Unified Patents Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01850
• Patent #: 8,838,976
• Filed: July 25, 2017
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Uniloc Luxembourg, S.A.
• Challenged Claims: 1-2, 5-6, and 13

2. Patent Overview

• Title: User Authentication Based on Client Hardware Parameters
• Brief Description: The ’976 patent discloses systems for authenticating website users by generating a unique device identifier based on the user's client hardware configuration. The invention purports to create this identifier by collecting and combining both user-configurable parameters and non-user-configurable physical properties of the device hardware.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 5-6 are obvious over Varghese, Donlin, and Risan.

• Prior Art Relied Upon: Varghese (Patent 8,739,278), Donlin (Patent 7,183,799), and Risan (Patent 7,426,637).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Varghese taught the core method of authenticating a user by creating a "device fingerprint" based on collected hardware and software characteristics. However, Varghese lacked a specific teaching of using a non-user-configurable property like silicon degradation. Donlin supplied this missing element by teaching the use of silicon degradation characteristics (e.g., "hot electron degradation") as a unique, non-modifiable identifier for enforcing time-limited licenses on hardware. To meet the limitation of storing the identifier in a "hidden file directory," Petitioner pointed to Risan, which taught storing a unique identifier (a cookie containing a CPU serial number) in a hidden directory to prevent unauthorized user access and modification for copyright protection.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Varghese with Donlin to improve the security and uniqueness of the device fingerprint. Varghese expressed a goal of identifying a device "as uniquely as possible," and Donlin's silicon degradation provided a robust, non-user-configurable hardware characteristic that changes uniquely with device usage. A POSITA would further be motivated to incorporate Risan's teaching to address Varghese's explicit concern about protecting the device identifier from "fraudsters/hackers." Using a hidden directory as taught by Risan was a known method to enhance security and prevent tampering with critical files.
  • Expectation of Success: Petitioner asserted that combining these known elements—an authentication framework (Varghese), a specific type of hardware identifier (Donlin), and a known security storage method (Risan)—would have yielded predictable results.

Ground 2: Claim 13 is obvious over Varghese and Donlin.

• Prior Art Relied Upon: Varghese (Patent 8,739,278) and Donlin (Patent 7,183,799).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged method claim 13, which does not include the "hidden file directory" limitation found in other independent claims. Petitioner argued Varghese taught all steps of the claimed method, including retrieving machine information from a network device, generating a device identifier from that information, and transmitting it to an authentication server. As in Ground 1, Donlin was introduced to teach the specific limitation that the machine information includes a "physical non-user-configurable property" comprising a "silicon degradation characteristic."
  • Motivation to Combine: The motivation was identical to that for the Varghese/Donlin combination in Ground 1. A POSITA would have been motivated to enhance Varghese's authentication system by incorporating a more secure and unique hardware identifier. Donlin's teaching of using silicon degradation as an identifier was directly applicable, as both references operated in the same field of resource access control based on unique hardware characteristics. The combination was presented as a simple substitution of a known, more secure type of hardware characteristic into an existing system.
  • Expectation of Success: Combining the teachings was argued to be predictable, as it involved integrating a known type of hardware measurement into an established device fingerprinting process to improve its security.

4. Key Claim Construction Positions

• "user-configurable parameter" / "physical non-user-configurable property": Petitioner argued, based on the prosecution history, that a "user-configurable parameter" is one that end users can establish or change (e.g., user ID, machine name), whereas a "physical non-user-configurable property" is a physical attribute fixed to the hardware that a user cannot change. This distinction was central to arguing that Donlin's silicon degradation characteristic met the "non-user-configurable" limitation.
• "data regarding an online profile": Petitioner proposed the broad construction of "any data relating to an online user," based on examples in the specification like user ID, name, location, and registration status.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner contended that the ’976 patent was not entitled to the priority date of its provisional application. The argument was that the provisional application failed to provide written description support for the "carbon and/or silicon degradation characteristic" limitation. This limitation was added to the independent claims during prosecution to overcome prior art, and Petitioner argued it was new matter not disclosed in the original filing, thus limiting the effective filing date to that of the non-provisional application.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. It was asserted that although the primary reference, Varghese, was cited in an Information Disclosure Statement (IDS), it was never substantively discussed or relied upon by the Examiner during prosecution. Furthermore, the secondary references, Donlin and Risan, were never presented to or considered by the USPTO.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 5-6, and 13 of the ’976 patent as unpatentable.