The Software IP Report

Online User Authentication Service Fails § 101 Patent-Eligibility Test

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

Claims of a patent directed to “an interaction between a user, an ASP [authentication service provider] client, and an ASP” were invalid under 35 U.S.C. § 101 and the Mayo/Alice patent-eligibility test, said a Northern District of California judge in Smart Authentication LLC v. Electronic Arts, Inc., Case No. 19-cv-01994-SI (N.D. Cal. Sept. 11, 2019). The court granted the defendant’s motion for summary judgment, and dismissed the plaintiff’s complaint with prejudice.

Following Inter Partes Review proceedings, the only remaining asserted claim of U.S. Patent No, 8,082,213B2 was claim 11, which depended from claim 1:

1. A user-authentication service implemented as routines that execute one or more computer systems interconnected by two or more communications media with both an authentication-service client, and a user, the user-authentication service comprising:

the one or more computer systems;

stored user-authentication policies specified by the user;

stored user information;

account interface routines that implement an account interface by which the user specifies, modifies, adds, and deletes user-authentication policies; and

authentication-interface routines that implement an authentication interface by which, following initiation of a transaction by the user with the authentication-service client, the authentication-service client submits an authentication request, through the first communications medium or through a second communications medium, to authenticate the user, the authentication-interface routines employing a variable-factor authentication, when specified to do so by stored user-authentication policies, to authenticate the user on behalf of the authentication-service client during which the user communicates with the user-authentication service through a third communications medium different from the first and second communications media and a user device different from that employed by the user to initiate the transaction with the authentication-service client.

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  1. The user-authentication service of claim 10 wherein user-authentication service actions include one or more of:

halting authorization service after detecting a specified event;

employing particular types of user-authentication procedures; and

providing alerts upon detecting specified events.

To better understand the claims, the court reproduced Figure 3 from the ’213 patent.

The court then found – and surely this finding can be seen in the above figure – that under part 1 of the Alice test, the ’213 patent was “directed to the abstract idea of verifying the identify of a user in more than one way over multiple communications mediums.” The court reasoned that the ’213 provided “no technical details” concerning its authentication model, and disclosed only “a functional system and method that is not special in its composition or unique in terms of its result.”

The plaintiff argued that the ’213 patent claims should survive under part 2 of the Alice test, alleging an inventive concept in “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.” Citing the Federal Circuit’s 2016 opinion in Affinity Labs of Texas, LLC v. Inc., the court dismissed this argument with the familiar refrain that “[u]sing 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.”

The court then addressed the plaintiff’s three main arguments for inventiveness in turn. First, the claimed combination was not inventive because it did not transform a technical structure, but rather “can be applied in a ‘limitless number of different ways.’” Second, solving a problem unaddressed by prior art does not alone make a claim inventive. And “[t]hird, plaintiff’s structural elements argument fails” because “[a]ll 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.”

Finally, the court distinguished Cellspin Soft Inc. v. Fitbit, Inc., No. 2018-1817 (Fed. Cir. June 25, 2019), where patent claims had been saved by Alice’s inventive step prong. But there, claims arguably contributed to less expensive and bulky hardware, and, unlike here ,“the ordered combination of elements was found to be inventive due to the combination fundamentally improving functionality