Google LLC and Microsoft Corp.
`v.
`Carolyn W. Hafeman
`
`IPR2022-01188 & IPR2022-01189 (US Patent 10,325,122)
`IPR2022-01190 & IPR2022-01191 (US Patent 10,789,393)
`IPR2022-01192 & IPR2022-01193 (US Patent 9,892,287)
`
`Petitioners’ Demonstratives for Oral Hearing
`
`1
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`

`

`Summary
`
`• Overview of 6 IPR Proceedings
`• Alleged “Sotera Violation”
`• Priority-Break IPRs (IPR2022-01189, -01191, -01193)
`• Non-Break IPRs (IPR2022-01188, -01190, -01192)
`
`2
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`

`

`Overview of Six IPR Proceedings
`
`IPR No.
`
`Patent No.
`
`IPR2022-01188
`
`10,325,122
`
`IPR2022-01189
`
`10,325,122
`
`IPR2022-01190
`
`10,789,393
`
`IPR2022-01191
`
`10,789,393
`
`IPR2022-01192
`
`9,892,287
`
`IPR2022-01193
`
`9,892,287
`
`Challenged
`Claims
`
`Main Issue
`
`1–7
`
`1–7
`
`1–7
`
`1–7
`
`1–7
`
`1–7
`
`Obviousness (if no break in priority)
`
`Anticipation (if break in priority)
`
`Obviousness (if no break in priority)
`
`Anticipation (if break in priority)
`
`Obviousness (if no break in priority)
`
`Anticipation (if break in priority)
`
`3
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`“Consolidation [of each
`pair of IPRs] will promote
`administrative efficiency
`by allowing the Board to
`address in its Final Written
`Decision only a single
`ground that it determines
`renders the Challenged
`Claims unpatentable.”
`
`IPR2022-01188, Reply, 1.
`
`

`

`Overview of Six IPR Proceedings
`
`’122 Patent
`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 return information before or with
`a lock screen, to facilitate return of the computer and
`which is maintained on or before or with the lock
`screen so the return information is visible to anyone
`viewing the display screen, the lock screen locks the
`display screen and protects the computer;
`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 message to the user.
`
`’393 Patent
`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;
`
`’287 Patent
`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
`initiating or 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 message to the user.
`
`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.
`
`4
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`

`

`Overview of Six IPR Proceedings
`POR for ’393 Patent
`POR for ’122 Patent
`
`POR for ’287 Patent
`
`5
`
`IPR2022-01188, POR i–ii.
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`IPR2022-01190, POR i–ii.
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`IPR2022-01192, POR i–ii.
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`

`

`Overview of Six IPR Proceedings
`
`POR for ’122 Patent
`
`POR for ’393 Patent
`
`POR for ’287 Patent
`
`IPR2022-01189, POR i.
`
`IPR2022-01191, POR i.
`
`IPR2022-01193, POR i.
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`6
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`

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`Alleged “Sotera Violation”
`
`7
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`

`

`District Court Defense Verdict
`
`IPR2022-01189, EX-2036, 3.
`
`IPR2022-01189, EX-2036, 5.
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`IPR2022-01189, EX-2036, 4.
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`IPR2022-01189, EX-2036, 6.
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`

`

`Board Has Already Addressed This Issue
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`IPR2022-01189, EX-3001
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`

`

`District Court Recognized the System Art
`Could Not Have Been Raised in the IPR
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`IPR2022-01189, EX-2039, 1.
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`

`

`Rationales of Sotera Still Met
`
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`IPR2023-01189, ID, 6-7.
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`

`

`Patent Owner’s Argument Improperly Equates
`Priority with an Invalidity “Ground”
`
`Sur-Reply
`
`Petitioner’s analysis fails to account
`that anticipation and priority date is a
`ground that can be raised in IPR and
`leads to estoppel in district court.
`
`IPR2022-01189, Sur-Reply, 2.
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`Black's Law Dictionary defines “ground,” when used as a noun,
`as the “reason or point that something (as a legal claim or
`argument) relies on for validity.” Black's Law Dictionary 819
`(10th ed. 2014). Consistent with this definition, the Federal
`Circuit repeatedly has characterized specific prior art references
`(or combinations thereof) as distinct “grounds” that may be
`asserted in IPR proceedings. . . . For these reasons, the Court
`interprets the term “ground” in the IPR estoppel provision of 35
`U.S.C. § 315(e) to mean a specific prior art reference or
`combination thereof.
`
`2023 WL 112733, at *19.
`
`

`

`Willis Is The Proper Standard
`
`The court in Wasica reasoned that “the Patent Act distinguishes between grounds and evidence” and, therefore,
`IPR estoppel “applies to grounds ... even if the evidence used to support those grounds was not available to be
`used in the IPR.” Id. at 454. But, as the court in Medline Industries, Inc. v. C.R. Bard, Inc. observed, “such an
`interpretation stretches the meaning of the term ‘ground’ in the IPR estoppel provision too far,” because “[i]f
`Congress had wanted to estop an IPR petitioner from pursuing invalidity grounds that relied upon a physical
`product in a particular situation, ... it could have provided language to that effect.” 2020 WL 5512132, at *4.
`Moreover, the court in Wasica did not engage in a close analysis of the statutory text and, for this reason, other
`courts have rejected the holding in Wasica and instead followed the holding in Medline and other decisions “that
`have adhered more closely to the statutory language.” Chemours Co., 2022 WL 2643517, at *2. For these
`reasons, the Court declines to follow the reasoning in Wasica.
`
`2023 WL 112733, at *19..
`
`13
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`

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`Priority-Break IPRs
`(IPR2022-01189, -01191, -01193)
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`14
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`

`

`Summary
`
`• Ground 2: Claims 1–7 are anticipated by Hafeman 670
`• Patent Owner agrees that Challenged Claims are Anticipated if Not
`Entitled to Claimed Priority Date
`• Alleged Written Description for Priority Claim
`
`• Ground 1: Claims 1-7 are obvious over Hafeman 298 and Chiu
`
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`

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`Ground 2: Claims 1–7 are anticipated by Hafeman 670
`
`“The apparatus 10
`preferably includes means
`for changing the return
`information by the
`user through remote
`communication with the
`computer 12.”
`
`16
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`IPR2022-01189, Pet., 71; EX-1011, Fig. 1, ¶93.
`
`

`

`Ground 2: Claims 1–7 are anticipated by Hafeman 670
`
`Institution Decision
`
`the parties agree that Hafeman 670
`discloses sufficient subject matter to
`anticipate the claims of the ’122
`patent.
`
`Sur-Reply
`
`Here, if Petitioner wins on written description, it is
`game over for Patent Owner.
`
`IPR2022-01189, ID, 18.
`
`IPR2022-01,189 Sur-Reply, 9.
`
`17
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`

`

`Overview of
`Patent Family
`
`IPR2022-01189, Pet., 11
`
`IPR2022-01191, Pet., 11
`
`IPR2022-01193, Pet., 11
`
`18
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`

`

`Patent Owner’s Alleged Priority Claim: Legal Standards (1/2)
`
`A claim in a U.S. application is not entitled
`to the benefit of the filing date of an earlier
`filed U.S. application unless the subject
`matter of the claims “is disclosed in the
`manner provided by section 112(a)” in the
`earlier filed applications. 35 U.S.C. §120;
`see, e.g., In re NTP, Inc., 654 F.3d 1268,
`1277 (Fed. Cir. 2011).
`
`19
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`the earlier application must “contain a written description of
`the invention, and of the manner and process of making and
`using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or
`with which it is most nearly connected, to make and use the
`same . . . .” 35 U.S.C. §112(a).
`
`To satisfy the written description requirement, the
`disclosure of the prior application must “convey with
`reasonable clarity to those skilled in the art that, as of the
`filing date sought, [the inventor] was in possession of the
`invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`1563-64 (Fed. Cir. 1991) (emphasis in original)
`
`IPR2022-01189, Pet., 11-12.
`
`

`

`ALL Challenged Claims Require Remote Initiating or Changing
`
`Claim 1 of ’122 Patent
`initiating or changing return information which appears on the
`display through remote communication without assistance by
`a user with the computer, wherein the initiating or 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;
`
`Claim 1 of ’393 Patent
`initiating or changing return information which appears on the
`display through remote communication without assistance by a
`user with the computer, wherein the initiating or 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;
`
`Claim 1 of ’287 Patent
`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;
`
`Claim 4 of ’122 Patent
`the processor initiating or changing the recovery information
`through remote communication without assistance by the user
`with the computer, wherein the changing of the recovery
`information is done through an interactive program stored in
`the memory of the computer and 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 recovery
`information on the display,
`
`Claim 4 of ’393 Patent
`the processor initiating or changing the recovery information
`through remote communication without assistance by the user
`with the computer, wherein the initiating or changing of the
`recovery information is done through an interactive program
`stored in the memory of the computer and 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 recovery information on the display.
`
`Claim 4 of ’287 Patent
`the processor initiating or changing the return information
`through remote communication without assistance by the user
`with the computer, wherein the changing of the return
`information is done through an interactive program stored in
`the memory of the computer and 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 recovery
`information on the display.
`
`Claim 7 of ’122 Patent
`initiating or changing the recovery information through remote
`communication without assistance by the user with the
`computer, wherein the initiating or changing of the recovery
`information is done through an interactive program stored in
`the memory of the computer and 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 recovery
`information.
`
`Claim 7 of ’393 Patent
`initiating or changing the recovery information through remote
`communication without assistance by the user with the
`computer, wherein the initiating or changing of the recovery
`information is done through an interactive program stored in
`the memory of the computer and 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 recovery
`information.
`
`Claim 7 of ’287 Patent
`initiating or changing the recovery information through remote
`communication without assistance by the user with the
`computer, wherein the initiating or changing of the recovery
`information is done through an interactive program stored in
`the memory of the computer and 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 recovery
`information.
`
`20
`
`IPR2022-01189, Ex. 1001
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`IPR2022-01191, Ex. 1001
`
`IPR2022-01193, Ex. 1001
`
`

`

`Patent Owner’s Alleged Priority Claim: Legal Standards (2/2)
`
`Patent Owner Sur-Reply
`
`Petitioner fails to meet its burden to show a lack
`of written description support for the remote
`initiating limitation.
`
`IPR2022-01189, Sur-Reply, 4.
`
`Petition
`
`Patent Owner bears the burden of providing
`evidence to prove entitlement to claim priority
`to an earlier filing date after Petitioner presents
`prima facie case of unpatentability
`
`IPR2022-01189, Pet., 13.
`
`PowerOasis has conceded that unless the asserted
`claims are accorded an earlier filing date than the 2000
`CIP Application, the MobileStar Network is § 102(b) prior
`art. Once T-Mobile established by clear and convincing
`evidence that the MobileStar Network was § 102(b) prior
`art to the asserted claims of the ’658 and ’400 patents,
`the burden was on PowerOasis to come forward with
`evidence to the contrary. The district court therefore
`correctly placed the burden on PowerOasis to come
`forward with evidence to prove entitlement to claim
`priority to an earlier filing date.
`
`21
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305-06 (Fed. Cir. 2008).
`
`

`

`Patent Owner Admits the ’827 App. Does Not Contain Written
`Description of Remotely Initiating or Changing Limitations
`
`Petition
`“Installation of the program is simple. The owner
`would load an installation CD into the computer 12
`equipment or download the program from the internet.
`During the installation process, the owner will be
`prompted to provide some recovery/return
`information that the owner would like displayed;
`for example, contact name, phone and email
`information. The installation process will create the
`recovery/return display 18 screen . . . .” (EX-1012,
`App., 19:13-19 (first entering of recover/return
`information).)
`
`IPR2022-01189, Pet. 16-17
`
`Patent Owner Response
`Hafeman 298 does not disclose anything relating to
`“initiating or changing return information which
`appears on the display through remote
`communication without assistance by a user with the
`computer”—as is required by all challenged claims
`IPR2022-01189, POR, 6-7
`
`IPR2022-01189,
`Pet., 11.
`
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`

`

`Patent Owner Relies on the ’332 CIP App. for Priority Claim
`
`IPR2022-01189, Pet., 11.
`
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`IPR2022-01189, EX-1016, Fig. 1
`
`

`

`The ’332 CIP App. Does Not Contain an Adequate Written
`Description of the Remote Initiating Limitation
`Petition
`
`The ’606 patent, as-filed, fails to provide adequate
`written description support within the four corners of
`the specification for at least the following limitation
`included in all of the independent claims of the ’122
`patent: “initiating … [return/recovery] information
`through remote communication” (“remote initiating”
`limitation). (EX-1003, ¶75.)
`
`IPR2022-01189, Pet., 15.
`
`The ’606 patent, as filed, explains that this remote
`download capability “allows the owner to eliminate
`erroneous or misleading ‘assigned to’ recovery
`information that might have been created by the rogue
`“assigned to” individual, replace the display 18 screen
`with correct owner recovery information and even
`change or delete the ‘assigned to’ password to stop
`access to the equipment information.” (EX-1012, App.,
`)
`, 31.)
`24
`
`IPR2022-01189, Pet.. 18.
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`
`The program design feature allows the ‘owner’ to access
`the recovery center administration program, initiate a
`download of changes to the protected equipment, control
`the entire recovery screen displayed, and even override
`the ‘assigned to’ person’s input. (See EX-1012, App., 30:2
`cited by EX-1012, 7/31/2006 Amendment, 10; EX-1003,
`¶77.)
`
`IPR2022-01189, Pet., 16.
`
`all the additional references to return/recovery
`information and “remote communication” in the ’606
`patent specification, as originally filed, relate only to
`“changing” the return/recovery information already stored
`in local memory 16
`
`IPR2022-01189, Pet. ,18.
`
`

`

`ENTIRETY of Patent Owner’s Alleged Support for Remote Initiating
`
`1. “‘[I]nitiate’, or begin
`the process of changing
`return/recovery
`information through
`remote
`communication”
`
`•
`•
`
`All “Support” Cited:
`•
`’332 App. – one portion of
`one sentence (EX-1012, 37)
`Schaefer Decl. (EX-2040 ¶ 61)
`Dr. Zadok’s deposition (EX-
`2048)
`IPR2022-01189, POR, 24-25;
`Sur-Reply, 5-6
`
`2. “Control the recovery
`screen displayed by
`remote”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 38)
`
`(EX-1012, 34)
`
`(EX-1012, 35)
`
`(EX-1012, 21)
`
`Schaefer Decl. (EX-2040 ¶ 62(b))
`
`•
`
`IPR2022-01189, POR, 25-26;
`Sur-Reply, 4
`
`3. “Interactively enter,
`change, and update
`[return/recovery
`information] at any time
`or ‘On the fly’”
`
`4. “Provid[e] new
`return/recovery
`information that did not
`previously exist [on the
`protected computer]”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 19)
`
`(EX-1012, 21)
`
`(EX-1012, 37)
`
`Dr. Zadok’s deposition (EX-2048)
`
`•
`
`IPR2022-01189, POR, 26-27;
`Sur-Reply, 4-5
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 21)
`
`(EX-1012, 49)
`
`Schaefer Decl. (EX-2040 ¶ 65)
`Dr. Zadok’s deposition (EX-2048)
`
`•
`•
`
`IPR2022-01189, POR, 27-28;
`Sur-Reply, 5
`
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`

`

`Argument 1 Fails: “[B]eginning of a remote change” does NOT Support Claim
`Limitation of “remotely initiating” return/recovery information (1/4)
`
`Patent Owner Response
`VI. BOTH GROUNDS SHOULD BE REJECTED
`BECAUSE THE REMOTE INITIATING
`LIMITATION HAS AMPLE WRITTEN
`DESCRIPTION SUPPORT.
`* * *
`As explained below, the ’332 Application provides full
`support for remotely “initiating,” whether as the beginning
`of a remote change or providing new return/recovery
`information that did not previously exist.
`* * *
`The ’332 Application states that the invention “allows the
`owner to … initiate a download of changes to the protected
`equipment.” Ex. 1012, 37 (31:2-5).
`* * *
`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” even if “the changes are not made or made
`at a later time.”
`
`IPR2022-01189, POR, 23-24.
`
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`
`Reply
`The claims require remotely initiating the return/recovery
`information, not changing, downloading changes, or even
`beginning to change the return/recovery information.
`* * *
`The words “initiating” and “changing” must mean different
`things as they are distinct terms connected by the
`disjunctive “or.”
`
`* * *
`In much the same way the Secretary of Education
`attempted to end a program and call this destructive action
`a mere “modification,” id. at 2369-70, Patent Owner seeks
`to create something from nothing and to equate creating
`with merely “changing.” Both actions—creating and
`ending—exceed the plain and ordinary meanings of
`“changing” or “modifying.”
`
`IPR2022-01189, Reply, 7-8.
`
`

`

`Argument 1 Fails: “[B]eginning of a remote change” does NOT Support Claim
`Limitation of “remotely initiating” return/recovery information (2/4)
`
`Sur-Reply
`“Initiating” return/recovery information could also occur if
`the process of changing such information is started, but not
`completed. EX-2040, ¶¶ 60-61. Dr. Zadok agreed with this
`interpretation of “initiating.” EX-2048, 101:22-23 (“[t]o
`initiate some action is to start the process”). In fact, Dr.
`Zadok used very similar terminology in one of his own
`papers. EX-2049, 6 (“user-mode tools can initiate delayed
`conversion of file storage policies”). When presented with
`this paper, he explained that, since a computer process might
`slow operations, fail, or have errors, there could still be
`“initiating” without a completed change. EX-2048, 101:14-
`102:15. An uncompleted change (“initiating” but not
`“changing”) is supported by the ’332 Application. EX-1012,
`37 (31:2-5) (“initiate a download of changes to the protected
`equipment”).
`
`IPR2022-01189, Sur-Reply, 5-6.
`
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`

`

`Argument 1 Fails: “[B]eginning of a remote change” does NOT Support Claim
`Limitation of “remotely initiating” return/recovery information (3/4)
`
`Dr. Zadok
`
`28
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`EX-1048, 21.
`
`EX-1048, 23.
`
`

`

`Argument 1 Fails: “[B]eginning of a remote change” does NOT Meet Claimed
`Limitation of “remotely initiating” return/recovery information (4/4)
`
`. . .
`
`IPR2022-01189, Dr. Zadok’s Rebuttal Deposition
`(EX-2048), 100:3-102:15:
`Sur-Reply, 5-6 citing EX-2048
`
`29
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`ENTIRETY of Patent Owner’s Alleged Support for Remote Initiating
`
`1. “‘[I]nitiate’, or begin
`the process of changing
`return/recovery
`information through
`remote
`communication”
`
`•
`•
`
`All “Support” Cited:
`•
`’332 App. – one portion of
`one sentence (EX-1012, 37)
`Schaefer Decl. (EX-2040 ¶ 61)
`Dr. Zadok’s deposition (EX-
`2048)
`IPR2022-01189, POR, 24-25;
`Sur-Reply, 5-6
`
`2. “Control the recovery
`screen displayed by
`remote”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 38)
`
`(EX-1012, 34)
`
`(EX-1012, 35)
`
`(EX-1012, 21)
`
`Schaefer Decl. (EX-2040 ¶ 62(b))
`
`•
`
`IPR2022-01189, POR, 25-26;
`Sur-Reply, 4
`
`3. “Interactively enter,
`change, and update
`[return/recovery
`information] at any time
`or ‘On the fly’”
`
`4. “Provid[e] new
`return/recovery
`information that did not
`previously exist [on the
`protected computer]”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 19)
`
`(EX-1012, 21)
`
`(EX-1012, 37)
`
`Dr. Zadok’s deposition (EX-2048)
`
`•
`
`IPR2022-01189, POR, 26-27;
`Sur-Reply, 4-5
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 21)
`
`(EX-1012, 49)
`
`Schaefer Decl. (EX-2040 ¶ 65)
`Dr. Zadok’s deposition (EX-2048)
`
`•
`•
`
`IPR2022-01189, POR, 27-28;
`Sur-Reply, 5
`
`30
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 2 Fails: Disclosure of Controlling Recovery Screen Displayed Does Not
`Support Remotely “initiating” Return/Recovery Information (1/5)
`
`Conclusory and Unsupported
`Schaefer Declaration
`
`Patent Owner Response
`The ’332 Application states that the owner can “control the
`entire recovery screen displayed” and “even override the
`‘assigned to’ person’s input.” Ex. 1012, 37 (31:9-23). The
`owner may “have the recovery center attempt to
`communicate those changes to the stolen equipment via
`phone line (or cable, wi-fi, Bluetooth, satellite etc.)” . . .
`Moreover, the owner can “access” the device in “additional
`ways,” such as over the Internet, and that this allows the
`owner to “control the recovery information displayed by
`remote.” Id., 38 (32:3-7) (“[T]he owner can also attempt to
`access the assigned to person’s equipment by additional
`ways, such as over the internet, phone lines, cable, etc.
`thereby having a more effective ability to … control the
`recovery information displayed by remote”). As Dr. Schaefer
`explains, “a POSITA would understand that ‘control[ling] the
`entire recovery screen’ by ‘remote’ encompasses … remotely
`initiating return or recovery information.” Ex. 2040, ¶ 62(b).
`
`IPR2022-01189, POR, 23-24.
`
`IPR2022-01189, EX-2040, ¶62(b); Reply, 9.
`
`31
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 2 Fails: Disclosure of Controlling Recovery Screen Displayed Does Not
`Support Remotely “initiating” Return/Recovery Information (2/5)
`
`Reply
`
`[E]liminating, replacing, changing, or deleting information requires
`that information to already be present on the local computer. These
`actions constitute changing information already being displayed—not
`sending wholly new information from the remote computer in the
`first instance. EX-1048, ¶58.
`
`IPR2022-01189, Reply, 9.
`
`32
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 2 Fails: Disclosure of Controlling Recovery Screen Displayed Does Not
`Support Remotely “initiating” Return/Recovery Information (3/5)
`
`Dr. Zadok - Rebuttal Declaration
`
`57. Third, Dr. Schaefer points to a single phrase in the ’332 Application and asserts that the interactive program
`allows an owner to “control[] the entire recovery screen,” hence this supports the remotely initiating limitation. EX-2040,
`Schaefer Declaration, ¶62(b). I disagree: this phrase does not support the remotely initiating limitation.
`58. When read in context of the entire paragraph from which this phrase comes, the ’332 Application is clearly
`discussing remotely changing, and only remotely changing, information on the protected computer. The paragraph refers to
`“allow[ing] the owner to eliminate erroneous or misleading [return/ information] [and] replace the display 18 screen with
`correct [return/recovery information].” These two statements refer to “changing” as eliminating and replacing information
`that is already being displayed, not sending wholly new information from the remote computer in the first place.
`59. I understand that during the district court litigation, Dr. Schaefer testified in a manner consistent with this plain
`and ordinary meaning. He said that whether remote communication of return/recovery information constitutes “initiating”
`or “changing” will depend on whether there is already return/recovery information on the protected computer. If there is,
`then the remote communication constitutes “changing” and if there is not (a situation that is not contemplated by the ’332
`application as discussed above), then the remote communication constitutes “initiating”: …
`
`IPR2022-01189, EX1048, 26-28.
`
`33
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 2 Fails: Disclosure of Controlling Recovery Screen Displayed Does Not
`Support Remotely “initiating” Return/Recovery Information (4/5)
`
`IPR2022-01189, ’332 App. (EX-1012), 37 (31:1-23):
`POR, 26 and Sur-Reply, 4 citing EX-1012, 37 (31:3-4 and 31:9-23).
`
`IPR2022-01189, ’332 App. (EX-1012), 37-38 (31:24-32-7):
`POR 26, citing EX-1012, 38 (32:3-7).
`
`34
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 2 Fails: Disclosure of Controlling Recovery Screen Displayed Does Not
`Support Remotely “initiating” Return/Recovery Information (5/5)
`
`IPR2022-01189, ’332 App. (EX-1012), 28:12-18:
`Sur-Reply, 4 citing EX-1012, 34 (28:14-15).
`
`IPR2022-01189, ’332 App. (EX-1012), 15:3-14:
`Sur-Reply, 4, EX-1012, 21 (15:5-6).
`
`IPR2022-01189, ’332 App. (EX-1012), 29:4-6:
`Sur-Reply, 4 citing EX-1012, 35 (29:4-5).
`
`IPR2022-01189, POR, 25 citing Dr. Schaefer Declaration (Ex. 2040, ¶61).
`
`35
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`ENTIRETY of Patent Owner’s Alleged Support for Remote Initiating
`
`1. “‘[I]nitiate’, or begin
`the process of changing
`return/recovery
`information through
`remote
`communication”
`
`•
`•
`
`All “Support” Cited:
`•
`’332 App. – one portion of
`one sentence (EX-1012, 37)
`Schaefer Decl. (EX-2040 ¶ 61)
`Dr. Zadok’s deposition (EX-
`2048)
`IPR2022-01189, POR, 24-25;
`Sur-Reply, 5-6
`
`2. “Control the recovery
`screen displayed by
`remote”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 38)
`
`(EX-1012, 34)
`
`(EX-1012, 35)
`
`(EX-1012, 21)
`
`Schaefer Decl. (EX-2040 ¶ 62(b))
`
`•
`
`IPR2022-01189, POR, 25-26;
`Sur-Reply, 4
`
`3. “Interactively enter,
`change, and update
`[return/recovery
`information] at any time
`or ‘On the fly’”
`
`4. “Provid[e] new
`return/recovery
`information that did not
`previously exist [on the
`protected computer]”
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 19)
`
`(EX-1012, 21)
`
`(EX-1012, 37)
`
`Dr. Zadok’s deposition (EX-2048)
`
`•
`
`IPR2022-01189, POR, 26-27;
`Sur-Reply, 4-5
`
`All “Support” Cited:
`•
`’332 App.
`(EX-1012, 37)
`
`(EX-1012, 21)
`
`(EX-1012, 49)
`
`Schaefer Decl. (EX-2040 ¶ 65)
`Dr. Zadok’s deposition (EX-2048)
`
`•
`•
`
`IPR2022-01189, POR, 27-28;
`Sur-Reply, 5
`
`36
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`Argument 3 Fails: Disclosure of “interactively entering” return/recovery
`information does not adequately disclose “remotely” initiating such information
`
`IPR2022-01189, ’332 App. (EX-1012), 12:25-13:2:
`POR, 26 citing EX-1012, 19 (13:1-2).
`
`IPR2022-01189, ’332 App. (EX-1012), 31:11-16
`POR, 26 citing EX-1012, 37 (31:11-16).
`
`IPR2022-01189, Dr. Zadok’s Rebuttal Deposition (EX-2048), 25:22-26:1
`Sur-Reply, 5 citing EX-2048
`
`37
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-01189, ’332 App. (EX-1012), 15:3-6:
`POR, 26 citing EX-1012, 19 [sic] (15:4).
`
`

`

`Argument 3 Fails: Disclosure of Entering, Changing, and Updating Return/Recovery
`Information “at any time” or “on the fly” Does Not Support Remotely Initiating
`
`Sur-Reply
`
`Patent Owner is not relying on “interactively”
`alone…
`
`* * *
`Patent Owner recognizes that the term “interactive,”
`in a broad sense, could occur remotely or locally.
`However, the ’332 Application states “the owner can
`interactively customize the return/recovery
`information displayed at any time” and this ability
`can be used “to aid return of [lost or stolen]
`equipment.” EX-1012, 8 (2:14-16), 19 (13:1-2)
`(“interactively enter, change and update at anytime.
`This ‘on the fly’ ability to change owner recovery
`information to aid return of equipment …).
`
`IPR2022-01189, Sur-Reply, 8.
`
`IPR2022-01189, EX-1016.
`
`38
`
`
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`

`

`ENTIRETY of Patent Owner’s Alleged Support for Remote Initiating
`
`1. “‘[I]nitiate’, or begin
`the process of changing
`return/recovery
`information through
`remote
`communication”
`
`•
`•
`
`All “Support” Cited:
`•
`’332 App. – one portion of
`one sentence (EX-1012, 37)
`Schaefer Decl. (EX-2040 ¶ 61)
`Dr. Zadok’s deposition (EX-
`2048)
`IPR2022-01189, POR, 24-25;
`Sur-Reply, 5-6
`
`2. “Control the recovery
`screen displ