Apple Inc. v. Uniloc Luxembourg S.A.

1. Case Identification

• Patent #: 8,239,852
• Filed: September 29, 2017
• Petitioner(s): Apple Inc.
• Patent Owner(s): Uniloc Luxembourg S.A.
• Challenged Claims: 1-8 and 16-18

2. Patent Overview

• Title: System for Remotely Updating a Program Configuration
• Brief Description: The ’852 patent relates to systems for remotely authenticating and updating software. A client device determines various machine parameters, generates a unique device identifier based on those parameters, and collects a unique software identifier. Both identifiers are sent to an update server, which analyzes them to determine if the client is licensed to 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 asserted that Richardson discloses the core of the claimed invention, including a client device that performs a remote update by obtaining an "unlock key" from an "authorization server." Richardson's client generates a "unique device identifier" from machine parameters (e.g., hard disk serial number, CPU number, IP address) and sends it with a unique software identifier ("product serial number") to the server for license verification. Petitioner argued that Demeyer, which discloses a software licensing system using a "registration clearinghouse," supplies the remaining limitations. Specifically, Demeyer’s teaching of collecting "end user 160 identification" and identifying a "technology module 107" (e.g., a licensed feature like Dolby Digital decoding) renders obvious the ’852 patent’s requirement to determine "account information" and "features of software that the user... is entitled to use."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references because both address remote software authorization and are in a common field. A POSITA would be motivated to incorporate Demeyer's more specific types of identification parameters (user account info, licensed features) into Richardson’s system to improve its security and specificity. Petitioner contended this was a simple design choice, as Richardson is agnostic about the exact parameters used, so long as the resulting identifier is unique. The combination would be the predictable use of a known technique to improve a similar device.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the teachings because it involved applying known identification parameters from one licensing system (Demeyer) to another (Richardson) to achieve the predictable result of a more robust and secure authentication process.

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

• Prior Art Relied Upon: Richardson (Application # 2008/0320607), Demeyer (’334 application), and Villela (Application # 2007/0113090).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the Richardson and Demeyer combination to address dependent claims 2-4. While the base combination teaches generating a unique device identifier, Petitioner argued it does not explicitly disclose using a hash-based method. Villela was introduced to supply this teaching. Villela discloses a method for device identification where a "software agent" creates a "SIGNATURE" for the device by using SHA hashing (a "cryptographic hash function") on configuration data. This directly maps to the "hash code" required by claim 2. Furthermore, Villela explicitly teaches that its hashing is an "irreversible" transformation to preserve user privacy, mapping to claim 3's "irreversible transformation" limitation.
  • Motivation to Combine: Richardson fails to specify the mechanism for compiling the unique identifier from machine parameters. A POSITA seeking a secure, industry-standard method for encoding this data would have been motivated to look to references like Villela. Applying Villela's secure hashing technique to the identifier generated by the Richardson/Demeyer system would be a logical step to gain the known benefits of data security and user privacy.
  • Expectation of Success: Hashing is a well-understood, standard, and predictable method for encoding data. A POSITA would have expected this standard cryptographic technique to work as intended when applied to the device parameters collected in the Richardson/Demeyer system.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 16 and 17. These grounds relied on the same base combination of Richardson and Demeyer, adding a single prior art reference in each case to teach specific machine parameters. The challenge to claim 16 added Shakkarwar (Application # 2008/0120195) for its disclosure of using IMEI and IMSI numbers as device identifiers. The challenge to claim 17 added Hughes for its disclosure of using PCI controller information as part of a hardware ID.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the grounds presented in this petition were not redundant with those in a previously filed petition (IPR2017-02041) against the same ’852 patent. The petition asserted that these new grounds rely on Richardson as the primary reference, whereas the earlier petition relied on different primary art (Michiels and Schull). Petitioner contended that Richardson is a stronger reference that is "word-for-word identical" to the ’852 patent's disclosure in some aspects, 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.