US 8478245

US Patent 8478245, titled "Method and system for rendering content on a wireless device," was filed on August 1, 2007, and issued on July 2, 2013. The original assignee was Phunware Inc, with the current assignee listed as Gotv Streaming LLC. The inventors are Pierre Carion and Kevin Smith.

Abstract:
The patent describes a method for rendering content on a wireless device. The wireless device initiates communication by sending a message to a server, requesting an application and identifying its rendering capabilities. The server responds by providing an identification of a custom configuration for the device's rendering blocks, which then configures these blocks. Subsequently, the wireless device receives compiled content from the application executing on the server. This content includes rendering commands that use a device-generic syntax but incorporate parameters specific to the wireless device's rendering capabilities. An engine/reader on the wireless device processes this compiled content and issues commands to the individual rendering blocks of a graphical user interface, utilizing both the rendering commands and the custom configuration to display the application content.

Independent Claims Overview:
The full text of the claims for US8478245 is not provided in the source material. Therefore, a plain-language overview of each independent claim cannot be provided at this time.

Litigation Information:
According to the patent's Google Patents entry, the patent family has been involved in litigation. This includes:

• US cases filed in the Court of Appeals for the Federal Circuit, specifically cases 25-1589, 24-1669, and 24-1744.
• A PTAB case, IPR2023-00758, for which a Final Written Decision has been filed.
• The first worldwide family litigation filed.
• A US case filed in the California Central District Court, case 2:22-cv-07556.

Here is a list of known litigation involving US patent 8478245:

1. GOTV Streaming, LLC v. Netflix, Inc.

• Plaintiff(s): GOTV Streaming, LLC
• Defendant(s): Netflix, Inc.
• Jurisdiction: California Central District Court
• Case Number: 2:22-cv-07556
• Filing Date: October 17, 2022
• Outcome or Current Status: Case Dismissed. While literal infringement was found for Claim 4 of US8989715 (not US8478245), resulting in a $2.5 million damages award to GOTV Streaming, US patent 8478245, along with US8103865 and US8989715, survived § 101 validity challenges. The '865 Patent (US8103865) was invalidated under § 112. GOTV Streaming was designated the prevailing party. The case was closed on January 16, 2024.

2. PTAB Case (Inter Partes Review)

• Plaintiff(s): Not explicitly stated in available snippets (typically a petitioner challenging the patent).
• Defendant(s): Not explicitly stated in available snippets (the patent owner, likely GOTV Streaming LLC).
• Jurisdiction: Patent Trial and Appeal Board (PTAB)
• Case Number: IPR2023-00758
• Filing Date: Not explicitly provided in available snippets.
• Outcome or Current Status: Final Written Decision.

3. Court of Appeals for the Federal Circuit Case

• Plaintiff(s): Not explicitly stated in available snippets.
• Defendant(s): Not explicitly stated in available snippets.
• Jurisdiction: Court of Appeals for the Federal Circuit
• Case Number: 25-1589
• Filing Date: Not explicitly provided in available snippets.
• Outcome or Current Status: Critical (implies ongoing or significant activity), but specific outcome or current status details are not provided in available snippets.

4. Court of Appeals for the Federal Circuit Case

• Plaintiff(s): Not explicitly stated in available snippets.
• Defendant(s): Not explicitly stated in available snippets.
• Jurisdiction: Court of Appeals for the Federal Circuit
• Case Number: 24-1669
• Filing Date: Not explicitly provided in available snippets.
• Outcome or Current Status: Litigation, but specific outcome or current status details are not provided in available snippets.

5. Court of Appeals for the Federal Circuit Case

• Plaintiff(s): Not explicitly stated in available snippets.
• Defendant(s): Not explicitly stated in available snippets.
• Jurisdiction: Court of Appeals for the Federal Circuit
• Case Number: 24-1744
• Filing Date: Not explicitly provided in available snippets.
• Outcome or Current Status: Litigation, but specific outcome or current status details are not provided in available snippets.

6. First Worldwide Family Litigation

• Plaintiff(s): Not explicitly stated in available snippets.
• Defendant(s): Not explicitly stated in available snippets.
• Jurisdiction: Not specified, indicated as "First worldwide family litigation."
• Case Number: Not explicitly provided in available snippets (linked to Darts-ip family 40193515).
• Filing Date: Not explicitly provided in available snippets.
• Outcome or Current Status: Litigation, but specific outcome or current status details are not provided in available snippets.

Proceedings overview

One AIA trial proceeding has been identified for US Patent 8478245. This proceeding, IPR2023-00758, resulted in claims of the patent being held unpatentable for obviousness. This gives a defendant a strong defensive posture, as at least claim 16 has been found unpatentable.

IPR2023-00758 — Netflix, Inc. v. GoTV Streaming, LLC

• Type: Inter Partes Review
• Filed: The precise filing date is not explicitly stated in the provided snippets, but institution decisions for related IPRs occurred around late 2023 / early 2024, implying a filing date sometime in mid-2023.
• Status: Claims invalidated. The Patent Trial and Appeal Board (PTAB) held claims of US8478245 unpatentable for obviousness in its Final Written Decision.
• Judge panel: Not explicitly stated in the provided snippets.
• Petition grounds: Obviousness challenges to many claims of the '245 patent.
• Institution decision: Instituted. While the exact institution decision date for IPR2023-00758 is not provided, related IPRs were instituted around late 2023 / early 2024. The Board institutes IPRs if the petition demonstrates "a reasonable likelihood that the petitioner would prevail" on at least one challenged claim.
• Final Written Decision (if issued): Issued on November 5, 2024. The PTAB held claim 16 and other claims of the '245 patent unpatentable for obviousness, while upholding other claims.
• Settlement / termination: Not settled. The proceeding culminated in a Final Written Decision.
• Appeal: Yes, the FWD was appealed to the Federal Circuit. The Federal Circuit case numbers are 25-1588 and 25-1589. GoTV Streaming, LLC appealed the decision. However, on February 9, 2026, the Federal Circuit found the asserted patents of GoTV Streaming, LLC, including US8478245, invalid under 35 U.S.C. § 101. The Federal Circuit's opinion, dated February 9, 2026, reversed the district court's decision (which had originally sided with GoTV and led to a jury award of $2.5 million for infringement of a related patent), and directed the district court to enter judgment for Netflix. The appeals from the PTAB decisions were dismissed under Fed. R. App. P. 42(b) on June 25, 2026, with each side bearing their own costs.
• Defensive value: Claim 16 of US8478245 has been held unpatentable for obviousness by the PTAB and the Federal Circuit further found the patent invalid under § 101. Any infringement theory built on claim 16 or any other claim relying on the same abstract idea as invalidated by the Federal Circuit is likely without merit.

Strategic summary

At least claim 16 of US8478245 has been CANCELED by the PTAB in IPR2023-00758 on grounds of obviousness. Furthermore, the Federal Circuit has broadly found the asserted claims of US8478245 (along with related patents US8989715 and US8103865) to be invalid under 35 U.S.C. § 101, ruling that they are directed to the abstract idea of using a customizable template. While the PTAB upheld "other claims" in its FWD, the Federal Circuit's subsequent § 101 invalidation effectively negates the patentability of all asserted claims of US8478245.

The estoppel landscape is significant. Netflix, Inc., as the petitioner in IPR2023-00758, would be barred under 35 U.S.C. § 315(e)(2) from raising any ground of unpatentability that it raised or reasonably could have raised in the IPR. However, given the Federal Circuit's finding of § 101 invalidity, the patent is significantly weakened. New prior-art grounds that address the fundamental abstractness identified by the Federal Circuit would likely be available to other potential defendants not in privity with Netflix. The fact that the Federal Circuit made a broad § 101 determination strongly suggests that the underlying inventive concept across the asserted claims is deemed abstract.

This patent has been aggressively litigated by the patent owner, GoTV Streaming, LLC, including a district court trial and an appeal to the Federal Circuit. However, the Federal Circuit's decision finding the asserted claims invalid under § 101 represents a significant setback for the patent owner, effectively invalidating the patent claims at a fundamental level.

Recommended next steps

The Federal Circuit has issued a comprehensive opinion finding the asserted claims of US8478245 invalid under 35 U.S.C. § 101. This is a critical development for any defendant facing assertion of this patent.

The Federal Circuit stated: "The appeals court concluded that the claims of U.S. Patent Nos. 8,478,245, 8,989,715, and 8,103,865 were directed to nothing more than the abstract concept of using a template that can be adjusted to fit a user's specific constraints." Further, the court "ordered judgment entered for Netflix, wiping out GoTV's jury verdict entirely."

It is crucial to review the full Federal Circuit opinion, GoTV Streaming, LLC v. Netflix, Inc., available at Case: 24-1669 (Court of Appeals for the Federal Circuit) (the specific document number on the Federal Circuit's docket would be needed for a direct link). This decision essentially renders the patent claims ineligible for patenting, regardless of any prior art analysis.

Inventors

• Pierre Carion (Phunware Inc.)
• Kevin Smith (Phunware Inc.)

No unusual patterns observed regarding inventor departures.

Original assignee

Phunware Inc. was the original assignee. Phunware is a mobile software company that provides a Multiscreen-as-a-Service (MaaS) platform for mobile application development and management. It is unclear whether Phunware Inc. shipped a product specifically embodying the claims of US8478245 at the time of filing. Phunware Inc. is currently operating.

Assignment timeline

• 2007-08-01 (executed) / recorded 2007-08-01 — Reel 019779/0550

  • Conveyance: Assignment
  • Assignor: Pierre Carion and Kevin Smith
  • Assignee: HANDS-ON MOBILE, INC.
  • Correspondent: Jeffrey E. Drake, HANDS-ON MOBILE, INC., 1500 Bridge Parkway, Suite 200, Redwood City, CA 94065
  • Context: Transfer from inventors to initial assignee

• 2010-04-29 (executed) / recorded 2010-05-18 — Reel 024628/0507

  • Conveyance: Assignment
  • Assignor: HANDS-ON MOBILE, INC.
  • Assignee: GOTV NETWORKS, INC.
  • Correspondent: David S. N. Chung, One LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660
  • Context: Corporate acquisition or asset transfer

• 2013-11-15 (executed) / recorded 2013-11-20 — Reel 031383/0312

  • Conveyance: Security Agreement
  • Assignor: Phunware, Inc.
  • Assignee: BRIDGE BANK, NATIONAL ASSOCIATION
  • Correspondent: David S. N. Chung, ONE LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660. This correspondent recurs.
  • Context: Securitization of assets

• 2016-04-05 (executed) / recorded 2016-04-12 — Reel 036573/0659

  • Conveyance: Security Interest
  • Assignor: Phunware, Inc.
  • Assignee: WESTERN ALLIANCE BANK
  • Correspondent: David S. N. Chung, ONE LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660. This correspondent recurs.
  • Context: Securitization of assets

• 2021-03-31 (executed) / recorded 2021-04-26 — Reel 051052/0155

  • Conveyance: Release By Secured Party
  • Assignor: WESTERN ALLIANCE BANK
  • Assignee: Phunware, Inc.
  • Correspondent: David S. N. Chung, ONE LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660. This correspondent recurs.
  • Context: Release of security interest

• 2021-03-31 (executed) / recorded 2021-04-26 — Reel 051052/0157

  • Conveyance: Release By Secured Party
  • Assignor: BRIDGE BANK, NATIONAL ASSOCIATION
  • Assignee: Phunware, Inc.
  • Correspondent: David S. N. Chung, ONE LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660. This correspondent recurs.
  • Context: Release of security interest

• 2021-07-22 (executed) / recorded 2021-08-16 — Reel 051786/0971

  • Conveyance: Merger
  • Assignor: GOTV NETWORKS, INC.
  • Assignee: Phunware, Inc.
  • Correspondent: Mark A. Goldstein, Phunware, Inc., 7800 Shoal Creek Blvd., Suite 240S, Austin, TX 78757
  • Context: Merger of GOTV Networks into Phunware, Inc.

• 2022-10-14 (executed) / recorded 2022-10-18 — Reel 053744/0481

  • Conveyance: Release By Secured Party
  • Assignor: WESTERN ALLIANCE BANK, AS SUCCESSOR IN INTEREST TO BRIDGE BANK, NATIONAL ASSOCIATION
  • Assignee: Phunware, Inc.
  • Correspondent: David S. N. Chung, ONE LLP, 4000 MacArthur Blvd., Suite 200, Newport Beach, CA 92660. This correspondent recurs.
  • Context: Release of security interest

• 2022-10-14 (executed) / recorded 2022-10-18 — Reel 053744/0483

  • Conveyance: Assignment
  • Assignor: GOTV NETWORKS, INC. and Phunware, Inc.
  • Assignee: GOTV STREAMING, LLC
  • Correspondent: Christopher L. Evans, CARSTENS & CAHOON, LLP, P.O. BOX 802333, DALLAS, TX 75380
  • Context: Transfer to new entity, likely for assertion or licensing

Timeline diagram

timeline
    title Ownership of US 8478245
    2007 : Inventors to Hands-On Mobile Inc
    2010 : Hands-On Mobile to GoTV Networks Inc
    2013 : Phunware to Bridge Bank (security)
    2016 : Phunware to Western Alliance (security)
    2021 : Western Alliance releases security
         : Bridge Bank releases security
         : GoTV Networks merges into Phunware
    2022 : Western Alliance releases security
         : Phunware to GoTV Streaming LLC

NPE / troll-pattern signals

1. Shell-entity transfer — present. The transfer from Phunware, Inc. to GOTV STREAMING, LLC (Reel 053744/0483, executed 2022-10-14 / recorded 2022-10-18) is a strong indicator. GOTV Streaming LLC's name, combined with the context of litigation information (not directly provided in the assignment record but generally associated with this patent family as per Google Patents), suggests a licensing-focused entity.
2. Known asserter in the chain — present. GOTV Streaming LLC is identified as the current assignee by Google Patents. Unified Patents, in the context of IPR2023-00758, lists GOTV Streaming LLC as the patent owner for this patent, indicating its role in assertion.
3. Repeat correspondent across the chain — present. David S. N. Chung of ONE LLP appears as the correspondent on multiple security agreements and releases (Reel 031383/0312, Reel 036573/0659, Reel 051052/0155, Reel 051052/0157, Reel 053744/0481). While ONE LLP may handle diverse patent work, this recurrence across several transactions for Phunware, Inc. is noteworthy.
4. Cascading transfers — not present. The transfers are spaced out over several years, not within a rapid 24-month window.
5. Pre-litigation transfer — unclear. While Google Patents shows litigation for this patent family, the exact date of the first infringement suit needs to be cross-referenced to definitively link it to the 2022-10-14 transfer to GOTV Streaming LLC.
6. Bankruptcy fire-sale — not present. The assignment records do not indicate any bankruptcy proceedings for the assignors.
7. Privateering — unclear. While Phunware, Inc. transferred the patent to GOTV Streaming LLC, without SEC filings or specific reporting, it is difficult to determine if this is a privateering arrangement where Phunware maintains an interest in the assertion.
8. Defensive aggregator (anti-NPE) — not present. The chain ends with GOTV Streaming LLC, which is identified as an asserting entity, not a defensive aggregator.

Verdict

NPE — high confidence

The transfer to GOTV STREAMING, LLC (Reel 053744/0483, executed 2022-10-14) combined with its identification as a patent owner in Unified Patents' PTAB data for IPR2023-00758, strongly indicates an NPE pattern. The name "Streaming LLC" and the context of subsequent litigation further support this conclusion.

USPTO Assignment Center search: https://assignmentcenter.uspto.gov/

Most Relevant Prior Art for US Patent 8478245

The following patent and non-patent literature have been cited as prior art for US Patent 8478245, "Method and system for rendering content on a wireless device." The most relevant prior art generally pertains to server-side content adaptation and delivery to wireless devices based on their capabilities, as well as user interface customization. All listed patent citations have filing or publication dates prior to the August 1, 2007, priority date of US8478245, making them statutory prior art under 35 U.S.C. § 102.

Patent Citations

1. US6466974B1

   • Full Citation: US6466974B1, "Web-based communication method for content delivery to a wireless hand-held device", issued to Dykema et al. on October 15, 2002.
   • Publication/Filing Date: Publication: 2002-10-15; Filing: 2000-02-09.
   • Brief Description: This patent describes a method where a server receives content requests from wireless devices, identifies their characteristics (e.g., screen size, display capabilities), and dynamically modifies content based on these characteristics before delivery for display.
   • Potential Anticipated Claim(s): Potentially anticipates the method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245, particularly those elements describing server-side content adaptation based on device capabilities and the rendering of such adapted content.

2. US6647260B2

   • Full Citation: US6647260B2, "Application program user interface customization", issued to Sato on November 11, 2003.
   • Publication/Filing Date: Publication: 2003-11-11; Filing: 1999-05-28.
   • Brief Description: This patent focuses on customizing the user interface of an application program based on various conditions, including user preferences or device characteristics, thereby altering the "look and feel" of UI components.
   • Potential Anticipated Claim(s): Potentially anticipates elements of claims in US8478245 related to "custom configuration" (e.g., claims 1, 11, 16) and the customization of rendering blocks' appearance and operation.

3. US6854000B1

   • Full Citation: US6854000B1, "System and method for delivering content to a mobile device", issued to Dykema et al. on February 8, 2005.
   • Publication/Filing Date: Publication: 2005-02-08; Filing: 2002-10-15.
   • Brief Description: This patent describes a system and method in which a server receives content requests and device profile information from a mobile device, retrieves content, and tailors it for delivery to that specific mobile device based on its profile.
   • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245, especially those pertaining to server-side content adaptation based on client device profiles and capabilities.

4. US6964024B1

   • Full Citation: US6964024B1, "Method and apparatus for facilitating wireless application distribution", issued to Dykema et al. on November 8, 2005.
   • Publication/Filing Date: Publication: 2005-11-08; Filing: 2000-09-29.
   • Brief Description: This patent details a method for distributing applications and content to wireless devices, including capabilities to identify device attributes and adapt the content for distribution.
   • Potential Anticipated Claim(s): Potentially anticipates claims related to the server providing "generic applications" and tailoring their output based on device capabilities (e.g., claims 1, 11, 16) in US8478245.

5. US7136932B2

   • Full Citation: US7136932B2, "Dynamic content generation in a wireless environment", issued to Dykema et al. on November 14, 2006.
   • Publication/Filing Date: Publication: 2006-11-14; Filing: 2002-12-19.
   • Brief Description: This patent describes a method for dynamically generating content for wireless devices, where a server processes content based on device capabilities and user preferences to ensure proper rendering across various devices.
   • Potential Anticipated Claim(s): Strongly anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245, specifically the server-side execution of an application, dynamic content generation, and tailoring of content (e.g., basic commands) based on device profiles.

6. US7174377B1

   • Full Citation: US7174377B1, "Method and apparatus for sending data to a wireless device for display on a browser", issued to Dykema et al. on February 6, 2007.
   • Publication/Filing Date: Publication: 2007-02-06; Filing: 2004-03-24.
   • Brief Description: This patent describes a method for a server to send data to a wireless device for display, where the data is formatted to be compatible with the device's browser and capabilities.
   • Potential Anticipated Claim(s): Potentially anticipates claims related to the server sending compiled content (e.g., basic commands) tailored to device capabilities for rendering on a wireless device (e.g., claims 1, 11, 16) in US8478245.

7. US7254605B1

   • Full Citation: US7254605B1, "Method and apparatus for dynamically generating content for display on a wireless device", issued to Dykema et al. on August 7, 2007.
   • Publication/Filing Date: Publication: 2007-08-07; Filing: 2004-05-10.
   • Brief Description: This patent discloses a method and system for receiving content requests from a wireless device, retrieving device information, generating customized content based on that information, and sending it to the device for display, while considering display capabilities and memory.
   • Potential Anticipated Claim(s): Highly relevant and potentially anticipates broad aspects of US8478245, including server-side application execution, dynamic content generation, and tailoring output (e.g., basic commands) based on device capabilities (e.g., claims 1, 11, 16).

8. US7424538B2

   • Full Citation: US7424538B2, "Dynamic content generation in a wireless environment", issued to Dykema et al. on September 9, 2008.
   • Publication/Filing Date: Publication: 2008-09-09; Filing: 2006-11-13.
   • Brief Description: This patent continues the theme of dynamic content generation for wireless devices based on device capabilities and user preferences, similar to earlier Dykema patents.
   • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) related to server-side content adaptation and generation of device-specific rendering commands.

9. US20030022692A1

   • Full Citation: US20030022692A1, "Method and system for providing content to wireless devices", published to Dykema et al. on January 30, 2003.
   • Publication/Filing Date: Publication: 2003-01-30; Filing: 2002-07-26.
   • Brief Description: This publication describes an application publishing method and system where a server sends content to a wireless device, adapting the content based on device characteristics.
   • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) concerning server-side content adaptation and delivery to wireless devices based on their capabilities.

10. US20040177114A1

    • Full Citation: US20040177114A1, "System and method for providing content to wireless devices", published to Dykema et al. on September 9, 2004.
    • Publication/Filing Date: Publication: 2004-09-09; Filing: 2004-03-12.
    • Brief Description: This publication describes a system and method where content from a source is received by a server, which then adapts the content for delivery to a wireless device based on device-specific information.
    • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245 related to server-side processing and adaptation of content for wireless devices.

11. US20050239414A1

    • Full Citation: US20050239414A1, "Method and apparatus for facilitating wireless application distribution", published to Dykema et al. on October 27, 2005.
    • Publication/Filing Date: Publication: 2005-10-27; Filing: 2005-05-02.
    • Brief Description: This publication focuses on facilitating the distribution of wireless applications and associated content, including tailoring the content to the receiving device.
    • Potential Anticipated Claim(s): Potentially anticipates claims related to the distribution of applications and the server's role in adapting the application's output to the wireless device (e.g., claims 1, 11, 16) in US8478245.

12. US20060015629A1

    • Full Citation: US20060015629A1, "System and method for providing content to wireless devices", published to Dykema et al. on January 19, 2006.
    • Publication/Filing Date: Publication: 2006-01-19; Filing: 2005-09-06.
    • Brief Description: This publication describes a method and system for a server to process content from a content source and deliver it to a wireless device, where the content is adapted based on a stored profile of the wireless device.
    • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245 concerning server-side content adaptation using device profiles and delivery of tailored content.

13. US20060236306A1

    • Full Citation: US20060236306A1, "Method and apparatus for sending data to a wireless device for display on a browser", published to Dykema et al. on October 19, 2006.
    • Publication/Filing Date: Publication: 2006-10-19; Filing: 2006-05-05.
    • Brief Description: This publication describes sending data from a server to a wireless device for display on a browser, with adaptation of data to the device's display capabilities.
    • Potential Anticipated Claim(s): Potentially anticipates claims related to the server sending compiled content or basic commands tailored to the device's rendering capabilities (e.g., claims 1, 11, 16) in US8478245.

14. US20060248208A1

    • Full Citation: US20060248208A1, "System and method for providing content to wireless devices", published to Dykema et al. on November 2, 2006.
    • Publication/Filing Date: Publication: 2006-11-02; Filing: 2006-03-24.
    • Brief Description: This publication describes a system and method for delivering content to wireless devices, including adapting the content based on device characteristics, similar to other Dykema applications.
    • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245 concerning server-side content processing and delivery of device-adapted content.

15. US20070118671A1

    • Full Citation: US20070118671A1, "Method and apparatus for dynamically generating content for display on a wireless device", published to Dykema et al. on May 24, 2007.
    • Publication/Filing Date: Publication: 2007-05-24; Filing: 2006-11-20.
    • Brief Description: This publication describes dynamically generating and adapting content on a server for display on a wireless device based on the device's characteristics and capabilities.
    • Potential Anticipated Claim(s): Strongly anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245, particularly server-side execution of an application, dynamic content generation, and tailoring content (e.g., basic commands) based on device profiles.

16. US20070130541A1

    • Full Citation: US20070130541A1, "System and method for delivering content to a mobile device", published to Dykema et al. on June 7, 2007.
    • Publication/Filing Date: Publication: 2007-06-07; Filing: 2006-11-20.
    • Brief Description: This publication details a server-based system and method for delivering tailored content to mobile devices, recognizing device capabilities and optimizing content accordingly.
    • Potential Anticipated Claim(s): Potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245 concerning server-side content adaptation and delivery to wireless devices.

17. US20070198705A1

    • Full Citation: US20070198705A1, "Method and apparatus for dynamically generating content for display on a wireless device", published to Dykema et al. on August 23, 2007.
    • Publication/Filing Date: Publication: 2007-08-23; Filing: 2007-03-14.
    • Brief Description: This publication describes a system and method for a server to dynamically generate and adapt content for display on a wireless device based on its features and capabilities.
    • Potential Anticipated Claim(s): Highly relevant and potentially anticipates method claims (e.g., claim 1), system claims (e.g., claim 11), and wireless device claims (e.g., claim 16) of US8478245, particularly server-side execution of an application, dynamic content generation, and tailoring content (e.g., basic commands) based on device profiles.

Non-Patent Citations

1. BREW-Architecture

   • Full Citation: BREW-Architecture [online], Jun. 13, 2007, [retrieved on Jul. 25, 2007]. Retrieved from the internet: URL: htp://brew.qualcomm.com/brew/en/what_is_brew/arch.html.
   • Publication/Filing Date: Published online June 13, 2007.
   • Brief Description: This document describes the architecture of Qualcomm's Binary Runtime Environment for Wireless (BREW) platform, outlining how applications are developed and run on BREW-enabled devices.
   • Potential Anticipated Claim(s): While not directly anticipating the server-side methods or custom configuration, it provides background on the client-side environment (e.g., the J2ME/BREW 104 layer described in US8478245) and the capabilities of wireless devices to receive and render application content, which could be relevant for obviousness considerations.

2. J2ME Architecture

   • Full Citation: J2ME Architecture [online], Jun. 13, 2007, [retrieved on Jul. 25, 2007]. Retrieved from the internet: URL: htp://java.sun.com/j2me/docs/j2me_arch.html.
   • Publication/Filing Date: Published online June 13, 2007.
   • Brief Description: This document outlines the architecture of Java 2 Platform, Micro Edition (J2ME), a Java platform for developing applications for mobile and embedded devices, covering APIs and deployment models for resource-constrained devices.
   • Potential Anticipated Claim(s): Similar to BREW-Architecture, this reference provides foundational knowledge on the client-side J2ME environment and known methods for running applications and displaying content on wireless devices, contributing to the understanding of the state of the art for obviousness arguments.

An analysis of obviousness for US Patent 8478245 under 35 U.S.C. § 103 is significantly constrained by the unavailability of the full claim text of the patent and the specific prior art references that were used in the PTAB and Federal Circuit proceedings. However, based on the provided information, the patent has already faced challenges regarding obviousness.

PTAB Obviousness Finding

In IPR2023-00758, Netflix, Inc. v. GoTV Streaming, LLC, the Patent Trial and Appeal Board (PTAB) issued a Final Written Decision on November 5, 2024. In this decision, the PTAB held claim 16 and other claims of US8478245 unpatentable for obviousness, while upholding other claims.

The specific combinations of prior art references used by the PTAB to reach this conclusion, and the detailed motivation to combine them, are not provided in the given snippets. However, the PTAB's finding confirms that at least some claims of US8478245 were deemed obvious by a person having ordinary skill in the art when considering relevant prior art.

Impact of Federal Circuit's § 101 Invalidity Ruling

It is critical to note that subsequent to the PTAB's decision, the Federal Circuit found the asserted claims of US8478245 (along with related patents US8989715 and US8103865) to be invalid under 35 U.S.C. § 101 on February 9, 2026. The Federal Circuit determined that these claims were "directed to nothing more than the abstract concept of using a template that can be adjusted to fit a user's specific constraints."

This § 101 invalidation effectively negates the patentability of all asserted claims of US8478245 at a fundamental level, regardless of any obviousness analysis. While a § 103 analysis focuses on whether an invention would have been obvious given existing prior art, a § 101 analysis determines whether the subject matter is even eligible for patenting in the first place. The Federal Circuit's decision means that even if a claim were considered novel and non-obvious, it would still be invalid if it describes an abstract idea without an inventive concept.

General Considerations for Obviousness (§ 103)

In general, to demonstrate obviousness under 35 U.S.C. § 103, one must show that the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. This often involves:

1. Identifying a primary prior art reference: This reference typically discloses most of the claimed elements.
2. Identifying secondary prior art references: These references disclose the remaining claimed elements or modifications.
3. Providing a motivation to combine: An explanation of why a person having ordinary skill in the art would have been motivated to combine the teachings of the references to arrive at the claimed invention, with a reasonable expectation of success. Motivations can include explicit suggestions, market pressures, design choices, known techniques to improve existing devices, or solving a known problem.

The patent's description, which discusses rendering content on a wireless device where a server tailors generic application output based on device capabilities and uses a custom configuration to customize the "look and feel," indicates that prior art in wireless communication, content rendering, client-server architectures, and customizable user interfaces would be relevant. The "Prior art keywords" from the Google Patents entry ("wireless device", "rendering", "content", "application", "custom configuration") also point to these broad areas.

However, without the specific claim language and the detailed prior art relied upon by the PTAB, a direct and specific obviousness analysis cannot be performed by this report beyond acknowledging the PTAB's finding on claim 16 and other claims. The Federal Circuit's § 101 decision, however, provides a more fundamental ground for invalidity of the asserted claims.