DCT
6:21-cv-00696
Hafeman v. LG Electronics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Carolyn W. Hafeman (Colorado)
- Defendant: LG Electronics, Inc. (Republic of Korea)
- Plaintiff’s Counsel: Susman Godfrey LLP
- Case Identification: 6:21-cv-00696, W.D. Tex., 11/22/2021
- Venue Allegations: Venue is alleged to be proper on the basis that the defendant is a foreign corporation, which may be sued in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile phones, tablets, and laptops incorporating "Find My Device" functionalities infringe three patents related to systems for displaying owner information on a device's screen and remotely managing the device to aid in its recovery.
- Technical Context: The technology addresses the security and recovery of lost or stolen portable electronic devices by leveraging the device's own screen to display owner information and allowing for remote locking and modification of displayed messages.
- Key Procedural History: The complaint alleges that Plaintiff, through a patent broker named Tangible IP, notified Defendant of the asserted patent portfolio and provided infringement contentions in or after March 2018, approximately three and a half years before the complaint was filed.
Case Timeline
| Date | Event |
|---|---|
| 2002-11-25 | Earliest Priority Date for ’287, ’122, and ’393 Patents |
| 2018-02-13 | U.S. Patent No. 9,892,287 Issues |
| 2018-03-01 | Approximate Date of Alleged Pre-Suit Notice to Defendant |
| 2019-06-18 | U.S. Patent No. 10,325,122 Issues |
| 2020-09-29 | U.S. Patent No. 10,789,393 Issues |
| 2021-11-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,892,287 - "Computer Recovery or Return" (Issued Feb. 13, 2018)
The Invention Explained
- Problem Addressed: The patent's background section describes the limitations of existing computer recovery methods, such as physical hardware labels that can be removed and modem-based "call-home" software that may not function internationally or effectively protect confidential information on the hard drive. (’287 Patent, col. 1:35-col. 2:52).
- The Patented Solution: The invention is a software-based system that displays owner and return information on the device's own screen during the boot-up process. This "return screen" is designed to appear before or concurrently with any security prompt (like a password screen), making the recovery information visible to anyone who finds the device while still preventing unauthorized access to the user's data. The system also allows the owner to remotely and interactively change the displayed information. (’287 Patent, Abstract; col. 4:41-54).
- Technical Importance: This approach provides a recovery mechanism that is tied to the device's software and hard drive, rather than just its physical exterior, and operates independently of modem-based tracking systems. (’287 Patent, col. 2:21-34).
Key Claims at a Glance
- The complaint does not specify which claims are asserted, referring generally to the "Asserted Claims" of the patent (Compl. ¶30). Claim 1 is the first independent apparatus claim.
- The essential elements of independent claim 1 include:
- A computer comprising a memory, display, and processor.
- The processor displays "computer recovery information" on the display "before or with a lock screen" so it is visible to anyone viewing the display.
- The processor initiates or changes the recovery information via "remote communication" without user assistance at the computer.
- This change is performed through an "interactive program stored in the memory" that is remotely accessed "only by the owner of the computer or the party authorized by the owner."
- The complaint reserves the right to assert dependent claims (Compl. ¶12).
U.S. Patent No. 10,325,122 - "Computer Recovery or Return" (Issued Jun. 18, 2019)
The Invention Explained
- Problem Addressed: As a continuation of the same patent family, the ’122 Patent addresses the same technical problems as the ’287 Patent, namely the shortcomings of physical labels and modem-based recovery systems for lost or stolen computers. (’122 Patent, col. 1:31-col. 2:50).
- The Patented Solution: The solution is materially the same as that described in the ’287 Patent: a software program that layers a recovery information screen into the boot-up process, making it visible on the lock screen while allowing the owner to manage the displayed content remotely. (’122 Patent, Abstract; col. 4:4-11).
- Technical Importance: The invention offers a method to facilitate device return that protects underlying data and allows for dynamic, remote updating of contact or status information (e.g., changing a message to indicate the device is stolen). (’122 Patent, col. 5:7-14).
Key Claims at a Glance
- The complaint identifies Claim 1 as an "exemplary method claim." (Compl. ¶13).
- The essential steps of independent claim 1 include:
- Activating a processor to display return information on a screen "before or with a lock screen" so the information is visible.
- Initiating or changing the return information "through remote communications without assistance by a user with the computer."
- The changing is done via an "interactive program stored in the memory" that is "remotely accessed only by the owner... or the party authorized by the owner."
- Displaying the screen "before or with a security prompt which prevents the user from accessing operatively the computer."
- Activating the processor to "allow a warning message to the user."
- The complaint reserves the right to assert dependent claims (Compl. ¶12).
U.S. Patent No. 10,789,393 - "Computer Recovery or Return" (Issued Sep. 29, 2020)
- Technology Synopsis: Continuing the same patent family, the ’393 Patent claims a system for returning a lost or stolen computer by displaying owner and recovery information on the device's screen during or after boot-up. The system is designed to present this information before or with a security prompt and to allow the owner to remotely manage the displayed content. (’393 Patent, Abstract).
- Asserted Claims: The complaint does not identify specific claims, referring generally to the "Asserted Claims" of the patent (Compl. ¶77).
- Accused Features: The accused functionality is the "Find My Device" feature included in Defendant's Android and Windows-based mobile devices and computers (Compl. ¶19, ¶77).
III. The Accused Instrumentality
Product Identification
- The accused products are a wide range of LG-branded devices, including all LG-made Android OS cell phones, tablets, and laptops, as well as laptops pre-loaded with Windows 10, that include a "Find My Device" feature (Compl. ¶16, ¶19).
Functionality and Market Context
- The complaint alleges that the accused devices are pre-loaded with either Google's "Find My Device" feature (for Android devices) or Microsoft's "Find My Device" feature (for Windows 10 devices) (Compl. ¶19). The relevant alleged functionality of this feature allows a device owner to use an internet browser to remotely:
- Display custom contact information and messages on the device's lock screen (Compl. ¶19).
- Lock the device to prevent future access (Compl. ¶19).
- Change the information displayed on the locked screen (Compl. ¶19).
- The complaint alleges that this remote access is initiated by the owner or an authorized party via a Google or Microsoft account login and that a password is required at a security prompt on the device to regain access once it is remotely locked (Compl. ¶19).
IV. Analysis of Infringement Allegations
'287 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a processor...which displays on the display with the computer recovery information for returning the computer to an owner...which is maintained on or before or with the lock screen so the return information is visible to anyone viewing the display... | The accused "Find My Device" feature displays the owner's contact information on the device's lock screen, making it visible to anyone in possession of the device. | ¶19 | col. 4:47-54 |
| the processor initiating or changing the recovery information through remote communication without assistance by the user with the computer... | The owner of an accused product can use an internet browser to remotely access the device to change or add information displayed on the screen. | ¶19 | col. 5:7-14 |
| wherein the changing of the recovery information is done through an interactive program stored in the memory of the computer and which is remotely accessed only by the owner of the computer or the party authorized by the owner... | Remote access to change displayed information is allegedly initiated only by the owner or an authorized party using a Google or Microsoft Account login. The complaint alleges the "Find My Device" feature is a computer program stored in memory. | ¶19, ¶23 | col. 5:2-6 |
'122 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] activating a processor to display on a display screen...information concerning the return information...the screen displaying return information before or with a lock screen... | The "Find My Device" feature is used to display owner contact information on the device's lock screen. | ¶19 | col. 4:4-11 |
| [b] initiating or changing return information which appears on the display through remote communications without assistance by a user with the computer... | The owner can use an internet browser and an account login to remotely change the information displayed on the device's screen. | ¶19 | col. 10:17-27 |
| ...wherein the changing of the return information is done through an interactive program stored in the memory of the computer which is remotely accessed only by the owner of the computer or the party authorized by the owner... | Access is allegedly initiated by the owner or authorized party via a Google or Microsoft Account. The complaint alleges the "Find My Device" feature is a pre-loaded program. | ¶19, ¶23 | col. 16:17-29 |
| [c] displaying the screen before or with a security prompt which prevents the user from accessing operatively the computer... | The owner's information is displayed on the lock screen, and a newly set password must be provided through a security prompt to unlock the device after it is remotely locked. | ¶19 | col. 7:11-17 |
| [d] activating the processor to allow a warning message to the user. | The owner can remotely display a custom warning message on the lock screen. | ¶19 | col. 17:5-7 |
No probative visual evidence provided in complaint.
Identified Points of Contention:
- Scope Questions: A central question may be whether the term "computer" as used and described in the patents, which often provide examples of laptops, can be construed to read on the full range of accused products, including "cell phones" and "computer tablets" (Compl. ¶16, ¶21).
- Technical Questions: A dispute may arise over whether the accused "Find My Device" feature, which is an integrated component of a larger operating system (e.g., Google Play Protect or Windows 10), meets the claim limitation of an "interactive program stored in the memory of the computer" (’122 Patent, cl. 1). The patent's description of installing the program from a CD or download may suggest a standalone application distinct from the OS (’122 Patent, col. 8:37-44). Another question is whether the remote management functionality, which relies on servers operated by third parties (Google/Microsoft), satisfies the claim requirement that the program is "remotely accessed only by the owner" or authorized party.
V. Key Claim Terms for Construction
The Term: "interactive program stored in the memory of the computer"
- Context and Importance: This term is critical to the infringement analysis because the accused functionality is not a standalone, user-installed application but rather a feature deeply integrated into the device's operating system. Defendant may argue that an OS feature is not a "program" in the manner contemplated by the patent, potentially avoiding infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification uses terms like "software program," "application," and "additional programming layer" somewhat interchangeably, which could support a construction covering any set of executable instructions that performs the claimed function, regardless of its integration with the OS (’122 Patent, col. 5:2-3, 5:21-23, 5:55-57).
- Evidence for a Narrower Interpretation: The specification's discussion of installing the program from a CD or the internet and figures depicting a branded application ("The Retriever by WorldsecurityCorp.com") could support a narrower construction limited to a discrete, third-party application separate from the primary operating system (’122 Patent, Fig. 2; col. 8:37-44).
The Term: "remotely accessed only by the owner of the computer or the party authorized by the owner"
- Context and Importance: This limitation defines the security model for remote access. The dispute will concern whether the Google/Microsoft account login system used by the accused feature meets this "only by the owner" requirement, especially given that account credentials can be compromised.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not specify a particular authentication mechanism, which may suggest that any standard owner-centric login system, like the Google/Microsoft accounts alleged, falls within the scope of the claim (’122 Patent, cl. 1).
- Evidence for a Narrower Interpretation: The patent emphasizes the owner's "ultimate control" over the system, distinguishing between the "Owner" and the person "Assigned To" the device. This could support an argument that the access control must be more robust or owner-managed than a standard cloud-based account login system that can be accessed by anyone with the credentials (’122 Patent, col. 12:50-54).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provides product documentation, manuals, and technical support on its website that instruct customers on how to use the accused "Find My Device" feature. The complaint provides a URL to a specific LG support page as an example (Compl. ¶34-36, ¶58-60, ¶82-84).
- Willful Infringement: Willfulness is alleged based on Defendant's purported pre-suit knowledge of the patents. The complaint claims that a patent broker retained by Plaintiff communicated with Defendant in or after March 2018, providing a list of the patents and claim charts showing how they allegedly read on Defendant's devices. The complaint further alleges that Defendant is a sophisticated company that never responded to these communications and continued its allegedly infringing activity (Compl. ¶25, ¶39-41, ¶101).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "interactive program stored in the memory," which the patent specification often describes as a discrete, installable application, be construed to cover the integrated "Find My Device" functionality of the Android and Windows operating systems?
- A key evidentiary question will concern pre-suit knowledge: what weight will be given to the alleged March 2018 communications from a third-party patent broker in establishing that Defendant had the requisite knowledge for willful and induced infringement, particularly where the complaint alleges Defendant never responded to the outreach?
- A potential question for the method claims is one of actor attribution: given that the accused "Find My Device" functionality involves remote servers operated by third parties like Google and Microsoft, can Plaintiff demonstrate that a single actor (e.g., Defendant's customer) performs or directs all steps of the claimed method as required to prove direct infringement?