US 9084291

I'll search for authoritative information on this patent and its litigation/post-grant proceedings.

Let me check the appeal and PTAB proceedings.

Let me verify the full claim set and the district court/appeal status.

US 9,084,291 B1 — Summary of Authoritative Findings

Bottom line up front: I found solid, citable records for the patent itself, its PTAB proceeding (IPR2022-01005), its district-court assertion, and one Federal Circuit appeal (24-1655). I did not find any CAFC 2026 docket specifically naming 9,084,291. The 2026 Federal Circuit activity involving patent owner Smart Mobile Technologies is directed to other patents in the family (e.g., 9,191,083; 8,842,653; 9,019,946; 9,319,075), so I flag that explicitly rather than blurring it into this patent.

1. Bibliographic data (exactly as reported by sources)

Continuity (from the specification): a continuation of 12/912,607 (filed Oct. 26, 2010) → continuation of 10/940,428 (filed Sep. 13, 2004, now US 7,848,300) → continuation of 09/617,608 (filed Jul. 17, 2000, now US 7,286,502) → continuation-in-part of 09/281,739 (filed Jun. 4, 1999, now US 6,169,789). This is why the 1996 priority date appears despite the 2014 filing date.

Abstract (verbatim): "A communication system, comprising a wireless communication device including a plurality of antennas communicatively coupled with a communication component, the communication component including a processor, a transmitter, and a receiver, the communication component configured to transmit a first data stream by simultaneously transmitting a first plurality of signal streams using the plurality of antennas, the first plurality of signal streams collectively representing the first data stream, the communication component configured to receive a second data stream by simultaneously receiving a second plurality of signal streams using the plurality of antennas and generating the second data stream from the second plurality of signal streams."

2. Independent claims — plain-language overview

The patent has 16 claims, of which claims 1 and 5 are independent; claims 2–4 depend from claim 1, and claims 6–16 depend (directly or indirectly) from claim 5.

Claim 1 — multi-radio/multi-antenna communication system with an adapter.
A system comprising: a processor; a first communication component (its own transmitter and receiver); a second communication component (its own transmitter and receiver); and several antennas coupled to the first component, including two dedicated antennas for receiving signals. The first component sends a data stream by transmitting multiple signal streams simultaneously across those antennas (the streams together making up the one data stream), and likewise simultaneously receives multiple signal streams and reconstructs a data stream from them. An adapter with multiple data ports receives the signal stream and carries the data/stream traffic via those ports. At least two antennas must operate at different frequencies, and the signal streams must use multiple protocols. The claim closes with a "multi band network switch box system" that can operate in several network environments sequentially or simultaneously.

Key concepts in plain terms: parallel/multi-path wireless transfer (the streams jointly represent one logical data stream), dedicated antenna roles, multi-band operation, multi-protocol operation, a docking/adapter with multiple ports, and a "network switch box" that is both multi-band and multi-environment.

Claim 5 — system-on-a-chip implementation for a portable handheld device.
A communication system (modules + processors) for a portable handheld mobile device with multiple antennas, implemented as a system on a chip, comprising: at least one processor; memory; an RF transmit-and-receive unit handling multiple signal streams (first and second); support for multiple frequency bands, with the streams processed for a specific band; the system transmitting the first signal stream simultaneously via the multiple antennas (that stream generated from a first data stream), and generating a second data stream by simultaneously receiving the second signal stream via the same antennas; plus a second communication component operating on multiple frequencies and protocols. The system must support video processing, wireless WAN communication, LAN communication, and USB communication.

Key concepts in plain terms: an SoC-level multi-band, multi-protocol radio with MIMO-style simultaneous transmit/receive through shared antennas, integrated into a handheld device, with video, WWAN, LAN and USB capability.

3. Post-grant proceedings — IPR2022-01005 (this is directly on point)

• Petitioner: Samsung Electronics Co., Ltd. (petition filed May 23, 2022; instituted Dec. 5, 2022). Docketed as [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd. v. Smart Mobile Technologies LLC, IPR2022-01005; all claims 1–16 were challenged. Judge writing: Nathan A. Engels.
• Final Written Decision, Dec. 1, 2023: the Board determined some challenged claims unpatentable (Docket Alarm docket title: "Determining Some Challenged Claims Unpatentable 35 USC § 318(a)"), while counsel for the patent owner (Graves & Shaw) publicly characterized the outcome as "confirming the patentability of claims 4-16."
• Director Review requested by Samsung (Jan. 2, 2024, Exhibit 3100) and denied Jan. 30, 2024 (Paper 38). Samsung then appealed.
• Federal Circuit appeal No. 2024-1655 (Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC), appeal from PTAB No. IPR2022-01005: DISMISSED under Fed. R. App. P. 42(b) by joint agreement, order dated Aug. 5, 2024, each side bearing its own costs; mandate issued the same day. PTAB received the Federal Circuit mandate Aug. 8, 2024 (Paper 40). Source: https://cafc.uscourts.gov/opinions-orders/24-1655.ORDER.8-5-2024_2361746.pdf

So: there is no live or decided 2026 CAFC docket for 9,084,291. The only CAFC docket tied to this patent's IPR is 24-1655, and it was dismissed in 2024.

4. District court

• Smart Mobile Technologies LLC v. Samsung Electronics Co. Ltd. et al, No. 6:21-cv-00701 (W.D. Tex., filed July 2, 2021), Judge Alan D. Albright — the '291 patent was asserted against Samsung. Docket entries run through Sept. 2023 (No. 127). Unified Patents also lists a case in the Western District of Texas at case/6:21-cv-00701.
• Uncertainty: I could not confirm from the sources retrieved whether this action was settled, dismissed, or transferred, or whether it went to trial. The joint dismissal of the Samsung appeal in Aug. 2024 is consistent with resolution, but I will not assert that as fact without a court record. I also did not find a docket entry confirming a final judgment in 6:21-cv-00701.

5. 2026 CAFC activity — not this patent (stated to avoid conflation)

Two 2026 Federal Circuit decisions involved Smart Mobile Technologies but different patents:

• Jan. 13, 2026 — Apple Inc. v. Smart Mobile Technologies LLC: CAFC vacated and remanded a PTAB FWD on U.S. 9,191,083, holding the Board denied Apple an opportunity to respond (Axonics/APA issue) to a post-institution claim construction of "plurality of antennas." Sources: https://ipwatchdog.com/2026/01/13/federal-circuit-vacates-remands-ptab-decision-finding-apple-denied-opportunity-respond/
• Aug. 27, 2026 — Apple Inc. v. Smart Mobile Technologies LLC: CAFC authored by Judge Stark affirmed non-unpatentability findings for U.S. 8,842,653 and 9,019,946, affirmed for 9,319,075, and vacated/remanded the portion finding certain claims (claim 17 and dependents) obvious. Source: https://ipwatchdog.com/2026/08/27/cafc-delivers-blow-to-apple-in-appeal-of-ptab-disputes-with-smart-mobile/

These are family-adjacent (same owner, same technology theme) but do not name 9,084,291.

6. Caveats

• Date/venue conflicts: filing date (May 7 vs May 8, 2014), grant date (July 13 vs July 14, 2015), and priority date (Dec 15 vs Dec 16, 1996) differ between the Google Patents record and the Unified Patents portal. Per your instruction I have not auto-corrected either set; the Google Patents entry is the authority used in the provided full text and I have treated it as primary.
• Legal status: the record shows "Expired – Fee Related," with $0 lifetime renewal fees paid and an anticipated expiration of June 3–4, 2019 — i.e., the patent lapsed for failure to pay maintenance fees long before any 2026 activity. Anyone relying on this patent's enforceability should verify the fee/lapse status directly in USPTO PatentCenter, as Google's status field is expressly an assumption.
• Claim scope caveat: the claim set in the authoritative full text was truncated mid-claim 1; the complete claim text I used for claims 1–16 is from the Justia mirror at https://patents.justia.com/patent/9084291, which matches the Google Patents text where they overlap.

I'll research litigation involving US patent 9084291. Let me run several targeted searches.

Let me dig into the specific cases referenced.

Let me verify which district court cases specifically asserted the '291 patent and their outcomes.

Litigation Involving US Patent No. 9,084,291

Patent: US 9,084,291 B1 — "Interfacing Internet Protocol-Based Wireless Devices with Networks"
App. No.: 14/273,323 | Filed: 2014-05-08 | Granted: 2015-07-14
Inventors: Sanjay K. Rao, Sunil K. Rao, Raman K. Rao
Original Assignee: IP Holdings Inc. | Current Assignee: Smart Mobile Technologies LLC
Status: Expired – Fee Related (anticipated expiration 2019-06-04)

Below is what I could verify from the available sources. I flag uncertainty where the retrieved material does not conclusively tie the '291 patent to a particular case.

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1. District Court Litigation

Case: Smart Mobile Technologies LLC v. [[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) et al.

Notes / caveats:

• The Google Patents "family litigation" entry for US 9,084,291 links this case (6:21-cv-00701) to the patent's family, and Samsung's later IPR petition (IPR2022-01005) was directed specifically at the '291 patent — strong circumstantial corroboration that the '291 patent was asserted in this action. However, I was not able to retrieve a document that lists the specific asserted patents in the complaint, so I cannot state with certainty that '291 was among the patents asserted (the WDTX litigation is reported to have involved numerous patents from the Rao family). Treat this linkage as highly likely but unconfirmed.
• Samsung's motion to transfer venue (to the Northern District of California) was addressed by the WDTX court. In the opinion retrieved (CourtListener), the court weighed Smart Mobile's/its inventors' Texas presence against transfer; the inventors Sunil K. Rao and Sanjay K. Rao were found to reside in Austin, and third inventor Raman K. Rao is deceased (his legal representative, Rekha K. Rao, in Palo Alto). The opinion appears to weigh against transfer.
• A docket item dated September 2, 2023 is a Claim Construction Order (Markman) in 6:21-cv-00701 (two Markman hearings held Aug. 18 and Aug. 31, 2023); docket entries #115 (Aug. 8, 2023) and #127 (Sep. 11, 2023) also exist.

Related parallel action (different patent family branch): Smart Mobile Technologies LLC v. Apple Inc., No. 6:21-cv-00603-ADA (W.D. Tex.), also filed 2021, asserting 13 patents; that case was transferred to the Northern District of California (per Law360/IPWatchdog reporting). I did not confirm that '291 was among the 13 asserted patents; the Apple appeals (e.g., Fed. Cir. Nos. 24-1352, 24-1353 and companions, decided Aug. 27, 2026) concerned different patents — the '653, '946, '075 and '083 patents — not '291.

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2. PTAB — Inter Partes Review (the main challenge to '291)

Petitioner's Exhibit 1002-2 in this IPR is an excerpt of the '291 prosecution history (App. No. 14/273,323), confirming the IPR was directed at the '291 patent.

Related IPRs against other patents in the same family (e.g., IPR2022-00979, -00980, -00981, involving Apple/Samsung and the '119, '936, '980, '739 patents) are separate proceedings and should not be conflated with '291.

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3. Court of Appeals for the Federal Circuit

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Summary

Known proceedings tied to US 9,084,291:

1. Smart Mobile Technologies LLC v. Samsung Electronics Co. Ltd. et al., No. 6:21-cv-00701-ADA (W.D. Tex., Waco Div.), filed July 2, 2021 — infringement action; reported closed; '291 linkage strongly indicated but not conclusively verified in my sources.
2. Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC, IPR2022-01005 (PTAB), filed May 23, 2022 — IPR against '291; Final Written Decision reported (outcome not verified).
3. Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC, No. 2024-1655 (Fed. Cir.) — appeal of IPR2022-01005; dismissed August 5, 2024 under Rule 42(b).

A Darts-IP "first worldwide family litigation" entry (family 34221038) also exists for the '291 patent family, consistent with the above.

What I could not verify: the specific list of patents asserted in 6:21-cv-00701, the substantive outcome of IPR2022-01005's Final Written Decision, and whether the case was terminated by settlement versus judgment/other disposition. If you need those confirmed, the WDTX docket (6:21-cv-00701), PTAB P-TACTS portal (IPR2022-01005), and PACER would be the authoritative sources.

I'll start by noting a direct conflict between the structured block and the earlier-generated summary, then verify with live sources.

Let me dig into the claim-level FWD outcome and check for any additional AIA trials on this patent.

I found the key outcome data. Let me pull the FWD text itself to confirm claim-level granularity and grounds.

⚠️ Source conflict — flagged before anything else

The structured "PTAB proceedings on file" block states the USPTO ODP API returns no AIA trial proceedings for US 9,084,291 and instructs me to default to "no PTAB activity." That is contradicted by the public record. There is one fully-litigated IPR on this patent with a Final Written Decision, a Director Review denial, and a Federal Circuit appeal. The earlier-generated summary in this analysis already identified it.

My read: the ODP ingest simply doesn't cover this trial (it terminated 2023-12-01; the patent expired 2019-06-04). Per your explicit carve-out ("web search may surface older or recently-filed proceedings the ODP hasn't indexed yet — flag any you find"), I am reporting the proceeding and not defaulting to "none." Do not rely on the ODP "no proceedings" field for this patent.

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Proceedings overview

One AIA trial on file — IPR2022-01005 (Samsung v. Smart Mobile) — now terminated: it invalidated claims 1–3 and left claims 4–16 standing, with the Federal Circuit appeal dismissed by joint agreement; the bottom-line defensive posture is that the broad independent claim 1 (and its dependents 2–3) is dead, so any demand letter built on claim 1 is weak, but the surviving claim 5 (system-on-a-chip) family is fully intact — and the patent is expired and lapsed for non-payment of maintenance fees, which is a far more powerful defense than any IPR outcome.

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IPR2022-01005 — Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC

• Type: Inter Partes Review (AIA trial, 35 U.S.C. §§ 311–319)
• Filed: 2022-05-23
• Status: Verbatim (Patexia): "Final Written Decision - Appeale[d]"; verbatim (Docket Alarm): "Terminated Dec. 1, 2023." Gloss: trial completed, FWD issued, Director Review denied, appeal dismissed — the proceeding is over; the patent has issued FWD-level claims rulings that never got appellate review because the parties settled the appeal.
• Judge panel: Nathan A. Engels (APJ writing the Final Written Decision), Garth D. Baer, Hyun J. Jung, Monica S. Ullagaddi, Aaron W. Moore, Paul J. Korniczky. Source: Patexia case summary, https://services.patexia.com/lawsuits/shorturl-id-[163933](/patent/163933); corroborated by Docket Alarm / PTAB docket mirror (Judges Jung, Engels, Korniczky, Moore, Baer, Ullagaddi), https://gaeflexstaging-dot-docketupdate.appspot.com/cases/PTAB/IPR2022-01005/Samsung_Electronics_Co._Ltd._v._Smart_Mobile_Technologies_LLC/
• Petition grounds: Samsung challenged all of claims 1–16 (confirmed by Patexia: "Claims Challenged in the Petition: 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16"). The asserted statutory basis was § 103 obviousness. At least one ground was a Raleigh + Sainton + Gernert combination — Samsung's second expert declaration (Exhibit 1036, 2023-06-30) is captioned "THE RALEIGH-SAINTON-GERNERT GROUND RENDERS OBVIOUS THE CHALLENGED CLAIMS," and Dr. Michael Allen Jensen served as Petitioner's expert (second declaration filed 2023-06-30). Patent Owner's expert was Dr. Cooklev. Exhibit/source: https://www.docketalarm.com/cases/PTAB/IPR2022-01005/Samsung_Electronics_Co._Ltd._v._Smart_Mobile_Technologies_LLC/06-30-2023-Petitioner/Exhibit-1036-Second_Declaration_of_Dr_Michael_Allen_Jensen/
  • Caveat (I did not fabricate this): I was not able to retrieve the FWD's ground-by-ground chart, so I cannot state the full list of reference combinations or whether any ground was § 102. Raleigh/Sainton/Gernert is verifiably one § 103 ground; treat the ground list as incomplete rather than as the full set.
• Institution decision: Instituted on 2022-12-05 (Patexia: "Institution Decision Date Dec 5, 2022"). I did not retrieve the institution paper's reasoning; I will not characterize it beyond "instituted on the challenged claims."
• Final Written Decision (2023-12-01, Paper 36): caption is verbatim "Determining Some Challenged Claims Unpatentable 35 USC § 318(a)" — i.e., a partial invalidation, not an all-claims win for either side. Sources: Docket Alarm docket entry, https://www.docketalarm.com/search/?q=patent%3A%289084291%29; PTAB FWD docket listing.
  • Claim-level outcome (as reported):
    • Unpatentable: claims 1–3. This is the necessary complement of the patent owner's own press release (below) plus the FWD caption. I flag it as a two-source inference, not a verbatim quote of the FWD's ORDERED paragraph — I could not open the FWD text itself.
    • Not shown unpatentable / patentability confirmed: claims 4–16. Patent Owner's counsel, Graves & Shaw LLP, stated publicly: "On December 1, 2023, the U.S. Patent and Trademark Board issued a Final Written Decision confirming the patentability of claims 4-16 of G&S client Smart Mobile Technologies LLC's U.S. Patent No. 9,084,291. The decision was issued in IPR2022-01005, which had been filed by Samsung." Source: https://gravesshaw.com/yet-another-ipr-win-for-gs-client-smart-mobile/
  • Reasoning: I do not have the panel's verbatim reasoning on the surviving claims and will not invent it. The structural read is straightforward: the challenged independent claim 1 and its dependents 2–3 fell on the Raleigh/Sainton/Gernert obviousness theory, while independent claim 5 (the "system on a chip / portable handheld mobile device" claim) and its dependent chain (4, 6–16) survived. The only expert-fight detail I can source is that claim 5's preamble term "portable handheld mobile device" was disputed — Petitioner argued it is non-limiting intended-use language (Ex. 1036, citing Dr. Cooklev's deposition at EX-1037, 31:19-24), and Petitioner's fallback was that Raleigh's vehicle/building units 170a/170b would still render it obvious. Petitioner lost that fight at the FWD.
  • Wrinkle worth verifying: claim 4 is reported as surviving but (per the claim set) appears to depend from claim 1. If claim 1 was canceled, claim 4's practical value is limited. I did not retrieve the FWD's dependency treatment, so I flag this as unverified rather than asserting either way.
• Settlement / termination: No IPR settlement. The trial ran to a Final Written Decision. Samsung requested Director Review on 2024-01-02 (Exhibit 3100); the Director denied Director Review on 2024-01-30 (Paper 38 — "Order Denying Director Review of Final Written Decision"). Source: Docket Alarm, https://www.docketalarm.com/search/?q=patent%3A%289084291%29. The parties settled the appeal (see below), not the trial.
• Appeal: Yes — appealed, then dismissed.
  • Docket: Federal Circuit No. 2024-1655, Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC, appeal from PTAB IPR2022-01005.
  • Disposition: DISMISSED under Fed. R. App. P. 42(b) by joint agreement, order dated 2024-08-05, each party bearing its own costs; mandate issued the same day. PTAB received the Federal Circuit mandate 2024-08-08 (Paper 40 — "Other Fed Circuit mandate"). Order: https://cafc.uscourts.gov/opinions-orders/24-1655.ORDER.8-5-2024_2361746.pdf
  • Consequence: because the appeal was dismissed before decision, the FWD's claim-level rulings (including the survival of claims 4–16) were never reviewed or affirmed by the Federal Circuit. They are final agency action, not binding precedent, but they are unreversed. Note this cuts both ways: Smart Mobile cannot claim CAFC affirmance, and Samsung never got a second bite.
• Defensive value: Claim 1 — the broadest independent claim — is canceled, and claims 2–3 with it; any infringement theory pleaded on claim 1 is dead on arrival and, if the assertion post-dates the FWD, arguably frivolous. But do not mistake this for a clean sweep: claim 5 and its dependents (4, 6–16) survived an 18-month Samsung trial, and Samsung's own appeal was dropped — so a defendant facing claim 5 must build its own invalidity case, and that case will face a well-funded patent owner that has already beaten a sophisticated petitioner once on this record. Combined with the patent's 2019 expiration, the realistic posture is expired, lapsed patent with one surviving independent claim that survived one IPR.

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Strategic summary

Claim status on 9,084,291. Using the FWD caption ("some challenged claims unpatentable") plus the patent owner's own statement ("confirming the patentability of claims 4-16"), the post-IPR picture is:

That "all claims adjudicated" point is unusual and useful: you do not face the typical situation where an IPR knocked out claims 1–10 and the patent owner simply reasserts claims 11–20. Every claim here has an FWD ruling attached.

Estoppel landscape. Under § 315(e)(2), Samsung Electronics Co., Ltd. (and its real parties in interest / privies) are estopped in civil actions from asserting any ground they raised or reasonably could have raised in IPR2022-01005. For a different defendant, there is no statutory estoppel — you are free to run the full Raleigh/Sainton/Gernert art yourself, and more importantly you can run art Samsung never found. Two practical points: (1) the Samsung FWD gives you a free roadmap of what failed — any art that Samsung tried and lost on is not a shortcut; (2) the FWD's invalidity of claims 1–3 is issue-preclusive-ish as a practical matter but not binding on a new defendant; you inherit its persuasive value, not its legal effect. One live § 315(e) issue in this family generally: whether a defensive aggregator or an OEM can be treated as an RPI/privy of a named petitioner (the Board has split on this — see the Unified Patents Director Review request on the '228 patent) — so if you are an OEM sued alongside Samsung, check your privy exposure before assuming you're clear.

Pattern signals. (1) Single petitioner, single trial on this patent. Samsung filed one IPR against the '291, not a serial campaign — and it was the first IPR this patent has ever drawn, filed over a year after the 2021-07-02 W.D. Tex. complaint (6:21-cv-00701). (2) The patent owner litigates its PTAB appeals aggressively in this family but not this one — Smart Mobile has Federal Circuit activity on siblings (9,191,083; 8,842,653; 9,019,946; 9,319,075 — including a 2026-01-13 vacatur/remand and an 2026-08-27 mixed affirmance/vacatur), yet here the petitioner appealed and then walked away. (3) No defensive aggregator. I found no Unified Patents or RPX IPR on the '291 — the Unified Patents patent page exists, but that's a data page, not a proceeding. (4) The patent is expired for fees. Per the record, anticipated expiration 2019-06-04 and $0 lifetime renewal fees paid ("Expired – Fee Related"). An expired, fee-lapsed patent can still be the subject of an IPR (that's exactly what happened), but it cannot support ongoing royalties, and a lapsed patent's enforceability should be verified in USPTO PatentCenter before any substantive response to a demand.

Do not conflate. IPR2022-00982 (Apple/Samsung v. Smart Mobile) is a different patent (8,472,937, all challenged claims unpatentable) — same owner, adjacent docket number, different patent. The 2026 Federal Circuit decisions naming Smart Mobile involve yet other family members. Neither touches the '291.

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Recommended next steps

1. If you are a defendant and the demand letter cites claim 1, 2, or 3: stop there. The Board's 2023-12-01 FWD in IPR2022-01005, captioned "Determining Some Challenged Claims Unpatentable 35 USC § 318(a)," held claims 1–3 unpatentable. Pull the FWD from PTAB E2E / PTAB Decisions (search Case No. IPR2022-01005) and the Docket Alarm mirror at https://www.docketalarm.com/search/?q=patent%3A%289084291%29, and quote the ORDERED paragraph in your response. Verify the exact claim numbers against the ORDERED text before you send it — my claim-level assignment is a two-source inference, not a verbatim quote.
2. If the demand cites claim 5 or its dependents: you have a real fight. Build invalidity from scratch; Samsung's grounds are used up and, on this record, lost. Consider (a) § 101 eligibility — this family's sibling patents have drawn heavy Alice fire in the 2026 CAFC decisions, and the '291's "communication system" claims are structurally exposed; (b) § 112 written-description/enablement on the 1996-priority claim set; and (c) art that post-dates the 1996 priority date but pre-dates the 2014 filing — the 18-year gap between the asserted 1996-12-16 priority date and the 2014-05-08 filing is an obvious attack surface if you can show the claims aren't entitled to the 1996 date.
3. Verify the paper status first. The patent shows Expired – Fee Related with $0 lifetime renewal fees and anticipated expiration 2019-06-04. Confirm in USPTO PatentCenter and check for any petition to accept unintentionally delayed payment or § 41(c) revival. If it lapsed, the entire damages window closed in 2019 — that will usually end the matter faster than any IPR.
4. No pending deadlines to track. IPR2022-01005 is terminated (2023-12-01), Director Review was denied (2024-01-30, Paper 38), and the CAFC appeal was dismissed (2024-08-05) with mandate (2024-08-08, Paper 40). There is no active AIA trial, no § 318 trial clock, no oral hearing, and no FWD due date on this patent. Also confirm the W.D. Tex. case 6:21-cv-00701 is closed — I could not verify its final disposition from the sources retrieved, and I will not assert settlement without a court record.
5. If you are an OEM sued alongside Samsung: run a § 315(e)(2) privy/RPI analysis before relying on Samsung's estoppel. The Board's treatment of aggregator/OEM privies has been inconsistent in this family's dockets, and a privy finding would simultaneously expose you to estoppel and hand the patent owner an RPI-based attack.

Links for the record: PTAB E2E (Case IPR2022-01005) — https://ptacts.uspto.gov/ptabweb/ ; PTAB Decisions — https://www.uspto.gov/patents/ptab/decisions ; Docket Alarm consolidated docket for this patent — https://www.docketalarm.com/search/?q=patent%3A%289084291%29 ; CAFC 2024-1655 dismissal order — https://cafc.uscourts.gov/opinions-orders/24-1655.ORDER.8-5-2024_2361746.pdf ; CourtListener (for the CAFC docket) — https://www.courtlistener.com/.

I'll research the assignment chain for US 9,084,291 from USPTO records and cross-reference NPE databases.

Assignment Record Reconstruction — US 9,084,291 B1

Source-integrity note up front. The Google Patents // USPTO assignment block reproduced in the authoritative full text documents seven recorded post-issuance assignment events for this patent, and I have used those exactly as given. However, I was unable to retrieve the USPTO Assignment Center reel/frame numbers or the named correspondent of record for any link in this chain within this session (the Assignment Center's results are not exposed to the search tooling available to me, and no mirror page surfaced the reel/frame fields). Per your constraints I will not invent reel/frame numbers. Every event below is therefore cited to the Google Patents legal-events/assignment block (the authoritative text you supplied), cross-checked against uspto.report and the Unified Patents patent page. This is a material gap: the "repeat correspondent" signal you specifically asked me to test cannot be scored from the data I could obtain, and I mark it unclear rather than guessing.

Verification entry points: https://assignmentcenter.uspto.gov/ (search "9084291") and https://patents.google.com/patent/US9084291/en#legal-events

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Inventors

Pattern observations (facts, not inference):

• The inventors are the assignee-side principals. All three inventors assigned to IP Holdings, Inc. at the outset, and two of the three (Sanjay K., Sunil K.) executed additional assignments to Smart Mobile, Inc. six years later (2020-09-24). Re-execution of inventor assignments after a corporate chain transfer is the classic "clean up the standing record" step, not a routine internal-reorg artifact.
• A non-inventor appears as an assignor. Rekha K. Rao (Mrs.) executed an assignment of interest to Smart Mobile, Inc. on 2020-09-24, yet is not a named inventor on the '291 patent. A non-inventor conveying an interest is consistent with a spouse/heir holding a community-property or inherited interest, or with an individual who held an equity interest in the transferring entity family. The record as retrieved does not state which; I flag the fact rather than the explanation.
• Time-span anomaly worth noting: the patent issued in 2015 but its priority runs to 1996-12-16 through a four-generation continuation chain (09/281,739 → 09/617,608 → 10/940,428 → 12/912,607 → 14/273,323). The three inventors were therefore maintaining this family across roughly 18 years, which is consistent with a deliberate patent-holding operation rather than a product-driven filing program.
• I could not determine whether any inventor departed the original assignee within 12 months of filing — no employment records, LinkedIn-equivalent, or SEC filings linking these individuals to an operating company were retrieved. Stated as an unknown, not as a negative.

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Original assignee

IP Holdings, Inc. (in the 2020-09-26 recording, styled "IP HOLDINGS, A CALIFORNIA CORPORATION"; Google Patents renders the original assignee as "IP Holdings Inc").

• Product embodying the claims: none found. Neither the authoritative full text, uspto.report, nor the Unified Patents patent page describes any commercial product, shipping hardware, or service from IP Holdings, Inc. The specification is written in prospective/architectural terms ("It is an object of the present invention to provide…"), with no reduction-to-practice narrative or product reference.
• Primary line of business: on the available record, patent holding — the entity received a pure "ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)" from its three inventors and, eleven months after issuance, conveyed the patent out to Smart Mobile, Inc. (2015-07-28). That is a holding-vehicle profile, not an operating-company profile.
• Current status: not determinable from retrieved sources. It had not dissolved or been wound up as of 2020-09-26 (it was still executing assignments as a California corporation on that date). I found no evidence of bankruptcy, Chapter 7/11, receivership, or judicial sale for IP Holdings, Inc. — so the "bankruptcy fire-sale" signal is not present on this record.
• Cross-check caveat: uspto.report's grant page still reads "currently assigned to IP Holdings, Inc." That page reflects the grant-date assignee and is stale — it is contradicted by the 2015, 2020 and Google Patents legal-event records, which show the patent left IP Holdings in 2015. Do not rely on it for current ownership.

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Assignment timeline

Chronology below is by USPTO recording date as listed in the Google Patents assignment block. Execution dates were not retrievable, and no reel/frame was retrievable — flagged on each line. Conveyance type for every event is the recorded descriptor "ASSIGNMENT OF ASSIGNORS' INTEREST (SEE DOCUMENT FOR DETAILS)" unless noted.

1. execution date not retrieved / recorded 2014-05-08 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: Raman K. Rao; Sanjay K. Rao; Sunil K. Rao (individually named)
• Assignee: IP Holdings, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Founders'/inventors' initial conveyance into their own holding company, executed around the filing of application 14/273,323.

2. execution date not retrieved / recorded 2015-07-28 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: IP Holdings, Inc.
• Assignee: Smart Mobile, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Corporate transfer-out from the holding entity to a "Smart Mobile"-branded entity 14 days after the 2015-07-14 grant — i.e., the patent was moved downstream almost immediately on issuance. This is the first link that removes the asset from the inventors' original entity.

3. execution date not retrieved / recorded 2020-09-24 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: Rekha K. Rao (Mrs.) — not a named inventor
• Assignee: Smart Mobile, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Title-curative/"clean-up" conveyance of an individual residual interest shortly before assertion.

4. execution date not retrieved / recorded 2020-09-24 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: Sanjay K. Rao (Mr.) — named inventor
• Assignee: Smart Mobile, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Re-execution of the inventor's assignment directly to the current holder — title-curative, indicating a perceived gap in the 2014/2015 chain.

5. execution date not retrieved / recorded 2020-09-24 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: Sunil K. Rao (Mr.) — named inventor
• Assignee: Smart Mobile, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Same as #4, for the second inventor. Three separate recordings on a single day.

6. execution date not retrieved / recorded 2020-09-26 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: IP Holdings, a California corporation
• Assignee: Smart Mobile, Inc.
• Correspondent: not retrievable — cannot test recurrence
• Context: Confirmatory re-papering of the 2015 IP Holdings → Smart Mobile transfer, executed five years later. Belt-and-suspenders title perfection immediately before enforcement.

7. execution date not retrieved / recorded 2020-11-12 — Reel not retrieved

• Conveyance: Assignment of assignors' interest
• Assignor: Smart Mobile, Inc.
• Assignee: Smart Mobile Technologies LLC
• Correspondent: not retrievable — cannot test recurrence
• Context: Transfer-to-asserter — the operating-named "Inc." is swapped for a licensing-plaintiff LLC. This is the final link and the current recorded owner. It lands ~7.6 months before the first suit asserting this patent (6:21-cv-00701, filed 2021-07-02).

No other recordings appear in the authoritative assignment block. There is no security agreement, license, release, merger, or change-of-name record on this patent, and no defensive-aggregator record.

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Timeline diagram

timeline
    title Ownership of US 9084291
    1996 : Priority date for the family
    1999 : Family CIP application filed
    2014 : Application 14 273 323 filed
         : Inventors assign to IP Holdings Inc
    2015 : Patent issues 14 July
         : IP Holdings transfers to Smart Mobile Inc
    2020 : Rekha Rao assigns to Smart Mobile Inc
         : Sanjay Rao assigns to Smart Mobile Inc
         : Sunil Rao assigns to Smart Mobile Inc
         : IP Holdings confirms transfer to Smart Mobile Inc
         : Smart Mobile Inc to Smart Mobile Technologies LLC
    2021 : First infringement suit filed
    2022 : Samsung IPR petition filed
    2024 : PTAB final decision
         : Samsung appeal dismissed

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NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
Assignments #2 (recorded 2015-07-28) and #7 (recorded 2020-11-12) move the patent from the inventors' own entity through "Smart Mobile, Inc." to Smart Mobile Technologies LLC. The terminal entity's name carries the "Technologies LLC" licensing-plaintiff form, and no product, service, or revenue-generating business attributable to it was found in any retrieved source. Caveat required by your rule: I could not retrieve the LLC's registered-agent address, formation state, or membership from the sources available, so I am not claiming a registered-agent mail-drop on the record — the finding rests on the conveyance pattern plus the total absence of any product footprint, not on naming alone.

2. Known asserter in the chain — PRESENT.
Smart Mobile Technologies LLC is the current assignee and is a high-frequency plaintiff surfaced by Unified Patents (portal patent page: parent company "Smart Mobile Technologies LLC"; case 6:21-cv-00701 in W.D. Tex.) and by the PTAB docket itself, which shows a wave of Apple/Samsung IPRs against this family — including IPR2022-00979, IPR2022-00980, IPR2022-01002, IPR2022-01003 and IPR2022-01005 (the '291 patent itself). It does not appear on your enumerated legacy list (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg), but the criterion explicitly extends to "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff," which this is.

3. Repeat correspondent across the chain — UNCLEAR / NOT RETRIEVABLE.
This is the signal you weighted most heavily and I cannot score it. The correspondent of record field was not obtainable for any of the seven recordings. I will not substitute a guess: a single appearance is not a finding, and I have zero appearances. Action item for verification: pull the correspondent field for all seven recordings in Assignment Center; if one attorney/firm recurs across #1–#7 — especially across the 2015 and the 2020 cluster — that upgrades this to a strong third signal.

4. Cascading transfers — PRESENT.
Five recordings in 49 days: three on 2020-09-24, one on 2020-09-26, and the terminal LLC transfer on 2020-11-12. Chained-entity cleanup of this density inside a single quarter is a recognized pre-assertion signature. I cannot confirm the assignees "share a correspondent address or the same correspondent attorney" (see #3), so this is scored on the consecutive-transfer-within-24-months criterion alone.

5. Pre-litigation transfer — PRESENT (borderline on the 6-month clock).
Terminal transfer recorded 2020-11-12; first asserted suit 6:21-cv-00701, filed 2021-07-02 — a gap of ~7.6 months, i.e. just outside your 6-month trigger. However, the relevant clustering is unmistakable: the entire curative chain (#3–#7) runs 2020-09-24 → 2020-11-12, i.e. completed inside the eight months preceding the complaint. Scored present on the arrangement-to-enable-assertion rationale, with the timing caveat stated explicitly.

6. Bankruptcy fire-sale — NOT PRESENT.
No bankruptcy, insolvency, receivership, assignment-for-benefit-of-creditors, or judicial-sale record was found for IP Holdings, Inc. or Smart Mobile, Inc. IP Holdings was still transacting as a California corporation on 2020-09-26. Stated as a negative finding on the retrieved record; I did not search PACER bankruptcy dockets.

7. Privateering — NOT PRESENT / UNCLEAR.
Privateering requires an identified operating-company transferor asserting through an NPE proxy. Here the transferor of record (IP Holdings, Inc.) shows no product line of its own — it appears to be the inventors' own holding vehicle rather than a third-party manufacturer with a competitive motive. No SEC-filed parent was found. On this record the chain looks like self-monetization by the inventor group, not classic privateering — a distinct and, if anything, more direct NPE posture.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at Smart Mobile Technologies LLC, an active plaintiff, not at RPX, AST, LOT Network, Unified Patents, or OIN. The patent has been litigated by Unified Patents' petitioner-side activity, not acquired by it.

Additional pattern signal not on your list but material

Patent asserted after term expiry. The Unified Patents patent page shows Expiration Date 2019-06-03 / Lifetime Renewal Fees $0 / Lifetime Family Renewal Fees $0, and Google Patents records an anticipated expiration of 2019-06-04 (20 years from the 1999-06-04 family filing). That date precedes every 2020 assignment and precedes the 2021-07-02 complaint. The practical read: the 2020 curative chain and the 2021 assertion were assembled to pursue past/back damages for pre-expiration conduct (subject to the 35 U.S.C. § 286 six-year lookback), on a patent whose maintenance fees were never paid. This also means the "who owns it now" question is largely academic for forward-looking enforcement. Verify the lapse status directly in USPTO PatentCenter — Google's status field is expressly an assumption, and a 2019 lapse is inconsistent with the 2020 recordings unless the fees were reinstated or the expiration date is miscomputed by the aggregator.

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Verdict

NPE — high confidence.

The chain moves the patent out of the inventors' original entity within eleven months of issuance (IP Holdings, Inc. → Smart Mobile, Inc., recorded 2015-07-28), re-papers title through five recordings in 49 days in 2020 (three individual/confirmatory assignments on 2020-09-24, IP Holdings California-corporation confirmation on 2020-09-26, and the terminal Smart Mobile, Inc. → Smart Mobile Technologies LLC transfer on 2020-11-12), then asserts it against Samsung ~7.6 months later in W.D. Tex. 6:21-cv-00701. The terminal assignee is a high-frequency plaintiff surfaced by Unified Patents with at least five IPRs aimed at the family, and no product, service, or operating business attributable to any entity in the chain could be identified. That is ≥2 strong signals (shell-entity/transfer-to-asserter + known high-frequency asserter, buttressed by cascading 2020 transfers and near-pre-suit timing) — high confidence.

Two caveats that could move this verdict, both requiring the Assignment Center: (a) the reel/frame numbers and correspondent of record were not retrievable in this session, so the repeat-correspondent signal is unscored — if a single attorney recurs across all seven recordings it strengthens the verdict, and its absence would weaken it; and (b) the patent appears to have lapsed in June 2019 for non-payment of maintenance fees, which — if confirmed — reframes this as a back-damages assertion on an expired patent rather than an ongoing licensing campaign.

Verify at: https://assignmentcenter.uspto.gov/ (patent number 9084291) and https://portal.unifiedpatents.com/patents/patent/9084291

I'll search for the specific patent number and its cited prior art references.

Let me dig deeper into the cited references for this patent.

Let me try to access the specific citation data from patent databases.

I need to be direct about a retrieval limitation before presenting findings.

Critical caveat up front

I was unable to retrieve the authoritative front-page "References Cited" (U.S. Patent Documents / Foreign Patent Documents / Other References) list for US 9,084,291 B1. My searches against Google Patents, Justia, uspto.report, and the Unified Patents portal did not return an enumerable citation list for this patent. Because your instruction is explicit that I must not fabricate identifiers, I will not produce a list of invented patent numbers and dates. Instead, I report (a) exactly what I did verify, (b) the documents that databases associate with '291 and why that association may or may not be a prior-art citation, and (c) the substantively relevant prior-art landscape for each claim — clearly labeled as analysis rather than as a verified citation list.

Per the operating rules, I treat the number literally as US 9,084,291 B1 (Google writes it "US9084291B1"), App. No. 14/273,323, filed 2014-05-08, granted 2015-07-14, priority 1996-12-16.

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1. What I verified

Note a contradiction worth flagging: the Unified Patents portal lists priority 1996-12-15, application 2014-05-07, grant 2015-07-13 — each one day off the Google Patents values (1996-12-16 / 2014-05-08 / 2015-07-14). I report both and do not reconcile them, consistent with the prior sections of this analysis.

2. Documents that appear on/near the '291 record — and their actual status

These surfaced in database listings linked to '291. Important: they are mostly family members or related applications, not §102 prior art, and I say so per item:

1. US 7,848,300 B1 — Rao et al., "Method and system to interface internet protocol (IP) based wireless devices with networks," priority 1996-12-16, granted 2010-12-07, assignee IP Holdings, Inc.

• Role: This is the immediate grandparent in '291's continuity chain (10/940,428). It is a §120 benefit reference, not prior art against '291 (same inventors/family; disqualified as prior art under §102(b)(2)(C) style family considerations and by common ownership).

1. US 2011/0038637 A1 — Rao, Raman K., "Interfacing internet protocol-based wireless devices with networks," priority 1996-12-16, published 2011-02-17.

• Role: This is the publication of the parent application Ser. No. 12/912,607. Again a benefit/continuity reference, not prior art against '291.

Together these two account for the "US7848300B1 / US20110038637A1" entries that appear under a "Patent Citations (106)" style heading on the related family page for US 9,614,943. I want to be precise: that "(106)" figure and that table belong to a different family member's page, so I cannot attribute "106 citations" to '291 and will not.

1. US 7,277,679 B1 — "Method and apparatus to provide multiple-mode spatial processing to a terminal unit," priority 1996-12-16, granted 2007-07-24, assignee Ip Holdings, Inc.

• Role: Appears on a Google Patents page in a table alongside US 9,084,291 with the same 1996-12-16 priority and the Ip Holdings assignee. This strongly suggests it is a same-family / same-priority document (a §120 or sibling reference), not third-party prior art. I flag that I could not confirm whether it is cited by or merely related to '291.

1. US 6,067,290 A — "Spatial Multiplexing in a Cellular Network."

• Role: Appears on the same Unified Patents portal page as US-9084291-B1. On that portal, co-listed patents are usually similarity/semantic neighbors, not citations. I therefore treat this as unverified and note it only because it is topically on point (spatial multiplexing = the "simultaneously transmit/receive multiple signal streams" concept).

Bottom line on citations: I verified zero third-party §102 prior-art citations with certainty. The four documents above are family/continuity references or topically similar neighbors.

3. Substantively relevant prior-art landscape (analysis, NOT a citation list)

Because the front-page citations were not retrievable, here is the type of art that would matter and the claims each would be aimed at (per your request to map to claims under §102). I am explicitly not attributing these to specific verified references.

• Claim 1 (independent; multi-component system with two dedicated antennas, simultaneous multi-stream TX/RX forming one logical data stream, differing frequencies, multiple protocols, adapter with multiple ports, "multi band network switch box"):
• The novelty-critical element is the two dedicated antennas + simultaneous multi-stream transfer representing one data stream (spatial-multiplexing/MIMO). Art hitting this would target the "dedicated antennas" and "collectively representing the first data stream" language.
• Secondary elements (multi-frequency, multi-protocol, multi-port adapter, multi-environment switch box) are individually old and would more likely be §103 combination material than §102 anticipation.
• Claim 5 (independent; system-on-a-chip in a portable handheld, multi-band RF T/R unit, video + WWAN + LAN + USB):
• The novelty-critical element is the SoC integration of multi-band, multi-protocol, simultaneous-stream RF front end in a handheld, with video/WWAN/LAN/USB. Art dating before 2000 (the parent's effective date) is unlikely to disclose full SoC MIMO; art would more plausibly be combined under §103.

§102 vs §103 caution: For a 1996–2000 priority window, single-reference §102 anticipation of claims 1 or 5 is a demanding standard because these claims stack multiple independent features. Most real challenges (including the one actually filed) are §103 obviousness combinations, not pure §102 anticipation.

4. The actually-litigated prior art (the strongest lead)

The most likely authoritative identification of the prior art actually asserted against '291 is not the front page but the petition record. As established in the prior sections:

• IPR2022-01005, Petitioner Samsung Electronics Co., Ltd., Patent Owner Smart Mobile Technologies LLC, filed 2022-05-23, instituted 2022-12-05, all claims 1–16 challenged, FWD 2023-12-01, Director Review denied 2024-01-30, appeal No. 2024-1655 dismissed 2024-08-05.
• The petition (Exhibit 1002-2 = prosecution-history excerpt of App. 14/273,323) would state the actual grounds and references — that is the document you want for a definitive "which references, which claims" mapping.

Since I could not retrieve that petition's exhibit list in the searches available to me, I will not guess at the reference combinations.

5. What I could not verify (stated plainly)

• The enumerated front-page "References Cited" for '291 (U.S., foreign, and NPL).
• Whether US 7,277,679 and US 6,067,290 are citations of '291, citations by '291, or merely DB co-listings — unconfirmed.
• The specific prior-art references and claim mappings in IPR2022-01005.
• Whether the "82 Patent Art" count on the Unified Patents portal corresponds to the front-page citations.

6. Recommended authoritative sources to close the gap

• USPTO PatentCenter / PatFT for App. 14/273,323 — the "References Cited" and "Foreign References" fields on the issued patent's front page (this is the literal source you asked for).
• PTAB P-TACTS, IPR2022-01005 — Samsung's Petition and Exhibits 1001–10xx, which enumerate the asserted prior art per ground and per claim.
• Google Patents US9084291B1/en — the "Patent Citations" and "Cited By" accordions (which I could not expand via search).

If you can supply the front-page citation list (or the IPR2022-01005 exhibit list), I will produce the exact per-reference table you asked for — full citation, publication/filing date, description, and the specific claim(s) each reference anticipates under 35 U.S.C. § 102 — rather than the framework above.

I'll research the prior-art record for this patent, since the provided page text did not include a populated "Prior Art" citations table.

Key finding: the Board's FWD relied on a "Raleigh–Sainton–Gernert" ground. Let me get the specific references and the petition's full ground set.

Now I have the ground structure. Let me identify the specific prior-art references (EX-1004 Raleigh, EX-1005 Sainton, EX-1008 Gernert) and the patent's own cited art.

Obviousness Analysis — U.S. Patent No. 9,084,291 B1 under 35 U.S.C. § 103

Builds on the two prior sections. Where this section resolves an open item flagged earlier, I say so explicitly.

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0. Two threshold corrections to the record (read first)

(a) The "Prior Art section of this page" was not populated in my source fetch. The Google Patents text supplied to me contains the prior-art keyword field ("communication; data; wireless; signal; antennas") and the Background of the Invention discussion of the prior art, but the front-page "(56) References Cited" tables and the "Cited By" tables were stripped from the fetched HTML — there is no reference list to analyze. I therefore cannot analyze the examiner-cited art, and I will not invent it. Instead I analyze:

1. the patent's own admissions about the prior art (which are § 103-relevant as statements of the then-known state of the art), and
2. the actually-litigated prior art, which is far more probative because a tribunal has already ruled on it: the single ground in IPR2022-01005.

(b) Earlier-section item now resolved. The Patent summary section flagged as unverified "the substantive outcome of IPR2022-01005's Final Written Decision." It is now verified from the FWD itself (Paper 36, Dec. 1, 2023):

"…we determine that Samsung Electronics Co., Ltd., [[Samsung Electronics America](/litigations/by-defendant/Samsung%20Electronics%20America), Inc.](/litigations/by-plaintiff/Samsung%20Electronics%20America%2C%20Inc.), and Apple Inc. (collectively, 'Petitioner') have shown by a preponderance of the evidence that claims 1-3, but not claims 4-16, of U.S. Patent No. 9,084,291 B1 … are unpatentable."

That reconciles the two earlier descriptions: Google/Docket Alarm's "Determining Some Challenged Claims Unpatentable" = claims 1–3; Graves & Shaw's "confirming the patentability of claims 4-16" = claims 4–16. Both are accurate. Source: https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2022-01005/Samsung_Electronics_Co._Ltd._v._Smart_Mobile_Technologies_LLC/docs/12-01-2023-Board/Final_Written_Decision__original-36-Determining_Some_Challenged_Claims_Unpatentable_35_USC_%C2%A7_318a.pdf

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1. Governing law and framework

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2. The patent's own admitted state of the art (§ 103 backdrop)

The '291 specification admits the following as pre-existing, which is the cleanest starting point for any obviousness case:

"The typical cellular telephone/mobile device (CT/MD) today has a single antenna, which is directly connected to a single receiver." (Background)
"While spread spectrum techniques greatly increase the reliability and stability of the transmission, signal 'fade' and communication disconnects are often encountered." (id.)
"Some communications systems may rely on two separate systems; one at a high frequency and preferably using spread spectrum … and another providing a different set of frequencies, such as lower frequencies. The secondary system is used when signal fade is a problem…" (id.)
"The typical CT/MD has one transmitter and one receiver (T/R), with one antenna. An unfulfilled need exists for multiple T/R in a CT/MD…" (Summary)

So the patent concedes that multi-band operation, frequency-selection for fade mitigation, and multi-service convergence (the reference to a single device being "a cell phone, CB radio, and wireless phone") were known. The asserted novelty is therefore narrow: aggregating these known capabilities into one unit with multiple T/R units, multiple antennas, parallel processing, and multiple I/O ports.

This is materially damaging under § 103 because the specification frames the invention as an integration/packaging achievement ("possible due to advances in the art which allow the necessary components to be integrated, with the size shrunk to achieve the package, performance, and cost desired") — i.e., a classic KSR situation where the remaining difference is a design/engineering trade-off rather than a new technical principle.

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3. The adjudicated combination — Ground 1: Raleigh + Sainton + Gernert

The Board instituted on "the only presented challenge," i.e., a single obviousness ground. This is the combination the task asks about, and it has been tested on the merits.

3.1 The references

3.2 Claim-1 element mapping and why the Board found it obvious

The FWD held: "Raleigh, Sainton, and Gernert teach or suggest all the limitations of claim 1"; "one of ordinary skill in the art would have combined these references with a reasonable expectation of success." (Paper 36 at 44–63.)

3.3 Motivation to combine — the four strongest rationales

1. Same field, same problem, same solution direction. Raleigh, Sainton and Gernert all sit in wireless communication / mobile terminal design. The '291 patent's stated problem — low wireless data rates (it names "14.4 KBPS … the best reliable speed") and signal fade — is precisely the problem Raleigh addresses by spatial multiplexing and by exploiting multipath, and which Sainton addresses by multi-mode/multi-band operation.

2. Art that expressly contemplates the claimed host device. Raleigh repeatedly describes its technology as applicable to "remote units" without limitation, and the FWD record treats "remote units" as encompassing handheld devices; Sainton independently discloses a portable handheld cellular device. When the primary reference's own disclosure is framed at the level of a generic "remote unit," substituting a handheld terminal is a predictable use of a known element, not a new invention (KSR).

3. Known, enumerated engineering benefits of the exact claimed structure. Multiple antennas → greater bandwidth/tuning; multiple T/R units → parallel paths that lift the conversion-rate bottleneck; multiple ports → universal connectivity. The '291 specification itself asserts each of these as the reason for the structure. Where a reference teaches the same technique for the same reason, the combination is obvious as a matter of "improving a known technique to address a known need" and "obvious to try working with a finite number of identified, predictable solutions."

4. Integration was the stated enabling development. The patent concedes the invention "is possible due to advances in the art which allow the necessary components to be integrated, with the size shrunk to achieve the package, performance, and cost desired." Reliance on contemporaneous integration/miniaturization advances to combine known circuit blocks is not a patentable contribution.

Result: claims 1, 2, 3 were held unpatentable under § 103. This is the one ground on which the record has actually adjudicated the question.

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4. Where the § 103 case failed, and why (claims 4–16)

This is the analytically important part, and it is where a future challenger should focus.

4.1 What the Board held

The Board's caption for the dispositive section: "Petitioner Does Not Show Raleigh's Remote Unit Would Have Been 'Easily' Implemented as 'a Portable Handheld Mobile Device'" (Paper 36 at 31–33).

4.2 Why the Board got there — and the two doctrinal criticisms

Samsung's request for Director Review (Paper 37, Jan. 2, 2024) attacks this on two grounds, both of which are real vulnerabilities in the FWD:

1. Wrong standard for reasonable expectation of success. The Board asked whether it would have been "easy" to implement Raleigh's remote unit as a handheld device, rather than whether a skilled artisan would have had a reasonable expectation of success. Those are different inquiries, and the Board's framing imports a higher burden than § 103 requires (cf. In re O'Farrell / Pfizer line on reasonable expectation of success).
2. Failure to weigh the specification's own (thin) disclosure. The Board did not consider that the '291 patent "provides little guidance on how to implement such features in mobile devices" — it "merely illustrates CT/MDs as simple block diagrams." Under KSR ("where there is a design need … and there are a finite number of identified, predictable solutions"), the absence of any implementation teaching in the patent cuts against non-obviousness, not for it.

4.3 A structural anomaly to flag — and to exploit

Dependent claim 4 was held non-obvious while the independent claim 1 from which it depends was held unpatentable. A dependent claim contains every limitation of the claim from which it depends; if claim 1 is obvious in view of Raleigh+Sainton+Gernert, claim 4 can only survive if its added limitation ("portable handheld wireless device including functions of a cell phone") is independently non-obvious over that same combination. Petitioners essentially made this point, and the Director Review request argues it directly ("clear evidence that portable handheld wireless devices (e.g., cellular phones) were well-known by the 1999 filing date").

Practically: claims 4–16 survived on the narrow ground that the Petitioner failed to carry its burden on the handheld/SoC limitations — not because the Board found a technical contribution. The claims survived on evidentiary insufficiency, which is exactly the type of outcome that a better-supported second challenge can reverse.

4.4 Finality

• Director Review denied Jan. 30, 2024 (Paper 38) — per the earlier section; the Paper 37 rehearing request is the substantive document.
• Fed. Cir. No. 24-1655 dismissed under Fed. R. App. P. 42(b) by joint agreement, Aug. 5, 2024, mandate same day.
• Consequence: claims 1–3 are cancelled; claims 4–16 stand, and the non-obviousness findings as to the Raleigh+Sainton+Gernert ground are final as between Samsung/Apple and Smart Mobile. They are not a general judgment of validity, and they do not bind a differently-supported ground or different petitioner.

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5. Additional / alternative combinations a challenger should run

I list these as combinations to build, with the element each is aimed at. I deliberately do not assign fabricated reference numbers.

Two § 103 rules that will constrain any future challenge — flag these now

1. Common ownership / pre-AIA § 103(c). The Rao family's own earlier patents in this chain (US 6,169,789; US 7,286,502; US 7,848,300, and siblings like the '083, '653, '946, '075 patents), if they qualify as § 102(e) art, are commonly owned (IP Holdings → Smart Mobile → Smart Mobile Technologies LLC) and therefore excluded from an obviousness combination. A challenger cannot use the patentee's own parent disclosures to fill the claim 4/5 handheld or SoC gap.
2. Priority-date sensitivity. If a challenger successfully argues the 1996-12-16 Google Patents priority date controls (rather than the Board's 1999 date), most late-1990s multi-antenna and handheld art falls out of the prior art entirely — the opposite of what a challenger wants. The 1999 date is the challenger's friend. Expect this to be litigated.

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6. Secondary considerations

I found no secondary-considerations record that would change the analysis. Notably:

• The patent is "Expired – Fee Related" with $0 lifetime renewal fees paid and anticipated expiration 2019-06-04 (Google Patents) / 2019-06-03 (Unified Patents). There is no commercial product of record, and therefore no nexus evidence of the type that would be needed (cf. Fox Factory v. SRAM, 944 F.3d 1366 (Fed. Cir. 2019); In re Kao).
• No secondary-considerations finding appears in the FWD material I retrieved.

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7. Bottom line

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Explicit caveats on this section

• I could not verify the patent numbers for EX-1005 (Sainton) and EX-1008 (Gernert). Raleigh is identified as US 6,144,711 with high confidence from matching abstract/figure text in the IPR record, but the '291 papers I retrieved say only "Raleigh (EX-1004)." Treat any number as unconfirmed.
• The provided Google Patents text does not contain a "(56) References Cited" table, so I could not analyze the art of record before the examiner (Phirin Sam, Art Unit 2476). The examiner's allowance of claims 4–16 in 2015 is not evidence of non-obviousness, but I cannot assess what he considered.
• The claim 1 text in the provided file is truncated mid-limitation; the element-by-element mapping in §3.2 relies on the earlier section's plain-language reading of claims 1–16 (sourced from the Justia mirror), not on a complete verbatim claim set in the authoritative text.
• The 1996 vs. 1999 priority-date discrepancy between Google Patents (1996-12-16) and the FWD ("earliest … June 4, 1999") is unresolved. It materially affects which art qualifies and should be verified against the file wrapper.
• The Board's adopted POSITA definition was not retrievable; the definition in §1 is my own and is offered as a placeholder, not as the record.