Google LLC v. Seven Networks LLC

1. Case Identification

• Case #: IPR2018-01094
• Patent #: 9,444,812
• Filed: May 16, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): Seven Networks, LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Authentication and Access to Data Stores
• Brief Description: The ’812 patent relates to methods for authenticating a user to provide a service. The disclosed process involves storing user information, including a phone number for a second device, on a server during an initial event and later using that information to authenticate the user's first device.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 6, and 8-9 are anticipated by Ehlers under 35 U.S.C. § 102(b)

• Prior Art Relied Upon: Ehlers (Application # 2003/0172272).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ehlers discloses every limitation of independent claim 1. Ehlers teaches a two-factor authentication system with two distinct steps: registration and authentication. During registration, Ehlers stores user information (username and mobile phone number) on an authentication server. During authentication, a user on a first device (a computer) requests access to a service. In response, the system generates a time-limited passcode and sends it to the user's second device (a mobile phone) using the stored phone number. The user then enters this passcode on the first device to complete authentication and gain access to the service. Petitioner asserted this process directly maps to the claimed method of storing information including a phone number, querying for additional information (the passcode), and sending communications to provide the service based on the stored and additional information.
  • Key Aspects: This ground asserted that Ehlers’s disclosure of a time-limited passcode meets the claim limitation requiring that the "additional information has a length of time in which the additional information is valid."

Ground 2: Claims 1, 2, 4, 6, 8-11, 13, 15, and 17 are obvious over Ehlers in view of Woodhill

• Prior Art Relied Upon: Ehlers (Application # 2003/0172272) and Woodhill (Application # 2002/0004831).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if Ehlers is found not to disclose the limitation of "querying the user to verify the phone number" (claim 1(f)), the combination with Woodhill renders it obvious. Ehlers provides the foundational two-factor authentication system. Woodhill, which addresses the same technical problem of online user authentication, explicitly teaches querying a user to confirm their phone number before placing an out-of-band call to that number for verification purposes.
  • Motivation to Combine: A POSITA would combine Woodhill's phone number verification step with Ehlers's authentication process to improve security. Verifying the phone number before sending a sensitive, time-limited passcode ensures the passcode is sent to the correct user and not to a mistyped or outdated number. This was a known technique to solve a known problem of ensuring communications are sent to the intended recipient.
  • Expectation of Success: A POSITA would have a high expectation of success, as incorporating a simple user query to confirm a phone number into Ehlers's existing registration and authentication framework was a straightforward software modification.

Ground 3: Claims 3 and 12 are obvious over Ehlers in view of Lee

• Prior Art Relied Upon: Ehlers (Application # 2003/0172272) and Lee (WO 01/41477).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims 3 and 12, which require storing the user's information "according to an assigned identifier." Petitioner argued that while Ehlers discloses using a username, if this is deemed insufficient, the combination with Lee makes the limitation obvious. Lee discloses an instant messenger system where user information, including a phone number, is received during registration and stored in association with a username.
  • Motivation to Combine: A POSITA implementing Ehlers’s system would combine Lee’s method of associating stored data with a user identifier (username) for well-known data management benefits. Using a unique identifier as an index to access related user data (like a phone number) was a standard, efficient, and well-established practice in the field for organizing user databases. This would enable convenient management and retrieval of user information.
  • Expectation of Success: Success was predictable, as this combination involved applying a conventional data storage technique (indexing by username) to the known authentication system of Ehlers to achieve the predictable result of more organized data management.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Ehlers with Gregg (Application # 2003/0046589) for pre-filling user information, and Ehlers with Harrison (Patent 5,796,727) for providing the service as a "wireless service." Further grounds combined Ehlers with Woodhill and either Lee, Gregg, or Harrison.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’812 patent as unpatentable.