Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 11
`Entered: August 5, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00612
`Patent 8,831,557 B2
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
` Paper 11
`Entered: August 5, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00612
`Patent 8,831,557 B2
`____________
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2019-00612
`Patent 8,831,557 B2
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`
`I. INTRODUCTION
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting inter partes review of claims 1, 8, 9, and 15 of U.S. Patent
`No. 8,831,557 B2 (Ex. 1101, “the ’557 patent”) pursuant to 35 U.S.C.
`§ 311(a). Patent Owner Firstface Co., Ltd. filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to
`35 U.S.C. § 314(a), the Director may not authorize an inter partes review
`unless the information in the petition and preliminary response “shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we institute an inter partes review as to claims 1, 8, 9, and 15 of the
`’557 patent on all grounds of unpatentability asserted in the Petition.1
`
`
`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’557 patent is the subject of the following
`district court cases: Firstface Co., Ltd. v. Samsung Elecs. Co., Ltd.,
`Case No. 3-18-cv-02243 (N.D. Cal.), and Firstface Co., Ltd. v. Apple Inc.,
`Case No. 3-18-cv-02245 (N.D. Cal.). See Pet. 3; Paper 5, 2. Petitioner filed
`a second petition challenging claims 1, 8, 9, and 15 of the ’557 patent in
`Case IPR2019-00611. Pet. 4. The grounds of unpatentability in the second
`petition are the same as those asserted in this proceeding, but are “premised
`
`
`1 Although we granted Petitioner’s motion to seal certain exhibits filed with
`the Petition (Paper 10), we do not refer to any sealed material in this
`Decision.
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`on construing [the claim term] ‘simultaneously’” differently than what
`Petitioner proposes in the instant Petition. Id. In a concurrently entered
`Decision, we deny institution of an inter partes review in Case
`IPR2019-00611. Apple Inc. also filed petitions for inter partes review of
`two patents related to the ’557 patent in Cases IPR2019-00613 and
`IPR2019-00614. Id.
`
`
`B. The ’557 Patent
`The ’557 patent discloses a mobile communication terminal with
`“an activation button configured to switch from an inactive state . . . to an
`active state,” where “a predetermined operation is performed simultaneously
`with switching to the active state by pressing the activation button.”
`Ex. 1101, Abstract. According to the ’557 patent, adding functionality to a
`mobile communication terminal, to be performed when the terminal is in an
`active state, typically required adding an “interface or button for performing
`the function.” Id. at col. 1, ll. 34–40. At the same time, terminal users often
`perform the actions of “habitually taking out and activating the terminal[] on
`the move or in a standby state while carrying the terminal[].” Id. at col. 1,
`ll. 45–48. The ’557 patent seeks to take advantage of that habitual use by
`“connecting various operations to the activation button provided in a
`terminal” and performing a predetermined function whenever the user
`presses the activation button. Id. at col. 1, ll. 52–56.
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`Figure 1 of the ’557 patent is reproduced below.
`
`
`Figure 1 depicts mobile communication terminal 100 comprising camera
`130, display unit 110, activation button 120, and sub-display unit 121.
`Id. at col. 3, ll. 51–55, col. 5, ll. 7–9. “[D]isplay unit 110 displays various
`information regarding operation states of the mobile communication
`terminal 100, and also displays an interface for a user’s input if the mobile
`communication terminal 100 drives a touch screen.” Id. at col. 4, ll. 3–6.
`When the user presses activation button 120, mobile communication
`terminal 100 switches from the inactive state (in which the terminal is
`communicable but the display screen is turned off) to the active state
`(in which the display screen is turned on). Id. at col. 3, ll. 28–46, col. 4,
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`ll. 27–35. Figure 1 above, for example, “illustrates a state in which a lock
`screen is displayed on the display unit 110 after pressing the activation
`button 120 when the mobile communication terminal 100 is in the inactive
`state.” Id. at col. 4, ll. 32–35. If the user presses activation button 120 when
`mobile communication terminal 100 is in the inactive state, mobile
`communication terminal 100 may perform a “predetermined operation” (set
`in advance by the user) “simultaneously with switching to the active state.”
`Id. at col. 2, ll. 1–17, col. 4, ll. 40–50. Mobile communication terminal 100
`also may perform different operations depending on either the number of
`presses or the press time of activation button 120. Id. at col. 4, l. 50–col. 5,
`l. 6.
`
`The ’557 patent describes a number of operations that can be
`performed when activation button 120 is pressed. Id. at col. 5, ll. 44–49.
`For example, a “user authentication process can be performed for security by
`pressing the activation button 120.” Id. at col. 7, ll. 4–7. When in the
`inactive state, mobile communication terminal 100 “senses whether or not
`the user has pressed the activation button” and, if so, performs a “user
`identification function.” Id. at col. 7, ll. 14–19. User identification unit 420
`of mobile communication terminal 100 may use camera activation element
`421, iris detection element 422, and user identification element 423 to sense
`and recognize the iris of a user’s eye. Id. at col. 7, ll. 20–50. The
`’557 patent explains that “other authentication methods, for example, an
`authentication key matching method, a password matching method, a face
`recognition method, a fingerprint recognition method, and the like, can be
`used” instead of the iris recognition method. Id. at col. 8, ll. 3–8.
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`C. Illustrative Claim
`Claims 1 and 9 of the ’557 patent are independent. Claim 8 depends
`from claim 1, and claim 15 depends from claim 9. Claim 1 recites:
`1. A mobile communication terminal comprising:
`a display unit; and
`an activation button configured to switch from an inactive
`state, which is an OFF state of the display unit, to an active state,
`which is an ON state of the display unit; and
`a user identification unit configured to operate a user
`identification function,
`wherein the user identification function is performed
`simultaneously with switching from the inactive state of the
`display unit to the active state of the display unit by pressing the
`activation button,
`wherein the user identification function includes a
`fingerprint recognition.
`
`
`D. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent Application Publication No. 2010/0017872
`A1, published Jan. 21, 2010 (Ex. 1113, “Goertz”);
`U.S. Patent Application Publication No. 2009/0083850
`A1, published Mar. 26, 2009 (Ex. 1105, “Fadell”);
`Publication
`International
`Patent
`Application
`No. WO 2010/126504 A1, published Nov. 4, 2010 (Ex. 1106,
`“Gagneraud”);
`German Patent Application Publication No. DE 19710546
`A1, published Sept. 17, 1998 (Ex. 1114, “Herfet”);2 and
`
`
`2 We refer to “Herfet” as the English translation of the original reference
`(both provided as Exhibit 1114). Petitioner includes a declaration in Exhibit
`1114 attesting to the accuracy of the translation. See 37 C.F.R. § 42.63(b).
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`IPHONE USER GUIDE FOR IPHONE OS 3.1 SOFTWARE
`(2009) (Ex. 1107, “iOS”).
`
`
`E. The Asserted Grounds
`Petitioner challenges claims 1, 8, 9, and 15 of the ’557 patent as
`unpatentable on the following grounds:
`Claims
`References
`Basis
`Fadell, iOS, and
`35 U.S.C. § 103(a)3 1, 8, 9, and 15
`Gagneraud
`Goertz and Herfet
`
`35 U.S.C. § 103(a)
`
`1, 8, 9, and 15
`
`
`III. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`As an initial matter, Patent Owner argues that we should exercise
`discretion to deny the Petition under 35 U.S.C. § 314(a) for “abuse of
`process.” Prelim. Resp. 36–38. Patent Owner contends that Petitioner filed
`two petitions in Cases IPR2019-00611 and IPR2019-00612 with
`substantially the same arguments but based on alternative interpretations for
`the claim term “simultaneously,” which “should . . . have been filed as a
`single petition and appear[s] only to be a tactical ploy for forcing Patent
`Owner to expend extra resources addressing two petitions.” Id. at 38.
`We are not persuaded. Petitioner filed both petitions on January 23, 2019,
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’557 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA versions of
`35 U.S.C. § 103.
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`and Patent Owner has not identified any previously filed petition seeking
`review of the ’557 patent. Thus, the concerns outlined in General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. at 15–19 (PTAB Sept. 6, 2017) (Paper 19) (precedential as to
`§ II.B.4.i), regarding the filing of serial petitions over time do not apply.
`Also, under the particular facts of this proceeding, we are not persuaded that
`both petitions should be denied because Petitioner filed two petitions
`premised on different possible claim interpretations. As explained herein,
`we adopt in large part Petitioner’s proposed interpretation in this proceeding
`and deny the second petition advocating a different interpretation in
`Case IPR2019-00611. See infra Section III.B.1.
`
`
`B. Claim Interpretation
`We interpret the challenged claims
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)
`effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b)
`(2019)). Claim terms are given their plain and ordinary meaning as would
`be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two
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`exceptions to this general rule: 1) when a patentee sets out a definition and
`acts as his own lexicographer, or 2) when the patentee disavows the full
`scope of a claim term either in the specification or during prosecution.”
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012).
`The prosecution history of a patent may “inform the meaning of the
`claim language by demonstrating how the inventor understood the invention
`and whether the inventor limited the invention in the course of prosecution,
`making the claim scope narrower than it would otherwise be.” Phillips, 415
`F.3d at 1317; see Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir.
`2005) (“The purpose of consulting the prosecution history in construing a
`claim is to ‘exclude any interpretation that was disclaimed during
`prosecution.’” (citation omitted)). “For example, ‘a patentee may, through a
`clear and unmistakable disavowal in prosecution history, surrender certain
`claim scope to which he would otherwise have an exclusive right by virtue
`of the claim language.’” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d
`1340, 1352 (Fed. Cir. 2010) (citation omitted); see Arendi S.A.R.L. v. Google
`LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018) (“[I]n order to disavow claim
`scope, a patent applicant must clearly and unambiguously express surrender
`of subject matter during prosecution.” (citation omitted)). The fact that a
`patent owner is the one arguing in favor of disclaimer does not mean the
`doctrine is inapplicable, provided the prosecution statements are “clear and
`unmistakable.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd.,
`No. 2017-1368, 2019 WL 2912776, at *8 (Fed. Cir. July 8, 2019).
`Petitioner proposes an interpretation for the term “simultaneously” in
`independent claims 1 and 9. Pet. 14–17 (citing Ex. 1103 ¶¶ 50–51). Patent
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`Owner proposes interpretations for the terms “simultaneously,” “an OFF
`state of the display unit,” “inactive state,” “an ON state of the display unit,”
`and “active state” in independent claims 1 and 9. Prelim. Resp. 5–13.4
`
`
`1. “Simultaneously”
`Petitioner states that it presents “alternative grounds of
`unpatentability” in this proceeding and Case IPR2019-00611 because
`“Patent Owner has taken a position on the meaning of ‘simultaneously’ from
`its after-final amendment during the original prosecution of the ’557 patent”
`that Petitioner believes is “inconsistent with the evidence in the intrinsic
`record.” Pet. 15. Petitioner states that if the Board interprets
`“simultaneously” consistent with the applicants’ statements during
`prosecution regarding performance “without additional steps,” Petitioner
`“accept[s] it for the purposes of this Petition.” Id. at 12–13, 16. Petitioner
`further argues, however, that a person of ordinary skill in the art would have
`understood “additional steps” to refer to “additional user action.” Id.
`Accordingly, Petitioner proposes that “simultaneously” be interpreted 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 user action.” Id. at 17 (citing Ex. 1103 ¶¶ 50–51) (emphasis
`omitted).
`
`
`4 The parties proposed constructions for various other terms in the related
`district court cases, but the district court has not rendered a decision on
`claim construction. See Pet. 14 n.4; Exs. 1134, 1135.
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`Patent Owner responds that “the applicants defined ‘simultaneously’
`as ‘without additional steps’” during prosecution, and “[t]he Board could
`therefore simply define ‘simultaneously’ as ‘without additional steps’ and be
`wholly consistent with the intrinsic record.” Prelim. Resp. 7–9 (quoting
`Ex. 1102, 190). Patent Owner states, though, that “to avoid dispute about
`what ‘without additional steps’ means, Patent Owner is comfortable with the
`Board construing ‘simultaneously,’ in context, to include ‘at the same time’
`and ‘not sequentially’” because the applicants allegedly “understood
`‘without additional steps’ to require that activation of the display and
`performance of user identification occur at the same time, and not as a
`sequence of steps.” Id. at 9. Thus, Patent Owner proposes that
`“simultaneously” be interpreted to mean “at the same time, without
`additional steps, and not sequentially.” Id. at 7.
`We begin with the language of the claims themselves. Claim 1 recites
`that “the user identification function is performed simultaneously with
`switching from the inactive state of the display unit to the active state of the
`display unit by pressing the activation button,” and claim 9 recites
`“performing a user identification process by a fingerprint recognition
`simultaneously with switching from the inactive state of the display unit to
`the active state of the display unit if the pressing of the activation button is
`sensed” (emphases added). The surrounding claim language merely
`specifies what actions are performed “simultaneously,” without explaining
`how such performance occurs or what makes it “simultaneous[].”
`Nor does the Specification of the ’557 patent shed light on the
`meaning of “simultaneously.” The Specification largely repeats the claim
`language in three passages. See Ex. 1101, Abstract, col. 2, ll. 1–17. The
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`Specification also uses “simultaneously” two times in other contexts, but
`does not define the term or otherwise explain what makes the disclosed
`actions “simultaneously” performed. See id. at col. 9, ll. 51–54 (“current
`location information is collected simultaneously with the activation of the
`mobile communication terminal 100”), col. 11, ll. 28–32 (“application
`driving unit 230 can drive a predetermined application simultaneously with
`the activation within the mobile communication terminal 100”).
`The meaning of the term “simultaneously,” however, was addressed
`explicitly during prosecution of the ’557 patent. The examiner issued an
`office action rejecting claims 1 and 13 (which ultimately issued as
`independent claims 1 and 9) as anticipated by U.S. Patent Application
`Publication No. 2013/0057385 A1 (“Murakami”), citing certain portions of
`Murakami as allegedly disclosing the “simultaneously” limitations.
`Ex. 1102, 164–165. The applicants made a number of arguments in
`response, including that “the activation of the display unit is not performed
`simultaneously with the user identification function in Murakami” and that
`“[a]s for the term ‘simultaneously,’ the examiner’s attention is invited to
`consider the specification and the claim languages in claims 1 and 13.” Id.
`at 190 (citing paragraph 4 of the original specification, id. at 8–9). The
`applicants further argued as follows:
`That is, in view of the specification and the claim
`language, it is clear that the term “simultaneously” in claims 1
`and 13 of the present application means that, when a user just
`presses the activation button, both the user identification function
`and the switching from the inactive state of the display unit to
`the active state of the display unit are performed, without
`additional steps.
`Therefore, in order to rely on [Murakami], the examiner
`must show that [Murakami] teach[es] or suggest[s] that, when a
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`user presses the activation button, both the user identification
`function and the switching from the inactive state of the display
`unit to the active state of the display unit are performed, without
`additional steps.
`Id. at 190–191. According to the applicants, Murakami does not teach the
`“simultaneously” limitation of each claim because “the displaying of the
`data [in Murakami] is performed on the condition that [the] user’s identity is
`authenticated” (i.e., after the user identification function completes the step
`of authenticating the user), rather than the user identification function and
`switching from the inactive state to the active state being performed without
`additional steps. Id. (emphasis added). The examiner subsequently allowed
`the claims. Id. at 199–203.
`We agree with Patent Owner and conclude that the applicants clearly
`and unambiguously defined the term “simultaneously” in the passage quoted
`above. See Prelim. Resp. 8–9. The applicants quoted the relevant claim
`language, identified the term “simultaneously” specifically, and expressly
`stated what the term “means,” i.e., that “when a user just presses the
`activation button, both the user identification function and the switching
`from the inactive state of the display unit to the active state of the display
`unit are performed, without additional steps.” Ex. 1102, 190 (emphases
`omitted). The applicants also distinguished the prior art based on that
`definition, arguing that Murakami does not teach performance of both
`recited actions “without additional steps.” Id. at 190–191 (emphasis
`omitted).
`To the extent Petitioner seeks to further define the “additional steps”
`in the definition to mean “additional user action,” we decline to do so based
`on the current record. See Pet. 16–17. Petitioner’s only support for its
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`proposed interpretation is the testimony of its declarant, Benjamin B.
`Bederson, Ph.D., who testifies that a person of ordinary skill in the art
`“would have expected that, because the ’557 patent disclosure is generally
`concerned with the overall operation of a device and allegedly making user
`interactions simpler, . . . a ‘step’ would have related to user actions,” and
`that a different interpretation involving processing steps would be
`“improbable.” See Ex. 1103 ¶¶ 50–51 (citing Ex. 1101, col. 1, ll. 18–67).
`We do not see how the ’557 patent’s general discussion of user interaction
`with a mobile communication terminal (e.g., taking out and activating the
`terminal) is sufficient basis to depart from the explicit definition the
`applicants provided during prosecution.
`Thus, we interpret “simultaneously” in accordance with the
`applicants’ express definition provided during prosecution of the
`’557 patent. See Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373, 1379 (Fed. Cir. 2019) (concluding that the patentee “clearly
`and unambiguously disclaimed claim scope” during prosecution by arguing,
`in response to the examiner’s objection that the term at issue was unclear,
`that “the meaning of [the term] as used in the claims” was explained in a
`particular portion of the specification); Advanced Fiber Techs. (AFT) Trust
`v. J & L Fiber Servs., Inc., 674 F.3d 1365, 1374 (Fed. Cir. 2012)
`(concluding that “the court correctly relied on a clear definition of a claim
`term set forth by [the patentee] in the prosecution history”).
`On this record, we interpret “simultaneously,” in the context of the
`surrounding claim language in claims 1 and 9, to mean that when a user just
`presses the activation button, both the user identification function and the
`switching from the inactive state of the display unit to the active state of the
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`display unit are performed, without additional steps. No further
`interpretation is necessary at this time to determine whether to institute an
`inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because
`we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy,’ we need not construe [a particular
`claim limitation] where the construction is not ‘material to the . . . dispute.’”
`(citations omitted)). To the extent there remains any disagreement over the
`meaning of “simultaneously,” the parties are encouraged to address the issue
`further in their papers during trial.
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`2. “Inactive State” and “Active State”
`Claims 1 and 9 recite “an inactive state, which is an OFF state of the
`display unit,” and “an active state, which is an ON state of the display unit.”
`Petitioner does not propose interpretations for these terms. Patent Owner
`argues that “an OFF state of the display unit” and “inactive state” should be
`interpreted to mean “a state in which the display is turned off yet the device
`itself is on,” and “an ON state of the display unit” and “active state” should
`be interpreted to mean “a state in which the display is turned on.” Prelim.
`Resp. 10–11. Patent Owner contends that the terms are defined in the
`Specification of the ’557 patent. Id. at 11–12. We agree. The Specification
`explicitly defines the terms “inactive state” and “active state” as follows:
`The term “inactive state” used herein refers to a state in
`which the mobile communication terminal is communicable but
`a display screen is turned off[.] Even when the display screen is
`turned off, a predetermined function (for example, a music play
`function or the like) is operable. . . . [T]he term “inactive state”
`used herein refers to a concept encompassing states in which the
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`display screen is turned off, regardless of whether or not the
`mobile communication terminal performs a predetermined
`operation. However, a state in which the mobile communication
`terminal is completely turned off is excluded.
`The term “active state” used herein refers to a state in
`which the display screen of the mobile communication terminal
`is turned on. Switching from the “inactive state” to the “active
`state” refers to switching of the display screen from the OFF state
`to the ON state, regardless of information displayed on the
`display screen in the ON state. For example, the mobile
`communication terminal can be determined to be in the “active
`state” even when only a lock screen is displayed.
`Ex. 1101, col. 3, ll. 28–46. Thus, on this record, we interpret “inactive state”
`in claims 1 and 9 to mean a state in which the mobile communication
`terminal is communicable but a display screen is turned off, regardless of
`whether or not the mobile communication terminal performs a
`predetermined operation, and the mobile communication terminal is not
`completely turned off. Also, on this record, we interpret “active state” to
`mean a state in which the display screen of the mobile communication
`terminal is turned on. No interpretation of “an OFF state of the display unit”
`and “an ON state of the display unit” is necessary, as the claims equate the
`two states with the recited “inactive state” and “active state,” respectively.
`
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`3. “User Identification Unit”
`Claim 1 recites “a user identification unit configured to operate a user
`identification function, . . . wherein the user identification function includes
`a fingerprint recognition.” Petitioner does not argue that “user identification
`unit” should be interpreted as a means-plus-function limitation under
`35 U.S.C. § 112, sixth paragraph, but states that if it is so interpreted, the
`only structure described in the Specification of the ’557 patent is user
`
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`identification unit 420 comprising camera activation element 421, iris
`detection element 422, and user identification element 423, which “are
`described in purely functional terms, independent of any required
`algorithm.” Pet. 29 n.10.
`In general, a claim term that does not use the word “means” triggers
`a rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, does not
`apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
`2015). That presumption can be overcome “if the challenger demonstrates
`that the claim term fails to ‘recite sufficiently definite structure’ or else
`recites ‘function without reciting sufficient structure for performing that
`function.’” Id. at 1349 (citation omitted). “The standard is whether the
`words of the claim are understood by persons of ordinary skill in the art to
`have a sufficiently definite meaning as the name for structure.” Id.
`Based on the current record, we find that the presumption resulting
`from claim 1 not using the word “means” is not overcome. We do not
`interpret the term in accordance with 35 U.S.C. § 112, sixth paragraph, and
`conclude that no further interpretation is necessary at this time. The parties
`are encouraged to address the issue in their papers during trial.
`
`
`C. Principles of Law
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`
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`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.”5 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`A petitioner’s assertion of obviousness “cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing
`KSR, 550 U.S. at 418).
`
`
`
`
`5 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence at this stage.
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`D. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art at the time of
`the ’557 patent would have had “a bachelor’s degree in Computer Science,
`Computer Engineering, or equivalent and at least two years of relevant
`experience in the fields of user interface design and mobile devices, or
`otherwise equivalent industry experience in the relevant field.” Pet. 13–14
`(citing Ex. 1103 ¶¶ 29–30). Patent Owner does not address the level of
`ordinary skill in the art in its Preliminary Response. Based on the record
`presented, including our review of the ’557 patent and the types of problems
`and solutions described in the ’557 patent and cited prior art, we agree with
`Petitioner’s assessment of the level of ordinary skill in the art and apply it
`for purposes of this Decision.
`
`
`E. Obviousness Ground Based on Fadell, iOS, and Gagneraud
`Petitioner contends that claims 1, 8, 9, and 15 are unpatentable over
`Fadell, iOS, and Gagneraud6 under 35 U.S.C. § 103(a), citing the testimony
`of Dr. Bederson as support. Pet. 17–39 (citing Ex. 1103). Patent Owner
`makes various arguments in response. Prelim. Resp. 22–28, 35–38. We are
`persuaded that Petitioner has established a reasonable likelihood of
`prevailing on its asserted ground for the reasons explained below.
`
`
`1. Fadell
`Fadell describes “an electronic device with an embedded
`authentication system for restricting access to device resources” including
`
`
`6 Fadell, iOS, and Gagneraud were not of record during prosecution of the
`’557 patent. See Ex. 1101, (56); Pet. 7–8.
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`sensors that “detect appropriate biometric information as the user operates
`the device, without requiring the user to perform a step for providing the
`biometric information (e.g., embedding a fingerprint sensor in an input
`mechanism instead of providing a fingerprint sen
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