PTAB

IPR2016-00609

PRicelineCom LLC v. IBM Corp

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Single-Sign-On Operation with Runtime User Account Creation
  • Brief Description: The ’346 patent relates to single-sign-on (SSO) functionality within a federated computing environment. It purports to improve upon prior art SSO systems by enabling a user to access a protected resource even if the user does not have a preexisting account with the service provider, through a process of "on-the-fly" user account creation.

3. Grounds for Unpatentability

Ground 1: Anticipation by Mellmer - Claims 1-2, 4, 12-13, 15-16, and 18-19 are anticipated by Mellmer.

  • Prior Art Relied Upon: Mellmer (Patent 7,680,819).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mellmer, which discloses Novell’s “DigitalMe” technology, teaches every element of the challenged independent and dependent claims. The petition asserted that Mellmer describes a federated environment where a user with a DigitalMe identity (a first system) can log into a "partner site" (a second system). Crucially, Petitioner contended that if the user lacks an account at the partner site, Mellmer discloses that the DigitalMe system sends a unique identifier to the partner site, which then automatically generates a new user account before granting access. Petitioner asserted this process directly maps to the ’346 patent’s central concept of runtime account creation triggered during an SSO operation. Petitioner further mapped Mellmer's disclosure of user "profiles" to the "alias identifier" limitation in dependent claims.

Ground 2: Obviousness over Mellmer and Pfitzmann - Claims 1-8 and 10-20 are obvious over Mellmer in view of Pfitzmann.

  • Prior Art Relied Upon: Mellmer (’819 patent) and Pfitzmann (a 2002 publication entitled “Privacy in Browser-Based Attribute Exchange”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mellmer provides the foundational SSO system featuring on-the-fly account creation. Pfitzmann was presented as a well-known reference describing various protocols for exchanging user attributes in federated systems, explicitly distinguishing between "front-channel" communication (via browser redirection) and "back-channel" communication (direct server-to-server interaction). These communication methods, as described in Pfitzmann, were argued to directly correspond to the limitations recited in dependent claims 6-8 of the ’346 patent.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they address the same technical field of attribute exchange in SSO systems. Petitioner asserted that Pfitzmann’s browser-based, "zero-footprint" protocols represented a known, lightweight solution that would have been an obvious and commercially desirable method for implementing the attribute exchange necessary for Mellmer’s account creation process. This combination would improve accessibility and reach a larger market without requiring special client-side software.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining Pfitzmann’s standard communication protocols with Mellmer’s disclosed account creation logic involved applying known techniques for their intended purpose, leading to the predictable result of a functioning SSO system.

Ground 3: Obviousness of Claim 9 over Mellmer, Pfitzmann, and Cahill - Claim 9 is obvious over Mellmer in view of Pfitzmann and Cahill.

  • Prior Art Relied Upon: Mellmer (’819 patent), Pfitzmann (2002 publication), and Cahill (Patent 7,290,278).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically targeted claim 9, which depends from claim 8 and adds the limitation of using the Simple Object Access Protocol (SOAP) for the back-channel information retrieval mechanism. Petitioner argued that the combination of Mellmer and Pfitzmann establishes the obviousness of a system using back-channel communication for attribute retrieval. Cahill was introduced as a reference that explicitly teaches using SOAP for exchanging identity attributes over back channels.
    • Motivation to Combine: A POSITA implementing the back-channel communication taught by Pfitzmann would be motivated to use a standardized, well-known protocol like SOAP, as taught by Cahill, to ensure system interoperability, reliability, and security. Petitioner noted that the use of SOAP for such purposes was conventional at the time, and that the Patent Owner had not disputed this during the original prosecution of the ’346 patent. Using SOAP was presented as an obvious design choice for implementing the back-channel functionality.

4. Key Claim Construction Positions

  • "Federated Computing Environment": Petitioner argued this term should be construed as a "loosely coupled affiliation of enterprises which adhere to certain standards of interoperability; the federation provides a mechanism for trust among those enterprises." This construction was foundational to arguing that the relationship between Mellmer's "DigitalMe" server and its affiliated "partner sites" constituted the claimed environment.
  • "front-channel information retrieval mechanism": Proposed as a process where information is exchanged between two domains via a browser.
  • "back-channel information retrieval mechanism": Proposed as a process where information is exchanged between two domains without passing through a browser. These constructions were critical for mapping Pfitzmann’s teachings to dependent claims 6-8.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’346 patent as unpatentable under 35 U.S.C. §§ 102 and 103.