Google LLC v. Defenders Of American Dream LLC

1. Case Identification

• Case #: IPR2022-00112
• Patent #: 8,621,578
• Filed: October 27, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): Defenders of the American Dream, LLC.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Image-Based Access Control and Knowledge Acquisition System
• Brief Description: The ’578 patent discloses methods for authenticating users and distinguishing humans from computers using an image-based CAPTCHA ("Completely Automated Public Turing Test to Tell Computers and Humans Apart"). The system presents a matrix of images and requires a user to identify images belonging to a specific category. A key feature, added during prosecution to overcome prior art rejections, is the inclusion of at least one image "known to belong," one "known to not belong," and one "suspected to belong" to the category, enabling the system to perform knowledge acquisition by learning from the user's selections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Silva in view of Osborn - Claims 1-17 are obvious over Silva in view of Osborn.

• Prior Art Relied Upon: Silva (a 2007 conference paper titled "KA-CAPTCHA: An Opportunity for Knowledge Acquisition on the Web") and Osborn (Application # 2007/0277224).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Silva taught the core inventive concept of the ’578 patent: a knowledge-acquisition CAPTCHA (KA-CAPTCHA) that uses an image grid. Silva’s system presents images whose relation to a label is known, known not to relate, or "yet to be further verified by users," directly corresponding to the ’578 patent’s "known," "known not," and "suspected" image limitations. Petitioner contended that Osborn, which discloses an identity authentication system using an image grid with overlaid, randomly generated alphanumeric access codes, supplies the remaining limitations. Specifically, Osborn teaches associating each image with a unique code that the user must enter to make a selection.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Osborn's access code feature with Silva's KA-CAPTCHA to enhance security. Silva’s system is vulnerable to brute-force automated attacks. A POSITA would have recognized that incorporating Osborn’s overlaid alphanumeric codes would significantly increase the complexity for a computer to guess the correct input, making Silva’s system more robust against the very automated attacks it was designed to prevent.
  • Expectation of Success: The combination involved applying a known security-enhancement technique (overlaid codes) to a known security system (image CAPTCHA) to achieve a predictable improvement in security. A POSITA would have had a reasonable expectation of success.

Ground 2: Obviousness over Osborn in view of Silva - Claims 1-17 are obvious over Osborn in view of Silva.

• Prior Art Relied Upon: Osborn (Application # 2007/0277224) and Silva (a 2007 conference paper).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative motivation, starting with Osborn as the primary reference. Petitioner argued that Osborn disclosed nearly all limitations of the challenged claims, including a method for generating a dynamic grid of images for an authentication test. The limitations that the patent examiner found missing from Osborn during prosecution—specifically, the inclusion of an image "suspected to belong" to a category for knowledge acquisition—are expressly taught by Silva.
  • Motivation to Combine: Petitioner argued a POSITA implementing Osborn’s image-grid authentication test would be motivated to incorporate Silva’s knowledge-acquisition techniques. Silva explicitly teaches that its method can be unobtrusively added to an access-control test to acquire valuable image-categorization data without altering the test's primary security function. A POSITA would see the benefit of modifying Osborn’s similar test to gain this secondary knowledge-acquisition capability, which was valuable for applications like improving search engines.
  • Expectation of Success: A POSITA would expect success in integrating Silva's well-defined knowledge-acquisition feature into Osborn's analogous image-grid system, as both operate on the same principles of human-based image recognition.

• Additional Grounds: Petitioner asserted additional obviousness challenges against various claims based on combinations including Pinkas (Application # 2004/0059951). Pinkas was cited for its teachings on making username/password systems more secure by adding a Reverse Turing Test (like a CAPTCHA) and for using cookies to identify trusted user devices.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be inappropriate. The ’578 patent had not been previously challenged before the Patent Trial and Appeal Board, and all related district court cases were dismissed without trial, negating any basis for denial under Fintiv.
• Regarding §325(d), Petitioner acknowledged that Osborn was considered during the original prosecution. However, Petitioner contended that the examiner made a material error by not having the benefit of Silva. The petition’s grounds rely on Silva to supply the very limitations—related to "suspected" images and knowledge acquisition—that the examiner found missing from Osborn and upon which allowance was based. Therefore, the asserted grounds present art and arguments that are not substantially the same as those previously considered by the Office.

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-17 of Patent 8,621,578 as unpatentable under 35 U.S.C. §103.