Independent Inventor Seeks New Trial for LG’s Alleged Violations of Sotera Stipulation

On September 25, independent inventor Carolyn Hafeman filed a reply brief arguing that efforts by consumer tech giant LG Electronics to prejudice Hafeman’s legal claims in front of a Western Texas jury require the court to grant a new patent infringement trial in the case. Among other things, Hafeman contends that LG’s invalidity arguments at trial violated LG’s own Sotera stipulation filed in inter partes review (IPR) proceedings brought by LG suppliers Google and Microsoft to challenge the validity of Hafeman’s patent claims asserted against LG.

LG Cannot Disguise Printed Publication Disclosures as ‘System Art’

In an email dated November 2022, LG provided a stipulation pursuant to the Patent Trial and Appeal Board’s (PTAB) precedential decision in Sotera Wireless v. Masimo (2020) for a series of IPRs filed by Google and Microsoft to challenge Hafeman’s patents. Such a stipulation helps a petitioner avoid a discretionary denial under 35 U.S.C. § 314(a) when challenging the validity of patents that have been asserted in parallel infringement litigation filed in U.S. district court. LG, named a real party-in-interest in the Google and Microsoft IPRs, stipulated that it would refrain from asserting validity challenges in Hafeman’s Western Texas case that Google or Microsoft either raised or reasonably could have raised in its petitions for IPRs instituted by the PTAB.

In her motion for a new trial filed this July, Hafeman argued that LG violated its Sotera stipulation in two ways. LG’s invalidity contentions at district court relied upon BlackBerry and Windows 2000 computer systems, which arguably met claim limitations directed to maintaining recovery information on a computer display and initiating the information display without user assistance. While LG identified the BlackBerry and Windows 2000 references as “system art,” Hafeman’s motion noted that LG’s contentions relied almost exclusively on disclosures from printed publications that reasonably could have been raised by the petitions filed in Google and Microsoft’s IPRs. Particularly in the case of BlackBerry’s system, LG did not proffer an operable system as evidence and only relied on expert testimony cumulative of printed publications, including users manuals, administration guides and press releases.

The second way that LG allegedly violated its Sotera stipulation according to the brief was by advancing invalidity arguments based on European Patent No. 0687968 (“Cohen”), a patent reference that was raised as prior art in the Google and Microsoft IPRs against Hafeman’s patents. In the Western Texas litigation, LG asserted an obviousness argument relying upon Cohen in combination with the Windows 2000 system. Arguing estoppel, Hafeman cited to the District of Massachusetts’ ruling this April in Singular Computing v. Google, in which the district court ruled on IPR estoppel in the context of 35 U.S.C. § 315(e)(2)’s provisions on estoppel in civil actions. The district court in that case applied estoppel to printed publications that Google reasonably could have raised in IPR despite offering those publications in combination with system art that could not have been asserted as prior art in the IPR. Hafeman contends that reasoning should control here, preventing LG from relying on Cohen in combination with Windows 2000.

Prejudice Increased by Motion in Limine Violation, Exclusion of Witness Bias

In a brief in opposition filed September 7, LG countered that it did not rely on printed material in making its invalidity arguments to district court, that instead critical limitations were disclosed by expert testimony and video evidence. However, Hafeman’s recent reply brief pointed to LG’s own invalidity contentions to establish that this evidentiary support was disclosed in documents not only readily available from public sources but relied upon by counsel for Google, Microsoft and LG. Because those publications disclose the claim limitations at issue in LG’s invalidity arguments, Hafeman argues that LG should be precluded under Singular Computing from relying on evidence merely cumulative of those publications.

LG’s Sotera stipulation already impacted the defendant’s legal arguments at the summary judgment phase of Hafeman’s Western Texas suit. This April, U.S. District Judge Alan Albright denied summary judgment on invalidity to LG after finding that a different pair of system art references were materially identical to references raised in the Google and Microsoft IPRs identified by LG’s Sotera stipulation. Along with the Sotera violations, Hafeman’s reply brief argues that prejudice stemming both from the violation of a motion in limine against settlement offer evidence by LG’s damages expert, as well as the court’s decision to exclude evidence of bias by LG’s fact witnesses who were employed by either Google or Microsoft, also warrant a new trial.

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