International Business Machines Corporation v. ZitoVault, LLC

1. Case Identification

• Case #: IPR2016-00021 (Petition for joinder)
• Patent #: 6,484,257
• Filed: May 10, 2016
• Petitioner(s): International Business Machines Corporation and Softlayer Technologies, Inc.
• Patent Owner(s): ZitoVault, LLC.
• Challenged Claims: 1, 3, 5-8, and 10

2. Patent Overview

• Title: System and Method for Maintaining N Number of Simultaneous Cryptographic Sessions Using a Distributed Computing Environment
• Brief Description: The ’257 patent relates to techniques for conducting multiple cryptographic sessions over a distributed network. It purports to solve issues of latency and processing overload by spreading the computationally intensive workload of encryption and decryption across multiple "agent" servers, thereby sharing the processing load.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 6 and 10 - Claims 6 and 10 are unpatentable under 35 U.S.C. §102(e) as being anticipated by Feinberg.

• Prior Art Relied Upon: Feinberg (Patent 6,065,046)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Feinberg teaches every element of claims 6 and 10. Feinberg discloses a distributed network with a primary server, multiple secondary servers (the claimed "agent servers"), and user computers (the claimed "clients") that communicate via encrypted packets. To manage performance, Feinberg's primary server monitors the load on the secondary servers and shunts incoming user requests to the least busy server available. This load-distribution architecture, implemented in software, was argued to be a "scaleable software crypto system" (claim 6) and a "distributed automaton comprising M automata" (claim 10) that provides bandwidth scalability limited only by the number of available servers.

Ground 2: Obviousness over Feinberg and Bhaskaran - Claims 1, 3, 6, and 10 are obvious over Feinberg in view of Bhaskaran.

• Prior Art Relied Upon: Feinberg (Patent 6,065,046) and Bhaskaran (Patent 6,266,335).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Feinberg discloses the foundational distributed network architecture, including a main server offloading encrypted traffic to a pool of agent servers to manage load. Bhaskaran was introduced to supply specific load-balancing and scalability features. For example, to meet the limitation of claim 3 requiring that bandwidth be partitioned such that each agent receives "1/N of the encrypted bandwidth," Petitioner pointed to Bhaskaran. Bhaskaran teaches a network flow switch that performs per-packet load balancing to ensure that the workload is distributed "evenly" among a cluster of IP servers.
  • Motivation to Combine: A POSITA would combine these references because both addressed the same problem: overcoming network bandwidth constraints in distributed systems. Petitioner argued a POSITA would have been motivated to enhance Feinberg's basic load-shunting system with Bhaskaran's more sophisticated techniques for ensuring even load distribution and for dynamically adding or removing servers from the cluster to adapt to varying traffic volumes.
  • Expectation of Success: Combining the known elements would have been a predictable application of established techniques. A POSITA would have reasonably expected that integrating Bhaskaran's even, per-packet load balancing into Feinberg's architecture would predictably result in a more efficient and scalable system.

Ground 3: Obviousness over Feinberg and Molva - Claims 5, 7, and 8 are obvious over Feinberg in view of Molva.

• Prior Art Relied Upon: Feinberg (Patent 6,065,046) and Molva (R. Molva et al., Authentication of Mobile Users, IEEE Network 1994).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on claim limitations concerning session continuity when a server becomes saturated. Petitioner argued that Feinberg teaches the predicate steps: a primary server detects when a secondary server is overloaded and redirects new requests to an alternate, less-busy server. To teach the specific step of passing a session key to the alternate server and notifying the client, Petitioner cited Molva. Molva discloses a "fast handover protocol" for mobile users where, upon moving to a new network domain, the user's current authentication server forwards the session key to the new authentication server, which then takes over the secure session.
  • Motivation to Combine: A POSITA would combine these references to improve system reliability and fault tolerance. Both references address how to maintain user communications when a server becomes unavailable (due to overload in Feinberg or user mobility in Molva). A POSITA would be motivated to incorporate Molva's elegant session key handoff mechanism into Feinberg's load-balancing system to ensure continuous, secure communication for a user, regardless of the reason for the server change.
  • Expectation of Success: Petitioner asserted that implementing a session key pass, as taught by Molva, within Feinberg's system would have been a straightforward application of a known technique to solve a known problem (maintaining a secure session during a server transition) with a high expectation of success.

4. Key Claim Construction Positions

• "distributed automaton ... / automata" (claims 1, 10): Petitioner proposed this term be construed as "a collection of software that encrypts and/or decrypts packets." This construction was argued to be supported by the specification's description of the "automata (Agent)" as software components on servers that perform decryption.
• "registration entity" (claim 5): Petitioner proposed this term be construed as "data structure(s) containing identification information for agents and clients in the network and keys used to encrypt and decrypt communications within the network." This construction was based on the specification's disclosure of a "registry" on the main server that maintains a list of connections and associated session keys.

5. Arguments Regarding Discretionary Denial

• The petition was filed with the intent to seek joinder with an already-instituted IPR, Amazon.com, Inc., et al. v. ZitoVault, LLC, IPR2016-00021. Petitioner noted that the instant petition challenges the same claims on grounds that are "substantially identical" to those in the instituted Amazon IPR. This procedural posture was presented to facilitate a "just, speedy and inexpensive resolution" and to preempt arguments against institution by aligning with a proceeding the Board had already deemed meritorious.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 5-8, and 10 of the ’257 patent as unpatentable.