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 IPR2019-00612
`
`U.S. Patent No. 8,831,557
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`____________
`
`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 IPR2019-00612
`
`U.S. Patent No. 8,831,557
`
`____________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................ i
`
`LIST OF EXHIBITS .............................................................................................. iii
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ................. 3
`
`A.
`
`B.
`
`C.
`
`Real Party-In-Interest ............................................................................ 3
`
`Related Matters ...................................................................................... 3
`
`Lead Counsel, Back-Up Counsel, and Service Information ................. 5
`
`III. PAYMENT OF FEES ................................................................................... 5
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................ 6
`
`A. Grounds for Standing ............................................................................ 6
`
`B.
`
`Identification of Challenge .................................................................... 6
`
`1.
`
`2.
`
`3.
`
`The Specific Art on Which the Challenge is Based ................... 6
`
`Statutory Grounds on Which the Challenge is Based ................. 8
`
`How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge ..... 8
`
`V.
`
`FACTUAL BACKGROUND ........................................................................ 9
`
`A.
`
`B.
`
`Summary of the ’557 Patent .................................................................. 9
`
`Prosecution History of the ’557 Patent ............................................... 11
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...................................... 13
`
`VII. CLAIM INTERPRETATION .................................................................... 14
`
`i
`
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`“Simultaneously” ................................................................................. 15
`
`A.
`
`VIII. GROUNDS OF UNPATENTABILITY ..................................................... 17
`
`A. Ground 1: Claims 1, 8-9, and 15 are rendered obvious by Fadell in
`view of iOS and Gagneraud under 35 U.S.C. § 103(a) ....................... 17
`
`1.
`
`2.
`
`3.
`
`4.
`
`Introduction to Fadell (Ex. 1105) ............................................. 17
`
`Introduction to Gagneraud (Ex. 1106) ...................................... 20
`
`Introduction to iOS (Ex. 1107) ................................................. 22
`
`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 ................................................................. 25
`
`B.
`
`Ground 2: Claims 1, 8-9, and 15 are rendered obvious by Goertz in
`view of Herfet under 35 U.S.C. § 103(a) ............................................ 40
`
`1.
`
`2.
`
`3.
`
`Introduction to Goertz (Ex. 1113) ............................................. 40
`
`Introduction to Herfet (Ex. 1114) ............................................. 42
`
`Limitation-by-limitation explanation of how the prior art—
`Goertz and Herfet—render obvious claims 1, 8-9, and 15 of the
`’557 patent ................................................................................. 43
`
`IX. CONCLUSION ............................................................................................ 56
`
`
`
`
`
`
`
`
`
`
`
`
`ii
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`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`LIST OF EXHIBITS
`
`U.S. Patent No. 8,831,557 to Jung et al.
`
`Prosecution History File of Application No. 13/590,483, which
`matured into U.S. Patent No. 8,831,557
`
`Declaration of Benjamin B. Bederson
`
`Declaration of Michael Hulse
`
`U.S. Patent Application Publication No. 2009/0083850 to Fadell et al.
`
`WIPO International Application Publication No. WO 2010/126504 to
`Gagneraud et al.
`
`Apple iPhone OS 3.1 User Guide (September 2009)
`
`Anand L. Shimpi, Apple’s iPhone: The Future is Here, AnandTech
`(July 2, 2007), http://www.anandtech.com:80/show/2265/4 (retrieved
`from
`https://web.archive.org/web/20110225040334/http://www.anandtech.c
`om:80/show/2265/4)
`
`U.S. Patent No. 8,667,297 to Salter et al.
`
`WIPO International Application Publication No. WO 2007/140806 to
`Nurmi et al.
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`U.S. Patent Application Publication No. 2010/0017872 to Goertz et al.
`
`German Patent Application Publication No. DE 197 10 546 A1 to
`Herfet (certified English translation + German language publication)
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`
`
`iii
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`1114
`
`1115
`
`1116
`
`
`
`
`
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`U.S. Patent No. 8,965,449 to Rivera et al.
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`[intentionally left blank]
`
`Peter H. Lewis, THE EXECUTIVE COMPUTER; Compaq Finally
`Makes a Laptop, The New York Times (October 23, 1988)
`(https://www.nytimes.com/1988/10/23/business/the-executive-
`computer-compaq-finally-makes-a-laptop.html)
`
`J. Flinn & M. Satyanarayanan, Energy-aware adaptation for mobile
`applications, 33 SIGOPS Oper. Syst. Rev. 48-63 (December 12,
`1999) (DOI=http://dx.doi.org/10.1145/319344.319155)
`
`A. Roy, S. M. Rumble, R. Stutsman, P. Levis, D. Mazières, & N.
`Zeldovich, Energy Management in Mobile Devices with the Cinder
`Operating System, Proceedings of the sixth conference on Computer
`systems (EuroSys ’11), Pages 139-52 (April 10, 2011)
`(DOI=http://dx.doi.org/10.1145/1966445.1966459)
`
`Your Palm Treo 680 Smart Device User Guide (2006)
`(https://www.att.com/support_static_files/manuals/Palm_Treo_680.pd
`f)
`
`D. Muthukumaran, A. Sawani, J. Schiffman, B. M. Jung, & T. Jaeger,
`Measuring Integrity on Mobile Phone Systems, Proceedings of the
`13th ACM symposium on Access control models and technologies
`(SACMAT ’08), Pages 155-64 (June 11, 2008)
`(DOI=http://dx.doi.org/10.1145/1377836.1377862)
`
`M. Landman, Managing Smart Phone Security Risks, 2010
`Information Security Curriculum Development Conference
`(InfoSecCD ’10), Pages 145-55 (October 1, 2010)
`(DOI=http://dx.doi.org/10.1145/1940941.1940971)
`
`1127
`
`[intentionally left blank]
`
`
`
`
`
`
`iv
`
`
`
`1128
`
`1129
`
`1130
`
`1131
`
`1132
`
`1133
`
`1134
`
`1135
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`File Wrapper of U.S. Provisional Patent Application No. 60/995,200
`to Sanford et al.
`
`iOS: A visual History, The Verge (September 16, 2013)
`(https://www.theverge.com/2011/12/13/2612736/ios-history-iphone-
`ipad)
`
`iPhone Q&A: Differences Between the Original iPhone & iPhone 3G,
`EveryiPhone.com (November 18, 2011)
`(https://everymac.com/systems/apple/iphone/iphone-faq/differences-
`between-the-original-iphone-and-iphone-3g.html)
`
`Declaration of Yosh Moriarty
`
`iPhone 3G Finger Tips (2009)
`
`P. Tarr, W. Harrison, H. Ossher, A. Finkelstein, B. Nuseibeh, & D.
`Perry, Workshop on Multi-Dimensional Separation of Concerns in
`Software Engineering, Proceedings of the 2000 International
`Conference on Software Engineering: ICSE 2000 the New
`Millennium, Pages 809-810 (2000)
`(DOI=https://doi.org/10.1145/337180.337827)
`
`Joint Claim Construction and Prehearing Statement, Docket No. 59,
`Firstface Co., Ltd. v. Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc., Case No. 3:18-cv-02243 (N.D. Cal.)
`
`Joint Claim Construction and Prehearing Statement, Docket No. 57,
`Firstface Co., Ltd. v. Apple Inc., Case No. 3:18-cv-02245 (N.D. Cal.)
`
`1136
`
`Declaration of Victor Cheung
`
`
`
`
`
`
`
`
`
`
`v
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`
`I.
`
`INTRODUCTION
`
`Petitioners Apple Inc., Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc. respectfully request inter partes review of claims 1, 8-9,
`
`and 15 of U.S. Patent No. 8,831,557 (“’557 patent,” Ex. 1101) in accordance with
`
`35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
`
`The ’557 patent claims the simple concept of performing a fingerprint
`
`recognition function at the same time as activating a display screen of a mobile
`
`device. Neither of these processes, alone or in combination, were new at the time of
`
`the ’557 patent.
`
`To secure the allowance of the ’557 patent, Patent Owner argued that the
`
`asserted prior art disclosed activation of a device, not necessarily its display screen,
`
`and that any such activation was not simultaneously performed with a user
`
`identification function.1 Of course, there is no doubt that the activation of a display
`
`by pressing a button was a common feature of consumer products prior to the ’557
`
`patent. See, e.g., descriptions of Apple Inc.’s popular iPhones in Ex. 1108 at 4 (when
`
`the display is off and the device locked, pressing a Home button or Sleep/Wake
`
`
`
` 1
`
` As explained in Section V(B), the Examiner did not state any reasons for allowance.
`
`Patent Owner’s after-final claim amendment was specifically made “to more clearly
`
`define the ‘inactive state’” as being a state “of the display unit.”
`
`
`
`
`
`
`1
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`button to wake the display) and Ex. 1107 at p. 147 (when the display is off, double
`
`clicking a Home button to display controls). (See also Ex. 1103 ¶¶ 31-35.) Moreover,
`
`the technique of embedding fingerprint sensors in various keys and buttons was
`
`practiced by many in the industry. (See, e.g., Ex. 1109 at Fig. 1 (fingerprint scanner
`
`embedded in a space key) and Ex. 1110 at 5:17-22 (fingerprint sensor integrated into
`
`dedicated and multifunctional keys).) (See also Ex. 1103 ¶¶ 36-38.)
`
`With this knowledge, others in the prior art had already combined scanning
`
`and activating processes as claimed in the ’557 patent. For example, Fadell discloses
`
`a system that “authenticates the user quickly and seamlessly … as the user turns on,
`
`unlocks or wakes the device,” Herfet discloses “record[ing] the fingerprint 6 of a
`
`user during the switch-on process,” and Gagneraud discloses scanning a fingerprint
`
`“while a machine concurrently begins powering on” to save time and simplify the
`
`user interaction. (Ex. 1105 ¶ 4, Ex. 1114, 2:49-50, and Ex. 1106 ¶ 58, respectively.)
`
`The USPTO did not consider Fadell, Herfet, or Gagneraud during the
`
`prosecution of the ’557 patent, nor did the USPTO discuss on the record any
`
`references providing analogous technical features. Had such references been
`
`available and considered by the Examiner, the ’557 patent claims never would have
`
`issued.
`
`
`
`
`
`
`2
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`This Petition, and in particular the analysis in Section VIII, demonstrates that
`
`claims 1, 8-9, and 15 of the ’557 patent are unpatentable over the prior art and that
`
`Petitioners have a reasonable likelihood of prevailing with respect to the same.
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest
`
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`
`America, Inc. are the real parties-in-interest.
`
`B. Related Matters
`
`The ’557 patent is the subject of pending litigation in the following cases:
`
`Name
`
`Case No.
`
`Filing Date
`
`Firstface Co., Ltd. v.
`Samsung Electronics Co., Ltd.
`and Samsung Electronics
`America, Inc.
`
`Firstface Co., Ltd. v.
`Apple Inc.
`
`3-18-cv-02243 (N.D. Cal.)
`
`4/13/2018
`
`3-18-cv-02245 (N.D. Cal.)
`
`4/13/2018
`
`
`The following application remains pending at the USPTO and may contain,
`
`or may be amended to contain, patentably indistinct claims:
`
`
`
`
`
`
`3
`
`
`
`Title
`
`Activating Display and
`Performing Additional Function
`in Mobile Terminal with One-
`time User Input
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`Application No.
`Filing Date
`
`15/938,702
`
`3/28/2018
`
`
`The grounds in the present petition are premised on the possibility that the
`
`Board may use a construction of the term “simultaneously” based on Applicant’s
`
`statements during prosecution, which Petitioners believe are unsupported and were
`
`not relied on by the Examiner. (See Claim Interpretation sections, Section VII in
`
`each petition, for further detail.) Petitioners concurrently are filing a separate IPR
`
`petition (IPR2019-00611) challenging claims 1, 8-9, and 15 of the ’557 patent, the
`
`grounds in which are premised on construing “simultaneously” as “at the same
`
`time.” [T]he grounds of unpatentability presented in the two concurrent petitions
`
`demonstrate that the claims would have been obvious to a person of ordinary skill in
`
`the art, regardless of which construction the Board adopts.
`
`Petitioner Apple Inc. is also concurrently filing petitions for inter partes
`
`review of related U.S. Patent Nos. 9,633,373 and 9,779,419 (IPRs 2019-00613 and
`
`-00614, respectively) and recommends assigning all petitions to the same panel.
`
`
`
`
`
`
`4
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`C. Lead Counsel, Back-Up Counsel, and Service Information
`
`Lead Counsel
`Scott A. McKeown
`Reg. No. 42,866
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4740
`Fax: +1-617-235-9492
`scott.mckeown@ropesgray.com
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP
`IPRM—Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`
`III. PAYMENT OF FEES
`
`Backup Counsel
`Gabrielle E. Higgins
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: +1-650-617-4015
`Fax: +1-617-235-9492
`gabrielle.higgins@ropesgray.com
`
`Christopher M. Bonny
`Reg. No. 63,307
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`Phone: +1-650-617-4011
`Fax: +1-617-235-9492
`christopher.bonny@ropesgray.com
`
`Victor Cheung
`Reg. No. 66,229
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`Phone: +1-202-508-4641
`Fax: +1-617-235-9492
`victor.cheung@ropesgray.com
`
`The undersigned authorizes the Office to charge the fee required by 37 C.F.R.
`
`§ 42.15(a) for this Petition for inter partes review to Deposit Account No. 18-1945.
`
`Any additional fees that might be due are also authorized.
`
`
`
`
`
`
`5
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`
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’557 patent is
`
`available for inter partes review and that Petitioners are not barred or estopped from
`
`requesting inter partes review challenging the claims of the ’557 patent on the
`
`grounds identified herein.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §§ 42.104(b) and (b)(1), Petitioners request inter partes
`
`review of claims 1, 8-9, and 15 of the ’557 patent, and that the Board cancel the same
`
`as unpatentable. The ’557 patent matured from U.S. Patent Application No.
`
`13/590,483 (filed 8/21/2012). The ’557 patent claims foreign priority to Korean
`
`Application No. 10-2011-0106839 (filed 10/19/2011).2
`
`1.
`
`The Specific Art on Which the Challenge is Based
`
`Petitioners rely upon the following prior art:
`
`
`
`Ex. 1105 – U.S. Patent Application Publication No. 2009/0083850 to Fadell
`
`et al. (“Fadell”) published on 3/26/2009. Fadell claims priority to U.S. Provisional
`
`
`
` 2
`
` Petitioners take no position as to the propriety of the priority claims since the art
`
`presented herein predates the earliest filing. Petitioners reserve the right to challenge
`
`these priority claims.
`
`
`
`
`
`
`6
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`Patent Application No. 60/995,200 filed 9/24/2007 (Ex. 1128). Fadell is prior art to
`
`the ’557 patent under at least 35 U.S.C. § 102(b).
`
`
`
`Ex. 1106 – WIPO International Application Publication No. WO
`
`2010/126504 to Gagneraud et al. (“Gagneraud”) published on 11/4/2010.
`
`Gagneraud is prior art to the ’557 patent under at least 35 U.S.C. § 102(a).
`
`
`
`Ex. 1107 – Apple iPhone OS 3.1 User Guide (September 2009) (“iOS”) was
`
`published and accessible to the public by at least 9/9/2009. See Declaration of
`
`Michael Hulse (Ex. 1104) and Declaration of Yosh Moriarty (Ex. 1131). iOS is prior
`
`art to the ’557 patent under at least 35 U.S.C. § 102(b).
`
`
`
`Ex. 1113 – U.S. Patent Application Publication No. 2010/0017872 to Goertz
`
`et al. (“Goertz”) published on 1/21/2010. Goertz is prior art to the ’557 patent under
`
`at least 35 U.S.C. § 102(b).
`
`
`
`Ex. 1114 – German Patent Application Publication No. DE 197 10 546 A1 to
`
`Herfet (“Herfet”) published on 9/17/1998. Ex. 1114 includes a certified English
`
`translation of DE 197 10 546 A1 and the original publication. Citations to Herfet
`
`herein are made to the corresponding column and line numbers of the certified
`
`English translation. Herfet is prior art to the ’557 patent under at least 35 U.S.C. §
`
`102(b).
`
`None of Fadell, Gagneraud, iOS, Goertz, or Herfet were considered during
`
`the original prosecution of the ’557 patent, and they are not cumulative of any prior
`
`
`
`
`
`
`7
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`art considered by the original patent examiner. Fadell, Herfet, and Gagneraud
`
`disclose performing the processes of waking a device’s screen and user
`
`authentication simultaneously—the combination of which was deemed missing
`
`from the prior art identified during prosecution. (See the prosecution history of the
`
`’557 patent in Section V(B) below.)
`
`2.
`
`Statutory Grounds on Which the Challenge is Based
`
`# Claims
`
`35
`U.S.C. §
`
`Prior Art
`
`1 1, 8-9, 15
`
`103(a) Fadell in view of iOS and Gagneraud
`
`2 1, 8-9, 15
`
`103(a) Goertz in view of Herfet
`
`
`
`3. How the Construed Claims are Unpatentable under the
`Statutory Grounds Identified in 37 C.F.R. § 42.104(b)(2) and
`Supporting Evidence Relied upon to Support the Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how claims 1, 8-9,
`
`and 15 of the ’557 patent are unpatentable under the statutory grounds identified
`
`above, and that Petitioners have at least a reasonable likelihood of prevailing on
`
`these grounds, including the identification of where each element of the claim is
`
`found in the prior art, is provided in Section VIII, below. Pursuant to 37 C.F.R. §
`
`42.104(b)(5), the exhibit numbers of the supporting evidence relied upon to support
`
`the challenges and the relevance of the evidence to the challenges raised, including
`
`
`
`
`
`
`8
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`identifying specific portions of the evidence that support the challenges, are provided
`
`in Section VIII, below.
`
`V.
`
`FACTUAL BACKGROUND
`
`A.
`
`Summary of the ’557 Patent
`
`The ’557 patent, titled “Method, System, and Mobile Communication
`
`Terminal for Performing Specific Function When Mobile Communication Terminal
`
`is Activated,” claims a simple combination of functions well-known in consumer
`
`electronics: namely, activating a display via a button and performing a fingerprint
`
`identification function. (Ex. 1101, Abstract, claim 1.)
`
`
`
`
`
`
`9
`
`
`
`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`
`Fig. 1 of the ’557 patent, shown to
`
`the right, includes an example of a
`
`mobile communication terminal 100.
`
`Terminal 100 includes a display
`
`unit 110 and an activation button 120. (Id.,
`
`3:48-53.) The display unit 110 can be
`
`switched from an OFF state (an “inactive
`
`state”) to an ON state (an “active state”)
`
`by pressing the activation button 120. (Id.,
`
`3:28-46, 4:27-31.)
`
`The activation button 120 can be
`
`configured to perform other functions as
`
`well.
`
`(Id., 4:40-45, 5:44-49.) The
`
`particular operation performed can also
`
`depend on how the activation button 120 is pressed (e.g., pressed three times or
`
`pressed for a long time). (Id., 4:45-5:6.)
`
`In one example, the operation is a “user authentication process” that is
`
`performed “[w]hen the mobile communication terminal 100 is in the inactive state”
`
`(i.e., when the display is off). (Id., 7:5-7.) The process can include fingerprint
`
`recognition. (Id., 8:3-8.)
`
`
`
`
`
`
`10
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`
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`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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`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, as
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`shown below, the configuration of a button to perform an authentication function
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`was already well known in the art, as others had already implemented authentication
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`functions in “activation” buttons prior to the ’557 patent. The claims of the ’557
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`patent are simply obvious combinations of known techniques in the art.
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`B.
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`Prosecution History of the ’557 Patent
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`U.S. Patent Application No. 13/590,483 (“’557 patent application”), which
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`matured into the ’557 patent, was filed on 8/21/2012. (Ex. 1102 at 1-45.)
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`The USPTO issued a Non-Final Office Action on 11/20/2013, which included
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`rejections of the claims under 35 U.S.C. §§ 102(e) and 103(a) as being anticipated
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`by various prior art references. (Id. at 87-96.)
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`Applicant responded with amendments and arguments in its 1/7/2014
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`response. (Id. at 110-123.)
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`The USPTO issued a Final Office Action on 5/16/2014, which included
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`rejections of the claims under 35 U.S.C. §§ 102(e) and 103(a) as being anticipated
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`by Murakami et al. (US 2013/0057385), obvious in view of Murakami et al. and Chu
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`11
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`et al. (US 7,668,829), or obvious in view of Murakami et al. and Stephens (US
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`2006/0142071). (Id. at 161-170.)
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`Applicant, in its 6/26/2014 after final response, amended the claims to clarify
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`that claimed active/inactive states were with respect to the display unit (i.e., ON/OFF
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`states of the display screen, “not activation of the device”). Applicant argued, inter
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`alia, that the applied prior art of Murakami was directed to activation of a
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`biometrically activated device, not a display unit. (Id. at 181-189.)
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`Applicant further argued that the claim term “simultaneously” in the ’557
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`patent application meant that “when a user just presses the activation button, both
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`the user identification function and the switching from the inactive state of the
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`display unit to the active state of the display unit are performed, without additional
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`steps.” (Id. at 190-191 (emphasis in original).) As discussed in the Claim
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`Interpretation section below (Section VII), this negative limitation of “without
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`additional steps”—was an improper effort to introduce new matter into the file
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`history and has no explicit or implicit support in the ’557 patent specification itself.
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`However, for the purposes of this Petition only, Petitioners accept Applicant’s
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`interpretation of “simultaneously” to demonstrate that the claims are invalid under
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`the Patent Owners construction.3
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`The USPTO issued a Notice of Allowance on 7/15/2014 that entered
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`Applicant’s after-final amendment but provided no statement of reasons for
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`allowance. (Id. at 199-208.)
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`Thus, the claims of the ’557 patent were apparently allowed based on
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`Applicant’s representation that switching on a device’s display unit, and not the
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`device itself, or simultaneous operations were deemed missing from the prior art.
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`As explained in detail below, the features that purportedly distinguished the
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`claims of the ’557 patent from the prior art of record were indeed well-known in the
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`art at the earliest possible priority date of the ’557 patent.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`The level of ordinary skill in the art is evidenced by the prior art. (See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not
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`err in adopting the approach that the level of skill in the art was best determined by
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` 3
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` The deficiencies of Applicant’s interpretation are discussed in detail in the
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`concurrently-filed petition for IPR of the ’557 patent (see discussions in that
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`petition’s Prosecution History and Claim Interpretation sections) and are omitted
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`from this Petition.
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`13
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`references of record).) The prior art discussed herein, and in the declaration of
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`Benjamin B. Bederson (Ex. 1103, “Bederson Decl.”), demonstrates that a person of
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`ordinary skill in the art (“POSITA”), at the time the ’557 patent was filed, would
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`have been a person with a bachelor’s degree in Computer Science, Computer
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`Engineering, or equivalent and at least two years of relevant experience in the fields
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`of user interface design and mobile devices, or otherwise equivalent industry
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`experience in the relevant field. (Ex. 1103 ¶¶ 29-30.)
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`VII. CLAIM INTERPRETATION
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`Claim terms subject to inter partes review are to be “construed using the same
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`claim construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. 282(b), including construing the claim in accordance with the
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`ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.” (37 C.F.R. §
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`42.100(b))
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`Petitioners only construe “simultaneously” below but reserve the right to
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`construe additional terms in any related litigation.4
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`
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` 4
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` While the parties have proposed constructions for additional terms in the district
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`court (Exs. 1034 and 1035), the construction of these terms does not impact the
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`outcome of this proceeding because the claims are invalid under both parties’
`
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`14
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`A.
`
`“Simultaneously”
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`Petitioners are forced to present alternative grounds of unpatentability because
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`Patent Owner has taken a position on the meaning of “simultaneously” from its after-
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`final amendment during the original prosecution of the ’557 patent, which
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`Petitioners believe are inconsistent with the evidence in the intrinsic record. As
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`discussed in this Petition and in Petitioners’ concurrently filed petition, the claims
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`of the ’557 patent are unpatentable under either Patent Owner’s construction (this
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`Petition) or Petitioners’ proper construction (the concurrently-filed petition).
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`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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`1101, 12:48-51, 13:26-30; emphasis added.)
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`In the after-final response of 06/26/2014, Applicant attempted to establish a
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`specific definition of “simultaneously” that precluded “additional steps.”
`
`
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`proposed constructions and thus do not need to be construed here. See Nidec Motor
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`v. Zhongshan Broad Ocean Motor, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`
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`15
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
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`
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`(Ex. 1102 at 190.) As discussed in the concurrently-filed petition, the ’557 patent
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`specification does not support the preclusion of “additional steps.” Nevertheless,
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`should
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`the Board determine
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`that Patent Owner’s asserted definition of
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`“simultaneously” is proper in the ’557 patent, Petitioners accept it for the purposes
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`of this Petition and the grounds below.
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`Petitioners understand that “additional steps” refer to “additional user action.”
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`The ’557 patent and its prosecution history do not explain what should be considered
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`a “step” (and therefore what should be excluded in the definition of simultaneous).5
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`A POSITA would have expected that, because the ’557 patent disclosure is generally
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`concerned with the overall operation of a device and allegedly making user
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`interactions simpler (see Ex. 1101, 1:18-67), a “step” would have related to user
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`
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` 5
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` Indeed, besides the conclusory definition of “simultaneously,” Applicant never
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`makes a clear statement about what a “step” is or what feature of the prior art is
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`equivalent to a “step.” “Step” is not used to describe any feature of the prior art. See
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`Ex. 1102 at 190-191.
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`16
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`actions. An alternative interpretation based on programming or processing “steps”
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`is improbable, given the lack of technical discussions regarding processors,
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`algorithms, and the timing of processes in the ’557 patent.
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`Therefore, “simultaneously,” in claims 1 and 9 below, means that when a user
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`just presses the activation button, both the user identification function and the
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`switching from the inactive state of the display unit to the active state of the display
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`unit are performed, without additional user action. (Ex. 1103 ¶¶ 50-51.)
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`VIII. GROUNDS OF UNPATENTABILITY
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`Although the ’557 patent alleges to have invented a button that turns on a
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`display and simultaneously performs fingerprint recognition, such techniques were
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`known in the communications device art prior to the earliest possible priority date
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`of the ’557 patent. As demonstrated below, the prior art references render claims 1,
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`8-9, and 15 of the ’557 patent unpatentable.
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`This Petition is supported by the Bederson Decl., which describes the scope
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`and content of the prior art at the time of the alleged invention of the ’557 patent.
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`(See also Ex. 1103 ¶¶ 17, 52, 91.)
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`A. Ground 1: Claims 1, 8-9, and 15 are rendered obvious by Fadell in
`view of iOS and Gagneraud under 35 U.S.C. § 103(a)
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`1.
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`Introduction to Fadell (Ex. 1105)
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`Fadell is titled “Embedded Authentication Systems in an Electronic Device”
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`and discloses a mobile device with a system and method for providing biometric
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`17
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`U.S. Patent No. 8,831,557
`Petition for Inter Partes Review
`information, such as a fingerprint, to authenticate a user as the user operates the
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`device. (Ex. 1105, Abstract.) Like the ’557 patent, Fadell states that prior art mobile
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`devices with added functionality (e.g., biometric authentication) required additional
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`hardware and additional time consuming inputs to function. (Compare Ex. 1101 at
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`1:34-44 (describing active states and added interfaces and buttons) with Ex. 1105 ¶¶
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`2-4 (describing fingerprint/retina scanning devices attached to mobile devices and
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`taking additional user steps to input that fingerprint/retina information).) And, just
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`like the ’557 patent, Fadell sought to simplify operations by configuring multiple
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`operations to a single input mechanism. (Compare Ex. 1101 at 1:52-56 and 1:62-64
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`with Ex. 1105 ¶ 5.)
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`Fadell discloses a schematic view and an example of hardware in annotated
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`Figs. 1 and 8B shown below, including electronic devices 100/800 with a display
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`810 (which is an example of output circuitry, shaded red) and a fingerprint sensor
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`720 (which is an example of an authentication system 112, shaded blue) behind a
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`home button 812 (which is an example of input circuitry 110, shaded green). (Ex.
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`1105 ¶¶ 29, 34-39, 65, 67.) The sensor may be placed anywhere on the electronic
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`device, such as in a display, button, or key. (Id. ¶¶ 5, 60, 66.)
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`18
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`U.S. Patent No. 8,831,557
`Petiti
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