The Federal Circuit’s decision in Hafeman v. Google LLC, Case No. 24-1600 (Fed. Cir. Jun. 5, 2026) addresses three recurring issues in inter partes review practice: the scope of appellate review under 35 U.S.C. § 314(d), the limits of claim construction arguments raised after PTAB proceedings have concluded, and the evidentiary burden required to establish a nexus between secondary considerations and the claimed invention.
The court ultimately dismissed part of the appeal and affirmed the remainder, leaving intact PTAB decisions finding all challenged claims of three patents (U.S. Patent Nos. 10,325,122; 10,789,393; and 9,892,287) directed to computer recovery and return systems unpatentable.
Although the patents themselves concern technology for displaying return information on lost or stolen computers, the broader significance of the decision lies in the court’s treatment of discretionary institution issues and secondary considerations evidence. Those aspects of the opinion are likely to be cited well beyond the specific technology involved.
The Technology and the IPR Proceedings
The patents at issue were owned by Carolyn Hafeman and generally related to systems that display recovery or return information on a computer before or alongside a lock screen. The goal was to assist in returning lost or stolen devices to their owners.
A central claim limitation required “initiating or changing return information” through remote communication “without assistance by a user with the computer.”
Google and Microsoft filed six IPR petitions challenging the patents. The petitions arose against the backdrop of parallel district court litigation involving LG products that incorporated Google and Microsoft device-location functionality.
As frequently occurs in modern PTAB practice, discretionary denial issues became an important part of the institution phase. After the patent owner argued that the PTAB should deny institution because of the parallel litigation, LG provided a Sotera-style stipulation agreeing not to pursue in district court grounds that were raised or reasonably could have been raised in the IPRs.
The PTAB relied on that stipulation and instituted review.
The Board later found the challenged claims obvious over prior art references known as Jenne and Cohen and rejected the patent owner’s evidence of secondary considerations.
A Significant § 314(d) Decision
The most consequential portion of the opinion concerns appellate review of institution-related disputes.
After institution, the patent owner argued that LG had violated the Sotera stipulation in the district court litigation. According to the patent owner, that violation should have led the PTAB either to terminate the proceedings or at least explain why the proceedings should continue despite the alleged breach.
The Federal Circuit held that it lacked authority to review that challenge.
The court emphasized that litigants cannot evade the jurisdictional limitations imposed by § 314(d) merely by reframing an institution challenge as an attack on a final written decision. Instead, courts must examine the substance of the argument and the relief sought.
The opinion relies heavily on several recent precedents defining the scope of § 314(d).
First, the court discussed the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, which held that judicial review is barred not only for direct challenges to institution decisions but also for issues closely tied to institution determinations.
The court also relied on Thryv, Inc. v. Click-To-Call Technologies, LP, where the Supreme Court held that parties cannot obtain review of institution-related determinations simply because those issues arise in an appeal from a final written decision.
The Federal Circuit then connected those Supreme Court decisions to its own recent cases, including Federal Express Corp. v. Qualcomm Inc. and Ethanol Boosting Systems, LLC v. Ford Motor Co. Both decisions emphasized that courts must look beyond the label attached to a challenge and determine whether it ultimately seeks to undo institution.
Applying those principles, the court concluded that Hafeman’s challenge was fundamentally directed at institution because the requested remedy was termination of the IPRs based on circumstances surrounding the Sotera stipulation that supported institution in the first place.
As a result, the appeal was dismissed to the extent it challenged the PTAB’s handling of the alleged Sotera violation.
This aspect of the decision may prove particularly important for future PTAB litigants. Parties increasingly rely on Sotera stipulations to avoid discretionary denial under the PTAB’s evolving institution framework. The Federal Circuit’s decision suggests that disputes regarding those stipulations may be difficult to transform into appealable issues once a final written decision has been entered.
Charles Gideon Korrell notes that the court’s analysis continues a broader trend of treating institution-related disputes as effectively insulated from appellate review, even when those disputes arise after institution and are framed as procedural objections to later agency actions.
The “Without Assistance” Limitation
The patent owner also challenged the PTAB’s obviousness analysis, arguing that the Board had improperly construed the claim requirement that return information be initiated or changed “without assistance by a user.”
The dispute centered on prior art that required a user to establish an internet connection before remote updates could occur.
According to the patent owner, the claimed invention prohibited any user assistance beyond powering on the device. Because the prior art required internet connectivity established by the user, the patent owner argued that it could not satisfy the limitation.
The Federal Circuit rejected that argument.
The court began with the claim language itself, emphasizing that the phrase “without assistance by a user” modifies the act of initiating or changing return information. The language does not address who establishes the internet connection necessary for remote communication.
That distinction proved decisive.
The court agreed with the PTAB that the claims focus on whether the user assists in changing the return information itself, not whether the user performs preliminary actions that make communication possible.
The specification reinforced that conclusion. The court pointed to passages describing automatic internet-based updating mechanisms similar to antivirus software updates. Those passages contemplated circumstances in which the user might initiate internet connectivity while the update process itself remained automatic.
The prosecution history likewise failed to help the patent owner. The relevant amendment had been added to distinguish prior art requiring users to press a specific interrupt key to initiate ownership-information changes. The court concluded that avoiding a user-triggered update process is different from requiring that no user involvement occur anywhere in the communication chain.
The decision reflects the Federal Circuit’s continued emphasis on ordinary claim language and contextual reading of specifications when evaluating claim scope.
Charles Gideon Korrell believes this portion of the opinion serves as a reminder that patentees face substantial obstacles when attempting to import broader functional restrictions into claims that do not expressly recite them.
Secondary Considerations and the Nexus Requirement
The court also rejected challenges to the PTAB’s treatment of secondary considerations of non-obviousness.
The patent owner presented evidence of commercial success, industry praise, and copying associated with a product called Retriever, which was described as a commercial embodiment of the patented technology.
The Board found that the evidence lacked the required nexus to the claimed invention, and the Federal Circuit agreed.
The opinion relies on familiar precedent governing nexus requirements, including Volvo Penta of the Americas, LLC v. Brunswick Corp. and In re GPAC Inc.
Under those decisions, secondary considerations receive meaningful weight only when the evidence is tied to the claimed invention. A presumption of nexus may arise when a product embodies the claimed features and is coextensive with the claims. Otherwise, the patentee must independently establish that the evidence results directly from the unique characteristics of the claimed invention.
The Federal Circuit concluded that neither route was available here.
The patent owner had not established coextensiveness between Retriever and the claims. Moreover, much of the praise directed toward Retriever focused on an unclaimed verbal alarm feature rather than the patented technology itself.
Similarly, the evidence of commercial success consisted largely of website traffic and pricing information without a persuasive showing that market demand was driven by the claimed invention.
The court also rejected copying arguments because those theories had not been adequately developed before the PTAB.
Notably, the panel described one of the patent owner’s appellate arguments regarding nexus as “borderline frivolous,” emphasizing that the PTAB had devoted several pages to analyzing the evidence and explaining its conclusions.
That language reflects the court’s increasing willingness to defer to detailed PTAB factual findings regarding objective indicia.
Charles Gideon Korrell observes that the decision fits within a long line of Federal Circuit cases requiring patentees to connect secondary-consideration evidence directly to claimed features rather than to broader product attributes or general marketplace success.
Key Takeaways
Several practical lessons emerge from the decision.
First, institution-related challenges remain extraordinarily difficult to appeal. Even when a dispute arises after institution, courts will examine whether the requested relief effectively seeks to unwind the institution decision. If so, § 314(d) may foreclose review.
Second, litigants should be cautious about advancing claim-construction theories on appeal that were not clearly developed before the PTAB. The court showed little interest in expanding claim scope beyond the language actually used in the claims.
Third, secondary considerations continue to require rigorous proof of nexus. Evidence that a product was praised or commercially successful is rarely enough by itself. The evidence must demonstrate that the market response flowed from the claimed invention rather than from unclaimed features, marketing efforts, or unrelated aspects of the product.
Finally, the decision reinforces the importance of building a complete PTAB record. Arguments regarding copying, commercial success, and other objective indicia must be thoroughly developed before the Board. Efforts to elaborate on those theories for the first time on appeal are unlikely to succeed.
Charles Gideon Korrell notes that while the opinion does not dramatically alter substantive patent law, it provides another significant data point in the Federal Circuit’s ongoing effort to limit appellate review of institution decisions and to enforce demanding nexus requirements for secondary considerations evidence. For parties involved in PTAB proceedings, both aspects of the ruling may ultimately prove more important than the underlying technology dispute itself.
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