Invalidity dossier

US RE48066

Added 9/29/2026, 7:01:13 PM

At a glanceNo PTAB challengesNo litigation on fileSoftware Technology & Computing Systems (T)

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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Let me dig deeper on the litigation/CAFC dockets and the claim text.

I have enough to answer, though I want to flag upfront an important limitation: my searches did not return the verbatim claim set of RE48066, so the claim overview below is reconstructed from the specification/abstract (in the full text you supplied) plus third‑party analyses. I did not find any CAFC 2026 docket for this patent. Details below.


1. Bibliographic identification — US RE48,066 E1

Field Value
Patent number US RE48,066 E1 (reissue)
Title Services that are provided, at least partly, over the internet for data mining user information
Inventors Christina Ying Liu (San Francisco, CA); William Ho Chang (Vancouver, WA)
Assignee / applicant Flexiworld Technologies, Inc. (Vancouver, WA)
Reissue application no. 15/838,219
Reissue application filed Dec. 11, 2017
Reissue granted / issued June 23, 2020
Earliest priority Sept. 5, 2000 (Provisional No. 60/230,021)
Original application Ser. No. 09/947,116, filed Sept. 4, 2001 → issued as US 7,099,304 on Aug. 29, 2006
Reissue chain Reissue of 7,099,304; continuation reissue of 12/199,647 (filed Aug. 27, 2008, issued as RE43,181 on Feb. 14, 2012); continuation reissue of 13/371,318 (filed Feb. 10, 2012, issued as RE46,637 on Dec. 12, 2017)
Legal status Expired – Lifetime; adjusted expiration April 30, 2024 (terminal disclaimer noted on the face of the patent)
Representative CPC H04M3/42008 (anonymous communication between parties), H04M3/382, H04M1/2535, H04M7/0042, H04M7/0045, H04M7/0054, H04M7/128

Source for the bibliographic data: the Google Patents record and the reissued patent front page (patentimages PDF), e.g. https://patents.google.com/patent/USRE48066E1 and https://patentimages.storage.googleapis.com/2b/b3/2d/05b0601e08a5b0/USRE48066.pdf.


2. Abstract (as printed)

The patent has a two-part abstract, reflecting the reissue's added subject matter:

  1. Original (voice/anonymity) portion: Anonymous voice communication between a first station and a second station is facilitated by an interface allowing input of a transaction specification from at least one station; a reference code associated with the transaction is generated with a defined relationship to the second station's voice address; the reference code is supplied to the first station; a voice communication request and the reference code are received; the code is used to recover the address; and a voice channel is opened between the stations — all without providing the second station's address to the first station.

  2. Reissue-added (data-mining) portion: "An Internet-based service system for data mining user information is herein disclosed and enabled. The disclosed service may facilitate users posting information, advertising products or services, connecting to other users, and making transactions over the Internet. Data obtained from each transaction submitted through the service are data mined… the service system may create a proposed transaction specifying a transaction between a first and a second party based, at least in part, on data mining the first party's history of transactions. The service system may transmit a reference code to the first party related to the proposed transaction, and wait to receive a communication request from the first party employing the reference code. The reference code may include text, image(s), video(s), audio, or communication link(s), and the proposed transaction may be an advertisement."


3. Plain-language overview of the independent claims

Before the specifics — an explicit uncertainty flag: In this session I could not retrieve the verbatim, numbered claim text of RE48066 (the Google Patents claims section did not render in my search results). The following is a reconstruction from (a) the specification you supplied, (b) the printed abstract, and (c) third‑party descriptions of the asserted claims. Treat the claim numbers as approximate unless verified against the official claim listing. File-wrapper/claim copies are available via USPTO Patent Center for application 15/838,219.

The independent claims fall into four functional families:

A. Method family — "facilitating" anonymous voice communication (spec's first aspect).
An interface accepts a transaction specification from at least one of the first/second stations; a reference code is generated for the transaction and has a defined relationship to the second station's voice address; the code is delivered to the first station; a voice communication request plus the reference code are received from the first station; the code is used to recover the address; a voice channel is opened between the two stations without disclosing the second station's address to the first. (This tracks the first "Summary of the Invention" aspect.)

B. Method family — "establishing" anonymous voice communication via a controller (spec's second aspect).
Substantially the same in substance, but recast from the controller's viewpoint: the transaction specification is supplied to a controller; the controller generates the reference code; the controller supplies the code to the first station; the first station makes the voice request to the controller and supplies the code; the controller recovers the address and opens the channel. These "establishing" claims are the controller-side mirror of family A.

C. Apparatus family (spec's third aspect).
An apparatus (essentially the controller unit) with: means for enabling negotiation of a transaction specification; means for generating a reference code having a defined relationship to the second party's voice address and supplying it to the first party; means for receiving the voice communication request and the reference code; means for using the code to recover the address; and means for opening a voice channel between the first party and that address without supplying the address to the first party. (Note: this is drafted in means-plus-function style, consistent with a priority date of 2000.)

D. Reissue-added service-system / data-mining family (apparatus or system claims).
This family corresponds to the new matter added in the reissue. Per Unified Patents' characterization, these claims describe "an apparatus for facilitating transactions over the Internet without requiring the first party to provide transaction specifications prior to receiving a reference code." In plain terms, the independent claim(s) here cover a server/service system that:

  • collects/gathers user information from transactions submitted through the service and data mines it;
  • creates a proposed transaction between first and second parties based at least in part on data mining the first party's history of transactions (the proposed transaction may be an advertisement);
  • transmits a reference code to the first party relating to the proposed transaction (the code may be text, image(s), video(s), audio, or communication link(s)); and
  • waits to receive a communication request from the first party that employs the reference code.

Unified Patents specifically targeted claims 38 and 47 as the independent claims of this family for its prior-art contest (see https://patroll.unifiedpatents.com/contests/uRTxqNrC74PrEMmbj and https://www.unifiedpatents.com/insights/2024/12/4/10000-for-flexiworld-technologies-communication-patents-prior-art). That suggests at least two independent claims in this family (one likely a system/apparatus claim, one likely a method claim), with appendant claims covering the code formats, advertising embodiment, and the "no prior specification needed" limitation.


4. Litigation / docket status (USPTO and courts)

District court (found):

  • Flexiworld Technologies, Inc. v. Indeed, Inc., No. 1:24-cv-01254, W.D. Tex. (Judge Alan D. Albright; originally assigned to Judge Robert Pitman, reassigned Feb. 5, 2025). Docket activity ran through 2025 — first amended complaint (Jan. 17, 2025), Indeed's motion to strike and Rule 12(b)(6) motion to dismiss (Feb. 14, 2025), and extensions of response/reply deadlines into March 2025. Source: Stanford NPE Litigation Database (https://npe.law.stanford.edu/patent/re48066) and PACER Monitor (https://www.pacermonitor.com/public/case/55514617/Flexiworld_Technologies,_Inc_v_Indeed,_Inc).

USPTO (found):

  • Ex parte reexamination 90/019,971 against RE48,066, filed by Unified Patents on May 23, 2025; the Central Reexamination Unit granted/instituted the request on June 24, 2025, finding substantial new questions of patentability. Sources: https://www.unifiedpatents.com/insights/2025/5/27/flexiworld-data-mining-patent-challenged, https://www.unifiedpatents.com/insights?offset=1751027608964, and Unified's portal https://portal.unifiedpatents.com/exparte/90019971.
  • (Prior-art crowding efforts by Unified also targeted this patent via PATROLL, with a March 29, 2025 award announcement.)

CAFC 2026 docket — NOT FOUND. My searches of the Court of Appeals for the Federal Circuit dockets and news sources returned no 2026 CAFC appeal involving RE48,066 (or involving Flexiworld Technologies, Inc.). I want to be explicit rather than fabricate: I cannot confirm any CAFC 2026 proceeding for this patent from the sources available to me. If an appeal exists, it would most plausibly arise from the Indeed district-court case and/or the ex parte reexamination (note that ex parte reexam outcomes are not directly appealable to the CAFC by the third-party requester). This should be verified directly on the CAFC docket (cm/ecf) and on the district-court docket for 1:24-cv-01254.


5. Confidence and caveats

  • High confidence: patent number, title, inventors, assignee, priority date, reissue filing date (Dec. 11, 2017), issue date (June 23, 2020), original patent (7,099,304), reissue chain, expired status, and the two-part abstract and written description — these come from the authoritative full text you supplied plus the reissue front page.
  • Lower confidence / verify: the exact numbered independent claims and their verbatim wording. I could not pull the printed claims in this session, so families A–D above are a functional reconstruction. In particular, the precise scope of reissue-added claims 38 and 47 should be confirmed against the official claim listing (USPTO Patent Center, application 15/838,219, reexam 90/019,971 file).
  • Explicitly unconfirmed: any CAFC 2026 docket for RE48,066 — I found none and am flagging that as an absence of evidence, not proof of absence.

If you want, I can next pull the verbatim claim listing (PatentsView / Patent Center) and the docket entries for 90/019,971 and 1:24-cv-01254 to replace the reconstructed claim overview with exact claim language.

Generated 9/29/2026, 7:11:38 PM

Cases on file (0)

Specific litigation cases in our database that name US patent RE48066. The free-form analysis below may also discuss cases beyond this list.

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Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

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Litigation Involving U.S. Patent No. RE48066 (RE48,066)

Bottom line: Based on the sources checked (Unified Patents Portal, Stanford NPE Litigation Database, Justia Dockets, PacerMonitor, RPX Empower, Docket Alarm), only one district-court litigation has asserted U.S. Patent No. RE48066. It is a single-defendant case brought by the patent owner, Flexiworld Technologies, Inc., against Indeed, Inc.


Case 1 — Flexiworld Technologies, Inc. v. Indeed, Inc.

Field Detail
Plaintiff Flexiworld Technologies, Inc. (owner/assignee; listed in the patent as current and original assignee)
Defendant Indeed, Inc. (corporate parent RGF OHR USA, Inc.; affiliate Recruit Holdings Co., Ltd.)
Court / Jurisdiction U.S. District Court for the Western District of Texas, Austin Division (W.D. Tex.)
Case No. 1:24-cv-01254 (docketed as 1:24-cv-01254; case was initially assigned to Judge Robert Pitman under the "Docket II – Austin" designation, then reassigned to Judge Alan D. Albright on Feb. 5, 2025 — the case number is commonly shown with the "-ADA" judge suffix after that reassignment)
Filing Date October 18, 2024
Patents Asserted U.S. Patent No. RE48,066 ("Services that are provided, at least partly, over the internet for data mining user information") and U.S. Patent No. RE46,637 ("Apparatus, methods, and systems for data mining user information"). Both are reissues of the same original patent, U.S. Pat. No. 7,099,304, and both claim priority to provisional application No. 60/230,021 filed Sept. 5, 2000.
Accused Products Indeed's internet-based platform, including features such as Indeed Ads, Indeed Resume Project, and Indeed Instant Match (as implemented on Indeed's web platform and iOS/Android apps), alleged to connect job seekers and employers using data mining of user information and transaction histories.
Counsel Plaintiff: Timothy E. Grochocinski, Charles Austin Ginnings, T. William Kennedy, Jr. (Nelson Bumgardner Conroy PC). Defendant: Brian M. Buroker, Wendy W. Cai (Gibson, Dunn & Crutcher LLP); Barry Kenneth Shelton (Shelton Coburn LLP).
Outcome / Status Dismissed with prejudice at the pleadings stage; now on appeal. On August 19, 2025, Judge Albright issued an order denying Indeed's motion to strike, granting Indeed's Rule 12(b)(6) motion to dismiss, and dismissing the Second Amended Complaint with prejudice; a Final Judgment was entered the same day. The case was terminated on the docket August 19, 2025. Flexiworld filed a Notice of Appeal to the U.S. Court of Appeals for the Federal Circuit on August 26–27, 2025. The deadline for the prevailing party (Indeed) to seek costs and attorney's fees was deferred until 30 days after issuance of the appellate mandate. The appeal is pending.

Procedural history highlights (from the W.D. Tex. docket):

  • Oct. 18, 2024 — Original Complaint filed; jury demand.
  • Dec. 13, 2024 — Indeed's first 12(b)(6) motion to dismiss; mooted by the First Amended Complaint (Jan. 17, 2025).
  • Feb. 14 / Mar. 21, 2025 — Indeed filed opposed motions to strike and to dismiss; Second Amended Complaint filed Feb. 28, 2025.
  • June 9, 2025 — Motion hearing before Judge Albright.
  • Aug. 19, 2025 — Order granting dismissal with prejudice and Final Judgment.
  • Aug. 26–27, 2025 — Notice of Appeal to the Federal Circuit.

Note on the appellate docket number: I could not confirm the Federal Circuit appeal docket number from the sources retrieved, so I am not stating one (to avoid fabricating an identifier).


Related (non-litigation) proceeding you should be aware of

  • Ex parte reexamination No. 90/019,971 (U.S. Patent No. RE48,066) — Filed by Unified Patents on May 23, 2025; the Central Reexamination Unit granted/instituted the request on June 24, 2025, finding substantial new questions of patentability on the challenged claims. Unified's stated basis was that the '066 patent "has been asserted against Indeed." This is a USPTO proceeding, not court litigation, but it is directly keyed to the RE48066 assertion. Unified also ran a PATROLL prior-art contest targeting claims 38 and 47 of US-RE48066-E1 (Dec. 4, 2024 – Jan. 4, 2025). (Source: Unified Patents insights pages; https://portal.unifiedpatents.com/exparte/90019971)

Other Flexiworld litigations — do NOT attribute these to RE48066

Flexiworld is a prolific litigant (Stanford NPE database flags it as a "Failed startup"–type asserter), but the other suits assert different patents (wireless printing/content-output families — e.g., U.S. Pat. Nos. 7,609,402; 9,798,516; 9,965,233; 10,768,871; 10,140,072; 10,140,073; etc.), not RE48066. Examples found:

  • Flexiworld v. Lexmark Int'l, Inc., No. 5:22-cv-00110 (E.D. Ky.)
  • Flexiworld v. Roku, Inc., No. 6:21-cv-00680-ADA (W.D. Tex.) — settled/dismissed Oct. 2022
  • Flexiworld v. Brother Int'l Corp. (W.D. Tenn.) — settled/dismissed
  • Flexiworld v. Hisense Co., Ltd., No. 2:22-cv-00225 (E.D. Tex.), transferred to No. 1:22-cv-04337 (N.D. Ga.) — settled/dismissed
  • Flexiworld v. Amazon.com (W.D. Wash.)
  • Flexiworld v. Sony Corp., No. 2:23-cv-00616 (E.D. Tex.)

None of these implicates RE48066; they are listed only to distinguish them, per your instruction not to return results for similar-but-different patents.


Summary

  • Number of known litigations asserting RE48066: 1 — Flexiworld Technologies, Inc. v. Indeed, Inc., No. 1:24-cv-01254 (W.D. Tex.), filed Oct. 18, 2024.
  • Outcome: Dismissed with prejudice (Rule 12(b)(6)) on Aug. 19, 2025; on appeal to the Federal Circuit as of late Aug. 2025.
  • No CAFC or other district-court decisions on the merits of RE48066 were located; no Federal Circuit opinion was found. If you need the current appellate status/docket number, that should be confirmed directly via PACER/CM-ECF and the Federal Circuit docket, which I was not able to pull in this session.

Generated 9/29/2026, 7:11:38 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

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I'll research PTAB proceedings involving RE48066 and its family.

Let me check specifically for any AIA trial petition against RE48066 and its reissue siblings.

Let me do a final check for any 2025-filed AIA petition against RE48066 directly, and for Federal Circuit appeals.

Proceedings overview

There are zero AIA trial proceedings (IPR / PGR / CBM) on RE48066. The USPTO Open Data Portal returns no AIA trial record for this patent, and independent web searching (Unified Patents, Docket Alarm, Patexia, PTAB E2E, Stanford NPE database) surfaced no petition against RE48,066 by any party — not Roku, not Lexmark, not Unified, not Indeed. The claim set of RE48,066 is therefore completely untested at the PTAB: no claims canceled, no claims sustained, no institution decisions, no Federal Circuit appeals arising from a Board trial on this patent.

Two important qualifiers a defendant must not miss:

  1. There is a live post-issuance challenge, but it is not an AIA trial. On 2025-05-23 Unified Patents, LLC filed an ex parte reexamination request against RE48,066 (Control No. 90/019,971), which the Central Reexamination Unit granted on 2025-06-24, finding substantial new questions of patentability. Ex parte reexam is a prosecution proceeding before the CRU — no PTAB panel, no § 315(e)(2) estoppel, and the requesting party cannot participate after filing the request (35 U.S.C. § 302).
  2. The patent family is heavily IPR-tested — but on sibling patents, not RE48,066. Flexiworld's wireless-printing and wireless-output patents have drawn repeated PTAB petitions. Beware a naming trap: PTAB case IPR2021-00713 concerns U.S. 10,740,066, a different patent from RE48,066 — both are colloquially called "the '066 patent." Do not conflate them.

Bottom-line defensive posture: You cannot say "claims 1–5 are canceled — ignore the demand letter." You also cannot say "the patent survived two IPRs and is hardened." The accurate posture is: untested claims + one pending ex parte reexam + a patent owner with a documented record of settling rather than litigating to judgment at the Board. That cuts both ways: the claims have never been invalidated, but Flexiworld has never had a Board panel affirm them on this patent, and the reexam is the nearest-term invalidity lever.


Post-issuance challenge on RE48,066 (non-AIA)

Ex Parte Reexamination 90/019,971 — Unified Patents, LLC (third-party requester) re: Flexiworld Technologies, Inc.

  • Type: Ex parte reexamination (35 U.S.C. §§ 301–307) — not an AIA trial. No PTAB panel; handled by the Central Reexamination Unit.
  • Filed / requested: 2025-05-23
  • Status: Granted / reexamination ordered — 2025-06-24. CRU found "substantial new questions of patentability" on the challenged claims. No public reexamination certificate or final disposition confirmed in the sources retrieved as of today.
  • Judge panel: N/A — no APJs. Unified in-house counsel on the request: Jordan Rossen and Alyssa Holtslander.
  • Grounds: Substantial new questions of patentability under §§ 102/103 based on prior art not previously considered; the specific references are in the reexam request (unifiedpatents.com portal, Control No. 90/019,971). I did not retrieve the reference list and will not guess at it.
  • Institution decision: N/A (reexam "grant" = reexamination ordered).
  • Final Written Decision: N/A.
  • Settlement / termination: N/A — ex parte reexam proceeds ex parte; Unified has no right to participate further.
  • Appeal: None. Any adverse final rejection would be appealable to the PTAB via ex parte appeal, or to the Federal Circuit; no such appeal exists yet.
  • Defensive value: This is the only live invalidity bite on RE48,066 today. Two practical consequences: (a) if the CRU cancels claims, those claims are gone and any pending demand letter relying on them collapses; (b) because it is not an IPR, Unified's art is not estopped — a defendant sued today can still raise the same or better art in district court regardless of how the reexam comes out.

Sources: https://www.unifiedpatents.com/insights/2025/5/27/flexiworld-data-mining-patent-challenged · https://www.unifiedpatents.com/insights/2025/6/24/flexiworld-data-mining-patent-challenge-instituted · https://portal.unifiedpatents.com/exparte/90019971


Related PTAB proceedings on sibling Flexiworld patents (pattern evidence, not RE48,066)

These do not estop anyone as to RE48,066 and cancel no claims of RE48,066. They matter because they are the closest thing to a track record for this patent family and for this patent owner's litigation behavior.

IPR2021-00714 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 8,989,064)

  • Type: Inter Partes Review
  • Filed: 2021-04-09
  • Status: Final Written Decision — 2022-10-21. Claims 1–10, 12, and 14 unpatentable; claims 15–20 not shown unpatentable.
  • Judge panel: Terrence W. McMillin, Christopher L. Ogden, Brent M. Dougal (Dougal authored). Note a panel change order entered 2022-05-06 adding Bryan Moore.
  • Petition grounds: § 103 obviousness. Claims 1–10, 12, 14–20 challenged (claims 1, 5, 15 independent).
  • Institution decision: Instituted on all challenged claims (Paper 18, 2021-10-22).
  • FWD: Verbatim disposition: "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–10, 12, and 14 are unpatentable. We also determine that Petitioner has not shown by a preponderance of the evidence that claims 15–20 are unpatentable." Independent claim 1 and claim 5 canceled; independent claim 15 survived. Oral hearing held 2022-07-19.
  • Settlement / termination: None — went to FWD.
  • Appeal: No Federal Circuit appeal confirmed in the sources retrieved.
  • Defensive value: Directly relevant only as evidence of how the Board reads this family's "advertising/discovery" and "output controller" limitations — the split outcome (claims 1/5 dead, claim 15 alive) shows the Board will not rubber-stamp invalidity across the family.

Source (FWD): https://www.docketalarm.com/cases/PTAB/IPR2021-00714/Roku_Inc._v._Flexiworld_Technologies_Inc/docs/10-21-2022-Board/Final_Written_Decision__original-35-Final_Written_Decision__original.pdf

IPR2022-00775 — Unified Patents, LLC v. Flexiworld Technologies, Inc. (U.S. 9,836,257)

  • Type: Inter Partes Review
  • Filed: 2022-04-08
  • Status: Final Written Decision — 2023-11-01. Docket entry reads: "Final Written Decision Determining No Challenged Claims Unpatentable, Dismissing Patent Owner's Revised Motion to Amend." Challenged claims were 27 and 28.
  • Judge panel: Ogden, joined by McMillin and Dougal on the institution decision (per Banner Witcoff's PTAB Highlights); final panel per docket.
  • Petition grounds: § 103 obviousness; art included Olgaard, Moghadam, Acharya, Griffiths, Chuah, Newton, Shellhammer WPAN. Also a priority-date dispute (Flexiworld's 11/01/2000 provisional) and a discretionary-denial fight under § 314(a).
  • Institution decision: Instituted 2022-11-08 (Paper 10). The panel rejected Flexiworld's argument that institution should be denied because Unified does not practice the patent, holding that "[u]nder the statutory scheme for inter partes reviews, filing a petition is generally open to any 'person who is not the owner of the challenged patent,'" 35 U.S.C. § 311(a).
  • FWD: Patent owner prevailed — no challenged claims held unpatentable.
  • Settlement / termination: None.
  • Appeal: Not confirmed.
  • Defensive value: Shows Unified Patents — the same entity now running the RE48,066 reexam — lost its last full IPR against this family. A defendant should not assume a Unified challenge will land.

Source (institution): http://bannerwitcoff.com/wp-content/uploads/2022/12/IPR2022-00775.pdf · Docket: https://services.patexia.com/lawsuits/Unified-Patents-LLC-v-Flexiworld-Technologies-Inc-id-[163026](/patent/163026)/documents/sort_by/doc_number/sort_dir/asc

IPR2021-00713 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 10,740,066)

  • Type: Inter Partes Review
  • Filed: on or about 2021-04-09 (consolidated hearing with IPR2021-00714)
  • Status: Trial instituted; oral hearing held 2022-07-19. I did not confirm the Final Written Decision outcome for this case in the sources retrieved and will not state one.
  • Judge panel: McMillin, Ogden, Dougal.
  • Petition grounds: § 103 — Grounds 1/1A (Yamaguchi + Gu, + Garfunkel), 2/2A (Ikonen + Gu, + Garfunkel), 3/3A (Ikonen + Kammer, + Peng). Claims challenged: 7, 8, 10, 11, 14, 15, 17, 19.
  • Institution decision: Partially instituted — Ground 3 denied (Ikonen's "inquiry response" is not a "broadcast or advertisement of availability"); Ground 1 denied (Yamaguchi not prior art); Ground 2 instituted.
  • FWD: Not confirmed.
  • Settlement / termination: Not confirmed.
  • Defensive value: The priority/§ 112 written-description fight over Flexiworld's provisional applications (60/246,101 vs. 60/262,764) surfaced here and is directly transferable to attacking RE48,066's 2000-09-05 priority claim.

IPR2021-00715 — Roku, Inc. v. Flexiworld Technologies, Inc.

  • Type: Inter Partes Review. Named as a related IPR in the IPR2021-00714 FWD. No substantive disposition confirmed in the sources retrieved.

PGR2021-00112 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 11,029,903)

  • Type: Post-Grant Review (filed 2021-09-15)
  • Status: Terminated by joint motion following the Roku–Flexiworld Patent License Agreement executed 2022-10-21.
  • Settlement: Global license; Roku litigation (6:21-cv-00680-ADA, W.D. Tex.) dismissed with prejudice; terms confidential.

IPR2022-01112 / IPR2022-01113 / IPR2022-01114 — Roku, Inc. v. Flexiworld Technologies, Inc. (U.S. 10,140,073 / 9,042,811 / 9,965,233)

  • Type: Inter Partes Review (all three filed 2022-06-30)
  • Status: All terminated by joint motion — Board authorized 2022-10-25; termination driven by the Roku–Flexiworld Patent License Agreement. No FWD in any of the three.
  • Defensive value: Flexiworld's demonstrated strategy is to settle and license once a defendant files at the Board. Five Roku proceedings and one Lexmark proceeding ended this way. Do not expect a clean FWD.

IPR2023-00846 — Lexmark International, Inc. v. Flexiworld Technologies, Inc. (U.S. 9,965,233)

  • Type: Inter Partes Review
  • Filed: 2023-04-28
  • Status: Instituted 2023-11-14; terminated 2024-01-17 by joint motion after a Patent License Agreement. "The Agreement completely resolves all pending controversies between Lexmark and Flexiworld concerning U.S. Patent No. 9,965,233." Terms confidential (treated as business-confidential under § 317(b)).
  • Judge panel: N/A — no FWD.
  • Petition grounds: § 103 — claims 1, 2, 4, 5, 7, 9, 11–13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, 61 obvious over Keeney (U.S. 6,748,471); claims 47, 48, 61 over Keeney + Vatland (U.S. 6,091,507).
  • Defensive value: Reinforces the settlement pattern — Lexmark bought a license rather than see the FWD through.

Strategic summary

Claim status of RE48,066: all claims UNTESTED. No claim of RE48,066 has been canceled, confirmed, or even instituted for trial at the PTAB. The only claim-level adjudications in this family — IPR2021-00714 (U.S. 8,989,064: claims 1–10, 12, 14 canceled; claims 15–20 sustained) and IPR2022-00775 (U.S. 9,836,257: claims 27–28 sustained) — are on different patents and cannot be cited as RE48,066 dispositions. The reexamination certificate for 90/019,971, when it issues, will be the first authoritative claim-level outcome for RE48,066.

Estoppel landscape: essentially empty, which favors the defendant. Because no IPR or PGR was ever filed on RE48,066, no § 315(e)(2) or § 325(e)(2) estoppel attaches to this patent. Unified's ex parte reexam is not an AIA trial and creates no estoppel — and under § 302 the requester is walled out of the prosecution after filing. Practically: a defendant sued on RE48,066 today retains the full universe of § 102/§ 103 art for both an IPR petition and an invalidity defense, unconstrained by any prior petitioner's grounds. The only live constraints are § 315(b)'s one-year bar running from service of the complaint (Indeed was sued in 1:24-cv-01254, W.D. Tex., so Indeed's own filing window has likely closed) and the § 102(a)(1)/(a)(2) prior-art cutoff at the 2000-09-05 priority date.

Pattern signals. (1) Multiple petitioners per family, not per patent — Roku filed four IPRs + one PGR across Flexiworld's portfolio in 2021–2022; Lexmark filed one in 2023; Unified filed IPR2022-00775 and is now running the RE48,066 reexam. No petitioner has filed twice on RE48,066, because no one has filed once. (2) A defensive aggregator is in the chain — Unified Patents is the RE48,066 challenger, using the same in-house team (Rossen, Holtslander) that lost IPR2022-00775. Unified's track record here is 0-for-1 on the merits. (3) Flexiworld settles at the Board — at least six AIA proceedings (PGR2021-00112; IPR2022-01112/-01113/-01114; IPR2023-00846; and the Roku–Lexmark licensing events) terminated on joint motions tied to license agreements, with only IPR2021-00714 and IPR2022-00775 reaching FWD. (4) Priority is the soft underbelly — the IPR2021-00713 record shows Flexiworld shifting its priority theory mid-trial between Provisionals 60/246,101, 60/262,764, and 60/230,021; the same attack vector applies to RE48,066, which claims priority only to 60/230,021 (2000-09-05).


Recommended next steps

If you are a defendant and hold a demand letter citing RE48,066: You have no canceled claim to point to — do not represent otherwise to the court. Instead:

If you are contemplating an AIA petition: The freedom is real — no estoppel, no prior petitioner. But weigh (a) the § 315(b) one-year clock from service, (b) that RE48,066's claims have survived every challenge to date by never having been challenged, and (c) the family's priority vulnerabilities (the 60/230,021 written-description attack that Roku developed in IPR2021-00713). If you are an Indeed privy, § 315(b) and § 315(e)(2)/RPI-privity analysis will likely dominate the petition strategy.

Milestone watch (for the reexam, not an AIA trial): There is no PTAB statutory 1-year clock here. Ex parte reexam runs on CRU timelines — first Office Action typically within ~3–6 months of the order date (i.e., late 2025), with a certificate issuing roughly 12–24 months from the 2025-06-24 grant. As of 2026-09-29 I found no published disposition; treat any claim of a reexam outcome as unverified until the certificate appears.

One caution. The prompt's framing anticipates a list of AIA proceedings from the ODP block. Here the structured data is accurate and the correct answer is a negative: no PTAB activity on file for RE48,066. The ex parte reexam and the sibling-patent IPRs are context, not dispositive authority for RE48,066, and none of them cancels, narrows, or estops anything as to this patent.

Generated 9/29/2026, 7:12:05 PM

Ownership chain (1)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. ? · Assignment

    William Ho Chang and Christina Ying LiuFlexiworld Technologies, Inc.

    internal reorg

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment chain and litigation history for this patent.

Let me dig into the assignment records and corporate history.

I have some key data points. Let me pin down the specific assignment records for the '304 patent / RE48066 and check for any post-issuance transfers.

Based on the fully-available patent text, the litigation record, and the third-party NPE directories referenced in the search results, here is the ownership reconstruction. One important caveat up front: my tooling could not directly pull the Assignment Center record for RE48066 itself (the search index returned assignment reel/frames only for sibling Flexiworld patents, not this one). I flag that explicitly below rather than infer a reel/frame — per your operating constraints, I do not fabricate reel numbers.


Inventors

Inventor Residence at filing Employer at time of filing
William Ho Chang Vancouver, WA Flexiworld Technologies, Inc. (founder, President/CTO). Prior employers: Sharp Laboratories of America (Sharp "Inventor of the Year," 1999); Amiable Technologies; Intergraph Corp.
Christina Ying Liu Vancouver, WA (later listed at San Francisco, CA) Flexiworld Technologies, Inc. (co-founder / shareholder)

Pattern note (unusual in the opposite direction): The classic "all inventors depart within 12 months" fire-sale precursor is not present. Both inventors are the founders of the assignee and remain shareholders (per Flexiworld's own 2025 LG complaint: "Christina Ying Liu … is a Flexiworld shareholder"). This is a founder-owned patent cluster, not a corporate-employment assignment. Note the "assignee" and the "inventor team" are effectively the same two people — relevant to the NPE analysis, because there is no third-party operating company whose patents were "spun out."


Original assignee

  • Entity on the issued patent: Flexiworld Technologies, Inc. — a Washington corporation, principal place of business 3439 NE Sandy Blvd., #267, Portland, OR 97232 (note: "#267" is a private-mailbox suite — a small-office tell, but not an LLC registered-agent address).
  • Primary line of business: Wireless/mobile application software and embedded solutions ("FlexiCore" technology infrastructure for wireless printing, wireless display/streaming, and mobile voice/video). Self-described R&D shop; formerly VC-backed (Starveups accelerator; ~$295K Series A 2002; Series A2 2006; secondary transaction 2022 per PitchBook).
  • Did they ship a product embodying the claims? No — and they admit it. In Flexiworld Technologies, Inc. v. Indeed, Inc., No. 1:24-cv-01254 (W.D. Tex.), Flexiworld pleaded at ¶52: "Since issuance of each of the Patents-in-Suit, Flexiworld has not made, offered for sale, sold, or imported a product that practices any of the Patents-in-Suit…" (35 U.S.C. §287 marking admission). Flexiworld markets "FlexiCore," but no product practicing RE48066 or its asserted siblings.
  • Current status: Operating as a private, non-practicing licensor / high-frequency plaintiff. PitckBook lists it as "Active / Generating Revenue," but its revenue model is licensing/assertion, not product sales. It is classified as an NPE by Unified Patents and appears in the Stanford NPE Litigation Database (asserter category: "Failed startup"). It has not been acquired, dissolved, or put into bankruptcy.

Assignment timeline

Caveat on completeness: The USPTO Assignment Center was not directly reachable by my tools, and the searchable record surfaced reel/frame data only for sibling Flexiworld patents. I could not retrieve the reel/frame specific to RE48066 (or its parent, US 7,099,304). What is documented is that (a) an inventor→Flexiworld assignment exists and is relied on in every Flexiworld complaint, and (b) no post-issuance transfer to any third party — LLC, fund, or aggregator — is reflected anywhere in the public record. Google Patents lists Current Assignee = Original Assignee = Flexiworld Technologies Inc., i.e., the patent has never left the founding company.

Documented links relevant to this family (reel/frame figures below are from Flexiworld's own pleadings for sibling patents, cited as corroboration of the pattern, not as this patent's record):

  • ~2002 (executed) / recorded — Reel 028733/0064 (sibling '402 patent)

    • Conveyance: Assignment (inventor → company)
    • Assignor: William Ho Chang and Christina Ying Liu
    • Assignee: Flexiworld Technologies, Inc.
    • Correspondent: not retrievable from available sources — flag as gap.
    • Context: Formation-stage assignment of founder inventions to the company (internal).
  • 2012–2021 (recorded) — Reels 039816/0200; 042385/0202; 043675/0454; 046519/0534 (siblings '596, '072, '178, '856, '871)

    • Conveyance: Assignment (inventor → company), i.e., confirmatory / chain-of-title cleanup
    • Assignor: Chang and Liu
    • Assignee: Flexiworld Technologies, Inc.
    • Correspondent: not stated in the pleadings; not retrievable.
    • Context: These late-dated confirmatory assignments were recorded before/around the 2020–2025 assertion campaigns — a standing-record cleanup, not a transfer to a third party.
  • RE48066 itself: No recorded transfer to a shell, fund, or aggregator found. Title remains with Flexiworld Technologies, Inc.

If you need the exact RE48066 reel/frame, run a direct search at the USPTO Assignment Center (https://assignmentcenter.uspto.gov/) for "RE48066" or for application 15/838,219 — that will return the inventor→Flexiworld recording and its correspondent of record.


Timeline diagram

timeline
    title Ownership of US RE48066
    2000 : Provisional filed by inventors
    2001 : Flexiworld Technologies founded
    2006 : US 7099304 issued to Flexiworld
    2008 : First reissue application filed
    2012 : Reissue RE43181 issued
    2017 : Reissue RE46637 issued
         : Continuation reissue 15 838 219 filed
    2020 : RE48066 granted to Flexiworld
         : Suits filed against Amazon and Roku
    2024 : Suit filed against Indeed
    2025 : Unified ex parte reexam granted

NPE / troll-pattern signals

  1. Shell-entity transfer — Not present. The patent has never moved to a licensing LLC. Current assignee = original assignee = Flexiworld Technologies, Inc. (per Google Patents and Flexiworld's own pleadings, e.g. Indeed Compl. ¶31). Flexiworld is a Washington corporation with a single known address, not a Delaware/Texas single-purpose LLC.

  2. Known asserter in the chain — Present. Flexiworld is expressly designated "an NPE" by Unified Patents (PATROLL contest for RE48066, Dec 4 2024; ex parte reexam 90019971 filed May 23 2025, instituted June 24 2025). The Stanford NPE Litigation Database lists RE48066 with asserter category "Failed startup." It is not on your enumerated big-NPE list (no Acacia/Marathon/IV/Wi-LAN link), but the rubric's catch-all — "any entity surfaced by Unified Patents or RPX as a high-frequency plaintiff" — is squarely met.

  3. Repeat correspondent across the chain — Unclear. I could not obtain the assignment-round correspondent(s) of record for this patent or its siblings, so I cannot show recurrence on the recording side. On the litigation side there is recurring, repeat-player counsel: Brent N. Bumgardner (Reg. No. 48,476), Nelson Bumgardner Albritton P.C., Fort Worth, TX, and C. Austin Ginnings (Reg. No. 62,706), Nelson Bumgardner Conroy P.C., Orland Park, IL. That is litigation counsel, not the assignment correspondent, so I score this unclear, not present.

  4. Cascading transfers — Not present. There is no chain of LLCs; a single founder→company assignment family. No transfers at all in <24 months.

  5. Pre-litigation transfer — Unclear. No recorded assignment within 6 months of any suit. The reissue continuations (13/371,318 in 2012; 15/838,219 filed 2017‑12‑11 → RE48066 granted 2020‑06‑23) did precede the 2020–2025 campaigns, but those are prosecution continuations, not title transfers.

  6. Bankruptcy fire-sale — Not present. Flexiworld has not filed Chapter 7/11; PitckBook lists it as active.

  7. Privateering — Not present. There is no operating-company-to-NPE transfer; the founders' own company is the asserter. No SEP/competitor context.

  8. Defensive aggregator (anti-NPE) — Not present. The chain does not terminate at RPX, AST, LOT, Unified, or OIN. Rather, Unified Patents is attacking the patent from the outside (ex parte reexam 90019971), the inverse signal.

Corroborating assertion history (context for signals 1–2): Flexiworld has asserted its family against Roku (6:20-cv-00819, 2020), Amazon (6:20-cv-00553, 2020), Epson (2021), Lexmark (5:22-cv-00110, 2022), Brother (2:22-cv-02251, 2022), Hisense (2022), Indeed (1:24-cv-01254, 2024), and LG (2:25-cv-00960, 2025). The '066/RE48066 patent was asserted against Indeed.


Verdict

NPE — high confidence.

Justification: two independent strong signals converge. First, the asserter is classified as an NPE by a recognized third party — Unified Patents calls Flexiworld "an NPE" and has instituted ex parte reexam 90019971 against RE48066, and the Stanford NPE Litigation Database lists the patent with the "Failed startup" asserter category. Second, Flexiworld has admitted in its own pleadings that it has never made, sold, or offered for sale a product practicing the patents-in-suit (Indeed Compl. ¶52), and it runs a serial campaign against unrelated product companies rather than suing competitors in a market it serves. The absence of the classic shell-transfer signal is explained by structure, not by innocence: because the founders are the assignee (inventors Chang and Liu assign into their own company, e.g. sibling recordings at Reel 028733/0064 and 042385/0202), there was never a need for a licensing LLC — the operating shell and the patent owner are the same Washington corporation.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent RE48066 or application 15/838,219); Google Patents legal events — https://patents.google.com/patent/[USRE48066](/patent/USRE48066)/en.

Generated 9/29/2026, 7:12:16 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research the prior-art citations for RE48066 across multiple sources.

Let me pull the actual citation lists from the patent's front page and the reexamination record.

I hit the step limit while researching, so I'll answer with what I was able to confirm and flag clearly what I could not. Two upfront caveats matter here:

  1. The authoritative full text you supplied contains the specification and abstract but not the printed "(56) References Cited" list (the Google Patents claims/citations table did not come through). So to answer the "each patent citation" question I had to reconstruct the citation list from the reissue front-page PDFs and USPTO aggregator records for RE48066 and its siblings.
  2. I was only able to pull a partial U.S.-patent citation list (the front pages show these lists as multi-page "(Continued)" tables). I could not retrieve the complete enumerated list, nor the list of references Unified Patents relied on in reexam 90/019,971. I say so explicitly rather than fill gaps.

0. Legal framework (this matters for the §102 analysis)

  • RE48066's underlying application (Ser. No. 09/947,116) was filed Sept. 4, 2001, claiming benefit of provisional 60/230,021 (Sept. 5, 2000). The patent is therefore governed by pre-AIA 35 U.S.C. §102. Because the reissue (a) did not change the effective filing date and (b) added new claims, the critical date for §102 is the Sept. 5, 2000 priority date (subject to provable earlier invention dates).
  • Practical consequence: references published more than one year before Sept. 4, 2001 are §102(b) art; references published before but within one year of that date are §102(a) art; U.S. patents/applications with pre-priority filing dates can be §102(e) art.
  • Anticipation under §102 requires a single reference disclosing every limitation as arranged in the claim. The reissue-added "data-mining" claims (Unified Patents identifies claims 38 and 47 as the independent claims of that family — consistent with the claim families A–D in the earlier summary) therefore need a reference disclosing an Internet-based service and data mining of a user's transaction history — a severe constraint on what can anticipate them.

1. Confirmed prosecution citations (the "(56) References Cited" list)

The front page of the sibling reissue US RE48,088 E (same specification, same reissue chain, filed the same day as RE48066) shows the shared citation list beginning with these entries; the USPTO-report record for US RE48066 corroborates the foreign references. Confirmed entries:

Reference (full citation) Publication / issue date Basis Brief description Claims it could potentially anticipate (§102)
US 3,648,254 A — Beausoleil March 1972 Pre-AIA §102(b) (>>1 yr before 9/4/2001) Early telecommunications/call-handling patent cited by the examiner during original prosecution of the '304 application. (I could not retrieve the full text in this session; exact subject matter unconfirmed.) Potentially the original "anonymity / connecting calls" family only (families A–C, i.e., the "facilitating"/"establishing" method claims and the apparatus claim). It cannot anticipate the reissue-added Internet/data-mining claims (38/47) — it predates the Internet-based service and contains no data mining.
US 3,883,693 A — Moore May 1975 Pre-AIA §102(b) Second early telephony patent on the examiner's list; likely directed to call connection/routing or dialing. (Full text not retrieved; subject matter unconfirmed.) Same as above — at most tangentially relevant to the original call-connection/anonymity claims; not §102 art against the data-mining claims.
EP 1118950 A1 July 2001 Cited by examiner; published after the 9/5/2000 priority date Foreign published application on the examiner's list. (Subject matter unconfirmed.) Because it post-dates the priority date, it is not §102(a)/(b) art unless a later invention date is proven, and it is not §102(e) art (that statute reaches only U.S. patents/applications). It is therefore unlikely to anticipate any claim as printed. Treat as a §103-type teaching at most.
GB 2332764 A June 1999 Pre-AIA §102(a) (published before, but within 1 yr of, 9/4/2001) UK published application on the examiner's list; likely call-handling/routing subject matter. (Subject matter unconfirmed.) Potential §102(a) art against dependent claims reciting the generic "receive identifier → connect parties" mechanics (original family), but not against the Internet/data-mining independent claims.

Honest limitation: I captured only the first two U.S. patents of the "(56)" table before the front-page listing truncated as "(Continued)." The complete U.S. list for RE48066 is contained in the "(56) References Cited" box of the RE48066 front page (USPTO Patent Center, reissue app. 15/838,219) — that should be pulled verbatim to complete this table.

2. "Cited by applicant" items on the RE48066 record (not §102 prior art)

The USPTO-report listing for RE48066 shows an IDS-style "Other References / cited by applicant" set: US RE41,123 E (Liu et al., 02/2010), US 7,814,209 B2 (10/2010, Chang et al.), US 8,396,977 B2 (03/2013, Chang, withdrawn), US 9,008,572 B2 (04/2015, Chang et al.), plus various USPTO Notices of Allowance. These are the applicant's own Flexiworld-family patents and prosecution papers — self-citations, not prior art. I list them only so they are not mistaken for anticipatory references.

3. The references that actually matter for validity — and which I could not retrieve

For a patent being attacked today, the operative prior art is almost never the examiner-cited list (the examiner already considered it); it is the third-party art. Two sources are key and I could not obtain their specific reference IDs in this session:

  • Ex parte reexamination 90/019,971 (RE48066), requested by Unified Patents on May 23, 2025, instituted June 24, 2025 on substantial new questions of patentability. Unified's request identifies the specific patents/printed publications forming the SNQ; the institution order + request are in the public reexam file (https://portal.unifiedpatents.com/exparte/90019971). I did not retrieve the specific reference numbers — do not treat any list here as complete.
  • PATROLL contest for US-RE48066-E1 ("Data Mining User Information," claims 38 and 47; Dec. 4, 2024 – Jan. 4, 2025). The winning prior art was announced March 29, 2025 (https://www.unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art), and is downloadable from that page. That submission is the best available candidate art specifically charted against claims 38/47, and is the single most useful thing to pull next. I could not retrieve the winner's reference IDs here.

Note also Unified's rule for that contest: "prior art previously cited during prosecution will not be considered" — i.e., the §102 art above is expressly treated as not the promising art by the challenger. That is a strong signal that the prosecution-cited references (Beausoleil, Moore, EP 1118950, GB 2332764) are weak/inapplicable, which matches the §102 analysis in my table.

4. Bottom line on the §102 question

  • Best §102(b)/(a) candidates on the face of the patent: US 3,648,254 (Beausoleil, 3/1972) and US 3,883,693 (Moore, 5/1975) — §102(b) art; GB 2332764 A (6/1999) — §102(a) art; EP 1118950 A1 (7/2001) — post-priority, not §102 art as printed.
  • Realistic §102 reach: these can only plausibly be urged against the original anonymous-voice-communication claims (families A–C: "facilitating"/"establishing" method claims and the apparatus claim), and even there they are more likely §103 than §102 art. None of them can anticipate the reissue-added Internet/data-mining claims 38 and 47, which require an Internet-based service that data mines a user's transaction history and issues a reference code — functionality not disclosed by 1970s telephony art.
  • The genuinely relevant §102 art for claims 38/47 is whatever Unified Patents relied on in 90/019,971 and/or the PATROLL winning submission — which I was unable to enumerate.

5. Explicit uncertainties (so nothing here is over-read)

  • Unconfirmed: the complete enumerated U.S. citation list of RE48066 (only the first two U.S. patents were captured); the full text/subject matter of Beausoleil, Moore, EP 1118950, and GB 2332764 (so their descriptions are generic, and the "claims it could anticipate" column is a reasoned estimate, not a claim chart); the specific references in reexam 90/019,971 and in the PATROLL winning art.
  • Confirmed: the identity/date/basis framework, the four foreign/prosecution references above, and the fact that Unified's contest fixed on claims 38 and 47 and excluded prosecution-cited art.
  • No contradiction with the earlier-generated sections: the identification of claims 38/47 as the reissue-added independent claims is consistent with the "family D" reconstruction there. Any §102 mapping for those claims must await the actual reexam/reexam-request references.

If you want, the two highest-value next pulls are: (a) the verbatim "(56) References Cited" box of the RE48066 front page, and (b) the reference list in Unified's 90/019,971 request / PATROLL winning art — those would let me convert the estimates above into an actual element-by-element §102 claim chart for claims 1–47 (or at least claims 38 and 47).

Generated 9/29/2026, 7:12:19 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll research the prior art record for RE48066 — including the references cited on its face, the reexamination grounds, and the PATROLL contest — before building the § 103 analysis.

Let me pull the actual claim text, the front-page cited references, and the PATROLL winning prior art.

Obviousness Analysis of U.S. Patent No. RE48,066 under 35 U.S.C. § 103

Cross-reference note: I build on, and do not repeat, the bibliographic, abstract, claim-family and litigation sections generated earlier. Two updates/contradiction checks are flagged in §8 below — including a partial resolution of the earlier "verbatim claims not retrieved" caveat.


1. What the "Prior Art section of this page" actually supplies

The Google Patents record for USRE48066E1 carries only two prior-art data fields, and I use them literally:

Field Value as printed
Prior art keywords party; station; transaction; information; internet
Prior art date 2000-09-05

Those keywords are machine-derived from the claim/spec vocabulary and are a fair index of the claimed subject matter: a transaction between two parties at two stations, brokered over the internet using information about users. The 2000-09-05 prior-art date matches the § 119(e) provisional (60/230,021), which is the critical date for pre-AIA § 102/§ 103 purposes.

Everything else below is drawn from (a) references cited of record in the RE48,066 family, (b) references surfaced in my searches, and (c) general knowledge of the 1995–2000 art, each tagged with a confidence level. I could not retrieve the specific references awarded in Unified Patents' PATROLL contest or the art cited in the order granting ex parte reexam 90/019,971 — those are the actual record and should be pulled from https://www.unifiedpatents.com/insights/2025/3/29/1500-awarded-for-flexiworld-technologies-communication-patents-prior-art and the 90/019,971 file respectively.


2. Framework

  • Statute: pre-AIA § 103(a) (original application 09/947,116 filed 2001-09-04; reissue claims supported by the 2000-09-05 provisional).
  • Critical date: 2000-09-05. Anything published or patented before that, or § 102(e) art with an earlier effective filing date, qualifies.
  • PHOSITA: a person with a B.S. in CS/EE (or equivalent) and 2–4 years' experience building Internet-delivered services and/or computer-telephony systems — familiar with TCP/IP, HTTP, VoIP clients and gateways, PSTN/CTI trunking, and database-backed e-commerce (session records, billing, user profiles). No claim element requires anything uncommon in 2000.
  • Reissue overlay: § 251 bars new matter, so the added data-mining claims are only prior-art-clear if the 2001 spec supports them. It does ("data mining of same in the context of the user's history of transactions"; "analytical services based on information … about users"). This helps the obviousness case: the patentee's own specification concedes that mining user transaction histories and personalizing on it were known techniques.

3. Claim scope relied upon (confidence-tagged)

Claim Text basis Confidence
Claim 1 Reproduced in full on Flexiworld's own site: method of facilitating anonymous communication between first/second stations, each enabled to transmit and receive packet data and connected directly to a packet data network; providing a transaction specification from at least one station; generating a reference code in response to the transaction specification, with a defined relationship to the second station's address; supplying the reference code to the first station; receiving a communication request and the reference code from the first station; using the code to recover the address; opening a channel without providing the address to the first station High (patentee-published text)
Claims 38, 47 (independent; the reissue-added family, and the claims Unified attacked) Unified's own characterization: "an apparatus for facilitating transactions over the Internet without requiring the first party to provide transaction specifications prior to receiving a reference code" High as to characterization; Medium as to verbatim text
Sibling proxy for the data-mining limitations RE46,637 (same original patent 7,099,304, same spec) claims 53–63: controller creates a proposed first party transaction specification by employing data-mined information collected from a history of transactions associated with the second party over the Internet, the proposed specification specifying product / service / intellectual property / content / qualification / interest / characteristic information; controller sends a reference code; receives a connection request employing the reference code; connection made without requiring the first party to create the proposed specification; reference code may include image, video, or graphics and be displayed on a screen Medium-High (verbatim, but from the sibling reissue, not RE48,066)

Functional kernel of the asserted claims (what actually has to be shown):

  1. Two Internet-enabled stations and an interface for a transaction specification;
  2. A transaction-specific reference code mapped to a hidden destination address;
  3. Code transmitted to one party; later returned with a connection request;
  4. The system recovers the address and connects the parties without disclosing it;
  5. (38/47 family) The system itself proposes the transaction from mined transaction history, so the user need not specify anything before receiving the code; the code may be/relate to an advertisement.

4. Prior art mapped element-by-element

Element DuVal, US 5,818,836 AT&T/Desimone, CA 2,274,350 A1 keen.com / exp.com printouts (of record, dated 2000-08-06) VocalTec Internet Phone R4 (1993–96) / Hoshi 1999 / Dodd 1999 (of record)
Two parties / first & second station ✔ "first party," "second party" (cl. 1, 7) ✔ chat-room participants ✔ advice-seeker + paid advisor ✔ IP endpoints / gateways
Interface for transaction specification Partial — anonymous-voice request via GUI (cl. 10) or e-mail agreement on time + matchcode ✔ call setup info supplied by participants (callback numbers, billing) ✔ inquiry posting, advisor selection, rate + availability —
Transaction-specific reference code with defined relationship to address ✔ matchcode; stored with each party's telephone number (cl. 11, 12, 19) ✔ Participant Authorization Code (PAC) + company URL, per session ✔ per-call access code —
Code supplied to a station ✔ both parties enter matchcode ✔ PAC passed to selected chat participant ✔ code returned to caller —
Receive request + code; compare/validate ✔ ✔ ✔ —
Recover address from code ✔ stored numbers indexed by matchcode ✔ callback numbers registered with Call Broker ✔ advisor's real number held by service —
Open channel without disclosing address ✔ "retain their anonymity" ✔ bridges voice links; numbers never exchanged ✔ numbers never exchanged —
Designated caller / system dials the non-calling party ✔ cl. 8, 13 ("dialing a telephone station of each party from an anonymous voice system") ✔ Call Broker completes both legs ✔ —
Packet-data / VoIP coupling ✖ (circuit-switched) ✖ (PSTN bridging) Partial (web front end) ✔ PC-to-PC IP voice; IP-telephony gateway multiplexing

Sources: DuVal claim text and the AT&T abstract are reproduced in the search results above (DuVal's '836 was the subject of IPR2013-00312 and of W.D. Tex. No. 1:2012-cv-00465; the AT&T document is the Google Patents record for CA 2,274,350 A1, priority US 09/111,672, 1998-07-08). The keen.com/exp.com productions (FLE000087–000102 and FLE000103–000114, dated 2000-08-06) and the VocalTec/Hoshi/Dodd items appear in the RE48,066 record per uspto.report.


5. Grounds of rejection

Ground 1 — Claims 1 and the method family: DuVal '836 in view of Desimone (AT&T)

Both references are in the same field (anonymous voice connection initiated from an on-line data session), address the same problem (let chat/online participants talk by voice without exchanging numbers), and disclose the same mechanism (a session-specific code mapped to stored destination numbers, entered to trigger a bridged/matched call).

  • Rationale (MPEP 2143 (A), (C)): combining DuVal's matchcode/ANV bridging with Desimone's Call-Broker/PAC architecture — code issued by the broker to the selected participant, callback numbers registered with the broker — is the combination of known elements according to known methods to yield a predictable result: an anonymous brokered voice call. DuVal's own claim 13 already teaches the "system calls the second party" variant, so nothing in the combination is functionally new.
  • No teaching away. DuVal's circuit-switched orientation is not a disclaimer of VoIP; the patent's own Background concedes the art was migrating voice onto packet networks.

Ground 2 — Claim 1's "packet data network" limitation: Ground 1 + VocalTec Internet Phone / Hoshi et al. / Dodd

Claim 1 requires each station to be packet-data enabled and connected directly to a packet data network. That element is supplied by:

  • VocalTec Internet Phone Release 4 (1993–96 help files, readme, screen images, and the CTI for Management Buyer's Guide entry; all of record) — PC-to-PC Internet telephony with a user directory/community front end;

  • Hoshi et al., "Voice Stream Multiplexing between IP Telephony Gateways," IEICE Trans. Inf. & Sys., Vol. E82-D, No. 4 (Apr. 1999) — IP-telephony gateway art;

  • Dodd, The Essential Guide to Telecommunications (1999), chs. 8–10 — background on PSTN/CTI/packet voice.

  • Rationale (MPEP 2143 (A), (D), (F)): applying a known anonymous-call-brokering technique to the known, improving packet-voice transport was the predictable use of a known technique on a device ready for improvement; the Background itself identifies the migration as the prevailing design trend, supplying the market-force/design-incentive rationale.

Ground 3 — Claims 38/47 (data-mining family): keen.com / exp.com + Ground 1/2, in view of 1990s personalization/targeted-advertising art

This is the ground that matters, because claims 38 and 47 are the independent reissue-added claims.

(a) The expert-marketplace references supply the "service system" and the mined data. keen.com and exp.com are Internet advice marketplaces of the late 1990s whose printed pages are already in the RE48,066 record, dated 2000-08-06 (30 days before the critical date). Their disclosures (verify against the productions) map directly onto the claim and onto the specification's own list of mined data: advisor profiles, specialties, education, certifications, fee schedules, ratings and reviews, and transaction history; matching of a caller to an advisor by topic; issuance of a code/PIN to place an anonymous, per-minute-billed connection.

(b) The personalization/advertising references supply "mining the history → creating the proposed transaction → sending it with an actionable code." The claims' novel-sounding kernel — the system, without the user asking, proposes a transaction (possibly an advertisement) built from mined transaction history and delivers a reference code (text, image, video, audio, or a communication link) that the user later redeems to connect — is precisely the recommendation/targeted-ad paradigm of 1996–2000, e.g. (medium confidence — verify):

  • US 5,948,061 (Merriman et al., DoubleClick) — targeting and measuring advertising over networks using a stored user profile/behavior;

  • US 6,029,141 (Bezos et al.) and US 6,006,225 (Bowman et al., Amazon) — generating item/target suggestions from a user's prior transactions and queries, delivered as an actionable link.

  • Rationale (MPEP 2143 (D), (E), (F)): the references are analogous art in electronic commerce; the combination uses a known technique (profile/history mining → automated offer → clickable/actionable artifact) to improve a known service (an expert marketplace that already brokered anonymous calls), yielding the predictable benefit of higher utilization/lower search cost. KSR's "obvious to try" applies: a finite, identified set of solutions was available, and the incentive to monetize idle expert capacity and to increase transaction volume supplied the motivation.

  • The reference-code format limitations (text/image/video/audio/hyperlink; visual display) are predictable variations of a known "access code" concept — Desimone's PAC-plus-URL is already a link form — and are obvious under MPEP 2143 (A)/(G).

  • The "advertisement as the proposed transaction" limitation is squarely met by the targeted-advertising art.

  • The "without requiring the first party to provide a transaction specification prior to receiving the reference code" limitation is met by the ad/recommendation model: DoubleClick-style systems pushed offers based on a stored profile, and the user supplied nothing at push time. This is also the limitation Unified highlighted in its PATROLL call, and it is the easiest one to meet with advertising art.

Ground 4 — Apparatus claims: Ground 1/2/3 applied to the controller

The controller-side apparatus claims add a processor, memory, network interfaces, and a database that stores reference codes and connection instructions — see the RE48,066 specification's own FIG. 3 components (processor 82, memory 84, data storage 98 with reference-code database 100 and connection-instruction database 102). A general-purpose server programmed to index codes to stored connection records was uncontroversial in 2000 (O'Reilly/Web/database literature; and Desimone's Call Broker is literally a server bridging a PSTN and an online data network). If any claim is in means-plus-function form (drafted 2000–01, so likely), § 112(f) construction limits it to the disclosed controller structure and equivalents — which the prior art brokers already meet.

Ground 5 — Cross-family 103 (worth asserting alongside)

Because RE48,066 and RE46,637 issue from the same original patent and specification, art that anticipates/narrows one family's claims is probative for the other. Any reference that renders RE46,637 claim 53 obvious renders the corresponding RE48,066 claim 38 obvious on the same rationale — a consistency argument that also forecloses the patentee from arguing a narrow construction in one case and a broad one in the other.


6. Consolidated KSR motivation table

KSR / MPEP 2143 rationale Where it applies
(A) Known elements combined by known methods, predictable result Grounds 1, 2, 3
(C) Known technique improves a similar device the same way Ground 1 (matchcode + PAC)
(D) Known technique applied to a known device ready for improvement Grounds 2, 3
(E) Obvious to try — finite, predictable solutions Ground 3
(F) Design incentive / market forces Grounds 2, 3 (monetizing expert capacity, per-minute billing, privacy expectations)
(G) Predictable variations Code formats, visual display, advertisement embodiment
Applicant-admitted art (§ 102(a)/KSR "known technique") Background's packet-voice migration; spec's "data mining … user's history of transactions" and "analytical services based on information about users"

7. Rebuttals the patentee will raise, and how to meet them

  1. "Reference code is transaction-specific, not merely user-specific." Met by Desimone's per-session PAC and by keen.com's per-call code. This is precisely the distinction the specification draws over "user codes" and "contact codes" (spec at the Background) — and the prior art already crosses it.
  2. "The system creates the proposed transaction, rather than receiving a specification." Met by the recommendation/targeted-ad art; the patent's own claim 56 in the sibling family concedes the alternative ("receive an initial transaction specification … and subsequent to receiving … create the proposed … specification"), i.e., the un-requested creation is a known option.
  3. "Anonymity requires no disclosure of the address." Met by DuVal and Desimone in terms; keen.com/exp.com as a matter of actual practice.
  4. Secondary considerations. Expect little: Flexiworld is a non-practicing entity (Stanford NPE database), so no commercial-success nexus; the spec itself concedes the long-felt need regarding number privacy, which cuts against nexus-based rebuttal. Any "failure of others" argument is undercut by VocalTec, NetMeeting-era products and the expert marketplaces actually operating by 1999–2000.

8. Confidence, contradictions, and non-103 attacks worth pairing

Contradiction/update check against the earlier sections:

  • No contradiction found between my prior-art findings and the previously generated bibliographic, abstract, claim-family or litigation sections. The earlier family-D characterization matches Unified's own description of the asserted claim family.
  • Update (partial resolution of a caveat): the earlier material flagged "verbatim claims not retrieved." I now have claim 1 in full (patentee's own website) and verbatim data-mining claim text from the sibling reissue RE46,637 (claims 53, 59, 63). The verbatim text of RE48,066 claims 38 and 47 specifically remains unretrieved — use the RE46,637 text only as a proxy, as flagged.

Confidence:

  • High: DuVal US 5,818,836 content; AT&T/Desimone CA 2,274,350 A1 content; claim 1 text; the composition of the RE48,066-of-record reference lists (VocalTec, Hoshi, Dodd, keen.com/exp.com productions, US 7,814,209; US 9,008,572; RE41,123; US 8,396,977); the 2000-09-05 prior-art date.
  • Medium: verbatim text of RE48,066 claims 38/47; the precise disclosure of the keen.com/exp.com productions (I did not read the FLE000087–000114 documents directly).
  • Medium/low (verify before citing in a paper): US 5,948,061 (DoubleClick/Merriman); US 6,029,141 (Bezos); US 6,006,225 (Bowman) — well-known pre-2000 art, but I did not re-verify numbers in this session.
  • Not retrieved: the PATROLL winning references and the art cited in the 90/019,971 grant order.

Pair non-103 attacks (they may be stronger than 103 here):

  • § 251 new matter / "original patent" for the added data-mining claims (In re Rogoff-type argument) — a reissue-specific vulnerability that does not depend on the prior art at all.
  • § 112(a)/(b) on the means-plus-function apparatus claims (the specification's disclosure of the controller as a block diagram may be thin for the "data mining" function).
  • § 101/Alice — note the earlier litigation section records a Rule 12(b)(6) dismissal with prejudice at the pleadings stage (W.D. Tex., Aug. 19, 2025). A pleadings-stage dismissal is most consistent with an eligibility or § 112 challenge rather than a § 103 ruling on the merits; I could not retrieve the order's reasoning, so treat that as an inference, not a finding.

Bottom line: the strongest § 103 case pairs (i) the expert-marketplace printed publications already of record with (ii) the 1995–2000 anonymous-call-brokering patents (DuVal '836; AT&T/Desimone CA 2,274,350) and (iii) VoIP client/gateway art of record (VocalTec, Hoshi, Dodd) to reach claim 1 and its method/apparatus family, and adds (iv) targeted-advertising / recommendation art to reach the system-created "proposed transaction" and reference-code-format limitations of claims 38 and 47. Motivation in every combination is grounded in the same field, the same problem, and the patent's own admissions about the state of the art.

Generated 9/29/2026, 7:13:03 PM

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