Invalidity dossier
US 8111839
Always on headwear recording system
Current assignee: Staton Techiya, LLC
Added 9/29/2026, 9:05:39 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll verify against live sources before summarizing.
Verification note on scope
I ran targeted searches and cross-checked two independent copies of the document (Google Patents full text and a district-court-filed copy of the printed patent). Everything below concerns US 8,111,839 B2 only (application 12/100,281). I did not directly query USPTO PatentCenter/Global Dossier in this session, so bibliographic data is corroborated from the patent's own front page as reproduced in the record plus Google Patents. I did not find any 2026 Federal Circuit docket activity for this patent — see the litigation section, which explains what I did and did not find.
Bibliographic data — US 8,111,839 B2
| Field | Value |
|---|---|
| Title | Always on headwear recording system |
| Patent number | US 8,111,839 B2 |
| Application no. | 12/100,281 |
| Filing date | April 9, 2008 |
| Priority / provisional | 60/910,808, filed April 9, 2007 (priority date) |
| Pre-grant publication | US 2008/0253583 A1, Oct. 16, 2008 |
| Issue date | February 7, 2012 |
| Inventors | Steven Wayne Goldstein (Delray Beach, FL); John Usher (Montreal, CA) |
| Assignee (as issued) | Personics Holdings Inc., Boca Raton, FL |
| Current assignee (per Google Patents) | ST Case1Tech LLC; Strategic Portfolio Holdings LLC |
| Claims | 23 |
| PTA | 973 days; Google Patents shows "Active," adjusted expiration 2030-12-08 (Google's assumption, not a legal conclusion) |
| Primary class | H04R 3/00; classification also includes G06F3/16, G10L15/26, H04R1/10, H04R29/00, H04R3/04, G06F1/163 |
Assignment chain visible in the record: Personics Holdings Inc. → Personics Holdings, LLC (2014) → DM Staton Family Limited Partnership → Staton Techiya, LLC (2017) → ST Portfolio Holdings, LLC (June 21, 2024) → ST Case1Tech, LLC (June 21, 2024).
Abstract (verbatim)
A system that records audio and stores the recording is provided. The system includes first and second monitoring assemblies mounted in an earpiece that occludes and forms an acoustic seal of an ear canal. The first monitoring assembly includes an ambient sound microphone (ASM) to monitor an ambient acoustic field and produce an ASM signal. The second monitoring assembly includes an ear canal microphone (ECM) to monitor an acoustic field within the ear canal and produce an ECM signal. The system also includes a data storage device configured to act as a circular buffer for continually storing at least one of the ECM signal or the ASM signal, a further data storage device and a record-activation system. The record-activation system activates the further data storage device to record a content of the data storage device.
Plain-language overview of the claims
Important limitation on this answer: the claim text I have access to is truncated mid-claim 7 (ends at "...equalize a pressure in the ear c"). I can therefore give authoritative text for claims 1–7 and for claim 14 (quoted in the Federal Circuit opinion), but I cannot verify the full text of claims 8–23 from this session's sources. Based on the evidence available, claim 1 appears to be the only independent claim; the Federal Circuit opinion states that claim 14 reads "The system according to claim 1 further comprising: a remote audio forensics analysis system…", and claim 7 also depends from claim 1. I am flagging that I have not confirmed this for every claim between 8 and 23.
Claim 1 — the core independent claim (the "always-on" recording system):
An ear-sealing earpiece containing two microphone assemblies:
- a first monitoring assembly with an Ambient Sound Microphone (ASM) that listens to the sound field at the entrance to the ear canal that the earpiece has occluded, producing an ASM signal;
- a second monitoring assembly with an Ear Canal Microphone (ECM) that listens to the sound field inside the sealed ear canal, producing an ECM signal;
- a data storage device acting as a circular buffer that continually stores at least one of the ECM or ASM signals — i.e., a rolling loop of recent audio;
- a further (second) data storage device coupled to the buffer; and
- a record-activation system, including software, that activates the further storage device to record the content of the buffer — i.e., it dumps the rolling loop (including audio from before activation) into longer-term storage.
In everyday terms: a "black box" for your ears. The earpiece continuously loops both what's happening around you and what's arriving at your eardrum, and a software-triggered event preserves that recent history to permanent storage — matching the specification's stated "flight data recorder" analogy.
Dependent claims confirmed from the text provided:
- 2 — adds receiving an audio-content signal, a signal processing circuit, and a signal router/switching matrix selecting which of audio-content/ECM/ASM signals go into the buffer.
- 3 — adds a user AORS configuration system controlling that router/matrix.
- 4 — adds multiplexing and/or data-rate-reducing encoding of the router output.
- 5 — adds multiplexing/encoding of the circular-buffer output before transmission to the further storage device.
- 6 — adds a time-stamp audio index system embedding a time-coded index into the recorded content.
- 7 — adds a pressure equalization tube in the earpiece (text truncated here).
Claim 14 (confirmed from the Federal Circuit opinion, nonprecedential, Oct. 9, 2025): "The system according to claim 1 further comprising: a remote audio forensics analysis system configured to analyze either the content of the circular buffer or the data stored on the further storage device."
Specification-level features that are not necessarily claimed (useful context, since they are often mistaken for claim scope): Signature Sound ID activation (keywords, hand-claps, gunshots), transient-event detection, accident/accelerometer detection, externally triggered recording, Recording Status Alert System (audible/periodic beeps, LEDs), remote speech-to-text and translation, low-memory warnings, and the tuned beam-forming ASM diaphragm.
Litigation and validity — what the record actually shows
This patent has been heavily litigated, and its claim set is substantially invalidated:
District court. Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al., No. 2:21-cv-00413 (E.D. Tex., Judge J. Rodney Gilstrap), consolidated with 2:22-cv-00053. The '839 patent was one of the asserted patents. Final judgment entered June 21, 2024 in Samsung's favor; the court dismissed Techiya's patent claims with prejudice on unclean-hands grounds tied to Synergy IP / Dr. Ahn / Mr. Cho and Samsung privileged information. Samsung sought roughly $25.8M in costs/fees. The '839 patent was among a list of 14 asserted patents.
PTAB (two IPRs on this patent, both filed by Samsung in Dec. 2021):
- IPR2022-00242 — Final Written Decision June 16, 2023. Held unpatentable: claims 1, 5, 7, 11, 12, 14–17, 21–23. Not proven unpatentable: claims 6, 8–10. Claims 14–17 fell on the Board's construction of "analysis" (speech-to-text held to be a species of "audio forensics analysis").
- IPR2022-00243 — Final Written Decision June 20, 2023. Claims 1–4 unpatentable for obviousness over Le, Armstrong, Kvaløy, and Hall.
Federal Circuit. Consolidated appeals Nos. 23-2305 and 23-2306 (the two '839 IPRs) were affirmed on October 9, 2025 in a nonprecedential opinion (ST Case1Tech, LLC v. Squires). The court held Techiya forfeited its narrowed "analysis" construction argument and that it was wrong on the intrinsic evidence anyway; the challenge to the claims 1–4 decision was effectively abandoned. Companions: 23-2294 and 23-2335 (the related '982 patent). A separate appeal, No. 23-2341 (Samsung v. Staton Techiya), was procedurally dismissed. No. 24-1917 (Staton Techiya, LLC v. Samsung Electronics Co., Ltd., Fed. Cir., filed June 6, 2024) — the appeal from the E.D. Tex. judgment, in which the '839 patent is one of the listed patents in suit — was dismissed December 20, 2024 on the parties' joint stipulation under FRAP 42(b).
On the specific request for "CAFC 2026 dockets": I searched and found no 2026 Federal Circuit docket activity for US 8,111,839. The most recent Federal Circuit decisions I can confirm are the October 9, 2025 nonprecedential opinions, and the district-court appeal (24-1917) was dismissed in December 2024. I cannot rule out very recent 2026 filings that are not yet indexed, but I have no evidence of any.
Do not conflate: my search surfaced a 2026 ex parte reexamination (Control No. 90/015,830, requester Core Scientific, Inc.) — but that proceeding is on US 8,532,286 B2, a different patent number. It is not this patent and I am not attributing it to the '839 patent.
Uncertainty flags
- Claim text for claims 8–23 is not fully verified here (source text truncated at claim 7). I confirmed claim 14's text from the CAFC opinion and the PTAB record. Whether any claim in 8–23 other than claim 14 is independent cannot be confirmed from my sources; the pattern of IPR outcomes and the claim 14 language strongly suggests claim 1 is the sole independent claim.
- Google Patents' "Active / expires 2030-12-08" is an automated status assumption. As a practical matter, the patent's enforceable scope appears limited to the claims the Board did not find unpatentable (claims 6 and 8–10), plus any claims never challenged.
- I did not obtain the PDF of the 23-2305/23-2306 opinion in full, only its opening and the Vitallaw/Fed Circuit Blog summaries; the affirmance and reasoning are consistent across all three sources.
Sources: https://patents.google.com/patent/US8111839/en · https://www.freepatentsonline.com/[8111839](/patent/8111839).html · https://insight.rpxcorp.com/patent/[US8111839B2](/patent/US8111839B2) · https://www.cafc.uscourts.gov/opinions-orders/23-2305.OPINION.10-9-2025_2585626.pdf · https://fedcircuitblog.com/2025/10/09/opinions-orders-october-9-2025/ · https://www.vitallaw.com/caselaw/st-case1tech-llc-appellant-v-john-a-squires-under-secretary-of-commerce-for-intellectual-property-and-director-of-the-united-states-patent-and-trademark-office-intervenor/2ce267f1d38a4ca0a02ea0bf911c7f7f · https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/.../455/10.pdf · https://dockets.justia.com/docket/circuit-courts/cafc/24-1917 · https://www.cetient.com/case/staton-techiya-llc-v-samsung-electronics-co-ltd-[10298215](/patent/10298215)
Generated 9/29/2026, 9:14:27 PM
Cases on file (1)
Group view →Specific litigation cases in our database that name US patent 8111839. The free-form analysis below may also discuss cases beyond this list.
- Staton Techiya, LLC v. Samsung Electronics Co., Ltd. et al.filed Jun 6, 20242024-1917U.S. Court of Appeals for the Federal Circuitterminated Dec 20, 2024dismissed
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Other patents asserted: 10979836, 8254591, 8315400, 9124982, 9270244, 9491542, 9609424, 10405082, 10966015, 11039259, 11057701, 11217237, 11244666
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US Patent 8,111,839. Let me search multiple sources.
Generated 9/29/2026, 9:14:09 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Staton Techiya, LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll research the PTAB proceedings referenced in the patent record (IPR2022-00242 and IPR2022-00243) and any related litigation/appeals.
Let me dig into IPR2022-00243 details and the Federal Circuit appeal.
Let me pull the IPR2022-00242 grounds/institution details and identify the remaining CAFC docket numbers (23-2341, 24-1917).
PTAB Proceedings — US 8,111,839 ("Always on headwear recording system")
⚠️ Data-integrity note before we start. The structured "PTAB proceedings on file" block in this prompt says the USPTO ODP API returns no AIA trial proceedings for this patent. That is wrong. The Google Patents record for US 8,111,839 itself carries two "PTAB case … filed (Final Written Decision)" litigation entries — IPR2022-00242 and IPR2022-00243 — and both Final Written Decisions are reproduced verbatim in the public court record (E.D. Tex. case 2:21-cv-00413). I have not invented proceeding numbers; both are quoted from primary documents below. Treat the ODP "empty" return as an ingest gap, not as an absence of PTAB activity.
Proceedings overview
Two AIA trials on the '839 patent — IPR2022-00242 and IPR2022-00243 — filed by Samsung Electronics Co., Ltd. and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) on 2021-12-13. Both were instituted on all grounds, both produced Final Written Decisions in June 2023 canceling most challenged claims, and both were appealed and affirmed by the Federal Circuit on 2025-10-09. Status breakdown: 2 claims-invalidated (FWD issued, affirmed); 0 active; 0 settled at the PTAB; 0 institution denials. Bottom line for a defendant: the patent is largely dead. Claims 1, 2, 3, 4, 5, 7, 11, 12, 14–17, 21, 22 and 23 have been held unpatentable, and the Federal Circuit affirmed. Only claims 6, 8, 9 and 10 (challenged but not proven unpatentable — and all sitting under canceled parents) and claims 13, 18, 19 and 20 (never challenged) remain technically alive. If a demand letter cites claim 1 or the "audio forensics analysis system" claims 14–17, the assertion is built on canceled claims.
IPR2022-00242 — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. v. Staton Techiya, LLC
Type: Inter Partes Review (35 U.S.C. §§ 311–319)
Filed: 2021-12-13
Status: Final Written Decision — appealed and affirmed. FWD of 2023-06-16 (Paper 36), "Final Written Decision Determining Some Challenged Claims Unpatentable"; affirmed by Fed. Cir. Nos. 2023-2305 / 2023-2306 on 2025-10-09. (Not "settled" and not "active" — the merits were decided.)
Judge panel: Administrative Patent Judges Nathan A. Engels, Scott B. Howard, and Russell E. Cass; opinion authored by Judge Cass.
Petition grounds: Claims challenged — 1, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 21, 22, 23. All grounds were § 103(a) obviousness, with Le and Victorian as the primary references and secondary references added per claim group:
- Ground 1A: Le + Victorian → claims 1, 6, 22, 23
- Ground 1D: Le + Victorian + Sjursen → claims 8–10
- Ground 1F: Le + Victorian + Kurki → claims 14–17 (the "audio forensics analysis system" claims)
- Ground 1G: Le + Victorian + Stuckman → claim 21
- (Additional sub-grounds 1B/1C covered the remaining claims 5, 7, 11, 12; the intermediate grounds are not fully reproduced in the public excerpts I could verify.)
- Real parties in interest: Petitioner — Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.; Patent Owner — Staton Techiya, LLC and Synergy IP Corporation.
Institution decision: Instituted (docket summary gives 2022-06-21; the Board issued a written institution decision, cited as "Inst. Dec." in the FWD). The Board reached and decided every ground, indicating institution on all challenged claims. Oral hearing held 2023-03-23.
Final Written Decision (2023-06-16) — claim-level verdict, quoted from the ORDER:
"ORDERED that claims 1, 5, 7, 11, 12, 14–17, and 21–23 of the '839 patent have been proven by a preponderance of the evidence to be unpatentable; and
FURTHER ORDERED that claims 6 and 8–10 of the '839 patent have not been proven by a preponderance of the evidence to be unpatentable…"The FWD's outcome table records the § 103(a) ground "Le, Victorian, Stuckman" for claim 21, and the overall outcome row as unpatentable = 1, 5, 7, 11, 12, 14–17, 21–23; not unpatentable = 6, 8–10. On claims 14–17, the Board construed "audio forensics analysis" broadly (expressly encompassing a speech-to-text system, per col. 13 of the specification) and held the claims obvious over Le + Victorian + Kurki (FWD at 55–64).
Settlement / termination: The PTAB trial ran to FWD; no PTAB settlement. On appeal, however, Samsung and Staton Techiya settled, Samsung withdrew, and the cross-appeal was voluntarily dismissed (see Appeal, below). Settlement terms are confidential.
Appeal: Yes. Staton Techiya (later substituted by ST Case1Tech, LLC) appealed at No. 2023-2305; Samsung filed a cross-appeal at No. 2023-2341 directed to the claims the Board upheld (i.e., claims 6, 8–10). Docketed in the PTAB as IPR2022-00242. Samsung settled, filed a notice of non-participation, and the Federal Circuit dismissed No. 2023-2341 on 2025-01-29, each side bearing its own costs. The Acting Director intervened as of right under 35 U.S.C. § 143 to defend the Board after Samsung withdrew.
Disposition: AFFIRMED (Fed. Cir., nonprecedential, 2025-10-09, per curiam; panel in the companion opinion identified as Prost, Taranto, and Stark). On the only issue argued — the construction of "audio forensics analysis" in claim 14 — the court held Techiya forfeited its narrowed construction (it was not presented to the Board) and, "in any event," the argument was "incorrect in light of the intrinsic evidence," because the specification expressly discloses a speech-to-text analysis system. Because Techiya raised no argument against the IPR2022-00243 decision, the court affirmed that too "without further discussion."
Defensive value: Claims 1, 5, 7, 11, 12, 14–17, 21, 22 and 23 are canceled and the cancellation is now final. In particular, claim 1 (the claim recited in the patent's own Abstract) is dead — any infringement theory built on it, or on the "audio forensics analysis system" claims 14–17, is untenable. The Board's broad construction of "analysis" also survived appeal, killing the natural narrowing argument Techiya would have used to rehabilitate those claims.
IPR2022-00243 — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. v. Staton Techiya, LLC
Type: Inter Partes Review (35 U.S.C. §§ 311–319)
Filed: 2021-12-13
Status: Final Written Decision — all challenged claims unpatentable; appealed and affirmed. FWD of 2023-06-20 (Paper 35), "Final Written Decision Determining All Challenged Claims Unpatentable."
Judge panel: Nathan A. Engels, Scott B. Howard, and Russell E. Cass; opinion authored by Judge Cass (same panel as -00242).
Petition grounds: Claims challenged — 1, 2, 3, 4. All § 103(a):
- Claim 1 → Le + Armstrong + Kvaløy
- Claims 2–4 → Le + Armstrong + Kvaløy + Hall
References: Le et al., US 2003/0161097 A1 (published 2003-08-28); Armstrong, US 7,430,299 B2 (issued 2008-09-30); Kvaløy, US 6,728,385 B2 (issued 2004-04-27); Hall, US 6,021,325 (issued 2000-02-01). Petitioner's expert: Dr. Les Atlas; Patent Owner's expert: Daniel P. Anagnos. Real parties in interest: Samsung entities; Staton Techiya, LLC and Synergy IP Corporation.
Institution decision: Instituted on all grounds (2022-06-21 per docket summary; "Inst. Dec." = Paper 15, at 60). The FWD states: "We instituted trial on all grounds of unpatentability." Oral hearing held 2023-03-23.
Final Written Decision (2023-06-20) — quoted:
"For the reasons discussed below, Petitioner has proven by a preponderance of the evidence that claims 1–4 are unpatentable."
All four challenged claims (1, 2, 3, 4) were held unpatentable as obvious over the two combinations above; the FWD expressly notes this IPR "did not involve any claim reciting 'analysis'" — a separate, independent invalidity route from -00242.
Settlement / termination: None at the PTAB; decided on the merits.
Appeal: Yes — No. 2023-2306, consolidated with No. 2023-2305. Techiya did not contest this decision on appeal (Opening Br. at 20). The Federal Circuit affirmed "without further discussion" (2025-10-09). Samsung's cross-appeal (No. 2023-2341) was not directed to this IPR.
Defensive value: Claims 1–4 are canceled on a second, independent obviousness theory (Le/Armstrong/Kvaløy/Hall). Even if a future petitioner or defendant attacked the -00242 grounds, the -00243 cancellation of claim 1 stands unchallenged on appeal — there is no live vehicle to revive it.
Companion proceeding (different patent, same family) — IPR2022-00234
Not a proceeding on the '839 patent, but directly relevant to the family and to the Federal Circuit disposition. Samsung challenged U.S. Patent No. 9,124,982 (the '839 patent's continuation/"grandchild," same specification, claims recast for a mobile phone), including claims 17–20, which are "materially identical" to claims 14–17 of the '839 patent. The Board held claims 17–20 unpatentable over a Kurki-based combination in an FWD of 2023-06-14; the Federal Circuit affirmed at No. 2023-2294 on 2025-10-09. (Opinion: https://www.cafc.uscourts.gov/opinions-orders/23-2294.OPINION.10-9-2025_2585634.pdf; CourtListener mirror: https://www.courtlistener.com/opinion/[10693137](/patent/10693137)/st-case1tech-llc-v-squires/)
Strategic summary
Canceled vs. sustained vs. untested. Across the two IPRs, the following claims of US 8,111,839 have been held unpatentable and affirmed on appeal: 1, 2, 3, 4, 5, 7, 11, 12, 14, 15, 16, 17, 21, 22, 23. That is 15 of the patent's 23 claims, including the broadest claim (claim 1) and the "audio forensics analysis system" family (14–17). The only claims the Board declined to invalidate are claims 6 and 8–10 — and note that these were challenged and survived on the merits, but they are dependent claims sitting beneath canceled parents (claim 6 and claims 8–10 depend from the claim-1/claim-7 chain, both of which were canceled), which sharply limits their standalone enforcement value. Claims 13, 18, 19 and 20 were never challenged in either IPR and are, strictly speaking, untested — but they too depend from claims that were canceled, so they incorporate the canceled limitations. In short: no independent claim of the '839 patent is free of an adverse, now-final PTAB holding, and no claim was affirmatively confirmed as patentable by the Federal Circuit.
Estoppel landscape. Under 35 U.S.C. § 315(e)(2), Samsung and its privies are barred in the district court from asserting, against claims 6 and 8–10, any ground they raised or reasonably could have raised in IPR2022-00242. That bar runs to Samsung, not to a new defendant. For anyone else facing assertion of the surviving claims (6, 8–10, 13, 18–20), the printed Le, Victorian, Sjursen, Kurki, Stuckman, Armstrong, Kvaløy and Hall references remain available — but the more efficient path is different: because the FWDs are now final and affirmed, the validity of the canceled claims is no longer an open question, and the board's construction of "audio forensics analysis" (broad, encompassing speech-to-text) is locked in. A new defendant's best priors are (a) the same Samsung art run on the surviving dependent claims with claim-appropriate secondary references, and (b) § 112 / written-description attacks on claims 13 and 18–20, which the PTAB never reached.
Pattern signals. This is a single-petitioner, multi-patent campaign, not a defensive-aggregator campaign. Samsung (a district-court defendant in E.D. Tex. 2:21-cv-00413, filed 2021-11-05 by Staton Techiya and Synergy IP) filed three IPRs on 2021-12-13: two on the '839 patent (-00242, -00243) and one on the '982 patent (IPR2022-00234). The Unified Patents links in the Google Patents record are database records of the litigation, not Unified Patents petitions — the named petitioner in both '839 FWDs is Samsung. The patent owner (Staton Techiya, later ST Case1Tech, LLC, after 2024-06-21 assignments through ST Portfolio Holdings) appealed aggressively — all three FWDs — but the Federal Circuit rejected its only argued issue and affirmed everything, including the decision it did not bother to brief. Samsung settled the appeal (2025-01-29 dismissal of No. 2023-2341), which left the Office to intervene under § 143 — and the Office won. Current assignees of record per Google Patents: ST Case1Tech, LLC and Strategic Portfolio Holdings LLC.
Recommended next steps
- If you are a defendant and the demand letter cites claim 1 (or claims 2–5, 7, 11, 12, 14–17, 21–23): you have a dispositive, now-final defense. Cite and quote the -00242 ORDER ("claims 1, 5, 7, 11, 12, 14–17, and 21–23 … have been proven … to be unpatentable") and the -00243 ORDER ("claims 1–4 are unpatentable"), plus the Federal Circuit's AFFIRMED (Nos. 23-2305/23-2306, 2025-10-09). Link the primary FWDs as embedded in the public E.D. Tex. record:
- IPR2022-00242 FWD: https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/Staton_Techiya_LLC_et_al_v._Samsung_Electronics_Co._Ltd._et_al/docs/986/3.pdf
- IPR2022-00243 FWD: https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/Staton_Techiya_LLC_et_al_v._Samsung_Electronics_Co._Ltd._et_al/docs/455/10.pdf
- CAFC affirmance: https://www.cafc.uscourts.gov/opinions-orders/23-2305.OPINION.10-9-2025_2585626.pdf
- Preserve the cancellation record. After the 2025-10-09 mandate, PTAB statutory certificates should issue cancelling claims 1, 2, 3, 4, 5, 7, 11, 12, 14–17, 21–23. Pull the certificates from Patent Center before filing anything, and confirm the Google Patents "Active, expires 2030-12-08" status is stale as to those claims.
- If assertion is limited to claims 6, 8–10, 13, 18–20: attack on two fronts — (i) a § 315(e)(2) estoppel check on any Samsung-source art, and (ii) a fresh IPR on the surviving dependent claims using the same Le/Victorian/Kurki/Stuckman family plus claim-specific secondary art, and/or § 112 indefiniteness/written-description grounds the PTAB never reached. Note the claims are dependent on canceled parents, which is itself a strong enablement/support argument for the specific added limitations.
- No live PTAB milestones to track. Both IPRs are terminated and both FWDs are affirmed, so there is no institution deadline, no FWD-due date, and no § 316(a)(11) one-year clock running. The only open item is administrative: issuance of the cancellation certificates.
- One loose end to verify. Google Patents lists a fourth Federal Circuit entry for this patent — No. 24-1917 — alongside 23-2305, 23-2306 and 23-2341. I could not verify what 24-1917 is from the sources available to me; it may be a further family appeal or a district-court appeal, and I am flagging it rather than characterizing it. Pull the CAFC docket directly before relying on that entry.
Generated 9/29/2026, 9:15:01 PM
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment chain and related records for US 8,111,839.
Let me search for specific assignment reel/frame records and entity details.
Assignment & Ownership Analysis — US 8,111,839 B2
Verification caveat up front: I could not open the USPTO Assignment Center database directly in this session (search tool only). Every reel/frame below is recovered from secondary sources — Google Patents legal events, IPR file histories filed with the PTAB, and Espacenet INPADOC. Where a reel/frame is not recoverable from those sources, I say so explicitly rather than guess. Confirm at USPTO Assignment Center (search 8111839) and the Google Patents legal events tab.
Inventors
| Inventor | Recorded address | Employer at filing |
|---|---|---|
| Steven Wayne Goldstein | Delray Beach, FL | Personics Holdings Inc. (assignor on 2008-06-30 record) |
| John Usher | — (also appears as "John P. Usher"/"John Usher" across the family) | Personics Holdings Inc. (assignor on 2008-06-30 record) |
Both inventors are named as assignors on the 2008-06-30 inventor→company assignment, which is the ordinary contractor/employee assignment pattern for a startup, not a red flag by itself. Goldstein appears repeatedly as first-named inventor across the Personics portfolio (e.g., US 8,194,865, US 8,600,067, US 9,609,424); Usher likewise (US 9,491,542, US 10,405,082). This is a long-tenured, single-team portfolio, not an inventor set assembled for assertion.
- Unusual-pattern check — 12-month inventor departure: unclear / not evidenced. I found no record of either inventor assigning away personal rights, departing, or forming a competing entity. Note the contrast with the later chain: the principals who matter for NPE analysis are Maria B. Staton and the Synergy IP founders (Ahn and Cho — see NPE signals), not the named inventors.
- Personics co-inventors Marc Boillot, Jason McIntosh, and John P. Keady appear on sibling Personics patents (e.g., app. 13/917,079) but not on the '839 patent — do not conflate them with this patent's inventorship.
Original assignee
Personics Holdings Inc. (Delray Beach, FL) — named assignee on the issued patent and on the Google Patents face record.
- Line of business: developer of in-ear-canal ("insert") earphone hardware and personal-sound/hearing-protection technology — the specification's earpiece with an ambient sound microphone (ASM), ear canal microphone (ECM), and ear canal receiver (ECR) is Personics' core product architecture.
- Did they ship a product embodying the claims? No evidence of a commercial product. I found no product, catalog, or retail availability for a Personics "Always-On Recording System." The company reads as an R&D/patent-holding venture, not a shipper. I cannot confirm this with high confidence and flag it as an inference from absence of evidence.
- Current status: no longer operating as an independent entity. The corporate form changed Inc.→LLC (2014-02-08 record), the IP was pledged as collateral (2013-04-19), a second security interest was granted (2014-11-05), and the portfolio was transferred to the secured party's affiliate (2017-06-26). Whether this was a negotiated sale, a secured-lender foreclosure, an assignment for the benefit of creditors, or a Chapter 7/11 liquidation is not determinable from the assignment record (see signal 6).
Assignment timeline
All dates from Google Patents legal events unless otherwise cited. Reel/frame shown only where actually recovered.
2008-06-30 (recorded 2008-06-30) — Reel/frame not recovered
- Conveyance: Assignment of interest (inventor→company)
- Assignor: Steven Wayne Goldstein; John Usher
- Assignee: Personics Holdings Inc.
- Correspondent: not recovered
- Context: original assignment — founders assign patent rights to the operating company at/near filing (application filed 2008-04-09; provisional 60/910,808 filed 2007-04-09).
2011-01-28 (recorded 2011-01-28) — Reel/frame not recovered
- Conveyance: Assignment of interest (appears confirmatory/corrective)
- Assignor: Steven Wayne Goldstein; John Usher
- Assignee: Personics Holdings Inc.
- Context: confirmatory assignment — a second inventor→same-assignee record roughly three years post-filing; typically corrects a defect in the original recordation (missing page, improper notarization, or omitted continuation/priority rights).
2013-04-19 (effective 2013-04-18) — Reel 030249/0078 (reel/frame confirmed on sibling Personics patent US 8,194,865 via Espacenet INPADOC; the '839 recording was made the same day and I infer the same reel block, but did not see the '839 frame directly)
- Conveyance: SECURITY AGREEMENT
- Assignor: Personics Holdings, Inc.
- Assignee: Staton Family Investments, Ltd. (Florida)
- Correspondent: not recovered
- Context: securitization — Personics pledges its patent estate as collateral to a private lender.
2014-02-08 (recorded 2014-02-08) — Reel/frame not recovered
- Conveyance: Assignment of assignors' interest
- Assignor: Personics Holdings, Inc.
- Assignee: Personics Holdings, LLC
- Context: internal reorganization / entity conversion — Inc.→LLC. Same principals, same estate; not a third-party transfer.
2014-11-05 (recorded 2014-11-05; listed twice in the Google record) — Reel/frame not recovered
- Conveyance: SECURITY INTEREST
- Assignor: Personics Holdings, LLC
- Assignee: DM Staton Family Limited Partnership (as assignee of Maria B. Staton)
- Context: securitization — second lien/restated security interest, now held by the Staton family partnership rather than Staton Family Investments, Ltd.
2017-06-26 (recorded 2017-06-26) — Reel/frame not recovered
- Conveyance: Assignment of assignors' interest
- Assignor: Personics Holdings, Inc. and Personics Holdings, LLC
- Assignee: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd. (a Wyoming partnership, 6800 Broken Sound Parkway, Suite 200, Boca Raton, FL 33487)
- Context: secured-lender acquisition / wind-down — the collateral holder takes title outright. This is the point at which the patent leaves the operating-company chain permanently.
2017-06-26 (recorded 2017-06-26; chain-of-title statement executed 2017-12-04) — Reel 043393/0001 (assignee's name originally recorded at Reel 042992/0493 and assignor's name at Reel 042992/0524, both corrected 2017-08-01)
- Conveyance: Intellectual Property Assignment Agreement (assignment of interest)
- Assignor: DM Staton Family Limited Partnership, assignee of Staton Family Investments, Ltd.
- Assignee: Staton Techiya, LLC — a Delaware LLC, 16193 Bridlewood Circle, Delray Beach, FL 33445
- Correspondent: Peter Allen Chiabotti / Angela Martin, USPTO Customer No. 150139 — Chiabotti signed the 37 CFR 3.73(c) chain-of-title statement dated 2017-12-04 that cites Reel 043393/0001. Flag: this same correspondent and customer number recur across multiple Personics/Staton patents (e.g., app. 13/917,079 and US 8,150,044), per IPR file-history exhibits — i.e., a repeat correspondent for the whole asserted portfolio, not just this patent.
- Context: transfer-to-asserter — IP moved out of the passive family LP into a purpose-built litigation vehicle. The agreement recites assignment of "all Staton's intellectual property that was previously owned by Personics Holdings, LLC and/or Personics Holdings, Inc.," including "all claims and causes of action … for past, present, and future infringement" — a clean standing record for later suit.
2017-08-01 (recorded 2017-08-01, two entries) — Reel 042992/0493 and Reel 042992/0524 (the corrected instruments)
- Conveyance: Corrective assignment (to correct assignee's name; to correct assignor's name)
- Assignor / Assignee: as in entry 7
- Context: chain-of-title cleanup on the transfer-to-asserter — routine clerical repair of the instruments recorded 2017-06-26.
2024-06-21 (recorded 2024-06-21) — Reel/frame not recovered
- Conveyance: Assignment of interest
- Assignor: Staton Techiya, LLC
- Assignee: ST Portfolio Holdings, LLC
- Context: internal reorg of the asserters' patent-holding structure — same principals, new holding company, executed four days after the consolidated E.D. Tex. judgment against Techiya.
2024-06-21 (recorded 2024-06-21) — Reel/frame not recovered
- Conveyance: Assignment of interest
- Assignor: ST Portfolio Holdings, LLC
- Assignee: ST Case1Tech, LLC
- Context: internal reorg / litigation-vehicle split — the appealed patents were moved into a vehicle whose only purpose is to carry the Federal Circuit appeals; the Fed. Cir. substituted ST Case1Tech, LLC as appellant in the consolidated appeals (Fed. Cir. Oct. 9, 2025 opinion).
Current owner of record (Google Patents / Unified Patents both list): ST Case1Tech, LLC, with ST Portfolio Holdings, LLC as parent. Onscope's ownership census lists ST Portfolio Holdings, LLC at ~250 patents and ST Case1Tech, LLC at ~52 — i.e., these are large, real portfolio holders within the Staton family, not single-patent shells (Onscope).
Timeline diagram
timeline
title Ownership of US 8111839
2007 : Provisional filed by inventors
2008 : Filed by Personics Holdings Inc
: Inventors assign to Personics Holdings
2011 : Confirmatory assignment to Personics
2012 : Patent issued
2013 : Security agreement to Staton Family Investments
2014 : Personics Holdings Inc to Personics Holdings LLC
: Security interest to DM Staton Family LP
2017 : Foreclosure transfer to DM Staton Family LP
: Assigned to Staton Techiya LLC
: Corrective assignments recorded
2021 : Suit filed against Samsung
: Samsung IPR petitions filed
2023 : PTAB invalidates most claims
2024 : Assigned to ST Portfolio Holdings LLC
: Assigned to ST Case1Tech LLC
: Case dismissed for unclean hands
2025 : Federal Circuit affirms
NPE / troll-pattern signals
1. Shell-entity transfer — PRESENT.
Concrete: Reel 043393/0001 (2017-06-26) moves the entire Personics estate from a Wyoming limited partnership into Staton Techiya, LLC, a Delaware LLC at a Delray Beach residential address, whose stated purpose in the assignment agreement is to hold and enforce the IP. That is followed by two further LLC-to-LLC hops on 2024-06-21 (Staton Techiya → ST Portfolio Holdings → ST Case1Tech). A "Holdings"-suffixed holding company plus a litigation-specific vehicle, with no products in commerce, satisfies the pattern. Caveat on the constraint you set: I am not calling these shells on the basis of naming; the finding rests on (a) the assignment instruments, (b) the absence of any commercial product, and (c) the 2024-06-21 reorg landing in a vehicle whose only observable function is to hold Fed. Cir. appeals.
2. Known asserter in the chain — PRESENT.
Staton Techiya, LLC is a high-frequency patent plaintiff and is flagged as an NPE by the Unified Patents portal. Suits on this and sibling patents include Staton Techiya, LLC v. [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.), No. 2:21-cv-00413 (E.D. Tex., filed 2021-11-04, closed 2024-06-20); Staton Techiya v. Samsung, No. 2:23-cv-00319 (E.D. Tex., filed 2023-07-10); Staton Techiya v. Harman Int'l Indus., No. 1:23-cv-00802 (D. Del., filed 2023-07-25). Separately, Synergy IP Corporation — which took an enforcement license from Staton Techiya — is itself designated an NPE/PAE by Unified Patents. I did not find Staton Techiya, ST Portfolio Holdings, or ST Case1Tech on the classic Acacia / Marathon / IV / Wi-LAN / Conversant / Pendrell lists; the match is via Unified Patents and RPX-style litigation directories, not the legacy roll-up lists.
Note on the Google Patents metadata: the IPR2022-00242 / IPR2022-00243 entries are attributed to "Unified Patents PTAB Data" and show a blank petitioner field. That is the data vendor, not the petitioner. The actual petitioner on both IPRs was Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (PTAB FWD, IPR2022-00242, Paper 36). Do not record these as Unified Patents filings.
3. Repeat correspondent across the chain — PRESENT (portfolio-level).
The recurring recording/filing correspondent is Peter Allen Chiabotti (with Angela Martin), USPTO Customer No. 150139, who executed the 37 CFR 3.73(c) chain-of-title statements tying Staton Techiya back through DM Staton Family LP and Personics for multiple patents in the estate (app. 13/917,079; US 8,150,044; and by extension the '839 family). The presence of a single customer number running chain-of-title for the whole family is exactly the "the LLCs change, the lawyer doesn't" tell. Caveat, per your instruction: I have confirmed Chiabotti at the family level via IPR file histories, not on each individual reel/frame of the '839 chain — the pre-2017 instruments' correspondents remain unrecovered, and Peter A. Chiabotti is a Delray Beach patent attorney who also does ordinary operating-company work, so I weight this as one strong-but-cross-referenced signal, not as a stand-alone finding.
4. Cascading transfers — PRESENT.
Three transfers on 2017-06-26 alone (Personics Inc.+LLC → DM Staton Family LP, and DM Staton Family LP → Staton Techiya, plus two corrective assignments on 2017-08-01), then two more LLC-to-LLC assignments on the same day, 2024-06-21. That is a terminal-gratis chain being re-papered twice within 24 months, in both cases on the eve of or immediately after litigation milestones.
5. Pre-litigation transfer — NOT PRESENT for the first suit; UNCLEAR for the Synergy arrangement.
The last recorded transfer before the 2021-11-04 complaint is 2017-06-26 — more than four years prior, so the recorded chain does not show a within-six-months setup. However, contemporaneous reporting states that "Staton Techiya assigned its rights to enforce its patents to Synergy IP" before the 2021 case (ABA Journal), and I found no USPTO recordation of that enforcement assignment. If it exists unrecorded, the pre-litigation-transfer call flips to present. Flag as unresolved.
6. Bankruptcy fire-sale — UNCLEAR.
The 2013-04-19 security agreement, the 2014-11-05 security interest, and the 2017-06-26 transfer of title to the secured party's affiliate is the classic secured-lender workout pattern, and DM Staton Family LP is named "as assignee of Maria B. Staton" — i.e., the lender took the collateral. But a UCC foreclosure is not a Chapter 7/11 sale, and I found no bankruptcy docket, 363 sale order, or SEC filing evidencing a Personics insolvency proceeding. Do not record this as a bankruptcy fire-sale on the current record.
7. Privateering — NOT PRESENT.
No operating company is using this NPE to attack competitors on its behalf. Personics was wound down before assertion began; the asserting entities (Staton Techiya, Synergy IP) hold no products. This is a pure financial-owner chain, not privateering.
8. Defensive aggregator — NOT PRESENT.
The chain terminates at ST Case1Tech, LLC, an asserter-side litigation vehicle, not RPX / AST / LOT / Unified Patents / OIN. There is no neutralizing signal.
Verdict
NPE — high confidence.
Two or more strong signals are documented on the face of the record: (i) a shell-entity/transfer-to-asserter chain — Reel 043393/0001 (2017-06-26) conveys the estate from DM Staton Family Limited Partnership into Staton Techiya, LLC, a Delaware LLC with a residential Delray Beach address whose assignment agreement expressly sweeps in "all claims and causes of action … for past, present, and future infringement," followed by two further LLC hops on 2024-06-21 into ST Portfolio Holdings, LLC and ST Case1Tech, LLC; and (ii) a known asserter — Staton Techiya is designated an NPE by Unified Patents and filed the 2021-11-04 Samsung action (2:21-cv-00413) and the 2023 cases against Samsung and Harman asserting this patent, which the PTAB then held unpatentable in IPR2022-00242 (claims 1, 5, 7, 11, 12, 14–17, 21–23) and IPR2022-00243 (claims 1–4), affirmed by the Federal Circuit on 2025-10-09. The recurrence of USPTO Customer No. 150139 (Peter Allen Chiabotti) across the family's chain-of-title filings is a third, portfolio-level corroborating signal.
Verify at: USPTO Assignment Center — search 8111839 · Google Patents legal events · Unified Patents litigation record, 2:21-cv-00413
Gaps I could not close (do not treat as findings)
- Reel/frame for the 2008, 2011, 2014 (both), 2017-06-26 Personics→DM Staton, and 2024 records. Only 030249/0078, 042992/0493, 042992/0524, and 043393/0001 are recovered, and 030249/0078 is confirmed on a sibling patent rather than on the '839 record itself.
- Correspondents of record for every pre-2017 instrument.
- Whether Personics Holdings underwent a formal insolvency proceeding in 2016–2017, and the consideration paid in the 2017 transfer.
- Whether the Synergy IP enforcement assignment was ever recorded.
One cross-reference note: the previously generated section on this patent consists only of a research note, so nothing here contradicts it. The only correction to carry forward is the petitioner mislabel in the Google Patents litigation metadata (Unified Patents is the data provider; Samsung was the IPR petitioner).
Generated 9/29/2026, 9:14:58 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior-art citations for US 8,111,839. Let me start with the cited references and the IPR art, verifying against live sources.
Let me get details on the remaining IPR references and the examiner-cited art.
I've gathered the key bibliographic and technical details. Note: I hit a step limit before completing searches for a few of the less-common IPR references, so I've flagged those as unverified rather than guess. Here is the prior-art analysis.
Prior Art Analysis — US 8,111,839 B2 ("Always on headwear recording system")
ID interpretation (per your strict rule): I read the target as US 8,111,839 B2 (app. 12/100,281) and did not substitute any similar number. All reference numbers below are reproduced literally as they appear in the patent text and the PTAB record.
Sources actually consulted (UPSPTO primary where possible): the full Google Patents text of the '839 patent (which mirrors the USPTO front page and examiner citations); the USPTO PTAB trial documents at ptacts.uspto.gov for IPR2022-00242 / IPR2022-00243 (the Final Written Decisions and Petition exhibits); and Google Patents bibliographic records for the individual references. I did not open the USPTO PatentCenter "References Cited" pane directly, so I cannot certify I have the examiner's complete citation list — I have (a) the references discussed in the '839 specification and (b) the art the PTAB actually relied on. Those are the two sets that matter.
⚠️ Critical framing before the reference-by-reference table
Your task asks which claim(s) each reference "potentially anticipates under 35 U.S.C. § 102." Two corrections are necessary, because getting this wrong would materially mislead:
- No reference was found to anticipate any claim of the '839 patent under § 102 — every invalidity holding was § 103 obviousness. Both Final Written Decisions (IPR2022-00242 and IPR2022-00243) rest exclusively on § 103(a) combinations (Le + Victorian; Le + Armstrong + Kvaløy + Hall), not anticipation. There is accordingly no § 102-record against any claim in this patent.
- Most of the references printed on the '839 face are background/distinguishing art, not § 102 art. The specification cites them expressly to explain how the invention differs. As § 102 references they are relevant at the element level (i.e., to individual limitations), not to whole claims.
So the honest structure is: § 102 anticipation of claim 1 as issued = none identified; § 102 relevance to individual claim elements and to narrower dependent claims = yes, for several references, and § 103 relevance = decisive, for the IPR art.
Group A — References cited in the '839 specification (the patent's own "References Cited" backbone)
A1. US 6,728,385 B2 — Kvaløy et al. (Nacre AS)
- Title / citation: "Voice detection and discrimination apparatus and method," US 6,728,385 B2, assignee Nacre AS.
- Dates: filed 2002-02-28; issued 2004-04-27 (verified via Google Patents).
- Description: Ear terminal with a sealing section in the ear canal housing an ambient/outer microphone (M1) and an inner/ear-canal microphone (M2), comparing the two signal levels to detect and discriminate the wearer's voice (VOX / push-to-talk). The '839 spec describes it as "us[ing] the assembly described in U.S. Pat. No. 7,039,195 to detect user-created voice by comparing the signal level of the ECM and ASM's…"
- § 102 relevance: Potentially anticipates the claim-1 preamble sub-elements of (i) an earpiece forming an acoustic seal of the ear canal, (ii) an ASM/outer mic, (iii) an ECM/inner mic, and the "signal processing / equalize" concepts behind claims 2–4. It does not disclose the circular buffer, the further storage device, or the record-activation system, so it does not anticipate claim 1 as a whole (nor any claim that requires those elements). Kvaløy is also the "Kvaløy" reference used in both IPRs.
A2. US 7,039,195 B2 — ear terminal device (Nacre AS family)
- Dates: not independently verified in this session (Nacre AS family; issued mid-2000s) — verify at USPTO.
- Description: Ear plug forming a seal in the user's meatus housing: an ambient sound microphone (outside the meatus), an ear canal receiver (reproducing a mix of ASM sound + remote audio), and an ear canal microphone (blocked ear canal); includes electronics for active noise cancellation using ASM + ECR.
- § 102 relevance: Along with A1, this is the closest prior art to the structural core of claim 1 (ASM at the canal entrance + ECM in the sealed canal). Alone it lacks any recording/archival function, so it cannot anticipate claim 1. It is the reference from which the '839 spec expressly distinguishes itself.
A3. US 6,661,901 B1 — "Ear terminal with microphone for natural voice rendition"
- Dates: not independently verified. ⚠️ Data error flag: a scraped Unified Patents page (
portal.unifiedpatents.com/patents/patent/US-6661901-B1) returned a "Priority Date: 2007-04-08" and the title "Always on Headwear Recording System" for this number — that is the '839 patent's data mis-mapped onto the '901 record. Do not rely on that page; the '839 spec identifies US 6,661,901 as a Nacre-family "natural voice rendition" patent. - Description: Uses the A2 assembly plus signal processing to transform the ECM signal into a signal that sounds natural when auditioned via the ECR.
- § 102 relevance: Element-level only (ECM signal processing); no recording architecture → no claim anticipation.
A4. US 5,946,050 — keyword-triggered recording with a circular buffer
- Dates: not verified this session (1999-era) — verify at USPTO.
- Description: Monitors a broadcast audio signal for particular verbal "keywords" that activate a recording system; uses a circular audio buffer so audio before the keyword is captured.
- § 102 relevance: The single most § 102-proximate reference to the record-activation + circular buffer concept (claim 1 elements (d)–(f)) — but its captured signal is a broadcast, not an ASM/ECM in an occluded earpiece, and it lacks the sealing earpiece. The '839 spec distinguishes it on exactly that basis ("specifically using binaural microphone output signals as the recorded data"). Not anticipatory of claim 1.
A5. US 5,917,410 — transient-event (breaking-glass) detector
- Description: Detects breaking glass by multiband pressure/voltage envelope-profile analysis with inter-band phase.
- § 102 relevance: Element-level support for the transient-event-detector concept used in activation, not a claim element of issued claims 1–7 → no anticipation.
A6. US 2004/0268078 A1 — low-remaining-memory detection
- Published: ~2004-12-30 (not independently verified).
- Description: Detects low remaining computer data memory using two separate memory segments. The '839 spec distinguishes it: the AORS does not require two separate segments.
- § 102 relevance: Element-level for the Low-Memory Warning System; no claim of the '839 patent as issued is anticipated.
A7. US 2006/0182287 A1 — earphone monitoring system
- Published: ~2006-08-17 (not independently verified).
- Description: ASMs mounted at the entrance to an occluded ear canal plus ear-canal receivers in the same earphone.
- § 102 relevance: Element-level for claim 1's ASM "at an entrance to the ear canal occluded by the earpiece." Lacks recording → not anticipatory. This is the reference the '839 spec names as closest structural cousin ("differs… with the addition of a sound recording system").
A8. US 5,887,070 and US RE38,351 E — insert earphones (no sound sensors)
- Description: Insert earphone reproducing audio content from a media player/cell phone; RE38,351 uses a receiver in a soft-foam sealing assembly. The '839 spec distinguishes both for lacking any sound sensors or recording.
- § 102 relevance: Element-level for the "earpiece forming a seal" only; no claim anticipation.
A9. US 4,088,849 and US 4,819,270 — binaural recording systems
- Description: Circum-aural (4,088,849) and near-pinna (4,819,270) microphone pairs for binaural recording; distinguished because their mics are not at the ear-canal entrance.
- § 102 relevance: Element-level for "binaural recording"; not anticipatory of the intrameatal-ASM limitation.
A10. US 6,433,690 and US 6,647,368 — motion / head-location sensing
- Description: US 6,433,690 = accelerometer fall detection; US 6,647,368 = head-location changes via paired microphones sensing pressure inside vs. outside an occluded canal.
- § 102 relevance: Element-level support for the accident-detector/activation concept; not claim elements of issued claims 1–7 → no anticipation.
A11. US 6,567,524 — ear-plug fit verification
- Description: Reproduces a test signal via the ECR and measures the ECM response to verify correct fit.
- § 102 relevance: Element-level (ECR/ECM test); no claim anticipation.
A12. Kracht et al., 2006 — non-patent literature
- Description: Operating-room sound-pressure-level data (referenced for the >120 dB example).
- § 102 relevance: Background/technical-support only; not § 102 art against any claim.
Group B — The art that actually invalidated the claims (the operative prior art)
This is the set a defendant/analyst should weight most heavily, because these are the references the Board held render the claims unpatentable — and that holding is now final and affirmed (Fed. Cir. Nos. 23-2305 / 23-2306, 2025-10-09).
B1. Le et al. — US 2003/0161097 A1 ★ primary reference
- Citation: US 2003/0161097 A1, Dana Le (et al.), "Wearable computer system and modes of operating the system."
- Dates: filed 2002-02-28; published 2003-08-28 (verified via Google Patents/patentimages PDF).
- Description: A wearable computer with an earpiece (personal mic 36 + speaker 32) and an environmental microphone 38; it "continuously stores, in a scrolling buffer, audio information… from the user's surroundings," and upon a predetermined voice command (e.g., "store that," "start recording") it saves a clip (e.g., 30 sec/1 min around the event) from the scrolling buffer into memory 18 for later retrieval.
- § 102 / § 103 relevance: Discloses, in substance, the claim 1 core of (d) circular/scrolling buffer, (e) further memory 18, and (f) software record-activation triggered by a command, plus an "audio receiver worn by the user." The PTAB found claim 1 unpatentable over Le + Armstrong + Kvaløy (IPR2022-00243, Ground 1A) and claims 1, 6, 22, 23 over Le + Victorian (IPR2022-00242, Ground 1A). Le alone lacks the occluded-ear-canal seal and the ECM-in-sealed-canal limitation, so it is not a § 102 anticipation of claim 1 as issued — but it is the displacing reference.
B2. Armstrong — US 7,430,299 B2
- Citation: US 7,430,299 B2, Csermak & Stephen W. Armstrong, "System and method for transmitting audio via a serial data port in a hearing instrument," assignee Sound Design Technologies, Ltd.
- Dates: filed 2004-04-12 (app. 10/822,519); issued 2008-09-30 (verified).
- Description: Hearing instrument with front and rear microphones, A/D converters, and selection circuitry 48 (a multiplexer) feeding a serial data port (SDA) 50 that streams/records any of the audio input, processed, or output signals to an external device (PC), configurable via a control signal from an external device. Expressly contemplates non-diagnostic / recreational use (streaming music, recording).
- § 102 / § 103 relevance: Maps to claim 2's "signal router and switching matrix," claim 3's "AORS configuration system," and claim 4's "multiplex/encode" — the Board so held in IPR2022-00243 and IPR2022-00242. Element-level § 102 relevance; whole-claim invalidity via § 103 combination. (Note: the Armstrong family includes related numbers, e.g., US 6,937,738 and US 8,121,323 — do not conflate these with US 7,430,299.)
B3. Hall — US 6,021,325
- Dates: issued 2000-02-01 (per the PTAB record as summarized earlier).
- Description: Added as a secondary reference in the Le + Armstrong + Kvaløy + Hall combination for claims 2–4.
- § 102 relevance: Secondary/§ 103 art; I did not independently verify Hall's full bibliographic data or disclosure this session → treat as unverified.
B4. Kvaløy — US 6,728,385 B2
- Same reference as A1. Second-use as the sealing-section teaching for the Le combinations. (The Board credited Kvaløy's blocking function and its incorporation by reference of application 09/653,869 (Svean, "869App") for feedback cancellation.)
B5. Victorian — (reference)
- Unverified. Cited in both IPRs as the co-primary reference with Le (Ground 1A/1D/1F/1G underpinning claims 1, 6, 8–10, 14–17, 21–23). The Board noted "both Kvaløy and Victorian disclose capabilities similar to Armstrong in an in-ear-canal earpiece." I could not retrieve Victorian's patent number, dates, or disclosure → do not attribute a § 102 position to it until verified.
B6. Sjursen — US 7,756,285 B2 (probable)
- A search surfaced "7,756,285 B2 — 7/2010 — Sjursen et al." in the PTAB exhibit stream, matching the "Sjursen" reference used against claims 8–10 (Ground 1D). Verify number/title/dates at USPTO before citing.
B7. Kurki — (reference)
- Used against claims 14–17 (the "audio forensics analysis system" claims; Ground 1F, Le + Victorian + Kurki). The Board construed "audio forensics analysis" broadly (encompassing speech-to-text) and invalidated claims 14–17 over this combination. I could not verify Kurki's full citation → unverified.
B8. Stuckman — (reference)
- Used against claim 21 (Ground 1G, Le + Victorian + Stuckman). Unverified.
§ 102 anticipation assessment — map by claim
| Claim (as issued) | Closest single reference | Can it anticipate alone under § 102? | Why / what's missing |
|---|---|---|---|
| 1 (independent) | Le US 2003/0161097 (+ A1/A2 for the earpiece) | No | Le has buffer + further memory + software activation, but no acoustic-seal earpiece / ECM-in-canal; Kvaløy/Nacre have the earpiece but no recording. No single reference has all of (a)–(f). |
| 2 (router/matrix) | Armstrong US 7,430,299 | No alone | Selection circuitry/multiplexer present, but claim 2 depends from claim 1's recording architecture. |
| 3 (config system) | Armstrong US 7,430,299 | No alone | External control signal for the mux present; same dependency problem. |
| 4 (multiplex/encode ↓data rate) | Armstrong US 7,430,299 | No alone | Serial/multiplex output present; Board held the "reduce data rate" attaches to encoding, not multiplexing. |
| 5 (buffer output multiplex/encode) | Le | No alone | Buffer yes; pre-transmission encoding not shown by one reference. |
| 6 (time-stamp index) | none identified | No | Claim 6 survived IPR2022-00242 (not proven unpatentable). |
| 7 (pressure-equalization tube) | none identified | No | Invalidated by § 103, not § 102. |
| 14 ("remote audio forensics analysis system") | Kurki-based combination | No alone | Invalidated only by § 103 (Le + Victorian + Kurki), on the broad "analysis" construction. |
| 6, 8–10 | — | No § 102 record | These were challenged but not proven unpatentable; they remain the only live claims. |
Bottom line on § 102: There is no reference, cited or in the IPR record, that anticipates any claim of US 8,111,839 on its own. The patent fell to § 103 obviousness over Le-based combinations. Any § 102 argument against these claims would have to be built fresh, element-matching a single reference to the full claim-1 limitation set — and no single located reference does that.
Uncertainty flags (do not treat unverified items as findings)
- Victorian, Kurki, Stuckman — full citations/dates/disclosures not verified. Victorian and Kurki are load-bearing (they invalidated claims 1/14–17), so a citation-accurate filing requires pulling the IPR Petition exhibit lists (
Ex. 1005–Ex. 1054ranges) fromptacts.uspto.gov. - Sjursen — number (probable US 7,756,285 B2) and dates not confirmed.
- Prior-art dates for the older front-page references (US 5,887,070; RE38,351; US 5,946,050; US 5,917,410; US 6,433,690; US 6,647,368; US 6,567,524; US 4,088,849; US 4,819,270; US 7,039,195; US 6,661,901; US 2004/0268078; US 2006/0182287) were not independently verified in this session — confirm each at USPTO PatentCenter/Google Patents before filing.
- Data-error warning: the Unified Patents page for US 6,661,901 B1 displays the '839 patent's title and a 2007 priority date — a record mis-mapping. Use the patent number literally; do not import its fields.
- I did not obtain the examiner's complete "References Cited" list from the '839 front page. The references above are those discussed in the specification plus the IPR art. There may be additional examiner-cited U.S. patent documents not captured here.
- § 102 vs § 103: As set out above, the record contains no § 102 anticipation holding. Please do not represent any of these references as anticipatory; the operative and now-final invalidity theory is § 103.
Primary sources: https://patents.google.com/patent/US8111839/en · USPTO PTAB IPR2022-00242 & IPR2022-00243 FWDs and Petition exhibits at https://ptacts.uspto.gov/ptacts/public-informations/petitions/1548785/… · https://patents.google.com/patent/US20030161097A1 · https://patents.google.com/patent/US6728385B2 · https://patents.google.com/patent/US7430299B2
Generated 9/29/2026, 9:23:48 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground the reference details before building the § 103 analysis.
Now let me verify the remaining reference identities and their prior-art dates.
Obviousness Analysis — US 8,111,839 B2 under 35 U.S.C. § 103
Scope note and contradiction flags first, because they gate everything below.
- Claim text available to me in this record is truncated. The authoritative text I can work from covers claims 1–7 (claim 7 cut off at "…equalize a pressure in the ear c") plus claim 14 (quoted in the § 282/CAFC materials). I cannot quote or claim-by-claim chart claims 8–13 and 15–23. Where the prior sections inferred claim scope from the specification rather than the claims, I do not treat that as claim scope. This is the single biggest limitation on this § 103 opinion.
- Internal inconsistency in the previously generated sections, now flagged. The "Patent summary" section resolves Docket No. 24-1917 as the E.D. Tex. judgment appeal dismissed 2024-12-20; the "PTAB challenges" section lists 24-1917 as an unverified "loose end." I treat the summary section as controlling (it is the more specific, later statement) but the two sections do not agree on their face.
- Date inconsistency. The task header says April 26, 2026; the front matter of this record says 2026-09-29. It does not affect the § 103 analysis (all relevant art and holdings predate both), but note the record is internally inconsistent on "today."
- Not corrected: the Google Patents PTAB entries are attributed to "Unified Patents PTAB Data" with a blank petitioner — the data vendor, not the filer. The filer was Samsung Electronics Co., Ltd. and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) (confirmed in the FWD caption, IPR2022-00242 Paper 36).
I. Governing law and the § 103 framework
The application was filed April 9, 2008 with a April 9, 2007 provisional (60/910,808). Pre-AIA 35 U.S.C. § 103(a) governs, and the Board applied exactly that: the FWD outcome table in IPR2022-00242 records the ground column as "103(a)." The inquiry is Graham v. John Deere, 383 U.S. 1 (1966) — scope/content of the prior art, differences, PHOSITA level, secondary considerations — as tempered by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
PHOSITA. Neither FWD's POSITA definition is reproduced in my sources. What the record does establish is the practical level: the art is conventional electroacoustics and embedded DSP — insert earphones, MEMS/electret microphones, digital gain/EQ, lossy or lossless audio codecs, circular RAM buffers. A representative definition (and I flag this as not verified against the FWDs) would be a bachelor's in EE/CS or equivalent plus ~2 years in ear-level acoustic device design. Nothing in the case turns on a fine-grained PHOSITA dispute.
Key operative point: because the entire asserted subject matter is a rearrangement of known electroacoustic and signal-processing components with predictable results, the KSR rationales carry unusual force here. This is not an unpredictable-biology case.
II. Prior-art roster (the "Prior Art section")
A. Art run in the two IPRs
| Ref. | Identity (verified in this session unless noted) | Statutory role | Disclosure, as grounded in the record | Used against |
|---|---|---|---|---|
| Le | US 2003/0161097 A1 (Le et al.), pub. 2003-08-28 | § 102(b) | Wearable computer 10; earpiece 30 housing speaker 32 and personal microphone 36; separate environmental microphone 38 (belt-mounted); memory 18; a continuously scrolling buffer of surrounding audio; a voice command ("record"-type) causes a "thirty-second sound byte surrounding the event" to be input from mic 38 and saved into memory 18. Also: computer unit 15 receives/transmits audio content from a cellular telephone; processor 16 executes stored instructions recognizing spoken commands. | -00242 (all grounds); -00243 (claims 1–4) |
| Victorian | EP 1519625 A2 (Ex. 1007) | § 102(b) (if published pre-2007-04-09 — not verified) | Disclosure not retrieved in this session. From the petition's own table of contents it is the common second reference in every ground of IPR2022-00242 (Grounds 1A/1D/1F/1G), i.e., the reference the petitioner paired with Le for claims 1, 6, 22, 23 — evidently supplying the ear-sealing earpiece / ear-level ambient-sound microphone architecture. Flagged as unverified. | -00242, all grounds |
| Sjursen | US 7,756,285 B2 ("Personal audio assistant device and method") | § 102(e)-type | Input acoustic transducers for the user's speech and environmental audio; stereo input transducers capture environmental audio and mix it into the audio signal path to present the ambient field to the user without removing the headphone. | -00242, Ground 1D (claims 8–10) |
| Kurki | US 9,123,343 (Ex. 1012) | Board necessarily found it qualifying prior art (it sustained the ground on it); issue/filing history not verified here | Disclosure not retrieved. Used for the remote "audio forensics analysis" claims 14–17. | -00242, Ground 1F (claims 14–17) |
| Stuckman | US 2004/0109668 A1, pub. 2004-06-10 | § 102(b) | Disclosure not retrieved. | -00242, Ground 1G (claim 21) |
| Armstrong | US 7,430,299 B2 | § 102(e)/§ 102(a) | Hearing instrument usable as a wireless cell-phone earpiece (in-ear, sealed-benefit architecture). | -00243 (claims 1–4) |
| Kvaløy | US 6,728,385 B2 — expressly cited on the face of the '839 patent | § 102(b) and applicant admission | Ear terminal with BOTH an ambient sound microphone (ASM) and an ear canal microphone (ECM) in one earphone assembly, comparing ECM/ASM signal levels to drive a VOX push-to-talk switch. | -00243 (claims 1–4) |
| Hall | US 6,021,325 | § 102(b) | Disclosure not retrieved. Used for the audio-content / signal-processing-router claims 2–4. | -00243 (claims 2–4) |
Ground mapping (verified from the petition's table of contents and the FWD outcome table):
- IPR2022-00242: 1A = Le + Victorian (claims 1, 6, 22, 23); 1D = Le + Victorian + Sjursen (claims 8–10); 1F = Le + Victorian + Kurki (claims 14–17); 1G = Le + Victorian + Stuckman (claim 21). Outcome row: unpatentable 1, 5, 7, 11, 12, 14–17, 21–23; not unpatentable 6, 8–10.
- IPR2022-00243: 1 = Le + Armstrong + Kvaløy; 2–4 = Le + Armstrong + Kvaløy + Hall. Outcome: claims 1–4 unpatentable. Opinion at https://www.cafc.uscourts.gov/opinions-orders/23-2305.OPINION.10-9-2025_2585626.pdf; FWD embedded at https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/Staton_Techiya_LLC_et_al_v._Samsung_Electronics_Co._Ltd._et_al/docs/986/3.pdf
B. The patent's own Background — an admission matrix
This is the strongest and most under-used part of the record. Under § 103, statements in the applicant's own specification describing the prior art are admissions usable against the claims. The '839 Background hands the analyst a near-complete roadmap:
| Admitted art | What the '839 patent itself says it discloses |
|---|---|
| US 6,728,385 (Kvaløy) | System using an assembly with ECM and ASMs in one earphone |
| US 7,039,195 | Ear terminal: ear plug sealing the meatus; ASM outside the meatus; ECR reproducing ASM-derived and remote audio; ECM in the blocked canal; ANC using ASM+ECR |
| US 2006/0182287 | Microphones at the entrance to an occluded ear canal (ASMs) and ear-canal receivers in the same earphone — the patent says it differs only by "the addition of a sound recording system… and a recording activation system" |
| US 5,946,050 | Monitoring broadcast audio for keywords that activate a recording system — using a CIRCULAR audio buffer so audio before the keyword is captured |
| US 4,088,849 / 4,819,270 | Binaural recording systems (not "true binaural" because the mics are not at the meatus) |
| US 6,661,901 / 6,567,524 | ECM→ECR processing for naturalness; seal-integrity testing via ECR test signal cross-correlated with ECM |
| US 5,917,410 | Transient-event detector for breaking glass |
| US 6,433,690 / 6,647,368 | Accelerometer fall detection; head-location detection via pressure changes inside vs. outside an occluded canal |
| US 2004/0268078 | Low-remaining-memory detection (distinguished only on the "two memory partitions" point) |
The obviousness consequence is direct: the '839 patent's own Background discloses the ear-sealing earpiece with co-located ASM + ECM + ECR (2006/0182287; 7,039,195; Kvaløy) and keyword-triggered archiving from a circular buffer (5,946,050). The only delta the applicant asserted over 2006/0182287 was "a sound recording system … and a recording activation system," and the only delta asserted over 5,946,050 was "specifically using binaural microphone output signals as the recorded data." Combining an admitted recording-buffer/activation architecture with an admitted ASM/ECM earphone is the textbook KSR "arrangement of old elements, each performing the same function it had been known to perform." A defendant needs no third-party art at all for that theory.
III. Claim 1 — the independent claim, and two independent obviousness routes
Claim 1 requires: (a) a first monitoring assembly mounted in an ear-sealing earpiece, with an ASM monitoring the ambient field at the entrance to the occluded canal producing an ASM signal; (b) a second monitoring assembly in the same earpiece with an ECM monitoring the field inside the occluded canal producing an ECM signal; (c) a data storage device acting as a circular buffer for continually storing at least one of the ECM/ASM signals; (d) a further data storage device coupled to it; (e) a record-activation system including software that activates the further device to record the content of the buffer.
Route 1 — Le + Armstrong + Kvaløy (+ Hall) — the -00243 theory
| Limitation | Where taught / why suggested |
|---|---|
| ASM in an ear-level device | Le's environmental microphone 38 plus Le's earpiece 30 (which already houses speaker 32 and personal mic 36). Le's mic 38 is belt-mounted, not ear-mounted — the only genuine structural gap. Kvaløy (admitted art on the face of the '839 patent) and US 2006/0182287 both show the ambient mic placed at the ear canal entrance, so relocating Le's ambient mic into Le's earpiece is a predictable substitution of a known element's location (KSR). |
| ECM in a sealed canal | Kvaløy '385 — expressly an ear-terminal with both ECM and ASM; Armstrong — a hearing instrument (in-canal) used as a wireless earpiece. |
| Circular buffer, continually storing | Le's scrolling buffer: single memory continuously storing surrounding audio that is overwritten after a predetermined period. As the petitioner argued (and the Board accepted), a POSITA reads that as a circular buffer. Le's mic-derived audio is the ASM-side signal once the ambient mic is relocated. |
| Further storage coupled to the buffer | Le's memory 18 — the "thirty-second sound byte surrounding the event" saved on the voice command; a POSITA would implement the scrolling buffer and memory 18 as separate storage. |
| Activation system including software | Le's processor 16 executing instructions to recognize spoken commands ("start recording") that trigger storage of the buffer contents into memory 18. |
Route 2 — Le + Victorian — the -00242 theory
Same core mapping, with Victorian supplying the ear-sealing/ear-level microphone architecture instead of Armstrong/Kvaløy. The Board found claim 1 unpatentable on this ground and the Federal Circuit affirmed, and Techiya did not even brief the -00243 decision (Fed. Cir. op. at 6–7: "Because Techiya makes no argument for error in the latter decision, we affirm that decision without further discussion").
Route 3 — pure admissions theory (no third-party art required)
US 2006/0182287 (admitted: ASMs at the occluded-canal entrance + ear-canal receivers in one earphone) + US 5,946,050 (admitted: keyword-activated recording into a circular audio buffer to preserve pre-trigger context) + US 7,039,195 / 6,728,385 (admitted: the ECM). The applicant's own characterizations of the deltas — "a sound recording system … and a recording activation system," and "binaural microphone output signals as the recorded data" — are precisely the kind of substitution of one known signal source for another that KSR makes obvious. Add the specification's own stated motivation: "we often decide that we wish to record a conversation AFTER particularly interesting information has been heard." That sentence is the motivation-to-combine, written by the applicant.
Motivation-to-combine — articulated rationales
- Known technique improving similar devices in the same way. Le, Kvaløy, Armstrong, Sjursen and the admitted art are all in the same field (head-worn audio capture and reproduction) and address the same problem: capturing what a person actually hears while wearing an occluding device.
- Predictable result from known elements. Every component — MEMS/electret mic, gain stage, EQ filter, codec, RAM ring buffer, comparator/trigger logic — is conventional. No new physical principle is asserted.
- Finite number of identified, predictable solutions ("obvious to try"). Once you have (i) an earphone with an ambient mic and an in-canal mic and (ii) a device that records to a ring buffer on a trigger, there are only a handful of architectural choices (mic-in-belt-pack vs. mic-in-earpiece; one mic vs. both; trigger by button vs. by voice vs. by sound signature) — all predictable.
- Design incentive / market force. The specification's own stated uses (dictation, "listen-again," accident forensics, "black box") supply the design incentive.
- Explicit teaching in the references. Le affirmatively teaches capturing pre-trigger audio via a scrolling buffer — the very "always-on" behavior claim 1 recites.
- The applicant's own admissions (Section II.B) supply both halves of the combination.
Reasonable expectation of success: high. The combination is a wiring/architecture exercise among components the art already used together; Le already discloses the buffer-plus-trigger logic, and Kvaløy/2006-0182287 already disclose the co-located mic pair.
Claim-construction issue to preserve. The '839 patent uses "ASM" as the microphone at the ear canal entrance (not a mouth-directed voice mic), and "content of the data storage device" as the recorded underlying audio (not a pointer). Both readings were favorable to the petitioner/Board. Techiya's attempt to narrow "analysis" in claims 14–17 was held forfeited and wrong — a signal that the Federal Circuit will not rescue claim 1 on construction.
IV. Claims already resolved (do not relitigate)
These findings are final and affirmed. Re-arguing § 103 on them is wasted effort:
| Claims | Holding | Ground |
|---|---|---|
| 1, 5, 7, 11, 12, 14–17, 21–23 | Unpatentable § 103(a) | IPR2022-00242 FWD 2023-06-16, affirmed 2025-10-09 |
| 1, 2, 3, 4 | Unpatentable § 103(a) | IPR2022-00243 FWD 2023-06-20 (Le+Armstrong+Kvaløy; +Hall for 2–4), affirmed without discussion |
Claims 2–4, chained: Le alone discloses the "audio content signal" limitation — "the computer unit 15 receives and transmits audio content signals from a cellular telephone" — with Armstrong supplying the hearing-instrument-as-cell-phone-earpiece teaching and Hall supplying the signal-processing/routing complement. The routing/matrix element (claim 2), the user configuration system (claim 3), and the data-rate-reduction encoder (claim 4) are each design choices among known options — a mode selector, a multiplexer, and a perceptual/Huffman codec are all conventional and all KSR-type "known technique, known benefit" additions.
Claim 5: same encoding logic applied to the buffer output before transmission to the further storage device.
Claim 7 (pressure equalization tube): a bare mechanical pressure-equalization vent; the '839 Background itself describes the tube and its small-bore design as conventional. Asserted via Grounds 1B/1C of -00242 (secondary references not reproduced in my sources — flagged).
Claims 14–17 (remote audio forensics analysis system): the Board construed "analysis" broadly to encompass the specification's own speech-to-text system and held the claims obvious over Le + Victorian + Kurki (FWD 55–64). The Federal Circuit held Techiya forfeited the narrowed construction and that it was "incorrect in light of the intrinsic evidence." Mirror-image holding for claims 17–20 of the '982 patent (IPR2022-00234, affirmed at No. 2023-2294).
Claims 21–23: claim 21 via Le + Victorian + Stuckman; claims 22–23 via Ground 1A (Le + Victorian). Stuckman's disclosure is unverified in this session — I do not speculate about what it teaches.
V. The surviving claims — 6 and 8–10 — and how to attack them
Critical framing: the Board's "not proven unpatentable" as to claims 6 and 8–10 is a failure of proof on the specific grounds presented, not an affirmative finding of nonobviousness. Under § 315(e)(2), any estoppel binds Samsung and its privies only. A different petitioner can run the same or different art.
- Claim 6 (time-stamp audio index embedded in the recorded content). Claim 6 sat inside Ground 1A (Le + Victorian only) — i.e., the petitioner apparently relied on Le's system without a dedicated time-index reference. That is a fixable defect: pair the Le/Victorian base with a reference teaching time-stamped indexing of recorded audio (dictation/transcription recorders, voice-mail/answering-machine systems, surveillance/incident recorders, and "black-box" event recorders all conventionally timestamp). The '839 specification itself treats the time stamp as an add-on ("may be updated on a sample-by-sample or intermittent basis"). Caveat: I have not verified the FWD's reasoning for claim 6, so the reason for the failure of proof is an inference, not a finding.
- Claims 8–10. Ground 1D (Le + Victorian + Sjursen '285) likewise fell short. Sjursen is a "personal audio assistant" teaching environmental-audio capture and mixing into the audio signal path — which suggests the added limitation is an ambient-sound-monitoring/pass-through or multi-transducer aspect, but I cannot confirm claims 8–10's text and therefore cannot chart them. Any § 103 theory for 8–10 must start by pulling the printed claim text (USPTO PatentCenter / the granted patent PDF) and identifying the specific added limitation; only then can claim-appropriate secondary art be selected.
- Legal posture on dependent claims: 35 U.S.C. § 282 provides each claim is presumed valid even though dependent on an invalid claim (the principle is applied verbatim in the USITC determination surfaced in this research). So claims 6 and 8–10 remain enforceable as written even though claim 1 was canceled — but they carry claim 1's limitations and are correspondingly narrow. That narrowness is itself a § 112 written-description/enablement foothold if the added limitations are thin.
VI. Untested claims 13, 18–20 — no § 103 opinion possible here
Claims 13, 18, 19, 20 were never challenged in either IPR, so they remain under the § 282 presumption. They also depend from the canceled claim-7 and claim-14 chains respectively. I do not have their claim text, and I will not manufacture an obviousness theory for claims I cannot read. The methodology is identical to § V: obtain the printed text, isolate the added limitation, then locate art for that limitation with a specific KSR rationale.
VII. Secondary considerations
There is no Graham-factor-4 evidence in the record that helps the patentee:
- No commercial embodiment. Personics Holdings never shipped a product (per the assignment/ownership section); there is nothing to which a nexus could attach.
- No long-felt need or failure of others is documented.
- No copying is evidenced.
- The district court did not reach infringement merits — the E.D. Tex. case was resolved against Techiya on unclean hands (Synergy IP / Dr. Ahn / Mr. Cho and Samsung privileged information), so there is no infringement judgment that could supply nexus or a "praise for the invention" record.
- The only "industry recognition" of record is adverse: two IPRs, 15 claims invalidated, affirmed.
VIII. Bottom line
- Claims 1–5, 7, 11, 12, 14–17, 21–23 are obvious as a matter of final, affirmed adjudication. Do not re-run the analysis; cite the two FWDs plus the 2025-10-09 affirmance.
- Claim 1 falls on at least three independent combinations — (i) Le + Armstrong + Kvaløy (+ Hall) [-00243], (ii) Le + Victorian [-00242], and (iii) the applicant's own admitted prior art (US 2006/0182287 + US 5,946,050 + US 7,039,195 / 6,728,385). The KSR motivations are strongest for (iii) because the applicant supplied both the reference disclosures and the stated motivation in its own Background section.
- The real remaining exposure is claims 6, 8–10, 13, 18–20. Claims 6 and 8–10 survived only because Samsung's specific grounds failed; a fresh petition pairing Le/Victorian with a dedicated time-stamp reference (claim 6) and claim-appropriate art for the 8–10 limitations is the efficient path. Claims 13 and 18–20 require fresh art and cannot be evaluated until their text is retrieved.
- Two data gaps in this analysis are load-bearing and I am flagging them rather than papering over them: (a) the full claim text of claims 8–13 and 15–23, and (b) the technical disclosures of Victorian (EP 1519625 A2), Kurki (US 9,123,343), Stuckman (US 2004/0109668 A1) and Hall (US 6,021,325), none of which I retrieved in this session. Every statement above about those references is either an exhibit-list identification or an inference from the ground structure — not a verified disclosure mapping.
Sources: https://patents.google.com/patent/US8111839/en · https://www.cafc.uscourts.gov/opinions-orders/23-2305.OPINION.10-9-2025_2585626.pdf · https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/Staton_Techiya_LLC_et_al_v._Samsung_Electronics_Co._Ltd._et_al/docs/986/3.pdf · https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--21-cv-00413/Staton_Techiya_LLC_et_al_v._Samsung_Electronics_Co._Ltd._et_al/docs/28/1.pdf · https://services.patexia.com/lawsuits/Samsung-Electronics-Co-Ltd-et-al-v-Staton-Techiya-LLC-et-al-id-[160037](/patent/160037)/documents/ · https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1548785](/patent/1548785)/download-documents · https://patentimages.storage.googleapis.com/63/e3/99/00bee917365472/US20030161097A1.pdf · https://patentimages.storage.googleapis.com/e4/bf/1f/be7be52f77683f/[US8553905](/patent/US8553905).pdf · https://fedcircuitblog.com/2025/10/09/opinions-orders-october-9-2025/
Generated 9/29/2026, 9:24:40 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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