Google LLC v. Hafeman Carolyn

1. Case Identification

• Case #: IPR2022-01190
• Patent #: 10,789,393
• 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 ’393 patent discloses a system for facilitating the return of lost or stolen computers by displaying ownership and return information on the screen. The purported novelty is the ability to remotely initiate or change this displayed information without assistance from the local user.

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 taught the core system of a computer (processor, memory, display) that automatically displays messages, such as advertisements or "other information," during the boot-up process. These messages are stored in memory and can be securely updated remotely via the Internet. Cohen taught displaying specific "textual indicia of personal ownership" during the boot-up process to increase the likelihood a lost computer is returned, and it disclosed doing so on a screen that also presented a password prompt (a lock screen) to prevent unauthorized access to the operating system. The combination of Jenne's remotely updatable boot-up display system with Cohen's specific ownership information and lock screen functionality allegedly met the limitations of the independent claims.
  • Motivation to Combine: A POSITA would combine these references for several reasons. First, it would have been obvious to use Cohen's specific ownership information as the "other information" that Jenne suggested could be displayed to the "captive audience" during boot-up, as this would predictably increase the likelihood of recovering a lost device. Second, a POSITA would have been motivated to add Cohen's common password protection scheme to Jenne's system to improve security for a device that might be lost or stolen.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because both Jenne and Cohen taught modifying the same standard computer boot-up sequence (the BIOS/POST process) to display information. Integrating Cohen's features into Jenne's framework would have been a predictable and straightforward modification.

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 disclosed a remote security system where an owner could report a device as lost, causing a remote security station to transmit a command to the device. This command would initiate a security action, such as locking the device while displaying a predefined "return address" or "telephone number to call," all without local user assistance. This taught remotely initiating the display of return information. Helle disclosed a similar remote security system but added the capability for the remote control message to include a new phone number, thereby changing the contact information displayed on the locked device. The combination allegedly provided a system for remotely initiating or changing recovery information on a locked screen.
  • Motivation to Combine: A POSITA would combine Angelo and Helle to improve Angelo's system. Angelo's return message was "predefined," meaning it was static. A POSITA would have recognized the benefit of allowing this information to be updated, as taught by Helle, because an owner's contact information can change or different circumstances (e.g., lost vs. stolen, work hours vs. after hours) may require different contact details. Adding Helle's dynamic information capability to Angelo's remote security framework was presented as an obvious improvement.
  • Expectation of Success: The combination involved compatible technologies focused on the same problem of securing lost devices. Modifying the security message payload in Angelo's system to include parameters for changing the displayed text, as taught by Helle, would have been a simple and predictable task for a POSITA.

4. Key Claim Construction Positions

• Petitioner argued that the "Return/Recovery Display" terms (e.g., "display on a display screen...which displays return information") should be construed as "automatically displaying return/recovery information during or after every boot-up."
• This proposed construction was based on an argument of prosecution history disclaimer, where Petitioner alleged the Patent Owner repeatedly defined "the present invention" in the specification as requiring the automatic display of the recovery screen during or after every boot-up, thereby disavowing any broader scope.

5. Key Technical Contentions (Beyond Claim Construction)

• Printed Matter Doctrine: Petitioner contended that the claimed "recovery" and "return information" limitations should be afforded no patentable weight under the printed matter doctrine. The argument was that this information is claimed only for its content (i.e., for returning the computer to its owner) and is not functionally or structurally related to the computer substrate (the display screen), rendering it mere printed matter.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the specific combinations of prior art presented in the petition were never considered or applied by the Examiner during prosecution.
• Petitioner also argued against discretionary denial under §314(a) based on Fintiv. Key reasons included that the petition presented a compelling unpatentability challenge, the Petitioners (Google and Microsoft) were not parties to a co-pending district court litigation, and the Board's Final Written Decision was expected to issue approximately nine months before the estimated trial date in that litigation.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-7 of the ’393 patent as unpatentable.