Absolute Software Corp v. Softex LLC

1. Case Identification

• Case #: IPR2024-00288
• Patent #: 8,506,649
• Filed: December 11, 2023
• Petitioner(s): Absolute Software Corp. and Absolute Software, Inc.
• Patent Owner(s): Softex LLC
• Challenged Claims: 1, 7, 9, and 15

2. Patent Overview

• Title: Electronic Device Security and Tracking System and Method
• Brief Description: The ’649 patent describes a security system for electronic devices that includes hardware, software, and firmware components. These components cooperate to track, disable, and otherwise interact with a stolen or lost electronic device.

3. Grounds for Unpatentability

Ground 1: Obviousness over zTrace, Kesler, Isikoff, and Bonnett - Claims 1, 7, 9, and 15 are obvious over zTrace in view of Kesler, Isikoff, and Bonnett.

• Prior Art Relied Upon: zTrace (a collection of archived webpages from 2002-2004), Kesler (Application # 2002/0045437), Isikoff (Patent 5,748,084), and Bonnett (Application # 2003/0051090).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that zTrace, the primary reference, disclosed a commercial security service for recovering stolen laptops. zTrace provided a suite of "invisible" software applications, including "zTrace Gold" for tracking and "zControl" for remote data management. Petitioner asserted zTrace taught most limitations of independent claims 1 and 9, such as registering a device with a server, communicating with the server after a loss is reported, and performing remote actions like data copying. Kesler, whose inventor also founded zTrace, was used to supplement zTrace's disclosures by explicitly teaching the automatic sending of unique identifying information (e.g., a registration number) and periodic communication with a server. Isikoff was introduced to teach remote disabling functionalities, such as interrupting power or erasing a hard drive, upon receiving a command. Bonnett was cited for its teaching of non-volatile memory (e.g., NAND flash) partitioned into an "open partition" (changeable area) for user files and a "hidden partition" (system area) to securely store protected programs, making them inaccessible to the user.
  • Motivation to Combine: A POSITA would combine zTrace with Kesler because Kesler’s inventor created the zTrace service, and the Kesler application explicitly described the underlying technology, providing a natural source for technical details. A POSITA would add Isikoff’s disabling features to zTrace’s security suite to enhance its protective capabilities, a known goal in the art. The combination with Bonnett was motivated by zTrace’s description of its software as "invisible" and "unerasable." Bonnett provided a known method for achieving this by storing the security application in a hidden, non-modifiable system area of non-volatile memory, thereby improving the system's reliability against tampering.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because the combination involved implementing known security features (disabling from Isikoff) and storage methods (hidden partitions from Bonnett) into an existing security framework (zTrace). These were predictable integrations of complementary technologies.

Ground 2: Obviousness over zTrace, Kesler, Isikoff, and Eckardt - Claims 1, 7, 9, and 15 are obvious over zTrace in view of Kesler, Isikoff, and Eckardt.

• Prior Art Relied Upon: zTrace (webpages), Kesler (Application # 2002/0045437), Isikoff (Patent 5,748,084), and Eckardt (Patent 6,542,979).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is substantially similar to Ground 1, with Eckardt replacing Bonnett to teach the non-volatile memory limitations involving a changeable area and a system area. Petitioner argued Eckardt disclosed a hard drive with a "legal" partition (accessible by the user) and an "illegal," hidden partition that is not recognizable by the operating system and cannot be modified post-boot. This hidden partition, which can store programs the user must not modify, satisfied the "system area" limitation. The arguments regarding zTrace, Kesler, and Isikoff from Ground 1 were incorporated by reference.
  • Motivation to Combine: The motivation to combine zTrace with Eckardt was similar to the motivation for Bonnett: to find a known method for implementing the "invisible" software described by zTrace. Petitioner asserted this motivation was particularly strong because Eckardt is an Intel patent, and the zTrace software was specified to run on laptops using an Intel 386 DX processor. A POSITA would have understood that Intel-based components were designed to be complementary and would have looked to an Intel patent for details on partitioning a hard drive in such a system.
  • Expectation of Success: Success was expected because implementing Eckardt’s well-known partitioning scheme into zTrace’s hard drive would predictably achieve the desired goal of concealing the security software from the user without altering the software's core tracking and remote-control functionalities.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §314(a) and §325(d).
• §314(a) (Fintiv/General Plastic): Petitioner addressed a parallel IPR filed by Microsoft (IPR2023-01185), arguing this petition is not a "parallel petition" warranting denial. Petitioner asserted it is a different entity from Microsoft, did not cooperate in filing, challenges fewer claims, and presents different prior art. As the Board had not yet issued an institution decision in the Microsoft IPR, Petitioner argued its petition did not benefit from a "roadmap."
• §325(d) (Advanced Bionics): Petitioner argued that the Examiner materially erred during prosecution. The primary reference, zTrace, and a key secondary reference, Eckardt, were never presented to or considered by the Office. Although Kesler, Isikoff, and Bonnett were cited in an Information Disclosure Statement (IDS), they were not applied in any rejection. Petitioner contended the Examiner failed to appreciate their relevance, particularly after claim amendments introduced new limitations (e.g., "periodically communicating" and storing code in a "system area") that these references directly taught.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 7, 9, and 15 of the ’649 patent as unpatentable.