Litigation
Google LLC v. Security First Innovations, LLC
terminated (institution denied)IPR2024-00213
- Filed
- 2023-11-27
- Terminated
- 2024-07-30
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Google petitioned for inter partes review of the '140 patent. The PTAB denied institution on June 6, 2024, denied Google's request for rehearing on July 30, 2024, and terminated the 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 PTAB docket and the parallel district court litigation.
Now let me dig into the parallel district court case and the § 101 ruling.
Let me verify the PTAB denial reasoning and the parallel IPRs' outcomes.
Overview and Background
The parties. Security First Innovations, LLC v. Google LLC is the district court action that the PTAB proceeding above sits inside. The plaintiff/patent owner, SFI, is a Virginia LLC formed on July 5, 2022 by Leo Guthart, the former chairman of Security First Corporation's board, and it acquired a portfolio of 92 U.S. patent assets in August 2022 from Security First Corporation (SFC), a data-security vendor founded in 2002 that built products such as SPxSHARC, SPxGateway and SPxClient, licensed technology to Unisys and IBM, and collapsed into bankruptcy around 2020 (RPX, "'Data Chunks' Patents Make Litigation Debut," Mar. 12, 2023; Am. Compl. ¶¶ 14–17, E.D. Va. ECF 126). This is a classic non-practicing-entity posture: Judge Walker expressly found SFI to be "a non-producing entity that does not directly compete with Google" when granting the stay (ECF 313 at 8–9), and RPX describes the Google suit as SFI's "sole litigation campaign" before it sued IBM in May 2025. Google, the defendant and the IPR petitioner, is the operating company whose cloud storage and key-management infrastructure is accused. Google's PTAB team is Wolf, Greenfield & Sacks (Elisabeth H. Hunt, Richard F. Giunta, Thomas A. Franklin); SFI's PTAB team is Sullivan & Cromwell (Stephen J. Elliott, Andrei Iancu, Dustin Guzior) with Lowenstein & Weatherwax (Kenneth Weatherwax, Nathan Lowenstein, Colette Woo) — Iancu, a former USPTO Director, also appears as SFI's district-court pro hac vice counsel alongside local counsel Charles B. Molster III.
The accused technology and the asserted patents. The first amended complaint targets Google's "encryption at rest" functionality in Google Cloud — the envelope-encryption scheme in which customer data is broken into "chunks," each chunk encrypted with its own Data Encryption Key (DEK), and each DEK then "wrapped" with a Key Encryption Key (KEK) held in Google's centralized "Keystore" service, with wrapped keys stored alongside the chunks across Google's distributed storage (Compl. ¶¶ 33–42, 71–79). For the '140 patent specifically, SFI also points to Google Drive, alleging that the Drive file directory functions as the claimed "virtual disk" whose mapping hides the physical location of the stored shares (Compl. ¶¶ 135–36 & p. 48). All four asserted patents share the "Secure Data Parser Method and System" family and a common specification, and SFI asserts claim 1 of each: U.S. Pat. No. 10,452,854 (the parent — splitting a data set into shares, encrypting each share with a distinct key, performing a further encryption operation using an external key, and storing shares with key-indicating data across multiple devices); U.S. Pat. No. 11,068,609 (a continuation of the '854 — the same chunk/DEK/KEK idea framed as a method step executed by a processor); U.S. Pat. No. 11,178,116 (data chunks each insufficient alone to reconstruct the set, each encrypted with a different key, the keys obfuscated, and each chunk stored with its obfuscated key on different storage devices); and U.S. Pat. No. 9,338,140 (the asserted claim here — a "secure storage network" presenting a client with a virtual disk whose directory is mapped to physical devices so share locations are hidden, with shares tied to a session key and reconstituted on request) (E.D. Va. ECF 125 at 3–5; PTAB Ex. 1001, 98:2–22).
Posture, venue, and why the case matters. SFI filed on March 10, 2023 in the Eastern District of Virginia's Alexandria Division (No. 1:23-cv-329); the case was transferred to the Norfolk Division and reassigned to District Judge Jamar K. Walker (Magistrate Judge Robert J. Krask), docketed as No. 2:23-cv-00097 — a venue that matters because E.D. Va. is the "rocket docket," SFI is a Virginia entity (so transfer/improper-venue attacks are weak), and the district imposes heightened disclosure obligations on litigants. Google moved to dismiss under § 101 (Alice) on April 28, 2023; on November 15, 2023 Judge Walker denied the motion, holding the claims were not drawn to an abstract idea but to "a non-abstract improvement in the function of computers: an improved method for securely storing parsed and encrypted data on at least one storage device," and simultaneously granted SFI leave to amend to add willful-infringement allegations as to the '140 patent only, based on meetings between Google and SFC (ECF 125; ECF 126; RPX/Mondaq coverage, May 20, 2025). Google then filed four IPRs in late November 2023, and the court stayed the whole case on January 19, 2024 (ECF 313), and refused to partially lift the stay on December 10, 2024 (ECF 326) — notably keeping the '140 patent stayed even though the Board had denied institution in IPR2024-00213, reasoning that the IPR record on the family-related '116 patent could still inform claim construction. That divergence is the case's central drama: three IPRs (the '116, '609 and '854 patents) were instituted and, in final written decisions issued May 16, 2025, the Board held all challenged claims unpatentable — decisions now reported as on appeal (with a Director Review request noted in IPR2024-00212) — while the '140 patent, the subject of this proceeding, survived institution denial and remains the lone patent not invalidated by the PTAB. That makes the '140 the case's last viable vehicle, and a time-pressured one: SFI argued (unsuccessfully) that the '140 patent expires in October 2025, so a continued stay forecloses meaningful damages and any injunctive relief. The broader significance is that SFI is using a bankrupt operating company's 2000s-era "split-and-encrypt" portfolio to test whether routine, industry-standard cloud envelope encryption (distinct data keys wrapped by a master key and stored with the ciphertext) reads on these claims — an issue with implications well beyond Google, as SFI's follow-on E.D. Va. suit against IBM over IBM Cloud Object Storage (No. 25-cv-00514, Judge Trenga) and IBM's three July 2025 IPR petitions (IPR2025-01200/01201/01202, reportedly discretionarily denied) demonstrate.
Sourcing notes: Party history, the Alice ruling, stay orders, PTAB filings/decisions, counsel, and docket numbers are corroborated by the Justia/CourtListener dockets for 2:23-cv-00097, the published opinions at ECF 125 and 313/326 (via Justia and Virginia Lawyers Weekly VLW 024-3-650), RPX Insight, PTAB docket aggregators (Docket Alarm, IPVerse, Patexia), and the POPR/PTAB filings themselves. The specific accused-instrumentality mapping (Keystore/DEK/KEK, Google Drive as the "virtual disk") comes primarily from the complaint as summarized by third-party complaint-analysis services (Ex Parte's docket analysis of ECF 1/126) — I'd treat that granular mapping as attributed, not independently verified against the pleading text. I was not able to retrieve the full text of the Board's June 6, 2024 institution-denial or the July 30, 2024 rehearing denial in IPR2024-00213 before running out of search steps, so I've described the denial as docket-confirmed but have not asserted the Board's precise rationale; the POPR shows SFI argued inter alia that Dickinson was already before the Examiner (§ 325(d)) and that the Dickinson-based combinations fail on limitations 1[B][1] and 1[B][3].
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research this case. Note upfront: the metadata describes a PTAB IPR (IPR2024-00213), not a district court case — so I'll verify the parallel litigation and PTAB posture carefully.
Now let me dig into the parallel E.D. Va. litigation and the sibling IPRs.
Let me get the district court's substantive rulings and the PTAB final written decisions.
Threshold note: what "this case" actually is
The metadata case, IPR2024-00213, is not a litigation — it is a PTAB inter partes review of U.S. Patent No. 9,338,140 that never got past the institution stage. There is no complaint, answer, counterclaim, Markman, trial, verdict, or JMOL in it. Its "final disposition" was a denial of institution (2024-06-06) plus a denial of rehearing (2024-07-30), after which the Board terminated the proceeding.
The litigation you're asking about is the co-pending district court action that IPR2024-00213 (and three sibling IPRs) were filed against:
Security First Innovations, LLC v. Google LLC, No. 2:23-cv-00097-JKW-RJK (E.D. Va., Norfolk Div.) (originally filed in the Alexandria Division as No. 1:23-cv-00329), before District Judge Jamar K. Walker and Magistrate Judge Robert J. Krask.
Below I cover both tracks chronologically. Where I could not verify a fact from a source, I say so.
A. District court litigation (the "real" case)
2023-03-10 — Complaint. SFI sued Google for infringement of four patents: 10,452,854; 11,068,609; 11,178,116; and 9,338,140. Accused instrumentalities: Google Cloud / Cloud Storage "encryption at rest" (chunks encrypted with per-chunk Data Encryption Keys, wrapped by Key Encryption Keys stored in Google's "Keystore"), and for the '140 patent specifically Google Drive as an alleged "virtual disk." SFI acquired the patents from Security First Corporation in 2022 and is a non-producing entity.
Source: RPX litigation document of the complaint, https://insight.rpxcorp.com/litigation_documents/15147829
2023-04-28 — Google's motion to dismiss (pre-answer, § 101). Google moved to dismiss on Alice/§ 101 grounds rather than answering. SFI cross-moved for leave to amend to add willful infringement allegations based on pre-suit dealings between Google and SFC.
Source: Studicata summary, https://www.studicata.com/summaries/united-states-district-court-eastern-district-of-virginia/sec-first-innovations-v-google-llc-2023-agls0u/
2023-07-20 — Scheduling Order (Dkt. 54). Set a Markman track and a trial date of 2024-07-09. The order limited the parties to ten terms for construction.
Summer 2023 — Discovery. SFI served infringement contentions (dated 2023-08-14, later submitted as Ex. 1009 in the IPRs). Discovery disputes were pervasive: five motions to compel were filed at ECF Nos. 131, 136, 146, 217 and 253 (among others).
2023-11-03 / 11-06 / 11-07 / 11-10 — Claim construction exchanges. The parties met and conferred, agreed on ten terms, and exchanged preliminary proposed constructions and evidence (SFI letter from Austin P. Mayron to David Perlson, 2023-11-10; SFI complained Google had not adequately supplemented its interrogatory responses on invalidity).
Source: https://www.docketalarm.com/cases/PTAB/IPR2024-00212/Google_LLC/docs/11-24-2023-Petitioner/Exhibit-1043-Letter_from_A_Mayron_to_D_Perlson_re_Preliminary_Proposed_Constructions.pdf
2023-11-15 — Opinion on the motions (ECF No. 125). Judge Walker denied Google's motion to dismiss (construed as directed to the amended complaint) and granted SFI leave to amend to plead willful infringement as to the '140 patent only. On eligibility, the court held the claims were not directed to an abstract idea under Alice step one, finding a specific improvement in computer functionality (citing Enfish, Ancora, Finjan).
Sources: https://www.courtlistener.com/docket/67142096/125/ ; https://cases.justia.com/federal/district-courts/virginia/vaedce/2:2023cv00097/[535487/125](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=535487-0125)/0.pdf
2023-12-06 — SFI's opening claim construction brief.
2024-01-08 — Google's responsive claim construction brief (redacted).
2024-01-19 (entered 2024-01-22) — STAY GRANTED (ECF No. 313). Judge Walker granted Google's motion to stay pending IPR (ECF No. 159) before any Markman hearing or ruling. Applying the VirtualAgility factors, the court found the "simplification" factor weighed heavily in favor of a stay because Google's four IPR petitions challenged every asserted claim of every asserted patent; that the "stage of litigation" factor was neutral; and that SFI, as a non-practicing entity not competing with Google, would not be unduly prejudiced. The court expressly rejected SFI's Fintiv argument and held a stay is not premature merely because IPR had not yet been instituted. The parties were directed to seek a status conference within seven days of any institution decision.
Sources: CourtListener docket (ECF 313), https://www.courtlistener.com/docket/67142096/security-first-innovations-llc-v-google-llc/ ; opinion text at https://www.cetient.com/case/security-first-innovations-llc-v-google-llc-[10223682](/patent/10223682)
2024-06-14 — SFI moves to lift the stay as to the '140 patent (ECF No. 315). Triggered by the Board's denial of institution in IPR2024-00213 (the only IPR covering the '140 patent), while the three sibling IPRs were instituted. Briefing: Google opposition (2024-06-28), SFI reply (2024-07-05), Google notice of supplemental status (2024-07-10), SFI motion for leave to file sur-reply (2024-07-18), Google opposition (2024-07-22), leave granted 2024-07-30, SFI sur-reply and supplemental status notice (2024-07-30).
2024-08-20 — Order denying without prejudice the pre-stay discovery motions (ECF Nos. 131, 136, 146, 217, 253, and others), consistent with the stay.
2024-12-10 — Opinion and Order (ECF No. 326): stay MAINTAINED. Judge Walker denied SFI's motion to lift the stay and kept the entire case stayed. Key reasoning: although "the '140 patent is not subject to IPR," the IPR record on the sibling patents could still aid claim construction of the '140 patent, because the '116 and '140 patents are in the same family and share terms, and courts must construe family terms consistently (NTP v. Research In Motion, 418 F.3d 1282). The court noted the "stage of litigation" and "prejudice" factors remained neutral under its earlier analysis. The parties were ordered to notify the court of the PTAB's final determination as to the remaining asserted patents within five business days after the IPRs conclude.
Source (full opinion PDF): https://valawyersweekly.com/wp-content/blogs.dir/1/files/2024/12/VAUSED024-3-650-Google-LLC.pdf
2025-01-10 / 2025-01-24 — Google notices of change of law firm affiliation/address; 2025-01-31 → 2025-02-05 — SFI counsel Austin P. Mayron withdrawn (granted by Judge Walker 2025-02-05).
Present posture (as of my last verified docket information): the E.D. Va. case remains stayed, with no Markman ruling, no trial, no judgment, and no settlement. The 2024-07-09 trial date passed unused. I could not verify any later docket activity lifting the stay; given the Federal Circuit appeal discussed below, the practical path forward runs through the PTAB/Fed. Cir. track.
⚠️ Unverified: I did not confirm the contents/timing of Google's answer and counterclaims in the district court (e.g., declaratory-judgment counterclaims of non-infringement/invalidity). The docket evidence shows Google litigated initially via a Rule 12 motion, and the court treated that motion as aimed at the amended complaint, but I cannot attribute specific counterclaim allegations to it.
B. Parallel PTAB proceedings (four IPRs, filed Nov. 2023)
All four petitions were filed by Google in November 2023 (Wolf, Greenfield & Sacks: Elisabeth H. Hunt, Richard F. Giunta, Marc S. Johannes, Gregory S. Nieberg, Nathan R. Speed). SFI was represented by Sullivan & Cromwell (Stephen J. Elliott, Andrei Iancu, Dustin Guzior, Haley Sanders) and Lowenstein & Weatherwax (Kenneth Weatherwax, Nathan Lowenstein, Colette Woo). Petitioner's expert: Dr. Samrat Bhattacharjee. Patent Owner's expert: Dr. Aviel D. Rubin.
| IPR | Patent | Petition filed | Institution | Final Written Decision |
|---|---|---|---|---|
| IPR2024-00213 | 9,338,140 | 2023-11-27 | DENIED 2024-06-06 | none (terminated) |
| IPR2024-00212 | 11,178,116 | 2023-11-24 | Granted 2024-05-23 | 2025-05-16 (appealed) |
| IPR2024-00214 | 11,068,609 | 2023-11-22 | Granted (spring 2024) | 2025 (appealed) |
| IPR2024-00215 | 10,452,854 | 2023-11-22 | Granted (spring 2024) | 2025 (appealed) |
IPR2024-00213 (the metadata case) — chronological
- 2023-11-27 — Google files the petition (accorded filing date 2023-12-28). Four grounds, all § 103: Ophir + Takeda (claims 1–6, 8, 10); Ophir + Takeda + Birrell (claim 7); Ophir + Takeda + Dickinson (claim 9); Dickinson + Takeda (claims 1–10). References: Ophir (US 2004/0143733), Takeda (US 2001/0053221), Birrell (US 7,529,834), Dickinson (WO 2001/022322). Exs. 1001–1003 etc.
- 2024-01-02 — Patent Owner's mandatory notices (Sullivan & Cromwell / Lowenstein & Weatherwax); identifies the E.D. Va. case and the three sibling IPRs as related matters.
- 2024-01-29 — Petitioner's first updated mandatory notices.
- 2024-03-28 — Patent Owner's Preliminary Response (Exs. 2003 Rubin Decl.; 2005 Schneier CV; 2006 Schneier, "Why Cryptography Is Harder Than It Looks"). SFI argued (a) the claims are directed to different technology than Dickinson — the "trust engine" of Dickinson vs. the claimed "virtual disk"; (b) Dickinson was expressly considered by the Examiner during prosecution and should not be revisited (i.e., a § 325(d) argument); (c) no disclosure of "a directory mapped to the plurality of physical storage devices," of hiding physical share locations, etc.
- 2024-06-06 — Institution DENIED (Paper 8). Panel: APJs Daniel Kazhdan, Stephen Belisle, Thomas Giannetti.
- 2024-07-08 — Google requests rehearing (Paper 9).
- 2024-07-30 — Rehearing DENIED (Paper 10); proceeding terminated.
Sources: https://www.docketalarm.com/cases/PTAB/IPR2024-00213/Google_LLC_v._Security_First_Innovations_LLC/ ; https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2024-00213 ; https://litigation.rpxcorp.com/ptab/16660-google-v-security-first-innovations-llc-ipr-of-140
⚠️ Unverified: I located the Board's decision document (posted by Lowenstein & Weatherwax at http://lowensteinweatherwax.com/wp-content/uploads/2024/06/2024-00213.pdf), which recites the petition, the POPR, the four grounds and the § 314(a)/§ 325(d) framing — but I did not retrieve the Board's actual dispositive reasoning (e.g., whether denial rested on § 325(d), on the merits, or both). Treat the denial grounds as unresolved pending the decision text.
Sibling IPRs and their effect
- Grounds: In -00212 ('116), five grounds — Tajima (Ex. 1005) anticipation/obviousness; Tajima + Foster; Tajima + Rivest; Tajima + Rivest + Shyu; and Foster + Hayhurst (Ground 5). In -00215 ('854) and -00214 ('609), primarily Orsini (Ground 1) and Foster + Hayhurst (Ground 2).
- 2024-05-16 to 2025-02 — Full trial tracks: Patent Owner Responses (with a second Rubin declaration, Ex. 2033), Petitioner replies, depositions of both experts, and substantial § 42.64 evidentiary objections.
- 2025-02-27 — Consolidated oral hearing in -00212/-00214/-00215 before APJs Giannetti (presiding), Repko, Belisle and Kazhdan (Kazhdan only on -00212; not an expanded panel). Transcript dated 2025-03-20.
Sources: transcript, https://www.docketalarm.com/cases/PTAB/IPR2024-00212/Google_LLC_v._Security_First_Innovations_LLC/docs/03-20-2025-Board/Other__Hearing_transcript-41-Other__Hearing_transcript.pdf ; https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1554933](/patent/1554933) - 2025-05-16 — Final Written Decision in IPR2024-00212, APJ Giannetti writing; FWDs followed in -00214 and -00215. SFI's briefing describes the Board as having "twice found" that the Orsini ground fails and attacks the Foster–Hayhurst ground as failing on analogous-art and motivation-to-combine grounds.
Sources: https://services.patexia.com/lawsuits/Google-LLC-v-Security-First-Innovations-LLC-id-[194692](/patent/194692) ; https://ipverse.greyb.com/competitive-analysis/company/security-first-innovations - 2024-12-10 effect on the litigation: the district court relied on the instituted IPRs to keep the entire case — including the '140 patent, which had no IPR — stayed.
⚠️ Unverified: I could not confirm which claims (if any) were held unpatentable in the three FWDs, nor whether Director Review was sought (one aggregator lists -00212 as "Pending Director Review" while another lists it as "Final Written Decision – Appealed"). Treat the FWD claim-level outcomes as unverified.
C. Appeal
- 2025-09-10 — Federal Circuit No. 25-2092, Google LLC v. Security First Innovations, LLC (RPX Empower, https://litigation.rpxcorp.com/federal_circuit/[3015454](/patent/3015454)-google-v-security-first-innovations). The caption places Google as appellant, which is consistent with an appeal from the three petitioner-adverse PTAB final written decisions in IPR2024-00212/-00214/-00215. IPVerse likewise lists all three as "Final Written Decision – Appealed."
- ⚠️ Unverified: I could not confirm the appeal's scope (which FWDs it consolidates), briefing status, or any decision. I also cannot rule out that an appeal from the district court stay/eligibility rulings is part of the same or a companion appeal. As of 2026-09-12, no final appellate disposition is documented in the sources I retrieved.
D. Bottom line
| Track | Status |
|---|---|
| IPR2024-00213 ('140) | Terminated 2024-07-30 — institution denied 2024-06-06, rehearing denied 2024-07-30 |
| IPR2024-00212/-214/-215 | FWDs in 2025; on appeal at the Federal Circuit (No. 25-2092, docketed 2025-09-10) |
| E.D. Va. No. 2:23-cv-00097 | Stayed since 2024-01-22 (ECF 313); motion to lift denied 2024-12-10 (ECF 326); no claim construction, trial, verdict, fees motion, settlement or judgment |
The strategically decisive events were: (1) the § 101 motion to dismiss being denied (2023-11-15), which kept the case alive; (2) the early, pre-institution stay (2024-01-22) premised on Google having IPR'd all asserted claims; and (3) the split institution outcome — the Board refused to review the '140 patent while instituting on the other three — which SFI tried and failed to parlay into a partial lift of the stay in December 2024. The case now rides on the Federal Circuit appeal of the three sibling FWDs.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Wolf, Greenfield & Sacks
- Elisabeth H. Hunt · lead counsel
- Richard F. Giunta · back-up counsel
- Thomas A. Franklin · back-up counsel
- Marc S. Johannes · back-up counsel
- Gregory S. Nieberg · back-up counsel
- Nathan R. Speed · back-up counsel
I'll research the counsel of record for this proceeding. Note at the outset: this is a PTAB inter partes review, so the "plaintiff" is the petitioner, Google LLC, and counsel of record would be Google's IPR counsel (not district-court plaintiff's counsel). Let me search.
This is a PTAB IPR, so the "plaintiff" role is filled by the petitioner, Google LLC. The first search already surfaced the Petitioner's counsel (Wolf, Greenfield & Sacks). Let me confirm via the Petitioner's own mandatory notices and also check the parallel district court case.
I now have both sides of the dispute. Let me confirm the Petitioner's (Google's) power of attorney in -213 specifically, and gather counsel backgrounds plus the parallel district court plaintiff's team.
Important framing note
The case in the metadata — IPR2024‑00213 — is an inter partes review at the PTAB, not a district-court infringement suit. There is accordingly no PACER civil docket for it (filings live in the USPTO's P‑TACTS system), and the "plaintiff" role is filled by the petitioner, Google LLC. The only true "patent infringement case" in this dispute is the parallel E.D. Va. action, where the roles are reversed (Security First is plaintiff). I cover both below, leading with the party the metadata labels as plaintiff (Google).
1. Counsel of record for the plaintiff/petitioner — Google LLC (IPR2024‑00213)
Google's counsel of record are all attorneys at Wolf, Greenfield & Sacks, P.C. (Boston HQ, 600 Atlantic Avenue, Boston, MA 02210, with additional offices in Washington, DC and New York). They were appointed in Petitioner's Power of Attorney (Paper 1, executed Nov. 22, 2023, filed Nov. 27, 2023) — via USPTO Customer Number 23628 — and confirmed on the Board's Notice of Filing Date Accorded (Paper 3, Dec. 28, 2023) and in Patent Owner's certificate of service (Jan. 2, 2024).
| Attorney | Role | Firm / office | Note |
|---|---|---|---|
| Elisabeth H. Hunt (Reg. No. 67,336) | Lead counsel | Wolf, Greenfield & Sacks, Boston | Co‑chair of the firm's Post‑Grant Proceedings Practice; PTAB/ITC specialist, nationally ranked in IAM Patent 1000 for post‑grant work. |
| Richard F. Giunta (Reg. No. 36,149) | Back‑up counsel | Wolf, Greenfield & Sacks, Boston | Co‑chair of the Post‑Grant Proceedings Practice; Managing IP PTAB Practitioner of the Year (2021); top‑ranked in Patexia IPR intelligence reports. |
| Thomas A. Franklin (Reg. No. 63,456) | Back‑up counsel | Wolf, Greenfield & Sacks, Boston | Leads the firm's Electrical & Computer Technologies group; named in the Board's filing‑date notice and in service certificates for this IPR. |
| Marc S. Johannes (Reg. No. 64,978) | Back‑up counsel (listed in the POA and the Petitioner's updated mandatory notices covering the family of IPRs) | Wolf, Greenfield & Sacks, Boston | Shareholder, Electrical & Computer Technologies/post‑grant; listed in Petitioner's First Updated Mandatory Notices (Jan. 29, 2024). |
| Gregory S. Nieberg (Reg. No. 57,063) | Back‑up counsel (named in the Power of Attorney) | Wolf, Greenfield & Sacks, Boston | Post‑grant proceedings practice; appears on the family's later filings. |
| Nathan R. Speed (pro hac vice, pending) | Back‑up counsel (named in the Power of Attorney) | Wolf, Greenfield & Sacks, Boston | Litigation practice shareholder. |
Notes/caveats:
- The Board's filing‑date notice (Paper 3) lists the Petitioner's team as Hunt, Giunta, and Franklin, and the POA lists the full group above. Google filed no separate appearance beyond these; the PTAB papers do not identify any Google in‑house attorney as counsel of record. The POA was signed by Jennifer Polse as a Google officer authorized to bind the company (a signatory, not counsel of record).
- Because the proceeding terminated (institution denied June 6, 2024; rehearing denied July 30, 2024), these designations are historical.
- I could not independently verify each attorney's current title beyond firm/ranking sources; the role designations above (lead vs. back‑up) are taken directly from the filed papers.
2. Counsel for the other side — Patent Owner / district‑court plaintiff Security First Innovations, LLC
If by "plaintiff" you mean the party that actually sued for infringement (Security First Innovations, LLC v. Google LLC, No. 2:23‑cv‑00097, E.D. Va., Norfolk Division, Judge Jamar K. Walker), the plaintiff's team is a two‑firm combination, with local counsel:
In the IPRs (Patent Owner's designated counsel — S&C lead, L&W back‑up):
- Stephen J. Elliott (Reg. No. 52,858) — lead counsel, Sullivan & Cromwell LLP, New York. (S&C IP litigation; also appeared pro hac vice for SFI in the E.D. Va. case.)
- Andrei Iancu (Reg. No. 41,862) — back‑up counsel, Sullivan & Cromwell LLP, Los Angeles. Former USPTO Director (2018–2021) and former Under Secretary of Commerce for IP.
- Dustin F. Guzior (pro hac vice) — back‑up counsel, Sullivan & Cromwell LLP, New York.
- Kenneth Weatherwax (Reg. No. 54,528) — back‑up counsel, Lowenstein & Weatherwax LLP, Santa Monica, CA.
- Nathan Lowenstein (pro hac vice) and Colette Woo (pro hac vice) — back‑up counsel, Lowenstein & Weatherwax LLP, Santa Monica, CA.
- L&W's own press release on the non‑institution win (June 6, 2024) also credits Robert Pistone (L&W), and names the S&C team as Iancu and Elliott.
In the E.D. Va. infringement suit (plaintiff SFI): the docket (CourtListener No. 67142096) shows pro hac vice admissions for Andrei Iancu, Stephen J. Elliott, Dustin F. Guzior, Garrard R. Beeney, Austin P. Mayron, Jonathan M. Lindsay, Jordan Nafekh, and Erick R. Franklund, then local counsel Charles B. Molster, III (early) and later William Rueger Poynter. I have not confirmed the firm affiliations of the local‑counsel attorneys from a primary source, so I flag those as docket‑recorded names rather than verified firm affiliations.
Sourcing / limitations
- Petitioner (Google) counsel: Petitioner's Power of Attorney, Paper 1 (Nov. 27, 2023); Board's Notice of Filing Date Accorded, Paper 3 (Dec. 28, 2023); Patent Owner's Power of Attorney and certificate of service (Jan. 2, 2024), all via P‑TACTS/docket aggregators.
- Patent Owner (SFI) counsel: Patent Owner's Mandatory Notices and Power of Attorney (Jan. 2, 2024); L&W client alert (June 6, 2024).
- District‑court plaintiff team: CourtListener docket for 2:23‑cv‑00097; dockets.justia.com.
- Attorney backgrounds: Wolf Greenfield firm announcements and IAM Patent 1000 / Patexia rankings.
No counsel listing appears to be under seal in this proceeding; the PTAB filings are public. If you specifically need the district‑court counsel designations "of record" as of a particular date, that docket should be pulled directly, since SFI's team changed during the litigation (e.g., withdrawal of Austin Mayron, and the earlier withdrawal motion in 2023).
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Quinn Emanuel Urquhart & Sullivan
- David Andrew Perlson · lead trial counsel
- David Aaron Nelson · senior national co-counsel
- Nicholas Daniel Caspers · of counsel
- Deepa Acharya · of counsel
- Dawn Marie David · of counsel
- Hannah Elizabeth Dawson · of counsel
- Kevin Hardy · of counsel
- Antonio Moriyama Sistos · of counsel
- Clark James Belote · appearance
- Kaufman & Canoles
- Stephen Edward Noona · local counsel
I'll research the counsel representing Google (the defendant in the underlying infringement action) across the district court docket and related filings.
I have the core list. Now let me verify firms, offices, and roles for each Google attorney.
Counsel of Record — Google LLC (Defendant)
Framing note first. The docket that matches "defendant" in a patent infringement case is the parallel district court action, Security First Innovations, LLC v. Google LLC, No. 2:23-cv-00097-JKW-RJK (E.D. Va.) — where Google is the defendant and the '140 patent (IPR2024-00213's subject) is one of four asserted patents. In the IPR itself, Google is the petitioner and Security First Innovations is the patent owner, so "defendant's counsel" maps onto Google's district-court defense team, not the IPR petitioner team. Both are set out below. (I flag that the IPR metadata's "Defendant(s): Security First Innovations, LLC" reflects IPR-side party labeling; SFI is the patent owner/respondent there, not a defendant in the infringement action.)
A. Google's district-court defense team (E.D. Va. 2:23-cv-00097)
Sources: Justia docket and CourtListener docket for 2:23-cv-00097 (pro hac vice motions ECF 23–29; appearance ECF 18; orders ECF 30–36; later motions).
| Attorney | Role | Firm / Office | Note |
|---|---|---|---|
| David Andrew Perlson | Lead trial counsel (Quinn Emanuel team); designated case counsel for discovery/Rule 37 conferences | Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, CA | First-chair tech patent trial lawyer; Waymo v. Uber, Rockstar v. Google, Priceplay v. Google; argued Federal Circuit appeals. Caveat: left Quinn Emanuel for Hogan Lovells (San Francisco) in Jan. 2025 — see flag below. |
| Stephen Edward Noona | Local counsel of record | Kaufman & Canoles, PC, Norfolk, VA | Head of Litigation and co-chair of IP; ~125+ patent cases across E.D. Va.'s four divisions, American College of Trial Lawyers fellow — the "rocket docket" specialist. Signed the local-counsel certifications on every Google pro hac vice motion. |
| David Aaron Nelson | Senior national co-counsel | Quinn Emanuel, Chicago, IL | Co-chair of Quinn Emanuel's national IP litigation practice; 150+ patent matters, 35+ jury trials. |
| Nicholas Daniel Caspers | Of counsel / pro hac vice (ECF 29) | Quinn Emanuel | Technology-side patent litigator. |
| Deepa Acharya | Of counsel / pro hac vice (ECF 26) | Quinn Emanuel | IP litigator. |
| Dawn Marie David | Of counsel / pro hac vice (ECF 25) | Quinn Emanuel | IP litigator. |
| Hannah Elizabeth Dawson | Of counsel / pro hac vice (ECF 27) | Quinn Emanuel (Cottonwood Pkwy, Salt Lake City per ECF 80 caption) | IP litigator. |
| Kevin Hardy | Of counsel / pro hac vice (ECF 28) | Quinn Emanuel | IP litigator. |
| Antonio Moriyama Sistos | Of counsel / pro hac vice (motion filed later, receipt AVAEDC-8963476) | Quinn Emanuel | Long-time Perlson co-counsel on Google matters (e.g., Priceplay v. Google). |
| Clark James Belote | Appearance (Notice of Appearance 5/17/2023) | Quinn Emanuel (per docket grouping with Google team) | IP litigator. (Firm confirmed by docket clustering; I could not independently pull his firm bio before hitting search limits.) |
All Google pro hac vice motions were sponsored by local counsel Noona and granted by Judge Walker on April 27, 2023 (ECF 30–36).
B. Google's PTAB/petitioner team (IPR2024-00213 and siblings)
Separate from the district-court team — Wolf, Greenfield & Sacks, P.C. (Boston):
- Elisabeth H. Hunt (Reg. No. 67,336) — lead counsel
- Richard F. Giunta (Reg. No. 36,149) — back-up
- Thomas A. Franklin (Reg. No. 63,456) — back-up
(Source: SFI's Mandatory Notices in IPR2024-00213, which identify Google's lead/back-up counsel via the certificate of service.)
Flags / uncertainties
- Counsel substitution after Jan. 2025 likely unconfirmed. David Perlson moved to Hogan Lovells in January 2025, while the case has been stayed since Jan. 19, 2024. The Justia docket was last retrieved December 10, 2024, so I cannot confirm whether Quinn Emanuel withdrew and/or Hogan Lovells substituted in. The CourtListener docket feed does show withdrawal filings but those shown are for plaintiff's counsel (Austin Mayron, ECF 329/330), not Google's. I did not find a Google-side withdrawal notice — treat the current makeup of Google's team as not verified past Dec. 2024.
- No firm/office confirmed for Acharya, Caspers, David, Dawson, Hardy, Belote, Sistos beyond their grouping under the Quinn Emanuel/Google defense caption and the pro hac vice motions listing Noona (Kaufman & Canoles) as local counsel. I did not individually verify each bio; names and the fact of their appearances are docket-sourced (ECF 23–29), roles are my characterization.
- "Lead counsel" is inferred. The docket does not label a lead; I treat Perlson as lead based on the Sullivan & Cromwell correspondence addressed to him and the Rule 37(a)(1) discovery designation ("David Perlson on behalf of Defendant Google LLC," ECF 72/scheduling order).
- No in-house attorney appeared in the record I retrieved. Clark Belote is the only borderline name; the docket lists him under the Google LLC defense team but I could not confirm whether he is Google in-house or Quinn Emanuel. I have not invented any in-house counsel.
Note vs. the prior summary: that section correctly identified plaintiff/SFI's counsel (Sullivan & Cromwell + Lowenstein & Weatherwax for PTAB; Iancu/Molster for district court). The information above complements it by supplying Google's defense-side roster; there is no contradiction, only a clarification that the district-court defense team is Quinn Emanuel (national) + Kaufman & Canoles (local), distinct from Wolf Greenfield on the IPRs.