UniKey Technologies Inc v. ASSA ABLOY Ab

1. Case Identification

• Case #: IPR2016-00686
• Patent #: 8,150,374
• Filed: February 26, 2016
• Petitioner(s): UniKey Technologies, Inc.
• Patent Owner(s): Peter R. Lowe
• Challenged Claims: 1, 3, 5, 7, 9-16, 21-23, 26, 29, and 30

2. Patent Overview

• Title: System and Method for Remotely Assigning and Revoking Access Credentials Using a Near Field Communication Equipped Mobile Phone
• Brief Description: The ’374 patent describes a secure access system where credential data is stored on a mobile device. The system allows a central controller to remotely update this credential data, enabling the mobile device to communicate with readers (e.g., door locks) to grant or revoke access to secured assets.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Nielsen and Kärkäs - Claims 1, 3, 5, 7, 9-16, 22-23, 26, 29, and 30 are anticipated by Nielsen; Claim 21 is obvious over Nielsen in view of Kärkäs.

• Prior Art Relied Upon: Nielsen (Patent 7,012,503) and Kärkäs (Patent 7,873,989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nielsen disclosed every element of the challenged claims, except for claim 21. Nielsen described an access control system with an "access code management system" (a controller) that remotely maintains a secure access system. This controller stores credential data ("access codes") and transmits updates to an "electronic key device" (a mobile device) associated with a user. The mobile device then presents these codes to "lock control units" (readers) to gain access. Petitioner contended that Nielsen's system automatically initiates an update process, generates a message with the new credentials, and transmits it to the target mobile device, which then modifies its memory by replacing the old access code with the new one. For claim 21, Petitioner argued Kärkäs supplied the missing "timing-out mechanism." Kärkäs disclosed that keys on a mobile device can have a "validity time," after which the mobile station automatically removes the key.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Nielsen and Kärkäs to improve the overall security of Nielsen's system. Incorporating Kärkäs's known technique of automatically deleting expired access codes based on a validity time would further ensure that expired credentials could not be misused, a common goal in the security field.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in implementing a time-based expiration feature from Kärkäs into the structurally similar mobile access system of Nielsen, as it involved applying a known security enhancement to solve a known problem.

Ground 2: Anticipation and Obviousness over Libin and Nielsen - Claim 30 is anticipated by Libin; Claims 1, 3, 5, 7, 9-16, 21-23, 26, and 29 are obvious over Libin in view of Nielsen.

• Prior Art Relied Upon: Libin (Patent 7,205,882) and Nielsen (Patent 7,012,503).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Libin disclosed a security system where a workstation (controller) provides access codes to a wireless device (e.g., cell phone), which then transmits them to controllers (readers) to actuate door locks. Petitioner argued Libin fully anticipated independent claim 30, which claims a mobile device with memory for credentials, an interface to communicate with a reader, and the ability to receive credential updates. For the method and system claims (1, 3, 5, 7, 9-16, etc.), Petitioner argued that while Libin taught sending updates to the mobile device, Nielsen supplied the teaching of a controller communicating with a plurality of readers to ensure synchronization. Libin’s workstation (controller) receives credential updates, generates new access codes, and automatically pushes them to the target cell phone, which modifies its memory accordingly.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Libin and Nielsen because their systems shared a similar structure and functionality. A POSITA would have been motivated to incorporate Nielsen's method of distributing updated access codes to both readers and mobile devices simultaneously. This would improve the synchronization and reliability of Libin's system, ensuring that all components have the most current access codes in parallel.
  • Expectation of Success (for §103 grounds): Integrating Nielsen’s synchronization method into Libin’s system would have been a predictable implementation for a POSITA seeking to enhance system robustness.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution was proper and the petition was not redundant under 35 U.S.C. §315(d) with two prior-filed petitions.
• The first, IPR2015-01441, was filed by Petitioner but was terminated by joint motion prior to an institution decision, meaning the Board had not previously considered the merits.
• The second, IPR2015-01562, was filed by a different petitioner (Spectrum Brands, Inc.) and, critically, did not assert Libin as a primary reference. Petitioner argued that the grounds relying on Libin were therefore new and not substantially the same as those in the '01562 proceeding.

5. Relief Requested

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