PTAB

IPR2019-00907

PayPal Inc v. IOEngine LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus, Method and System for a Tunneling Client Access Point
  • Brief Description: The ’969 patent describes a portable "tunneling client access point" (TCAP) device, such as a USB drive, that connects to an access terminal (e.g., a laptop). The TCAP enables a user to securely communicate with remote network servers through the terminal, using the terminal's user interface and peripherals while leveraging the TCAP for storage and processing resources.

3. Grounds for Unpatentability

Ground 1: Obviousness over DiGiorgio and Burger - Claims 1-10, 13-16, 19-21, and 24-29 are obvious over DiGiorgio in view of Burger.

  • Prior Art Relied Upon: DiGiorgio (Patent 6,385,729) and Burger (Application # 2002/0099665).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that DiGiorgio disclosed the core claimed system: a portable "secure token" (e.g., a smart card) with a processor and memory that connects to a terminal computer via a reader to communicate with a remote server (an ISP). Burger was argued to disclose a similar portable "pocket vault" system that interfaces with a terminal computer to access network servers. Petitioner contended that the combination of DiGiorgio's base system and Burger's features rendered the claims obvious. For example, DiGiorgio's secure token and Burger's pocket vault were mapped to the claimed "portable device," and their respective computers and servers were mapped to the claimed "terminal" and "communications network node."
    • Motivation to Combine: Petitioner asserted multiple motivations for a Person of Ordinary Skill in the Art (POSITA) to combine the references. A primary motivation was to improve DiGiorgio's system by incorporating the more modern and ubiquitous USB and Bluetooth interfaces taught by Burger, thereby increasing compatibility with a wider range of host computers. Other motivations included adding Burger's clear, visual on-screen prompts for user input (e.g., a PIN) to DiGiorgio's system and using DiGiorgio's industry-standard smartcard with Burger's system, which was expressly designed to be compatible with such cards.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because the interfaces taught by Burger (USB, Bluetooth) and the smartcard technology in DiGiorgio were already proven, industry-standard technologies.

Ground 2: Obviousness over DiGiorgio, Burger, and Shmueli - Claims 17-18 and 22 are obvious over DiGiorgio in view of Burger and further in view of Shmueli.

  • Prior Art Relied Upon: DiGiorgio (Patent 6,385,729), Burger (Application # 2002/0099665), and Shmueli (Application # 2002/0147912).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the DiGiorgio/Burger combination by adding the teachings of Shmueli to address claims requiring program code to be stored on the portable device and subsequently loaded onto or accessed by the terminal. Petitioner argued Shmueli explicitly taught a portable USB device that utilized the Windows autorun "plug-and-play" feature. This feature allowed software stored on the portable device to be automatically executed on or copied to a host terminal upon connection. This teaching was alleged to directly map to the limitations of claims 17, 18, and 22.
    • Motivation to Combine: The motivation to add Shmueli's teachings was to enhance the portability and flexibility of the combined DiGiorgio/Burger device. By implementing Shmueli's plug-and-play functionality, the device could be used on generic terminals that might lack the necessary drivers or APIs, as the required software could be provided directly from the portable device itself.
    • Expectation of Success: A POSITA would have expected success because platform-independent languages like Java (taught by DiGiorgio) were well-proven, and USB autorun capability (taught by Shmueli) was a well-known feature at the time.

Ground 3: Obviousness over DiGiorgio, Burger, and Cannata - Claims 11-12 are obvious over DiGiorgio in view of Burger and further in view of Cannata.

  • Prior Art Relied Upon: DiGiorgio (Patent 6,385,729), Burger (Application # 2002/0099665), and Cannata (Patent 6,917,962).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 11 and 12, which specifically recite the downloading and presentation of a "live data feed." Petitioner asserted that while Burger taught a system for securely accessing various network resources like online banking, Cannata explicitly disclosed a system for accessing an online brokerage platform that displays a live data feed (a stock ticker) on the terminal's display.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to combine Cannata's teachings with the Burger system because accessing a live data feed, such as a stock ticker from a financial service, was precisely the type of secure online application that the portable devices of Burger and DiGiorgio were intended to facilitate. Applying Burger's secure access methods to the live data application of Cannata was presented as a predictable design choice.
    • Expectation of Success: The combination involved applying a known security architecture (Burger) to a known type of online content (Cannata), which would have been a straightforward implementation for a POSITA.

4. Key Claim Construction Positions

  • Petitioner argued that the claim terms "[first/second/third] program code" should not be construed to require separate and distinct blocks of code. Instead, a POSITA would understand these terms as mere shorthand for referring to specific functions. Petitioner contended that a single program code, such as a single executable file or routine, could perform more than one of the recited functions, and this interpretation was critical to mapping the prior art, which did not always delineate functions into mutually exclusive software modules.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial. It distinguished this petition from a concurrently filed IPR by another petitioner (Ingenico), noting that its petition relied on entirely different prior art (USB and smart card art vs. digital camera art) and challenged a different, broader set of claims. Petitioner also noted that the co-pending district court litigation was in its early stages, with a Markman hearing still months away and trial not scheduled for more than a year, suggesting that an IPR would be an efficient resolution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-22 and 24-29 of the ’969 patent as unpatentable.