Google LLC v. Hafeman Carolyn

1. Case Identification

• Case #: IPR2022-01192
• Patent #: 9,892,287
• 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 ’287 patent describes a system for facilitating the return of lost or stolen computers. The system displays ownership and return information on the computer’s screen during or after boot-up, with a purported key feature being the ability to remotely 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 No. 0687968A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jenne taught displaying messages (e.g., advertisements, but also "other information") to a "captive audience" during a computer's boot-up process. Cohen taught automatically displaying "textual indicia of personal ownership" (e.g., name, address) each time a computer is powered on, before or with a password prompt, to increase the likelihood of its return if lost. The combination of Jenne's timing (during boot-up) with Cohen's content (ownership information) and security prompt allegedly rendered the claims obvious. Jenne's disclosure of remotely updating its displayed messages via the internet was asserted to teach the remote-changing limitations of the claims.
  • Motivation to Combine: A POSITA would combine these references for several reasons. First, it would have been obvious to use the "captive audience" period during boot-up described by Jenne to display the specific ownership information taught by Cohen, as this would predictably increase the chance of recovering a lost device. Second, the combination was presented as a simple substitution of a known element (Cohen's ownership data) for a generic one (Jenne's "other information"). Finally, a POSITA would be motivated to add Cohen's password protection screen to Jenne's system to improve security, a common practice at the time.
  • Expectation of Success: A POSITA would have a high expectation of success because both references operated in the analogous field of computer systems and taught modifying the same part of the startup sequence (the POST/BIOS process) to display information.

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 security system where a remote station, upon being notified a device is lost, could transmit a command to lock the device and display a predefined message containing a return address or phone number. This taught the remote initiation of a recovery display. Helle disclosed a system for remotely controlling a lost mobile phone where a control message could include parameters, such as a new phone number, to dynamically change the content of the message displayed on the lock screen. The combination of Angelo's remote security action with Helle's dynamic message-changing capability allegedly rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Angelo and Helle to improve upon Angelo's static "predefined message." It would have been obvious to incorporate Helle's teachings to allow an owner to update the displayed contact information, which may change over time or need to be different depending on the situation (e.g., work number during the day, home number at night). This modification would predictably improve the likelihood that a lost device could be returned to its owner.
  • Expectation of Success: Success was expected because the combination merely involved modifying Angelo's security command message—a standard network payload—to include the keywords and parameters (e.g., "LOST," phone number) taught by Helle. Both systems were compatible, addressing the same problem of securing lost portable devices and displaying return information.

4. Key Claim Construction Positions

• Return/Recovery Display Terms: Petitioner argued that claim phrases such as "displays information concerning return information" should be construed as "automatically displaying return/recovery information during or after every boot-up." This construction was based on an argument of clear and unequivocal disavowal, asserting the patent specification repeatedly defined "the present invention" as requiring this automatic display on every startup.

5. Key Technical Contentions (Beyond Claim Construction)

• Printed Matter Doctrine: Petitioner contended that the recited "recovery" and "return information" limitations constituted non-functional printed matter. The argument was that this information is merely content, "useful and intelligible only to the human mind," and is not functionally or structurally related to the computer itself. Therefore, Petitioner argued these limitations should be given no patentable weight in the obviousness analysis.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the asserted prior art combinations and arguments were not previously considered by the USPTO. While Helle was of record, it was never applied by the examiner in a rejection.
• Petitioner also argued against discretionary denial under Fintiv (§314(a)), stating that the petition presented a compelling unpatentability challenge. It was noted that the median time-to-trial in the relevant district court (W.D. Texas) indicated that a Final Written Decision would likely issue months before any potential trial, and that Petitioners were not parties to the co-pending litigation.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’287 patent as unpatentable.