Google LLC v. Security First Innovations LLC

1. Case Identification

• Case #: IPR2024-00214
• Patent #: 11,068,609
• Filed: 2023-11-22
• Petitioner(s): Google LLC
• Patent Owner(s): Security First Innovations, LLC
• Challenged Claims: 1-10

2. Patent Overview

• Title: Method for Securing Data
• Brief Description: The ’609 patent discloses methods for securely storing a data set by splitting it into multiple portions ("data chunks"), encrypting each chunk with a respective and distinct "second key," and performing an additional cryptographic operation using a "first key" received from a storage system to further secure the chunks.

3. Grounds for Unpatentability

Ground 1: Anticipation or Obviousness over Orsini - Claims 1-10 are anticipated by, or alternatively obvious over, Orsini

• Prior Art Relied Upon: Orsini (Application # 2004/0049687).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Orsini, which shares an assignee and inventors with the ’609 patent, discloses a substantively identical method for securing data. Orsini describes a multi-stage process involving: (1) encrypting a data set with a "session master key," (2) parsing the data into "shares" (the claimed "data chunks"), (3) encrypting each share with a distinct "share key" (the claimed "second keys"), and (4) obfuscating the results. Petitioner asserted that Orsini’s "session master key" is the claimed "first key." Crucially, Orsini explicitly teaches that "certain steps of the method[] described herein may be performed in different order." Petitioner contended this teaching anticipates the ’609 patent’s claim 1, as a POSITA would understand that the initial encryption step with the "session master key" could be moved to occur after the shares are created and encrypted, thereby meeting the claim limitation of performing a cryptographic operation with the first key to "further secure the plurality of data chunks."
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued it would have been obvious to modify Orsini's process. The motivation is expressly provided by Orsini itself, which suggests reordering or repeating steps to achieve a desired security outcome. A POSITA would have been motivated by this disclosure to reorder the encryption steps to enhance security, a predictable and well-understood goal in the art.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in reordering or repeating the encryption steps, as these are conventional, modular cryptographic operations that function predictably when their sequence is altered.

Ground 2: Unpatentability over Foster - Claims 1-3 and 7-8 are anticipated by or obvious over Foster; claims 4-6 and 9-10 are obvious over Foster

• Prior Art Relied Upon: Foster (Application # 2003/0200176).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended Foster discloses a method for securing digital content that meets all limitations of the challenged claims. Foster teaches parceling digital content into multiple packets ("payloads," which are the claimed "data chunks") and encrypting each packet with its own distinct "title key" (the claimed "second key"). To further secure the data, Foster encrypts these distinct title keys using a common "key-encrypting key" (KEK). Petitioner argued this KEK is the claimed "first key," and the act of encrypting the title keys constitutes the claimed "cryptographic operation based on the first key." Foster explicitly discloses that this KEK is received from an external "database 426," which functions as the claimed "storage system."
  • Motivation to Combine (for §103 grounds): For dependent claims requiring features like random data distribution (claims 4-5) or specific key types like AES/DES (claims 9-10), Petitioner argued a POSITA would combine Foster with well-known techniques. For instance, a POSITA would use random or pseudorandom techniques to generate data packets of varying sizes to make the encrypted data stream harder to analyze. Similarly, implementing the symmetric KEK using industry-standard AES or DES algorithms was a conventional choice for ensuring robust and well-understood security.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in applying these conventional techniques to Foster’s system, as they were common methods for improving data security with predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §314(a) or §325(d) is inappropriate.
• Fintiv Factors (§314(a)): Petitioner contended that despite a parallel district court case with a trial scheduled for July 2024, the petition presents compelling evidence of unpatentability. Petitioner stated it would seek a stay in the district court, noted the limited overlap in asserted claims (2 in litigation vs. 10 in the IPR), and argued its filing was diligent.
• Same or Substantially the Same Art (§325(d)): Petitioner argued that the primary prior art references, Orsini and Foster, were not previously considered or evaluated on the merits by the USPTO during the prosecution of the ’609 patent. Even though an issued patent related to Orsini was cited in an IDS for a parent application, it was never used in a rejection or discussed by the examiner, representing a material oversight that this petition corrects.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of Patent 11,068,609 as unpatentable.