PTAB

IPR2019-01337

Apple Inc v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Authentication between Devices over Multiple Networks
  • Brief Description: The ’999 patent describes a method for authenticating two electronic devices by first performing an authentication process over a short-range, physically restrained network. The same authentication information is then re-used to authenticate the devices over a different, alternate network after they are no longer in proximity for communication via the first network.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6-8, 11-14, and 16-17 are obvious over Varadharajan.

  • Prior Art Relied Upon: Varadharajan (Patent 5,887,063).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Varadharajan, which was not considered during prosecution, discloses the core invention of the ’999 patent. Varadharajan teaches a system with a "portable device" and a "host device" that communicate directly (e.g., via an infrared link) when in "close physical proximity" and communicate "remotely" over a network like the Internet when they are not. The devices exchange a security key during the direct communication, and this same key is used to authenticate each other during subsequent remote communications, directly mapping to the challenged claims' two-stage authentication process.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner contended that any minor differences, such as the explicit "link set-up" step, would have been obvious modifications. For instance, a POSITA would have understood that establishing communication over an infrared link inherently requires a link set-up process. Varadharajan’s disclosure of using different link types (direct infrared vs. remote modem) also renders obvious the limitation in claim 17 requiring different link types.
    • Expectation of Success: A POSITA would have had a high expectation of success in implementing Varadharajan's system, as it describes a complete and functional authentication method using known components like processors, infrared transceivers, and modems.

Ground 2: Claims 1-2, 4-5, 7-10, 13-15, and 17 are obvious over Varadharajan in view of BT Core.

  • Prior Art Relied Upon: Varadharajan (Patent 5,887,063) and BT Core (Bluetooth Core Specification Version 1.0B).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Varadharajan as the primary reference, arguing that BT Core supplies teachings for specific implementations recited in dependent claims. Petitioner asserted that BT Core, a well-known technical specification, discloses using Bluetooth as a short-range wireless radio link. This combination teaches limitations such as the short-range link being a "radio link" (claim 5), conforming to a given RF protocol (claim 8), specifically Bluetooth (claim 9), and involving master/slave roles (claim 4). BT Core's pairing process, which uses a PIN to generate a link key, also discloses the "personal identification number" limitation (claims 10 and 15).
    • Motivation to Combine: A POSITA would combine Varadharajan with BT Core by substituting Varadharajan's infrared link with the well-known Bluetooth protocol. The motivation was to achieve predictable benefits, such as non-line-of-sight communication and a greater effective range, which are known advantages of Bluetooth's radio-frequency technology over infrared. This was presented as a simple substitution of one known short-range communication technique for another.
    • Expectation of Success: Success would be expected, as Bluetooth was a standardized and widely adopted protocol for the exact purpose of short-range wireless communication between devices, and combining it with Varadharajan’s authentication logic would yield predictable results.

Ground 3: Claim 13 is obvious in view of Hind.

  • Prior Art Relied Upon: Hind (Patent 6,772,331).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hind, which was considered during prosecution, renders claim 13 obvious because the claim lacks the key limitation that the Applicant previously used to overcome the Examiner's rejection. Hind discloses pairing two electronic devices (e.g., a phone and a headset) by generating and storing a secret "link key," which is then "reused anytime the paired devices wish to communicate securely" in the future. This maps directly to claim 13's limitations of an initial authentication over a first link and a subsequent authentication over a second link using the same information.
    • Key Aspects: The central argument is based on prosecution history. The Applicant overcame rejections over Hind by arguing that Hind failed to teach communication "beyond the short-range wireless link." However, Petitioner asserted that the finally issued claim 13 does not actually recite this "beyond the short-range" limitation. Therefore, the Examiner's reason for allowance was based on a limitation not present in the claim, and Hind's original teachings are sufficient to render the issued claim 13 obvious.

4. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-17 of the ’999 patent as unpatentable under 35 U.S.C. §103.