UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`and
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`FIRSTFACE CO., LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2019-00611
`
`U.S. Patent No. 8,831,557
`
`____________
`
`DECLARATION OF BENJAMIN B. BEDERSON
`
`Apple and Samsung Ex. 1003
`Apple Inc., Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc. v. Firstface Co., Ltd.
`IPR2019-00611
`Page 00001
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`

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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ...................................................................................... i
`
`I.
`
`INTRODUCTION ....................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement ....................................................................................... 1
`
`Background and Qualifications .......................................................... 2
`
`Basis of My Opinion and Materials Considered ................................. 7
`
`Legal Standards for Patentability ....................................................... 8
`
`II.
`
`III.
`
`DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME .............................................................................................10
`
`THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME ............................................................... 11
`
`IV.
`
`TECHNICAL BACKGROUND AND STATE OF THE ART .....................12
`
`A.
`
`B.
`
`C.
`
`Basic Operation of Mobile Devices ................................................. 12
`
`Security ............................................................................................ 15
`
`Hardware / Software Integration ...................................................... 16
`
`V.
`
`OVERVIEW OF THE ’557 patent ..............................................................18
`
`VI. CLAIM INTERPRETATION ......................................................................20
`
`A.
`
`“Simultaneously” ............................................................................. 21
`
`VII. DISCUSSION OF RELEVANT PRIOR ART .............................................23
`
`A.
`
`B.
`
`Brief Summary of Fadell (Ex. 1005) in view of iOS (Ex. 1007) and
`Gagneraud (Ex. 1006) (Ex. 1006) .................................................... 23
`
`Limitation-by-limitation explanation of how the prior art—Fadell,
`iOS, and Gagneraud—render obvious claims 1, 8-9, and 15 of the
`’557 patent ....................................................................................... 30
`
`C.
`
`Brief Summary of Goertz (Ex. 1013) in view of Herfet (Ex. 1014) .. 40
`
`IPR2019-00611 Page 00002
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`

`

`D.
`
`Limitation-by-limitation explanation of how the prior art—Goertz and
`Herfet—render obvious claims 1, 8-9, and 15 of the ’557 patent ..... 44
`
`VIII. SECONDARY CONSIDERATIONS ..........................................................55
`
`IX. CONCLUSION ..........................................................................................56
`
`
`
`ii
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`IPR2019-00611 Page 00003
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`

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`I, Benjamin B. Bederson, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Benjamin B. Bederson. I am over the age of eighteen (18) and am
`
`competent to make this Declaration.
`
`A. Engagement
`
`2.
`
`I submit this report on behalf of Apple Inc., Samsung Electronics, Co., Ltd.,
`
`and Samsung Electronics America, Inc. in connection with their request for inter
`
`partes review of U.S. Patent No. 8,831,557 (“the ’557 patent”)—to review and to
`
`provide my opinion on the scope and content of “prior art” predating the application
`
`for the ’557 patent and regarding the subject matter recited in the claims of the ’557
`
`patent. I understand that this Declaration relates to a petition for the above-captioned
`
`inter partes review (IPR) of the ’557 patent.
`
`3.
`
`For my efforts in connection with the preparation of this declaration, I have
`
`been compensated at my standard hourly consulting rate of $600. My compensation
`
`is in no way contingent on the results of these or any other proceedings relating to
`
`the above-captioned patent. I have no expectation or promise of additional business
`
`with the petitioner in exchange for the positions explained herein.
`
`4.
`
`I make this declaration based on personal knowledge.
`
`
`
`IPR2019-00611 Page 00004
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`

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`B.
`
`Background and Qualifications
`
`5.
`
`A detailed description of my professional qualifications, including a listing of
`
`my specialties/expertise and professional activities, is contained in my curriculum
`
`vitae, a copy of which is attached as Appendix A. In what follows, I provide a short
`
`summary of my professional qualifications.
`
`6.
`
`I received a Bachelor of Science degree in Computer Science with a minor in
`
`Electrical Engineering from Rensselaer Polytechnic Institute (“RPI”) in 1986. I
`
`received a Master of Science degree and a Ph.D. in Computer Science from New
`
`York University (“NYU”) in 1989 and 1992, respectively.
`
`7.
`
`Since 1998, I have been a Professor of Computer Science at the University of
`
`Maryland (“UMD”), where I have joint appointments at the Institute for Advanced
`
`Computer Studies and the College of Information Studies (Maryland’s “iSchool”),
`
`and am currently on leave. I was also Associate Provost of Learning Initiatives and
`
`Executive Director of the Teaching and Learning Transformation Center from 2014
`
`to 2018. I am a member and previous director of the Human-Computer Interaction
`
`Lab (“HCIL”), the oldest and one of the best known Human-Computer Interaction
`
`research groups in the country. I was also co-founder and Chief Scientist of Zumobi,
`
`Inc. from 2006 to 2014, a Seattle-based startup that is a publisher of content
`
`applications and advertising platforms for smartphones. I am also co-founder and
`
`co-director of the International Children’s Digital Library (“ICDL”), a web site
`
`2
`
`IPR2019-00611 Page 00005
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`

`

`launched in 2002 that provides the world’s largest collection of freely available
`
`online children’s books from around the world with an interface aimed to make it
`
`easy for children and adults to search and read children’s books online. I am also co-
`
`founder and Chief Technology Officer of Hazel Analytics, a data analytics company
`
`whose product sends alerts in warranted circumstances. In addition, I have for more
`
`than 15 years consulted for numerous companies in the area of user interfaces,
`
`including Microsoft, the Palo Alto Research Center, Sony, Lockheed Martin,
`
`Hillcrest Labs, and NASA Goddard Space Flight Center.
`
`8.
`
`For more than 30 years, I have studied, designed, and worked in the field of
`
`computer science and human-computer interaction. My experience includes 30 years
`
`of teaching and research, with research interests in human-computer interaction and
`
`the software and technology underlying today’s interactive computing systems. This
`
`includes the design and implementation of software applications on mobile devices,
`
`including smart phones and PDAs, such as my work on DateLens, LaunchTile, and
`
`StoryKit.
`
`9.
`
`At UMD, my research is in the area of Human-Computer Interaction (“HCI”),
`
`a field that relates to the development and understanding of computing systems to
`
`serve users’ needs. Researchers in this field are focused on making universally
`
`usable, useful, efficient, and appealing systems to support people in their wide range
`
`of activities. My approach is to balance the development of innovative technology
`
`3
`
`IPR2019-00611 Page 00006
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`

`

`that serves people’s practical needs. Example systems following this approach that
`
`I have built include PhotoMesa (software for end users to browse personal photos),
`
`DateLens (2002 software for end users to use their mobile devices to efficiently
`
`access their calendar information), LaunchTile (2005 “home screen” software for
`
`mobile devices to allow users to navigate apps in a zoomable environment),
`
`SpaceTree (2001 software for end users to efficiently browse very large hierarchies),
`
`ICDL (as described above), and StoryKit (a 2009 iPhone app for children to create
`
`stories).
`
`10. LaunchTile led to my creation of Zumobi in 2006, where I was responsible
`
`for investigating new software platforms and developing new user interface designs
`
`that provide efficient and engaging interfaces to permit end users to access a wide
`
`range of content on mobile platforms (including the iPhone and Android-based
`
`devices). For example, I designed and implemented software called “Ziibii,” a
`
`“river” of news for iPhone, software called “ZoomCanvas,” a zoomable user
`
`interface for several iPhone apps, and iPhone apps including “Inside Xbox” for
`
`Microsoft and Snow Report for REI. At the International Children’s Digital Library
`
`(ICDL), I have since 2002 been the technical director responsible for the design and
`
`implementation of
`
`the web site, www.childrenslibrary.org
`
`(originally at
`
`www.icdlbooks.org). In particular, I have been closely involved in designing the user
`
`4
`
`IPR2019-00611 Page 00007
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`

`

`interface as well as the software architecture for the web site since its inception in
`
`2002.
`
`11. Beginning in the mid-1990s, I have been responsible for the design and
`
`implementation of numerous other web sites in addition to the ICDL. For example,
`
`I designed and built my own professional web site when I was an Assistant Professor
`
`of Computer Science at the University of New Mexico in 1995 and have continued
`
`to design, write the code for, and update both that site (which I moved to the
`
`University of Maryland in 1998, currently at http://www.cs.umd.edu/~bederson/) as
`
`well
`
`as
`
`numerous
`
`project
`
`web
`
`sites,
`
`such
`
`as
`
`Pad++,
`
`http://www.cs.umd.edu/hcil/pad++/. I received the Janet Fabri Memorial Award for
`
`Outstanding Doctoral Dissertation for my Ph.D. work in robotics and computer
`
`vision. I have combined my hardware and software skills throughout my career in
`
`Human-Computer Interaction research, building various interactive electrical and
`
`mechanical systems that couple with software to provide an innovative user
`
`experience.
`
`12. My work has been published extensively in more than 140 technical
`
`publications, and I have given about 100 invited talks, including 9 keynote lectures.
`
`I have won a number of awards including the Brian Shackel Award for “outstanding
`
`contribution with international impact in the field of HCI” in 2007, and the Social
`
`Impact Award in 2010 from Association for Computing Machinery’s (“ACM”)
`
`5
`
`IPR2019-00611 Page 00008
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`

`

`Special Interest Group on Computer Human Interaction (“SIGCHI”). ACM is the
`
`primary international professional community of computer scientists, and SIGCHI
`
`is the primary international professional HCI community. I have been honored by
`
`both professional organizations. I am an “ACM Distinguished Scientist,” which
`
`“recognizes those ACM members with at least 15 years of professional experience
`
`and 5 years of continuous Professional Membership who have achieved significant
`
`accomplishments or have made a significant impact on the computing field.” I am a
`
`member of the “CHI Academy,” which is described as follows: “The CHI Academy
`
`is an honorary group of individuals who have made substantial contributions to the
`
`field of human-computer interaction. These are the principal leaders of the field,
`
`whose efforts have shaped the disciplines and/or industry, and led the research and/or
`
`innovation in human-computer interaction.” The criteria for election to the CHI
`
`Academy are: (1) cumulative contributions to the field; (2) impact on the field
`
`through development of new research directions and/or innovations; and (3)
`
`influence on the work of others.
`
`13.
`
`I have appeared on radio shows numerous times to discuss issues relating to
`
`user interface design and people’s use and frustration with common technologies,
`
`web sites, and mobile devices. My work has been discussed and I have been quoted
`
`by mainstream media around the world over 120 times, including by the New York
`
`Times, the Wall Street Journal, the Washington Post, Newsweek, the Seattle Post-
`
`6
`
`IPR2019-00611 Page 00009
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`Intelligencer, the Independent, Le Monde, NPR’s All Things Considered, New
`
`Scientist Magazine, and MIT’s Technology Review.
`
`14.
`
`I have designed, programmed, and publicly deployed dozens of user-facing
`
`software products that have cumulatively had millions of users. My work is cited in
`
`several patents, including U.S. Patent Nos. 6,307,562; 6,608,549; 7,576,756; and
`
`7,834,849.
`
`15.
`
`I am the co-inventor of 12 U.S. patents and 18 U.S. patent applications. The
`
`patents are generally directed to user interfaces/experience with some directed to
`
`mobile devices, including U.S. Patent No. 9,778,810 (issued 2017), entitled
`
`“Techniques to modify content and view content on mobile devices.”
`
`C. Basis of My Opinion and Materials Considered
`
`16.
`
`I have reviewed the ’557 patent and the prior art and other documents and
`
`materials cited herein. For ease of reference, the full list of documents that I have
`
`considered is included in Appendix B. My opinions in this declaration are based on
`
`my review of these documents, as well as upon my education, training, research,
`
`knowledge, and experience.
`
`17.
`
`I have reviewed, had input into, and endorse as set forth fully herein the
`
`discussions and claim mappings in the accompanying IPR petition.
`
`7
`
`IPR2019-00611 Page 00010
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`

`

`D. Legal Standards for Patentability
`
`18.
`
`I am not an attorney and I offer no opinions on the law itself. My
`
`understanding of the relevant law principles this section is based on information
`
`provided to me by counsel.
`
`19.
`
`I understand that a patent claim is invalid if the claimed invention was
`
`patented, described in a printed publication, in public use, on sale, or otherwise
`
`available to the public before the effective filing date of the claimed invention or the
`
`claimed invention was described either in an issued patent or in a published
`
`application for a patent, in which the patent or application names another inventor
`
`and was filed before the filing date of the claimed invention. I am informed that this
`
`standard is set forth in 35 U.S.C. § 102.
`
`20.
`
`I understand that a patent claim is invalid if the differences between the
`
`patented subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person of ordinary
`
`skill in the art. I am informed that this standard is set forth in 35 U.S.C. § 103(a).
`
`21.
`
`I understand that an obviousness analysis should include: (i) determining the
`
`scope and content of the prior art; (ii) ascertaining the differences between the prior
`
`art and the claims at issue; (iii) determining the level of ordinary skill in the pertinent
`
`art; and (iv) considering objective evidence of non-obviousness. I understand that
`
`secondary considerations must be assessed as part of the overall obviousness
`
`8
`
`IPR2019-00611 Page 00011
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`

`

`analysis (i.e., as opposed to analyzing the prior art, reaching a tentative conclusion,
`
`and then assessing whether objective indicia alter that conclusion).
`
`22. That is to say, even if features of a claimed product or method are described
`
`across multiple prior art references, the patent claim will still be denied if the claim
`
`would have been obvious based on the combined teachings of those references to a
`
`person of ordinary skill in the art at the time of the patent application filing.
`
`23.
`
`In determining whether the subject matter as a whole would have been
`
`considered obvious to a person of ordinary skill in the art at the time that the patent
`
`application was filed, I have been informed of general principles regarding the
`
`combination of elements of the prior art:
`
`a.
`
`b.
`
`First, a combination of familiar elements according to known
`methods is likely to be obvious when it yields predictable results.
`
`Second, if a person of ordinary skill in the art can implement a
`“predictable variation” in a prior art device and would see the
`benefit from doing so, such a variation would be obvious. In
`particular, when there is pressure to solve a problem and there
`are a finite number of identifiable, predictable solutions, it would
`be reasonable for a person of ordinary skill to pursue those
`options that fall within his or her technical grasp. If such a
`process leads to the claimed invention, the latter is not an
`innovation but more the result of ordinary skill and common
`sense.
`
`24. The “teaching, suggestion, or motivation” test is a useful guide in establishing
`
`a rationale for combining elements of the prior art. This test poses the question as to
`
`whether there is an explicit teaching, suggestion, or motivation in the prior art to
`
`9
`
`IPR2019-00611 Page 00012
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`

`

`combine prior art elements in a way that realizes the claimed invention. Though
`
`useful to the obviousness inquiry, I understand that this test should not be treated as
`
`a rigid rule. It is not necessary to seek out precise teachings; it is permissible to
`
`consider the inferences and creative steps that a person of ordinary skill in the art
`
`(who is considered to have an ordinary level of creativity and is not an “automaton”)
`
`would employ.
`
`
`
`II. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIMEFRAME
`
`25.
`
`I have carefully reviewed the ’557 patent.
`
`26.
`
`I understand that the ’557 patent issued from U.S. Patent Application No.
`
`13/590,483 (“the ’557 patent application”), which was filed on August 21, 2012. I
`
`understand that the ’557 patent application also claims the benefit of Korean Patent
`
`Application No. 10-2011-0106839 filed on October 19, 2011.
`
`27.
`
`It is my understanding that the earliest possible effective filing date or priority
`
`date of the ’557 patent is the October 19, 2011 filing date of the Korean application.
`
`I have been instructed by counsel to assume the relevant timeframe for my analysis
`
`to be on or before October 19, 2011.
`
`28. Based on my review of this material, I believe that the relevant general field
`
`for the purposes of the ’557 patent is user interface design for mobile devices.
`
`
`
`10
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`IPR2019-00611 Page 00013
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`

`

`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD IN
`THE RELEVANT TIMEFRAME
`
`29.
`
`I have been informed by counsel that a “person of ordinary skill in the relevant
`
`field” or “person of ordinary skill in the art” (“POSITA”) is a hypothetical person to
`
`whom an expert in the relevant field could assign a routine task with reasonable
`
`confidence that the task would be successfully carried out. I have been informed that
`
`the level of skill in the art is evidenced by prior art references. The prior art discussed
`
`herein demonstrates that a person of ordinary skill in the art, at the earliest possible
`
`priority date of the ’557 patent, would have possessed a bachelor’s degree in
`
`Computer Science, Computer Engineering, or equivalent and have at least two years
`
`of relevant experience in the fields of user interface design and mobile devices, or
`
`otherwise equivalent industry experience in the relevant field.
`
`30. Based on my experience, I have an understanding of the capabilities of a
`
`person of ordinary skill in the relevant field at the earliest possible priority date of
`
`the ’557 patent. I have supervised and directed many such persons at the earliest
`
`possible priority date of the ’557 patent and over the course of my career. Further, I
`
`have had at least those capabilities myself at the earliest possible priority date of the
`
`’557 patent.
`
`
`
`11
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`IPR2019-00611 Page 00014
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`

`

`IV. TECHNICAL BACKGROUND AND STATE OF THE ART
`
`A. Basic Operation of Mobile Devices
`
`31. Since portable mobile computing and communication devices were first
`
`introduced, power management was a prime concern. Given their mobile nature,
`
`they needed to carry their power with them in the form of batteries. And given the
`
`heavy demand for power that electronics have, coupled with the limited power that
`
`batteries store – engineers, developers and users alike considered how long a device
`
`could be used without plugging it in as a key metric. This is evidenced in an early
`
`review of a “laptop” computer from a 1988 New York Times article which focused
`
`on power issues1. The lead sentence of the article opens with “A battery powered
`
`laptop computer …” It discusses the computer’s “low-power chip”. It explained
`
`tradeoffs related to power management in that the computer used a slower CPU that
`
`did not use as much power instead of the well-known faster chips (“Michael
`
`Swavely, Compaq's vice president for marketing, suggested in an interview that the
`
`power demands of the 386 chip had reduced the SLT's battery life to unacceptably
`
`short periods. The fast 286 chip, he said, offered the best balance of performance
`
`and battery life.”) And the final three paragraphs are about ways that users can
`
`manage the power of their laptops. So it was not surprising that the same issues arose
`
`with mobile phone systems as well. Numerous scholarly articles discuss the issues
`
`
`1 Ex. 1021.
`
`12
`
`IPR2019-00611 Page 00015
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`

`

`of designing mobile platforms to reduce power usage2 including the need to design
`
`applications that take power usage in mind, and even designing entire operating
`
`systems around managing power3.
`
`32.
`
`In addition to working on those more substantive issues, designers of mobile
`
`computers and phones of course also tried to have the computer go to some kind of
`
`low power “sleep” or “standby” mode whenever the device was not being used.
`
`Based on my own personal experience of decades of use of mobile devices, I cannot
`
`think of a single one that did not have some kind of sleep mode built in as a core part
`
`of the design of the system.
`
`33. The flip side of designing the device to go to sleep whenever it was not being
`
`used for very long was that users wanted to have very fast access to a fully
`
`functioning device. This tension was usually expressed in designs by having devices
`
`that would go to sleep when they were not used for a short period and that would
`
`wake up whenever the user pressed a button or otherwise activated the device
`
`indicating that they were ready to use it. This was true for early mobile phones as
`
`well as laptop computers.
`
`
`2 Ex. 1022.
`3 Ex. 1023.
`
`13
`
`IPR2019-00611 Page 00016
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`

`

`34. For example, the specs of the Nokia 1630 phone announced in 1996 focused
`
`on how long the battery lasted while talking (3 hours and 30 minutes) as well as how
`
`long it lasted when in standby mode (100 hours)4.
`
`
`
`Nokia 1630 as described at http://nokiamuseum.info/nokia-1630/
`
`35. The ability to save power by putting mobile phones into some kind of sleep
`
`or standby mode and waking them up by pressing a button was ubiquitous. For
`
`example, the user manual for the Treo 680 phone from 20065 had a whole section
`
`about “Maximizing battery life” (pp. 13-14). It then went on to explain how to wake
`
`up the screen (p. 41):
`
`
`
`
`4 https://nokiamuseum.info/nokia-1630/
`5 Ex. 1024.
`
`14
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`IPR2019-00611 Page 00017
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`

`

`B.
`
`Security
`
`36. While users of mobile devices want quick and easy access to them, they also
`
`need to have confidence that the information stored on their devices is secure. This
`
`is no different than users of mainframe, desktop or laptop computers, which have
`
`had passwords to limit access for decades. The university computers I used myself
`
`at Rensselaer Polytechnic Institute during 1982-1986 required passwords to log in
`
`and access my account. And scholars have been publishing about a wide range of
`
`mobile security issues as well6,7. Similarly, mobile phones have for at least since
`
`2007 offered passwords to make phone calls. The Treo 680 that was discussed above
`
`had the ability to require such a password (Ex. 1024, p. 205):
`
`
`
`37. Computers and mobile phones would typically require users to enter the
`
`password on some kind of “lock screen”, which was simply a screen with a user
`
`interface that required the user to enter the password before they could access other
`
`information. In other words, the device was “locked” when on this screen because
`
`there was not much else one could do without entering the password. The Apple
`
`
`6 Ex. 1025.
`7 Ex. 1026.
`
`15
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`IPR2019-00611 Page 00018
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`

`

`iPhone had such a lock screen at least since the release of iOS 3.1 on September 9,
`
`2009 as described in the associated user guide (Ex. 1007, pp. 27, 39, 45, 48, 102,
`
`142, 143, 145, 183, 187).
`
`38. Mobile phones have also used a wide variety of other technologies in addition
`
`to passwords to secure the devices. As described in U.S. Patent No. 8,965,449 to
`
`Alvarez Rivera (Ex. 1017), security options were shown in Figs. 12-15 to allow users
`
`to slide to unlock the device, use a fingerprint reader, or scan their eye/face and
`
`combinations thereof (Fig. 13 has the fingerprint scan occurring while the finger is
`
`sliding across the screen).
`
`C. Hardware / Software Integration
`
`39. Over the years, the field of software engineering has developed a number of
`
`standard software engineering principles in order to make computing systems easier
`
`to develop and more reliable. A key such principle is called “separation of concerns”
`
`which refers to the idea that by separating the components of a technical system and
`
`minimizing the coordination between them, each can be developed, tested, and
`
`updated separately from each other.8 This decreases cost and complexity while
`
`
`8 See Ex. 1033 at 1: “Separation of concerns is at the core of software engineering
`… it refers to the ability to identify, encapsulate, and manipulate only those parts of
`software that are relevant to a particular concept, goal, or purpose. Concerns are the
`primary motivation for organizing and decomposing software into manageable and
`comprehensible parts…. ‘Clean’ separation of concerns has been hypothesized to
`reduce software complexity…;
`facilitate
`reuse; and simplify component
`integration.”
`
`16
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`IPR2019-00611 Page 00019
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`

`

`increasing reliability. This principle is applied in innumerable places that are often
`
`quite visible (e.g., changing the tires on your car does not require you to change the
`
`wheels that the tires are mounted on.) In computer systems, this principle lets you
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`upgrade your operating system without having to change your personal documents.
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`40. Computer system designers have applied this principle to how operating
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`systems (OSs) manage input devices and feed their input to applications that respond
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`to user’s input. In general, modern OSs with graphical user interfaces (GUIs) support
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`pointing devices that can specify a location on the screen and allow the user to press
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`one or more buttons. OSs hide knowledge of the specific type of input device from
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`the software by design so the software developer can write their programs to respond
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`to an abstracted version of an input device without being obligated to customize their
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`software for each type of input device that user might chose to use. So, for example,
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`when a user plugs in a different kind of mouse, the application can operate without
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`change. Similarly, if the user plugs in a trackball, a joystick or a touchpad, the
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`application can continue to operate without change. Even if the software was written
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`for two mouse buttons, and the mouse only has one button, the OS often will provide
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`a keyboard-based mechanism to simulate the second mouse button – and when that
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`happens, the application can continue to operate without change.
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`41. This “separation of concerns” is similarly often applied throughout the design
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`of software. So, when a programmer writes software with different functions such
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`as one to unlock the screen because a security requirement has been met, then that
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`function does not need to know how the security requirement was met. Instead, there
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`would typically be another part of the software that handles security requirements,
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`and it might do so by allowing, for example, face recognition instead of fingerprint
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`recognition – and the function relying on the security system would never know that
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`the security requirement was even changed. The bottom line is that different user
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`inputs, combinations of button presses, long presses, timed presses, etc. are largely
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`interchangeable methods of providing signals to software.
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`
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`V. OVERVIEW OF THE ’557 patent
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`42. The ’557 patent, titled “Method, System, and Mobile Communication
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`Terminal for Performing Specific Function When Mobile Communication Terminal
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`is Activated,” claims a simple combination of functions well-known in consumer
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`electronics: namely, activating a display via a button and performing a fingerprint
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`identification function. (Ex. 1001, Abstract, claim 1.)
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`43. Fig. 1 of the ’557 patent shows an example of a mobile communication
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`terminal 100:
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`44. Terminal 100 includes a display unit 110 and an activation button 120. (Id.,
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`3:48-53.) The display unit 110 can be switched from an OFF state (an “inactive
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`state”) to an ON state (an “active state”) by pressing the activation button 120. (Id.,
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`3:28-46, 4:27-31.)
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`45. The activation button 120 can be configured to perform other functions as
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`well. (Id., 4:40-45, 5:44-49.) The particular operation performed can also depend on
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`how the activation button 120 is pressed (e.g., pressed three times or pressed for a
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`long time). (Id., 4:45-5:6.) In one example, the operation is a “user authentication
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`process” that is performed “[w]hen the mobile communication terminal 100 is in the
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`inactive state” (i.e., when the display is off). (Id., 7:5-7.) The process can include
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`fingerprint recognition. (Id., 8:3-8.)
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`46. The ’557 patent describes that the particular operation can be performed
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`“simultaneously” with switching the display from an OFF state to an ON state by
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`pressing the activation button (id., Abstract, 2:1-17).
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`47. Accordingly, the ’557 patent purports to enable a particular procedure for user
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`authentication by pressing an activation button. (Id., 11:50-54, 11:60-63.) But, the
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`configuration of a button to perform an authentication function was already well-
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`known in the art.
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`48. As I have discussed above, the concepts of device sleep and wake modes,
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`device security and authentication, and of different inputs available to designers of
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`mobile computing devices, were all prevalent before the ’557 patent, and their uses,
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`as claimed in the ’557 patent, do not offer anything unique, alone or in combination.
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`
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`VI. CLAIM INTERPRETATION
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`49.
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`In proceedings before the U.S. Patent and Trademark Office, I understand that
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`the claims are to be given their ordinary and customary meaning as would be
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`understood by a POSITA at the time of the invention. In comparing the claims of the
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`’557 patent to the known prior art, I have considered the ’557 patent (Ex. 1001), the
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`’557 patent file history (Ex. 1002), and the parties’ proposed constructions (Ex. 1034
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`and 1035) based upon my experience and knowledge in the relevant field.
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`A.
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`“Simultaneously”
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`50. Claims 1 and 9 of the ’557 patent recite, respectively, “the user identification
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`function is performed simultaneously with switching from the inactive state of the
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`display unit to the active state of the display unit by pressing the activation button”
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`and “performing a user identification process by a fingerprint recognition
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`simultaneously with switching from the inactive state of the display unit to the
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`active state of the display unit if the pressing of the activation button is sensed.” (Ex.
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`1001, 12:48-51, 13:26-30; emphases added.) “Simultaneously [with]” should be
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`construed to mean at the same time [as].
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`1. “Simultaneously” as used in the ’557 patent
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`51. The term “simultaneously” is recited several times in the ’557 patent
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`specification.
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`52. For example, the Abstract and col. 2:1-17 of the ’557 patent use the word
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`simultaneous, but do not otherwise offer any guidance as to when actions can be
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`considered simultaneous