Google LLC v. Hafeman Carolyn

1. Case Identification

• Case #: IPR2022-01188
• Patent #: 10,325,122
• Filed: July 8, 2022
• Petitioner(s): Google LLC, Microsoft Corporation
• Patent Owner(s): Carolyn W. Hafeman
• Challenged Claims: 1-7

2. Patent Overview

• Title: Computer Recovery or Return
• Brief Description: The ’122 patent discloses systems and methods for facilitating the return of lost or stolen computers. The core technology involves displaying owner and return information on the computer’s screen, with a purported novelty in the ability to remotely initiate or change this displayed information without user assistance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jenne and Cohen - Claims 1-7 are obvious over Jenne in view of Cohen.

• Prior Art Relied Upon: Jenne (Application # 2003/0122864) and Cohen (European Patent Application # 0687968A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jenne teaches a system for displaying remotely updateable messages (e.g., advertisements or "other information") on a computer screen during its boot-up process. Cohen teaches a method for displaying owner-specific "textual indicia of personal ownership" on a computer’s screen each time it is powered on, before the operating system loads, to facilitate its return if lost. Cohen also discloses displaying this information with a security feature like a password prompt. Petitioner contended that combining Jenne's remote update capability with Cohen's ownership display and security screen renders the challenged claims obvious.
  • Motivation to Combine: A POSITA would combine the references to create a more effective and secure system for recovering lost devices. Petitioner asserted several motivations: (1) Jenne's "captive audience" during boot-up is an ideal time to display Cohen's ownership information; (2) it would have been a simple substitution to use Cohen's specific ownership information as the "other information" disclosed by Jenne; and (3) adding Cohen's password-protected lock screen to Jenne's system would improve security, a known goal in the art.
  • Expectation of Success: A POSITA would have had a high expectation of success because both Jenne and Cohen teach modifying the same part of the computer's startup sequence (the BIOS/POST process) and operate in the same field of endeavor.

Ground 2: Obviousness over Angelo and Helle - Claims 1, 4, and 7 are obvious over Angelo in view of Helle.

• Prior Art Relied Upon: Angelo (Application # 2003/0065934) and Helle (Patent 6,662,023).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Angelo discloses a security system where a remote station can command a lost device to lock down and display a static, "predefined message" containing a return address or phone number. Helle discloses a system for controlling a lost mobile phone where a remote command can not only lock the device but also dynamically change the displayed owner contact information (e.g., by sending a new phone number with the command). Petitioner argued the combination of Angelo's remote security action with Helle's remote information-changing capability teaches the claimed invention.
  • Motivation to Combine: A POSITA would combine the teachings to improve upon Angelo's static system. The primary motivation was to allow a device owner to update contact information remotely, which is a predictable and logical improvement. For example, if the owner's contact details changed after the device was lost, or if a different contact number was needed depending on the time of day, Helle's teachings would provide a clear solution.
  • Expectation of Success: Success would be expected because the combination merely involves modifying the data payload of a security message transmitted to the device, a straightforward programming task. Both references address the same problem of facilitating the return of lost devices using remote commands, making them compatible and their combination predictable.

4. Key Claim Construction Positions

• "Return/Recovery Display" Terms: Petitioner argued that terms such as "the screen displaying return information" should be construed as "automatically displaying return/recovery information during or after every boot-up." This construction was based on an alleged clear and unequivocal disavowal by the Patent Owner in the ’122 patent’s specification, which repeatedly describes "the present invention" as automatically initiating the display during the boot-up process.
• Printed Matter Doctrine: Petitioner contended that the recited "recovery" and "return information" limitations constitute non-functional printed matter. Because the information is only useful to a human mind and is not functionally related to the substrate (the display), Petitioner argued these limitations should be afforded no patentable weight in the obviousness analysis.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• §325(d) Arguments: Petitioner asserted that the prior art grounds raised in the petition were not previously considered or evaluated by the Patent Office. While Helle was cited during prosecution of a related application, it was never applied by the examiner in a rejection against claims with similar language, meaning it was not substantively considered.
• §314(a) (Fintiv) Arguments: Petitioner contended that Fintiv factors weigh against denial. Key arguments included that the petition presents a compelling unpatentability challenge, the Petitioners are not parties to a co-pending district court litigation, and the scheduled trial date in that litigation is far enough in the future that a Final Written Decision in this IPR would issue well in advance.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-7 of the ’122 patent as unpatentable.