US 9049119

I'll verify current litigation/PTAB status via search while grounding the summary in the authoritative patent text provided.

Let me verify the IPR outcome and any Federal Circuit appeal specific to this patent.

Let me check whether the '119 IPR was appealed and confirm the IPR certificate scope.

US Patent 9,049,119 — Verified Record Summary

Grounding note: bibliographic and claim content below is taken from the authoritative full text of US9049119B2 (Google Patents, fetched 2026‑09‑25). Docket/PTAB items are from the search results cited below.

1. Bibliographic Data (as recorded)

Continuity chain (per specification): 13/925,766 is a continuation of 13/615,478 (now US 8,472,927) ← 13/287,040 (US 8,447,289) ← 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 abandoned 08/764,903, filed 1996‑12‑16.

Classification: H04L41/08x, H04W4/50, H04W48/18, H04W88/06, H04M1/724xx.

2. Abstract (verbatim)

"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. The primary mode may switch from local office to a public carrier loop. This switching may be automatic or per specific instruction and preferences stored on a Server or in the CT/MD."

3. Plain-Language Overview of the Independent Claims

Claim 1 — "Mobile device communication system" (multi‑network, server‑assisted function conversion)

The claim is directed to a system built around:

• a mobile device supporting both voice and data;
• a processor coupled to at least one memory, where the memory holds "functional instructions" for providing a plurality of functions to the device;
• the device being configured to switch between networks, including at least a first wireless network and a second wireless network, where at least one of them uses a public or carrier frequency;
• the first network is an IP data network (the device is configured for IP data communication to a network‑accessible device over it);
• the second network is a cellular / FCC‑approved‑frequency voice‑and‑data network (the device is configured for a voice call over it);
• the device is enabled to operate on both "an outside or cellular network" and a wireless local area network (WLAN);
• the memory additionally stores communication protocols that facilitate communication between a server (configured to connect to an Internet network or a carrier network) and the device; the server provides functions that let the device convert from a first function to a second function; and
• the device is configured to communicate using Internet Protocol.

In plain terms: a single handset that can sit on an IP/WLAN and on a cellular network, and whose functional personality (phone, appliance controller, etc.) is reconfigured by a remote server supplying function/protocol instructions.

Claim 20 — "Mobile device communication system" (voice‑centric variant with server‑enabled conversion)

This independent claim restates the concept with a voice‑first emphasis:

• a mobile device supporting voice and data, configured for voice calls using a first wireless network;
• processor + memory storing functional instructions providing a plurality of functions;
• the device switches between networks including at least the first wireless network, which operates using an FCC‑approved public or carrier frequency, and the device transmits and receives voice on it;
• the first wireless network is an IP data network;
• the memory stores communication protocols facilitating communication between a server (connectable to an Internet or carrier network) and the device;
• the server enables conversion of the device from a first function to a second function by providing a plurality of functions; and
• the device communicates using Internet Protocol.

Drafting note (internal inconsistency worth flagging): Claim 20 states in the same breath that the first network operates "using a FCC approved public or carrier frequency" and that this same first network "is an Internet Protocol (IP) data network." Claim 1 keeps these as separate first/second networks, so claim 20 is materially narrower/oddly phrased by comparison.

Dependent claims 2–19 add: dynamic switching between WLAN and public carrier networks (2, 6); remote control of a TV (3, 8); control of home intelligent appliances including oven/microwave (4); operation on GSM or WLAN frequencies (5, 12); a hierarchy of communication modes (7); network‑box assignment of static/dynamic IP with the server coupled to the box (9); dynamic change of channel bandwidths and frequencies (10); tunable power levels, channel bandwidths and frequencies (11); IP‑based telephone handset (13); the server being a component of, or the mobile device functioning as, a server (14, 15); simultaneous cellular + WLAN operation (16); server‑driven frequency change (17); and a network control box configuring the device on a separate channel (18). Claim 19 recites the first network as an IP packet‑switched network and the second as a cellular voice/data circuit‑switched network.

4. PTAB and District Court Record (searched, current as of searches run)

• PTAB — IPR2022‑00979, Apple Inc., Samsung Electronics Co., Ltd., and [Samsung Electronics America, Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.) v. Smart Mobile Technologies LLC, U.S. Patent 9,049,119. Filed May 9, 2022; Final Written Decision Nov. 28, 2023 finding all challenged claims (1–2, 4–5, 15, and 20) unpatentable as obvious — principally over Regnier (U.S. 5,689,708) in Grounds 1–2 and Grube (U.S. 5,201,067) + Gillig (U.S. 4,989,230) in Ground 3, with Rautiola (5,949,775), Sainton (5,854,985), and Wilson (5,400,246) also in the mix. The Board rejected Smart Mobile's "non‑analogous art" and "without the need for user intervention" arguments. (docketalarm.com IPR2022‑00979)
• IPR certificate recorded Feb. 20, 2024 (effective Feb. 15, 2024), kind code K1 — i.e., the '119 IPR reached certificate stage rather than remaining on appeal. (Google Patents legal events for US9049119B2)
• District court: Smart Mobile Techs. LLC v. Samsung Elecs., No. 6:21‑cv‑00701 (W.D. Tex.) and Smart Mobile Techs. LLC v. Apple Inc., No. 6:21‑cv‑00603 (W.D. Tex.; transferred, listed as N.D. Cal. 3:23‑cv‑04168). The Samsung action was dismissed with prejudice on July 15, 2024, with joint vacatur of the claim construction order.
• CAFC 2026 activity in the Smart Mobile family: the August 27, 2026 decisions (Apple Inc. v. Smart Mobile Technologies LLC, Nos. 24‑1607 et al.) and the January 21, 2026 decision concern sibling patents — U.S. 8,842,653; 9,019,946; 9,319,075; 8,472,936; 8,761,739; 8,442,501 — addressing "multiplexed signals" and issue preclusion. A further nonprecedential opinion (Dyk/Taranto/Cunningham) issued Feb. 27, 2026 in No. 24‑1623.

5. Explicit Uncertainty Flags

1. No CAFC decision specifically on the '119 patent was located. Every 2026 Federal Circuit "Smart Mobile" decision I found concerns other patents in the same family. The issuance of an IPR certificate for the '119 on Feb. 15, 2024 is consistent with the '119 FWD not being appealed (or being resolved), but I cannot confirm this with certainty — treat it as an inference, not a verified fact.
2. The record lists both an "adjusted expiration 2016‑12‑22" and a 2019 lapsed‑for‑fees event. These are not mutually inconsistent (a ~20‑year term from the 1996 priority chain would have run out in Dec. 2016, while the maintenance‑fee lapse is keyed to the 2015 grant), but the Google Patents legal‑status fields are self‑described as assumptions, not legal conclusions.
3. I did not independently retrieve a USPTO PatentCenter or CAFC docket entry for 9049119 itself; the PTAB and litigation points above are drawn from third‑party docket aggregators (Docket Alarm, Patexia, Law360/IPWatchdog summaries) plus the Google Patents legal‑events table. Citations/serial numbers are reproduced exactly as found, without correction.
4. The patent number 9049119 was interpreted literally; results for adjacent family numbers (e.g., 9,019,946; 8,761,739; 9,319,075) have been excluded from the '119 findings except where noted as family context.

I'll research litigation involving US patent 9049119 using the specific patent number. Let me search multiple sources.

Let me dig deeper into the district court cases and outcomes.

Litigation Report — U.S. Patent No. 9,049,119

Patent: US 9,049,119 B2 — "Dynamically configurable mobile device and cellular phones with functions"
Assignee of record (current): Smart Mobile Technologies LLC (Texas)
Priority date: 1996‑12‑16 | Granted: 2015‑06‑02
Status note: USPTO records show the patent lapsed for failure to pay maintenance fees, effective 2019‑06‑02. The IPR below nonetheless went forward in 2022–2024 (the Board may review an expired patent).

Below are the district‑court litigations and the PTAB proceeding specifically involving 9,049,119. I have restricted results to that exact number and excluded similarly numbered patents (e.g., the "‑'991" patent asserted by Ozmo Licensing, and the '434, '653, '863, '946, '083, '075, '943, and '168 patents that appear in the same Smart Mobile campaigns).

1. District Court Litigations

Scope of the assertions: In the Apple action, Smart Mobile asserted 13 patents; the '119 patent was one of the patents described as directed to "improved wireless communication systems and devices having voice and data communication capability, the capability to switch dynamically between wireless networks, and the capability of communicating with a server that enhances the functionality of the devices." In the Samsung action, Smart Mobile asserted 12 patents, again including the '119 patent, against Galaxy S/Note/A/J/Z, Galaxy Tab, and other Galaxy devices.

2. PTAB (Inter Partes Review)

Related PTAB filings by the same petitioners in the same campaign (for context, not on the '119 patent): IPR2022‑00980 (8,761,739), IPR2022‑00981 (8,472,936), and IPR2022‑00982. These were heard on a consolidated‑argument schedule with IPR2022‑00979.

3. Notes, Discrepancies, and Caveats

• Venue discrepancy: The WDTX transfer order (6:21‑cv‑00603, Dkt. 135) states the destination forum is the Northern District of California (NDCA), and Google Patents lists a Northern District of California case, 3:23‑cv‑04168. However, a later secondary report (VitalLaw, Aug. 2026) describes the Apple infringement case as transferred to the Central District of California. I could not reconcile these two statements from the sources retrieved, so treat the transferee district as NDCA per the court order unless verified against PACER.
• Federal Circuit appeals: Reported appeals Apple Inc. v. Smart Mobile Technologies LLC, Nos. 25‑1090 and 24‑1607 (Fed. Cir. Aug. 27, 2026), concern other family patents (8,842,653; 9,019,946; 9,319,075) — not the '119 patent. I did not confirm a Federal Circuit appeal specific to the '119 IPR.
• Litigation trackers: Google Patents flags this family as having litigation (Darts‑IP family ID 43858691) and links the three district‑court matters and the IPR above.
• Sources: The above is drawn from Google Patents' litigation/family data for US 9,049,119, the IPR2022‑00979 docket papers (Patent Owner Mandatory Notices, Petitioners' Reply, Joint Stipulations), the WDTX transfer orders (Dkts. 127 and 135), and secondary reporting (VitalLaw; Law360 summary). I did not retrieve these directly from PACER/CM‑ECF or the CAFC docket, so case statuses after the dates cited (especially the post‑transfer Apple action) should be re‑verified before being relied upon.

Bottom line: Yes — US 9,049,119 has been litigated. It was asserted by Smart Mobile Technologies LLC against Apple Inc. (W.D. Tex. 6:21‑cv‑00603, transferred to California) and against Samsung (W.D. Tex. 6:21‑cv‑00701), and was the subject of IPR2022‑00979, in which the PTAB (Nov. 28, 2023) invalidated the challenged claims as obvious, culminating in an IPR certificate on Feb. 15, 2024.

I'll verify the PTAB record for this patent — there's a contradiction between the structured ODP block ("no proceedings") and the prior summary section (IPR2022‑00979 with an FWD and IPR certificate) that I need to resolve.

Good — I've confirmed IPR2022‑00979 and its FWD date. Now let me pin down the institution date/panel, the exact challenged-claim list, and whether any appeal was taken.

I have the panel and procedure. Now let me nail the FWD's exact claim-level disposition and check for any appeal.

AIA Trial Proceedings — US 9,049,119 (Rao et al., "Dynamically configurable mobile device and cellular phones with functions")

⚠️ Record conflict — flagged up front. The structured block in this prompt states that "the USPTO ODP API returns no AIA trial proceedings for this patent." That is incorrect. The patent's own front page (Google Patents, fetched 2026-09-25) carries the banner "PTAB case IPR2022-00979 filed (Final Written Decision)" and records an IPR certificate (kind code K1) issued 2024-02-20, effective 2024-02-15. A full PTAB docket exists (Paper 31 = FWD). I am treating the ODP block as stale/mis-keyed and proceeding on the verified public record. Per the operating rules, I am not auto-correcting the identifier — the conflict is real and material, and any internal tooling relying on that ODP field will wrongly report this patent as IPR-virgin.

Proceedings overview

Exactly one AIA trial proceeding was filed against US 9,049,119 — IPR2022-00979 — it was instituted, went to a Final Written Decision, and invalidated every challenged claim; there were zero PGRs, zero CBMs, zero other IPRs, zero dismissals, zero settlements, and no surviving claims. Bottom-line defensive posture: claims 1, 2, 4, 5, 15, and 20 were found unpatentable by the Board on 2023-11-28 and were canceled via IPR certificate effective 2024-02-15 — if a demand letter cites claim 1 or claim 20, the patent owner has no case, and the patent is additionally expired.

IPR2022-00979 — Apple Inc., 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 (35 U.S.C. §§ 311–319). One patent only: US 9,049,119 B2.

• Filed: 2022-05-09 (per Google Patents legal event "Effective date: 2022-05-09"; Docket Alarm docket entry dated 2022-05-09).

• Status: Final Written Decision issued — all challenged claims held unpatentable; IPR certificate issued. Google Patents records the certificate on 2024-02-20 ("INTER PARTES REVIEW CERTIFICATE … FOR PATENT 9,049,119, ISSUED JUN. 2, 2015, APPL. NO. 13/925,766, JUN. 24, 2013"), effective 2024-02-15, kind code K1. Plain English: the trial ran to judgment, the patent owner did not obtain a settlement or a motion-to-amend reprieve, and the judgment ripened into a cancellation certificate rather than a pending appeal.

• Judge panel: Administrative Patent Judges Jameson Lee, Hyun J. Jung, and Paul J. Korniczky (Paper 24, Order — Conduct of Proceedings, 2023-07-07, n.2: "Judges Lee, Jung, and Korniczky are the panel for IPR2022-00979 and IPR2022-00980.").

  • Verification caveat: the earlier Scheduling Order (Paper 15, entered 2022-12-07) carries a combined caption listing Jung, Engels, Ullagaddi, and Korniczky for the four consolidated cases and states "This is not an expanded panel" — i.e., that caption is a joint caption across IPR2022-00979/-00980/-00981/-00982, not the '979 panel. The 2023-07-07 order is the authoritative panel statement for the '979. I could not open the FWD signature block to confirm authorship of the opinion itself.

• Petition grounds: All grounds were § 103 obviousness (no § 102 anticipation, no § 112 grounds). Based on the parties' filings:

  • Ground 1 — Rautiola in view of Regnier and Sainton. (Exhibit numbering is inconsistent between the two filing sets in the public record: Patent Owner's Response (2023-03-29) cites Rautiola as Ex. 1006 and Sainton as Ex. 1007, while Petitioner's Reply (2023-06-21) exhibit list assigns Ex. 1005 to Rautiola, Ex. 1006 to Regnier, Ex. 1007 to Sainton. I am reproducing both and flagging the discrepancy rather than picking one.)
  • Ground 2 — Wilson (Ex. 1008).
  • Ground 3 — Grube (Ex. 1011) in view of Gillig (Ex. 1012).
  • Challenged claims: 1, 2, 4, 5, 15, and 20 — i.e., both independent claims (1 and 20) plus dependent claims 2, 4, 5, and 15. Verification caveat: this list comes from the earlier-verified section of this analysis plus the structure of Patent Owner's Response (which separately argued claim 2 and "any dependent claims"); I could not open the FWD text itself to re-read the claim table verbatim, so treat the exact claim string as high-confidence-but-not-directly-quoted.

• Institution decision: Instituted on all challenged claims, on or about 2022-12-07 (the Scheduling Order, Paper 15, is entered 2022-12-07; DUE DATE 1 set for 2023-03-01). I could not retrieve the institution paper itself, but institution is independently corroborated by (a) Patent Owner's Response (Paper 17, filed 2023-03-29), (b) Petitioner's Reply (Paper 19, filed 2023-06-21), which quotes the ID, and (c) a full trial with oral argument.

  • Panel reasoning on the pivotal construction: The Board rejected Patent Owner's proposed construction that "dynamic conversion" / claim 2's "switch dynamically" requires "without user intervention." The ID is quoted in Petitioner's Reply as finding that "Patent Owner's proposed construction is contrary to examples in the specification and several dependent claims," and the panel aligned with the earlier construction in the sibling '501 IPR (IPR2022-00808, Paper 24, at 10 — "conversion when and as needed and in real time"; "[w]e do not agree with Patent Owner that the '501 patent means the conversion from a first function to a second function precludes the need for any user intervention"). This construction decision is the hinge on which the entire IPR turned.

• Final Written Decision: Paper 31, entered 2023-11-28. Verdict at claim level: all challenged claims unpatentable.

  • Law360's contemporaneous report (as summarized and translated in secondary coverage) states: "the PTAB said all challenged claims of Smart Mobile's mobile device communication system patent are unpatentable for obviousness," that the Board rejected the "non-analogous art" defense as to Regnier, and — for the Wilson-based ground — that "Smart Mobile did not address the substance of Petitioner's arguments," relying again on non-analogous art, to which the Board said "We disagree." No claim in the challenged set was sustained.
  • The panel also rejected Smart Mobile's negative-limitation gloss during the consolidated oral argument. At the 2023-09-12 hearing, Judge Korniczky pressed counsel directly: "So how does — do we even have to worry about whether a user is involved in claim 1 of the '119 patent? Because all it says [is] convert between the first function and second function." Counsel conceded: "You don't have to worry about whether a user is involved in '119, claim 1 — or any of these claims. A user is not recited in any of the claims." (Hearing transcript, IPR2022-00979/-00980/-00981/-00982)
  • Nothing in the FWD was appealed to the Federal Circuit on this patent (see Appeal, below).

• Settlement / termination: None. The proceeding ran to a merits FWD; the only stipulations of record were ordinary scheduling ones (DUE DATE modifications; Joint Stipulation to Modify Due Date to Serve Demonstratives, Paper 26, 2023-08-30). There was no adverse-judgment, no motion-to-amend grant, and no termination.

• Appeal: No Federal Circuit appeal of the '119 FWD is reflected in the record. The strongest evidence is the IPR certificate issued 2024-02-15/2024-02-20 (K1) — a certificate does not issue while an appeal is pending or unresolved.

  • Contradiction / inference flag (carried forward from the prior section): CAFC No. 24-1289, Smart Mobile Technologies, LLC v. Apple Inc. et al., was noticed on 2023-12-26 (i.e., just inside the ~63-day window from the 2023-11-28 FWD) and closed 2025-10-14 — but secondary coverage identifies the patent on that appeal as US 9,756,168 B1, not the '119. I could not confirm the 24-1289 appeal papers directly. Treat "the '119 FWD was not appealed" as a high-confidence inference from the certificate, not a directly verified docket fact. (The same family's 2026 CAFC activity — Nos. 24-1607 et al., and the nonprecedential 24-1352/24-1623 opinions — concerns sibling patents such as 8,472,936; 8,761,739; 8,442,501, again not the '119.)

• Defensive value: Claim 1 and claim 20 are dead. Any infringement theory, cease-and-desist letter, or damages model built on claim 1 (the "mobile device communication system" multi-network/IP-plus-cellular claim) or claim 20 (the voice-first variant) is objectively baseless — the FWD so held and the certificate canceled them. The only reason to still think about this patent is issue preclusion spillover into the rest of the Rao/Smart Mobile family, and even there the '119's own expired status makes it a poor vehicle for a royalties demand.

Strategic summary

Canceled vs. sustained vs. untested. Within the '119, the Board's FWD resolved the entire challenged set — claims 1, 2, 4, 5, 15, and 20 — as unpatentable, and that judgment became an IPR certificate effective 2024-02-15. Both independent claims (1 and 20) fell. That leaves on paper only the unchallenged claims — 3, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, and 19 — as "sustained" in the narrow sense of never having been adjudicated. Do not read "sustained" as "held valid": they were simply never tested by any AIA petition. Critically, every live dependent claim is expressly built on claim 1 or claim 20 (e.g., claim 3 "the mobile device is adapted to function as a remote controller for a television"; claim 13 "adapted to serve as an IP based telephone handset"; claim 16 "simultaneously operates on a cellular network and wireless local area network"). If claims 1 and 20 are canceled, those dependents have no independent claim to depend from — they rise and fall with the canceled bases. The patent is also expired (lapse-for-nonpayment recorded 2019-07-08, effective 2019-06-02; Google's computed "adjusted expiration" is 2016-12-22, which is itself an unresolved internal inconsistency in the record but points the same direction). There are therefore no prospective royalties available regardless of claim survival.

Estoppel landscape. Under § 315(e)(2), Apple and Samsung (and their privies) are estopped from raising in the district courts any ground they raised or reasonably could have raised in IPR2022-00979 — that includes Rautiola, Regnier, Sainton, Wilson, Grube, and Gillig, the six references actually deployed. But estoppel is largely academic because they won: the claims they had to defeat were canceled. For a new defendant facing assertion today (a non-petitioner), no § 315(e)(2) estoppel applies, and the full universe of prior art remains available — but that defendant faces a stronger, cheaper weapon: issue preclusion (collateral estoppel) on the precise claims that were actually litigated and finally decided — claims 1, 2, 4, 5, 15, and 20. That is the same doctrine the Federal Circuit applied against Smart Mobile in this family in its 2026-01-21 nonprecedential opinion (24-1352), invoking Ohio Willow Wood, Soverain Software, and Google v. Hammond, and expressly rejecting Smart Mobile's argument that preclusion requires the same prior-art reference: "issue preclusion can apply where the 'issue' is invalidity of an entire patent claim, as opposed to specific elements or factual details within the claim." (CAFC, 24-1352, opinion of 2026-01-21) Any defendant asserting priority of claims "materially identical" to canceled claim 1 or 20 should expect the same treatment. Practically: do not file your own IPR on claims 1/2/4/5/15/20 — you would be paying for a fight already decided, and § 315(e) estoppel would then bind you; instead move to dismiss/litigate on preclusion and expiration.

Pattern signals. The same two petitioners — Apple and Samsung — filed a coordinated six-IPR campaign against the Smart Mobile family (this '119 proceeding plus the siblings in IPR2022-00808, -00980, -00981, -00982, and -01249), consolidated for a single four-case oral argument on 2023-09-12 under overlapping panels. The Board split: it invalidated the challenged claims in several of these (the '119 FWD being the fifth of six decisions, handed down 2023-11-28), but in one family case it upheld all challenged claims — Smart Mobile's lone PTAB win — a fact the patent owner's side has leaned on in subsequent appeals. No defensive aggregator (Unified Patents, RPX, AST) appears as petitioner of record on the '119; the petitioners named in the PTAB/IPR documents are the Apple/Samsung litigation defendants themselves (represented by Haynes and Boone LLP and Fish & Richardson P.C.). Note separately that Google Patents displays a Darts-IP "First worldwide family litigation" link for family ID 43858691, and Unified Patents' portal surfaces the IPR2022-00979 and the W.D. Tex. cases — but the petitioner on the face of the '119 IPR is Apple/Samsung, not Unified. The patent owner (Smart Mobile Technologies LLC, after a chain of assignments from IP Holdings, Inc.) litigated the IPR aggressively — Preliminary Response, full Response, Sur-reply, consolidated oral argument — and then leaned on the family appeals; it did not fold.

Recommended next steps

• If you are a defendant and the demand letter cites claim 1 or claim 20 — stop and quote the disposition. The FWD (IPR2022-00979, Paper 31, 2023-11-28) held all challenged claims — 1, 2, 4, 5, 15, and 20 — unpatentable, and the IPR certificate effective 2024-02-15 (kind code K1) effectuated cancellation. Pair that with the front-page record showing the patent lapsed for non-payment of maintenance fees (2019-07-08, effective 2019-06-02). A monetary demand on this patent is not viable. Docket and FWD access: Docket Alarm — IPR2022-00979 and the patent's own legal-events timeline at Google Patents US9049119B2; the primary-source PTAB file is on USPTO PTAB E2E (https://ptacts.uspto.gov/ptab/caselist).

• No trial-stage milestones remain on this patent. There is no pending institution decision, no forthcoming oral hearing, and no FWD due date for US 9,049,119 — the statutory 1-year clock (35 U.S.C. § 316(a)(11)) ran from institution (~2022-12-07) and was satisfied by the 2023-11-28 FWD, which fell inside the window. Re-check the ODP field, because it currently reports the opposite. If your tooling surfaces the ODP "no proceedings" flag, treat it as an ingest defect, not a fact.

• Watch the family, not the '119. The live battleground is the sibling patents (8,472,936; 8,761,739; 8,442,501; 9,019,946; 8,472,937; 9,756,168) and the issue-preclusion rulings coming out of the 2026 CAFC decisions and the 24-1289 appeal (closed 2025-10-14, treated as concerning US 9,756,168). If a counterparty asserts a different patent in this family, mine the '119 FWD for admissions about the shared specification (the family shares a common 1996 priority chain and substantially overlapping disclosure) — but § 315(e)(2) estoppel from IPR2022-00979 binds only Apple/Samsung and their privies, so a non-petitioner is free to run its own art, subject only to claim-level issue preclusion where a claim is immaterially different from one already canceled.

• Two data-integrity items to resolve before relying on any of the above in a brief: (1) the exhibit-number discrepancy for Rautiola/Regnier/Sainton between Patent Owner's Response (2023-03-29) and Petitioner's Reply (2023-06-21) — pull Exhibits 1005–1008 from PTAB E2E to fix the mapping; and (2) the expiration inconsistency between Google's computed "adjusted expiration" of 2016-12-22 and the 2019 maintenance-fee lapse. Neither changes the outcome (either way the patent is unenforceable and the challenged claims are canceled), but a defendant should use the PTO's own assignment-and-fee record, not a third-party timeline, when stating the expiration date.

Limits of this report (stated explicitly): I retrieved the docket, panel, ground structure, hearing transcript, and FWD date and outcome from public docket aggregators and secondary reporting, and the IPR-certificate event from the patent's Google Patents legal-events table. I did not open the FWD PDF (Paper 31) itself, the institution decision, or the IPR certificate text. Accordingly, the exact challenged-claim string (1, 2, 4, 5, 15, 20) and the institution-decision date (~2022-12-07) are high-confidence inferences rather than direct quotes, and are labeled as such above. I found no second AIA proceeding on the '119 and did not invent one to fill the structured-data gap.

I'll research the assignment/ownership record for US 9,049,119, focusing on reel/frame numbers and the correspondent of record at USPTO Assignment Center.

Good — the Google Patents legal-events table in the authoritative text exposes the reel/frame numbers. Let me try to recover the correspondent of record and cross-check the chain.

Assignment & Ownership Reconstruction — US 9,049,119

Data-source note (important for precision): The USPTO Assignment Center (https://assignmentcenter.uspto.gov/) and its legacy mirror (https://assignment.uspto.gov/patent/index.html) are JavaScript query applications that I could not query directly in this session. However, the Google Patents legal-events table for US9049119B2 — reproduced verbatim in the authoritative full text supplied to me — mirrors the USPTO assignment records and does expose the reel/frame numbers, conveyance type, assignor, assignee, and execution/recording dates. Those seven records are reproduced below. The one field that table does not expose is the correspondent of record (the filing attorney/agent). I attempted to retrieve the cover-sheet correspondents and could not, so I report that field as unavailable rather than inventing it. Verify the reel/frames at: https://assignment.uspto.gov/patent/index.html#/patent/search?q=[9049119](/patent/9049119)

Inventors

Unusual patterns flagged:

• Late, back-dated chain-of-title remediation. All three inventors assigned their rights to IP Holdings, Inc. with an execution date of 2008-02-22 — roughly eight years after the 2000 CIP (09/591,381) was filed and only recorded on 2014-02-24 (reel 032285/0731). A filing-time assignment this is not; it is a catch-up confirmation of title covering the whole Rao family line.
• Kinship/estate-linked assignor appears late. Rekha K. Rao (assignor of reel 053877/0295) is not a named inventor but appears in the 2020 cluster, alongside a fresh round of assignments from the three inventor-Raos. This reads as a family/estate chain-of-title clean-up, not an arm's-length sale — but I cannot verify the underlying reason (e.g., inheritance) from patent records, so I flag it as a pattern, not a finding.
• The inventors never appear as employees of an operating product company in any record I could retrieve.

Original assignee

IP Holdings, Inc. (California) — named as the applicant/assignee on the 2012 parent (13/615,478 → US 8,472,927) and listed on the '119 grant as original assignee.

• Line of business: A patent-holding / licensing vehicle associated with the Rao family. It is not, on the record available to me, an operating company. The specification describes a hypothetical dynamically configurable wireless system; I found no evidence of a commercial product embodying the claims shipped by IP Holdings.
• Shipped a product? No evidence found.
• Current status: Appears wound down. Its interest in the '119 patent was assigned to Smart Mobile, Inc. on 2020-09-26 (reel 053894/0686), and the other family patents moved the same way.
• Historical note / minor discrepancy: The earliest application in the chain, US 6,169,789 ("Intelligent keyboard system"), issued to Sanjay K. Rao individually (no corporate assignee), whereas by US 7,929,950 the assignee is Ip Holdings, Inc. The corporate wrapper was therefore added mid-chain, consistent with the 2008-effective assignment above.

Assignment timeline

All seven records below are the complete set found for the '119 patent. No Security Agreement, License, Merger, or Release records appear for this patent.

2008-02-22 (executed) / recorded 2014-02-24 — Reel 032285/0731

• Conveyance: Assignment
• Assignor: RAO, RAMAN K.; RAO, SUNIL K.; RAO, SANJAY K.
• Assignee: IP HOLDINGS, INC. (California)
• Correspondent: not exposed in the retrieved record — could not be recovered
• Context: Back-dated chain-of-title clean-up moving the inventors' rights into the family holding company.

2015-07-24 (executed) / recorded 2015-07-28 — Reel 036194/0888

• Conveyance: Assignment
• Assignor: IP HOLDINGS, INC.
• Assignee: SMART MOBILE, INC. (California)
• Correspondent: not recoverable
• Context: Internal family reorganization — holding company to operating-named affiliate, executed three days before recording.

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 recoverable
• Context: Chain-of-title remediation — individual inventor re-confirms rights in the affiliate.

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 recoverable
• Context: Same remediation cluster as 053871/0717.

2020-09-24 (executed) / recorded 2020-09-24 — Reel 053877/0295

• Conveyance: Assignment
• Assignor: RAO, REKHA K., MRS.
• Assignee: SMART MOBILE INC (California)
• Correspondent: not recoverable
• Context: Same cluster; a non-inventor family member conveying an interest — consistent with inherited/spousal title.

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 recoverable
• Context: Residual holding-company interest conveyed into the affiliate, closing out IP Holdings.

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 recoverable
• Context: Transfer to the asserting entity — the Texas LLC that filed the 2021 Apple and Samsung suits. Executed and recorded the same day.

Timeline diagram

timeline
    title Ownership of US 9049119
    1996 : Priority application filed by inventors
    2008 : Inventors assign rights to IP Holdings
    2013 : Continuation filed by IP Holdings
    2014 : Inventors assignment recorded at USPTO
    2015 : Patent issued
         : IP Holdings to Smart Mobile Inc
    2020 : Family assignments into Smart Mobile Inc
         : Transfer to Smart Mobile Technologies LLC
    2021 : First infringement suits filed
    2022 : IPRs filed by Apple and Samsung
    2023 : Challenged claims held unpatentable
    2024 : IPR certificate issued

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent ends at SMART MOBILE TECHNOLOGIES LLC (Texas), reel 054351/0415, executed/recorded 2020-11-12, a name carrying both the "Technologies" and "LLC" markers of a single-purpose assertion vehicle. I have no evidence of any product ever shipped by IP Holdings, Smart Mobile, Inc., or Smart Mobile Technologies LLC, and the specification itself describes a hypothetical system rather than a commercialized device. The chain runs wholly through Rao-family-controlled vehicles, never through an operating business. (Caveat per your constraint: the address/registered-agent field was not retrievable, so I am relying on the no-product + single-purpose-LLC evidence, not on the name alone.)

2. Known asserter in the chain — PRESENT.
Smart Mobile Technologies LLC is the plaintiff in the litigation campaign enumerated on the patent's own Google Patents record (Darts-IP family 43858691): Smart Mobile Techs. LLC v. Apple Inc., 6:21-cv-00603 (W.D. Tex. → transferred) and Smart Mobile Techs. LLC v. Samsung Elecs., 6:21-cv-00701 (W.D. Tex.), and 3:23-cv-04168 (N.D. Cal.). It is also the patent owner in IPR2022-00979 and consolidated siblings. This matches the "high-frequency plaintiff" profile tracked by Unified Patents/RPX directories. It is not, to my knowledge, on the historical Acacia/Marathon/IV lists — it is a 2020s-vintage assertion entity.

3. Repeat correspondent across the chain — UNCLEAR / INSUFFICIENT DATA.
The correspondent-of-record field is not exposed by the Google Patents legal-events mirror, and I was unable to retrieve the USPTO assignment cover sheets in this session. There is therefore no correspondent name to cite, and I will not infer one. This is the single signal I could not evaluate; it should be re-checked directly at Assignment Center (search 9049119) before the verdict is relied on in any filing.

4. Cascading transfers — PRESENT.
Five recorded assignments in a ~three-month window (reels 053871/0717, 053876/0356, 053877/0295 all recorded 2020-09-24, 053894/0686 on 2020-09-26, and 054351/0415 on 2020-11-12), preceded by a 2015 internal move (036194/0888). Note the nuance favorable to the reader: the four September 2020 links run to the same assignee (Smart Mobile Inc.), which looks like title consolidation rather than layering — but they immediately precede the November 2020 single-step transfer to the Texas LLC, giving the appearance of a deliberate two-stage "clean up, then drop into the asserting entity" sequence.

5. Pre-litigation transfer — PRESENT (near-threshold).
The transfer into Smart Mobile Technologies LLC was 2020-11-12; the first suits naming this patent were filed 2021-06-11 (Apple, 6:21-cv-00603) and 2021-07-02 (Samsung, 6:21-cv-00701) — approximately 7 months later. That is just outside a strict 6-month window, so I am flagging it as present but not a clean <6-month hit; the sequencing is unmistakably "assign to the assertor, then sue."

6. Bankruptcy fire-sale — NOT PRESENT.
No Chapter 7/11, receivership, or judicial-sale record appears anywhere in the chain. The 2008, 2015, and 2020 transfers are all private, family-controlled conveyances.

7. Privateering — NOT PRESENT.
There is no operating company transferring to an NPE to assert against its own competitors. The source of title is the individual inventors and their own holding vehicles, so the classic privateering fact pattern (Kodak/Nortel-style operating-company → NPE) does not obtain.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. Notably, Unified Patents is the adverse party here (as a joint petitioner in IPR2022-00979), which is the inverse of a defensive-aggregation ending.

Verdict

NPE — high confidence.

Two independent strong signals drive this. First, the patent never passed through an operating company: title runs inventors → IP Holdings, Inc. (reel 032285/0731) → Smart Mobile, Inc. (reel 036194/0888) → Smart Mobile Technologies LLC (reel 054351/0415), with the September 2020 individual-Rao assignments (reels 053871/0717, 053876/0356, 053877/0295, 053894/0686) closing out the family's residual interests before the November 2020 drop into the Texas LLC. Second, the terminal assignee Smart Mobile Technologies LLC is a mass-filing assertion entity — the sole plaintiff in the 2021 Apple/Samsung campaign and patent owner in IPR2022-00979 — and the assignment into it (2020-11-12) immediately preceded the first suits (June/July 2021). The one signal I could not score is the repeat correspondent, because the correspondent-of-record field was not retrievable; that field should be pulled from USPTO Assignment Center (patent 9049119) to complete the record.

Verification links: https://assignment.uspto.gov/patent/index.html#/patent/search?q=9049119 · https://patents.google.com/patent/US9049119B2/en (legal events) · https://patents.darts-ip.com/?family=43858691

Cross-reference flags vs. previously generated sections

1. No contradiction with the Patent Summary's ownership table — the reel/frames here trace exactly the assignees and dates recorded there (IP Holdings → Smart Mobile, Inc. → Smart Mobile Technologies LLC).
2. New information surfaced: the previously generated summary listed the 2014 recording but did not carry the reel/frame numbers or the 2008-02-22 back-dated execution date for the inventor→IP Holdings assignment. That back-dating is a substantive added finding.
3. Unreconciled item carried forward: the Patent Summary notes both an "adjusted expiration 2016-12-22" and a 2019-06-02 maintenance-fee lapse. Neither affects the assignment chain, but note that the 2020 assignments and the 2022–2024 IPR all occurred after the fee-lapse date, which is legally coherent (title can still be assigned and an expired patent can still be IPR'd) but worth stating explicitly so the dates don't read as errors.

I'll ground this in both the authoritative patent text (already provided) and live verification of the actual IPR grounds, since the examiner-cited art and the PTAB-challenged art overlap only partly.

Let me verify the remaining IPR references and a few key examiner-cited references to confirm their titles and dates.

Prior-Art Analysis — U.S. Patent No. 9,049,119

Note on method: the USPTO/PatFT record for this patent mirrors the authoritative Google Patents record for US9049119B2 already supplied, which is the source I use below. I was not able to open a live PatentCenter/PatFT page in this session — every retrieval resolved to the Google Patents record — so the citation lists below are reproduced exactly as they appear in that record, and I flag where a description is drawn from a reference's title/first page rather than its full text.

A. Patent under analysis (confirmed)

Critical timing rule for this analysis. Because priority traces to a 1996‑12‑16 filing, the statutory‑bar date under pre‑AIA §102(b) is 1995‑12‑16, and the §102(a)/(e) horizon is 1996‑12‑16. I analyze every citation against those cutoff dates. (This assumes the pre‑AIA regime governs; that is the record's own premise given the 1996 priority chain.)

B. The mos t relevant prior art is not in the examiner's citation list

This is the single most important finding. The art that actually defeated this patent — the IPR2022‑00979 grounds that produced the PTAB's Final Written Decision of 2023‑11‑28 (all challenged claims 1‑2, 4‑5, 15, 20 unpatentable; IPR certificate issued 2024‑02‑15) — is Regnier, Grube, Gillig, Rautiola, Sainton, and Wilson. None of those six appear in the Google Patents "Citations" list for the '119 patent. They were adduced by Petitioners (Apple/Samsung), not by the examiner.

Table 1 — Adjudicated art (highest relevance)

Two takeaways that must not be glossed over:

1. Every one of these was applied as §103 obviousness art, not §102 anticipation. The Board found combinations obvious. There is no single reference in the IPR record that anticipated claims 1 or 20 on its own.
2. Patent Owner's principal defense — that Regnier/Grube/Gillig are non‑analogous art — was rejected by the Board, and is what the Chinese‑language Law360 summary (gdoip.com/294) confirms as the basis for the Nov. 28, 2023 ruling.

C. The examiner‑cited references (the "Citations (38)" list)

For each I give citation, dates, description, and the realistic §102 posture given the 1996 priority. Honest caveat: for several of these I am working from the title and first‑page abstract only; the "potentially anticipates" column states a map‑point, not a verified anticipation.

Family self‑citations (must be excluded from §102 analysis)

The "Patent Citations (50)" list also contains additional members of the same Rao/IP Holdings family, which cannot be §102 prior art against the '119 (same inventive entity / §102(b)(2)‑type exclusion): US 8,472,927; US 8,761,739; US 8,472,936; US 8,472,937; US 8,442,501; US 8,447,289; US 8,090,356; US 2003/0324101 A1; US 2004/0169270 A1; US 2004/0171066 A1; US 2012/0046021 A1; and US 6,865,261 B1 (Raman K. Rao, "Method for providing gastronomic information…"). These were listed for disclosure cross‑reference, not as art.

D. Bottom line — what actually matters for §102

1. No examiner citation is a clean §102 anticipation of independent claim 1 or claim 20. The two closest examiner‑cited candidates are US 6,035,212 (LSI, multi‑frequency wireless device) and US 5,905,958 (Ericsson, intelligent mobile station) — both §102(e)‑type art filed before the 1996‑12‑16 priority — but each addresses part of claim 1 (frequency agility; reconfigurable mobile station), not the whole.
2. The references that actually invalidated the patent — Regnier (US 5,689,708), Grube (US 5,201,067), Gillig (US 4,989,230), Rautiola (US 5,949,775), Sainton (US 5,854,985), Wilson (US 5,400,246) — are not in the patent's citation list at all, and were applied under §103, not §102. The PTAB's Nov. 28, 2023 FWD held claims 1‑2, 4‑5, 15, 20 unpatentable as obvious; the IPR certificate issued 2024‑02‑15.
3. Claim‑level §102 map‑points worth noting: claims 3/8 (TV remote) → US 5,539,391 (Gemstar) and US 5,565,929 (Sony); claim 4 → US 5,379,341, US 6,049,289, US 5,400,246; claims 5/10/11/12/17 (frequency/bandwidth/power tuning) → US 6,035,212; claims 1/2/6/16 (network switching) → US 5,410,738, US 4,989,230.
4. Timing trap for the practitioner: roughly a third of the examiner's 38 citations post‑date the 1996‑12‑16 priority (e.g., US 6,363,249; US 6,628,964; US 6,937,972; US 6,405,033; US 6,172,985; US 6,185,418). They can only be §102 art if the 1996 priority is not entitled to one or more claims — otherwise they are §103‑only background. This is a live vulnerability given the breadth of the continuation chain and the "Internet Protocol" claim language.

E. Explicit uncertainty flags (building on the earlier sections)

• I was unable to retrieve full texts for every citation in this session; descriptions marked "breadth" rely on titles/first pages. Grant dates shown as confirmed were verified in search results (Grube 1993‑04‑06; Rautiola 1999‑09‑07); the others (Gillig 1991‑02‑05; Sainton 1998‑12‑29; Wilson 1995‑03‑21; Regnier 1997‑11‑18) reflect training data and were not re‑verified here.
• Correction/clarification vs. a possible misread: the IPR reference is Rautiola = US 5,949,775. A direct query for "US 5,898,775" returns an unrelated patent ("Telephone holder with automatically moved retaining members"). These are different numbers; I did not substitute one for the other.
• No CAFC decision specific to the '119 was located (consistent with the earlier Litigation Summary); the Feb. 15, 2024 IPR certificate is consistent with the FWD not being appealed, but I state that as inference only.
• The Google Patents legal‑status fields are self‑described as assumptions; the "adjusted expiration 2016‑12‑22" and the 2019 maintenance‑fee lapse are both recorded and are not mutually exclusive.

I'll verify the key IPR-ground references and a few examiner-cited references before running the §103 analysis.

Now let me verify the remaining IPR-ground references and the two closest examiner-cited references.

Confirmed Rautiola (US 5,949,775, filed 1996‑08‑30) and Regnier (US 5,689,708, filed 1995‑03‑31). Let me verify the last two IPR references and the two closest examiner-cited references.

Obviousness Analysis Under 35 U.S.C. § 103 — US 9,049,119 B2

Patent: US 9,049,119 B2, "Dynamically configurable mobile device and cellular phones with functions" (Appl. 13/925,766; granted 2015-06-02; 20 claims; independent claims 1 and 20).

Method note: This analysis builds directly on the Prior Art section of this page. I re-verified five of the six IPR-ground references live in this session (Regnier, Grube, Gillig, Rautiola, Wilson); Sainton (US 5,854,985) hit the tool step-limit and remains unverified this session, as flagged below. Per the operating rules, all identifiers are reproduced literally.

⚠️ Correction to the Prior Art section — Wilson. That section describes Wilson as US 5,400,246, "Programmable/appliance control system." The live record for US 5,400,246 gives its title as "Peripheral data acquisition, monitor, and adaptive control system via personal computer." Both descriptions point at the same reference, but the correct title should be used in any filing. The substance (PC-based system controlling TV, VCR, lamps and other appliances over X-10/IR/RF, with on-screen device icons and soft control panels) is more useful for claims 3/4/8 than the Prior Art section's shorthand suggested.

✅ Data-integrity item from earlier sections — RESOLVED. The Prior Art and PTAB sections flagged an exhibit-number discrepancy (Patent Owner's Response listing Rautiola as Ex. 1006 vs. Petitioner's Reply listing Rautiola as Ex. 1005). The IPR2022-00979 docket paths confirm Petitioner's numbering: Exhibit-1005-…US5949775_Rautiola, Exhibit-1006-…US5689708_Regnier, Exhibit-1011-…US5201067_Grube. Use the Petitioner's-Reply numbering (1005 Rautiola / 1006 Regnier / 1011 Grube / 1012 Gillig).

1. Framework and the POSITA

1.1 The person having ordinary skill in the art (POSITA)

Reconstructed from the references and the '119's own field (H04W4/50, H04W88/06, H04M1/724xx — multi-mode terminals and service reconfiguration):

A POSITA as of the 1996–2000 window would have a bachelor's degree in electrical engineering, computer engineering, or computer science, plus approximately two years of experience in wireless telephony and/or networked client-server systems — or equivalent practical experience. That person would be familiar with: (a) cellular air interfaces (AMPS/TDMA/GSM) and their FCC-approved frequency bands; (b) cordless and low-power local radio systems (CT2, DECT, and emerging wireless LANs); (c) dual-mode cellular/cordless handset architecture and automatic mode selection; (d) local area networking and IP routing; and (e) client-server software architectures in which a server downloads configuration, profiles, or application programs to a client at run time.

Every §103 ground below is built from references that sit squarely inside this skill set, which matters for the KSR "same field of endeavor" and "predictable variation" rationales.

1.2 The prior-art date horizon — and why it makes the case stronger, not weaker

The Prior Art section correctly sets the assumed pre-AIA critical date at 1995-12-16 (§102(b)) and the §102(a)/(e) horizon at 1996-12-16, based on the 08/764,903 filing of 1996-12-16.

Two things about this horizon deserve emphasis because they cut for obviousness:

1. Rautiola (US 5,949,775) has a US filing date of 1996-08-30 and a Finnish priority of 1995-09-29 (confirmed live: Appl. No. 08/697,784; Priority FI19950004638, 1995-09-29). Its Finnish priority predates even the 1995-12-16 §102(b) bar date, and its US filing predates the 1996-12-16 §102(a)/(e) horizon by ~3.5 months. Rautiola is prior art on any reading of the '119's effective date.
2. Regnier (US 5,689,708) was filed 1995-03-31 (confirmed live) — squarely §102(b) art. Grube (US 5,201,067) issued 1993-04-06; Gillig (US 4,989,230) issued 1991-01-29/02-05; Wilson (US 5,400,246) issued 1995-03-21 — all §102(b) art.

So the entire invalidating combination pre-dates the earliest asserted priority by months to years. There is no §103 theory here that depends on squeezing between a 1996 and a 2000 date.

Robustness check — the alternative horizon. If the "Internet Protocol" / "IP data network" limitations of claims 1 and 20 were held not supported by the 1996 disclosure (the 1996 spec speaks of "IP mode" and a "wireless IP connection," but the elaborate CIP disclosure arrives at 09/591,381, filed 2000-06-09), the effective date slides forward and the art base expands, not contracts. Under a 2000-06-09 date, the following examiner-cited references graduate from "background" to direct §102/§103 art: US 5,905,958 (Ericsson, issued 1999-05-18), US 6,035,212 (LSI Logic, issued 2000-03-07), US 5,872,926 (issued 1999-02-16), US 6,023,698 (IBM, filed 1996-12-05), and US 6,049,289 (Overhead Door). The obviousness determination is therefore insensitive to the priority-date dispute — a rare and useful posture.

1.3 The construction point that decides the case

As the PTAB section of this page documents, Patent Owner argued that "dynamic conversion"/"switch dynamically" required performance "without user intervention." The Board rejected that gloss, aligning with the sibling '501 IPR (IPR2022-00808, Paper 24, at 10: "conversion when and as needed and in real time"), and at the 2023-09-12 consolidated hearing counsel conceded on the record: "A user is not recited in any of the claims."

This is outcome-determinative for §103: claims 1 and 20 contain no negative limitation, no "automatically," and no "without user intervention." They recite that the device converts from a first function to a second, not how or by whom it is triggered. That removes the only narrowing construction Patent Owner had, and it means the prior art need only show a server-supplied capability to change the device's function — which Grube and Regnier show expressly.

Claim 20 drafting defect (carried forward). Claim 20 requires the first network to operate "using a FCC approved public or carrier frequency" and simultaneously states that "the first wireless network is an Internet Protocol (IP) data network." That is not a narrowing recitation; under BRI, a cellular packet-data bearer (IP over GSM) satisfies both. It does not create a §103 escape hatch — it widens the claim.

2. The three ground families

I organize the prior art into three families, each independently sufficient in combination. The Board's three IPR grounds map onto families A, B, and C below.

Ground A — Rautiola + Regnier (+ Sainton)

Rautiola (US 5,949,775, "Office communication system," Nokia, filed 1996-08-30, issued 1999-09-07) teaches an integrated office system whose core is a LAN for intra-office communications with a public cellular radio network for outside connections, where:

• computers (10) are connected to the LAN and telephones (5, 7) are mobile or cordless phones served by low-power, room-specific nanocell base stations (4, 6, 8);
• connections to the outside world are made via a gateway computer (1) and a public cellular radio network — i.e., an office/local network and a public cellular network are both available to the same terminal;
• the LAN has one or more servers handling functions such as "database services and voice mail and e-mail services"; and
• its sibling disclosure (EP 0 766 490) expressly frames the gateway in terms of Internet / Mobile IP and states the objective that "the same equipment can be used everywhere as terminals of the communication system," with home nanocells bridged to the office LAN.

Rautiola supplies, in a single reference: the first network as an IP/LAN data network, the second as a public cellular network, a network box (gateway computer + low-power base stations), servers connected to both the LAN and the cellular network, and terminal role conversion as the user moves (office terminal ↔ telephony ↔ public cellular). That is a near-complete disclosure of the structural backbone of claims 1, 19, and 20.

Regnier (US 5,689,708, Showcase Corp., filed 1995-03-31, issued 1997-11-18) supplies the reconfiguration limitation with unusual precision. Its abstract: "A resource manager in a client/server computer network controls the availability of system resources. A system administrator generates a set of profiles which specify which system resources each user may employ for each of multiple application programs. Individual application programs may internally configure their possible choices of such system resources according to the appropriate profile on a dynamic basis." Claim 1 requires the server to generate profiles and to "dynamically modify[] at least one of said user interfaces … so as to make available to said one user only those of said shared system resources specified by said profile information."

Map that to '119 claim 1: the memory "stores functional instructions including instructions for use in providing a plurality of functions"; the server "provides a plurality of functions to the mobile device to enable the mobile device to convert from a first function to a second function." Regnier is a server-side, dynamically-variable, profile-driven control of which functions a client may execute. Substitute a handset for the workstation and the claimed conversion mechanism is there.

Sainton (US 5,854,985, "Adaptive bandwidth communication system," issued 1998-12-29) is cited in the IPR record for the bandwidth/frequency-adaptation elements (dependent claims 10, 11). Flag: not re-verified this session; its filing date, needed to confirm §102(e) status, was not retrieved. Even if Sainton drops out, LSI 6,035,212 independently covers those elements (see Ground D).

Ground B — Grube + Gillig (+ Wilson)

Grube (US 5,201,067, "Personal communications device having remote control capability," Motorola, issued 1993-04-06) — verified live — is the most damaging single reference because it discloses the server-downloads-functions architecture inside a wireless handset with an express appliance-control purpose. From the specification (Ex. 1011 text, confirmed live):

• The device is "a personal communicating device" with a wireless transceiver that "transceiv[es] … at least voice and data user information" plus a separate wireless transmitter for "transmitting remote control signals to a device separate from the personal communicating device" — with IR for TV/VCR/stereo and an optional RF transmitter "to transmit remote control signals on a desired RF carrier, to thereby accommodate such devices as garage door openers and the like." That is claim 1's "voice and data" handset and dependent claims 3, 4, and 8 in one document.
• Critically: "The personal communications device (100) can also be used to interface telephonically with a remote site data base containing pertinent information regarding remote control instructions for a particular product or device. Through such interfacing, the personal communications device can receive and store pertinent remote control information, and subsequently utilize that information to provide appropriate remote control signals. … The computer (301) couples through one or more dial-up modems (304) to the public switched telephone network (305) … the personal communications device (100) can access the computer (301) and its associated data base (302) via the public switched telephone network."
• The database stores "carrier frequency, signalling protocol, modulation type, operational codes, operational code aliases," and the process is: dial, receive remote control information (403), disconnect (404), process and store (405).
• The stated commercial motivation: "the user will already be well familiar with the keyboard and display functionality of his or her personal communications device, and will not have to relearn alternative layouts for a plurality of remote control transmitters" — a proliferation-of-devices motivation stated in the reference itself.

Gillig (US 4,989,230, "Cellular cordless telephone," Motorola, issued 1991-01-29) supplies the network-switching half of claim 1. Verified live:

• "A cellular cordless telephone (CCT) operates with both a cordless base station and a cellular base station"; the CCT "includes a cellular transceiver, antenna, keyboard, a display, handset, and microcomputer together with a cordless transceiver and antenna, all of which may be in a single housing."
• "Whenever cellular cordless telephone is within range of cordless base station, telephone calls may be made over the cordless radio channel or transferred from the cellular radio channels to the cordless radio channel. If the cellular cordless telephone thereafter moves out of range … telephone calls may be made over the cellular radio channels or transferred from the cordless radio channel."
• Simultaneity is express: "CCT 100 may simultaneously operate as a cellular telephone and a cordless telephone" — directly meeting dependent claims 12 and 16.
• The motivation is express and quantitative: "the cost of a cellular telephone call is as much as seven times the cost of a cordless telephone call, since cordless telephone calls are made by way of the user's telephone landline … while cellular telephone calls are made by way of expensive cellular base stations and cellular switching equipment."

Wilson (US 5,400,246, issued 1995-03-21) — correct title "Peripheral data acquisition, monitor, and adaptive control system via personal computer" — discloses PC-driven control of household appliances including "a remotely-controlled television, a VCR, a lamp, an overhead fan," over "infrared (I/R), radio frequency (RF), or AC power line carrier (X-10) transmission link[s]," with graphical device icons and soft control panels. It reinforces claims 3, 4, and 8.

Ground C — Grube + Gillig + Rautiola (+ Regnier)

This is the full combination and the strongest articulation: Gillig (handset that switches between a public cellular network and a local network, and can do both at once) + Grube (same handset downloads appliance-control function sets from a remote server over the wireless link, and includes an IR/RF remote-control transmitter) + Rautiola (local network is an IP/LAN with servers and a gateway to the public cellular network; the same terminals are used everywhere; IP addressing and Mobile IP are contemplated) + Regnier (the server dynamically reconfigures which functions the client may execute, via profiles). Every limitation of claims 1 and 20 is accounted for, and each reference supplies an element the others lack.

3. Motivation to combine — the KSR rationales

This is the heart of the §103 case, and it is unusually well supported because the motivation appears in the references themselves, in the '119's own specification, and in the economics of the art.

(1) Same field of endeavor and same problem, stated in the patent's own background. The '119 specification concedes: "There is often a proliferation of mobile devices that must be carried by a user. For example, a user may need a device or remote for the public airwaves (cell phone), another for the local or office network and yet another for the home network such as wireless telephones, as well as controllers for TVs and other intelligent appliances." — This is an admission that identifies the very combination (cell + local network + TV/appliance controller) that Gillig, Grube, Rautiola, and Wilson collectively produce. The stated object — "There is a need for a method to bypass the public wireless carrier … for local office or home networks where the public carrier services are not being utilized, without changing devices" — is Gillig's express purpose (switch to cordless when in range; cellular otherwise) fused with Grube's express purpose (one handset that also replaces the user's remote controls).

(2) The prior art itself suggests the combination (leadings of the references). No hindsight is needed:

• Grube expressly connects a wireless handset to a remote database of appliance-control instruction sets over the public network and stores them locally — i.e., a server supplying functional instruction sets to a mobile device. A POSITA reading Grube and seeking a handset that also works on a local network would find Gillig, which teaches precisely the cellular/cordless switching that lets that download occur over whichever network is cheapest.
• Rautiola expressly states the goal that "the same equipment can be used everywhere as terminals of the communication system" and provides both the office LAN and the public cellular path, with LAN servers.
• Regnier expressly provides for dynamic, server-side change of a client's available functions — the claimed conversion — and does so in a client/server architecture that Rautiola's LAN/gateway already instantiates.
• Gillig expressly identifies the economic driver (7:1 cost ratio) for preferring the local network and falling back to cellular.

(3) Predictable use of a known technique to improve similar devices in the same way (KSR prong 4). Downloading configuration, profiles, signalling sets, or application programs from a server to a client at run time was a known, off-the-shelf technique by the mid-1990s (Regnier's resource manager; Grube's remote database; US 5,872,926 (1999) for integrated messaging; US 6,023,698 (IBM, filed 1996-12-05) for Internet-based registration/updating). Applying that known technique to the known problem of a multi-mode handset — so that the handset's function set follows it between environments — is "the predictable use of prior art elements according to their established functions." Nothing in the '119 is a new physical structure; the specification says so itself: "It will be clear to those of ordinary skill in the art that physical changes to the CT are not required" (repeated for MD 104 and WD 106). The patent claims software reconfiguration of a conventional handset. That forecloses any "new and unobvious architecture" argument.

(4) Design incentive / market pressure (KSR prongs 2–3, TSM). Gillig quantifies the cost pressure; Grube quantifies the user-ergonomics pressure (no relearning of remote layouts); Rautiola quantifies the office-capacity pressure (nanocells to relieve cellular congestion indoors). These are independent, articulated motivations for the same combination.

(5) Reasonable expectation of success. Every element is a conventional off-the-shelf component (cellular transceiver, cordless/LAN transceiver, microprocessor, EEPROM, IR/RF transmitter). Combining two radio transceivers in one housing is exactly what Gillig already did. There is no identified source of unpredictable failure, and Patent Owner identified none in the IPR beyond the (rejected) non-analogous-art argument.

(6) No teaching away. The PTAB rejected Patent Owner's "non-analogous art" defense as to Regnier, and (per the Law360 summary carried in the PTAB section) rejected it again as to Wilson, observing that Smart Mobile "did not address the substance of Petitioner's arguments." Nothing in Grube, Gillig, Rautiola, Regnier, or Wilson disparages the multi-mode server-configurable handset; each is affirmatively aimed at it. Contrast with the Ditzik reexamination excerpt surfaced in search, where patent owners successfully argued that Gillig was "limited only to voice calls" and taught away from data — that argument was made against a patent claiming handset e-mail/Internet access, and it does not help the '119, whose claims 1 and 20 require only IP data communication to "a network accessible device" and a server connection, not e-mail formatting. Moreover, the Board has now twice declined that argument in this family.

4. Claim-by-claim §103 chart — independent claims

Claim 1 (multi-network, server-assisted function conversion)

Conclusion on claim 1: obvious under §103 over Gillig + Grube + Rautiola, and independently under Gillig + Grube + Regnier, and under Rautiola + Regnier + Gillig. Grounds are, if anything, over-determined — a hallmark of a strong §103 case.

Claim 20 (voice-first variant)

Claim 20 drops the two-network requirement and instead recites a single first network that is (i) used for voice calls, (ii) "operat[es] using a FCC approved public or carrier frequency," and (iii) "is an Internet Protocol (IP) data network." Structurally it is broader and internally inconsistent relative to claim 1 (see §1.3).

Conclusion on claim 20: obvious over Gillig + Rautiola + Regnier, with Grube available for the server-supplied-function limitation. Because claim 20 is broader than claim 1 in the network-switching respect, any ground that invalidates claim 1 invalidates claim 20 a fortiori.

5. Claim-by-claim §103 chart — dependent claims

Recall the PTAB section's disposition: claims 1, 2, 4, 5, 15, and 20 were held unpatentable (FWD 2023-11-28; IPR certificate effective 2024-02-15). Claims 3, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 17, 18, 19 were never adjudicated — "sustained" only in the sense of untested. Below I extend the §103 analysis to that unadjudicated set, since that is where residual risk/exposure would sit if anyone ignored the expiration and the canceled bases.

Note on dependency. Every one of claims 2–19 depends from claim 1 (or claim 20). Because claims 1 and 20 stand canceled, the unadjudicated dependents have no surviving independent base to depend from, and — as the Strategic Summary section correctly states — "they rise and fall with the canceled bases." The §103 analysis above is therefore offered for completeness and for issue-preclusion spillover into sibling patents sharing the specification, not because any of these claims retains independent commercial reach.

6. Graham factors — scope/content, differences, and secondary considerations

Scope and content of the prior art. Six references, five of which pre-date the §102(b) bar date of 1995-12-16 (Regnier 1995-03-31; Grube 1993; Gillig 1991; Wilson 1995-03-21; plus Rautiola's FI priority 1995-09-29), covering every element of the two independent claims.

Differences between the prior art and the claims. After the Board's construction (no "without user intervention" requirement), the differences reduce to the specific assemblage, not to any element. The '119 adds no disclosed structure, no new protocol, and no measured performance result. The specification's own statements — physical changes "are not required," the device is "dynamically software reconfigurable," and the reconfiguration is accomplished "by downloading/uploading FIS 218 … in tandem with Server C 214" — describe software deployment of known functions onto a known multi-mode handset.

Secondary considerations.

• No nexus. There is no evidence of a commercial embodiment practicing the claims (consistent with the ownership section's finding that IP Holdings / Smart Mobile never shipped a product). Objective indicia must be tied to the claimed invention; device-level smartphone success would not be.
• No unexpected results are disclosed or attested.
• Industry praise / long-felt need: the "long-felt need" (device proliferation) is recited in the '119's own background — but the same need and the same solution are recited in Gillig (one handset, cellular or cordless), Grube (one handset replacing multiple remotes), and Rautiola (same equipment everywhere). A need articulated in the prior art as well as in the patent is not a nexus-bearing objective indicium.
• Copying: none alleged or evidenced.
• Commercial success: the patent lapsed for non-payment of maintenance fees effective 2019-06-02, which is itself inconsistent with a valuable, commercially practiced invention.

7. Bottom line

1. Claims 1 and 20 are obvious under § 103 over multiple independent, mutually reinforcing combinations. The single strongest three-reference ground is Gillig (US 4,989,230) + Grube (US 5,201,067) + Rautiola (US 5,949,775), with Regnier (US 5,689,708) substituting for or supplementing Rautiola on the "server provides functions enabling conversion" limitation. The Board reached exactly this result on 2023-11-28 (claims 1, 2, 4, 5, 15, 20 unpatentable), and the IPR certificate effective 2024-02-15 (K1) effectuated cancellation.
2. The motivation to combine is unusually strong because it is (a) admitted in the '119's own background (device proliferation; need to bypass the carrier without changing devices), (b) express in the references (Gillig's 7:1 cellular-vs-cordless cost ratio and automatic transfer; Grube's download-from-remote-database and one-handset-replaces-many-remotes rationale; Rautiola's "same equipment … everywhere" objective; Regnier's dynamic server-side profile control), and (c) consistent with KSR's "predictable use of a known technique" — server-downloaded configuration of a client was standard client/server practice.
3. The unadjudicated dependent claims 3, 6–14, and 16–19 are likewise obvious on the mappings in §5 — most of them are met by a single reference (Grube for the TV/appliance controller claims; Gillig for the simultaneity claims; Rautiola for the IP-telephony, packet/circuit, and network-box claims) — but they are nonetheless unreachable in practice because they depend from canceled claims 1/20 and the patent is expired.
4. No claim in this patent survives an obviousness challenge on this record.

8. Explicit uncertainty flags and contradictions

1. Sainton (US 5,854,985) was not re-verified this session (tool step-limit). Its title ("Adaptive bandwidth communication system"), issue date (1998-12-29), and filing date (needed for §102(e) status) should be pulled from the primary document before being cited in a brief. Its role (claims 10, 11) is in any event cumulative to LSI US 6,035,212.
2. Wilson title correction (US 5,400,246): "Peripheral data acquisition, monitor, and adaptive control system via personal computer" — not "Programmable/appliance control system" as stated in the Prior Art section. Substance unaffected; both describe appliance control.
3. Exhibit-numbering discrepancy resolved, as stated at the top: IPR2022-00979 docket paths confirm Ex. 1005 = Rautiola, Ex. 1006 = Regnier, Ex. 1011 = Grube.
4. Priority-date sensitivity. The §103 conclusion holds under either the 1996-12-16 or the 2000-06-09 horizon — the core combination is entirely §102(b)/(e) art before 1996. I have not independently re-verified every reference's filing date from primary documents; the ones verified live this session are Regnier (filed 1995-03-31, issued 1997-11-18), Rautiola (filed 1996-08-30; FI priority 1995-09-29; issued 1999-09-07), Grube (US 5,201,067; corresponding PCT WO1992/020167), Gillig (US 4,989,230; priority 1988-09-23). The Prior Art section's dates for Sainton, Wilson, and Gillig's exact issue day trace to training data/third-party pages rather than to documents I opened.
5. Date inconsistency in the task record. This task's header states "Current Date: April 26, 2026," while the session date is 2026-09-28 and the previously generated sections cite CAFC activity dated August 27, 2026 and February 27, 2026. I did not attempt to reconcile these; it does not affect the §103 analysis, which turns on art fixed in 1991–1999.
6. Identifiers reproduced literally. Rautiola is US 5,949,775 throughout — not 5,898,775 (an unrelated "Telephone holder" patent, as the Prior Art section correctly warned). Regnier is US 5,689,708 — not the related-but-distinct US 5,859,978 (Novell) or US 6,134,549 (Regnier et al., different patent). Wilson is US 5,400,246. No substitutions were made.
7. The FWD text itself (Paper 31) was not opened. Consistent with the PTAB section, the exact claim string (1, 2, 4, 5, 15, 20) and the ground structure (Rautiola–Regnier–Sainton; Wilson; Grube–Gillig) are high-confidence reconstructions from docket paths, exhibit labels, party filings, and secondary reporting — not verbatim quotations from the decision. The §103 analysis above is my own and does not depend on that reconstruction being perfect.