Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CAROLYN W. HAFEMAN, an Individual
`
`Plaintiff,
`
`CIVIL ACTION NO.:
`6:21-cv-00696-ADA-DTG
`
`v.
`
`LG ELECTRONICS INC.,
`
`DEMAND FOR JURY TRIAL
`
`Defendant.
`
`MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. §101
`
`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 2 of 21
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION..............................................................................................................1
`
`THE CLAIMS OF THE ASSERTED PATENTS ARE NOT PATENT ELIGIBLE ..2
`
`A.
`
`B.
`
`Legal Standard .......................................................................................................2
`
`Description of the Asserted Patents ......................................................................2
`
`1.
`
`2.
`
`Overview of the Specifications of the Asserted Patents ..........................2
`
`Overview of the Asserted Claims..............................................................5
`
`C.
`
`ARGUMENT ..........................................................................................................6
`
`1.
`
`Step One: The Asserted Claims Are Directed to an Abstract Idea .......6
`
`b.
`
`a.
`
`The Asserted Claims Are Not Directed Towards a Technological
`Problem Unique to Computers ...................................................... 7
`The Asserted Claims Are Not Directed Towards an Improvement
`in Computer Functionality ............................................................ 9
`Step Two: The Asserted Claims Do Not Recite an Inventive
`Concept .....................................................................................................10
`
`2.
`
`III.
`
`CONCLUSION ................................................................................................................14
`
`i
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

`

`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 3 of 21
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Affinity Labs of Texas, LLC v. DirectTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)..................................................................................................9
`
`Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ......................................................................................................... passim
`
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)..................................................................................................9
`
`Arunachalam v. Kronos Inc.,
`No. 14-CV-00091-RGA, 2021 WL 1174530 (D. Del. Mar. 29, 2021) .....................................8
`
`BSG Tech LLC v. BuySeasons, Inc.,
`899 F.3d 1281 (Fed. Cir. 2018)............................................................................................8, 13
`
`BuySAFE v. Google, Inc.,
`765 F.3d 1350 (Fed.Cir.2014)..................................................................................................12
`
`Customedia Techs., LLC v. Dish Network Corp.,
`951 F.3d 1359 (Fed. Cir. 2020)......................................................................................9, 10, 11
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)............................................................................................7, 10
`
`Caselas, LLC v. VeriFone, Inc.,
`No. 1:21-CV-3834-VMC, 2022 WL 3971039 (N.D. Ga. Aug. 30, 2022) .................................7
`
`ChargePoint, Inc. v. SemaConnect, Inc.,
`920 F.3d 759 (Fed. Cir. 2019)............................................................................................11, 12
`
`ClearDoc Inc. DBA OpenReel v. ReviersideFM, Inc.,
`21-1422-RGA, 2022 WL 3355960 (D. Del. Aug. 15, 2022) ...................................................12
`
`cxLoyalty, Inc. v. Maritz Holdings Inc.,
`986 F.3d 1367 (Fed. Cir. 2021)..................................................................................................7
`
`Dropbox, Inc. v. Synchronoss Techs., Inc.,
`815 F. App’x 529 (Fed. Cir. 2020) ..........................................................................................12
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016)................................................................................8, 11, 12, 14
`
`ii
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

`

`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 4 of 21
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`Finjan, Inc. v. Blue Coat Sys.,
`879 F.3d 1299 (Fed. Cir. 2018)................................................................................................10
`
`Intell. Ventures I LLC v. Erie Indem. Co.,
`850 F.3d 1315 (Fed. Cir. 2017)............................................................................................1, 13
`
`In re Mohapatra,
`842 F. App’x 635 (Fed. Cir. 2021) .................................................................................. passim
`
`Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314 (Fed. Cir. 2016)................................................................................................11
`
`OIP Tech., Inc. v. Amazon.com,
`788 F.3d 1359 (Fed. Cir. 2015)..................................................................................................8
`
`RecogniCorp, LLC v. Nintendo Co.,
`855 F.3d 1322 (Fed. Cir. 2017)..................................................................................................9
`
`In re Rudy,
`956 F.3d 1379 (Fed. Cir. 2020)..................................................................................................7
`
`Sanderling Mgmt. Ltd. v. Snap Inc.,
`No. CV 21-2324-GW-JCX, 2021 WL 3160867 (C.D. Cal. July 9, 2021) .................................7
`
`SAP America, Inc. v. InvestPic, LLC,
`898 F.3d 1161 (Fed. Cir. 2018)............................................................................................2, 10
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`839 F.3d 1138 (Fed. Cir. 2016)................................................................................................12
`
`In re TLI Commc’ns LLC Patent Litig.,
`823 F.3d 607 (Fed. Cir. 2016)....................................................................................................8
`
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
`874 F.3d 1329 (Fed. Cir. 2017)..........................................................................................10, 11
`
`USC IP P’ship, L.P. v. Facebook, Inc.,
`576 F. Supp. 3d 446 (W.D. Tex. 2021)..........................................................................9, 10, 11
`
`Statutes
`
`35 U.S.C. §101 .........................................................................................................................2, 7, 9
`
`iii
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 5 of 21
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`I.
`
`INTRODUCTION
`
`Plaintiff allegedly conceived of software in the early 2000s to display owner contact
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`information on a computer’s boot-up screen to assist a good samaritan with returning a lost
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`computer to its owner. Plaintiff’s software further allowed for the owner to remotely change the
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`displayed information. Plaintiff filed a patent application claiming this program in 2004, which
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`did not issue until December 2013. In 2013, after large industry leaders entered the market with
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`device location-tracking programs, Plaintiff began filing a series of “continuation”1 applications,
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`stripping out claim limitations including the boot-up screen limitation.2 What remains in the
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`continuation patent claims now asserted in this case is undeniably only the abstract idea of
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`displaying and changing information on a computer screen to assist with returning a computer.
`
`The idea of displaying information to assist with returning a lost item has, of course,
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`existed in the real world long before the 21st Century, such as by applying a label to an item or
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`attaching a tag to luggage. The asserted claims merely apply this idea to a computer display and
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`use the computer’s conventional network capabilities to allow the owner to initiate or change the
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`information through remote access. But “[r]emotely accessing and retrieving user-specified
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`information is an age-old practice that existed well before the advent of computers and the
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`Internet.” Intell. Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1330 (Fed. Cir. 2017). And
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`the Federal Circuit has recently held very similar claims for enabling a credit card holder to
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`remotely change the card’s security code to protect against fraud as being directed towards an
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`abstract idea, despite the claims being narrowly directed to a specific purpose and having real-
`
`1 Defendant reserves the right to challenge whether the patents-in-suit are entitled to priority of
`the patent applications to which the patents-in-suit claim priority.
`2 This motion is primarily based on the preliminary claim constructions, which the Court
`indicated it would adopt at the Markman hearing. Ex. 1 (email with preliminary constructions);
`Ex. 2 (Markman Tr. Excerpt) at 16, 39-40, 52. However, if the Court adopts any proposed
`constructions not preliminarily adopted, the claims are still patent ineligible for the same reasons.
`1
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 6 of 21
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`world benefits. In re Mohapatra, 842 F. App’x 635, 638-40 (Fed. Cir. 2021).
`
`The asserted claims fail step one of the Alice test for patent eligibility under 35 U.S.C.
`
`§101 because they are directed to an abstract idea and recite only desired results, which do not
`
`improve the functioning of a computer. The claims are not saved at step two because they state
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`only open-ended, functional objectives using routine and conventional computing functionality.
`
`Defendant respectfully requests that the Court enter summary judgment that all asserted
`
`claims are not patent eligible under §101.
`
`II.
`
`THE CLAIMS OF THE ASSERTED PATENTS ARE NOT PATENT ELIGIBLE
`
`A.
`
`Legal Standard
`
`A claim is patent ineligible under §101 if it fails both parts of the two-step test set forth in
`
`Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). That is, the claim is not eligible for
`
`patenting if (1) it is directed to a patent-ineligible concept, i.e., a law of nature, natural
`
`phenomenon, or abstract idea, and (2) the claim elements do not add an “inventive concept”
`
`sufficient enough to transform the claim into a patent-eligible application. SAP America, Inc. v.
`
`InvestPic, LLC, 898 F.3d 1161, 1166-67 (Fed. Cir. 2018).
`
`B.
`
`Description of the Asserted Patents
`
`1.
`
`Overview of the Specifications of the Asserted Patents
`
`Plaintiff asserts three patents in this case: U.S. Patent Nos. 9,892,287 (the “’287 patent”)
`
`filed in May 2017 (Ex. 3); 10,325,122 (the “’122 patent”) filed in May 2018 (Ex. 4); and
`
`10,789,393 (the “’393 patent”) filed in April 2019 (Ex. 5), all titled “Computer Recovery or
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`Return” (collectively, the “Asserted Patents”). The ’393 patent is a continuation of the ’122
`
`patent, which is a continuation of the ’287 patent. The specifications of all three patents are
`
`identical. The Asserted Patents claim priority through a series of continuations to U.S. Patent No.
`
`8,601,606, filed in 2004, as a continuation-in-part of an abandoned application filed in 2002.
`
`2
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 7 of 21
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`The Asserted Patents are “related to the return of lost or stolen computers.” Ex. 33 at
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`1:22-23. Prior art methods of computer recovery include “[p]hysical labels that attach to the
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`outside hardware of the computer equipment.” See, e.g., id. at 1:32-33. According to the
`
`specification, the claimed invention “is greatly different from this system, because this is a
`
`software program rather than a hardware solution.” Id. at 1:54-58.4 Other prior art software
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`attempted recovery by regularly contacting a recovery server using the modem. Id. at 1:66-2:22.
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`The specification instead teaches a software program 24 stored in the memory 16 that
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`causes a return screen 20 to appear on the display 18. Id. at 4:54-5:9. The return screen “displays
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`ownership information concerning who owns the computer
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`12 and return information for returning the computer 12 to
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`the owner from data stored in the memory 16.” Id. at 4:54-
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`60.5 A return screen is depicted in Fig, 6 (shown on the
`
`right). This is the focus of the purported invention—the
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`return information (highlighted green) displayed on the
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`screen is what enables a good samaritan to return a lost
`
`computer to its owner. See id. at 6:30-34, 7:11-19.
`
`The specification further teaches that the program 24 causes the return screen to appear
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`“before a security prompt such as a password to be entered to obtain access to the primary
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`operating system of the computer 12.” Id. at 5:10-12. And the program 24 “allows the owner to
`
`change the return information,” both locally and remotely. Id. at 5:13-20.
`
`3 All citations are to the ’287 patent. (Ex. 3).
`4 Unless otherwise indicated, emphasis by bold and italics added.
`5 The specification treats “return information” and “recovery information” interchangeably,
`consistent with the Court’s preliminary, and the parties’ proposed, claim constructions.
`3
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 8 of 21
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`But the specification does not disclose technical details for implementing the software
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`program 24 and provides only a high-level, functional description: (1) “[s]omeone finds a lost or
`
`stolen computer 12” and “turns the computer 12 on;” (2) “[t]he computer 12 display 18 screen
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`turns on,” and the program “automatically initiates during the computer’s 12 boot-up process;”
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`(3) “[a]s the computer 12 booting up process moves the user to a password or security prompt
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`screen,” the program “displays a dialogue box which includes owner recovery and return
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`information,” as shown in Fig. 2; and (4) “[t]he individual who has found the lost or stolen
`
`computer 12, is now able to easily return the equipment to the rightful owner.” Id. at 6:40-7:13.6
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`And the specification makes clear that nothing more than routine and conventional
`
`components are required to implement the program. The only physical components are “a
`
`computer 12 return apparatus 10,” which comprises “a processor 14,” “a memory 16 connected
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`to the processor 14,” and “a display 18,” as illustrated in Fig.1 (shown on the right). Id. at 4:50-
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`54. The program “could in fact, be installed and used by any type of computer 12 that utilized a
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`monitor display screen” (id. at 5:67-6:2), and “[t]he coding language used for the software
`
`program 24 could and would vary depending upon the
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`computer equipment, but the core structure of how the
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`program operates would be similar in all items.” Id. at 6:4-
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`8. The remote access for changes is also provided through
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`generic, well-known communication techniques, such as
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`6 The specification repeatedly emphasizes the layering of the application as part of the boot-up
`process as a “critical” feature of “the present invention.” Id. at Abstract, 1:22-26, 1:58-65
`(distinguishing “the present invention” from hardware labels because of “the positioning of the
`program layer in the equipment boot-up process.”), 2:27-31, 2:43-47, 2:54-58; 3:26-31, 3:35-40,
`3:62-37:5, 3:44-48, 3:53-58, 4:6-10, 5:20-45, 10:64-11:4, 11:23-28. However, the asserted claims
`do not expressly recite a “boot-up” limitation as discussed below.
`4
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 9 of 21
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`“via phone line” or “cable, wi-fi, bluetooth, satellite.” Id. at 14:11-15. The Asserted Patents make
`
`clear that “[t]he program is essentially a recovery/return information screen that is displayed, and
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`does not duplicate or replace more sophisticated access security programs already on the
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`system.” Id. at 8:49-52.
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`2.
`
`Overview of the Asserted Claims
`
`Plaintiff asserts independent claims 1, 4, and 7 of each Asserted Patent (collectively, the
`
`“Asserted Claims”). Representative claim 1 of the ’287 patent recites:
`
`1. A method for displaying information to assist with returning a computer
`comprising the steps of:
`activating a processor to display on a display screen on the computer which
`displays information concerning return information for returning the computer to
`an owner from data stored in a memory of the computer, the screen displaying
`recovery information, to facilitate return of the computer so the return information
`is visible to anyone viewing the display screen;
`initiating or changing return information which appears on the display
`through remote communication without assistance by a user with the computer,
`wherein the changing of the return information is done through an interactive
`program stored in the memory of the computer which is remotely accessed only by
`the owner of the computer or the party authorized by the owner to enable the
`initiating or changing of the display screen;
`displaying the screen before or with a security prompt which prevents the
`user from accessing operatively the computer; and
`activating the processor to allow a warning message to the user.
`
`Id. at 17:13-34.
`
`Independent claim 4 of the ’287 patent is similar in scope, but instead claims “[a]n
`
`apparatus for displaying information at a computer” instead of a method. The apparatus
`
`comprises “a computer” which comprises “a memory,” “a display,” and “a processor in
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`communication with the display and the memory.” The processor performs the displaying
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`recovery information and initiating or changing steps of claim 1.7 Independent claim 7 of each
`
`7 Notably, while their specification repeatedly mentions that the return/recovery software
`program of the present invention “automatically initiates during the computer’s boot-up process”
`5
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 10 of 21
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`Asserted Patent describes the same basic technique as claims 1 and 4, but in the form of “[a]
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`computer program stored in a non-transient memory.”8
`
`Asserted Claims 1, 4, and 7 of the ’121 and ’393 patents largely mirror claims 1, 4, and 7
`
`of the ’287 patent, except that (1) instances of “return information” are replaced with “recovery
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`information”; (2) claims 1 of the ’121 and ’393 patents replace “a warning message” with “a
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`message”; (3) claims 1, 4, and 7 of the ’121 patent and claim 7 of the ’393 patent require the
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`display of the return/recovery information to be “before or with” a lock screen; (4) claims 7 of
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`the ’121 and ’393 patent replace “additional information” with “recovery information”; and (5)
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`claims 1 and 4 of the ’393 patent adds “initiating or” to the “wherein the changing of the
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`[return/recovery information]” limitation.
`
`C.
`
`ARGUMENT
`
`1.
`
`Step One: The Asserted Claims Are Directed to an Abstract Idea
`
`The Asserted Claims fail step one of Alice because each is directed towards an abstract
`
`idea of displaying and changing information on a computer screen to assist with returning a
`
`computer.9 This is similar to the claims in Mohapatra, which enabled a credit card holder to
`
`remotely change the card’s security code to protect against fraud. The Federal Circuit found
`
`and causes a return screen 20 to appear on a display 18 of the computer 12 “during or after boot-
`up of the computer 12,” the return screen being displayed during the boot-up process of the
`computer is not an express part of the Asserted Claims. Compare Ex. 3 at 1:23-26, 3:38-40, 3:46-
`48, 4:53-57 with Ex. 3 at 17:13-34, 17:45-18:17, 18:29-48. Indeed, Plaintiff contended during
`claim construction that the return/recovery information does not need to be displayed during
`every boot-up, and the Court preliminarily adopted plaintiff’s construction of “plain and ordinary
`meaning.” See Dkt. No. 55 at 2-4; Ex. 2 (Markman Tr. Excerpt) at 26:3-9, 39:10-16. Defendant
`reserves the right to challenge this construction on appeal.
`8 The Court’s preliminary claim construction found the term “the additional information” in
`claim 7 of the ’287 Patent indefinite. If the claim is ultimately construed to avoid indefiniteness,
`it is invalid as abstract for the same reasons as the other Asserted Claims.
`9 This mirrors Plaintiff’s prior characterization of her claims. See Ex. 6 at 7 (Jan. 24, 2019
`Response to Office Action, Application 15/864,749 File Wrapper) (“1/24/19 Response”) (“The
`claimed invention is directed to displaying information to assist with returning a computer.”).
`6
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 11 of 21
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`those claims to be directed towards the abstract idea “for an individual to alter the identification
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`code associated with a financial instrument, such as a credit card, to protect against fraud.” In re
`
`Mohapatra, 842 F. App’x at 638-40. Like the Mohapatra claims, the Asserted Claims are not
`
`directed towards a technological problem unique to computers or towards an improvement in
`
`computer functionality. See id. Rather, they are directed towards an abstract idea using
`
`conventional computer components to perform longstanding and well-known functions.
`
`a. The Asserted Claims Are Not Directed Towards a Technological
`Problem Unique to Computers
`
`The Asserted Claims are directed towards a longstanding, real-world problem relating to
`
`the return of lost items, and not a computer-network-specific problem. C.f. DDR Holdings, LLC
`
`v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). During prosecution of the ’122 patent,
`
`Plaintiff told the USPTO that her invention solved a real-world problem for computers because
`
`prior art contact info labels could be covered over or removed and could not be updated without
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`physical possession of the computer.10 1/24/19 Response at 6-8 (Ex. 6). But this is a problem
`
`with all physical labels and is not specific to computers. These are long-standing problems (e.g.,
`
`being covered up or removeable or not updateable) for both non-computer objects (e.g.,
`
`suitcases) as well as computers. The Plaintiff also told the USPTO that “the data for the return
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`10 Plaintiff traversed a §101 rejection during prosecution of the ’122 patent. 1/24/19 Response
`(Ex. 6). However, the Federal Circuit has repeatedly noted that the courts are not bound by the
`Patent Office guidelines. See, e.g., In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020) (“We are
`not, however, bound by the Office Guidance, which cannot modify or supplant the Supreme
`Court’s law regarding patent eligibility, or our interpretation and application thereof. . . . To the
`extent the Office Guidance contradicts or does not fully accord with our caselaw, it is our
`caselaw, and the Supreme Court precedent it is based upon, that must control.”); see also
`cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1375 n.1 (Fed. Cir. 2021) (same);
`Sanderling Mgmt. Ltd. v. Snap Inc., No. CV 21-2324-GW-JCX, 2021 WL 3160867, at *6 (C.D.
`Cal. July 9, 2021) (invalidating patents under §101 despite USPTO's opposite finding); Caselas,
`LLC v. VeriFone, Inc., No. 1:21-CV-3834-VMC, 2022 WL 3971039, at *8 (N.D. Ga. Aug. 30,
`2022) (same). The USPTO was wrong to allow the claims, and subsequent Federal Circuit cases
`confirm this conclusion. See, e.g., Mohapatra, 842 F. App’x at 638-40.
`7
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`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
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`

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`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 12 of 21
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`information is now the tag or label that is part of the structure of the computer, and is a real-
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`world three-dimensional object that is an integral part of the computer.” Id. at 7. But the return
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`information is not an essential structure of the computer, and in fact, is not used in the claims
`
`other than being stored and displayed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
`
`1353-54 (Fed. Cir. 2016) (information collected, analyzed, and displayed is intangible, and the
`
`processes abstract); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)
`
`(collecting and storing data in memory is abstract).
`
`Like the claims from Mohapatra, the real-world benefits that arise from being tied to a
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`particular technology (e.g., network-connected computers) do not render the Asserted Claims
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`any less abstract. Mohapatra, 842 F. App’x at 638 (“The idea of changeable personal-
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`identification numbers may be beneficial. But it is also abstract and therefore not patentable
`
`without more.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018)
`
`(benefits that “flow from performing an abstract idea in conjunction with a well-known database
`
`structure” did not transform an abstract idea into patent-eligible matter). Displaying and
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`changing information on a computer screen to assist with returning a computer to its owner are
`
`similarly not transformed into patent-eligible matter merely because they are confined to a
`
`particular technological environment using conventional components to effectuate a real-world
`
`benefit.11 See Mohapatra, 842 F. App’x at 638 (“The fact that the claims are directed to a
`
`11 Plaintiff has argued that “even if [her claims are] found to be reciting a judicial exception,
`[they are not] directed towards that exception because it is a practical application.” 1/24/19
`Response at 11-12. But post-Alice, neither the Supreme Court nor the Federal Circuit have
`adopted the “practical application” test from the USPTO guidelines. See Arunachalam v. Kronos
`Inc., No. 14-CV-00091-RGA, 2021 WL 1174530, at *3 (D. Del. Mar. 29, 2021) (“Computer
`implemented schemes for the practical application of ideas such as risk hedging, intermediated
`settlement, using advertising as an exchange or currency, data collection, and generating tasks in
`an insurance organization have all been held to be patent ineligible despite having a practical
`application.”) (citing OIP Tech., Inc. v. Amazon.com, 788 F.3d 1359, 1362 (Fed. Cir. 2015)).
`8
`
`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

`

`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 13 of 21
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`specific subset of that abstract idea–in this case, enabling a credit card user to change the security
`
`code on the card by using a web application–does not render the idea any less abstract.”).
`
`b. The Asserted Claims Are Not Directed Towards an Improvement in
`Computer Functionality
`
`The Asserted Claims also are not directed towards a patent-eligible improvement in
`
`computer functionality. C.f. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359,
`
`1365 (Fed. Cir. 2020). In assessing patent eligibility of claims that purportedly claim a solution
`
`to a real-world problem, the relevant inquiry is “whether the claims are directed to a specific
`
`means or method for improving the technology or whether they are simply directed to an abstract
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`end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (internal
`
`quotation marks and citation omitted); see USC IP P’ship, L.P. v. Facebook, Inc., 576 F. Supp.
`
`3d 446, 455 (W.D. Tex. 2021) (finding abstract claims directed to longstanding problem not
`
`unique to the Internet). Although the Plaintiff argued that the claims “specifically identif[y]
`
`critical limitations . . . to provide a solution to a real-world problem,” they recite only high-level
`
`functional language. 1/24/19 Response at 10; see also ’287 claim 1.
`
`The Federal Circuit has repeatedly held that claims that recite abstract ideas in purely
`
`functional form are patent ineligible. See, e.g., Affinity Labs of Texas, LLC v. DirectTV, LLC, 838
`
`F.3d 1253, 1265 (Fed. Cir. 2016); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir.
`
`2016) (finding claims invalid under §101 because they “[c]laim systems including menus with
`
`particular features. They do not claim a particular way of programming or designing the software
`
`to create menus that have these features, but instead merely claim the resulting systems.”). This
`
`Court has likewise held that claims that “only recite high-level functional language without
`
`explaining how the claimed invention improve the functionality of the computer or the Internet”
`
`“are not ‘directed to an improvement to the functionality of the computer or network platform
`
`9
`
`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

`

`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 14 of 21
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`itself,’” but instead “simply recite ‘mere result[s]’ without reciting specific steps that accomplish
`
`the results.” USC IP, 576 F. Supp. 3d at 455-56 (quoting Customedia Techs., LLC v. Dish
`
`Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020); Finjan, Inc. v. Blue Coat Sys., 879 F.3d
`
`1299, 1305 (Fed. Cir. 2018)).
`
`Likewise here, the Asserted Claims recite only high-level functional results without any
`
`details on how to achieve the results in a non-abstract way. For instance, they recite functions of
`
`“initiating or changing” and “displaying” information without sufficiently describing how to
`
`implement these functions. See Mohapatra, 842 F. App’x at 639 (citing Two-Way Media Ltd. v.
`
`Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)). And like the “internet
`
`connected card account management facility” used to change the security code in the Mohapatra
`
`claims, the Asserted Claims require that “changing” “is done through an interactive program”
`
`“which is remotely accessed,” without “provid[ing] any specificity as to what that [interactive
`
`program] is or how that function will be performed.” See Mohapatra, 842 F. App’x at 639. The
`
`specification similarly offers no explanation for how the claimed functions are carried out or how
`
`they improve the computer. See USC IP, 576 F. Supp. 3d at 456. Thus, the Asserted Claims
`
`squarely fit into “the class of claims that do not focus on an improvement in computers as tools,
`
`but on certain independently abstract ideas that use computers as tools.” SAP Am., Inc. v.
`
`InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (internal quotation marks and citation
`
`omitted); c.f. DDR Holdings, 773 F.3d at 1257. This remains true under both the Court’s
`
`preliminary claim constructions and the parties’ proposed constructions—the claims are directed
`
`to the abstract idea of displaying and changing information on a computer screen to assist with
`
`returning a computer.
`
`2.
`
`Step Two: The Asserted Claims Do Not Recite an Inventive Concept
`
`10
`
`Hafeman, Exhibit 2025
`Google LLC et al. v. Hafeman
`IPR2022-01192
`
`

`

`Case 6:21-cv-00696-ADA-DTG Document 77 Filed 10/21/22 Page 15 of 21
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`The Asserted Claims also fail Alice step two because the Asserted Claims do not recite
`
`any “saving inventive concept” in application of the abstract idea, Two-Way Media, 874 F.3d at
`
`1338, that adds “significantly more” to the abstract idea, Alice, 573 U.S. at 217–18, 221–22.
`
`The Asserted Claims recite nothing more than “generic functional language to achieve
`
`the[] purported solutions.” Two-Way Media, 874 F.3d at 1339. “Nothing in the claims,
`
`understood in light of the specification, requires anything other than off-the-shelf, conventional
`
`computer, network, and display technology for gathering, sending, and presenting the desired
`
`information.” Elec. Power, 830 F.3d at 1355. Beyond the abstract concept of displaying and
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`changing information on a computer screen to assist with returning a computer itself, the
`
`Asserted Claims simply recite abstract information (e.g., recovery/return information, warning
`
`message), but “a claimed invention’s use of the ineligible concept to which it is directed cannot
`
`supply the inventive concept.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 774 (Fed.
`
`Cir. 2019) (internal citation and quotation marks omitted). The Asserted Claims also recite
`
`generic “memory,” “display” and “processor” components that “were well known in the prior art
`
`long before the filing of [the Asserted Patents].”