Spectrum Brands Inc v. ASSA ABLOY Ab

1. Case Identification

• Case #: IPR2015-01562
• Patent #: 8,150,374
• Filed: July 8, 2015
• Petitioner(s): Spectrum Brands, Inc.
• Patent Owner(s): ASSA ABLOY Ab
• Challenged Claims: 1, 3, 5, 7, 9-16, 21-23, 26, 29, 30

2. Patent Overview

• Title: Remotely Maintainable Secure Access System
• Brief Description: The ’374 patent discloses a secure access system that uses a mobile communications device, such as a mobile phone, as a key to access buildings or other assets. The system allows for access credentials stored on the mobile device to be remotely and immediately updated, enabled, or revoked by a central controller.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nielsen in view of Karkas - Claims 1, 3, 5, 7, 9-16, 21-23, 26, 29, and 30 are obvious over Nielsen in view of Karkas.

• Prior Art Relied Upon: Nielsen (Application # 2002/0180582) and Karkas (Application # 2002/0031228).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nielsen discloses the core components of the challenged claims, including a secure access system with a central "access code management system" (controller), an "electronic key device" (mobile device), and "lock control units" (readers). Nielsen taught that the central system remotely transmits access codes to the mobile devices and readers. Petitioner asserted that Karkas, which describes a similar mobile-phone-based access system, supplies the few limitations not explicitly taught by Nielsen. Specifically for dependent claims 7 and 21, which require "disabling said memory unless an enabling message is received," Petitioner argued Karkas taught this functionality in two ways: (1) requiring a PIN (an enabling message) to use a key stored in memory, and (2) using time-limited keys that expire and are disabled unless an extension (an enabling message) is provided.
  • Motivation to Combine: A POSITA would combine Nielsen and Karkas because both references were published in the same year and disclose highly analogous access control systems using mobile phones as keys. Petitioner contended that the systems are so similar that features from Karkas, such as PIN requirements or automatic key selection, would have been readily compatible and easily incorporated into Nielsen's system to improve its functionality and security.
  • Expectation of Success: Given the striking similarities and compatibility between the systems described in Nielsen and Karkas, a POSITA would have had a reasonable expectation of success in combining their respective features.

Ground 2: Obviousness over Nielsen in view of a POSA's Knowledge - Claims 1, 3, 5, 7, 9-16, 21-23, 26, 29, and 30 are obvious over Nielsen in view of the knowledge of a person of ordinary skill in the art.

• Prior Art Relied Upon: Nielsen (Application # 2002/0180582) and the general knowledge of a person of ordinary skill in the art (POSA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that Nielsen alone, when viewed through the lens of a POSA's general knowledge, renders the claims obvious. Petitioner argued that even without reference to Karkas, a POSA would have found it obvious to modify Nielsen to include the functionality of "disabling memory unless an enabling message is received" (claims 7 and 21). Nielsen disclosed the use of passwords and validity periods for access codes. A POSA would have understood that implementing these known security features would inherently result in the claimed disabling function.
  • Motivation to Combine (Modify): A POSITA would have been motivated to modify Nielsen's system to incorporate such disabling features to enhance system security. Specifically, requiring a password (an enabling message) would protect access codes from tampering, and using validity periods (which time-out unless extended by an enabling message) would prevent the use of expired credentials. These were known problems with predictable solutions.
  • Expectation of Success: A POSITA would have had a high expectation of success in implementing these modifications, as using passwords and validity periods were well-established and routine techniques in the field of secure access control at the time.

4. Key Claim Construction Positions

• "credential": Petitioner did not propose its own construction but instead adopted the construction advanced by the Patent Owner in co-pending district court litigation. Petitioner argued that the Patent Owner should be held to its proposed construction: “data, set of data, encryption scheme, key, transmission protocol, and/or the like, used by a particular mobile device to verify its authenticity with a reader/interrogator.” Petitioner asserted this construction was consistent with the specification and that no broader reasonable construction was supported by the intrinsic record.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution was proper and that its petition was not redundant with a separate IPR petition filed by a co-defendant, UniKey Technologies, Inc. (IPR2015-01441), against the same ’374 patent.
• Petitioner distinguished its petition by noting it relied on different prior art references (Nielsen and Karkas applications) than UniKey's petition. Crucially, Petitioner argued its primary references were §102(b) printed publications, which are statutory bars that the Patent Owner cannot "swear behind" or antedate. This contrasted with the references in UniKey's petition, which potentially could be removed as prior art, making Petitioner's challenge more robust.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 7, 9-16, 21-23, 26, 29, and 30 of Patent 8,150,374 as unpatentable.