Google LLC v. Security First Innovations LLC

1. Case Identification

• Case #: IPR2024-00212
• Patent #: 11,178,116
• Filed: November 24, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Security First Innovations, LLC
• Challenged Claims: 1-3, 5-14

2. Patent Overview

• Title: Method for Securing a Data Set
• Brief Description: The ’116 patent discloses a method for securing data by distributing a data set into multiple data chunks, encrypting each chunk with a different key, obfuscating the keys by pairing them with data chunks they did not encrypt, and separately storing each encrypted chunk/obfuscated key pair on different storage devices.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 5-8 are anticipated or alternatively obvious over Tajima.

• Prior Art Relied Upon: Tajima (Application # 2003/0028493).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tajima disclosed all limitations of claim 1. Tajima taught a method to improve the security of personal information by dividing it into multiple "data fragments" (the claimed "data chunks") such that each fragment is unintelligible on its own. Tajima then encrypted each data fragment with a respective key. Crucially, Tajima disclosed attaching the "key information" for encrypting one fragment to a different encrypted fragment before storage, which Petitioner asserted meets the "obfuscating" limitation. Finally, Tajima taught storing these resulting encrypted fragment/key pairs in separate databases on different service sites under separate control, meeting the limitation of storing on a "plurality of different storage devices."
  • Key Aspects: Petitioner contended that Tajima's disclosure of attaching key information for fragment X to encrypted fragment Y, and vice versa, directly reads on the ’116 patent's obfuscation and separate storage concepts. The arguments for dependent claims 5-8 followed from this mapping, addressing storing chunks with respective keys (claim 5), including data indicative of a key (claim 6), using random techniques (claim 7), and encrypting primary data first (claim 8), all of which Petitioner asserted were disclosed in Tajima's embodiments.

Ground 2: Claims 1-2, 9, 11-14 are obvious over Tajima in view of Foster.

• Prior Art Relied Upon: Tajima (Application # 2003/0028493), Foster (Application # 2003/0200176).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Tajima by addressing a known security risk: Tajima stored its encryption keys in plaintext. Foster taught a technique for securing digital content where data encryption keys are themselves encrypted using a key-encrypting key (KEK) before being stored or transmitted with the encrypted data. Petitioner argued that combining Foster's key encryption with Tajima's system rendered the claims obvious. This combination addressed the "obfuscating" (claim 1) and "transforming" (claim 9) limitations by encrypting the keys, which Petitioner asserted aligns with the Patent Owner's infringement Contentions that key encryption constitutes both obfuscation and transformation.
  • Motivation to Combine: A POSITA would combine Foster's key encryption with Tajima's system to remedy the known vulnerability of storing plaintext keys with encrypted data. Encrypting Tajima's keys using Foster's well-understood KEK technique was presented as a straightforward, security-enhancing modification. This addressed the risk of an attacker recovering all plaintext keys if they compromised all of Tajima's stored data fragments.
  • Expectation of Success: A POSITA would have a high expectation of success because encrypting keys was a routine and conventional technique for increasing data security, and applying Foster's method would have required only minor, predictable modifications to Tajima's system.

Ground 5: Claims 1-2, 5, 9, and 11 are obvious over Foster in view of Hayhurst.

• Prior Art Relied Upon: Foster (Application # 2003/0200176), Hayhurst (WO 2004/008289).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted a different combination of art. Petitioner argued Foster taught the core encryption and obfuscation steps: parceling digital content into units ("data chunks"), encrypting each unit with a different title key, and then encrypting each title key with a KEK ("obfuscating" or "transforming"). However, Foster primarily disclosed storing the resulting content on a single recipient device. Hayhurst taught a system for "decentralized media delivery" where segments of a media file were distributively stored across a network of different subscriber units ("a plurality of different storage devices").
  • Motivation to Combine: A POSITA would combine these references to improve the content delivery system of Foster. Hayhurst explicitly taught that its distributed storage technique improved security, shifted bandwidth requirements away from a central provider, and supported redundancy. A POSITA would have been motivated to apply Hayhurst's known distributed storage benefits to Foster's system by storing Foster's encrypted content units across multiple devices as taught by Hayhurst.
  • Expectation of Success: The combination was presented as the predictable application of a known distributed storage technique (Hayhurst) to an existing content encryption system (Foster) to achieve the known benefits of distributed storage.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on Tajima combined with Rivest (Ground 3) to teach "all-or-nothing transforms" for the keys, and Tajima combined with Rivest and Shyu (Ground 4) to further add the use of different encryption algorithms for different data fragments.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is unwarranted. The petition asserted it presents compelling evidence of unpatentability, which should conclude the analysis. Further, it argued the district court case is in an early stage with minimal investment, the IPR challenges more claims than are asserted in litigation, and the petition relies on new prior art (Tajima, Foster, Hayhurst, Shyu) that was not considered during prosecution, weighing against denial under both §314(a) and §325(d).

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-3 and 5-14 as unpatentable.