Federal Circuit refuses to review Hafeman's Sotera-stipulation challenge, citing the §314(d) bar

The Federal Circuit on June 5, 2026 closed the door on a patent owner's attempt to relitigate institution through the back door of a final written decision. In Hafeman v. Google LLC, a panel of Judges Dyk, Hughes, and Stoll dismissed-in-part and affirmed-in-part Carolyn Hafeman's consolidated appeal from three final written decisions arising out of six inter partes reviews. The Board had found every challenged claim of U.S. Patent Nos. 10,325,122; 10,789,393; and 9,892,287 unpatentable, and the appellate court left those determinations standing.

The procedural posture is the whole story here, and it is worth getting right. Hafeman had sued LG Electronics in the Western District of Texas in 2021 over phones, tablets, and laptops loaded with Google's and Microsoft's "Find My Device" features. Google and Microsoft then filed six IPR petitions naming LG as a real party in interest. Hafeman opposed institution under the then-Director's June 2022 discretionary-denial guidance, pointing to the parallel district court trial. After she filed her opposition, LG served a so-called Sotera stipulation promising not to pursue in district court any ground the petitioners raised or reasonably could have raised in the IPRs. Relying on that stipulation, the Board instituted on all grounds in January 2023. Only later did the district court find that LG had violated the stipulation.

"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."— Federal Circuit, source

Hafeman's appellate theory was that the Board acted arbitrarily by issuing its final written decisions without addressing the proven Sotera violation, and that it should have vacated institution and terminated the proceedings. She framed this as an Administrative Procedure Act challenge to the sufficiency of the FWDs, not as an attack on institution. The court was unpersuaded. Writing for the panel, Judge Hughes explained that the inquiry 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." Because the Sotera stipulation "was a consideration for institution," Hafeman's request to vacate and dismiss had "institution as its direct, immediate, express subject" and fell within the nonappealability bar of 35 U.S.C. § 314(d).

Why the labeling did not save the appeal

The decision is a clean application of the line the Supreme Court drew in Cuozzo and Thryv, and that this court has been policing in cases like Federal Express Corp. v. Qualcomm Inc. and Ethanol Boosting Systems, LLC v. Ford Motor Co. The recurring move — dress an institution complaint as a defect in the FWD — keeps failing for the same reason: § 314(d) reaches matters "closely tied to the application and interpretation of statutes related to" institution, and pointing to a different agency action does not change the analysis when the party is trying to dislodge institution. Hafeman's reliance on Uniloc 2017 and Windy City did not help, because those cases involved estoppel and joinder determinations that were genuinely later than and separate from the institution decision. The remedy a patent owner seeks is often the tell, and here the requested relief pointed straight back at institution.

For litigators, the practical lesson is about timing and characterization. A Sotera stipulation is a consideration at the institution stage; a later breach of that stipulation is, the court held, an institution-stage problem that the statute commits to the agency and removes from judicial review. Patent owners who want to preserve a reviewable post-institution issue need a theory that does not depend on unwinding the institution decision — an estoppel ruling, a joinder decision exceeding statutory authority, or a sanctions determination untethered from why the Board instituted. The court was careful to distinguish Atlanta Gas Light, where a termination was not "purely a sanctions decision" the court could ordinarily review.

The merits the court did reach

On the portions of the appeal that survived the § 314(d) bar, the panel affirmed. Hafeman argued the Board implicitly misconstrued the "initiating or changing return information ... without assistance by a user" limitation by treating the prior-art Jenne reference as teaching it despite Jenne requiring a user to connect to the internet. The court declined to decide whether the standard of review was de novo or substantial evidence, noting the outcome was the same either way. It then held that "without assistance by a user" modifies the action of initiating or changing the displayed return information — it does not limit the unrecited step of establishing the internet connection in the first instance. Claim language and the specification, which contemplates a user initiating the connection, both pointed the same direction, and the prosecution history (which distinguished a prior-art interrupt-key requirement) did not support Hafeman's narrower reading.

The panel also affirmed the Board's treatment of secondary considerations of nonobviousness. Hafeman pointed to praise, commercial success, and copying tied to her commercial embodiment, the Retriever. But the court agreed the patentee failed to establish the required nexus to the claimed invention: the nexus analysis compares the product to the claims, not to the specification; much of the praise highlighted unpatented features such as a verbal alarm; and the copying argument had not been properly developed before the Board. Substantial evidence supported the agency's conclusion, and the court flagged that one of Hafeman's arguments — made in a single sentence with no record citation — was "borderline frivolous."

The commercial significance is modest but real. The three challenged patents, part of a single family on lost-or-stolen-computer recovery screens, are now unpatentable across all challenged claims, removing them as litigation assets against the accused Find My Device functionality. The precedential weight, however, sits in the jurisdictional holding: another data point confirming that the Federal Circuit will look past the label and ask whether an appeal is really trying to undo institution.