PTAB

IPR2023-00693

Kahoot ASA v. Rubin Aviel

Log In

1. Case Identification

2. Patent Overview

  • Title: Utilization of multiple devices to secure online transactions
  • Brief Description: The ’376 patent relates to securing communications against malware by using two devices, such as a computer and a smartphone, with differential or application-specific components during a single online session. The disclosed architecture is particularly directed to online games.

3. Grounds for Unpatentability

Ground 1: Obviousness over Zha - Claims 1-4, 9, 13-14, 16, and 23-25 are obvious over Zha.

  • Prior Art Relied Upon: Zha (Patent 9,497,565).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zha discloses the core limitations of the challenged claims. Zha teaches a system where a user can simultaneously log into a single application (e.g., microblog) with the same account from two or more terminals (e.g., a cellphone and a desktop computer). Zha’s server assigns distinct "functional interfaces" to each terminal, sending different data to each. For example, a private message interface is assigned to the cellphone while a game interface is assigned to the desktop. This corresponds to claim 1’s method of identifying and transmitting a "first subset of information" to a first device and a "second subset of information" to a second device from the same application. Petitioner asserted that Zha’s disclosure of sending private (sensitive) messages only to the cellphone while other (non-sensitive) data goes to the desktop satisfies the limitations of dependent claims 3 and 4.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner contended that any minor differences between Zha and the claims would have been obvious modifications to a person of ordinary skill in the art (POSITA). For instance, regarding the "if and only if" limitation of claim 1, Petitioner argued Zha’s server inherently transmits distinct data only after determining both terminals are accessible (i.e., logged in). Alternatively, incorporating a strict login check before data transmission would be an obvious way to reduce network traffic and enhance security.
    • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success in making any such modifications, as they would involve applying standard login processes and network management techniques to Zha’s existing client-server architecture.

Ground 2: Obviousness over Zha and Gumbula - Claims 5 and 15 are obvious over Zha in view of Gumbula.

  • Prior Art Relied Upon: Zha (Patent 9,497,565) and Gumbula (Patent 9,591,083).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on claim 5, which adds the limitations of determining if connectivity between the server and the second device has been disrupted and providing a notification of the disruption. Petitioner argued that while Zha provides the base system, Gumbula explicitly teaches this functionality. Gumbula discloses connection monitoring and recovery for internet-based chat sessions by exchanging "heartbeat messages" between the client and server. If a heartbeat message is not received within a set interval, Gumbula’s system determines a connection is lost and displays a "Lost connection to the server" notification to the user, directly teaching the limitations of claim 5.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Gumbula with Zha to improve the user experience of Zha’s private messaging feature. Lost connections are a known problem in client-server systems, and Gumbula provides a well-understood solution. A POSITA would be motivated to add Gumbula’s robust connection monitoring to Zha’s system to make its private messaging more reliable and less frustrating for the user.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination involves integrating a known technique (heartbeat monitoring) into a standard client-server architecture to solve a predictable problem.

Ground 3: Obviousness over Takahashi - Claims 1-5, 9-10, 12-14, 16-17, and 23-25 are obvious over Takahashi.

  • Prior Art Relied Upon: Takahashi (Application # 2015/0011318).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Takahashi, by itself, discloses all elements of the challenged claims. Takahashi describes a "game control device" (server) for an online game played simultaneously on a "main-terminal" (PC) and a "sub-terminal" (mobile phone). The server sends different data to each device; for example, the main game environment is sent to the PC, while user-specific information (like the number of fish caught) is sent to the mobile phone. This directly maps to claim 1’s limitations of sending distinct data subsets to two devices. Takahashi also explicitly discloses the "if and only if" condition, as its server checks for access from both terminals before transmitting the different data sets.
    • Motivation to Combine (for §103 grounds): This ground is based on a single reference. For any perceived gaps, Petitioner argued a POSITA would be motivated to modify Takahashi using general knowledge. For example, to apply Takahashi’s fishing game system to a poker game (relevant to claims 12 and 17), a POSITA would look to other art showing private card information (sensitive) sent to a mobile device and community cards (non-sensitive) sent to a main display.
    • Expectation of Success (for §103 grounds): A POSITA would expect success in applying Takahashi's framework to other types of games, as Takahashi itself states its system can be used with "[a]ny game that is realized using a main-terminal and a sub-terminal."

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Zha with Tsushima (to supply the "if and only if" limitation), Zha with Stafford (to supply graphical linking indicators), Takahashi with Tsushima, and three-way combinations including Gumbula or Stafford.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its infancy. A scheduling order had been entered and a Markman hearing set, but the case was otherwise stayed, and no trial date was scheduled. Petitioner contended that a Final Written Decision in the inter partes review (IPR) would likely issue before a trial, party and judicial investment was minimal, and there was no overlapping discovery or claim construction.

5. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1-5, 9-10, 12-17, and 23-25 of the ’376 patent as unpatentable.