IBM v. Iancu (Fed. Cir. 2019) (non-precedential)
In two separate IPR proceedings, the PTAB found several of IBM’s claims unpatentable as anticipated
obvious. U.S. Patent No. 7,631,346 claims 1, 3, 12, 13, 15, and 18. On appeal, the Federal Circuit has vacated / reversed those opinions. [error fixed above]
The patent here claims a user-authentication method for a “single-sign-on . . . within a federated computing environment.” The basic setup here is that user known to a “first system” wants access to resources on a “second system” that doesn’t know about the user. The invention works by the first system providing an “identifier” associated with the user and the second system creating a user account using that identifier — not too complex here. A “single-sign-on” is basically a setup for user convenience so that the user only logs-in on one system but can access the whole federation.
A federation is a loosely coupled affiliation of enterprises which adhere to certain standards of interoperability; the federation provides a mechanism of trust among those enterprises with respect to certain computational operations for the users within the federation.
In the appeal here, the patentee argues that the Board too-broadly defined the terms “federated computing environment.” Of some interest here, both IBM and the IPR petitioners (Priceline, OpenTable, etc.) agreed upon the term’s definition and that it was limiting even though it appeared only in the claim preamble. The PTAB disagreed with the parties — and in particular held that the term “federation . . . is not limited to enterprises” but could instead more generally includes a group of “entities.” Under the Board’s interpretation, any two computer systems could be seen as “entities” even if both are within a single “enterprise.” That broader scope is important because the closest prior art authentication system involved two computers within a single enterprise.
On appeal, the Federal Circuit found the PTAB’s construction unreasonable – given the plain definition in the specification. On remand, the PTAB will consider whether the prior art still anticipates the invention based upon this narrower construction.
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I considerably simplified the facts above. It turns out that the patent specification was not as consistent in stating that a “federation” required computers from at least two different “enterprises.” In particular, the specification states that:
In the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user. . . . The terms ‘entity’ or ‘party’ generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.
Notice that this definition of federation is not limited to enterprises, but instead is tied to the broader category of “entities,” and entities include “systems” — i.e., computers. Thus, the Board found that a federation can be created by two computer systems even if operating within the same business enterprise.
In the appeal, the Federal Circuit rejected this approach holding here that the “such as” language limits was intended as an exclusive listing of what counts as federation elements.
The column 10 passage refers to entities “such as” the ones listed and includes “etc.”—both of which, in this context, indicate that only things of a type similar to the itemized ones are covered, namely, other establishments or ventures or firms or the like. We have recognized that “such as” and “etc.” sometimes have just that meaning. (“rule of ejusdem generis). That understanding is the only reasonable one for the passage, given the plain meaning of the definitional and other language we have already discussed.
It is hard for me to say what the take-away is for patent drafters on this claim construction except – who knows what the court will decide?
I’ll note here that the IPR petitioners settled the case with IBM but the USPTO stepped in to defend the PTAB sua sponte claim construction decision.
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Does Silence Disclose a Negative Limitation: The panel also addressed the single-sign-on element of the claims — the single-sign-on requirement is interesting because it may sound like a positive limitation but is really being interpreted as a negative limitation. Basically, once the user gives credentials for the first system, the user doesn’t need more authentication (i.e. passwords) to access the second system. In the appeal, the Federal Circuit found that the silence on a topic was not sufficient to disclose the absence of a feature:
Even if the Board were correct that Mellmer is “silent” … that characterization would not alone support a finding that there was no user authentication action…. Silence in that sense would not by itself suffice for the Petitioner to meet its burden to prove, by a preponderance of the evidence, that there was no user authentication action in this scenario.
In other words – a negative limitation can be powerful. On appeal, the Federal Circuit has reversed the holdings based upon single-sign-on being found in this reference.