Google LLC v. Kmizra LLC

1. Case Identification

• Case #: IPR2025-01437
• Patent #: 9,516,048
• Filed: September 19, 2025
• Petitioner(s): Google LLC
• Patent Owner(s): Kmizra LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Network-Based Contagion Isolation and Inoculation
• Brief Description: The ’048 patent discloses methods and systems for protecting a private computer network from insecure "host" devices that attempt to connect. The technology involves detecting an insecure condition on a host, quarantining it by redirecting its network requests to a dedicated quarantine server, and serving a notification page with information and links to remedy the insecure condition.

3. Grounds for Unpatentability

The petition asserted a single ground for unpatentability under 35 U.S.C. §103.

Ground 1: Obviousness over Freund, Ball, and Pujare - Claims 1-20 are obvious over Freund in view of Ball and Pujare.

• Prior Art Relied Upon: Freund (Application # 2003/0055962), Ball (Application # 2006/0005009), and Pujare (Application # 2002/0083183).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of Freund, Ball, and Pujare taught every limitation of the challenged claims. Freund was presented as the primary reference, disclosing a network security system that performed the core functions of the invention. Freund taught detecting a non-compliant host, quarantining the host by redirecting its web and DNS service requests to a "sandbox server" (the claimed "quarantine server"), and serving a notification page to the host with remediation information. Petitioner contended that Freund’s system included a "trusted computing base" in the form of its client-side security module.

    However, Freund did not explicitly disclose using a hardware "Trusted Platform Module" (TPM) for this purpose. Petitioner asserted that Ball remedied this deficiency by teaching that a TPM, conforming to the industry-standard Trusted Computing Group (TCG) specification, was a well-known and conventional hardware component for providing enhanced, hardware-based security. Ball's TPM was described as capable of securely measuring a host's attributes and providing digitally signed attestations of its "cleanliness."

    For claim limitations related to attesting the presence of a specific "patch or patch level," Petitioner argued that Freund taught checking for an "older version" of security software. Pujare was cited to show that it was conventional to track software updates using version numbers corresponding to patch levels, making the specific check for a patch level an obvious implementation of Freund's version-checking functionality.

  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Freund's system with Ball's TPM technology for several reasons. The primary motivation was to improve the security and reliability of Freund's system by substituting a standard, hardware-based security component (Ball's TPM) for a general-purpose processor to execute the client-side security functions. This would have been an obvious design choice to add a hardware root of trust and achieve predictable security enhancements according to industry standards. A POSITA would have recognized that integrating a TPM was one of a finite number of predictable solutions for enhancing the security of a network access control system like Freund's. The combination was a simple substitution of known elements to yield predictable results.

  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The proposed modification involved integrating a known hardware module (TPM) into an existing security framework (Freund's system) to perform its well-understood function of enhancing security and attestation. The combination would have been a straightforward application of known technologies to achieve the predictable result of a more secure network quarantine system.

4. Key Claim Construction Positions

• Petitioner dedicated a section to claim construction, proposing interpretations for several terms that were central to its obviousness arguments. Key proposed constructions included:
  • "trusted computing base": "hardware or software within the first host that provides security to the host." This broad construction was used to argue that Freund's client-side security module met the limitation.
  • "trusted platform module" (TPM): "a secure cryptoprocessor that can store cryptographic keys and that implements the Trusted Platform Module specification from the Trusted Computing Group." This construction aligned with the disclosure of Ball, facilitating the argument that it was obvious to implement Freund's trusted computing base using a standard TPM.
  • "protected network": "private network, distinct from public networks like the Internet."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate in this case. The core reasons provided were:
  • The validity of the ’048 patent and a related patent remains unsettled, evidenced by a Federal Circuit decision that vacated a Patent Trial and Appeal Board (PTAB) decision on a related patent and remanded for further proceedings.
  • The U.S. Patent and Trademark Office committed material error during the initial examination by allowing the claims without providing reasons for allowance over known prior art.
  • This petition relies on different prior art combinations than those asserted in previous inter partes review (IPR) challenges against the patent, presenting new questions of patentability for the Board to consider.

6. Relief Requested

• Petitioner requests the institution of an IPR and the cancellation of claims 1-20 of Patent 9,516,048 as unpatentable.