Case 1:21-cv-00461-UNA Document 1 Filed 03/29/21 Page 1 of 47 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. _______________
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`JURY TRIAL DEMANDED
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`))))))))))))
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`INTERNATIONAL BUSINESS MACHINES
`CORPORATION,
`
`Plaintiff,
`
`v.
`
`RAKUTEN, INC., RAKUTEN USA, INC.,
`RAKUTEN COMMERCE, LLC, and
`EBATES INC. DBA RAKUTEN,
`
`Defendants.
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff International Business Machines Corporation (“IBM”), for its Complaint for
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`Patent Infringement against Rakuten, Inc., Rakuten USA, Inc., Rakuten Commerce, LLC, and
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`Ebates Inc. dba Rakuten (collectively, “Rakuten”), demands a trial by jury on all issues so triable
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`and alleges as follows:
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`INTRODUCTION
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`1.
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`IBM is in the innovation business. Every year, IBM spends billions of dollars on
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`research and development to invent, market, and sell new technology. For example, through its
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`investments and innovations in the new frontier of quantum information science, IBM is the leader
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`in commercializing quantum computing, once thought to be a purely academic exercise. IBM’s Q
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`Network service—a community of Fortune 500 companies, academic institutions, research
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`organizations, and startups working with IBM to advance quantum computing—now has over 100
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`members.
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`2.
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`IBM obtains patents on the technology its inventors develop. IBM’s commitment
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`to research and innovation has resulted in numerous inventions that have led to the thousands of
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`patents awarded to IBM by the United States Patent Office each year. In fact, for each of the last
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`28 years, IBM scientists and researchers have been awarded more U.S. patents than those of any
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`other company. Those patents are critical to IBM’s business and its licensing philosophy.
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`3.
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`For example, for over twenty years, IBM has been a strong proponent of open
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`source technologies. IBM was a founding member of Open Invention Network, the largest patent
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`non-aggression community in history, which supports freedom of action in Linux, a key element
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`of open source software. IBM was able to leverage its patent portfolio to enable the broad industry
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`adoption of open source
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`technologies by pledging
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`to provide open access
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`to key
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`innovations covered by hundreds of IBM software patents for those working on open source
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`software. And early in 2020, IBM joined the License on Transfer Network (“LOT Network”), a
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`non-profit community of companies that supports open innovation and responsible stewardship of
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`technology. LOT Network affirms the traditional use of patents—safeguarding the innovations of
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`companies who research, develop, and sell new technologies—while protecting its members
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`against patent assertion entities who purchase or acquire patents from others.
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`4.
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`As another example, IBM has pledged to let anyone working on solutions to the
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`coronavirus pandemic use its patents for free. IBM’s vast patent portfolio can now support
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`researchers everywhere who are developing technologies to help prevent, diagnose, treat or contain
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`COVID-19. The collection includes thousands of IBM artificial intelligence patents, some related
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`to Watson technology, as well as dozens, if not hundreds, related to biological viruses.
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`5.
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`IBM also believes in the protection of its proprietary technologies, which result
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`from IBM’s extensive investments in research and development and the hard work of IBM’s
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`employees. IBM believes that companies who use IBM’s patented technology should agree to a
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`license and pay a fair royalty. When a company is using IBM’s patents without authorization,
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`IBM first seeks to negotiate an agreement whereby IBM and the other company each receive a
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`license to the other’s patent portfolio. That way, each company can avoid litigation, be fairly
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`compensated for the use of all of their patents, and maintain freedom to operate in their respective
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`markets.
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`6.
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`IBM’s research and development is currently focused on technology that includes
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`quantum computing, big data analytics, artificial intelligence, and natural language processing.
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`But IBM also has a long history of innovating and licensing its technology in the field of internet
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`commerce. In fact, long before Rakuten existed, IBM partnered with other companies to launch
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`Prodigy, one of the very first e-commerce services. Rakuten, which was founded in 1997, after e-
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`commerce was already established, took those prior innovations made by IBM and others to create
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`and run its new business. As its business has developed, Rakuten has incorporated additional
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`innovations pioneered by IBM.
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`7.
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`For almost six years, IBM has tried to negotiate with Rakuten about Rakuten’s
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`unlicensed use of IBM’s patents. Dozens of similar companies, including Amazon, Apple,
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`Google, and Facebook, have agreed to cross licenses with IBM. Unfortunately, Rakuten is not
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`among them. Instead, to this day, Rakuten has chosen to willfully infringe IBM’s patents and even
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`expand its infringing activity.
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`8.
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`Rather than negotiate with IBM, Rakuten has used a series of delay tactics. In July
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`2015, when IBM first informed Rakuten that its subsidiaries were infringing IBM’s patents,
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`Rakuten refused to take responsibility for the companies it controlled and told IBM to contact each
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`of them individually. Then, Rakuten refused to meet with IBM by ignoring IBM’s messages,
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`claiming vague scheduling conflicts, or deflecting responsibility from one Rakuten representative
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`to the next.
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`9.
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`Two years later, in 2017, IBM finally had the opportunity to present detailed
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`evidence of Rakuten’s infringement. In response, Rakuten refused to explain why it continued to
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`infringe IBM’s patents. When that approach was no longer tenable, Rakuten raised objectively
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`unreasonable excuses for why it refused to negotiate. When IBM pointed out that Rakuten’s
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`excuses were flawed and included arguments that had been rejected in court, Rakuten reverted to
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`delay tactics. In one instance in 2018, Rakuten finally agreed to meet with IBM after months of
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`haggling over the attendees and the topics to be discussed, only to cancel at the last minute.
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`10.
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`Rather than address its infringement of IBM’s intellectual property, Rakuten
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`attempted to strong-arm IBM by threatening existing relationships between the companies.
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`Rakuten said it would blacklist IBM from future business opportunities if IBM did not drop the
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`issue. Through this tactic too, Rakuten attempted to deflect responsibility from its own wrongful
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`conduct.
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`11.
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`Over the years, IBM has discovered that Rakuten infringes additional IBM patents.
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`IBM has informed Rakuten of its expanding liability for willful patent infringement across its
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`subsidiaries but has been continually met with delay and excuses. This conduct clearly
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`demonstrates Rakuten has never taken the issue seriously.
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`12.
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`After years of delay and excuses, Rakuten changed tactics. Rakuten told IBM that
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`it had hired outside legal counsel and would no longer talk to IBM directly. In effect, Rakuten
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`told IBM: “we will not deal with this issue; talk to our lawyers.” That decision made it nearly
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`impossible to resolve this matter through business negotiations. IBM has urged Rakuten to
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`reconsider many times, yet Rakuten refused IBM’s invitations to explain Rakuten’s infringement
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`and to discuss an amicable business resolution.
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`13.
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`After almost six years without meaningful progress toward a resolution, IBM has
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`brought this lawsuit to finally end Rakuten’s unauthorized use of IBM’s patented technology.
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`NATURE OF THE CASE
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`14.
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`This action arises under 35 U.S.C. § 271 for Defendant’s infringement of IBM’s
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`United States Patent Nos. 7,072,849 (the “’849 patent”), 7,631,346 (the “’346 patent”), 6,785,676
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`(the “’676 patent”), and 7,543,234 (the “’234 patent”) (collectively the “Patents-In-Suit”).
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`THE PARTIES
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`15.
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`Plaintiff IBM is a New York corporation, with its principal place of business at 1
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`New Orchard Road, Armonk, New York 10504.
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`16.
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`Defendant Rakuten, Inc. is a Japanese corporation, with its principal place of
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`business in Setagaya, Tokyo, Japan. Rakuten is the ultimate parent company to Rakuten USA,
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`Inc., Rakuten Commerce, LLC, and Ebates Inc. dba Rakuten.
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`17.
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`Defendant Rakuten USA, Inc. is a Delaware corporation with its principal place of
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`business at Rakuten Crimson House West 800 Concar Drive., San Mateo, California, 94402.
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`18.
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`Defendant Rakuten Commerce, LLC is a Delaware corporation with its principal
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`place of business in San Mateo, California.
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`19.
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`Defendant Ebates Inc. dba Rakuten is a Delaware corporation with its principal
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`place of business at 160 Spear Street, Suite 1900, San Francisco, CA 94105.
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`JURISDICTION AND VENUE
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`IBM incorporates by reference paragraphs 1-19.
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`This action arises under the patent laws of the United States, including 35 U.S.C.
`
`20.
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`21.
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`§ 271 et seq. The jurisdiction of this Court over the subject matter of this action is proper under
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`28 U.S.C. §§ 1331 and 1338(a).
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`22.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
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`Rakuten, USA, Inc., Rakuten Commerce, LLC, and Ebates Inc. dba Rakuten are entities organized
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`under the laws of Delaware and resides in Delaware for purposes of venue under 28 U.S.C. §
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`1400(b). Additionally, Rakuten, Inc., Rakuten USA, Inc., Rakuten Commerce, LLC, and Ebates
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`Inc. dba Rakuten conduct business in Delaware, at least by offering for sale and selling products
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`and services through its websites and mobile applications, which are accessible in Delaware.
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`Infringement by Rakuten, Inc., Rakuten USA, Inc., Rakuten Commerce, LLC, and Ebates Inc. dba
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`Rakuten has occurred and continues to occur in Delaware.
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`23.
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`Personal jurisdiction exists over Rakuten, Inc., Rakuten USA, Inc., Rakuten
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`Commerce, LLC, and Ebates Inc. dba Rakuten because those entities conduct business in
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`Delaware, at least by offering for sale and selling products and services through its websites and
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`mobile applications, which are accessible in Delaware, and because infringement has occurred and
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`continues to occur in Delaware. Personal jurisdiction also exists over Rakuten USA, Inc. Rakuten
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`Commerce, LLC, and Ebates Inc. dba Rakuten because those entities are organized under the laws
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`of Delaware.
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`A.
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`IBM Is A Recognized Innovator.
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`FACTUAL BACKGROUND
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`24.
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`IBM is a worldwide pioneer in various sectors of science and technology. During
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`IBM’s over 100-year history, IBM’s employees have included six Nobel laureates, six Turing
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`Awards laureates, five National Medal of Science recipients, and fifteen inventors in the National
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`Inventors Hall of Fame. IBM has been awarded the U.S. National Medal of Technology more
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`times than any other company or organization—the U.S. National Medal of Technology is the
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`nation’s highest award for technological innovation.
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`25.
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`IBM employees are responsible for technological advances that have become
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`foundational technology that is widely incorporated into use by the global community today,
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`including the dynamic random access memory (DRAMs) found in nearly all modern computers;
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`magnetic disk storage (hard disk drives) found in computers and portable music players; and some
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`of the world’s most powerful supercomputers, including Deep Blue (the first computer to beat a
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`reigning chess champion, Garry Kasparov), Watson (the system that combined content analysis,
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`natural language processing, information retrieval, and machine learning to beat two of
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`Jeopardy!’s greatest human champions), and Summit (the world’s fastest supercomputer when
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`delivered to Oak Ridge National Laboratory in 2018 that has been employed to tackle society’s
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`largest problems from the opioid crisis to COVID-19). Technology evolves quickly and the nature
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`of research and development ambitiously seeks out new discoveries. The inventions that IBM
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`unearths today lays the groundwork for tomorrow’s technology.
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`B.
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`IBM Is Committed To Protecting Its Innovations Through The Patent System.
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`26.
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`IBM’s research and development operations differentiate IBM from many other
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`companies. IBM annually spends billions of dollars for research and development. In addition to
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`yielding inventions that have literally changed the way in which the world works, IBM’s research
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`and development efforts have resulted in more than 80,000 patents worldwide.
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`27.
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`Like the research upon which the patents are based, IBM’s patents also benefit
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`society. Indeed, the Supreme Court has recognized that the patent system encourages both the
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`creation and the disclosure of new and useful advances in technology. Such disclosure, in turn,
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`permits society to innovate further. And, as the Court has further recognized, as a reward for
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`committing resources to innovation and for disclosing that innovation, the patent system provides
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`patent owners with the exclusive right to prevent others from practicing the claimed invention for
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`a limited period of time.
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`C.
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`IBM Routinely Licenses Its Patents In Many Fields But Will Enforce Its Rights
`Against Those Who Use Its Intellectual Property Unlawfully.
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`28.
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`IBM’s commitment to creating a large patent portfolio underscores the value that
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`IBM places in the exchange of innovation, and disclosure of that innovation, in return for limited
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`exclusivity. Indeed, IBM has used its patent portfolio to generate revenue and other significant
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`value for the company by executing patent cross-license agreements. The revenue generated
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`through patent licensing enables IBM to continue to commit resources to innovation. Cross
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`licensing, in turn, provides IBM with the freedom to innovate and operate in a manner that respects
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`the technology of others.
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`29.
`
`Given the investment IBM makes in the development of new technologies and the
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`management of its patent portfolio, IBM and its shareholders expect companies to act responsibly
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`with respect to IBM’s patents. IBM facilitates this by routinely licensing its patents in many fields
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`and by working with companies that wish to use IBM’s technology in those fields in which IBM
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`grants licenses. When a company appropriates IBM’s intellectual property but refuses to negotiate
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`a license, IBM has no choice but to seek judicial assistance.
`
`D.
`
`IBM Invented Methods For Presenting Applications And Advertisements In An
`Interactive Service While Developing The PRODIGY Online Service.
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`30.
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`The inventors of the ’849 patent developed the patented technologies as part of
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`IBM’s efforts to launch the PRODIGY online service (“Prodigy”), a forerunner to today’s Internet,
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`in the late 1980s. The inventors believed that to be commercially viable, Prodigy would have to
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`provide interactive applications to millions of users with minimal response times. The inventors
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`believed that the “dumb” terminal approach that had been commonly used in conventional
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`systems, which heavily relied on host servers’ processing and storage resources for performance,
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`would not be suitable. As a result, the inventors sought to develop more efficient methods of
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`communication that would improve the speed and functionality of interactive applications and
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`reduce equipment capital and operating costs.
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`31.
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`In light of the above considerations, the inventors developed novel methods for
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`presenting applications and advertisements in an interactive service that would take advantage of
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`the computing power of each user’s PC and thereby reduce demand on host servers, such as those
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`used by Prodigy. The inventors recognized that if applications were structured to be comprised of
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`“objects” of data and program code capable of being processed by a user’s PC, the Prodigy system
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`would be more efficient than conventional systems. By harnessing the processing and storage
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`capabilities of the user’s PC, applications could then be composed on the fly from objects stored
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`locally on the PC, reducing reliance on Prodigy’s server and network resources.
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`32.
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`The service that would eventually be called Prodigy embodied inventions from the
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`’849 patent when it launched in late 1988, before the existence of the World Wide Web. The
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`efficiencies derived from the use of the patented technology permitted the implementation of one
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`of the first graphical user interfaces for online services. The efficiencies also allowed Prodigy to
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`quickly grow its user base. By 1990, Prodigy had become one of the largest online service
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`providers with hundreds of thousands of users. Prodigy was widely praised in the industry and is
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`still held up as an example of innovation in computer networks that predated even the advent of
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`the World Wide Web. The technological innovations embodied in this patent persist to this day
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`and are fundamental to the efficient communication of Internet content.
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`33.
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`Today, it is easy to take the World Wide Web, powerful computers, and high-speed
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`network connectivity for granted. Not so in 1988, when the first application in the ’849 patent’s
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`priority chain was filed. The World Wide Web had not even been conceived yet. Typical personal
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`computers at the time had “512K RAM”—not 512 megabytes or gigabytes of RAM, but 512
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`kilobytes. ’849 patent at 9:16-18. The ’849 patent also describes the use of 1,200 to 2,400 bps
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`(bits per second) modems to access a network—a far cry from today’s high-speed internet. Id. at
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`9:18-20.
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`34.
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`The limited processing power and network bandwidth available in 1988 posed
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`significant technical obstacles to the development and adoption of network-based interactive
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`services, in which many users may access interactive services provided by a host. Id. at 1:34-58.
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`Accordingly, the ’849 patent specifically identifies slowdowns in network response time caused
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`by processing bottlenecks at the host as a problem to be solved:
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`[I]n conventional time-sharing computer networks, the data and program
`instructions necessary to support user sessions are maintained at a central host
`computer. However, that approach has been found to create processing
`bottlenecks as greater numbers of users are connected to the network; bottlenecks
`which require increases in processing power and complexity; e.g., multiple hosts
`of greater computing capability, if the network is to meet demand. Further, such
`bottlenecks have been found to also slow response time as more users are
`connected to the network and seek to have their requests for data processing
`answered. Id. at 10:42-53; see also id. at 1:43-52, 10:54-57.
`
`35.
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`As the ’849 patent also explains, simply adding additional computing capacity to
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`the hosts is not enough to fix the bottleneck problem. “[E]ven in the case where additional
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`computing power is added, and where response time is allowed to increase, eventually the host
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`becomes user saturated as more and more users are sought to be served by the network.” Id. at
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`10:58-61. In other words, even a host with additional computing capacity would still have limits
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`on how many users it could support in conventional approaches.
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`36.
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`Conventional approaches
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`to providing advertising
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`in
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`interactive services
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`exacerbated the bottleneck problem by clogging limited network bandwidth. In conventional
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`approaches to advertising in interactive services, advertising had to compete with service
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`application data for limited network bandwidth. Id. at 2:20-30. That competition between
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`advertising and service application data had “the undesirable effect of diminishing service
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`response time.” Id. at 2:25-26.
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`37.
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`The bottleneck problem arises from the limitations of networks that rely exclusively
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`on central hosts to satisfy users’ data processing requests and the limited network bandwidth
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`available at the time of the invention. Accordingly, the bottleneck problem addressed by the ’849
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`patent is a “technical problem.”
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`38.
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`Before this suit, the ’849 patent had been challenged three times on grounds of
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`alleged patent ineligibility. Those challenges were all unsuccessful. In the matter of IBM v. The
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`Priceline Grp., Inc., C.A. No. 1:15-cv-00137 (D. Del.), the defendants (collectively “Priceline”)
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`filed a motion to dismiss, alleging that the ’849 patent was directed to unpatentable subject matter.
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`The Delaware court denied Priceline’s motion, finding that “Defendants have failed to meet their
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`burden of demonstrating that . . . claim 1 of the ’849 patent [is] devoid of inventive concepts.”
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`IBM v. The Priceline Grp., Inc., 2016 WL 626495, at *24 (D. Del. Feb. 16, 2016).
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`39.
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`In the matter of Kayak Software Corp. v. IBM., CBM2016-00075, Priceline again
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`challenged the ’849 patent on alleged patent eligibility grounds, this time before the Patent Trial
`
`and Appeal Board (“PTAB”). Just like in the district court, the PTAB rejected Priceline’s
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`challenge. The PTAB “agree[d] with Patent Owner the disclosure of the ’849 patent itself is almost
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`exclusively directed to solving a problem arising in computer technology (i.e., bandwidth) with a
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`computerized solution (i.e., local storage).” Kayak Software Corp. v. IBM., CBM2016-00075,
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`Paper 16 (PTAB Dec. 15, 2016)) at 19. The PTAB thus concluded, “Petitioner has not shown
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`sufficiently that independent claims 1 and 21 are directed to an unpatentable ‘abstract idea’ . . . .”
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`Id. at 20.
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`40.
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`Although the parties filed other summary judgment motions in the Priceline case,
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`Priceline chose not to file a summary judgment motion to challenge the patent eligibility of the
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`’849 patent.
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`41.
`
`In the matter of IBM v. Groupon, Inc., C.A. No. 1:16-cv-00122 (D. Del.), Groupon,
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`Inc. (“Groupon”) moved for judgment on the pleadings that the ’849 patent was directed to
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`ineligible subject matter. The court denied Groupon’s motion, finding that “the asserted claims
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`for the Filepp patents are not directed to an abstract idea and are directed to patent-eligible subject
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`matter.” IBM v. Groupon, Inc., 289 F. Supp. 3d 596, 607 (D. Del. 2017).
`
`E.
`
`IBM Invented Methods For A Runtime User Account Creation Operation Using A
`Single-Sign-On (SSO) Process In A Federated Computer Environment.
`
`42.
`
`The inventors of the ’346 patent developed the patented technology as part of
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`IBM’s efforts to improve single-sign-on technology. Online service providers, like website
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`operators, typically use “sign-on” operations to manage access to protected resources, like
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`confidential webpages. ’346 patent at 6:26-30. A user signs-on by providing authentication
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`credentials, such as a username and password, which the service provider verifies to authenticate
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`the user’s identity. Id. at 6:31-36. Then, the service provider can determine whether the identified
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`user has authorization to access the protected resource and, if so, grants access. Id. at 6:37-43, Fig.
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`1C. Although that process has become commonplace, it is time consuming for users to sign-on
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`every time they wish to access a protected resource. Id. at 1:25-33.
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`43.
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`One way to address the shortcomings of repetitive sign-on operations is to
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`authenticate users for an entire “session,” i.e., a series of multiple transfers of information between
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`the server and the client. Id. at 1:53-61, 6:17-22. That technology is called single-sign-on because
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`users are only required to sign-on once per session. Id. at 1:53-61. For example, users could enter
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`a user name and password on the homepage of a service provider and request multiple protected
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`webpages without reentering their credentials. But prior art single-sign-on methods were
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`problematic because they required users to have preexisting user accounts at the service provider.
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`Id. at 2:19-42.
`
`44.
`
`As Dr. Heather Hinton, first named inventor of the ’346 patent, testified in prior
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`proceedings, prior art systems could not take advantage of the full benefits of single-sign-on
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`because of this fundamental problem.
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`45.
`
`The inventors of the ’346 patent sought to develop single-sign-on technology that
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`would permit a new user of a service provider to access protected resources. They developed novel
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`methods for systems interacting within a “federated computing environment” to trigger a single-
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`sign-on operation on behalf of a user that would obtain access to a “protected resource” and create
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`an account for the user. The specification discloses how to structure a “federated computing
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`environment” using a nonconventional arrangement of computer components. Id. at 10:62-11:7,
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`11:28-35. The specification describes a “protective resource” using precise technical terms that
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`demonstrate “how” to solve the limitations of prior art single-sign-on operations. Id. at 5:60-67,
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`6:26-30, 8:45-48, 11:28-35. And it specifies the “ordered combination” of technical steps
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`necessary to implement the claimed embodiments. See, e.g., id. at Figs. 9, 11.
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`46.
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`One implementation of the ’346 patent involves using “tokens” to facilitate such
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`interactions. “A token provides direct evidence of a successful operation and is produced by the
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`entity that performs the operation, e.g., an authentication token that is generated after a successful
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`authentication operation. A Kerberos token is one example of an authentication token that may be
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`used with the present invention.” Id. at 8:49-54. Such binary security tokens can implement web
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`services message-level security. When a user accesses a service provider and signs into the identity
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`provider via single-sign-on operations, the identity provider authenticates the user. The identity
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`Case 1:21-cv-00461-UNA Document 1 Filed 03/29/21 Page 14 of 47 PageID #: 14
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`provider provides a token to the service provider “to provide proof of authentication of a user.”
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`Id. at 22:15-19. The service provider would in turn, “translate” the identity provider’s token into
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`a “locally valid user identifier . . .based on information contained in the [] token” in order to “build
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`a local session for the user.” Id. at 24:16-25:3. After the user has been found to be authenticated
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`by the identity provider, the system provider can then create an account for the user at the service
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`provider, thus bypassing any requirement for the user to directly create an account at the service
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`provider. The ’346 patent thus extends the benefits of single-sign-on technology to allow the user
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`to access protected resources at any number of service providers without having to first set up a
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`user account.
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`47.
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`To date, the ’346 patent had been unsuccessfully challenged on grounds of alleged
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`patent ineligibility. In the matter of IBM v. The Priceline Grp., Inc., C.A. No. 1:15-cv-00137 (D.
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`Del.), Priceline filed a motion to dismiss, alleging that the ’346 patent was directed to unpatentable
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`subject matter. The Delaware court denied the motion, finding the patent was not directed to an
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`abstract idea; “the true heart of the invention is the utilization of SSO technology to automatically
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`create an account at the service provider level on behalf of users who did not previously have such
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`accounts, all in order to allow the user to access protected resources at the service provider.” IBM
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`v. The Priceline Grp., Inc., 2016 WL 626495, at *16 (D. Del. Feb. 16, 2016). The Court also
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`rejected the argument that the claim did not contain inventive aspects: “The specification describes
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`the improvement over the prior art encompassed by the invention as the ‘eliminat[ion] [of] these
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`prerequisites’ because while ‘[i]n the prior art, the service provider cannot automatically create an
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`active session for the user and allow access to protected resources; with the present invention, the
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`service provider dynamically performs a runtime linked-user-account creation operation at the
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`Case 1:21-cv-00461-UNA Document 1 Filed 03/29/21 Page 15 of 47 PageID #: 15
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`service provider by creating a linked user account based on the user identity . . . that has been
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`provided by the identity provider to the service provider[.]’” Id. at *19.
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`48.
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`Although the parties filed summary judgment motions in the Priceline case,
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`Priceline chose not to file a motion to challenge the patent eligibility of the ’346 patent.
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`49.
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`In the IBM v. Groupon case, Groupon chose not to file any motions challenging the
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`patent eligibility of the ’346 patent at the pleading stage or at the summary judgement stage. The
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`case proceeded to trial. The jury rendered a verdict of willful infringement and no invalidity on
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`all four of the patents-in-suit, including the ’346 patent, thus further showing the continued
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`importance and relevance of the invention of the ’346 patent to modern network technology.
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`50.
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`The matters of IBM v. Expedia and IBM v. Airbnb also involved the ’346 patent.
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`None of the defendants in those litigations filed motions that challenged the patent eligibility of
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`the ’346 patent.
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`51.
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`The Federal Circuit has interpreted the claims of the ’346 patent in an appeal
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`concerning two final written decisions issued by the PTAB. In reversing the PTAB’s finding that
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`a subset of claims of the ’346 patent were anticipated by prior art, the Federal Circuit explained
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`that the ’346 patent solves “the special challenges of providing single-sign-on capabilities in a
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`‘federated’ environment,’” which the court understood as an environment containing different
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`enterprises that “adhere to certain standards of interoperability.” IBM v. Iancu, 759 F. App’x 1002,
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`1004-1005 (Fed. Cir. 2019). The Federal Circuit distinguished how the prior art approached
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`authentication from how the ’346 patent solved the problem by looking at how the claimed
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`“federated computing environment” and “single-sign-on” operated in the context of the invention.
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`Id. at 1007-1009. The Federal Circuit’s opinion confirms that the ’346 patent is directed to a non-
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`Case 1:21-cv-00461-UNA Document 1 Filed 03/29/21 Page 16 of 47 PageID #: 16
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`abstract computer-specific problem and involves innovation in “how” to solve the limitations of
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`prior art single-sign-on techniques.
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`F.
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`IBM Invented Methods For Improving Searching Using Real-Time Incorporation
`Of Contextual Information.
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`52.
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`The inventor of the ’676 patent developed the patented technology as part of IBM’s
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`efforts to improve search mechanisms for customer self-service search and retrieval systems.
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`Customer self-service search and retrieval systems may include knowledge management systems,
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`information portals, search engines, and data miners. Providing efficient and satisfactory search
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`results using such systems could be improved by incorporating relevant contextual information
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`about the user. At the time of the invention, conventional customer self-service search and
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`retrieval systems required users to input their contextual information when conducting each search
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`query. However, these prior art search mechanisms failed to utilize the contextual information to
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`rank search results and did not change these rankings over time, even as the user’s contextual
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`information changed. The prior art search mechanisms ranked search results without adapting to
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`the current state of the user’s interactions with the system and, therefore, failed to prioritize the
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`search results most relevant to the user.
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`53.
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`The inventor of the ’676 patent recognized a need for an improv