`571-272-7822
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` Paper 11
`Entered: August 5, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00611
`Patent 8,831,557 B2
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
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`IPR2019-00611
`Patent 8,831,557 B2
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`I. INTRODUCTION
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting inter partes review of claims 1, 8, 9, and 15 of U.S. Patent
`No. 8,831,557 B2 (Ex. 1001, “the ’557 patent”) pursuant to 35 U.S.C.
`§ 311(a). Patent Owner Firstface Co., Ltd. filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to
`35 U.S.C. § 314(a), the Director may not authorize an inter partes review
`unless the information in the petition and preliminary response “shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we do not institute an inter partes review in this proceeding.1
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’557 patent is the subject of the following
`district court cases: Firstface Co., Ltd. v. Samsung Elecs. Co., Ltd.,
`Case No. 3-18-cv-02243 (N.D. Cal.), and Firstface Co., Ltd. v. Apple Inc.,
`Case No. 3-18-cv-02245 (N.D. Cal.). See Pet. 3; Paper 5, 2. Petitioner filed
`a second petition challenging claims 1, 8, 9, and 15 of the ’557 patent in
`Case IPR2019-00612. Pet. 4. The grounds of unpatentability in the second
`petition are the same as those asserted in this proceeding, but are “premised
`on the possibility that the Board may use a [different] construction of the
`
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 10), we do not refer to any sealed material in this
`Decision.
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`term ‘simultaneously.’” Id. In a concurrently entered Decision, we institute
`an inter partes review in Case IPR2019-00612. Apple Inc. also filed
`petitions for inter partes review of two patents related to the ’557 patent in
`Cases IPR2019-00613 and IPR2019-00614. Id.
`
`
`B. The ’557 Patent
`The ’557 patent discloses a mobile communication terminal with
`“an activation button configured to switch from an inactive state . . . to an
`active state,” where “a predetermined operation is performed simultaneously
`with switching to the active state by pressing the activation button.”
`Ex. 1001, Abstract. According to the ’557 patent, adding functionality to a
`mobile communication terminal, to be performed when the terminal is in an
`active state, typically required adding an “interface or button for performing
`the function.” Id. at col. 1, ll. 34–40. At the same time, terminal users often
`perform the actions of “habitually taking out and activating the terminal[] on
`the move or in a standby state while carrying the terminal[].” Id. at col. 1,
`ll. 45–48. The ’557 patent seeks to take advantage of that habitual use by
`“connecting various operations to the activation button provided in a
`terminal” and performing a predetermined function whenever the user
`presses the activation button. Id. at col. 1, ll. 52–56.
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`Figure 1 of the ’557 patent is reproduced below.
`
`
`Figure 1 depicts mobile communication terminal 100 comprising camera
`130, display unit 110, activation button 120, and sub-display unit 121.
`Id. at col. 3, ll. 51–55, col. 5, ll. 7–9. “[D]isplay unit 110 displays various
`information regarding operation states of the mobile communication
`terminal 100, and also displays an interface for a user’s input if the mobile
`communication terminal 100 drives a touch screen.” Id. at col. 4, ll. 3–6.
`When the user presses activation button 120, mobile communication
`terminal 100 switches from the inactive state (in which the terminal is
`communicable but the display screen is turned off) to the active state
`(in which the display screen is turned on). Id. at col. 3, ll. 28–46, col. 4,
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`ll. 27–35. Figure 1 above, for example, “illustrates a state in which a lock
`screen is displayed on the display unit 110 after pressing the activation
`button 120 when the mobile communication terminal 100 is in the inactive
`state.” Id. at col. 4, ll. 32–35. If the user presses activation button 120 when
`mobile communication terminal 100 is in the inactive state, mobile
`communication terminal 100 may perform a “predetermined operation” (set
`in advance by the user) “simultaneously with switching to the active state.”
`Id. at col. 2, ll. 1–17, col. 4, ll. 40–50. Mobile communication terminal 100
`also may perform different operations depending on either the number of
`presses or the press time of activation button 120. Id. at col. 4, l. 50–col. 5,
`l. 6.
`
`The ’557 patent describes a number of operations that can be
`performed when activation button 120 is pressed. Id. at col. 5, ll. 44–49.
`For example, a “user authentication process can be performed for security by
`pressing the activation button 120.” Id. at col. 7, ll. 4–7. When in the
`inactive state, mobile communication terminal 100 “senses whether or not
`the user has pressed the activation button” and, if so, performs a “user
`identification function.” Id. at col. 7, ll. 14–19. User identification unit 420
`of mobile communication terminal 100 may use camera activation element
`421, iris detection element 422, and user identification element 423 to sense
`and recognize the iris of a user’s eye. Id. at col. 7, ll. 20–50. The
`’557 patent explains that “other authentication methods, for example, an
`authentication key matching method, a password matching method, a face
`recognition method, a fingerprint recognition method, and the like, can be
`used” instead of the iris recognition method. Id. at col. 8, ll. 3–8.
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`C. Illustrative Claim
`Claims 1 and 9 of the ’557 patent are independent. Claim 8 depends
`from claim 1, and claim 15 depends from claim 9. Claim 1 recites:
`1. A mobile communication terminal comprising:
`a display unit; and
`an activation button configured to switch from an inactive
`state, which is an OFF state of the display unit, to an active state,
`which is an ON state of the display unit; and
`a user identification unit configured to operate a user
`identification function,
`wherein the user identification function is performed
`simultaneously with switching from the inactive state of the
`display unit to the active state of the display unit by pressing the
`activation button,
`wherein the user identification function includes a
`fingerprint recognition.
`
`
`D. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent Application Publication No. 2010/0017872
`A1, published Jan. 21, 2010 (Ex. 1013, “Goertz”);
`U.S. Patent Application Publication No. 2009/0083850
`A1, published Mar. 26, 2009 (Ex. 1005, “Fadell”);
`Publication
`International
`Patent
`Application
`No. WO 2010/126504 A1, published Nov. 4, 2010 (Ex. 1006,
`“Gagneraud”);
`German Patent Application Publication No. DE 19710546
`A1, published Sept. 17, 1998 (Ex. 1014, “Herfet”);2 and
`
`
`2 We refer to “Herfet” as the English translation of the original reference
`(both provided as Exhibit 1014). Petitioner includes a declaration in Exhibit
`1014 attesting to the accuracy of the translation. See 37 C.F.R. § 42.63(b).
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`IPHONE USER GUIDE FOR IPHONE OS 3.1 SOFTWARE
`(2009) (Ex. 1007, “iOS”).
`
`
`E. The Asserted Grounds
`Petitioner challenges claims 1, 8, 9, and 15 of the ’557 patent as
`unpatentable on the following grounds:
`Claims
`References
`Basis
`Fadell, iOS, and
`35 U.S.C. § 103(a)3 1, 8, 9, and 15
`Gagneraud
`Goertz and Herfet
`
`35 U.S.C. § 103(a)
`
`1, 8, 9, and 15
`
`
`III. ANALYSIS
`A. Claim Interpretation
`We interpret the challenged claims
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’557 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA versions of
`35 U.S.C. § 103.
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`(2019)). Claim terms are given their plain and ordinary meaning as would
`be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012).
`The prosecution history of a patent may “inform the meaning of the
`claim language by demonstrating how the inventor understood the invention
`and whether the inventor limited the invention in the course of prosecution,
`making the claim scope narrower than it would otherwise be.” Phillips, 415
`F.3d at 1317; see Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir.
`2005) (“The purpose of consulting the prosecution history in construing a
`claim is to ‘exclude any interpretation that was disclaimed during
`prosecution.’” (citation omitted)). “For example, ‘a patentee may, through a
`clear and unmistakable disavowal in prosecution history, surrender certain
`claim scope to which he would otherwise have an exclusive right by virtue
`of the claim language.’” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d
`1340, 1352 (Fed. Cir. 2010) (citation omitted); see Arendi S.A.R.L. v. Google
`LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018) (“[I]n order to disavow claim
`scope, a patent applicant must clearly and unambiguously express surrender
`of subject matter during prosecution.” (citation omitted)). The fact that a
`patent owner is the one arguing in favor of disclaimer does not mean the
`doctrine is inapplicable, provided the prosecution statements are “clear and
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`unmistakable.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd.,
`No. 2017-1368, 2019 WL 2912776, at *8 (Fed. Cir. July 8, 2019).
`Petitioner proposes an interpretation for the term “simultaneously” in
`independent claims 1 and 9. Pet. 13–18 (citing Ex. 1003 ¶¶ 50–56). Patent
`Owner proposes interpretations for the terms “simultaneously,” “an OFF
`state of the display unit,” “inactive state,” “an ON state of the display unit,”
`and “active state” in independent claims 1 and 9. Prelim. Resp. 5–13. For
`purposes of this Decision, we need only address the parties’ arguments
`regarding “simultaneously.”4
`Petitioner argues that “simultaneously” is not defined in the
`Specification and a statement made by the applicants during prosecution of
`the ’557 patent does not constitute disavowal of claim scope. Pet. 15–17
`(citing Ex. 1002, 190). Therefore, according to Petitioner, the plain and
`ordinary meaning of “simultaneously” applies, and the term should be
`interpreted to mean “at the same time [as].” Id. at 17–18 (citing two
`dictionary definitions of “simultaneous” provided as Exhibits 1011 and
`1012) (emphasis omitted).
`Patent Owner responds that “the applicants defined ‘simultaneously’
`as ‘without additional steps’” during prosecution, and “[t]he Board could
`therefore simply define ‘simultaneously’ as ‘without additional steps’ and be
`wholly consistent with the intrinsic record.” Prelim. Resp. 7–9 (quoting
`Ex. 1002, 190). Patent Owner states, though, that “to avoid dispute about
`what ‘without additional steps’ means, Patent Owner is comfortable with the
`
`
`4 The parties proposed constructions for various other terms in the related
`district court cases, but the district court has not rendered a decision on
`claim construction. See Pet. 14 n.3; Exs. 1034, 1035.
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`Board construing ‘simultaneously,’ in context, to include ‘at the same time’
`and ‘not sequentially’” because the applicants allegedly “understood
`‘without additional steps’ to require that activation of the display and
`performance of user identification occur at the same time, and not as a
`sequence of steps.” Id. at 9. Thus, Patent Owner proposes that
`“simultaneously” be interpreted to mean “at the same time, without
`additional steps, and not sequentially.” Id. at 7.
`We begin with the language of the claims themselves. Claim 1 recites
`that “the user identification function is performed simultaneously with
`switching from the inactive state of the display unit to the active state of the
`display unit by pressing the activation button,” and claim 9 recites
`“performing a user identification process by a fingerprint recognition
`simultaneously with switching from the inactive state of the display unit to
`the active state of the display unit if the pressing of the activation button is
`sensed” (emphases added). The surrounding claim language merely
`specifies what actions are performed “simultaneously,” without explaining
`how such performance occurs or what makes it “simultaneous[].”
`Nor does the Specification of the ’557 patent shed light on the
`meaning of “simultaneously.” The Specification largely repeats the claim
`language in three passages. See Ex. 1001, Abstract, col. 2, ll. 1–17. The
`Specification also uses “simultaneously” two times in other contexts, but
`does not define the term or otherwise explain what makes the disclosed
`actions “simultaneously” performed. See id. at col. 9, ll. 51–54 (“current
`location information is collected simultaneously with the activation of the
`mobile communication terminal 100”), col. 11, ll. 28–32 (“application
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`driving unit 230 can drive a predetermined application simultaneously with
`the activation within the mobile communication terminal 100”).
`The meaning of the term “simultaneously,” however, was addressed
`explicitly during prosecution of the ’557 patent. The examiner issued an
`office action rejecting claims 1 and 13 (which ultimately issued as
`independent claims 1 and 9) as anticipated by U.S. Patent Application
`Publication No. 2013/0057385 A1 (“Murakami”), citing certain portions of
`Murakami as allegedly disclosing the “simultaneously” limitations.
`Ex. 1002, 164–165. The applicants made a number of arguments in
`response, including that “the activation of the display unit is not performed
`simultaneously with the user identification function in Murakami” and that
`“[a]s for the term ‘simultaneously,’ the examiner’s attention is invited to
`consider the specification and the claim languages in claims 1 and 13.” Id.
`at 190 (citing paragraph 4 of the original specification, id. at 8–9). The
`applicants further argued as follows:
`That is, in view of the specification and the claim
`language, it is clear that the term “simultaneously” in claims 1
`and 13 of the present application means that, when a user just
`presses the activation button, both the user identification function
`and the switching from the inactive state of the display unit to
`the active state of the display unit are performed, without
`additional steps.
`Therefore, in order to rely on [Murakami], the examiner
`must show that [Murakami] teach[es] or suggest[s] that, when a
`user presses the activation button, both the user identification
`function and the switching from the inactive state of the display
`unit to the active state of the display unit are performed, without
`additional steps.
`Id. at 190–191. According to the applicants, Murakami does not teach the
`“simultaneously” limitation of each claim because “the displaying of the
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`data [in Murakami] is performed on the condition that [the] user’s identity is
`authenticated” (i.e., after the user identification function completes the step
`of authenticating the user), rather than the user identification function and
`switching from the inactive state to the active state being performed without
`additional steps. Id. (emphasis added). The examiner subsequently allowed
`the claims. Id. at 199–203.
`We agree with Patent Owner and conclude that the applicants clearly
`and unambiguously defined the term “simultaneously” in the passage quoted
`above. See Prelim. Resp. 8–9. The applicants quoted the relevant claim
`language, identified the term “simultaneously” specifically, and expressly
`stated what the term “means,” i.e., that “when a user just presses the
`activation button, both the user identification function and the switching
`from the inactive state of the display unit to the active state of the display
`unit are performed, without additional steps.” Ex. 1002, 190 (emphases
`omitted). The applicants also distinguished the prior art based on that
`definition, arguing that Murakami does not teach performance of both
`recited actions “without additional steps.” Id. at 190–191 (emphasis
`omitted).
`We are not persuaded by Petitioner’s arguments attempting to
`discount the prosecution history. See Pet. 16–17. Petitioner contends that
`paragraph 4 of the original specification, cited by the applicants to the
`examiner, “says nothing about what the ’557 patent is actually disclosed to
`do, let alone dictate what particular ‘steps’ are included in the alleged
`invention.” Id. at 16; see Ex. 1002, 8–9; Ex. 1001, col. 1, ll. 34–44
`(paragraph 4 as issued). The applicants, however, referred to paragraph 4
`only to show “the problems of the conventional related art,” and proceeded
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`to explain why the “simultaneously” limitations make the claimed
`arrangement different from that art. Ex. 1002, 190–191. Thus, we do not
`see how the applicants’ reference to paragraph 4 undermines their later
`express definition of “simultaneously.”
`Petitioner further argues that “it is unclear as to what a ‘step’ is”
`because the applicants did not explain what they meant by “without
`additional steps,” and “the negative language ‘without additional steps’
`injects uncertainty into the meaning of the term ‘simultaneously’” due to the
`alleged lack of explanation and support in the Specification. Pet. 16–17.
`On the record presented, we do not view the applicants’ definition as unclear
`or unsupported, particularly when reading the definition in context with the
`applicants’ overall argument regarding Murakami. Specifically, the
`applicants’ position was that the claims require both the user identification
`function and switching from the inactive state to the active state to be
`performed “without additional steps,” whereas in Murakami, the user
`contacts a sensor, the user identification function is initiated, the device
`processes the input data to determine whether the user can be authenticated,
`and only if that occurs (i.e., an “additional step[]”), the display is activated.
`See Ex. 1002, 190–191 (quoting particular supporting language from
`Murakami). Moreover, Petitioner does not account for the applicants’ clear
`statement as to what “the term ‘simultaneously’ in [the] claims . . . means.”
`See id. at 190 (emphasis added). Stating what a term “means” is providing a
`definition for that term, and we do not see any basis on which such a
`statement can be disregarded or modified as Petitioner proposes.
`Thus, we do not adopt what Petitioner contends to be the plain and
`ordinary meaning of “simultaneously,” and instead interpret the term in
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`accordance with the applicants’ express definition provided during
`prosecution of the ’557 patent. See Samsung Elecs. Co., Ltd. v. Elm 3DS
`Innovations, LLC, 925 F.3d 1373, 1379 (Fed. Cir. 2019) (concluding that the
`patentee “clearly and unambiguously disclaimed claim scope” during
`prosecution by arguing, in response to the examiner’s objection that the term
`at issue was unclear, that “the meaning of [the term] as used in the claims”
`was explained in a particular portion of the specification); Advanced Fiber
`Techs. (AFT) Trust v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1374 (Fed.
`Cir. 2012) (concluding that “the court correctly relied on a clear definition of
`a claim term set forth by [the patentee] in the prosecution history”).
`On this record, we interpret “simultaneously,” in the context of the
`surrounding claim language in claims 1 and 9, to mean that when a user just
`presses the activation button, both the user identification function and the
`switching from the inactive state of the display unit to the active state of the
`display unit are performed, without additional steps. No further
`interpretation is necessary at this time to determine whether to institute an
`inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because
`we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy,’ we need not construe [a particular
`claim limitation] where the construction is not ‘material to the . . . dispute.’”
`(citations omitted)).
`
`
`B. Principles of Law
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”5 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`A petitioner’s assertion of obviousness “cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`
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`5 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
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`on evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing
`KSR, 550 U.S. at 418).
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`C. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’557 patent would have had “a bachelor’s degree in Computer Science,
`Computer Engineering, or equivalent and 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.” Pet. 13
`(citing Ex. 1003 ¶¶ 29–30). Patent Owner does not address the level of
`ordinary skill in the art in its Preliminary Response. Based on the record
`presented, including our review of the ’557 patent and the types of problems
`and solutions described in the ’557 patent and cited prior art, we agree with
`Petitioner’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision.
`
`
`D. Obviousness Ground Based on Fadell, iOS, and Gagneraud
`Petitioner contends that claims 1, 8, 9, and 15 are unpatentable over
`Fadell, iOS, and Gagneraud6 under 35 U.S.C. § 103(a), citing the testimony
`of Benjamin B. Bederson, Ph.D., as support. Pet. 19–40 (citing Ex. 1003).
`Patent Owner makes various arguments in response. Prelim. Resp. 22–28,
`34–38. We are not persuaded that Petitioner has established a reasonable
`
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`6 Fadell, iOS, and Gagneraud were not of record during prosecution of the
`’557 patent. See Ex. 1001, (56); Pet. 7–8.
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`likelihood of prevailing on its asserted ground for the reasons explained
`below.
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`1. Fadell
`Fadell describes “an electronic device with an embedded
`authentication system for restricting access to device resources” including
`sensors that “detect appropriate biometric information as the user operates
`the device, without requiring the user to perform a step for providing the
`biometric information (e.g., embedding a fingerprint sensor in an input
`mechanism instead of providing a fingerprint sensor in a separate part of the
`device housing).” Ex. 1005, Abstract, ¶ 5. Fadell recognizes that previous
`systems restricting access via passwords or pass codes were “effective only
`so long as no other user knows the password or pass code,” and fingerprint
`or retina scan systems, while more secure, were “time consuming and
`bothersome for the user, requiring an additional step before the user can
`access the device.” Id. ¶ 4. Fadell discloses that “[i]t would be desirable
`therefore, to provide an electronic device by which biometric and other
`authentication mechanisms are implemented in the device such that the
`device authenticates the user quickly and seamlessly, for example as the user
`turns on, unlocks or wakes the device.” Id.
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`Figure 8B of Fadell is reproduced below.
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`Figure 8B depicts electronic device 800, held in user’s hand 830, comprising
`display 810, home button 812, and sensor 720 “placed behind” home button
`812 and “operative to detect features of a user’s fingerprint to identify the
`user.” Id. ¶¶ 64–67. Sensor 720 can “generate an image or a representation
`of the skin placed over the sensor that can be compared to a library of
`images or representations available to the electronic device.” Id. ¶ 56.
`Fadell requires the user to be authenticated (e.g., by fingerprint recognition)
`before providing access to data and resources on the electronic device. Id.
`¶¶ 43, 46–48.
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`2. iOS
`iOS is a user guide for iPhone OS 3.1 software. Ex. 1007, 1. iOS
`includes a diagram of an iPhone on page 20, which is reproduced below.
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`The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
`includes a home button that, when pressed, causes the device to display a
`home screen that includes applications that can be launched. Id. at 23. The
`iPhone also includes a sleep/wake button that allows the user to lock the
`device or turn it off. Id. at 26–27. When the iPhone is locked, nothing
`happens if the user touches the screen. Id. at 26.
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`3. Gagneraud
`Gagneraud describes a device comprising a power button, “fingerprint
`scanner coupled on the power button,” and “authentication application” that
`“compar[es] a user fingerprint image with a stored fingerprint image.”
`Ex. 1006, Abstract. Gagneraud discloses that “[b]y utilizing a fingerprint
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`scanner coupled on a power button, when the fingerprint scanner detects a
`user, the single act of the fingerprint scanner detecting the user results in the
`fingerprint scanner beginning to scan and store a user’s fingerprint image
`while a machine concurrently begins powering on.” Id. ¶ 58. “As a result,
`time is saved and user friendliness is increased by automatically
`authenticating the user’s fingerprint image with stored fingerprints once the
`machine has powered on.” Id.
`Figure 8 of Gagneraud is reproduced below.
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`Figure 8 depicts a flow chart for authenticating a user using “a fingerprint
`scanner on a power button.” Id. ¶ 53. The fingerprint scanner detects a user
`touch at step 800. Id. ¶ 54. “Once a user is detected, the machine
`concurrently begins powering on 810 and scans a user fingerprint with the
`fingerprint scanner 820.” Id. Specifically, “[w]hile the machine is powering
`on, the fingerprint scanner concurrently scans the user fingerprint with the
`fingerprint scanner 850 and stores the user fingerprint image in a memory
`coupled to the fingerprint scanner 860.” Id. ¶ 55. “Once the user fingerprint
`has been stored and the operating system on the machine has been loaded, an
`authentication application determines whether the user fingerprint matches a
`stored fingerprint image or data (stored fingerprints) on the machine 865.”
`Id. If a match is detected, “the operating system will authenticate the user
`and log the user into the operating system 870,” the authentication
`application “access[es] a locking mechanism 880,” and “the machine
`configures [the] locking mechanism on the machine to release and grant the
`user access to the machine 890.” Id. ¶¶ 56–57.
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`4. Analysis
`Claim 1 recites that “the user identification function is performed
`simultaneously with switching from the inactive state of the display unit to
`the active state of the display unit by pressing the activation button.”
`Petitioner argues that the term “simultaneously” means “at the same time
`[as],” and Petitioner’s analysis of the prior art mirrors that proposed
`interpretation. See Pet. 14–18, 32–33 (emphasis omitted). Specifically,
`Petitioner contends that Fadell teaches performing a user identification
`function “‘as the user . . . wakes the device (i.e., simultaneously—at the
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`same time—as waking the device).” Id. at 32 (emphasis added). Petitioner
`further argues that to the extent “Fadell lacks sufficient detail with respect to
`the relationship or timing between its identification and switching functions,
`. . . Gagneraud cures any such deficiencies.” Id. (emphasis omitted).
`According to Petitioner, “the scanning and recognition of a fingerprint [in
`Gagneraud] are performed ‘automatically’ and concurrently with powering
`on of the machine—simultaneously (at the same time).” Id. at 33 (emphasis
`added). Petitioner’s arguments regarding the combination of Fadell and
`Gagnera