PTAB

IPR2018-00376

Guest Tek Interactive Entertainment Ltd v. Nomadix Inc

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Providing Dynamic Network Authorization, Authentication, and Accounting
  • Brief Description: The ’266 patent discloses systems and methods for selectably controlling user access to a computer network. The technology centers on a gateway device that transparently intercepts a user's request to access an external server and redirects the user to a portal or login page to provide authorization or payment information, without requiring the installation of any configuration software on the user's computer.

3. Grounds for Unpatentability

  • The petition presented a single ground for unpatentability under pre-AIA 35 U.S.C. §103, asserting that all challenged claims would have been obvious to a person of ordinary skill in the art (POSITA).

Ground 1: Claims 1-28 are obvious over Slemmer in view of Vu

  • Prior Art Relied Upon: Slemmer (Patent 6,226,677) and Vu (Patent 5,623,601).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Slemmer discloses nearly all elements of the independent and dependent claims. Slemmer teaches a "forced proxy server" system for "controlled communications over a global computer network" that intercepts a user's TCP packet request (e.g., an HTTP request) for an external server. Slemmer’s proxy server analyzes the packet, reroutes it, and provides "alternate content" from a different website, such as a login page for a hotel guest. Critically, Slemmer's proxy server software "responds to the user machine request as if it were the internet web server to which the request was originally directed." Petitioner asserted that this mapping covers all claim limitations except for the explicit teaching of a "connection handshake" where the gateway completes the connection without communicating with the external server. Petitioner contended that Vu supplies this missing element. Vu describes a secure gateway with a transparent proxy that, upon receiving a client request, "responds to the client...to establish a communication session...as if it were the target machine." This process in Vu explicitly teaches the claimed handshake functionality.
    • Motivation to Combine: Petitioner asserted that a POSITA would combine Slemmer's redirection architecture with Vu's transparent handshake for the predictable result of creating a seamless user experience. The primary motivation was to improve the functionality of Slemmer's system. Since Slemmer's stated goal was for its proxy server to act "as if" it were the intended destination server, a POSITA would have been motivated to incorporate known techniques for transparently emulating a server connection. Vu's handshake method was presented as a well-known and suitable solution to achieve this transparency, making the combination a matter of applying a known technique to a known system to yield predictable results.
    • Expectation of Success: The petition argued that a POSITA would have a reasonable expectation of success in implementing Vu's handshake in Slemmer's system. Both patents operate in the same field of network gateways and proxies. The fact that Slemmer describes an HTTP-based system and Vu describes a Telnet-based system would not have discouraged a POSITA, as the underlying TCP handshake principles taught by Vu are protocol-agnostic and would be readily adaptable to Slemmer's proxy server.

4. Key Claim Construction Positions

  • The petition advanced a specific construction for the term "redirection data generation module," which appears in independent claims 1, 11, and 24.
  • Petitioner proposed that the Board adopt its construction from a prior IPR involving the same patent (Hospitality Core, IPR2016-00077), defining the term as "hardware and/or software for carrying out functions attributable to the 'redirection data generation module' as set forth in the claims." Petitioner argued this broad construction is consistent with the patent specification and the prosecution history of a related patent. The construction is crucial because it allows the "software control program" running on Slemmer's "forced proxy server" to be mapped to this claimed module.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented a strong argument against discretionary denial by highlighting a prior proceeding, Hospitality Core Servs., LLC v. Nomadix, Inc. (IPR2016-00077).
  • In that case, the Board instituted IPR on claims 1-28 of the ’266 patent based on the exact same obviousness ground over the Slemmer and Vu references. Petitioner emphasized that the Board's prior institution decision confirmed a "reasonable likelihood" of unpatentability on the same arguments and evidence. Although the Hospitality Core proceeding was terminated by the parties before a final written decision, Petitioner argued that the initial finding of merit should compel the Board to grant the instant petition and not deny it.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-28 of Patent 8,266,266 as unpatentable.