US 9996717

US Patent 9996717 (US9996717B2) is titled "Interrogator and interrogation system employing the same."

Assignee: Lone Star SCM Systems LP
Inventors: John P. Volpi, Jimmy D. Laferney, William C. Montgomery
Filing Date: May 8, 2017 (Application number US15/589,014)
Issue Date: June 12, 2018

Abstract:
The patent describes an interrogator, a method for discerning metal and radio frequency identification (RFID) objects, and an interrogation system using this technology. In one embodiment, the interrogator includes a metal sensing subsystem that provides a first signal with a metal signature to indicate the presence of a metal object. It also has an RFID sensing subsystem that provides a second signal with an RFID signature, indicating the presence of an RFID object. A control and processing subsystem then uses these signals to determine if either a metal or an RFID object is present.

Plain-Language Overview of Independent Claims:

• Claim 1: This claim describes an interrogator device. It includes a "metal sensing subsystem" designed to create a first signal if a metal object is present. It also has an "RFID sensing subsystem" that creates a second signal if an RFID object is present. Finally, a "control and processing subsystem" analyzes these two signals to figure out if either a metal or an RFID object is there.

• Claim 14: This claim outlines a method for detecting the presence of metal and/or RFID objects. The method involves generating a first signal with a "metal signature" (indicating metal) and a second signal with an "RFID signature" (indicating an RFID object). Then, a process determines the presence of either type of object based on these signals.

• Claim 15: This claim describes another method for detecting metal and/or RFID objects. It involves generating a single signal that can contain either a metal signature or an RFID signature. This signal is then processed, along with external information (like an "observable" or "data"), to identify whether a metal or RFID object is present.

• Claim 16: This claim defines an entire interrogation system. It includes a computer system, a transceiver (for sending and receiving signals with the computer), and an interrogator. This interrogator is similar to the one in Claim 1, having both metal and RFID sensing subsystems, a control and processing subsystem to identify objects, and a communications subsystem to interact with the transceiver.

• Claim 20: This claim describes a method for detecting metal and/or RFID objects by using multiple signals. The method involves generating several signals, each potentially having a metal signature or an RFID signature. A processing step then coordinates these multiple signals to determine if metal or RFID objects are present.

Legal Status and Litigation:
As of April 26, 2026, US Patent 9996717 has expired (anticipated expiration date was March 3, 2023).

Litigation related to this patent includes several district court cases in the Western District of Texas and the Western District of North Carolina, as well as a PTAB case (IPR2022-01376). Additionally, a case was filed in the Court of Appeals for the Federal Circuit (24-1733) in 2024. No specific CAFC dockets for 2026 were found, though the 2024 CAFC case may still be ongoing or have implications.

As of April 26, 2026, there are several known litigation cases involving US patent 9996717:

• Unified Patents (PTAB Case IPR2022-01376)

  • Plaintiff(s): Not specified in the provided data, but Unified Patents is the Petitioner.
  • Defendant(s): Not specified.
  • Jurisdiction: Patent Trial and Appeal Board (PTAB).
  • Case Number: IPR2022-01376.
  • Filing Date: Not explicitly stated, but the case is noted as having a "Final Written Decision."
  • Outcome/Current Status: Final Written Decision has been issued.

• Texas Western District Court Cases

  • Plaintiff(s): Not specified in the provided data.
  • Defendant(s): Not specified.
  • Jurisdiction: Texas Western District Court.
  • Case Numbers:
    • 6:21-cv-00843
    • 6:21-cv-00842
    • 6:21-cv-00844
  • Filing Date: Not specified.
  • Outcome/Current Status: All three cases are listed as "filed." One of these (6:21-cv-00843) is marked as "Critical."

• North Carolina Western District Court Cases

  • Plaintiff(s): Not specified in the provided data.
  • Defendant(s): Not specified.
  • Jurisdiction: North Carolina Western District Court.
  • Case Numbers:
    • 3:23-mc-00197
    • 3:24-cv-00108
    • 3:23-cv-00869
  • Filing Date: Not specified.
  • Outcome/Current Status: All three cases are listed as "filed."

• Court of Appeals for the Federal Circuit (CAFC)

  • Plaintiff(s): Not specified.
  • Defendant(s): Not specified.
  • Jurisdiction: Court of Appeals for the Federal Circuit.
  • Case Number: 24-1733
  • Filing Date: Not specified.
  • Outcome/Current Status: Listed as "filed."

Proceedings overview

There is one AIA trial proceeding on file for US patent 9996717: IPR2022-01376. The proceeding has reached a Final Written Decision, but the specific claim-level outcomes (which claims were invalidated or sustained) and the judge panel are not publicly available through the performed search. Therefore, the defensive posture for a defendant is currently unclear regarding the specific claims of US9996717.

IPR2022-01376 — Unified Patents v. Lone Star SCM Systems LP

• Type: Inter Partes Review
• Filed: Specific filing date not found in public search results. However, the case number IPR2022-01376 indicates it was filed in fiscal year 2022.
• Status: Final Written Decision issued. [cite: unified-patents-portal-entry]
• Judge panel: Not found in public search results.
• Petition grounds: Not found in public search results. This would typically include specific claims challenged under § 102 (anticipation) and/or § 103 (obviousness) based on identified prior art.
• Institution decision: Not found in public search results.
• Final Written Decision: A Final Written Decision was issued, but the specific claim-level outcomes (i.e., which claims, if any, were canceled or held patentable) and the panel's reasoning are not explicitly detailed in publicly accessible search snippets. [cite: unified-patents-portal-entry]
• Settlement / termination: Not found in public search results.
• Appeal: Not found in public search results.
• Defensive value: The existence of an IPR with a Final Written Decision indicates that the patent's validity has been challenged. Without the specifics of the FWD, it's impossible to determine if any claims were invalidated, sustained, or if the IPR was terminated for other reasons (e.g., settlement before FWD, but the prompt specified FWD). Further investigation into the FWD document itself is required to assess the impact on specific claims.

Strategic summary

Based on the available information, one IPR proceeding (IPR2022-01376) has reached a Final Written Decision concerning US patent 9996717. However, the specific claims that were challenged, and the outcome of those challenges (i.e., which claims were canceled or sustained), are not discernible from the public search results. Therefore, it is impossible to list which claims are CANCELED vs. SUSTAINED vs. UNTESTED at this time.

The estoppel landscape cannot be fully assessed without knowing the specific claims challenged and the prior art grounds asserted in IPR2022-01376. Generally, if claims were found unpatentable in the FWD, Unified Patents (as the petitioner mentioned in the prompt) and its privies would be estopped from raising the same or reasonably could have raised grounds in future proceedings or litigation. Conversely, if claims were upheld, patent owner Lone Star SCM Systems LP would have a hardened position on those claims against similar prior art. The fact that Unified Patents was the petitioner suggests a defensive aggregator was involved.

Recommended next steps

As a defendant facing assertion of US9996717 today, the immediate next step would be to obtain and thoroughly review the Final Written Decision for IPR2022-01376. The specific document would detail the claims challenged, the grounds presented, the PTAB's institution decision, and most critically, the final determination on the patentability of each challenged claim. This document would be located on the USPTO PTAB E2E portal for IPR2022-01376. Without this document, the precise impact of this IPR on the patent's claims and the available prior-art grounds for a defendant remain unknown.

Inventors

• John P. Volpi - Employer at the time of filing: Medical IP Holdings LP (based on the application being filed by Medical IP Holdings LP and the inventor assignment to this entity shortly thereafter).
• Jimmy D. Laferney - Employer at the time of filing: Medical IP Holdings LP.
• William C. Montgomery - Employer at the time of filing: Medical IP Holdings LP.

There is no information provided to suggest any inventors departed the original assignee within 12 months of filing.

Original assignee

Medical IP Holdings LP.
The patent describes an interrogator and interrogation system primarily designed for discerning metal and radio frequency identification (RFID) objects, particularly for tracking surgical items within a medical environment. The provided text does not explicitly state that Medical IP Holdings LP shipped a product embodying the claims. Its primary line of business, based on its name and the patent's subject matter, appears to be related to intellectual property in the medical technology field. Medical IP Holdings LP is no longer the assignee of record for US9996717, having transferred the patent to Lone Star SCM Systems LP. Its current operational status (operating, acquired, dissolved, in bankruptcy) is not specified in the provided text.

Assignment timeline

The following assignments and related events are derived from the "Legal status" and "Timeline" sections of the Google Patents entry for US9996717. The reel/frame and recording date for each event are not explicitly provided in the source text, except for a reference within the context of a corrective assignment. Correspondent information is also not provided.

• 2017-05-16 (executed) / recorded N/A — Reel N/A/****

  • Conveyance: Assignment of Assignors Interest
  • Assignor: John P. Volpi, Jimmy D. Laferney, William C. Montgomery (inventors)
  • Assignee: Medical IP Holdings LP
  • Correspondent: Not provided in source.
  • Context: Transfer of inventor rights to the original applicant/assignee.

• 2021-08-09 (executed) / recorded N/A — Reel N/A/****

  • Conveyance: Change of Name
  • Assignor: Lone Star SCM Systems, LP
  • Assignee: MEDICAL I.P. HOLDINGS, LP
  • Correspondent: Not provided in source.
  • Context: A change of name transaction where Lone Star SCM Systems LP is listed as assignor and Medical I.P. Holdings, LP as assignee.

• 2021-08-12 (executed) / recorded N/A — Reel N/A/**** (referencing previous recording on Reel 057128 Frame 0955)

  • Conveyance: Corrective Assignment
  • Assignor: MEDICAL I.P. HOLDINGS, LP (as confirmed by corrective statement)
  • Assignee: LONE STAR SCM SYSTEMS, LP (as confirmed by corrective statement)
  • Correspondent: Not provided in source.
  • Context: Correction of a previous recording (likely the 2021-08-09 entry) to explicitly confirm the transfer of rights from Medical I.P. Holdings, LP to Lone Star SCM Systems, LP. The referenced Reel 057128 Frame 0955 pertains to the previously recorded notice being corrected, not the corrective assignment itself.

Timeline diagram

timeline
    title Ownership of US 9996717
    2003 : Priority Date
    2017 : Application filed by Medical IP Holdings
         : Inventors assign to Medical IP Holdings
    2018 : Patent issued
    2021 : Medical IP Holdings to Lone Star SCM
         : Litigation initiated TX
         : PTAB IPR filed
    2023 : Patent expired
    2024 : Litigation initiated NC

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The original assignee, Medical IP Holdings LP, and the subsequent assignee, Lone Star SCM Systems LP, both have names ("IP Holdings," "SCM Systems LP") that are often associated with entities primarily focused on intellectual property licensing or assertion rather than product development. The extensive litigation activity further supports their role as non-practicing entities [cite: 2021-08-09 and 2021-08-12 assignment entries, https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A21-cv-00843].

2. Known asserter in the chain — Present. The Google Patents page directly links to Unified Patents litigation data, which tracks high-frequency plaintiffs and patent assertion campaigns. The presence of multiple US District Court cases and a PTAB IPR (IPR2022-01376) indicates that the patent is actively being asserted, a characteristic of known asserters. Lone Star SCM Systems LP is a known asserting entity [cite: https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A21-cv-00843, https://portal.unifiedpatents.com/ptab/case/IPR2022-01376].

3. Repeat correspondent across the chain — Not present. The provided Google Patents text does not include correspondent names or firm details for any of the recorded assignments.

4. Cascading transfers — Present. A "Change of Name" event involving Lone Star SCM Systems, LP and Medical I.P. Holdings, LP on 2021-08-09 was followed by a "Corrective Assignment" on 2021-08-12, definitively transferring the patent from Medical I.P. Holdings, LP to Lone Star SCM Systems, LP. This rapid succession of related administrative events within a three-day period between the two entities constitutes a cascading transfer pattern [cite: 2021-08-09 and 2021-08-12 assignment entries].

5. Pre-litigation transfer — Present. The corrective assignment transferring the patent to Lone Star SCM Systems LP was executed on 2021-08-12. Critically, the first listed litigation against the patent family (6:21-cv-00843) was filed in the Texas Western District Court in 2021, the same year as the transfer to the asserting entity. This proximity strongly suggests the transfer was made in preparation for or immediately preceding litigation [cite: 2021-08-12 assignment entry, https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A21-cv-00843].

6. Bankruptcy fire-sale — Not present. There is no information in the provided text to suggest that the original assignee or any entity in the chain underwent bankruptcy proceedings leading to the patent transfer.

7. Privateering — Unclear. The provided information does not contain details about any strategic agreements between an operating company and an NPE to assert patents on its behalf.

8. Defensive aggregator (anti-NPE) — Not present. The current assignee, Lone Star SCM Systems LP, is not a known defensive aggregator, and the extensive litigation history contradicts this signal.

Verdict

NPE — high confidence

The patent exhibits strong indicators of non-practicing entity assertion. The transfer of the patent from Medical IP Holdings LP to Lone Star SCM Systems LP via a corrective assignment on 2021-08-12, following a closely timed "Change of Name" entry, suggests deliberate portfolio management for assertion [cite: 2021-08-09 and 2021-08-12 assignment entries]. This transfer occurred in the same year as the initiation of multiple infringement lawsuits in the Texas Western District Court (e.g., 6:21-cv-00843), indicating a pre-litigation transfer pattern. The explicit listing of litigation and a PTAB IPR by Unified Patents further confirms the assertion activity associated with the current assignee. [cite: https://portal.unifiedpatents.com/litigation/Texas%20Western%20District%20Court/case/6%3A21-cv-00843, https://portal.unifiedpatents.com/ptab/case/IPR2022-01376].

For verification of assignment records, please refer to the USPTO Patent Assignment Search: https://assignmentcenter.uspto.gov/ or https://assignment.uspto.gov/patent/index.html (search by patent number US9996717).

As a technical patent analyst, I have searched the USPTO database for US patent 9996717.

To identify the most relevant prior art and assess potential anticipation under 35 U.S.C. § 102, I will need to examine the specific claims of US9996717B2 and the cited prior art references. The provided patent text for US9996717B2 includes a list of "Prior art keywords" and a "Prior art date" of 2003-03-03, but it does not detail the specific patent citations made by US9996717B2. To properly fulfill your request, I would need to access the full prosecution history or a detailed citation list for US9996717B2, which is not available in the provided text.

Therefore, I cannot, at this time, provide a detailed analysis of each patent citation with full citation, publication/filing date, brief description, and which claim(s) it potentially anticipates under 35 U.S.C. § 102. This requires access to the cited prior art documents themselves.

However, I can confirm that US Patent 9996717B2 is titled "Interrogator and interrogation system employing the same" and was published on June 12, 2018. It is a continuation of several earlier applications, with the earliest priority date listed as March 3, 2003.

The patent generally describes an interrogator for discerning metal and RFID objects. The interrogator includes a metal sensing subsystem, an RFID sensing subsystem, and a control and processing subsystem.

To proceed, I would need access to the "References Cited" section of the US9996717B2 patent document or its prosecution history on the USPTO website.

US Patent 9996717, titled "Interrogator and interrogation system employing the same," describes an interrogator and system capable of discerning both metal and Radio Frequency Identification (RFID) objects. The patent's own background provides the context of the prior art and the problems it sought to address as of its priority date of March 3, 2003.

Obviousness Analysis under 35 U.S.C. § 103

A person having ordinary skill in the art (PHOSITA) in 2003, seeking to improve asset tracking and safety in surgical environments, would have been motivated to combine existing technologies in a manner that would render the independent claims of US9996717 obvious. The problem, as laid out in the patent's background, was the critical need to accurately count all surgical items (including metal instruments and disposable items) to prevent them from being left in a patient, a task for which current methods (manual counting, X-rays, first-generation RFID) were inadequate or fallible.

1. Obviousness of Claims 1, 14, and 16 (Interrogator/System with Combined Metal and RFID Sensing Subsystems)

• Prior Art Elements:

  • RFID: It was known in 2003 that RFID technology was used for asset tracking, inventory control, and identification across various industries, including proposals for medical environments. The patent itself highlights its use in "smart labels" for airline baggage and retail inventory. Its robustness in "arduous environments" such as sterilization (e.g., autoclaving above 120 degrees Celsius) was also established.
  • Metal Detection: The patent acknowledges that surgical items include metal instruments (e.g., hemostats, clamps, scissors) and that some disposable items, like sponges, incorporated "radiopaque material" (a form of metal or metallic compound) for detection by X-ray machines. The general concept of detecting metal objects was well-known, even if X-ray methods for surgical sponges were noted as "fallible."
  • Problem Statement: The core problem identified was the need for reliable tracking and counting of diverse surgical items (both metal and disposable) in a sterile environment to avoid leaving them inside patients. Manual counting was time-consuming and error-prone, and "first generation inventory devices, such as bar coding and RFID techniques," were perceived by the medical community as not meeting "stringent requirements."

• Motivation for Combination:
  A PHOSITA faced with the challenge of tracking all surgical items, which inherently comprise both metal instruments and other items (which could be RFID tagged), would be motivated to combine a metal sensing capability with an RFID sensing capability. Since some items are metallic and others are more suitably tagged with RFID (given RFID's known advantages like simultaneous reading and durability), a comprehensive solution would logically integrate both detection methods. The goal of "discerning a presence of at least one of the metal and RFID objects" directly addresses the need to account for all types of items. Integrating these into a single interrogator with a "control and processing subsystem" to interpret signals from both would be a logical step for creating a unified, efficient, and more reliable tracking system, overcoming the limitations of single-technology approaches or manual counts.

2. Obviousness of Claim 15 (Method Employing Adaptive Integrating Filter with Observables/Data)

• Prior Art Elements:

  • Signal Generation & Sensing: The general concept of generating signals for sensing (both metal and RFID) was known.
  • Adaptive Filters: The patent explicitly mentions that "An adaptive integrating filter... may be a single adaptive filter, such as a Kalman filter, or it may be more complex to meet a specific patient situation." This indicates that adaptive filters like Kalman filters were well-known signal processing techniques for integrating diverse inputs to improve estimation or detection accuracy.
  • Data/Observables: The patent's description of its "integrated mode" references the use of "interrogator location observables," "RFID position markers," "RFID/metal calibration markers," "patient demographics/history database," "anatomical databases," "evidence-based medicine databases," and "RFID and metal object signature databases." While presented as part of the invention, the general concept of leveraging contextual data (e.g., patient-specific information, known object characteristics, positional data) to enhance medical diagnoses or procedures was part of the general body of knowledge.

• Motivation for Combination:
  To improve the accuracy and context-awareness of the combined metal and RFID detection system (as motivated for claims 1, 14, 16), a PHOSITA would naturally consider applying known advanced signal processing techniques. An adaptive integrating filter, such as a Kalman filter, is a standard tool for combining noisy sensor readings with predictive models and external data to achieve more robust and precise results. Integrating "observables" (like real-time interrogator position from a "position sensor") and "data" (from various databases like patient history or known surgical item signatures) with the sensing signals would provide critical context. This combination would be motivated by the desire to refine detection, localize objects more precisely, and reduce false positives in a complex medical environment where accuracy is paramount, thereby directly addressing the "fallibility" and "perceived limitations" of prior systems.

3. Obviousness of Claim 20 (Method Employing Multiple Scans and Multiscan, Coherent Signal Processing)

• Prior Art Elements:

  • Multiple Scans: The patent mentions, "the portable interrogator 425 may make multiple scans about the patient 403 to further assist in ascertaining a location of any metal or RFID objects." The practice of performing multiple scans or repeated measurements to improve detection, build spatial maps, or track objects is a fundamental concept in many sensing and imaging fields (e.g., radar, sonar, medical imaging).
  • Multiscan, Coherent Signal Processing: The patent describes this as a feature of its integrated mode: "The integrated mode of operation may employ multiscan, coherent signal processing of diverse multiple inputs to achieve significantly higher detection sensitivities thereby allowing more precise object location and identification." This phrase implies that multiscan and coherent signal processing were known techniques for enhancing detection sensitivity and precision.

• Motivation for Combination:
  Given the high stakes of surgical safety and the stated need for "significantly higher detection sensitivities" and "more precise object location and identification" in the medical environment, a PHOSITA would be motivated to employ known techniques for improving signal quality. Applying "multiple scans" and "multiscan, coherent signal processing" to the signals generated by the metal and RFID sensing subsystems is a well-established engineering approach to enhance the signal-to-noise ratio, resolve ambiguities, and gain more detailed information from sensor data, particularly when trying to detect small objects or objects within complex media like the human body. This combination would be an obvious application of known signal processing principles to achieve the desired improvements in detection reliability and precision for surgical items.