PTAB

IPR2017-02202

Apple Inc v. Uniloc Luxembourg SA

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System for Remotely Updating a Program Configuration
  • Brief Description: The ’852 patent discloses a system for remotely managing software updates. A client device determines various machine parameters to generate a unique device identifier, which is sent with a unique software identifier to an update server to verify licensing and receive an updated program configuration.

3. Grounds for Unpatentability

Ground 1: Obviousness over Richardson and Demeyer - Claims 1, 5-8, and 18 are obvious over Richardson in view of Demeyer.

  • Prior Art Relied Upon: Richardson (Application # 2008/0320607) and Demeyer (Application # 2005/0076334).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Richardson taught the core of the claimed invention, including a system for auditing and restricting software usage where a client device generates a "unique device identifier" from hardware parameters and sends it with a "product serial number" (a software identifier) to a remote authorization server for license verification. The server then sends back an "unlock key" to update the software's configuration. Petitioner asserted that Demeyer, which discloses a software licensing clearinghouse, supplements Richardson's teachings by detailing specific types of "identification information" that can be collected, including user identification and identification of specific software features or modules the user is licensed to use. Richardson’s collection of machine parameters was argued to meet the limitations of claim 18, including determining account information and software features, particularly when combined with Demeyer's more explicit disclosure of collecting user and software-specific licensing data. Dependent claims 5-8 were allegedly taught by Richardson's disclosure of using geo-location codes like IP addresses (claims 5-6) and machine parameters like CPU number and machine serial number (claims 7-8).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Richardson and Demeyer as both address remote software authorization and are in a common field. Petitioner argued a POSITA would have been motivated to incorporate Demeyer's teachings on collecting specific user and software feature information into Richardson's system. This was presented as an obvious design choice to improve the security and specificity of the device identifier, allowing for better user differentiation and more granular license enforcement with no unexpected results.
    • Expectation of Success: Petitioner contended that a POSITA would have had a high expectation of success because combining the known identification techniques from Demeyer with the licensing framework of Richardson was a predictable way to improve a known system.

Ground 2: Obviousness over Richardson, Demeyer, and Villela - Claims 2-4 are obvious over Richardson and Demeyer in view of Villela.

  • Prior Art Relied Upon: Richardson (Application # 2008/0320607), Demeyer (Application # 2005/0076334), and Villela (Application # 2007/0113090).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds upon the combination of Richardson and Demeyer. Petitioner asserted that while Richardson teaches compiling a unique device identifier, it does not specify the method. Villela was introduced to teach a method for creating a secure device "SIGNATURE" by using an irreversible transformation, specifically a cryptographic hash function like SHA256, on collected hardware and software configuration data. This directly addresses the limitations of claims 2-4, which require the unique device identifier to comprise a "hash code" (claim 2) and be generated via an "irreversible transformation" (claim 3) that is a "cryptographic hash function" (claim 4).
    • Motivation to Combine: A POSITA, seeking to implement the identifier generation in the Richardson/Demeyer system, would have been motivated to use the secure, industry-standard hashing method taught by Villela. The stated motivations were to achieve the known benefits of hashing, such as preserving user privacy and increasing security by making it impossible to reverse-engineer the underlying machine parameters from the identifier. This was argued to be the application of a known technique to improve a similar device.
    • Expectation of Success: Success would have been expected because applying a well-established cryptographic standard like SHA hashing to encode data for security is a routine and predictable practice in software engineering.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combination of Richardson and Demeyer, supplemented by further references to teach specific machine parameters. These included Shakkarwar (Application # 2008/0120195) for teaching IMEI and IMSI numbers as machine parameters for claim 16, and Hughes (Application # 2004/0059938) for teaching PCI controller information for claim 17.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the grounds in this petition were not redundant with those in a previously filed petition (IPR2017-02041) against the same patent. The core argument was that this petition relies on Richardson as the primary reference, whereas the earlier petition relied on different primary art (Michiels and Schull). Petitioner asserted that Richardson provides stronger and, in some cases, word-for-word identical disclosure for key claim limitations compared to the art in the other petition, making these grounds distinct and not cumulative.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8 and 16-18 of the ’852 patent as unpatentable under 35 U.S.C. §103.