Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.,
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`SAMSUNG ELECTRONICS CO., LTD.,
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`and
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`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioners,
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`v.
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`FIRSTFACE CO., LTD.,
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`Patent Owner.
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`________________
`
`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`________________
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`PATENT OWNER’S SUR-REPLY TO PETITION
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 1
`A.
`“simultaneously” ................................................................................... 1
`B.
`“inactive state” and “active state” ......................................................... 2
`C.
`“user identification unit” ....................................................................... 3
`III. Ground 1 Does Not Render the Challenged Claims Obvious. ........................ 3
`A.
`Fadell does not disclose simultaneous performance of the user
`identification function and waking the device................................................. 4
`B.
`Fadell and Gagneraud do not disclose simultaneous performance of
`the user identification function and waking the device. .................................. 8
`1.
`Neither Fadell nor Gagneraud discloses simultaneously
`performing a user identification function and activating a display. ...... 9
`2.
`A POSITA would not combine Fadell with Gagneraud to arrive
`at the claimed invention. ..................................................................... 12
`IV. Ground 2 Does Not Render the Challenged Claims Obvious. ...................... 15
`1.
`Neither Goertz nor Herfet discloses simultaneously performing
`a user identification function and activating a display. ....................... 16
`2.
`A POSITA would not have been motivated to modify Goertz
`with Herfet’s teachings. ....................................................................... 20
`V. No Prior Art Reference Discloses a Device That Performs Fingerprint
`Recognition and Simultaneously Activates the Display Screen “By a Press of the
`Activation Button.” .................................................................................................. 23
`VI. Conclusion ..................................................................................................... 24
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`TABLE OF AUTHORITIES
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`Cases:
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`Graham v. John Deere Co. of Kan. City,
`383 U.S. 1 (1966) ................................................................................... 10, 11, 20
`
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) ................................................................... 10, 11
`
`
`In re Mouttet
`686 F.3d 1322 (Fed. Cir. 2012) ................................................................... 10, 11
`
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ................................................................... 14, 22
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`Rules, Statutes, and Other Authorities:
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`35 U.S.C. § 112 ......................................................................................................... 3
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`M.P.E.P § 2141 ................................................................................................. 10, 20
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`TABLE OF EXHBITS
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`Exhibit
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`Description
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`Declaration of Dr. Alfred C. Weaver
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`Anand L. Shimpi, iPhone 3G - First Battery Life Results (July 11,
`2008), http://www.anandtech.com:80/show/2566 (retrieved from
`http://web.archive.org/web/20100412072814/http://www.anandtech.c
`om:80/show/2566)
`
`James Galbraith, Test results: iPhone 4 battery life (July 1, 2010)
`https://www.macworld.com/article/1152460/iphone4_battery.html
`(retrieved from
`http://web.archive.org/web/20120427120056/https://www.macwor
`ld.com/article/1152460/iphone4_battery.html)
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`U.S. Patent Application Publication No. 2012/0167170 to Shi, et
`al.
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`U.S. Patent Application Publication No. 2012/0133484 to Griffin
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`Declaration of Thomas Cecil
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`Deposition Transcript of Benjamin Bederson
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`Patent Owner Firstface Co., Ltd. (“Firstface” or “Patent Owner”) submits
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`this Sur-Reply to the Petition of Apple Inc., Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc. (together, “Petitioner”) seeking inter partes
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`review of claims 1, 8-9, and 15 of U.S. Patent No. 8,831,557 (Ex. 1101, the “’557
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`patent”).
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`I.
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`Introduction
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`Petitioner’s Reply, like its Petition, fails to show that the Challenged Claims
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`are unpatentable. None of the cited art, alone or in combination, discloses
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`simultaneously performing a user identification function and activating the display,
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`as required by all Challenged Claims. Petitioner’s arguments otherwise rely on
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`overly generous readings of the references, inferring disclosure from silence. The
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`Board should reject Petitioner’s arguments and find all Challenged Claims
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`patentable.
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`II. Claim Construction
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`A.
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`“simultaneously”
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`In its Reply, Petitioner “adopts” the Board’s construction of
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`“simultaneously.” Reply at 1-2. As explained in its POR, Patent Owner agrees that
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`this is the correct construction. The Board should therefore construe
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`“simultaneously” as “when a user just presses the activation button, both the user
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`identification function and the switching from the inactive state of the display unit
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`to the active state of the display unit are performed, without additional steps” (as it
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`did in its Institution Decision).
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`Although Patent Owner and Petitioner appear to agree on the construction,
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`Petitioner contends that Patent Owner attempts to inject a “not sequentially”
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`limitation into the construction. Patent Owner has done nothing of the sort. To be
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`sure, Patent Owner has argued that Fadell and Goertz disclose sequential
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`operations. But Patent Owner is not trying to inject limitations in the claims. Patent
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`Owner is simply explaining why the cited art (specifically, Fadell and Goertz) do
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`not satisfy the claims. Because they disclose performing the user identification
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`function and switching the display unit from the inactive state to the active state in
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`sequence (i.e., step-wise), they do not disclose “when a user just presses the
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`activation button, both the user identification function and the switching from the
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`inactive state of the display unit to the active state of the display unit are
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`performed, without additional steps.”
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`B.
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`“inactive state” and “active state”
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`In its Reply, Petitioner stated that it “adopts the Board’s constructions” of
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`“inactive state” and “active state.” Reply at 2. In its POR, Patent Owner similarly
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`agreed with the Board’s constructions. The Board should accordingly construe
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`“inactive state” as “a state in which the mobile communication terminal is
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`communicable but a display screen is turned off, regardless of whether or not the
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`mobile communication terminal performs a predetermined operation, and the
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`mobile communication terminal is not completely turned off.” It should similarly
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`construe “active state” as “a state in which the display screen of the mobile
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`communication terminal is turned on.”
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`C.
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`“user identification unit”
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`Finally, in its Reply, Petitioner stated that it “agree[s] with the Board (ID,
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`17) and PO (POR, 12) that the term ‘user identification unit’ is not a means-plus-
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`function term governed by §112¶6” because “structural units that performed
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`‘fingerprint recognition’ were well known to a POSITA.” Reply at 3. As stated in
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`its Patent Owner Response, Patent Owner agrees. POR at 12-15. Thus, the Board
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`should decline to interpret “user identification unit” as a means-plus-function term,
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`as it did in its Institution Decision.
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`III. Ground 1 Does Not Render the Challenged Claims Obvious.
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`The crux of the dispute with respect to Ground 1 is simple: whether the cited
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`art, alone or in combination, discloses that “the user identification function is
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`performed simultaneously with switching from the inactive state of the display unit
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`to the active state of the display unit by pressing the activation button.” Petitioner
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`makes two primary arguments in its Reply. First, it argues that Fadell itself
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`discloses this limitation because it “discloses simultaneous performance of a user
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`identification function and waking the device.” Reply at 3. Second, it argues that,
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`even if Fadell does not disclose simultaneous performance of the user
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`identification function and waking the device, such a limitation would be made
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`obvious by Fadell in view of Gagneraud. Both arguments rely on an overly
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`generous reading of Fadell. The Board should reject them.
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`A.
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`Fadell does not disclose simultaneous performance of the user
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`identification function and waking the device.
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`Petitioner first argues that “Fadell itself discloses simultaneous performance
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`of a user identification function and waking the device.” Reply at 3. Petitioner
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`reads far too much into Fadell’s skim disclosure.
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`Nothing in Fadell describes simultaneously performing a user identification
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`function and activating a display.1 As it did in its Petition, Petitioner relies on
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`Fadell’s disclosure of “provid[ing] an electronic device by which biometric and
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`other authentication mechanisms are implemented in the device such that the
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`                                                            
`1 For the purposes of its Response and Sur-reply, Patent Owner does not discuss
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`iOS as part of the combination of Ground 1 because it is not relevant to the
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`arguments made herein.
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`device authenticates the user quickly and seamlessly, for example as the user turns
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`on, unlocks or wakes the device.” Reply at 4 (citing Ex. 1105 ¶ 4). But, as Patent
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`Owner explained in its Patent Owner Response, this disclosure of Fadell is about
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`where to place a sensor, not when a user identification occurs relative to activating
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`a display.
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`The background of Fadell makes clear that it was trying to solve the problem
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`of how to easily perform biometric authentication for access to an electronic device
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`without requiring a user to attach an accessory. According to Fadell, in prior art
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`methods “an accessory device for detecting a user’s fingerprint or for scanning a
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`user’s retina may be coupled to the device such that the user must first show an
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`authorized fingerprint or retina before receiving access to the device.” Ex. 1105 ¶ 3
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`(emphasis added). But “requiring a user to provide a fingerprint or submit to a
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`retina scan may be time consuming and bothersome for the user, requiring an
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`additional step before the user can access the device.” Id. ¶ 4. Fadell proposes
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`foregoing this “additional step” by implementing the authentication mechanisms
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`“in the device” so that authentication can occur “quickly and seamlessly.”
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`That Fadell was attempting to solve the problem of the hassle of this
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`additional step is confirmed by Fadell’s comparison of biometric authentication
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`with authentication via pass code or password. According to Fadell, while both
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`methods may be useful, “restricting access based on a password or pass code is
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`effective so long as no other user knows the password or pass code.” Ex. 1105 at
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`¶ 4. “Once the password or pass code is known, the restriction mechanism may
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`become ineffective.” Id. “Also, a password or pass code may be forgotten, thus
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`locking an authorized user out of the device.” Id. Importantly, Fadell never
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`criticizes password or pass code based authentication as requiring an additional
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`step. That is a concern that Fadell considered unique to biometric authentication,
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`and it is the concern that Fadell was attempting to solve via placement of the
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`fingerprint sensor.
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`Petitioner argues that Fadell is not just about where to place the sensor
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`because it discloses embedding a fingerprint sensor behind the home button to
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`enable quick and seamless authentication, which is “expressly directed to timing.”
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`To be sure, Fadell discloses placing a fingerprint sensor in a location so that
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`authentication can be performed “quickly and seamlessly, for example as the user
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`turns on, unlocks or wakes the device.” Ex. 1105 at ¶ 4. But, as Patent Owner
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`explained in its Response, this says nothing about the exact timing of
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`authentication relative to activation of the display. It instead highlights that Fadell
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`discloses achieving authentication quickly and seamlessly via the placement of the
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`sensor, not by manipulating the exact timing of authentication and activation of the
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`display. The rest of the specification supports this conclusion: Fadell contains
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`substantial disclosure about the positioning of the sensor throughout the
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`specification, but has no explicit disclosure about the timing of authentication
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`relative to activating a display.
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`Moreover, as Patent Owner explained in its Response, the only substantive
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`disclosure in Fadell related to the timing of authentication is Figure 15’s disclosure
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`of a sequential process. As Figure 15 shows, access to a “restricted resource” is
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`only allowed after authentication has been performed. So Figure 15 shows a
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`sequential process requiring multiple steps, not a simultaneous process.
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`Petitioner complains that Figure 15 is “merely ‘one embodiment’” and that
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`nothing in Fadell says that the display can be the “restricted resource” of Figure 15.
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`Reply at 8-9. True enough—Figure 15 is only one embodiment, and nothing
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`explicitly says that the “restricted resource” can be the display. But Figure 15 is the
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`only embodiment that discloses the exact timing of authentication relative to any
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`other operation. And, as Patent Owner explained, Fadell uses the term “resource”
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`broadly and indicates that authentication may be necessary to activate a display.
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`See, e.g., Ex. 1105, ¶¶ 24, 41-42, 46. Thus, to the extent Fadell says anything about
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`the timing of authentication relative to activating the display, it is via Figure 15.
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`Figure 15 shows that those operations would be performed sequentially, in
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`multiple steps, and not simultaneously.
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`Petitioner relies on Figure 4 and the related disclosure to argue that the
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`display cannot be a “restricted resource.” According to Petitioner, “Figure 4
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`(described in Paragraph 46) shows that the display is not a restricted resource
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`because in the Figure 4 embodiment the display presents authentication
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`instructions.” Reply at 9. But, in the language of Petitioner (with respect to Figure
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`15), Figure 4 is “merely ‘one embodiment.’”2 Just because the display is not a
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`restricted resource in one embodiment does not mean that the display can never be
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`a restricted resource. Nothing precludes the display from being a “restricted
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`resource.”
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`B.
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`Fadell and Gagneraud do not disclose simultaneous performance
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`of the user identification function and waking the device.
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`                                                            
`2 Further, the embodiment of Figure 4 is not an embodiment related to waking a
`device from an off state (or sleep mode), but is instead an embodiment related to
`“unlocking” a device which is already awake. Thus, it is natural that Fadell would
`not consider a display a “restricted resource” with respect to Figure 4—in this
`particular embodiment it may not be. But nothing prohibits the display from being
`a restricted resource in other contexts and embodiments.
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`Recognizing Fadell’s shortcomings, Petitioner argues that “to the extent PO
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`argues that Fadell lacks sufficient detail with respect to whether additional steps
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`are required to perform the identification function, Gagneraud expressly discloses
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`that no additional steps are required.” Reply at 4. Petitioner recognizes that
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`Gagneraud does not disclose simultaneously performing the user identification
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`function and activating the display. It argues, however, that this doesn’t matter
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`because “a POSITA would have been motivated to apply Gagneraud’s teachings of
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`simultaneously performing the power on steps and fingerprint recognitions steps
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`based on a button press, to the wake and fingerprint recognition steps of Fadell.”
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`Reply at 5.
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`Petitioner’s argument is again premised on an incorrect reading of Fadell. It
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`is not, as Petitioner asserts, about the timing of performing fingerprint recognition
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`relative to activating the display; it is about where to place a fingerprint sensor.
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`Gagneraud, on the other hand, is about timing of authentication. A POSITA would
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`not combine a patent about where to place a sensor with a patent about when to
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`perform authentication.  
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`1.
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`Neither Fadell nor Gagneraud discloses simultaneously
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`performing a user identification function and activating a
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`display.
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`As Patent Owner explained in its Response, neither Fadell nor Gagneraud
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`discloses simultaneously performing a user identification function and activating a
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`display. As discussed above, Fadell, at best, discloses sequentially performing a
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`user identification function and activating a display. And Gagneraud discloses
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`performing authentication while the entire device is being powered on. POR at 31-
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`32.
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`Petitioner contends that Patent Owner improperly focuses on Fadell and
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`Gagneraud in isolation, ignoring the combination. Reply at 5-6. Petitioner is
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`wrong. As an initial matter, a proper obviousness analysis requires “determining
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`the scope and content of the prior art” and “ascertaining the differences between
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`the claimed invention and the prior art.” M.P.E.P. § 2141; see also Graham v. John
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`Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). 3
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`                                                            
`3 Petitioner also cites to In re Mouttet and In re Merck to argue that it is improper
`to evaluate the individual contributions of each reference. Reply at 5. However, a
`proper Graham analysis requires determining the scope and content of the prior art,
`which necessitates understanding what each reference discloses. Neither In re
`Mouttet nor In re Merck prohibits such an analysis. In re Mouttet simply counseled
`against requiring a specific finding that two references had equivalent components
`in order to make an obviousness combination. 686 F.3d 1322, 1332 (Fed. Cir.
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`Moreover, Patent Owner has explained why Petitioner has failed to show
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`that Fadell and Gagneraud, even when combined, disclose simultaneously
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`performing a user identification function and activating the display. POR at 32-33.
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`Petitioner argues that because Fadell lists powering on, unlocking, and waking a
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`device in a single sentence, they are “analogous situations during which
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`authentication can be performed.” Reply at 6. And, according to Petitioner,
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`because powering on and waking are analogous, “[a] POSITA would have
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`recognized that Gagneraud’s teachings regarding simultaneous performance in the
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`power on context apply equally to Fadell’s wake process.” Id. In fact, according to
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`Petitioner, it would be “easier to implement” Gagneraud on Fadell’s “wake”
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`procedure because the device is already powered on in some way. Id.
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`Petitioner again reads far too much into Fadell. Fadell never states that
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`powering on and waking are analogous, nor can that be inferred simply because
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`                                                            
`2012). In fact, In re Mouttet cites to the requirements of the Graham factors in
`laying out the foundation for an obviousness finding. Id. at 1330. Meanwhile, In re
`Merck discourages picking out a single teaching from one reference to argue
`teaching away when the bulk of the other references indicate a different
`conclusion. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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`they are listed in the same sentence. Indeed, Fadell never explains what it means to
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`“wake” a device. Moreover, as explained above, to the extent Fadell says anything
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`about the timing of authentication relative to turning on a display, it says that the
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`operations should be performed sequentially, not simultaneously. Petitioner
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`completely fails to grapple with how a POSITA would incorporate Gagneraud’s
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`disclosure of authenticating a user at the same time that a device is powered on
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`with Fadell in light of this disclosure. Petitioner has therefore failed to meet its
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`burden to show that the cited art, even when combined, discloses all claim
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`limitations.
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`2.
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`A POSITA would not combine Fadell with Gagneraud to arrive
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`at the claimed invention.
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`In its Reply, Petitioner doubles down on its purported motivations to
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`combine. Petitioner argues that Fadell itself provides a motivation to combine
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`Fadell with Gagneraud because it discloses performing authentication “quickly and
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`seamlessly . . . as the user . . . wakes the device.” Reply at 10. Petitioner also again
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`argues that a POSITA would combine Fadell with Gagneraud because both “relate
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`to fundamental human-computer interaction concepts relating to ‘initial
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`interaction.’” Reply at 11. Petitioner’s arguments are, once again, rooted on a
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`flawed reading of Fadell. And, despite Petitioner’s arguments to the contrary, there
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`are significant reasons why a POSITA would not combine Fadell with Gagneraud.
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`Fadell’s disclosure of “quickly and seamlessly” authenticating a user as the
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`device wakes does not provide a motivation to combine it with Gagneraud. As
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`discussed above, when read in context, Fadell is referring to “quickly and
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`seamlessly” authenticating a user by placing the sensor on the device, foregoing the
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`hassle associated with the step of coupling an authentication device. Fadell never
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`indicates that it is concerned with exactly when authentication occurs relative to
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`activating a display.
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`Perhaps recognizing the stark differences between Fadell and Gagneraud,
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`Petitioner once again falls back on the argument that a POSITA would combine the
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`references because both are directed to the contrived category of “determining that
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`a user is indicating their initial interaction with a device.” As explained in Patent
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`Owner’s Response, the only evidence for this motivation that Petitioner supplied
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`was the conclusory testimony of its expert. See POR at 35. Petitioner attached
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`additional evidence purportedly supporting this motivation with its Reply. Reply at
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`11-12. But the best Petitioner could find was a statement that “the problem of how
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`users authenticate to systems, particularly using passwords, is one of the oldest and
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`most heavily studied topics in usable security.” See Ex. 1139, ¶ 37 (citing Ex.
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`1140). This statement says nothing about a user “indicating an initial interaction.”
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`Petitioner has failed to rebut the significant reasons that a POSITA would
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`not combine Fadell with Gagneraud provided in Patent Owner’s Response. POR at
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`37-40. As explained there, a POSITA would not combine Fadell with Gagneraud
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`because they accomplish similar functions—quickly authenticating a user—in
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`different ways. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
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`1369 (Fed. Cir. 2012). Fadell does so by optimizing where the sensor is placed,
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`and Gagneraud does so by optimizing when authentication is performed relative to
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`turning on the device. Petitioner argues that “[b]oth Fadell and Gagneraud disclose
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`simultaneous processes in which there are no additional steps between activating a
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`display or turning on a device and performing a user identification function.”
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`Reply at 12. But this, again, relies on the same misreading of Fadell. Fadell’s
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`“quickly and seamlessly” language says nothing about when authentication occurs
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`relative to activating the display. And the only part of Fadell that discusses timing
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`of authentication discloses a sequential process—the opposite of Gagneraud.
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`As explained in Patent Owner’s Response, a POSITA also would not
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`combine Fadell with Gagneraud because doing so would alter the fundamental
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`operation of Fadell. As explained above, Fadell requires authentication before
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`access to a restricted resource, such as the display, is allowed. Gagneraud discloses
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`the opposite—the display turns on regardless of the result of authentication.
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`Petitioner takes issue with Patent Owner’s argument that the display can be a
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`restricted resource. But, as explained above, Petitioner is wrong. Fadell’s
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`disclosure of authenticating a user “quickly and seamlessly” as a user “wakes the
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`device” says nothing about the exact timing of authentication relative to activating
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`the display. But Figure 15 does—it discloses sequentially (i.e., with multiple steps)
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`authenticating a user and turning on the display. Incorporating Gagneraud’s
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`simultaneous operation would undermine that operation.
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`IV. Ground 2 Does Not Render the Challenged Claims Obvious.
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`As with Ground 1, the crux of the dispute with respect to Ground 2 is
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`whether the cited art, alone or in combination, discloses that “the user
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`identification function is performed simultaneously with switching from the
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`inactive state of the display unit to the active state of the display unit by pressing
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`the activation button.” Petitioner contends that the combination of Goertz and
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`Herfet discloses simultaneously performing a user identification function and
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`activating a display. It contends that “Goertz discloses that a user identification
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`function including fingerprint recognition is part of the ‘high security’ initiated by
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`pressing the home key of Goertz’s phone.” Reply at 19. And, although “Goertz
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`does not explicitly disclose the details involved in performing the fingerprint
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`recognition,” Petitioner contends that “Herfet discloses performing fingerprint
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`recognition simultaneously with a switch-on process,” which “includes waking
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`from ‘standby mode.’” Reply at 19-20. According to Petitioner, “a POSITA would
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`have been motivated to modify Goertz’s high security lock/unlock functionality
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`such that when the home key is activated, as disclosed by Goertz, fingerprint
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`recognition would be performed, as taught by Herfet.” Reply at 20.
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`Petitioner’s argument is premised on an overly broad reading of Goertz and
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`Herfet. Contrary to Petitioner’s arguments, Goertz discloses only a two-step,
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`sequential process to authentication wherein the display turns on and then
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`authentication is performed. That process is antithetical to Herfet’s disclosure of
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`performing authentication during a switch-on process. Goertz and Herfet thus,
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`even when combined, do not disclose all claim limitations. And, for the same
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`reason, a POSITA would not combine Goertz and Herfet.
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`1.
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`Neither Goertz nor Herfet discloses simultaneously performing
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`a user identification function and activating a display.
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`As explained in Patent Owner’s Response, neither Goertz nor Herfet
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`discloses performing a user identification function and simultaneously activating a
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`display. Goertz discloses only a sequential authentication process, not a
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`simultaneous one. POR at 42-43. As Patent Owner explained, Goertz discloses that
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`when a device is in “Key lock high security mode,” a press causes the display to
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`show a keypad for entering a security code. POR at 42-43. This is a sequential
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`process, not a simultaneous one. Although Goertz discloses that “additional
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`security is implemented by use of fingerprint identification, wherein the phone
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`cannot be unlocked unless a fingerprint is authenticated,” it does not disclose that
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`the authentication process should be any different. POR at 43. The only
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`conclusion, then, is that the process would be the same, sequential process.
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`Petitioner’s argument appears to be that there are no “additional step[s]
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`between activating the display and performing the fingerprint function” in Goertz
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`Reply at 21. As an initial matter, this interpretation is not supported by Goertz.
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`Goertz discloses that, when a security code is used, the display prompts the user to
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`provide the security code. Were fingerprint recognition used instead, as Goertz
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`allows, the display would naturally still prompt the user in a multi-step, sequential
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`process. Moreover, Petitioner’s argument ignores the fact that the Board’s
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`construction requires full performance of the user identification function in
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`response to the pressing of the activation button—the construction states: “when a
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`user 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
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`display unit are performed.” Decision at 14-15. Given the Board’s construction,
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`Goertz cannot satisfy the claim.
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`Additionally, Petitioner contends in its Reply that Figures 12-15 of Goertz
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`disclose an activation button that turns on the display when pressed. But as Patent
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`Owner explained in its Response, nothing in Goertz says that Figure 13 shows a
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`display that is off, contrary to Petitioner’s arguments. POR at 41-42. Petitioner
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`argues that Figure 13 is identical to Figure 9, which itself shows a display that is
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`off. But, as Figure 9 itself indicates, it shows a device that is entirely off, so the
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`display must be off. See Ex. 1113, Figs. 9-10, ¶ 59. There is no similar disclosure
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`for Figure 13.
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`Neither does Herfet disclose simultaneously performing a user identification
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`function and activating the display. As Patent Owner explained in its Response,
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`Herfet’s authentication occurs only “during the switch-on process”—indeed, there
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`is an exclusive, “direct relationship between use, i.e. switching on/off and
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`authentication.” POR at 44.
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`In its Reply, Petitioner argued that, despite its language, Herfet actually does
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`disclose authenticating a user simultaneously with waking a device from standby
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`mode. Herfet discloses that a terminal can go into standby mode whereby “the
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`activation of services without access authorization is only possible after a renewed
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`switch-on process.” According to Petitioner, “[a] ‘renewed switch-on process’ is
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`not turning the device off and back on, which would defeat the entire purpose of
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`‘standby mode,’” but “is how Herfet refers to bringing the device out of standby
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`mode (i.e., from an inactive to an active state).” Reply at 22.
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`As an initial matter, Petitioner is wrong that requiring a user to turn the
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`device off and back on would defeat the purpose of standby mode. As Herfet
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`explains, its disclosure “relates to a terminal for participating in services, which are
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`subject to an access authorization, with means for activating and deactivating the
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`access authorization.” Ex. 1114 at 3. Authentication is performed “during the
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`switch-on process.” Id. at 2:48-50. But even if authentication fails, users still get
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`“access to services that are not fee-based.” Id. at 2:32-34. Similarly, when the
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`device goes into standby mode, in which “the authentication can be reset
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`automatically,” users could still access non-fee-based services. And to view the
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`fee-based services again, one would nee