PTAB

IPR2020-00763

Early Warning Services LLC v. Grecia William

Key Events

Petition

petition

Title: Digital Cloud Access
Brief Description: The ’308 patent discloses a process for transforming a user access request for cloud-based digital content into a computer-readable authorization object. The process involves an apparatus receiving the request, authenticating a user via a token with a database, establishing an API communication with a separate database apparatus to exchange query data, and creating the authorization object for subsequent access.

Prior Art Relied Upon: Lynch (Patent 7,769,998).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lynch discloses a cross-site authentication system that anticipates every limitation of Claim 1. In Lynch’s system, a user at a "secondary site" (the claimed "apparatus") requests access to protected content at a "primary site" (the "database apparatus"). The secondary site receives the access request, which includes user credentials (the "verification data" or "verification token"), and authenticates them against a database. An API communication is established between the secondary and primary sites to exchange data, including a request for a partial token ("query data"). The primary site returns the partial token, which is stored at the secondary site as a "computer readable authorization object" to grant future access rights without repeated authentication. This process of receiving a request, authenticating a token, using an API to get data, and creating an authorization object was alleged to map directly to the steps of Claim 1.

Prior Art Relied Upon: Grecia (’868 application, Application # 2010/0185868).
Core Argument for this Ground:
- Key Aspects: This ground’s validity depends on a priority claim challenge. Petitioner asserted that the ’308 patent is not entitled to its claimed priority date earlier than January 11, 2013, due to a defective priority chain. Specifically, Petitioner argued that an intermediate application in the chain (’086 application) failed to make the required specific reference to its parent application in an Application Data Sheet (ADS), as mandated by PTO rules. This created a break in the priority chain, making the ’868 application, which was published on July 22, 2010, valid prior art under §102(b).
- Prior Art Mapping: Petitioner contended that because the ’868 application’s specification is substantially identical to the disclosure of the ’308 patent, it necessarily anticipates Claim 1. The petition provided a direct mapping, arguing the ’868 application discloses a "receipt module" that receives a "branding request" (limitation a), operating on a device with a CPU, memory, and database connection (limitation a1). It further discloses authenticating a "membership verification token" (limitations a2, b) and establishing a connection via an API with a web service (limitation c) using credentials (limitations c1, c2) to exchange data (limitation c3) and create a branded metadata object (limitation f).

"cross-referencing action": Petitioner argued this term, used to describe how the authorization object is processed, should be construed as a "lookup." This construction is consistent with the Patent Owner's previous litigation positions and is central to showing how prior art systems check for existing tokens to grant access.
"verification token": Petitioner adopted the construction from a related district court case, defining the term as "data that represents permission to access the cloud digital content." This construction allows user credentials like a username and password, as disclosed in Lynch, to satisfy the claim limitation.
"cloud digital content": Petitioner also adopted the prior court construction of "data capable of being processed by a computer." This broad construction was used to argue that the content being accessed in the prior art systems falls within the scope of the claim.

Petitioner dedicated substantial argument to why the Board should not exercise discretionary denial. It argued against denial under §325(d), asserting that the petition presented new, non-cumulative prior art and grounds. The Lynch reference was never considered during prosecution or in prior IPRs, and the ’868 application was only available as prior art because of the novel priority chain challenge raised for the first time in this petition.
Petitioner also contended that the General Plastic factors strongly favor institution. It argued it is not the same as or "similarly situated" to any prior petitioner, it had no involvement in previous challenges to the ’308 patent, and the filing of the petition was a direct result of the Patent Owner’s recent litigation activity against its indemnitees.

Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’308 patent as unpatentable.