IP Law Daily, PATENT—N.D. Cal.: Online security patent asserted against Electronic Arts fails to pass Section 101 muster, (Sep 12, 2019)

By Joseph Arshawsky, J.D.

A patent claim for user authentication using a second method was directed to an abstract idea, and rather than disclosing an inventive concept, applied conventional technology to resolution of an abstract problem.

A motion by Electronic Arts, Inc. to dismiss patent infringement claims filed by Smart Authentication IP, LLC, has been granted by the federal district court in San Francisco because the only asserted claim of the patent-in-suit was ineligible for patent protection under 35 U.S.C. §101. The court found that the patent was directed to the abstract idea of verifying the identify of a user in more than one way over multiple communications mediums, while lacking an "inventive concept" that rendered the claims patentable (Smart Authentication IP, LLC v. Electronic Arts Inc., September 11, 2019, Illston, S.).

Patent-in-suit. In 2011, U.S. Patent No. 8,082,213 ("the ’213 patent"), entitled "Method and System for Personalized Online Security," was issued by the USPTO. Plaintiff, Smart Authentication, is the assignee and owner of the right, title and interest in and to the ‘213 patent. The inventions of the ‘213 patent generally relate to methods and systems for multi-factor authentication of users over multiple communications media. The ‘213 patent contemplates a user trying to login to the user’s account on a website, for example. In order to strengthen the security of the user’s login credentials and protect the user’s information, the user could be prompted to select an alternative form of authorization confirmation. The user could select to confirm her authorization via a secondary medium, including, but not limited to, a text message on her cell phone or an email. The secondary authenticating medium would occur outside the purview of the initial login credentials. This second form of authentication confirms the user’s identity.

Infringement dispute. Smart Authentication’s complaint, filed in April 2019, alleges a single cause of action for direct infringement against defendant Electronic Arts (EA). EA moved to dismiss on Section 101 grounds, and the court granted the motion.

Section 101 eligibility. EA requested dismissal of the action, arguing that claim 11, the only claim that survived an inter partes review proceeding, is directed to an abstract idea that lacks an inventive concept. The court disagreed with Smart Authentication’s arguments that the following issues of fact preclude summary determination: (1) paragraphs 9-12 of the complaint; (2) the ‘213 patent’s specification, explaining the shortcomings of prior authentication systems and how the alleged non-conventional arrangement of the claimed invention solves these problems; and (3) claim construction. Paragraphs 9-12 of the complaint merely summarize the ‘213 patent’s functionality. The closest any language in paragraphs 9-12 comes to raising an issue of fact is "[the] ‘213 patent recites a novel method" in paragraph 12. But this is not enough. Although the court must take the allegations in a well-pleaded complaint as true at this stage, the court is not required to accept as true "allegations that are merely conclusory, unwarranted deductions of fact, or unreasonable inferences."

For the same reason, the patent’s specification does not raise an issue of fact. In a case earlier this year, this court rejected a nearly identical argument, and it does so again here. Finally, plaintiff’s claim construction argument also fails. Although the Federal Circuit has stated "that it will ordinarily be desirable—and often necessary—to resolve claim construction disputes prior to a § 101 analysis, for the determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter," it has also stated that "claim construction is not an inviolable prerequisite to a validity determination under § 101." In any event, looking to the proposed terms and proposed construction in plaintiff’s brief, the court found that construction of these terms would not aid or alter the court’s determination today regarding the subject matter eligibility of the ‘213 patent. The court found that in the circumstances of this case it is appropriate to resolve the question of patent eligibility under Section 101 on a Rule 12(b)(6) motion to dismiss.

Abstract idea. There is no evidence that the ‘213 patent improves computer technology by making it faster, cheaper, or more efficient, the court said. Smart Authentication has simply applied "familiar processes in the context of the use of computers that are connected to the internet." The ‘213 patent lacks specificity and amounts to generalized steps using generic computer functionality. The patent describes a functional system and method that is not special in its composition or unique in terms of its result. There are no technical details; rather, the ‘213 patent offers a "myriad of software implementation choices" and a "wide variety" of communication channels to implement claim 11. The patent does not state how it should be implemented. Thus, the ‘213 patent recites a method for authenticating a user in more than one way over multiple electronic mediums but does not provide any "unconventional, patentable combination," such that straightforward steps to be done on a computer are transformed into something non-abstract. Because the ‘213 patent is directed to the abstract idea of verifying the identify of a user in more than one way over multiple communications mediums, the court proceeded to the second step of the Section 101 eligibility inquiry.

Inventive concept. Smart Authentication argued that its inventive concept is "the arrangement of the claimed combination in order to have multiple devices and multiple communications media in order to reliably authenticate remote users of electronic transactions." Thus, the purported inventive concept simply restates the abstract idea the patent is directed to verifying the identify of a user in more than one way over multiple communications media. What is needed to pass muster under Section 101 is something "significantly more" than a description of the abstract idea itself. Using well-known computer technology to authenticate a user—even using multiple electronic media to do so—amounts to functional use of familiar technology and is not inventive, according to the court.

The court disagreed with Smart Authentication’s arguments with respect to the ‘213 patent’s inventiveness: (1) that EA’s "‘generic computer functionality’ test" fails because the ‘213 patent’s specific combination of multiple user devices and communications media allegedly "transforms" the claim into a patent eligible application; (2) the ‘213 patent is inventive because it addresses the problem of "eavesdropping in communications networks"; and (3) claim 1, upon which claim 11 depends, "recites significant structural elements" that, according to plaintiff, amount to an inventive concept.

First, the combination articulated in the patent is not transformative—especially because it can be applied in a "limitless number of different ways." Second, while the ‘213 patent very well may address a problem unaddressed by prior art, that alone does not make the patent inventive. Third, plaintiff’s structural elements argument fails—indeed, it is made half-heartedly by simply listing/quoting various portions of claim 1 and 11 without stating why or how these structural elements amount to an inventive concept. All the structural elements listed (computer systems, interface routines, user devices, etc.) were well-known and common place at the time the patent issued, and none provides a meaningful limitation.

Smart Authentication argued that the structural elements, even if they are determined to be "conventional," provide an ordered combination that is significantly more technical than EA argued. "Again, this does not establish inventiveness," said the court, "which seeks uniqueness and transformation, of which there is none here." The court found no inventive concept such that the ‘213 patent, despite being directed to an abstract idea, is transformed into patentable subject matter. Accordingly, the court concluded that claim 11 of the ‘213 patent is invalid under Section 101.

This case is No. 3:19-cv-01994-SI.

Attorneys: Richard Charles Weinblatt (Stamoulis and Weinblatt LLC) for Smart Authentication IP, LLC. John P. Bovich (Reed Smith LLP) for Electronic Arts Inc.

Companies: Smart Authentication IP, LLC; Electronic Arts Inc.

Cases: Patent TechnologyInternet CaliforniaNews