PTAB

IPR2019-00404

Expedia Inc v. IBM Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Single Sign-On Brokerage
  • Brief Description: The ’346 patent discloses a method for managing user authentication in a federated computing environment, which includes separate identity providers and service providers. The invention is directed to improving single-sign-on (SSO) operations by enabling the creation of a user account at a service provider during the SSO process if one does not already exist.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barriga-Caceres and Sunada - Claims 3 and 12-14 are obvious over Barriga-Caceres in view of Sunada.

  • Prior Art Relied Upon: Barriga-Caceres (Application # 2003/0163733) and Sunada (Japanese Application Publication No. 2004-302907).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Barriga-Caceres taught a federated SSO system where an Authentication Provider (AP), such as a mobile network operator, authenticates a user to access a third-party Service Provider (SP). This system used both front-channel and back-channel communications to exchange authentication assertions. However, Barriga-Caceres assumed the user already had an account with the SP. Petitioner contended that Sunada addressed this specific gap by disclosing an SSO process where, if a user account does not exist at a web application (the SP), the system automatically creates one. Sunada’s process involved obtaining user attributes from the SSO server and, if necessary, prompting the user for additional information before granting access. Petitioner argued that the steps for account creation in Sunada could be directly inserted into the authentication flow of Barriga-Caceres after the SP receives an authentication assertion but before it grants access.
    • Motivation to Combine: A POSITA would combine Barriga-Caceres and Sunada because both references address the same field of federated SSO. Barriga-Caceres explicitly mentioned that SPs could "experience an increase of potential users" through its SSO system, which inherently creates the problem of how to handle new users without pre-existing accounts. Sunada provided a known, elegant solution to this very problem. Therefore, a POSITA would have been motivated to modify the Barriga-Caceres system with Sunada's known technique for on-the-fly account creation to predictably improve the system and realize the benefit of seamlessly onboarding new users.
    • Expectation of Success: Petitioner asserted a high expectation of success because the combination involved applying a known technique (Sunada’s account creation) to a similar system (Barriga-Caceres’s SSO) to solve a known problem. The process was one of a finite number of predictable solutions (create the account before or during the SSO operation), making it obvious to try the real-time account creation method taught by Sunada.

Ground 2: Obviousness over Barriga-Caceres and Mellmer - Claims 3 and 12-14 are obvious over Barriga-Caceres in view of Mellmer.

  • Prior Art Relied Upon: Barriga-Caceres (Application # 2003/0163733) and Mellmer (Patent 7,680,819).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented a similar argument to Ground 1, but substituted Mellmer for Sunada. Barriga-Caceres again provided the foundational federated SSO system. Petitioner argued that Mellmer, which described an SSO architecture called "DigitalMe," also taught a method for automatically creating a new user account if one does not exist at a partner site. Mellmer disclosed that upon determining a user lacks an account, the partner site generates a new one and then logs the user in. Petitioner proposed inserting the account creation steps shown in Mellmer's Figure 34 into the workflow of Barriga-Caceres.
    • Motivation to Combine: The motivation was parallel to that in Ground 1. A POSITA reviewing Barriga-Caceres would recognize the need to accommodate new users to achieve the stated benefit of user growth for SPs. Mellmer provided another well-understood method for creating user accounts during an SSO process. A POSITA would combine the teachings to improve the Barriga-Caceres system by incorporating Mellmer’s known technique, thereby allowing SPs to seamlessly convert potential new users into registered users.
    • Expectation of Success: The combination of Barriga-Caceres and Mellmer was presented as an obvious application of a known technique to improve a similar device. The integration was straightforward and would have yielded the predictable result of a more robust SSO system capable of handling both existing and new users, giving a POSITA a clear reason to pursue the combination with a high expectation of success.

4. Key Claim Construction Positions

  • Petitioner noted that the PTAB, in prior IPRs involving the ’346 patent, had construed key terms.
  • "federated computing environment": Construed as "an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation." Petitioner argued its grounds were valid under this construction as well as under the Patent Owner's proposed construction on appeal.
  • Petitioner stated that no other claim terms required construction beyond their plain and ordinary meaning.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 3 and 12-14 of the ’346 patent as unpatentable under 35 U.S.C. §103.