IBM v. Iancu

CourtCourt of Appeals for the Federal Circuit
DecidedApril 1, 2019
Docket18-1065
StatusUnpublished

This text of IBM v. Iancu (IBM v. Iancu) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
IBM v. Iancu, (Fed. Cir. 2019).

Opinion

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

INTERNATIONAL BUSINESS MACHINES CORPORATION, Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

2018-1065, 2018-1066 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016- 00608, IPR2016-00609. ______________________

Decided: April 1, 2019 ______________________

KARIM ZEDDAM OUSSAYEF, Desmarais LLP, New York, NY, argued for appellant. Also represented by JOHN M. DESMARAIS, KEVIN KENT MCNISH.

MONICA BARNES LATEEF, Office of the Solicitor, United 2 IBM v. IANCU

States Patent and Trademark Office, Alexandria, VA, ar- gued for intervenor. Also represented by THOMAS W. KRAUSE, MOLLY R. SILFEN. ______________________

Before MOORE, TARANTO, and CHEN, Circuit Judges. TARANTO, Circuit Judge. International Business Machines Corporation (IBM) owns U.S. Patent No. 7,631,346, entitled “Method and Sys- tem for a Runtime User Account Creation Operation Within a Single-Sign-On Process in a Federated Compu- ting Environment.” At the behest of several private com- panies (who have settled and are not parties here), the Patent Trial and Appeal Board of the Patent and Trade- mark Office, acting as delegee of the PTO Director, 37 C.F.R. §§ 42.4, 42.108, instituted two related inter partes reviews (IPRs) of various claims of the ’346 patent under 35 U.S.C. §§ 311−319. In IPR2016-00608, the Board found that claims 1, 3, 12, 14, 15, and 18 are unpatentable be- cause they are anticipated by Japanese Publication No. Tokkai 2004-302907A (Sunada). In IPR2016-00609, the Board found that claims 1, 3, 12, 13, 15, and 18 are un- patentable because they are anticipated by U.S. Patent No. 7,680,819 (Mellmer). We have jurisdiction to review the Board’s final written decisions under 35 U.S.C. §§ 141(c), 319 and 28 U.S.C. § 1295(a)(4). We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the “federated computing environment” limitation of all claims at issue, and we remand for further consideration under the correct construction. In the Mellmer IPR decision, the same claim- construction error is present, but it does not affect our re- sult. We reverse the Board’s decision in the Mellmer IPR because we have been pointed to no substantial evidence to support the Board’s finding that Mellmer discloses the sep- arate “single-sign-on” limitation of all claims at issue. IBM v. IANCU 3

I The specification gives the background to the invention described and claimed. It explains that “[e]nterprises” try to give their users the benefit of being able to gain access to multiple applications “without regard to authentication barriers that protect each particular system supporting those applications.” ’346 patent, col. 1, lines 14−24. Users had come to expect reduction of authentication burdens: “A user might assume that once he or she has been authenti- cated by some computer system, the authentication should be valid throughout the user’s working session, or at least for a particular period of time, without regard to the vari- ous computer architecture boundaries that are almost in- visible to the user.” Id., lines 25–33. “Enterprises generally try to fulfill these expectations in the operational characteristics of their deployed systems . . . .” Id., lines 33–35. Among the techniques used to do so are “‘single- sign-on’ (SSO) processes,” which aim to require of a user “only one authentication process during a particular user session.” Id., lines 53–61. The specification explains that user expectations about ease of access are coming to extend beyond the systems within an enterprise to Internet domains of different enter- prises: “users are coming to expect the ability to jump from interacting with an application on one Internet domain to another application on another domain without regard to the authentication barriers that protect each particular do- main.” Id., lines 43–46. “To reduce the costs of user man- agement and to improve interoperability among enterprises, federated computing spaces have been cre- ated.” Id., lines 62–64 (emphasis added). The specification then defines the term “federated” as based on a cooperative relationship among enterprises that falls short of the uni- tary control available within an enterprise: A federation is a loosely coupled affiliation of enter- prises which adhere to certain standards of 4 IBM v. IANCU

interoperability; the federation provides a mecha- nism of trust among those enterprises with respect to certain computational operations for the users within the federation. Id., col. 1, line 64 through col. 2, line 1 (emphasis added). The specification underscores the inter-enterprise nature of being “federated” by stating that “[a]s enterprises move to support federated business interactions, these enter- prises should provide a user experience that reflects the in- creased cooperation between two businesses.” Id., col. 2, lines 9–11 (emphasis added). In particular, “a user may authenticate to one party that acts as an identity provider and then single-sign-on to a federated business partner.” Id., lines 12–14. The specification discusses the special challenges of providing single-sign-on capabilities in a “federated” envi- ronment. Id., lines 19–42. The Background of the Inven- tion section ends by asserting: “it would be advantageous to have methods and systems in which enterprises can pro- vide comprehensive single-sign-on experiences to users in a federated computing environment in a lightweight man- ner that does not require an extensive amount of a priori processing.” Id., lines 44–48. The one-paragraph Summary of the Invention immedi- ately follows. It begins by stating that “[a] method, system, apparatus, and computer program product are presented to support computing systems of different enterprises that interact within a federated computing environment.” Id., lines 53−56. The Summary then describes the contem- plated process of users getting access to multiple federation partners through a “single-sign-on”: “Federated single- sign-on operations can be initiated at the computing sys- tems of federation partners on behalf of a user even though the user has not established a user account at a federation partner prior to the initiation of the single-sign-on opera- tion.” Id., lines 59–60. The Summary refers to “an identity IBM v. IANCU 5

provider” as an example of initiating such a single-sign-on user access to resources of a service provider: “For example, an identity provider can initiate a single-sign-on operation at a service provider while attempting to obtain access to a controlled resource on behalf of a user.” Id., lines 60−63. It then says what happens “[w]hen the service provider rec- ognizes that it does not have a linked user account for the user that allows a single-sign-on operation from the iden- tity provider,” i.e., “the service provider creates a local user account based at least in part on information from the iden- tity provider.” Id., lines 63−67.

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IBM v. Iancu, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ibm-v-iancu-cafc-2019.