US 8398546

I'll search for authoritative information on US 8,398,546.

I have solid results. Let me dig into the claim text and check for any 2026 CAFC activity.

US Patent 8,398,546 B2 — Summary

Note on scope: I searched for the exact identifier "8398546"/"8,398,546" only. No results were returned for any different-but-similar number, and I did not substitute neighboring patent numbers. All facts below are from Google Patents' full text of US 8,398,546 B2, the PTAB record in IPR2016‑00707, and the ITC/Federal Register complaint record.

(Minor housekeeping note: your instruction gives the current date as April 26, 2026, while my working date is September 29, 2026. This does not affect anything below, but the "2026 docket" portion of your request is answered against what I could actually retrieve.)

Bibliographic data

Assignee history (chain of title) — this is a heavily-encumbered asset, which matters for any 2026 diligence: BodyMedia, Inc. → security interests to Oxford Finance (2006), released 2010; Spring Capital Partners II (2010), released 2013; DBD Credit Funding (2013) → Silver Lake Waterman Fund (2014); Wells Fargo (2013) and BlackRock Advisors (2015) security interests; JB IP Acquisition LLC acquired the portfolio 2019‑07‑19 from AliphCom LLC and BodyMedia, Inc.; J Fitness LLC holds a security interest / UCC financing statement over JB IP Acquisition (2019). Source: Google Patents family/assignment data for US8398546B2.

Abstract (verbatim)

"A nutrition and activity management system is disclosed that monitors energy expenditure of an individual through the use of a body-mounted sensing apparatus. The apparatus is particularly adapted for continuous wear. The system is also adaptable or applicable to measuring a number of other physiological parameters and reporting the same and derivations of such parameters. A weight management embodiment is directed to achieving an optimum or preselected energy balance between calories consumed and energy expended by the user. An adaptable computerized nutritional tracking system is utilized to obtain data regarding food consumed. Relevant and predictive feedback is provided to the user regarding the mutual effect of the user's energy expenditure, food consumption and other measured or derived or manually input physiological contextual parameters upon progress toward said goal."

(Source: US 8,398,546 B2 front page, as reproduced at patentimages.storage.googleapis.com and insight.rpxcorp.com/patent/US8398546B2.)

Independent claim — plain-language overview

The PTAB's institution decision in IPR2016‑00707 reproduces independent claim 1 verbatim (Ex. 1001, 60:15–38) and calls it "representative." Its text:

1. A system to provide feedback for an individual's weight-loss goal, said system comprising: (a) a wearable sensor device for detecting data; and (b) a processing unit in electronic communication with said sensor device, said processing unit configured to accomplish the following steps, thus providing said feedback: (i) derive physiological and contextual data of the individual from data detected by said sensor device; (ii) prompt said individual to establish a weight-loss goal; (iii) generate a first suggestion to engage in an activity to assist said individual to achieve said weight-loss goal; (iv) determine weight-loss; (v) generate a second suggestion to engage in an activity to assist said individual to achieve said weight-loss goal if said weight-loss goal is not progressing toward the goal; wherein said second suggestion is based upon a determination of whether or not the individual complied with said first suggestion; and wherein said determination of whether or not the individual complied with said first suggestion is based on said derived physiological and contextual data of the individual.

Plain language: A closed-loop weight-loss coaching system. A body-worn sensor collects data; a processor turns that data into both physiological and contextual information about the person; the system asks the person to set a weight-loss goal; it makes a first activity suggestion; it tracks whether weight loss is actually happening; and if the goal isn't progressing, it issues a second, different suggestion. The key hook is the feedback loop: the second suggestion is not generic — it depends on a determination of whether the user complied with the first suggestion, and that compliance determination is itself inferred from the sensor-derived physiological and contextual data (i.e., the system detects non-compliance from the body data rather than relying on self-report).

Additional apparatus subject matter disclosed but not necessarily claimed: the specification describes a multi-sensor wearable (heat flux, GSR/conductivity, skin temperature, motion/accelerometer, heart rate, etc.), a "central monitoring unit" (server) remote from the sensor device storing and processing data, a Health Manager web interface with a six-category "Health Index," a Weight Manager with weight-tracking and Kalman-smoothed goal-date prediction, an adaptive food database, and an exercise calculator. These are described in the specification (and are relevant prior art/§112 support), but support in the specification is not the same as claiming — do not treat them as claim limitations absent the claim text.

Dependent claims 2–29 (as characterized in the record)

The IPR petition organized its challenge of claims 1–29 in the following groupings: claim 1; claims 2–4; claim 5; claims 6–7; claims 8–9; claims 10–13; claims 14–17; claims 18–21; claims 22–23; claim 24; claim 25; claims 26–27; claims 28–29. Source: Fitbit, Inc. Petition for IPR of U.S. Patent No. 8,398,546, IPR2016‑00707 (Paper 2).

Uncertainty I want to flag explicitly: I could not retrieve the full verbatim text of claims 2–29 from an authoritative source in this session. Based on the petition's structure (which reproduces only claim 1 as "representative") and on the fact that the asserted claim set in the ITC action ran 1–18 and 20–28, the strong inference is that the '546 patent has a single independent claim (claim 1) with claims 2–29 depending from it. However, I cannot confirm that no other independent claim exists without reading column 60 onward of the printed patent. Treat "one independent claim" as high-probability, not verified.

Caution — a likely misattribution in circulation: An excerpt circulating from the Jawbone/BodyMedia complaint (Count 3, '546 patent) reproduces a claim 14 and claim 24 that recite "data indicative of said first physiological parameter," "second physiological parameter," "derived parameters," a "central monitoring unit," and an "output device." Those elements do not appear in '546 claim 1, and a dependent claim cannot introduce them. Those excerpts almost certainly belong to a different patent in the same complaint — most likely US 8,073,707 ("System for detecting, monitoring, and reporting an individual's physiological or contextual status"), which uses exactly that first/second-physiological-parameter + central-monitoring-unit claim architecture. Do not attribute those claims to '546.

Litigation and post-grant history (verified)

• N.D. Cal. 3:15‑cv‑02579 and 5:15‑cv‑02579 (Google Patents family-litigation links; complaint filed June 10, 2015). Jawbone (AliphCom d/b/a Jawbone) and BodyMedia, Inc. sued Fitbit, Inc., asserting the '546 patent among others; accused products included Fitbit One, Charge, Charge HR and Surge. BodyMedia pleaded inducement and contributory infringement based on the Fitbit App/Dashboard and instructional materials. Source: complaint reproduced at wsj.com/public/resources/documents/jawbone0610.pdf (Doc. Count 3, ¶¶27–32).
• ITC Investigation No. 337‑TA‑963, instituted August 17–18, 2015; published at 80 FR 50870 (Aug. 21, 2015). Complaint filed July 7, 2015, supplemented July 24, 2015, on behalf of AliphCom d/b/a Jawbone and BodyMedia, Inc. Asserted claims of the '546 patent: claims 1–18 and 20–28 (i.e., 19 and 29 were not asserted). Other patents in the investigation: 8,073,707; 8,446,275; 8,529,811; 8,793,522; 8,961,413.
• IPR2016‑00707 — Fitbit, Inc. v. BodyMedia, Inc., petitioning for review of claims 1–29 over Mault '089 in view of Mault '470. The Board denied institution on September 8, 2016, finding Fitbit had not shown a reasonable likelihood of prevailing. Notably, Fitbit also argued new matter: it contended the June 2000 priority applications do not disclose multiple limitations of claim 1 — the obvious candidate being the claim's "contextual data" requirement — and construed "contextual data of the individual."
• Federal Circuit appeals of record: 16‑2175, 16‑2187 and 17‑1381 (listed in the Google Patents family-litigation data for this patent).

On the "CAFC 2026 docket" request

I found no evidence of any 2026 CAFC docket entry involving US 8,398,546. Every appellate docket I could tie to this patent (16‑2175, 16‑2187, 17‑1381) is from 2016–2017. Two independent reasons make 2026 activity very unlikely: (1) the patent expired for failure to pay maintenance fees, with an adjusted expiration of 2021‑10‑15, so the exclusionary right is gone; and (2) the last recorded assignment and security interest activity is 2019 (JB IP Acquisition / J Fitness LLC). My searches did surface one 2026 Federal Circuit decision — Enanta Pharmaceuticals v. Pfizer (Fed. Cir. June 23, 2026, concerning US 11,358,953) — but that is an unrelated patent and I am not importing it.

Explicit limitation: I could not query the Federal Circuit's PACER/CM-ECF docket system or the USPTO Patent Center directly; my searches cover indexed web sources. If you need negative-confirmation-grade assurance on 2026 CAFC activity, that requires a direct PACER docket search, and I am not able to assert it with certainty here.

Confidence summary

• Bibliographic data, abstract, claim 1 text, and litigation history: high confidence (corroborated across the Google Patents full text, the PTAB institution decision, and the Federal Register).
• Full verbatim text of claims 2–29 and the exact number of independent claims: not verified in this session — flagged above.
• Absence of 2026 CAFC docket activity: inferred from the expiry date and assignment history, not confirmed by direct docket access.

I'll search litigation-focused sources for this specific patent number.

Strong new material surfaced (notably the ITC §101 ruling on the '546 patent). Let me pin down the district-court and appellate outcomes.

Litigation involving US 8,398,546

I searched the patent-litigation sources you named plus the PTAB/Federal Circuit records. Below is every matter I could tie to US 8,398,546 specifically — the patent referred to in the record as "the '546 patent."

⚠️ Trap flagged first, because it matters here: several search hits refer to "the '839 patent." Those hits are about US 8,566,839, a completely different patent (Apple/BillJCo iBeacon litigation, IPR2021-01413 era). I did not import them. Likewise, citations of "8,398,546" in later patent specifications (e.g., RU 2,655,794 C2; US 11,246,213) are prior-art citations, not litigation. Per your instruction, I've treated the identifiers literally and have not substituted neighboring numbers.

Summary table

No other litigation asserted US 8,398,546. In particular, I found no litigation from 2017 forward, and none after the 2019 JB IP Acquisition / J Fitness LLC transactions.

Detail

1. ITC Inv. No. 337-TA-963 — the dispositive proceeding for the '546 patent

• Jurisdiction: U.S. International Trade Commission, Washington, D.C. (In re: Certain Activity Tracking Devices, Systems, and Components Thereof).
• Parties: Complainants AliphCom d/b/a Jawbone (San Francisco, CA) and BodyMedia, Inc. (Pittsburgh, PA), collectively "Jawbone"; Respondents Fitbit, Inc. (San Francisco, CA), Flextronics International Ltd., and Flextronics Sales & Marketing (A-P) Ltd. The Office of Unfair Import Investigations (Staff) was also a party.
• Case number: 337-TA-963. Instituted Aug. 21, 2015 (80 FR 50870‑71). Complaint filed July 7, 2015; supplemented July 24, 2015.
• Asserted claims of the '546 patent: claims 1–18 and 20–28 (claims 19 and 29 were not asserted). Other patents in the investigation: 8,073,707; 8,446,275; 8,529,811; 8,793,522; 8,961,413 — plus trade-secret misappropriation.
• Outcome — this is the key fact and it goes beyond a mere institution:
  • March 3, 2016 — ALJ Dee Lord granted Fitbit's motion for summary determination that the asserted claims of the '546 and '275 patents are directed to ineligible subject matter under 35 U.S.C. § 101 (Order No. 40). Reported as the first ITC ruling finding claims ineligible under § 101 after Alice (Morrison & Foerster, Mar. 30, 2016).
  • The ALJ's opinion specifically analyzed the '546 patent (Ex. 41 at 60:15–38) and reasoned that "weight loss management is a similarly abstract idea, and using generic sensors and computer processors does not make the '546 patent's claims less abstract."
  • April 4, 2016 — the Commission reviewed and affirmed the ID with modification (Commission Notice, Inv. No. 337-TA-963; see also Fed. Reg. notice 337_963_2ndnotice04042016sgl.pdf).
  • April 27, 2016 — ALJ granted summary determination of § 101 ineligibility as to the remaining patents ('413 and '707).
  • Aug. 23, 2016 — final ID finding no violation of § 337 on the trade-secret claim. Oct. 20, 2016 — Commission determined not to review (81 FR 74479–80, FR Doc 2016‑25829); investigation terminated. The patent-infringement allegations (including the '546) had already been terminated prior to the evidentiary hearing.

2. N.D. Cal. — AliphCom d/b/a Jawbone & BodyMedia, Inc. v. Fitbit, Inc.

• Case number as literally cited in the PTAB record: the IPR2016-00707 institution decision and Fitbit's petition both identify AliphCom d/b/a Jawbone and BodyMedia, Inc. v. Fitbit, Inc., No. 3:15-cv-02579 (N.D. Cal.).
• Filing date: June 10, 2015 (complaint reproduced at wsj.com/public/resources/documents/jawbone0610.pdf; Count 3 asserted the '546 patent, accusing Fitbit One, Charge, Charge HR and Surge).
• Number discrepancy — flagged, not auto-corrected: Google Patents' family-litigation data for this patent lists the N.D. Cal. matters as 4:15-cv-02579 and 5:15-cv-02579, while the PTAB record says 3:15-cv-02579. I am reporting all three strings as they appear rather than reconciling them. (The "4:15" entry may be an artifact of the portal's data; a direct PACER check on all three would settle it.)
• Outcome/current status: Not verified. The PTAB described the case as co-pending as of the IPR filing (2016). Consistent with the ITC result, the '546 claims were the subject of § 101 ineligibility exposure; I could not confirm in this session the dismissal, settlement, or judgment that ended the district-court case. Treat as open.

3. IPR2016-00707 — Fitbit, Inc. v. BodyMedia, Inc.

• Not Article III litigation, but it is a direct adversarial challenge to the '546 patent and belongs in any infringement-defense history.
• Challenged claims: 1–29. Ground: obviousness over Mault '089 in view of Mault '470. Fitbit additionally argued the '546 claims were not entitled to the June 2000 priority because the June 2000 applications do not disclose multiple limitations of claim 1 (with an express construction of "contextual data of the individual").
• Related: Fitbit also filed IPR2016-00543 and IPR2016-00545 against related patents.
• Outcome: Decision denying institution, Sept. 8, 2016 (37 C.F.R. § 42.108) — no reasonable likelihood of prevailing.

4. Federal Circuit — Nos. 16-2175, 16-2187, 17-1381

• These are the appellate dockets listed in Google Patents' family-litigation data for US 8,398,546. I could not verify in this session who the parties were, which judgment each appealed, or what the dispositions were. Given the timing, they most plausibly relate to the ITC § 101 determination and/or the other patents in the 963 investigation, but I will not assert that without the docket.

Things I want to be explicit about (honesty over completeness)

1. No 2020s assertion found. I searched for assertions of "8,398,546"/"8398546" in 2019–2022 complaint filings and found none. Consistent with (a) the patent's § 101 ineligibility ruling in the ITC, and (b) its expiry for failure to pay maintenance fees, adjusted expiration 2021‑10‑15, which extinguishes the exclusionary right.
2. Your date vs. mine. Your instruction gives the current date as April 26, 2026; my working date is September 29, 2026 (and the patent text was fetched 2026‑09‑29). This doesn't change the substantive answer, but it's a live inconsistency I flagged earlier in this analysis and it recurs here.
3. I could not query PACER/CM-ECF or the ITC's EDIS directly — only indexed web sources (including the ITC's own published Federal Register notices, the PTAB record via Docket Alarm/federalregister.gov/thefederalregister.org, and law-firm summaries). If you need negative-confirmation-grade assurance on no further '546 litigation, that requires a direct PACER and EDIS docket pull.
4. Two items remain genuinely unverified and I am not filling them in: the N.D. Cal. '546 case outcome, and the parties/nature of Fed. Cir. 16‑2175, 16‑2187 and 17‑1381.

Bottom line: US 8,398,546 was asserted in exactly one patent-enforcement campaign — Jawbone/BodyMedia v. Fitbit (2015–2016), in parallel at the ITC (337-TA-963) and in N.D. Cal. (3:15-cv-02579) — and it lost at the ITC on § 101 grounds (asserted claims 1–18, 20–28 held ineligible), while Fitbit's IPR2016-00707 was denied institution. No later litigation is known.

I'll start by reconciling the structured "no PTAB activity" block against the IPR2016‑00707 record already established in the prior sections, and search for any additional proceedings.

Good — I now have the core IPR record. Let me verify the Full institution-denial reasoning and check whether any other AIA petitions targeted the '546 patent.

⚠️ Threshold flag: the structured block is contradicted by the public record

The canonical block in this prompt reads, verbatim:

"The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest."

That is wrong, and I am not going to repeat it as the answer. US 8,398,546 has at least one AIA trial proceeding on file: IPR2016‑00707, Fitbit, Inc. v. BodyMedia, Inc., filed 2016‑03‑02, institution denied 2016‑09‑08. The proceeding is documented in the Board's own paper (Paper 9), in the petitioner's post‑decision refund request (Paper 10), and in third‑party docket indexes. The Google Patents page for this patent itself carries a "PTAB case IPR2016‑00707 filed (Not Instituted – Merits)" annotation.

Most likely explanation for the ODP gap: the ODP AIA‑trial feed is incomplete for old, terminated, never‑instituted proceedings — a proceeding that died at the § 314(a) threshold in 2016 and was never heard on the merits can fall out of an "as‑ingested" proceeding list, especially once the patent itself expired in 2021. Do not rely on the ODP null for negative confirmation on this patent. Per your instruction to flag what I find, I am flagging it.

(Also, to close a loop from the prior section: the Google Patents "Petitioner: 'Unified Patents PTAB Data'" label is a Creative‑Commons data‑source attribution, not the identity of a petitioner. No defensive aggregator filed against this patent. The real petitioner was Fitbit.)

Proceedings overview

One (1) AIA trial proceeding on file for US 8,398,546: IPR2016‑00707, status institution denied — zero claims canceled, zero claims sustained on the merits, zero FWDs, zero settlements, zero PTAB appeals. No PGR, no CBM, no derivation proceeding, no second IPR by any petitioner.

Bottom line for a defendant: this patent was never tested on the merits at the PTAB. Claims 1–29 remain completely untested before the Board, so there is no IPR estoppel or cancellation you can point to. But that fact cuts both ways, and on balance the defensive posture is weak‑patent, not hardened‑patent: (i) the single IPR attempt by a well‑funded petitioner (Fitbit, Paul Hastings) died at the § 314(a) threshold on a priority‑date failure, not on the merits; (ii) separately, an ITC ALJ held the asserted '546 claims ineligible under § 101 and the Commission affirmed — a finding that never went through the PTAB but is squarely usable in district court; and (iii) the patent expired 2021‑10‑15 for failure to pay maintenance fees, so anyone asserting it today has no live exclusionary right. The practical defensive posture is "expired, § 101‑damaged, merits‑untested" — not "hardened."

IPR2016‑00707 — Fitbit, Inc. v. BodyMedia, Inc.

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2016‑03‑02 (Petition, Paper 2). Tech Center 3700.
• Status (verbatim from the Board's decision caption): "DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108." Docket‑index gloss: "Institution Denied."
• Judge panel: Trevor M. Jefferson (panel author), Michael J. Fitzpatrick, and Frances L. Ippolito, Administrative Patent Judges.
• Petition grounds: claims 1–29, single ground, 35 U.S.C. § 103(a) — obviousness over Mault 089 (WO 01/39089, published 2001‑05‑31) in view of Mault 470 (U.S. Pub. No. 2001/0049470, published 2001‑12‑06). (The petition's own heading reads "Ground 1: Claims 1‑29 Are Obvious Over Mault 089 in View of Mault 470"; the Board's decision table lists the references as "Mault 470 and Mault 089." Same combination, order flipped between the two documents.) No § 112 ground, no separate § 102 ground reached.
• Institution decision: Denied 2016‑09‑08 (Paper 9). Reasoning in the panel's own terms: it "conclude[d] that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of claims 1‑29 of the '546 patent." The failure was prior‑art status, not technical teaching: the '546 patent's benefit chain runs back to US 09/595,660 (filed 2000‑06‑16) and US 09/602,537 (filed 2000‑06‑23), both predating Mault 470 and Mault 089. Fitbit tried to knock out that priority claim by arguing new matter — contending the June 2000 parent applications do not provide written‑description support for claim 1's limitations (the obvious candidate being the claim's "physiological and contextual data" requirement) — and proposed a construction of "contextual data of the individual." Patent Owner's Preliminary Response (Paper 7) argued the petition "effectively requir[ed] ipsis verbis disclosure rather than determining whether the disclosure would 'reasonably convey to persons skilled in the art that, as of the filing date thereof, the inventor had possession of the subject matter later claimed by him'" and that the petition mischaracterized prosecution‑history statements about new matter. The Board agreed the priority attack failed, so the Mault references were never shown to be prior art — and the ground collapsed before any substantive obviousness analysis. The panel never construed "contextual data" on the merits and never reached the § 103 substance. (The Board expressly applied the BRI standard then governing IPRs, citing Cuozzo.)
• Final Written Decision: None. No FWD issued. The trial was never instituted, so no claim of the '546 patent has ever been canceled, confirmed, or construed in a Final Written Decision. Claims 1–29 are all UNTESTED at the PTAB.
• Settlement / termination: N/A — no trial to terminate. After the denial, Fitbit filed a Petitioner's Request for Refund of Post‑Institution Fees on 2016‑12‑14, seeking return of $19,600 in post‑institution fees (having paid $10,800 in review fees); no settlement of any live proceeding occurred.
• Appeal: None, and none legally available. An institution denial under § 314(a) is non‑appealable (35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016)). No Federal Circuit docket arises from IPR2016‑00707. I therefore cannot give you a CAFC disposition, because there isn't one.
• Defensive value: A prior IPR attempt that failed at the threshold creates no estoppel and no cancellation — you cannot tell an adversary "claim 1 is dead." What it does give you is a roadmap: the entire patent family's viability turns on the 2000‑06‑16 / 2000‑06‑23 priority chain and written‑description support for the "contextual data" limitation. A future petitioner attacking this patent must win the priority fight first; Fitbit's failure to do so is the reason this patent reached expiration with all 29 claims intact. Note also § 315(e)(2) estoppel does not attach here — estoppel is triggered by a final written decision, and none issued, so Fitbit (and its privies) are not barred from re‑asserting these or any other grounds if they ever had reason to.

Source for the denial and the priority reasoning: PTAB, IPR2016‑00707, Paper 9, "Decision Denying Institution of Inter Partes Review" (P.T.A.B. Sept. 8, 2016), and Paper 7 (Patent Owner Preliminary Response). Public copies: https://www.docketalarm.com/cases/PTAB/IPR2016-00707/ (docket index); the decision PDF is mirrored at https://www.docketalarm.com:443/cases/PTAB/IPR2016-00707/Inter_Partes_Review_of_U.S._Pat._8398546/docs/09-08-2016-Board/Decision_Denying_Institution-9-Decision___Denying_Institution_of_Inter_Partes_Review.pdf. For the official record, retrieve Paper 9 from PTAB E2E (https://e2e.uspto.gov/) under trial number IPR2016‑00707; it should also appear at USPTO PTAB Decisions. Petitioner's refund request is Paper 10 (2016‑12‑14).

Strategic summary

Which claims are canceled vs. sustained vs. untested. None are canceled. None are sustained-on-the-merits. All of claims 1–29 are UNTESTED at the PTAB. The only mechanism ever to have adversely adjudicated any of these claims is not a PTAB proceeding at all: in ITC Inv. No. 337‑TA‑963, Order No. 40 (2016‑03‑03), ALJ Dee Lord granted Fitbit's motion for summary determination that the asserted claims of the '546 patent (and the '275 patent) are directed to ineligible subject matter under 35 U.S.C. § 101, reasoning that "weight loss management is a similarly abstract idea, and using generic sensors and computer processors does not make the '546 patent's claims less abstract." The Commission affirmed the ID with modifications on 2016‑04‑04. For § 101 snapshot purposes the surviving claims are, formally, "1–29 — but claim 1 as construed in the ITC was held abstract." And the ultimate status fact: the patent expired 2021‑10‑15 (fee‑related), so no claim is enforceable today regardless of the untested merits. For completeness, the claims asserted in the ITC were claims 1–18 and 20‑28; claims 19 and 29 were never asserted anywhere and are the least‑litigated of the set.

Estoppel landscape. There is essentially no § 315(e)(2) estoppel on this patent. Estoppel runs from a final written decision, and because IPR2016‑00707 was denied at institution, Fitbit and its privies are not barred from raising the Mault 089/Mault 470 combination or any other ground they raised or reasonably could have raised. For a defendant today, the practical point is inverted: there is no IPR‑based narrowing to inherit, so every prior‑art and § 112 ground remains available to you, subject only to ordinary district‑court rules (and, realistically, to the patent's expiry). The single most valuable, available, non‑estoppel‑barred line of attack is the § 101 theory the ITC already accepted, plus the priority/written‑description attack the Board found Fitbit had failed to prove — the latter is a constructive roadmap, not a bar, because a denial has no preclusive effect.

Pattern signals. Fitbit did not file multiple IPRs on this patent — it filed a portfolio‑wide campaign and gave '546 exactly one shot. The sibling proceedings during the same 2016 window were IPR2016‑00543 ('413 patent), IPR2016‑00545, IPR2016‑00607 ('811 patent — instituted on claims 16–26, 2016‑08‑16), IPR2016‑00658 ('522 patent), and IPR2016‑00714 ('275 patent), with BodyMedia's real parties in interest identified as BodyMedia, Inc. and AliphCom, Inc. d/b/a Jawbone (BodyMedia a wholly owned AliphCom subsidiary). Patent Owner was represented by Kilpatrick Townsend & Stockton (D. Clay Holloway lead); Fitbit by Paul Hastings (Naveen Modi et al.). BodyMedia was not an aggressive PTAB appellant on this patent — there was nothing to appeal, and the same family was simultaneously under inter partes reexamination by Basis Science (95/002,371, 95/002,376, 95/002,354) and Federal Circuit appeals 2015‑1786 / 2016‑1788 (BodyMedia, Inc. v. Basis Science, Inc.). One caution on the prior section's list of "Federal Circuit appeals of record" (16‑2175, 16‑2187, 17‑1381) appearing on the Google Patents family page for '546: I could not verify in this session what those appeals concerned or that any of them arose from a PTAB proceeding on '546. Treat their attribution to this patent's PTAB history as unconfirmed — the only PTAB matter on '546 (IPR2016‑00707) produced no appealable order.

Recommended next steps

1. Do not tell a court or an adversary that claims 1–29 have been "canceled" or "held invalid by the PTAB" — they haven't. The only merits‑adjacent adverse holding is the ITC § 101 determination (Order No. 40, 2016‑03‑03, aff'd with modifications 2016‑04‑04, Inv. No. 337‑TA‑963). That is your strongest quotable disposition. Pull the Commission's Notice affirming the ID with modification (2016‑04‑04) and Order No. 40 itself from the ITC EDIS system and cite them precisely.
2. Cite IPR2016‑00707 only for what it is: a denial of institution under § 314(a)/37 C.F.R. § 42.108, 2016‑09‑08, on prior‑art‑status grounds (priority date), which produces no estoppel and no claim‑level outcome. If you cite it, cite the paper and quote the disposition line — the paper is Paper 9, obtainable from PTAB E2E at https://e2e.uspto.gov/ (or USPTO PTAB Decisions). Do not attribute any claim cancellation to it.
3. If you face a demand on this patent, the first question is "is it expired?" Per Google Patents, adjusted expiry is 2021‑10‑15, status Expired – Fee Related. Verify maintenance‑fee status directly in USPTO Patent Center (https://patentcenter.uspto.gov/) before doing anything else; an expired, fee‑lapsed patent cannot support an ongoing royalty theory for post‑expiry conduct.
4. If you need the merits answered, the door is open — no IPR has ever reached a FWD, no estoppel has attached, and no claim has been construed by the Board. But weigh it against the fact that IPR is unavailable for an expired patent's claims in any practical sense and the more efficient path, if anything is live, is a district‑court § 101 motion built on the ITC's own reasoning.
5. Negative‑confirmation caveat. My proceedings list was assembled from the Board's own papers, the petition, the refund request, docket indexes, the Federal Register, and the Google Patents PTAB annotation. The USPTO ODP structured feed omits this proceeding, so I could not use ODP to corroborate the absence of additional AIA filings. The only reliable negative check is a direct query in PTAB E2E / Patent Center for this patent number (and a CourtListener / PACER check for the unverified 16‑2175 / 16‑2187 / 17‑1381 appeals). I could not confirm the absence of other, ODP‑unindexed petitions from an authoritative primary source in this session — flag that as unverified rather than as established.

I'll research the assignment record for this patent. Let me run several searches in parallel.

I found reel/frame data. Let me dig deeper into the specific records and correspondents.

Important scope note before the findings

I could not query the USPTO Assignment Center API or Patent Center directly in this session — the assignment-center endpoints are not retrievable through the search interface available to me, and my later searches were cut off by a tool-step limit. What follows is reconstructed from (a) the Google Patents legal-events/assignment data for US 8,398,546 B2, (b) an indexed USPTO Patent Assignment cover sheet PDF, and (c) the PTAB/litigation record. Reel/frame numbers are confirmed for only a subset of links. I did not recover any correspondent-of-record names for the '546 chain, and I will not invent them. That gap is flagged again in the NPE section, because it is the single most important tell you asked for and I could not deliver it.

Inventors

Named on the issued patent (14 total — an unusually large inventorship group, reflecting that this application was a late continuation-in-part of a 2000 priority family):

Basis and caveat: the issued patent names BodyMedia, Inc. as assignee, and a recorded USPTO Patent Assignment cover sheet (Reel 024310 / Frame 0948) for the related BodyMedia application "Apparatus for detecting, receiving, deriving and displaying human physiological and contextual information" (Ser. No. 10/638,588 — a sibling in this same CIP chain, not the '546 patent) lists ten of these inventors with Pittsburgh, PA home addresses (Stivoric — 1411 Hawthorne St; Pacione — 1217 Filson St; Teller; Andre; Vishnubhatla; Safier; Farringdon; Pelletier) assigning to BodyMedia, Inc., 4 Smithfield Street, Suite 1200, Pittsburgh, PA 15222. That establishes the Pittsburgh inventor cluster as BodyMedia employees. I did not recover a comparable cover sheet specific to application 10/940,214, so the four CIP-era inventors (Hsiung, Hanlon, Handel, Menke, Shassberger, Spruce) are attributed to BodyMedia by assignee-of-record inference, not by direct record.

Unusual pattern check — no finding. You asked whether all inventors departed the original assignee within 12 months of filing (a classic fire-sale precursor). I found no evidence of that and I am not asserting it. For context, the opposite pattern holds here: several of these inventors (notably Stivoric) appear on later AliphCom/Jawbone-era filings (e.g., US 2016/0066852, "Strap Band for a Wearable Device," inventor Stivoric, original assignee Aliphcom) — i.e., key inventors stayed with the portfolio through the 2013 BodyMedia→AliphCom acquisition and filed on the acquirer's later applications. I could not verify individual departure dates.

Original assignee

BodyMedia, Inc. — a Delaware corporation, principal place of business 4 Smithfield Street, Suite 1200, Pittsburgh, PA 15222 at filing; later 501 Grant Street, Union Trust Building, Suite 1075, Pittsburgh, PA 15219 (per the 2015 N.D. Cal. counterclaim).

• Line of business: wearable body-monitoring hardware plus the accompanying subscription software platform. This patent's own "Weight Manager" / Health Manager web platform is the software half of that model.
• Did it ship a product embodying the claims? Yes. BodyMedia's commercial products were the BodyMedia FIT Armband (multi-sensor armband: heat flux, GSR, skin temperature, 3-axis accelerometer) and the BodyMedia FIT / BodyMedia Core software dashboard. The specification's body-worn sensor device + central monitoring unit + web-based Health Manager maps directly onto that product. Third-party literature (e.g., the Russian patent RU2655794C2 specification) lists "BodyMedia FitCore" alongside Fitbit/Jawbone UP/Nike FuelBand as commercial activity monitors, corroborating actual product shipment.
• Current status: No longer operating as an independent entity — acquired, then effectively wound down. AliphCom d/b/a Jawbone acquired BodyMedia in April 2013 for a reported >$100M, and BodyMedia became a wholly owned subsidiary of AliphCom (Jawbone's own counterclaim pleading admits this). AliphCom/Jawbone liquidated beginning 2017. The portfolio did not stay with a product company.

Assignment timeline

Every entry below is a recorded USPTO assignment/security interest as surfaced in the Google Patents legal-events record for US 8,398,546 B2, cross-checked where possible against the USPTO cover sheet and PTAB exhibits. Where I could not confirm a reel/frame, I say so rather than guess.

• 2005-01-19 (recorded; execution date not recovered) — Reel/frame not recovered

  • Conveyance: Assignment of assignors' interest
  • Assignor: The fourteen named inventors (per the companion cover sheet, Stivoric, Pacione, Teller, Andre, Vishnubhatla, Safier, Farringdon, Pelletier and others)
  • Assignee: BODYMEDIA, INC., Pittsburgh, PA
  • Correspondent: not recovered — gap
  • Context: ordinary inventor-to-company assignment perfecting BodyMedia's title.

• 2006-06-02 — Reel/frame not recovered

  • Conveyance: Security Agreement
  • Assignor: BODYMEDIA, INC.
  • Assignee: OXFORD FINANCE CORPORATION
  • Correspondent: not recovered
  • Context: securitization — venture-lender collateral pledge over the patent estate.

• 2010-09-30 — Reel/frame not recovered

  • Conveyance: Release by Secured Party
  • Assignor: OXFORD FINANCE CORPORATION
  • Assignee: BODYMEDIA, INC.
  • Context: payoff of the Oxford facility; collateral released back to BodyMedia.

• 2010-10-15 — Reel/frame not recovered

  • Conveyance: Security Agreement
  • Assignor: BODYMEDIA, INC.
  • Assignee: SPRING CAPITAL PARTNERS II, L.P.
  • Context: securitization — new lender replaces the released Oxford lien.

• 2013-04-25 — Reel/frame not recovered

  • Conveyance: Release by Secured Party
  • Assignor: SPRING CAPITAL PARTNERS II, L.P.
  • Assignee: BODYMEDIA, INC.
  • Context: release in immediate run-up to the AliphCom acquisition.

• 2013-06-27 — corrects Reel 030287 / Frame 0805

  • Conveyance: Corrective Assignment (correct errors in release and schedule)
  • Assignor: SPRING CAPITAL PARTNERS II, L.P.
  • Assignee: BODYMEDIA, INC.
  • Context: cleanup of the release record — the fact that a corrective recording was needed within two months of the acquisition date is itself a due-diligence artifact.

• 2013-08-08 — Reel/frame not recovered

  • Conveyance: Security Agreement
  • Assignors: ALIPH, INC.; ALIPHCOM; BODYMEDIA, INC.; MACGYVER ACQUISITION LLC
  • Assignee: DBD CREDIT FUNDING LLC, as Administrative Agent
  • Context: securitization of the combined Jawbone portfolio post-acquisition; note the patent is now pledged as part of a pooled collateral package across five grantor entities.

• 2013-12-04 — Reel/frame not recovered

  • Conveyance: Patent Security Agreement
  • Assignors: ALIPH, INC.; ALIPHCOM; BODYMEDIA, INC.; MACGYVER ACQUISITION LLC
  • Assignee: WELLS FARGO BANK, NATIONAL ASSOCIATION, as Agent
  • Context: second lien layer stacked on the same collateral.

• 2014-12-03 — Reel/frame not recovered

  • Conveyance: Notice of Substitution of Administrative Agent
  • Assignor: DBD CREDIT FUNDING LLC (resigning agent)
  • Assignee: SILVER LAKE WATERMAN FUND, L.P., as Successor Agent
  • Context: internal agent substitution — no change in beneficial ownership.

• 2015-04-28 (two recordings, same day) — Reel/frame not recovered

  • Conveyance: Release by Secured Party (x2)
  • Assignors: SILVER LAKE WATERMAN FUND, L.P. and WELLS FARGO BANK, N.A., each as agent
  • Assignee: BODYMEDIA, INC.; ALIPHCOM; ALIPH, INC.; MACGYVER ACQUISITION LLC; PROJECT PARIS ACQUISITION LLC
  • Context: the 2013–2014 lien stack is unwound in a single day, simultaneously with—

• 2015-04-28 — Reel/frame not recovered

  • Conveyance: Security Interest
  • Assignors: ALIPH, INC.; ALIPHCOM; BODYMEDIA, INC.; MACGYVER ACQUISITION LLC; PROJECT PARIS ACQUISITION LLC
  • Assignee: BLACKROCK ADVISORS, LLC
  • Context: refinancing / re-securitization — BlackRock steps into the collateral position the day the prior agents release. This is the classic encumbered-asset shuffle that precedes a distressed sale.

• 2015-08-27 — Reel/frame not recovered

  • Conveyance: Security Interest
  • Assignor: same five-entity grantor group
  • Assignee: BLACKROCK ADVISORS, LLC
  • Context: supplemental/re-recorded lien on the same grantors.

• 2017-01-26 — Reel/frame not recovered

  • Conveyance: Corrective Assignment (correct application no. 13/870,843)
  • Assignor: ALIPH, INC.; ALIPHCOM; BODYMEDIA, INC.; MACGYVER ACQUISITION, LLC; PROJECT PARIS ACQUISITION LLC
  • Assignee: BLACKROCK ADVISORS, LLC
  • Context: record-keeping repair during Jawbone's liquidation period.

• 2017-11-02 — corrects Reel 035531 / Frame 0554

  • Conveyance: Corrective Assignment (correct incorrect application no. 13/982,956; confirms release of security interest)
  • Assignor: SILVER LAKE WATERMAN FUND, L.P., as Administrative Agent
  • Assignee: BODYMEDIA, INC.; ALIPH, INC.; MACGYVER ACQUISITION LLC; PROJECT PARIS ACQUISITION LLC; ALIPHCOM
  • Context: chain-of-title cleanup — releases had to be re-recorded because wrong application numbers were used. Two corrective recordings (2013 and 2017) in this chain is a meaningful signal of sloppy or rushed recording practice by whichever firm handled it.

• 2019-07-19 — REEL/FRAME 049805/0582 ✅ (confirmed)

  • Conveyance: Assignment of Assignors' Interest
  • Assignors: ALIPHCOM, LLC and BODYMEDIA, INC.
  • Assignee: JB IP ACQUISITION LLC, New York
  • Correspondent: not recovered — gap (this is the most important missing data point)
  • Context: post-liquidation portfolio sale — the entire BodyMedia/AliphCom patent estate is conveyed to a single New York acquisition LLC after Jawbone's 2017 wind-down.

• 2019-07-22 — REEL/FRAME 049825/0718 ✅ (confirmed)

  • Conveyance: Security Interest
  • Assignor: JB IP ACQUISITION, LLC
  • Assignee: J FITNESS LLC, New York
  • Correspondent: not recovered
  • Context: securitization of the acquisition — third business day after the portfolio purchase, JB IP pledges the portfolio to a same-state affiliate-style lender.

• 2019-07-22 — REEL/FRAME 049825/0907 ✅ (confirmed)

  • Conveyance: UCC Financing Statement
  • Assignor: JB IP ACQUISITION, LLC
  • Assignee: J FITNESS LLC, New York
  • Context: perfection of the UCC lien filed contemporaneously with the security interest above.

• 2019-07-22 — Reel/frame not recovered (separate record)

  • Conveyance: UCC Financing Statement
  • Assignor: JAWBONE HEALTH HUB, INC.
  • Assignee: J FITNESS LLC, New York
  • Context: parallel lien perfected against the connected Jawbone Health Hub entity — indicating J FITNESS LLC is lending against the whole Jawbone-derived portfolio, not just the JB IP acquisition.

• 2019-08-08 — Reel/frame not recovered

  • Conveyance: Release by Secured Party
  • Assignor: BLACKROCK ADVISORS, LLC
  • Assignee: ALIPHCOM LLC
  • Context: the 2015 BlackRock lien is released at last, clearing the way for the JB IP title.

• 2019-08-15 — Reel/frame not recovered

  • Conveyance: Release by Secured Party
  • Assignor: JAWBONE HEALTH HUB, INC.; JB IP ACQUISITION, LLC
  • Assignee: J FITNESS LLC
  • Context: inter-entity release among the post-liquidation vehicles; reads as an internal restructuring among commonly controlled entities.

• 2021-10-15 — No reel/frame (no assignment)

  • Event: Adjusted expiration — maintenance fees unpaid; status Expired – Fee Related. The exclusionary right is gone.

Not an assignment, but relevant to the chain: 2014-07-21 priority to US 14/336,571, a later continuation in the same family — evidence the family was still being prosecuted by AliphCom in 2014, i.e., not abandoned before the 2019 sale.

Timeline diagram

timeline
    title Ownership of US 8398546
    2000 : Priority application filed
    2004 : CIP application filed by BodyMedia
    2005 : Inventors assign to BodyMedia
    2006 : Security agreement to Oxford Finance
    2010 : Oxford release
         : Security agreement to Spring Capital
    2013 : Patent issues to BodyMedia
         : Spring Capital release corrected
         : Security agreement to DBD Credit
         : Security agreement to Wells Fargo
         : AliphCom acquires BodyMedia
    2014 : Silver Lake Waterman named successor agent
    2015 : Prior liens released
         : Security interest to BlackRock Advisors
         : Jawbone sues Fitbit on this patent
    2017 : BlackRock corrective assignment
         : Silver Lake release corrected
    2019 : Portfolio sold to JB IP Acquisition LLC
         : J Fitness LLC security interest
         : BlackRock release
         : J Fitness release
    2021 : Patent expires fees unpaid

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT (moderate).
The patent left operating-company hands at Reel/Frame 049805/0582 (recorded 2019-07-19), when ALIPHCOM, LLC and BODYMEDIA, INC. conveyed the estate to JB IP ACQUISITION LLC, a New York entity. The supporting facts are concrete, not name-based: (i) the assignor AliphCom/Jawbone had liquidated beginning 2017 and BodyMedia was its wholly owned subsidiary — so the assignor no longer had a product business; (ii) the assignee's name contains the "IP Acquisition" suffix pattern and it records no products; (iii) three days later the same LLC pledges the portfolio as collateral (049825/0718, 049825/0907). Caveat I must state: I could not verify JB IP Acquisition LLC's formation date, registered-agent address, or single-membership, because the assignment-center records were not retrievable in this session. The "operating company gone / IP-only acquirer in" fact is solid; the "pure shell" characterization is not fully documented.

2. Known asserter in the chain — NOT PRESENT as to the recorded chain; UNCLEAR as to affiliates.
Neither JB IP Acquisition LLC, J Fitness LLC, nor Jawbone Health Hub, Inc. appears on the rosters you supplied (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities). However, a separate entity — "Jawbone Innovations LLC" — was the patent owner/respondent in Google LLC v. Jawbone Innovations LLC, IPR2022-00630, concerning US 8,280,072, another AliphCom-family patent. That establishes that AliphCom-derived patents were being asserted by a "Jawbone Innovations" vehicle in 2022. I could not confirm that Jawbone Innovations LLC is the same entity as, or a successor to, JB IP Acquisition LLC, and I could not find any post-2019 assertion of US 8,398,546. Do not treat this as linkage.

3. Repeat correspondent across the chain — UNCLEAR (data not recovered).
This is the signal you specifically wanted and I could not obtain it. I recovered no correspondent-of-record names for any of the '546 recordings. Two adjacent data points, which I am flagging as unverified and possibly unrelated, appeared in PTAB exhibits reproducing Jawbone patent-security-agreement schedules: "Gregory & Sawrie LLP, 2018 Bissonnet Street, Houston, TX 77005" appeared in one security-agreement schedule context, and the Assignee block of the 2013 BodyMedia cover sheet PDF was formatted under the legacy assignment template. I am not asserting either as the correspondent on any '546 reel/frame. A single appearance would not be a finding anyway — recurrence is the signal, and I have zero confirmed observations. Resolving this requires the actual cover sheets at 049805/0582, 049825/0718 and 049825/0907.

4. Cascading transfers — PRESENT (weak-to-moderate).
Five lien/security recordings between 2013-08-08 and 2015-08-27 across a rotating agent set (DBD Credit Funding → Silver Lake Waterman → Wells Fargo → BlackRock), all filed against an identical five-grantor collateral group; then, after liquidation, 049805/0582 (2019-07-19) followed within three days by 049825/0718 and 049825/0907 (both 2019-07-22) to J Fitness LLC. That three-day acquisition-plus-pledge cadence is a genuine cascade pattern. What is absent is classic chained-LLC-to-LLC assignment hopping — the 2019 transfers are concentrated in one family of related entities rather than being spread across nominally unrelated LLCs.

5. Pre-litigation transfer — NOT PRESENT for the '546 patent specifically.
The only documented assertion of this patent was BodyMedia/AliphCom v. Fitbit — N.D. Cal. 3:15-cv-02579 / 5:15-cv-02579 (filed 2015-06-10) and ITC Inv. No. 337-TA-963 (instituted 2015-08-17, 80 FR 50870; asserted claims 1–18 and 20–28). Those suits were filed by the operating-company owner of record, more than four years before the 2019 transfer to JB IP Acquisition LLC. The 2019 transfer therefore did not precede any known suit on this patent — it followed the end of all known assertion activity. IPR2016-00707 (petitioned by Fitbit, denied institution 2016-09-08) likewise predates the transfer. Disambiguation note: Google Patents links the IPR2016-00707 record to Unified Patents' public PTAB mirror portal; that is a data-hosting link, not evidence that Unified Patents was the petitioner.

6. Bankruptcy fire-sale — PRESENT (moderate).
Jawbone/AliphCom liquidated beginning 2017, and the assignment at 049805/0582 (2019-07-19) from ALIPHCOM, LLC and BODYMEDIA, INC. to JB IP ACQUISITION LLC is consistent with a post-liquidation divestiture of the patent estate. Precision required: I did not verify a Chapter 7 or Chapter 11 filing number, a bankruptcy-court sale order, or an on-the-record auction for this patent. What is documented is a 2019 portfolio conveyance out of the wound-down Jawbone entities; whether it ran through formal bankruptcy proceedings is unconfirmed.

7. Privateering — UNCLEAR / no evidence.
The 2013 BodyMedia→AliphCom acquisition was a strategic operating-company acquisition (Jawbone bought BodyMedia for >$100M and folded it in as a wholly owned subsidiary), and the resulting 2015 Fitbit suits were operating company vs. operating company — the inverse of privateering. The 2019 JB IP Acquisition transfer post-dates the operating business entirely, so there is no operating company left to privateer on behalf of. I found no SEC filing, Patent Progress, or EFF coverage indicating an AliphCom-funded assertion campaign through a proxy. Not marked present.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at JB IP ACQUISITION LLC (Reel/Frame 049805/0582), a private New York acquirer, with a security interest held by J FITNESS LLC (049825/0718, 049825/0907). It does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. The patent has not been neutralized by defensive aggregation. (The 2016 IPR challenge — by Fitbit — is not aggregation.)

Verdict

NPE — moderate confidence.

The decisive facts are the 2019-07-19 conveyance at Reel/Frame 049805/0582 out of the liquidated AliphCom/BodyMedia operating entities into JB IP ACQUISITION LLC ("IP Acquisition" naming plus no product business), immediately followed on 2019-07-22 by a security interest and UCC financing statement at Reel/Frame 049825/0718 and 049825/0907 to J FITNESS LLC — i.e., the patent ended up as collateral in a single-purpose New York IP-holding structure with no operating business behind it. That is one strong signal (a documented transfer out of a defunct operating company into a dedicated IP-acquisition vehicle) plus one weak signal (cascading 2013–2019 securitizations) — the moderate tier rather than high, because (a) I could not recover any correspondent-of-record to test the repeat-player tell, (b) no assertion of this patent after 2019 is documented, and (c) the patent's only known assertion was by an operating company against a real competitor. Two facts materially blunt any 2026 troll exposure: the patent expired for non-payment of maintenance fees with an adjusted expiration of 2021-10-15, and the last recorded chain activity is 2019.

Verification links: https://assignmentcenter.uspto.gov/ and https://assignment.uspto.gov/patent/index.html — search by patent number 8398546, or by application 10/940,214, or by reel/frame 049805/0582 and 049825/0718. To close the gaps I flagged, pull the cover sheets at those two reel/frames (and at 030287/0805 and 035531/0554) and read the Correspondent block.

Contradictions / caveats against the prior section

• No contradiction found on bibliographic data, the BodyMedia→AliphCom April 2013 acquisition, the 2015 Fitbit suits, or the IPR2016-00707 outcome. The Korean IPO/analysis source and the Jawbone counterclaim pleading both independently corroborate the April 2013 acquisition and BodyMedia's wholly-owned-subsidiary status.
• One clarification worth carrying forward: the prior section recorded "JB IP Acquisition LLC" as current assignee without reel/frame. That is now pinned to 049805/0582, and the previously-unmentioned J Fitness LLC security interest (049825/0718, 049825/0907) should be added to any ownership chart — it means the current title is encumbered, not clean.
• One item I could not verify and will not assert: whether the 2019 sale ran through a formal bankruptcy proceeding, and whether "Jawbone Innovations LLC" (the 2022 IPR2022-00630 respondent on a different AliphCom patent) is related to JB IP Acquisition LLC.

I'll search for the cited prior art references on US 8,398,546.

Let me retrieve the front-page citation list from patent-specific sources.

Let me try patent-database mirrors that reproduce the front-page citation tables.

Before the analysis: a hard limitation you should know about

I could not retrieve the front-page "(56) References Cited" table for US 8,398,546 from any source in this session. My searches returned the Google Patents full text (specification, classifications, family/assignment detail) but not the examiner-cited U.S. patent and non-patent reference list. I also could not open a live USPTO Patent Center / Patent Public Search "References Cited" pane.

I will not reconstruct that table from memory — inventing citations would be worse than admitting the gap. So below I separate (A) prior art I can verify, (B) art of record from the IPR, and (C) what remains unverified and how to close it.

(The date discrepancy flagged in the earlier section persists — the task header says April 26, 2026; I will not re-litigate it. Nothing below depends on it.)

A. Prior art verifiable from the '546 disclosure itself

These are applicant-admitted prior art, identified in the "Definitions"/background portion of the specification. Legal effect: admission of what was known, citable as prior art under pre-AIA §102(a)/(b) (the application was filed 2004-09-13, so pre-AIA §102 governs).

Analysis. None of the applicant-admitted art touches claim 1's core: (a) a wearable sensor, (b)(i) derivation of physiological and contextual data, (b)(iii)/(v) a second suggestion gated on sensor-inferred compliance with the first suggestion. These references would at most inform a §103 obviousness theory on the weight-management preamble, not §102 anticipation of claims 1–29.

B. Priority-chain and family documents — date-setting, not prior art

From the authoritative full text and the EP register entry for the counterpart EP 1662989 (application EP 04784031, filed 2004-09-13):

Why this matters for §102. This is the single most important prior-art question for the patent, and it is a priority question:

• If claim 1 gets the 2000-06-16 date, the §102 window is narrow and almost all wearable-sensing art from 2000–2004 is excluded.
• If the "contextual data" limitations (and the sensor-inferred compliance loop) are new matter added in the 2003–2004 CIP, then for those claims the effective date is 2003-09-12 at the earliest — which pulls in a much larger body of §102(e) art. This is exactly the argument Fitbit raised in IPR2016-00707, per the earlier section. It is a priority/§112 issue with §102 consequences, not a §103 issue.

C. Art of record in the post-grant challenge

Per the earlier verified section (do not duplicate): IPR2016-00707, Fitbit v. BodyMedia, challenged claims 1–29 over Mault '089 in view of Mault '470, and the Board denied institution on 2016-09-08.

Two precision points I want to add:

1. That was a §103 obviousness challenge, not §102. The record as retrieved shows no successful — indeed no asserted — single-reference anticipation of any of claims 1–29. So the correct answer to "which claims does prior art potentially anticipate under §102" is, on the retrieved record: none established; the only substantive attack was a combination theory that failed at the threshold.
2. I could not independently verify the exact serial/patent numbers behind "Mault '089" and "Mault '470" in this session. Mault's portfolio is large (e.g., the respiratory-calorimeter and body-supported-monitor families surfaced in my searches), and I am not going to guess which specific specifications those two designations map to.

D. Do not confuse these with prior art — they are forward citations

Patents that cite US 8,398,546 as prior art against themselves, verified in this session, include US D834,200 (which lists US 8,398,546 among its 24 cited references), US 8,930,290 (Adaptive cognitive support system), US 9,936,906, US 9,390,229, and US 11,246,213. These are evidence of the '546's disclosure being treated as prior art by later applicants — useful for showing the breadth of the specification, but they are not §102 art against '546 and must not be presented as such.

Related forward/extended-family documents I surfaced: US 2014/0330094 A1 (2014-11-06) and US 2015/0339946 A1 (2015-11-26), both continuing from the '546 family.

E. Honest bottom line

• Retrieved and verified: the applicant-admitted prior art in the '546 specification (BalanceLog/US 2002/0133378, Weight Watchers, Jenny Craig, FitDay); the full priority chain; the family members; the IPR art-of-record as characterized in the earlier section.
• Not retrieved: the examiner's (56) references-cited list. I cannot give you per-reference dates and claim mappings for citations I could not read.
• To close it: US 8,398,546 is a granted, since-expired patent, so its complete paper trail (file wrapper, IDS, PTO-892) is available through the USPTO Patent Public Search "External/References Cited" view and Patent Center for application 10/940,214. Column 1–2 of the printed patent's front page carries the full "(56) References Cited" list. That is the authoritative source for the enumeration you asked for, and it is a two-minute lookup I was unable to perform with the tools available here.

If you paste that front-page list (or the PTO-892), I will do the full per-reference treatment — full citation, filing/publication date, description, and the specific claims of '546 each reference could reach under pre-AIA §102(a)/(b)/(e), including the §102(e) date analysis under the 2000 vs. 2003 priority scenarios.

I'll ground this in the actual prior-art record for this patent before analyzing. Let me pull the reference list.

Now let me pin down exactly what the two Mault references disclose and why the Board denied institution.

Obviousness Analysis — US 8,398,546 B2 under 35 U.S.C. § 103

Note on the "Prior Art section of this page": The Google Patents page for US8398546B2 does not expose a curated reference list in the retrieved rendering. Its only explicit "Prior Art" content is the prior-art keyword set — user, data, individual, weight, sensor device — plus the priority links. I therefore built the operative prior-art record from (a) the background art admitted on the face of the '546 specification, and (b) the only formal §103 challenge ever filed against this patent, Fitbit's IPR2016‑00707 petition, whose ground is now fully identified. That identification is new relative to the earlier summary and does not contradict it.

Correction/refinement to the earlier section: that section speculated the "contextual data" limitation was "the obvious candidate" for Fitbit's new-matter attack. The record now resolves this: BodyMedia's Preliminary Response argued the June 2000 parent applications "offer ample support for the claims of the '546 patent," and Paper 9 (Sept. 8, 2016) recited that "the proper inquiry looks to the earlier, parent application (including its claims) as originally filed to determine if a claim of the child patent may benefit from the filing date of the parent application" (quoted at Paper 9, 9–11). The Board denied institution on all of claims 1–29. So the new-matter theory failed; do not carry forward the speculation as if it were a finding.

I. Threshold: the priority date is the fulcrum of any §103 case

This is the single most important structural fact about the '546 patent's validity posture.

Fitbit's sole ground was: "Mault 470 and Mault 089 … 35 U.S.C. § 103" (Paper 9, Ground table). Those references are:

Both publications post-date the '546's June 16, 2000 / June 23, 2000 benefit chain. Consequently the entire obviousness case collapses unless the '546 claims lose the 2000 priority date (i.e., unless claim 1's subject matter is §112 ¶1 new matter relative to US 09/595,660 and US 09/602,537). The Board declined to so hold, which is why institution was denied.

Two consequences a challenger must confront today:

1. Any re-run of the Fitbit ground must first win the §112 written-description fight on the parent applications as originally filed — a demanding, record-intensive showing that Fitbit lost.
2. Flagged, unverified, and potentially decisive — §102(e). Mault 470 is a pre-grant publication under §122(b) whose earliest US filing is the Jan. 19, 2000 provisional. Under In re Giacomini (Fed. Cir. 2010), a published application's §102(e) date reaches back to its provisional if the relied-upon disclosure is supported there. A Jan. 19, 2000 §102(e) date predates June 16, 2000, so Mault 470 could be available art even if the '546 keeps its priority. I could not determine from the retrieved excerpts whether the Board or the parties addressed §102(e) at all — BodyMedia's Preliminary Response framed the issue as "the Petition does not and cannot establish that the cited references are prior art," and the excerpted Board reasoning is directed at the parent-application benefit inquiry. This is the highest-value item to verify by pulling the full Petition (Paper 2 at 14–15) and Paper 9. If the Board never reached §102(e), the denial is not a merits holding on obviousness at all.

II. Person of ordinary skill in the art (as of the June 2000 priority date)

A POSITA here is a team-level artisan: a B.S./M.S. in EE, ME, biomedical engineering or CS with ~2–3 years' experience in wearable physiological sensing (accelerometry, GSR, heat flux, heart rate) and consumer/web-based diet-and-exercise software, or equivalently a registered dietitian/exercise physiologist working with software developers on caloric-balance systems. The literature they would consult includes indirect calorimetry, the Harris-Benedict and similar RMR equations, activity-factor (MET) tables, and behavioral-weight-loss software. Mault's references are squarely within that field and are themselves addressed to that artisan.

III. Element-by-element mapping of claim 1

Claim text is taken from the IPR petition's reproduction (Ex. 1001, 60:15–38), which the earlier section confirmed.

The crux: every limitation except (v-a)/(v-b) is comfortably met by Mault 470 + Mault 089. The case turns on whether a POSITA would have found it obvious to infer compliance from sensor-derived physiological and contextual data rather than from user entry.

IV. Combination 1 — Mault 470 + Mault 089 (the Fitbit ground)

The motivation analysis is strong even though the Board was not persuaded:

• Same field of endeavor and same inventive family. Both are Mault/HealtheTech documents on caloric-balance weight management. Combining a body-worn diet/activity monitor (Mault 470) with a remote-computer health-management system that "analyzes the data to provide feedback and advise the user" (Mault 089) is the combination of two references addressing the identical problem.
• The references themselves supply the suggestion. Mault 470 expressly states the monitoring device "may also interconnect with remote server 26 … via a web page running on a remote server via the Internet," and that "the consumption information and activity levels may then be transferred to a remote computer system." This is the classic KSR "the combination is taught or suggested in the references."
• Predictable result. Putting the analysis engine on a server while the sensor stays on the body yields the known, predictable benefit of continuous monitoring plus centralized computation — a "simple substitution of one known element for another."
• Problem-solution rationale. Mault 089's own background laments that the Harris-Benedict RMR estimate "need not be accurate for a specific individual." Mault 470 answers that with a worn activity monitor. The combination is the direct, predictable response to an articulated problem.

Why a challenger must be candid: the Board was unpersuaded as to all of claims 1–29, and the denial appears to have been driven by the priority/§102 threshold rather than by a reasoned merits finding on the (v-a)/(v-b) limitation. That means the denial is weak stare decisis for a future obviousness challenge, but it is also not a green light — the (v-a)/(v-b) gap remains genuinely arguable.

V. Combination 2 — Mault 470/Mault 089 + US 2002/0133378 (BalanceLog) → my recommended primary ground

This is the combination I would lead with, for one reason: the '546 specification admits this reference and admits its deficiency, which converts the motivation to combine into an admission rather than an argument.

The '546 background describes BalanceLog (US 2002/0133378) as teaching: daily tracking and monitoring of caloric intake and expenditure; customized metabolism/weight/nutrition goals; and creation of both exercise and nutrition plans plus progress tracking. It then admits BalanceLog's failures:

"the system is limited by the interactivity and compliance of the user. Every aspect of the BalanceLog system is manual."

"the reported progress will not be accurate" if the user fails to log.

energy expenditure "relies on averages or look-up tables based upon general population data, which may not be particularly accurate for any specific individual."

"the program also ignores the daily activities of the user such as walking up stairs…"

Every one of those admissions is a stated problem for which the '546's own wearable-sensor system is the claimed solution. Under KSR and the problem-solution line of authority, a reference that discloses the goal-setting/feedback architecture while expressly failing to solve the sensor-accuracy and compliance problems provides the strongest possible motivation to combine it with a body-worn multi-sensor device. The three-sentence version of the argument is: BalanceLog teaches the software side and identifies the two defects (inaccurate TEE; reliance on self-report); Mault 470 teaches the worn sensor that fixes TEE accuracy and detects activity automatically; the combination yields nothing more than the predictable improvement BalanceLog's own authors called for.

Advantage: unlike the pure Mault ground, this ground does not depend entirely on defeating the 2000 priority date — US 2002/0133378 published Sept. 19, 2002, so it is §102(a)/(b) art only if priority fails; but it is admitted prior art (background art in the specification), which is typically treated as §102(b)/admissions-based art regardless of its own date. Verify this before relying on it — an admission in the background is prior art to the applicant, but a challenger should confirm the admission's scope matches the elements it is used to supply.

VI. Combination 3 — meeting "contextual data of the individual"

This term was disputed and is the most construction-sensitive limitation. The '546 specification defines "contextual parameters" narrowly: "parameters relating to activity state or to the environment, surroundings and location of the individual, including, but not limited to, air quality, sound quality, ambient temperature, global positioning and the like." Under a BRI reading in the IPR, a reference need only disclose derivation of a non-physiological, user-context parameter.

• Mault 470 (GPS). Its body activity monitor may include "a global positioning system (GPS) antenna and associated circuitry allowing the monitor to determine the position of the subject."

  Watch out: Mault 470 uses GPS to derive activity (movement over time). A patent owner will argue that is physiological/activity derivation, not contextual data. The better contextual hook is position/location as such (and time-of-day), which the '546 itself lists. Expect a genuine claim-construction fight here.

• Mault 089 (remote/network context). The web/PDA/community architecture supplies session and environmental context, but this is a weaker fit for "contextual data of the individual."

• Better secondary reference if needed: a dedicated ambient/environmental or location-sensor reference (a wearer-mounted environmental monitoring system) to supply the "air quality, sound quality, ambient temperature" species. I have not verified a specific such reference for this analysis and will not name one without checking.

VII. Combination 4 — the wearable hardware (supporting, not primary)

For the bare "wearable sensor device + processor deriving parameters," EP 0 681 447 B1 (Billon) is available and was litigated in the same ITC investigation as an anticipatory reference against a sibling BodyMedia patent (ITC Inv. No. 337‑TA‑963, Order No. 52). Billon discloses a portable, autonomous, body-worn multi-sensor device with a housing, sensors for heart rate/respiration/movement, and "processing means" that may be a microcomputer external to the housing (wirelessly connected). It is useful for the generic architecture but adds little on the weight-management/feedback limitations; treat it as a supporting reference only.

VIII. The hard limitation (v-a)/(v-b): compliance inferred from sensor-derived physiological and contextual data

This is where the analysis must be honest.

Argument for obviousness:

• Mault's references already close the loop between sensor data and weight progress: the device automatically measures body activity and body weight trends against a goal and modifies its advice accordingly. Once a worn sensor continuously measures whether the suggested activity occurred (Mault 470's activity calculator does exactly this), asking "did the user comply?" is answered by the same sensor data. The additional step of using that data as the input to the next suggestion is a predictable use of a known capability, not a new technical result.
• Mault's own family expressly contemplates inferring consumption from physiology: "Physiological sensors may also be used to detect eating, and hence improve diet logging accuracy" (US 2002/0027164 A1, Mault family). If physiology can supply intake (the input to compliance), the same physiology can supply compliance with an intake- or activity-based suggestion. (Caveat: this published application post-dates June 2000; its availability depends on the same priority determination as Mault 470/089, and possibly on its own filing date for §102(e). I have not verified its filing date.)
• Mault 089's remote-computer feedback loop is iterative by construction — a "second suggestion" branch is inherent in a system that re-analyzes caloric balance and "adjust[s] activity levels."

Argument against (what a patent owner will say):

• Mault's compliance model is self-report by design: the "consumption notation control" is a button the subject presses. The wearer is the sensor for compliance. Reading Mault as teaching automatic compliance inference requires inverting its stated mechanism.
• Neither reference discloses deriving contextual data as the basis for compliance at all. At most, Mault 470's contextual capability is GPS-position-for-activity.
• The Board was unpersuaded on all 29 claims, and BodyMedia's briefing specifically characterized claim 1 as broad and functional. A challenger should expect the (v-a)/(v-b) gap to be the disputed limitation.

Assessment: the (v-a)/(v-b) limitation is arguably obvious (automation rationale + Mault family's own physiology-detects-eating teaching), but it is not clearly obvious on the current record. A §103 case built only on Mault 470 + Mault 089 leaves visible daylight on this element.

IX. Dependent claims 2–29

Carry-forward limitation (unchanged): I still have not retrieved the verbatim text of claims 2–29 from an authoritative source, so I will not fabricate it. The Petition grouped its challenge as claim 1; 2–4; 5; 6–7; 8–9; 10–13; 14–17; 18–21; 22–23; 24; 25; 26–27; 28–29 — consistent with a single independent claim and 28 dependents, but unverified. Re-read col. 60–63 of the printed patent before relying on any dependent-claim conclusion.

What can be said with confidence:

• Dependent claims in this family typically narrow toward conventional implementation detail — two-way communication (wired cradle/USB and short-range RF), a remote "central monitoring unit" with a data store, a display/output device, weight and body-fat tracking, meal/exercise planning, and reminders/alerts. Each of those is disclosed or suggested by Mault 470 (local/PDA/remote-server communication; weight and body-fat logging; advance diet/activity advice) and by the admitted BalanceLog art (meal and exercise plans; nutrition tracking).
• Because the petition's claim-by-claim structure indicates the dependent claims were addressed individually, a serious §103 opinion should be claim-by-claim, and the dependent claims that recite specific sensor modalities (heat flux, GSR, skin temperature) are the ones most likely to survive a Mault-only attack — Mault 470's sensor set is essentially heart rate/accelerometer/GPS.
• I explicitly cannot opine on claims 24, 25, 26–27, 28–29 beyond noting they were separately grouped by the petitioner, which suggests each adds a distinct limitation rather than cumulative detail.

X. Holistic Graham/KSR factors, secondary considerations, and non-§103 levers

Secondary considerations (indicia of non-obviousness): There is a real record to work with. The BodyMedia armband achieved substantial commercial adoption; the technology was copied by Fitbit (the litigation and ITC complaint themselves are evidence of copying and industry recognition); and the assigned portfolio was valuable enough to be encumbered by serial security interests and ultimately acquired (JB IP Acquisition, 2019). A patent owner would argue nexus between the claimed closed-loop feedback and this success. A challenger should press nexus: the commercial success is attributable to the multi-sensor hardware and continuous-wear form factor, much of which is not in claim 1, and the claims were not what drove adoption.

§101 is the stronger/cleaner attack on this patent. In the same ITC investigation, Order No. 40 (Mar. 3, 2016) found the asserted claims of the '546 patent directed to ineligible subject matter, and that determination was "aff'd in relevant part" by Commission Notice (Apr. 4, 2016). Fitbit later characterized the underlying reasoning as: weight-loss management is an abstract idea, and "using generic sensors and computer processors does not make the '546 patent's claims less abstract," because "claim 1 … uses the term 'sensor' only in the larger phrase 'sensor device' and requires only that the sensor device detect data from which 'physiological and contextual data of the individual' can be derived." Given claim 1's purely functional recitation, §101 is likely the more productive line than §103, notwithstanding the subsequent Berkheimer/USPTO-guidance evolution.

§112 as a secondary route: the priority/new-matter fight that defeated the IPR cuts both ways — if a challenger can prove the "contextual data" or compliance-inference limitations are unsupported new matter, the patent's effective date moves to Sept. 13, 2004, which simultaneously unlocks the entire Mault family (2000–2002 publications) and revives the §103 case. The two arguments are mutually reinforcing and should be developed together.

Practical posture: the '546 patent is expired (adjusted expiration 2021‑10‑15) with a 2019-last assignment record. Any §103 work today is retrospective/diligence-oriented (past damages, portfolio valuation), not forward-looking clearance.

XI. Bottom line

1. Independent claim 1 is arguably obvious over Mault 470 + Mault 089 (the Fitbit ground), and more persuasively obvious over Mault 470/Mault 089 + the admitted BalanceLog reference (US 2002/0133378), because the '546 specification itself admits that a manual food/exercise tracking system suffers from poor compliance, inaccurate TEE, and ignores daily activity — the exact deficiencies the worn-sensor combination remedies. Motivation is supplied by (i) common field and common inventor, (ii) express cross-reference between the worn device and the remote server in Mault 470, (iii) predictable improvement, and (iv) the articulated problem in the admitted art.
2. The single vulnerable element is the last clause of claim 1 — that non-compliance be determined from derived physiological and contextual data. Mault's compliance mechanism is self-report (a consumption button), and no retrieved reference explicitly derives contextual data as the basis for a compliance determination. This is where the patent can be defended.
3. The threshold obstacle is dispositive on the current record: the Board denied institution on all of claims 1–29 (Paper 9, Sept. 8, 2016), holding against Fitbit's priority/new-matter attack. Any renewed §103 challenge must either defeat the June 2000 benefit chain on the parents-as-filed, or pursue §102(e) against Mault 470's Jan. 19, 2000 provisional date — a route I could not confirm was ever litigated.
4. Claims 2–29 remain unverified in text; do not treat the groupings above as claim content.
5. Recommendation: pursue §101 (the ITC already found these claims ineligible) in parallel with, not instead of, a properly rebuilt §103 case that (a) front-loads the §102/priority showing, (b) uses the specification's own admissions as the motivation, and (c) offers a contextual-data reference to close the last clause.

Confidence: high on the identity and content of Mault 470 / Mault 089 and on the Board's denial and its stated reasoning; high on the admitted background art; not verified on (i) full verbatim text of claims 2–29 and the number of independent claims, (ii) the Board's complete Paper 9 reasoning beyond the excerpted passages, (iii) whether §102(e) was addressed by anyone, and (iv) the filing dates of the Mault family publications relied on as secondary references. Those four items require the printed patent, PTAB Paper 2 and Paper 9 in full, and PAIR/Patent Center file-wrapper inspection.

Sources consulted

• US 8,398,546 B2 full text — https://patents.google.com/patent/US8398546B2/en
• IPR2016‑00707, Decision Denying Institution (Paper 9, Sept. 8, 2016) — https://www.docketalarm.com/cases/PTAB/IPR2016-00707/Inter_Partes_Review_of_U.S._Pat._8398546/docs/09-08-2016-Board/Decision_Denying_Institution-9-Decision___Denying_Institution_of_Inter_Partes_Review.pdf
• IPR2016‑00707, Patent Owner Preliminary Response (Paper 7, June 8, 2016) — http://ocr.docketalarm.com/cases/PTAB/IPR2016-00707/Inter_Partes_Review_of_U.S._Pat._8398546/docs/06-08-2016-Patent_Owner/Preliminary_Response-7-Patent_Owners_Preliminary_Response.pdf
• IPR2016‑00707, Petition (Paper 2, Mar. 2, 2016) — http://ocr.docketalarm.com/cases/PTAB/IPR2016-00707/Inter_Partes_Review_of_U.S._Pat._8398546/docs/03-02-2016-Petitioner/Petition-2-Petition.pdf
• US 2001/0049470 A1 (Mault 470), Diet and activity monitoring device — https://uspto.report/patent/app/20010049470 ; issued as US 6,513,532 B2
• WO 01/39089 A1 (Mault 089), Health management system with connection to remote computer system — https://patentimages.storage.googleapis.com/6a/f0/f6/17f409f50d4dbc/WO2001039089A1.pdf
• WO 01/28495 A2 (Mault), indirect calorimeter/weight-control software — https://patents.google.com/patent/WO2001028495A2
• US 2002/0027164 A1 (Mault family), physiological sensors to detect eating — https://patentimages.storage.googleapis.com/17/1c/db/7f903441da6c8c/US20020027164A1.pdf
• ITC Inv. No. 337‑TA‑963, Order No. 52 (Apr. 14, 2016) (Billon / '413 patent) — https://www.docketalarm.com/cases/PTAB/IPR2016-00543/Inter_Partes_Review_of_U.S._Pat._8961413/docs/05-09-2016-Patent_Owner/Exhibit-2003-ITC_Denial_of_Motion_for_Summary_Determination_Case_No_337_TA_963.pdf
• ITC Inv. No. 337‑TA‑963, Order No. 40 (Mar. 3, 2016) ('546 claims ineligible under §101), aff'd in relevant part (Apr. 4, 2016) — as quoted in Complainant's Petition for Review, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1546702](/patent/1546702)/download-documents
• In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010) — §102(e) provisional-date rule (cited from general knowledge; not retrieved this session).