Google and Microsoft v. Carolyn Hafeman
`
`USPTO PTAB
`IPR2022-01188, 1189, 1190, 1191, 1192, 1193
`
`November 2, 2023
`
`Counsel for Patent Owner: Stephen Underwood & Jason Linger
`
`1
`
`
`
`USPTO PTAB
`IPR2022-01188, 1189, 1190, 1191, 1192, 1193
`
`November 2, 2023
`
`Counsel for Patent Owner: Stephen Underwood & Jason Linger
`
`1
`
`
`
`Outline of Arguments
`
`1. Overview of Challenged Patents
`
`2. Violation of Sotera Stipulation (All IPRs)
`
`3. Priority Date (1189, 1191, 1193)
`
`4. Secondary Considerations (All IPRs)
`
`5. Claim Construction (1188, 1190, 1192)
`
`6. Jenne + Cohen Combination (1188, 1190, 1192)
`
`7. Angelo + Helle Combination (1188, 1190, 1192)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Overview of Challenged Patents
`(122, 393, and 287)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`The State of the Art in 2003
`
`POR, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Ms. Hafeman’s Pioneering Inventions
`
`POR, 3-4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`The Sotera Violation
`(All IPRs)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`The Sotera Violation
`
`Ex. 2037; POR, 22-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`LG’s Motion for Summary Judgment
`
`
`
`Same Arguments, Same Evidence, Same Limitation
`
`Ex. 2038; POR, 22-24, Sur-Reply, 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`Patent Owner’s Opposition to LG’s Motion
`
`
`
`Petitioner’s Alleged Distinction Between Court and IPR
`
`LG’s Motion for Summary Judgment
`
`Ex. 2037; POR, 23; Sur-Reply, 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`The District Court’s Decision
`
`Ex. 2039; POR, 22-23; Sur-Reply, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`
`
`Three IPRs Would Not Exist But For This Challenge
`
`Petitioner’s Notice of Multiple Petitions
`
`Institution Decision, 7.
`
`Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`
`
`All of the Institution Decisions Relied on the Sotera Stipulation
`
`Institution Decision, 7.
`
`POR, 23; Sur-Reply, 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`Priority Date is the Only Dispute in Three IPRs
`
`For Ground 1
`
`For Ground 2
`
`1189 Institution Decision, 18.
`
`1189 Institution Decision, 19-20.
`
`Sur-Reply, 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`
`
`The Director’s Fintiv Memorandum
`
`Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`The IPRs Should Be Terminated
`
`I.M.L. SLU v. WAG Acquisition, LLC, IPR2016-01658, Paper 46, 13-14 (PTAB Feb. 27, 2018)
`
`POR, 25; Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`
`
`A District Court Will Strike Arguments That Violate a Stipulation
`
`Vanguard believes that it should be free to rely on printed publications and patents in combination with
`the physical product to prove the invalidity of InVue's optical patents.
`
`The Court disagrees. There is nothing extreme about holding Vanguard to the agreement it made with
`InVue — and filed with the Court — regarding how the case would be litigated. And the language of the
`stipulation is clear. Vanguard agreed not to challenge the validity of the two optical patents “based in whole, or
`in part, or in any way, on any patent, printed publication, or combination thereof.” Now, it seeks to rely — at
`least in part — on printed publications and patents to support its final invalidity contentions. This is
`impermissible under the stipulation that Vanguard signed.
`
`Furthermore, allowing Vanguard to disregard its agreement under the stipulation does prejudice
`InVue. InVue agreed to a stay of the case pending Vanguard's IPRs because Vanguard signed the stipulation. If
`no stipulation had been signed, the Court would have ruled on Vanguard's motion to stay pending the IPRs as
`an opposed motion.
`
`Thus, it is appropriate to strike Vanguard's final invalidity contentions only to the extent they violate the
`stipulation.
`
`InVue Sec. Prod. Inc. v. Vanguard Prod. Grp., Inc., No. 8:18-CV-2548-T-33SPF, 2020 WL 2425721, at *2 (M.D.
`Fla. May 12, 2020)
`
`POR, 24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`Priority Date
`(1189, 1191, 1193)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`The Patents Are Entitled to the Sept. 20, 2004 Date
`
`Neither Hafeman 670 (in Ground 1) nor Hafeman 298 (in Ground 2) are prior art
`
`1189 Petition, 3
`
`1189 Sur-Reply, 2.
`
`18
`
`
`
`The 332 Supports Remote Control Capability
`
`Ex. 1012, 34 (28:12-18)
`
`Ex. 1012, 37 (31:1-5)
`
`1189 ID, 14
`
`1189, POR, 29-30; Sur-Reply, 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`The Owner Can Enter or Input Information “On the Fly”
`
`Ex. 1012, 18-19 (12:25-13:13)
`
`1189 POR, 26-27; Sur-Reply, 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`Organization Logos “Can Be Easily and Quickly Downloaded”
`
`Ex. 1012, 42 (36:4-9)
`
`Ex. 1012, 21 (15:3-14)
`
`1189 POR, 27; Sur-Reply, 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`The Experts Agree that the 332 Supports Adding Recovery Information
`
`“There certainly is an optional piece of information that can be added to
`the recovery information later on.”
`
`EX-2048, 29:4-6
`
`A POSITA reading these disclosures would further understand that an owner may
`set return/recovery information when there is no existing return/recovery
`information … For example, if an owner was not displaying their company name
`on the screen, but wanted to and then added such information, that could
`encompass “initiating” return/recovery information.
`
`EX-2040, ¶ 65
`
`1189 POR, 27; Sur-Reply, 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`
`
`The 332 Also Supports Starting the Download Process
`
`To initiate some action is to start the process … I mean, programs can fail,
`programs can have errors, they could fail midway and then report something.
`Maybe some of the work happened but not all of it.
`
`EX-2048, 101:2-102:14.
`
`In computer operations, “initiate” is well understood as causing an action or process to
`begin and a POSITA reading this disclosure would understand that the Challenged
`Claims can “initiate,” or begin, the process of changing return/recovery information
`through remote communication. … If, for example, the “download of changes” does not
`successfully reach completion and the changes are not made or made at a later time, the
`owner of the device would still be “initiating” return/recovery information “through remote
`communication” without “changing” such information.
`
`EX-2040, ¶ ¶ 60-61.
`
`1189 POR, 25; Sur-Reply, 5-6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`Dr. Zadok’s Article Supports this Interpretation
`
`EX-2049; 1189 Sur-Reply, 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`
`
`Changing and Initiating Are Related
`
`“Changing in some ways is very much linked to initiating.”
`
`EX-2040, ¶ 61.
`
`Groupon points to the term “link” in different claims (claims 25 and 27) and contends
`that the doctrine of claim differentiation requires that “token” and “tag” must have a
`different definition. … We recognize that, under our decision, the use of “link” in these
`claims would express the same concept as the use of “tag” and “token” in the
`challenged claims. But, as discussed above, the context in which “tag” and “token” are
`used demonstrates that the inventor intended these terms to refer to the same concept
`as “link” in claims 25 and 27: an executable link. As in Innova/Pure Water, Inc. v. Safari
`Water Filtration Systems, Inc., “this is simply a case where the patentee used different
`words to express similar concepts even though it may be confusing drafting practice.”
`381 F.3d 1111, 1120 (Fed.Cir.2004).
`
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1347 (Fed. Cir. 2016)
`
`1189 POR, 25; Sur-Reply, 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`Secondary Considerations
`(All IPRs)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`The Retriever Product
`
`122 Patent, 4:60-67, 14:4-8, Fig. 2
`
`POR, 56; Sur-Reply, 24-25.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Praise in the Media – AP Article
`
`EX-2042; POR, 56; Sur-Reply, 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`
`
`Praise in the Media – Newspaper Article
`
`EX-2043; POR, 56; Sur-Reply, 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
`
`Winner of the 2011 Vator Pitch Presentation
`
`EX-2044; POR, 56; Sur-Reply, 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Thousands of Happy Customers
`
`EX-2045; POR, 56; Sur-Reply, 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`The Retriever Was Well Ahead of the Curve
`
`EX-2046; EX-2047; POR, 56; Sur-Reply, 26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`Claim Construction
`(1188, 1190, 1192)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`
`
`Four Terms
`
`1. Return/Recovery Display Terms
`
`2. Printed Matter Doctrine
`
`3. Return/Recovery Information
`
`4. Owner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Return/Recovery Display Terms
`
`Pet., 9; POR, 10; Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`
`
`Various Issues with this Proposed Construction
`
`▪ Contradicts the
`screensaver embodiment
`
`▪ Some owners may
`choose not to display this
`information
`
`▪ How long “after”
`would satisfy the
`construction?
`
`122 Patent, 16:46-55
`
`POR, 11-16; Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Printed Matter Doctrine
`
`Pet., 12; POR, 16; Sur-Reply, 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`The Return/Recovery Information Performs a Function
`
`122 Claim 1; POR, 18-19; Sur-Reply, 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`The Term is Entitled to Patentable Weight Under Gulack and Miller
`
`In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)
`
`Application of Miller, 418 F.2d 1392 (C.C.P.A. 1969)
`
`POR, 17-20; Sur-Reply, 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`Return/Recovery Information
`
`POR, 21; Sur-Reply, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`
`
`Owner
`
`122 Patent, 11:53-56
`
`POR, 21; Sur-Reply, 3-4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`
`
`Ground 1: Jenne + Cohen
`(1188, 1190, 1192)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`Four Issues in Ground 1
`
`1. Owner or Party Authorized by the Owner
`
`2. Changing Return Information and Cohen/Jenne’s Objectives
`
`3. Without Assistance
`
`4. Access to the Interactive Program
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`
`
`Petitioner Fails to Specify Where This Element is Met
`
`POR, 26-28; Sur-Reply, 5-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Petitioner Does Not Apply the Agreed-Upon Construction
`
`EX-2035; POR, 26-28; Sur-Reply, 5-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`Neither Jenne Nor Cohen Meets this Limitation
`
`“This allows the owner to eliminate erroneous
`or misleading ‘assigned to’ recovery
`information might have been created by the
`rogue “assigned to” individual”
`
`122 Patent, 13:54-60, Fig. 10
`
`POR, 26-28; Sur-Reply, 5-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`EX-2048, 64:23-65:11, 68:21-69:10.
`
`
`
`Jenne’s Objective: Entertain and Earn Revenue
`
`POR, 28-32; Sur-Reply, 8-12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`
`
`Cohen’s Objective: Keep Ownership Indicia Constant
`
`POR, 28-32; Sur-Reply, 8-12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`EX-1006, Fig. 3, 4:20-26, 5:43-58
`
`
`
`Jenne Depends On User Assistance
`
`EX-1005, ¶ 27
`
`POR, 32-40; Sur-Reply, 12-17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`The Premium User Has Access to the Commercial Message Application
`
`EX-1005, ¶ 24
`
`POR, 40-43; Sur-Reply, 17-18.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`Ground 2: Angelo + Helle
`(1188, 1190, 1192)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`
`
`Three Issues in Ground 2
`
`1. The Combination Does Not Meet Petitioner’s Construction
`
`2. Remotely Initiate Without Assistance
`
`3. Motivation to Combine
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`
`
`Neither Angelo Nor Helle Displays Information During or After Every Boot-Up
`
`EX-1007, ¶ 21
`
`EX-1008, 3:16-24
`
`POR, 43-50; Sur-Reply, 18-20.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`Remotely Initiate Without Assistance
`
`Helle’s Phone Lock Mode
`
`Angelo’s Lock Command
`
`EX-1008, 3:5-9
`
`Helle’s Phone Lost Mode
`
`EX-1007, ¶ 23
`
`EX-1008, 4:15-21
`
`POR, 50-53; Sur-Reply, 20-22.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`Angelo’s Message is Pre-Defined and Already Stored on the Device
`
`EX-1007, ¶ 23
`
`POR, 50-53; Sur-Reply, 20-22.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`Zadok Initial Decl., ¶ 425
`
`
`
`Lack of Motivation to Combine Angelo and Helle
`
`EX-1007, ¶ ¶ 9, 11
`
`EX-1008, 3:5-9
`
`POR, 53-55; Sur-Reply, 22-24.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`56
`
`
`
`Conclusion
`
`❖ Ground 1 (Jenne and Cohen) fails to meet the challenged claims
`and a POSITA would not have been motivated to combine the two
`references
`
`❖ Ground 2 (Angelo and Helle) fails to meet the challenged claims
`and a POSITA would not have been motivated to combine the two
`references
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`
`
`Thank you for your time and
`consideration.
`
`58
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e) and with the agreement
`
`of counsel for Petitioner, true and correct copies of PATENT OWNER’S
`
`DEMONSTRATIVES FOR ORAL ARGUMENT are being served electronically
`
`on October 26, 2023, to the persons below:
`
`smith@smithbaluch.com
`Matthew A. Smith
`baluch@smithbaluch.com
`Andrew S. Baluch
`Kirstin L. Stoll-DeBell kirstin.stolldebell@faegredrinker.com
`Carrie A. Beyer
`
`carrie.beyer@faegredrinker.com
`
`
`
`Dated: October 26, 2023
`
`By:
`
`
`
` /Jason Linger/
`
`
`
`
`
`
`
`
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
