PTAB

IPR2025-00100

MediaTek Inc v. Daedalus Prime LLC

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1. Case Identification

2. Patent Overview

  • Title: Method and Device for Secure Communications Over a Network Using a Hardware Security Engine
  • Brief Description: The ’838 patent discloses a system-on-a-chip (SOC) apparatus that uses a dedicated hardware security engine, separate from the main processor core, to establish secure network communications. The security engine uses a key provisioned during manufacturing to manage cryptographic operations for protocols like Transport Layer Security (TLS).

3. Grounds for Unpatentability

Ground 1: Obviousness over Bugiel, Chou, and Tkacik - Claims 1-24 are obvious over Bugiel in view of Chou and Tkacik.

  • Prior Art Relied Upon: Bugiel (a 2010 conference paper on secure web authentication on mobile platforms), Chou (Application # 2011/0191599), and Tkacik (Application # 2010/0296651).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Chou disclosed the core hardware architecture of the independent claims, including a system-on-a-chip apparatus with a hardware security module (HSM) that is separate from the main CPU and has a secure memory accessible only by the HSM. Bugiel was argued to teach the claimed method steps for establishing a secure communication session, as it disclosed using the SSL/TLS protocol with a hardware-supported trusted execution environment (TrEE) to protect login credentials, generate nonces in a ClientHello message, perform a key exchange, and derive a session key. The combination of Bugiel's secure protocol running on Chou's hardware architecture was alleged to render the apparatus and method claims obvious.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Bugiel and Chou because both related to secure communications on mobile devices using hardware-level security. A POSITA implementing Bugiel’s TrEE-based SSL/TLS system would have looked to hardware solutions like Chou’s HSM to provide the necessary secure storage and isolated execution environment. Tkacik was argued to be a natural addition to provide a specific, well-known method for provisioning a security key. A POSITA would combine Tkacik’s teaching of programming a master key into a non-volatile register during manufacturing with Chou’s one-time programmable (OTP) memory to ensure the device was ready for secure use immediately after production.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involved implementing the well-known TLS handshake protocol (Bugiel) on a suitable hardware security platform (Chou) and using a common manufacturing technique to provision a root key (Tkacik). These were standard, compatible technologies that would predictably result in a secure SOC.

Ground 2: Obviousness over Tkacik, TLS-1.2, and Bugiel - Claims 1-24 are obvious over Tkacik in view of TLS-1.2 and Bugiel.

  • Prior Art Relied Upon: Tkacik (Application # 2010/0296651), TLS-1.2 (IETF standard from August 2008), and Bugiel (a 2010 conference paper).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Tkacik disclosed the foundational system-on-a-chip apparatus with a secure processing section (the "security engine") separate from a programmable processor (the "processor core"). Tkacik further disclosed a secure memory within the security engine containing a master key programmed during manufacturing. TLS-1.2, as the ubiquitous standard for secure communication, was argued to provide the explicit steps of the claimed method, including generating random nonces, performing a cryptographic key exchange, and generating a symmetric session key. The combination allegedly taught all limitations of the independent claims.
    • Motivation to Combine: A POSITA would combine Tkacik and TLS-1.2 because Tkacik expressly contemplated using its hardware to generate keys for protocols like SSL. A POSITA would naturally turn to the then-current TLS-1.2 standard to implement the secure communication protocol on Tkacik’s hardware. Petitioner argued a POSITA would further incorporate Bugiel's teachings to address storing the session key. Bugiel’s disclosure of storing an encrypted session key within a hardware TrEE would have been an obvious technique to apply to the session key generated by the Tkacik/TLS-1.2 system to enhance security during run-time.
    • Expectation of Success: The combination involved applying the standard TLS-1.2 protocol to a security-focused SOC (Tkacik), which was a common design goal. Adding Bugiel’s technique for securely storing a session token was a straightforward application of a known storage technique to improve a similar system, yielding predictable security benefits.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Bugiel, Chou, and TLS-1.2 (Grounds 1A, 1C) and Tkacik and TLS-1.2 (Ground 2A), which relied on similar prior art mappings and motivations.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that several factors favored institution. It contended that it filed the petition diligently, shortly after receiving infringement contentions in a parallel district court case, and before significant investment in the litigation. The petition noted that the district court trial date was not definitive and was scheduled far in the future, with a Markman hearing not occurring until July 2025. Petitioner also argued that this IPR challenged claims that were not asserted in the parallel litigation, weighing against denial.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’838 patent as unpatentable under 35 U.S.C. §103.