APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`v.
`FIRSTFACE CO., LTD.
`
`Inter Partes Review of U.S. Patent No. 8,831,557
`IPR2019-00612
` Patent Trial and Appeal Board
`United States Patent and Trademark Office
`May 5, 2020
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Apple and Samsung Ex. 1144
`
`1
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`v.
`FIRSTFACE CO., LTD.
`
`Inter Partes Review of U.S. Patent No. 8,831,557
`IPR2019-00612
` Patent Trial and Appeal Board
`United States Patent and Trademark Office
`May 5, 2020
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Apple and Samsung Ex. 1144
`
`1
`
`
`
`Table Of Abbreviations
`
`Abbreviation
`Pet.
`
`POPR
`
`POR
`Reply
`SR
`
`ID
`
`Description
`IPR2019-00612, Paper 3, Petition for Inter Partes Review of United States
`Patent No. 8,831,557
`IPR2019-00612, Paper 9, Patent Owner’s Preliminary Response to
`Petition
`IPR2019-00612, Paper 15, Patent Owner’s Response to Petition
`IPR2019-00612, Paper 17, Petitioner’s Reply to Patent Owner’s Response
`
`IPR2019-00612, Paper 20, Patent Owner’s Sur-Reply to Petition
`
`IPR2019-00612, Paper 11, Decision – Institution of Inter Partes Review
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Instituted Grounds
`
`References
`Fadell, iOS, and Gagneraud
`Goertz and Herfet
`
`Basis
`35 U.S.C. § 103(a)3
`35 U.S.C. § 103(a)
`
`’557 Claims
`Challenged
`1, 8, 9, and 15
`1, 8, 9, and 15
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Overview Of The Disputed Issues
`
`Ground 1:
`• Whether the combination of Fadell, IOS and Gagneraud discloses
`performing the user identification function “simultaneously” with
`switching the display from an inactive to an active state by pressing
`the activation button
`• Whether there is motivation to combine Fadell and Gagneraud
`Ground 2:
`• Whether the combination of Goertz and Herfet discloses
`performing the user identification function “simultaneously” with
`switching the display from an inactive to an active state by pressing
`the activation button
`• Whether Goertz discloses an activation button that switches the
`display from an inactive to an active state
`• Whether there is motivation to combine Goertz and Herfet
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`The Parties Have Adopted The Board’s Claim Constructions
`For These Proceedings
`
`•
`
`•
`
`•
`
`“simultaneously”
`− “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”
`“inactive state” and “active state”
`− “inactive state”: “a state in which the mobile communication terminal is
`communicable but a display screen is turned off, regardless of whether or
`not the mobile communication terminal performs a predetermined
`operation, and the mobile communication terminal is not completely
`turned off“
`− “active state”: “a state in which the display screen of the mobile
`communication terminal is turned on”
`“user identification unit”
`− ‘We do not interpret the term in accordance with 35 U.S.C. § 112, sixth
`paragraph, and conclude that no further interpretation is necessary at this
`time.”
`
`ID, 14-15.
`
`ID, 16.
`
`ID,17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 1-3; POR, 7-15.
`
`5
`
`
`
`“Simultaneously” (Claims 1 and 9)
`Board’s Construction
`Claim 1:
`(adopted by the parties):
`1[a] A mobile communication terminal
`comprising:
`“when a user just presses the
`1[b] a display unit; and
`activation button, both the user
`identification function and the
`1[c] an activation button configured to
`switching from the inactive state of
`switch from an inactive state, which is an
`the display unit to the active state
`OFF state of the display unit, to an active
`of the display unit are performed,
`state, which is an ON state of the display
`without additional steps”
`unit; and
`1[d] a user identification unit configured to
`operate a user identification function,
`1[e] 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,
`1[f] wherein the user identification function
`includes a fingerprint recognition.
`Ex. 1101 (’557), 12:41-53.
`
`ID, 14-15; POR, 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 1-2; POR, 7-8.
`
`6
`
`
`
`“Simultaneously” (Claims 1 and 9)
`
`The Board construed “simultaneously” in accordance with Applicants’
`express definition provided during prosecution:
`Applicants’ Prosecution History Statement:
`“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.”
`Ex. 1102 (‘557 File History), 190-191.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 1-2.
`
`7
`
`
`
`“Simultaneously” (Claims 1 and 9)
`During prosecution, Applicants distinguished Murakami because it has an
`additional step (a condition):
`Murakami Figure 2:
`
`Murakami:
`“For example, the memory module 120
`may be programmed such that, once the
`user is authenticated and the biometric
`device is activated, the memory module
`120 will display the account numbers
`150 on an LCD 155….”
`
`Ex. 1142 (Murakami) ¶¶48, 36, 38.
`
`Ex. 1142 (Murakami), Fig. 2.
`
`Board:
`“According to the applicants, Murakami does not teach the ‘simultaneously’
`limitation of each claim because ‘the displaying of the 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, 13 (quoting Ex. 1102 (‘557 File History), 190-91); Reply, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`
`
`Ground 1: Whether the
`combination of Fadell, IOS and
`Gagneraud discloses performing
`the user identification function
`“simultaneously” with switching
`the display from an inactive to
`an active state by pressing the
`activation button
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`
`
`The Combination Of Fadell, IOS And Gagneraud Teaches Performing The User
`Identification Function “Simultaneously” With Switching The Display From An
`Inactive State To An Active State By Pressing The Activation Button
`Fadell:
`Fadell Figure 8B:
`“It would be desirable … 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.”
`
`Ex. 1105 (Fadell) ¶4.
`“To provide a seamless user experience, the
`sensors 720 may be embedded in or under at
`least one of input mechanism 710 and 712. …
`A sensor 720 may be placed … behind any
`button or other physical input that a user may
`press … [A] sensor 720 may be placed
`behind a home button of a portable media
`player or cellular telephone (e.g., button 812,
`FIG. 8B). …. [T]he sensing mechanism may
`detect a user’s fingerprint….”
`
`Ex. 1105 (Fadell) ¶¶64-65.
`
`10
`
`Ex. 1105 (Fadell), Fig. 8B.
`
`Pet., 17-20, 27, 31-32, 34-35 ; Ex. 1103 (Bederson) ¶¶53-56,
`70, 74-77, 81; Ex. 1105 (Fadell) ¶¶4-5, 64-65; Reply, 3-4.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`The Combination Of Fadell, IOS And Gagneraud Teaches Performing The User
`Identification Function “Simultaneously” With Switching The Display From An
`Inactive State To An Active State By Pressing The Activation Button
`
`iOS:
`
`Ex. 1107 (iOS), 145.
`
`Ex. 1107 (iOS), 27.
`
`Ex. 1107 (iOS), 20.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., 22-23, 28, 31; Ex. 1103 (Bederson) ¶¶62-63, 71-73, 75;
`Ex. 1107 (iOS), 20, 26-27, 145.
`
`11
`
`
`
`The Combination Of Fadell, IOS And Gagneraud Teaches Performing The User
`Identification Function “Simultaneously” With Switching The Display From An
`Inactive State To An Active State By Pressing The Activation Button
`Gagneraud:
`“In one embodiment, the authentication application 170 scans the stored
`fingerprints 190 for a fingerprint that matches the user fingerprint image 180
`as soon as the fingerprint scanner 120 has finished scanning and storing the user
`fingerprint image 180 and while the machine 100 is powering on. In other
`embodiments, the authentication application 170 scans the stored fingerprints
`190 for a fingerprint image that matches the user fingerprint image 180 after the
`machine 100 is powered on.”
`Patent Owner:
`“Gagneraud discloses a simultaneous process as the device powers on.”
`Dr. Bederson:
`“A POSITA would have been motivated, and thus it would have been obvious, to
`apply Gagneraud’s teachings, of simultaneously performing power on steps and
`fingerprint recognition steps based on a button press, to the wake and fingerprint
`recognition steps of Fadell, in order to fulfill Fadell’s goal of ‘authenticat[ing] the
`user quickly and seamlessly … as the user … wakes the device’ (Ex. 1105 ¶4) with
`the benefit of saving time and simplifying user interaction (Ex. 1106 ¶58).”
`Ex. 1103 (Bederson) ¶81.
`Pet., 20-21, 32-34; Ex. 1103 (Bederson) ¶¶58-60, 79-81; Ex.
`1106 (Gagneraud) ¶¶25-27, 54-55, 58, Fig. 8; Reply, 4-5.
`
`Ex. 1106 (Gagneraud) ¶25.
`
`POR, 36, 31-32.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`
`
`Patent Owner Improperly Attacks Fadell And Gagneraud In
`Isolation
`Patent Owner Argues:
`Fadell and Gagneraud each fail to teach simultaneously performing the claimed
`functions.
`
`POR, 1, 26, 31.
`But Patent Owner improperly attacks Fadell and Gagneraud individually, not the
`combination of references. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012); In re
`Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); ID, 29.
`It would have been obvious to apply Gagneraud’s teachings of simultaneous
`performance—which are directed to a power on process—to Fadell’s wake process.
`Pet., 34-37; Ex. 1103 (Bederson) ¶¶81-82; Ex. 1105 (Fadell) ¶¶4-5, 64; Ex. 1106 (Gagneraud) ¶¶25, 58.
`Dr. Bederson:
`“[A] POSITA would have recognized that Gagneraud’s teachings regarding
`simultaneous performance in the power on context apply equally to Fadell’s wake
`process. Fadell describes at least three situations when the user is authenticated:
`turning on (i.e., powering on), unlocking, and waking.”
`Ex. 1139 (Bederson) ¶35.
`“Fadell makes this equivalence explicit in saying that authentication mechanisms
`are used for the group of functions: ‘as the user turns on, unlocks or wakes the
`device.’ (Ex. 1105, ¶4.)”
`Ex. 1103 (Bederson) ¶82.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 5-7; Ex. 1139 (Bederson) ¶35; Ex. 1103 (Bederson) ¶82.
`
`13
`
`
`
`Patent Owner Is Wrong That Fadell Is Not About Timing
`Patent Owner Argues:
`Fadell is merely about “where to place a sensor, not when a user identification occurs
`relative to activating a display.”
`SR, 5; POR, 27, 17-18.
`But, Fadell discloses:
`“It would be desirable … 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.”
`Ex. 1105 (Fadell) ¶¶4-5.
`“[A] sensor 720 may be placed behind a home button of a portable media player or
`cellular telephone (e.g., button 812, FIG. 8B). …. [T]he sensing mechanism may detect a
`user’s fingerprint….”
`Ex. 1105 (Fadell) ¶¶64-65.
`This avoids additional “time.” Ex. 1105 ¶4 (distinguishing the prior art as “time
`consuming and bothersome for the user, requiring an additional step before the
`user can access the device.”)
`Petitioners rely on Gagneraud for its teaching of “simultaneous” operations—
`performing both fingerprint recognition and powering on of the device, without
`additional steps.
`Pet., 31-37; Ex. 1103 (Bederson) ¶¶75-83; Ex. 1105 (Fadell) ¶¶4-5; Ex. 1106 (Gagneraud) ¶¶58, 25.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 7-8; Ex. 1139 (Bederson) ¶28.
`
`14
`
`
`
`Fadell’s Display Is Not A “Restricted Resource” That Turns On
`Only After Authentication
`Patent Owner Argues:
`Figure 15 “shows that Fadell contemplates providing access to a restricted
`resource of the device only after authentication,” and that “Figure 15 … applies to
`access to the display just like it applies to any other resource.”
`
`POR, 28, 31; SR, 7.
`But, Fadell discloses that the Figure 15 “restricted resources” are “data” “(e.g., a
`contact list or other personal information)” and “a restricted application,” and not
`turning on the display itself.
`Ex. 1105 (Fadell) ¶94, see also ¶¶24, 96.
`Figure 15 is merely “one embodiment” that pertains to authenticating a user to
`provide access to specific resources.
`Ex. 1105 (Fadell) ¶93-96.
`
`Moreover, Patent Owner ignores Fadell’s disclosure:
`“It would be desirable … 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.”
`Ex. 1105 (Fadell) ¶¶4-5, 64-65.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 8-9; Ex. 1139 (Bederson) ¶¶29-30.
`
`15
`
`
`
`Fadell’s Display Is Not A “Restricted Resource” That Turns On
`Only After Authentication
`Patent Owner Argues:
`Fadell’s “restricted resources” include access to the display; and Fadell’s uses of
`the term “resources” show it is an “expansive term.”
`Fadell Figure 4:
`
`POR, 30; SR, 7.
`But, Patent Owner’s citations confirm Fadell’s
`display is not a “restricted resource”:
`• Paragraphs 24 and 41: “restricted” resources
`refer to “files or data,” “applications,” “personal
`settings” and “information stored in memory or
`storage,” not the display itself
`• Paragraph 46: relates only to “some
`embodiments”; Figure 4 shows the display is
`not a “restricted resource” because the display
`is already on to present the authentication
`instructions
`• Paragraph 42: this “one embodiment” relates
`to specific icons or screens, not to turning on
`the display itself.
`
`Ex. 1105 (Fadell), Fig. 4.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 9; Ex. 1139 (Bederson) ¶¶30-33; Ex. 1105 (Fadell) ¶¶24, 41-42, 4.
`
`16
`
`
`
`Patent Owner Misinterprets And Ignores Dr. Bederson’s
`Testimony
`Patent Owner Argues:
`Dr. Bederson “agreed that a display screen may be properly considered a
`resource.”
`
`But Patent Owner misinterprets Dr. Bederson’s testimony.
`
`POR, 30-31.
`POR, 30-31.
`
`Dr. Bederson merely confirmed that a display generally can be a resource. Ex.
`2007, 21:15-21. He did not agree that Fadell teaches restricting access to display
`hardware, or that the display is a “restricted resource” as that term is used in Fadell.
`Ex. 1139 (Bederson) ¶34.
`Patent Owner ignores Dr. Bederson’s testimony that Figure 15 does not relate to
`waking the device and does not apply to all embodiments:
`
` Figure 15 applies to accessing “data associated with a particular user, e.g.,
`a contact list … not referring to waking the device,” and Fadell is “clearly not
`describing [Figure] 15 as necessarily applying to all embodiments.”
`Ex. 2007 (Bederson Depo. Tr.), 24:12-25; Ex. 1139 (Bederson) ¶34.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 9-10; Ex. 1139 (Bederson) ¶34.
`
`17
`
`
`
`Ground 2: Whether the
`combination of Goertz and
`Herfet discloses performing the
`user identification function
`“simultaneously” with switching
`the display from an inactive to
`an active state by pressing the
`activation button
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`
`
`The Combination Of Goertz And Herfet Teaches Performing The User Identification
`Function “Simultaneously” With Switching The Display From An Inactive State To
`An Active State By Pressing The Activation Button
`Goertz:
`Goertz:
`“FIG. 13 illustrates pressing the home button on
`a locked phone to unlock the phone. FIG. 14
`illustrates the unlocked phone.”
`
`Ex. 1113 (Goertz) ¶24.
`
`“In order to unlock the phone, the user activates
`the home key, located at the bottom center of
`the device, as shown in FIG. 13. FIG. 14 shows the
`phone after it has been unlocked: gadgets are
`now displayed on screen and are activated in
`response to user input”
`
`Ex. 1113 (Goertz) ¶¶60-61, 24.
`
`“Optionally, additional security is implemented
`by use of fingerprint identification, wherein the
`phone cannot be unlocked unless a fingerprint is
`Ex. 1113 ¶61.
`authenticated.”
`
`Ex. 1113 (Goertz) ¶61.
`
`Pet., 40-41, 45; Ex. 1103 (Bederson) ¶¶92-95, 101-105, 111;
`Ex. 1113 (Goertz) ¶¶24, 59-61, Figs. 9-15; Reply, 17-19; ID, 38.
`
`19
`
`Ex. 1113 (Goertz) Figs. 9-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`The Combination Of Goertz And Herfet Teaches Performing The User Identification
`Function “Simultaneously” With Switching The Display From An Inactive State To
`An Active State By Pressing The Activation Button
`Herfet:
`“automatic authentication by means of an
`electronic fingerprint” using “an on/off switch
`[e.g., 13] behind which an image recording unit
`5 is disposed”
`
`Herfet Figure 3:
`
`Ex. 1114 (Herfet), 2:43-59, 3:26-33.
`“At the moment when the set is switched on,
`the fingerprint 6 of the user is recorded and
`subsequently compared to the database….”
`Ex. 1114 (Herfet), 2:60-3:12.
`“results in an automatic activation of services
`with access authorization when the respective
`on/off switch of the terminal is actuated [with]
`no additional effort for the user.”
`Dr. Bederson:
`Ex. 1114 (Herfet), 1:40-43.
`“It would have been obvious to a POSITA to modify Goertz’s high security lock unlocking
`functionality such that when the home key is activated, as disclosed by Goertz, fingerprint
`recognition would be performed, as taught by Herfet, thereby implementing the user
`identification function simply and without ‘additional effort for the user.’”
`
`Ex. 1114 (Herfet), Fig. 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1103 (Bederson) ¶¶ 115-118.
`Pet., 42-43, 47-49; Ex. 1103 (Bederson) ¶¶96-98, 108-118; Ex. 1114 (Herfet),
`1:38-43, 2:15-19, 2:43-3:15, 3:26-39, Figs. 2-3; Reply, 19-20.
`
`20
`
`
`
`Patent Owner Improperly Attacks Each Of Goertz And Herfet
`In Isolation
`Patent Owner Argues:
`“Goertz does not disclose 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.’” “Herfet does not disclose
`an activation button that switches the display from an inactive state to an active state.”
`POR, 42-43; SR,16-17.
`But Patent Owner improperly attacks Goertz and Herfet individually, not the
`combination of references. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012); In re
`Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
`Goertz discloses switching the display from an inactive to an active state by pressing
`the activation button, and does not explicitly disclose the details involved in performing
`the fingerprint identification function.
`Herfet teaches performing the user identification function simultaneously with the
`pressing the on/off button.
`Dr. Bederson:
`“It would have been obvious to a POSITA to modify Goertz’s high security lock unlocking
`functionality such that when the home key is activated, as disclosed by Goertz, fingerprint
`recognition would be performed, as taught by Herfet, thereby implementing the user
`identification function simply and without ‘additional effort for the user.’”
`Ex. 1103 (Bederson) ¶¶115-118, see also ¶¶104-105, 111-114.
`Reply, 19-21; Ex. 1139 (Bederson) ¶¶57-60.
`
`Pet., 49-53; Ex. 1113 (Goertz) ¶¶24, 60-61; Ex. 1114 (Herfet), 1:40-43, 2:48-3:15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`
`
`Herfet Teaches Waking A Device From Standby Mode
`Simultaneously With Performing A User Identification Function
`Patent Owner Argues:
`“Herfet’s authentication is one that occurs only ‘during the switch-on process’—
`i.e., when the device itself is powered on.”
`POR, 43-44; SR, 18-19.
`But this ignores Herfet’s disclosure of waking from standby mode.
`Herfet:
`“When the terminal is not in use for an extended period of time, e.g. in standby mode, the
`authentication can be reset automatically; i.e. in this case the activation of services with
`access authorization is only possible after a renewed switch-on process.”
`Dr. Bederson:
`Turning the device off and back on would defeat the entire purpose of “standby mode.”
`Ex. 1139 (Bederson) ¶61.
`“[W]hether the user action of activating a switch is to turn a device on (i.e., from completely
`off) or simply waking from a standby mode has no bearing on the underlying question of
`whether the user is indicating their initial interaction with the device. … A POSITA would have
`understood that the concept of fingerprint identification would have been needed for,
`and applicable to, any process in which the device has not been in active use (among
`other situations) and a user signals that they are initiating interactions with some function of
`the device.”
`Ex. 1103 (Bederson) ¶116.
`
`Ex. 1114 (Herfet), 3:12-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 21-22; Pet., 50-53; Ex. 1103 (Bederson) ¶116; Ex. 1139 (Bederson) ¶61.
`
`22
`
`
`
`Ground 2: Whether Goertz
`discloses an activation button
`that switches the display from an
`inactive to an active state
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`
`
`Goertz Discloses An Activation Button That Switches The
`Display From An Inactive State To An Active State
`Patent Owner Argues:
`Goertz “never states or confirms that the display is off in Figure 13.”
`Goertz:
`Goertz:
`“In order to unlock the phone, the user
`activates the home key, located at the
`bottom center of the device, as shown in
`FIG. 13. FIG. 14 shows the phone after it
`has been unlocked: gadgets are now
`displayed on screen and are activated in
`response to user input”
`
`POR, 41-42; SR, 18.
`
`Ex. 1113 (Goertz) ¶60.
`
`Ex. 1113 (Goertz) Figs. 9-14.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., 40-41, 45; Reply, 17-19; Ex. 1103 (Bederson) ¶¶93, 104-105;
`Ex. 1139 (Bederson) ¶¶49-56; Ex. 1113 (Goertz) ¶¶59-60, Figs. 9-15; ID, 38.
`
`24
`
`
`
`Ground 1: Whether there is
`motivation to combine Fadell
`and Gagneraud
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell And
`Gagneraud In View Of The Express Teachings Of The References
`The motivation to combine Fadell and Gagneraud is expressly taught by the
`references.
`Fadell:
`“It would be desirable…to…authenticate[] the user quickly and seamlessly… as
`the user…wakes the device”
`Gagneraud:
`“time is saved and user friendliness is increased” by authenticating “while the
`machine 100 is powering on”
`
`Ex. 1105 (Fadell) ¶4.
`
`Ex. 1106 (Gagneraud) ¶¶58, 25.
`
`Dr. Bederson:
`“A POSITA would have been motivated, and thus it would have been obvious, to
`apply Gagneraud’s teachings, of simultaneously performing power on steps and
`fingerprint recognition steps based on a button press, to the wake and fingerprint
`recognition steps of Fadell, in order to fulfill Fadell’s goal of “authenticat[ing]
`the user quickly and seamlessly … as the user … wakes the device” (Ex. 1105
`¶4) with the benefit of saving time and simplifying user interaction (Ex. 1106
`¶58).”
`Ex. 1103 (Bederson) ¶¶81-83.
`Pet., 34-37; Ex. 1103 (Bederson) ¶¶32-38, 81-83; Ex. 1105 (Fadell)
`¶¶4-5; Ex. 1106 (Gagneraud) ¶¶58, 25; Reply, 10-12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell
`And Gagneraud
`Patent Owner Argues:
`Fadell and Gagneraud “accomplish similar functions by different means.” Fadell
`discloses “a sequential process when the device is already on,” while “Gagneraud
`discloses a simultaneous process as the device powers on.”
`But Fadell is not limited to a sequential process:
`“It would be desirable … 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.”
`Ex. 1105 (Fadell) ¶¶4-5, 64-65.
`
`POR, 36.
`
`And Fadell’s disclosure applies in both contexts: powering on and waking the
`device.
`Dr. Bederson:
`“Fadell describes at least three situations when the user is authenticated: turning
`on (i.e., powering on), unlocking, and waking. Ex. 1105 ¶4. Thus, as recognized by
`Fadell, powering on and waking are analogous situations during which
`authentication can be performed, and Gagneraud informs a POSITA of specific
`timing details.”
`Ex. 1139 (Bederson) ¶¶35, 38.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 12-13, 6; Ex. 1139 (Bederson) ¶38; Ex. 1103 (Bederson) ¶82.
`
`27
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell
`And Gagneraud
`Patent Owner Argues:
`“Petitioner completely fails to grapple with how a POSITA would incorporate Gagneraud’s
`disclosure of authenticating a user at the same time that a device is powered on with Fadell in
`light of this disclosure.”
`
`SR, 12.
`
`Dr. Bederson:
`“The implementation of Gagneraud’s timing in Fadell’s system would have been
`no more than the application of known methods and devices (Gagneraud’s
`disclosed timing) to improve similar methods and devices (Fadell’s device with
`fingerprint recognition) in the same way (by implementing concurrent
`operations to save time with a single step/user action). … ‘home’ and ‘power’
`buttons were both clearly suitable design choices available to a POSITA.”
`Ex. 1103 (Bederson) ¶¶81-82.
`“This would have been a simple input configuration for a POSITA (i.e.,
`configuring a button to perform a function) and well within their ability to do so
`with a high likelihood of success. It was the standard and normal procedure
`to map hardware buttons to software functions for buttons to be useful, and
`such basic programming techniques were well known.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1103 (Bederson) ¶83.
`
`Pet., 34-37; Reply, 3-5, 14.
`
`28
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell
`And Gagneraud
`Patent Owner Argues:
`Combining Fadell with Gagneraud “would alter the fundamental operation of
`Fadell” because “Fadell requires authentication before access to a restricted
`resource, such as the display, is allowed.”
`POR, 37; SR, 14-15.
`
`But Patent Owner’s interpretation of Fadell’s “restricted resource” is incorrect and
`unsupported (see slides 15-17).
`
`turning on the display is not restricted or conditioned
`“restricted” resources refer to “files or data,” “applications,” “personal settings”
`and “information stored in memory or storage”
`
`Ex. 1105 (Fadell) ¶¶24, 41, see also ¶¶94, 96.
`
` •
`
`•
`
`And Patent Owner ignores Fadell’s disclosure:
`“It would be desirable … 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.”
`Ex. 1105 (Fadell) ¶¶4-5, 64-65.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 8-10, 13-14; Ex. 1139 (Bederson) ¶¶29-34, 39.
`
`29
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell
`And Gagneraud
`Patent Owner Argues:
`Combining Fadell with Gagneraud “would cause significant power-management
`issues,” because “Gagneraud discloses a fingerprint scanner that always receives
`power—even when the device itself is off.”
`POR, 38.
`But Patent Owner mischaracterizes Gagneraud:
`• Gagneraud does not disclose its fingerprint scanner has “large power draws.”
`POR, 40.
`• Gagneraud discloses that scanning is not performed until the user presses the
`button.
`Gagneraud:
`“[T]he fingerprint scanner initially determines whether a user is detected 800. As
`noted above, the fingerprint scanner detects a user when the user is touching,
`pressing, and/or within proximity of the fingerprint scanner.… Once a user is detected,
`the machine concurrently begins powering on 810 and scans a user fingerprint.”
`Ex. 1106 (Gagneraud) ¶54, Fig. 8.
`Dr. Bederson:
`“Accordingly, a POSITA would have understood that prior to detecting a user and
`scanning the fingerprint, the fingerprint scanner consumes less power.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1139 (Bederson) ¶44.
`
`Reply, 14-15; Ex. 1139 (Bederson) ¶¶44.
`
`30
`
`
`
`A POSITA Would Have Been Motivated To Combine Fadell
`And Gagneraud
`Patent Owner Argues:
`Combining Fadell with Gagneraud “would cause significant power-management issues,”
`because “Gagneraud discloses a fingerprint scanner that always receives power—even when
`the device itself is off.”
`But Patent Owner’s exhibits do not show that a fingerprint scanner (in standby
`mode or actively scanning) consumes significant amounts of power:
`Ex. 2002 describes the iPhone 3G battery lasting approximately three hours with
`•
`“constant surfing”
`Ex. 2003 describes the iPhone 3GS battery lasting approximately three hours watching a
`movie, surfing the web, and playing music (while surfing the web)
`Ex. 2004 does not allege that fingerprint sensors consume large amounts of power, and
`regardless discloses using low power sensor to manage power consumption. Ex. 2004 ¶57
`(“For example, if battery power is low, only low power and/or passive sensors may
`be employed.”)
`Ex. 1139 (Bederson) ¶¶45-46.
`Low power fingerprint sensors for mobile devices were well known, e.g.:
`Ex 1141 (Fujitsu MBF2000 fingerprint sensor for “integration into portable electronic
`systems such … cellular phones” was a “low power consumption” fingerprint sensor
`with a standby mode);
`
`POR, 38.
`
`•
`
`•
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1139 (Bederson) ¶47; Ex. 1103 (Bederson) ¶¶31-32.
`
`Reply, 14-17; Ex. 1139 (Bederson) ¶¶45-47.
`
`31
`
`
`
`Ground 2: Whether there is
`motivation to combine Goertz
`and Herfet
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`A POSITA Would Have Been Motivated To Combine Goertz
`And Herfet In View Of The Express Teaching Of Herfet
`
`The motivation to combine Goertz and Herfet is expressly taught by Herfet:
`
`Herfet’s system “results in an automatic activation of services with access
`authorization when the respective on/off switch of the terminal is actuated
`[with] no additional effort for the user.”
`
`Ex. 1114 (Herfet), 1:40-43.
`
`Dr. Bederson:
`“It would have been obvious to a POSITA to modify Goertz’s high security
`lock unlocking functionality such that when the home key is activated, as
`disclosed by Goertz, fingerprint recognition would be performed, as taught
`by Herfet, thereby implementing the user identification function simply
`and without ‘additional effort for the user.’”
`Ex. 1103 (Bederson) ¶¶ 115-118 (quoting Ex. 1114 (Herfet), 1:40-43).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Pet., 49-52; Ex. 1103 (Bederson) ¶¶114-118;
`Ex. 1114 (Herfet), 1:40-43, 2:15-19, 3:11-15; Reply 22-24.
`
`33
`
`
`
`A POSITA Would Have Been Motivated To Combine Goertz
`And Herfet
`Patent Owner Argues:
`Goertz and Herfet “accomplish similar functions by different means.” “Goertz
`proposes a sequential process of authenticating a user after turning on the
`screen.”
`POR, 48, 42; SR, 16-17.
`But Goertz is not limited to a “sequential process” and does not disclose that
`fingerprint scanning requires the display to be activated first.
`“Optionally, additional security is implemented by use of fingerprint
`identification, wherein the phone cannot be unlocked unless a fingerprint
`is authenticated.”
`
`Ex. 1113 (Goertz) ¶61.
`Goertz does not preclude the simultaneous operations taught by Herfet.
`Patent Owner Argues:
`Herfet “discloses authenticating a user when the device is turned on during a
`switch-on process.”
`
`POR, 48; SR, 19.
`But Herfet’s renewed switch-on process wakes from “standby mode” and does
`not require first turning the phone completely off.
`Ex. 1114 (Herfet), 2:60-3:16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 20-22, 24-25; Ex. 1139 (Bederson) ¶¶59-61, 69.
`
`34
`
`
`
`A POSITA Would Have Been Motivated To Combine Goertz
`And Herfet
`Patent Owner Argues:
`“Petitioner has completely failed to grapple with how a POSITA would combine Herfet’s disclosure
`of authenticating a user during a switch-on process with Goertz, given this disclosure..”
`Dr. Bederson:
`“Such a modification would have been an application of a known technique
`(Herfet’s specific fingerprint recognition technique) to improve a similar device
`(Goertz’s phone that is described, generically, as having a fingerprint recognition
`requirement) in the same way (to provide a simple authentication
`implementation).”
`
`SR, 20.
`
`Ex. 1103 (Bederson) ¶117.
`“Further, the implementation of Herfet’s fingerprint recognition technique in
`Goertz would have been simple input, storage, and lookup configurations for
`a POSITA (i.e., configuring a button to perform a function, comparing scanned
`fingerprint data to data in storage). … Goertz already discloses the use of
`fingerprint recognition but is only silent as to its specific details.… The use of
`Goertz’s and Herfet’s existi
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