`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. ________________
`
`JURY TRIAL DEMANDED
`
`))))))))))
`
`INTERNATIONAL BUSINESS MACHINES
`CORPORATION,
`
`Plaintiff,
`
`v.
`
`ZYNGA INC., and CHARTBOOST, INC.,
`
`Defendants.
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff International Business Machines Corporation (“IBM”), for its Complaint for
`
`Patent Infringement against Zynga, Inc. (“Zynga”) and Chartboost, Inc. (“Chartboost”)
`
`(collectively, “Defendants”), demands a trial by jury on all issues so triable and alleges as follows:
`
`INTRODUCTION
`
`1.
`
`IBM is in the innovation business. Every year, IBM spends billions of dollars on
`
`research and development to invent, market, and sell new technology. These investments over the
`
`decades have led to innovations touching every industry and changing the way the world connects,
`
`including foundational advancements in computer hardware and software, big data analytics,
`
`artificial intelligence, and natural language processing. Even in the new frontier of quantum
`
`information science, once thought to be a purely academic exercise, IBM has capitalized on its
`
`early investments and innovations to become the leader in commercializing this revolutionary
`
`technology. IBM’s Q Network service—a community of Fortune 500 companies, academic
`
`institutions, research organizations, and startups working with IBM to advance quantum
`
`computing—now has over 100 members. IBM believes that the application of intelligence, reason
`
`and science can improve business, society and the human condition.
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 2 of 63 PageID #: 2
`
`2.
`
`IBM obtains patents on the technology its inventors develop. IBM’s commitment
`
`to research and innovation has resulted in numerous inventions that have led to the thousands of
`
`patents awarded to IBM by the United States Patent and Trademark Office each year. In fact, for
`
`each of the last 29 years, IBM scientists and researchers have been awarded more U.S. patents than
`
`those of any other company. Those patents are critical to IBM’s business, its values, and its
`
`licensing philosophy.
`
`3.
`
`For example, for over twenty years, IBM has been a strong proponent of open-
`
`source technologies—technologies that are freely available to use, modify, and redistribute. IBM
`
`was a founding member of Open Invention Network, the largest patent non-aggression community
`
`in history, which supports freedom of action in Linux, a key element of open-source software.
`
`IBM was able to leverage its patent portfolio to enable the broad industry adoption of open-source
`
`technologies by pledging to provide open access to key innovations covered by hundreds of IBM
`
`software patents for those working on open-source software. And early in 2020, IBM joined the
`
`License on Transfer Network (“LOT Network”), a non-profit community of companies that
`
`supports open innovation and responsible stewardship of technology. LOT Network affirms the
`
`traditional use of patents—safeguarding the innovations of companies who research, develop, and
`
`sell new technologies—while protecting its members against patent assertion entities who
`
`purchase or acquire patents from others.
`
`4.
`
`As another example, IBM has pledged to let anyone working on solutions to the
`
`coronavirus pandemic use its patents for free. IBM’s vast patent portfolio can now support
`
`researchers everywhere who are developing technologies to help prevent, diagnose, treat, or
`
`contain COVID-19. The collection includes thousands of IBM artificial intelligence patents, some
`
`related to Watson technology, as well as dozens, if not hundreds, related to biological viruses.
`
`2
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 3 of 63 PageID #: 3
`
`5.
`
`IBM also believes in the protection of its proprietary technologies, which result
`
`from IBM’s extensive investments in research and development and the hard work of IBM’s
`
`inventors. When other companies seek to build new businesses on the foundation set by IBM’s
`
`patented technology, IBM believes that those companies should agree to a license and pay a fair
`
`royalty. When a company is using IBM’s patents without authorization, IBM first seeks to
`
`negotiate an agreement whereby IBM and the other company cross license their respective patent
`
`portfolios, enabling each to receive a license to the other’s patent portfolio. That way, each
`
`company can avoid litigation, be fairly compensated for the use of all of their patents, and maintain
`
`the freedom to operate in their respective markets.
`
`6.
`
`The modern technology industry has recognized IBM’s pioneering innovations in
`
`areas including big data analytics, digital marketplaces, and web-based business. Indeed, IBM’s
`
`patent portfolio includes many foundational technologies in those areas, such as personalized
`
`digital advertising and managing servers and applications. In fact, in the 1980s, IBM partnered
`
`with other companies to launch Prodigy, one of the pioneers in online networking and advertising.
`
`As a result, dozens of modern technology companies, including Amazon, Apple, Google, and
`
`Facebook, have agreed to cross licenses with IBM. Defendants have not.
`
`7.
`
`Zynga was founded in 2007. Like many companies before it, Zynga recognized the
`
`value in bringing interactive, social experiences onto the web and the internet. Specifically, Zynga
`
`successfully launched several mass-market “social games,” such as Words with Friends and
`
`Farmville. Unlike physical games sold in brick-and-mortar stores, Zynga offers these products as
`
`“free-to-play,” where a user can simply download applications or open a web browser to start
`
`playing. These games make it easy for users to connect to their existing social media accounts for
`
`online play. Zynga generates revenue by selling in-game virtual items to its users, by selling
`
`3
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 4 of 63 PageID #: 4
`
`advertisements, and by operating a mobile advertising and monetization platform with its
`
`subsidiary, Chartboost. Zynga is now one of the world’s largest providers of social games, with
`
`millions of daily users and mobile downloads totaling over four billion. By offering products at
`
`this massive scale, Zynga has enjoyed billions of dollars in revenue in recent years.
`
`8.
`
`Those in the industry have described Zynga as a “big data company disguised as
`
`[a] gaming company.” Though Zynga is nominally a gaming company, its success relies on
`
`sophisticated data capture, processing, and analytics technology, which enables Zynga’s delivery
`
`of games and advertisements to millions of users. In its annual report, Zynga tells its investors:
`
`At the core of Zynga’s live services platform is our first-party data network, which
`captures key insights about how our players are interacting with our games. We
`use this data to deliver highly engaging interactive experiences for our players,
`optimize our user acquisition, monetize our games, and provide advertising
`services.
`
`Zynga’s products and its business model rely on prior innovations in big data, analytics, and online
`
`advertising made by IBM and others.
`
`9.
`
`Zynga is not alone when it comes to big data, analytics, and online advertising. The
`
`wider technology industry has recognized that the data and analytic techniques necessary for
`
`providing online services to millions, including gaming, require years of investments in research,
`
`development, and innovations. It is not surprising that others would use such techniques rather
`
`than develop them themselves, because it is difficult and expensive to develop such techniques
`
`without the kind of expertise that IBM provides in this space. Like other modern technology
`
`companies, Zynga recognized IBM’s expertise in the field and decided to incorporate IBM’s prior
`
`innovations in big data, analytics, and online advertising instead of spending the time and money
`
`to develop its own techniques.
`
`4
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 5 of 63 PageID #: 5
`
`10.
`
`As Zynga’s business has developed, it has continued to incorporate additional
`
`innovations pioneered by IBM. But unlike dozens of Zynga’s peers in the industry, Zynga does
`
`not have a license to use IBM’s patents.
`
`11.
`
`Since 2014, IBM has tried to negotiate with Zynga about Zynga’s unlicensed use
`
`of IBM’s patents. Unfortunately, to this day, Zynga has chosen to willfully infringe IBM’s patents
`
`and even expanded its infringing activity.
`
`12.
`
`Over the years, IBM has discovered that Zynga infringes additional IBM patents.
`
`IBM has informed Zynga of its expanding liability for willful patent infringement, including by its
`
`subsidiary Chartboost, but has been continually met with delay and excuses. For example, IBM
`
`specifically identified for Zynga how its products, including the CSR Racing 2, Words with Friends
`
`2, Farmville 2: Country Escape, and Game of Thrones Slots Casino games, practice multiple IBM
`
`patents. Rather than negotiate an acceptable business resolution with IBM, Zynga engaged in
`
`delay tactics, alternating between refusing to meet for weeks at a time and responding only partially
`
`to IBM’s letters detailing Zynga’s infringement.
`
`13.
`
`Chartboost, Zynga’s subsidiary, also uses IBM’s patents without a license. In 2021,
`
`IBM twice contacted Chartboost to inform them of its infringement of IBM’s patents through its
`
`advertising campaign platform. IBM told Chartboost that it was ready to discuss the detailed
`
`evidence of Chartboost’s infringement and a possible resolution of these issues. After a months-
`
`long delay with no reply, Chartboost responded in August 2021 to say that now that Zynga
`
`acquired Chartboost, Zynga would handle all discussions with IBM regarding Chartboost and its
`
`infringing activities. But Zynga never resolved Chartboost’s continued unlicensed use of IBM’s
`
`patents.
`
`5
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 6 of 63 PageID #: 6
`
`14.
`
`After almost eight years without meaningful progress toward a resolution, IBM has
`
`brought this lawsuit to address Zynga and Chartboost’s unauthorized use of IBM’s patented
`
`technology.
`
`NATURE OF THE CASE
`
`15.
`
`This action arises under 35 U.S.C. § 271 for Zynga, Inc.’s infringement of IBM’s
`
`United States Patent Nos. 7,072,849 (the “’849 patent”), 7,631,346 (the “’346 patent”), and
`
`7,702,719 (the “’719 patent”), and Chartboost, Inc.’s infringement of the ’849 patent and
`
`8,315,904 (the “’904 patent”) (collectively the “Patents-In-Suit”).
`
`THE PARTIES
`
`16.
`
`Plaintiff IBM is a New York corporation, with its principal place of business at 1
`
`New Orchard Road, Armonk, New York 10504.
`
`17.
`
`Defendant Zynga, Inc. is a Delaware corporation, with its principal place of
`
`business at 699 Eighth Street, San Francisco, California, 94103. Zynga, Inc. is the parent company
`
`to Chartboost, Inc.
`
`18.
`
`Defendant Chartboost, Inc. is a Delaware corporation with its principal place of
`
`business at One Sansome Street, Floor 21, San Francisco, California, 94104.
`
`JURISDICTION AND VENUE
`
`IBM incorporates by reference paragraphs 1–18.
`
`This action arises under the patent laws of the United States, including 35 U.S.C.
`
`19.
`
`20.
`
`§ 271 et seq. The jurisdiction of this Court over the subject matter of this action is proper under
`
`28 U.S.C. §§ 1331 and 1338(a).
`
`21.
`
`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b).
`
`Zynga, Inc. and Chartboost, Inc. are entities organized under the laws of Delaware and reside in
`
`Delaware for purposes of venue under 28 U.S.C. § 1400(b). Additionally, Zynga, Inc. and
`
`6
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 7 of 63 PageID #: 7
`
`Chartboost, Inc. conduct business in Delaware, at least by offering for sale and selling products
`
`and services through its websites and mobile applications, which are accessible in Delaware.
`
`Infringement by Zynga, Inc. and Chartboost, Inc. has occurred and continues to occur in Delaware.
`
`22.
`
`Personal jurisdiction exists over Zynga, Inc. and Chartboost, Inc. because those
`
`entities conduct business in Delaware, at least by offering for sale and selling products and services
`
`through its websites and mobile applications, which are accessible in Delaware, and because
`
`infringement has occurred and continues to occur in Delaware. Personal jurisdiction also exists
`
`over Zynga, Inc. and Chartboost, Inc. because they are entities organized under the laws of
`
`Delaware.
`
`A.
`
`IBM Is A Recognized Innovator.
`
`FACTUAL BACKGROUND
`
`23.
`
`IBM is a worldwide pioneer in various sectors of science and technology. During
`
`IBM’s over 100-year history, IBM’s employees have included six Nobel laureates, six Turing
`
`Awards laureates, five National Medal of Science recipients, and fifteen inventors in the National
`
`Inventors Hall of Fame. IBM has been awarded the U.S. National Medal of Technology more
`
`times than any other company or organization—the U.S. National Medal of Technology is the
`
`nation’s highest award for technological innovation. Recent IBM-affiliated awardees include:
`
`Richard L. Garwin, winner of the National Medal of Science in 2002 in recognition of his role in
`
`the development of magnetic resonance imaging technology, laser printers, touch-screen monitors,
`
`and other technologies; Frances E. Allen, winner the Turing Award in 2006 in recognition of her
`
`role in compiler research and data flow optimization; Daniel Lewin, a former IBM researcher who
`
`went on to found Akamai Technologies, who was inducted into the National Inventors Hall of
`
`Fame in 2017 for his development of algorithms to efficiently deliver content over a network of
`
`distributed servers, which led to modern content delivery networks; and Chieko Asakawa, an IBM
`
`7
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 8 of 63 PageID #: 8
`
`researcher who was inducted into the National Inventors Hall of Fame in 2019 in recognition of
`
`her invention of the Home Page Reader, the first practical voice browser to provide effective
`
`Internet access for the visually impaired.
`
`24.
`
`IBM has been awarded the National Medal of Technology and Innovation (NMTI)
`
`more times than any other company or organization. The NMTI is the nation’s highest honor for
`
`technological achievement, bestowed by the president of the United States on America’s leading
`
`innovators. IBM was awarded the NMTI for its Blue Gene supercomputer in 2008. IBM
`
`employees are responsible for technological advances that have become foundational technology
`
`that is widely incorporated into use by the global community today. Such technological advances
`
`include the dynamic random access memory (DRAMs) found in nearly all modern computers; the
`
`magnetic disk storage (hard disk drives) found in computers and portable music players; and some
`
`of the world’s most powerful supercomputers, including Deep Blue (the first computer to beat a
`
`reigning chess champion, Garry Kasparov), Watson (the system that combined content analysis,
`
`natural language processing, information retrieval, and machine learning to beat two of
`
`Jeopardy!’s greatest human champions), and Summit (the world’s fastest supercomputer when
`
`delivered to Oak Ridge National Laboratory in 2018 that has been employed to tackle society’s
`
`largest problems from the opioid crisis to COVID-19). In 2021, IBM announced two major
`
`breakthroughs in semiconductor design: the world’s first 2-nanometer chip technology, fitting 50
`
`billion transistors on a chip the size of a fingernail; and a new approach to semiconductor design
`
`called “Vertical-Transport Nanosheet Field Effect Transistor” which could help the semiconductor
`
`industry to significantly reduce the energy needed to perform intensive workloads while
`
`continuing to pack even more transistors into a fixed space. These breakthroughs promise
`
`8
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 9 of 63 PageID #: 9
`
`significant improvements in cell phone batteries, energy savings in data encryption and crypto-
`
`mining operations, and continued expansion of Internet of Things (IoT).
`
`25.
`
`In addition, IBM continues to lead the development of next-generation
`
`technologies, including quantum computing technology, with products and services such as Qiskit
`
`(the industry leading, open-source software development platform for working with quantum
`
`computers), Eagle (the first quantum processor to break the 100-qubit barrier unveiled in 2021),
`
`and the Quantum Composer (a cloud-based, user-friendly graphical programming tool for building
`
`quantum circuits that are then run on real quantum hardware or simulators). Technology evolves
`
`quickly and the nature of research and development ambitiously seeks out new discoveries. The
`
`inventions that IBM unearths today lay the groundwork for tomorrow’s technology.
`
`B.
`
`IBM Is Committed To Protecting Its Innovations Through The Patent System.
`
`26.
`
`IBM’s research and development operations differentiate IBM from many other
`
`companies. IBM annually spends billions of dollars on research and development. In addition to
`
`yielding inventions that have literally changed the way in which the world works, IBM’s research
`
`and development efforts have resulted in more than 80,000 patents worldwide.
`
`27.
`
`Like the research upon which the patents are based, IBM’s patents also benefit
`
`society. Indeed, the Supreme Court has recognized that the patent system encourages both the
`
`creation and the disclosure of new and useful advances in technology. Such disclosure, in turn,
`
`permits society to innovate further. And, as the Court has further recognized, as a reward for
`
`committing resources to innovation and for disclosing that innovation, the patent system provides
`
`patent owners with the exclusive right to prevent others from practicing the claimed invention for
`
`a limited period of time.
`
`9
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 10 of 63 PageID #: 10
`
`C.
`
`IBM Routinely Licenses Its Patents In Many Fields But Will Enforce Its Rights
`Against Those Who Use Its Intellectual Property Unlawfully.
`
`28.
`
`IBM’s commitment to creating a large patent portfolio underscores the value that
`
`IBM places in the exchange of innovation, and disclosure of that innovation, in return for limited
`
`exclusivity. Indeed, IBM has used its patent portfolio to generate revenue and other significant
`
`value for the company by executing patent cross-license agreements. The revenue generated
`
`through patent licensing enables IBM to continue to commit resources to innovation. Cross
`
`licensing, in turn, provides IBM with the freedom to innovate and operate in a manner that respects
`
`the technology of others.
`
`29.
`
`Given the investment IBM makes in the development of new technologies and the
`
`management of its patent portfolio, IBM and its shareholders expect companies to act responsibly
`
`with respect to IBM’s patents. IBM facilitates this by routinely licensing its patents in many fields
`
`and by working with companies that wish to use IBM’s technology in those fields in which IBM
`
`grants licenses. When a company appropriates IBM’s intellectual property but refuses to negotiate
`
`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.
`
`30.
`
`The inventors of the ’849 patent developed the patented technologies as part of
`
`IBM’s efforts to launch the PRODIGY online service (“Prodigy”), a forerunner to today’s Internet,
`
`in the late 1980s. The inventors believed that to be commercially viable, Prodigy would have to
`
`provide interactive applications to millions of users with minimal response times. The inventors
`
`believed that the “dumb” terminal approach that had been commonly used in conventional
`
`systems, which heavily relied on host servers’ processing and storage resources for performance,
`
`would not be suitable. As a result, the inventors sought to develop more efficient methods of
`
`10
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 11 of 63 PageID #: 11
`
`communication that would improve the speed and functionality of interactive applications and
`
`reduce equipment capital and operating costs.
`
`31.
`
`In light of the above considerations, the inventors developed novel methods for
`
`presenting applications and advertisements in an interactive service that would take advantage of
`
`the computing power of each user’s personal computer (PC) and thereby reduce demand on host
`
`servers, such as those used by Prodigy. The inventors recognized that if applications were
`
`structured to be comprised of “objects” of data and program code capable of being processed by a
`
`user’s PC, the Prodigy system would be more efficient than conventional systems. By harnessing
`
`the processing and storage capabilities of the user’s PC, applications could then be composed on
`
`the fly from objects stored locally on the PC, reducing reliance on Prodigy’s server and network
`
`resources.
`
`32.
`
`The service that would eventually be called Prodigy embodied inventions from the
`
`’849 patent when it launched in late 1988, before the existence of the World Wide Web. The
`
`efficiencies derived from the use of the patented technology permitted the implementation of one
`
`of the first graphical user interfaces for online services. The efficiencies also allowed Prodigy to
`
`quickly grow its user base. By 1990, Prodigy had become one of the largest online service
`
`providers with hundreds of thousands of users. Prodigy was widely praised in the industry and is
`
`still held up as an example of innovation in computer networks that predated even the advent of
`
`the World Wide Web. The technological innovations embodied in this patent persist to this day
`
`and are fundamental to the efficient communication of Internet content.
`
`33.
`
`Today, it is easy to take the World Wide Web, powerful computers, and high-speed
`
`network connectivity for granted. Not so in 1988, when the first application in the ’849 patent’s
`
`priority chain was filed. The World Wide Web had not even been conceived yet. Typical PCs at
`
`11
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 12 of 63 PageID #: 12
`
`the time had “512K RAM”—not 512 megabytes or gigabytes of RAM, but 512 kilobytes. ’849
`
`patent at 9:16–18. The ’849 patent also describes the use of 1,200 to 2,400 bps (bits per second)
`
`modems to access a network—a far cry from today’s high-speed internet. Id. at 9:18–20.
`
`34.
`
`The limited processing power and network bandwidth available in 1988 posed
`
`significant technical obstacles to the development and adoption of network-based interactive
`
`services, in which many users may access interactive services provided by a host. Id. at 1:34–58.
`
`Accordingly, the ’849 patent specifically identifies slowdowns in network response time caused
`
`by processing bottlenecks at the host as a problem to be solved:
`
`[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.
`
`As the ’849 patent also explains, simply increasing computing capacity to the hosts
`
`is not enough to fix the bottleneck problem. “[E]ven in the case where additional computing power
`
`is added, and where response time is allowed to increase, eventually the host becomes user
`
`saturated as more and more users are sought to be served by the network.” Id. at 10:58–61. In
`
`other words, even a host with additional computing capacity would still have limits on how many
`
`users it could support in conventional approaches.
`
`36.
`
`Conventional approaches
`
`to providing advertising
`
`in
`
`interactive services
`
`exacerbated the bottleneck problem, as advertising had to compete with service application data
`
`for limited network bandwidth. Id. at 2:20–30. That competition between advertising and service
`
`application data had “the undesirable effect of diminishing service response time.” Id. at 2:25–26.
`
`12
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 13 of 63 PageID #: 13
`
`37.
`
`The bottleneck problem arises from the limitations of networks that rely exclusively
`
`on central hosts to satisfy users’ data processing requests and the limited network bandwidth
`
`available at the time of the invention. Accordingly, the bottleneck problem addressed by the ’849
`
`patent is a “technical problem.”
`
`38.
`
`Before this suit, the ’849 patent had been challenged three times on grounds of
`
`alleged patent ineligibility. Those challenges were all unsuccessful. In the matter of IBM v. The
`
`Priceline Grp., Inc., C.A. No. 15-137 (D. Del.), the defendants (collectively “Priceline”) filed a
`
`motion to dismiss, alleging that the ’849 patent was directed to unpatentable subject matter. The
`
`Delaware court denied Priceline’s motion, finding that “Defendants have failed to meet their
`
`burden of demonstrating that . . . claim 1 of the ’849 patent [is] devoid of inventive concepts.”
`
`IBM v. The Priceline Grp., Inc., 2016 WL 626495, at *24 (D. Del. Feb. 16, 2016).
`
`39.
`
`In the matter of Kayak Software Corp. v. IBM., CBM2016-00075, Priceline again
`
`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
`
`challenge. The PTAB “agree[d] with Patent Owner the disclosure of the ’849 patent itself is almost
`
`exclusively directed to solving a problem arising in computer technology (i.e., bandwidth) with a
`
`computerized solution (i.e., local storage).” Kayak Software Corp. v. IBM., CBM2016-00075,
`
`Paper 16 (PTAB Dec. 15, 2016) at 19. The PTAB thus concluded, “Petitioner has not shown
`
`sufficiently that independent claims 1 and 21 are directed to an unpatentable ‘abstract idea’ . . . .”
`
`Id. at 20.
`
`40.
`
`Although the parties filed other summary judgment motions in the Priceline case,
`
`Priceline chose not to file a summary judgment motion to challenge the patent eligibility of the
`
`’849 patent.
`
`13
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 14 of 63 PageID #: 14
`
`41.
`
`In the matter of IBM v. Groupon, Inc., C.A. No. 16-122 (D. Del.), Groupon, Inc.
`
`(“Groupon”) moved for judgment on the pleadings that the ’849 patent was directed to ineligible
`
`subject matter. The court denied Groupon’s motion, finding that “the asserted claims of the Filepp
`
`patents are not directed to an abstract idea and are directed to patent-eligible subject 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
`
`IBM’s efforts to improve single-sign-on technology. Online service providers, like website
`
`operators, typically use “sign-on” operations to manage access to protected resources, like
`
`confidential webpages. ’346 patent at 6:26–30. A user signs-on by providing authentication
`
`credentials, such as a username and password, which the service provider verifies to authenticate
`
`the user’s identity. Id. at 6:31–36. Then, the service provider can determine whether the identified
`
`user has authorization to access the protected resource and, if so, grants access. Id. at 6:37–43,
`
`Fig. 1C. Although that process has become commonplace, it is time consuming for users to sign-
`
`on every time they wish to access a protected resource. Id. at 1:25–33.
`
`43.
`
`One way to address the shortcomings of repetitive sign-on operations is to
`
`authenticate users for an entire “session,” i.e., a series of multiple transfers of information between
`
`the server and the client. Id. at 1:53–61, 6:17–22. That technology is called single-sign-on because
`
`users are only required to sign-on once per session. Id. at 1:53–61. For example, users could enter
`
`a user name and password on the homepage of a service provider and request multiple protected
`
`webpages without reentering their credentials. But prior art single-sign-on methods were
`
`problematic because they required users to have preexisting user accounts at the service provider.
`
`Id. at 2:19–42.
`
`14
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 15 of 63 PageID #: 15
`
`44.
`
`As Dr. Heather Hinton, first named inventor of the ’346 patent, testified in prior
`
`proceedings, prior art systems could not take advantage of the full benefits of single-sign-on
`
`because of this fundamental problem.
`
`45.
`
`The inventors of the ’346 patent sought to develop single-sign-on technology that
`
`would permit a new user of a service provider to access protected resources. They developed novel
`
`methods for systems interacting within a “federated computing environment” to trigger a single-
`
`sign-on operation on behalf of a user that would obtain access to a “protected resource” and create
`
`an account for the user. The specification discloses how to structure a “federated computing
`
`environment” using a nonconventional arrangement of computer components. Id. at 10:62–11:7,
`
`11:28–35. The specification describes a “protective resource” using precise technical terms that
`
`demonstrate “how” to solve the limitations of prior art single-sign-on operations. Id. at 5:60–67,
`
`6:26–30, 8:45–48, 11:28–35. And it specifies the “ordered combination” of technical steps
`
`necessary to implement the claimed embodiments. See, e.g., id. at Figs. 9, 11.
`
`46.
`
`One implementation of the ’346 patent involves using “tokens” to facilitate such
`
`interactions. “A token provides direct evidence of a successful operation and is produced by the
`
`entity that performs the operation, e.g., an authentication token that is generated after a successful
`
`authentication operation. A Kerberos token is one example of an authentication token that may be
`
`used with the present invention.” Id. at 8:49–54. Such binary security tokens can implement web
`
`services message-level security. When a user accesses a service provider and signs into the identity
`
`provider via single-sign-on operations, the identity provider authenticates the user. The identity
`
`provider provides a token to the service provider “to provide proof of authentication of a user.”
`
`Id. at 22:15–19. The service provider would in turn, “translate” the identity provider’s token into
`
`a “locally valid user identifier . . . based on information contained in the [] token” in order to “build
`
`15
`
`
`
`Case 1:22-cv-00590-UNA Document 1 Filed 05/02/22 Page 16 of 63 PageID #: 16
`
`a local session for the user.” Id. at 24:16–25:3. After the user has been found to be authenticated
`
`by the identity provider, the system provider can then create an account for the user at the service
`
`provider, thus bypassing any requirement for the user to directly create an account at the service
`
`provider. The ’346 patent thus extends the benefits of single-sign-on technology to allow the user
`
`to access protected resources at any number of service providers without having to first set up a
`
`user account.
`
`47.
`
`The ’346 patent had been unsuccessfully challenged on grounds of alleged patent
`
`ineligibility. In the matter of IBM v. The Priceline Grp., Inc., C.A. No. 15-137 (D. Del.), Priceline
`
`filed a motion to dismiss, alleging that the ’346 patent was directed to unpatentable subject matter.
`
`The Delaware court denied the motion, finding the patent was not directed to an abstract idea:
`
`“[T]he true heart of the invention is the utilization of SSO technology to automatically create an
`
`acco