Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JPMORGAN CHASE BANK, N.A.,
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-01331
`Patent 6,993,658 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`LYNNE H. BROWNE, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: January 19, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JPMORGAN CHASE BANK, N.A.,
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-01331
`Patent 6,993,658 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, KRISTEN L. DROESCH, and
`LYNNE H. BROWNE, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
`
`
`
`
`IPR2023-01331
`Patent 6,993,658 B2
`
`INTRODUCTION
`
`I.
`Background
`A.
`On August 16, 2023, JPMorgan Chase Bank, N.A. (“Petitioner”) filed
`a Petition (Paper 1, “Pet.” or “Petition”) requesting an inter partes review of
`claims 1 and 3–6 of U.S. Patent No. 6,993,658 (Ex. 1001, “the ’658 patent”).
`Concurrently, Petitioner filed a Motion for Joinder seeking to be joined as a
`party to Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-
`00425 (“the Unified Patents IPR”). Paper 2 (“Mot.”). Dynapass IP
`Holdings, LLC (“Patent Owner”) has not filed a Preliminary Response to the
`Petition. We have authority and jurisdiction under 35 U.S.C. §§ 6, 314 and
`37 C.F.R. § 42.4.
`For the reasons discussed below, we determine institution of inter
`partes review is warranted on the same grounds instituted in the Unified
`Patents IPR, and grant Petitioner’s Motion for Joinder.
`Real Parties in Interest
`B.
`Petitioner identifies itself as the real party-in-interest in this
`proceeding. Pet. 76. Patent Owner identifies itself as the real party-in-
`interest. Paper 5, 1.
`Related Matters
`C.
`The parties identify Dynapass IP Holdings LLC v. JPMorgan Chase
`& Co., JPMorgan Chase Bank, National Association, and Chase Bank USA
`National Association, 2:22-cv-00212 (EDTX 6-17-2022), Dynapass IP
`Holdings LLC v. Bank of America Corporation, 2:22-cv-00210 (EDTX 6-
`17-2022), Dynapass IP Holdings LLC v. BOKF, National Association, 2:22-
`cv-00211 (EDTX 6-17-2022), Dynapass IP Holdings LLC v. PlainsCapital
`Bank, 2:22-cv-00213 (EDTX 6-17-2022), Dynapass IP Holdings LLC
`v. PNC Financial Services, 2:22-cv-00214 (EDTX 6-17-2022), Dynapass IP
`
`2
`
`
`
`IPR2023-01331
`Patent 6,993,658 B2
`Holdings LLC v. Regions Financial Corporation, 2:22-cv-00215 (EDTX 6-
`17-2022), Dynapass IP Holdings LLC v. Truist Financial Corporation, 2:22-
`cv-00216 (EDTX 6-17-2022), Dynapass IP Holdings LLC v. Wells Fargo &
`Company, 2:22-cv-00217 (EDTX 6-17-2022), Dynapass IP Holdings LLC
`v. Woodforest National Bank, 2:22-cv-00218 (EDTX 6-17-2022), Dynapass
`Inc. v. Mobile Authentication Corporation, 8:18-cv-01173 (CDCA 7-3-
`2018), Dynapass IP Holdings LLC v. Amazon.com, Inc., 2:23-cv-00063
`(EDTX 2-20-2023), Dynapass IP Holdings LLC v. The Charles Schwab
`Corporation et al., 2:23-cv-00064 (EDTX 2-20-2023), Dynapass IP
`Holdings LLC v. East West Bancorp, Inc. et al., 2:23- cv-00065 (EDTX 2-
`20-2023) (voluntarily dismissed), Dynapass IP Holdings LLC v. Experian
`Information Services, Inc., 2:23-cv-00066 (EDTX 2-20-2023), Dynapass IP
`Holdings LLC v. First Citizens Bancshares, Inc. et al., 2:23-cv-00067
`(EDTX 2-20-2023) (voluntarily dismissed), and Dynapass IP Holdings LLC
`v. Simmons First National Corporation et al., 2:23-cv-00068 (EDTX 2-20-
`2023) as civil litigations involving the ’658 patent. Pet. 76–77; Paper 5, 1–
`3.
`
`The parties also identify Unified Patents, LLC v. Dynapass IP
`Holdings LLC, IPR2023-00425 (PTAB) as a proceeding involving the ’658
`patent. Pet. 78; Paper 5, 3. Petitioner also identifies Bank of America, N.A.
`et al. v. Dynapass IP Holdings, IPR2023-00367 (PTAB) (denied) as a
`proceeding involving the ’658 patent. Pet. 78.
`The ’658 patent
`D.
`The ’658 patent is titled “Use of Personal Communication Devices
`For User Authentication.” Ex. 1001, code (54). The invention “relates
`generally to the authentication of users of secure systems and, more
`particularly, the invention relates to a system through which user tokens
`
`3
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`IPR2023-01331
`Patent 6,993,658 B2
`required for user authentication are supplied through personal
`communication devices such as mobile telephones and pagers.” Id. at
`1:7–11.
`One embodiment of the invention provides a password setting system
`that includes a user token server and a communication module wherein a
`user token server generates a random token in response to a request for a
`new password from a user. Ex. 1001, 1:63–2:2. “The server creates a new
`password by concatenating a secret passcode that is known to the user with
`the token” and “sets the password associated with the user’s user ID to be
`the new password.” Id. at 2:2–6. A “communication module transmits the
`token to a personal communication device, such as a mobile phone or a
`pager carried by the user.” Id. at 2:6–8. Then, the user concatenates the
`secret passcode with the received token in order to form a valid password,
`which the user submits to gain access to the secure system. Id. at 2:8–11.
`Figure, reproduced below, “illustrates an overview, including system
`components, of a user authentication system 100 according to a preferred
`embodiment of the present invention.” Ex. 1001, 4:2–4.
`
`
`4
`
`
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`IPR2023-01331
`Patent 6,993,658 B2
`
`
`
`User authentication system 100 includes authentication Server 102, text
`messaging Service provider 104, personal communication device 106 carried
`by user 108, and secure system 110 to which the authentication system 100
`regulates access. Id. at 4:9–13. “[P]ersonal communication device 106 is
`preferably a pager or a mobile phone having SMS (short message Service)
`receive capability.” Id. at 4:13–15. Secure system 110 can be “any system,
`device, account, or area to which it is desired to limit access to authenticated
`users.” Id. at 4:18–20.
`User authentication server 102 is configured to require that user 108
`supply authentication information through secure system 110 in order to
`gain access to secure system 110. Ex. 1001, 4:32–35. Authentication
`information provided by the user includes user ID 152, passcode 154 and
`user token 156. Id. at 4:36–37. User ID 152 may be publicly known and
`used to identify the user and passcode 154 is secret and only known to the
`
`5
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`IPR2023-01331
`Patent 6,993,658 B2
`user 108, whereas token 156 is provided only to user 108 by user
`authentication server 102 through personal communication device 106. Id.
`at 4:39–44. To gain access to secure system 100, user 108 combines token
`156 with passcode 154 to form password 158. Id. at 4:52–53. Thus, user
`108 needs to have personal communication device 106 in order to gain
`access to secure system 110. Id. at 4:46–48. Further, token 156 has a
`limited lifespan, such as 1 minute or 1 day. Id. at 4:44–45.
`Illustrative Claim
`E.
`Independent challenged claim 1 is reproduced below:
`1. A method of authenticating a user on a first secure
`computer network, the user having a user account on said first
`secure computer network, the method comprising:
`associating the user with a personal communication device
`possessed by the user, said personal communication device in
`communication over a second network, wherein said second
`network is a cell phone network different from the first secure
`computer network;
`receiving a request from the user for a token via the personal
`communication device, over the second network;
`generating a new password for said first secure computer
`network based at least upon the token and a passcode, wherein
`the token is not known to the user and wherein the passcode is
`known to the user;
`setting a password associated with the user to be the new
`password;
`activating access the user account on the first secure computer
`network;
`transmitting the token to the personal communication device;
`receiving the password from the user via the first secure
`computer network; and
`
`6
`
`
`
`IPR2023-01331
`Patent 6,993,658 B2
`deactivating access to the user account on the first secure
`computer network within a predetermined amount of time after
`said activating, such that said user account is not accessible
`through any password, via said first secure computer network.
`Ex. 1001, 11:43–12:13.
`Asserted Grounds of Unpatentability
`F.
`Petitioner asserts the following grounds of unpatentability:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`5
`103
`Veneklase,1 Jonsson2
`1, 3–6
`103
`Kew, 3 Sormunen4
`Pet. 2.
`
`II. ANALYSIS
`Institution of Inter Partes Review
`A.
`Petitioner asserts that the Petition “is substantively identical to the
`petition in the Unified Patents IPR—challenging the same claims of the ’658
`Patent on the same grounds while relying on the same prior art, arguments,
`and evidence.” Mot. 1. Based on our independent review of the Petition,
`the petition filed in the Unified Patents IPR, and the evidence relied on in
`both petitions, we agree with Petitioner. Compare Pet. 1–76, with Unified
`Patents IPR, Paper 1 at 1–79.
`We instituted inter partes review of claims 1 and 3–6 of the ’658
`patent based on the petition filed in the Unified Patents IPR on July 18,
`2023.
`
`
`1 EP 844,551 A2, published May 27, 1998 (Ex. 1005).
`2 WO 96/00485, published January 4, 1996 (Ex. 1006).
`3 WO 95/19593, published July 20, 1995 (Ex. 1007).
`4 WO 97/31306, published August 28, 1997 (Ex. 1008).
`
`7
`
`
`
`IPR2023-01331
`Patent 6,993,658 B2
`For the same reasons discussed in our Decision on Institution in the
`Unified Patents IPR, we find Petitioner has demonstrated a reasonable
`likelihood of showing at least one claim of the ’658 patent is unpatentable.
`We, therefore, find that the instant Petition warrants institution of inter
`partes review of all challenged claims on all grounds raised.
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which states:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`Procedurally, a motion for joinder must be filed “no later than one
`month after the institution date of any inter partes review for which joinder
`is requested.” 37 C.F.R. § 42.122(b) (2019). Petitioner filed its Motion for
`Joinder on August 16, 2023, one month after our July 18, 2023 decision
`granting review of the challenged claims in the Unified Patents IPR that
`Petitioner seeks to join. Mot. 6; Unified Patents IPR, Paper 9.
`To ensure the just, speedy, and inexpensive resolution of every
`proceeding, a motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`
`8
`
`
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`IPR2023-01331
`Patent 6,993,658 B2
`Petitioner argues joinder is appropriate in this proceeding because the
`Petition “is substantively identical to the petition in the Unified Patents IPR
`with respect to the asserted grounds, are based on the same prior art
`combinations and supporting evidence, and asserted against the same
`claims.” Mot. 1. According to Petitioner, “[t]he only differences between
`JPMorgan’s Petition and the Unified Patents Petition are the sections on
`Real Party-In-Interest, Related Matters, Counsel, Service Information, and
`Discretionary Institution, which have been appropriately updated.” Id. at 6–
`7 (citing Ex. 1017).
`Petitioner asserts that if joinder is granted it “agrees to an ‘understudy
`role’ and will not assume an active role unless Unified Patents ceases to
`actively prosecute the Unified Patents IPR.” Mot. 1. Petitioner asserts
`further that “[j]oinder will not unduly complicate the Unified Patents IPR
`nor adversely impact its schedule, and instead will promote judicial
`efficiency in determining the patentability of the ’658 Patent.” Id. at 1–2. In
`addition, Petitioner asserts that “[j]oinder of JPMorgan to the Unified
`Patents IPR will not create any additional burden on the Patent Owner. The
`Patent Owner need not expend any additional resources above and beyond
`those required in the current Unified Patents IPR.” Id. at 10.
`Upon considering Petitioner’s arguments and the evidence presented,
`we are persuaded that it is appropriate under these circumstances to join
`Petitioner to the Unified Patents IPR. Petitioner challenges the same claims
`that are challenged in the Unified Patents IPR on the same grounds using the
`same prior art and evidence. See Pet. 1–76. Petitioner asserts it will take an
`“understudy” role in the Unified Patents IPR and only assume a primary role
`should Unified Patents cease participation in the Unified Patents IPR. See
`Mot. 1. Thus, joinder to the Unified Patents IPR would result in the just,
`
`9
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`
`
`IPR2023-01331
`Patent 6,993,658 B2
`speedy, and inexpensive resolution of Petitioner’s challenge. See 37 C.F.R.
`§ 42.1(b).
`Accordingly, for the reasons discussed above, we grant Petitioner’s
`Motion for Joinder and join Petitioner to the Unified Patents IPR.
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1 and 3–6 of the ’658 patent is hereby instituted on the
`grounds presented in the Petition; and
`FURTHER ORDERED that the Motion for Joinder with IPR2023-
`00425 is granted, and Petitioner is joined as a petitioner to IPR2023-00425;
`FURTHER ORDERED that Petitioner’s role in IPR2023-00425 shall
`be limited as stated by Petitioner in the Motion for Joinder unless and until
`Unified Patents ceases to participate in IPR2023-00425;
`FURTHER ORDERED that the case caption in IPR2023-00425 shall
`be changed to reflect joinder of JPMorgan Chase Bank, N.A. as a petitioner
`in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2023-00425.
`
`
`
`
`
`
`
`10
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`
`IPR2023-01331
`Patent 6,993,658 B2
`FOR PETITIONER:
`How-Ying Liou
`Vishal Khatri
`Matthew Johnson
`Evan Tassis
`JONES DAY
`aliou@jonesday.com
`vkhatri@jonesday.com
`mwjohnson@jonesday.com
`etassis@jonesday.com
`
`FOR PATENT OWNER:
`John Wittenzellner
`Todd E. Landis
`Michael J. Fagan, Jr.
`Mark McCarthy
`WILLIAMS SIMONS & LANDIS PLLC
`johnw@wsltrial.com
`tlandis@wsltrial.com
`mfagan@wsltrial.com
`mmccarthy@wsltrial.com
`IPRDYNAPASSWSL@wsltrial.com
`
`
`
`
`
`
`
`
`
`
`11
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`
`
`IPR2023-01331
`Patent 6,993,658 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`IPR2023-004251
`Patent 6,993,658 B1
`
`
`
`
`
`
`
`
`
`
`
`
`1 JPMorgan Chase Bank N.A. was joined as a party to this proceeding via
`Motion for Joinder in IPR2023-01331.
`
`12
`
`
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