Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CAROLYN W. HAFEMAN, an Individual
`
`
`
`Plaintiff,
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`v.
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`LG ELECTRONICS INC.,
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`Defendant.
`
`CIVIL ACTION NO.:
`6:21-cv-00696-ADA-DTG
`
`
`DEMAND FOR JURY TRIAL
`
`
`
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`LG ELECTRONICS INC.’S MOTION FOR SUMMARY JUDGMENT
`OF NOVEMBER 22, 2013 EFFECTIVE FILING DATE AND
`RESULTING INVALIDITY UNDER 35 U.S.C. § 102
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`HAFEMAN EXHIBIT 2037
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARDS ..................................................................................................... 2
`A.
`Effective Filing Date .............................................................................................. 2
`B.
`Anticipation............................................................................................................ 3
`BACKGROUND ............................................................................................................... 3
`A.
`Asserted Patent Family .......................................................................................... 3
`B.
`Relevant Prior Art .................................................................................................. 4
`ARGUMENT ..................................................................................................................... 5
`A.
`Each Asserted Claim Recites Remote Initiating as a Claim Limitation. ............... 5
`B.
`The Earliest Effective Filing Date is November 22, 2013. .................................... 5
`1.
`The 2004 App. Discloses Only Local Initiating ........................................ 6
`2.
`The Patent Office Did Not Conclude that the 2004 App. Supported
`the Remotely Initiating Limitations of the Asserted Claims ................... 10
`The Only Disclosure of Remote Communication in the 2004 App.
`is Remote Changing. ................................................................................ 11
`The Asserted Claims are Invalid as Anticipated Under 35 U.S.C. § 102. ........... 12
`C.
`CONCLUSION ................................................................................................................ 13
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`3.
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`I.
`II.
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`III.
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`IV.
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`V.
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 3 of 20
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Akeva L.L.C. v. Nike, Inc.,
`817 F. App’x 1005 (Fed. Cir. July 16, 2020) .............................................................................2
`
`Anascape, Ltd. v. Nintendo of Amer. Inc.,
`601 F.3d 1333 (Fed. Cir. 2010)..................................................................................................2
`
`In re Gamble,
`No. 2021-1848, 2022 WL 151986 (Fed Cir. Jan. 18, 2022) ......................................................3
`
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011)............................................................................................2, 11
`
`In re NTP, Inc.,
`654 F.3d 1278-79 .....................................................................................................................11
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`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008)..................................................................................................2
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`Transco Prod. Inc. v. Performance Contracting, Inc.,
`38 F.3d 551 (Fed. Cir. 1994)......................................................................................................2
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991)..................................................................................................2
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`Statutes, Rules & Regulations
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`35 U.S.C. § 102 ......................................................................................................................3, 5, 13
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`35 U.S.C. § 120 ................................................................................................................................2
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`ii
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 4 of 20
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`Exhibit
`A
`B
`C
`D
`E
`F
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`G
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`H
`I
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`J
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`K
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`L
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`M
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`N
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`O
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`P
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`Q
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`R
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`S
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`T
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`U
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`V
`W
`X
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`TABLE OF EXHIBITS
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`Description
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`U.S. Patent No. 9,892,287
`U.S. Patent No. 10,325,122
`U.S. Patent No. 10,789,393
`U.S. Patent Application No. 10/304,827 [LG_00024509-24546] (“2002 App.”)
`Excerpts from Deposition Transcript of Carolyn W. Hafeman (Nov. 17, 2022)
`IPR2022-01189, Paper 8, Patent Owner’s Preliminary Response Pursuant to 37
`C.F.R. §42.107 (Nov. 3, 2022)
`U.S. Patent Application No. 10/945,332 [HAFEMAN-LG_000732-789] (“2004
`App.”)
`U.S. Patent Publication No. 2005/0071670 [LG_00030109-30129]
`IPR2022-01189, Exhibit 1016, Comparison of the 2002 App. and the 2004
`App.
`U.S. Patent Application No. 10/945,332, July 26, 2006 Amendment and
`Remarks [HAFEMAN-LG_000855-868]
`U.S. Patent Application No. 10/945,332, Oct. 19, 2006 Office Action
`[HAFEMAN-LG_000870-879]
`IPR2022-01189, Exhibit 1018, Court’s Preliminary Claim Constructions (Apr.
`26, 2022)
`Plaintiff’s Second Amended and Supplemental Responses and Objections to
`Defendant’s First Set of Interrogatories (Nos. 1-19) (Nov. 23, 2022)
`Plaintiff’s First Supplemental and Amended Responses and Objections to
`Defendant’s First Set of Requests for Admission (Dec. 20, 2022)
`Tangible IP Confidential Intake Patent Listing Questionnaire (Ex. 11 to
`Hafeman Dep.) [HAFEMAN-LG_005608-5612] - CONFIDENTIAL
`Hafeman Patent Investments Hafeman US Patent 10,325,122 vs Apple
`Evidence of Use [HAFEMAN-LG_005654-5670] - CONFIDENTIAL
`Hafeman Patent Investments Hafeman US Application 16/377,768 (issued as
`’393 patent) vs Apple Evidence of Use [HAFEMAN-LG_005671-5684] -
`CONFIDENTIAL
`Tangible IP US Patent No. 9,892,287 vs. Apple Devices Evidence of Use
`[HAFEMAN-LG_006143-6167] - CONFIDENTIAL
`Tangible IP US Patent No. 10,325,122 vs. Apple Devices Evidence of Use
`[HAFEMAN-LG_006168-6192] - CONFIDENTIAL
`Excerpts from Rebuttal Expert Report of Dr. Scott Schaefer Regarding Validity
`(Jan. 20, 2023)
`Comparison of 2002 Application as filed (US App. No. 10/304,827) (Ex. D) to
`2004 Application (US App. No. 10/945,332) (Ex. G)
`Institution Decision in IPR2022-01193, Paper 16 (Jan. 31, 2023) (’287 patent)
`Institution Decision in IPR2022-01189, Paper 16 (Jan. 31, 2023)) (’122 patent)
`Institution Decision in IPR2022-01191, Paper 16 (Jan. 31, 2023)) (’393 patent)
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 5 of 20
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`I.
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`INTRODUCTION
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`The Asserted Patents claim priority to several related applications, including three filed in
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`2002, 2004, and 2013. Plaintiff admits that the Asserted Patents are not entitled to the effective
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`filing date of the 2002 application. Defendant seeks summary judgment that the Asserted Patents
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`are also not entitled to the effective filing date of the 2004 application. The 2004 application as
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`filed lacked sufficient disclosure to support the Asserted Claims’ limitations requiring:
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`“initiating1 . . . [return/recovery] information through remote communication.” Unlike the
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`Asserted Claims, the 2004 application discusses only local “initiating” of this information—and
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`its discussion of remote communication is limited to a separate claim limitation for remotely
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`“changing [return/recovery] information.” There is no genuine issue of material fact as to what
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`was disclosed (and not disclosed) in the 2004 application as filed, and this undisputed 2004
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`disclosure does not support the Asserted Claims as a matter of law. The earliest effective filing
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`date for the Asserted Claims is November 22, 2013. Indeed, the Patent Trial and Appeal Board
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`(“PTAB”) recently reached the same conclusion (preliminarily) when it granted institution in
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`IPR petitions filed against the Asserted Patents. Ex. V at 13 (“On this record, we preliminarily
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`determine that the ’332 application [the 2004 Application] does not provide written description
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`support for the ‘initiating or changing’ limitation in the ’287 patent claims.”); Ex. W at 13 (same
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`for ’122 patent); Ex. X at 17 (same for ’393 patent).
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`Further, Plaintiff admits that systems that qualify as prior art based on a November 22,
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`2013 priority date meet all the limitations of, and thus, anticipate the Asserted Claims.
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`Specifically, Plaintiff admits that her company sold a product that practiced the Asserted Claims
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`beginning in 2007—six years prior to the earliest effective filing date. Plaintiff also admits that
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`1 Unless otherwise noted, italicized underlined text indicates emphasis added.
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`Apple’s Find My iPhone app practices the Asserted Claims and was publicly available prior to
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`November 22, 2013. Thus, there is no genuine issue of material fact and this Court should grant
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`summary judgment of invalidity for all Asserted Claims.
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`II.
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`
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`LEGAL STANDARDS
`A.
`A claim in a U.S. patent application is not entitled to the benefit of the filing date of an
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`Effective Filing Date
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`earlier-filed U.S. patent application unless the subject matter of the claims is “disclosed in the
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`manner provided by section 112(a)” in the earlier filed application. 35 U.S.C. § 120; see, e.g., In
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`re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). To satisfy the written description
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`requirement, the disclosure of the prior application must “convey with reasonable clarity to those
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`skilled in the art that, as of the filing date sought, [the inventor] was in possession of the
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`invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Only the
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`disclosure of the specification and claims from the original application as filed can be considered
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`for written description support. Anascape, Ltd. v. Nintendo of Amer. Inc., 601 F.3d 1333, 1337
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`(Fed. Cir. 2010). All elements of the claim, including both alternative or disjunctive limitations,
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`must be supported to meet the written description requirement. See Tech. Licensing Corp. v.
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`Videotek, Inc., 545 F.3d 1316, 1332-34 (Fed. Cir. 2008).
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`An inventor’s designation of an application as a “continuation” is given no weight:
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`“[T]he bottom line is that, no matter what term is used to describe a continuing application, that
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`application is entitled to the benefit of the filing date of an earlier application only as to common
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`subject matter.” Transco Prod. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed.
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`Cir. 1994); see also Akeva L.L.C. v. Nike, Inc., 817 F. App’x 1005, 1012-13 (Fed. Cir. July 16,
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`2020).
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`2
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 7 of 20
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`Anticipation
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`B.
`When the effective filing date of a patent is after March 16, 2013, the current AIA
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`version of 35 U.S.C. § 102 applies. In re Gamble, No. 2021-1848, 2022 WL 151986, at *2 n.3
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`(Fed Cir. Jan. 18, 2022). Under AIA § 102, “A person shall be entitled to a patent unless the
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`claimed invention was patented, described in a printed publication or in public use, on sale, or
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`otherwise available to the public before the effective filing date of the claimed invention.”
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`III. BACKGROUND
`Asserted Patent Family
`A.
`Plaintiff asserts LG infringes U.S. Patent Nos. 9,892,287 (“the ’287 patent”) (Ex. A),
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`
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`10,325,122 (“the ’122 patent”) (Ex. B), and 10,789,393 (“the ’393 patent”) (Ex. C) (collectively,
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`“the Asserted Patents”). Each Asserted Patent claims priority to a number of patent applications,
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`the earliest of which is U.S. Patent Application No. 10/304,827 (“the 2002 App.”)2 (Ex. D),
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`which was filed on November 25, 2002. See also Ex. E at 51:4-52:1. Plaintiff admits that the
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`2002 App. “does not disclose anything relating to ‘initiating or changing return information . . .
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`through remote communication” and that the Asserted Claims are not entitled to claim priority
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`to the 2002 application. Ex. F at 6-7 (emphasis in original); see also Ex. E at 56:9-17, 56:24-
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`57:14; Ex. T ¶¶ 56, 88-89. Plaintiff abandoned the 2002 App. and it never issued. Ex. E at 69:12-
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`22.
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`Plaintiff filed a continuation-in-part patent application claiming priority to the 2002 App.
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`on September 20, 2004 (“the 2004 App.”) (Ex. G). The 2004 App. was published on March 31,
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`2005 as U.S. Patent Publication No. 2005/0071670 (Ex. H). The 2004 App. added new matter
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`2 The Parties also refer to the 2002 App. as “Hafeman 298” based on its publication number.
`3
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`that related to remotely changing return/recovery information and claims with a limitation
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`stating, “changing the return information . . . through remote communication” (collectively
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`referred to as the “New Matter”). Ex. G at HAFEMAN-LG_000776-778; see also Ex. U
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`(highlighting in blue the New Matter added to the 2004 App. (Ex. G) compared to the 2002 App.
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`(Ex. D)); Ex. I (same comparison between 2004 App. as published to 2002 App. as published).
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`However, the 2004 App. claims as filed did not include any limitations for remote “initiating.”
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`Ex. G at HAFEMAN-LG_000776-778. During prosecution of the 2004 App., Plaintiff amended
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`the claims to add “initiating and” to the “changing recovery information . . . through remote
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`communication” limitations of the pending claims. Ex. J at HAFMEAN-LG_000856, 858-861.
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`Plaintiff asserted that support for these “initiating” claim amendments was found at page 31, line
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`2 of the 2004 App., which states: “The program design feature allows the ‘owner’ to . . . initiate a
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`download of changes to the protected equipment.” Id. at HAFEMAN-LG_000864 (citing Ex. G
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`at HAFEMAN-LG_000769). The Examiner entered the amendments without comment, but
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`rejected the amended claims on other grounds. Ex. K. Over seven years later, the 2004 App.
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`issued as U.S. Patent No. 8,601,606. Ex. E at 70:1-5.
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`Plaintiff filed a third “continuation” application claiming priority to the 2004 App. on
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`November 22, 2013, which issued as U.S. Patent No. 9,021,610. Exs. A-C. Plaintiff filed
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`subsequent continuations within this family, including the three Asserted Patents, which all share
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`the same disclosure. Exs. A-C.
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`Plaintiff asserts that Defendant infringes claims 1 and 4 of the ’287 patent, claims 1, 4,
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`and 7 of the ’122 patent, and claims 1, 4, and 7 of the ’393 patent (“the Asserted Claims”).
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`Relevant Prior Art
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`B.
`Defendant has identified at least two references that Plaintiff admits practice all elements
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`of the Asserted Claims. If the earliest effective filing date of the Asserted Claims is November
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`22, 2013, these references qualify as prior art under AIA § 102. First, Plaintiff admits that her
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`own product—The Retriever—practices the Asserted Claims and was sold or offered for sale
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`prior to November 22, 2012. Ex. M at 23-24; Ex. N at 25. Second, Plaintiff has admitted that
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`Apple’s Find My iPhone practices the Asserted Claims and was sold or offered for sale prior to
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`November 22, 2013. Ex. E at 98:4-17, 101:10-22; Ex. N at 23-24; see also Ex. O at HAFEMAN-
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`LG_005609; Exs. P-S.
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`IV. ARGUMENT
`Each Asserted Claim Recites Remote Initiating as a Claim Limitation.
`A.
`Each of the Asserted Claims recites two distinct actions to be taken on the
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`
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`return/recovery information through remote communication: “[1] initiating or [2] changing
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`[return/recovery]3 information . . . through remote communication” ([1] is “the remote initiating
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`limitation” and [2] is “the remote changing limitation”). Ex. A at 17:22-23, 28:8-9; Ex. B at
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`16:62-63, 17:30-32, 18:28-29; Ex. C at 16:32-33, 16:67-17:1; 18:11-12.
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`The meanings of the claim terms “initiating” and “changing” were not at issue during
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`claim construction and thus are to be given their plain and ordinary meaning to a person of
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`ordinary skill in the art (“POSITA”) at the time of the alleged invention. Summary judgment is
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`still appropriate because the 2004 App. does not adequately support either of the two meanings
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`of remote initiating that Plaintiff’s experts have put forward.
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`The Earliest Effective Filing Date is November 22, 2013.
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`B.
`Plaintiff admits that the 2002 App. did not disclose remote communication at all and argued
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`3 The parties agree that “return information” and “recovery information” are the same. Ex. L at 2.
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`5
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 10 of 20
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`to the PTAB that “Hafeman ’298 [i.e., the 2002 App.] does not disclose anything relating to
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`‘initiating or changing return information which appears on the display through remote
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`communication without assistance by a user with the computer’—as is required by all challenged
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`claims.” Ex. F at 6-7 (emphasis in original).
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`Therefore, any disclosure that could possibly support initiating through remote
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`communication must be contained in the “New Matter” added to the 2004 App. as filed. Exs. I, U
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`(blue highlighted information). This New Matter, however, teaches only local initiating or remote
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`changing, but does not disclose remote initiating. Chatterjee Decl. Ex. 1 ¶¶ 456, 462. The Asserted
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`Claims are not entitled to the claimed September 20, 2004 effective filing date because the 2004
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`App. did not contain any written description of the remote initiating limitations, let alone a
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`description sufficient for a POSITA to have known that Plaintiff possessed this purported invention
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`at that time. Chatterjee Decl. Ex. 1 ¶ 456.
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`The 2004 App. Discloses Only Local Initiating
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`1.
`All disclosures in the 2004 App. relating to “initiating” return/recovery information refer
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`to local initiating at the device (i.e., computer 12) and none of them relate to the claimed remote
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`initiating (i.e., through remote communication from a remote station). Chatterjee Decl. Ex. 1 ¶
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`460; Ex. V at 16 (“The [2004 App.], however, does contemplate initiating the display of return
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`information at a time after the initial boot-up, but not through remote communication.”).
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`The 2004 App. uses “initiate” only 8 times and always as a verb. In most cases (with two
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`exceptions discussed below), it explains that the thing that is “initiated” or triggered is (1) the
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`display of return/recovery information, or (2) the Retriever “program,” which is “essentially a
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 11 of 20
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`recovery/return information screen that is displayed.”4 Each of these uses of “initiate” is shown
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`in the table below, which is divided into the disclosures from the 2002 App. (i.e., local only)
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`versus disclosures in the New Matter portion of the 2004 App.:
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`Use of “initiat!” in New Matter
`added to 2004 App.
`• “The Retriever display not only
`appears during the initial boot-up,
`but the Retriever program security
`recovery display screen can also be
`manually initiated by the computer
`12 user. This would be the
`Workstation Locked display. (FIG.
`10). This allows the computer 12
`user to manually lock the computer
`12 screen and protect the computer
`12 if they need to leave their
`computer 12 for a few minutes.”
`Ex. U at 36:14-20; Ex. I ¶ 134.
`• “The Retriever display not only
`appears during the initial boot-up or
`with a manual activation by the
`computer 12 user; the Retriever
`workstation locked recovery screen
`can also be initiated automatically
`using a screen saver timer feature
`that can be changed by the Owner
`or the Assigned To person. For
`example, let’s say the computer 12
`screen saver time feature has a 10
`minute timer. If there is no activity
`on the computer 12, the
`Workstation Locked security
`Recovery screen will display and
`stay displayed until the password
`prompt is satisfied.” Ex. U at 36:22-
`37:4; Ex. I ¶ 135.
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`Use of “initiat!” from 2002 App. =
`Must be Local
`• “The present invention automatically initiates
`during the boot-up process of the equipment, in
`order to display the recovery/return information
`before a security prompt screen to always help
`protect the owner's confidential information on
`the hard drive.” Ex. U at 4:10-15, Ex. I ¶ 10.
`• “[T]he program is an additional programming
`layer added into the initial start up program of
`the computer 12, so that the recovery/return
`display 18 information occurs during or before
`a password or security prompt screen. . . . By
`automatically initiating this program during or
`before a user's security prompt, such as a
`password screen program, the recovery/return
`program will not only increase chances of
`recovery, but will also increase chances that the
`computer 12 information on the hard drive is
`protected while the computer 12 is not in the
`owner's possession.” Ex. U at 13:16-28; Ex. I ¶
`43.
`• “(2) The computer 12 display 18 screen turns
`on. The computer 12 security software
`return/recovery program automatically initiates
`during the computer's 12 boot-up process.
`(3) As the computer 12 booting up process
`moves the user to a password or security prompt
`screen, the computer 12 security software
`program 24 displays a dialog box which
`includes owner recovery and return information
`. . . .” Ex. U at 14:11-19; Ex. I ¶ 43.
`• “If the program initiated after the password or
`security prompt screen, the person finding the
`lost or stolen equipment would have difficulty
`ever seeing the recovery /return display 20.”
`Ex. U at 16:7-10; Ex. I ¶ 51.
`
`
`•
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`7
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`4 Ex. U at 19:24-25.
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`Each and every use of “initiate” quoted above in the 2004 App. uses “initiate” to mean
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`triggering or causing the computer to display return/recovery information (via the
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`[Retriever/software] program [24]). Chatterjee Decl. Ex. 1 ¶ 460. Further, each and every use of
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`“initiate” quoted above is referring to locally triggering such a display, whether the trigger is
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`turning on/booting up the computer, manually locking the computer before leaving it unattended,
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`or a screen saver timer expiring while the computer is not in use. None of these teachings relate
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`to remote action, and none convey to a POSITA that in 2004 Plaintiff had possession of the idea
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`of remotely triggering the program on the computer to display the return/recovery information on
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`the computer. Id.; see also Ex. V at 15-17.
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`The 2004 App. uses “initiate” in only two other places not quoted in the table above.
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`First, “initiate” is used in the sentence relied on by Plaintiff to support the amendment to add
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`“initiating and” to the “changing . . . through remote communication” claim limitations. This
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`sentence says that the thing that is “initiated” is “a download of changes” – not return/recovery
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`information or the program that displays the return/recovery screen. Ex. U at 31:1-5 (“The
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`program design feature allows the 'owner' to access the recovery center administration program,
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`initiate a [sic] download of changes to the protected equipment . . . .”); Chatterjee Decl. Ex. 1 ¶
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`461; Ex. V at 17. Thus, this sentence relates to changing information, not initiating the display of
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`information. Ex. G at HAFEMAN-LG_000769; Chatterjee Decl. Ex. 1 ¶ 461. The 2004 App.
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`explains that the capability to remotely download changes to the return/recovery information
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`“allows the owner to eliminate erroneous or misleading ‘assigned to’ recovery information that
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`might have been created by the rogue ‘assigned to’ individual, replace the display 18 screen with
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`correct owner recovery information and even change or delete the ‘assigned to’ password to stop
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`access to the equipment information.” Ex. G at HAFEMAN-LG_000769. Thus, this disclosure
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`Case 6:21-cv-00696-ADA-DTG Document 94 Filed 02/06/23 Page 13 of 20
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`would have merely informed a POSITA about remotely changing the information. Chatterjee
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`Decl. Ex. 1 ¶ 461. Second, Fig. 2 uses “initiate” to refer to triggering a shutdown of the operating
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`system, which also does not support the remotely initiating claim limitations.
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`Additionally, the 2002 App. teaches that “means for causing the [return/recovery] screen
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`to appear on the display 18” “is stored in the memory 16” of the device. Ex. U at 10:9-16; Ex. G
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`at HAFEMAN-LG_000748; see also Ex. G at HAFEMAN-LG_000762, 780; Chatterjee Decl.
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`Ex. 1 ¶ 466. In other words, causing means 22 on the local computer 12 is the component that
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`locally “initiates” the display of the return/recovery information. Chatterjee Decl. Ex. 1 ¶ 466.
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`However, unlike the changing means (shown in blue) that Plaintiff added as New Matter to both
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`the local computer 12 and the remote
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`station in the 2004 App., she did not add
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`the “causing means 22” (shown in yellow)
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`to the remote station, but opted to leave it
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`shown only on the local computer 12. Id.
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`Thus, a POSITA would conclude that
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`Plaintiff had possession of only remotely
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`changing, not remotely initiating at the
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`time of filing of the 2004 App. Id.
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`To the extent that Plaintiff intends to assert that “initiating” means inputting the
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`return/recovery information into the computer 12 in the first instance, there is no support in the
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`2004 App. for inputting new information via remote communication. While the 2004 App. refers
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`generally to “interactively” entering, inputting, changing, and updating return/and recovery
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`information (Ex. U at 12:25-13:2, 15:3-6), a POSITA would not find that these disclosures
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`support remotely initiating return/recovery information. Chatterjee Decl. Ex. 1 ¶ 465. To the
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`extent that Plaintiff argues that “interactively” is akin to “remote,” that is belied by the fact that
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`these disclosures were included in the 2002 App., which Plaintiff has admitted did not disclose
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`any type of remote communication. Ex. U at 1:12-14, 2:13-20, 3:25-4:2, 15:3-6, 18:1-5, 19:10-
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`12, 22:1-5, 23:23-24:4, 35:24-36:9; Ex. E at 56:9-17, 56:24-57:14, 68:10-14; Ex. F at 6-7.
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`Plaintiff may attempt to argue that disclosures aimed at eliminating, replacing, or
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`overriding existing information constitutes disclosure of “initiating.” This is wrong. For example,
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`Plaintiff may point to the disclosures of remotely (1) “eliminat[ing] erroneous or misleading
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`‘assigned to’ recovery information that may have been created by the rogue ‘assigned to’
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`individual,” (2) “replac[ing] the display 18 screen with the correct owner recovery information,”
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`or (3) “overrid[ing] the ‘assigned to’ person’s input” to support the remote initiating limitations.
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`It is clear that any action to eliminate, replace, or override existing information would constitute
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`a change to information, not the initiation of information. Chatterjee Decl. Ex. 1 ¶ 461; see also
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`Ex. F at 10 (“Without display of the return/recovery information, the claimed invention would
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`have nothing to ‘change.’”). Given the disjunctive nature of the asserted claims requiring either
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`(a) initiating return/recovery information through remote communication or (b) changing
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`return/recovery information through remote communication, a POSITA at the time of the
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`invention would not have found that Plaintiff was in possession of the alleged remote initiating
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`limitations based on the disclosure of remote changing. Chatterjee Decl. Ex. 1 ¶ 465.
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`2.
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`The Patent Office Did Not Conclude that the 2004 App. Supported the
`Remotely Initiating Limitations of the Asserted Claims
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`The mere fact that the Patent Office examiner allowed the claim amendment of
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`“initiating and changing return/recovery information through remote communication” does not
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`mean that the application as filed supported this amendment under § 112 or that the claim
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`amendment is entitled to the filing date of the 2004 App. In re NTP, Inc., 654 F.3d at 1278-79
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`(“The examiner issued no rejection based on § 112, nor did the examiner make an affirmative
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`statement that the claims of the ’592 patent satisfied § 112 . . . . Although an examiner does not
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`dispute every single statement an applicant makes—and, of course, the applicants are required to
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`conduct these proceedings with candor and good faith—this does not constitute an admission by
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`the examiner that he considered and accepted these statements as established. As Congress
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`acknowledged, examiners have limited time to review each application and cannot be expected
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`to fully address every possible issue before them.”) (citations omitted). Like the NTP case, there
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`is no affirmative statement that the amended claims satisfied § 112 and there is no basis for this
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`Court to conclude otherwise.
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`3.
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`The Only Disclosure of Remote Communication in the 2004 App. is
`Remote Changing
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`
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`The 2004 App. did not disclose or even suggest that the download of changes capability
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`is used for “initiating . . . [return/recovery] information . . . through remote communication” on
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`the device. Chatterjee Decl. Ex. 1 ¶ 463. Instead, all of the references to return/recovery
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`information and “remote communication” in the 2004 App. related only to remotely changing the
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`return/recovery information already stored in local memory 16:
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`• “The apparatus 10 preferably includes means for changing the return information by the
`user through remote communication with the computer 12. . . . The apparatus 10
`preferably includes means for changing recovery information of additional computers 12
`owned by the owner through remote communication by the owner with the additional
`computers 12.” Ex. G at HAFEMAN-LG_000762.
`• “The changing step preferably includes the step of changing the return information by
`the user through remote communication with the computer 12. . . . [t]here is preferably
`the step of the owner changing recovery information of additional computers 12 owned
`by the owner through remote communication by the owner with the additional computers
`11
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`12.” Id. at HAFEMAN-LG_000763.
`• “It is this remote communication ability in the design of the Retriever software recovery
`program that helps better meet the challenges of internal theft . . . . With the current PDA
`recovery program, the ‘owner’ is limited to only making changes directly on the
`‘assigned to’ person’s equipment and/or the ‘assigned to’ person’s computer 12 or over a
`limited network that the assigned to person may never access again. With the Retriever’s
`recovery software design, the ‘owner’ can also attempt to access the ‘assigned to’
`person’s equipment by additional ways, such as over the internet, phone lines, cable, etc.
`thereby having more effective ability to try to locate the equipment and control the
`recovery information displayed by remote.” Id. at HAFEMAN-LG_000769-770.
`• “The computer 12 security software recovery/return program would also include an
`administration section to the program through hard drive or remote . . . Once the owner
`gains access to the primary operating system, the owner will have the ability to select an
`administration section for the computer 12 security software recovery/return program
`through the Start Up button or shortcut icon on the display 18 screen. (See Figure 5). The
`administration dialog box will allow the owner to interactively change the
`recovery/return display 18 information that appears in the recovery/return dialog box
`displayed during the boot-up process.” Id. at HAFEMAN-LG_000755-756.
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`Chatterjee Decl. Ex. 1 ¶ 463. Once again, given the disjunctive nature of the claims, a POSITA
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`reading the disclosure of remote changing information would not have thought it also supported
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`the disclosure of remote initiating display of information. Id. Ex. 1 ¶ 465.
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`
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`Because there is no genuine dispute that the 2004 App. as filed does not sufficiently
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`disclose the remote