IBM v. Iancu
United States Court of Appeals for the Federal Circuit
April 1, 2019, Decided
[*1003] Taranto, Circuit Judge.
International Business Machines Corporation (IBM) owns U.S. Patent No. 7,631,346, entitled "Method and System for a Runtime User Account Creation Operation Within a Single-Sign-On Process in a Federated Computing Environment." At the behest of several private companies (who have settled and are not parties here), the Patent Trial and Appeal Board of the Patent and Trademark 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 because they are anticipated by Japanese Publication [**2] No. Tokkai 2004-302907A (Sunada). In IPR2016-00609, the Board found that claims 1, 3, 12, 13, 15, and 18 are unpatentable 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 [*1004] 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 result. 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 separate "single-sign-on" limitation of all claims at issue.
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 [**3] burdens: "A user might assume that once he or she has been authenticated 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 various computer architecture boundaries that are almost invisible 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.Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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759 Fed. Appx. 1002 *; 2019 U.S. App. LEXIS 9450 **
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
Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.
Subsequent History: As Amended April 3, 2019.
Prior History: [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-00608, IPR2016-00609.
Disposition: VACATED AND REMANDED in No. 18-1065 REVERSED in No. 18-1066.
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Patent Law, Infringement Actions, Claim Interpretation, Jurisdiction & Review, Standards of Review, De Novo Review, Anticipation & Novelty, Fact & Law Issues, Substantial Evidence