SEVEN Networks, LLC

Patent Trials and Appeals Board

Sep 1, 2020

IPR2020-00507 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: September 1, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

SEVEN NETWORKS, LLC,
Patent Owner.
____________

IPR2020-00507
Patent 10,243,962 B1
____________

Before THU A. DANG, KARL D. EASTHOM, and
JONI Y. CHANG, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
an inter partes review of claims 1–44 (the “challenged claims”) of U.S.
Patent No. 10,243,962 B1 (Ex. 1001, “the ’962 patent”). Petitioner filed a
Declaration of Craig E. Wills, Ph.D. (Ex. 1003) with its Petition. SEVEN
Networks, LLC (“Patent Owner”) filed a Preliminary Response (Paper 7,
“Prelim. Resp.”).
The Board’s authority to determine whether to institute an inter partes
review stems from 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). Under 35
U.S.C. § 314(a), the Board can not authorize an inter partes review unless
the information in the Petition and the Preliminary Response “shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” For the reasons that
follow, we deny institution of an inter partes review as to the challenged
claims of the ’962 patent on the grounds of unpatentability presented in the
Petition.
I. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 66.
Patent Owner identifies SEVEN Networks, LLC, and CF SVN LLC as the
real parties-in-interest. Paper 4, 1.
B. Related Proceedings
The parties identify SEVEN Networks, LLC v. Apple Inc., No.
2:19-cv-00115 (E.D. Tex.) as a related matter involving the ’962 patent. Pet.
66; Paper 4, 1.
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C. The ’962 patent
The ’962 patent is titled “Multiple Data Store Authentication.” Ex.
1001, code (54). The ’962 patent describes “[s]ystems and methods for
authentication access to multiple data stores substantially in real time.” Id.
code (57). A “server may authenticate access to the data stores and forward
information from those stores to the client device.” Id.
Figure 1 illustrates an “exemplary environment 100 for providing
simplified provisioning, including authentication of data store access.” Id. at
6:11–13.

As shown in Figure 1, “[a] client communicates with a server 130 via a
network 120,” where “client 110 may be a data-enabled device that can, for
example, send and receive electronic-mail, receive and send short message
service (SMS) messages, access the Internet and so forth.” Id. at 6:14–21.
Provisioning module 140, coupled to server 130, provides “provisioning
event related services, which may include various forms of authentication.”
Id. at 6:46–48. Server 130 may have access one or more storage mediums
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150, which “may include internal mail servers at an enterprise or that may be
offered by any variety of service providers,” “databases for storage of
contact and Personal Information Management (PIM) data as well as
calendar, notes, and task data,” or “data stores for documents (e.g., file
servers).” Id. at 6:59–7:7.
In an embodiment, client 110 may contact server 130 to request
services provided by a service provider associated with server 130. Id. at
7:8–11. “[S]erver 130 requests information about the user at the client 110
or about the client 110 itself before allowing the user to access services (i.e.,
authenticating access to the services and/or data). Id. at 7:13–16. “[S]erver
130 utilizes the provisioning module 140 to provide specified services and
configurations for those services to the user at the client 110,” and
“provisioning module 140 may verify information associated with the client
110 in one embodiment (e.g., authentication).” Id. at 7:66–8:3.
D. Illustrative Claim 1
Of the challenged claims, claims 1 (“[a] server”) and 23 (“[a]
method”) are independent. Claims 1 and 23 recite materially similar
limitations. See Ex. 1001, 19:45–20:10, 21:15–45. Remaining challenged
claims 2–22 and 24–44 depend from claim 1 and claim 23, respectively.

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Claim 1 illustrates the challenged claims at issue:
1. [1.pre] A server, comprising:
[1.1a] a memory and a processor, [1.1b] the server
communicatively coupled to a network and a plurality of
data stores, [1.2] wherein the server is configured to:
send a first identifier to a client device upon
the client device communicating with the server
over a connection;
[1.3] receive registration information from
the client device;
[1.4] send a second identifier to the client
device in response to the received registration
information;
[1.5] configure a service to receive data from
a first data store on behalf of the client device,
wherein the service is based on the second
identifier;
[1.6] receive a communication from the
client device to receive data from the plurality of
data stores, [1.7] wherein the communication
includes the first identifier;
[1.8] receive a first message from the first
data store, wherein the first message is indicative
of new data at the first data store;
[1.9a] transmit a second message to the client
device in response to receipt of the first message
and authentication of the client device, [1.9b]
wherein the second message is transmitted over a
subsequent connection, and [1.9c] wherein the
authentication of the client device is based on the
first identifier, [1.10] wherein the subsequent
connection is an IP connection between the client
device and the server; and
[1.11] receive a keep-alive message from the
client device for maintenance of the subsequent
connection, [1.12] wherein additional information
associated with the first message is sent from the
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first data store to the client device upon receipt of
the second message by the client device.
Id. at 19:45–20:10; see Pet. 17–33 (quoting Ex. 1001, 19:45–20:10
(bracketed information by Petitioner)).
E. The Asserted Grounds
Petitioner challenges claims 1–44 of the ’962 patent on the following
grounds (Pet. 6):
Claims Challenged 35 U.S.C. § References
1–8, 10–30, 32–44 103 Yared1, Wills2, Dunk3
9, 31 103 Yared, Wills, Dunk, Cook4

II. ANALYSIS
Petitioner challenges claims 1–44 as obvious based on the grounds
listed above. Patent Owner disagrees.
A. Legal Standards
35 U.S.C. § 103(a) renders a claim unpatentable if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Tribunals resolve obviousness on the basis of underlying factual

1 Yared et al., US 2003/0149781 A1, published Aug. 7, 2003 (Ex. 1005).
2 Wills et al., US 2005/0169285 A1, published Aug. 4, 2005 (Ex. 1008).
3 Dunk, US 2005/0188098 A1, published Aug. 25, 2005 (Ex. 1009).
4 Cook et al., US 7,783,281 B1, issued Aug. 24, 2010 (Ex. 1007).
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determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Prior art references must be “considered together with the knowledge of one
of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
B. Level of Ordinary Skill in the Art
Dr. Wills testifies that a person having ordinary skill in the art
(“POSITA”) “would have had a bachelor’s degree in electrical engineering,
computer engineering, computer science, or the equivalent and 2-3 years of
work experience with computer networks, or the equivalent.” Ex. 1003 ¶ 14.
Patent Owner does not present a proposed level of ordinary skill. For
purposes of this Decision, we adopt Petitioner’s proposed level of ordinary
skill in the art, which comports with the teachings of the ’962 patent and the
asserted prior art.
C. Claim Construction
In an inter partes review, we construe each claim “in accordance with
the ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district
courts, claim terms take their plain and ordinary meaning as would have
been understood by a person of ordinary skill in the art at the time of the
invention and in the context of the entire patent disclosure. Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
exceptions to this general rule: 1) when a patentee sets out a definition and
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acts as his own lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during prosecution.”
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012).
Based on the current record, no terms require explicit construction.
See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
in controversy, and only to the extent necessary to resolve the
controversy’. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999))).
D. Obviousness, Yared, Wills, and Dunk
Petitioner contends the subject matter of claims 1–8, 10–30, and 32–
44 would have been obvious over the combination of Yared, Wills, and
Dunk. Pet. 8–59. Patent Owner disputes Petitioner’s contentions. Prelim.
Resp. 9–40.
1. Yared
Yared, titled “Distributed Network Identity,” describes a “single sign-
on architecture . . . where an identity provider is used to facilitate cross-
domain authentication” among various service providers and “to enhance
user convenience.” Ex. 1005, codes (54), (57). Yared’s system links
identity providers and service providers “to enable information sharing and
aggregation” and provides “[u]ser policies and privacy preferences . . . to
control how information is shared.” Id.
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Yared’s Figure 1 follows, and illustrates a distributed identity system:

Yared’s Figure 1 shows identity providers 105 and 110, service providers
115, 120, and user 125, all connected via network 130. Id. ¶ 42. To
facilitate authentication, Yared’s system employs “cookies” and other data.
“The cookie is a mechanism of storing information on an Internet browser
that can be presented in websites. An identity provider can write a cookie
[to a user] that a service provider is able to recognize and thereby
authenticate the user.” Id. ¶ 52.
Yared’s system also employs HTTP “redirection” as part of its
authentication and access scheme:
Redirection causes a browser to access a different resource
identified by a uniform resource identifier (URI) or uniform
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resource locator (URL). A uniform resource identifier (URI) is
a string of characters used for identifying an abstract or physical
resource. A URI or URL can contain additional information,
such as a query parameter, to send to the destination website. In
an embodiment, an identity provider embeds a secure credential
as an HTTP parameter for a service provider. A credential is data
that is transferred or presented to establish either a claimed
identity or the authorizations of a system entity. Credentials
generally include the data necessary to prove an assertion. By
embedding a credential, an identity provider can communicate
the necessary authentication information to a service provider.
Therefore, HTTP redirect enables a single sign-on framework
within the existing HTTP infrastructure.
Id. ¶ 54.
By way of a redirect example, Yared’s system “embed[s]” the
following “[p]arameter[s] within a [r]edirect”:
“http://www.foobar.com/auth . . . [r]edirects to foobar.com”; and
“http://www.foobar.com/auth?id=1234 . . . [r]edirects to
foobar.com and also passes an HTTP parameter ‘ID’ with the
value ‘1234.’” Id.
2. Wills
Wills, titled “Stateful Push Notifications,” describes methods for
forming and processing push notifications and client state information for a
client device. See Ex. 1008, codes (54), (57). Wills further describes
“embedding validation metadata and intelligent filtering metadata with the
client state information.” Id. ¶ 12.
3. Dunk
Dunk, titled “System and Method for Maintaining a Network
Connection,” describes a system that maintains a persistent connection
between a client and a web server via a physical link that “includes at least
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one network address translation (‘NAT’) router . . . configured to terminate
idle connections.” Ex. 1009, codes (54), (57). Dunk’s client “send[s] keep-
alive packets to the web-server in order to reduce the likelihood of the NAT
router terminating the connection.” Id. at code (57).
4. Claims 1–8, 10–30, and 32–44
Petitioner contends that Yared teaches “‘a server can host . . . [the]
identity provider’” and the identity provider can include various computing
devices, including ‘enterprise servers’ as well as ‘application servers.’” Pet.
17 (quoting Ex. 1005 ¶¶ 43, 45) (citing Ex. 1003 ¶ 27) (emphases by
Petitioner).
Regarding “[1.1a] a memory and processor,” Petitioner contends that
Yared teaches “the identity provider [server] ‘can be implemented by
program instructions that execute in an appropriate computing device.’”
Id. at 18 (quoting Ex. 1005 ¶ 43) (emphasis by Petitioner). Petitioner relies
on Yared’s disclosure of a number of examples of computing devices that
could be used as the identity provider and contends that “[a] POSITA would
have understood these ‘computing devices’ to include a memory (e.g., a hard
drive or random access memory (RAM)) and a processor (e.g., a general
purpose central processing unit (CPU) or an application specific integrated
circuit (ASIC)).” Id. at 18–19 (citing Ex. 1003 ¶ 30; Ex. 1005 ¶ 43; Ex.
1008 ¶¶ 4, 57, Fig. 7).
Regarding “[1.1b] the server communicatively coupled to a network
and a plurality of data stores,” Petitioner contends that Yared teaches “an
identity provider (server) and service providers (data stores) ‘can be linked
to enable information sharing and aggregation.’” Id. at 19 (quoting Ex.
1005, Abstract) (citing Ex. 1003 ¶¶ 31–33).
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Regarding “[1.2] wherein the server is configured to: send a first
identifier to a client device upon the client device communicating with the
server over a connection,” Petitioner contends that Yared teaches a “‘user
125’ (client device) is coupled to the ‘network 130,’ along with the identity
provider 105 (server) and the service providers 115 and 120 (data stores).”
Id. at 22 (quoting Ex. 1005 ¶42). Petitioner further contends that Yared
teaches “the ‘user 125’ (client device) can authenticate with and ‘obtain an
assertion from identity provider A 105’ (server), such as a ‘session cookie’
(first identifier).” Id. at 23 (quoting Ex. 1005 ¶¶ 46, 66) (citing Ex. 1003
¶ 35) (emphases by Petitioner). Moreover, Petitioner contends, “Yared
teaches that the identity provider can ‘write[] a session cookie the first time
a user logs in’ (e.g., by utilizing functionality in a browser executed by user
125) in order to store session information for subsequent authentication.” Id.
(quoting Ex. 1005 ¶ 66) (citing Ex. 1003 ¶ 35) (emphasis by Petitioner).
Regarding “wherein the server is configured to . . . [1.3] receive
registration information from the client device,” Petitioner contends that
Yared teaches “a user can log into the identity provider and ‘update’ their
account by entering information into editable fields.” Id. at 24 (citing Ex.
1005 ¶ 87). In particular, Petitioner contends that “user information that is
sent to the identity provider and made available to the service providers is
registration information. Id. at 25–26 (citing Ex. 1003 ¶ 37).
Regarding “wherein the server is configured to . . . [1.4] send a second
identifier to the client device in response to the received registration
information,” Petitioner contends that “[a]n example of the claimed second
identifier is the secure credential embedded in the HTTP redirect URL by
the identity provider and sent to the client device.” Id. at 26 (citing Ex. 1003
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¶ 41; Ex. 1005 ¶ 54). Petitioner explains that in Yared “a ‘user that desires
identity authentication with service provider 310’ (data store) can ‘go[] to
service provider 310 and select[] an identity provider,’” and “[o]nce identity
provider 305 authenticates the user, the identity provider 305 ‘redirects the
user’s browser back to service provider 310 passing a transient, encrypted
authenticated credential 335 embedded within the URI.’” Id. (quoting Ex.
1005 ¶ 65) (emphasis by Petitioner). Petitioner contends “the embedded
credential is associated with the user’s account information (registration
information) because the identity provider generates the embedded
credential after authenticating the user . . . and receiving the user’s account
information.” Id. at 27 (citing Ex. 1003 ¶ 44; Ex. 1005 ¶ 65).
Petitioner provides an “exemplary process exemplary process flow
illustrating the above-described redirect process, as prepared by Dr. Wills
based on Yared’s disclosure,” as reproduced here (Pet. 27–28):
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Id. at 28 (citing Ex. 1005 ¶¶ 46, 52, 54, 65, 66; Ex. 1003 ¶¶ 42, 44). The
process flow diagram above shows a user/client device receiving an
embedded secure second credential (second identifier) so that the user/client
device can send the embedded credential to a data store. See Ex. 1005 ¶¶ 46,
52, 54, 65, 66; Ex. 1003 ¶¶ 42–44.

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Patent Owner contends that Yared does not teach “wherein the server
is configured to . . . [1.4] send a second identifier to the client device in
response to the received registration information.” See Prelim. Resp. 31
(emphasis by Patent Owner). According to Patent Owner, “[e]ven if Yared
did teach its embedded credential being sent to the user, the Petition fails to
even argue, let alone prove, that Yared does so ‘in response to the received
registration information.’” Id. at 31. Quoting Petitioner, Patent Owner
contends that “the only thing the Petition says about Yared’s user account
information in this limitation is that ‘the embedded credential is associated
with the user’s account information (registration information) because the
identity provider generates the embedded credential after authenticating the
user . . . and receiving the user’s account information.’” Id. at 33–34
(quoting Pet. 27) (emphasis by Patent Owner).
Patent Owner raises a valid point. Petitioner only alleges “the
embedded credential is associated with the user’s account information” (Pet.
27) and fails to explain how merely associating the embedded credential
with the user’s account information addresses how the second identifier is
sent “in response to the received registration information” as limitation [1.4]
requires. See Pet. 27–28 (citing Ex. 1005 ¶ 65; Ex. 1003 ¶ 44).
In turn, at the cited paragraph, Dr. Wills testifies that “the redirect
message from the identity provider to the service provider, as illustrated
above, would automatically include the registration information associated
with the particular user so that the service provider will have the necessary
account information of the user in performing the requested service.” Ex.
1003 ¶ 44. Although Petitioner cites to this testimony, the Petition does not
advance Dr. Wills’ theory that underlies the testimony. See Pet. 27 (citing
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1003 ¶ 44). Even if we deem the Petition to properly incorporate Dr. Wills’
theory that “the redirect message from the identity provider . . . would
automatically include the registration information,” the record does not
support the theory, as Patent Owner argues. See Prelim. Resp. 33–34.5 Dr.
Wills’ testimony cites to Yared’s paragraph 87 for support (Ex. 1003 ¶ 44),
but that paragraph neither mentions Yared’s redirect procedures nor
otherwise suggests that the redirect message includes the registration relied-
upon information. See Ex. 1005 ¶ 87. Also, Dr. Wills’ testimony does not
explain sufficiently how something that Yared’s identity provider (server)
renders “automatically available to service providers” (see id.) means that
the identity provider transmits that information in Yared’s redirect message
or why this transmission would have been obvious.
Petitioner relies on the same showing to address independent claim
23, which contains in material respects the same limitations as claim 1. See
Pet. 54. Claims 2–8, 10–22, 24–30, and 32–44 depend from claim 1 or
claim 23. Accordingly, based on the foregoing discussion, the Petition fails
to show a reasonable likelihood of prevailing as to claims 1–8, 10–30, and
32–44.
E. Obviousness, Yared, Wills, Dunk, and Cook
Petitioner contends claims 9 and 31 would have been obvious over the
combination of Yared, Wills, Dunk, and Cook. Pet. 59–63. Claims 9 and 31
depend respectively from claims 1 and 23. Petitioner relies on the same

5 Patent Owner also contends that considering the testimony as part of the
Petition constitutes an improper incorporation by reference. Prelim. Resp.
33 (citing 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by
reference from one document into another document.”)).
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showing addressed above to reach the above-discussed limitations of claims
1 and 23. See id.
Accordingly, based on the foregoing discussion, the Petition fails to
show a reasonable likelihood of prevailing as to claims 9 and 31.
III. CONCLUSION
After considering the evidence and arguments presented in the
Petition and the Preliminary Response, we determine that Petitioner has not
demonstrated a reasonable likelihood that it would prevail with respect to its
unpatentability challenges. Accordingly, we deny the request to institute an
inter partes review of the challenged claims on the grounds in the Petition.
IV. ORDER
Accordingly, it is
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied as to claims 1–44 of the ’962
patent; and
FURTHER ORDERED that no inter partes review is instituted.

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PETITIONER:

Walter Renner
axf-ptab@fr.com
Stuart Nelson
snelson@fr.com
Dan Smith
dsmith@fr.com
Hyun Jin In
in@fr.com

PATENT OWNER:

Kenneth Weatherwax
weatherwax@lowensteinweatherwax.com
Bridget Smith
smith@lowensteinweatherwax.com
Patrick Maloney
maloney@lowensteinweatherwax.com
Flavio Rose
rose@lowensteinweatherwax.com
Parham Hendifar
hendifar@lowensteinweatherwax.com
Edward Hsieh
hsieh@lowensteinweatherwax.com
Jason Linger
linger@lowensteinweatherwax.com