Invalidity dossier

US 8472937

Dynamically configurable IP based mobile devices and networks

Current assignee: Apple Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

Added 9/25/2026, 4:46:10 AM

At a glanceNo PTAB challenges3 lawsuits on fileasserted by Apple Inc. +2Wireless Technologies

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

✓ Generated

I'll verify the patent details and check for any 2026 CAFC activity.

Let me check the specific IPR for this patent and any 2026 appellate activity tied to 8,472,937 itself.

Let me confirm whether the IPR for this specific patent was appealed, and verify the certificate outcome.

US 8,472,937 B1 — Analyst Summary

Scope note on search discipline: I searched specifically for the literal number 8472937. Results for the sibling family members (8,472,936; 8,447,289; 8,761,739; 8,842,653; 9,019,946; 9,319,075; 9,049,119) are not the same patent and I have kept them separate below.


1. Bibliographic data

Field Value
Patent number US 8,472,937 B1 (verify: also cited as US8472937B1)
Title Dynamically configurable IP based mobile devices and networks
Application no. 13/615,384
Filing date September 13, 2012
Issue/grant date June 25, 2013
Earliest priority December 16, 1996 (via Ser. No. 08/764,903, filed Dec. 16, 1996)
Inventors Sunil K. Rao; Sanjay K. Rao; Raman K. Rao
Original assignee IP Holdings, Inc.
Current assignee (listed) Smart Mobile Technologies LLC (via Smart Mobile, Inc.)
Examiner (per Unified Patents) Melody Mehrpour
CPC classes H04L41/08, H04L41/0813, H04L41/0816, H04W4/50, H04W48/18, H04W88/06, H04M1/72403, H04M1/72406
Status Expired – Fee Related (lapsed June 25, 2017 for non‑payment of maintenance fees; anticipated expiration Dec. 16, 2016)

Continuity: The '937 patent is a continuation of Ser. No. 13/287,040 (now US 8,447,289), itself a continuation of 13/047,718 (US 8,090,356), continuation of 09/591,381 (US 7,929,950), which is a CIP of 09/281,739 (US 6,169,789), which is a CIP of abandoned 08/764,903 (filed Dec. 16, 1996). Its own continuation is 13/925,765 (US 2014/0171066 A1, abandoned).

Uncertainty flag: Unified Patents' portal lists the priority date as 1996‑12‑15 and the application date as 2012‑09‑12; the patent front page and cross‑reference section state Dec. 16, 1996 and Sept. 13, 2012. I treat the patent text as authoritative (Dec. 16, 1996 / Sept. 13, 2012) but note the one‑day database discrepancy.

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. Independent claims

The patent has 18 claims (1–18). Only claim 1 is independent — every other claim opens with "The system of claim 1, wherein…" / "further comprising…" and therefore incorporates claim 1 by reference.

Claim 1 — plain-language overview

A mobile communication system comprising three cooperating parts:

  1. A mobile device that supports both voice and data communications.
  2. A server (the specification's "Server C," which may be a network-resident server or a component of the device itself).
  3. A memory coupled to a processor, where the memory holds three categories of data:
    • Functional instructions that supply a plurality of functions to the mobile device — including at least one instruction for switching between networks, one of which is a public network;
    • Prioritization data for connecting to a plurality of wireless networks (e.g., preference hierarchy among home/office/public networks, or GPS/WLAN-based);
    • A plurality of communication protocols that let the server and the device talk to each other.

The server provides multiple functions for controlling the mobile device and enables conversion of the device from a first function to a second function, so the device can present multiple functions.

Literal-transcription caveat (not auto-corrected): the issued claim text as rendered reads "wherein to processor is communicatively coupled with the memory" and "enables conversion of the mobile device from as first function to a second function." These appear to be typographical/OCR artifacts (presumably "the processor" and "a first function"). I reproduce them as found rather than silently correcting them.

Dependent claim themes (for context, since there is no second independent claim)

  • Claim 2 — dynamic switching between local networks and public carrier networks.
  • Claim 3 — a local network switchbox performing WLAN-box functions.
  • Claims 4–10 — remote-controller/appliance-control functions (copiers and faxes; TV, oven, microwave; start/stop and power settings; energy management; household duties; controlling a TV set; garage door opener).
  • Claim 11 — keypad, sound, or voice-actuated commands in one or more languages.
  • Claim 12 — tunable/configurable power levels, channel bandwidths, and frequencies.
  • Claim 13 — content streamed from an Internet server.
  • Claim 14 — device doubles as a regular telephone handset.
  • Claims 15–16 — the server is a component of the mobile device / the mobile device functions as a server.
  • Claim 17 — enumerated network types (LAN, WLAN, GSM, office, home).
  • Claim 18 — prioritization based on GPS or WLAN data.

4. Post-grant challenge and current legal effect (USPTO record)

IPR2022-00982 — Apple Inc., Samsung Electronics Co., Ltd., and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Smart Mobile Technologies LLC

  • Petition filed May 9, 2022; instituted December 5, 2022.
  • Challenged claims: 1–3, 5, 6, 10, 13, and 16–18.
  • Final Written Decision, December 4, 2023 (Judges Turner, Engels, Korniczky): all challenged claims determined unpatentable under 35 U.S.C. § 318(a) — i.e., "Final Written Decision Determining All Challenged Claims Unpatentable."
  • Inter Partes Review Certificate (kind code K1) issued April 1, 2024. Google Patents' legal-events record confirms the certificate for trial No. IPR2022-00982, Patent 8,472,937.

Practical effect: claim 1 — the only independent claim — was cancelled, which renders all surviving dependent claims (4, 7, 8, 9, 11, 12, 14, 15, which were not challenged) legally unusable, since each depends from a cancelled claim. Note that the patent had already lapsed in 2017 for failure to pay maintenance fees, so the IPR was effectively a belt-and-suspenders validity ruling rather than a live-enforcement event.

Uncertainty flag: I did not retrieve the full text of the K1 certificate itself; the conclusion that the register cancelled claims 1–3, 5, 6, 10, 13, 16–18 rests on the Final Written Decision's "all challenged claims unpatentable" judgment plus the confirmed issuance of the K1 certificate. That is a strong but inferential chain.

5. Federal Circuit / CAFC 2026 docket check

I found no 2026 CAFC docket entry for US 8,472,937. The IPR certificate issuing April 1, 2024 is consistent with the IPR2022-00982 judgment becoming final without a pending appeal.

The 2026 CAFC activity involving Smart Mobile Technologies LLC concerns different patents in the same family and must not be conflated with the '937 patent:

Appeal Decision Patents at issue
Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1352 Jan. 21, 2026 (nonprecedential; Lourie, Reyna, Chen; Reyna authoring) — reversed in part, vacated in part, remanded US 8,472,936; US 8,761,739
Apple Inc. v. Smart Mobile Technologies LLC, Nos. 24-1607/24-1609 (+ 25-1090, consolidated for argument June 2, 2026) Aug. 27, 2026 (nonprecedential; Stark, Reyna, Hughes) — affirmed-in-part, vacated-and-remanded on the "bottlenecking"/APA cross-appeal US 8,842,653; US 9,019,946
Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd., No. 24-1675 (with 24-1607/1609/1676) Aug. 27, 2026 (nonprecedential; Reyna, Hughes, Stark) — affirmed US 9,319,075 and related

The August 27, 2026 decisions centered on construction of "multiplexed signals" (held to mean "combining multiple signal streams into one") and on whether the Board adequately addressed the patent owner's motivation-to-combine evidence — issues from IPR2022-01248/01249 and related proceedings, not IPR2022-00982.

District court litigation touching the '937 patent

  • Smart Mobile Technologies LLC v. Apple Inc., No. 6:21-cv-00603 (W.D. Tex.)
  • Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-00701 (W.D. Tex.)
  • Both were identified in the IPR2022-00982 mandatory notices as matters affecting the '937 patent, and the litigation was later transferred to the N.D. Cal. (Case No. 3:23-cv-04168).

Uncertainty flag: I could not complete a live-query of the CAFC docket feed itself (the session's search budget was reached). The absence of a 2026 CAFC entry for 8,472,937 is based on targeted searches that surfaced only sibling-patent appeals; it is a negative finding, not a confirmed docket clearance. Anyone relying on this for a legal position should pull the CAFC docket and PTAB P-TACTS record directly.

6. Bottom line

US 8,472,937 B1 is a 1996-priority, Rao-family patent claiming a reconfigurable mobile device governed by a server that stores functional instruction sets, network prioritization data, and communication protocols, enabling the device to convert between functions such as cell phone, cordless phone, and intelligent-appliance remote. It issued June 25, 2013 to IP Holdings, Inc., is now held by Smart Mobile Technologies LLC, lapsed in 2017 for non-payment of maintenance fees, and had all challenged claims (including sole independent claim 1) held unpatentable in IPR2022-00982, with the resulting IPR certificate issued April 1, 2024. No 2026 CAFC appeal of this specific patent was located.

Generated 9/28/2026, 10:13:02 PM

Cases on file (3)

Group view →

Specific litigation cases in our database that name US patent 8472937. The free-form analysis below may also discuss cases beyond this list.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll research litigation involving US patent 8,472,937. Let me run several targeted searches.

Good initial results. Let me drill down on each case identified.

Litigation Involving U.S. Patent No. 8,472,937

Bottom line

Yes — U.S. Patent No. 8,472,937 ("Dynamically configurable IP based mobile devices and networks," now held by Smart Mobile Technologies LLC) has a documented litigation history. It was asserted in two parallel 2021 district-court campaigns (against Apple and against Samsung), challenged in an IPR that ended with all challenged claims held unpatentable, and it appears in related appellate activity. One important threshold fact colors everything below: the patent's own record shows it lapsed for non-payment of maintenance fees (recorded effective June 25, 2017), and the PTAB subsequently cancelled the challenged claims (IPR certificate, April 1, 2024).

Below I separate what is well-corroborated from what source documents state inconsistently.


1. District court cases

(a) Smart Mobile Technologies LLC v. Apple Inc. — W.D. Tex., Waco Div.

  • Court / jurisdiction: U.S. District Court for the Western District of Texas, Waco Division (Judge Alan D. Albright), Case No. 6:21-cv-00603 (later shown as 6:21-cv-00603-ADA / -ADA-DTG)
  • Plaintiff: Smart Mobile Technologies LLC
  • Defendant: Apple Inc.
  • Filing date: June 11, 2021 (per the court's stay order, which states "Smart Mobile filed suit against Apple on June 11, 2021. Case No. 6:21-cv-603")
  • Patents asserted: 14 patents, including 8,472,937. The preliminary infringement contentions expressly chart 8,472,937 (Exhibit C) with a claimed November 1995 priority date.
  • Status: Apple moved to transfer venue under 28 U.S.C. § 1404(a) to the N.D. Cal.; the WDTX denied transfer as to the Rao-inventor convenience factor. Defendants' opposed motion to stay pending IPR was DENIED (Feb./Mar. 2023 briefing; order cited at Case No. 6:21-cv-603, ECF No. 99 / 701, ECF No. 88). The docket later appears under a N.D. Cal. case number (see (c) below), indicating a transfer/renumbering.
  • Note: The IPR Final Written Decision (below) describes this case number as the Samsung case — see the discrepancy in §4.

(b) Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. — W.D. Tex., Waco Div.

  • Court / jurisdiction: W.D. Tex., Waco Division (Judge Albright), Case No. 6:21-cv-00701 (shown as 6:21-cv-00701-ADA)
  • Plaintiff: Smart Mobile Technologies LLC
  • Defendants: Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
  • Filing date: July 1–2, 2021 (sources say "July 1, 2021" and "July 2, 2021")
  • Patents asserted: many of the same patents as the Apple case, including 8,472,937 (Samsung's preliminary infringement contentions chart the '937 patent as Exhibit C).
  • Status: Same stay motion denied alongside the Apple case. A § 1404(a) transfer analysis (Samsung moving for the N.D. Cal.) is reflected in a court opinion.

(c) Smart Mobile Technologies LLC v. Apple Inc. — N.D. Cal.

  • Court / jurisdiction: U.S. District Court for the Northern District of California
  • Case No.: 3:23-cv-04168 (per the Google Patents/Unified Patents litigation entry) — a CourtListener docket also shows this matter as 4:23-cv-04168 (the two numbers reflect division re-designation within the same district; I could not fully verify which division designation is current).
  • Parties: Smart Mobile Technologies LLC v. Apple Inc.
  • Status: The docket carries W.D. Tex. (Judge Albright) entries dating to 2021, consistent with this being the transferred/renumbered W.D. Tex. Apple action rather than a newly filed complaint.

(d) Other docket entries

The Google Patents litigation panel also lists a Texas Western District Court entry for case 6:21-cv-00701 and 6:21-cv-00603, and a California Northern District Court entry for 3:23-cv-04168 — matching (a)–(c) above. I found no other district-court dockets asserting the '937 patent specifically.


2. PTAB (inter partes review)

IPR2022-00982 — Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. v. Smart Mobile Technologies LLC

  • Patent: U.S. 8,472,937 B1
  • Petition filed / instituted: Petition filed May 9, 2022; instituted on all grounds. (Panel: APJs Turner, Engels, Korniczky.)
  • Claims challenged: 1–3, 5, 6, 10, 13, and 16–18
  • Final Written Decision: December 4, 2023 — "Final Written Decision Determining All Challenged Claims Unpatentable, 35 U.S.C. § 318(a)." All challenged claims held unpatentable by a preponderance of the evidence.
  • Certificate: IPR certificate (K1) issued April 1, 2024 (trial no. IPR2022-00982; per the patent's legal-events record).
  • Source: https://portal.unifiedpatents.com/ptab/case/IPR2022-00982

Related sibling IPRs by the same petitioners covered other patents in the same family (e.g., IPR2022-00979, -00980, -00981, and Samsung's IPR2022-01248/-01249), but those are different patent numbers and outside the scope of your request.


3. Appellate activity

  • Federal Circuit No. 24-1352, Apple Inc. v. Smart Mobile Technologies LLC — decided January 21, 2026 (nonprecedential; panel of Judges Lourie, Reyna, Chen; opinion by Reyna). The appeal addressed Apple's challenges to U.S. 8,472,936, U.S. 8,761,739, and an additional patent, and turned on issue preclusion and claim construction. Outcome: reversed in part, vacated in part, and remanded to the PTAB. (Source: CAFC opinion PDF and secondary coverage.)
  • A further set of Federal Circuit decisions dated on/around August 27, 2026 reportedly gave Smart Mobile a mixed win in the Apple dispute (the court declining to revive certain Apple challenges while reversing the PTAB's invalidation of other claims).

Caveat: My sources explicitly tie the '936 and '739 patents to CAFC No. 24-1352; they do not confirm with certainty that the '937 patent itself was part of that particular appeal. I could not verify from the available results whether the '937 (whose challenged claims were cancelled in Dec. 2023) was separately appealed. Treat the appellate attribution as likely-but-unconfirmed for the '937 specifically.


4. Important caveats and discrepancies

  1. Case-number / defendant mapping conflict (do not auto-correct). The IPR2022-00982 Final Written Decision states that the '937 patent is the subject of:
    • Smart Mobile Technologies LLC v. Samsung Electronics Co., Ltd. et al., 6-21-cv-00701 (W.D. Tex.), and
    • Smart Mobile Technologies LLC v. Apple Inc., 6-21-cv-00603 (W.D. Tex.).
      This is the opposite mapping from the district-court stay order and transfer opinion, which both identify '603 as the Apple case and '701 as the Samsung case. I am reporting both because sources conflict; the weight of the district-court primary documents supports Apple = '603 and Samsung = '701, but the PTAB decision states the reverse.
  2. Patent status. The '937 patent record shows anticipated expiration 2016-12-16 and lapse for failure to pay maintenance fees (effective June 25, 2017) — i.e., the litigation and IPR ran on an already-expired patent, and the asserted claims were then cancelled by the 2024 IPR certificate.
  3. Identifier note. One secondary source (the vlex transfer opinion) renders the patent as "9,472,937"; the controlling primary documents (preliminary infringement contentions, the IPR FWD) use 8,472,937. Per your strict rule I have not silently corrected the identifier, but the asserted patent is 8,472,937.
  4. Scope. I found no additional district-court suits (e.g., no ITC § 337 action and no other defendants) asserting the '937 patent specifically.

Key sources

If you need the exact docket sheets or the final disposition orders for the two WDTX cases (e.g., dismissal vs. judgment after the IPR cancellations), that would require pulling the PACER dockets directly, which I could not fully do here.

Generated 9/28/2026, 10:13:11 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Apple Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll start by confirming the proceeding(s) and gathering claim-level detail.

Good — I have the core proceeding. Now let me pull the FWD claim-level outcome and the Federal Circuit appeal.

Now let me pin down the FWD outcome for IPR2022-00982 specifically, and which patent the 24-1624 appeal covers.

⚠️ Source conflict to resolve first

The structured "PTAB proceedings on file" block supplied with this task says ODP returns no AIA trial proceedings. That is wrong for this patent. The authoritative patent text supplied in the same prompt contains, on its face:

  • a litigation entry linking a PTAB case — https://portal.unifiedpatents.com/ptab/case/IPR2022-00982, docketed as "PTAB case IPR2022-00982 filed (Final Written Decision)," and
  • a legal-event entry: 2022-06-28 IPR — TRIAL NO: IPR2022-00982; Opponent name: APPLE, INC., SAMSUNG ELECTRONICS CO., LTD., AND SAMSUNG ELECTRONICS AMERICA, INC.
  • and an inter partes review certificate: 2024-04-09 IPRC — INTER PARTES REVIEW CERTIFICATE; TRIAL NO. IPR2022-00982, MAY 9, 2022 … ISSUED APR. 1, 2024 (effective 2024-04-01).

Independent web sources confirm the case exists and was decided (DocketAlarm/GAE docket page; Patexia case summary; CAFC briefing in the related Smart Mobile appeals). So the ODP "no proceedings" result is an ingest gap, not a substance finding. Do not rely on it.


Proceedings overview

One AIA trial proceeding names US 8,472,937 — IPR2022-00982 (Apple Inc. et al. v. Smart Mobile Technologies LLC) — and it is fully closed: petition filed 2022-05-09, instituted 2022-12-05, Final Written Decision 2023-12-04, IPR certificate 2024-04-01; zero active proceedings, zero settlements, zero institution denials, and (on the record I could reach) no Federal Circuit appeal of this FWD. The bottom line for a defendant is deliberately uncomfortable: the patent's own record proves an IPR ran to judgment against it, but I could not reproduce the FWD's claim-by-claim verdict from public sources in this session, so you must not assume claim 1 survived — or that it fell — until you pull the certificate (which states verbatim which claims were canceled, confirmed, or amended).


IPR2022-00982 — Apple Inc. (with Samsung Electronics Co., Ltd. and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.)) v. Smart Mobile Technologies LLC

  • Type: Inter Partes Review (AIA trial), Tech Center 2600 / Art Unit 2641
  • Filed: 2022-05-09
  • Status: Final Written Decision (docket aggregates report "Terminated Dec. 4, 2023"); IPR certificate issued 2024-04-01. Plain English: trial ran to judgment; proceeding closed; nothing pending.
  • Patent: US 8,472,937 B1, "Dynamically configurable IP based mobile devices and networks," issued 2013-06-25, 18 claims, app. 13/615,384 filed 2012-09-13; owner of record Smart Mobile Technologies LLC (originally IP Holdings, Inc.).
  • Judge panel (per Google Patents Paper 24, footnote 2): Judges Kevin F. Turner, Nathan A. Engels, and Paul J. Korniczky, with Judge Turner identified as author of the Final Written Decision. (Aggregator pages list additional APJs — Jameson Lee, Hyun J. Jung, Monica Ullagaddi — but those reflect the four-case consolidated caption, not this panel.)
  • Petition grounds: The challenged claims are documented: claims 1, 2, 3, 5, 6, 10, 13, 16, 17, 18 (Patexia case summary). The specific art and statutory bases are not verified in the materials I could retrieve; I will not guess them. Note that claim 1 is the sole independent claim, so the challenge swept in the entire operative claim set.
  • Institution decision: 2022-12-05, i.e., instituted. Scope of institution (all challenged claims vs. partial) and the panel's reasoning are not verified from the retrieved text.
  • Final Written Decision (2023-12-04): Claim-level verdict NOT VERIFIED. This is the single most important gap in this report. Do not infer cancellation or survival. The IPR certificate issued 2024-04-01 is the operative document that states, claim by claim, what was canceled and what was confirmed.
  • Settlement / termination: No settlement or adverse-judgment termination appears in the record; the trial terminated by FWD. (Any confidential settlement would not be public — none is indicated.)
  • Appeal: No appeal of the '937 FWD is confirmed. Two relevant data points, in tension — treat both as leads to verify:
    1. The IPR certificate issued 2024-04-01, roughly four months after the FWD, which is the normal posture when the § 318(b) certificate issues after the appeal window closes unused.
    2. In the same patent family, the Federal Circuit decided Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1624 (nonprecedential, opinion posted 2025-12-19), in which Apple appealed a Board FWD that construed "server" as logically separate and distinct from "network switch box" and rejected Apple's obviousness case built on Ahopelto's GGSN. That claim-term pairing matches the '937 claims (claim 1 recites "a server"; claim 3 recites "a local network switchbox"). I could not confirm from the retrieved opinion text that 24-1624 is the appeal of the IPR2022-00982 FWD rather than of a sibling IPR, and the certificate timing argues against it. Flagging it, not asserting it.
  • Defensive value: An IPR did run here, so the "never been tested" narrative the patent owner may be selling is false. But until you read the certificate, assume nothing about claim 1's survival. Independently, note the expiration overlay below — it may moot the whole fight. And whichever way the FWD went, § 315(e)(2) estoppel now binds Apple and Samsung (and their privies) on every ground they raised or reasonably could have raised in IPR2022-00982.

Strategic summary

Canceled vs. sustained vs. untested. I cannot state which claims were canceled — that requires the FWD or the 2024-04-01 IPR certificate, neither of which I could reproduce here. What is documented is the scope: claims 1, 2, 3, 5, 6, 10, 13, 16, 17, and 18 were challenged; claims 4, 7, 8, 9, 11, 12, 14, and 15 were never put in issue at the PTAB. If claim 1 was canceled, every one of the 18 claims falls with it (all others depend from claim 1) and the patent is a paper tiger. If claim 1 was confirmed, the patent survived its only AIA test — but on the Board's own construction that "server" must be logically separate and distinct from the "network switch box," which is a narrow reading Smart Mobile is now stuck with under the Board's and the Federal Circuit's reasoning (and possibly under the doctrine of prosecution/claim-construction consistency).

Estoppel landscape. IPR2022-00982 produced a final written decision, so 35 U.S.C. § 315(e)(2) bars Apple Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and their real parties in interest and privies from asserting in district court or the ITC any ground they raised or reasonably could have raised in that IPR. For a defendant unrelated to Apple/Samsung, statutory estoppel does not attach — but defensive issue preclusion against Smart Mobile absolutely does, and the Federal Circuit just sharpened that weapon: in Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1352 (opinion posted 2026-01-21, authored by Judge Reyna; https://www.cafc.uscourts.gov/opinions-orders/24-1352.OPINION.1-21-2026_2635427.pdf), the court reversed the Board and held claim 1 of sibling patent US 8,472,936 unpatentable by issue preclusion, because claim 1 of the '936 patent is immaterially different from claim 1 of US 8,761,739, which the Board had held unpatentable in IPR2022-00980 — a decision Smart Mobile never appealed, so the appeal deadline has lapsed. IPR2022-00808 likewise invalidated claims of US 8,442,501, also unappealed. Because US 8,472,937, US 8,472,936, US 8,761,739, and US 8,442,501 are sibling continuations out of the same 1996-12-16 family with near-identical specifications and claims, the 24-1352 reasoning is directly transposable: if the '937's claim 1 is not material-different from the already-invalidated claim 1 of the '739 patent, a defendant can seek to have it held invalid on preclusion grounds without ever filing an IPR. That is the strongest defensive theory currently available on this patent.

Pattern signals. This was a coordinated defensive campaign, not a one-off: Apple (with Samsung as co-petitioner on the lead cases) filed a same-day wave on 2022-05-09 — IPR2022-00979 (US 9,049,119), IPR2022-00980 (US 8,761,739), IPR2022-00981 (US 8,472,936), IPR2022-00982 (US 8,472,937) — plus later filings including IPR2022-00808 ('501), IPR2022-01005, IPR2022-01222 ('863) and IPR2022-01223, with a consolidated oral hearing requested for the four May-2022 cases. Petitioner-side counsel were Haynes and Boone (Ehmke, Drezdzon, Fowles) and Fish & Richardson; Smart Mobile was represented by Skiermont Derby (Hwang, Martin) with Graves & Shaw admitted pro hac vice. Notably, no Unified Patents petition appears against the '937 patent — the "Unified Patents" label on the Google Patents litigation row is data attribution for the PTAB dataset ("Unified Patents PTAB Data"), not a petitioner. Smart Mobile has litigated hard (W.D. Tex. 6:21-cv-00603 and 6:21-cv-00701, later N.D. Cal. 3:23-cv-04168) and has appealed selectively; the Federal Circuit has now decided multiple Smart Mobile appeals in 2025–2026 (24-1352 for Smart Mobile; 24-1624 against Apple; a separate '083-patent FWD vacated and remanded on 2026-01-13 under Axonics; and August 2026 decisions on the '653, '946, and '075 patents).

One more overlay you should not overlook. The patent's own docket records an anticipated expiration of 2016-12-16 (20 years from the 1996-12-16 earliest filing in the § 120 chain) and a lapse for failure to pay maintenance fees effective 2017-06-25, with current legal status "Expired – Fee Related." I flag this as recorded, not as legal advice: if accurate, the '937 patent has been expired for roughly a decade, which caps any damages period at pre-2016 conduct and makes an injunction or ongoing-royalty theory unavailable. Any demand letter invoking this patent today should be interrogated on that point first.


Recommended next steps

  1. Pull the primary documents before doing anything else. Retrieve IPR2022-00982, Paper 47 (Final Written Decision, 2023-12-04) and the inter partes review certificate issued 2024-04-01 from USPTO PTAB Center/PTAB E2E (https://ptacts.uspto.gov/ptacts/; the patent's Google Patents page, https://patents.google.com/patent/US8472937/en, carries the certificate entry in its legal-events table). Reconcile the sealed-record posture: the FWD and certain exhibits were maintained under seal pending appeal, so portions may require a motion to unseal.
  2. Extract the verbatim dispositions. Quote the FWD's/ certificate's own claim numbers — do not paraphrase. If claims 1–3, 5, 6, 10, 13, 16, 17, 18 are listed as canceled, any infringement theory built on them is sanctions-bait. If they were confirmed, pivot to the issue-preclusion theory in step 3.
  3. Build the Ohio Willow Wood / 24-1352 preclusion record. Obtain the IPR2022-00980 FWD (US 8,761,739) and the IPR2022-00808 FWD (US 8,442,501), confirm no appeal was taken from either, and have an expert do a limitation-by-limitation side-by-side of those claims against '937 claim 1. The Federal Circuit has already held this comparison defeats the '936 patent; the '937 is the same family with the same specification.
  4. Confirm the appeal status of the '937 FWD specifically. Verify at the Federal Circuit (and via the Board's notice-of-appeal record) whether any notice of appeal was filed from IPR2022-00982, and if so, obtain the docket number. Do not assume 24-1624 is that appeal — I could not verify the mapping, and the 2024-04-01 certificate timing suggests the '937 FWD may have gone unappealed. If it went unappealed by either side, the FWD is final and fully available for collateral-estoppel purposes.
  5. Verify the expiration/lapse chain. Confirm whether US 8,472,937 was ever revived or reinstated after the 2017-06-25 lapse, and whether the 2016-12-16 term date is correct. If it was not revived, this is a complete answer to forward-looking relief and sharply limits any damages theory.
  6. Run the estoppel screen in the pending N.D. Cal. action (3:23-cv-04168). If the asserting entity is a privy of Apple or Samsung, § 315(e)(2) may already bar the validity theories; if it is not, the accused products and the claim charts should be pressure-tested against the Board's adopted construction requiring a "server" logically separate and distinct from a "network switch box."

Do not treat this report as a substitute for the FWD text. One proceeding exists and reached judgment; its claim-level disposition is the whole ballgame, and it is the one thing I could not verify from the sources available this session.

Generated 9/28/2026, 10:14:21 PM

Ownership chain (7)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2008-02-22 · recorded 2013-04-26 · reel 030298/0668 · Assignment

    Rao, Raman K.; Rao, Sunil K.; Rao, Sanjay K.IP Holdings, Inc., California

    internal reorg

  2. 2015-07-24 · recorded 2015-07-28 · reel 036193/0960 · Assignment

    IP Holdings, Inc.Smart Mobile, Inc., California

    internal reorg

  3. 2020-09-16 · recorded 2020-09-24 · reel 053871/0717 · Assignment

    RAO, SUNIL K., MR.Smart Mobile, Inc., California

    internal reorg

  4. 2020-09-16 · recorded 2020-09-24 · reel 053876/0356 · Assignment

    RAO, SANJAY K., MR.Smart Mobile, Inc., California

    internal reorg

  5. 2020-09-24 · reel 053877/0295 · Assignment

    RAO, REKHA K., MRS.Smart Mobile, Inc., California

    internal reorg

  6. 2020-09-26 · reel 053894/0686 · Assignment

    IP Holdings, a California corporationSmart Mobile, Inc., California

    internal reorg

  7. 2020-11-12 · reel 054351/0415 · Assignment

    Smart Mobile, Inc.Smart Mobile Technologies LLC, Texas

    transfer-to-asserter

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment chain, litigation history, and NPE-signal evidence before assembling the report.

Let me dig into the assignment correspondents, the original assignee's business, and the IPR outcome.

US 8,472,937 B1 — "Dynamically configurable IP based mobile devices and networks"

Ownership / assignment reconstruction

Verification entry point: USPTO Assignment Search (search by patent number 8472937) · mirrored index at assignment.uspto.gov · patent record at Google Patents

Data-integrity note up front. The reel/frame numbers, assignor/assignee names, execution dates and recording dates below are taken from the Google Patents "Legal Events" / reassignment table for US 8,472,937, which reproduces the USPTO Assignment Abstract of Title. The correspondent-of-record (the attorney/firm that filed each recording) is not exposed in the Google Patents legal-events feed, and the Assignment Center's per-reel detail pages could not be retrieved within this session's research budget. I therefore cannot fill the "Correspondent" field with verified names. I will not invent them. Where I reference attorneys below, I label them explicitly as litigation counsel, not recording correspondents — the two must not be conflated.


Inventors

Inventor Role in the record Employer at filing
Raman K. Rao Named inventor; assignor on the 2008/2013 assignment (Reel 030298/0668) and on the 2020 family transfers Not stated on the face of the patent. The assignment structure (all three inventors assigning to IP Holdings, Inc.) indicates the inventors were the principals of the assignee rather than rank-and-file employees of a third-party operating company.
Sanjay K. Rao Named inventor; assignor on Reel 030298/0668 and Reel 053876/0356 (2020) Same as above. On the related parent US 6,169,789 ("Intelligent keyboard system") the cited record lists Sanjay K. Rao as the owner/holder, i.e. rights have historically been held in individual Rao names, not a corporate employer's.
Sunil K. Rao Named inventor; assignor on Reel 030298/0668 and Reel 053871/0717 (2020) Same as above. Also listed as owner on related Rao-family patents (e.g. US 6,882,859).

Unusual pattern — flag: This is a founder-inventor family portfolio, not an employee-inventor departure pattern. All three named inventors remain as assignors throughout, and a fourth individual, Rekha K. Rao (Mrs.), appears as an assignor on the 2020-09-24 recording (Reel 053877/0295) even though she is not a named inventor. That indicates the chain conveys personal/family-held interests and possibly spousal or inherited shares, not just inventor rights. There is no evidence of the classic "all inventors leave the assignee within 12 months" fire-sale signature. Instead the reverse is true: the inventors hold, then progressively consolidate into affiliated entities and finally into an assertion vehicle.


Original assignee

IP Holdings, Inc. (a California corporation) — listed by Google Patents as the "Original Assignee" and the applicant of record on the 2012-09-13 filing.

  • Primary line of business: On the record available, IP Holdings, Inc. is a family-held IP holding/monetization vehicle for the Rao patent family (the IP Holdings, Inc. name appears as assignee across dozens of Rao continuation patents: US 7,929,950, US 8,090,356, US 8,447,289, US 8,442,501, US 8,472,927, US 8,472,936, US 8,761,739, US 8,039,988, US 8,234,346, US 8,818,451, US 8,483,754, etc.). I found no evidence of a commercial product shipped by IP Holdings, Inc. embodying the claims of the '937 patent.
  • Patent face: The '937 patent issued 2013-06-25 with no operating-company assignee; the inventors assigned to IP Holdings, Inc. by an instrument recorded 2013-04-26 but bearing an effective date of 2008-02-22 — i.e. roughly four and a half years before the '937 application was filed. That mismatch is consistent with a portfolio-wide housekeeping assignment of accumulated Rao-family rights rather than a filing-time employment assignment.
  • Current status: Not a bankrupt or dissolved entity on the evidence available — it remained capable of executing the 2020-09-26 conveyance (Reel 053894/0686) as "IP Holdings, a California corporation." Its current operating status is not determinable from the sources consulted.

Assignment timeline

Five (5) assignments are of record in this patent's chain. Because the Assignment Center detail pages were unreachable in this session, the correspondent-of-record is unverified for every entry — I flag that limitation once here rather than repeating it.

  • 2008-02-22 (executed) / recorded 2013-04-26 — Reel 030298/0668

    • Conveyance: Assignment
    • Assignor: Rao, Raman K.; Rao, Sunil K.; Rao, Sanjay K. (individually)
    • Assignee: IP Holdings, Inc., California
    • Correspondent: Not retrievable in this session. (Assignment Center reel detail required — not exposed in the Google Patents legal-events feed.)
    • Context: Formation of the assignee's title / internal family consolidation — recorded after grant but effective 2008, predating the 2012 application.
  • 2015-07-24 (executed) / recorded 2015-07-28 — Reel 036193/0960

    • Conveyance: Assignment
    • Assignor: IP Holdings, Inc.
    • Assignee: Smart Mobile, Inc., California
    • Correspondent: Not retrievable in this session.
    • Context: Portfolio transfer out of the holding company into a "Smart Mobile" operating/monetization vehicle — same corporate family, first appearance of the "Smart Mobile" name, no arm's-length third party evidenced.
  • 2020-09-16 (executed) / recorded 2020-09-24 — Reel 053871/0717

    • Conveyance: Assignment
    • Assignor: Rao, Sunil K., Mr.
    • Assignee: Smart Mobile Inc., California
    • Correspondent: Not retrievable in this session.
    • Context: Individual inventor/family interest consolidated into the Smart Mobile vehicle.
  • 2020-09-16 (executed) / recorded 2020-09-24 — Reel 053876/0356

    • Conveyance: Assignment
    • Assignor: Rao, Sanjay K., Mr.
    • Assignee: Smart Mobile Inc., California
    • Correspondent: Not retrievable in this session.
    • Context: Same consolidation — second inventor's personal interest conveyed.
  • 2020-09-24 (executed) / recorded 2020-09-24 — Reel 053877/0295

    • Conveyance: Assignment
    • Assignor: Rao, Rekha K., Mrs. (non-inventor)
    • Assignee: Smart Mobile Inc., California
    • Correspondent: Not retrievable in this session.
    • Context: Same consolidation — non-inventor family shareholder's interest conveyed.
  • 2020-09-26 (executed) / recorded 2020-09-26 — Reel 053894/0686

    • Conveyance: Assignment
    • Assignor: IP Holdings, a California corporation
    • Assignee: Smart Mobile Inc., California
    • Correspondent: Not retrievable in this session.
    • Context: Clean-up conveyance to ensure the corporate entity's residual interest sits with Smart Mobile Inc. alongside the individual interests.
  • 2020-11-12 (executed) / recorded 2020-11-12 — Reel 054351/0415

    • Conveyance: Assignment
    • Assignor: Smart Mobile, Inc.
    • Assignee: Smart Mobile Technologies LLC, Texas
    • Correspondent: Not retrievable in this session.
    • Context: Transfer-to-asserter — rights moved into a Texas LLC 30 days after the family consolidation closed; this is the entity that sued Apple and Samsung in 2021.

Not an assignment but dispositive context (Google Patents legal events): the patent's anticipated expiration is 2016-12-16 (20-year term measured from the 1996-12-16 priority chain), a maintenance-fee reminder issued 2017-02-03, the patent lapsed for failure to pay maintenance fees effective 2017-06-25, and it was recorded as expired due to nonpayment under 37 CFR 1.362 on 2017-07-24. In other words, the entire 2020 assignment chain (Reels 053871/0717 through 054351/0415) moved title to an already-lapsed patent, which was nonetheless asserted in the 2021–2024 Apple and Samsung suits. That is an anomaly worth reviewing against ODP/PEDS (possible revival, term-extension, or disputed term calculation) — I could not resolve it from the sources available and am flagging it rather than characterizing it.


Timeline diagram

timeline
    title Ownership of US 8472937
    1996 : Priority date recorded
    2008 : Inventors assign to IP Holdings Inc
    2012 : Application filed by IP Holdings Inc
    2013 : Patent issued
         : Assignment recorded to IP Holdings
    2015 : IP Holdings to Smart Mobile Inc
    2016 : Nominal 20 year term ends
    2017 : Lapse for unpaid maintenance fee
    2020 : Rao family assigns to Smart Mobile Inc
         : Smart Mobile Inc to Smart Mobile Tech LLC
    2021 : Apple suit filed
         : Samsung suit filed
    2022 : IPRs filed by Apple and Samsung
    2024 : Suits dismissed with prejudice
         : IPR certificate issued

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The decisive link is Reel 054351/0415, executed and recorded 2020-11-12, moving the portfolio from Smart Mobile, Inc. (California) to Smart Mobile Technologies LLC (Texas) — a Texas LLC formed as the assertion vehicle. Corroboration, not merely naming:

  • No product in commerce is evidenced for any entity in the chain; the record is a family IP-holding vehicle (IP Holdings, Inc.) → a second holding vehicle (Smart Mobile, Inc.) → a Texas LLC.
  • Third-party litigation analysis characterizes the resulting plaintiff as "a patent assertion entity (PAE) … Its business model centers on enforcing IP rights against large technology manufacturers" (PatSnap case summary).
  • The LLC's litigation was filed in the W.D. Tex. (Waco, Judge Albright) — a venue-selection pattern typical of purpose-formed assertion entities.
    Caveat per the rules: the "LLC + Texas + no product" facts are supported by the transfer record and litigation record above, not by the name alone.

2. Known asserter in the chain — PRESENT (documented repeat plaintiff; not on the classic enumerated lists).
Smart Mobile Technologies LLC does not match Acacia / Marathon / IV / IPNav / Wi-LAN / Converso / Vringo / Pendrell / Innovatio / Round Rock / Lumen View / Spangenberg entities. But it is a documented, high-frequency, multi-defendant plaintiff:

  • 6:21-cv-00603 (W.D. Tex.) vs. Apple, filed 2021-06-11 — the '937 is named among thirteen asserted patents (CourtListener order).
  • 6:21-cv-00701 (W.D. Tex.) vs. Samsung, filed 2021-07-01/02 — '937 among twelve asserted patents.
  • 3:23-cv-04168 (N.D. Cal.) vs. Apple (2023).
  • It is the patent owner of record in fifteen (15) IPRs, IPR2022-00766 through IPR2022-01249 (file listing at Unified Patents docket for IPR2022-00982 and petitioners' filings identifying counsel for both sides).
  • It is tracked in Unified Patents' patent portal for the '937 (portal.unifiedpatents.com/patents/patent/US-8472937-B1), which lists "Parent Company: Smart Mobile Technologies LLC."
  • Its own mandatory notices under 37 C.F.R. § 42.8(b)(1) identify Smart Mobile Technologies LLC as the sole real party-in-interest — no operating company, no licensee, no co-owner.

3. Repeat correspondent across the chain — UNCLEAR / NOT VERIFIABLE IN THIS SESSION.
This is the one requested field I cannot close out. The recording correspondents on Reels 030298/0668, 036193/0960, 053871/0717, 053876/0356, 053877/0295, 053894/0686 and 054351/0415 are not exposed in the Google Patents legal-events feed, and the Assignment Center reel-detail pages were not retrievable here. I will not guess. For completeness — and explicitly flagged as the wrong data type — the litigation-side counsel of record for the patent owner recurs across the campaign and is public: Philip J. Graves (CA Bar 153441) and Greer N. Shaw (CA Bar 197960), initially at Hagens Berman Sobol Shapiro LLP, Pasadena, thereafter at Graves & Shaw LLP, Los Angeles (plaintiff's preliminary infringement contentions signature block; PTACTS declaration listing "Hagens Berman Sobol Shapiro, Pasadena, CA (2020-2022); Graves and Shaw LLP, Los Angeles, CA (2022-present)"). A recurring litigation firm is consistent with — but does not establish — a recurring recording correspondent. This signal should be re-run against the Assignment Center reel detail before it is relied on.

4. Cascading transfers — PRESENT.
Four recordings in a 39-day window (2020-09-24 ×3 and 2020-09-26), immediately followed by a fifth on 2020-11-12 — five recordings inside roughly nine weeks, moving the inventors' personal interests, a non-inventor family member's interest, and the corporate interest into Smart Mobile, Inc., then out to a Texas LLC. The assignors share the same family/principal group and the assignee changes identity twice in the chain (IP Holdings, Inc. → Smart Mobile, Inc. → Smart Mobile Technologies LLC). Cumulative chain length: 7 recorded assignments across 2008 → 2020.

5. Pre-litigation transfer — PRESENT (with a precise caveat).
Reel 054351/0415 executed 2020-11-12 → first complaint 2021-06-11 (Apple, 6:21-cv-00603) = ~7 months; Samsung suit 2021-07-01 = ~7.6 months. That is marginally outside the 6-month window the rubric specifies, so I am not calling it a textbook inside-6-months transfer. The substance stands, however: the LLC was created and took title with no other apparent purpose, and the chain was plainly arranged before assertion — the intervening steps were pure title hygiene, not commercial events.

6. Bankruptcy fire-sale — NOT PRESENT.
No Chapter 7/11 proceeding, receivership, or court-supervised patent sale involving IP Holdings, Inc., Smart Mobile, Inc., or Smart Mobile Technologies LLC was found. The transfers here were voluntary family-entity conveyances, not distress sales.

7. Privateering — NOT PRESENT.
Classic privateering requires an operating company with competitors transferring to an NPE that asserts on its behalf. Here the transferor of record has no evidenced product line and no competitor set; this is owner-inventor monetization, not an operating company funding a proxy.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
The chain terminates at Smart Mobile Technologies LLC, an active plaintiff — not at RPX, AST, LOT, Unified Patents, or OIN. Note the inversion: Unified Patents appears on the other side of this patent (it hosts the IPR2022-00982 PTAB tracker for the '937 and litigates against Smart Mobile), which is the opposite of the chain ending at a defensive aggregator.

Additional post-verdict event worth logging: the Apple/Samsung actions resolved by joint dismissal with prejudice and joint vacatur of the claim construction order on 2024-07-15, and an inter partes review certificate (kind code K1) issued 2024-04-01 for IPR2022-00982 (Google Patents legal events: "INTER PARTES REVIEW CERTIFICATE; TRIAL NO. IPR2022-00982 … ISSUED APR. 1, 2024"). The K1 certificate is the instrument by which the Board's final written decision is given effect; I could not confirm the claim-by-claim outcome (cancelled vs. amended) from the sources available, so I record the fact and not a conclusion.


Verdict

NPE — high confidence

Justification. Two or more strong signals are documented on the face of the assignment record. Reel 054351/0415, executed and recorded 2020-11-12, moves the entire portfolio from Smart Mobile, Inc. to Smart Mobile Technologies LLC, a Texas LLC whose own 37 C.F.R. § 42.8(b)(1) notice names it as the sole real party-in-interest and for which no product in commerce is evidenced — a shell/assertion-vehicle transfer. That recording sits at the end of a cascade of five recordings in ~nine weeks (Reels 053871/0717, 053876/0356, 053877/0295, 053894/0686, then 054351/0415) and ~7 months before the first infringement complaint (Apple, 6:21-cv-00603, filed 2021-06-11; Samsung, 6:21-cv-00701, filed 2021-07-01), establishing a pre-assertion ownership rearrangement. The chain does not terminate at RPX / AST / LOT / Unified / OIN, and the patent owner is a documented repeat plaintiff asserting against Apple, Samsung and others across a dozen-plus patents defended by fifteen IPRs — with Unified Patents hosting the challenge rather than receiving the patent.

Residual uncertainty, stated plainly: (i) the recording correspondents are unverified for all seven recordings and signal #3 must be re-run against the Assignment Center reel detail; and (ii) the patent lapsed for non-payment of maintenance fees effective 2017-06-25 per the same legal-events record yet was asserted from 2021 — a term/revival question I could not resolve and am flagging rather than speculating on.

Verify at: USPTO Assignment Center — search "8472937" · assignment.uspto.gov mirror · Google Patents legal events for US 8,472,937

Generated 9/28/2026, 10:13:51 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research US 8472937 and its cited prior art references.

I have the patent and its citation list. Let me research the key prior art references and the IPR outcome.

Let me research the remaining key references and the IPR outcome.

Prior-Art Analysis — US 8,472,937 B1

Patent under review: US 8,472,937 B1 — "Dynamically configurable IP based mobile devices and networks"
Application: US 13/615,384 (filed 2012-09-13) · Granted: 2013-06-25 · Apparatus: Expired – Fee Related
Inventors: Sunil K. Rao; Sanjay K. Rao; Raman K. Rao · Original assignee: IP Holdings, Inc. · Current assignee: SMART MOBILE TECHNOLOGIES LLC
Priority chain: Continuation of 13/287,040 → 13/047,718 (US 8,090,356) → 09/591,381 (US 7,929,950) → CIP of 09/281,739 (US 6,169,789) → CIP of 08/764,903 (abandoned), filed 1996-12-16.
Claims: 18 (1 independent; 2–18 dependent).
Sources: https://patents.google.com/patent/US8472937/en ; https://patents.justia.com/patent/[8472937](/patent/8472937) ; https://portal.unifiedpatents.com/patents/patent/US-8472937-B1

Note on dates: Google Patents lists priority 1996-12-16, filing 2012-09-13, grant 2013-06-25. The Unified Patents portal lists priority 1996-12-15, application date 2012-09-12, grant 2013-06-24. I report both but use the authoritative Google patent text (1996-12-16) as governing; the discrepancy is 1 day and immaterial to the analysis below.


1. Claim 1 (the claim all cited art must be measured against)

Claim 1 recites a mobile device communication system comprising: (a) a mobile device supporting voice and data communications; (b) a server; (c) a memory; (d) a processor coupled with the memory; (e) the memory storing functional instructions providing a plurality of functions, at least one adapted for switching between networks including at least one public network; (f) the memory storing prioritization data related to connecting to a plurality of wireless networks; (g) the memory storing a plurality of communication protocols facilitating communication between the server and the mobile device; and (h) the server providing a plurality of functions for control of the mobile device and enabling conversion of the mobile device from a first function to a second function.

(Literal reading: the issued text prints "wherein to processor is communicatively coupled with the memory," which appears to be a typographical error for "the processor." Per the strict instruction not to auto-correct, I preserve the literal text and flag the anomaly.)

Because claim 1 is a broad system claim, the strongest § 102 positions are single references that disclose (i) a multi-mode/multi-frequency portable device, (ii) a separate server or server-like repository of instruction sets, and (iii) reconfiguration of device function. References that supply only one or two of these elements are better characterized as § 103 art.


2. ⚠️ Controlling threshold: effective filing date / § 102 window

The '937 patent is a 2012 continuation claiming a 1996-12-16 priority date (pre‑AIA law applies). For any cited reference to be § 102 prior art against the '937 claims, it must satisfy one of:

  • § 102(a)/(b) — printed publication or patent dated before 1996-12-16 (or before 1995-12-16 for § 102(b)); or
  • § 102(e) — a U.S. patent granted on an application filed before 1996-12-16 (and "by another").

Critical consequence: a large fraction of the references listed on the '937 face were filed or published after 1996-12-16 and therefore are not § 102 art at all for claims entitled to the 1996 priority (some may be pertinent only as § 103/background or as evidence of the state of the art, and only if the claims are later held not entitled to 1996). I flag this for each entry. This date qualification is the single most important filter on the front-page citation list.


3. Cited patent references — individually assessed

A. References that date before 1996-12-16 and can support § 102 (most relevant)

# Full citation Filed / Published Brief description Claim(s) potentially anticipated (§ 102)
1 US 5,761,621 A — Spectrum Information Technologies, Inc., "Apparatus and methods for networking omni‑modal radio devices" Filed 1993-12-15 / Pub. 1998-06-02 Portable radio devices reconfigurable across multiple air‑interface modes ("omni‑modal") and networked. § 102(e) as of 1993-12-15 filing. Claim 1 (mobile device + switching between networks incl. public network); 2, 17 (dynamically switch between local/public; LAN/WLAN/GSM). Strongest anticipatory candidate.
2 US 6,035,212 A — LSI Logic Corp., "Multi‑frequency wireless communication device" Filed 1996-08-02 / Pub. 2000-03-07 Single cellular device with multi‑band RF transceiver + "adaptation tree" of protocol branches; micro‑controller self‑adapts frequency and protocol transparently to the user. § 102(e) as of 1996-08-02. Claim 1 (memory storing communication protocols for plural networks; switching); 2, 12, 17. Anticipates the multi‑frequency/multi‑protocol reconfiguration core. (Source: https://patents.google.com/patent/[US6035212A](/patent/US6035212A)/en)
3 US 5,905,958 A — Telefonaktiebolaget LM Ericsson, "Intelligent mobile station for a cellular telecommunications network" Filed 1996-03-18 / Pub. 1999-05-18 "Intelligent" mobile station providing enhanced functions relative to a conventional handset. § 102(e) as of 1996-03-18. Claim 1; 15, 16 (server component of / integrated with device). Anticipatory candidate on "intelligent mobile station."
4 US 6,826,405 B2 — Padcom, Inc., "Apparatus and method for intelligent routing of data between a remote device and a host system" Filed 1995-06-01 / Pub. 2004-11-30 Seamless/intelligent routing of a mobile device's data among heterogeneous networks. § 102(e) as of 1995-06-01. Claim 1 (prioritization data relating to connecting to a plurality of wireless networks); 2, 17, 18 (network selection; GPS/WLAN‑based priority). Anticipatory candidate for the "prioritization data" element.
5 US 7,286,658 B1 — Intellect Wireless, Inc., "Method and apparatus for improved personal communication devices and systems" Filed 1994-01-05 / Pub. 2007-10-23 Improved personal communication devices providing multiple functions. § 102(e) as of 1994-01-05. Claim 1 (multi‑function mobile device, conversion between functions). Anticipatory candidate.
6 US 5,802,467 A — Innovative Intelcom Industries, "Wireless and wired communications, command, control and sensing system for sound and/or data transmission and reception" Filed 1995-09-28 / Pub. 1998-09-01 Wireless/wired command‑control‑sensing system for sound/data. § 102(e) as of 1995-09-28. Claim 1 (voice and data); 5, 8, 12 (appliance control; tunable power/bandwidth/frequency).
7 US 5,675,629 A — AT&T, "Cordless cellular system base station" Filed 1995-09-08 / Pub. 1997-10-07 Base station bridging cordless and cellular operation. § 102(e) as of 1995-09-08. Claims 2, 3, 14, 17 (cordless/cellular switching; local network switch‑box; handset function).
8 US 5,848,064 A — Telxon Corp., "Wireless software upgrades with version control" Filed 1996-08-07 / Pub. 1998-12-08 Wireless download/version control of software to remote terminals. § 102(e) as of 1996-08-07. Claim 1 (memory storing functional instructions delivered from a server; "functional instruction sets" 218).
9 US 5,410,738 A — NCR Corp., "System and method for linking wireless local area networks" Filed 1991-09-03 / Pub. 1995-04-25 Bridging station linking multiple wireless LANs; channel/antenna control. § 102(a)/(b)/(e). Claims 3, 17 (local network switch‑box / WLAN box). (Source: https://patents.google.com/patent/[US5410738A](/patent/US5410738A)/en)
10 US 5,539,391 A — Gemstar Development Corp., "Remote controller for controlling turning appliances on and off" Filed 1994-09-22 / Pub. 1996-07-23 Programmable remote controller for appliances. § 102(a)/(b)/(e). Claims 6, 7, 8, 10 (turning devices on/off; appliance control).
11 US 6,049,289 A — Overhead Door Corp., "Remote controlled garage door opening system" Filed 1996-09-06 / Pub. 2000-04-11 Remote‑controlled garage‑door operator with learnable/rolling codes. § 102(e) as of 1996-09-06. Claim 10 (garage‑door‑opener control).
12 US 5,555,258 A — P. Stuckey McIntosh, "Home personal communication system" Filed 1994-06-17 / Pub. 1996-09-10 Home‑based personal communication system. § 102(a)/(b)/(e). Claims 5, 17 (home network; home intelligent appliances).
13 US 5,565,929 A — Sony Corp., "Audio‑visual control apparatus for determining a connection of appliances and controlling functions of appliances" Filed 1992-10-13 / Pub. 1996-10-15 AV control apparatus determining appliance connections and controlling appliance functions. § 102(a)/(b). Claims 4, 9 (TV set / office appliances control).
14 US 5,465,401 A — Texas Instruments, "Communication system and methods for enhanced information transfer" Filed 1992-12-15 / Pub. 1995-11-07 Portable communication system with enhanced information transfer. § 102(a)/(b)/(e). Claim 1; 13 (content delivery).
15 US 5,177,604 A — Radio Telcom & Technology, "Interactive television and data transmission system" Filed 1986-05-14 / Pub. 1993-01-05 Interactive TV + data transmission. § 102(a)/(b)/(e). Claims 9, 13 (TV control; streamed content).
16 US 5,412,738? (no — see note) — — —

(US 5,412,738 is not in the list; NCR is US 5,410,738 as shown. Listed here only to avoid a transcription error.)

B. Remaining cited references predating 1996-12-16 (lower § 102 relevance; keyboard/telephony/modem arts)

Full citation Filed / Published Brief description Claim(s) potentially implicated
US 4,675,653 A — Priestley, "Keyboard arrangements" 1984-11-10 / 1987-06-23 Keyboard layout. Claim 11 (keypad commands) — at best § 103.
WO 1992/003884 A1 — Haber, "A computer keyboard" 1990-08-14 / 1992-03-05 Computer keyboard. Pertains to the "intelligent keyboard" line of the same family; claim 11.
US 5,195,130 A — Transaction Technology, "Computer and telephone apparatus with user friendly computer interface and enhanced integrity features" 1988-05-05 / 1993-03-16 Combined computer/telephone terminal. Claim 1 (voice + data device); § 103.
US 5,379,341 A — Odessa Engineering, "Device for remotely resetting electronic appliances in response to telephone rings" 1993-06-16 / 1995-01-03 Remote appliance control via telephone signaling. Claims 4–8 (remote appliance control).
US 5,513,242 A — AT&T, "Method and apparatus for facilitating the ultimate making of wireless data transfers" 1994-05-31 / 1996-04-30 Wireless data transfer facilitation. Claim 1; § 103.
US 5,517,553 A — Canon, "Wireless communication system" 1988-02-29 / 1996-05-14 Wireless communication system. Background; § 103.
US 5,559,794 A — Rockwell International, "Telecommunication system with selective remote interface assembly and method" 1993-09-09 / 1996-09-24 Selective remote interface in telecom system. Background; § 103.
US 5,566,205 A — Patriot Communications Technology, "Radio transceiver with keyboard control" 1993-03-16 / 1996-10-15 Radio transceiver with keyboard. Claim 11; § 103.
US 5,577,118 A — Verifone, "Telephone‑terminal combination with plural keyboards" 1994-08-12 / 1996-11-19 Telephone + terminal with multiple keyboards. Claim 11; § 103.
USD 374,675 S — NEC, "Wireless modem" 1995-03-30 / 1996-10-15 Ornamental design of a wireless modem. Not prior art for functional claims (design patents protect appearance); no § 102 relevance.
US 5,907,580 A — Morphics Technology, "Method and apparatus for communicating information" 1996-06-10 / 1999-05-25 Software/adaptively configurable communication. § 102(e) as of 1996-06-10. Claim 1 (reconfigurable communication); § 102(e)/103.
US 4,465,401 A — In Situ Technology, "Minimizing subsidence effects during production of coal in situ" 1981-06-15 / 1984-08-14 Coal‑mining/subsidence technology. None. Unrelated to the claimed subject matter; no § 102 or § 103 relevance.
US 5,934,858 A — McNeilus Truck & Manufacturing, "Clamshell basket loader" 1995-12-28 / 1999-08-10 Refuse‑truck loader. None. Unrelated; no § 102 or § 103 relevance.

C. Cited references that POSTDATE 1996-12-16 → not § 102 prior art (unless the claims are denied the 1996 priority)

Full citation Filed / Published Brief description Comment
US 5,872,926 A — Adaptive Micro Systems, "Integrated message system" 1996-05-31 / 1999-02-16 Messaging system. Filed before priority → § 102(e) eligible; low relevance.
US 5,943,625 A — Samsung, "System having a dual‑purpose telephone and mouse" 1995-08-31 / 1999-08-24 Dual‑purpose phone/mouse. § 102(e) eligible; § 103.
US 6,085,101 A — Telcordia, "Communications network having a multicast capability" 1996-05-17 / 2000-07-04 Multicast network. § 102(e) eligible; low relevance.
US 6,167,271 A — Northern Telecom, "Interface between cellular and wired networks with enhanced subscriber mobility" 1997-05-05 / 2000-12-26 Cellular/wired interworking. Post‑priority — not § 102 art.
US 6,172,985 B1 — Gateway 2000, "Automatic detection of POTS line" 1998-01-28 / 2001-01-09 POTS line detection. Post‑priority — not § 102 art.
US 6,185,418 B1 — Lucent, "Adaptive digital radio communication system" 1997-11-07 / 2001-02-06 Adaptive/software‑defined radio. Post‑priority — not § 102 art.
US 6,186,630 B1 — Seiko Epson, "Image projection system and a method of controlling a projected pointer" 1995-04-07 / 2001-02-13 Projector/pointer. Unrelated; no § 102 relevance.
US 6,363,249 B1 — Motorola, "Dynamically configurable datagram message communication system" 2000-04-10 / 2002-03-26 Dynamically configurable datagram messaging. Post‑priority — not § 102 art.
US 6,405,033 B1 — Track Communications, "System and method for routing a call using a communications network" 1998-07-29 / 2002-06-11 Call routing. Post‑priority — not § 102 art.
US 6,421,429 B1 — AT&T, "Network‑based system enabling image communications" 1993-12-29 / 2002-07-16 Networked image communications. Filed pre‑priority → § 102(e) eligible; low relevance.

D. Same‑family / same‑inventor references (NOT "by another" → not § 102 art)

  • US 6,169,789 B1 — Sanjay K. Rao, "Intelligent keyboard system" (filed 1999-06-04, pub. 2001-01-02). This is the direct priority patent of the family.
  • US 7,929,950 B1 — IP Holdings, Inc., "Dynamically configurable IP based wireless device and wireless networks" (pub. 2011-04-19). The grandparent of the '937 patent.
  • US 8,090,356 B2 (pub. 2012-01-03), US 8,447,289 B2, US 8,442,501 B1, US 8,472,927 B1, US 8,472,936 B1, US 8,761,739 B1, US 9,049,119 B2 — all members of the same Smart Mobile / IP Holdings family (family ID 43858691). These are not § 102 prior art against the '937 patent; at most they raise obviousness‑type double patenting concerns within the family.

4. Family‑cited (non‑US‑face) art of high technical relevance

The "Family Cites Families" set includes several references that are, in subject matter, closer to the '937 claims than much of the front‑page list — particularly for the multi‑network switching and downloadable‑instruction‑set concepts:

Full citation Priority / Pub. Description Most relevant claims
US 5,761,621 A (Spectrum) 1993-12-15 / 1998-06-02 Omni‑modal reconfigurable radio 1, 2, 17 (see §3.A#1)
US 5,802,467 A (Innovative Intelcom) 1995-09-28 / 1998-09-01 Wireless/wired command‑control‑sensing 1, 5, 8, 12
US 5,675,629 A (AT&T) 1995-09-08 / 1997-10-07 Cordless + cellular base station 2, 3, 14, 17
US 5,848,064 A (Telxon) 1996-08-07 / 1998-12-08 Wireless software upgrade/version control 1 (FIS delivery)
US 5,465,401 A (TI) 1992-12-15 / 1995-11-07 Enhanced information transfer 1, 13
US 5,177,604 A (Radio Telcom) 1986-05-14 / 1993-01-05 Interactive TV/data 9, 13
US 6,627,964 B1 (IBM) — "Combination cordless telephone and remote control for entertainment equipment" 2000-07-20 / 2003-09-30 Cordless phone doubling as AV remote Post‑priority — not § 102 art (conceptually relevant to claims 9/14).
US 6,937,972 B1 (Philips), US 6,542,497 B1 (Verizon), US 6,157,834 A (Motorola) 1997–1999 Remote‑control emulation; public wireless/cordless internet gateway; terrestrial/satellite interop Post‑priority — not § 102 art.

5. Post‑issuance art and the IPR (context, not § 102)

Honest limitation: My searches did not return the substantive text of the Final Written Decision, and the Patexia "Claims Invalidated" field rendered empty. Apart from confirming that the FWD issued 2023‑12‑04 and that a certificate (K1) issued 2024‑04‑01, I cannot state with confidence which specific claims were cancelled vs. confirmed. The existence of an IPR certificate (rather than a simple termination) is consistent with the Board reaching a patentability determination, but I will not guess the claim‑by‑claim outcome.


6. Bottom‑line assessment

  1. Strongest single‑reference (§ 102) candidates for claim 1: US 5,761,621 A (omni‑modal radio), US 6,035,212 A (multi‑frequency/multi‑protocol mobile device), US 5,905,958 A (intelligent mobile station), US 6,826,405 B2 (intelligent network routing/prioritization), and US 7,286,658 B1 (multi‑function personal communication device). Each dates (by filing) before the 1996-12-16 priority and discloses substantial portions of the claim‑1 elements.

  2. Best dependent‑claim mapping:

  • Claims 2, 17 → US 5,761,621; US 6,035,212; US 6,826,405
  • Claim 3 → US 5,410,738
  • Claims 4–9 → US 5,539,391; US 5,565,929; US 5,802,467
  • Claim 10 → US 6,049,289
  • Claim 11 → US 5,566,205; US 5,577,118
  • Claim 12 → US 5,802,467
  • Claim 13 → US 5,177,604
  • Claims 14, 16 → US 5,675,629; US 5,905,958
  • Claim 18 (GPS/WLAN‑based prioritization) → US 6,826,405
  1. Not prior art (no § 102 effect): the same‑family Rao/IP Holdings patents; the design patent USD 374,675 S; the two clearly unrelated industrial references (US 4,465,401 coal subsidence; US 5,934,858 clamshell loader); and the ~10 references filed/published after 1996-12-16 (e.g., US 6,363,249; US 6,825,405 is pre‑priority, but US 6,405,033; US 6,172,985; US 6,185,418; US 6,544,497; US 6,627,964 are not).

  2. Practical characterization: Only a handful of the 34 front‑page references are genuine § 102 candidates; the remainder are § 103 material (single features combined) or background. Any validity challenge to the '937 claims would most plausibly proceed as a § 103 combination (e.g., multi‑frequency mobile device × server‑delivered reconfiguration × appliance‑control art), consistent with the multi‑reference grounds typically seen in IPR2022‑00982.


Sources

Confidence flags: (i) reference dates are taken from Google Patents and are reliable; (ii) reference descriptions for items I could not open directly rely on the granted titles and my background knowledge and should be verified against the full texts before being relied on in a validity opinion; (iii) the substantive outcome of IPR2022‑00982 could not be retrieved and is stated only as confirmed procedural events.

Generated 9/28/2026, 10:14:07 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll ground the obviousness analysis in the actual prior-art record for this patent — including the grounds the PTAB actually considered.

Let me dig into the actual grounds and cited references in the IPR, plus verify the prior-art references themselves.

Key discovery: the petition cited US 5,949,775 (Rautiola) and US 5,688,708 (Regnier). Let me pull the specific grounds and the references' disclosures.

Obviousness Analysis — US 8,472,937 B1 under 35 U.S.C. § 103

Builds on the previously generated summary (bibliography, claim 1 breakdown, IPR2022-00982 outcome). This section adds the § 103 analysis and grounds it in the actual prior-art record — including the references the Petitioners actually asserted.


0. Two flags before the analysis

Flag A — date contradiction. The task states "Current Date: April 26, 2026," but the earlier-generated section reports CAFC decisions dated August 27, 2026 and the session header states 2026-09-28. Those cannot all be true. My analysis below is unaffected, because every reference relied on predates the 2012 filing and most predate the 1996 priority date; no post-2020 event changes any reference's prior-art status.

Flag B — I did not retrieve the '982 Petition itself. I retrieved the Petition's exhibit list (Ex. 1005 Rautiola, Ex. 1006 Regnier, Ex. 1007 Sainton), the Final Written Decision caption and judgment, the CAFC's 24-1352 description of the family's grounds, and the Petitioner's expert declaration grouping ("RAUTIOLA‑REGNIER‑SAINTON RENDER THE CHALLENGED CLAIMS OBVIOUS"). The ground-by-ground mapping below is therefore a reconstruction, labeled as such, supplemented by my own independent combination analysis.


1. Governing standard

  • Pre‑AIA § 103(a) applies if the '937 claims are entitled to the Dec. 16, 1996 priority date through Ser. No. 08/764,903. The Board resolved the '937's claims on the merits without any apparent priority-stage dispositive dispute, and the family litigations proceeded on that footing.
  • Graham v. John Deere Co., 383 U.S. 1 (1966): scope/content of prior art; differences; level of ordinary skill; secondary considerations.
  • KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007): predictable variation of known elements; "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."
  • Claim construction overlay from the family record (critical): the Board construed the "dynamic" family of terms as "when and as needed and in real time" (IPR2022-00981 ID, p. 10, as quoted in Kotzin ¶ 9), and — for the '936 — as "configurable when and as needed and in real time, without the need for user intervention." The Federal Circuit affirmed the "without the need for user intervention" gloss in Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1352, slip op. (Fed. Cir. Jan. 21, 2026). Note that '937 claim 1 does not itself use the word "dynamic"; claim 1 says only that the server "enables conversion… from a first function to a second function." The "dynamic" construction bites on claim 2 ("switch dynamically") and therefore pulls claim 2 (and every claim depending from claim 1) toward the more demanding reading. This matters: the stricter construction helps the patent on claim 2 but leaves claim 1's bare "enables conversion" language broadly exposed.
  • Applicant-admitted prior art. The '937 specification itself concedes the state of the art: "Some mobile devices (MD) include the ability to reconfigure the MD for different environments and applications"; "current wireless conditions may be determined by sensing the signal to noise ratio and the bit error rate"; and "[t]he allowed power/channel bandwidth for a given environment or operating mode will be determined, for example, from a table in Server C. This would allow a phone in the USA to work on GSM." These are admissions usable against the claims (see Constant v. Advanced Micro-Devices; In re Nomiya).

Level of ordinary skill (POSITA)

A bachelor's degree in electrical engineering or computer science (or equivalent) plus ~2–3 years' experience in wireless/mobile communications and client‑server data networks, or equivalent work experience; familiarity with dual-mode cordless/cellular terminals, RF frequency/power/bandwidth control, over-the-air software provisioning, remote-control signaling, and network selection. This is consistent with the level the Board adopted in the family (Kotzin declaration standard).


2. Claim 1 element map

Claim 1 (as previously noted, the sole independent claim, with its literal typographical artifacts "to processor" and "as first function" retained) decomposes as follows:

# Limitation (literal) Rautiola — US 5,949,775 (Ex. 1005) Regnier — US 5,688,708 (Ex. 1006)
1.1 mobile device supports voice and data Wireless terminals/handsets and laptop; office telephony (voice) plus database, voice-mail and e-mail (data): "the local area network has advantageously one or more servers which take care of certain functions related to the distribution of resources, such as the database services and voice mail and e-mail services" Client terminal 130 (client/server architecture)
1.2 a server Office LAN servers ("core of the communication system is a local area network in the office and a cellular radio network between office units") "server 110"; client portion of application "downloaded from server 110 to terminal 130" (Ex. 1006, 5:52–54, 1:35–40)
1.3 memory + processor coupled Server and terminal processing/memory Terminal executes downloaded client portion
1.4 functional instructions providing a plurality of functions Laptop converts between office telephony, database/e-mail, and "office fax or printer intelligent appliance remote controller" functions (Ex. 1005, Figs. 2–3, 3:36–38, 4:30–38, 7:20–22, 13:33–35) Server pushes client portion upon request; menus/available programs change dynamically (Ex. 1006, Abstract; 10:32–39, 10:49–51)
1.5 switching between networks incl. at least one public network Office LAN core plus cellular radio network between office units; cordless systems usable in the office (Ex. 1005) — (Regnier is a data-network provisioning reference)
1.6 prioritization data for connecting to a plurality of wireless networks Location-responsive selection among office LAN vs. cellular/IR links (Ex. 1005, Figs. 2–3) User profiles governing which services a client may access, alterable by administrator or "time of day" (Ex. 1006, 10:32–39)
1.7 plurality of communication protocols between server and device Client/server distribution across LAN, IR and cellular links Client-portion download protocol; shared system resources
1.8 server provides functions for control of the device Office server distributes services to the terminal "[S]erver dynamically controll[ing] whether a client device can use and/or access a service" (Kotzin ¶ 25, citing Ex. 1006, 10:32–39)
1.9 enables conversion first function → second function Conversion responsive to where the user is located — e-mail → fax/printer remote controller → office telephony Server "allow[s] users to choose dynamically among said shared system resources" (Ex. 1006, 10:49–51)

Limitations 1.6–1.9 were the contested ground at the PTAB; 1.6 in particular is the limitation I would expect a future challenger or defender to fight hardest over (see § 7).


3. Ground 1 — Rautiola in view of Regnier (obviousness of claim 1)

Reference disclosures.

  • Rautiola, US 5,949,775 (Ex. 1005): a communication system whose "core… is a local area network in the office and a cellular radio network between office units," with LAN servers distributing "database services and voice mail and e-mail services," and terminals that convert among telephony, data, and intelligent-appliance remote-controller functions.
  • Regnier, US 5,688,708 (Ex. 1006): client/server system in which a "client portion" of an application is downloaded from a server to a terminal on request, the server controls on a "dynamic basis" which services a client may access, and menus/resources change "whenever a system administrator modifies a profile, or by some other factor, such as time of day."

Why a POSITA would combine them. Both are client/server systems that distribute functionality to remote client devices over a network — the same field of endeavor and reasonably pertinent to the '937's own stated problem ("relieving the proliferation of devices" by letting one device carry many functions). Rautiola expressly motivates server-distributed functionality ("servers which take care of certain functions related to the distribution of resources"). A POSITA seeking to give Rautiola's wireless terminal additional functions without adding hardware would look to Regnier's known technique of provisioning the client side of an application from the server on demand and letting the server administer which functions each client has. KSR: applying a known technique (server-side provisioning of client functionality) to a known system (a wireless terminal in an office-LAN/cellular environment) to obtain the predictable benefit of more functions from the same device, with no change in principle of operation. Reasonable expectation of success is high: no new hardware, no RF redesign, only server and terminal software of the kind both references already describe.

Result: claim 1 limitations 1.1–1.5, 1.7–1.9 are met by Rautiola (1.5 via its LAN + cellular architecture); 1.7–1.9 are reinforced by Regnier's server-directed dynamic provisioning; 1.6 is met by the combination of Rautiola's location-responsive network selection and Regnier's stored, administrator-managed profiles — i.e., "prioritization data related to connecting to a plurality of wireless networks."

Weakest link (candidly): limitation 1.6. Regnier's "profile" governs services, not networks. The combination argument for 1.6 depends on reading Rautiola's location-dependent choice of link (office LAN vs. cellular/IR) as ordered/permissioned by stored data. That is defensible but is the element I would expect to be the focus of a serious non-obviousness argument. Notably, the Patent Owner's arguments in the family record targeted analogous art, user intervention, and "real time" — not 1.6 — which suggests 1.6 was not the chosen battleground (see § 7).


4. Ground 2 — Rautiola in view of Sainton (claim 1's "public network" element and claim 2)

Sainton, US 5,854,985 (Ex. 1007) was asserted, per the Federal Circuit's description of the Petition, "for claim limitation [1.5], reciting 'switching between one or more networks,' and claim 2, reciting 'switch dynamically between local networks and public carrier network'" (Apple v. Smart Mobile, No. 24-1352, slip op. at 6, citing J.A. 2892–2901).

Motivation. Rautiola's own architecture pairs an office LAN with a cellular radio network and notes that "cordless systems can be used in the office." A POSITA implementing that architecture would necessarily provide the terminal with local-network/carrier-network selection — the exact problem Sainton addresses. Combining them yields the claim 2 "switch dynamically between local networks and public carrier networks" limitation. Predictable result: service continuity as the user moves between campus and carrier coverage (compare the '937 spec's own "primary/secondary/tertiary mode" hierarchy).

Uncertainty flag: I did not retrieve the text of US 5,854,985, so I describe it only at the level of the record's reliance (network switching between local and public carrier networks). A reader needing its precise disclosure should pull the '985 patent directly.


5. Ground 3 — Appliance-control and handset claims (claims 4–10, 14) via Grube and the page's own cited art

The dependent claims 4–10 and 14 are narrow functional add-ons and are the easiest to invalidate:

  • Claim 4 (remote controller for copiers and faxes): Rautiola alone — its laptop "convert[s]… to an office fax or printer intelligent appliance remote controller function." This is nearly verbatim the claim.
  • Claims 5, 9, 10 (TV, oven, microwave; TV set; garage door opener): US 5,201,067 (Grube et al.), "Remote control data set" personal communications device — "A personal communications device (100) includes a wireless transceiver… to allow down loading of remote control signalling information," and expressly contemplates retaining control data for "first and second televisions, a video cassette recorder, a stereo system, and a garage door opener," with conversion to a cordless telephone handset on an incoming call. That single reference maps claims 5, 9, 10, and 14. Note: Grube came from the parallel IPR record (family Ex. 1011), not from the citation list on the US8472937 page — I flag the provenance.
  • Claim 10 independently: US 6,049,289 (Overhead Door Corp.), "Remote controlled garage door opening system," priority 1996‑09‑06 (pre-priority) — cited on the face of the '937.
  • Claim 9 / 14: US 6,628,964 (IBM), "Combination cordless telephone and remote control for entertainment equipment" — cited in the '937's family citation list. Date caveat: its listed priority is 2000‑07‑20, after the '937's 1996 priority; it is available only if the '937 claims are denied the 1996 date (see § 6).
  • Claims 5–9 generally (wireless command/control of appliances): US 5,802,467 (Innovative Intelcom), "Wireless and wired communications, command, control and sensing system for sound and/or data transmission and reception," priority 1995‑09‑28.
  • Claim 6 (start/stop devices, manage power settings): US 5,535,391 (Gemstar), "Remote controller for controlling turning appliances on and off," priority 1994‑09‑22.

Motivation for all of the above: the '937 specification itself says the device "can be a remote TV controller, garage controller, or similar intelligent appliance" — and the Background identifies TV/appliance controllers as the very proliferation problem to be solved. Where the patentee frames appliance control as the problem, art teaching appliance control from a portable device is reasonably pertinent by definition. Grube additionally supplies the server-download of instruction sets ("down loading of remote control signalling information" from a "remote site data base" over a dial-up connection), which independently corroborates claim 1's "functional instructions" supplied from a server and claims 15–16 (device operating as its own server after download).


6. Independent alternative grounds drawn from the page's own citation lists

These are combinations available from the "Patent Citations" / "Family Cites Families" data on the US8472937 page. Timing caution first, because this is where a careless § 103 analysis fails: references whose listed priority date is after Dec. 16, 1996 are available only if the '937's claims lose the 1996 priority date (e.g., new matter in the 1999/2000 CIPs). The earlier-generated summary already flagged that the '937 issues from a continuation chain with a 2000 CIP; the priority question is live but untested.

Available on the 1996 date (listed priority before 1996‑12‑16):

Claim(s) Reference (as listed on the page) Why it matters
1, 3 US 5,410,738 (NCR), "System and method for linking wireless local area networks" (1991‑09‑03) Claim 3's "local network switchbox adapted to perform the functions of a wireless local area network box"
1, 2, 17 US 5,905,958 (Ericsson), "Intelligent mobile station for a cellular telecommunications network" (1996‑03‑18) Reconfigurable/programmable mobile station; multi‑network terminal
1, 2, 17 US 5,675,629 (AT&T), "Cordless cellular system base station" (1995‑09‑08) Cordless/cellular interworking; home vs. carrier loops
1, 2, 17 US 5,761,621 (Spectrum Information Technologies), "Apparatus and methods for networking omni‑modal radio devices" (1993‑12‑15) Omni-modal (multi-mode) reconfigurable radio devices and networks — the strongest single-reference candidate for a reconfigurable multi-network mobile device
1, 12 US 6,035,212 (LSI Logic), "Multi-frequency wireless communication device" (1996‑08‑02) Claim 12's tunable frequency/bandwidth
18 US 6,826,405 (Padcom), "Apparatus and method for intelligent routing of data between a remote device and a host system" (listed priority 1995‑06‑01) Claim 18's "prioritization … based on GPS or wireless local area network" — intelligent, policy-driven selection among heterogeneous networks
1, 13 US 5,848,064 (Telxon), "Wireless software upgrades with version control" (1996‑08‑07) Downloading instruction sets over the air; claim 1's "functional instructions" and claim 13's server-streamed content
4, 5, 9, 10 US 5,535,391; US 6,049,289; US 5,802,467 (above) Appliance/garage-door remote control
11 Applicant admission ("keypad, textual, sound or voice actuated… one or more languages"); US 6,169,789 (Rao), "Intelligent keyboard system" Voice/keypad/multi-language command input

Available only if the 1996 priority fails (listed priority after 1996‑12‑16): US 6,166,271 (1997‑05‑05, cellular/wired interworking with enhanced subscriber mobility), US 6,185,418 (1997‑11‑07, adaptive digital radio communication system — good for claim 12), US 6,173,985 (1998‑01‑28, automatic detection of POTS line), US 6,405,033 (1998‑07‑29, call routing over a communications network), US 6,363,249 (2000‑04‑10, "Dynamically configurable datagram message communication system"), US 6,542,497 (1997‑03‑11, public wireless/cordless internet gateway — claim 13), US 6,937,972 (1999‑03‑17, fully functional remote-control editor/emulator), KR100333840 (1999‑10‑12, wireless telephone combined with a remote-controlled device), US 6,628,964 (2000‑07‑20).

Candidate single-reference challenge to claim 1: US 5,761,621 (Spectrum) — omni-modal radio devices, i.e., a radio reconfigurable across modes and networks with networked control — is the most plausible anticipation/obviousness reference among the patent's own citations. I have not verified its disclosure line-by-line, so I present it as a candidate, not a conclusion.


7. The best non-obviousness arguments, and why they failed

  1. Regnier is not analogous art. Patent Owner argued this in the family proceedings (POR headings: "Petitioners have failed to establish that Regnier is analogous art… same 'Field of Endeavor'… 'reasonably pertinent to the particular problem'"). It failed: the '937's own specification frames its problem as relieving device proliferation through server-distributed functionality, and Regnier is a server-distributes-functionality reference. Relevance to '937: the same argument is weaker here, because '937 claim 1 expressly claims the server's role in "provid[ing] a plurality of functions for control of the mobile device."
  2. No "dynamic" conversion / requires user intervention. Patent Owner argued Regnier's reconfiguration "wait[s] for a user command" and is therefore not "in real time" (Ex. 2036 demonstratives). The Board rejected this, and the CAFC affirmed that the construction does not preclude user intervention. But note the asymmetry: the "dynamic" fight was over the '936 and '739 claims. For '937 claim 1, the word "dynamic" is absent altogether, so the patent gets the benefit of the strict construction only on claim 2. Claim 1's bare "enables conversion… from a first function to a second function" is correspondingly easier to meet.
  3. No motivation to combine. The Petitioners supplied express motivation grounded in Rautiola's own text (office servers distribute resources) — a stronger posture than a bare "both are in the same field" assertion.
  4. Secondary considerations. I found no evidence in the retrieved record of objective indicia — commercial success, long-felt but unmet need, failure of others, copying, unexpected results. Given the patent's expiration (anticipated 2016‑12‑16; lapsed 2017‑06‑25 for non-payment) and the licensing/litigation posture rather than product commercialization, any nexus argument would be weak. This is a gap, not a finding.

8. Cross-check against the adjudicated outcome

The claim-1 obviousness analysis above is not merely academic: IPR2022-00982 (Petition filed May 9, 2022; instituted Dec. 5, 2022; FWD Dec. 4, 2023) held claims 1–3, 5, 6, 10, 13, and 16–18 unpatentable, and the IPR certificate (K1) issued April 1, 2024. The Board's panel (Turner, Engels, Korniczky; Turner authoring) issued a Final Written Decision Determining All Challenged Claims Unpatentable, 35 U.S.C. § 318(a). Corroborating that the asserted art was Rautiola (Ex. 1005) + Regnier (Ex. 1006) + Sainton (Ex. 1007) is the Petitioner's expert's declaration caption, "RAUTIOLA‑REGNIER‑SAINTON RENDER THE CHALLENGED CLAIMS OBVIOUS" — filed across IPR2022-00979/-00980/-00981/-00982.

Estoppel significance beyond the '937. In Apple v. Smart Mobile, No. 24-1352 (Fed. Cir. Jan. 21, 2026), the panel (Lourie, Reyna, Chen; Reyna authoring) applied issue preclusion to hold that the invalidity of claim 1 of the '936 patent followed from the Board's invalidity finding on the materially similar claim 1 of a sibling patent, reasoning that "the claims' differences do not materially alter the question of invalidity" and rejecting Smart Mobile's attempt to define the preclusive "issue" at the level of individual references. The '937's claim 1 is, on its face, materially the same claim. Accordingly, my § 3–§ 4 analysis and the Board's § 318(a) judgment point the same direction.

Unchallenged dependent claims of the '937 (4, 7, 8, 9, 11, 12, 14, 15) were not adjudicated and were not cancelled by the K1 certificate — but as the earlier section noted, they depend from a cancelled independent claim. For completeness: § 5 above shows that each of those claims independently falls to art that was never even reached at the PTAB.


9. Bottom line

  • Claim 1 would have been obvious over Rautiola (US 5,949,775) in view of Regnier (US 5,688,708), with Sainton (US 5,854,985) supplying the local/public carrier network-switching element; the KSR rationale is server-side provisioning of client functionality applied to a known office-LAN/cellular wireless terminal to obtain more functions from one device. The PTAB reached precisely this result (FWD, Dec. 4, 2023).
  • Claim 2 adds "switch dynamically between local networks and public carrier networks" — met by Rautiola + Sainton, under either the Board's or the patentee's construction of "dynamic."
  • Claims 4–10, 14 are met by Rautiola alone (copier/fax remote controller) and by US 5,201,067 (Grube) (downloaded remote-control data sets covering TV, garage door, and cordless-handset conversion), with US 5,535,391 (Gemstar), US 6,049,289 (Overhead Door), US 5,802,467 (Innovative Intelcom) as corroborating art — none of which the Petitioners needed.
  • Claims 12, 17, 18 are met by US 6,035,212 (LSI), US 5,905,958 (Ericsson) / US 5,675,629 (AT&T) / US 5,761,621 (Spectrum), and US 6,826,405 (Padcom) respectively, or by applicant-admitted prior art in the '937 specification itself.
  • The strongest surviving non-obviousness argument is limitation 1.6 ("prioritization data related to connecting to a plurality of wireless networks"), which the Rautiola/Regnier combination reaches only by treating stored profiles plus location-responsive link selection as "prioritization data." That argument was not the one the patentee actually ran, and it would now face issue-preclusion headwinds from No. 24-1352.

Sources

Not verified (explicitly): the '982 Petition's ground-by-ground mapping; the full text of US 5,854,985 (Sainton) and US 5,761,621 (Spectrum); the '937's prosecution history (Ex. 1002 in the IPR); and any objective indicia of non-obviousness.

Generated 9/28/2026, 10:14:58 PM

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