US 8442501

I'll search for authoritative information on US patent 8442501, including any 2026 CAFC activity.

Those results are unrelated (customs/tariff codes). Let me refine.

Good — I have the patent record. Now let me check for Federal Circuit and 2026 docket activity specifically on this patent.

US Patent 8,442,501 B1 — Technical/Bibliographic Summary

Note on the ID: I interpreted "8442501" literally as US 8,442,501. The record below is drawn from the patent's own text (Google Patents full text) and from PTAB/CAFC documents, which I cite.

1. Bibliographic data

Priority chain (per the patent's own Cross-Reference and the printed face): continuation of 13/287,040 (now US 8,447,289) → continuation of 13/047,718 (US 8,090,356) → continuation of 09/591,381 (US 7,929,950) → continuation-in-part of 09/281,739 (US 6,169,789) → continuation-in-part of 08/764,903 (abandoned), filed Dec. 16, 1996.

Classification highlights: H04L41/0813 (configuration settings triggered by a condition), H04W4/50 (service provisioning/reconfiguring), H04W88/06 (multi-mode terminals), H04M1/72406 (software upgrading/downloading on mobile phones).

Source: https://patents.google.com/patent/[US8442501B1](/patent/US8442501B1)

2. Abstract (as issued)

"A wireless communication and control system including a wireless device. There is a central server for storing communication protocols and control protocols and communicating the communication protocols and selectively communicating the control protocols between the wireless device and the central server. A communication protocol configures the system for communication and control protocols configure the system as one of a selection of intelligent appliance controllers. Alternately the control protocols configure the system as one of a selection of Internet terminals. The wireless device is any hand-held communication device, such as a hand-held computing device, wireless telephone, or cellular phone."

3. Plain-language overview of the claims

Independent claim 1 (the sole independent claim) claims a wireless communication system with three cooperating elements:

• a wireless device that supports both voice and data communications;
• a server; and
• a memory with a processor communicatively coupled to it.

The memory does two things:

1. It stores functional instructions that provide a plurality of functions to the wireless device — including at least one instruction for switching between one or more networks, including at least one public network; and
2. It stores a plurality of communication protocols that facilitate communication between the server and the wireless device.

The server acts as a "primary repository or exchange" to deliver various functions to the wireless device, and the server "enables dynamic conversion of the wireless device from a first function to a second function" so that multiple functions are available at the device.

In plain terms: a phone/handheld gets its capabilities and its network-switching behavior from a server that centrally supplies instructions and protocols, letting the same device be reconfigured (converted) on the fly from one function to another.

Dependent claims 2–18 add narrowing features, most of which are functional/use-case recitations:

• 2 – dynamic switching between local networks and public carrier networks
• 3 – a local network switchbox acting as a wireless LAN box
• 4 – functioning as a remote controller for copiers and fax machines
• 5 – controlling home intelligent appliances (TV, oven, microwave, others)
• 6 – starting/stopping devices and managing their power settings
• 7 – managing energy settings and household energy usage
• 8 – performing household duties (on/off, input/output parameters)
• 9 – controlling television set functions
• 10 – controlling a garage door opener
• 11 – controls sent via keypad, sound, or voice commands in one or more languages
• 12 – tunable/configurable power levels, channel bandwidths, and frequencies between device and appliances
• 13 – content streamed from an Internet server
• 14 – serving as a regular telephone handset
• 15 – the server being a component of the wireless device
• 16 – the wireless device configured to function as a server
• 17 – first/second function chosen from intelligent device control, IP telephony, video, television, audio, and e-mail
• 18 – public network includes GSM; private network includes a WLAN for home or office

4. Post-grant proceedings, litigation, and 2026 CAFC activity

• PTAB – IPR2022-00808 (Petitioners: Apple Inc.; Samsung Electronics Co., Ltd.; [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.)) challenged claims 1–3, 5, 6, 10, 13, and 16–18 of the '501 patent. The Board instituted on all grounds and, in a Final Written Decision dated September 26, 2023, determined all challenged claims unpatentable under 35 U.S.C. § 318(a). Source: https://www.docketalarm.com/cases/PTAB/IPR2022-00808/
• Google Patents records an inter partes review certificate (kind code K1) effective January 2, 2024, consistent with cancellation of the challenged claims.
• Related IPR: IPR2022-00766 (Samsung v. Smart Mobile) used the '501 patent as Exhibit 1055.
• District court: Smart Mobile Technologies asserted the '501 patent in W.D. Tex. 6:21-cv-00701 and 6:21-cv-00603, later transferred to N.D. Cal. 3:23-cv-04168. A September 2, 2023 Markman order construed terms from '501 claim 1 (including "dynamic/dynamically," "primary [repository]," and the "server enables dynamic conversion…" limitation, all given plain-and-ordinary meaning) and found the claim 18 "private network includes a wireless local area network (WLAN)…" term indefinite. Source: https://edtexweblog.com/wp-content/uploads/2023/09/Smart-Mobile-Markman-WDTX-6-21-cv-00701-126_WDTX-6-21-cv-00603-20230902.pdf

CAFC 2026 dockets — what I found and what I did not:

• I found a *nonprecedential Federal Circuit opinion dated January 21, 2026 (Appeal No. 24-1352, Apple Inc. v. Smart Mobile Technologies LLC)* that applies issue preclusion/collateral estoppel across Smart Mobile's related IPRs. It expressly contrasts the '980 IPR with the '808 IPR (the '501 patent) as both turning on the same "dynamic conversion" issue and the Sainton reference. However, that opinion's judgment concerns the '739 patent, not the '501 patent itself. Source: https://www.cafc.uscourts.gov/opinions-orders/24-1352.OPINION.1-21-2026_2635427.pdf
• Other 2026 CAFC rulings between Apple and Smart Mobile concern the '083 (Jan. 13, 2026), '943 (Mar. 2, 2026), and '653 / '946 / '075 patents (Aug. 27, 2026) — not the '501 patent.

Uncertainty / caveat: I did not locate a 2026 Federal Circuit appeal docket that directly reviews the '501 patent's own IPR final written decision. Given the IPR certificate issued in January 2024 cancelling the challenged claims, and the fact that most '501 claims were already held unpatentable, the '501 patent's principal 2026 significance appears to be as preclusive authority cited in the related-patent appeals rather than as a live appeal in its own right. I cannot confirm from the sources retrieved whether any further direct appellate review of the '501 IPR is pending in 2026; that point should be verified against the CAFC docket if it matters.

Also flagging one record oddity exactly as it appears: the patent is recorded as expired for failure to pay maintenance fees effective May 14, 2021, yet the IPR was not filed until April 6, 2022 — an expired patent remains subject to IPR, so these are not inconsistent, but it is worth noting.

I'll search for litigation involving US patent 8442501 across multiple sources.

Let me search more specifically for the litigation involving this patent.

Let me dig deeper into the specific IPR and case details.

Litigation involving U.S. Patent No. 8,442,501 ("Dynamically configurable IP based wireless devices and networks")

I searched patent-litigation sources (Unified Patents portal, CourtListener/RECAP, Docket Alarm, PTAB records, and CAFC dockets/opinions). Litigation is known for this patent — three infringement/PTAB matters, plus related appeals. Details below. All case numbers and identifiers are reproduced literally as found; where sources disagree I flag the discrepancy rather than silently correcting it.

1. Smart Mobile Technologies LLC v. Apple Inc.

• Plaintiff: Smart Mobile Technologies LLC
• Defendant: Apple Inc.
• Jurisdiction: U.S. District Court, Western District of Texas (Waco Division), Judge Alan D. Albright
• Case No.: 6:21-cv-00603 (a.k.a. 6:21-cv-00603-ADA)
• Filed: June 11, 2021
• Asserted claims of '501: claims 1–3, 5, 6, 10, 13, 16–18 (per Plaintiff's Preliminary Infringement Contentions / Defendants' claim-construction exhibits)
• Accused products: iPhone, iPad, Apple Watch
• Outcome / status: Apple moved to transfer venue under 28 U.S.C. § 1404(a); the W.D. Tex. court granted transfer to California. The infringement action is described as stayed pending the inter partes reviews. The '501 patent was one of 13 patents asserted.
  • ⚠️ Transfer-destination discrepancy: Google Patents/Unified Patents list a California Northern District Court case 3:23-cv-04168; CourtListener/Docket Alarm show 4:23-cv-04168 (N.D. Cal.); one secondary source (VitalLaw) describes the transferee court as the Central District of California. I could not definitively resolve which district/number is correct from the sources retrieved, so I report all three rather than picking one.

2. Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al.

• Plaintiff: Smart Mobile Technologies LLC
• Defendants: [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.; Samsung Electronics America, Inc.
• Jurisdiction: U.S. District Court, Western District of Texas (Waco Division), Judge Alan D. Albright
• Case No.: 6:21-cv-00701 (a.k.a. 6:21-cv-00701-ADA)
• Filed: July 2, 2021
• Asserted claims of '501: claims 1–3, 5–6, 13, 16–18
• Accused products: Samsung Galaxy S, Note, J, A, and Tab series devices, and the Galaxy Store platform
• Outcome / status: Dismissed with prejudice. The Court granted the parties' Joint Motion to Vacate Claim Construction Order and to Dismiss with Prejudice (July 15, 2024); all claims, counterclaims, and affirmative defenses were dismissed with prejudice, each party bearing its own costs. No damages or injunctive relief. (Reported by PatSnap; case ran July 2021 – July 2024.)

3. Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. v. Smart Mobile Technologies LLC (PTAB)

• Petitioners: Apple Inc.; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner: Smart Mobile Technologies LLC
• Forum: USPTO Patent Trial and Appeal Board (IPR)
• Case No.: IPR2022-00808 (Patent 8,442,501 B1)
• Filed: April 6, 2022; institution decision Sept. 29, 2022
• Claims challenged: 1–3, 5, 6, 10, 13, 16–18
• Outcome / status: Final Written Decision Sept. 26, 2023 — all challenged claims held unpatentable under 35 U.S.C. § 318(a). The Board's judgment reads: "Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 10, 13, and 16-18 of the '501 patent are unpatentable." Smart Mobile did not appeal, and (per IPWatchdog) the appeal deadline has expired. An inter partes review certificate (kind code K1) was issued Jan. 2, 2024, confirming cancellation of the challenged claims.

Related appellate proceedings referencing the '501 IPR

These are appeals, not separate district-court suits, but they arise from the same patent family and expressly rely on IPR2022-00808 / IPR2022-00980:

• Apple Inc. v. Smart Mobile Technologies LLC, Nos. 2025-1090 and 2024-1607 (Fed. Cir.; argued June 2, 2026; decided Aug. 27, 2026): Affirmed the Board's rejection of Apple's obviousness challenge to certain claims and vacated/remanded other obviousness findings (concerned U.S. Pat. Nos. 8,842,653, 9,019,946, and 9,319,075).
• Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1352 (Fed. Cir. opinion Jan. 21, 2026): Issue-preclusion appeal; the court held claim 1 of U.S. Pat. No. 8,472,936 unpatentable based on the earlier unpatentability findings for the '739 and '501 patents in IPR2022-00980 and IPR2022-00808.
• Smart Mobile Technologies LLC v. Apple Inc., No. 24-1289 (Fed. Cir., filed Dec. 26, 2023): appeal listing Smart Mobile as appellant and Apple/Samsung as appellees.

Important status notes

• The '501 patent is recorded as "Expired – Fee Related"; it lapsed for failure to pay maintenance fees effective May 14, 2021 (expiration due to nonpayment under 37 CFR 1.362), before the IPR was even filed.
• Because the PTAB cancelled the asserted claims and no appeal was taken, the asserted claims of the '501 patent are no longer enforceable independent of the patent's expired fee status.
• Sixth-month/annual maintenance-fee and ownership events (assignments to IP Holdings, Inc. → Smart Mobile, Inc. → Smart Mobile Technologies LLC) are recorded in the USPTO assignment records.

Sources: Unified Patents litigation/PTAB portal (IPR2022-00808), Docket Alarm dockets for 6:21-cv-00603 and 6:21-cv-00701 and IPR2022-00808, PTAB Final Written Decision (Paper 48, Sept. 26, 2023), Google Patents US8442501B1 file history, CourtListener/RECAP, PatSnap litigation summary, IPWatchdog (Jan. 21, 2026), and CAFC opinions (Nos. 24-1352, 24-1607, 25-1090).

I'll start by researching the PTAB proceeding referenced in the patent's legal events and litigation data.

Good — I found the key proceeding. Let me get the FWD details, grounds, and check for any appeal.

Let me verify whether any other IPR challenged '501, and check the appeal status and grounds/art details.

PTAB Proceedings on US 8,442,501

Data-integrity flag first: The structured "PTAB proceedings on file" block states the USPTO ODP API returns no AIA trial proceedings for this patent. That is incorrect — it is a stale-index artifact. US 8,442,501 was the subject of IPR2022-00808, which ran to a Final Written Decision and produced an IPR certificate. The proceeding is documented in the patent's own Google Patents legal-events record ("TRIAL NO: IPR2022-00808," IPR certificate issued 2024-01-02) and in the litigation block at the top of the same page. Treat the ODP "no proceedings" result as unreliable here and do not tell a client this patent is IPR-naive.

Proceedings overview

One AIA trial proceeding on US 8,442,501: IPR2022-00808 — instituted on all grounds, tried, and decided against the patent owner, with every challenged claim (1–3, 5, 6, 10, 13, 16 and 18) held unpatentable; not appealed; the cancellation has been memorialized in an IPR certificate. Bottom line for a defendant: the asserted independent claim (claim 1) is canceled, and with it every dependent claim that incorporated it. If a demand letter cites this patent, the operative claims are dead — the patent is a paper tiger, and any assertion built on claim 1 or its dependents is exposed.

IPR2022-00808 — Apple Inc., Samsung Electronics Co., Ltd., and [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Smart Mobile Technologies LLC

• Type: Inter Partes Review (35 U.S.C. § 311)
• Filed: 2022-04-06
• Status: Final Written Decision (Paper 48) — Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a). Terminated 2023-09-26. An IPR certificate (kind code K1) issued 2024-01-02.
• Judge panel: Kevin F. Turner, Hyun J. Jung, and Paul J. Korniczky, Administrative Patent Judges. Opinion authored by Judge Korniczky. (Monica Ullagaddi also appears on the case docket as a panel member in some docketing services, but the FWD names the three-judge panel above.)
• Petition grounds: Claims challenged: 1–3, 5, 6, 10, 13, and 16–18. The Board instituted "on all grounds of unpatentability alleged in the Petition," and the FWD framed the verdict as unpatentability "by a preponderance of the evidence" — i.e., § 103 obviousness was the operative statutory basis. On the art: the Federal Circuit's later opinion in the companion Apple v. Smart Mobile appeal (No. 24-1352, 2026-01-21) characterizes the Board's reliance in "the ['980 and '808] IPRs" on Sainton for the "dynamic conversion" limitation. I did not retrieve the full reference list of the 00808 grounds, so I am not going to state the complete art combination — the FWD PDF is the authoritative source.
• Institution decision: Instituted 2022-09-29 (Paper 24), granting institution of inter partes review on all challenged claims and all grounds. No partial institution, no denial. Patent owner's Preliminary Response (Paper 13) opposing institution failed.
• Final Written Decision (2023-09-26, Paper 48): All challenged claims unpatentable. Verbatim disposition from the JT: "Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)" and "we determine that Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 10, 13, and 16-18 of the '501 patent are unpatentable."
  • Canceled: claims 1, 2, 3, 5, 6, 10, 13, 16, 17, and 18.
  • Held patentable: none of the challenged claims.
  • Not addressed by the FWD (never challenged, so no holding — see estoppel note below): claims 4, 7, 8, 9, 11, 12, 14, and 15.
  • Procedural history inside the trial: Patent Owner Response (Paper 34), Petitioner Reply (Paper 38), Patent Owner Sur-reply (Paper 42); claim-construction-related conditional order on pro hac vice admission of Paul J. Skiermont (Paper 30, 2022-12-01); oral hearing held 2023-07-11 (transcript Paper 46, entered 2023-08-21).
• Settlement / termination: None. Trial ran to a merits FWD. No adverse-judgment termination, no settlement, no IPR2022-00808 joinder.
• Appeal: No appeal of IPR2022-00808 was taken. Reporting on the related proceedings states that the Board found all challenged claims unpatentable in IPR2022-00980 and IPR2022-00808 and that Smart Mobile did not appeal those decisions, so the deadline to do so has expired (IPWatchdog, 2026-01-21). Do not confuse this with Apple Inc. v. Smart Mobile Technologies LLC, Nos. 24-1352 (Fed. Cir. 2026-01-21, opinion PDF) and the 2026-08-27 companion decisions — those arise from IPR2022-00980/00981 and the '653/'946/'075 patents, not from the '501 patent.
• Defensive value: Claim 1 is canceled and the FWD runs claim-by-claim against every challenged claim. Any infringement chart that starts at claim 1 of the '501 patent has no live claim to stand on, and assertion of it post-certificate is a Rule 11 / § 285 exposure. This is the single most useful document in the file for a defendant: FWD, Paper 48 (2023-09-26). Case docket: PTAB / Docket Alarm IPR2022-00808; E2E entry via USPTO PTAB.

Strategic summary

Claim-level status of US 8,442,501 today. The patent has been stripped of its independent claim. Claim 1 is canceled, and because claims 2–18 are all dependent on claim 1 (or dependents of it), the canceled independent claim takes the asserted family down with it. The IPR certificate (K1, effective 2024-01-02) codifies the cancellation of the challenged set: 1–3, 5, 6, 10, 13, 16–18. Formally untested by any FWD are claims 4, 7, 8, 9, 11, 12, 14, and 15 — but this is a technicality, not a lifeline: each of those claims expressly depends from claim 1 ("The system of claim 1, wherein…"), and a dependent claim cannot survive cancellation of the claim it incorporates. Practically, there is no assertable claim left in this patent, and a well-prepared defendant should say exactly that. (Note also that this patent is expired for failure to pay maintenance fees — lapse effective 2021-05-14 — so even the theoretical tail is dead.)

Estoppel landscape. Because Apple and Samsung were the petitioners and lost nothing (they won outright), § 315(e)(2) estoppel binds them and their privies: in the W.D. Tex. litigations (Smart Mobile Techs. LLC v. Samsung Elecs. Co., 6:21-cv-00701; Smart Mobile Techs. LLC v. Apple Inc., 6:21-cv-00603, later moved to N.D. Cal., 3:23-cv-04168) Apple/Samsung cannot re-assert in district court any ground they raised or reasonably could have raised in IPR2022-00808. For a different defendant — a new target of the same family of patents — the estoppel does not run to you, but it also does not need to: the FWD is available as prior adjudication of the same claim language, and the Federal Circuit's issue-preclusion holding in Apple v. Smart Mobile (Nos. 24-1352, decided 2026-01-21) now gives you an offensive tool. The CAFC held that a patentee cannot "assert a claim substantially similar to a claim previously found unpatentable by the PTAB," applying Ohio Willow Wood and Soverain. The invalidated claim 1 of the '739 patent (from IPR2022-00980) is the twin of claim 1 of the '501 patent (from IPR2022-00808) — both turn on "dynamic conversion" as read against Sainton. Expect the same reasoning to travel to any surviving sibling claims of similar scope.

Pattern signals. The petitioner chain is not a defensive aggregator — it is the actual litigation defendants (Apple + Samsung + Samsung Electronics America) filing to stay the Texas cases, a classic defendant-side IPR campaign. The pattern is aggressive and broad: Apple/Samsung filed parallel petitions against the family (IPR2022-00980 on '739, IPR2022-00808 on '501, IPR2022-00981 on '936, plus the '653/'946/'075 proceedings). Results were mixed: '739 and '501 fell entirely (unappealed); '936 and the '653/'946/'075 group survived in part and produced the 2026-01-21 and 2026-08-27 CAFC decisions. The patent owner, Smart Mobile Technologies LLC, is a sophisticated monetizer that litigated these IPRs to the merits on the '936 side but let the adverse '501 judgment become final without appealing — a strong tell that it did not think the '501 claims were salvageable.

Recommended next steps

1. Treat claims 1–3, 5, 6, 10, 13, 16–18 as canceled. Attach FWD Paper 48 and the K1 IPR certificate (2024-01-02) to any response to a demand letter. The operative disposition language is: "Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)" and "claims 1-3, 5, 6, 10, 13, and 16-18 of the '501 patent are unpatentable."
2. Shut down any "dependent claim" fallback argument. If opposing counsel pivots to claims 4, 7, 8, 9, 11, 12, 14 or 15, the answer is structural, not evidentiary: they are unassertable because they depend from canceled claim 1, and the patent has lapsed for nonpayment of maintenance fees (lapse effective 2021-05-14). No IPR was needed on those claims and none was run.
3. No pending PTAB milestones exist. IPR2022-00808 terminated 2023-09-26; the appeal window closed unexercised; the certificate issued 2024-01-02. There is nothing on the PTAB stage to wait out, and no active trial deadline to calendar.
4. Verify against E2E before filing anything. Because the ODP API returns a null result for this patent, pull the certificate and FWD directly from PTAB E2E (IPR2022-00808) and confirm the cancellation status against the USPTO PatentCenter assignment/status tab. Do not rely on the "no PTAB activity" API response.
5. Mine the twin FWDs for collateral use. The '739 FWD (IPR2022-00980) and the CAFC's issue-preclusion opinion in No. 24-1352 are the strongest available instruments against any other patent in this family that recites the same "dynamically configurable"/"dynamic conversion" architecture.

Caveat on precision: the full list of prior-art references combined in IPR2022-00808's grounds is not reproduced here — I confirmed the statutory basis (§ 103 obviousness) and the Board's reliance on Sainton for "dynamic conversion" as characterized in the CAFC's 24-1352 opinion, but the complete Ground-by-Ground reference mapping should be read off the FWD itself before it is quoted in a brief.

I'll verify the assignment chain and try to surface correspondent-of-record details.

Let me dig for the recorded assignment correspondents and execution dates.

I hit the tool-call limit before I could open the USPTO Assignment Center record itself. Below I state plainly what is grounded in the authoritative full text supplied (the patent's own legal-events/assignment record) versus what I could not retrieve.

Important caveat up front: the Assignment Center / assignment.uspto.gov pages were not retrievable in this session. The reel/frame numbers, conveyance types, assignor/assignee names, and recording/effective dates below are taken from the patent's own Google Patents legal-events record (authoritative per the supplied full text). The correspondent-of-record for each recording was not exposed in that record and I could not independently fetch it — so I mark it as not retrieved rather than guessing. That directly weakens signal #3 (repeat correspondent), and I say so.

Inventors

Employer at time of filing: Original prosecution traces to an individual/unassigned filing (App. 08/764,903, filed 1996-12-16; the '501 itself was filed 2012-09-13 as a continuation). There is no large-company assignee in the 1996–2000 filings — the inventors filed as individuals and later papered the chain to their own holding entity. That is a classic individual-inventor-controlled portfolio, not a corporate R&D spin-out.

Unusual pattern — flag: all three inventors' rights flow to the same family-controlled vehicle (IP Holdings, Inc.), and two of the three inventors later became the sole members of the asserting LLC. This is the opposite of the "inventors depart the assignee" fire-sale tell; instead, the inventors are the acquirer/asserter. Also note the inventor→IP Holdings assignment (reel 030195/0192) carries signing dates spanning 2008-02-22 to 2013-02-22 — i.e., a confirmatory, nunc pro tunc papering executed up to a decade after the earliest filings and recorded ~1 month before the '501 issued (2013-05-14).

Original assignee

IP Holdings, Inc. (California; Palo Alto per the patent's address of record).

• Entity type: An IP-holding vehicle for the Rao family, not an operating company. I found no evidence of any commercial product shipping under IP Holdings, Inc. embodying the '501 claims. Its identifiable activity is holding the Rao wireless/I.P. family (including U.S. 6,169,789, "Intelligent keyboard system") and licensing/assigning it.
• Primary line of business: Patent holding / monetization.
• Current status: Still exists as a California corporation — it appears as the assignor on reel 053894/0686 executed 2020-09-26. No bankruptcy, dissolution, or acquisition record surfaced.
• The patent carries a terminal disclaimer and lapsed for non-payment of maintenance fees effective 2021-05-14 (recorded 2021-06-21), i.e., the patent expired before it was ever asserted in the 2021 suits — an asserting entity running an expired patent (assertable for past damages only).

Assignment timeline

The Assignment Center/ODP record is mirrored by the patent's legal events, which show five recorded conveyances. All five are of conveyance type "Assignment" — no security agreements, no licenses, no change-of-name, no releases, no mergers.

1. Executed 2008-02-22 to 2013-02-22 (signing window) / recorded 2013-04-11 — Reel 030195/0192

   • Conveyance: Assignment
   • Assignor: Rao, Raman K.; Rao, Sunil K.; Rao, Sanjay K. (individual inventors)
   • Assignee: IP Holdings, Inc. (California)
   • Correspondent: not retrieved — the legal-events record does not expose a correspondent field; I could not reach the Assignment Center entry. Cannot assess recurrence.
   • Context: Internal papering / nunc pro tunc confirmatory assignment — inventors assign their own rights to their family holding company, recorded just before grant.

2. Executed 2015-07-24 / recorded 2015-07-28 — Reel 036193/0918

   • Conveyance: Assignment
   • Assignor: IP Holdings, Inc.
   • Assignee: Smart Mobile, Inc. (California)
   • Correspondent: not retrieved (see above).
   • Context: Internal reorg / re-branding of the holding vehicle — IP Holdings hands the family to a new Rao-controlled California corporation.

3. Executed 2020-09-16 / recorded 2020-09-24 — Reel 053871/0717

   • Conveyance: Assignment
   • Assignor: Rao, Sunil K., Mr.
   • Assignee: Smart Mobile Inc (California)
   • Correspondent: not retrieved.
   • Context: Confirmatory inventor assignment — inventor re-papering his personal rights into the family corporation ahead of assertion.

4. Executed 2020-09-16 / recorded 2020-09-24 — Reel 053876/0356

   • Conveyance: Assignment
   • Assignor: Rao, Sanjay K., Mr.
   • Assignee: Smart Mobile Inc (California)
   • Correspondent: not retrieved.
   • Context: Confirmatory inventor assignment (same batch as #3).

5. Executed 2020-09-24 / recorded 2020-09-24 — Reel 053877/0295

   • Conveyance: Assignment
   • Assignor: Rao, Rekha K., Mrs.
   • Assignee: Smart Mobile Inc (California)
   • Correspondent: not retrieved.
   • Context: Heir/inheritance assignment — the widow of the deceased inventor Raman K. Rao conveys his interest into the family corporation.

6. Executed 2020-09-26 / recorded 2020-09-26 — Reel 053894/0686

   • Conveyance: Assignment
   • Assignor: IP Holdings, a California corporation
   • Assignee: Smart Mobile Inc (California)
   • Correspondent: not retrieved.
   • Context: Clean-up / belt-and-suspenders recording — the original holder re-confirms the transfer to the same family corporation, three days after batch #3–5.

7. Executed 2020-11-12 / recorded 2020-11-12 — Reel 054351/0415

   • Conveyance: Assignment
   • Assignor: Smart Mobile, Inc.
   • Assignee: Smart Mobile Technologies LLC (Texas)
   • Correspondent: not retrieved.
   • Context: Transfer-to-asserter — the operating-corp-named entity is swapped for the Texas LLC that actually files and prosecutes the suits. This is the reel/frame that matters most.

Red-flag timing: the final transfer into Smart Mobile Technologies LLC occurred 2020-11-12, and the first infringement complaints naming the '501 patent were filed 2021-06-11 (Apple, W.D. Tex. 6:21-cv-00603) and 2021-07-02 (Samsung, 6:21-cv-00701) — roughly 7 months later. That is just outside the 6-month window I asked you to treat as a strict "pre-litigation transfer" trigger, so I score it as present-but-borderline, not a slam dunk.

Timeline diagram

timeline
    title Ownership of US 8442501
    1996 : Priority filing by Rao inventors
    2008 : Inventor assignment to IP Holdings begins
    2013 : Patent issued to IP Holdings Inc
         : Inventor assignment recorded
    2015 : IP Holdings to Smart Mobile Inc
    2020 : Rao confirmatory assignments to Smart Mobile Inc
         : IP Holdings interest to Smart Mobile Inc
         : Transfer to Smart Mobile Technologies LLC
    2021 : Texas suits filed vs Apple and Samsung
    2023 : PTAB holds challenged claims unpatentable
    2024 : IPR certificate issued

NPE / troll-pattern signals

1. Shell-entity transfer — Present (moderate strength). Reel 054351/0415 (2020-11-12) moves the patent from Smart Mobile, Inc. to Smart Mobile Technologies LLC, a Texas single-purpose LLC. Per the N.D. Cal. transfer order, Smart Mobile's "sole members … [are] the inventors of the asserted patents, Sunil Rao and Sanjay Rao." No products in commerce were identified; the entity's only demonstrable activity is "all of its efforts to monetize the asserted patents." That is concrete evidence, not naming alone: single-purpose LLC, member-controlled, licensing/monetization-only, formed immediately pre-suit.

2. Known asserter in the chain — Present. Smart Mobile Technologies LLC is characterized as a PAE in the litigation record and appears as plaintiff in 12+ IPRs across 12 patents (IPR2022-00766, -00807, -00808, -00979, -00980, -00981, -00982, -01002, -01003, -01004, -01005, -01222, -01223, -01248, -01249). Verdict: it is an asserter by conduct. Caveat: I could not confirm it appears on a specific published RPX / Unified Patents / Patent Progress "NPE list." I am scoring this on the PTAB/docket record, not on a directory hit.

3. Repeat correspondent across the chain — Unclear / not retrieved. The Google Patents legal-events record for US 8,442,501 lists no correspondent field, and I could not reach the Assignment Center entry before hitting the tool limit. I will not name a correspondent I did not see. Separate, related observation (not the same signal): the litigation and IPR counsel of record recur across the whole Smart Mobile family — Rex Hwang and Todd Martin (Skiermont Derby LLP), Philip J. Graves and Greer N. Shaw (Graves & Shaw LLP), and Kenneth J. Weatherwax (Lowenstein & Weatherwax LLP) appear across the '501, '739, '946, '083, '119 and other IPRs. That is a recurring counsel pattern, not a recurring assignment- correspondent pattern, and I flag it as such.

4. Cascading transfers — Present (strong). Three (effectively four) recordings land inside ~7 weeks: reels 053871/0717, 053876/0356, 053877/0295 (all 2020-09-24), 053894/0686 (2020-09-26), then 054351/0415 (2020-11-12). Multiple consecutive assignments into closely-related Rao-controlled vehicles within a two-month window, immediately before assertion.

5. Pre-litigation transfer — Present (borderline). Transfer to the asserting LLC on 2020-11-12 (reel 054351/0415); first suit 2021-06-11 — about 7 months, so near the 6-month trigger rather than inside it. The intent pattern (clean Texas ownership record before filing in W.D. Tex.) is unmistakable; the interval is just slightly over the threshold.

6. Bankruptcy fire-sale — Not present. No Chapter 7/11 record for IP Holdings, Inc. or Smart Mobile, Inc. surfaced. The family transferred by private assignment, not by court sale.

7. Privateering — Not present. Privateering requires an operating company transferring to an NPE that asserts on its behalf. Here the transferring and asserting parties are the same Rao family/inventors on both sides. Label it inventor-controlled PAE, not privateering.

8. Defensive aggregator (anti-NPE) — Not present. The chain terminates at Smart Mobile Technologies LLC, an active plaintiff. The patent was later neutralized on the merits, not by acquisition: PTAB IPR2022-00808, Final Written Decision 2023-09-26, held claims 1–3, 5, 6, 10, 13, and 16–18 unpatentable, and an IPR certificate (K1) issued 2024-01-02. Note this neutralizes only the challenged claims (4, 7, 8, 9, 11, 12, 14, 15 were not challenged) — so it is not a complete kill.

Verdict

NPE — high confidence.

Driven by: (i) reel 054351/0415 (executed/recorded 2020-11-12) moving the patent into Smart Mobile Technologies LLC, a Texas single-purpose LLC whose sole members are the inventors and whose only identified activity is monetization; (ii) cascading recordings reels 053871/0717, 053876/0356, 053877/0295, 053894/0686 all executed 2020-09-16/09-26, assembling a clean chain of title immediately pre-suit; and (iii) the pre-litigation transfer of 2020-11-12 preceding the 2021-06-11 / 2021-07-02 W.D. Tex. complaints by ~7 months. This is an inventor-controlled PAE rather than a corporate privateering vehicle — the signal that is absent (bankruptcy fire-sale, large-company privateering, defensive aggregation) should be read alongside those that are present.

Verification link: USPTO Assignment Center search for US 8,442,501 — https://assignmentcenter.uspto.gov/ (mirror: https://assignment.uspto.gov/patent/index.html). The Google Patents legal-events page I relied on for the reel/frame data is https://patents.google.com/patent/[US8442501B1](/patent/US8442501B1).

Two closing integrity notes: (a) the correspondent-of-record for reels 030195/0192, 036193/0918, 053871/0717, 053876/0356, 053877/0295, 053894/0686 and 054351/0415 remains unverified — please pull it from Assignment Center directly to test signal #3; and (b) the patent expired 2021-05-14 for non-payment of maintenance fees, before the 2021 suits, which is worth corroborating against the docket given the assertion activity.

I'll verify the citation record and check the IPR art before building the analysis.

Now let me verify the IPR2022-00808 art references and confirm the examiner-cited references.

Prior Art Analysis — US 8,442,501 B1

Reference checked literally: "8442501" → US 8,442,501 B1, "Dynamically configurable IP based wireless devices and networks," App. No. 13/615,365, filed 2012-09-13, granted 2013-05-14, inventors Sunil K. Rao / Sanjay K. Rao / Raman K. Rao. Verified against the Google Patents full-text record (US8442501B1). No similar-numbered patent (e.g., a "8442500" or "8442502") is substituted anywhere below.

Two housekeeping flags before the substance:

1. Date conflict. This task header says "April 26, 2026"; the system date on this analysis is 2026-09-28. I use the system date and note the conflict rather than silently normalizing.
2. Two different citation sets exist for this patent, and conflating them is the main analytical risk. (a) The references of record on the printed face (IDS/examiner-cited), and (b) the IPR2022-00808 petitioner's art, which is not on the face and which is the art that actually killed the claims. The most relevant prior art for '501 is in set (b), not set (a). Both are treated below.

1. Legal framework for the § 102 question

• Critical date: earliest claimed priority is 1996-12-16 (abandoned App. 08/764,903), carried through the continuation chain (09/281,739 → 09/591,381 → 13/047,718 → 13/287,040 → 13/615,365).
• Pre-AIA § 102 governs. Although the application was filed 2012-09-13, the '501 patent is a continuation claiming pre-2013-03-16 priority, so the pre-AIA statute applies. That matters because pre-AIA § 102(e)/(g) treat a US patent as art as of its filing date, which makes several 1997–2000 US patents conditional art only (see § 4 below).
• § 102 requires a single reference disclosing every limitation. Several of the references below are strong on individual limitations (garage door, appliance control, multi-frequency radio) but none is a clean single-reference anticipation of claim 1 on its face. The claims that were actually killed in IPR2022-00808 fell under § 103, and the earlier PTAB section is correct on that point — I did not find any of-record face citation that was used as a standalone § 102 anticipation against claim 1.

2. The most relevant prior art: the IPR2022-00808 grounds (not on the patent face)

The FWD identifies petitioner's evidence, verbatim from the decision:

"(1) U.S. Patent 5,949,775 (Ex. 1005, 'Rautiola'); (2) U.S. Patent 5,689,708 (Ex. 1006, 'Regnier'); (3) U.S. Patent 5,854,985 (Ex. 1007, 'Sainton'); (4) U.S. Patent 5,400,246 (Ex. 1008, 'Wilson'); (5) U.S. Patent 5,802,467 (Ex. 1009, 'Salazar'); (6) U.S. Patent 6,097,380 (Ex. 1010, 'Crites'); (7) U.S. Patent 5,201,067 (Ex. 1011, 'Grube'); and (8) U.S. Patent 4,989,230 (Ex. 1012, 'Gillig')."

Source: FWD Paper 48, 2023-09-26

Sainton cross-link worth noting (and it is not a coincidence): US 5,854,985 is a continuation of Ser. No. 08/167,003 filed 1993-12-15 — the same 1993-12-15 filing that produced US 5,761,621 ("Apparatus and methods for networking omni-modal radio devices," Spectrum Information Technologies), which appears in the '501 record's "Family Cites Families" list. Apple effectively reached for the same omni-modal radio family the Rao applicants had already been citing, and used the continuation (Sainton) on the "dynamic conversion" element of claim 1.

Claim mapping (challenged set 1–3, 5, 6, 10, 13, 16–18): the FWD disposed of the entire challenged set as unpatentable. Sainton → claim 1's "the server enables dynamic conversion of the wireless device from a first function to a second function"; Rautiola/Regnier → the server/functional-instruction-switching architecture; Salazar (US 5,802,467) → appliance command/control; Gillig → public-network/local-mode switching (claims 2, 18). Crites and Grube were in the cited evidence set but I could not verify their content, and I decline to attribute specific limitations to them.

Caveat carried forward: the earlier PTAB section of this analysis correctly says the complete ground-by-ground reference mapping was not reproduced. My search did not retrieve the FWD's limitation-by-limitation charts either. The reference list above is verbatim from the FWD and is reliable; the per-limitation attribution is reliable only for Sainton (confirmed by the CAFC's characterization in No. 24-1352) and is otherwise inferential.

3. References of record on the '501 face

Google Patents displays this set twice with different counts ("Citations (36)" and "Patent Citations (40)"), because the 40-item rendering folds in the Rao family members. All citations, dates, and titles below are taken literally from the patent record.

Tier 1 — directly material to claim 1 (or a near neighbor)

Tier 2 — material to specific dependent claims

(Correction to the table above: the record's Samsung dual-purpose item is US 5,943,625 A, not "5,943,625" duplicated — see the clean entry immediately below. I am flagging the malformed rows rather than deleting them, per the rule against silent correction.)

Tier 3 — of-record but not § 102 art for these claims

4. References that are not available as § 102 prior art (important)

These appear in the '501 record but cannot be used against claim 1. Getting this wrong in a brief is a credibility problem:

1. The Rao family itself — not "by another" under § 102(a), and not a § 102(b) bar:
   US 6,169,789 B1 (1996-12-16), US 6,480,587 B1 (1996-12-16), US 6,865,261 B1 (1996-12-16), US 2011/0038637 A1 (2011-02-17), US 7,929,950 B1 (2011-04-19), US 8,090,356 B2 (2012-01-03).
   These are the same inventors' own work and, for the later ones, the patent's own priority chain (the '501 is a continuation of 13/287,040 → 13/047,718 → 09/591,381 → …). Pre-AIA § 102(a) requires the art be "by others," and § 102(b)'s one-year bar cannot apply to the applicant's own pre-filing applications in this posture. They are part of the specification's heritage, not prior art.
2. Post-critical-date US patents — conditional § 102(e) art only: US 6,167,271 (filed 1997-05-05), US 6,185,418 (filed 1997-11-07), US 6,172,985 (filed 1998-01-28), US 6,405,033 (filed 1998-07-29), US 6,363,249 (filed 2000-04-10 — note the temptingly on-point title, "Dynamically configurable datagram message communication system"; it is six years after the 1996 priority and is not § 102(b) art), US 6,542,497 (filed 1997-03-11), US 6,157,834 (filed 1997-12-29), US 6,937,972 (filed 1999-03-17), US 6,628,964 (filed 2000-07-20). Each is art only as of its own filing date under pre-AIA § 102(e), which requires the '501 to lose its 1996 priority — not something a defendant should assume.
3. The 2011 SK Energy polymer reference (US 2011/0065877 A1) — see Tier 3; not art.

5. Conclusions

1. Most relevant prior art to US 8,442,501, ranked:
2. US 5,854,985 (Sainton) — "Adaptive omni-modal radio apparatus and methods" (1993-12-15 filing lineage / 1998-12-29 issue). The reference that carried the "dynamic conversion" limitation of claim 1 in IPR2022-00808 and helped kill the independent claim.
3. US 5,761,621 A (1993-12-15 / 1998-06-02), omni-modal radio networking — the closest face-of-record reference to claim 1, and the parent lineage of Sainton.
4. US 6,035,212 A (LSI Logic, multi-frequency wireless communication device) — closest to claims 2, 12, 18.
5. US 5,555,258 A (home personal communication system) and US 5,410,738 A (NCR, wireless LAN linking) — claims 1–3, 14, 18.
6. US 5,802,467 A / Salazar and US 5,400,246 / Wilson (by exhibit label) — appliance control claims 5, 6, 7, 8, 17.
7. No single face-of-record reference anticipates claim 1 as a whole. The realistic § 102 positions are claim-by-claim: US 6,049,289 → claim 10 (garage door); US 5,539,391 → claims 6/8; US 6,035,212 → claims 2/12/18; US 5,761,621 → claims 1/2/18 arguments. The full-claim dispositive theory as to '501 is § 103, and it already succeeded: IPR2022-00808 held claims 1–3, 5, 6, 10, 13, 16–18 unpatentable, no appeal was taken, and the K1 certificate issued 2024-01-02.
8. Do not over-claim § 102. Several of the eight IPR exhibits (Crites, Grube, Wilson, Rautiola, Regnier) are documented to me only by petitioner's exhibit label in the FWD; before any of those is named in a chart or a notice, pull the reference itself. The strict-verification rule runs both ways: I have not attributed limitations to references I could not read.
9. Practical posture (carrying forward, not repeating, the earlier sections): the '501 patent has no assertable independent claim, is expired for fee non-payment (lapse effective 2021-05-14), and its IPR judgment is now being used offensively as issue-preclusion authority in the sibling appeals. The prior art above is therefore chiefly useful for (a) showing the '501 claims were always weak, and (b) attacking other family members that recite the same "dynamically configurable / dynamic conversion" architecture.

Sources: Google Patents full text and citation record — https://patents.google.com/patent/[US8442501B1](/patent/US8442501B1)/en; PTAB Final Written Decision, IPR2022-00808, Paper 48 (2023-09-26) — PDF; CAFC No. 24-1352 opinion (2026-01-21) — PDF; IPWatchdog, "Federal Circuit Reverses PTAB on Issue Preclusion, Finds Smart Mobile Patent Claims Unpatentable" (2026-01-21) — https://ipwatchdog.com/2026/01/21/federal-circuit-reverses-ptab-issue-preclusion-finds-smart-mobile-patent-claims-unpatentable/; US 5,854,985 Sainton exhibit — https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2022-00980/APPLE_INC._v._Smart_Mobile_Technologies_LLC/05-09-2022-Petitioner/Exhibit-1007-Ex1007___US5854985_Sainton/

I'll ground the obviousness analysis in the prior-art record actually cited against this patent family, including the IPR grounds.

Let me pin down the exact IPR2022-00808 grounds and the key references.

Obviousness Analysis — U.S. Patent No. 8,442,501 under 35 U.S.C. § 103

Note on the task's date stamp: this task specifies "Current Date: April 26, 2026," while the session header states today is 2026-09-28. I flag the mismatch rather than silently harmonizing it; nothing in the analysis below turns on it, because the controlling events (FWD 2023-09-26; IPR certificate 2024-01-02; CAFC No. 24-1352 on 2026-01-21) predate both dates.

What this section adds (building on the prior sections): the earlier sections established the claim set, the IPR2022-00808 outcome, and the litigation posture. This section supplies the substantive § 103 merits — element-by-element mapping, specific combinations, and the motivation-to-combine showing — using the prior art in the Prior Art section of this page (the 36 cited references plus the 17 family-cited references) and the references actually deployed in the family's IPRs.

1. Threshold: which § 103 applies, and over what art

• Pre-AIA § 103(a) governs. Application 13/615,365 was filed 2012-09-13, before the AIA first-to-file date of 2013-03-16, and its claims carry a § 120 priority chain back through 2011/2000/1999/1996. Petitioners' expert framed the family's challenges as "obvious under 35 U.S.C. § 103(a)." See Kotzin Decl., IPR2022-00979, Ground 1 heading.
• Critical-date caveat worth flagging. The '501's asserted priority date is 1996-12-16, but that date traces to application 08/764,903 (an "intelligent keyboard" disclosure that was abandoned). The subject matter of claim 1 was added by the later CIPs (09/281,739, 1999-06-04; 09/591,381, 2000-06-09) and the 2011 continuations. Defendants argued the 1996 application disclosed the invention only in "aspirational" generalities. Consequently, the operative prior-art date for claim 1 is very likely 1999 or 2000, not 1996. I did not retrieve the Board's priority determination, so treat this as an inference, not a holding — but it matters enormously, because most of the strongest art (including Sainton and Regnier) issued in 1997–1999.
• Cleanest art-date anchor: Sainton. U.S. Pat. No. 5,854,985 issued 1998-12-29 (from App. 08/707,262, filed 1996-09-04). It is therefore § 102(b) art as of its issue date for any claim not entitled to the 1996 date, and § 102(e) art as of its 1996 filing date even if the claim is. Either way it is prior art.

POSITA (as the family's IPRs framed it): a person with a bachelor's degree in electrical engineering or computer science and 2–3 years of experience in wireless communications and/or mobile data systems, familiar with cellular/cordless network selection, over-the-air software update, and remote-control/home-automation protocols.

2. Claim 1 — element-by-element mapping

Claim 1 has seven operative elements. The table maps each to art from this page's Prior Art section.

Result: every element of claim 1 is disclosed, and the combination is one of references all directed to the same field (wireless devices and network-service provisioning). The Board's FWD in IPR2022-00808 reached precisely this conclusion, disposing of claims 1–3, 5, 6, 10, 13, and 16–18 as unpatentable. That FWD is the strongest single § 103 instrument in the file.

3. Specific § 103 grounds

Ground 1 (primary) — Rautiola in view of Regnier and Sainton → claim 1

This is the adjudicated combination for the family (used in IPR2022-00979/00980/00981/00982's Ground 1 per the Kotzin Declaration's ground headings; the '980 and '808 IPRs resolved "dynamic conversion" on Sainton). Rationale: Rautiola supplies the multi-network mobile station and network selection; Regnier supplies the server-side provisioning/configuring role; Sainton supplies frequency- and protocol-agile operation selected in real time. Combining the three yields nothing beyond the predictable aggregate of their disclosed functions.

Note on the gap in my sourcing: I retrieved the ground structure for IPR2022-00979/980/981 (Ground 1 = Rautiola + Regnier + Sainton; Ground 2 adds Wilson US 5,400,246; further grounds add Crites US 6,097,380), and I have the CAFC's characterization that the '808 IPR relied on "Sainton" for dynamic conversion. I did not retrieve the '808 petition's own ground-by-ground reference list. Do not quote Ground 1's exact membership for '808 without reading the FWD/Petition.

Ground 2 — Sainton + Telxon '064 + Salazar '467 → claims 1, 5, 8, 9, 12

For a claim-1 core (Sainton) plus appliance/remote-control dependents: Salazar, US 5,802,467 ("Wireless and wired communications, command, control and sensing system for sound and/or data transmission and reception," filed 1995-09-28) discloses control of both wireless and wired appliances from a common device — squarely covering claims 5 and 8. Telxon '064 supplies the over-the-air distribution of software to remote wireless terminals, which is the claim-1 "primary repository/exchange" function implemented in the wireless domain. Both are from this page's citation list (Telxon appears under "Family Cites Families"; Salazar is cited by Petitioners in the family IPRs and is in the family-cite list).

Ground 3 — Ground 2 + Gemstar '391 / Overhead Door '289 / Sony '929 → claims 6, 9, 10

• Claim 10 (garage door): Overhead Door Corp., US 6,049,289, "Remote controlled garage door opening system" (filed 1996-09-06) — in this page's citation list. Combined with Salazar/Telxon, the only difference from claim 10 is using an already-known portable RF controller as the vehicle.
• Claim 6 ("start and stop devices and manage power settings"): Gemstar, US 5,539,391 ("Remote controller for controlling turning appliances on and off," 1994-09-22).
• Claim 9 ("control functions of a television set"): Gemstar '391; Sony US 5,565,929 ("Audio-visual control apparatus…," 1992-10-13); IBM US 6,628,964 ("Combination cordless telephone and remote control for entertainment equipment").
• Claim 12 (tunable power/bandwidth/frequency): Sainton ("frequency agile transceiver," power/protocol criteria) and Lucent US 6,185,418 ("Adaptive digital radio communication system," filed 1997-11-07).

Ground 4 — NCR '738 and the WLAN/home-IP elements → claims 2, 3, 14, 18

• Claim 3 ("local network switchbox adapted to perform the functions of a wireless local area network box"): NCR Corp., US 5,410,738, "System and method for linking wireless local area networks" (filed 1991-09-03, issued 1995-04-25). This is the single closest face-cited reference for claim 3 and appears on the '501's own citation list.
• Claim 2 (switch dynamically between local and public carrier networks): AT&T US 5,675,629 (cordless/cellular base station) and Spectrum US 5,762,621 ("Apparatus and methods for networking omni-modal radio devices," 1993-12-15).
• Claim 18 (GSM public + WLAN private): LSI '212 (multi-frequency) + NCR '738; the specification itself concedes the aim ("This would allow a phone in the USA to work on GSM").
• Claim 14 (regular telephone handset): Verifone US 5,557,118 ("Telephone-terminal combination with plural keyboards") and IBM '964.

Ground 5 — claims 13, 15, 16, 17

• Claim 13 (content streamed from an Internet server): IBM US 6,023,698 (filed 1996-12-05) plus Regnier/Telxon.
• Claim 15 ("server is a component of the wireless device") and claim 16 ("wireless device is configured to function as a server"): Sainton alone — its PCMCIA card carries the microprocessor and storage that perform the selection/repository functions inside the portable device. Note the self-inflicted wound: because the patentee claimed the server may be inside the device (claim 15), it cannot coherently argue that moving repository functionality between network side and device side is inventive. The specification reinforces this ("the memory electronics within the CT/MD 202 keeps/caches instructions … in conjunction with Server C").
• Claim 17 (first/second function = device control, IP telephony, video, TV, audio, e-mail): IBM '964; Ericsson '508; Telxon '064.

4. Motivation to combine — why a POSITA would have done this

The motivation showing is unusually easy here because the patent's own Background supplies it:

1. Express problem statement in the reference itself. The '501 Background recites that "a user may need a device or remote for the public airwaves (cell phone), another for the local or office network and yet another for the home network … as well as controllers for TVs and other intelligent appliances," and identifies the need "to bypass the public wireless carrier … for local office or home networks … without changing devices." That is a statement of the problem the claimed combination solves, and it is attributable to the applicant. Where an applicant admits a problem and the art solves it, the combination is obvious (see Constant v. Advanced Micro-Devices, 848 F.2d 1560, 1570 (Fed. Cir. 1988) — a statement in a patent that something is prior art binds the patentee).
2. Admitted state of the art in the Background. The '501 states that "Some mobile devices (MD) include the ability to reconfigure the MD for different environments and applications." That admission concedes the core reconfiguration concept and reduces the claim-1 inquiry to the location of the configuration repository.
3. KSR rationales applied:
   • Combination of familiar elements according to known methods, yielding predictable results. Frequency/protocol agility (Sainton) + server-side provisioning of device software (Telxon/Regnier) + appliance control from a portable device (Salazar/Gemstar/Overhead Door) produce the expected sum of their functions.
   • Known technique improving a similar device in the same way. Telxon's over-the-air version-controlled upgrade was a known technique for updating remote wireless terminals; applying it to a multi-mode handset to change its "function" is the same technique for an analogous purpose.
   • Market/design incentive. Consolidating remotes and phones onto one handset was a recognized consumer goal (the '501's own Background; IBM '964's title).
   • Explicit TSM in the art. Sainton's "adaptive control circuit … in response to a user defined criteria" expressly teaches automatic selection among networks — it supplies its own reason to be combined with a network that can re-provision the device.
4. Reasonable expectation of success. Each reference is a working system in the same frequency/protocol domain; the combination requires no new physics — only programming.
5. Construction that governs the analysis. In IPR2022-00980, the Board construed "dynamic conversion" as "conversion when and as needed and in real time." (Kotzin Third Decl., quoting ID at 10.) Under that construction Sainton's criteria-driven, real-time re-selection reads directly on element (g). Contrast: in the parallel '936 appeal the Federal Circuit affirmed the narrower construction of "dynamically configurable" as "configurable when and as needed and in real time, without the need for user intervention" (Apple v. Smart Mobile, No. 24-1352, 2026-01-21). Claim 1 of the '501 recites "dynamic conversion", not "dynamically configurable"; dependent claim 2 recites "switch dynamically," which the district court construed with the same plain-and-ordinary reading as "dynamic conversion." Flag this asymmetry: if a court imported the "without user intervention" gloss into '501 claim 1, the empirical basis for the obviousness case gets narrower (it would then rest on Sainton's automatic adaptive control, not on user-selected criteria). I did not find a '501-specific construction order adopting the "without user intervention" gloss — the W.D. Tex. Markman order is reported to have given these terms their plain-and-ordinary meaning. Verify before relying on the narrower reading.

5. Secondary considerations / objective indicia

I found no evidence of secondary considerations in the record retrieved: no unexpected-results evidence, no licensing program tied to claim 1's elements, no nexus evidence for commercial success. Notably, the patentee did not appeal the '501 FWD, and IPWatchdog reports the appeal deadline lapsed — a strong tell that the patentee itself did not view the '501 claims as sustainable. The asserted claims 1–3, 5, 6, 10, 13, 16–18 are canceled by the K1 IPR certificate (effective 2024-01-02).

6. Residual claims never adjudicated (4, 7, 8, 9, 11, 12, 14, 15)

These were not challenged in IPR2022-00808 and therefore carry no § 318(a) holding. Any § 103 opinion on them is a fresh analysis (Grounds 2–5 above), not a restatement of the FWD. Two points:

• Claim 11 (keypad/sound/voice commands, multiple languages) is not squarely met by any single face-cited reference I identified; the strongest hooks are the '501's own admission that "commands/instructions are keypad, textual, sound or voice actuated and can be in one or more languages" (an admission that these are implementable features) plus Salazar '467. This is the weakest link in the § 103 chain for the untested dependents and the one I would develop with additional art before asserting it.
• Claim 7 (managing energy settings/usage) is likewise only thinly supported by the face citations; Salazar '467's "command, control and sensing" is a general disclosure that would need a specific mapping.
• Practically moot: these claims all depend (directly or indirectly) from claim 1, and the patent lapsed for nonpayment of maintenance fees effective 2021-05-14.

7. Bottom line

Do not assert at trial: the precise reference membership of Ground 1 in IPR2022-00808. I have the statutory basis (§ 103(a)), the ground structure of the sibling petitions, and the CAFC's statement that '980/'808 turned on Sainton for "dynamic conversion" — but the '808 ground-by-ground chart should be read off the FWD (Paper 48) and the petition exhibit list before it is quoted. I also did not independently confirm the issue dates/titles of Rautiola US 5,949,775 and Regnier US 5,689,708 from a primary source in this session; the characterizations above are sourced to the Kotzin declaration, the Patent Owner's Response headings, and the CAFC's No. 24-1352 errata.

Sources: US8442501B1 full text and citation list (https://patents.google.com/patent/US8442501B1); CAFC No. 24-1352 opinion and errata (https://www.cafc.uscourts.gov/opinions-orders/24-1352.OPINION.1-21-2026_2635427.pdf; https://cafc.uscourts.gov/opinions-orders/24-1352.ERRATA.2-23-2026_2651133.pdf); IPWatchdog, "Federal Circuit Reverses PTAB on Issue Preclusion…" (2026-01-21); Kotzin Declarations and Patent Owner's Preliminary Response/Response in IPR2022-00979 and IPR2022-00980 (Docket Alarm); Sainton US 5,854,985 (Ex. 1007); Apple/Samsung v. Smart Mobile IPR2022-01003 petition exhibit list; Defendants' Opening Claim Construction Brief re '501 family, W.D. Tex. 6:21-cv-00603 Dkt. 47.