Gen Digital Inc. v. Kajeet, Inc.

1. Case Identification

• Case #: IPR2022-00001
• Patent #: 8,667,559
• Filed: October 1, 2021
• Petitioner(s): NortonLifeLock Inc.
• Patent Owner(s): Kajeet, Inc.
• Challenged Claims: 1-2, 5-15, 18-21, and 27-29

2. Patent Overview

• Title: Feature Management of a Communication Device
• Brief Description: The ’559 patent relates to the real-time management of user activity on a communication device, such as a mobile phone. The system achieves this through the establishment and enforcement of server-based policies that control the features or functions performed by the device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Putzolu - Claims 1-2, 5-12, and 27-29 are obvious over Putzolu.

• Prior Art Relied Upon: Putzolu (Patent 6,578,076).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Putzolu, which is analogous art, discloses all elements of the challenged claims. Putzolu teaches a policy-based network management system with a "policy server" and multiple "policy clients." The policy client (the ’559 patent’s "computing device") sends a request to use a network resource to the policy server. The server, using policies stored in a database, determines whether to grant access and communicates the decision back to the client. The client then enforces this decision by either allowing or disallowing the request, without storing or accessing the underlying policy itself. This architecture, Petitioner argued, maps directly to the limitations of independent claims 1 and 27, which require the decision to be made at the server based on server-stored policies.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued it would have been obvious to a Person of Ordinary Skill in the Art (POSITA) to apply Putzolu’s well-known client-server architecture for policy management. The motivation was to reduce the workload, complexity, and memory requirements on individual devices by off-loading policy interpretation tasks to a central server.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing Putzolu’s system, as it involved applying known techniques to achieve the predictable result of efficient, centralized policy management.

Ground 2: Obviousness over Putzolu in view of Rothman - Claims 2, 7, and 8 are obvious over Putzolu in view of Rothman.

• Prior Art Relied Upon: Putzolu (Patent 6,578,076) and Rothman (Patent 7,826,835).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Putzolu as the primary reference. Petitioner used Rothman to supply the specific limitation of applying policy control to a "mobile phone" (claim 2). Rothman discloses systems for controlling features on a mobile telephone, such as text messaging, based on a set policy scheme. Rothman teaches incorporating control software onto the mobile device itself to enforce policies. It also discloses managing a plurality of mobile phones under a plan with specific policies, which addresses limitations in claims 7 and 8 concerning plans managed by an administrator for multiple devices.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Putzolu’s server-based architecture with Rothman’s mobile-phone-specific application. Both references relate to policy-based device management and address the same field of endeavor. The motivation was to apply a more efficient, scalable architecture (Putzolu) to a known problem (managing mobile phone features, per Rothman), which was a simple combination of prior art elements to yield a predictable result.
  • Expectation of Success (for §103 grounds): There was a strong expectation of success, as the combination involved applying a known management technique to a known device type without any unique or unpredictable challenges.

Ground 3: Obviousness over Bhat - Claims 13-15 and 18-21 are obvious over Bhat.

• Prior Art Relied Upon: Bhat (Application # 2005/0021978).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bhat, as a single reference, renders obvious claims centered on a different architecture where the computing device caches a policy decision. Bhat discloses a "remote interface" (e.g., a web server) that acts as a policy enforcement point. This interface receives an initial policy decision from a "policy engine" (server), stores (caches) that decision locally, and uses the cached decision to evaluate subsequent user requests without re-contacting the server. Bhat further teaches that the device can receive an "updated policy decision" from the server if the underlying policy changes. This directly maps to the limitations of claim 13, which recites accessing a decision stored on the computing device that was previously received from a server.
  • Key Aspects: This ground is distinct from the others as it targets claims describing a caching model rather than a purely server-dependent model. Petitioner contended that Bhat’s disclosure of a local cache for policy decisions, which can be updated by the server, anticipates the core novelty of this subset of claims.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the phrase "the decision being based on one or more policies that are stored at the server" and its variants (claims 1, 13, 27).
• The proposed construction requires that the decision must "result from the server applying the policy... to the request sent by the computing device." This construction is critical to Petitioner's arguments for Grounds 1 and 2, as it establishes that the policy-making intelligence resides on the server, not the device. Petitioner supported this construction by citing prosecution history where the applicant allegedly distinguished prior art by emphasizing this distributed architecture where "policy decisions are performed at the server level."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) and the Fintiv factors would be inappropriate.
• The core arguments were that the parallel district court litigation was in its very early stages, with minimal investment by the parties and a trial date (August 28, 2023) set for well after the Board’s statutory deadline for a Final Written Decision (FWD). Petitioner also committed to not pursuing the same invalidity grounds in the district court if the IPR is instituted, thereby avoiding duplicative efforts and narrowing issues for trial.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-2, 5-15, 18-21, and 27-29 of Patent 8,667,559 as unpatentable.