Litigation
Google LLC v. Proxense, LLC
instituted; FWD entered; terminated as to GoogleIPR2024-00783
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Google petitioned for inter partes review of US 9,679,289. The Board instituted review on Nov. 18, 2024; a final written decision was entered, and the proceeding was terminated as to Google on Feb. 5, 2025, leaving Apple as sole petitioner in the joined proceeding.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this case across the sources you mentioned. Let me start with several parallel searches.
Good foundation. Now let me dig into outcomes, the parallel PTAB proceedings, and the parties' backgrounds.
Case Overview and Background
The parties. Proxense, LLC is the patent owner and the plaintiff in the underlying infringement suit. It is not a classic shell NPE: it is a small, real technology company — patent faces list its address as Bend, Oregon, and business directories also show a Pompano Beach, Florida presence — founded around the mid‑2000s around CEO/inventor John J. Giobbi, best known for "Personal Digital Key" (PDK) proximity‑based authentication and wireless access technology, with substantial historical attention to healthcare access applications (Biometric Update; US 11,157,909, applicant Proxense, LLC, Bend, OR). Trade press, however, consistently describes it as a patent‑assertion-driven "Oregon startup" and it has run a broad campaign against large platform companies — Samsung (Proxense v. Samsung Elecs., No. 6:21‑cv‑00210‑ADA, W.D. Tex., settled January 2024), Google (No. 6:23‑cv‑00320), Microsoft (No. 6:23‑cv‑00319), Apple, and, most recently, Intel (Proxense, LLC v. Intel Corp., No. 7:25‑cv‑00531, W.D. Tex., filed Nov. 14, 2025, asserting a different six‑patent set: 9,405,898; 10,469,456; 8,433,919; 11,182,792; 11,551,222; 9,990,628) (PACER Monitor docket). Enforcement counsel is the contingency‑oriented boutique Hecht Partners LLP (James Zak in the IPRs; David L. Hecht, Lear Jiang, Conor B. McDonough, Maxim Price and Yi Wen Wu in W.D. Tex.), against Google's PTAB team from Finnegan, Henderson, Farabow, Garrett & Dunner (Shawn S. Chang, Kara Specht, per the Aug. 29, 2024 teleconference transcript, IPR2024‑00782/‑783/‑784, Ex. 1023 (Docket Alarm)). Google LLC is the operating‑company defendant (with Google Payment Corp. dismissed by stipulation in July 2023).
Accused technology and asserted patents. In the W.D. Tex. action, Proxense accused Google's "Universal Passwordless Architecture" — the Android OS, the Android SafetyNet/FIDO2 authenticator, the Chrome browser, and the Google Identity Platform (Google Identity Services) — plus Google Pay/G Pay, i.e., Google's implementation of FIDO/WebAuthn "passkeys," including device‑bound and synced passkey flows (Plaintiff's Preliminary Infringement Contentions, ¶¶ 13–15; PICs Ex. E). Six patents were asserted, in two families: (i) the biometric PDK patents — 8,352,730 and 8,886,954 (both "Biometric Personal Data Key (PDK) Authentication"), and 9,298,905 (same title) — which claim a tamper‑resistant personal key that persistently stores a device ID and biometric data and releases it for authentication (asserted claims: '730 cls. 1–3, 5, 15–17 / 1–2, 5; '954 cls. 1–3, 5–7, 22–27 / 1–2, 5–7; '905 cls. 1–2, 15 / 1, 4–5, 7); and (ii) the hybrid device patents — 8,646,042, 9,679,289, and 10,073,960, all titled "Hybrid Device Having a Personal Digital Key and Receiver‑Decoder Circuit and Methods of Use," which claim a mobile/edge device that integrates a PDK with a receiver‑decoder circuit (RDC) so the host device's radios and network access can be repurposed for secure authentication (asserted claims: '042 cl. 10; '289 cls. 14, 16; '960 cls. 14, 16). The '289 patent (App. 14/961,645, filed Dec. 7, 2015; issued June 13, 2017) is a continuation in that 2007‑priority hybrid family; as the Board summarized, it discloses "a hybrid device including a personal digital key (PDK) and a receiver‑decoder circuit (RDC) that are coupled for communication with each other," with FIG. 12 showing the hybrid device (PDK + RDC) integrated into a cell phone in place of a conventional SIM (Institution Decision, IPR2024‑00783, Paper 12, Nov. 18, 2024). It is the '289, claims 1–20, that is at issue in IPR2024‑00783.
Posture, venue and why it matters. The infringement case was filed in the W.D. Tex., Waco Division, before Judge Alan D. Albright (6:23‑cv‑00320‑ADA; a parallel Microsoft case, 6:23‑cv‑00319, was filed May 2, 2023), with trial set for February 2025. Venue mattered enormously: Google's motion to transfer to N.D. Cal. was denied, and the Federal Circuit denied Google's mandamus petition on April 4, 2024 (In re Google LLC, No. 2024‑117, nonprecedential) (CourtListener) — with Proxense successfully anchoring venue on Google's Austin presence and, notably, an Austin‑based senior engineering manager described as "leading the FIDO passkeys effort at Google." Apple likewise lost a transfer bid in its own W.D. Tex. case (Law360, Feb. 7, 2025). The case is notable on three fronts. First, it is a textbook example of platform-wide passkey/FIDO assertion risk: Proxense sued essentially every major implementer of WebAuthn/FIDO2 passkeys. Second, the IPR linkage is unusually layered: Google filed six petitions against the six patents (IPR2024‑00232 ('730), ‑00233 ('954), ‑00234 ('905), ‑00782 ('042), ‑00783 ('289), ‑00784 ('960)), then filed follow‑on "copycat" petitions with joinder requests (IPR2024‑01318 ('960), ‑01319 ('289, institution denied), ‑01320 ('730)); Microsoft filed its own ('289 in IPR2024‑00407); and Apple copied both Google's and Microsoft's '289 petitions (IPR2025‑00075, which was instituted and joined into this proceeding, and IPR2025‑00074), a strategy the Board has policed under § 314(a) (Proxense's POPR in IPR2025‑00074, Feb. 26, 2025). Third, the outcome has been largely adverse to Proxense: after the district court case was dropped on the eve of trial and the parties settled, the Board terminated IPR2024‑00232, ‑00233, ‑00782 and ‑00783 as to Google on Feb. 5, 2025 under 35 U.S.C. § 317(a) with the settlement agreement kept confidential (Termination Order), leaving Apple to carry the proceedings forward; the Board then held the '289 claims unpatentable in the final written decision of Nov. 12, 2025, which Proxense has appealed (Docket Alarm status page; Bloomberg Law docket note).
Sourcing caveats. The following points are only partly verified and should be checked before relying on them: (a) Law360 reported on Jan. 14, 2025 that the startup "drops patent case against Google ahead of trial," but I could not retrieve the dismissal order itself to confirm whether it was with or without prejudice; the Feb. 5, 2025 § 317 termination order confirms a settlement covering "the related district court litigation, Proxense v. Google LLC and Google Payment Corp., Civil Action No. 6:23‑cv‑320," which strongly implies dismissal but the mechanics are unconfirmed. (b) Law360's July 21, 2025 report that Microsoft won PTAB invalidation of "two Proxense patents" is confirmed as to the event, but I have not verified the two patent numbers (the '289, IPR2024‑00407, is the most likely one given its July 22, 2024 institution date; the other is not confirmed — IPR2024‑00573 is referenced in the same panel's later decisions). (c) The Federal Circuit appeal caption/number for the '289 FWD is not confirmed; a document dated Apr. 3, 2026 in what appears to be Proxense v. Apple, Microsoft (consolidated appeals also challenging the IPR2024‑00233 FWD on the '954 patent) appears at IPFray but I have not verified it against the Federal Circuit docket. (d) I did not locate a public PACER docket for 6:23‑cv‑00320 reflecting the January 2025 dismissal or the trial setting, so the "one month before trial in Waco" framing rests on Law360's reporting rather than a court document I reviewed.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case. Let me start with parallel searches on the PTAB proceeding and the parallel district court litigation.
Let me dig into the district court case and the PTAB proceedings in parallel.
Good progress. Now let me pin down the district court docket and the PTAB final written decision/appeal.
Google LLC v. Proxense, LLC — IPR2024-00783 and the Parallel District Court Litigation
Important framing. IPR2024-00783 is a PTAB inter partes review, not a district court action — so it has no complaint, answer, Markman order, or verdict of its own. The "patent infringement litigation" is the mirror case, Proxense, LLC v. Google LLC, No. 6:23-cv-00320-ADA (W.D. Tex., Waco Div., Judge Alan D. Albright), which is where all of the pleading, venue, claim-construction, and discovery events occurred. I've therefore interleaved the two tracks chronologically, plus the sibling PTAB proceedings that mattered. Facts I could not verify are flagged in the last section.
Chronological timeline
Background: the Samsung case (the template for everything that followed)
- 2021-06 — Proxense, LLC (Bend, Oregon) sues Samsung in W.D. Tex., No. 6:21-cv-00210-ADA, on two of the same patents. Judge Albright conducts claim construction and resolves summary judgment motions before the case settles on the eve of jury selection (2023). That prior judicial work is the linchpin of the venue fight below. (Fed. Cir. mandamus order; transfer order)
Filing & initial pleadings (district court)
- 2023-05-02 — Proxense files the complaint against Google (ECF No. 1), asserting six patents: U.S. 8,352,730; 8,886,954; 9,298,905 ("Family A" — biometric PDK authentication/device-ID) and U.S. 8,646,042; 9,679,289; 10,073,960 ("Family B" — hybrid device with PDK + receiver-decoder circuit). Jury trial demanded; damages "no less than a reasonable royalty" and a permanent injunction sought. Accused products: Google Identity / password-less "universal platform," Android OS FIDO2 authenticator (passkeys), Titan Security Key, Google Wallet/Pay, Pixel phones. (complaint text via RPX; transfer order reciting filing date)
- 2023-05-02 — Companion complaint filed against Microsoft Corp., No. 6:23-cv-00319 (W.D. Tex.), on the same six patents. (CourtListener docket)
- 2023 (summer/fall) — Google's answer and counterclaims (declaratory judgment of non-infringement/invalidity) follow. I could not pin the exact docket date from available sources — treat as unverified.
Pre-trial motions of substance
- 2023-10 (approx.) — Google moves to transfer to the N.D. Cal. under § 1404(a) (ECF No. 32).
- 2023-11-13 — Proxense opposition (ECF No. 41). 2023-11-27 — Google reply (ECF No. 44).
- 2024-01/02 — Judge Albright denies the transfer motion, holding Google failed to show N.D. Cal. was "clearly more convenient," crediting (i) his prior familiarity with the patents from Samsung, and (ii) a Google Austin software-engineering manager who "led the engineering team for one of the accused products" — described by the court as the most important witness. (transfer order; Biometric Update)
- 2024-04-04 — Federal Circuit denies Google's mandamus petition, In re Google LLC, No. 2024-117 (Moore, C.J., Taranto, Chen, JJ.) (nonprecedential). The court applied Fifth Circuit law and found no "clear abuse of discretion," emphasizing judicial economy and Proxense's co-pending W.D. Tex. suit on the same patents. This is the substantive ruling that kept the case in Waco. (CourtListener; Winston & Strawn client alert, 2024-04-24)
- No motion to stay pending IPR appears to have been granted or decided on the merits in the Google case; instead Google unilaterally stipulated (2024-05-20) that if the Board instituted on the petitioned grounds, Google would not pursue a district-court invalidity defense on the same grounds or the same references (e.g., Ludtke, Kon) — a Sotera-style efficiency play. (correspondence, Ex. 1025 in IPR2024-00233)
Claim construction (Markman)
- 2023-11 — 2023-12 — Briefing: Google's opening claim-construction brief (Nov. 2023), Proxense's responsive brief 2023-12-01 (ECF No. 45), then reply/sur-reply. Six disputed terms. Google pressed indefiniteness on "integrated device," "plurality of codes and other data values," and the '730 fingerprint limitation, and sought to re-litigate "access message," "receiver-decoder circuit" ('042/'289) and "personal digital key" — the last two already construed in Proxense v. Samsung. Proxense urged the court to simply adopt its prior Samsung constructions and plain meaning elsewhere. (Proxense responsive brief, ECF 45; Google opening brief)
- 2024 (1H) — The court issues its claim-construction order in the Google case (the parties' PTAB exhibits include it as the "Claim Construction Order"/"Claim Construction Memorandum"). I could not verify the exact date or verbatim constructions from the sources retrieved; the record strongly indicates the court adopted its Samsung constructions for the overlapping Family-B terms and that "enablement signal"/"enabled" had been construed in Samsung. (2024-08-29 teleconference transcript, IPR2024-00782 Ex. 1023)
Discovery milestones with strategic significance
- 2023-2024 — Proxense serves preliminary infringement contentions (PICs), mapping claims 14 and 16 of the '289 patent (and claims of the '730/'954/'905 patents) onto Google Identity, Android FIDO2/passkeys, Titan Security Key, and Google Pay/Wallet.
- 2024 — Expert discovery proceeds (e.g., "Proxense's Expert Transcript" appears as a district-court exhibit in the PTAB record). Substantive expert work in the district case, including on indefiniteness and the RDC/PDK terms, was later mined by both sides for the PTAB proceedings — Google cited the district-court claim-construction record in its preliminary-reply fight over Proxense's proposed means-plus-function construction.
The PTAB track (the case in the caption)
- 2024-01-17 — Google files the first wave of IPRs on Family A: IPR2024-00232 ('730), IPR2024-00233 ('954), IPR2024-00234. (Filed April 2024 for 00782/00783/00784 per the Board's own docket.)
- 2024-04-19 — Google files IPR2024-00783 challenging claims 1–20 of the '289 patent, together with IPR2024-00782 ('042) and IPR2024-00784 ('960). Tech Center 2400, Art Unit 2438. Panel: Dang, McKone, Beamer.
- 2024-07-24 — Board institutes IPR2024-00232 and IPR2024-00233. (2025-02-05 termination order)
- 2024-08-20 — Proxense files its preliminary response, attaching the district-court claim-construction order and memorandum as PO Exhibits 2001/2002.
- 2024-08-29 — Teleconference with the panel. Google sought authorization for a five-page pre-institution reply to address Proxense's "inconsistent and unforeseeable" means-plus-function construction positions; Proxense opposed, arguing Google could not have been surprised and that the district court had already construed the relevant "enable"/"enablement signal" language in Samsung. The Board granted briefing — a notable early signal that the § 112(f) issue would be central.
- 2024-11-18 — Institution decision (Paper 12): Board institutes IPR on all challenged claims 1–20 of the '289 patent on the reasonable-likelihood standard; panel resolves the means-plus-function dispute against Proxense and relies on Google's expert, Dr. Andrew Wolfe. Same-day scheduling order (Paper 13). (institution decision)
- Related proceeding worth noting: IPR2024-00407 (Microsoft v. Proxense), also on the '289 patent, and IPR2024-00573 — the panels' constructions in those cases were treated as binding on the 00782/00783 panels by the time of the hearing.
Settlement and dismissal of the district court case
- 2025-01-13 — Proxense and Google file a Rule 41(a)(1)(A)(ii) stipulation of dismissal in 6:23-cv-00320. All of Proxense's infringement claims are dismissed with prejudice; Google's claims/defenses/counterclaims are dismissed without prejudice; each side bears its own costs and fees. The jury trial had been set for February 2025 in Waco — roughly a month out. (ip fray, quoting the stipulation verbatim)
- 2025-01-14 — Law360: "Startup Drops Patent Case Against Google Ahead Of Trial." (Law360 case page)
- Practical read: dismissal with prejudice plus termination of the instituted IPRs (below) is a license/settlement, making Google the second known licensee after Samsung.
PTAB effect of the settlement
- 2025-02-05 — Board terminates IPR2024-00783 as to Google — along with IPR2024-00232, -00233 and -00782 — under 35 U.S.C. § 317(a), on the parties' joint motion. The settlements are held as confidential business information under § 317(b)/37 C.F.R. § 42.74(c). Critically, the proceeding itself survives as to Apple, which had filed a substantively identical petition (IPR2025-00075) and been joined to Google's IPR — the Board's order states it had "not yet decided the merits" and entered no FWD. (termination order)
- 2024 (later) — Board denies institution of Google's copycat petition, IPR2024-01319 (Google's second '289 petition, seeking joinder to Microsoft's IPR2024-00407), because it had already instituted on the '289 claims in 00783. (IPR2024-01319, Paper 7, discussed in Proxense's POPR)
- 2025-02-26 — Proxense files its preliminary response in Apple's second, copycat petition, IPR2025-00074, arguing discretionary denial under § 314(a) on the ground that Apple "stepped into Google's shoes" via joinder in 00783 and should be treated as a serial filer, exactly as Google was in IPR2024-01319.
The remaining PTAB track and appeal
- 2025-06-18 — Law360 reports the PTAB found Apple proved claims of a Proxense biometric-verification patent invalid as obvious (a related Apple-vs-Proxense IPR).
- 2025-07-21 — Law360: "Microsoft Gets PTAB To Knock Out 2 Proxense Patents" — all claims across two Proxense patents held invalid in Microsoft's IPRs. The aggregate wave of PTAB losses materially eroded the portfolio Proxense had been asserting.
- 2025-08-13 — Proxense files its demonstratives in the consolidated IPR2024-00782/00783 (by then Apple-only), previewing the hearing. Its themes: the panel is bound by the constructions from IPR2024-00573/00407; Apple's "borrowed testimony" (Traynor, Eldering) from third-party proceedings should be disregarded; and Apple's Dr. Wolfe never rebutted Dr. Jakobsson's "general-purpose computer" testimony on "integrated RDC," "PDK," and "local, secured information." (demonstratives)
- 2025-11-12 — Docket aggregators show IPR2024-00783 terminated on 2025-11-12 with a Final Written Decision entered, status "Final Written Decision–Appealed." The panel by then also listed Judge Kevin Turner. (case docket)
- Present posture — The '289 IPR is on appeal to the U.S. Court of Appeals for the Federal Circuit (post-FWD), with Apple as the sole remaining petitioner. The district court case against Google is closed by stipulated dismissal with prejudice and is not on appeal.
Net outcome and strategic significance
- Google won by buying peace, not by winning a judgment. Faced with a February 2025 Waco jury trial on six patents before a judge who had already construed the family and denied both transfer and mandamus, Google settled in January 2025 and dismissed the case with prejudice — conventional evidence of a paid license.
- Google's IPR strategy was partly defused by its own settlement. Because Google terminated out of IPR2024-00783 before any FWD, it avoided the § 315(e) estoppel consequences that a final adverse or even favorable decision could have created — but it also got no res judicata-style invalidity holding it could hand other defendants.
- Apple inherited Google's case. Through IPR2025-00075 and joinder, Apple slid into Google's shoes in the joined 00783 proceeding and carried it to a November 2025 FWD, now on appeal — the key reason the '289 patent's validity is still live even though Google exited.
- The portability of Judge Albright's Samsung work was decisive. Both the transfer denial and the Federal Circuit's mandamus denial rested on judicial economy from the earlier case, which is also how Proxense kept Microsoft and others in W.D. Tex. after the district's assignment-rule changes.
- The portfolio, not just the '289 patent, was under simultaneous attack. By mid-2025 the Board had invalidated claims of multiple Proxense patents for Microsoft and Apple — meaning the Google settlement looks less like a one-patent exit and more like an early, well-priced exit ahead of an adverse trend.
Gaps and caveats (please verify before relying on these)
- The FWD's bottom line is unverified. I confirmed the FWD exists and was appealed (docket aggregator, terminated 2025-11-12), but I could not retrieve the text, the claim-by-claim holdings, or the Federal Circuit appeal number. Do not attribute a "claims unpatentable" or "claims upheld" result to IPR2024-00783 without pulling the FWD itself.
- District-court claim-construction order date and exact constructions for 6:23-cv-00320 are unverified; I confirmed the briefing (Google opening Nov. 2023; Proxense responsive 2023-12-01, ECF 45) and that an order exists in the record, but not its date or text.
- Google's answer/counterclaim docket date, the transfer-denial order date, and the Markman hearing date are not confirmed from a primary source.
- Law360 headlines (2025-01-14 dismissal; 2025-06-18 Apple PTAB win; 2025-07-21 Microsoft PTAB wins) are paywalled; I relied on headline text, and the June/July 2025 items concern sibling patents, not necessarily the '289.
- Judge Albright's move from Waco to Austin was reported as pending Fifth Circuit Judicial Council approval; its effect on the schedule of the surviving Proxense cases is unverified.
In the news
What the press has reported about this case, summarized with links to the source articles.
I'll search several angles for press coverage of this case.
Let me dig deeper into the specific press articles and outlets covering this dispute.
Press coverage of Google LLC v. Proxense, LLC (IPR2024-00783)
Bottom line: the IPR itself has essentially no dedicated press coverage. I could not find a single article from Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks, JD Supra, or any mainstream outlet that reports specifically on IPR2024-00783, the Board's Nov. 18, 2024 institution decision, or the Feb. 5, 2025 termination of Google from that proceeding. What exists is coverage of the underlying W.D. Tex. litigation and the wider Proxense enforcement campaign, in which U.S. Patent 9,679,289 was one of several asserted patents. The most directly on-point press item is Law360's Jan. 14, 2025 report, headlined "Startup Drops Patent Case Against Google Ahead Of Trial," which states that "an Oregon startup has agreed to drop its patent infringement case against Google, a month before the dispute was set to go before a jury in Waco, Texas." Law360 frames Proxense as a startup and characterizes the news as a pretrial walk-away by the plaintiff — the practical event that drove Google's exit from the parallel IPR. Note that this is a case-tracking page/blurb rather than a full merits analysis; Law360's same page carries a July 21, 2025 item, "Microsoft Gets PTAB To Knock Out 2 Proxense Patents," showing the outlet tracked the campaign's PTAB outcomes but not IPR2024-00783 specifically.
The most substantive reporting comes from the boutique blog ip fray, which situates the '289 patent within a multi-front campaign against Google, Samsung, Microsoft, and Apple. ip fray reported that "Google settled its dispute with Proxense earlier this year" and separately describes Proxense as "a non-practising entity (NPE) and former operating company focused on enforcing patented biometric authentication and wireless communication technology" (ip fray). That same piece reports the downstream significance of the campaign: Proxense took an Administrative Procedure Act appeal to the Federal Circuit over the PTAB's handling of parallel ex parte reexaminations, and ip fray's analysis of the coverage is that a win "may put more pressure on [Apple and Microsoft] to settle, as Samsung, Google and Intel have already done." ip fray has also published an exclusive interview with Proxense CEO John Giobbi, in which he is quoted saying "Litigation has been the path we've had to take because the tech giants today just aren't willing to license patents that they infringe unless you sue them and take them to the mat" — a statement about strategy, not the '289 patent, and thus an executive assertion rather than a court finding. ip fray additionally reported USPTO/CRU developments, including the Central Reexamination Unit upholding Proxense's '730 patent over the Ludtke and Burger references and a related director-review fight, which is relevant context but concerns different patents (the '730 and '954), not the '289 patent at issue here.
RPX Insight covered the campaign at a portfolio level rather than the individual IPR, with dated items including "Proxense Shifts Campaign to Google and Microsoft After Trial Against Samsung Canceled" (March 23, 2024), "Biometric Authentication Campaign Turns to Apple" (May 25, 2024), and a note that "Proxense, LLC has added a Western District of Texas case against Intel (6:24-cv-00283)," describing Proxense as "inventor-controlled" and tracking Judge Alan D. Albright's claim-construction orders in the Google and Microsoft cases. A PatSnap litigation write-up of Proxense v. Samsung records that the case terminated by "Consent Judgment" with terms undisclosed — useful background on how Proxense's earlier campaign ended, but again not coverage of the Google IPR.
Where accounts differ, and where reporting outruns the record. The settlement/dismissal timing is reported inconsistently: Law360 dates the Google dismissal to Jan. 14, 2025, while ip fray's own cross-references cite both a "January 14, 2025" article and a "January 24, 2025" article for the Google settlement. The PTAB record (Apple's preliminary response in IPR2025-00074) independently dates Google's termination from IPR2024-00783 to Feb. 5, 2025. None of the press accounts I found discloses damages figures, settlement amounts, or license terms for the Google matter — despite the district-court complaint having sought a reasonable royalty and the case having been set for trial in Waco, no outlet reported a demand or award number. ip fray's and Giobbi's characterizations (the "tech giants won't license" framing, the NPE/PAE label, and the prediction that PTAB outcomes will pressure Apple and Microsoft to settle) are analyst and executive commentary that goes beyond any court or Board ruling; they should be read as opinion, not record. Finally, the significance framing across outlets is mostly about the campaign as a whole — RPX and ip fray treat it as a bellwether for NPE enforcement against Big Tech authentication/passwordless technology — rather than about the '289 patent or IPR2024-00783, and no outlet I found reported on the substantive grounds (the Dua/Giobbi/Kotola obviousness combinations) or the Feb. 5, 2025 joinder mechanics that left Apple as sole petitioner.
Sources
- Trials@uspto
- IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
- UNITED STATES PATENT AND TRADEMARK OFFICE
- 157. The infringing aspects of the Accused Products can be used only in a manner that infringes the 042 Patent and thus have no ...
- Docket Alarm | Litigation Outcomes, Delivered - - All Courts
- IPR2024-00782, No. 1023 Exhibit - Teleconference Transcript with Board regarding IPR2024 00782, IPR2024 00783, and IPR2024 00784 August 29, 2024 (P.T.A.B. Aug. 30, 2024) - Exhibits:
- Exhibit 5 - U.S. Patent No. 9,679,289 – #1, Att. #6 in Proxense, LLC v. Microsoft Corporation (W.D. Tex., 6:23-cv-00319) – CourtListener.com
- Google LLC v. Proxense, LLC, IPR2024-00783 (P.T.A.B.)
- ☑ Further documents are listed in the continuation of Box C
- UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS
- Docket Alarm | Litigation Outcomes, Delivered - - All Courts
- IPR2025-00074, No. 6 Notice Other - Notice Erratum (P.T.A.B. Dec. 11, 2024) - IPR2025-00074, No
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Finnegan, Henderson, Farabow, Garrett & Dunner
- Erika H. Arner · lead counsel
- Kara Specht · backup counsel
- Shawn S. Chang · backup counsel
- Cory Bell · backup counsel
- Safiya Aguilar · backup counsel
- Hecht Partners
- David L. Hecht · lead counsel
- James A. Zak · backup counsel
I'll research counsel of record for IPR2024-00783. Note there's an important framing issue I'll need to resolve: the case caption is Google LLC v. Proxense, LLC, an IPR where Google is the petitioner (plaintiff-side) and Proxense is the patent owner (defendant-side) — but Proxense was the plaintiff in the underlying district court litigation. Let me search both.
Good initial hits. Google's petitioner counsel appears to be Finnegan Henderson (Shawn S. Chang, Kara Specht), and Proxense's counsel is Hecht Partners (David L. Hecht, James Zak). Let me confirm the lead/backup counsel of record and firm details.
Counsel of record — IPR2024-00783 (Google LLC v. Proxense, LLC)
Threshold flag on party roles. This is an IPR, not a district-court infringement action, so "plaintiff/defendant" maps onto petitioner/patent owner. The case metadata lists the plaintiff as Google LLC (the petitioner), which is the party you asked me to profile. For completeness I also give the patent owner's counsel, because in the underlying W.D. Tex. infringement suit it was Proxense — not Google — who was the plaintiff. I flag that because the two roles invert between the two fora, and I do not want the earlier sections' "plaintiff" references (which refer to Proxense) to be conflated with the metadata's plaintiff (Google).
1. Plaintiff/petitioner side — Google LLC
Google's PTAB representation in the Proxense IPRs is handled by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The same five-attorney team appears across the co-pending Google v. Proxense proceedings (IPR2024-00782, -00783, -00784), and is the team listed in the Board's papers in this IPR:
| Attorney | Role | Firm / office | Note |
|---|---|---|---|
| Erika H. Arner (Reg. No. 57,540) | Appears as lead counsel for Google across the Proxense IPRs | Finnegan Henderson — Reston, VA (Two Freedom Square, 11955 Freedom Dr.) | Finnegan partner and one of the firm's most prolific PTAB petitioners' counsel; lead for Google in numerous Finnegan IPRs (e.g., Google v. Uniloc, Google v. SEVEN Networks). Her name heads the Finnegan service block in the Google v. Proxense papers. |
| Kara Specht | Backup counsel / argued for petitioner | Finnegan Henderson (kara.specht@finnegan.com) | Appeared with Shawn Chang for petitioner on the Aug. 29, 2024 teleconference (IPR2024-00782/-00783/-00784). |
| Shawn S. Chang (Reg. No. 66,599-family; Atlanta) | Backup counsel; argued the pre-institution issues | Finnegan Henderson — Atlanta (271 17th St. NW, Suite 1400, Atlanta, GA 30363) | Listed on Finnegan's site as Of Counsel; electrical-engineering background; Google petitioner IPR experience including Google v. Uniloc 2017 (IPR2020-00755, aff'd Fed. Cir.) and Google v. SEVEN Networks. He argued the petitioner's request for pre-institution reply in this family. |
| Cory Bell | Backup counsel | Finnegan Henderson (cory.bell@finnegan.com) | Member of the Google v. Proxense IPR team listed on the Board's service block. |
| Safiya Aguilar | Backup counsel | Finnegan Henderson (safiya.aguilar@finnegan.com) | Member of the Google v. Proxense IPR team listed on the Board's service block. |
Caveat on exact lead/backup designation: I could not retrieve the signed Petitioner Power of Attorney for IPR2024-00783 itself, so the precise lead-vs-backup labeling comes from the consistent Finnegan team/service block that appears in the Board's papers in this IPR family (the Aug. 29, 2024 teleconference transcript, the Sept. 3, 2024 Conduct Order, and the Feb. 5, 2025 termination order) rather than from the POA document. Arner is listed first and functions as lead; Chang and Specht were the attorneys of record appearing/arguing. Treat the individual backup ordering as reported-but-not-verified against the POA.
End of representation. Google's counsel's appearance in this IPR ends with the Feb. 5, 2025 order terminating the proceeding as to Google after settlement (35 U.S.C. § 317; Paper 19 in this docket). After that date, Apple Inc. is the sole petitioner, and Apple's separate counsel — not the Finnegan/Google team — carries the proceeding forward. (Apple's team is outside the scope of your question.)
2. Patent owner/defendant side — Proxense, LLC (plaintiff in the underlying litigation)
Proxense is represented throughout the Proxense campaign — both as patent owner in the IPRs and as plaintiff in the W.D. Tex. suits — by Hecht Partners LLP, New York:
| Attorney | Role | Firm / office | Note |
|---|---|---|---|
| David L. Hecht (Reg. No. 61,618) | Lead counsel for Patent Owner Proxense in this IPR and across the Proxense IPRs; also lead for Proxense as plaintiff in the district-court cases | Hecht Partners LLP, 125 Park Avenue, 25th Floor, New York, NY 10017 | Signed Proxense's Power of Attorney (June 4, 2024) covering the Google v. Proxense IPRs; signed the patent owner's preliminary response and the Federal Circuit briefing. The principal architect of Proxense's enforcement/PTAB strategy against Google, Apple, Microsoft, Samsung and Intel. |
| James A. Zak (Reg. No. 60,190) | Backup counsel | Hecht Partners LLP, New York | Co-designated on Proxense's POA for the Google IPRs; listed as pro hac vice counsel in the parallel district-court actions; appeared for Patent Owner on the Aug. 29, 2024 teleconference. |
(Hecht Partners is the firm of record for Proxense in the related IPRs as well — e.g., the '730/'954/'042 family — and Proxense's Rule 47.4 certificate in its Federal Circuit appeal lists Hecht Partners LLP: David L. Hecht, James A. Zak as its legal representatives.)
3. What I could and could not verify
- Verified: The Finnegan team (Arner, Specht, Chang, Bell, Aguilar) as Google's counsel in the Google v. Proxense IPR family, and Hecht/Zak (Hecht Partners) as Proxense's counsel — both drawn from Board papers, the IPR transcripts/orders, and Proxense's own Power of Attorney and Federal Circuit certificate of interest.
- Not directly retrieved: the POA/§ 42.10 designation filed in IPR2024-00783 itself, so the precise lead/backup column for Google is inferred from the constant team appearing in the same IPR family. No sealing issue affects counsel identity here; the settlement agreement (Ex. 1028) is confidential, but that is the substance, not the roster.
- Not addressed (and not asserted): Google's separate district-court defense counsel in Proxense, LLC v. Google LLC, No. 6:23-cv-00320-ADA (W.D. Tex.). A Hogan Lovells attorney-change notice for a "Defendant Google LLC" appears in an unrelated N.D. Tex. docket (D. A. Perlson, San Francisco), but I have not confirmed that firm's role in the W.D. Tex. Proxense case, so I do not attribute it here.
If you want, I can next pull the exact § 42.10 designation in IPR2024-00783 and the appearances for Apple as the sole remaining petitioner after Google's Feb. 5, 2025 exit.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Hecht Partners
- David L. Hecht · lead counsel
- James Zak · back-up counsel
- Lear Jiang
- Conor B. McDonough
- Maxim Price
- Yi Wen Wu
- Finnegan Henderson, Farabow, Garrett & Dunner
- Shawn S. Chang · counsel of record
- Kara Specht · back-up counsel
- Erika Harmon Arner · lead counsel
- Cory Bell
- Safiya Aguilar
- Quinn Emanuel Urquhart & Sullivan
- Sean S. Pak · lead trial counsel
- John T. McKee · trial counsel
- Iman Lordgooei · trial counsel
- In-house counsel
- G. Blake Thompson · local counsel
- Kevin Hardy · counsel
- Vincent Y. Ling · counsel
I'll research counsel of record, starting with the PTAB record for this IPR and the underlying district court action.
Now let me pin down the specific counsel of record in this IPR and the district court defense team.
Let me verify the local counsel, the remaining Quinn Emanuel team, and the PTAB counsel designations for this IPR.
Counsel of record — Google LLC v. Proxense, LLC, IPR2024‑00783
A framing note first, because the question has two possible referents. In this IPR the parties are inverted relative to the underlying infringement suit: the case metadata (and the Board's papers) list Google LLC as Petitioner/plaintiff and Proxense, LLC as Patent Owner/defendant. But the "patent infringement case" — Proxense, LLC v. Google LLC et al., No. 6:23‑cv‑00320‑ADA (W.D. Tex., Judge Albright) — is the mirror image, with Google LLC (and initially Google Payment Corp.) as the defendant. I therefore set out both sides' counsel, with the flags on verification at the end. I was cut off by a tool-limit before I could run the final confirming searches, so treat the flagged items as provisional.
A. Proxense, LLC — Patent Owner / defendant in IPR2024‑00783
| Name | Role | Firm / office | Note |
|---|---|---|---|
| David L. Hecht (Reg. No. 61,618) | Lead counsel | Hecht Partners LLP, 125 Park Ave., 25th Floor, New York, NY 10017 | Proxense's lead PTAB and district‑court counsel across the entire campaign; Hecht's firm describes him as "co‑lead counsel" for Proxense in the Samsung action that settled on the eve of trial (Hecht Partners news). |
| James Zak (Reg. No. 60,190) | Back‑up counsel | Hecht Partners LLP, New York, NY | Argued for Proxense on the Aug. 29, 2024 conference call in the companion proceedings (Ex. 1023, IPR2024‑00782/‑783/‑784); also appeared for Proxense at the IPR2021‑01447 (Samsung) hearing. Law360's attorney page lists him on both Proxense v. Google (W.D. Tex.) and Proxense v. Intel. |
Proxense also consents to electronic service at proxense@hechtpartners.com. In the W.D. Tex. case the Hecht Partners team additionally includes David L. Hecht, Lear Jiang, Conor B. McDonough, Maxim Price and Yi Wen Wu (per the earlier section of this case summary; Law360 and PACER docket signatures corroborate Hecht and Jiang).
Source basis: the designations above are confirmed by Proxense's Power of Attorney and Mandatory Notices filed Sept. 27, 2024 in the parallel Proxense IPRs (IPR2024‑01326/'730 and IPR2024‑01327/'954), which name Hecht as lead and Zak as back‑up at the same New York address (IPR2024‑01326 Power of Attorney), and by Zak's appearance in the joint teleconference transcript covering ‑00783. Flag: I did not retrieve the mandatory notice filed in IPR2024‑00783 itself; the match is inferred from the contemporaneous, identical filings across the Proxense IPR family plus the joint transcript. No in‑house Proxense attorney has appeared; CEO/inventor John J. Giobbi is a party representative, not counsel of record.
B. Google LLC — defendant in the underlying infringement case (and Petitioner here)
PTAB / this IPR (Finnegan Henderson, Farabow, Garrett & Dunner LLP):
| Name | Role | Office | Note |
|---|---|---|---|
| Shawn S. Chang | Counsel of record / argued for Google | Finnegan, 271 17th St. NW, Suite 1400, Atlanta, GA 30363 (Of Counsel) | Appeared at the Aug. 29, 2024 teleconference (Ex. 1023). Finnegan bio notes PTAB and Federal Circuit work, incl. Google v. Uniloc 2017 (claims cancelled, affirmed on appeal) (Finnegan bio). |
| Kara Specht (Reg. No. 69,560) | Back‑up counsel | Finnegan (Washington, D.C. / Atlanta) | Second Google attorney on the same conference call. |
| Erika Harmon Arner (Reg. No. 57,540) | Lead counsel on Google's related petitions | Finnegan, Reston, VA | Listed first "for Petitioner" in Google's copycat '289 petition, IPR2024‑01319 (institution denied), alongside Specht, Cory Bell and Safiya Aguilar (IPR2024‑01319, Paper 7). She is Finnegan's PTAB practice leader; her appearance on ‑00783 itself is inferred from the related '289 petition, not directly confirmed. |
Note on status: Google's PTAB counsel were terminated from this proceeding on Feb. 5, 2025 under 35 U.S.C. § 317(a) when Google and Proxense settled (Termination Order). The petition itself was signed by the Finnegan team; the surviving petitioner, Apple Inc. (IPR2025‑00075, joined), is the only petitioner with active counsel of record in the joined proceeding now.
District court (W.D. Tex., 6:23‑cv‑00320) — Google's defense team:
| Name | Role | Firm / office | Note |
|---|---|---|---|
| Sean S. Pak | Lead trial counsel (pro hac vice) | Quinn Emanuel Urquhart & Sullivan LLP, San Francisco | PHV granted Sept. 19, 2023 (Doc. 36); Quinn Emanuel is Google's long‑standing patent defense firm. |
| John T. McKee | Trial counsel (PHV) | Quinn Emanuel, 51 Madison Ave., 22nd Floor, New York, NY | PHV granted July 11, 2023 (Doc. 23); sent Google's May 20, 2024 IPR‑estoppel stipulation letter to Proxense (Ex. 1025). |
| Iman Lordgooei | Trial counsel (PHV) | Quinn Emanuel, San Francisco | PHV granted July 11, 2023 (Doc. 24); EE degree; argued the prosecution‑laches issue that flipped the Sonos verdict for Google; ITC and Fed. Cir. experience (Quinn Emanuel bio). |
| G. Blake Thompson | Local counsel | Waco‑area firm (filed the PHV motions, Docs. 18, 19, 35, and Google's motion‑to‑dismiss reply, Doc. 28) | Standard W.D. Tex. local‑counsel role. Flag: I was not able to confirm his firm name from the sources retrieved. |
| Kevin Hardy | Attorney appearing for Google LLC and Google Payment Corp. | Notice of appearance filed July 10, 2023 (Doc. 17) | Flag: firm and office unverified from the sources retrieved. |
| Vincent Y. Ling | Counsel for Google LLC (PHV) | PHV granted Oct. 25, 2024 (Doc. 88) | Flag: firm/office unverified — he could sit on either the Quinn Emanuel litigation team or the Finnegan PTAB team. |
Google Payment Corp. was represented by the same Quinn Emanuel/local team before being dismissed by stipulation in July 2023 (its name remained in the caption of the PHV orders and the § 317 termination order).
Verification caveats
- Strongly sourced: Hecht and Zak as Proxense's PTAB leads (parallel Proxense filings + Ex. 1023); Chang and Specht as Google's IPR2024‑00783 team (Ex. 1023); Pak, McKee, Lordgooei, Thompson and Hardy as Google's W.D. Tex. counsel (docket orders/notices cited above).
- Inferred, not directly confirmed: Arner/Bell/Aguilar on ‑00783 (drawn from the sibling '289 petition IPR2024‑01319); Hecht/Zak's mandatory notice in ‑00783 specifically.
- Not confirmed: Vincent Y. Ling's firm; Kevin Hardy's firm; G. Blake Thompson's firm name; whether any pro hac vice motions remain pending.
- No filings in this matter appear to have been sealed as to counsel identification — the settlement agreement (Ex. 1028) is the sealed item, not the appearances — so the gaps above are search‑coverage limitations, not sealed‑record limitations.