International Business Machines Corporation v. ZILLOW GROUP, INC., ZILLOW, INC., Cross-Appellants 2024-1170, 2024-1274 Appeals…

United States Court of Appeals
for the Federal Circuit
______________________
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Appellant
v.
ZILLOW GROUP, INC., ZILLOW, INC.,
Cross-Appellants
______________________
2024-1170, 2024-1274
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2022-
00646, IPR2023-00259.
______________________
Decided: December 9, 2025
______________________
K ARIM ZEDDAM O USSAYEF , Desmarais LLP, New York,
NY, argued for appellant. Also represented by T AEG SANG
CHO, YUNG-H OON HA; ADAM STEINMETZ, Washington, DC.
SHAWN D ANIEL BLACKBURN, Susman Godfrey LLP,
Houston, TX, argued for cross-appellants. Also repre-
sented by MENG XI; I AN B. CROSBY , STEVEN M. SEIGEL , Se-
attle, WA.
______________________
Before T ARANTO, CHEN, and STOLL , Circuit Judges.
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IBM v. ZILLOW GROUP, INC. 2
CHEN, Circuit Judge.
International Business Machines Corporation (IBM)
appeals from a Patent Trial and Appeal Board (Board) de-
cision holding claims 1–4, 12–16, and 18–19 in U.S. Patent
No. 7,631,346 (’346 patent) unpatentable. See Ebates Per-
formance Mktg., Inc. v. Int’l Bus. Machs. Corp., No.
IPR2022-00646, 2023 WL 7358027, at *1 (P.T.A.B. Oct. 11,
2023) (Decision). Zillow Group, Inc. and Zillow, Inc. (col-
lectively, Zillow) cross-appeal the Board’s decision holding
claims 5–11, 17, and 20 not unpatentable. Id. We affirm
both the appeal and cross-appeal.
BACKGROUND
I. Technical Background
A. ’346 Patent
IBM’s ’346 patent relates to systems and methods for
single sign-on (SSO) operations. See ’346 patent at Ab-
stract; id. at claim 1. SSO allows a user to create (and,
subsequently, log into) several accounts using only a single
set of login credentials. See Appellant’s Opening Br. 3;
Cross-Appellant’s Opening & Resp. Br. 7.
Consider a hypothetical example, taken from IBM’s
principal brief, to better understand the claimed invention.
See Appellant’s Opening Br. 3. A user might first log into
a social media website using her user identification and
password. Now, imagine that same user wishes to access
discounts for medication on the website of a third-party
healthcare provider, but cannot, because the healthcare
provider only allows authenticated users (i.e., users with
an account on the healthcare provider website) to access
such discounts. SSO allows the healthcare provider to
honor the user’s authentication at the social media website,
without requiring the user to separately authenticate with
the healthcare provider; it saves the user from having to
create separate authentication credentials for every web-
site.
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IBM v. ZILLOW GROUP, INC. 3
The ’346 patent uses the terms “first system,” “second
system,” “protected resources,” and “fourth system,” when
describing the claimed invention. E.g., ’346 patent at
claims 1, 14. “First system” refers to the entity performing
the initial authentication (e.g., the social media site in the
above example). Appellant’s Opening Br. 5; see ’346 patent
at claim 1. “Second system” corresponds to the entity
which the user desires to access (e.g., the healthcare pro-
vider in the above example). Appellant’s Opening Br. 6; see
’346 patent at claim 1. “Protected resources” refers to the
access-restricted content managed by the second system.
See ’346 patent col. 6 ll. 26–30. Finally, the “fourth system”
refers to the user’s computer itself. Decision, 2023 WL
7358027, at *19.
Claim 1, representative for IBM’s appeal, recites:
1. A method for managing user authentication
within a distributed data processing system,
wherein a first system and a second system inter-
act within a federated computing environment and
support single-sign-on operations in order to pro-
vide access to protected resources, at least one of the
first system and the second system comprising a
processor, the method comprising[:]
triggering a single-sign-on operation on be-
half of the user in order to obtain access to
a protected resource that is hosted by the
second system, wherein the second system
requires a user account for the user to com-
plete the single-sign-on operation prior to
providing access to the protected resource;
receiving from the first system at the second
system an identifier associated with the
user; and
creating a user account for the user at the
second system based at least in part on the
received identifier associated with the user
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IBM v. ZILLOW GROUP, INC. 4
after triggering the single-sign-on opera-
tion but before generating at the second
system a response for accessing the pro-
tected resource, wherein the created user
account supports single-sign-on operations
between the first system and the second
system on behalf of the user.
’346 patent at claim 1 (emphases added). In plain English:
where a platform (the “second system”) contains access-re-
stricted content (“protected resources”), use a unique iden-
tifier (already stored within the “first system”) to create an
account on the platform.
Claim 5, representative for Zillow’s cross-appeal, re-
cites:
5. The method of claim 1 further comprising:
in response to a determination at the second
system that the second system does not have
sufficient user attribute information to com-
plete creation of a user account for the user
at the second system, sending a request
message from the second system to the first
system to retrieve user attribute infor-
mation; and
receiving at the second system from the
first system a response message that con-
tains user attribute information that is em-
ployed by the second system to complete
creation of a user account for the user at
the second system.
’346 patent at claim 5 (emphases added).
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IBM v. ZILLOW GROUP, INC. 5
B. Prior Art
These appeals turn on a single prior art reference,
Sunada.1 Sunada discloses a “Network Apparatus and Au-
thentication Server.” J.A. 1914. Much like the ’346 patent,
Sunada’s server allows a user to create an account on a
third-party website by using information already stored
elsewhere. See id.
II. Procedural Background
A. Rakuten’s Petition
Ebates Performance Marketing, Inc., doing business as
Rakuten Rewards (Rakuten), petitioned for inter partes re-
view of the ’346 patent. See J.A. 108. It raised a single
anticipation challenge under § 102 and three obviousness
challenges under § 103.
Sunada features prominently in Rakuten’s § 102 and
§ 103 challenges.2 See id. at 136–78. Relevant to IBM’s
appeal, each of Rakuten’s obviousness theories alleged that
Sunada “discloses” “protected resources,” see id. at 142–43,
164, and that Sunada “discloses” “receiving . . . an identi-
fier associated with the user,” see id. at 147, 165. Sunada
also played a role in Rakuten’s obviousness theory for
claims 5–11, 17, and 20, the claims at issue in Zillow’s
1 Sunada is a certified English translation of Japa-
nese Patent Application Publication No. 2004-302907. J.A.
1914; see Decision, 2023 WL 7358027, at *2 n.1.
2 For its § 103 challenges, Rakuten raised three sep-
arate grounds: (1) Sunada in view of Applicant Admitted
Prior Art (AAPA) against claims 1, 3, 12, 14–15, and 18,
(2) Sunada in view of OASIS against 1–9, 11–12, and 14–
20, and (3) Sunada in view of OASIS and Dutcher against
claims 10 and 13. Decision, 2023 WL 7358027, at *7.
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IBM v. ZILLOW GROUP, INC. 6
cross-appeal. See, e.g., J.A. 168–69 (contending “Sunada in
view of OASIS discloses” the first limitation of claim 53).
B. Institution Decision
The Board granted institution. See J.A. 290. It, how-
ever, sided with IBM’s construction of “protected resource,”
defining the phrase as:
[A]n application, an object, a document, a page, a
file, executable code, or other computational re-
source, communication-type resource, etc., identi-
fied by a Uniform Resource Locator (URL), or more
generally, a Uniform Resource Identifier (URI),
that can only be accessed by an authenticated
and/or authorized user.
J.A. 304 (emphasis added); see id. at 305.
C. Post-Institution Developments & Final Written Deci-
sion
The Board’s findings on three claim limitations are rel-
evant.
1. “protected resources”
In light of the Board’s construction of “protected re-
sources” to require URLs or URIs, Rakuten told the Board
at the oral hearing that it was no longer pursuing its
Sunada-based anticipation challenge. At the same time,
Rakuten made clear that it believed that “Sunada discloses
3 The Organization for the Advancement of Struc-
tured Information Standards (OASIS), a non-profit global
consortium, developed Security Assertion Markup Lan-
guage (SAML), a framework for exchanging security infor-
mation. See J.A. 58–59. The OASIS reference refers to a
set of specification documents describing SAML. Id. at 58;
see J.A. 2116–246.
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IBM v. ZILLOW GROUP, INC. 7
URLs in the context of web applications being accessed by
users.” Decision, 2023 WL 7358027, at *7. Given
Rakuten’s concession as to the anticipation ground, the
Board determined that Rakuten had not proven that
Sunada anticipates claims 1, 3, 12, 14–15, and 18. Id.
As to Rakuten’s obviousness challenges, it contended
that Sunada discloses the “protected resources” limitation
because a skilled artisan would understand that Sunada’s
“web applications” use URLs. Id. at *13. The Board
agreed, finding that Sunada’s reference to “web applica-
tions” “strongly suggests that web pages are among the ser-
vices that it provides.” Id. And, in turn, it reasoned that a
skilled artisan would understand Sunada’s web pages to
use URLs, as that usage was “admittedly conventional”4 in
Internet communications for web pages. See id. (“Sunada’s
services are provided by web applications, which suggests
that Sunada’s services are identified by URLs or URIs.”).
2. “an identifier associated with the user”
Upon IBM’s request, the Board construed “identifier
associated with the user.” And the Board once again
adopted IBM’s preferred construction, defining the phrase
to mean “information that uniquely identifies the user.” Id.
at *6 (emphasis added).
But the Board ultimately agreed with Rakuten that
Sunada taught such an identifier. Among other findings,
the Board read Sunada as teaching a system that receives
a User ID, and that Sunada’s User ID uniquely identifies
its users. Id. at *14–17.
4 IBM’s expert acknowledged that, before the prior-
ity date of the ’346 patent, it was conventional to use URLs
for webpages. See Decision, 2023 WL 7358027, at *13 (cit-
ing J.A. 5125–26).
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IBM v. ZILLOW GROUP, INC. 8
3. “in response to a determination . . . sending a request
message . . . to the first system”
The Board disagreed with Rakuten as to claims 5–9,
11, 17, and 20. In the Board’s view, though Sunada might
have disclosed sending a request message to a first system
during account creation, it did so in a different circum-
stance than the one recited in the claim: whereas the
claims require such a transmission when an on-going user-
account-creation process on the second system (e.g., the
healthcare website in the above example) has insufficient
information, Sunada requests information when no such
account exists in the first place. Id. at *30–31. The Board
also concluded that neither OASIS nor Dutcher, the other
prior art references in Rakuten’s combinations, cured that
deficiency. Id. at *30–32.
In all, among the three grounds, the Board held claims
1–4, 12–16, and 18–19 unpatentable. See id. at *33. And
it also found that Sunada in view of OASIS did not render
claims 5–9, 11, 17, and 20 unpatentable, and that Sunada
in view of OASIS and Dutcher did not render claim 10 un-
patentable. Id.
IBM appeals with respect to all claims found unpatent-
able, contending (1) the Board’s analysis of “protected re-
sources” relied on a theory of patentability not raised in
Rakuten’s petition and (2) the Board’s findings on “identi-
fier associated with the user” lack substantial evidence.
Zillow (who joined the inter partes review alongside
Rakuten after institution, see J.A. 2) cross-appeals with re-
spect to all claims the Board held not unpatentable, argu-
ing the Board’s findings lack substantial evidence. We
have jurisdiction under 28 U.S.C. § 1295(a)(4) and 35
U.S.C. § 141(c).
STANDARD OF REVIEW
“We review the Board’s judgments concerning what ar-
guments are fairly presented in a petition and other plead-
ings for abuse of discretion.” Netflix, Inc. v. DivX, LLC, 84
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IBM v. ZILLOW GROUP, INC. 9
F.4th 1371, 1376 (Fed. Cir. 2023); see Corephotonics, Ltd.
v. Apple Inc., 84 F.4th 990, 1002 (Fed. Cir. 2023) (“It is for
the Board to determine what grounds are being articulated
in a petition and what arguments and evidence are being
referred to in the responses and any replies.”).
We review the Board’s obviousness determinations de
novo and its factual findings underlying those determina-
tions for substantial evidence. In re Hodges, 882 F.3d 1107,
1116 (Fed. Cir. 2018). What a prior art reference discloses
is a question of fact. Mettler-Toledo, Inc. v. B-Tek Scales,
LLC, 671 F.3d 1291, 1297 (Fed. Cir. 2012).
D ISCUSSION
We start with IBM’s appeal, before then turning to Zil-
low’s cross-appeal.
I. IBM’s Appeal
A. Scope of the Petition
The “petitioner’s contentions . . . define the scope of the
litigation all the way from institution through to conclu-
sion.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 367 (2018).
Consistent with this principle, we have found error where
the Board deems a claim unpatentable on a ground absent
from the petition. See, e.g., Koninklijke Philips N.V. v.
Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (deter-
mining the Board erred by relying on a combination of ref-
erences not raised in the petition). IBM asks us to find
such error here, contending the Board relied on an obvious-
ness theory for the “protected resources” limitation never
advanced in Rakuten’s petition. See Appellant’s Opening
Br. 24–37.
Zillow disagrees with IBM’s characterization of
Rakuten’s petition and the Board’s final written decision.
See Cross-Appellant’s Opening & Resp. Br. 46–58. But it
also asserts we are barred, under 35 U.S.C. § 314(d), from
even considering IBM’s petition-based argument. See id.
at 42–46. That is so, Zillow argues, because IBM’s
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IBM v. ZILLOW GROUP, INC. 10
challenge is “closely tied” to the Board’s institution deci-
sion, such that § 314(d)’s bar on reviewability applies. See
35 U.S.C. § 314(d) (“The determination by the Director
whether to institute an inter partes review under this sec-
tion shall be final and nonappealable.”).
Zillow misunderstands § 314(d). While § 314(d) does
bar us from reviewing a challenge “closely related to [the
Board’s] decision whether to institute inter partes review,”
Thryv, Inc. v. Click-To-Call Techs., LP, 590 U.S. 45, 48
(2020), it does not prevent us from examining whether the
inter partes review “proceeds in accordance with the law’s
demands,” SAS Inst., 584 U.S. at 371. IBM does not seek
to “undo” institution—rather, it simply asks to ensure the
Board’s final written decision stayed within the confines of
Rakuten’s petition.
Moreover, we routinely examine whether the Board’s
final written decision departed from the petition. In Kon-
inklijke, for example, we examined whether the Board in-
stituted review under a theory of obviousness not raised by
the petitioner. See 948 F.3d at 1337. So too in Sirona Den-
tal Systems GmbH v. Institut Straumann AG, where we an-
alyzed whether the Board’s unpatentability determination
“deviate[d] from the grounds alleged in the petition.” 892
F.3d 1349, 1356 (Fed. Cir. 2018); see also, e.g., VLSI Tech.
LLC v. Intel Corp., 53 F.4th 646, 653–54 (Fed. Cir. 2022);
In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381
(Fed. Cir. 2016).
Lone Star Silicon Innovations LLC v. Iancu, 809 F.
App’x 773, 774 (Fed. Cir. 2020), the only case Zillow relies
upon for its position, does not urge a different outcome. For
one, non-precedential decisions are not binding. Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1095 (Fed. Cir.
2019). Notwithstanding, Lone Star itself cites Koninklijke,
and, in particular, Koninklijke’s holding that the Board
erred by instituting review on a ground not presented. See
Lone Star, 809 F. App’x at 777 (citing Koninklijke, 948 F.3d
at 1337).
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IBM v. ZILLOW GROUP, INC. 11
Section 314(d) accordingly does not bar us from review-
ing IBM’s challenge. We thus turn to IBM’s arguments.
IBM first argues that the Board’s analysis of the “pro-
tected resources” limitation impermissibly strayed from
the theory presented in Rakuten’s petition. Rakuten’s pe-
tition states that “Sunada discloses all preamble limita-
tions except potentially a FCE.”5 J.A. 142. And because
the Board looked at what Sunada “suggests” or “strongly
suggests,” as opposed to what Sunada “discloses,” IBM con-
tends that the Board invoked an obviousness-like theory
for this limitation—a theory different from what Rakuten
raised in the petition. See Decision, 2023 WL 7358027, at
*13.
We disagree with IBM’s reading of the Board’s deci-
sion. The Board found that Sunada teaches “protected re-
sources,” as construed to use URLs or URIs, because it
expressly discloses an access-controlled “web application.”
Id. (citing J.A. 1918 ¶ 18); see J.A. 1918 ¶ 18 (“service by
the web application”). Although Sunada never expressly
mentions that its web applications are associated with
“URLs” or “URIs,” the Board found that a skilled artisan
would view such web applications as “provid[ing] [user] ac-
cess . . . using admittedly conventional URLs or URIs.” De-
cision, 2023 WL 7358027, at *13. Under this
understanding of Sunada’s “web application,” the Board
found that Sunada taught “protected resources” as con-
strued. This line of inquiry by the Board—determining
that a skilled artisan would understand a prior art refer-
ence’s express teaching to disclose a particular claim limi-
tation—comports with a § 102 anticipation analysis and
does not require turning to § 103 to modify a reference to
5 The parties both treat the preamble as limiting.
See Decision, 2023 WL 7358027, at *8 n.6. An FCE—a “fed-
erated computing environment”—relates to a different pre-
amble limitation, one not at issue in this appeal.
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IBM v. ZILLOW GROUP, INC. 12
satisfy a particular claim limitation. See Sage Prods., LLC
v. Stewart, 133 F.4th 1376, 1385 (Fed. Cir. 2025); see also
Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d
1366, 1373 (Fed. Cir. 2020) (“In an anticipation analy-
sis . . . . [e]xpert testimony may shed light on what a skilled
artisan would reasonably understand or infer from a prior
art reference.” (citation omitted)); Wasica Fin. GmbH v.
Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017)
(“Anticipation is an inquiry viewed from the perspective of
one skilled in the art.”).
True, in making that observation about “web applica-
tions,” the Board used the terms “suggests” and “strongly
suggests.” See Decision, 2023 WL 7358027, at *13 (“As we
explained in the Institution Decision, Sunada’s services are
provided by web applications, which suggests that
Sunada’s services are identified by URLs or URIs.” (citing
J.A. 1918 ¶ 18)); id. (“We find that Sunada, by specifically
referring to its applications as ‘web applications,’ strongly
suggests that web pages are among the services it pro-
vides.”). And such terminology often arises in the context
of a § 103 obviousness inquiry. See Adasa Inc. v. Avery
Dennison Corp., 55 F.4th 900, 910 (Fed. Cir. 2022) (“And
‘[e]ven if a reference’s teachings are insufficient to find an-
ticipation, that same reference’s teachings may be used to
find obviousness’ where it suggests some reason to modify
the prior art to obtain the claimed limitations.” (alteration
in original) (emphasis added) (citation omitted)). But, by
using these terms, the Board in this instance merely ex-
plained why, in its view, the better reading of Sunada’s ex-
press disclosure of “web application” aligns with the
claimed “protected resources,” as construed. In other
words, the Board read Sunada’s teachings to indicate (or
strongly indicate) to a skilled artisan that its web applica-
tion services are identified by URLs or URIs. Critically,
the Board never proposed to modify Sunada’s “web appli-
cation” to contain URLs. We thus reject IBM’s argument
that the Board relied on an obviousness-based theory for
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IBM v. ZILLOW GROUP, INC. 13
the “protected resources” limitation; the Board’s analysis
instead tracked the petition’s anticipation-based theory.6
B. “an identifier associated with the user”
IBM’s appeal also raises a merits-based substantial ev-
idence challenge. The claimed method requires “receiving
from the first system at the second system an identifier as-
sociated with the user.” ’346 patent at claim 1 (emphases
added). According to the Board, Sunada disclosed this lim-
itation because it (1) taught a first system creating a “User
ID” that uniquely identifies the user, and (2) taught a sec-
ond system receiving that User ID. See Decision, 2023 WL
7358027, at *14–17.
6 IBM also contends that the Board, in a different
section of its final written decision (which addressed
Rakuten’s § 102 challenge), already settled that Sunada
does not disclose the “protected resources” limitation. See
Decision, 2023 WL 7358027, at *7 (“Petitioner has not
shown that Sunada discloses ‘protected resources’ under
our claim construction of the term . . . .”). But that Board
ruling was specific to Rakuten’s § 102 challenge only,
which Rakuten abandoned during the oral hearing before
the Board. Id. at *6–7. The Board, therefore, simply found
that Rakuten failed to meet its burden because it aban-
doned its § 102 challenge.
Moreover, the Board’s decision quotes a statement
made by Rakuten’s attorney made during the oral hearing,
which clarified that Rakuten continued to assert, for its ob-
viousness challenge, that a skilled artisan would under-
stand that Sunada “discloses” protected resources, as
construed by the Board. Id. So even though Rakuten con-
ceded its anticipation challenge, it maintained its obvious-
ness challenge from the petition that Sunada discloses the
“protected resources” limitation. And the Board’s obvious-
ness conclusion found that argument persuasive.
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IBM v. ZILLOW GROUP, INC. 14
IBM concedes that Sunada’s “User ID” uniquely iden-
tifies the user, but it argues that Sunada does not teach the
second system receiving a User ID. Sunada, however, ex-
pressly teaches transmitting “information regarding the
user” to the second system. J.A. 1917–18 ¶¶ 15, 19. The
Board reasonably found that Sunada’s “information re-
garding the user” includes its User IDs, and we see no rea-
son to think otherwise.
Nothing in Sunada, for example, expressly teaches that
its disclosure of “information regarding the user” cannot in-
clude a User ID. See generally J.A. 1915–21. Moreover, as
the Board noted, Sunada contemplates treating passwords
as part of “information regarding the user[].” See id. at
1918 ¶ 21. In the context of Sunada’s disclosure, it was
reasonable for the Board to make a similar inference about
Sunada’s User ID, a closely related piece of information
about the user. See Quake v. Lo, 928 F.3d 1365, 1373 (Fed.
Cir. 2019) (“A finding is supported by substantial evidence
if a reasonable mind might accept the evidence to support
the finding.” (quoting Redline Detection, LLC v. Star Envi-
rotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015))).
II. Zillow’s Cross-Appeal
We now turn to Zillow’s Cross-Appeal.7
7 Before oral argument, it came to the court’s atten-
tion that Zillow’s cross-appeal might be untimely because
it was filed more than 63 days after the Board issued its
final written decision and more than 14 days after IBM’s
timely appeal See No. 24-1170, ECF No. 80; 37 C.F.R.
§ 90.3(a)(1) (“The notice of appeal filed pursuant to 35
U.S.C. § 142 must be filed with the Director of the United
States Patent and Trademark Office no later than sixty-
three (63) days after the date of the final Board decision.”);
see also Fed. R. App. P. 4(a)(3) (“If one party timely files a
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IBM v. ZILLOW GROUP, INC. 15
A. “in response to a determination . . . sending a request
message . . . to the first system”
Zillow fixates on a purported inconsistency within the
Board’s findings. See Cross-Appellant’s Opening & Re-
sponse Br. 37–42. One the one hand, the Board found claim
14 unpatentable in light of Sunada. Yet for claim 5, which
looks very similar to claim 14, the Board said the opposite.
Zillow believes those two findings cannot both stand.
Zillow almost has a point—the language of claim 5 is
identical to claim 14 except for a single difference. The rel-
evant limitation of claim 5 recites:
in response to a determination at the second sys-
tem that the second system does not have sufficient
user attribute information to complete creation of
a user account for the user at the second system,
sending a request message from the second system
to the first system to retrieve user attribute infor-
mation
’346 patent at claim 5 (emphasis added). As for claim 14:
in response to a determination at the second sys-
tem that the second system does not have sufficient
user attribute information to complete creation of
a user account for the user at the second system,
notice of appeal, any other party may file a notice of appeal
within 14 days after the date when the first notice was
filed, or within the time otherwise prescribed by this Rule
4(a), whichever period ends later.”). We accordingly asked
the parties to address this timeliness issue.
In response, Zillow explained that the Director granted
a retroactive extension after finding excusable neglect. See
ECF No. 81; 37 C.F.R. § 90.3(c)(ii). IBM did not oppose Zil-
low’s request to the Director, nor does it on appeal.
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IBM v. ZILLOW GROUP, INC. 16
sending a request message to a fourth system to re-
trieve user attribute information
’346 patent at claim 14 (emphasis added). Whereas method
claim 5 requires sending a request to a first system (i.e.,
the entity that stores the original authentication infor-
mation) once it becomes apparent the second system has
insufficient information to complete an account, method
claim 14 requires sending a request to a fourth system (i.e.,
the user’s computer) in such a circumstance.
That distinction makes all the difference as to Sunada.
In Sunada, when it becomes evident the second system can-
not complete account creation without additional user in-
formation, Sunada teaches requesting such information
only from the user herself, i.e., the fourth system. See J.A.
1921 FIG. 3 Step 37 (“Is information necessary for creating
user account here?”); id. at Step 38 (“[If not] Ask [the] user
to enter missing information.”). As the Board found, such
a teaching discloses the relevant limitation of claim 14.
But nowhere does Sunada disclose alternatively pinging
the first system to gap-fill any missing information needed
for account creation, as claim 5 demands. The Board’s op-
posing conclusions on patentability for the two claims thus
make good sense. Moreover, substantial evidence supports
the Board’s finding that neither Sunada nor OASIS dis-
closes sending a request from the second system to the first
system “in response to a determination at the second sys-
tem that the second system does not have sufficient user
attribute information to complete creation of a user ac-
count.”
CONCLUSION
We have considered the parties remaining arguments
but find them unpersuasive.
AFFIRMED
COSTS
No costs.
Case: 24-1170 Document: 86 Page: 16 Filed: 12/09/2025

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