The U.S. Court of Appeals for the Federal Circuit on Friday handed a major legal victory to Google and Microsoft, upholding a decision that invalidated three patents related to lost or stolen computer recovery screens.
The appeals court dismissed a portion of patent owner Carolyn W. Hafeman’s appeal and affirmed the rest of a prior ruling by the Patent Trial and Appeal Board (PTAB). The board had previously concluded that all challenged claims within Ms. Hafeman’s patents were unpatentable.
The Roots of the Tech Dispute
Ms. Hafeman is the owner of U.S. Patent Nos. 10,325,122; 10,789,393; and 9,892,287. These interconnected patents describe methods for displaying owner and return information on a computer screen automatically after a device boots up, making the details visible on or before a security lock screen.
The legal battle began in July 2021 when Ms. Hafeman sued LG Electronics in a Texas federal district court, claiming patent infringement. The lawsuit targeted LG phones, tablets, and laptops that came pre-loaded with Google or Microsoft “Find My Device” features.
In response, Google and Microsoft fought back in July 2022 by filing six inter partes review (IPR) petitions with the PTAB, challenging the validity of Ms. Hafeman’s patents.
The Procedural Clash and the “Sotera” Deal
During the patent board proceedings, Ms. Hafeman argued against the review, pointing to the active parallel lawsuit against LG. However, LG entered into a legal agreement known as a “Sotera stipulation.” In that agreement, LG promised that if the patent board moved forward with its reviews, LG would not try to litigate those same patent validity issues in the Texas district court case.
Based on that promise, the board initiated its review in January 2023. Ms. Hafeman later tried to stop the proceedings, arguing that LG had violated the stipulation in the district court case. The board declined to halt its review, stating that any violations were matters for the district court to resolve, not the patent board.
On January 23, 2024, the board issued final written decisions invalidating the patent claims, finding the technology obvious when compared to older, existing technology—specifically earlier patent applications referred to as “Jenne” and “Cohen.”
The Appeals Court Ruling
Ms. Hafeman appealed the board’s findings to the Federal Circuit on three primary grounds, all of which were rejected by the three-judge panel consisting of Circuit Judges Dyk, Hughes, and Stoll.
First, Ms. Hafeman argued that the patent board acted arbitrarily by failing to address LG’s stipulation violation in its final decisions. The appeals court dismissed this part of her appeal. Circuit Judge Hughes, writing for the court, noted that federal law makes the board’s initial decision to institute a review final and non-appealable. Because her argument was fundamentally an indirect attack on the decision to start the review in the first place, the court ruled it was barred from judicial review.
Second, Ms. Hafeman challenged how the board interpreted a key phrase in her patent: “without assistance by a user.” She argued her invention meant a user could provide no help at all beyond turning on the power, meaning the prior technology did not overlap because it required a user to log in and establish an internet connection.
The appeals court disagreed, ruling that “without assistance by a user” only applies to the specific action of initiating or changing the displayed return information, not the unmentioned step of setting up an internet connection. The court noted that Ms. Hafeman’s own patent specification compared the technology to anti-virus software updates that happen automatically whenever a user goes online.
Finally, the court rejected Ms. Hafeman’s arguments that her commercial product, “The Retriever,” showed industry praise, commercial success, and copying by competitors sufficient to prove her ideas were non-obvious. The court found that much of the industry praise centered on an unpatented talking alarm feature rather than the patented recovery screen technology itself, and that she failed to legally link her website traffic or commercial claims to the specific merits of the invention.
The court assessed all legal costs of the appeal against Ms. Hafeman.
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