UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`
`____________
`
`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
`
`____________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`
`____________
`
`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
`
`____________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`A.
`
`B.
`
`C.
`
`“simultaneously” ................................................................................... 1
`
`“inactive state” and “active state” ......................................................... 2
`
`“user identification function” ................................................................ 3
`
`III. GROUND 1: THE COMBINATION OF FADELL, IOS, AND
`GAGNERAUD RENDERS OBVIOUS THE CHALLENGED
`CLAIMS .......................................................................................................... 3
`
`A.
`
`The Combination of Fadell and Gagneraud Teaches Performing
`the User Identification Function “Simultaneously” With
`Switching the Display from an Inactive State to an Active State ......... 3
`
`1.
`
`2.
`
`3.
`
`PO Improperly Attacks Each of Fadell and Gagneraud in
`Isolation ....................................................................................... 5
`
`Fadell Expressly Discloses Quick and Seamless
`Authentication as the User Wakes the Device, Not
`Merely Where to Place the Authentication Mechanism ............. 7
`
`Fadell’s Display Hardware Is Not a “Restricted
`Resource” That Turns On Only After Authentication ................ 8
`
`B. A POSITA Would Have Been Motivated to Combine Fadell
`and Gagneraud .....................................................................................10
`
`1.
`
`2.
`
`PO Ignores the Express Motivation Taught By the
`References .................................................................................10
`
`PO’s Argument that Fadell and Gagneraud “Accomplish
`Similar Functions by Different Means” Mischaracterizes
`Fadell and Ignores Its Express Disclosures ..............................12
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`PO’s Argument that Gagneraud’s Teachings “Would
`Alter the Fundamental Operation of Fadell” and Render
`Fadell “Unsuitable for Its Intended Purpose”
`Mischaracterizes Fadell and Ignores Its Express
`Disclosures ................................................................................13
`
`Power Management Considerations Would Not Have
`Dissuaded a POSITA From Combining Fadell and
`Gagneraud .................................................................................14
`
`3.
`
`4.
`
`IV. GROUND 2: THE COMBINATION OF GOERTZ AND HERFET
`RENDERS OBVIOUS THE CHALLENGED CLAIMS .............................17
`
`A. Goertz Discloses an Activation Button That Switches the
`Display From an Inactive State to an Active State .............................17
`
`B.
`
`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 ........................19
`
`1.
`
`2.
`
`PO Improperly Attacks Each of Goertz and Herfet in
`Isolation .....................................................................................20
`
`Herfet Teaches Waking a Device From Standby Mode
`Simultaneously With Performing a User Identification
`Function ....................................................................................21
`
`C. A POSITA Would Have Been Motivated to Modify Goertz
`with Herfet’s Teachings ......................................................................22
`
`1.
`
`2.
`
`3.
`
`PO Ignores the Express Motivation Taught by Herfet .............22
`
`PO’s Argument that Goertz and Herfet “Accomplish
`Similar Functions by Different Means” Mischaracterizes
`the References ...........................................................................24
`
`Herfet Does Not “Teach Away” From the Proposed
`Combination ..............................................................................25
`
`ii
`
`
`
`V.
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`THE COMBINATIONS OF (1) FADELL AND GAGNERAUD
`AND (2) GOERTZ AND HERFET DISCLOSE A DEVICE THAT
`PERFORMS FINGERPRINT RECOGNITION AND
`SIMULTANEOUSLY ACTIVATES THE DISPLAY “BY A PRESS
`OF THE ACTIVATION BUTTON” .............................................................26
`
`VI. CONCLUSION ..............................................................................................26
`
`
`
`
`
`
`
`iii
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,
`381 F.3d 1371 (Fed. Cir. 2004) .......................................................................... 14
`K/S HIMPP v. Hear-Wear Techs.,
`751 F.3d 1362 (Fed. Cir. 2015) ...................................................................... 7, 22
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 13, 25
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 25
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 14
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................... 5, 20, 21, 26
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ...................................................................passim
`Other Authorities
`MPEP §2145.X.D.1 ................................................................................................. 25
`
`
`
`iv
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`Description
`Claims 1, 8-9, and 15 of U.S. Patent No. 8,831,557
`
`IPR2019-00612, Paper 3, Petition for Inter Partes Review
`IPR2019-00612, Paper 11, Decision Granting Institution of
`Inter Partes Review
`Patent Owner
`Person of Ordinary Skill in the Art
`IPR2019-00612, Paper 15, Patent Owner’s Response to Petition
`
`IPR2019-00612, Paper 9, Patent Owner’s Preliminary Response
`to Petition
`
`Shorthand
`Challenged
`Claims or
`Claims
`Pet.
`ID
`
`PO
`POSITA
`POR or
`Response
`POPR
`
`
`Note: All emphasis herein added unless otherwise stated.
`
`
`
`v
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`LIST OF EXHIBITS
`
`1103
`1104
`1105
`1106
`
`1107
`1108
`
`1109
`1110
`
`1111
`1112
`1113
`
`1114
`
`Exhibit Description
`U.S. Patent No. 8,831,557 to Jung et al.
`1101
`1102
`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.
`com: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]
`U.S. Patent No. 8,965,449 to Rivera et al.
`[intentionally left blank]
`[intentionally left blank]
`
`1115
`1116
`1117
`1118
`1119
`
`vi
`
`
`
`1120
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`
`1127
`1128
`
`1129
`
`1130
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`[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.p
`df)
`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)
`[intentionally left blank]
`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)
`
`vii
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`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.)
`Declaration of Victor Cheung
`[intentionally left blank]
`[intentionally left blank]
`Rebuttal Declaration of Benjamin B. Bederson
`Bryan D. Payne, W. Keith Edwards, A Brief Introduction to Usable
`Security, IEEE Internet Computing, Vol. 12 Issue 3, Pages 13-21
`(May-June 2008)
`Fujitsu, Fingerprint Sensor Fact Sheet, MBF200 Solid-State
`Fingerprint Sensor
`(https://web.archive.org/web/20070315183546/https://www.fujitsu.co
`m/downloads/MICRO/fme/sensors/Fingerprint_fs_MBF200_Feb_04.
`pdf)
`U.S. Patent Application Publication No. 2013/0057385 to Murakami
`et al.
`Declaration of Christopher M. Bonny
`
`1131
`1132
`1133
`
`1134
`
`1135
`
`1136
`1137
`1138
`1139
`1140
`
`1141
`
`1142
`
`1143
`
`
`
`
`viii
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`The Board correctly found at institution that Petitioners established a
`
`reasonable likelihood of prevailing in proving Claims 1, 8-9, and 15 unpatentable.
`
`ID, 42. PO’s Response unsuccessfully attempts to avoid the Claims’ obviousness
`
`by improperly injecting limitations into the Claims, ignoring the references’ plain
`
`disclosures, and rehashing arguments rejected by the Board. PO’s Claims are
`
`unpatentable.
`
`II. CLAIM CONSTRUCTION
`“simultaneously”
`A.
`The Board construed “simultaneously” 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.” ID, 14-15. The Board’s construction is based
`
`on applicants’ express definition provided during prosecution. Id. (citing Ex. 1102,
`
`190-191). For purposes of this proceeding, Petitioners adopt this construction.
`
`As the Board noted, applicant made this statement during prosecution to
`
`distinguish the Murakami prior art reference by arguing that “the displaying of the
`
`data [in Murakami] is performed on the condition that [the] user’s identity is
`
`authenticated.” ID, 13 (emphasis in original); Ex. 1102, 190-91; Ex. 1142 ¶¶36-38,
`
`45, 48, Fig. 2. Because there was an additional step (a condition), applicant argued
`
`1
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`successfully that Murakami did not disclose the “simultaneously” limitation under
`
`its definition that excludes additional steps. Ex. 1102, 190-91.
`
`PO agrees with the Board’s construction of “simultaneously” as “without
`
`additional steps” (POR, 7-8), yet throughout its Response, PO improperly attempts
`
`to inject a “not sequentially” limitation into the claims. E.g., POR, 31 (“a sequential,
`
`not simultaneous process”), 26-27 (“sequential, multi-step operation”), 42. The
`
`Board properly rejected PO’s construction, which added a “not sequentially”
`
`requirement: “at the same time, without additional steps, and not sequentially.” ID,
`
`10-15; POPR 7-10. “Not sequentially” is found nowhere in the claims, specification,
`
`or prosecution history. Applicant’s statement during prosecution says nothing about
`
`whether “sequentially” is excluded from the scope of the claims, and therefore does
`
`not disclaim scope in the way PO proposes. As the Board correctly noted, the
`
`prosecution history distinguished Murakami because an additional step (a condition)
`
`existed. ID, 13 (citing Ex. 1102, 190-91).
`
`In any event, the prior art grounds meet the “simultaneously” limitation not
`
`only under the Board’s construction, but also even under PO’s incorrect
`
`interpretation. See §§III.A, IV.B; Ex. 1139 ¶¶8-11.
`
`“inactive state” and “active state”
`
`B.
`For purposes of this proceeding, Petitioners adopt the Board’s constructions
`
`of these terms. ID, 16 (citing Ex. 1101, 3:28-46). The evidence set forth in the
`
`2
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`Petition shows that the claims are invalid under the constructions adopted by the
`
`Board. Pet., 27-28, 45-46; Ex. 1103 ¶¶70-73, 104-105; Ex. 1139 ¶¶12-13.
`
`“user identification function”
`
`C.
`Petitioners agree with the Board (ID, 17) and PO (POR, 12) that the term “user
`
`identification unit” is not a means-plus-function term governed by §112¶6. As PO
`
`notes (POR, 15), structural units that performed “fingerprint recognition” were well
`
`known to a POSITA. Ex. 1139 ¶¶14-15.
`
`III. GROUND 1: THE COMBINATION OF FADELL, iOS, AND
`GAGNERAUD RENDERS OBVIOUS THE CHALLENGED CLAIMS
`
`A. The Combination of Fadell and Gagneraud Teaches Performing
`the User Identification Function “Simultaneously” With Switching
`the Display from an Inactive State to an Active State
`
`PO incorrectly argues that Fadell and Gagneraud do not disclose performing
`
`the identification function “simultaneously” with switching from the display from
`
`an inactive state to an active state. POR, 25.
`
`The primary reference Fadell itself discloses simultaneous performance of a
`
`user identification function and waking the device.1 Pet. 30-31; Ex. 1103 ¶¶75-77.
`
`Fadell describes the prior art approach as “time consuming and bothersome for the
`
`user, requiring an additional step before the user can access the device.” Ex. 1105
`
`
`
` 1
`
` PO does not dispute that Fadell in view of iOS discloses switching from the
`inactive state of the display unit to the active state of the display unit (waking the
`device) by pressing the activation button (home button) (Element 1[c]).
`
`3
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`¶4. Therefore, to avoid using additional “time” and to avoid requiring “an additional
`
`step,” Fadell expressly discloses “provid[ing] 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. To accomplish this, Fadell
`
`describes a fingerprint sensor 720 behind a home button 812. Id. ¶¶5, 64. Fadell
`
`does not disclose that any additional steps (or conditions) are required in order to
`
`simultaneously perform the user identification function and waking the device. Ex.
`
`1139 ¶¶23-26. Moreover, even under PO’s incorrect interpretation, Fadell’s
`
`authentication and wake functions are “not sequential.” Id.
`
`As explained in the Petition, to the extent PO argues that Fadell lacks
`
`sufficient detail with respect to whether additional steps are required to perform the
`
`identification function, Gagneraud expressly discloses that no additional steps are
`
`required. Pet., 32; Ex. 1103 ¶¶78-80. For example, Gagneraud discloses performing
`
`fingerprint recognition while the machine is powering on, with no additional steps,
`
`and contrasts this with another embodiment in which the fingerprint recognition
`
`occurs after powering on:
`
`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
`
`4
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`
`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.
`Ex. 1106 ¶25; Pet., 33-34; Ex. 1103 ¶¶75-80; Ex. 1139 ¶27. PO admits that
`
`Gagneraud teaches a “simultaneous process.” POR, 36 (“Gagneraud discloses a
`
`simultaneous process as
`
`the device powers on.”), 31-32 (“Gagneraud
`
`discloses…performing an authentication function while the entire device…is
`
`being powered on.”); POPR, 25; ID, 29.
`
`As explained by Petitioners’ expert Dr. Bederson, a POSITA would have been
`
`motivated to apply Gagneraud’s teachings of simultaneously performing the 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. Pet.,
`
`34-37; Ex. 1103 ¶¶81-83; Ex. 1139 ¶27.
`
`1.
`
`PO Improperly Attacks Each of Fadell and Gagneraud in
`Isolation
`
`PO argues that Fadell and Gagneraud each fail to teach simultaneously
`
`performing the claimed functions (POR, 26, 31), but PO is improperly attacking
`
`Fadell and Gagneraud alone, not in combination. See In re Mouttet, 686 F.3d 1322,
`
`1333 (Fed. Cir. 2012); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
`
`5
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`(“Non-obviousness cannot be established by attacking references individually where
`
`the rejection is based upon the teachings of a combination of references.”); ID, 29.
`
`As explained above, Fadell expressly discloses a fingerprint sensor behind a
`
`home button “such that the device authenticates the user quickly and seamlessly,
`
`for example as the user turns on, unlocks or wakes the device.” Ex. 1105 ¶¶4-5, 64.
`
`Gagneraud discloses that, in the power on context, no additional steps are required,
`
`and PO admits that Gagneraud discloses a simultaneous process. Ex. 1106 ¶25;
`
`POR, 36, 31-32. Thus, the only dispute is whether it would have been obvious to
`
`apply Gagneraud’s teachings—which are directed to a power on process—to
`
`Fadell’s wake process.
`
`A POSITA would have recognized that Gagneraud’s teachings regarding
`
`simultaneous performance in the power on context apply equally to Fadell’s wake
`
`process. Pet., 35-36; Ex. 1103 ¶82; ID, 29; Ex. 1139 ¶35. Fadell describes at least
`
`three situations when a user is authenticated: turning on (i.e., powering on),
`
`unlocking, and waking. Ex. 1105 ¶4. Thus, as expressly 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 ¶35. If anything, applying Gagneraud’s teachings from the power-on context
`
`to the waking context is easier to implement, because the device is not completely
`
`turned off prior to waking. Id. Therefore, Fadell in view of Gagneraud renders
`
`6
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`obvious simultaneously performing an authentication function while waking the
`
`device.2 Id.
`
`Contrary to PO’s assertions (POR, 33), there is evidence of the claim
`
`limitation in the record, and Petitioners are not “inferring” anything from
`
`Gagneraud. As detailed above, the combination of Fadell and Gagneraud teaches
`
`the entire claim limitation. K/S HIMPP v. Hear-Wear Techs. is inapposite because
`
`Petitioners are not relying on “basic knowledge and common sense as a replacement
`
`for documentary evidence.” 751 F.3d 1362, 1365 (Fed. Cir. 2015). Here, Petitioners
`
`provide ample evidence from the references themselves that the combination of
`
`Fadell and Gagneraud teaches the “simultaneously” limitation. Pet., 31-37; Ex. 1105
`
`¶¶4-5, 64; Ex. 1106 ¶25.
`
`2.
`
`Seamless
`and
`Fadell Expressly Discloses Quick
`Authentication as the User Wakes the Device, Not Merely
`Where to Place the Authentication Mechanism
`
`PO is wrong that Fadell is merely “about where on the device to place
`
`authentication mechanisms” and is not about timing. POR, 27, 17-18. Fadell
`
`expressly discloses a fingerprint sensor behind a home button “such that the device
`
`authenticates the user quickly and seamlessly, for example as the user turns on,
`
`
`
` 2
`
` As taught by Fadell in view of iOS, waking includes activating the display (See
`Element 1[c]).
`
`7
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`unlocks or wakes the device.” Ex. 1105 ¶¶4-5, 64. The reason Fadell teaches
`
`embedding a fingerprint sensor behind the home button is to enable quick and
`
`seamless authentication, which avoids additional “time” and “an additional step.”
`
`Ex. 1105 ¶4. Thus, Fadell’s teaching regarding the fingerprint sensor is expressly
`
`directed to timing. Ex. 1139 ¶28.
`
`PO is also incorrect that Fadell is merely about embedding the sensor in the
`
`device so that the user “would no longer need to couple an accessory device.” POR,
`
`28, 17. While it is true that Fadell does not require an accessory device, Fadell
`
`teaches more than simply embedding a fingerprint sensor somewhere on the
`
`device—it teaches embedding the sensor in the home button itself for quick and
`
`seamless authentication. Ex. 1105 ¶¶4-5, 64; Ex. 1139 ¶28.
`
`3.
`
`Fadell’s Display Hardware Is Not a “Restricted Resource”
`That Turns On Only After Authentication
`
`PO argues that Figure 15 of Fadell “shows that Fadell contemplates providing
`
`access to a restricted resource of the device only after authentication” (POR, 28) and
`
`that “Figure 15…applies to access to the display” (POR, 31), but PO ignores Fadell’s
`
`other disclosures. As Fadell states, Figure 15 is merely “one embodiment.” Ex.
`
`1105 ¶93-96. PO ignores Fadell’s express disclosure of embedding a fingerprint
`
`sensor behind a home button “such that the device authenticates the user quickly
`
`8
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`and seamlessly, for example as the user…wakes the device.” Ex. 1105 ¶¶4-5, 64;
`
`Ex. 1139 ¶29.
`
`Moreover, PO’s assertion that Fadell’s display hardware is a restricted
`
`resource is incorrect and without support. Fadell uses the term “restricted resource”
`
`to refer to “files or data,” “applications,” and “personal settings,” not the display
`
`hardware. Ex. 1105 ¶¶24, 94, 96. Nowhere does Fadell disclose or suggest that the
`
`display is a “restricted resource.” Ex. 1139 ¶30.
`
`Indeed, the very passages of Fadell cited by PO (Paragraphs 24, 41, 42, and
`
`46 of Fadell, cited at POR, 30) confirm that Fadell’s display is not a restricted
`
`resource. The portion of Paragraph 46 quoted by PO does not refer to display
`
`hardware, and Figure 4 (described in Paragraph 46) shows that the display is not a
`
`restricted resource because in the Figure 4 embodiment the display presents
`
`authentication instructions. Paragraphs 24 and 41 of Fadell refer only to “files,”
`
`“data,” and “information stored in memory or storage” as being restricted, not the
`
`display hardware. Finally, PO’s citation to Paragraph 42 references “authentication
`
`to access display 200,” but like Paragraph 46 and Figure 4, display 200 is the phone’s
`
`home screen of “basic or default applications available to the user.” Display 200 is
`
`not the display hardware itself. Ex. 1139 ¶¶30-33.
`
`PO asserts that Dr. Bederson “agreed that a display screen may be properly
`
`considered a resource” (POR, 30-31), but PO misinterprets Dr. Bederson’s
`
`9
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`testimony and ignores his explanation that Figure 15 does not relate to waking the
`
`device and does not apply to all embodiments. In the quoted statement, 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 ¶34.
`
`Indeed, Dr. Bederson stated that Figure 15 related to accessing a contact list, not
`
`waking the device, and Fadell is “clearly not describing [Figure] 15 as necessarily
`
`applying to all embodiments.” Ex. 2007, 24:12-25; Ex. 1139 ¶34.
`
`B. A POSITA Would Have Been Motivated to Combine Fadell and
`Gagneraud
`
`1.
`
`PO Ignores the Express Motivation Taught By the
`References
`
`PO’s argument that “Petitioners have not adequately articulated a motivation
`
`to combine Fadell with Gagneraud” (POR, 34) ignores the express motivation in
`
`Fadell. As explained by Dr. Bederson, a POSITA would have been motivated to
`
`apply Gagneraud’s teachings, of simultaneously performing the 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. 1103 ¶81; Pet., 34.
`
`PO does not address this motivation anywhere in its Response. Moreover, this
`
`10
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`motivation is expressly taught by the references themselves. In addition to Fadell’s
`
`disclosure of “quickly and seamlessly” authenticating the user (Ex. 1105 ¶4),
`
`Gagneraud discloses that “time is saved and user friendliness is increased” by
`
`authenticating while powering on (Ex. 1106 ¶¶25, 58). Ex. 1139 ¶36.
`
`PO’s assertion that it is “not enough” that the references relate to fundamental
`
`human-computer interaction concepts relating to “initial interaction” (POR, 32-33)
`
`is misplaced and incorrect. As an initial matter, this is not Petitioners’ sole
`
`motivation. As discussed above, PO ignores the express motivation taught by the
`
`references. In addition to those express motivations, the references’ relation to
`
`fundamental human-computer interaction concepts shows that “a POSITA would
`
`have known that the disclosures and teachings of Fadell and Gagneraud would have
`
`had wide applicability in the art of electronic devices.” Pet., 35; Ex. 1103 ¶82.
`
`Moreover, PO is incorrect that “determining that a user is indicating their
`
`initial interaction with a device” is a “contrived category” with no support in the
`
`literature. POR, 35. One longstanding aspect of human-computer interaction is the
`
`importance of providing privacy and security in technical systems while maintaining
`
`usability. Thus, access to a system when the user indicates that she desires access
`
`to it (her initial interaction) is a well-known consideration in the art. Ex. 1139 ¶37.
`
`Dr. Bederson discussed at length the importance of security in the context of user
`
`interaction with mobile devices. Ex. 1103 ¶¶36-38; Ex. 1139 ¶37; see also Ex. 1140
`
`11
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`(“The problem of how users authenticate to systems, particularly using passwords,
`
`is one of the oldest and most heavily studied topics in usable security.”).
`
`2.
`
`PO’s Argument that Fadell and Gagneraud “Accomplish
`Similar Functions by Different Means” Mischaracterizes
`Fadell and Ignores Its Express Disclosures
`
`PO incorrectly asserts that Fadell and Gagneraud “accomplish similar
`
`functions by different means,” and therefore “one of skill in the art would not be
`
`motivated to combine them.” POR, 36. According to PO, Fadell discloses “a
`
`sequential process when the device is already on,” while “Gagneraud discloses a
`
`simultaneous process as the device powers on.” Id. However, as explained above,
`
`Fadell is not limited to a sequential process even under PO’s incorrect interpretation
`
`of “without additional steps.” It expressly discloses embedding a fingerprint sensor
`
`behind a home button “such that the device authenticates the user quickly and
`
`seamlessly, for example as the user…wakes the device.” Ex. 1105 ¶¶4-5, 64. Thus,
`
`the references are actually similar in operation. Both Fadell and Gagneraud disclose
`
`simultaneous processes in which there are no additional steps between activating a
`
`display or turning on a device and performing a user identification function. Ex.
`
`1139 ¶38. Gagneraud adds to Fadell’s disclosure by providing examples of specific
`
`timings and non-conditional processes that a POSITA would have been motivated
`
`to apply in order to fulfill Fadell’s goal of “authenticat[ing] the user quickly and
`
`12
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`seamlessly…as the user…wakes the device” (Ex. 1105 ¶4) with the benefit of saving
`
`time and simplifying user interaction. Ex. 1106 ¶¶25, 53-58, Fig. 8; Ex. 1139 ¶38.
`
`Kinetic Concepts is inapposite because there, unlike here, defendant S&N
`
`“never offered evidence articulating why a [POSITA] would combine the primary
`
`references to obtain the disclosed inventions.” 688 F.3d 1342, 1369 (Fed. Cir. 2012)
`
`(“The record is devoid of any reason someone would combine these references,
`
`however.”). Moreover, unlike here, there was “significant evidence of teaching
`
`away.” Id.
`
`3.
`
`PO’s Argument that Gagneraud’s Teachings “Would Alter
`the Fundamental Operation of Fadell” and Render Fadell
`“Unsuitable for Its Intended Purpose” Mischaracterizes
`Fadell and Ignores Its Express Disclosures
`
`PO incorrectly asserts that 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” and “Gagneraud
`
`discloses that the device powers on regardless of the authentication result.” POR,
`
`37. As explained above in Section III.A.3, PO’s interpretation of Fadell’s “restricted
`
`resource” is incorrect and unsupported. There is no disclosure or suggestion in
`
`Fadell that turning on the display is restricted or conditioned, and Fadell instead
`
`discloses restricting access to certain content. Ex. 1139 ¶39. Moreover, PO ignores
`
`Fadell’s express disclosure of embedding a fingerprint sensor behind a home button
`
`13
`
`
`
`IPR2019-00612
`U.S. Patent No. 8,831,557
`
`“such that the device authenticates the user quickly and seamlessly, for example
`
`as the user…wakes the device.” Ex. 1105 ¶¶4-5, 64; Pet., 27-28, 31-32. Thus, PO’s
`
`reliance on In re Gordon is misplaced—PO mischaracterizes Fadell’s operation and
`
`has not shown Fadell would be rendered “unsuitable for its intended purpose.” Ex.
`
`1139 ¶39. Cardiac Pacemakers (POR, 38) is inapposite because Fadell Paragraph
`
`4 teaches the “simultaneous” limitation, and regardless Petitioners r
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
