Holding: Anticipation analysis can consider how a skilled artisan would interpret the teachings of a prior art reference in deciding whether a claim limitation is disclosed.
IBM owns US Patent No. 7,631,346 directed to systems and methods for single sign-on (SSO) applications, which allow a user to sign in to several different accounts using only a single set of login credentials. The ‘346 Patent was challenged in an IPR by Rakuten, and later joined by Zillow. The PTAB found claims 1-4, 12-16, and 18-19 of the ‘346 Patent to be unpatentable in view of JP 2004-302907 to Sunada and other references. Claims 5-9, 11, 17, and 20 were found to be not unpatentable. IBM appealed the PTAB’s finding that some claims of the ‘346 were unpatentable while Zillow cross-appealed as to the claims found to be not unpatentable. The Federal Circuit affirmed the PTAB’s findings.
Claim 1 of the ‘346 Patent recites a method using a first system and second system that support SSO operations to provide access to protected resources. The second system receives from the first system an identifier associated with the user and creates a user account for the user on the second system using at least in part the identifier received from the first system.
In coming to its findings, the PTAB determined that the term “protected resources” as used in claim 1 refers to an object, document, or page identified by a Uniform Resource Locator (URL) or a Uniform Resource Identifier (URI). The PTAB construed the term “an identifier associated with the user” to mean information that uniquely identifies the user.
IBM argued that the PTAB improperly relied on obviousness, even though Rakuten’s petition asserted anticipation by the Sunada reference. Zillow argued the Federal Circuit is not allowed to review this argument based on 35 U.S.C. §314(d), which prohibits review of the PTAB’s institution decision. Although Section 314(d) bars the Federal Circuit from reviewing a challenge closely related to the decision to institute an IPR, it does not prevent the Federal Circuit from considering whether the IPR followed the law. IBM’s argument does not look to undo institution of the IPR, it simply asks whether the PTAB’s final written decision stayed within the boundaries of the IPR petition.
Although IBM’s argument that the PTAB improperly relied on obviousness was reviewable under Section 314(d), the Federal Circuit found it unpersuasive. The PTAB found that Sunada teaches “protected resources” even though Sunada does not explicitly mention URLs or URIs. Instead, Sunada discloses an access-controlled “web application.” However, a person of ordinary skill in the art would know that a “web application” would include a URL or a URI. This finding reflects an anticipation analysis under Section 102, not an obviousness analysis under Section 103. The PTAB never suggested that Sunada had to be modified, as would be required in an obviousness investigation, to disclose the “protected resources” limitation of claim 1.
IBM also appealed the PTAB’s finding that Sunada disclosed “an identifier associated with a user.” Sunada taught a first system that creates a user ID that uniquely identifies a user and a second system that receives information regarding the user. IBM argued that there is no guarantee that the information regarding the user included the unique user ID. However, the Federal Circuit found that it was reasonable for the PTAB to infer that the user ID was included in the information regarding the user sent to the second system.
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