Guest Tek Interactive Entertainment Ltd v. Nomadix Inc

1. Case Identification

• Case #: IPR2019-01191
• Patent #: 8,606,917
• Filed: June 18, 2019
• Petitioner(s): Guest Tek Interactive Entertainment Ltd.
• Patent Owner(s): Nomadix, Inc.
• Challenged Claims: 1 and 11

2. Patent Overview

• Title: Systems and Methods for Providing Content and Services on a Network System
• Brief Description: The ’917 patent discloses systems and methods for managing network access using an access controller. The controller authenticates devices using concepts such as captive portals and whitelists to grant or deny access to resources like the Internet.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 11 are obvious over the ’578 patent in view of the Whyte Publication.

• Prior Art Relied Upon: ’578 (Patent 8,046,578) and Whyte (a 2005 symposium proceeding on DNS-based worm detection).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’578 patent teaches nearly every limitation of the challenged claims. It discloses an access controller that receives a TCP request, determines if a login is required by first checking the source IP address against a "list of logged in users" (functionally equivalent to the claimed "profiles"), and if no match is found, checks the destination address against a "White List." If neither matches, the user is redirected to a login page for authentication. The only element arguably not explicitly disclosed is that the "White List" contains a plurality of destination IP addresses. Petitioner contended the Whyte Publication cures this by expressly teaching a whitelist comprised of legitimate destination IP addresses to bypass security algorithms.
  • Motivation to Combine: A POSITA would combine the teachings because both references address the same problem of controlling network access. A POSITA implementing the ’578 patent’s whitelist system would have been motivated to use an IP address-based list as taught by Whyte, as it is more efficient, convenient, and less costly than a URL-based list which would require an additional DNS conversion step. Using an IP-based whitelist was a known technique to improve network performance.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination required only minor software modifications to the access controller of the ’578 patent to ensure its whitelist used IP addresses, a routine task for a skilled artisan.

Ground 2: Claims 1 and 11 are obvious over the ’578 patent in view of the Whyte Publication and further in view of the ’474 patent.

• Prior Art Relied Upon: ’578 (Patent 8,046,578), Whyte (a 2005 symposium proceeding), and ’474 (Patent 6,463,474).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. If the Board were to find that the "list of logged in users" in the ’578 patent does not meet the "profiles" limitation, Petitioner argued the ’474 patent supplies this teaching. The ’474 patent discloses "authentication caches" that store user-specific information, including source IP address, destination IP address, and other attributes, which function as the claimed "profiles." The remaining elements are taught by the ’578 patent and Whyte as argued in Ground 1.
  • Motivation to Combine: A POSITA would be motivated to integrate the structured user profiles from the ’474 patent into the ’578 system to more efficiently manage per-user information (credentials, permissions, etc.) in a single, convenient location. This follows the well-known practice of using centralized profile storage (e.g., in AAA servers) to avoid redundant data storage and improve system administration, thereby making the system more robust and scalable.

Ground 3: Claims 1 and 11 are obvious over the ’474 patent in view of the NIST Publication.

• Prior Art Relied Upon: ’474 (Patent 6,463,474) and NIST (a 1994 publication on Internet firewalls).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted the ’474 patent teaches most of the claimed elements, including an access controller (firewall router) that receives TCP requests and uses "authentication caches" (profiles) to grant access based on a source IP match. If the source IP is not found in a profile, the user is redirected to a login page. However, the ’474 patent does not teach the subsequent step of checking a destination IP address whitelist for unauthenticated users. The NIST Publication discloses this missing element by teaching a packet-filtering router that uses rules to permit traffic to a plurality of specific destination IP addresses, regardless of the source, without requiring authentication.
  • Motivation to Combine: A POSITA would combine these references to improve the efficiency of the ’474 system. By incorporating the destination-based filtering rules from NIST, a network administrator could allow all users to access certain trusted and secure destinations (e.g., an email server) without requiring authentication for every session. This would reduce network resource usage and was a predictable application of a well-known firewall technique to improve an existing network access control system.

4. Key Claim Construction Positions

• "Profile": Petitioner argued this term should be construed as "a collection of attributes associated with a specific device." This construction is central to Petitioner's argument that the "list of logged in users" disclosed in the ’578 patent, which contains IP addresses and associated user credentials, satisfies the "profiles" limitation of the challenged claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: A central contention of the petition was that the challenged claims are not entitled to any priority date before their October 24, 2012 filing date. Petitioner argued that the parent applications, including the ’060 application, lack written description support for key limitations, such as comparing a source IP address with profiles containing IP addresses and the sequential logic of checking for a destination IP match after a source IP check fails. This argument was critical to establishing the ’578 patent (filed in 2005) as prior art to the ’917 patent.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the ’578 patent was mentioned in the application transmittal letter for the ’917 patent, there was no indication that the examiner ever reviewed or substantively considered its teachings during prosecution. Therefore, Petitioner contended the Board would be considering the reference for the first time on its merits.

7. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1 and 11 of Patent 8,606,917 as unpatentable.