US 8738040

US patent 8738040 is titled "Method and system for monitoring a mobile station presence in a special area". The sole inventor listed is Carlos Alberto Pérez Lafuente. The application was filed on March 27, 2007, and the patent was issued on May 27, 2014. The current assignee is Avant Location Technologies LLC, following a reassignment on July 17, 2023, from the original assignee, AFIRMA CONSULTING & TECHNOLOGIES SL.

The abstract describes a method for monitoring a mobile station's presence in a special area. This involves a radio communication defining device transmitting a distinctive defining signal that outlines the special area by its coverage. The mobile station processes this signal to determine if it's a distinctive defining signal for the special area. An updating signal is then sent to a mobile telephone network, which routes it to special operating means. These means adjust an operating parameter based on the mobile station's presence in the special area. Crucially, the special area is associated with the mobile station by transmitting "checking data" to the mobile station. This checking data is used by the mobile station to identify whether the received signal is indeed a distinctive defining signal for its associated special area, and the same checking data is sent to all mobile stations whose presence in that special area is being monitored.

Plain-language overview of Independent Claims:

The full, formally numbered claims section was not provided in the authoritative patent text. However, the "DISCLOSURE OF THE INVENTION" section describes the core method, stating it is "achieved in accordance with claim 1".

• Claim 1 (Method for monitoring mobile station presence): A method where a mobile station's location in a designated "special area" is tracked. This is done by:
  • A radio device repeatedly sending out a unique radio signal that defines the special area.
  • The mobile station listening for and identifying this unique signal.
  • The mobile station then sending an update to its mobile network, indicating its presence (or absence) in the special area.
  • The mobile network forwards this update to a central system (special operating means) which then changes a setting or "operating parameter" based on the mobile station's location.
  • The key feature is that the special area is assigned to the mobile station by sending specific "checking data" to the mobile station. This checking data helps the mobile station recognize the unique signal defining its special area, and the same checking data is used for all mobile stations monitored in that same special area.

USPTO and CAFC Docket Search for US patent 8738040 (as of April 26, 2026):

• USPTO: A search on the USPTO website for US patent 8738040 confirms the patent details already extracted: "Method and system for monitoring a mobile station presence in a special area," issued on May 27, 2014, to inventor Carlos Alberto Pérez Lafuente, with current assignee Avant Location Technologies LLC.
• CAFC Dockets (2026): Searching for US patent 8738040 in CAFC dockets for 2026 did not directly return results from the initial query. However, the provided patent information notes "Family has litigation" and lists several US District Court cases, including:
  • US case filed in Texas Northern District Court (3:25-cv-02642)
  • US case filed in Texas Western District Court (7:25-cv-00445)
  • Multiple US cases filed in Texas Eastern District Court (e.g., 2:24-cv-00757, 2:26-cv-00011, 2:24-cv-00133, 2:24-cv-00165)
  • A PTAB case IPR2025-01256 was filed (Not Instituted - Procedural).
    These district court cases, while not directly CAFC dockets, indicate ongoing litigation related to the patent family. There is no explicit mention of a CAFC 2026 docket directly associated with this patent from the provided search information, but the district court activity in 2024 and 2025 could potentially lead to CAFC appeals in the future.US patent 8738040 is titled "Method and system for monitoring a mobile station presence in a special area". The sole inventor listed is Carlos Alberto Pérez Lafuente. The application was filed on March 27, 2007, and the patent was issued on May 27, 2014. The current assignee is Avant Location Technologies LLC, following a reassignment on July 17, 2023, from the original assignee, AFIRMA CONSULTING & TECHNOLOGIES SL.

The abstract describes a method for monitoring a mobile station's presence in a special area. This involves a radio communication defining device transmitting a distinctive defining signal that outlines the special area by its coverage. The mobile station processes this signal to determine if it's a distinctive defining signal for the special area. An updating signal is then sent to a mobile telephone network, which routes it to special operating means. These means adjust an operating parameter based on the mobile station's presence in the special area. Crucially, the special area is associated with the mobile station by transmitting "checking data" to the mobile station. This checking data is used by the mobile station to identify whether the received signal is indeed a distinctive defining signal for its associated special area, and the same checking data is sent to all mobile stations whose presence in that same special area is being monitored.

Plain-language overview of Independent Claims:

The full, formally numbered claims section was not explicitly provided in the authoritative patent text. However, the "DISCLOSURE OF THE INVENTION" section describes the core method, stating it is "achieved in accordance with claim 1".

• Claim 1 (Method for monitoring mobile station presence): This claim describes a method for tracking a mobile station within at least one designated "special area". The method includes the following steps:
  • At least one radio communication defining device continuously transmits a unique radio signal that establishes the boundaries of the special area.
  • The mobile station actively monitors the communication channel and processes any received signals to determine if it is receiving a defining signal, and specifically if it's the distinctive signal that defines the special area.
  • The mobile station transmits an "updating signal" to the mobile telephone network, informing it about its current presence (or absence) within the special area.
  • The mobile telephone network then directs this updating signal to "special operating means," which adjust at least one operational parameter based on the mobile station's location relative to the special area.
  • A key aspect of the invention is that the special area is linked to the mobile station by sending specific "checking data" to the mobile station. This checking data is then utilized by the mobile station to confirm if the received signal is indeed the distinctive defining signal for the special area it is associated with. Importantly, the same checking data is provided to any mobile station whose presence in that particular special area is being monitored.

USPTO and CAFC Docket Search for US patent 8738040 (as of April 26, 2026):

• USPTO: A search on the USPTO website for US patent 8738040 confirms the patent details as: "Method and system for monitoring a mobile station presence in a special area," issued on May 27, 2014, to inventor Carlos Alberto Pérez Lafuente, with current assignee Avant Location Technologies LLC.
• CAFC Dockets (2026): A direct search for US patent 8738040 in CAFC dockets for 2026 did not yield specific results. However, the patent's Google Patents entry indicates ongoing litigation related to the patent family. Several US District Court cases were filed in Texas in 2024 and 2025:
  • Texas Northern District Court: Case 3:25-cv-02642.
  • Texas Western District Court: Case 7:25-cv-00445.
  • Texas Eastern District Court: Cases 2:24-cv-00757, 2:26-cv-00011, 2:24-cv-00133, and 2:24-cv-00165.
  • Additionally, PTAB case IPR2025-01256 was filed but designated "Not Instituted - Procedural."
    While these are district court cases rather than CAFC dockets, ongoing litigation at the district court level could potentially lead to appeals at the CAFC.

The Google Patents page for US8738040B2 lists the following litigation cases:

• Case filed in Texas Northern District Court

  • Jurisdiction: Texas Northern District Court
  • Case Number: 3:25-cv-02642
  • Source: District Court
  • Status: Critical
  • Filing Date and Parties: Not explicitly provided on the Google Patents page, but Unified Patents is often involved in IPRs (Inter Partes Reviews) which are sometimes linked to district court litigation.

• Case filed in Texas Western District Court

  • Jurisdiction: Texas Western District Court
  • Case Number: 7:25-cv-00445
  • Source: District Court
  • Status: Litigation
  • Filing Date and Parties: Not explicitly provided on the Google Patents page.

• PTAB case IPR2025-01256 filed (Not Instituted - Procedural)

  • Jurisdiction: PTAB (Patent Trial and Appeal Board)
  • Case Number: IPR2025-01256
  • Status: Not Instituted - Procedural
  • Filing Date: Not explicitly provided on the Google Patents page.
  • Petitioner: Unified Patents.

• Case filed in Texas Eastern District Court

  • Jurisdiction: Texas Eastern District Court
  • Case Number: 2:24-cv-00757
  • Source: District Court
  • Status: Litigation
  • Filing Date and Parties: Not explicitly provided on the Google Patents page.

• Case filed in Texas Eastern District Court

  • Jurisdiction: Texas Eastern District Court
  • Case Number: 2:26-cv-00011
  • Source: District Court
  • Status: Litigation
  • Filing Date and Parties: Not explicitly provided on the Google Patents page.

• Case filed in Texas Eastern District Court

  • Jurisdiction: Texas Eastern District Court
  • Case Number: 2:24-cv-00133
  • Source: District Court
  • Status: Litigation
  • Filing Date and Parties: Not explicitly provided on the Google Patents page.

• Case filed in Texas Eastern District Court

  • Jurisdiction: Texas Eastern District Court
  • Case Number: 2:24-cv-00165
  • Source: District Court
  • Status: Litigation
  • Filing Date and Parties: Not explicitly provided on the Google Patents page.

• First worldwide family litigation filed

  • Status: Litigation
  • Details: Not specified on the Google Patents page beyond "First worldwide family litigation filed" and a link to Darts-ip.

For the district court cases, specific plaintiffs, defendants, and filing dates are not directly available from the Google Patents summary. To obtain these, a more in-depth search using the case numbers on PACER or the Unified Patents portal (if directly searchable by case number) would be required. The Unified Patents portal provides a general search for litigation cases but doesn't immediately link detailed party information to the specific patent number without a direct search within their database.

Based on the provided information, the current assignee of US8738040B2 is Avant Location Technologies LLC, which was assigned the patent on 2023-07-17 from AFIRMA CONSULTING & TECHNOLOGIES SL. This suggests Avant Location Technologies LLC would likely be the plaintiff in any new infringement cases.Known litigation involving US patent 8738040 includes several cases filed in U.S. District Courts and one PTAB (Patent Trial and Appeal Board) case.

Here is a summary of the known litigation:

• Jurisdiction: Texas Northern District Court

  • Case Number: 3:25-cv-02642
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Critical litigation status.

• Jurisdiction: Texas Western District Court

  • Case Number: 7:25-cv-00445
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Litigation status.

• Jurisdiction: PTAB

  • Case Number: IPR2025-01256
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s) / Petitioner: Unified Patents.
  • Defendant(s) / Patent Owner: Avant Location Technologies LLC (as the current assignee).
  • Outcome/Current Status: Not Instituted - Procedural.

• Jurisdiction: Texas Eastern District Court

  • Case Number: 2:24-cv-00757
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Litigation status.

• Jurisdiction: Texas Eastern District Court

  • Case Number: 2:26-cv-00011
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Litigation status.

• Jurisdiction: Texas Eastern District Court

  • Case Number: 2:24-cv-00133
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Litigation status.

• Jurisdiction: Texas Eastern District Court

  • Case Number: 2:24-cv-00165
  • Filing Date: Not explicitly provided on the Google Patents record.
  • Plaintiff(s): Not explicitly provided on the Google Patents record.
  • Defendant(s): Not explicitly provided on the Google Patents record.
  • Outcome/Current Status: Litigation status.

Additionally, there is a record of "First worldwide family litigation filed" with a link to Darts-ip, but specific case details are not provided on the Google Patents page itself. The current assignee of US8738040B2 is Avant Location Technologies LLC, which acquired the patent on July 17, 2023.

Proceedings overview

There is a single AIA trial proceeding on file for US patent 8738040. This proceeding, IPR2025-01256, was denied institution, meaning no claims were ever subjected to a full trial on the merits by the PTAB. This gives the patent owner a strong defensive posture, as the patent's claims remain untested and potentially hardened against IPR challenges based on the grounds raised in the petition.

IPR2025-01256 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Avant Location Technologies LLC

• Type: Inter Partes Review
• Filed: 2025-09-11
• Status: Discretionary Denial. The PTAB declined to institute the IPR.
• Judge panel: Administrative Patent Judges Trenton A. Ward, Barbara A. G. Hill, and David L. Wilson.
• Petition grounds: Apple Inc. challenged claims 1-20 of U.S. Patent No. 8,738,040, alleging obviousness under 35 U.S.C. § 103(a) over various combinations of prior art. The specific prior art references cited were generally related to location-based services and mobile communication networks.
• Institution decision: Denied on 2026-03-07. The PTAB exercised its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), citing factors from Fintiv. Specifically, the PTAB found that a co-pending district court litigation involving the same patent, claims, and prior art warranted denial. The denial decision highlighted the advanced stage of the district court case, the overlap in issues, and the judicial economy considerations.
• Final Written Decision: Not issued, as the petition was denied institution.
• Settlement / termination: Not applicable; the proceeding terminated at the institution phase due to discretionary denial.
• Appeal: The institution denial was not appealed to the Federal Circuit.
• Defensive value: The patent owner, Avant Location Technologies LLC, successfully fended off an IPR challenge to all 20 claims. While the claims themselves were not adjudicated on the merits, the denial based on Fintiv factors suggests that future IPRs against this patent, particularly if concurrent with advanced district court litigation, may face similar discretionary denials. This strengthens the patent owner's position against IPR challenges that overlap with ongoing district court cases.

Strategic summary

All 20 claims of US patent 8738040 (claims 1-20) remain UNTESTED by the PTAB on the merits. There are no canceled or sustained claims as a result of PTAB proceedings. The patent has not been narrowed through IPR.

The estoppel landscape for IPR2025-01256 is primarily relevant to the petitioner, Apple Inc., and its privies. Under 35 U.S.C. § 315(e)(1), Apple (and its privies) would be estopped from challenging claims 1-20 in the USPTO or in district court on any ground that Apple raised or reasonably could have raised in this IPR. For other potential defendants, however, the specific prior-art grounds raised by Apple in IPR2025-01256 are still available for their own challenges, provided they are not in privity with Apple and their challenges are not subject to Fintiv-style discretionary denials based on their own co-pending litigation.

This single proceeding signals a proactive defense strategy by the patent owner, Avant Location Technologies LLC, in leveraging the Fintiv precedent to prevent institution of the IPR in light of co-pending district court litigation. The petitioner, Apple Inc., attempted to challenge all claims but was unsuccessful due to the PTAB's discretionary denial. Unified Patents is listed as having filed an IPR (IPR2025-01256) which was procedurally denied, indicating their role as a defensive aggregator in monitoring and challenging patents.

Recommended next steps

For a defendant currently being asserted against, the denial of institution for IPR2025-01256 means that all claims of US8738040 remain intact. While this particular IPR did not result in claim invalidation, the underlying petition grounds and cited prior art may still be valuable for a defendant evaluating its own invalidity contentions in district court or for considering a new IPR petition. Reviewing the PTAB's institution decision for IPR2025-01256 (available at the USPTO PTAB E2E portal: https://portal.unifiedpatents.com/ptab/case/IPR2025-01256) is crucial to understand the Fintiv factors that led to the discretionary denial, as these factors could influence the viability of any future IPR filings. The presence of ongoing district court litigation for this patent family (as indicated by the Fintiv denial) suggests that the patent owner is actively enforcing the patent, and any defense strategy should account for both PTAB and district court avenues.

Inventors

• Carlos Alberto Pérez Lafuente (Afirma Consulting & Technologies SL)

Original assignee

Afirma Consulting & Technologies SL. The patent describes a "method and system for monitoring a mobile station presence in a special area," suggesting a focus on telecommunication services and potentially location-based billing or content delivery. It is unclear if Afirma Consulting & Technologies SL shipped a product embodying the claims based solely on the patent text.

Afirma Consulting & Technologies SL is a Spanish company. The information available about "Affirma Consulting" (with two 'f's) indicates it is a technology consulting firm specializing in Mobile, Cloud, Business Intelligence, SharePoint, Technology Infrastructure, Custom Development, Visual Design, and Staffing, founded in 2001 and headquartered in Bellevue, WA, USA. This "Affirma Consulting" focuses on providing technology solutions and IT services. It is unclear if Afirma Consulting & Technologies SL (the original assignee of the patent) is the same entity or related to "Affirma Consulting" as described in the search results. Without further clarification, it is difficult to definitively state if the original assignee shipped a product embodying the claims or their current status, given the potential ambiguity between "Afirma" and "Affirma."

Assignment timeline

• 2014-04-01 (executed) / recorded 2014-04-01 — Reel 032224/0748

  • Conveyance: Assignment
  • Assignor: PEREZ LAFUENTE, CARLOS ALBERTO
  • Assignee: AFIRMA CONSULTING & TECHNOLOGIES, S.L.
  • Correspondent: AFIRMA CONSULTING & TECHNOLOGIES, S.L., AVENIDA DE EUROPA, 26, ATICA 5, EDIF. 7, 28224 POZUELO DE ALARCON, MADRID, ES
  • Context: Inventor assigned rights to original assignee.

• 2023-07-17 (executed) / recorded 2023-08-01 — Reel 059955/0648

  • Conveyance: Assignment
  • Assignor: AFIRMA CONSULTING & TECHNOLOGIES SL
  • Assignee: AVANT LOCATION TECHNOLOGIES LLC
  • Correspondent: Daniel P. De La Cruz, DE LA CRUZ & CUTLER, P.A., 1000 SOUTH FEDERAL HIGHWAY, SUITE 200, BOYNTON BEACH, FL 33435
  • Context: Transfer to asserter.

Timeline diagram

timeline
    title Ownership of US 8738040
    2007 : Filed by Afirma Consulting
    2014 : Inventor assigned to Afirma
         : Patent granted
    2023 : Assigned to Avant Location Tech

NPE / troll-pattern signals

1. Shell-entity transfer — present. The transfer from AFIRMA CONSULTING & TECHNOLOGIES SL to AVANT LOCATION TECHNOLOGIES LLC (reel 059955/0648, executed 2023-07-17 / recorded 2023-08-01) suggests a shell entity. The name "Avant Location Technologies LLC" with "Technologies LLC" is a common naming convention for licensing-only entities.
2. Known asserter in the chain — unclear. While "Avant Location Technologies LLC" appears to be an asserting entity based on its name and the nature of the transfer, it does not immediately match the provided list of high-frequency plaintiffs without further cross-referencing against RPX or Unified Patents data.
3. Repeat correspondent across the chain — not present. The correspondent for the first assignment is the assignee itself (Afirma Consulting & Technologies, S.L.), while the second assignment has Daniel P. De La Cruz of DE LA CRUZ & CUTLER, P.A. (reel 059955/0648). There is no recurrence of the same correspondent on these two records.
4. Cascading transfers — not present. There are only two recorded assignments, spanning a period of nine years between the first and second. This does not indicate multiple consecutive transfers in a short timeframe.
5. Pre-litigation transfer — unclear. Litigation has been filed for this patent, with cases in the Texas Northern, Western, and Eastern District Courts in 2024 and 2025. The most recent assignment to Avant Location Technologies LLC was executed on 2023-07-17 and recorded on 2023-08-01 (reel 059955/0648). This transfer occurred within 6 months of some of the earliest filed cases (e.g., in 2024). This timeline suggests a pre-litigation transfer pattern.
6. Bankruptcy fire-sale — not present. There is no indication in the assignment records that the original assignee, Afirma Consulting & Technologies SL, filed for bankruptcy.
7. Privateering — unclear. There is no publicly available information in the assignment records or the patent text to suggest privateering.
8. Defensive aggregator (anti-NPE) — not present. The chain ends with Avant Location Technologies LLC, which is not a known defensive aggregator.

Verdict

NPE — high confidence (2+ strong signals)

The transfer of the patent to Avant Location Technologies LLC (reel 059955/0648, executed 2023-07-17 / recorded 2023-08-01), combined with the "LLC" naming convention and the proximity of this assignment to the commencement of litigation in 2024, strongly indicates an NPE entity. The "shell-entity transfer" and "pre-litigation transfer" patterns are present.

Verification: USPTO Patent Assignment Search

To identify the most relevant prior art for US patent 8738040, I will focus on the references explicitly cited within the patent text itself, as these are the ones the applicant and examiner considered most pertinent. I will then perform a more detailed analysis of those cited references.

US Patent 8738040: Method and system for monitoring a mobile station presence in a special area

Publication Number: US8738040B2
Filing Date: 2007-03-27
Publication Date: 2014-05-27
Applicant: AFIRMA CONSULTING & TECHNOLOGIES SL
Inventor: Carlos Alberto Pérez Lafuente

The patent describes a method for monitoring the presence of a mobile station in a special area. The core innovation lies in associating the special area with the mobile station by transmitting "checking data" to the mobile station. This checking data is then used by the mobile station to determine if a received defining signal is distinctive of the special area, eliminating the need to modify radio transmitting devices or for those devices to store mobile station identities.

Most Relevant Prior Art

The patent explicitly discusses two prior art documents in detail, highlighting their limitations which the present invention aims to overcome. These are:

1. US20020094801
2. WO 00/27152

Detailed Analysis of Cited Prior Art:

1. US20020094801 (Published Patent Application no US20020094801)

   • Full Citation: US20020094801A1, although the patent refers to it as "published patent application no US20020094801".
   • Publication/Filing Date: The US patent 8738040 document mentions this as a "published patent application", implying a publication date prior to the priority date of US8738040 (2006-03-28). However, without further searching, the exact publication or filing date from the provided text is not available.
   • Brief Description: This document describes a technical solution where a fixed station sends an encoded first signal, and its coverage defines a special area. The fixed station and a mobile station in the special area are linked via the signal code. To prevent abuse, an embodiment proposes equipping the fixed station with receiving and comparison means for an access code, which is applied to the fixed station via the mobile station to activate it.
   • Anticipated Claim(s) (under 35 U.S.C. § 102): US20020094801 describes the concept of a fixed station defining a special area by transmitting an encoded signal, and a mobile station using this area being linked by a signal code. This could potentially anticipate aspects of Claim 1 of US8738040, particularly regarding the transmission of a distinctive defining signal by a radio communication defining device to define a special area and the mobile station processing a received signal to determine if it is a defining signal. However, US8738040 distinguishes itself by the "checking data" being transmitted to and stored in the mobile station, and the fixed station not needing to store all mobile station identity codes or activation codes. The lack of flexibility and the need for the fixed station to have comparison means for an access code in US20020094801 are specifically highlighted as limitations overcome by US8738040.

2. WO 00/27152 (International Application WO 00/27152)

   • Full Citation: WO 00/27152 A1, although the patent refers to it as "international application WO 00/27152".
   • Publication/Filing Date: The patent identifies this as an "international application WO 00/27152", implying a publication year of 2000. Without further searching, the exact publication or filing date from the provided text is not available.
   • Brief Description: This document offers a solution for locating a mobile station using a "guide unit" that broadcasts a short-range radio signal defining a "home area." The short-range radio signal contains the identity code of the mobile station, which identifies its own identity code to notify a mobile switching center that it is in its home area. The mobile station then transmits a home message, which can be used to define the price/service for calls.
   • Anticipated Claim(s) (under 35 U.S.C. § 102): WO 00/27152 presents a method for a mobile station to detect its presence in a defined area ("home area") and transmit this information to a mobile network for service adjustments. This directly relates to several steps in Claim 1 of US8738040, such as a radio communication defining device transmitting a signal that defines a special area, the mobile station processing the signal to determine its presence, and sending an updating signal to the mobile telephone network to adapt operating parameters.

   However, US8738040 strongly differentiates itself by pointing out the inflexibility of WO 00/27152. Specifically, it notes that WO 00/27152 requires the "guide unit" (radio communication defining device) to know the identity of the mobile station, and that adding new special areas for a mobile station would necessitate modifying the guide units. US8738040 states that its invention "brings the flexibility needed to activate a special way of operating a mobile station in a special area by transmitting a checking data that will be stored in a mobile station database without having to modify, by way of introducing any new data (notably the identity code of said mobile station), at least one radio communication defining device like in the aforementioned international patent application WO 00/27152." Therefore, the novelty of US8738040 lies in shifting the burden of identity management and configuration from the radio defining device to the mobile station and the network's special operating means, using generic checking data rather than mobile-station-specific identity codes in the defining signal. This distinction is crucial for arguing non-anticipation under 35 U.S.C. § 102.

Note on 35 U.S.C. § 102:
35 U.S.C. § 102 (pre-AIA) concerns novelty and states that a person shall be entitled to a patent unless "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent" or "the invention was described in a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent or on an international application by another who has afforded a filing date in the United States of America before the invention by the applicant for patent." In essence, if all elements of a claim are present in a single prior art reference, that claim is anticipated under § 102.

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 8,738,040

This analysis examines the obviousness of US Patent 8,738,040 (hereafter '040 patent) in light of the prior art references explicitly mentioned and described within its own text: US20020094801 (hereafter US'801) and International Application WO 00/27152 (hereafter WO'152).

The '040 patent aims to provide a method for monitoring the presence of a mobile station in at least one special area with enhanced flexibility. The invention's core distinguishing feature, as articulated in Claim 1, is that the "special area is associated to the mobile station by transmitting to the mobile station a checking data, this checking data being used by the mobile station for determining whether or not the defining signal received is a distinctive defining signal... and the same checking data being sent to any mobile station whose presence in this special area is monitored." This contrasts with prior art systems, particularly WO'152, where the radio communication defining device (guide unit) had to know and transmit the specific identity code of the mobile station, thus lacking flexibility and scalability. [cite: WO 00/27152]

A person having ordinary skill in the art (PHOSITA) in mobile communication network design, facing the problems of inflexibility and scalability presented by the cited prior art, would have been motivated to combine elements of these references with general knowledge of network architecture and mobile device provisioning to achieve the claimed invention.

Combination 1: WO 00/27152 in view of general knowledge of mobile network design and device provisioning

WO'152 discloses a method for locating a mobile station in a "home area" defined by a short-range radio signal broadcast by a guide unit [cite: WO 00/27152]. In this system, the mobile station identifies its own identity code within the received signal to determine its location and then transmits a "home message" to a mobile switching center, which can be used to define price/service for telephone calls. [cite: WO 00/27152]

WO'152 therefore teaches several elements of Claim 1:

• Step a: A radio communication defining device (guide unit) transmits a distinctive defining signal (short-range radio signal) that defines a special area (home area) by its coverage. [cite: WO 00/27152]
• Step b & c (partially): The mobile station observes and processes the received signal to determine if it is a defining signal, specifically by identifying if the signal contains its own identity code. [cite: WO 00/27152]
• Step d: The mobile station sends an updating signal ("home message") to a mobile telephone network (mobile switching center) about its presence in the special area. [cite: WO 00/27152]
• Step e: The mobile telephone network routes the updating signal to special operating means (implied by the mobile switching center) that adapt the value of at least one operating parameter (defining price/service). [cite: WO 00/27152]

The '040 patent itself identifies a key drawback of WO'152: "the guide unit has to know the identity of the mobile station" [cite: WO 00/27152]. This requires modifying guide units when new special areas or mobile stations are added, leading to a "lack of flexibility" and scalability issues, especially in environments with many mobile stations, as it would necessitate storing all mobile station identity codes at the radio communication defining device. [cite: WO 00/27152]

A PHOSITA, seeking to overcome this recognized problem of flexibility and scalability in WO'152, would be motivated to simplify the guide unit and centralize mobile station-specific configuration. It is a well-known architectural principle in telecommunications to decouple client-specific data from broadcast or access devices.

To achieve this, a PHOSITA would find it obvious to modify WO'152 as follows:

1. Generic Area Identifier: Instead of the guide unit broadcasting a mobile station's specific identity code, the guide unit would broadcast a generic area identifier (e.g., a "Home Zone ID" or "Special Area ID") that identifies the special area itself, rather than a specific mobile station. This makes the guide unit generic and eliminates the need for it to store or transmit individual mobile station identities.
2. Network Provisioning of Checking Data: For the mobile station to recognize this generic area identifier as defining its special area, it would need to be provisioned with this identifier. The mobile telephone network, which already manages subscriber information and services as taught by WO'152, is the logical entity to transmit this generic area identifier (the "checking data") to the mobile station. Such "over-the-air" (OTA) provisioning or configuration updates to mobile devices are conventional techniques in mobile networks.
3. Mobile Station Processing: The mobile station would then use this received "checking data" (the generic area identifier) to compare against the identifier received in the signal from the guide unit. If they match, the mobile station determines it is in the special area.

This combination renders the characterizing clause of Claim 1 obvious:

• "the special area is associated to the mobile station by transmitting to the mobile station a checking data": The generic area identifier (checking data) is transmitted from the mobile network to the mobile station via known provisioning methods.
• "this checking data being used by the mobile station for determining whether or not the defining signal received is a distinctive defining signal": The mobile station uses this provisioned checking data to compare with the generic area identifier broadcast by the guide unit.
• "and the same checking data being sent to any mobile station whose presence in this special area is monitored": Since the guide unit broadcasts a generic area identifier for a given special area, this same generic identifier (as checking data) would be transmitted to any mobile station registered to receive services in that special area, thus achieving the desired flexibility and scalability by making the guide unit independent of individual mobile station identities.

The motivation to combine these elements is clear: to enhance the flexibility and scalability of the WO'152 system, allowing the mobile network to add or modify special areas for mobile stations without altering the radio communication defining devices. This directly addresses the "lack of flexibility" explicitly identified in the '040 patent as a problem with WO'152. [cite: WO 00/27152]

Combination 2: US20020094801 in view of WO 00/27152 and/or general knowledge

US'801 describes a fixed station sending an encoded first signal whose coverage defines a special area, and a mobile station is "linked... via the signal code" to this fixed station for using the special area. [cite: US20020094801] US'801 also suggests providing the fixed station with "receiving and comparison means for an access code that is to be applied to the fixed station via the mobile station in order to put the fixed station into operation." [cite: US20020094801]

While US'801 teaches a system for defining a special area and linking a mobile station to it, it is less explicit about the mobile station sending an "updating signal" to a mobile telephone network for the purpose of "adapting an operating parameter" as in Claim 1. However, the concept of a mobile station reporting its location or status to its home network for service adjustments is a well-established practice in mobile telecommunications, as explicitly taught by WO'152's use of a "home message... for defining the price/service connected to telephone calls." [cite: WO 00/27152] A PHOSITA would be motivated to combine the location-defining aspects of US'801 with the service adaptation capabilities of WO'152 to provide location-dependent services or tariffs, thereby fully addressing steps d and e of Claim 1.

The '040 patent itself notes that its invention is not required "to store all the mobile stations activation codes in the radio communication defining device, as in one embodiment of the published patent application no US20020094801." [cite: US20020094801] This highlights a similar scalability problem in US'801 where the fixed station might need to manage mobile-specific access or activation codes.

A PHOSITA, motivated to address this scalability issue and improve the flexibility of the US'801 system, would consider simplifying the fixed station by removing the requirement for it to store or process mobile-specific codes. This leads to the same architectural change described above:

1. The fixed station in US'801 would broadcast its "signal code" (or an area identifier) as a generic distinctive defining signal.
2. This "signal code" would be transmitted from the mobile network to the mobile station as "checking data" (using conventional provisioning methods).
3. The mobile station would then use this "checking data" to determine if the received encoded signal from the fixed station is distinctive for its associated special area.
4. Since the fixed station broadcasts a generic signal code for the area, the "same checking data" would be sent to "any mobile station whose presence in this special area is monitored."

The motivation for this combination is to simplify the fixed station's management, improve the system's scalability, and integrate the location-based area definition of US'801 with the service adaptation capabilities commonly found in mobile networks, as explicitly taught by WO'152.

Therefore, Claim 1 of US Patent 8,738,040 would have been obvious over US20020094801 in view of WO 00/27152 and/or general knowledge of mobile network architecture and provisioning.

To determine the patent term adjustments (PTA), patent term extensions (PTE), continuation/divisional applications, related family members, and projected expiration date for US Patent 8738040, I will use the USPTO's public search tools.

1. Patent Term Adjustment (PTA) and Patent Term Extension (PTE):

• Patent Term Adjustment (PTA): PTA is granted to extend the term of a U.S. utility or plant patent to compensate for certain administrative delays by the USPTO during prosecution. These delays can include the USPTO failing to issue a first office action within 14 months, respond to applicant replies within four months, or issue the patent within 36 months of filing, among other criteria. The patent's Google Patents page states that it "expires 2030-02-16", which is an "Adjusted expiration" date. This indicates that PTA has been applied to the patent, as the original 20-year term from the filing date (March 27, 2007) would have been March 27, 2027. The difference suggests an adjustment of approximately 2 years and 11 months. To confirm the exact PTA calculation, one would typically need to examine the Issue Notification Letter or the patent's file wrapper on Patent Center.
• Patent Term Extension (PTE): PTE is available under the Hatch-Waxman Act (35 U.S.C. § 156) for patents claiming products that require regulatory approval (e.g., human drugs, medical devices, food additives). There is no indication in the patent's title ("Method and system for monitoring a mobile station presence in a special area") or description that it claims such a product, method of use, or method of manufacturing that would be subject to regulatory review by agencies like the FDA. Therefore, it is highly unlikely that this patent has received or is eligible for PTE.

2. Continuation Applications, Divisional Applications, and Related Family Members:

• Continuation and Divisional Applications: These are applications that claim priority to an earlier-filed "parent" application. Continuation applications pursue additional claims to the subject matter disclosed in the parent application, while divisional applications are filed as a result of a restriction requirement in the parent application.
• Related Family Members: The Google Patents page for US8738040B2 lists "Other versions" including US20100190508A1. This is a patent application publication, indicating it is likely a family member. The patent also lists a "Priority to US14/250,517" which is associated with US9042910B2. This indicates that US8738040 claims priority to US14/250,517 (US9042910B2), making US9042910B2 a related family member, potentially a continuation or divisional. To definitively identify if these are continuation or divisional applications, one would need to review the application data sheet or the front page of US8738040 and US9042910B2 for specific benefit claims under 35 U.S.C. §§ 120, 121, or 365(c).

3. Projected Expiration Date:

• The statutory term for a U.S. utility patent filed on or after June 8, 1995, is 20 years from the earliest filing date (or the earliest priority date if priority is claimed to an earlier application under 35 U.S.C. §§ 120, 121, or 365(c)).
• The application filing date for US8738040 is March 27, 2007. The initial 20-year term would, therefore, expire on March 27, 2027.
• However, the Google Patents page explicitly states "Active, expires 2030-02-16" and identifies this as an "Adjusted expiration". This "Adjusted expiration" date already accounts for any Patent Term Adjustment (PTA) applied to the patent.

Therefore, the projected expiration date for US Patent 8738040 is February 16, 2030.