobile and pervasive output), US 2002/0062398 (Controller for mobile and pervasive output), and US 2002/0062397 (Mobile and pervasive output server).
• Later family members identified in the record include US 6,948,? — specifically US 6,948,? is not verified; what the record does show includes US 7,948,577 (Output controller for mobile and pervasive digital content output), US 7,953,818 (Output device and system for rendering digital content), US 8,705,097, US 8,711,408, US 8,964,220, US 10,133,527 and US 2009/0070411 / 2009/0002760.

5. Litigation — including the CAFC 2026 question

• The '086 patent's record carries a family-litigation flag (Darts-ip family 22957058), so the family has been litigated.
• Flexiworld's enforcement campaign that I could document involves other family members, not the '086 patent. Examples found: Flexiworld Technologies, Inc. v. Roku, Inc. (W.D. Tex., Civil Action No. 6:20-cv-00819-ADA and 6:21-cv-00680), with related PTAB proceedings IPR2021-00713, IPR2021-00714, IPR2021-00715 and IPR2022-01112 (Roku, Inc. v. Flexiworld Technologies, Inc., on US 10,140,073); and Flexiworld Technologies, Inc. v. Lexmark International, Inc. (E.D. Ky., 5:22-cv-00098 / 5:22-cv-00097-KKC) — in which the court listed fifteen patents-in-suit, none of which is 7,318,086; the reissue RE42,725 appears instead.
• On the specific request regarding CAFC 2026 dockets: I found no Federal Circuit docket, appeal, or decision citing or involving US 7,318,086 in any of my search results. I must be explicit: my targeted CAFC-docket search did not complete (my tool budget was exhausted on that query), so this is a negative finding within searched sources, not a definitive negative. Given that the '086 patent is recorded as ceased/expired (adjusted expiration 2022-12-26), it is also unlikely to be a live patent-in-suit, and the Flexiworld appellate activity I could see relates to later family members. I cannot confirm any 2026 CAFC activity for this patent.

6. Uncertainty summary

1. Verbatim abstract — not retrieved; not quoted. (Gist given from the specification.)
2. Full granted claim set — only fragments retrieved. Independent claims appear to be at least claims 1, 10 (and/or another discovery-based method claim), and 44; additional independent media claims may exist. Exact independent-claim numbering is unverified.
3. Claim 44's form differs between the pre-grant publication (method) and the grant-page fragment (system, means-plus-function) — I report the grant-page version for the grant and flag the conflict.
4. RE42,725 relationship to the '086 patent — indicated by the record's family/priority timeline but not authoritatively confirmed.
5. CAFC 2026 — nothing found; search of that specific docket source was incomplete.

I'll research litigation involving US patent 7318086. Let me search multiple sources.

Let me search for litigation specifically involving patent 7318086 on dedicated patent litigation databases.

Let me check the Stanford NPE database and search for the specific patent number in litigation.

Summary of my research

I searched for litigation specifically asserting US 7,318,086 B2 ("System for mobile and pervasive output," Flexiworld Technologies, Inc.; inventors William Ho Chang and Christina Ying Liu; filed as US 09/992,420 on 2001‑11‑18; issued 2008‑01‑08; priority 2000‑11‑20).

Important, honest caveat up front: Across the sources I was able to retrieve — Google Patents, docketalarm, dockets.justia.com, the Stanford NPE Litigation Database, the Unified Patents litigation portal, Justia, and USPTO PTACTS (AO 120 filings) — I did not find a complaint that expressly names U.S. Patent No. 7,318,086 as an asserted patent‑in‑suit. Every Flexiworld complaint and case‑readiness report I could pull lists other members of the same family. I cannot represent that no such case exists; I simply could not verify one. Treat the below accordingly.

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What I did find: the Flexiworld Technologies assertion campaign

Flexiworld Technologies, Inc. (William Ho Chang) ran a broad infringement campaign between 2020 and 2026. These are the cases I located. In none of the materials I retrieved was 7,318,086 listed among the patents‑in‑suit — the asserted rights were other family members (e.g., 7,609,402; 10,140,071–073; 10,140,073; 10,481,846; 10,761,791; 10,037,178; 10,768,871; 10,841,798; 11,096,056; 9,965,233; 10,642,576; 10,846,031; 9,042,811; 9,836,259; 8,989,064; 10,346,114; 10,740,066; 11,029,903; and RE42,725).

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Relevance of RE42,725 to 7,318,086 — flag for verification

The one thread that may connect 7,318,086 to actual litigation is RE42,725 (the "’725 Patent"), which Flexiworld asserted against Lexmark (E.D. Ky.). Signals I observed:

• Google Patents' page for US 7,318,086 lists a 2010‑01‑08 "priority" link to application US 12/684,869, published as US RE42,725 E1.
• A FreePatentsOnline page for RE42,725 lists 7,318,086 in its related‑document table.
• The RE42,725 application date (2010‑01‑08) coincides exactly with the two‑year broadening‑reissue window after 7,318,086's 2008‑01‑08 grant.

These are consistent with RE42,725 being a reissue of 7,318,086, but the RE42,725 title I retrieved ("Output service over a network") differs from 7,318,086's title ("System for mobile and pervasive output"), so I cannot confirm the reissue relationship with the confidence this task requires. If RE42,725 is the reissue of 7,318,086, then 7,318,086's subject matter was litigated via RE42,725 in Flexiworld v. Lexmark (E.D. Ky.) — but I could not verify that link, so I am not asserting it as established.

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Bottom line

• Known litigation that expressly asserts US 7,318,086: I found none in the sources searched. If any exists, it was not surfaced.
• Closest verified connection: Flexiworld's 2020–2026 campaign (W.D. Tex., E.D. Tex., E.D. Ky., W.D. Tenn., C.D. Cal., W.D. Wash.) asserting sister patents in the same 2000‑11‑20 priority family; and RE42,725 asserted v. Lexmark, which may be the reissue of 7,318,086 (unverified).
• Google Patents independently flags this patent's family as having litigation ("Family has litigation," Darts‑ip family 22957058).

Recommended next steps to close the gap: pull the full complaint + Local Rule 3‑1 infringement contentions in each Flexiworld case (Lexmark, Roku, Hisense, TCL) via PACER to see whether ’086/RE42,725 is charted; query the Unified Patents litigation portal (portal.unifiedpatents.com/litigation/caselist) and the Stanford NPE database by the specific number; and confirm with the USPTO reissue record for RE42,725 whether its "original patent" is 7,318,086. I was unable to complete those verifications within this session, so I am flagging them rather than filling the gap by inference.

I'll research this systematically. Let me start with broad searches on PTAB activity for this patent.

Let me search more specifically for proceedings against the '086 patent itself and its reissue.

Key lead: RE42,725 appears to be a reissue in this family. Let me pin down its relationship to the '086 patent and any PTAB activity on either.

Proceedings overview

Zero AIA trial proceedings are on file against U.S. Pat. No. 7,318,086. The USPTO Open Data Portal returns no IPR, PGR, or CBM naming the '086 patent, and my web searches surfaced no PTAB petition ever filed against it (active: 0 / claims invalidated: 0 / claims sustained: 0 / settled: 0 / institution denied: 0). The two facts that actually define the defensive posture are different ones: (a) the '086 patent's claim set has never been tested at the PTAB, so no claim has been canceled and no § 315(e)(2) estoppel exists against anyone; and (b) per the Google Patents record, US7318086B2 is Ceased, with an adjusted expiration of 2022-12-26 (patents.google.com/patent/US7318086/en). In other words, a defendant today is not facing a "hardened" patent — it is facing an expired, PTAB-untested patent whose only remaining value is past damages, while the live attack surface has migrated to Flexiworld's later-issued continuations.

No proceedings to report — US7318086

There is no proceeding number, petitioner, panel, institution decision, or Final Written Decision to summarize for this patent. I will not invent one.

Two verification flags before you rely on the absence:

1. Reissue sibling. The '086 record is linked to reissue application 12/684,869, filed 2010-01-08 (exactly two years after the '086 granted on 2008-01-08 — the § 251(d) broadening-reissue window), which granted 2011-09-20 as RE42,725 E1, "Output service over a network" — same inventors (Chang/Liu), same assignee, same 2000-11-20 priority (freepatentsonline.com/RE42725.html; uspto.report/patent/grant/RE42725). On the face of the record that appears to be the reissue of the '086 patent, but I could not confirm the original-patent linkage by primary source, and RE42,725 was itself asserted in litigation (Exhibit 4 to Flexiworld's E.D. Ky. complaint against Lexmark, 5:22-cv-00110). Verify the RE42,725 ↔ '086 linkage in Patent Center before relying on it, and search PTAB E2E for both the patent number and the reissue application.
2. Search coverage. A proceeding that closed years ago or was never indexed by a public aggregator could be missed. The ODP result is the canonical one, but the definitive check is PTAB E2E / PTACTS (ptab.uspto.gov, ptacts.uspto.gov).

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Family-sibling PTAB activity (context only — no estoppel effect on the '086 patent)

Estoppel under § 315(e)(2) is patent-specific, not family-wide. Everything below is offered only as pattern evidence; none of it cancels, narrows, or immunizes a claim of the '086 patent.

IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc.

• Type: Inter Partes Review — U.S. Pat. No. 9,836,257 (not the '086 patent)
• Filed: 2022-04-08 (Docket Alarm docket)
• Status: Final Written Decision issued — petitioner lost. Paper 41 is styled "Final Written Decision Determining No Challenged Claims Unpatentable; Dismissing Patent Owner's Revised Motion to Amend" under 35 U.S.C. § 318(a).
• Judge panel: Brent Dougal, Christopher Ogden, Terrence McMillin (per Docket Alarm docket entry)
• Petition grounds: claims 27 and 28, on two grounds (both instituted)
• Institution decision: instituted. Flexiworld pressed two § 314(a) discretionary-denial theories — that Unified's unidentified subscribers created an ethical conflict, and that Unified "does not practice the '257 Patent and has no potential liability for infringement." The Board rejected both, reasoning that "filing a petition is generally open to any 'person who is not the owner of [the challenged] patent,' 35 U.S.C. § 311(a)," and that a petitioner's own non-practice is "irrelevant, in terms of promoting the efficiency of Congress's statutory scheme."
• Final Written Decision: no challenged claims held unpatentable. Claims 27 and 28 survived; the patent owner's revised motion to amend was dismissed. Oral hearing transcript: 2023-09-22.
• Appeal: not verified in my searches.
• Defensive value: This is the single most useful family datapoint for a defendant. A defensive aggregator (Unified Patents) took a Flexiworld continuation to a Final Written Decision and lost. Do not assume a family member will fall to a well-funded IPR campaign. Institution decision text: bannerwitcoff.com IPR2022-00775 reproduction; docket entries via Docket Alarm, PTAB, patent 9,836,257.

Roku, Inc. v. Flexiworld Technologies, Inc. — a five-plus-petition campaign

Roku filed serially against Flexiworld's continuation patents (all backed by W.D. Tex. suits, incl. 6:20-cv-00819, 6:21-cv-00680, 6:21-cv-00767):

• A concurrent Roku petition against U.S. Pat. No. 9,042,811 was announced in the '073 petition; I did not confirm its proceeding number.
• Partial-institution signal (IPR2021-00713/-00714): from Patent Owner's hearing demonstratives, the Board denied Ground 1 because Yamaguchi was held not to be prior art and denied Ground 3 because "Ikonen's 'inquiry response' is not a 'broadcast or advertisement of availability'" — but instituted on Ground 2 (Ikonen + Gu). Independent claim 7 in that set is marked with an asterisk in the demonstratives, suggesting feed-forward status I could not fully resolve.
• FWD outcomes for the 2021 Roku IPRs: not verified in my searches. Do not assume invalidation.

Lexmark International, Inc. v. Flexiworld Technologies, Inc.

• Petition on U.S. Pat. No. 9,965,233 — Grounds: claims 1, 2, 4, 5, 7, 9, 11, 12, 13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, 61 obvious over Keeney (U.S. 6,748,471); claims 47, 48, 61 over Keeney + Vatland (PTACTS 1553926).
• Petition on U.S. Pat. No. 7,609,402 — cancellation of claims 1–21 and 23–37, split into a "division-of-labor" claim set (1, 9, 23, 28 + dependents) and an authorization-check set (13, 33 + dependents) (PTACTS 1553925).
• Proceeding numbers, institution decisions, and FWDs: not confirmed from my searches.

Other

• A further petition (PTACTS 1548112) attacks a Flexiworld continuation (referred to as the "'903 patent"; claims 1, 8 and 15) jointly on § 112 written-description (relying on Rivera and arguing the claims "eliminate the information apparatus from the invention as it was described") and § 101/Alice grounds. I could not identify the exact patent number or proceeding number — treat this as a lead to chase, not a citation.
• No ex parte reexamination or PGR on the '086 patent surfaced either.

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Strategic summary

Claim status on US7318086: everything is UNTESTED; nothing is CANCELED or SUSTAINED. Because no AIA trial was ever filed against the '086 patent, there is no claim-level record to quote — no independent claim canceled, no dependent claim upheld, no certificate issued. All claims (and, if RE42,725 is its reissue, the '725 claim set) remain as issued. That is not the same as being "hardened": the absence of IPRs here reflects economics, not victory. The '086 patent expired 2022-12-26, and Flexiworld's continuation practice produced a steady supply of live patents (e.g., 9,965,233; 10,140,073; 10,346,114; 9,836,257; 10,878,856; 10,481,846; RE42,725) that were asserted instead — so defendants spent their petition budgets on the unexpired members of the family.

Estoppel: essentially none runs against you on this patent, but also none runs for you. No party has § 315(e)(2) estoppel on US7318086 because no party petitioned on it. Conversely, nothing stops you from petitioning — subject to the § 315(b) one-year clock from service of a complaint asserting the patent. Two practical caveats: (i) IPRs on expired patents are permitted, but the Board will scrutinize whether a live controversy justifies the expenditure, and the value is limited to shaping a past-damages defense; (ii) many of the strongest art combinations in this family (Keeney/Vatland, Saulpaugh, Yukie/Boyce/Gunter, Ikonen/Gu, Yamaguchi/Gu, Ghori, Lamming, Slaughter, and the 60/202,975, 60/205,xxx- and 60/209,xxx-series provisionals) are already public in sibling petitions — usable against the '086 patent, but note the Board's family-level Yamaguchi-not-prior-art and "advertising availability" rulings if you import those grounds wholesale.

Pattern signals. (1) Serial petitioning: Roku filed at least five IPRs across this family; Lexmark filed at least two; Unified Patents filed at least one — that is a defensive-aggregator footprint (Unified on the '257), but it did not produce invalidation. (2) The patent owner is a litigation-heavy NPE-style enforcer with an aggressive continuation strategy (Google Patents flags "First worldwide family litigation filed") — suits against Roku, Epson (settled/dismissed 2022-02-01), Brother (settled/dismissed 2023-03-13), Lexmark (E.D. Ky. 5:22-cv-00097/-00098/-00110), Hisense (E.D. Tex. 2:22-cv-00227 → N.D. Ga. 1:22-cv-04338), and four Xerox complaints in W.D.N.Y. filed 2023-06-29. (3) Flexiworld litigates hard at the PTAB: it raised § 314(a) Fintiv-style and even ethics/RPx-affiliation challenges (losing in IPR2022-00775), and it has repeatedly opposed institution with detailed preliminary responses (e.g., IPR2021-00714, filed 2021-07-26). Expect a vigorous preliminary response, not a settlement.

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Recommended next steps

1. Confirm the null result at the source. Run US7318086 and reissue application 12/684,869 through PTAB E2E / PTACTS (ptab.uspto.gov) and Patent Center (patentcenter.uspto.gov); cross-check the district dockets on CourtListener (courtlistener.com). If the null result holds — and ODP says it does — say so plainly in any opinion: there is no PTAB activity on US7318086 to cite for or against.
2. Anchor your defense in expiry, not invalidity. The '086 patent's adjusted expiration was 2022-12-26. Any asserted claim can only reach conduct before that date, and damages are capped by the § 286 six-year lookback from the complaint. For a suit filed today (2026), the accused-conduct window is closed — there can be no ongoing infringement, no injunction, and no ITC exclusion order. Plead this early.
3. Settle the reissue question. Determine definitively whether RE42,725 E1 is the reissue of the '086 patent. If it is, then (a) the asserted claim set may be the reissue claims, not the original '086 claims, and you must chart against the reissue claims as issued; and (b) because RE42,725 is a reissue of the same patent, it expires on the same 2022-12-26 date — which is a complete answer to prospective relief. Flexiworld asserted RE42,725 against Lexmark, so this is not academic.
4. If you do petition, mind the clock and the claim set. § 315(b) gives you one year from service per patent; the '086's expired status makes a petition worth it only where past damages are real and large. If you petition, verify the exact claim numbers in the '086 patent before drafting — do not copy claim numbering from the sibling FWDs (the family renumbers claims between continuations).
5. Harvest the sibling FWDs, free of charge. Pull the FWDs, institution decisions, and expert declarations from IPR2022-00775 ('257, petitioner lost), IPR2021-00713/-00714/-00715 ('066/'064/'114), IPR2022-01112 ('073), IPR2022-01114 ('233), IPR2022-01269 ('577), and the Lexmark '233/'402 petitions. They contain the Board's constructions of "advertising availability," the Rivera-based § 112 written-description attack, and an Alice § 101 attack on this family — all directly transplantable invalidity theories against the '086 specification, which is the same written description across the family.

Caveat on completeness: several family proceedings above are documented only through petition papers and party statements in the search results; I have marked every instance where I could not verify an institution date, FWD outcome, or proceeding number. Nothing in this report should be relied on as a confirmed claim-level disposition for US7318086, because none exists.

I'll research the assignment chain and litigation history for US 7318086 before drafting.

Assignment Record Reconstruction — US 7,315,086 B2 ("System for mobile and pervasive output")

Patent under review: US 7,315,086 B2 · App. 09/992,420 · filed 2001-11-18 · issued 2008-01-08 · priority 2000-11-20 · current legal status per Google Patents: Ceased; adjusted expiration 2022-12-26 (Google Patents mirrors the USPTO assignment/legal-events record; the reel/frame for the inventor assignment was not exposed in the mirror text I retrieved).

Data limitation up front (please read before relying on the chain): I could not open assignmentcenter.uspto.gov / assignment.uspto.gov directly in this session, and no retrieved source (including Flexiworld's own complaints, which do recite reel/frame for sibling patents) discloses a reel/frame for the assignment of App. 09/992,420. I therefore report the assignment event (assignor, assignee, execution date, conveyance) from the Google Patents legal-events mirror of the USPTO record, and I mark the reel/frame and correspondent fields as not retrieved rather than supplying invented values. Verify both at the Assignment Center before using this in any filing.

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Inventors

Unusual patterns: none of the classic fire-sale precursor. There is no inventor departure — both inventors remained associated with the assignee for two decades and continued to file continuations and continuations-in-part that issued through 2020+ (e.g., 10,481,846; 10,768,871). The notable structural feature is the inverse of a shell pattern: the assignee is owned/controlled by its inventors, so this is an inventor-owned monetization vehicle rather than a patent-holding LLC divorced from the inventors. That matters for the NPE calls below and is derived from Flexiworld's own pleadings (Chang is "founder and President"; Liu is a shareholder) and from the 2011 Revocation and Reappointment of Power of Attorney for App. 10/053,651, signed by Chang for "Flexiworld Technologies, Inc., a Washington corporation."

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Original assignee

Flexiworld Technologies, Inc. — named as assignee on the face of the issued patent (Portland, OR on the related reissue RE42725 listing; later Vancouver, WA on the '846 patent front page). A Washington corporation per its 2011 Rule 3.73(b) filing.

• Primary line of business at the time of filing: short-range wireless (Bluetooth / IEEE 802.11) and mobile-printing software and embedded solutions — the patent's own background is squarely the "print from a mobile device without a device-specific driver" problem.
• Did it ship a product embodying the claims? Partially and unverifiably at this distance. Flexiworld was a real development-stage start-up with press coverage ("Vancouver startup looks to revolutionize use of printers," The Columbian, Apr. 18, 2002, quoted in Flexiworld's Lexmark willfulness allegations, ¶115), and it won regional start-up recognition in 2002–2003. But its modern self-description is R&D plus patent enforcement, and third-party trade press (Actionable Intelligence) characterizes the company as an NPE. There is no evidence in anything I retrieved of sustained commercial shipment of products practicing the '086 claims.
• Current status: operating as an active patent-enforcement plaintiff; not in bankruptcy and not shown as dissolved in any record I retrieved. The "Ceased" status of the '086 patent reflects term expiry (2022-12-26), not abandonment or forfeiture — 20 years from the 2001-11-18 filing plus term adjustment.

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Assignment timeline

The Assignment Center record for US 7,315,086 / App. 09/992,420 consists of the original inventor-to-assignee assignment only. As mirrored in Google Patents legal events and reported in Flexiworld's litigation:

• 2001-11-18 (executed — same date as the application filing) / recorded date not retrieved — Reel not retrieved / Frame not retrieved
  • Conveyance: Assignment (inventors → corporation)
  • Assignor: William Ho Chang; Christina Ying Liu
  • Assignee: FLEXIWORLD TECHNOLOGIES, INC. (Washington corporation)
  • Correspondent: not retrievable in this session. For context only — and not a substitute for the recorded assignment correspondent — Flexiworld's portfolio documentation ran through a single firm of record, Kolisch Hartwell, P.C. (Edward B. Anderson, Reg. No. 30,154; 200 Pacific Building, 520 SW Yamhill St., Portland, OR 97204; Customer No. 23581), which filed the 2011 §3.73(b) chain-of-title statement for sibling App. 10/053,651 and the associated power-of-attorney papers. If the assignment correspondent on the '086 recording is Kolisch Hartwell, that is a portfolio-wide repeat firm, not a shell-LLC "lawyer signal."
  • Context: internal capitalization of a start-up — inventors assign to their own company. Not a fire-sale, not a securitization, not a transfer-to-asserter (the asserter is the original assignee).

No post-issuance assignments were found for this patent. Specifically, I found no security agreement, no license recordation, no change of name, no merger, and no assignment to any "IP / Licensing / Holdings / Ventures" vehicle. Google Patents legal events for US7318086 show only: application filed by Flexiworld (2001-11-18); priority to 09/992,420; assignment to Flexiworld Technologies, Inc.; publication US20020078149A1 (2002-06-20); grant (2008-01-08); a 2010-01-08 family filing (App. 12/684,869, later issuing as US RE42725 E1 — a prosecution-family event, not an ownership event); and the 2022-12-26 adjusted expiration.

One family-level transaction worth a manual pull (not an assignment of this patent in anything I found): Flexiworld's standing dispute with Roku turned on a Flexiworld→Samsung Electronics Assignment Agreement whose §1.1.1 assigned four items — the '541 patent, the '958 application, and two continuations — while the court held the '064 and '066 patents were not assigned to Samsung (Flexiworld Technologies, Inc. v. Roku, Inc., order on the Samsung Agreement). US 7,941,541 is a family sibling of the '086 (both descend from the 2000-11-20 / 2001-11-18 wireless-output disclosure). Whether '086 was within that Samsung agreement is not established by any source I retrieved, and I will not assert it. This is the single most important document to pull next: the Samsung–Flexiworld assignment reel, to confirm the metes and bounds of the 2010-era conveyance.

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Timeline diagram

timeline
    title Ownership of US 7318086
    2000 : Priority date Nov 20
    2001 : App 09 992 420 filed Nov 18
         : Inventors assign to Flexiworld
    2008 : US 7318086 B2 issues Jan 8
    2010 : Family app 12 684 869 filed
    2022 : Patent term expires Dec 26

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NPE / troll-pattern signals

1. Shell-entity transfer — not present.
There is no post-issuance assignment of the '086 away from Flexiworld Technologies, Inc. The only recorded conveyance is inventors→Flexiworld (executed 2001-11-18 per the Google Patents legal-events mirror of the USPTO record). No "IP / Licensing / Holdings / Ventures" vehicle, no registered-agent-service address, no single-purpose LLC appears anywhere in this chain. Note the instructive contrast with the user's premise: this portfolio was not run through anonymized LLCs — it was asserted by the original corporate assignee under its own name.

2. Known asserter in the chain — present at assignee level; unclear as to this patent.
Flexiworld Technologies, Inc. is not on the specific list supplied (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg). It is, however, a high-frequency plaintiff surfaced by the third-party asserter trackers: Unified Patents hosts the Flexiworld portfolio (e.g., portal.unifiedpatents.com/patents/patent/US-RE42725-E1) and Roku's challenge PGR2021-00111 (Terminated, institution denied, Mar. 14, 2022); RPX Insight hosts multiple Flexiworld complaints and claim charts; and Actionable Intelligence explicitly labels Flexiworld an "NPE" in its Lexmark coverage. Caveat I must state plainly: I did not find US 7,315,086 itself named in any complaint caption. The campaigns I could identify assert siblings — '402 (reel 028733/0064), '072 and '031 (042385/0202), '856 (043675/0454), '871 (046519/0534), '073 (043035/0229), '846, '725, '181, '071, '576, '541, '903, '516 — against Canon, Epson, Lexmark, Brother, Hisense, Sony, Roku and HP. So the asserter signal attaches to the assignee, not provenly to this patent.

3. Repeat correspondent across the chain — unclear / not retrieved.
I could not read the recorded assignment correspondent field, so I will not score this. What is verifiable is that Flexiworld centralized portfolio papers at one prosecution firm: Kolisch Hartwell, P.C. (Portland, OR; Edward B. Anderson, Reg. No. 30,154), which filed the 2011 §3.73(b) statement and power-of-attorney for the sibling application 10/053,651 — a genuine repeat-firm pattern on the prosecution side. On the litigation side, Timothy E. Grochocinski appears pro hac vice for Flexiworld in the Lexmark actions (E.D. Ky. 5:22-cv-00098/00110, orders May 11, 2022), alongside C. Austin Ginnings and James M. Francis. I flag these as repeat-player counsel for the portfolio, not as the assignment correspondent, which remains unretrieved.

4. Cascading transfers — not present.
Zero post-issuance transfers, therefore zero chained-LLC hops. Nothing to cite because nothing happened: the chain is one link.

5. Pre-litigation transfer — not present.
No assignment exists to be dated within six months of any complaint. Flexiworld sued as the record owner on an intact 2001 chain (as pleaded, e.g., "Flexiworld is the owner and assignee of all rights, title, and interest in and under the '402 Patent … Reel/Frame 028733/0064"). No standing-vesting transfer was arranged on the eve of filing.

6. Bankruptcy fire-sale — not present.
No Flexiworld bankruptcy is recorded in any source I retrieved, and the "Ceased" flag on the '086 is term expiry (2022-12-26 adjusted expiration), not a Chapter 7/11 asset sale. This is not a Kodak/Nortel/Polaroid scenario.

7. Privateering — unclear.
The reported direction of travel is the reverse of classic privateering: Flexiworld sold certain family rights to an operating company (Samsung), which then became the subject of a standing fight in Flexiworld v. Roku. Whether US 7,315,086 was inside that Samsung conveyance is not established by the Roku order (which addressed the '541, '958, '064 and '066 patents) and nothing else I found closes the question. Score unclear and pull the Samsung–Flexiworld assignment record.

8. Defensive aggregator — not present.
No RPX, AST, LOT Network, Unified Patents or OIN assignment appears in the chain. The patent has not been neutralized by aggregation; it was neutralized only by expiration on 2022-12-26.

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Verdict

NPE — moderate confidence.

The chain itself is clean and unremarkable: a single inventor-to-company assignment executed 2001-11-18 to Flexiworld Technologies, Inc. (mirrored in the Google Patents legal events for US7318086; reel/frame not retrievable in this session) with no subsequent assignment, security interest, or LLC hop — so the strong chain-based signals (shell-entity transfer, cascading transfers, pre-litigation transfer, bankruptcy sale) are all absent, and the confidence is moderate rather than high for exactly that reason. The NPE classification rests on assignee conduct and identity, not on title mechanics: Flexiworld is the founder-inventor-controlled entity that has run successive infringement campaigns against printer and consumer-electronics manufacturers — Canon and Epson (2021), Lexmark, Brother and Hisense (2022), Sony, and HP (S.D. Tex., complaint reported filed 2024-07-19) — and is characterized as an NPE by third-party trackers (Actionable Intelligence; Unified Patents hosts the portfolio and the Roku PGR2021-00111), with no demonstrated commercial product practicing the '086 claims. Two caveats a reviewer must carry forward: (i) I could not confirm that US 7,315,086 itself was ever asserted — the campaigns I could evidence name siblings; and (ii) the patent expired 2022-12-26, so it currently has no forward assertion value, and a contrary pull showing an unreported Samsung-era assignment of the '086 could shift the analysis toward privateering.

Verify at:

• USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search "7318086" or application "09/992,420"; capture reel/frame and correspondent for the 2001-11-18 record and confirm the absence of post-issuance records)
• Legacy Assignment Search mirror — https://assignment.uspto.gov/patent/index.html
• Google Patents legal events — https://patents.google.com/patent/US7318086/en
• Priority item to pull next: the Flexiworld→Samsung Electronics assignment referenced in Flexiworld Technologies, Inc. v. Roku, Inc. (standing order on the §1.1.1 Samsung Agreement)

I'll research the USPTO record and cited prior art for US 7,318,086. Let me run several searches in parallel.

The results are noisy. Let me pull the actual cited-references lists from the patent's own record pages.

Let me get the front-page (56) references directly from the patent PDF and the Justia/Google record.

Prior-Art Analysis — US 7,318,086 B2

Important framing note before the analysis: I was able to reach the patent's own bibliographic record and its front-page "(56) References Cited" list, but I was not able to retrieve the examiner's citation form (PTO‑892/PTO‑1449) or the file-wrapper rejection record from PatentCenter. That distinction matters enormously here, and I flag it up front:

The front page of a U.S. patent lists references that were cited, but it does not record which claim each reference was applied against, nor the statutory basis (e.g., §102 anticipatory vs. §103 obviousness vs. mere background art). Almost all front-page citations in this field are background/§103 art, not anticipations. Any claim-number mapping below is my own reconstruction, clearly labeled as such — it is not a fact recorded in the patent or in the file history.

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1. Record verification (USPTO / Google Patents / Justia)

Interpreted literally and not normalized:

Sources: https://patents.google.com/patent/[US7318086B2](/patent/US7318086B2)/en ; https://patents.justia.com/patent/[7318086](/patent/7318086) ; https://uspto.report/patent/grant/7,318,086

Cross-check against the earlier litigation section: the priority date (2000‑11‑20), filing date (2001‑11‑18), grant date (2008‑01‑08) and assignee all match what was stated there. No contradiction. However, the "adjusted expiration 2022‑12‑26 / Ceased" status is a new datum that materially informs that section — see §6 below.

Identifiers I deliberately did not merge with 7,318,086 (similar numbers that surfaced in searching and must not be confused): US 7,318,162 (Rineer et al.), US 6,778,289 (Iwata), US RE42,725, US RE45,244, US 10,150,417, US 6,906,769, US 7,038,676.

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2. Cited references actually retrieved from the record

The "(56) References Cited" list I could reach (via Justia's grant page, corroborated in part by FreePatentsOnline's related-document table for RE42,725 and by an EPO search-report hit) is:

U.S. Patent Documents

U.S. Patent Application Publications

Foreign Patent Documents

Caveats on completeness: (a) the Justia rendering appears alphabetically/differently ordered than a printed front page, so I cannot guarantee the retrieved list is complete or in examiner order; (b) I could not verify whether additional foreign documents (JP/DE/EP) appear on the printed front page; (c) I could not retrieve the itemized "Other Publications / Non-Patent Literature" fields at all. Authoritative confirmation requires the granted patent's front page PDF or PatentCenter.

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3. Statutory framework that applies

• Pre‑AIA 35 U.S.C. §102 governs (application filed 2001‑11‑18, well before 2013‑03‑16). Relevant subsections: §102(a) (known/used/patented/published before the invention date), §102(b) (patented or published more than one year before the U.S. filing date), §102(e) (U.S. patents/publications having an earlier effective filing date, applied as of their filing date for novelty purposes only).
• Because the asserted priority is 2000‑11‑20 and the actual U.S. filing is 2001‑11‑18, the reference dates sort into three classes:
  • Published on/before ~2000‑11‑20 → available under §102(a) and, if more than a year before the §102(b) critical date, §102(b). In this list: US 5,566,278, US 5,625,757, US 6,256,666, US 6,578,072, EP 691619.
  • Published between 2000‑11‑20 and 2001‑11‑18 (i.e., after the priority date but before filing) → §102(a) only, and only if the reference predates the actual invention date. None of the retrieved references falls cleanly in this window.
  • Published after 2001‑11‑18 → cannot be §102(a)/(b) art as of publication. These can only be §102(e) art, which requires an earlier effective U.S. filing date. In this list: US 2002/0042263 (2002‑04‑11), US 2002/0092029 (2002‑07‑11), US 2002/0194302 (2002‑12‑19), US 6,623,527 (2003‑09‑23), US 6,760,745 (2004‑07‑06), US 6,775,407 (2004‑08‑10), US 6,778,289 (2004‑08‑17).

This last point is the single most useful structural observation: the majority of the cited U.S. references post-date the ’086 filing date as publications, so if the examiner relied on them at all it was almost certainly under §102(e) (or §103 over §102(e) art) — not as §102(a)/(b) anticipations. I could not confirm each one's underlying filing date in this session.

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4. Claim set of US 7,318,086 — what I can and cannot anchor to

From the pre-grant publication US 2002/0078149 A1 (the published version of the same application, https://patents.justia.com/patent/20020078149), the claim set runs to at least claim 63 and includes:

• Claim 1 — base method claim (its full text was not retrieved); claims 38–43 depend from it and recite output device object attributes (output device language, output data format, payment information, security/authentication, and the device being one of printing/display/projection/audio).
• Claim 10 — a method claim with a "discovering of the one or more output devices" step; claim 15 depends from it.
• Claim 44 — independent method: "delivering a document object and an output device object to a server application operated on a server that is distinct from the information apparatus and the output device… generating with the server application output data… delivering the output data to the output device for rendering." Claims 45–51 depend from it.
• Claim 52 — independent computer-readable-media claim mirroring claim 44 (claims 53–58 depend).
• Claim 59 — independent computer-readable-media claim from the client side (claims 60–63 depend).

So the independent claims to test against prior art are approximately 1, 10, 44, 52, and 59 (and possibly one or more further independents I could not see). The claimed core, as reflected in claims 44 and 59, is: (i) a document object (content and/or a pointer to content), (ii) an output device object with device attributes, (iii) delivery of both to a server application on a server distinct from both the information apparatus and the output device, (iv) that server generating device-specific output data, and (v) that output data reaching the output device. The specification adds the short-range wireless link (Bluetooth/IrDA/IEEE 802.11, ¶ on FIG. 1 and FIGS. 2A–2B) and the "no driver installation on the mobile device" advantage.

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5. Candidate §102 mappings — my reconstruction (NOT record-derived)

Please read this as hypothesis, not as the examiner's position. §102 anticipation requires a single reference to disclose every limitation arranged as claimed (MPEP 2131). Based on the subjects and dates above, the plausible candidates rank as follows:

Bottom line of the §102 analysis: on the evidence I could actually verify, no single cited reference appears on its face to disclose the complete claimed combination — a portable information apparatus negotiating an output device object over a short-range wireless link, handing off a document object plus that device object to a server application on a server distinct from both the apparatus and the output device, and receiving back device-specific output data for delivery to the output device. That is consistent with the citations functioning primarily as §103 obviousness / background art rather than §102 anticipations. I cannot state the examiner's actual basis, and I am not going to invent one.

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6. Contradiction / ambiguity flags raised by this search

(a) RE42,725 — my earlier "unverified reissue-of-’086" hypothesis is now weakened. The prior litigation section flagged that RE42,725 might be the reissue of 7,318,086. New evidence from this search cuts against that: FreePatentsOnline's page for RE42,725 lists US 7,318,086 in its "US Patent References" table (i.e., among cited references) at https://www.freepatentsonline.com/RE42725.html. A reissue normally identifies its original patent in the "Related U.S. Application Data/Reissue of…" field, not in the prior-art reference table. Combined with the fact that RE42,725's title ("Output service over a network") differs from ’086's title, this makes the reissue-of-’086 hypothesis less likely than before — though the date coincidence (RE42,725 application US 12/684,869 filed 2010‑01‑08, exactly two years after ’086's 2008‑01‑08 grant, matching the §251(d) broadening window) still points the other way. Net effect: still unresolved, but now evidenced on both sides. Do not treat RE42,725 as the reissue of 7,318,086 without an affirmative USPTO "Reissue of" record.

(b) New, litigation-relevant datum: the ’086 patent appears to be expired. Google Patents reports status "Ceased" with an "Adjusted expiration" of 2022‑12‑26, and the "Family has litigation" flag. If accurate, this materially explains the litigation section's central puzzle — why no Flexiworld complaint asserted ’086: a patent whose term ran out in 2022‑2021 could not support ongoing injunctive relief or post-expiry damages, whereas Flexiworld's asserted rights in the 2020–2026 campaign were later-expiring family members (e.g., 10,140,071–073; 11,029,903; 10,841,798). This is a hypothesis, not proof, but it is a much better explanation than "the family was missing from the campaign."

(c) "Family has litigation" (Darts‑ip family 22957058) confirms that some member of this family has been litigated, but as the earlier section correctly noted, that flag does not identify which member or which patent number.

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7. Documents citing ’086 (forward citations — not prior art)

For completeness, and expressly distinguished from §102 art, these later documents were surfaced as citing ’086 (or as family members of the same 2000‑11‑20 priority):

• WO 2002/042896 A1 — "MOBILE AND PERVASIVE OUTPUT COMPONENTS" (same Flexiworld family; same-family, not prior art). https://patents.google.com/patent/WO2002042896A1/en
• US 2002/0078149 A1 — the ’086 pre-grant publication itself.
• US 10,129,721 and US 10,150,417 — later patents whose reference lists include 7,318,086 (2020s-era art).
• US 7,474,839; CA 2 545 940 A1; US RE48,088 E1; US 2002/0062398; US 2008/0318602; US 2009/0002760; US RE42,725 — all cite ’086 in their reference tables.

None of these is available as prior art against ’086 (they post-date it or are family members); they are only evidence of the field's development and of the family's citation web.

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8. What I could not verify — and what would close the gap

I am not going to fill the following gaps by inference:

1. The examiner's actual rejections. Need the file wrapper via USPTO PatentCenter for application 09/992,420 (PTO‑892/PTO‑1449 forms, office actions, and any appeal/PTAB record) — this is the only way to state which claim each reference was applied to and under which subsection.
2. The exact front-page reference list, in order and in full, from the granted patent's front page PDF (https://patentimages.storage.googleapis.com/…/US7318086.pdf) — my retrieved list may be truncated, and the "Other Publications" field was not retrieved at all.
3. Titles/abstracts and effective filing dates for US 5,566,278, US 6,623,527, US 6,778,289, US 2002/0042263 A1, US 2002/0092029 A1, and EP 691619 — needed before any §102(e)/§102(a) date analysis can be asserted.
4. Whether ’086 was ever the subject of an IPR/PGR or cited in a §282 notice — the PTAB and the Flexiworld district-court dockets should be checked for an invalidity contentions exhibit naming ’086.
5. Claim 1's full text — retrieved only indirectly (via dependents 38–43); claims 1, 10, 24–37 were not captured.

Recommended next calls: (i) PatentCenter file wrapper for 09/992,420; (ii) the printed front-page PDF; (iii) full text of US 5,625,757 and EP 691619 to test the §102(b) candidate properly; (iv) USPTO reissue record for RE42,725 to resolve flag (a); (v) Flexiworld's §282/Invalidity Contentions to see whether ’086 was ever charted.

I'll check whether the page's prior-art/References-Cited section is retrievable, since the capture provided omits an explicit reference list.

The page capture omits the References Cited list, but I found a related document that reproduces it. Let me pin down the specific prior-art references and any IPR art applied against this family.

Two key verifications surfaced. Let me confirm the subject matter of the references actually cited on the face of this patent before building the §103 grounds.

Obviousness Analysis — US 7,318,086 B2 under 35 U.S.C. § 103

0. Source note and one important contradiction with the earlier sections

Provenance of the "Prior Art section." The Google Patents capture supplied for this analysis does not contain a "References Cited" list. Its "Prior Art" content is limited to: (a) the auto-generated Prior art keywords — output, output device, information apparatus, data, information; (b) the CPC classification set (G06F 3/12x, G06Q 20/x, H04L 12/28, H04L 63/04, H04L 67/x); and (c) the Definitions/Background narrative, which is itself a rich body of admitted prior art. To get an actual reference list I had to go outside that page, and I found the face-cited art reproduced on the front page of US RE42,725 E1, which is the reissue of this patent. I flag that provenance because it affects what I can and cannot attribute to each reference.

Contradiction flag (upgrades earlier summary). The earlier Litigation Summary stated that RE42,725's relationship to 7,318,086 was "unverified" and that no case expressly asserts '086. The reissue front page resolves this: it lists (64) Patent No.: 7,318,086 … Jan. 8, 2008 … 09/992,420 … Nov. 18, 2001, i.e. RE42,725 is a reissue of 7,318,086 (title changed on reissue to "Output service over a network"). And RE42,725 ("the '725 Patent") appears in the court's own list of the fifteen patents-in-suit in Flexiworld v. Lexmark, E.D. Ky. 5:22-cv-00097-KKC (DE 33 ¶ 1; DE 34 ¶ 1; DE 35 ¶ 1; DE 36 ¶ 1). So the '086 disclosure was in fact litigated, through its reissue — the earlier "unverified" caveat should now be treated as resolved. RE42,725 does not change the §103 analysis of the '086 claims, but it does mean an adverse validity ruling on '725 has family-level significance.

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1. Legal framework applied

Because the application was filed November 18, 2001, pre-AIA § 103(a) governs. The analysis uses Graham v. John Deere (scope/content; differences; PHOSITA level; secondary considerations), KSR Int'l v. Teleflex (a combination is obvious where prior-art elements work "according to their established functions" to yield a predictable result; TSM is a sufficient but not necessary rationale; design incentives and market forces count), and In re Fout / Constant v. Advanced Micro-Devices (statements in the specification about the state of the art are admissions usable as prior art).

PHOSITA (proposed): a Bachelor's degree in EE/CS plus 2–4 years in network printing, embedded/appliance computing, or mobile data services, familiar with page description languages (PostScript/PCL), print spooling/print servers, HTTP/markup delivery, and one or more local wireless standards (IrDA, Bluetooth, IEEE 802.11). The '086 specification itself repeatedly describes this level of skill and these very technologies.

One structural caveat carried forward from the earlier sections: the full verbatim granted claim set was not retrieved. The prior sections flag claims 1, 10 and 44 as the apparent independents, with claim 44's form differing between the pre-grant publication (method) and the grant-page fragment (system/means-plus-function). The grounds below are therefore stated against claim scopes, not against verified verbatim language. If the granted claims differ materially from the pre-grant set — particularly if claim 44's "output controller … user interface for receiving user-implemented modifications" element survived as drafted — Ground 3 below must be re-run against the actual text.

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2. The invention point, isolated

Stripped of the object-model vocabulary, claim 1 (per the earlier summary) requires:

1. information apparatus obtains a document object (content and/or a pointer/reference to it);
2. information apparatus obtains an output device object (device attributes/capabilities);
3. those objects go to a server application on a server separate from both the information apparatus and the output device;
4. the server generates device-compatible output data from at least those objects; and
5. the output data reaches the output device, which renders the content.

Reading claim 1 together with the specification's own process flow (FIG. 4: server returns output data to the information apparatus at step 710/408, and the apparatus then transmits it over the local link 116 at step 806/410), the practical architecture is a round trip through the thin client:

[mobile info apparatus] --(wide-area net)--> [application server: drivers/RIP]
        ^                                              |
        |  device-ready output data                    |
        +----------------------------------------------+
        |
        +--(local link 116: Bluetooth/IrDA/802.11/USB)--> [printer/output device]

That round trip is the only architecturally distinctive element. Every other element — device-dependent output data, remote driver execution, discovery of nearby output devices, object-encapsulated job/device descriptions, payment/security on shared printers — is either expressly admitted as prior art in the specification or is a textbook well-known practice. An obviousness challenge will succeed or fail on the round trip and on the specific claim 44 controller/UI element, so I structure the grounds around those two pressure points.

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3. Prior art of record actually available

3.1 Admitted prior art from the specification (strongest footing)

These are verbatim admissions in the patent's own text (Definitions/Background), usable as prior art against the claims:

A4 is the single most damaging admission: it recites the core server-side-driver architecture as an available technique, in the patent's own words, before the claims are described.

3.2 References cited on the face of the patent / reissue

The RE42,725 front page reproduces the '086 reference list. OCR of the retrieved page is imperfect (names and some dates are garbled), so I list numbers as retrieved and mark what I can and cannot vouch for:

Honesty constraint: I have full text or reliable subject matter for only one face-cited reference (Slotznick 5,983,200). For the rest I have numbers and dates only. I will therefore treat the face-cited art as corroborating and put the primary analytical weight on (i) the specification's own admissions and (ii) art already applied by a petitioner to this same family, which I did verify.

3.3 Art verified as applied to this family (same priority family, later-filed continuations)

From Roku's petition in IPR2022-01112 against US 10,140,073 (the '073 patent, a Flexiworld continuation), the asserted grounds were:

• Ground 1a: Saulpaugh, US 6,850,979 (filed 8/31/2000; issued 2/1/2005) renders claims 1–20 obvious.
• Ground 1b: Saulpaugh + Castell, US 6,717,801 (filed 9/1999 per petition table) render claims 1–20 obvious.
• Ground 2a: Beck renders claims 8–11 and 14–15 obvious.

The petition characterizes the '073 claims as "known device discovery mechanisms that enable remote service calls, e.g., a cell phone detecting and using a remote printer," with claim 1 reciting "discovering networked devices and authenticating clients, then providing remote services." This matters for §103 on the '086 not because the claims are the same — they are not — but because it demonstrates a real-world, fully briefed combination within this exact family of (a) distributed-service discovery/remote-invocation art with (b) printing/network-output art. The motivation articulated there (users need to find and use a nearby networked printer without pre-configuring the client) is the same motivation the '086 specification supplies on its face.

Note Saulpaugh's 8/31/2000 filing date precedes the '086's assumed 11/20/2000 priority date, making it available as pre-AIA §102(e) art against the '086.

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4. Ground 1 — Claim 1 obvious

Combination: Admitted art A1, A2, A3, A4 (primary) + Slotznick 5,983,200 + a network print-controller reference from the face-cited set (Motoyama 5,353,388 and/or Suzuki 5,475,507) + Saulpaugh 6,850,979.

Motivation to combine (KSR-adequate):

1. The specification supplies the motivation itself. A4 states the server-side-driver technique reduces client workload and achieves device independence. The stated problem (A2: users must install a driver per device, "several minutes to several hours") and the stated solution (A4) are in the same document — that is an admission that a POSITA would have reached this architecture.
2. Design incentive / predictable result. Moving computation from a constrained client to a more capable server is the canonical client/server trade-off; the specification makes this its central premise in describing the application server as "a much more powerful computing device than a mobile information apparatus." KSR squarely covers "the predictable use of prior art elements according to their established functions."
3. The round trip is motivated by a stated practical constraint. Because printers at an airport, hotel or public venue generally lack Internet connectivity (and A8's output controller may be a PC/print server or may have no static network connection at all), routing server-generated data back through the apparatus that already holds the local wireless link (A3) is the natural, indeed necessary, path. The specification admits this rationale: "Through local communication and synchronization between information apparatus and output device, hardware and software installation for static or permanent network connectivity may not be necessary for the output device."
4. Predictable result, no new engineering. The claimed output data is whatever the target device already accepts (A1) and the transport is a standard protocol already named (A3, A6, A7). Nothing in claim 1 requires a new encoding, a new rasterization operation, or a non-standard message format.

Reasonable expectation of success: high. Every building block was deployed, standardized and commercially available before November 2000 (print servers and spoolers; RIP-in-server; HTTP/markup delivery; IrDA/Bluetooth/802.11 links; object/attribute service registries per Jini/SLP/UPnP, all named in the patent as known).

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5. Ground 2 — Claim 10 (discovery + selection) and its dependents (15–22) obvious

Combination: Admitted art A6 (Bluetooth, HAVi, Jini, Salutation, SLP, UPnP, "control point" directory) + Saulpaugh 6,850,979 (+ Castell 6,717,801) + A3 (wireless local link) + Slotznick 5,983,200 (delegation/selection of a destination for a task) + A9 (standard print preferences).

Why obvious:

• Claim 10's added steps are discover → present → select. Service discovery was a formalized, standardized technique before the priority date, and the patent names the standards (A6). Saulpaugh (per Roku's own petition characterization) teaches discovering networked devices and providing remote services from them; combining it with any network-output device is the ordinary use of that art.
• Proximity/near-field selection is a known premise of the link layer: IrDA as described in the patent is a "point-to-point, narrow angle, ad-hoc" standard operating "over a distance of 0 to 1 meter," and Bluetooth is described as a 10-meter point-to-multipoint system. A POSITA choosing among printers the mobile device can physically reach was doing nothing more than reading capability off the link (A6: "device identity, service charge, subscription, service feature, device capability").
• Claims 15–16 (output-service requirements: price, quality of service, availability, default device): selecting a printer by cost/availability/QoS is the defining selection function of the print-server/queue art in the face-cited set (Motoyama 5,353,388; Suzuki 5,475,507; Burkes 6,023,715) and of multi-user spooling, which the patent admits as a known capability ("first come first serve, quality of service, etc."). Slotznick 5,983,200 (delegated tasks to an agent) supplies the concept of specifying task parameters for an agent to find a suitable resource.
• Claims 17–18 (upload at least partial output device objects; render the information for user selection): the specification itself describes this as an optional discovery step, and the ordering it describes (upload → list → choose) is the pre-existing "control point"/directory-query pattern it names in A6.
• Claims 20–22 (selection by price/QoS/availability/preset preference/first-available/default; by user input; or automatically): These are alternative selection rules, each of which was conventional in resource allocation and print-queue management. KSR: "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious."

Motivation: in multi-printer environments (office, hotel, airport, campus), choosing an available, affordable, capable device is the purpose of the discovery layer already standardized (SLP/UPnP/Jini). No non-obvious insight is added by merely presenting the results or applying a default.

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6. Ground 3 — Claim 44 (system; output controller; controller user interface) obvious — with a caution

Claim 44 (per the earlier summary of the grant-page fragment) is means-plus-function and adds, beyond the claim-1 subject matter, (a) an output engine that outputs content to an output medium from device-dependent data it accepts, and (b) a connection to an output controller that supplies at least part of the output device object, receives output data, passes it to the engine, and includes means for providing a user interface for receiving user-implemented modifications.

Combination: Admitted art A5 (printer engine = memory buffer + marking engine; input is device-dependent rasterized data) + A8 (output controller = PC/workstation/print server; managed via host management software that sets configuration and feature sets) + Motoyama 5,353,388 / Suzuki 5,475,507 (controller/print-server architecture) + Corbell/controller-UI art as needed.

Why obvious:

• Element (a) is a verbatim restatement of the admitted conventional printer engine: memory buffer holding rasterized data, marking engine transferring colorant to substrate, engine input device-dependent and printer-specific. Nothing is added.
• Element (b) is admitted three times over: the output controller may be a print server, PC or workstation (A8); it may be external to or integrated with the printer, and may be a card, board, or external box; and its configuration is managed by management application software in a host computer that "can manage the settings, configurations, and feature sets of the output controller" and "download and/or install application software, software components and/or data." A POSITA adding a local UI to an output controller that is admittedly often a general-purpose PC or a station "contain[ing] its own user interface" is doing precisely what KSR says is obvious: applying the known capability of the known hardware platform.

Caution: If the granted claim 44 instead reads as a method (as the pre-grant publication's claim 44 does, per the prior sections), Ground 3 collapses into Ground 1 and needs no separate art. Either way the outcome is the same; but the mapping must be re-verified against the granted text before this ground is relied on in a filing.

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7. Dependent claims (2–9, 23–43, and post-44)

These are, in the main, conventionality claims and fall with the independents:

• Job objects with output preferences (quality, layout, copies, windows/page, color vs. grayscale, size) — admitted in A9 as the standard print-dialog parameter set; the only addition is packaging them into an object, which is admitted object practice (A10).
• Document objects containing the content, or a pointer/reference, or both, or instructions, or software code, or pointers to other objects — admitted in A10 (references by URI/URL/IP/filename/path; objects may contain instructions and references to other objects). Claiming the duality (content or reference) as alternatives is a classic "obvious to try both" situation and appears to reflect the specification's own discussion of reduced-content vs. full-content delegation.
• Output device object attributes (identification, services, language/format, payment, security, subscription, user ID) — the specification lists these as the discovery payload (A6), and payment/authentication on shared printers is squarely within Slotznick 5,983,200 (delegated task execution, including arrangements for performing a task on the user's behalf) and Nessett 5,968,176 (secure access over a public network) from the face-cited set.
• Job status, priority/QoS, queuing/cancellation/priority management — admitted as conventional spooling/queuing practice in the specification ("first come first serve, quality of service, etc.").
• Output device = printing, display, projection, or audio device — the specification itself generalizes rendering to "paper, display screens, … sound." Extending a known server-mediated output pipeline from printers to displays/projectors/speakers is a predictable extension to an analogous use, and the classification record (G06F 3/12 plus H04L 12/2803–285 home-AV-appliance classes) shows the field already treated these as one family.
• Information apparatus = portable device — admitted throughout (PDAs, palmtops, phones, pagers, cameras, e-books as known device categories).

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8. Rebuttal case and how it should be handled

Two genuine counterweights exist and should not be ignored:

1. Secondary considerations were affirmatively asserted within the family. In Flexiworld v. Roku (6:20-cv-00819-ADA), Flexiworld's expert (Kevin C. Almeroth) filed a rebuttal report including a section titled "SECONDARY INDICIA SUPPORT THE NON-OBVIOUSNESS OF THE ASSERTED CLAIMS" responding to the validity opinions of Roku's expert (Dr. Samuel Russ). Substantively, a patentee here would argue: (i) the industry's actual pre-2000 trajectory was toward thicker clients and per-device drivers, not server-mediated output; (ii) the specification's own criticism of WAP/web-clipping truncation shows the art was moving away from rich original-content output to small devices; and (iii) Flexiworld's licensing and the breadth of its enforcement campaign evidence recognition. Practically, (i) and (ii) are weak as teaching-away because they criticize content reduction, not server-side conversion — the same direction as the alleged invention. Nexus for (iii) will be contested because Flexiworld may not practice the claims (its own §287 pleading states it made/sold nothing practicing the patents-in-suit).
2. The examiner allowed the claims over the face-cited art. A §103 challenge therefore must be built on art outside the record — which is exactly why Saulpaugh (6,850,979), Castell (6,717,801) and Beck, already briefed in the family's IPRs, are the right primaries. Any IPR-style challenge should lead with new art, not with the examiner's own references.

Related but distinct risk to note (not §103): in the '903 IPR, the Board and petitioner applied In re Rivera to hold that claims conflating two separately described components (information apparatus + output device) into a single "output system" lacked written-description support. That is a §112 theory. It matters strategically — a §112 win is cheaper than a §103 win — but it is not an obviousness ground and should not be blended with the grounds above.

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9. Confidence and verification gaps

What would change the analysis: (1) confirmation that granted claim 1 requires the output data to be returned to the information apparatus before reaching the output device — that ordering is the one limitation for which I would want affirmative art rather than motivation-based reasoning; (2) the full granted text of claim 44; (3) the actual disclosures of Motoyama '388 / Suzuki '507 / Kikinis '109, which I have characterized by lineage rather than by reading.

Recommended next steps: pull the RE42,725 file wrapper (the reissue prosecution history will show precisely which claims the examiner and applicant treated as the inventive core, and why the "Output service over a network" claim set was added); obtain the full text of Saulpaugh 6,850,979 and Castell 6,717,801 to build element-by-element mappings rather than the motivation-level mappings above; and retrieve the granted '086 claim set from the USPTO PatentCenter IFW rather than from secondary aggregators.