Unified Patents LLC v. Monarch Networking Solutions LLC

1. Case Identification

• Case #: IPR2020-01708
• Patent #: 7,756,507
• Filed: October 1, 2020
• Petitioner(s): Unified Patents LLC
• Patent Owner(s): Monarch Networking Solutions LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Method and Device for Authenticated Access of a Station to Local Data Networks in Particular Radio Data Networks
• Brief Description: The ’507 patent discloses a method for dual-factor authentication. The system grants a station (e.g., a laptop) access to a data network after the user enters a one-time password that was sent via a separate, external network (e.g., a GSM cellular network) to an authenticated device (e.g., a cellphone).

3. Grounds for Unpatentability

Ground 1: Obviousness over Vandergeest - Claims 1-5 are obvious over Vandergeest.

• Prior Art Relied Upon: Vandergeest (Application # 2002/0169988).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vandergeest teaches every limitation of the challenged claims. Vandergeest discloses providing user authentication for access to a system via a primary channel (a data network) by sending a one-time authentication code over a secondary "back channel" (a cellular network) to a user's cellphone. The user then manually transfers this code from the cellphone to their laptop and transmits it over the primary channel for verification. This process directly maps to the ’507 patent’s method of transmitting identification, receiving a password on an external authenticated device (the cellphone on the GSM network), transferring the password to the station (laptop), returning it for comparison, and enabling access if the comparison is positive.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner asserted that Vandergeest is analogous art that teaches the same solution to the same problem. To the extent any elements like a specific "access point" were not explicitly detailed, Petitioner argued it would have been an obvious implementation choice for a person of ordinary skill in the art (POSITA), given that wireless access points for LANs were commonplace at the time.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying Vandergeest's authentication method in a standard wireless LAN environment, as it involved using conventional, well-understood network components for their intended purposes.

Ground 2: Obviousness over Engberg and Stewart - Claims 1-5 are obvious over Engberg in view of Stewart.

• Prior Art Relied Upon: Engberg (WO 01/67219) and Stewart (WO 01/37517).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Engberg teaches a general method for dual-factor authentication where a user requests access to a "secure system" from a workstation. An authentication server sends a "user token" (password) via a text messaging service (SMS) to the user's mobile phone. The user enters this token into the workstation to gain access. While Engberg broadly discloses its applicability to any "secure system," including computer networks, Stewart provides the specific context of a controlled-access IEEE 802.11 WLAN with access points, such as those found in airports and hotels, which control network and Internet access for transient users. The combination of Engberg's authentication method with Stewart's controlled-access WLAN environment allegedly renders the claims obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Engberg and Stewart to improve the security of the common WLAN environments described in Stewart. Engberg expressly addresses the need for stronger authentication than simple passwords for accessing computer networks. Applying Engberg’s out-of-band, dual-factor authentication to Stewart’s public-facing wireless networks was a predictable solution to enhance security for mobile users, a known and desirable goal.
  • Expectation of Success (for §103 grounds): The combination involved applying a known security method (Engberg) to a standard network architecture (Stewart) to achieve the predictable result of a more secure WLAN. This use of prior art elements according to their known functions would yield predictable results with a high expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors.
• Petitioner contended that the parallel district court case was in its infancy, with no trial date set and significant discovery yet to occur, making it unlikely to conclude before a Final Written Decision in the IPR.
• Petitioner further argued that it is not a party to the parallel litigation, the merits of the petition are exceptionally strong in that the prior art addresses the very limitations the patent examiner previously found missing, and denying institution would undermine the AIA's goal of improving patent quality.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of the ’507 patent as unpatentable.