Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`CAROLYN W. HAFEMAN,
`
`
`Plaintiff,
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`v.
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`LG ELECTRONICS INC.,
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`
`Defendant.
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`
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`Case No.: 6:21-cv-00696-ADA-DTG
`JURY TRIAL DEMANDED
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`
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`
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`
`
`
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`PLAINTIFF CAROLYN W. HAFEMAN’S OPPOSITION
`TO 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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`1
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`HAFEMAN EXHIBIT 2038
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 2 of 19
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
`FACTUAL BACKGROUND ..............................................................................................1
`LEGAL STANDARDS .......................................................................................................4
`A.
`Binding Sotera Stipulations .....................................................................................4
`B. Written Description ..................................................................................................5
`LG IS BARRED FROM RAISING THE SAME PRIORITY AND WRITTEN
`DESCRIPTION GROUND THAT IS BEING MADE IN THE IPRS. ...............................6
`LG’S WRITTEN DESCRIPTION GROUND FAILS ON THE MERITS. ........................9
`CONCLUSION ..................................................................................................................13
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`I.
`II.
`III.
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`IV.
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`V.
`VI.
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`i
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 3 of 19
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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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`Anascape, Ltd. v. Nintendo of Am. Inc.,
`601 F.3d 1333 (Fed. Cir. 2010)........................................................................................... 5
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010)........................................................................................... 5
`Bos. Sci. Corp. v. Cook Grp. Inc.,
`2023 WL 1452172, at *34 (S.D. Ind. Jan. 31, 2023) .......................................................... 5
`Bradford Co. v. Conteyor N. Am., Inc.,
`603 F.3d 1262 (Fed. Cir. 2010)........................................................................................... 5
`Centrak, Inc. v. Sonitor Techs., Inc.,
`915 F.3d 1360 (Fed. Cir. 2019)........................................................................................... 5
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
`635 F.3d 1373 (Fed. Cir. 2011)........................................................................................... 6
`Golden Bridge Tech., Inc. v. Apple Inc.,
`758 F.3d 1362 (Fed. Cir. 2014)........................................................................................... 4
`Harper Eng’g Co. v. FACC Operations GmbH,
`No. 1:20-CV-00510-KD-C, 2022 WL 356735, at *4 (S.D. Ala. Jan. 18, 2022) ................ 4
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011)......................................................................................... 10
`InVue Security Products Inc. v. Vanguard Products Group, Inc.,
`2020 WL 2425721, *2 (M.D. Fla. 2020) ........................................................................ 4, 6
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997)........................................................................................... 5
`Medline Indus., Inc. v. C.R. Bard, Inc.,
`2020 WL 5512132, at *5 (N.D. Ill. Sept. 14, 2020) ........................................................... 5
`PowerOasis v. T-Mobile,
` 522 F.3d 1299 (Fed. Cir. 2008).......................................................................................... 6
`Pozen Inc. v. Par Pharm., Inc.,
`696 F.3d 1151 (Fed. Cir. 2012)..................................................................................... 5, 12
`Samsung Elecs. Co., Ltd. v. Acorn Semi, LLC,
`No. IPR2020-01205, 2022 WL 131221, at *6 (P.T.A.B. Jan. 12, 2022) ............................ 5
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 4 of 19
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`Schumer v. Lab'y Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002)........................................................................................... 6
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020‐01019, Paper 12 (PTAB Dec. 1, 2020)................................................................ 6
`Stanford Univ. v. Visible Genetics, Inc.,
`2002 WL 31119949 (N.D. Cal. Sept. 18, 2002) ............................................................... 10
`TurboCare Div. of DeMag Delaval Turbomachinerary Corp. v. General Elec. Co.,
`264 F.3d 1111 (Fed. Cir. 2001)........................................................................................... 6
`United States v. McKinney,
`758 F.2d 1036 (5th Cir. 1985) ........................................................................................ 4, 6
`Videoshare, LLC v. Meta Platforms Inc.,
`No. 6-21-CV-00254-ADA, 2022 WL 3142622, at *3 (W.D. Tex. Aug. 5, 2022).............. 4
`Wasica Fin. GmbH v. Schrader Int'l, Inc.,
`432 F. Supp. 3d 448 (D. Del. 2020) ................................................................................ 5, 9
`Wi-LAN Inc. v. LG Elecs., Inc.,
`421 F. Supp. 3d 911 (S.D. Cal. 2019) ............................................................................. 5, 7
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`Statutes
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`35 U.S.C. § 102 ........................................................................................................................... 1, 4
`35 U.S.C. § 103 ............................................................................................................................... 4
`35 U.S.C. § 112 ........................................................................................................................... 4, 5
`35 U.S.C. § 311(a) .......................................................................................................................... 4
`35 U.S.C. § 315(e) .......................................................................................................................... 6
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`Treatises
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`Wright & Miller, 21 Fed. Prac. & Proc. Evid. § 5039.5 (2d ed.) .................................................... 4
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 5 of 19
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`I.
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`INTRODUCTION
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`Plaintiff Carolyn W. Hafeman (“Ms. Hafeman”) respectfully submits this opposition to
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`Defendant LG Electronics Inc.’s (“LG”) “motion for summary judgment of November 22, 2013
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`effective filing date and resulting invalidity under 35 U.S.C. § 102.” ECF No. 94 (the “Motion”).
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`LG’s Motion should be denied for two reasons. First, LG’s Motion violates its stipulation not to
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`raise any invalidity ground being made or that could be made in the co-pending IPRs. The Motion
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`raises the same priority and written description ground being made in the IPRs. Second, LG fails
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`to prove by clear and convincing evidence that the Asserted Patents are not entitled to claim
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`priority to an application filed on September 20, 2004 (Application No. 10/945,332). There is
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`ample written description support for the remote initiating limitation that LG contends is missing.
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`II.
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`FACTUAL BACKGROUND
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`The Asserted Patents claim priority through a series of continuations to an application filed
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`by Ms. Hafeman on September 20, 2004 (Application No. 10/945,332 (the “’332 Application”),
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`which became the U.S. Patent No. 8,601,606 (the “’606 patent”)). The ’332’s specification, as
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`filed on September 20, 2004, is identical to the specifications of the Asserted Patents, except for
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`the claim language. There is no dispute on this. See Motion, 4 (“[A]ll share the same disclosure.”).
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`On July 31, 2006, during prosecution of the ’332 Application, Ms. Hafeman amended the
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`claims—which recited “changing recovery information … through remote communication”—to
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`read “initiating and changing recovery information … through remote communication.” Ex. 1, 4.
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`Ms. Hafeman stated that “support for … the amendment to the claims is found on page 31, line 2
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`regarding the owner ‘initiating’ limitation.” Id., 12. The passage cited by Ms. Hafeman states:
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`“The program design feature allows the owner to … initiate a download of changes to the protected
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`equipment, control the entire recovery screen displayed, and even override the ‘assigned to’
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 6 of 19
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`person’s input.” Ex. 2, 37 (31:1-5). The examiner entered the amendment. Ex. 3, 2-11. Thus, the
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`examiner necessarily found that there was support for the “initiating … recovery information”
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`limitation. Id. Seven years later, after back-and-forth with the examiner on other issues, Ms.
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`Hafeman was awarded her first patent, the ’606 patent, on December 3, 2013.
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`On July 8, 2022, Google LLC and Microsoft Corporation filed six IPR petitions at the
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`PTAB, two petitions against each of the Asserted Patents. See, e.g., Ex. 4. Each petition identifies
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`the Defendant in this litigation, LG Electronics Inc., as a real party-in-interest. Id., 81. The PTAB
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`“rare[ly]” allows two petitions against the same patent. PTAB Trial Practice Guide, 59. However,
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`there is an exception when “there is a dispute about priority date requiring arguments under
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`multiple prior art references.” Id. Google and Microsoft filed a notice contending that the filing of
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`two petitions was “justifie[d]” because of a “priority dispute between the parties.” Ex. 10, 2.
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`Google and Microsoft are mounting a full assault on the priority date of the Asserted
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`Patents. They contend that Ms. Hafeman is not entitled to claim priority to September 20, 2004
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`because the ’332 allegedly lacked written description support for the limitation “initiating …
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`through remote communication.” See, e.g., Ex. 4, 15. Thus, they claim that the priority date is
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`November 22, 2013 (the filing date of a different patent in the family, U.S. Patent No. 9,021,610)
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`and present prior art based upon that date. Id., 22-23.1
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`Google and Microsoft have been working in close coordination with LG. Even the PTAB
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`noted that “Google and Microsoft are standing in LG’s shoes.” Ex. 8, 7. Indeed, they are
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`represented by the same attorneys in both IPR and Court. Ex. 4, 82.
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`1 The alleged prior art is Ms. Hafeman’s own applications, U.S. Patent Pub. No. 2004/0103298
`(“Hafeman ’298”) and U.S. Patent Pub. No. 2005/0071670 (“Hafeman ’670”), along with one
`other reference. Id., 3. Hafeman ’298 is the published form of Application No. 10/304,827, filed
`on November 25, 2002, but later abandoned. Hafeman ’670 is the published form of the ’332
`Application, the same reference that they claim anticipates the claims.
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`2
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`In early November 2022, Ms. Hafeman filed her IPR preliminary responses. She argued,
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`among other things, that institution should be denied under the PTAB’s Fintiv precedent because
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`there had been significant investment in Court, there was a high degree of overlap in issues, and
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`the petitions did not show a reasonable likelihood of success. Ex. 5, 21-35. She also argued that
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`no party had entered a Sotera stipulation. Id., 25-26. In a Sotera stipulation, a party stipulates not
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`to pursue in Court the same grounds or any grounds that could have been raised in the IPR.
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`On November 30, 2022, LG sent Ms. Hafeman a Sotera stipulation stating that LG “will
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`not pursue in [this litigation] ‘any ground that Google or Microsoft raised or reasonably could have
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`raised’ during the instituted IPRs.” Ex. 9, 1. LG’s stipulation was submitted to the PTAB. Id. LG
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`then served its invalidity report of Dr. Chatterjee on December 14, 2022. His report was a sign that
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`the stipulation would not be followed. His report advanced the IPR grounds, including the same
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`priority/written description ground. Ex. 6, 322, 326-33, 397. Ms. Hafeman’s validity expert, Dr.
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`Schaefer, submitted a rebuttal report addressing these grounds on January 20, 2023, forcing Ms.
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`Hafeman to spend additional effort defending the IPR grounds. Ex. 7, 37-79, 127-35.
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`On January 31, 2023, the PTAB granted institution in all six IPRs. The PTAB concluded
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`that LG’s Sotera stipulation “mitigates concerns of potentially conflicting decisions and
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`duplicative efforts between the district court and the PTAB.” Ex. 8, 7. The PTAB also found that
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`two petitions against each Asserted Patent was “justified” “due to the priority date issue.” Id., 8.
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`On February 6, 2023, LG filed the instant Motion. Directly contradicting its Sotera
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`stipulation, LG’s Motion raises the same priority ground being raised in the IPRs. Like Google
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`and Microsoft, LG contends that the Asserted Patents cannot claim priority to the ’332 based on
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`an alleged lack of written description for the remote initiating limitation, using the same
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`arguments. See Motion, 5-12. The Motion unabashedly states that the Court should reach the
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`“same conclusion” the PTAB reached in its institution decisions. Id., 1.
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`III. LEGAL STANDARDS
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`A.
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`Binding Sotera Stipulations
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`“The Supreme Court, like most courts, has long recognized the binding effect of
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`evidentiary stipulations ….” Wright & Miller, 21 Fed. Prac. & Proc. Evid. § 5039.5 (2d ed.).
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`Stipulations are binding when a party agrees not to pursue certain evidence or arguments. See
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`United States v. McKinney, 758 F.2d 1036, 1046 (5th Cir. 1985) (“[A]greements … to forego the
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`presentation of otherwise admissible evidence are enforceable.”).
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`In patent litigation involving parallel IPRs, a defendant may enter a stipulation that it “will
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`not pursue the specific grounds raised or any grounds that reasonably could have been raised so
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`that there will be no overlap of invalidity issues.” Videoshare, LLC v. Meta Platforms Inc., No. 6-
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`21-CV-00254-ADA, 2022 WL 3142622, at *3 (W.D. Tex. Aug. 5, 2022). Known as Sotera
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`stipulations, these “ensure[] that an IPR is a ‘true alternative’ to adjudicating the validity issues in
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`the parallel district court proceeding” (Harper Eng’g Co. v. FACC Operations GmbH, 2022 WL
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`356735, at *4 (S.D. Ala. Jan. 18, 2022), report and rec. adopted, 2022 WL 385486 (S.D. Ala. Feb.
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`8, 2022)) and “allow[] the PTAB to review grounds that the parallel district court litigation will
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`not resolve” (USPTO Memorandum, June 21, 2022). Parties are barred from relying on grounds
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`that contradict their stipulations. See InVue Security Products Inc. v. Vanguard Products Group,
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`Inc., 2020 WL 2425721, *2 (M.D. Fla. 2020).
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`Although § 311(a) limits the scope of IPR to challenges based on “section 102 or 103,”
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`priority and written description grounds under § 112 often work their way into IPR proceedings.
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`See, e.g., Samsung Elecs. Co., Ltd. v. Acorn Semi, LLC, No. IPR2020-01205, 2022 WL 131221,
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`at *6 (P.T.A.B. Jan. 12, 2022). For that reason, courts have found that priority date and anticipation
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`are grounds that can be raised in IPR. Wi-LAN Inc. v. LG Elecs., Inc., 421 F. Supp. 3d 911, 928-
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`29 (S.D. Cal. 2019) (“[A]nticipation under § 102 based on an intervening prior reference and a
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`challenged priority date is a ground that can be raised in an IPR petition.”). Courts reject efforts
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`“to disguise a ground that could have been raised during the IPR as one that could not have been
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`raised,” particularly where the grounds have “materially identical” disclosures. See, e.g., Medline
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`Indus., Inc. v. C.R. Bard, Inc., 2020 WL 5512132, at *5 (N.D. Ill. Sept. 14, 2020); Wasica Fin.
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`GmbH v. Schrader Int'l, Inc., 432 F. Supp. 3d 448, 454–55 (D. Del. 2020); Bos. Sci. Corp. v. Cook
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`Grp. Inc., 2023 WL 1452172, at *34 (S.D. Ind. Jan. 31, 2023).
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`B. Written Description
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`“To obtain the benefit of the filing date of a parent application, the claims of the later-filed
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`application must be supported by the written description in the parent.” Anascape, Ltd. v. Nintendo
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`of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010). Under 35 U.S.C. § 112, the “specification shall
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`contain a written description of the invention.” To satisfy § 112, “the description must ‘clearly
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`allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’”
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`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the
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`test “‘is whether the disclosure of the application relied upon reasonably conveys to those skilled
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`in the art that the inventor had possession of the claimed subject matter as of the filing date.’”
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`Centrak, Inc. v. Sonitor Techs., Inc., 915 F.3d 1360, 1365 (Fed. Cir. 2019).
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`Determining whether a priority application contains sufficient disclosure to comply with
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`the written description requirement is a question of fact. Ariad Pharm., 598 F.3d at 1351. The
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`terms used in the claims need not be identical to those used in the specification. See Pozen Inc. v.
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`Par Pharm., Inc., 696 F.3d 1151, 1167 (Fed. Cir. 2012) (disclosure “does not have to provide in
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`haec verba support for the claimed subject matter”). A defendant challenging priority must
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`establish, by clear and convincing evidence, that a prior art reference anticipates the claims.
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`PowerOasis v. T-Mobile, 522 F.3d 1299, 1305 (Fed. Cir. 2008). “The burden of proving invalidity
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`on summary judgment is high.” Schumer v. Lab'y Computer Sys., Inc., 308 F.3d 1304, 1316 (Fed.
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`Cir. 2002). Summary judgment should be denied if any factual dispute exists about written
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`description. TurboCare Div. of DeMag Delaval Corp. v. GE, 264 F.3d 1111, 1118 (Fed. Cir. 2001).
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`In case of a conflict between the experts, summary judgment should be denied. Crown Packaging
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`Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384 (Fed. Cir. 2011).
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`IV.
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`LG IS BARRED FROM RAISING THE SAME PRIORITY AND WRITTEN
`DESCRIPTION GROUND THAT IS BEING MADE IN THE IPRS.
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`On November 30, 2022, LG sent Ms. Hafeman the following stipulation:
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`In accordance with … Sotera [], LG Electronics Inc. agrees that if any of [the six
`IPRs] is instituted, LG Electronics Inc. will not pursue in the related district court
`proceeding “any ground that [Google or Microsoft] raised or reasonably could
`have raised” during the instituted IPRs. 35 U.S.C. § 315(e).
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`Ex. 9, 1. LG’s stipulation was submitted to the PTAB, and the PTAB relied on LG’s stipulation in
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`granting institution. The PTAB concluded that the stipulation “mitigates concerns of potentially
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`conflicting decisions and duplicative efforts between the district court and the PTAB.” Ex. 8, 7.
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`LG’s stipulation is enforceable. See McKinney, 758 F.2d at 1046 (“[A]greements … to
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`forego the presentation of otherwise admissible evidence are enforceable.”). LG’s stipulation
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`means “there will be no overlap of invalidity issues.” Videoshare, LLC, 2022 WL 3142622, at *3.
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`There is, however, near complete overlap between the Motion and the IPRs, and LG is barred from
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`raising this invalidity issue. See InVue, 2020 WL 2425721, *2 (striking invalidity ground that
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`violated an IPR stipulation). If LG is permitted to raise this ground here, the risk of “conflicting
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`decisions and duplicative efforts between the district court and the PTAB” is certain. Ex. 8, 7.
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`Just like Google and Microsoft, LG contends that the Asserted Patents cannot claim the
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 11 of 19
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`September 20, 2004 priority date based on an alleged lack of written description for the remote
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`initiating limitation in the ’332. LG advances the same arguments made in the IPRs:
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`Exemplary Arguments in the Motion
`“All disclosures in the 2004 App. relating to
`‘initiating’ return/recovery information refer to
`local initiating at the device (i.e., computer 12)
`and none of them relate to the claimed remote
`initiating (i.e., through remote communication
`from a remote station).” (Motion, 6)
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`“[T]he sentence relied on by Plaintiff to
`support the amendment … relates to changing
`information, not initiating the display of
`information.” (Motion, 8)
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`“In other words, causing means 22 on the local
`computer 12 is the component that locally
`“initiates” the display of the return/recovery
`information. [] However, unlike the changing
`means (shown in blue) that Plaintiff added as
`New Matter to both the local computer 12 and
`the remote station in the 2004 App., she did not
`add the “causing means 22” (shown in yellow)
`to the remote station, but opted to leave it
`shown only on the local computer 12.”
`(Motion, 9)
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`That LG’s Motion (at 10) adds a paragraph to address Ms. Hafeman’s IPR preliminary
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`Exemplary Arguments in the IPRs
`the extent
`that
`the
`’606 patent
`“To
`specification
`discusses
`‘initiating
`return/recovery information,’ it teaches that
`such initiating is performed locally at the
`device (i.e., computer 12) and not remotely
`(i.e., remote station):” (Ex. 4, 16)
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`“The line mentioned by Patent Owner to
`support
`adding
`the
`remote
`initiating
`amendment to the claims (as quoted above)
`describes only changing information, namely
`initiating a ‘download of changes.’” (Ex. 4, 18)
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`“In other words, causing means 22 on local
`computer 12 is the component that “initiates”
`display of the return/recovery information. []
`However, unlike the changing means (red), the
`“causing means 22” (green) is located only on
`the local computer 12, not the remote station as
`shown in Figure 1 below.” (Ex. 4, 21)
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`responses does not cure its blatant disregard for its own Sotera stipulation. To allow otherwise
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`would reward LG for its deception and give it an unfair “second bite at the apple” that defeats the
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`judicial conservation purpose of the AIA. This is not the first time that LG has tried to raise IPR
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`arguments in court. In Wi-LAN Inc. v. LG Elecs., Inc., 421 F. Supp. 3d 911, 928–29 (S.D. Cal.
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`2019), the court barred LG from raising priority and anticipation grounds when it had made an
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`obviousness challenge in IPR. The court explained: “anticipation … and a challenged priority date
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`is a ground that can be raised in an IPR petition.” Id.
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 12 of 19
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`Here, LG’s challenge is even more brazen: Google and Microsoft expressly claimed that
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`its filing of two petitions against each Asserted Patent was “justifie[d]” because of the priority
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`dispute. Ex. 10, 2. And they prevailed, with the PTAB concluding that “two petitions are justified
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`here due to the priority date issue.” Ex. 8, 8. Thus, without this dispute, there would not have been
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`a second IPR against each Asserted Patent. The priority dispute is thus a “ground” for purposes of
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`the stipulation. See Black’s Law Dictionary 819 (10th ed. 2014) (defining “ground” as the “reason
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`or point that something (as a legal claim or argument) relies on for validity.”).
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`Nor does LG deny the overlap, arguing that this Court should reach the “same conclusion”
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`that the PTAB made. Motion, 1. Indeed, the PTAB analyzes the same issues raised by the Motion.
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`See Ex. 8, 11 (“Petitioner contends that the earliest date for which written description support for
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`both alternatives can be found is November 22, 2013 … The sole dispositive dispute between the
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`parties is whether the ’332 application (Hafeman 670) provides written description support for the
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`‘initiating’ alternative. … On this record, we preliminarily determine that the ’332 application does
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`not provide written description support for the “initiating or changing” limitation in the ’122 patent
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`claims. … Petitioner’s argument is that initiating a display of return information did not refer to a
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`remote operation in the original specification of the ’332 application.”).
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`LG’s allegedly “new” references—Ms. Hafeman’s Retriever product and Find My
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`iPhone—does not cure the overlap either. LG points out that Ms. Hafeman has admitted that these
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`two products practice her inventions and were available prior to 2013. Motion, 1-2, 5. Thus, LG
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`offers only a cursory discussion of these “new” references, id., 12-13, and instead, spends nearly
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`all of its brief making the priority and written description argument. The PTAB provided no
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`substantive evaluation of the references either, finding (not surprisingly) that Ms. Hafeman does
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`not dispute that the Asserted Claims are disclosed in Hafeman ’670. Ex. 8, 18-19. Estoppel still
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 13 of 19
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`applies when the allegedly new references have “materially identical” disclosures as the IPR art.
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`Wasica Fin. GmbH v. Schrader Int’l, Inc., 432 F. Supp. 3d 448, 454–55 (D. Del. 2020) (applying
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`IPR estoppel where prior art publication in IPR and prior art product in court contained “materially
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`identical” teachings). Since the IPRs are relying on Ms. Hafeman’s patents, and Ms. Hafeman has
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`admitted that the Retriever and Find My iPhone practice her patents, there is “no substantive
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`difference” between these alleged references. Bos. Sci. Corp., 2023 WL 1452172, at *34 (applying
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`IPR estoppel to references that could not be raised in IPR because there was “no substantive
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`difference” between the references).
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`In sum, LG’s Motion asks this Court to review the same invalidity ground that Ms.
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`Hafeman is defending against in IPR. Ms. Hafeman should not have to defend against it twice—
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`just as LG stipulated. The Court should not allow LG to raise this ground or enter an order
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`enjoining the PTAB from addressing the issue in the IPRs.
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`V.
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`LG’S WRITTEN DESCRIPTION GROUND FAILS ON THE MERITS.
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`Should this Court address the issue on the merits, LG’s argument rests on a nonsensical
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`reading of a limitation in the Asserted Claims (which neither party asked to construe) and the ’332
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`Application. The Asserted Claims recite “initiating or changing [return/recovery] information …
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`through remote communication.” LG concedes that there is support for “changing … through
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`remote communication.” Motion, 6. But LG contends that there is a lack of support for “initiating
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`… through remote communication.” Id. This sounds contradictory because it is. LG’s argument is
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`based on an assumption that remotely “initiating” can never be a part of remotely “changing”
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`return/recovery information, and that the ’332 “teaches only local initiating or remote changing,
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`but does not disclose remote initiating.” Id. Nonsense. Ms. Hafeman was in possession of her entire
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`invention, regardless of how LG tries to split this limitation. The ’332 provides full support for
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`remotely “initiating,” whether as the beginning of a remote change or providing new
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`9
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`HAFEMAN EXHIBIT 2038
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 14 of 19
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`return/recovery information. See Decl. of Dr. Scott Schaefer (“Schaefer Decl.”), ¶¶ 14-23.
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`The ’332 Application and the file history leave no doubt. The ’332 states that the invention
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`“allows the owner to … initiate a download of changes to the protected equipment.” Ex. 2, 37
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`(31:2-5). “Initiate” is the same term that appears in the claims. When Ms. Hafeman amended the
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`original claims—which recited “changing recovery information”—to read “initiating and
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`changing recovery information,” she stated: “support for … the amendment to the claims is found
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`on page 31, line 2 regarding the owner ‘initiating’ limitation.” Ex. 1, 4, 10. The examiner entered
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`the amendment. Ex. 3, 2-10. Thus, the examiner found that the original specification supports
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`“initiating … recovery information.” Id.
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`The examiner’s finding was correct.2 As Dr. Schaefer explains, “‘initiate’ “is well
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`understood as causing an action or process to begin [and] a POSITA reading this disclosure would
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`understand that the Asserted Claims can ‘initiate,’ or begin, the process of changing
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`return/recovery information through remote communication” even if “the changes are not made.”
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`Schaefer Decl., ¶ 16. “[C]hanging in some ways is very much linked to initiating.” Id. Other
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`disclosures provide additional support. The ’332 states that the owner can “control the entire
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`recovery screen displayed” and “even override the ‘assigned to’ person’s input.” Ex. 2, 37 (31:9-
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`23). The owner may “have the recovery center attempt to communicate those changes to the stolen
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`equipment via phone line (or cable, wi-fi, Bluetooth, satellite etc.)”—which are expressly
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`2 Schaefer Decl., ¶ 15; Ex. 13, 73:8-15. Citing In re NTP, Inc., 654 F.3d 1268, 1278-79 (Fed. Cir.
`2011), LG argues that the examiner’s finding should be ignored. Motion, 11. NTP arose from a
`BPAI decision. This is a summary judgment motion in which LG must show that “every
`reasonable juror would have to find that [LG] has shown by clear and convincing evidence” that
`the Asserted Patents lack support. Stanford Univ. v. Visible Genetics, Inc., 2002 WL 31119949, at
`*7 (N.D. Cal. Sept. 18, 2002) (emphasis in original). At summary judgment, it is appropriate to
`give deference to the examiner’s priority determination. Id. (“In light of the Examiner’s conclusion
`that priority is appropriate, … the Court cannot conclude that Visible Genetics has met its heavy
`burden.”).
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`10
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`Case 6:21-cv-00696-ADA-DTG Document 136 Filed 03/06/23 Page 15 of 19
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`described as examples of the invention’s “remote communication ability.” Id. Moreover, the owner
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`can “access” the device in “additional ways,” such as over the Internet, and that this allows the
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`owner to “control the recovery information displayed by remote.” Id., 38 (32:3-7) (“[T]he owner
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`can also attempt to access the assigned to person’s equipment by additional ways, such as over the
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`internet, phone lines, cable, etc. thereby having a more effective ability to … control the recovery
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`information displayed by remote”). To do any of these operations, the original specification makes
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`clear that an “owner” must remotely “initiate” a “download” to begin the process. Id., 37 (31:2-5).
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`“[A] POSITA would understand that ‘control[ling] the entire recovery screen’ by ‘remote’
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`encompasses … remotely initiating return or recovery information.” Schaefer Decl., ¶ 17(b).3
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`Moreover, the ’332 makes clear that the owner can “interactively enter, change, and update
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`[return/recovery information] at anytime.” Ex. 2, 19 (13:1-2); 15 (15:4) (stating that return or
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`recovery information would be “interactively inputted by the owner”). The ’332 further states that
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`the owner may “replace the display 18 screen with correct owner recovery information” from
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`“remote.” Ex. 2, 37 (31:11-16). “This remote communication ability makes the [invention]
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`completely unique and very different from [earlier art].” Id., 37 (31:21-23). These disclosures,
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`including the “interactively enter” teachings, “encompass[] … remotely initiating return or
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`recovery information.” Schaefer Decl., ¶¶ 17-18, Ex. 13, 54:10-14, 69:6-10.4
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`3 LG’s expert, Dr. Chatterjee, never explains how or why a POSITA would understand that Ms.
`Hafeman possessed only remotely “changing,” but not remotely “initiating.” Dr. Chatterjee offers
`lawyer-like, narrow interpretations of the disclosure and arguments that neither party raised at
`Markman. Even if Dr. Chatterjee’s arguments were evidence, they only create factual issues that
`must be resolved at trial. Crown Packaging, 635 F.3d at 1384.
`4 LG argues that some of these disclosures should be ignored because they appeared in the earlier
`2002 application. Motion, 9-10. While it is undisputed that the 2002 application did not disclose
`remote communication, as Dr. Schaefer testified, context matters: “the 2004 application is adding
`the remote communications aspect for the changing and initiating. And so the context is not the
`same, even though … the text may be the same in tho