`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC, MICROSOFT CORPORATION,
`Petitioners,
`
`v.
`
`CAROLYN W. HAFEMAN,
`Patent Owner.
`____________
`
`Case IPR2022-01188
`Patent 10,325,122
`____________
`
`
`Case IPR2022-01190
`Patent 10,789,393
`____________
`
`
`Case IPR2022-01192
`Patent 9,892,287
`____________
`
`
`
`DECLARATION OF DR. SCOTT SCHAEFER
`
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`I.
`
`Introduction
`
`1. My name is Scott Schaefer. I have been retained as an expert witness
`
`to provide my independent opinion in regard to the matters at issue in the inter
`
`partes reviews of United States Patent Nos. 9,892,287 (the “’287 patent”),
`
`10,325,122 (the “’122 patent”), and 10,789,393 (the “’393 patent”) (together, the
`
`“Challenged Patents”). I have been retained by Carolyn W. Hafeman
`
`(“Hafeman”), the Patent Owner in the above proceedings. The Petitioners are
`
`Google LLC and Microsoft Corporation (“Petitioner”).
`
`2.
`
`I am being compensated for my time at the hourly rate of $500 per
`
`hour. My compensation does not depend on my conclusions or the outcome of this
`
`case, and I have no other interest in this litigation or the parties thereto.
`
`3.
`
`I am not a legal expert and offer no opinions on the law. However, I
`
`have been informed by counsel of the various legal standards that apply, and I have
`
`applied those standards in arriving at my conclusion.
`
`II.
`
`Qualifications
`
`4.
`
`I received a B.S. in Computer Science and Mathematics in 2000 from
`
`Trinity University. Afterwards, I attended Rice University and received an M.S. in
`
`Computer Science in 2003 and a Ph.D. in Computer Science in 2006.
`
`5.
`
`In 2006, I began a faculty position at Texas A&M University as an
`
`Assistant Professor. I was promoted to Associate Professor in 2012 and to Full
`
`1
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`Professor in 2016. I served as the person in charge of accreditation for our
`
`Computer Science degree from 2013-2017. I became Associate Department Head
`
`of the Department of Computer Science & Engineering in 2017 and I was
`
`appointed Department Head in 2019, a role in which I have served since that time.
`
`6.
`
`In 2019, I was awarded the Eppright Professorship in Engineering and
`
`was named the holder of the Lynn ‘83 and Bill Crane ‘84 Department Head Chair
`
`in 2020.
`
`7.
`
`I have been awarded multiple awards for my teaching and research
`
`activities. I was named a member of the 2008 DARPA Computer Science Study
`
`Panel. I was awarded the Gunter Enderle Award in 2011 for my research. In
`
`2012, I received an NSF CAREER Award for my research work. My research was
`
`subsequently recognized in 2015 when I was named the Herbert H. Richardson
`
`Faculty Fellow by the College of Engineering. I was also awarded the 2019 TEES
`
`Research Impact Award to recognize significant contributions and impact in the
`
`area of research. In addition to these awards, I have received multiple best paper
`
`awards for my research in the past.
`
`8.
`
`I have received multiple teaching awards from the Computer Science
`
`& Engineering department for teaching excellence over the years. In 2017, I was
`
`awarded the Distinguished Achievement Award in Teaching at the College level.
`
`2
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`In 2019, I was awarded the Distinguished Achievement Award for Teaching at the
`
`University level, one of the highest university honors that is awarded.
`
`9.
`
`In addition to my academic experience, I have worked for a number of
`
`companies in different capacities. Before becoming involved in academia, I was
`
`employed by Southwest Research Institute to work on radio direction finding
`
`algorithms for the U.S. Navy in 1999-2000. I worked at WholeBrain Media on
`
`early mobile development from 1997-1999 including network communications. At
`
`Rare Medium, I performed what is now called full stack development and
`
`developed e-commerce platforms for various companies in 2000. I spent time at
`
`SensAble Technologies in 2003 developing implicit modeling algorithms for their
`
`haptic feedback system. In 2004, I was also employed by a startup company called
`
`Mok3 that was developed out of MIT to work on core computer vision algorithms
`
`for their image-based modeling software. I was also employed by Microsoft
`
`Research as an intern in 2005 and subsequently as a visiting researcher in 2006
`
`where we worked on a number of surface modeling methods in computer graphics.
`
`My work at Microsoft Research motivated the inclusion of what is now called the
`
`tessellator unit in DirectX 11, which is an application programming interface
`
`(“API”) that governs the relationship between multimedia hardware. Every
`
`graphics card produced since 2009 has been influenced by my work there.
`
`3
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`10. My research broadly lies in the field of computer graphics, though I
`
`have worked in many areas of Computer Science as is evidenced by my
`
`background. My research has been implemented by a number of companies
`
`including Microsoft, Pixar, Adobe, and Nvidia. In addition, my work on
`
`architectural optimization to create surfaces out of small numbers of discrete
`
`panels was used to design and construct a ski lift in Switzerland.
`
`11.
`
`In addition, I have served as an Associate or Guest Editor for a
`
`number of journals including Graphical Models, The Visual Computer, Computer
`
`Aided Design, Computer Aided Geometric Design, Transactions on Visualization
`
`and Computer Graphics, Computer Graphics and Applications, and ACM
`
`Transactions on Graphics. In addition to this service I have served as papers chair
`
`for most major computer science conferences in my area. I also serve on the
`
`steering committee of the Geometric Modeling and Processing conference.
`
`12.
`
`In terms of instruction, I teach and have developed courses on a
`
`variety of topics in Computer Science. I have taught courses in computer graphics,
`
`geometric modeling, game development, data structures and algorithms, as well as
`
`both our lower level and upper-level undergraduate seminar courses.
`
`13. A detailed curriculum vitae showing my credentials is attached to this
`
`report as Error! Reference source not found.A.
`
`4
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`III.
`
`Summary of Opinions
`
`14. The Challenged Claims were not rendered obvious by the
`
`combination of Jenne and Cohen, and a POSITA would not have been motivated to
`
`combine Jenne and Cohen.
`
`15. The Challenged Claims were not rendered obvious by the
`
`combination of Angelo and Helle, and a POSITA would not have been motivated
`
`to combine Angelo and Helle.
`
`IV.
`
`Legal Principles
`
`16.
`
`I am not an attorney. For purposes of this report, I have been
`
`informed by counsel of the following legal standards that apply to the issues I
`
`address in this declaration.
`
`17.
`
`I am not offering any legal opinions in this declaration nor am I
`
`qualified to do so. I only consider such legal standards in framing my opinions and
`
`conclusions as well as placing assertions made by Petitioner in the Petition into the
`
`proper context. Additionally, from a subject matter perspective, I understand that
`
`the petitioner always has the burden of persuasion regarding a challenge of
`
`patentability of an invention under an inter partes review.
`
`18.
`
`I understand that an inventor establishes priority of an invention by
`
`conceiving of the invention and reducing the invention to practice.
`
`5
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`19.
`
`I understand that a patent application may establish priority of
`
`invention when it supports all elements of the Challenged Claims.
`
`20.
`
`I understand that invalidation by anticipation occurs only when a
`
`single alleged prior art reference discloses each and every limitation of the claim at
`
`issue, either expressly or inherently. In other words, every limitation of the claim
`
`must identically appear in a single prior art reference for the reference to anticipate
`
`that claim. I also understand that all elements of the claim must be disclosed in the
`
`reference as they are arranged in the claim.
`
`21.
`
`I understand that to be considered anticipatory, the prior art reference
`
`must be enabling and must describe the patentee’s claimed invention sufficiently to
`
`have placed it in possession of a person of ordinary skill in the field of the
`
`invention.
`
`22.
`
`I understand that a claim may be anticipated under 35 U.S.C. § 102(a)
`
`if “that invention was known or used by others in this country or patented or
`
`described in a printed publication in this or a foreign country, before that invention
`
`thereof by the applicant for patent.” I further understand that a claim may be
`
`anticipated under 35 U.S.C. § 102(b) if the claimed invention was patented or
`
`described in a printed publication in this or a foreign country or in public use or on
`
`sale in this country, more than one year prior to the date of the application for a
`
`patent in the United States.
`
`6
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`23.
`
`I understand that patent may be rendered “obvious” based on an
`
`alleged prior art reference or a combination of such references plus what a person
`
`of ordinary skill in the art would understand based on his or her knowledge and the
`
`references. I understand that a patent cannot be properly granted for subject matter
`
`that would have been obvious to a person of ordinary skill in the art at the time of
`
`the alleged invention, and that a patent claim directed to such obvious subject
`
`matter is invalid under 35 U.S.C. § 103. It also is my current understanding that in
`
`assessing the obviousness of claimed subject matter, one should evaluate
`
`obviousness over the prior art from the perspective of one of ordinary skill in the
`
`art at the time of the invention.
`
`24.
`
`I understand that a patent claim composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was
`
`independently known in the prior art. But multiple prior art references or elements
`
`may, in some circumstances, be combined to render a patent claim obvious,
`
`provided that the references collectively disclose expressly or inherently every
`
`limitation of the challenged claim. I understand that I should consider two factors.
`
`First, I should consider whether there is an “apparent reason” to combine the prior
`
`art references or elements in the way the patent claims. Requiring a reason for the
`
`prior art combination protects against the distortion caused by hindsight. Along the
`
`same lines, one cannot use the patent as a blueprint to piece together the prior art in
`
`7
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`order to combine the right ones in the right way as to create the claimed inventions.
`
`To determine whether such an “apparent reason” exists to combine the prior art
`
`references or elements in the way a patent claims, it will often be necessary to look
`
`to the interrelated teachings of multiple patents, to the effects of demands known to
`
`the design community or present in the marketplace, and to the background
`
`knowledge possessed by a person having ordinary skill in the art. Second, I should
`
`consider whether the combination would work for its intended purpose to achieve
`
`the claimed invention. If a person of ordinary skill in the art would understand that
`
`the references could not be physically combined in an operational manner because
`
`they are technically incompatible, it would not be obvious to combine them to
`
`practice the invention even if the references collectively disclosed all the
`
`limitations of a challenged claim.
`
`25.
`
`I understand that when the prior art “teaches away” from combining
`
`prior art references or certain known elements, discovery of a successful means of
`
`combining them is less likely to be obvious. A prior art reference may be said to
`
`“teach away” from a patent when a person of ordinary skill, upon reading the
`
`reference, would be discouraged from following the path set out in the patent or
`
`would be led in a direction divergent from the path that was taken by the patent.
`
`26.
`
`I understand that the question of obviousness is to be determined
`
`based on:
`
`8
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`a. The scope and content of the prior art;
`
`b. The differences between the subject matter of the claim and the prior
`
`art (whereby in assessing the possibility of obviousness one should
`
`consider the manner in which a patentee and/or a Court has construed
`
`the scope of a claim);
`
`c. The level of ordinary skill in the art at the time of the alleged invention
`
`of the subject matter of the claim; and
`
`d. Any relevant objective factors or secondary considerations of non-
`
`obviousness, which may include commercial success of a product using
`
`the invention, if that commercial success is due to the invention; long-
`
`felt need for the invention; evidence of copying of the claimed
`
`invention; industry acceptance; the taking of licenses under the patent
`
`by others; initial skepticism; failure of others; and praise of the
`
`invention.
`
`27.
`
`I understand that when a patentee can demonstrate commercial
`
`success, usually shown by significant sales in a relevant market, and that the
`
`successful product is the invention disclosed and claimed in the patent, it is
`
`presumed that the commercial success is due to the patented invention. I also
`
`understand that courts may find the commercial success of the infringer and other
`
`9
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`members of the industry persuasive even though the patentee was not successful
`
`with a product covered by the patent.
`
`28.
`
`I understand that a need or problem known in the field at the time of
`
`an invention can provide an obvious reason to combine elements in the manner
`
`claimed. A patent’s subject matter would have been obvious if at the time of that
`
`invention, there was a known problem for which the patent claims encompassed an
`
`obvious solution. Further, if a patent claims a structure known in the prior art that
`
`only substitutes one element for another that is known in the field, I understand
`
`that the combination would have been obvious unless the result is unexpected and
`
`fruitful. Therefore, a predictable variation of prior art is obvious.
`
`29.
`
`It is also my understanding that if a technique was used to improve a
`
`device or method, and if a person of ordinary skill in the art would recognize that
`
`the technique would improve similar devices or methods in the same way, using
`
`the technique is obvious unless applying it is beyond the person’s skill.
`
`30.
`
`It is my further understanding that an alleged improvement claimed in
`
`a particular patent must do more than use prior art elements according to their
`
`established functions.
`
`31.
`
`It is my additional understanding that items may have obvious uses
`
`beyond their primary purposes. Thus, as stated by the U.S. Supreme Court,
`
`“common sense teaches … that familiar items may have obvious uses beyond their
`
`10
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`primary purposes, and in many cases a person of ordinary skill will be able to fit
`
`the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 420 (2007). I understand that neither a particular
`
`motivation nor an avowed purpose of a patentee controls how a piece of prior art
`
`may be used.
`
`32.
`
`I also understand that if a combination was obvious to try, it may be
`
`obvious. I understand that obviousness is therefore not confined to a formalistic
`
`conception of “teaching, suggestion, and motivation” or by overemphasizing
`
`published publications and the explicit content of issued patents.
`
`33.
`
`It is my further understanding that multiple prior art references can be
`
`combined to show that a claim is obvious. To determine whether there was an
`
`apparent reason to combine those references in the way a patent claims, it is my
`
`understanding that I can look to interrelated teachings of multiple patents, to the
`
`effects of demands known to the design community or present in the marketplace,
`
`and/or to the background knowledge possessed by a person of ordinary skill in the
`
`art. I also understand that neither a particular motivation nor the alleged purpose of
`
`the patentee controls that investigation of obviousness.
`
`34.
`
`I am also aware that another way to decide whether one of ordinary
`
`skill in the art would combine what is described in various items of prior art is
`
`whether there is some teaching, suggestion, or motivation in the prior art for a
`
`11
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`skilled person to make the combination covered by the patent claims. It is my
`
`further understanding that the analysis of a motivation to combine must be explicit
`
`35.
`
`I am also aware that references that teach away cannot serve to create
`
`a prima facie case of obviousness. A reference is said to reach away when a
`
`POSITA, upon reading the reference, would be discouraged from following the
`
`path set out in the reference or would be led in a direction divergent from the path
`
`that was taken by the applicant.
`
`36.
`
`I understand that in developing opinions as to whether or not certain
`
`claimed subject matter would have been obvious, each claim of a given patent
`
`should be considered in its entirety and separately from any other claims. In so
`
`doing, it is my further understanding that while I should consider any differences
`
`between the claimed invention and the prior art, I should also assess the
`
`obviousness or non-obviousness of the entirety of a claim covering an alleged
`
`invention, not merely some portion of it.
`
`37.
`
`I understand that patent specification must contain a written
`
`description of the invention sufficient to allow a person of ordinary skill in the art
`
`to recognize that the inventor invented what is claimed. I understand that the test
`
`for sufficiency of the written description is whether the disclosure of the
`
`application relied upon reasonably conveys to those skilled in the art that the
`
`inventor had possession of the claimed subject matter as of the filing date.
`
`12
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`38.
`
`I understand that in analyzing whether a patent specification provides
`
`sufficient written description of a claim, I must consider the description from the
`
`viewpoint of one of skill in the art when the application was filed. The written
`
`description requirement is satisfied if a person having ordinary skill reading the
`
`original patent application would have recognized that it describes the full scope of
`
`the claimed invention as it is finally claimed in the issued patent and that the
`
`inventor actually possessed that full scope by the filing date of the original
`
`application.
`
`39.
`
`I understand that the written description requirement may be satisfied
`
`by any combination of the words, structures, figures, diagrams, formulas, etc.,
`
`contained in the patent application. The full scope of a claim or any particular
`
`requirement in a claim need not be expressly disclosed in the original patent
`
`application if a person having ordinary skill in the art at the time of filing would
`
`have understood that the full scope or missing requirement is in the written
`
`description in the patent application.
`
`40.
`
`I understand that my interpretation of the patent claims and my
`
`validity analysis must be undertaken from the perspective of a hypothetical person
`
`of ordinary skill in the art (“POSITA”). In determining the characteristics of a
`
`hypothetical person having ordinary skill in the art of the patent at the time of the
`
`claimed invention, I considered several things, including the type of problems
`
`13
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`encountered in the art, the solutions to those problems, the rapidity with which
`
`innovations are made, the sophistication of the technology, and the education level
`
`and experience of people working in the field.
`
`41. Based on my experience, it is my opinion that a person of ordinary
`
`skill in the art at the time of the invention of the Challenged Patents would have
`
`had a Bachelor’s Degree in Computer Science or a related field, and two years of
`
`experience working in the field of software development. An individual with less
`
`technical education but more experience, or vice versa, could also qualify as a
`
`person of ordinary skill in the art.
`
`42.
`
`I consider myself a person with at least ordinary skill in the art with
`
`respect to the Challenged Patents at the time of their priority dates.
`
`43. My opinions as stated in this declaration are valid even if the Board
`
`adopts a different definition of the level of ordinary skill in the art (e.g., Dr.
`
`Zadok’s proposed definition or the Board’s definition in the Institution Decisions).
`
`V.
`
`Overview of the Asserted References
`
`A.
`
`Jenne
`
`44.
`
`Jenne discloses a system for displaying commercial messages
`
`(advertisements) during “a user wait time” with examples such as during booting,
`
`waking up from sleep mode, virus scanning, screen savers, long file downloads,
`
`14
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`software installation, or disk scanning.1 Jenne states that users may face
`
`unavoidable wait periods during these events and would be a captive audience.2
`
`Jenne indicates that that those unavoidable wait period could be monetized to
`
`“generate an advertisement revenue stream from every computer sold with this
`
`feature.”3
`
`45.
`
`Jenne proposes to do so using a system where computer
`
`manufacturers can update advertisements in the “memory 520” on the computer
`
`through the Internet.4 These advertisements are then displayed during the wait
`
`times when the use is a captive audience.5
`
`46.
`
`Jenne does not provide any disclosure related to device security or
`
`recovery. There are no password screens that prevent unauthorized users from
`
`accessing the device nor does remotely changing return/recovery information by
`
`the owner appear. In one sentence, Jenne states that “other information could be
`
`displayed such as announcements, useful productivity tips, utility enhancements
`
`and computer upgrades.”6 However, there is no mention of return/recovery
`
`
`
`1 Jenne ¶¶ 13, 21.
`2 Jenne ¶ 21.
`3 Jenne ¶ 21.
`4 Jenne ¶ 25.
`5 Jenne ¶¶ 25–27.
`6 Jenne ¶ 22.
`
`15
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`information as a speculation, nor does it make sense in the context of computer
`
`manufacturers monetizing captive users through advertisements.
`
`B. Cohen
`
`47. Cohen discloses a method where the owner enters “a textual indicia of
`
`personal ownership” “during set-up or during a configuration change.”7 In this set-
`
`up processor for the device, the device will “prompt[] the user to enter personal
`
`ownership indicia, such as name and address data.”8 After set-up, when the device
`
`is powered on, the device will display this information “utilizing video display
`
`device” and then “prompt[] the user for a password.”9
`
`48. However, Cohen does not disclose anything about remotely changing
`
`return/recovery information. Instead, the setting of “a textual indicia of personal
`
`ownership” happens locally during set-up when the device is being configured
`
`upon an alteration of the subsystems of that device or in response to an initial
`
`utilization of the device.10
`
`C. Angelo
`
`49. Angelo discloses a system that allows an owner to report a device as
`
`missing to a security station. That security station would then transmit a command
`
`
`
`7 Cohen at 2:31–35.
`8 Cohen at 4:29–34.
`9 Cohen at 5:21–29.
`10 Cohen at 4:12–16.
`
`16
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`to cause a destructive security action to occur.11 Angelo describes such destructive
`
`actions such as erasing some or all of the memory of the device12 or disabling
`
`functionality such as the ability to transmit messages.13 Hence, Angelo is primarily
`
`concerned with data security and not device return/recovery. One sentence in
`
`Angelo does state the owner can perform is “to simply lock the machine down
`
`while displaying a pre-defined message with a return address for the device or a
`
`telephone number to call.”14 However, the message is “pre-defined,” meaning that
`
`the message cannot be changed remotely by the owner. Even in that case, Angelo
`
`does not state whether or not the display of any return/recovery information
`
`happens before, with, or after any lock screen. Angelo does state that a “device
`
`will lock itself if a predetermined number of invalid PINs are entered,”15 implying
`
`that such display may only happen after a PIN is requested.
`
`D. Helle
`
`50. Helle discloses a method and apparatus for controlling a mobile
`
`device when it has been lost, stolen or misused.16 The controlling of the mobile
`
`device may be performed via SMS to display contact information of the owner
`
`
`
`11 Angelo ¶ 11.
`12 Angelo ¶ 22.
`13 Angelo ¶ 23.
`14 Angelo ¶ 23.
`15 Angelo ¶ 9.
`16 Helle at 1:41–46.
`
`17
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`“when the mobile phone does not start up normally, for example, due to an
`
`incorrect security code entry,” setting the phone into a secure mode where it can
`
`only be used to call one number, and commanding the phone to send information
`
`about its location and usage.17
`
`51. Helle does not disclose displaying return/recovery information before
`
`a lock screen. Rather the display happens “due to an incorrect security code
`
`entry”18 or due to a cancelled PIN query19 indicating the display is performed after
`
`the lock screen.
`
`VI.
`
`The Challenged Claims Were Not Rendered Obvious by the
`Combination of Jenne and Cohen.
`
`52. Petitioner argues that the Challenged Claims were rendered obvious
`
`by the combination of Jenne and Cohen. I disagree.
`
`53.
`
`I understand that a motivation to combine may not be based upon
`
`hindsight. In other words, one cannot use the Challenged Claims as a blueprint to
`
`piece together the prior art in order to combine the right ones in the right way as to
`
`create the claimed inventions. In my opinion, Petitioner’s proposed combination
`
`reflects impermissible hindsight bias and attempt to reconstruct the Challenged
`
`Claims through disparate elements in prior art.
`
`
`
`17 Helle at 1:46–58
`18 Helle at 1:49–52, 4:17–20.
`19 Helle at 3:10–14, 3:20–24.
`
`18
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`54.
`
`In my opinion, a POSITA would not have been motivated to combine
`
`Jenne and Cohen.
`
`a. Jenne discloses a system for displaying advertisements in order to
`
`“generate additional revenue for the computer manufacturer.”20
`
`Cohen, by contrast, discloses a system for locally displaying
`
`return/recovery information “during system set-up or configuration.”21
`
`b. Cohen discloses a method where the owner enters “a textual indicia of
`
`personal ownership” “during set-up or during a configuration
`
`change.”22 Cohen is specifically designed to keep ownership indicia
`
`constant. Although Cohen states that ownership indicia can be stored
`
`in RAM or nonvolatile memory, Cohen makes clear that nonvolatile
`
`memory is preferred because it cannot be altered, whereas ownership
`
`information stored in the RAM could be “easily defeated” by removing
`
`the battery.23 Thus, Cohen’s objective is to keep its local ownership
`
`indicia constant after an initial set-up or configuration change. In
`
`essence, Cohen is a digital manifestation of a permanent physical label
`
`such as the STOP tag discussed in the Asserted Patents.
`
`
`
`20 Jenne ¶ 19.
`21 Cohen at 5:47–48.
`22 Cohen at 2:31–35.
`23 Cohen at 4:50–5:4.
`
`19
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`c. To connect Jenne’s advertising system to Cohen’s system for locally
`
`displaying return/recovery information, Petitioner relied on the
`
`statement in Jenne that “other information could be displayed” during
`
`a user waiting time besides advertisements.24 However, Jenne
`
`suggests displaying other information—“such as announcements,
`
`useful productivity tips, utility enhancements[,] and computer
`
`upgrades”—in order to “increase the likelihood of keeping the user[’]s
`
`attention” and maximize revenue.25 In my opinion, Jenne’s
`
`suggestion to display information that would increase the chances of a
`
`user “sit[ting] through an advertisement” would not have motivated a
`
`POSITA to transform Jenne’s advertising system into a
`
`return/recovery system.26
`
`d. Even if a POSITA would have been motivated to use Jenne’s
`
`advertising system to display return/recovery information, a POSITA
`
`would not have been motivated to remotely change return/recovery
`
`information based on Cohen, which only discloses locally initiating
`
`return/recovery information “during system set-up or configuration.27
`
`
`
`24 Zadok Decl. ¶ 301.
`25 Jenne ¶ 22.
`26 Jenne ¶ 22.
`27 Cohen at 5:47–48.
`
`20
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`As the Challenged Patents explained, “allow[ing] the owner to
`
`interactively change the recovery/return information at any time” was
`
`a “critical and unique” feature of Hafeman’s invention.28 “This
`
`remote communication ability ma[de] the [invention] design
`
`completely unique and very different” from prior art.29 In my opinion,
`
`a POSITA would not have been led to Hafeman’s innovation of
`
`allowing the owner of a computer to remotely control the display of
`
`return/recovery information based on Jenne’s system for allowing a
`
`computer manufacturer to display advertisements and Cohen’s system
`
`for allowing a computer owner to locally initiate return/recovery
`
`information. Cohen is focused on the initial set-up of a device,
`
`whereas Jenne is focused on displaying advertisements over the life of
`
`the device.
`
`55.
`
`In my opinion, Petitioner’s proposed combination does not support
`
`“initiating or changing return information . . . through remote communication.”30
`
`
`28 See, e.g., ’287 Patent at 8:24–25, 34–36; ’122 Patent at 8:24–25, 34–36; ’393 Patent at 8:6–7, 16–18.
`29 See, e.g., ’287 Patent at 14:29–30; ’122 Patent at 13:65–66; ’393 Patent at 14:14–15.
`30 See, e.g., ’287 Patent at 17:22–23; ’122 Patent at 16:62–63; ’393 Patent at 16:32–33.
`
`21
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`a. Nothing in Jenne discloses the display of return information, whether
`
`remotely or locally. Instead, Jenne concerns displaying
`
`advertisements during “user waiting time.”31
`
`b. Cohen does not disclose remotely changing return information.
`
`Instead, Cohen discloses locally initiating return information “during
`
`system set-up or configuration.”32 Cohen does not indicate whether
`
`the return information can be changed and does not reference any
`
`form of remote communication.
`
`56.
`
`In my opinion, Petitioner’s proposed combination does not support
`
`initiating or changing return/recovery information “without assistance by a user”
`
`with the computer.33
`
`a. Petitioner claimed that the “without assistance” limitation was
`
`satisfied by Jenne.34 In my opinion, however, the updates that occur
`
`to Jenne’s advertising messages require assistance by the user. Jenne
`
`teaches two ways to download and update advertisements that are
`
`“tailored to the users’ interests”: the user either “provide[s]
`
`advertisement preferences” or “[t]he commercial message application
`
`
`
`31 Jenne ¶ 5.
`32 Cohen at 5:47–48.
`33 See, e.g., ’287 Patent at 17:23–24; ’122 Patent at 16:63–64; ’393 Patent at 16:33–34.
`34 Zadok Decl. ¶ 332.
`
`22
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`540 tracks the user Internet information.”35 The user provides
`
`assistance in both circumstances, either by providing his or her
`
`preferences or by visiting websites on which the preferences are
`
`based, as shown below:36
`
`
`
`57.
`
`In my opinion, Petitioner’s proposed combination does not support
`
`remotely changing return/recovery information through an interactive program
`
`“accessed only by the owner of the computer or the party authorized by the
`
`owner.”37
`
`a. Petitioner claimed that this limitation was satisfied by Jenne.38 In my
`
`opinion, however, Jenne does not disclose that its advertising system
`
`
`
`35 Jenne ¶¶ 22, 25.
`36 Jenne at Fig. 1
`37 See, e.g., ’287 Patent at 17:27–28; ’122 Patent at 16:67–17:1; ’393 Patent at 16:37–38.
`38 Zadok Decl. ¶¶ 335–42.
`
`23
`
`
`HAFEMAN EXHIBIT 2040
`
`
`
`was accessed only by the owner or party authorized by the owner. To
`
`the contrary, Jenne disclosed that “the computer user could uninstall
`
`or delete the commercial message application.”39 In addition, Jenne
`
`disclosed that a “premium user” could “disable the advertisement”
`
`displayed by the commercial message application.40 Thus, by
`
`enabling users to uninstall, delete, or disable the commercial message
`
`application, Jenne does not disclose that its commercial message
`
`p
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
