IBM Corp v. Security First Innovations LLC

1. Case Identification

• Case #: IPR2025-01202
• Patent #: 9,135,456
• Petitioner(s): International Business Machines Corporation
• Patent Owner(s): Security First Innovations, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Secure Data Parser
• Brief Description: The ’456 patent describes a method and system for securing a data set by encrypting it, logically combining the encrypted data with the encryption key, producing redundancy information, and splitting the resulting data into a plurality of shares. The shares are stored in separate locations, allowing the original data to be recovered from a threshold number of shares less than the total number of shares created.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 10-15, 22-27, and 30 are obvious over Torre in view of Desai.

• Prior Art Relied Upon: Torre (Application # 2003/0065656) and Desai (a 2000 conference paper titled "The Security of All-Or-Nothing Encryption").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Torre taught a system for "shredding" data by splitting it into multiple redundant pieces ("shreds") and storing them across different storage units to ensure recoverability and security. This shredding process met many limitations of claim 1, including producing redundancy information, creating shares, and storing them for fault-tolerant recovery. Petitioner asserted that Desai taught an "all-or-nothing transform" (AONT) encryption technique that addresses brute-force key search attacks by requiring all portions of an encrypted output to recover the encryption key. The combination, referred to as the "Torre/Desai System," allegedly met the remaining limitations of claim 1 by incorporating Desai's AONT to perform the steps of encrypting the data set, logically combining the encrypted data with the key to produce a resultant, and requiring all of the encrypted data to recover the key from that resultant.
  • Motivation to Combine: A POSITA would combine Torre and Desai because Torre expressly taught that its shredding system was "envisioned to be used with any other encryption method that provides a desired level of security." Desai disclosed such an enhanced encryption method, which a POSITA would have recognized as a suitable and advantageous technique to improve the security of Torre's system against known vulnerabilities.
  • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success because Desai described its AONT technique as a "pre-processing step" that could be applied to existing security systems without fundamental changes. Implementing Desai's algorithm within Torre's workflow would have involved known software programming techniques to yield the predictable result of improved data security.

Ground 2: Claims 1-3, 10-12, 25-27, and 30 are obvious over Torre and Desai in view of Watanabe.

• Prior Art Relied Upon: Torre (Application # 2003/0065656), Desai (a 2000 conference paper), and Watanabe (Application # 2003/0091191).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the same core combination and mapping as Ground 1 but added Watanabe to explicitly teach the limitation of "reading the first data set from a memory that stores the first data set." Petitioner argued that while the Torre/Desai system inherently implied this step, Watanabe explicitly disclosed an information processing unit that reads data from a memory device (E202) before performing calculations. Adding this teaching to the Torre/Desai combination would render the claim limitation obvious.
  • Motivation to Combine: A POSITA would combine Watanabe with the Torre/Desai system for the simple and predictable purpose of improving the system's versatility. Using a memory device to store and provide input data to a data processing system was a conventional and well-understood practice, and a POSITA would be motivated to incorporate this standard functionality.
  • Expectation of Success: The expectation of success was high, as the combination merely involved using a standard memory device as the input source for the Torre/Desai data processing system. This would not require any substantive change to the shredding or encryption functions of the underlying combination.

Ground 3: Claims 4-9, 16-21, and 28-29 are obvious over Ground 1 or Ground 2 in combination with Orsini.

• Prior Art Relied Upon: The combination of Torre and Desai (from Ground 1) or Torre, Desai, and Watanabe (from Ground 2), in further combination with Orsini (Application # 2004/0049687).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring the random distribution and/or shuffling of data units within the created shares. Petitioner argued that Orsini taught a "cryptographic split" and "data shuffling" process that could randomly distribute data units into shares using a key. This process could be applied either before generating redundancy information (to randomly distribute data into pre-shreds) or after the shares are formed (to shuffle the data units within the final shares). Petitioner asserted that adding Orsini's process to the Torre/Desai system would satisfy the limitations of claims 4-9, such as causing the shares to comprise a "substantially random distribution of units of data" and "substantially randomly shuffling the units of data in the shares."
  • Motivation to Combine: Orsini taught that its data splitting and shuffling process could be used as an "add-on to any application which requires the ultimate security." A POSITA would be motivated to apply this known technique to the Torre/Desai system to add another layer of security. Randomizing the data distribution would make it significantly more difficult for an attacker to reconstruct the original data, thus achieving the predictable result of enhanced security.
  • Expectation of Success: A POSITA would have a high expectation of success because Orsini's process was disclosed as a modular add-on applicable to any data set. Implementing this function within the software-based Torre/Desai system would be a straightforward programming task.

4. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-30 of the ’456 patent as unpatentable.