Dell Technologies Inc v. Softex LLC

1. Case Identification

• Case #: IPR2024-00564
• Patent #: 8,506,649
• Filed: February 15, 2024
• Petitioner(s): Dell Inc. and Dell Technologies Inc.
• Patent Owner(s): Softex, LLC
• Challenged Claims: 1-25

2. Patent Overview

• Title: Electronic Device Security and Tracking System and Method
• Brief Description: The ’649 patent discloses a system for securing and tracking a lost or stolen electronic device. A security application on the device periodically communicates with a server to check its status and can perform responsive actions, such as disabling the device or backing up data, if it is reported stolen.

3. Grounds for Unpatentability

Ground 1A: Anticipation and/or Obviousness over Andrews - Claims 1-5, 7-13, 15-21, and 23-25 are anticipated and/or obvious over Andrews.

• Prior Art Relied Upon: Andrews (WO 2001084455).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Andrews, which discloses security software for portable devices susceptible to loss or theft, teaches all limitations of the challenged claims. Andrews described a client device with security software that registers with a host computer (server), periodically checks in to receive a device status (e.g., "NORMAL," "STOLEN"), and performs responsive actions based on that status. These actions included restricting user access ("LOCK-UP DEVICE"), copying user data to the server ("RETRIEVE FILE"), deleting data ("DELETE FILE"), and restoring data ("DOWNLOAD FILE"). Petitioner contended that Andrews’s disclosure of storing its client software in ROM (Read-Only Memory) meets the limitation of a non-modifiable "system area."
  • Key Aspects: This ground asserted that Andrews alone discloses every element of the independent claims, including the core functionality and the memory structure requirements.

Ground 1B: Obviousness over Andrews and Bonnett - Claims 1-5, 7-13, 15-21, and 23-25 are obvious over Andrews in view of Bonnett.

• Prior Art Relied Upon: Andrews (WO 2001084455) and Bonnett (Application # 2003/0051090).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on Andrews for the primary system features, as in Ground 1A. Petitioner asserted that Bonnett was added to address the "system area" limitation, arguing it explicitly teaches techniques for securely storing a program in a "hidden partition" of memory that is inaccessible and unchangeable by a user. The combination would involve implementing Andrews’s security software within the hidden partition taught by Bonnett, thereby creating a non-modifiable "system area" for the security application, while maintaining an "open partition" for user data, as also taught by Bonnett.
  • Motivation to Combine: A POSITA would combine Andrews and Bonnett to improve the security of the system. Bonnett’s teaching of a hidden, user-inaccessible partition directly addresses the goal of preventing a thief from deleting or corrupting the security software disclosed in Andrews. Petitioner argued this combination furthers Andrews’s own teaching that its software should operate "surreptitiously" and resist user tampering.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Andrews teaches that its software can be installed in various memory types (ROM, flash, hard drive), and Bonnett teaches creating a hidden partition in such memory. The process of partitioning memory and programming software into it was argued to be a routine task.

Ground 1C: Obviousness over Andrews and Cotichini - Claims 1-5, 7-13, 15-21, and 23-25 are obvious over Andrews in view of Cotichini.

• Prior Art Relied Upon: Andrews (WO 2001084455) and Cotichini (WO 1998/043151).

• Core Argument for this Ground:

  • Prior Art Mapping: Similar to the previous ground, this challenge used Andrews for the core system functionality. Cotichini was introduced as another way to render obvious the "system area" limitations. Cotichini discloses a security "agent" that is secretly embedded in a device’s software, firmware (e.g., modem Flash ROM), or hardware to evade detection and resist attempts to disable it. Petitioner argued implementing Andrews’s client software as a Cotichini-style agent (e.g., in modem ROM) would make it reside in a system area that cannot be modified by the user.
  • Motivation to Combine: A POSITA would have been motivated to combine the references to increase the security and robustness of Andrews’s system. Cotichini expressly teaches using its secretive installation techniques to create a "well cloaked" security agent that cannot be readily disabled. This aligns with the goal of making Andrews's anti-theft software more resistant to circumvention by an unauthorized user.
  • Expectation of Success: Petitioner argued a POSITA would have expected success because Cotichini teaches multiple ways to install its agent in conventional computer components (ROM, modem, CPU). A POSITA could readily select one of these well-known techniques to implement Andrews’s software, for instance, by installing it as a "Modem Agent" in the modem ROM already present in Andrews’s device.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1D) for claims 6, 8, 14-16, and 22-25 based on the combination of Andrews, Cotichini, and Hayward (UK Application # GB2369205A). Hayward was introduced to teach using SMS messages for server-device communication and for features related to automatically deleting and restoring user data upon recovery.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), stating that the primary reference (Andrews) was not before the examiner during prosecution, and the secondary references (Bonnett and Cotichini) were only cited in an IDS without substantive discussion. Therefore, the specific combinations and arguments were never considered by the USPTO.
• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, noting that the Board had recently instituted a parallel IPR on the same patent (the "Microsoft IPR") over the Patent Owner's Fintiv arguments. Petitioner contended the factors remain unchanged and weigh against denial, as a trial in the co-pending district court litigation is likely to occur after the Board’s final written decision.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-25 of the ’649 patent as unpatentable.