Independent Inventor Renews Sotera Stipulation Abuse Allegations at CAFC
“[Hafeman argued that] The PTAB had to address the alleged violation [Sotera] given LG’s true party-in-interest Status.”
Last Week, independent inventor Carrie Hafeman submitted an opening brief on behalf of the appellant before the U.S. Court of Appeals Federal Circuit (CAFC), seeking reversal of PTAB’s invalidation of her device-location and theft prevention patent claim. Hafeman has also included her most recent challenge against alleged abuses by Big Tech firms who worked together to invalidate Hafeman’s claims. The appellate brief also challenges the PTAB’s claim construction and obviousness analysis in reaching its invalidity determinations.
LG Continues Priority Date Challenge After Filing Sotera Stipulation at PTAB
Hafeman, an inventor who has advocated for action on Section 101 issues, owns patent claims claiming priority to 2004 and covering a system for controlling device access using remote communication capabilities. After Hafeman asserted these patent claims in U.S. district court against LG Electronics in 2021, tech giants Google and Microsoft filed a series of six petitions for inter partes review (IPR) at the PTAB, identifying LG Electronics as a real party-in-interest in the petitions.
Although LG Electronics incorporated invalidity grounds included in Google and Microsoft’s IPR petitions in Hafeman’s district court infringement case as it progressed toward trial, LG filed a Sotera stipulation in November 2002 to prevent the PTAB from dismissing the IPR petitions under Fintiv’s discretionary denial framework for parallel validity challenges at the PTAB and in district court. Hafeman argued that LG’s invalidity experts in district court submitted a report based on grounds from the IPRs after the stipulation had been filed. However, the PTAB instituted IPRs in part relying upon LG’s stipulation. The PTAB entered final written decisions invalidating all claims of Hafeman’s challenged patents in January 2024, three months before the Western District of Texas found that LG violated its Sotera stipulation and was estopped from challenging the priority date of Hafeman’s patent claims in that action.
Appealing the PTAB’s final written decisions, Hafeman argued that the Board abused its discretion by failing to address LG’s alleged violation of its Sotera stipulation in its final written decisions. Hafeman argued that the PTAB’s final written decisions should have acknowledged that the IPRs wouldn’t have been instituted if LG had not agreed to the Sotera stipulation. This stipulation stated that LG would not challenge Hafeman’s priority date in district courts, as Google and Microsoft did in their IPR petitions. LG’s violation was not cured by the district court’s estoppel ruling, Hafeman argued, and the PTAB was required to at least address the alleged violation given LG’s real party-in-interest status.
Brief Alleges Errors in Implicit Claim Construction, Rejection of Secondary Considerations
Aside from the Sotera violation, Hafeman also challenged the PTAB’s implicit construction of the claim limitation “without assistance by a user” in finding this limitation was taught by prior art reference U.S. Patent Application No. 20030122864 (“Jenne”). Hafeman argues that the “without assistance” limitation was added during prosecution of her patent claims to overcome prior art that required users to press a key to change device ownership information. Hafeman adds that the “without assistance” limitation was added during prosecution of her patent claims to overcome prior art that required users to press a key to change device ownership information.
By finding this limitation disclosed by Jenne, Hafeman argues that the PTAB implicitly construed “without assistance” to require that a device user establishes an Internet connection as taught in Jenne. Hafeman claims in her brief that the PTAB misconstrued the distinction between Hafeman’s invention and prior-art communications systems cited in Hafeman’s patent specification, resulting in the conclusion that “without assistance” involves user interaction for establishing a connection. Jenne, a system for displaying advertisements while a user waits, does not teach how to initiate or change ownership information without user input. Hafeman argued this limitation was not met by European Patent No. 687968 (“Cohen”), which discloses user inputs of ownership information on a local device without any remote connection.
Finally, Hafeman said that the PTAB erred by rejecting various secondary considerations alleged by the patent owner to overcome the obviousness challenge raised in the IPR proceedings. Hafeman claimed that there was a clear connection between the asserted Patents and The Retriever Software Product that achieved commercial success. Hafeman noted 34 references to “The Retriever”, in the patent specification, and several patent figures showing The Retriever’s interface. Finding no nexus without explanation in light of patent owner arguments to the contrary is reversible error under Federal Circuit case law including PPC Broadband v. Corning Optical Communications RF (2016).
Although the PTAB found that industry praise targeted the non-patented features of The Retriever, Hafeman argued that this ignored significant praise for the software’s display of device ownership information and custom messages. Hafeman also challenged the PTAB determination of no commercial success in light of records showing $600,000 in software sales, and the Board’s rejection of evidence of copying by Google and Microsoft’s Find My Device programs.
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Author: sharafmaksumov
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Steve Brachmann
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual […see more]
