Google LLC v. Security First Innovations LLC

1. Case Identification

• Case #: IPR2024-00215
• Patent #: 10,452,854
• Filed: November 22, 2023
• Petitioner(s): Google LLC
• Patent Owner(s): Security First Innovations, LLC
• Challenged Claims: 1-10

2. Patent Overview

• Title: Method for Securely Storing a Data Set
• Brief Description: The ’854 patent discloses methods for securely storing data by splitting a data set into multiple encrypted portions ("data chunks"). The method involves a second encryption step performed on the data chunks using an "external key" received from an "external storage system" to further enhance security.

3. Grounds for Unpatentability

Ground 1: Claims 1-10 are Anticipated or Alternatively Obvious over Orsini

• Prior Art Relied Upon: Orsini (Application # 2004/0049687A1).
• Core Argument for this Ground: Petitioner argued that Orsini, a prior patent application from the same assignee with overlapping inventors, discloses all limitations of the challenged claims. Orsini describes a four-stage encryption method: (1) encrypting a data set with a session master key, (2) parsing the encrypted data into shares, (3) encrypting each share with a distinct share key, and (4) obfuscating by storing encrypted shares with mismatched keys.
  • Prior Art Mapping: Petitioner asserted that Orsini’s disclosures meet the key limitations of independent claim 1. Orsini’s "external session key management" performed by a separate "depository" server was mapped to the claimed "receiving an external key from an external storage system." The process of splitting data into "N shares" and encrypting each with a distinct "share key" was argued to teach the "generating a plurality of data chunks" limitation. For the crucial step of "performing an encryption operation based on the external key to further secure the...data chunks," Petitioner argued that Orsini teaches this by explicitly stating that its encryption steps may be performed in a "different order" or "repeated multiple times." This flexibility allows Orsini's initial encryption step (using the session master key, i.e., the external key) to be performed after the data has been chunked, thus further securing the chunks. Finally, Orsini's "obfuscate" stage, which stores the resulting encrypted shares on different storage devices with their corresponding keys, was mapped to the final storing limitation.
  • Motivation to Combine (for §103 grounds): For its alternative obviousness argument, Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to reorder or repeat Orsini’s encryption steps as explicitly suggested by Orsini itself. Doing so was a well-known technique to enhance security.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in reordering the steps because Orsini describes its process as "modular" and "tiered," indicating the steps were not rigidly dependent on the disclosed sequence.

Ground 2: Claims 1-10 are Obvious over Foster in view of Hayhurst

• Prior Art Relied Upon: Foster (Application # 2003/0200176A1) and Hayhurst (Application # 2004/0216164A1).
• Core Argument for this Ground: Petitioner argued that Foster teaches a method for securing digital content that meets most limitations, and Hayhurst supplies the remaining limitation of storing data across a plurality of devices. Foster discloses splitting content into packets, encrypting each packet with a distinct "title key," and then encrypting those title keys with a common Key-Encrypting-Key (KEK) stored in a separate database. Hayhurst discloses a peer-to-peer media delivery system where encrypted segments of a media file are stored across a network of multiple subscriber units (e.g., set-top boxes) to improve security and reduce bandwidth demands on a central server.
  • Prior Art Mapping: Petitioner contended the combination teaches all limitations of claim 1. Foster's KEK, stored in its database 426, was argued to be the claimed "external key" from an "external storage system." Foster’s process of encrypting individual content packets ("payloads") with distinct title keys was mapped to the "generating a plurality of data chunks" limitations. The subsequent step of encrypting those title keys with the KEK was asserted to be the "encryption operation based on the external key to further secure the plurality of data chunks." Hayhurst’s teaching of distributing encrypted data segments across multiple, different subscriber storage devices was mapped to the final limitation of "storing...on a plurality of different storage devices."
  • Motivation to Combine (for §103 grounds): A POSITA would combine Foster’s encryption architecture with Hayhurst’s distributed storage method to achieve the predictable benefits described in Hayhurst: reduced bandwidth requirements for the content provider, increased security by ensuring no single user holds the entire file, and improved data redundancy.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success because both references address the common problem of securely distributing segmented digital content. Foster’s encrypted content units were agnostic to their storage location and thus fully compatible with Hayhurst’s technique of storing segments on multiple separate devices.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §314(a) (Fintiv) and §325(d).
• Fintiv: Petitioner contended that the petition presents compelling evidence of unpatentability, that it will seek a stay in the parallel district court litigation, and that the IPR challenges ten claims whereas only two are asserted in the litigation, reducing issue overlap.
• §325(d): Petitioner asserted that the primary references were not properly considered during prosecution. Foster and Hayhurst were never presented to the Examiner. Although the issued patent version of Orsini was cited in an Information Disclosure Statement (IDS), it was never used as the basis for a rejection or substantively evaluated by the Examiner, which Petitioner argued constitutes a material oversight by the Patent Office.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 of the ’854 patent as unpatentable.