Carolyn W. Hafeman v. Google LLC, Microsoft Corporation

United States Court of Appeals
for the Federal Circuit
______________________
CAROLYN W. HAFEMAN,
Appellant
v.
GOOGLE LLC, MICROSOFT CORPORATION,
Appellees
JOHN A. SQUIRES, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2024-1600, 2024-1601, 2024-1602, 2024-1603, 2024-1604,
2024-1605
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2022-
01188, IPR2022-01189, IPR2022-01190, IPR2022-01191,
IPR2022-01192, IPR2022-01193.
______________________
Decided: June 5, 2026
______________________
L AWRENCE MILTON H ADLEY , Glaser Weil Fink Howard
Jordan & Shapiro LLP, Los Angeles, CA, argued for appel-
lant. Also represented by J ASON L INGER, STEPHEN
U NDERWOOD.
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HAFEMAN v. GOOGLE LLC 2
ANDREW BALUCH , Smith Baluch LLP, Washington, DC,
argued for appellees. Appellee Google LLC also repre-
sented by ELIZABETH L AUGHTON, MATTHEW A. SMITH .
CARRIE A NNE BEYER , Faegre Drinker Biddle & Reath
LLP, Chicago, IL, for appellee Microsoft Corporation. Also
represented by BRIANNA L YNN SILVERSTEIN, Washington,
DC; K IRSTIN STOLL -D EBELL , Denver, CO.
SHEHLA WYNNE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by N ICHOLAS T HEODORE
MATICH , IV, ROBERT J. MCMANUS , MAUREEN D ONOVAN
Q UELER.
______________________
Before D YK, HUGHES , and STOLL , Circuit Judges.
HUGHES , Circuit Judge.
Carolyn Hafeman appeals from final written decisions
of the Patent Trial and Appeal Board in inter partes re-
views of U.S. Patent Nos. 10,325,122; 10,789,393; and
9,892,287. The Board concluded that all challenged claims
were unpatentable. For the reasons below, we dismiss-in-
part and affirm-in-part.
I
A
Ms. Hafeman owns U.S. Patent Nos. 10,325,122;
10,789,393; and 9,892,287 (collectively, the Challenged Pa-
tents), which are part of the same family and share a com-
mon specification. The ’122 patent, which is representative
for purposes of this appeal, generally relates “to the return
of lost or stolen computers using a recovery screen that ap-
pears during or after boot-up of the computer.” ’122 Patent,
1:25–27. Specifically, it describes methods for “displaying
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HAFEMAN v. GOOGLE LLC 3
information to assist with returning a computer to its
owner,” comprised of “activating a computer” and then au-
tomatically displaying a return screen containing infor-
mation stored in the computer’s memory regarding the
computer’s owner and how the computer may be returned
to the owner. Id. 4:1–10; see also id. 3:30–38, 5:28–31. Fig-
ure 3 is a flow chart capturing an embodiment of the
claimed method:
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HAFEMAN v. GOOGLE LLC 4
Id. fig. 3. This embodiment requires first powering on the
computer, after which the recovery/return information is
automatically displayed either prior to, or alongside, the
login screen. Id. Claim 1 is representative on appeal and
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
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 commu-
nication without assistance by a user with
the computer, wherein the changing of the re-
turn information is done through an interac-
tive program stored in the memory of the
computer which is remotely accessed only by
the owner of the computer or the party author-
ized 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.
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HAFEMAN v. GOOGLE LLC 5
Id. claim 1 (emphasis added). Critical to this appeal is the
claimed step of “initiating or changing return information
which appears on the display through remote communica-
tion without assistance by a user with the computer”
(the “without assistance” limitation). Id. (emphasis added).
B
In July 2021, Ms. Hafeman filed suit against LG Elec-
tronics Inc. in the United States District Court for the
Western District of Texas, alleging infringement of the
three Challenged Patents (the LG Litigation). The accused
infringing products were LG-made phones, tablets, and
laptops that were sold with pre-loaded Google or Microsoft
“Find My Device” features.
In July 2022, Google and Microsoft filed six IPR peti-
tions against the Challenged Patents, naming LG as a real
party in interest. Google and Microsoft filed two IPR peti-
tions against each of the three Challenged Patents: One pe-
tition attacked the priority dates of each of the Challenged
Patents and asserted prior art based on the assumption of
a post-America Invents Act (AIA) priority date. The other
petition assumed the accuracy of the earlier claimed prior-
ity dates and argued the claims of each of the Challenged
Patents were still unpatentable based on pre-AIA prior art.
Ms. Hafeman opposed institution, arguing that pursuant
to the then-Director’s guidance,1 institution should be de-
nied given the existence of a parallel district court proceed-
ing, the LG Litigation, involving the same patents and
1 USPTO Director Vidal, Interim Procedure for Dis-
cretionary Denials in AIA Post-Grant Proceedings with
Parallel District Court Litigation (issued June 21, 2022)
(rescinded Feb. 28, 2025) (Director Guidance), https://
www.uspto.gov/sites/default/files/documents/interim_proc
_discretionary_denials_aia_parallel_district_court_litiga-
tion_memo_20220621_.pdf [https://perma.cc/7CJ5-JRSG].
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HAFEMAN v. GOOGLE LLC 6
presenting overlapping issues. See J.A. 8018–31. She em-
phasized that there had already been significant invest-
ments in the district court litigation, trial was imminent,
and that there was no agreement between the parties to
minimize duplication of efforts between the district court
and Board proceedings, all of which supported denying in-
stitution.
After Ms. Hafeman filed her opposition to Google and
Microsoft’s IPR petitions, LG served her with a so-called
“Sotera stipulation” in the LG Litigation. See J.A. 4375 (cit-
ing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
Paper 12 at 18–19 (P.T.A.B. Dec. 1, 2020)). In it, LG repre-
sented that, if any of the IPRs were to be instituted, LG
would not pursue in the parallel district court proceeding
“any ground that [Google or Microsoft] raised or reasonably
could have raised” in the IPRs. Id. (alteration in original)
(quoting 35 U.S.C. § 315(e)). Google and Microsoft then ar-
gued that LG’s stipulation eliminated efficiency concerns
because LG was named as a real party in interest in the
IPR proceedings and because there was no risk that addi-
tional parties would be added to the district court litigation
who would not be bound by the stipulation because the
deadline for adding parties had passed. Thus, in light of the
Director’s guidance representing that the Board would not
“discretionarily deny institution in view of parallel district
court litigation where a petitioner presents [such] a stipu-
lation,” Google and Microsoft argued that institution was
appropriate. Director Guidance at 3; see J.A. 8066–67.
The Board agreed with petitioners Google and Mi-
crosoft and, in January 2023, instituted review on all
grounds for each of the challenged patents, resulting in six
IPR proceedings. See J.A. 8094, 9020, 9803, 10173, 11015,
11393. Ms. Hafeman belatedly requested rehearing of the
Board’s institution decision, arguing that rehearing was
warranted in light of an intervening precedential Board de-
cision and LG’s purported violation of the Sotera stipula-
tion in the LG Litigation. The Board denied Ms. Hafeman’s
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HAFEMAN v. GOOGLE LLC 7
request, explaining that the intervening Board decision
was inapplicable and any violation of the Sotera stipulation
was an issue for the district court to resolve. See J.A. 7830.
Ms. Hafeman continued to argue that institution was im-
proper, suggesting in her Patent Owner’s Response that be-
cause the district court had since concluded that LG
violated the Sotera stipulation in the LG Litigation, the
“Board should exercise its authority to vacate the institu-
tion decision and terminate the IPR.” J.A. 8176.
C
On January 23, 2024, the Board issued three final writ-
ten decisions, one for each of the Challenged Patents.2 See,
e.g., Google LLC v. Hafeman, Nos. IPR2022-01188,
IPR2022-01189, Paper No. 32, 2024 WL 250494 (P.T.A.B.
Jan. 23, 2024) (Decision). The Board did not revisit
Ms. Hafeman’s continued Sotera- and institution-related
arguments in its decision. See generally id. Regarding the
substantive merits of the petitions, the Board declined to
resolve the priority date dispute, finding that even under
the earliest possible priority date, the Challenged Patents’
claims were nonetheless unpatentable over the combina-
tion of Jenne3 and Cohen,4 the pre-AIA prior art.
2 As noted, Google and Microsoft filed two IPR peti-
tions against each of the three Challenged Patents, result-
ing in six proceedings. The Board ultimately consolidated
the IPR proceedings by patent, resulting in three Final
Written Decisions (FWDs). Like the parties, we generally
cite to and reference the Board’s decision regarding the
’122 patent as representative on appeal. See Appellant
Br. 19 (citing J.A. 1–36); Appellee Br. 18 (generally quoting
from J.A. 1–36).
3 U.S. Pat. Pub. No. 2003/0122864 A1.
4 European Pat. App. No. 687968 A2.
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HAFEMAN v. GOOGLE LLC 8
As relevant here, Jenne discloses a computer system
that displays “commercial messages” during user wait
times, like the computer’s boot up process, that can be “up-
dated” remotely via the internet. J.A. 883. The Board’s pa-
tentability analysis relied on Jenne teaching “changing the
content of information through remote communication
without assistance by a user with the computer,” which,
when combined with prior art not implicated by this ap-
peal, rendered the challenged claims unpatentable. See De-
cision, 2024 WL 250494, at *10, *12 (emphasis added). In
doing so, the Board rejected Ms. Hafeman’s argument that
Jenne failed to teach the “without assistance” limitation
because Jenne requires the user “log in and establish an
Internet connection so that communication can occur.” Id.
at *9. Ms. Hafeman argued that “[n]othing, other than
turning on the computer, is required from the user” by the
Challenged Patents’ claims. J.A. 8186. And thus the user
does not need to establish any internet connection, like
Jenne requires. The Board rejected that argument, con-
cluding that Jenne did teach the “without assistance” lim-
itation because “without assistance by a user” refers to the
action of “initiating or changing” the return information
that is displayed to the user and does not, as Ms. Hafeman
contended, extend to the “unrecited action of establishing
the remote communication in the first instance.” Decision,
2024 WL 250494, at *9. Finally, the Board rejected
Ms. Hafeman’s argument that there were strong secondary
considerations of non-obviousness. Id. at *12–14. The
Board concluded that Ms. Hafeman failed to prove a nexus
between her purported commercial embodiment of the in-
vention—known as the Retriever—and her evidence of
praise, commercial success, and copying by others. Id.
at *12.
Ms. Hafeman timely appeals. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
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HAFEMAN v. GOOGLE LLC 9
II
On appeal, Ms. Hafeman generally argues: (1) that the
Board abused its discretion by failing to address her So-
tera-related arguments in its FWDs; (2) that the Board
wrongly construed “without assistance by a user,” resulting
in an erroneous obviousness finding; and (3) that the Board
improperly disregarded secondary considerations of non-
obviousness. We take each argument in turn.
A
We first consider Ms. Hafeman’s argument that the
Board acted arbitrarily by issuing its FWDs without ad-
dressing her argument that the IPR proceedings should be
terminated given the District Court’s finding that LG vio-
lated the Sotera stipulation. Ms. Hafeman argues that be-
cause the PTAB instituted review based on the
representations made in the Sotera stipulation, LG’s post-
institution violation of that same stipulation warranted
terminating the Board’s review or, at minimum, required
an explanation in the FWD of “whether the violation war-
ranted dismissal.” Appellant Br. 33. Ms. Hafeman asks us
to vacate the Board’s decision and remand with instruc-
tions to the Board to “address the appropriate remedy for
the proven Sotera violation.” Appellant Br. 34.
Google and Microsoft contend that Ms. Hafeman’s ar-
gument amounts to a challenge to the Board’s decision to
institute the IPR proceedings, which is barred from judicial
review under 35 U.S.C. § 314(d). The Acting Director of the
United States Patent and Trademark Office has intervened
in support of this position. See Intervenor Br. 11–12.
Ms. Hafeman disagrees, arguing that she is not chal-
lenging institution; rather, she is “challenging how the IPR
proceeded after institution.” Appellant Reply Br. 2. She
emphasizes that LG violated the Sotera stipulation after
the Board instituted review, and she contends her appeal
challenges the sufficiency of the Board’s FWDs under the
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HAFEMAN v. GOOGLE LLC 10
APA given the Board’s failure to address that violation. See
id. at 2–4; see id. at 3 (“APA challenges of FWDs are re-
viewable.”). On the present record, however, this is a dis-
tinction without meaningful difference.
A party does not automatically bypass § 314(d)’s bar on
judicial review by characterizing its challenge as one to an
agency action other than the decision to institute. See, e.g.,
Ethanol Boosting Sys., LLC v. Ford Motor Co., 162 F.4th
1151, 1158 (Fed. Cir. 2025). By statute, the decision
whether to institute inter partes review is “final and non-
appealable.” 35 U.S.C. § 314(d). And this bar on judicial re-
view extends both to direct challenges to the decision to
institute review and to matters that are “closely tied to the
application and interpretation of statutes related to” the
decision to institute. Cuozzo Speed Techs., LLC v. Lee,
579 U.S. 261, 275 (2016). Whether § 314(d) bars our review
thus requires a close examination of the substance of a
party’s arguments and the relief sought to determine
whether it amounts to a challenge, direct or indirect, to the
decision to institute.
For example, the Supreme Court, considering § 314(d),
held that the statute’s language compels the conclusion
“that a party generally cannot contend on appeal that the
agency should have refused ‘to institute an inter partes re-
view.’” Thryv, Inc. v. Click-To-Call Techs., LP, 590 U.S. 45,
52 (2020). In Thryv, the question was whether a party’s ap-
peal from a final written decision holding that a petition
was not untimely under 35 U.S.C. § 315(b) was barred
from judicial review by § 314(d). Id. at 60. The Supreme
Court concluded that, “even labeled as an appeal from the
final written decision,” the appeal was nonetheless still
barred by § 314(d) because the “contention remain[ed], es-
sentially, that the agency should have refused to institute
inter partes review.” Id. Thus, a challenge to institution-
related determinations, even when part of an otherwise
proper challenge to a final written decision, remains barred
from review by § 314(d). That Ms. Hafeman purports to
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HAFEMAN v. GOOGLE LLC 11
challenge the FWDs does not enable our review when the
heart of her challenge goes to institution.
Our own caselaw reinforces the application of this prin-
ciple to Ms. Hafeman’s present appeal. In Federal Express
Corp. v. Qualcomm Inc., we recently considered a party’s
challenge to a final written decision that was premised on
the decision’s failure to include any analysis of the appel-
lant’s argument that the IPR petition failed to identify all
real parties in interest as required by 35 U.S.C. § 312(a)(2).
See 174 F.4th 910, 914 (Fed. Cir. 2026). The appellant
framed its challenge as “directed to the Board’s conduct
during and after institution” and thus outside the scope of
§ 314(d). Id. at 916. But we rejected that characterization
and nonetheless held the challenge unreviewable under
§ 314(d) because it “still boil[ed] down to a challenge over
whether there should have been institution at all.” Id.
at 917.
Similarly, in Ethanol Boosting Systems, LLC v. Ford
Motor Co., this court considered our ability to review a
challenge to the Board’s decision to defer ruling on a party’s
request for rehearing of an institution decision until after
resolution of a related pending appeal before this court. See
162 F.4th at 1157–58. We rejected the appellant’s charac-
terization of its challenge as an attack on the Board’s pur-
ported “stay” of its institution rehearing decision rather
than a challenge to institution: “And so, despite [Appel-
lant’s] belief that it formally challenges the ‘stay’ rather
than the reconsideration decision, we cannot see its argu-
ment as anything but a challenge to the propriety of the
institution.” Id. at 1158. And we held that “[p]ointing to a
different agency action . . . does not automatically alter the
analysis; § 314(d) applies when a party attempts to dis-
lodge institution.” Id. at 1159.
These cases confirm that Ms. Hafeman’s challenge,
while framed as one aimed at the sufficiency of the Board’s
FWDs, nonetheless remains beyond our review.
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HAFEMAN v. GOOGLE LLC 12
Ms. Hafeman’s reliance on this court’s decisions in
Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir.
2021), and Facebook, Inc. v. Windy City Innovations, LLC,
973 F.3d 1321 (Fed Cir. 2020) is misplaced. She cites these
cases for the proposition that “where an event leading to
IPR termination occurs post-institution, like here, such
challenges may be appealed.” Appellant Reply Br. 4. But
those cases deal with readily distinguishable challenges to
the Board’s estoppel determination and whether the Board
erred in joining already-instituted IPR proceedings. See
Uniloc, 989 F.3d at 1026–27 (“The Board’s ‘no estoppel’ de-
cision thus was later than and separate from its earlier in-
stitution decision, and . . . is a decision we may review.”
(citation omitted)); Facebook, 973 F.3d at 1332 (“In this
case, Windy City’s cross-appeal does not challenge the
Board’s decision to institute Facebook’s follow-on petitions,
but challenges whether the Board’s joinder decisions ex-
ceeded the statutory authority provided by § 315(c).”).
Here, the remedy Ms. Hafeman seeks, and its relation-
ship to institution, eliminates any doubt that § 314(d) bars
our review. Ms. Hafeman argues the Board “should have
terminated the IPRs in light of the Sotera violation, or at
minimum, addressed why the IPRs should proceed in the
FWDs.” Appellant Reply Br. at 9. And she requests that we
vacate the Board’s final written decisions and “remand
with instructions to dismiss” the IPRs. Id. The problem
with Ms. Hafeman’s challenge is that it seeks to terminate
the IPRs for reasons related to the institution decision be-
cause the Sotera stipulation was a consideration for insti-
tution. This makes clear that her challenge “has institution
as its direct, immediate, express subject” and is thus be-
yond our review. IGT v. Zynga Inc., 144 F.4th 1357, 1365
(Fed. Cir. 2025) (cleaned up) (quoting Apple Inc. v. Vidal,
63 F.4th 1, 12 (Fed. Cir. 2023)). This is not a situation
where our review of termination is unrelated to the insti-
tution decision. Cf. Atlanta Gas Light Co. v. Bennett Regul.
Guards, Inc., 33 F.4th 1348, 1353 (Fed. Cir. 2022) (“[W]e
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HAFEMAN v. GOOGLE LLC 13
cannot conclude that the Board’s decision [terminating the
petition] was purely a sanctions decision over which we or-
dinarily would have jurisdiction.”). Accordingly, Ms. Hafe-
man’s challenge is barred from judicial review by § 314(d),
and we must dismiss this portion of her appeal.
B
We next consider Ms. Hafeman’s allegation of error in
the Board’s purported implicit construction of the “without
assistance” limitation. Appellant Br. 35. Ms. Hafeman did
not propose a construction of the “without assistance” lim-
itation to the Board. But, on appeal, she suggests that the
Board nonetheless implicitly construed the limitation
when the Board found that Jenne taught the “without as-
sistance” limitation despite requiring the user first connect
the device to the internet. Google and Microsoft argue that
the Board did not engage in implicit claim construction; ra-
ther, the Board “performed a factual comparison of the pro-
cess in Jenne to the process described in the challenged
patents’ specification and found them to be similar.” Appel-
lee Br. 34 (citing Apple Inc. v. Uniloc 2017 LLC,
843 F. App’x 281, 286 (Fed. Cir. 2021)). Ordinarily this dis-
tinction is critical because it dictates our standard of re-
view. See CRFD Rsch., Inc. v. Matal, 876 F.3d 1330,
1336–37 (Fed. Cir. 2017) (“We review the Board’s factual
findings for substantial evidence and its legal conclusions
de novo.”). But where, like here, the outcome is the same
whether reviewed de novo as an implicit claim construc-
tion, or for substantial evidence as only a factual compari-
son to the prior art, the distinction becomes
inconsequential.
Assuming without deciding that the Board construed
the “without assistance” limitation to not prohibit a user
from connecting the device to the internet, we see no error
in that construction and affirm. On appeal, Ms. Hafeman
suggests that the “without assistance” limitation means
that the “user cannot provide any assistance whatsoever
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HAFEMAN v. GOOGLE LLC 14
(besides turning on power) to receive return and recovery
information, including the establishment of an Internet
connection.” Appellant Br. 35. But that construction con-
flicts with the claim’s plain language. See Prima Tek II,
L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir.
2003) (“Claim construction begins with the words of the
claim.”). This is clear from a review of the contested claim
language in context:
initiating or changing return information which
appears on the display through remote commu-
nication without assistance by a user with the
computer, wherein the changing of the return
information is done through an interactive pro-
gram 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;
’122 Patent claim 1 (emphasis added). Ms. Hafeman con-
cedes that some connection is required, but nowhere in the
patent’s claim does it speak to who does, or does not, estab-
lish that connection. See Appellant Br. 38 (“Of course, the
computer must be powered on, and there must be some
form of connection available.” (emphasis added)). We agree
with the Board—“without assistance by a user” modifies
the action of “initiating or changing return information”; it
does not limit the unrecited action of establishing an inter-
net connection in the first instance. ’122 Patent claim 1; see
Decision, 2024 WL 250494, at *9.
Ms. Hafeman’s suggested construction also conflicts
with the language in the specification. See Baxalta Inc. v.
Genentech, Inc., 972 F.3d 1341, 1346 n.4 (Fed. Cir. 2020)
(“We note that when a construction such as this is incon-
sistent with the plain language of the claims and the writ-
ten description, it is incorrect.”). The specification
emphasizes that it is the claimed invention’s ability to
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HAFEMAN v. GOOGLE LLC 15
remotely communicate updates to the display message and
recovery data that makes its design unique. See ’122 Pa-
tent, 13:43–67. This “unique communication power” allows
the owner to upload changes to the recovery center that are
then downloaded to the protected device such that the in-
formation in the recovery center and the information dis-
played on the device’s screen is the same. Id. 14:22–27. The
specification notes that this claimed improvement “is a
combination” of PDA-type synchronization and the
“McAfee anti-virus software Internet updating capability
where every time you go on-line, your computer 12 auto-
matically checks to make sure that you have the most cur-
rent anti-virus software and automatically updates your
computer 12 with the latest changes.” Id. 14:27–33 (empha-
sis added). Thus, contrary to Ms. Hafeman’s arguments on
appeal, the specification contemplates that a user might in-
itiate the internet connection.
Finally, Ms. Hafeman’s argument that the prosecution
history supports her position on appeal is unpersuasive.
Ms. Hafeman emphasizes that the “without assistance”
limitation was added during prosecution of the parent ap-
plication to overcome a piece of prior art, Broyles, requiring
the computer’s user to push a specific interrupt key to ini-
tiate the remote change in ownership information. See
J.A. 1142–43. She argues this makes clear that the “with-
out assistance” limitation cannot be satisfied if a user is
required to press an interrupt key, which logically means
it is not satisfied where a user must establish an internet
connection. We are unconvinced. At most, the prosecution
history demonstrates an intent to bypass Broyles’ require-
ment that the user push an interrupt key to specifically in-
itiate the process for changing the ownership information.
See J.A. 1142 (“When it is desired to change the ownership
information regarding ownership tag, Broyles teaches this
is done by a user depressing a suitable key, generating a
keyboard interrupt during step 610.”). And we agree with
the Board that Jenne discloses making remote updates
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HAFEMAN v. GOOGLE LLC 16
without relying on the user to press a specific key to initiate
the change. See Decision, 2024 WL 250494, at *10.
For these reasons, we reject Ms. Hafeman’s suggestion
that the Board erroneously construed the “without assis-
tance” limitation. In light of this holding, we do not need to
reach Ms. Hafeman’s dependent argument that the Jenne-
Cohen combination fails to meet the “without assistance”
limitation under her suggested construction.
C
Lastly, we consider Ms. Hafeman’s suggestion that the
Board’s analysis of secondary considerations of non-obvi-
ousness warrants reversal. Evidence regarding secondary
considerations of non-obviousness must be considered, if
present, in an obviousness determination. See Pentec, Inc.
v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir.
1985). This includes evidence of commercial success, copy-
ing, industry praise, skepticism, long-felt but unsolved
need, and failure of others. Volvo Penta of the Ams., LLC v.
Brunswick Corp., 81 F.4th 1202, 1212 (Fed. Cir. 2023). But
for such evidence to be given weight, the “proponent must
establish a nexus between the evidence and the merits of
the claimed invention.” In re GPAC Inc., 57 F.3d 1573,
1580 (Fed. Cir. 1995). A presumption of a nexus arises
when the patentee shows that the asserted secondary evi-
dence “is tied to a specific product that ‘embodies the
claimed features, and is coextensive with them.’” Volvo,
81 F.4th at 1210 (citation omitted). Absent this presump-
tion, the patentee may still establish a nexus by showing
that the proffered evidence of secondary considerations “is
the ‘direct result of the unique characteristics of the
claimed invention.’” Id. (citation omitted). We review the
weight given to evidence of secondary considerations for
substantial evidence. Id. at 1212–13 (“The weight to be
given to evidence of secondary considerations involves fac-
tual determinations, which we review only for substantial
evidence.”).
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HAFEMAN v. GOOGLE LLC 17
Ms. Hafeman suggests there was strong evidence of
various secondary considerations, including praise for the
commercial embodiment of the invention, the Retriever;
commercial success; and copying by others. And she asserts
various errors on appeal. First, Ms. Hafeman argues that
the Board erroneously found there was no nexus between
the Retriever and the claimed invention given that the pa-
tent specification repeatedly references the Retriever prod-
uct. Second, she argues that the Board denied a nexus
without providing any explanation. Neither of these argu-
ments are persuasive. The former argument is unavailing
because the nexus analysis compares the specific product
not to the patent’s specification but to the patent’s claims.
See id. at 1210 (explaining nexus can be shown when a spe-
cific product “embodies the claimed features” or when sec-
ondary consideration evidence is the “direct result of the
unique characteristics of the claimed invention” (emphasis
added) (citations omitted)). And the latter argu-
ment—made in a single sentence without any citation to
the underlying record—is borderline frivolous. The Board’s
analysis of secondary considerations is thorough and spans
several pages. The Board first recounts Ms. Hafeman’s fail-
ure to make any argument as to co-extensiveness, elimi-
nating the possibility of a presumption of nexus. Decision,
2024 WL 250494, at *12. And it then separately weighs the
remaining evidence to conclude that she failed to “prove a
nexus independently” of any such presumption. Id.; see id.
at *12–14. This is an adequate explanation of its rationale,
and its conclusion is supported by substantial evidence.
Ms. Hafeman’s remaining arguments fare no better.
She argues that the Board was mistaken when it found
that praise for the Retriever was directed to non-patented
features, that the Board erred when it found that her
claims of commercial success were unsupported, and that
the Board erroneously rejected evidence of Google and Mi-
crosoft’s copying. As the Board noted, Ms. Hafeman’s evi-
dence of industry praise repeatedly highlighted the
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HAFEMAN v. GOOGLE LLC 18
unpatented features of the product, namely that the Re-
triever includes a verbal alarm component. See id.
at *12–13; see also J.A. 7729 (newspaper article entitled
“Talking software goes global” (emphasis added)). That
there may also be some praise for patented features is in-
sufficient under our standard of review to warrant rever-
sal. See Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197,
229 (1938) (substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion”); Consolo v. Fed. Mar. Comm’n, 383 U.S. 607,
620 (1966). Further, while Ms. Hafeman submitted evi-
dence of visitors to the product’s website and mentioned
pricing at oral argument, she made no argument to the
Board that connected this purported evidence of commer-
cial success to the merits of the invention. See Kansas Jack,
Inc. v. Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983) (dis-
counting evidence of commercial success where there was
“no evidence of a nexus between sales and the merits of the
invention”). And Ms. Hafeman’s arguments to the Board
only briefly mentioned Google and Microsoft’s Find My De-
vice programs—she never stated that those programs were
evidence of copying. See J.A. 8208, 8306; see also Decision,
2024 WL 250494, at *13 (“Patent Owner does not explain
how Google’s and Microsoft’s Find My Device features are
evidence of non-obviousness of the ’122 patent claims.”).
Ms. Hafeman’s attempts to do so now are improper. See
Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1382 (Fed. Cir.
2023) (finding arguments forfeited when not raised below).
For the reasons above, we conclude that the Board’s
findings regarding the secondary considerations of non-ob-
viousness are supported by substantial evidence and af-
firm.
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HAFEMAN v. GOOGLE LLC 19
III
We have considered Ms. Hafeman’s remaining argu-
ments and find them unpersuasive. For the foregoing rea-
sons, we dismiss-in-part and affirm-in-part.
DISMISSED-IN-PART, AFFIRMED-IN-PART
COSTS
Costs against appellant.
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