International Business Machines v. Zillow Group, Inc., Appeal Nos. 2024-1170, -1274 (Fed. Cir. Dec. 9, 2025)

In our Case of the Week, the Federal Circuit reviewed cross-appeals from an inter partes review of IBM’s U.S. Patent No. 7,631,346, and affirmed on all counts.  The ’346 patent is directed to systems and methods for single sign-on operations, permitting a computer user to create and log into several accounts using a single set of login credentials.  IBM has asserted the ’346 patent against  Zynga, Airbnb, and other online services using third-party sign-in options like, “Sign in with Facebook.”  In this appeal, the Court affirmed the Patent Trial and Appeal Board’s decision that certain broader claims of the ’346 patent are unpatentable, and also affirmed the Board’s decision that claims directed to certain narrower applications were not shown to be unpatentable.

The IPR in this case was petitioned by Ebates Performance Marketing, Inc. d/b/a Rakuten Rewards, and joined by Zillow following institution.  Claim 1 was treated as representative of the broader claims held invalid, and recited a “second system” (e.g. a website like Zillow’s) receiving from a “first system” (e.g. a social media network like Facebook) “an identifier associated with the user,” and using that identifier to create an account for the user, permitting them to access “protected resources” on the second system.  Claim 5 was treated as representative of the claims that were upheld, and recited the additional requirement that when the second system determines it needs more user information, it sends a request to the first system and receives the additional information from the first system.  As relevant to the appeal, the Board construed “protected resources” as requiring a Uniform Resource locator (URL)—e.g. an “http://”  web address—or more broadly, a Uniform Resource Identifier (URI).

Rakuten’s petition alleged that all claims were anticipated by a published Japanese patent application referred to as “Sunada,” and also asserted several obviousness grounds based on Sunada and other references.  Rakuten abandoned its anticipation theory in view of the Board’s claim constructions, but continued to assert for obviousness purposes that Sunada’s disclosure of “web applications” met the “protected resources” limitation, which the Board ultimately agreed with.  On appeal, IBM argued that because the Board repeatedly stated Sunada “suggests” the presence of URLs or URIs by referring to “web applications,” it was in fact applying an obviousness theory that had not been raised in Rakuten’s petition.  For its part, Zillow argued that IBM was not permitted to second-guess decisions related to institution, citing 35 U.S.C. § 314(d) (providing that institution decisions are unreviewable).  The Court rejected Zillow’s argument, explaining that it was of course permitted to review whether the Board adhered to the petition, which was not a review of the institution decision.  The Court also rejected IBM’s argument, explaining that the Board never proposed Sunada be “modified” in any way to accommodate URLs or URIs.  Instead, the Board had simply found that a person of ordinary skill would reasonably understand Sunada to disclose URL or URI-associated resources with its disclosure of “web applications,” and that finding was supported by substantial evidence, so the Court affirmed the decision of unpatentability.

Meanwhile, in its cross-appeal, Zillow argued that the upheld claim 5 was nearly identical to another claim 14 the Board had found invalid over Sunada, with the only difference being that claim 14 recited receiving the additional user information from a “fourth system” instead of from the “first system.”  Zillow argued that both rulings could not be correct, and the Federal Circuit allowed that it “almost has a point.”  However, the “fourth system” in the ’346 patent was understood to refer to the user’s own device, not the system from which the first round of user information was supplied.  The Court found this “makes all the difference,” as Sunada taught querying the user herself for additional information, but not the first system.  Accordingly, the Court also affirmed the board’s decision that claim 5 and others were not shown to be unpatentable.

The opinion can be found here.

By Jason A. Wrubleski

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Coda Development s.r.o. v. Goodyear Tire & Rubber Co., Appeal No. 2023-1880 (Fed. Cir. Dec. 8, 2025)

Following a $64 million jury verdict against Goodyear in a trade secret and inventorship case concerning self-inflating tire technology, the Federal Circuit affirmed judgment as a matter of law for Goodyear, finding no misappropriation and denying correction of inventorship.  In finding no misappropriation, the Court explained that the alleged trade secrets were either not defined with sufficient particularity, not kept secret, or not actually used by Goodyear, and thus each failed to satisfy one or more of the showings necessary for misappropriation.  The denial of Coda’s correction of inventorship claim was also proper because Coda’s sole basis for reversal depended on overturning the district court’s JMOL on the trade secret claims, which the Federal Circuit affirmed.  Separately, the Court found that the district court did not improperly disregard jury findings, because the jury never compared the scope of the alleged trade secrets and the patent claims, and the district court correctly concluded that differences in scope meant the trade secret evidence was insufficient to establish sole inventorship.

The opinion can be found here.

By Jason Evans

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.