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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`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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`PATENT OWNER FIRSTFACE CO., LTD’S NOTICE OF APPEAL
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`Pursuant to 35 U.S.C. §§ 141 and 142, Patent Owner Firstface Co., Ltd.
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`(“Patent Owner”) appeals to the United States Court of Appeals for the Federal
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`Circuit from the Final Written Decision of the Patent Trial and Appeal Board
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`entered on July 31, 2020 (Paper No. 26). A copy of the Final Written Decision is
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`attached to this Notice of Appeal.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner states that the
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`issues on appeal may include, but are not limited to:
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`(1) the Board’s determination that claims 1, 8, 9, and 15 of U.S. Patent No.
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`8,831,557 (“the ’557 patent”) are unpatentable under 35 U.S.C. § 103(a) as
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`obvious over the combination of Fadell, iOS, and Gagneraud;
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`(2) the Board’s determination that claims 1, 8, 9, and 15 of the ’557 patent
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`are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
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`Goertz and Herfet;
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`(3) the Board’s claim constructions;
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`(4) any finding or determination by the Board supported or related to any of
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`the foregoing issues;
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`(5) all other issues decided adversely to Patent Owner in any orders,
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`decisions, rulings, and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(1), Patent Owner is simultaneously
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`filing copies of this Notice of Appeal with the Patent Trial and Appeal Board and
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`the Director of the United States Patent and Trademark Office. In addition, Patent
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`Owner is filing a copy of this Notice of Appeal with the Clerk of Court of the
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`United States Court of Appeals for the Federal Circuit and paying the requisite
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`filing fee in accordance with Federal Circuit Rule 15(a)(1) and 37 C.F.R.
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`§ 90.2(a)(2).
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`Dated: September 29, 2020
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`Respectfully submitted,
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`
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`/Matthew C. Juren/
`Matthew C. Juren
`Registration No. 68,233
`NELSON BUMGARDNER
`ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 806-3816
`Email: matthew@nbafirm.com
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`CERTIFICATE OF FILING AND SERVICE
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`
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`The undersigned hereby certifies that the foregoing document was filed
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`electronically with the Board via the PTAB E2E system on September 29, 2020.
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`The undersigned further certifies that a paper copy of the foregoing is being sent
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`via priority mail on September 29, 2020, to the Director of the United States Patent
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`and Trademark Office at the following address:
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`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`The undersigned also certifies that a true and correct copy of the foregoing is
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`being filed via CM/ECF with the Clerk’s Office of the United States Court of
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`Appeals for the Federal Circuit and the required fee is being paid.
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`Finally, pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on September
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`29, 2020, a copy of the foregoing was served on counsel for Petitioners at the
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`following e-mail addresses, as authorized in the Petition:
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`Scott A. McKeown, scott.mckeown@ropesgray.com
`Gabrielle E. Higgins, gabrielle.higgins@ropesgray.com
`Christopher M. Bonny, christopher.bonny@ropesgray.com
`Victor Cheung, victor.cheung@ropesgray.com
`Ropes-Firstface-IPR-Service@ropesgray.com
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`Dated: September 29, 2020
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`Respectfully submitted,
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`/Matthew C. Juren/
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`Case IPR2019-00612
`U.S. Patent No. 8,831,557
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`Matthew C. Juren
`Registration No. 68,233
`NELSON BUMGARDNER
`ALBRITTON P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 806-3816
`Email: matthew@nbafirm.com
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`- 5 -
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`Trials@uspto.gov
`571-272-7822
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` Paper 26
`Date: July 31, 2020
`
`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.
`
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”)
`
`
`
`
`
`IPR2019-00612
`Patent 8,831,557 B2
`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). On August 5, 2019, we instituted an inter partes review as to all
`challenged claims on all grounds of unpatentability asserted in the Petition.
`Paper 11 (“Decision on Institution” or “Dec. on Inst.”). Patent Owner
`Firstface Co., Ltd. subsequently filed a Patent Owner Response (Paper 15,
`“PO Resp.”), Petitioner filed a Reply (Paper 17, “Reply”), and Patent Owner
`filed a Sur-Reply (Paper 20, “Sur-Reply”). An oral hearing was held on
`May 5, 2020, and a transcript of the hearing is included in the record
`(Paper 25, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 8, 9, and 15 are unpatentable.
`
`
`B. Related Matters
`The parties indicate that the ’557 patent is the subject of the following
`district court cases: Firstface Co., Ltd. v. Samsung Electronics Co., Ltd.,
`Case No. 18-cv-02243 (N.D. Cal.), and Firstface Co., Ltd. v. Apple Inc.,
`Case No. 18-cv-02245 (N.D. Cal.). See Pet. 3; Paper 22, 2. Petitioner filed
`a second petition challenging claims 1, 8, 9, and 15 of the ’557 patent,
`premised on a different interpretation of the claim term “simultaneously”
`than the one asserted in this proceeding, which was denied. See Apple Inc.
`v. Firstface Co., Ltd., IPR2019-00611, Paper 11 (PTAB Aug. 5, 2019).
`
`
`2
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`IPR2019-00612
`Patent 8,831,557 B2
`
`C. 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.
`
`
`
`3
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`
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`IPR2019-00612
`Patent 8,831,557 B2
`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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`4
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`IPR2019-00612
`Patent 8,831,557 B2
`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.
`
`
`5
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`IPR2019-00612
`Patent 8,831,557 B2
`
`D. 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.
`
`
`
`E. Evidence
`The pending grounds of unpatentability in the instant inter partes
`review are based 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”);1 and
`
`1 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).
`
`6
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`IPR2019-00612
`Patent 8,831,557 B2
`IPHONE USER GUIDE FOR IPHONE OS 3.1 SOFTWARE
`(2009) (Ex. 1107, “iOS”).
`Petitioner filed declarations from Benjamin B. Bederson, Ph.D. (Ex. 1103),
`Michael Hulse (Ex. 1104), and Yosh Moriarty (Ex. 1131) with its Petition
`and a reply declaration from Dr. Bederson (Ex. 1139) with its Reply. Patent
`Owner filed a declaration from Alfred C. Weaver, Ph.D. (Ex. 2001), with its
`Response.
`
`
`35 U.S.C. § Reference(s)/Basis
`
`F. Asserted Grounds
`The instant inter partes review involves the following grounds of
`unpatentability:
`Claim(s)
`Challenged
`1, 8, 9, 15
`
`103(a)2
`
`Fadell, iOS, Gagneraud
`
`1, 8, 9, 15
`
`103(a)
`
`Goertz, Herfet
`
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art for a challenged
`patent, we look to “1) the types of problems encountered in the art; 2) the
`prior art solutions to those problems; 3) the rapidity with which innovations
`are made; 4) the sophistication of the technology; and 5) the educational
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 103 and 112. Because the
`challenged claims of the ’557 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 103 and 112.
`
`7
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`IPR2019-00612
`Patent 8,831,557 B2
`level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654,
`666–667 (Fed. Cir. 2000). “Not all such factors may be present in every
`case, and one or more of them may predominate.” Id.
`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 dispute Petitioner’s
`proposed level of ordinary skill in the art. PO Resp. 15 (citing Ex. 2001
`¶¶ 34–36). Based on the full record developed during trial, including our
`review of the ’557 patent and the types of problems and prior art solutions
`described in the ’557 patent, we agree with Petitioner’s assessment of the
`level of ordinary skill in the art and apply it for purposes of this Decision.
`
`
`B. Claim Interpretation
`In an inter partes review based on a petition filed on or after
`November 13, 2018, we interpret the claims of the challenged patent
`using the same claim construction standard that would be used to
`construe the [claims] in a civil action under 35 U.S.C. 282(b),
`including construing the [claims] in accordance with the ordinary
`and customary meaning of such [claims] 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 (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)).
`
`8
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`IPR2019-00612
`Patent 8,831,557 B2
`“In determining the meaning of [a] disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006). 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
`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).
`In the Decision on Institution, based on the parties’ arguments, see
`Pet. 14–17; Paper 9, 5–13, and the record at the time, we preliminarily
`interpreted the following limitations of claims 1 and 9:
`Limitation
`Interpretation
`
`“simultaneously”
`
`“inactive state”
`
`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
`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
`
`9
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`
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`IPR2019-00612
`Patent 8,831,557 B2
`Limitation
`
`“active state”
`
`“user identification unit”
`
`Interpretation
`
`a state in which the display screen of the
`mobile communication terminal is turned
`on
`(not a means-plus-function limitation
`under 35 U.S.C. § 112, sixth paragraph,
`and no further interpretation is necessary)
`
`Dec. on Inst. 8–17. We specifically “encouraged [the parties] to address”
`the interpretation of “simultaneously” and “user identification unit” in their
`papers during trial. Id. at 15, 17.
`The parties agree with our preliminary interpretations. See PO Resp.
`5–15; Reply 1–3; Sur-Reply 1–3; Ex. 2001 ¶¶ 80–82 (Dr. Weaver testifying
`that a person of ordinary skill in the art would understand “user
`identification unit” to recite sufficiently definite structure and that the term
`should not be interpreted as a means-plus-function limitation); Ex. 1139 ¶ 15
`(Dr. Bederson agreeing with Dr. Weaver’s analysis of “user identification
`unit”). The parties, however, disagree as to how our preliminary
`interpretation of “simultaneously” applies to the asserted prior art. See
`PO Resp. 7–10; Reply 1–2; Sur-Reply 1–2. We resolve those issues below.
`See infra Sections II.D.4.b.(1), II.E.3.b.(2). Based on the full record
`developed during trial, we do not perceive any reason or evidence that
`compels any deviation from the preliminary interpretations above. We adopt
`the previous analysis for purposes of this Decision, and conclude that no
`further claim interpretation is necessary. See Dec. on Inst. 8–17; 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,’
`
`10
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`IPR2019-00612
`Patent 8,831,557 B2
`we need not construe [a particular claim limitation] where the construction is
`not ‘material to the . . . dispute.’” (citations omitted)).
`
`
`C. Legal Standards
`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
`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.”3 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,
`
`
`3 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 has not
`presented any evidence of secondary considerations of nonobviousness in
`this proceeding.
`
`11
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`
`
`IPR2019-00612
`Patent 8,831,557 B2
`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”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’” amount
`to an “insufficient articulation[] of motivation to combine”; “instead, the
`finding must be supported by a ‘reasoned explanation’” (citation omitted));
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`(“To satisfy its burden of proving obviousness, a petitioner cannot employ
`mere conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.”).
`
`D. Obviousness Ground Based on Fadell, iOS, and Gagneraud
`1. Fadell
`Fadell describes “an electronic device with an embedded
`authentication system for restricting access to device resources” including
`sensors that “detect appropriate biometric information as the user operates
`
`12
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`IPR2019-00612
`Patent 8,831,557 B2
`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 sensor in a separate part of the
`device housing).” Ex. 1105, Abstract, ¶ 5. Fadell recognizes that previous
`systems restricting access via passwords or pass codes were “effective only
`so long as no other user knows the password or pass code,” and fingerprint
`or retina scan systems, while more secure, were “time consuming and
`bothersome for the user, requiring an additional step before the user can
`access the device.” Id. ¶ 4. Fadell discloses that “[i]t would be desirable
`therefore, to provide an electronic device by which biometric and other
`authentication mechanisms are implemented in the device such that the
`device authenticates the user quickly and seamlessly, for example as the user
`turns on, unlocks or wakes the device.” Id.
`Figure 8B of Fadell is reproduced below.
`
`
`
`13
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`IPR2019-00612
`Patent 8,831,557 B2
`Figure 8B depicts electronic device 800, held in user’s hand 830, comprising
`display 810, home button 812, and sensor 720 “placed behind” home button
`812 and “operative to detect features of a user’s fingerprint to identify the
`user.” Id. ¶¶ 64–67. Sensor 720 can “generate an image or a representation
`of the skin placed over the sensor that can be compared to a library of
`images or representations available to the electronic device.” Id. ¶ 56.
`Fadell requires the user to be authenticated (e.g., by fingerprint
`recognition) before providing access to data and resources on the electronic
`device. Id. ¶¶ 43, 46–48. Figure 15 of Fadell is reproduced below.
`
`
`Figure 15 depicts a flow chart for authenticating a user. Id. ¶ 93. At step
`1504, the electronic device identifies the user of the device by receiving a
`username or password or “seamlessly captur[ing] authentication information
`as the user operates the device” via a fingerprint sensor. Id. At step 1506,
`the electronic device “determine[s] whether a request to access restricted
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`resources was received.” Id. ¶ 94. For example, the request may be to
`access “data associated with a particular user,” such as a contact list, or a
`“restricted application,” such as an application restricted to particular users.
`Id. If so, the electronic device “determine[s] whether the identified user is
`authorized to access the resources” at step 1508. Id. ¶ 95. “For example, the
`electronic device may determine whether the user has provided suitable
`authentication information for accessing the restricted resources,” or “[t]he
`electronic device may receive suitable authentication information without
`the user’s knowledge . . . by embedding an authentication sensor in the
`device such that authentication information is received during normal use.”
`Id. Once it is determined that the user is authorized to access the requested
`restricted resource, the electronic device provides access at step 1512.
`Id. ¶ 96.
`
`
`iOS
`2.
`iOS is a user guide for iPhone OS 3.1 software. Ex. 1107, 1. iOS
`includes a diagram of an iPhone on page 20, which is reproduced below.
`
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`The reproduced diagram above depicts an iPhone. Id. at 20. The iPhone
`includes a home button that, when pressed, causes the device to display a
`home screen that includes applications that can be launched. Id. at 23. The
`iPhone also includes a sleep/wake button that allows the user to lock the
`device or turn it off. Id. at 26–27. When the iPhone is locked, nothing
`happens if the user touches the screen. Id. at 26.
`
`
`3. Gagneraud
`Gagneraud describes a device comprising a power button, “fingerprint
`scanner coupled on the power button,” and “authentication application” that
`“compar[es] a user fingerprint image with a stored fingerprint image.”
`Ex. 1106, Abstract. Gagneraud discloses that “[b]y utilizing a fingerprint
`scanner coupled on a power button, when the fingerprint scanner detects a
`user, the single act of the fingerprint scanner detecting the user results in the
`fingerprint scanner beginning to scan and store a user’s fingerprint image
`while a machine concurrently begins powering on.” Id. ¶ 58. “As a result,
`time is saved and user friendliness is increased by automatically
`authenticating the user’s fingerprint image with stored fingerprints once the
`machine has powered on.” Id. “Additionally, by configuring a locking
`mechanism on the machine to unlock after the user fingerprint image has
`been authenticated, security for the machine and a user’s account is further
`increased.” Id.
`
`
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`Figure 8 of Gagneraud is reproduced below.
`
`
`Figure 8 depicts a flow chart for authenticating a user using “a fingerprint
`scanner on a power button.” Id. ¶ 53. The fingerprint scanner detects a user
`touch at step 800. Id. ¶ 54. “Once a user is detected, the machine
`concurrently begins powering on 810 and scans a user fingerprint with the
`fingerprint scanner 820.” Id. Specifically, “[w]hile the machine is powering
`on, the fingerprint scanner concurrently scans the user fingerprint with the
`fingerprint scanner 850 and stores the user fingerprint image in a memory
`coupled to the fingerprint scanner 860.” Id. ¶ 55. “Once the user fingerprint
`has been stored and the operating system on the machine has been loaded, an
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`authentication application determines whether the user fingerprint matches
`a stored fingerprint image or data (stored fingerprints) on the machine 865.”
`Id. If a match is detected, “the operating system will authenticate the user
`and log the user into the operating system 870,” the authentication
`application “access[es] a locking mechanism 880,” and “the machine
`configures [the] locking mechanism on the machine to release and grant the
`user access to the machine 890.” Id. ¶¶ 56–57.
`
`
`4. Claim 1
`Petitioner argues that claim 1 is unpatentable over Fadell, iOS,4 and
`Gagneraud under 35 U.S.C. § 103(a), relying on the testimony of
`Dr. Bederson as support. Pet. 17–38 (citing Ex. 1103). Patent Owner makes
`various arguments in response, relying on the testimony of Dr. Weaver.
`PO Resp. 25–40, 50–51 (citing Ex. 2001); Sur-Reply 3–15, 23–24.
`
`
`a) Undisputed Issues
`Petitioner relies on Fadell for the majority of the limitations of
`claim 1. Pet. 25–38. For example, Petitioner argues that Fadell teaches a
`“mobile communication terminal” (i.e., electronic device 800) comprising a
`“display unit” (i.e., display 810), “activation button” (i.e., home button 812),
`
`
`4 Petitioner provides evidence supporting its contention that iOS is a prior art
`printed publication under 35 U.S.C. § 102(b). See Pet. 7 (citing Exs. 1104,
`1131). Patent Owner does not assert otherwise in its Response, and we
`agree that the reference is prior art for the reasons stated by Petitioner. Also,
`we previously granted Petitioner’s motion to seal certain exhibits pertaining
`to the alleged printed publication status of iOS. Paper 10 (granting motion
`to seal portions of Exhibits 1104 and 1131, where Petitioner filed unredacted
`and redacted versions of each exhibit). We do not refer to any sealed
`material in this Decision.
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`and “user identification unit configured to operate a user identification
`function” including “fingerprint recognition” (i.e., “authentication system
`112 for identifying users based on biometric features, controlled by
`processing circuitry 102” shown in Figure 1 of Fadell). Id.
`Petitioner relies on a combination of Fadell with iOS for the limitation
`of claim 1 that the activation button be “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.” Id. at 27–28. Petitioner contends
`that Fadell’s electronic device 800 (shown in Figure 8B above) can be an
`iPhone that would use the operating system described in iOS, given that
`Fadell is assigned to Apple Inc. and purports to incorporate in its entirety
`U.S. Provisional Patent Application No. 60/995,200 (Ex. 1128, “the
`’200 application”). Pet. 22, 24, 28; see Ex. 1105, code (73), ¶ 1. The
`’200 application states that “[e]lectronic device 100 may be any suitable
`electronic device, including for example an iPod or iPhone from Apple,
`Inc.” Ex. 1128, 5. Petitioner argues that iOS describes an iPhone home
`button pressed to wake the device from a sleep state. Pet. 28 (citing
`Ex. 1107, 20, 27, 145). According to Petitioner, iOS shows how a person of
`ordinary skill in the art would have understood the functionality of Fadell’s
`iPhone, and even if not directly applicable, a person of ordinary skill in the
`art would have been motivated to apply the teachings of iOS as a
`“well-known interface implementation[]” for devices like the one described
`in Fadell. Id. at 24.
`Patent Owner does not dispute that Fadell and iOS teach the above
`limitations of claim 1 or that a person of ordinary skill in the art would have
`been motivated to combine the references’ teachings in the manner asserted
`by Petitioner; therefore, any such arguments are waived. See Novartis AG v.
`
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`Torrent Pharms. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); NuVasive,
`842 F.3d at 1380–81; Paper 12, 6 (“Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.”); Sur-Reply 4 n.1 (Patent Owner stating that it does not address
`iOS in its Response and Sur-Reply because “it is not relevant to [Patent
`Owner’s] arguments”). Petitioner’s anal
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